A Request for Reconsideration comes into play when the examining attorney in charge of reviewing your trademark application issues a trademark office action indicating that the refusal to register your mark has now been made final. A Request for Reconsideration is generally used for three different purposes:
Request for Reconsideration Purpose #1 – Complying with a Requirement
The first purpose is for the owner of a trademark application to comply with a technical or procedural requirement raised by the examining attorney. For example, let’s say you receive an office action requesting that you amend the identification of products/services in your application because it doesn’t conform to the USPTO’s standards. You look at the USPTO ID Manual and come to the conclusion that there’s absolutely nothing wrong with the way you described your products/services. So, you file a response to the office action arguing your position. The examining attorney reviews your response but continues to believe that an amendment to your application is required. He then sends you a final office action making his refusal to register your trademark final. After some thought, you decide it’s not worth the time and expense of appealing the examining attorney’s decision to the Trademark Trial and Appeal Board (TTAB), so you submit a Request for Reconsideration consisting of the requested amendment. The examining attorney then approves your trademark application and allows it to proceed to the next step in the trademark application process.
Request for Reconsideration Purpose #2 – Preparing for a Trademark Appeal
The second purpose of filing a Request for Reconsideration is to strengthen the evidentiary record in anticipation of filing a trademark appeal with the TTAB. For instance, let’s say you receive an office action indicating that the examining attorney is refusing to register your mark on the basis that it’s merely descriptive of the products/services listed in your application. You carefully review the office action and conclude that the examining attorney is completely wrong in his assessment of your trademark. So, you decide to research, prepare, and submit an argument as to why your trademark isn’t merely descriptive. The examining attorney reads your response but finds your arguments unpersuasive. He then issues a final office action informing you that he’s making his refusal to register your trademark final. You think you have a really good case and decide that you’re going to appeal the refusal to the TTAB. But, before you do, you want to get additional arguments and evidence into the record so that the TTAB can consider them as part of your appeal. So, you prepare and file a Request for Reconsideration that includes all of these additional materials. Sometimes, the examining attorney will withdraw his final refusal after reviewing the Request for Reconsideration. If not, you have the option of moving forward with the appeal.
Request for Reconsideration Purpose #3 – Requesting Suspension of Your Trademark Application
The third purpose of filing a Request for Reconsideration is to ask that the examining attorney suspend action on your trademark application. However, you would likely only be able to request suspension under the following conditions:
- You received a likelihood of confusion rejection and the cited registration is in its grace period
- You received a likelihood of confusion rejection and you have filed a trademark cancellation against the cited registration
- You received a likelihood of confusion rejection and you have filed either a trademark expungement or trademark reexamination proceeding against the cited registration
If the examining attorney finds your request for suspension to be appropriate under the circumstances, your application will be suspended pending the disposition of the cited registration.
Keep the Following in Mind…
One important thing to keep in mind is that a Request for Reconsideration doesn’t extend the time in which to appeal the examining attorney’s final refusal. Therefore, if you anticipate having to file an appeal, it’s good practice to file a Notice of Appeal soon after receiving the final office action. This will preserve your right to appeal to the TTAB just in case your Request for Reconsideration is denied.
Do You Need Some Assistance?
I’m experienced US trademark attorney Morris Turek. If you’ve received a final office action from the USPTO and need some assistance from a skilled trademark attorney with preparing and filing a Request for Reconsideration, please contact me right away for your free consultation. You can easily reach me by phone at (314) 749-4059, through email (morris@yourtrademarkattorney.com), or by using my contact form (below). I look forward to hearing from you soon.