TMEP 1606.12: Response to Office Action

This is the October 2015 Edition of the TMEP

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1606.12    Response to Office Action

Deadline. If the renewal application is not acceptable, the USPTO will notify the renewal applicant of the reason(s) for refusal. 15 U.S.C. §1059(b); 37 C.F.R. §2.184(a). The registrant must file a response to a refusal of renewal within six months of the issuance date of the Post Registration Office action, or before the expiration date of the registration, whichever is later. If no response is filed within this time period, the registration will expire, unless time remains in the grace period under §9(a) of the Act, 15 U.S.C. §1059(a). If time remains in the grace period, the registrant may file a complete new renewal application, with a new fee. 37 C.F.R. §2.184(b)(1).

The registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(5) and 2.148 to waive 37 C.F.R. §2.184(b)(1) and accept a late response to an Office action. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. See TMEP §1708. The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.184(b). See TMEP §1712.02(b). The “unintentional delay” standard of 37 C.F.R. §2.66 does not apply to a registrant’s failure to respond to an Office action issued in connection with a renewal application. TMEP §1714.01(f)(ii)(D).

Signature. The response must be signed by a qualified practitioner, or by the registrant or someone with legal authority to bind the registrant. If the registrant is represented by a qualified practitioner, the practitioner must sign. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a). If the registrant is not represented by a qualified practitioner, the individual owner or someone with legal authority to bind a juristic owner must sign. 37 C.F.R. §§2.184(b)(2), 11.14(e); TMEP §611.03(b). In the case of joint registrants who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §2.193(e)(2)(ii). See TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq. regarding persons who are qualified to represent others before the USPTO in trademark cases.

When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must treat the response as incomplete and follow the procedures in TMEP §§611.05 et seq.

Correction of Deficiencies. The renewal applicant may correct deficiencies, if the requirements of 37 C.F.R. §2.185 are met. See TMEP §§1606.13 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.