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Overcoming A Substantive or Procedural Final Refusal

Not Just Patents ® Legal Services answers refusals for any of our application clients as part of the service at no extra charge. We also answer refusals for clients who have used other services or filed their own applications at a reasonable flat fee per classification. Not every refusal can be overcome but many applications go abandoned due to problems that are fixable if the fix is done at or before the right time during the prosecution of a trademark application.


If an applicant is not represented by an attorney it is called pro se. A pro se applicant may be able to answer refusals themselves but keep in mind that your adversary, the USPTO trademark examining attorney, is a well-trained full-time attorney with experience in deciding if applications meet USPTO rules and trademark law.


If the examining attorney has finally refused your mark for any substantive legal reason or procedural reason, you are entitled to submit arguments in support of registration or to correct the procedural error in a Request for Reconsideration. If you are going to try and respond to the refusal yourself, you should simply and completely comply with all the requirements raised by the examining attorney in the Final Office Action.  Applicants are not required to provide case law support but may if it is appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are still outstanding issues, the examining attorney will issue an abandonment notice of the application if an appeal has not been filed.


Without a registration you may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. The same trademark issues that caused the refusals may also limit the rights associated with the mark under common law or cause other problems.


Trademark Manual of Examining Procedure- April 2017

TMEP 715    Action After Issuance of Final Action

TMEP 715.01    Proper Response to Final Action

An applicant must respond to a final action within six months of the issuance date.  15 U.S.C. §1062(b); 37 C.F.R. §2.62(a).


An applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2). Filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03.


For an application filed under Section 1(b) in which the applicant has filed a timely "insurance" extension request (i.e., in conjunction with the statement of use or within the same six-month period that the statement of use is filed; see TMEP §§1108.03–1108.03(a), 1109.16(c)), when the six-month response period to a final Office action will expire before the expiration of the extension period, the applicant may respond to the final action by requesting suspension until the end of the extension period in order to overcome any substantive refusals and/or comply with any outstanding requirements maintained in the action. See TMEP §§716.02(f), 716.06, 1109.16(d).

After a final refusal to register on the Principal Register, an amendment requesting registration on the Supplemental Register or registration on the Principal Register under §2(f) of the Trademark Act may be a proper response in some circumstances.   See TMEP §§714.05(a)(i), 816.04, 1212.02(h).


TMEP 715.02    Action After Final Action

Once an action has been properly made final, the examining attorney normally should not change his or her position.  However, this does not mean that an applicant’s amendment or argument will not be considered after final action.  An amendment may be accepted and entered if it places the application in condition for publication or registration, or will put the application in better form for appeal (i.e., reduce the issues on appeal).  For example, an amendment requesting registration on the Supplemental Register or on the Principal Register under §2(f) may be a proper response to a final refusal of registration on the Principal Register in some circumstances.   See TMEP §§714.05(a)(i), 816.04, 1212.02(h).


The examining attorney should issue an examiner’s amendment ( see TMEP §707─707.03 ) if it will immediately put the application in condition for publication or registration or reduce the issues on appeal.

If the applicant files a response that complies with all outstanding requirements and overcomes all outstanding refusals, the examining attorney should approve the application for publication or registration, as appropriate.

In the rare circumstance where the examining attorney determines that a final refusal should be withdrawn, even though the applicant has not submitted any further amendments or arguments after issuance of the final action, the examining attorney must withdraw the requirement or refusal and approve the application for publication or registration, if it is otherwise in condition for such action. The examining attorney must also promptly attempt to notify the applicant by telephone or e-mail that the requirement or refusal is withdrawn, so that the applicant knows that filing an appeal is unnecessary, and must enter an appropriate Note to the File in the record.

The applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusals and/or comply with any outstanding requirements within six months of the issuance date of the final action.  However, filing a request for reconsideration does notstay or extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.63(b)(3).

See TMEP §716.06 regarding suspension after final action.


TMEP 715.03    Request for Reconsideration After Final Action

Under 37 C.F.R. §2.63(b)(3), the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board or petition to the Director.


