Westchester Women's Bar Association

Request for Reconsideration

A request for reconsideration is a proper response to a final office action. If an Examining Attorney issues a final action, then the proper response by an applicant is to file a notice of appeal and possibly to also file a request for reconsideration. The notice of appeal is filed with the Trademark Trial and Appeal Board and the request for reconsideration is filed with the Examiner. There is a $100.00 fee per international classification to file the notice of appeal, but there is no fee to file the request for reconsideration. Typically, an Examining Attorney will not change their position on the grounds for which they refused the application. However, in the reconsideration request an applicant can raise new issues, such as an amendment that may be entered if it places the application in condition for publication or registration or even if it places the application in a better form for an appeal.

Filing a request for reconsideration does not extend the deadline for filing a notice of appeal or a Petition to the Director. Therefore, an applicant who wants to preserve its time to appeal before the expiration of the six-month period, must file the notice of appeal. If the request for reconsideration is unsuccessful, and the applicant has not timely filed a notice of appeal, the application will be abandoned for an incomplete response. Any Office Action issued in connection with the request for reconsideration should discuss any new evidence submitted with the request for reconsideration. However, regardless of whether an applicant submits new evidence with a request for reconsideration, the Examining Attorney may introduce additional evidence directed to the issue for which reconsideration is sought. For more detail on this rule see the Trademark Manual Of Examining Procedure §715.03.

If an applicant does not raise a new issue in the request for reconsideration and no notice of appeal has been filed, the Examiner's options are as follows: (1) if the application is in an appropriate condition, it can be approved for publication or registration if the Examiner is persuaded that the refusal has been overcome; (2) if the Examiner is not convinced that the refusal is overcome, he could abandon the application; (3) if time is still remaining on the appeal, then an office action could be issued stating the request for reconsideration is denied, no appeal filed, but time is remaining in the six month period to still file a notice of appeal; or (4) the Examiner can issue an office action on the grounds that there is a continuing final refusal, but since there still is time in the statutory period, the applicant can attempt to overcome the refusal. This latter option is discretionary on the part of the Examining Attorney under 37 C.F.R. §2.65(b), and allows the Examiner to issue a 30 day Letter that gives the applicant additional time to resolve any outstanding matters.

Under a different scenario, if the request for reconsideration includes an amendment that presents a new issue, the Examining Attorney must issue a non-final office action with a six-month response clause that addresses the new issue and maintains the final refusal or issues a new final action (known as an Examiner's Subsequent Final Refusal). Evidence that is cumulative and not materially different from documents and arguments already submitted will not raise a new issue requiring a new final or non-final action.

For example, if an application was refused on the grounds that the applied for mark merely describes a feature of the goods or services under Trademark Act Section 2(e)(1), and the applicant was requesting to amend registration on the Principal Register under Section 2(f) because the mark has acquired distinctiveness, then this would be considered a new issue. Also, if this same applicant included an amendment requesting registration on the Supplemental Register this too would be considered a new issue and a proper response to a final refusal. Filing a request for reconsideration is a strategic tool that is often overlooked, see our blog post entitled, What If A Final Refusal Is Issued In A Trademark Application, for more details on this matter. If you have received a final refusal and are unsure how to proceed, please feel free to contact our office for a courtesy consultation.

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