If you are attempting to register a trademark with the US Patent and Trademark Office (USPTO), it is possible that you will receive notice from the USPTO that your application has been rejected. An official rejection will be delivered as a Certificate of Rejection. However, there are other “rejections” that are not quite as official such as when the USPTO deems an application to be abandoned. In either type of circumstance, the USPTO will cease working on the application. If the application is deemed abandoned, then the application will persist on the USPTO database in a sort of “limbo.”

There are several alternative actions that can be taken depending on why and how an application has been rejected or deemed abandoned. The easiest cases are those where inaction on the part of the applicant has caused the problem. Abandonment of an application is generally the result of not responding to a USPTO Office Action or other requests for information OR a result of missing a deadline (and not seeking an extension of time).

In these circumstances, the solution is to file a request (and pay the appropriate filing fees) to reinstate the application and for time to respond to the Office Action or provide the missing information. As one example, if the application is an intent-to-use application, specimens of use must be filed within the deadline after receipt of the Notice of Allowance. Extensions of time can be requested. Failure to file the specimens of use (or seek an extension) will result in the denial of the application. That is, the application will be deemed abandoned. The solution is to petition to revive the application, ask for more time, and then submit the specimens of use.

This solution may not always succeed. As another example, failure to respond to an Opposition will ultimately result in the USPTO deeming an application abandoned. But, given the strict deadlines for responding to an Opposition, it may be impossible to revive an application if too much time has elapsed.

In some cases, the USPTO issues a Final Office Action that is an official rejection of the application. In those cases, depending on the reason for the rejection, there are several options, including:

• Ask for a reconsideration of the rejection from the USPTO — this generally requires providing the Examining Attorney with some new arguments, evidence, and a possible amendment to the application that might reverse the rejection
• File an appeal to the USPTO’s Trademark Trial and Appeal Board (TTAB) — appeals generally argue that the Examining Attorney’s rejection was in error based on a misinterpretation of the law or facts within the application
• If the rejection resulted from a pre-existing trademark that is blocking registration (for reasons like being confusingly similar), an option is to seek a cancellation of the “blocking” trademark with the TTAB OR to attempt to negotiate a co-existence agreement with the owner of the “blocking” trademark
• Start over and prepare a new application that, presumably, corrects the problems that led to the rejection
• Continue using the trademark in commerce without registration — this can be legally risky depending on the circumstances

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Responding to a USPTO Trademark Rejection: Legal Options and Strategy

A rejection from the USPTO — whether a formal refusal through a Final Office Action or an effective denial through abandonment — is not necessarily the end of the road. Experienced trademark counsel can often overcome rejections that appear definitive, and there are multiple procedural pathways available depending on why and how the application was rejected. Understanding your options is critical to making informed decisions about next steps.

The Difference Between Office Actions, Final Actions, and Abandonment

The USPTO communicates with applicants primarily through Office Actions. A non-final Office Action identifies issues with the application and gives the applicant an opportunity to respond. A Final Office Action is issued when the examining attorney maintains the refusal after reviewing the applicant’s response to the non-final Office Action. An application becomes abandoned when the applicant fails to respond to an Office Action within the applicable deadline — currently three months, extendable to six months for a fee.

Each of these situations requires a different response strategy. A non-final Office Action calls for a substantive legal response — argument, evidence, and where appropriate, amendment of the application. A Final Office Action triggers a more limited set of options. An abandonment must be addressed through a petition to revive the application under 37 C.F.R. § 2.66, which must be filed within two months of the date of issuance of the notice of abandonment (extendable to six months for “unintentional” delay upon petition) or, if the deadline has passed, through an extraordinary petition based on unintentional abandonment under 37 C.F.R. § 2.146.

Responding to a Final Office Action

When the USPTO issues a Final Office Action refusing registration, the applicant has several options under Trademark Rule 2.64:

• Request for Reconsideration — filed with the examining attorney, presenting new arguments or evidence not previously submitted, or amending the application in a way that addresses the grounds for refusal; the examining attorney is not required to grant reconsideration, and the filing of a request for reconsideration does not extend the deadline for filing an appeal with the TTAB unless the examining attorney withdraws the final refusal
• Appeal to the Trademark Trial and Appeal Board (TTAB) — under 15 U.S.C. § 1070, the applicant may appeal a Final Office Action to the TTAB; the appeal is based on legal argument that the examining attorney misapplied the law or mischaracterized the facts; new evidence may not be introduced on appeal that was not presented during examination
• Appeal to Federal Court — TTAB decisions can be appealed to the U.S. Court of Appeals for the Federal Circuit under 15 U.S.C. § 1071(a), or to a federal district court under § 1071(b), where new evidence can be introduced; this is a more expensive but sometimes necessary option when the TTAB has erred
• New Application — filing a new application that addresses the problems that caused the original rejection; this is often the most efficient path when the rejection is based on avoidable deficiencies rather than fundamental legal bars

Overcoming a Likelihood of Confusion Refusal

The most common basis for trademark application refusal is likelihood of confusion with a prior registered mark under 15 U.S.C. § 1052(d). Overcoming this refusal requires a legal argument — supported by evidence — that addresses the du Pont factors relevant to the specific marks and goods or services at issue. Key arguments include:

• The marks are sufficiently dissimilar in appearance, sound, meaning, or commercial impression that confusion is unlikely
• The goods and services are so different, sold through different channels, or directed to such different consumers that confusion is unlikely despite mark similarity
• The cited prior mark is commercially weak — rarely used, narrowly enforced, or coexisting with many similar marks in the marketplace — and therefore entitled to a narrow scope of protection
• There is evidence of actual coexistence in the marketplace without consumer confusion
• The applicant can obtain a consent agreement from the owner of the cited mark — a written agreement in which the prior registrant consents to coexistence of both marks, which the USPTO gives significant weight in its likelihood of confusion analysis

Cancellation Proceedings as an Alternative Path

When a prior registration is blocking your application — particularly if that registration appears vulnerable — cancellation may be an effective option. Under 15 U.S.C. § 1064, any person who believes they are or will be damaged by the registration of a mark may petition the TTAB for cancellation of that registration. Grounds for cancellation include:

• The registered mark has been abandoned due to nonuse with intent to abandon (15 U.S.C. § 1127)
• The mark was registered without use in commerce or was registered fraudulently
• The mark has become generic for the goods or services (genericness)
• The mark is primarily merely descriptive and has not acquired distinctiveness
• The mark is confusingly similar to a prior mark in which the petitioner has priority of use

Cancellation proceedings are adversarial inter partes proceedings before the TTAB with discovery, briefing, and oral argument. They can be expensive, but when a blocking registration is clearly vulnerable, a cancellation proceeding can clear the path to registration more effectively and permanently than an appeal of the examiner’s refusal.

Continuing to Use Without Registration: The Risks

When all avenues of registration are exhausted or unavailable, a business may choose to continue using its mark on a common law basis without federal registration. This is legally permissible but carries significant risks: common law rights are geographically limited, the mark cannot be recorded with U.S. Customs and Border Protection, statutory damages and attorney’s fees are not available in infringement litigation, and the mark is more vulnerable to challenge by third parties who subsequently register a similar mark federally. For businesses with significant brand equity at stake, an experienced trademark attorney can often find a path to registration that was not apparent from the initial rejection.

The trademark attorneys at Revision Legal handle Office Action responses, TTAB appeals, cancellation proceedings, and new applications after rejection. Contact us if your trademark application has been rejected or if you believe you are facing an unjustified refusal.