Trademark Application Filed; Final Refusal Issued for Statement of Use
U.S. Federal Trademark Application Filed, Final Office Action Issued Refusing SOU
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If you received this notice, you filed an application for registration of a trademark based on intent to use ("ITU"). The application was allowed. You have now filed a statement of use, alleging that you have used the mark. However, the statement of use was refused in a preliminary rejection. You filed a response to the office action and it has been received by the USPTO and not accepted. The arguments were not persuasive and you now have a final office action refusing your statement of use.
You have six (6) months from the date of the emailing of the final refusal before you must either appeal, or file a request for reconsideration. You can file an additional office action response if you would like, but it is generally considered non-responsive (meaning it won't buy you additional time), or in some cases, an Examiner will view the response as a request for reconsideration. A request for reconsideration is a request that the Examiner reconsider his or her position on something, and generally brings in a new piece of evidence, or additional arguments not addressed before.
If the Examiner reconsiders, this does not mean that your application will be approved. It just means that the Examiner will consider the new evidence, and once he or she has done so, then a new final refusal can issue, or the Examiner can permit the application to proceed and withdraw his or her refusal. However, if the Examiner refuses to reconsider, then there is no new final refusal; the original date of the final refusal continues to be the deadline, and the application must file a notice of appeal by that date or the application will go abandoned.
Thus, it is important to keep the original date of the final refusal in mind, even if you file a request for reconsideration because if it is refused, then you may miss the date for appeal. When it comes to filing a notice of appeal, the first part is easy: you file a notice and pay a fee. But, then, once the Examiner has passed on your request for reconsideration, if the refusal is maintained, then you will have to file an appeal brief, making legal arguments for why the Examiner was wrong about the grounds for refusal to register your mark.
A response must be filed within 6 months of the emailing date of the final office action send by the USPTO. That date is non-extendible.
Failure to respond by that date will result in an abandonment of the trademark application.
If you have received a final office action and are not using an attorney, this may be the time to consider hiring a qualified trademark attorney to address the final office action and determine if there is a pathway to overcome the refusal or appeal.
The USPTO does not issue reminders of the date to respond to an office action. Therefore, you must track the date and respond appropriately by the dat set forth in the non-final office action (6 months from the date of the action).