Filing a Request for Reconsideration After a Final Office Action

The  journey of registering a trademark can be complex and often requires careful attention to detail. After filing your trademark application, it may take several months for the United States Patent and Trademark Office (USPTO) to review it. If the examining attorney identifies any issues, they will issue an office action—a document outlining the problems with the application. While some of these issues can be resolved relatively easily, others may present significant challenges.

If your response to the office action does not adequately address the concerns, the examiner may issue a final office action. At this point, you have two primary options: file a Request for Reconsideration or appeal to the Trademark Trial and Appeal Board (TTAB).

Understanding the Request for Reconsideration

Office actions arise for various reasons. Some are procedural or administrative, such as requiring amendments to the description of goods or services associated with your tr ademark. Others are more substantive, such as refusals based on a likelihood of confusion with an existing registered mark.

When responding to an office action, it is crucial to address all issues outlined by the examining attorney. You may choose to follow their suggestions or, if you disagree, present arguments to counter their conclusions.

If your initial response fails to resolve the identified issues, the USPTO will issue a final office action. At this stage, you generally have three months to file a Request for Reconsideration. Importantly, filing this request does not extend the statutory deadlines. If the examiner reviews your Request for Reconsideration before the deadline and finds unresolved issues, a subsequent final office action will be issued. If the examiner does not review the request until after the deadline and the outstanding issues remain, your application may be deemed abandoned unless you have filed an appeal.

The Strategic Role of Appeals

To safeguard your application, consider simultaneously filing a Notice of Appeal with the TTAB when submitting your Request for Reconsideration. This dual approach ensures your application does not lapse if the examining attorney concludes that the reconsideration request fails to resolve all issues.

Additionally, a Request for Reconsideration can serve as an opportunity to strengthen your case by introducing new evidence or arguments that were not included in your initial response. For example, if you overlooked submitting certain evidence or legal arguments earlier, you can include them at this stage to bolster your position.

In some cases, a well-prepared Request for Reconsideration may persuade the examiner to reverse their decision, thereby eliminating the need for an appeal. However, if the examiner remains unconvinced, your application will proceed to the TTAB for review. The additional evidence and arguments submitted during the reconsideration phase can enhance the appeal’s chances of success.

Let Sari Law Firm Guide You Through Filing a Request for Reconsideration

Filing a Request for Reconsideration after a final office action is a valuable tool in the trademark registration process. It provides applicants with another opportunity to address outstanding issues and potentially secure trademark approval.

By simultaneously filing a Notice of Appeal, you can safeguard your application against abandonment and position yourself for a more robust appeal if necessary. However, navigating this process requires strategic planning, thorough knowledge of trademark law, and meticulous attention to detail. 

The experienced team at Sari Law Firm, led by trademark attorney Yakup Sari, specializes in assisting clients with trademark applications, office actions, and appeals. Contact our firm today to ensure your trademark application is handled with the expertise it deserves.