T.M.E.P. § 711.02
Supplemental Office Action Resetting Response Period

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§711.01) | Next Section (§712)

711.02 Supplemental Office Action Resetting Response Period

Sometimes the examining attorney must issue a supplemental Office action that resets the period for response. If the examining attorney discovers after mailing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response. See TMEP §706. The examining attorney must also issue a supplemental Office action if a new issue arises after the mailing date of the Office action. For example, a new issue might arise during examination of an amendment to allege use. See TMEP §1104.09(h).

If the examining attorney issues a supplemental Office action, a new six-month response period will begin running from the mailing date of the supplemental action. 15 U.S.C. 1062(b). In a supplemental Office action, the examining attorney should indicate that the action is supplemental to the previous action, and should incorporate all outstanding issues by reference to the previous action. The examining attorney should also include the standard six-month response clause.

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

See TMEP §§717 et seq. regarding remailing of Office actions.