T.M.E.P. § 718.02
Failure by Applicant to Take Required Action During Statutory 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.
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718.02 Failure by Applicant to Take Required Action During Statutory Period
15 U.S.C. 1062(b). If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.
Under 15 U.S.C. 1062(b) and 37 C.F.R. 2.65(a), an application becomes abandoned if the applicant fails to respond, or fails to respond completely, within the six-month statutory response period. See TMEP §§718.03 et seq. regarding incomplete responses.
The examining attorney has no authority to accept a late response. If an applicant files a late response, the examining attorney should immediately write to the applicant or applicant's attorney, stating that the response was untimely; that the application is abandoned; and that the applicant may file a petition to revive under 37 C.F.R. 2.66 if the failure to respond on time was unintentional. See TMEP §§1714 et seq. regarding petitions to revive.
See TMEP §718.02(a) regarding partial abandonment.
718.02(a) Partial Abandonment
General Rule. Effective November 2, 2003, Trademark Rule 2.65(a), 37 C.F.R. 2.65(a), provides that if a refusal or requirement is expressly limited to certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services. The rule applies only to Office actions issued on or after November 2, 2003. See notice at 68 Fed. Reg. 55748 (Sept. 26, 2003).
Partial abandonment applies only where the Office action expressly states that a refusal or requirement is limited to only certain goods/services or certain class(es). If the Office action contains any requirement or refusal that applies to all the goods/services, and the applicant fails to respond, the entire application will be abandoned.
Incomplete Response to Partial Refusal. Partial abandonment may also occur when an applicant fails to file a complete response to a final refusal or final requirement that is expressly limited to only certain goods/services or certain class(es). If an applicant files an incomplete response to a nonfinal action that is limited to only certain goods/services or certain class(es), the examining attorney should generally issue a final action, making all outstanding requirements and refusals final. See TMEP §718.03 et seq. regarding incomplete responses. When an examining attorney holds an application abandoned for failure to file a complete response, the applicant's recourse is to file a petition the Director to reverse the holding. TMEP §1713.
Failure to Respond to Partial Refusal or Requirement. When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods/services/class(es), the examining attorney should issue an examiner's amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained. The examiner's amendment should clearly set forth the changes that will be made to the identification of goods/services in the application. No prior authorization from the applicant or the applicant's attorney is needed to issue an examiner's amendment in this situation. If the failure to respond to the partial refusal or requirement was unintentional, the applicant may file a petition to revive the deleted goods/services/classes under 37 C.F.R. 2.66, within two months of the mailing date of the examiner's amendment. See TMEP §§1714 et seq. regarding petitions to revive.
Use of Headings in Office Actions. When issuing a partial refusal or requirement, the examining attorney is encouraged to use the heading "Partial Refusal" or "Partial Requirement," so it is clear in the record that the refusal or requirement applies only to certain goods/services or certain class(es).
Requirements for Amendment of Identification of Goods/Services. See TMEP §1402.13 regarding an examining attorney's requirement for amendment of an identification of goods/services that includes some terminology that is indefinite and some terminology that is acceptable, and processing of applications in which an applicant fails to respond to such a requirement.