However, filing a request for reconsideration does notstay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.63(b)(3); TMEP §715.03(c).  The USPTO cannot extend the statutory deadline for filing an appeal.   See 15 U.S.C. §1062(b);  37 C.F.R. §2.142(a). But see TMEP §1714.01(a)(ii) (concerning filing a petition to revive an abandoned application with a notice of appeal when an applicant fails to respond to a final action).  Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the six-month period for response to the final action, or the application will be abandoned.  If the request for reconsideration is unsuccessful, and the applicant has not timely filed a notice of appeal, the application will be abandoned for incomplete response after the expiration of the six-month response period.   See15 U.S.C. §1062(b);  37 C.F.R. §2.65(a). See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement and TMEP §§715.04–715.04(b) for information about processing a request for reconsideration filed with a notice of appeal.


The examining attorney should construe any document filed after final action that responds to the outstanding refusals or requirements as a request for reconsideration.  If the request for reconsideration does not overcome or resolve all outstanding refusals and requirements, the examining attorney must follow the procedures outlined in TMEP §§715.03(a)(ii), (b), and 715.04(a), (b).  An Office action issued in connection with those procedures should discuss any new evidence submitted with the request for reconsideration, regardless of whether it is significantly different from evidence previously submitted. If the evidence in the request for reconsideration is significantly different from the evidence currently of record, the examining attorney must issue a new final refusal (i.e., an "Examiner’s Subsequent Final Refusal"). See TMEP §715.03(b).


Regardless of whether an applicant submits new evidence with a request for reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for which reconsideration is sought.  TBMP §1207.04;  see In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1200–01 (TTAB 2009); In re Giger, 78 USPQ2d 1405, 1406–07 (TTAB 2006) .  


To determine the appropriate action to take upon receipt of a request for reconsideration, the examining attorney must consider whether:  (1) the applicant has timely filed a notice of appeal; (2) time remains in the six-month period to respond to the final action; and (3) the request for reconsideration presents a new issue or new evidence significantly different from that previously submitted.  See TMEP §§715.03(a), 715.03(b), and 715.04–715.04(b) for further information as to how examining attorneys should handle requests for reconsideration.


715.03(a)    Examining Attorney’s Action When No New Issue or No Significantly Different Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed

If a request for reconsideration presents no new issues or no new evidence significantly different from that previously submitted and the applicant has not filed a notice of appeal, the examining attorney must consider whether to: (1) approve the application for publication or registration; (2) deem the application abandoned in whole or in part for an incomplete response; or (3) issue an Office action. See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.


TMEP 715.03(a)(i)    Request for Reconsideration Resolves All Outstanding Issues and No Notice of Appeal Has Been Filed

If the request for reconsideration convinces the examining attorney that a refusal or requirement should be withdrawn, and no other issues remain, the examining attorney may approve the application for publication or registration.


TMEP 715.03(a)(ii)    Request for Reconsideration Does Not Resolve All Outstanding Issues and No Notice of Appeal Has Been Filed

TMEP 715.03(a)(ii)(A)    Prior Amendment Withdrawn

If, in a request for reconsideration that does not overcome or resolve all outstanding issues, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.


TMEP 715.03(a)(ii)(B)    Outstanding Refusals and/or Requirements Must Be Continued, Time Remains in Response Period for Applicant to Appeal, and No Notice of Appeal Has Been Filed

The examining attorney must issue a "Request for Reconsideration Denied – No Appeal Filed – Time Remaining" (or, if appropriate, "SU – Request for Reconsideration Denied – No Appeal Filed – Time Remaining") action if: (1) the request for reconsideration does not overcome or resolve all outstanding refusal(s) and/or requirement(s); (2) the applicant’s response does not meet the criteria under 37 C.F.R. §2.65(a)(2)  for granting additional time to complete the response, because such issues cannot be resolved with additional time granted; and (3) no notice of appeal has been filed. This action must (1) acknowledge receipt of the request for reconsideration, (2) indicate that the request is denied and explain why it does not overcome or resolve the final refusal(s) and/or requirements, (3) identify the final refusal(s) and/or requirements that are maintained and continued and any that are satisfied or withdrawn, (4) advise the applicant that the time for appeal runs from the issuance date of the final Office action, (5) advise that the applicant has the remainder of the response period to comply with any outstanding refusal(s) and/or requirement(s) and/or to file a notice of appeal to the Board, and (6) omit the six-month response clause. See TMEP §705.08.

