TMEP 1904.02(h): Office Actions and Responses 

October 2017 Edition of the TMEP

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1904.02(h)    Office Actions and Responses 

The USPTO will send the first Office action in a §66(a) application to the IB.  The first Office action is known as a provisional refusal and must be reviewed by the IB.  If the provisional refusal meets the applicable requirements ( see TMEP §§1904.03 et seq.), the IB will process the refusal and send it to the holder (i.e., the §66(a) applicant).  The IB notifies the USPTO of the date on which it processed the refusal, and the USPTO updates the Trademark database with this information. A response to the Office action must be sent to the USPTO, not the IB, and is due in the USPTO within six months of the date on which the USPTO sent the action to the IB, notthe date on which the refusal was processed by the IB. 15 U.S.C. §1062(b)37 C.F.R. §2.62(a); TMEP §1904.03(c). Failure to respond to the Office action within the time provided will result in abandonment of the application. 15 U.S.C. §1062(b)37 C.F.R. §2.65(a). See TMEP §711 regarding the deadline for response to an Office action and TMEP §§718.02 and 718.03-718.03(a) regarding abandonment for failure to respond or incomplete response to an Office action.

A priority action or suspension notice may be issued as a first Office action in a §66(a) application. An examiner’s amendment or a combined examiner’s amendment/priority action ( see TMEP §§707 et seq., 708.05) may not be issued as a first Office action because the IB will not accept such amendments.  However, under certain circumstances, a no-call examiner’s amendment may be issued in a first Office action to remove certain parenthetical wording from an identification of goods/services if the application is otherwise in condition for approval for publication. See TMEP §1904.02(c) regarding opinion language of the International Bureau. In addition, examiner’s amendments and combined examiner’s amendments/priority actions may be issued as second and subsequent actions if authorized by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner").  See TMEP §§602 et seq. regarding persons who are authorized to represent applicants, registrants, and parties to proceedings before the USPTO.

The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO.  See TMEP §§609.01(a) and 1904.02(i) regarding correspondence in §66(a) applications.