Business Law Blog

7 Responses To A USPTO Final Office Action

Posted by Amanda Butler Schley | Jun 02, 2024 | 0 Comments

Facing a final office action from the United States Patent and Trademark Office (USPTO) can be a critical juncture for trademark applicants. Failure to respond effectively within the specified timeframe could result in the abandonment of the application, necessitating a restart of the entire process. Providing the appropriate response to a USPTO final office action involves strategic decision-making and adherence to strict timelines. Applicants must consider avenues such as filing a response with a Request for Reconsideration, petitioning to cancel an existing trademark, or filing a notice of appeal to initiate the appeal process. By exploring these options thoughtfully, applicants can effectively address USPTO's concerns and progress towards securing their patent or trademark. If you need assistance responding to a final office action, one of our knowledgeable Louisiana trademark attorneys may be able to assist you. Call Business Law Group at (504) 446-6506 to schedule a consultation and learn more about your response options.

What Exactly Is a Final Office Action?

Successfully overcoming a final office action from the USPTO is necessary to advance a trademark application. Understanding what a final office action is is important to knowing how to respond to it. Both nonfinal and final office actions raise legal issues with the trademark application. 

Nonfinal Office Action

A nonfinal office action is one in which the application examiner raises a legal issue with the application for the first time. They can address more than one issue in the same office action. Applicants are given three months from the date the office action was issued to respond and can request an additional three months for a fee. 

If the applicant responds to the nonfinal office action, satisfies each legal problem raised, and does not raise additional legal issues, the application will then proceed toward trademark registration. If the response raises further issues, the examiner will send another nonfinal office action explaining the new problems and addressing any outstanding issues previously raised. The examiner will send a final office action if the response does not satisfy the problems originally raised in the nonfinal office action. 

Final Office Action

Final office actions raise legal problems with the application for the last time. Like nonfinal office actions, applicants are given three months to respond and can request an additional three months for a fee. The examiner has brought each issue to the applicant at least once before the final office action. The final office action is effectively a last chance to address all the problems it addresses properly.

If the applicant's response to the final office action satisfies each legal issue presented, the application will proceed toward registration. If the applicant's response does not satisfy all the issues presented, the application is abandoned unless the applicant files an appeal with the Trademark Trial and Appeal Board (TTAB) in a timely manner. Many applicants opt to provide a direct response to the final office action and file an appeal at the same time. 

How To Respond to Official USPTO Final Office Action Letters

When receiving a USPTO final office action or any other communication regarding a trademark application or registration, it is crucial to understand the necessary steps for a timely and effective response. Consider the following steps to respond to official letters:

  • Carefully Review the Official Letter: Start by thoroughly reading the letter to grasp the examiner's feedback and any legal issues raised. Understanding the content is essential for preparing a comprehensive response.

  • Identify Response Requirements: Based on the type of office action received, determine whether a response is mandatory. Some office actions require a response to address legal problems, while others may not require immediate action.

  • Assess Response Deadline: Check the response deadline mentioned in the Final Office Action to ensure timely submission. Missing deadlines can lead to application abandonment, which means investing more time and money to start the process over.

  • Address Legal Problems: Focus on resolving all legal issues raised in the office action. This may involve clarifying goods/services, responding to rejections, or making necessary revisions to comply with trademark regulations.

  • Seek Legal Guidance if Needed: If you encounter complex legal requirements or challenges understanding the examiner's feedback, consider consulting a legal expert specializing in trademark matters for guidance.

  • Prepare a Detailed Response: Write a detailed and precise response addressing each legal concern raised in the Final Office Action. Clear and comprehensive responses can expedite the application review process.

  • Submit Response Electronically: Follow the USPTO guidelines for submitting responses electronically to ensure prompt delivery and accurate processing of your response. Electronic submissions streamline the response process.

  • Track Response Status: Keep track of the response submission status to confirm receipt by the USPTO. Monitoring the response progress can help anticipate any additional requirements or follow-ups.

Responding promptly and comprehensively to official letters is necessary for advancing through the trademark application process and avoiding the application's abandonment.

7 Responses To A USPTO Final Office Action For A Trademark Application

When filing a response to a USPTO final office action, the applicant must choose one of seven options. Each option should be carefully considered before the applicant settles on one. At Business Law Group, one of our experienced Louisiana trademark attorneys may be able to assist you in determining the appropriate response to a final office action. 

File a Request for Reconsideration

A final office action is a last chance to address the legal issues raised by the examiner. A Request for Reconsideration may be used when there is new evidence or an amendment that can be made to the trademark application. For example, if the issue raised is that the trademark would be easily confused with another mark, the applicant may be able to provide the results of surveys showing that consumers do not confuse the two marks. An example of an amendment would be if there are overlapping goods or services that can be removed and allow the registration to proceed. 

Applicants should not file a Request for Reconsideration if they will only use the previous arguments. If the arguments that failed in previous office actions are used, they will likely fail again in the Request for Reconsideration. 

Appeal the Rejection

If the application has been rejected twice on identical grounds, the applicant may be able to file an appeal. The applicant begins the appeal by paying the fee and filing the notice of appeal within six months from the date the final office action was issued. After that, they will file an appeal brief within 60 days of the date the appeal was filed. Applicants can give themselves more time to craft their appeal by waiting until closer to when the six-month appeal period ends, making most of the 60 days after that period, so they have almost eight months total. 

Before filing the appeal, applicants should consider whether they have any new evidence or amendments they can provide. If they do, they may want to consider filing a Request for Reconsideration instead of an appeal. An appeal may be the right option if they do not have any new evidence or amendments. 

