What are your options?
First, be clear that a trademark registration refusal does not mean that you cannot conduct business.
It means, however, that you do so without the protection that Federal trademark registration offers. It means that you will not be able to sue anyone else for trademark infringement.
It also means that, if you receive a cease and desist letter from someone else who has registered a similar trademark, you will have an uphill battle proving your right to use the mark before a Federal court.
Thus, when you’ve received a Final Office Action from the Examiner at the US Patent and Trademark Office (USPTO), refusing your trademark registration application, you may not want to simply take no for an answer.
You may want to discuss with your trademark registration attorney your available options at this unfortunate point in the process.
You do yet have options.
Trademark Refusal Option Number 1: Give Up and Re-Brand
Throwing in the towel on a particular trademark registration application may be the most sensible course of action in many cases.
If your application was filed as 1(b) Intent to Use—meaning that you actually haven’t started using the trademark in commerce yet—you may not have much invested in the mark, relatively speaking.
It may be that simply trying again with a more creative, fanciful brand and trademark will be the most logical course of action available to you.
It’s a fact that many proposed trademarks are just … not great. Do you want to spend thousands more dollars on filing and attorney’s fees to try again with the further options to described below for this particular mark?
People often fall in love with an idea, even when, sometimes, those ideas are not very good. Some proposed trademarks are not worth throwing more money at once trademark registration is refused.
A good trademark lawyer will have advised of this prior to filing. A good trademark lawyer will also advise as to when it may be time to move on to a new brand.
It’s always the client’s decision to fight the good fight or not. However, it’s important to remember that branding and trademark registration is just business—not parenthood.
It’s OK to walk away if further argument with the USPTO does not appear to present a good investment.
Trademark Refusal Option Number 2: Request for Reconsideration
If the USPTO Examiner has issued a Final Refusal to your trademark registration application, you will have 6 months to respond to the refusal.
Your first option—other than throwing in the towel—is to file a Request for Reconsideration of the Examiner’s decision to issue the Final Refusal.
It is important to note that the filing of a Request for Reconsideration does not pause or toll the concurrent 6-month deadline for the filing of an Appeal of the Final Refusal (see below).
A Request for Reconsideration is filed with the same Examining Attorney who issued the Final Refusal.
This response should present new argument and evidence that had not previously been submitted to the Examiner in any prior Office Action response.
Upon receipt, the Examiner will decide whether the new argument and evidence resolves the outstanding issues—or doesn’t.
If it does, the Examiner will approve the trademark registration application for publication or registration.
Alternatively, if new evidence or argument is submitted in the Request for Reconsideration that is not fully convincing, the Examiner may issue a 30-Day Letter allowing additional time to complete the response or a new Non-Final Office Action with new 6-month deadline for response.
If the Request for Reconsideration simply fails to resolve the issues, no Notice of Appeal has been filed, and no time remains to do so, the Examiner will close the application as Abandoned.
If you disagree with the Examiner’s rejection of the Request for Reconsideration, you can file a Petition to the Director of the USPTO for a reversal of the decision—but this will be granted only rarely and only in cases of serious error with regard to a technical provision of the Trademark Act or Rules of Practice.
Substantive arguments must, instead, be appealed.
Appealing a Trademark Registration Application Refusal
An appeal of a Final Refusal is made not to a court or to the Examining Attorney who issued the refusal but to what is called the Trademark Trial and Appeal Board, or TTAB.
It requires the payment of a fee for each Class of good or service underlying the appeal.
The matter being appealed must be—Appealable. That is, it must be an appeal of a decision based on substance and not technical error, as noted above.
What is a substantive matter? The core subject of the trademark registration application’s refusal: a likelihood of confusion with another trademark, the allegation that the mark is merely descriptive, and so on.
The Notice of Appeal must be filed within 6 months of the issuance of a Final Refusal, regardless of whether a Request for Reconsideration or a Petition to the Director is also filed.
During the Appeal process, you will file a Brief containing your arguments, to which the Examiner who issued the Final Refusal may file a responsive Brief.
The TTAB and not the Examiner has jurisdiction over the application during the appeal process. Once the arguments are considered, the TTAB will issue a decision.
Options After Trademark Registration Refusal: The Bottom Line
The bottom line is that, after a Final trademark registration refusal, you should consider all of the available options.
It is possible and, in some cases, probable that the best option is to simply move on from the failed trademark registration application and re-brand.
However, that is not the only recourse—at least not at first.
You should consult with a knowledgeable trademark lawyer to determine whether a Request for Reconsideration, Petition to the Director, or TTAB appeal are appropriate in your case and whether such further action is money well spent for your enterprise.
If you need to register a trademark or have registered a trademark and need assistance, contact us by clicking the button below.
We are a Detroit-based trademark registration law firm but offer virtual consultations and represent clients nationwide for Federal trademark matters.