TMEP 1613.16: Response to Office Action

This is the October 2015 Edition of the TMEP

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1613.16    Response to Office Action

Deadline. Under 37 C.F.R. §7.39(a), the holder must file a response to a refusal within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §71(a) of the Act, whichever is later. If no response is received within that time, the registration will be cancelled, unless time remains in the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3). If time remains in the grace period, the holder may file a complete new affidavit or declaration, with a new fee.

The holder 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. §7.39(a) so that a late response to an Office action may be accepted. 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. §7.39(a). See TMEP §1712.02(b). The “unintentional delay” standard of 37 C.F.R. §2.66 does not apply to the failure to respond to an Office action issued in connection with a §71 affidavit or declaration. TMEP §1714.01(f)(ii)(D).

Signature. The response must be signed by a qualified practitioner, or by the holder of the registration or someone with legal authority to bind the holder. If the holder is represented by a qualified practitioner, the practitioner must sign. 37 C.F.R. §§2.193(e)(2)(i), 7.39(a), and 11.18(a). If the holder is not represented by a qualified practitioner, the individual holder or someone with legal authority to bind a juristic holder must sign. 37 C.F.R. §§7.39(a) and 11.14(e); TMEP §611.03(b). In the case of joint holders 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. See TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.