After you file a trademark application, you might have to respond to an office action. The Trademark Office will send you an office action if they have questions or issues regarding your application. Some of these are easy to fix. But others will make it nearly impossible for you to register your trademark. If the Trademark Office does not accept your response, it will issue a final office action. And at that point, you may need to file a Request for Reconsideration.
The Request for Reconsideration
There are many reasons that you might receive an office action. Some of these reasons include issues that are more “administrative” in nature. For example, you may need to revise how your application describes the goods/services used in connection with your mark. However, there are many more “substantive” reasons for an office action. The Trademark Office might issue a Section 2(d) refusal for likelihood of confusion with another registration. When you respond to an office action, you want to address these issues. You might decide to just comply with what the Trademark Office is telling you. Or you might make an argument back to the Trademark Examining Attorney assigned to your application if you disagree with them.
In either case, if your response does not clear up the issues raised in the initial office action, the Examining attorney will make the refusal to register your mark final via the final office action. At that point, you will generally have three months to file a Request for Reconsideration. You may decide to drop your disagreement with the Examining Attorney and do what they suggest to move your application forward. On the other hand, you might want to appeal their decision to the Trademark Trial & Appeal Board. If so, you might file a Request for Reconsideration in order to bolster your case for appeal. If there was anything left out of your original office action response (research, evidence, arguments, etc.) you’ll want to put that into the Request. Then they will be included as part of your evidence for the appeal. Hopefully the Examining Attorney is persuaded the second time around, though.
Do You Need To File a Request for Reconsideration?
If you have received a final office action, you need to act quickly to determine the best course of action. I would be happy to take a look at your application and final office action to help you determine what your options are. If you would like me to assist you, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
