T.M.E.P. § 713
Examination of Amendments and Responses to Office Actions

Executive summary:

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713 Examination of Amendments and Responses to Office Actions

37 C.F.R. 2.63. Reexamination.

(a) After response by the applicant, the application will be reexamined or reconsidered. If registration is again refused or any formal requirement[s] is repeated, but the examiner's action is not stated to be final, the applicant may respond again.

(b) After reexamination the applicant may respond by filing a timely petition to the Director for relief from a formal requirement if: (1) The requirement is repeated, but the examiner's action is not made final, and the subject matter of the requirement is appropriate for petition to the Director (see §2.146(b)); or (2) the examiner's action is made final and such action is limited to subject matter appropriate for petition to the Director. If the petition is denied, the applicant shall have until six months from the date of the Office action which repeated the requirement or made it final or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement. A formal requirement which is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board.

The examining attorney will consider the applicant's response and will determine whether the mark may be approved for publication or registration. The examining attorney must carefully consider all arguments, comments, and amendments made or proposed by the applicant.

If the applicant's response has put the application in condition for approval for publication for opposition or registration on the Supplemental Register, the examining attorney will forward the application for publication or registration, as appropriate.

If the applicant's response has not put the application in condition for publication or registration, the examining attorney will issue an Office action, or call or e-mail the applicant, depending on the circumstances. If the examining attorney's action is not stated to be final, the applicant may respond again, within six months of the mailing date. This procedure may be repeated until the examining attorney's action is made final or until the applicant fails to properly respond to the examining attorney's action. 15 U.S.C. 1062(b).

If the applicant's response does not present any new issues, and the applicant has had an opportunity to reply to all points raised by the examining attorney, the examining attorney's next action should be stated to be final. See TMEP §§714 et seq.

If the examining attorney has cited a prior-filed conflicting application, and the applicant responds by arguing that there is no likelihood of confusion, the examining attorney should suspend the application pending disposition of the conflicting application, if applicant's arguments are not persuasive. See TMEP §716.02(c) regarding suspension pending disposition of an earlier-filed conflicting application, TMEP §716.03 regarding the applicant's request to remove an application from suspension, and TMEP §§1208 et seq. regarding conflicting marks in pending applications.