Filing a Trademark Appeal Your Options Explained

A Step-by-Step Guide for New York Businesses Facing USPTO Trademark Refusals

After working hard to build a brand in New York, receiving a trademark refusal from the USPTO can feel like a punch to the gut. It’s confusing, stressful, and can throw your business plans off track. If you’re a small business owner in Albany, a startup in Buffalo, or an online seller based in Syracuse, that refusal might feel like a major setback. But the truth is, you have options. And most importantly, you don’t have to figure this out alone.

At Horn Wright, LLP, our trademark attorneys help New York business owners push back against trademark refusals every day. Our attorneys understand how important your brand is to your success. Whether you need help responding to an office action or want to challenge a final refusal, we’ll guide you step by step so you can focus on running your business.

Understand Why the USPTO Refused Your Trademark

Before you appeal anything, you need to understand what went wrong. Every refusal from the United States Patent and Trademark Office (USPTO) comes with an explanation, usually in the form of an “office action.” The reasons vary, but many rejections fall into a few broad categories:

• Your trademark looks or sounds too similar to an existing mark
• It describes the product too literally
• The USPTO found your documentation incomplete or unclear

If you filed your application from New York and used a regional brand name, like something tied to the Hudson Valley or Brooklyn, it might have run into conflicts with other local marks. That’s more frequent than you might expect. You’ll want to read the office action carefully. It gives you the roadmap for what to fix or what to fight.

Review the Office Action Type: Non-Final vs. Final

Not all refusals are the same. The USPTO sends out two types of office actions: non-final and final. If you’ve received a non-final action, you still have an open path to correct the issue. The examining attorney is essentially saying, “Here’s what we need from you.” You still have room to fix the problem.

A final office action, though, means you’ve already had a chance to respond. Now, the USPTO stands by its refusal unless you take further steps, either by appealing or submitting a request for reconsideration.

If you're running a vintage apparel brand in Rochester and receive a final refusal, it’s time to make a decision about whether to move forward or revise your strategy.

Respond Directly to a Non-Final Office Action

If the action is non-final, you can still respond directly through the USPTO. You get six months from the mailing date to submit your response. That’s a hard deadline. Miss it, and your application gets abandoned.

In your response, you’ll need to address every issue raised. This might mean:

• Clarifying your description of goods or services
• Arguing that your mark doesn’t actually conflict with another
• Adding disclaimers or correcting technical errors

Many New York businesses get tripped up by overly broad wording or poorly chosen trademark classes. If you’re a small bakery in Ithaca or a tech startup near Schenectady, narrowing your terms or explaining your mark’s uniqueness might resolve the issue.

If your arguments don’t work, or if the refusal stands firm, the USPTO will issue a final decision.

Decide Whether to Appeal a Final Refusal

Getting a final refusal means the next step involves more effort and time. But the first thing you should do is assess whether the trademark is worth pursuing.

Ask yourself:

• How central is this name or logo to your business identity?
• Are you already using it in commerce?
• Would rebranding create new costs or customer confusion?

If you're a growing brand in Queens with printed packaging, business cards, and an online presence tied to your trademark, rebranding might not be practical. Filing an appeal may protect the investment you've already made. If the name hasn't been used publicly, it might be smarter to pivot and choose a stronger mark.

The appeal process comes with time restrictions. If you don’t respond on time, you lose your right to challenge the decision.

File an Appeal with the Trademark Trial and Appeal Board (TTAB)

If you decide to appeal, you’ll file through the Trademark Trial and Appeal Board, or TTAB. This board operates inside the USPTO and handles trademark disputes and appeals.

You file your appeal online using the Electronic System for Trademark Trials and Appeals (ESTTA). This is where you:

• Submit a Notice of Appeal
• Upload supporting documents
• Pay the required filing fee

For businesses in Manhattan or Brooklyn, it’s common to seek legal help during this step. The TTAB has formal procedures, and every detail counts. Once your appeal is filed, the process moves to the next stage, which requires a written argument called a brief.

Explore the Ex Parte Appeal Process

Most appeals are ex parte, meaning there’s no opposing party. It’s just you presenting your case to the TTAB and arguing that the refusal was incorrect.

The appeal timeline looks like this:

1. File a Notice of Appeal via ESTTA
2. Submit your appeal brief within 60 days
3. Present legal arguments and evidence
4. Wait for the TTAB’s decision

Appeals can take several months. If you’re running a small business in the Bronx or Westchester County, plan for delays. A well-drafted brief can lead to a favorable outcome, so preparation is key.

Consider a Request for Reconsideration Instead

Not every final refusal needs a full appeal. You can also file a request for reconsideration with the examining attorney who issued the refusal.

This option may work if:

• You’ve found new supporting evidence
• You’ve adjusted your goods or services description
• The USPTO based the refusal on a misunderstanding

Let’s say your Buffalo-based catering company was denied due to confusion with another mark. If that other mark was recently canceled, you can provide proof of that and request the USPTO to re-review your application.

You can file a request for reconsideration before, or even during, your appeal. It gives you two possible paths to keep your mark alive.

Evaluate a Federal Court Challenge

If the TTAB affirms the refusal, you still have one last option: taking your case to federal court.

You can file your complaint in:

• The U.S. District Court for the Southern District of New York (Manhattan, Bronx, Westchester)
• Or the Eastern District (Brooklyn, Queens, Long Island)

This option is more expensive and complex. But in court, you can introduce new evidence that wasn’t allowed in your TTAB appeal. That makes a difference when your trademark rights are tied to major business operations.

Businesses near White Plains or Long Island that choose this path usually work with legal counsel familiar with trademark litigation. You’ll want clear legal strategy and courtroom experience to make the most of this final route.

Know the Deadlines and Filing Fees

Trademark deadlines are firm and enforced. Missing one can immediately shut down your application.

Here are the major ones to watch:

• 6 months to appeal a final refusal
• 60 days to submit your appeal brief
• Filing fees range from $225–$300 per class
• Additional costs for extensions or federal filings

Whether you’re in Yonkers or Poughkeepsie, stay organized. These dates don’t shift, and the USPTO won’t send reminders. For official details, always check the USPTO fee schedule directly.

Work with a New York Trademark Attorney

Trademark appeals can be technical. They require legal reasoning, a firm understanding of USPTO procedures, and careful documentation.

New York attorneys help by:

• Breaking down the refusal and explaining your options
• Crafting a persuasive response or appeal brief
• Monitoring deadlines and managing filings
• Representing you before the TTAB or in federal court

If you’re in Albany, the Finger Lakes, or anywhere in between, having legal help makes this process smoother and more strategic. Your brand deserves strong protection from the start.

If you’re ready to take action, you can reach out to our team directly to talk about your options.

You Don’t Have to Handle This Alone

Filing a trademark appeal in New York doesn’t have to feel overwhelming. You’ve already worked hard to build your brand. Protecting it is the next step. Whether you're selling handmade goods from Syracuse or launching a tech platform in Manhattan, your name matters. 

At Horn Wright, LLP, we guide New York businesses through each stage of the appeal process. From initial refusals to final arguments before the TTAB, we help you move forward with confidence.