TMEP 1714.01(a)(ii): Response to Final Office Action

This is the October 2015 Edition of the TMEP

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1714.01(a)(ii)    Response to Final Office Action

The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s final Office action are the same as listed in TMEP §1714.01(a)(i) above. See 37 C.F.R. §2.66(b). However, where a final action has issued, the petition must include a proper response, as defined in 37 C.F.R. §2.63(b)(1)-(2).

In general, the only proper response to a final action is a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07), a petition to the Director if permitted under 2.63(b)(2), or compliance with any requirement made by the examining attorney. 37 C.F.R. §2.63(b)(1)-(2). See TMEP §715.01. In some cases, after a final refusal of registration on the Principal Register, an amendment requesting registration on the Supplemental Register or registration under 15 U.S.C. §1052(f) may also be a proper response. See TMEP §§714.05(a)(i), 816.04, and 1212.02(h). A request for reconsideration is not a proper response to a final action, unless it is accompanied by a notice of appeal to the Board, or satisfies all outstanding requirements and overcomes all outstanding refusals. See TMEP §§715.03 and 1714.01(f)(ii)(A).

If a petition does not include a proper response to a final action or claim that the final action was not received, the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting the required response (e.g., a notice of appeal) or claim of non-receipt. If the applicant does not submit a proper response or claim of non-receipt within the time allowed, the petition will be denied.

If the petition states that applicant did not receive the final action, and the petition is granted, the USPTO will issue a new final action and provide the applicant with a new response period. If all issues previously raised remain the same, the USPTO will send a notice to the applicant directing the applicant to view the previously issued final action on the TSDR portal on the USPTO website at http://tsdr.uspto.gov/, and provide the applicant with a new six-month period in which to file a response.

If the applicant received the Office action, and no response was filed within the statutory response period, a late notice of appeal may be submitted with the petition.

Filing a request for reconsideration or incomplete response does not stay or extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3). See TMEP §§715.03(c) and 718.03(b). Therefore, if the applicant timely filed a request for reconsideration or a response to the Office action that does not overcome all outstanding refusals and satisfy all outstanding requirements, a late appeal will not be accepted on petition.

The unintentional delay standard of 37 C.F.R. §2.66 does not apply to applications that are abandoned due to an incomplete response to an examining attorney’s Office action. TMEP §§1713 and 1714.01(f)(ii).

See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.