Once the examining attorney has issued a "Request for Reconsideration Denied – No Appeal Filed – Time Remaining" (or "SU – Request for Reconsideration Denied – No Appeal Filed – Time Remaining") action, the examining attorney must abandon the application for incomplete response, using the "Abandoned Due to Incomplete Response" action, if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned due to incomplete response, and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration.

See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.


TMEP 715.03(a)(ii)(C)    Outstanding Refusals and/or Requirements May Be Resolved if Applicant Is Given 30 Days or Time Remaining in Response Period to Comply with Issues

The preferred action is to issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") if: (1) the request for reconsideration does not overcome or resolve all outstanding refusal(s) and/or requirement(s); (2) the applicant’s response complies with the criteria in 37 C.F.R. §2.65(a)(2)  for granting additional time to complete the response, regardless of whether time remains in the response period, because such issues can be resolved with additional time, including where the record indicates that the applicant can place the application in condition for approval for publication or registration by completing the response or all issues can be resolved by examiner’s amendment; and (3) no notice of appeal has been filed. See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013). See TMEP § 715.03(a)(ii)(E) regarding responses to final actions that comply with the criteria in 37 C.F.R. §2.65(a)(2)  (those signed by unauthorized persons, unsigned responses, and TEAS responses consisting only of a signature or missing significant data or attachments).


This Office action must: (1) include an appropriate explanation of the problem with the response; (2) give the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to submit a complete response; and (3) omit the six-month response clause. See TMEP §§705.08, 718.03(b).

If the examining attorney determines that an examiner's amendment ( see TMEP §§707─707.03) will immediately put the application in condition for publication or registration, the examining attorney should attempt to contact the applicant to obtain authorization to issue an examiner's amendment to resolve the matters that remain outstanding.

Once the examining attorney has issued an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") the examining attorney must abandon the application for incomplete response, using the "Abandoned Due to Incomplete Response" action, if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned for incomplete response and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration.


Granting additional time to complete a response under 37 C.F.R. §2.65(a)(2)  does not stay or extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b);  37 C.F.R. §2.142(a). See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.


TMEP 715.03(a)(ii)(D)    Outstanding Refusals and/or Requirements Must Be Continued, Time for Appeal Has Expired, and No Notice of Appeal Has Been Filed – Abandon for Incomplete Response

If (1) the examining attorney is not persuaded by the request for reconsideration, (2) the applicant's response does not meet the criteria in 37 C.F.R. §2.65(a)(2)  for granting additional time to complete the response, (3)  there is no time remaining in the six-month response period, and (4)  no notice of appeal has been filed, the examining attorney must hold the application abandoned due to incomplete response. The examining attorney must deny the request for reconsideration by issuing an "Abandoned Due to Incomplete Response" action. See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.


If the examining attorney denies the request for reconsideration and holds the application abandoned for incomplete response, the applicant may file a petition to the Director under 37 C.F.R. §2.146  to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion or, in rare cases, where a petitioner can show that it has substantially complied with the requirements of the statute or rules. In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir. USPTO 2013); In re GTE Educ. Servs., 34 USPQ2d 1478, 1479–80 (Comm'r Pats. 1994); In re Legendary Inc., 26 USPQ2d 1478, 1479 (Comm’r Pats. 1992); TMEP §1713.01. The unintentional delay standard of 37 C.F.R. §2.66  does not apply in this situation. See TMEP §§1713.02, 1714.01(f)(ii)(A).

715.03(a)(ii)(E)    Responses After Final Refusal Signed by Unauthorized Persons, Unsigned Responses, TEAS Responses Consisting Only of a Signature, and TEAS Responses Missing Significant Data or Attachments

If an examining attorney receives a response to a final action signed by an unauthorized person, an unsigned response to a final action, a TEAS response to a final action that consists only of a signature, or a TEAS response to a final action missing significant data or attachments, the examining attorney should not hold the application abandoned for failure to respond completely. The examining attorney must issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") that (1) includes an appropriate explanation of the problem with the response, (2) gives the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to submit a complete response, and (3) omits the six-month response clause. See TMEP § 705.08. Granting additional time to complete a response under 37 C.F.R. §2.65(a)(2)  does not extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b);  37 C.F.R. §2.142(a).