Petition to Cancel the Other Trademark Registration(s)

If an applicant's trademark application is rejected on the grounds of an existing trademark, a petition to cancel the blocking trademark registration may be appropriate. Common grounds used to request cancellation of an existing trademark include nonuse, fraud, bad faith, genericness, likelihood of confusion, abandonment, and prior rights. 

While applicants may be able to request a trademark be canceled at any time in many instances, the Trademark Act § 14 indicates that there are some instances where the trademark must have been registered no more than five years before the cancellation request. Applicants may wish to consult with a trademark attorney to confirm they can make this request before investing the time and filing fee.

Coexistence Agreement With the Other Trademark Registration Owner(s)

If an applicant's trademark is rejected due to an existing mark and the likelihood of confusion, a coexistence agreement or consent agreement may be an option. However, this is typically only an option if the applicant has priority of use, as this gives them the leverage they need to try to persuade the other trademark owner to consent. 

A coexistence or consent agreement is one in which the applicant and the third party who either owns the blocking trademark or has a pending application agree that their trademarks are not confusingly similar. While this is an option, it can be difficult to persuade someone who has already invested significant time and money into registering their trademark to sign such an agreement. Additionally, because Louisiana uses French Foundational Law, the state does not necessarily recognize common law trademark rights the way other states would. Therefore, applicants may wish to speak with a trademark attorney to ensure that their priority of use does grant them the common law rights for this claim. 

File for an Expungement or Reexamination To Remove the Other Registered Trademark

Like a petition to cancel a trademark, an expungement or reexamination allows the applicant to challenge an existing trademark. The USPTO indicates that the challenge must be due to nonuse for an expungement or reexamination. If successful, the USPTO will delete the goods or services from the third party's trademark registration so the applicant's registration can proceed. In some instances, they will cancel the registration entirely. 

Combinations of These Responses

In some cases, applicants may want to respond with a combination of two or more of the above responses. They might opt to file a Request for Reconsideration while also filing an appeal. They may contact another trademark owner to explore the possibility of a coexistence agreement while preparing the appropriate documents for a petition to cancel, an expungement, or a reexamination. The more options an applicant has available to use, the better their chances of ultimately getting their trademark approved, though there are never any guarantees. 

Abandon the Application

As a last resort, applicants can abandon the patent application following a USPTO final office action. While this may not be the preferred choice, abandoning the application is a valid decision when pursuing further responses or actions is no longer viable.

If a concurrent use or trademark opposition proceeding has been filed against the application, applicants should be aware that abandoning the application without the consent of the opposing party will cause a judgment to be entered against the applicant. This judgment means the applicant cannot file a new application for an identical or substantially identical trademark for the same or substantially similar goods or services in the future. They would need to create a wholly new and different trademark. 

Frequently Asked Questions

Final Office Actions from the USPTO often raise the same questions. Consider the answers to the following frequently asked questions. 

What Are the Options for Responding To a Final Office Action From the USPTO?

You can respond by filing a Request for Reconsideration, an appeal, a petition to cancel the blocking trademark, a coexistence agreement, an expungement or reexamination request, or abandoning the patent application. You can also respond with a combination of those responses. Each option has its implications, from submitting new evidence to challenging the decision in the final office action.

Why Is It Important to Promptly Respond To a Final Office Action?

A prompt response is crucial to prevent delays or application abandonment. The USPTO procedures require timely action to move the trademark application forward. Once a final office action is issued, understanding the response options and consequences is necessary for successfully registering a trademark.

What Are the Implications of Not Responding Promptly To a Final Office Action?

Failure to respond promptly can result in application abandonment and additional costs. Action must be taken within the given timeframe to avoid delays, potential rejections, and the need to start the application process from scratch.

How Can Utilizing a Request for Reconsideration Help When Responding To a Final Office Action?

Filing a Request for Reconsideration allows applicants to persuade the examiner to change their decision. This request provides an opportunity to add new information or make changes that could influence the examiner to register the trademark instead of rejecting it. Requests for Reconsideration can be a strategic option in responding to USPTO actions.

How Final Is a Final Office Action?

A final office action is the applicant's last chance to address any remaining legal issues that may prevent trademark registration. Timely responses to Final Office Actions are crucial to avoid application delays or abandonment. Understanding the implications of each approach, from fee considerations to potential outcomes, is important to choosing a response or combination of responses effectively. By exploring response options promptly and strategically, applicants can increase their chances of advancing their trademark applications successfully through the USPTO's review process. If you need more information about responses to a USPTO final office action or assistance choosing the appropriate response for your circumstances, consider calling Business Law Group at (504) 446-6506 for a consultation. Our knowledgeable Louisiana trademark attorneys may be able to go over your options with you. 

About the Author

Amanda Butler Schley

Ranked as a Top Rated Business and Commercial Attorney, I have more than a decade of experience representing boutique hotels, family-owned businesses, privately owned restaurants, breweries, artists, executives and entrepreneurs.


There are no comments for this post. Be the first and Add your Comment below.

Leave a Comment

Who We Are

Business Law Group is a boutique business services law firm in New Orleans, Louisiana. Our focus is on understanding the legal pitfalls of your business and industry, as well as the secrets to maximizing your legal leverage at every opportunity and in every negotiation. We work selectively with clients that aren't ready for the overhead expense of an in-house general counsel, but understand the advantages of having a trusted legal advisor on their team. Amanda Butler has been ranked as a Louisiana SuperLawyer, New Orleans Top Lawyer, Best Lawyers, and in Leaders of Law.