Steps for Responding to a Final Office Action
Not all steps are required. It depends on the nature of the rejections, Arguable Issues, and Formalities stated in the the Final Office action.
1 – Satisfy All Outstanding Formalities
Often, the applicant simply did not address each and every issue raised in the first office action, and the final office action simply reiterates those requests. The Examining Attorney will approve your trademark application if you are able to satisfy all outstanding requirements.
2 – File a Request for Reconsideration
Where the grounds for rejection is arguable (presents Arguable Issues), you may submit evidence and additional arguments in an effort to persuade the trademark examining attorney to withdraw the rejection
3 – File an Appeal with the Trademark Trial and Appeal Board
You have the right to file a trademark appeal with the Trademark Trial and Appeal Board (“TTAB”) in conjunction with the above Steps. The applicant must present evidence and arguments against the rejection. Appeals, however are costly, and are usually ruled in favor of the Examining Attorney. Often, a better approach is to file a new trademark application that benefits from past experience.
Your trademark attorney will examine your options and discuss the costs and projected outcomes of each situation with you.