Once an examining attorney has issued an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter"), the examining attorney must abandon the application for incomplete response, using the "Abandoned Due to Incomplete Response" action, if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned for incomplete response and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration. See TMEP §718.03(a).


TMEP 715.03(b)    Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed

If the request for reconsideration includes an amendment that presents a new issue, whether related to the final refusal or not, the examining attorney must issue a nonfinal action with a six-month response clause that addresses the new issue and maintains the final refusal.  For example, if the applicant’s request for reconsideration contains a §2(f) claim of acquired distinctiveness in response to a final §2(e)(1) refusal, and the claim fails to place the application in condition for approval, the examining attorney must issue a nonfinal action.   See TMEP §714.05(a)(i).  However, if the applicant withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or §2(f) claim of acquired distinctiveness submitted in response to a §2(e)(1) refusal or a disclaimer submitted in response to a requirement), this does not raise a new issue. See TMEP §§715.03(a)(ii)(A), 715.04(a).


Whenever the examining attorney issues a new nonfinalaction after review of an applicant’s request for reconsideration, the Office action should explain that the applicant must respond to all requirements or refusals within six months of the issuance date of the action, but that the applicant should not file an appeal to the Board because an appeal would be premature under 15 U.S.C. §1070  and 37 C.F.R. §2.141(a).  If the applicant’s response to the new nonfinal action does not resolve all outstanding requirements or refusals and put the application in condition for publication or registration, the examining attorney must issue an "Examiner’s Subsequent Final Refusal" with a six-month response clause.  This provides the applicant the opportunity to file an appeal. See TMEP §715.04(b) if a notice of appeal has been filed.


Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new final or nonfinal action.   In re GTE Educ. Servs.,34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for the same reason as original specimens).

If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with a six-month response clause.  This provides applicant with the opportunity to respond before filing an appeal.  Any response to the subsequent final refusal will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.03–715.03(b).


Example:  If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an "Examiner’s Subsequent Final Refusal."  However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement.   See TMEP §714.05(d).

Example:  The examining attorney must issue an "Examiner’s Subsequent Final Refusal" if the applicant asserts unity of control ( see TMEP §1201.07 ) in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established.   See TMEP §714.05(d).

Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a subsequent final or nonfinal action.  Generally, if the same refusal or requirement was made before, the examining attorney does not have to issue a subsequent final or nonfinal action.

See TMEP §§714.05–714.05(f) for further information about delineating new issues that require issuance of a nonfinal action.


Sometimes action on an application is suspended after a final refusal has issued. If the grounds for refusal remain operative after the application is removed from suspension and no new issues have been raised, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with a six-month response clause.   See TMEP §716.06.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO.   See TMEP §1904.03(a).


TMEP 715.03(c)    Time for Appeal Runs from Issuance Date of Final Action  

Filing a request for reconsideration does not stay or extend the time for responding to a final refusal.   See 15 U.S.C. §1062(b); 37 C.F.R. §§2.63(b)(3), 2.142(a).  If the examining attorney denies an applicant’s request for reconsideration, the deadline for filing a notice of appeal to the Board (or petition to the Director if permitted by 37 C.F.R. §2.63(b)(2) ) runs from the issuance date of the final action.  If this deadline has expired and the applicant has not filed a timely appeal or petition, the application will be abandoned due to an incomplete response.  15 U.S.C. §1062(b);  37 C.F.R. §§2.63(b)(4), 2.65(a).  The applicant may not file a petition to revive under 37 C.F.R. §2.66, based on unintentional delay.   See TMEP §1714.01(f)(ii)(A).  The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146  to reverse the examining attorney’s holding of abandonment.  However, the Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion.   See TMEP §1713.01.


TMEP 715.04    Request for Reconsideration Filed in Conjunction with Notice of Appeal  

The Board has jurisdiction over an application upon the filing of a notice of appeal.  In response to a request from an applicant, the Board may remand an application to the examining attorney for consideration of specific facts or issues.  37 C.F.R. §2.142(d).  See TBMP §1209 regarding remand during an ex parte appeal, TBMP §515 regarding remand to the examining attorney during an inter partes proceeding, and TMEP §1504.05 regarding requests for remand.

