TMEP 715.01: Proper Response to Final Action

This is the October 2015 Edition of the TMEP

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715.01    Proper Response to Final Action

An applicant must respond to a final action within six months of the issuance date. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a).

In general, the only proper response to a final action is a notice of appeal to the Board, a petition to the Director if permitted under 37 C.F.R. §2.63(b)(2), or compliance with an outstanding requirement. 37 C.F.R. §2.63(b)(1)-(2). For an application filed under Section 1(b) in which the applicant has filed a timely “insurance” extension request (i.e., in conjunction with the statement of use or within the same six-month period that the statement of use is filed; see TMEP §§1108.03–1108.03(a), 1109.16(c)), when the six-month response period to a final Office action will expire before the expiration of the extension period, the applicant may respond to the final action by requesting suspension until the end of the extension period in order to overcome any substantive refusals and/or comply with any outstanding requirements maintained in the action. See TMEP §§716.02(f), 716.06, 1109.16(d).

After a final refusal to register on the Principal Register, an amendment requesting registration on the Supplemental Register or registration on the Principal Register under §2(f) of the Trademark Act may be a proper response in some circumstances. See TMEP §§714.05(a)(i), 816.04, 1212.02(h).