United States Patent and Trademark Office (“USPTO”) issues a Final Office Action if the issues raised in the Non Final Office Action have not been addressed successfully or have not been properly responded or the examiner has refused to accept your response.
After receiving the Final Office Action you have three option to respond to the this Final Office Action:
1. File a Request for Reconsideration
You can file a Request for Reconsideration after Final Action. In the review petition you can submit additional arguments and evidence to convince trademark examining attorney in your favor. If the Request for Reconsideration fails, you can use these additional arguments and evidence in an appeal to the Trademark Trial and Appeal Board (“TTAB”)
2. File an Appeal with the Trademark Trial and Appeal Board
You can file a trademark appeal with the Trademark Trial and Appeal Board (“TTAB”). The Notice of Appeal and all subsequent submission can be made electronically with the TTAB. Time limit for filing an appeal is six months from the date of the issuance of the final office action. If you have filed a Request for Reconsideration it will not extend the time limit for filing an appeal against the final office action.
3. File Request for Reconsideration in Conjunction with Notice of Appeal
The Board TTAB has jurisdiction over an application upon the filing of a notice of appeal. In response to a request from an applicant, the Board may remand an application to the examining attorney for consideration of specific facts or issues.
If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration.
If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration. The examining attorney may issue an examiner’s amendment if he/she determines that an examiner’s amendment will immediately put the application in condition for publication or registration. In these situations, the appeal is moot and no further action is needed after approving the application for publication or registration. If there are remaining unresolved refusals or requirements, the request for reconsideration will be denied. In some circumstances, the examining attorney may also issue an examiner’s amendment to reduce the issues on appeal.
