Nonfinal vs. Final Office Action
A nonfinal office action identifies a particular issue in a federal trademark application for the first time. A final office action brings up a problem for the last time.
Whether final or nonfinal, trademark office actions are official documents sent by the United States Patent and Trademark Office (USPTO) that request application changes or new information before federal registration can be issued. These can be small hiccups, like not putting the full name of the trademark owner, or big issues, like the mark itself creating a likelihood of confusion with another brand.
In this article, we'll cover:
Nonfinal Trademark Office Actions
A nonfinal trademark office action is the first correspondence you get about a specific problem with your application. Sometimes called a priority action, this is an issue that requires verification or changes by the applicant and usually can’t be confirmed officially just over the phone or through email.
Why a nonfinal office action is sent depends entirely on the application itself. There are dozens of reasons, ranging from simple to complex.
For example, if your application doesn’t include a valid specimen (an example of your mark in use), you’ll likely be sent an office action and given three months to submit a new specimen before the trademark application is abandoned. Or if the examining attorney can’t clearly connect your product to the goods and services you’ve chosen, they might request clarification for how your trademark relates to your selected classes. Regardless of if you need to do something more or just supply additional information, a nonfinal office action is the first “ping” on your application that needs to be addressed before it can be approved or denied.
Pro-tip: You can request a three-month extension, giving you a total of six months maximum to respond to the office action. This costs $125.
What is the process of receiving a nonfinal office action?
Nonfinal office actions are sent by the examining attorney who is reviewing your application. The action will come to your or your attorney, if you have one, typically via email. It will include a full explanation of the refusals/requests. The examining attorney will likely provide evidence to support their refusals and address anything that came up in the initial conversation, if applicable.
After you receive the office action, you can decide how to move forward—usually this involves talking to an attorney to get help or simply correcting whatever issue the USPTO has brought up on your own.
Remember, office actions raise legal problems preventing your application from being approved—so even if you disagree with what the agent says, you can’t just ignore it.
What you can do is:
- Submit new information to clarify anything that might have been misunderstood
- Change incorrect or misleading information
- Add new content that was previously missing (as applicable)
- Hire a trademark attorney to help you fight an office action’s requested changes
Fighting an office action can be a difficult and lengthy battle, so it’s best to be sure you’re willing to expend the time and expense before you start. If you work with a trademark attorney from the beginning, it may lower your chances of even getting an office action in the first place.
Our Trademark Service has experts ready to help you prep, file, and defend your federal registration application!
There are four things that can happen after you submit your response to an office action:
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- Your response is accepted, and your application will continue on towards registration.
- Your response fixes the particular issues raised but creates new problems, and a new nonfinal office action will be sent.
- Your response doesn’t fix the original issues, and you’ll be sent a final office action.
- Your response fixes some original issues, but not all, and you’re sent a final office action that addresses only the unresolved refusals.
Final Trademark Office Actions
A final office action, also called a final refusal or final action, is your last chance to correct an issue with your application. These are only sent if you have already received and responded to a nonfinal office action, and that specific issue isn’t fixed yet.
Just like a nonfinal office action, you’ll have three months from the letter’s issue date to respond, with the option to pay for an additional three month extension. Your response to a final office action is called a “Request for Reconsideration.”
- If your response fixes the issue: your application will continue towards registration. While this doesn’t guarantee you’ll be approved by the USPTO, it makes it much more likely because you’ve already cleaned up any issue they spotted with your application.
- If your response creates a new issue: you’ll be sent a new nonfinal office action, and the process starts over again.
- If your response doesn’t fix the issue: you’ll be sent a document titled “Request for Reconsideration After Final Action Denied,” which will explain the reasons for denial. The trademark application will be abandoned, which means it’ll no longer be considered for federal registration. In many cases, even if your application is rejected you’ll still have common law trademark rights. But in some cases, such as if your trademark causes likelihood of confusion with another, you may end up needing to use a new mark entirely.
In order to continue with federal registration after a final refusal, you only have two options:
- Re-submit an application to the USPTO that accounts for the first application’s refusals
- File an appeal with the Trademark Trial and Appeal Board (TTAB)
Learn more about how to respond to a trademark office action!
Frequently Asked Questions
On the surface, there is no fee associated with an office action except for the optional $125 response-time extension fee. However, depending on what the actual issue with your application is, there might be fees such as those required to hire a trademark attorney to argue against an agent’s decision, a new application fee if the office action results in the application’s termination, or fees associated with fixing the issues presented by the office action.
It can take up to 12 months to receive a trademark office action from the UPSTO. Additionally, it generally takes two to three months to hear back after you respond to an office action.
The exact turnaround time will be stated in your office action letter. Typically, you have three months to respond, and you’re allowed to request an extension for an additional three months.
Your trademark application will be abandoned if you miss your deadline, meaning that your application won’t be able to move forward towards registration. You’ll also lose your application fee, a hefty $250 minimum.
If this happens, you can submit a Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action form. You’ll need to do this within two months of receiving your Notice of Abandonment by the USPTO or six months from the abandonment date if you do not receive this letter. The petition fee is $150 if filed electronically or $250 if filed by paper.
Yes, it can be hard to win against the Trademark Trial and Appeal Board.
If you believe a denial of your Request for Reconsideration was unfairly issued, you can appeal your case to the Board and try to get the application back in the registration queue. It can be hard to win because the TTAB uses the same legal statutes and regulations as the examining attorneys.
This means that if you’ve already gotten to a point of final refusal with the USTPO agents, it’s unlikely that the TTAB will have a new answer to your application. However, it is not impossible, especially with the help of a trademark attorney.