If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration.   TBMP §1204.   See TBMP Chapter 1200 and TMEP §§1501–1501.07 for further information about ex parte appeals.

If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration.  The examining attorney may issue an examiner’s amendment if he/she determines that an examiner's amendment ( see TMEP §§707–707.03) will immediately put the application in condition for publication or registration. In these situations, the appeal is moot and no further action is needed after approving the application for publication or registration.  If there are remaining unresolved refusals or requirements, the request for reconsideration must be denied. See TMEP §715.04(a). In some circumstances, the examining attorney may also issue an examiner’s amendment to reduce the issues on appeal. See TMEP §715.02 regarding action after issuance of a final action.


TMEP 715.04(a)      Examining Attorney's Action When No New Issue Is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed

If the request for reconsideration does not overcome or resolve the issues on appeal, and no new issue, or no new evidence significantly different from that previously submitted, is presented therein, the examining attorney must issue a "Request for Reconsideration Denied – Return to TTAB" (or, if appropriate, "SU ─ Request for Reconsideration Denied ─ Return to TTAB") action that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied and explains why it does not overcome all refusals or satisfy all requirements; (3) identifies the final refusal(s) and/or requirements that are maintained and any that are satisfied or withdrawn; and (4) advises the applicant that the Board will be notified to resume the appeal.  An Office action denying reconsideration of the final action must not include a six-month response clause.

If, in a request for reconsideration that does not overcome or resolve the issues on appeal, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.


TMEP 715.04(b)      Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed

If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new nonfinal Office action with a six-month response clause that addresses the new issue and maintains the refusals or requirements previously made final.  For example, if the applicant’s request for reconsideration contains a §2(f) claim of acquired distinctiveness in response to a final §2(e)(1) refusal, and the claim fails to place the application in condition for approval, a nonfinal action may be appropriate. See TMEP §714.05(a)(i).

Whenever the examining attorney issues a new nonfinal action after remand of an application by the Board, the Office action should explain that the applicant must respond to all refusals and/or requirements within six months of the issuance date of the action, but should not file another appeal to the Board.  If the applicant’s response to the new nonfinal action does not resolve all outstanding refusals and/or requirements and put the application in condition for publication or registration on the Supplemental Register, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," with the six-month response clause omitted from the action.  The subsequent final action should also notify the applicant that the appeal will be resumed. When proceedings with respect to the appeal are resumed, the Board will take further appropriate action with regard to any additional ground of refusal. See Trademark Trial and Appeal Board Manual of Procedure(TBMP) §1209.01.


If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted by the applicant, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," that omits the six-month response clause, specifies which issues are withdrawn and/or which amendments are accepted, and addresses the new evidence.  The examining attorney may also introduce additional evidence directed to the new evidence submitted by the applicant. TBMP §1207.04; TMEP §715.03. For example, if an applicant files a consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an "Examiner’s Subsequent Final Refusal" that discusses applicant’s consent agreement.  However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement.   See TMEP §714.05(d).  Further, because a subsequent final action issued after the filing of an appeal does not give the applicant an automatic six-month response period, the subsequent final action must also inform the applicant that the Board will be notified to resume the appeal. When proceedings with respect to the appeal are resumed, any further request for reconsideration of the application must be made via a request for remand, for which good cause must be shown. See TBMP §§1204, 1207.02.


Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action.   In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for the same reason as the original specimens).


Submission of new arguments in response to the final refusal or requirement does not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action.  

See TMEP §§714.05–714.05(f) for further information about delineating new issues that require issuance of a nonfinal action.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO.   See TMEP §1904.03(a).




NEED HELP to Respond to a Final Refusal?  

Contact Not Just Patents for these and other issues when your application has been refused or your maintenance filing has been refused:

  • Answers to case-specific questions about an application or registration;
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  • Advising on trademark examination issues, such as the acceptability of specimens, whether or not a mark is being “used in commerce”, classification of goods and services, disagreement between a specimen and drawing and what is a material change, amending filing basis, amending to make an acquired distinctiveness claim, amending to add a disclaimer, and amending to Supplemental Register.


Call us at 1-651-500-7590 or email WP@NJP.legal.



Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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