TMEP 718.03: Incomplete Response

This is the October 2015 Edition of the TMEP

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718.03    Incomplete Response

37 C.F.R. §2.65(a)

An application will be abandoned if an applicant fails to respond to an Office action, or to respond completely, within six months from the date of issuance. A timely petition to the Director pursuant to §§ 2.63(a) and (b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a response that avoids abandonment. See § 2.63(b)(4).

  • (1) If all refusals and/or requirements are expressly limited to certain goods and/or services, the application will be abandoned only as to those goods and/or services.
  • (2) When a timely response by the applicant is a bona fide attempt to advance the examination of the application and is a substantially complete response to the examining attorney’s action, but consideration of some matter or compliance with a requirement has been omitted, the examining attorney may grant the applicant thirty days, or to the end of the response period set forth in the action to which the substantially complete response was submitted, whichever is longer, to explain and supply the omission before the examining attorney considers the question of abandonment.

Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a), an applicant must respond completely to each issue raised in the examining attorney’s Office action to avoid abandonment. Generally, a response is incomplete if it: (1) does not address one or more of the requirements or refusals made in the Office action; (2) is unsigned; (3) is signed by an unauthorized person; or (4) is a response to a final action that does not overcome all refusals or satisfy all requirements, when the response period has expired, and the applicant has not timely filed a notice of appeal. See TMEP §§715.03(a)─715.03(a)(ii)(E).

Exception - TEAS Responses Consisting Only of a Signature or Missing Significant Data or Attachments. Occasionally, the USPTO receives a response to an Office action filed through TEAS that consists only of a signature or is missing significant data or attachments. This is generally due to user error. If an examining attorney receives a TEAS response to a nonfinal action that consists only of a signature or is missing significant data or attachments, the examining attorney should not issue a notice of incomplete response granting the applicant additional time to complete the response. Instead, the examining attorney must issue a final action, and include sufficient evidence and arguments for all refusals and requirements in preparation for a possible appeal, if the application is in condition for final action. If the application is not in condition for final action (e.g., because a prior pending application has matured into a registration), the examining attorney should issue another nonfinal action, with a six-month response clause, explaining why the response was incomplete, continuing all outstanding refusals and requirements, and addressing any new issues. See TMEP §715.03(a)(ii)(E) regarding TEAS responses to final actions that consist only of a signature or are missing significant data or attachments.

Unsigned Responses. If a response is unsigned, the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney must issue a notice of incomplete response, granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response pursuant to 37 C.F.R. §2.65(a)(2). See TMEP §§715.03(a)(ii)(E), 718.03(b). The applicant must submit a properly signed copy of the response, or, if all issues raised are proper subject matter for an examiner’s amendment, the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s previously recognized qualified practitioner may authorize the examining attorney to enter an examiner’s amendment. A new qualified practitioner who has not yet appeared may not authorize an examiner’s amendment, because a telephone call from a qualified practitioner does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(b). See TMEP §604.01. If all issues raised are not proper subject matter for an examiner’s amendment, the applicant may not ratify the unsigned response through an examiner’s amendment. See TMEP §712.02. If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a).

Responses Signed by Unauthorized Persons. If a response is signed by an unauthorized party (e.g., a foreign attorney who is not a member in good standing of the bar of the highest court of a state in the United States, which includes the District of Columbia and any Commonwealth or territory of the United States) or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney must issue a notice of incomplete response, granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response pursuant to 37 C.F.R. §2.65(a)(2). See TMEP §§715.03(a)(ii)(E), 718.03(b). The applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant (see TMEP §§611.06, 712.01), or by a qualified practitioner (see TMEP §§602.602.03(e)). 37 C.F.R. §2.62(b). If a response was signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment. See TMEP §§611.05–611.05(b) and 712.03 for further information. If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a) regarding holdings of abandonment for failure to respond completely.

Properly Signed but Incomplete Responses to Nonfinal Actions. When an applicant files an incomplete response to a nonfinal action (i.e., does not address one or more of the requirements or refusals made in the Office action), the examining attorney should not hold the application abandoned. Instead, the examining attorney should generally issue a final action, if the application is in condition for final action. In limited circumstances, the examining attorney has discretion to issue a notice of incomplete response granting the applicant additional time to complete the response if the response meets the requirements of 37 C.F.R. §2.65(a)(2). See TMEP §718.03(b). If the application is not in condition for final action, and the response does not meet the requirements of 37 C.F.R. §2.65(a)(2), the examining attorney should issue another nonfinal action, explaining why the response was incomplete, and continuing all outstanding refusals and requirements.

A written disagreement with the examining attorney’s refusal or requirement may be a complete response to a nonfinal action with respect to that refusal or requirement.

See TMEP §718.02(a) for more information about processing an incomplete response to a partial nonfinal refusal or requirement.

Properly Signed but Incomplete Responses to Final Actions. If the applicant files a properly signed but incomplete response that does not meet the criteria in 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, there is no time remaining in the six-month response period, and no notice of appeal has been filed, the examining attorney must hold the application abandoned due to incomplete response. See TMEP §§715.03(a)(ii)(D), 718.03(a).

See TMEP § 718.02(a) for more information about processing an incomplete response to a partial final refusal or requirement.

Non-Responsive Communications. An inquiry, a request to extend the response period, or a communication on a matter unrelated to the preceding Office action should be treated as a non-responsive communication, not as an incomplete response. See TMEP §719 for further information.

Failure to Respond to Notice of Incomplete Response. If the examining attorney issues a notice of incomplete response, and the applicant fails to respond or submits an unsatisfactory response to the notice within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must issue an "Abandoned Due to Incomplete Response" action. See TMEP §§715.03(a)(ii)(D), 715.03(a)(ii)(E), 718.03(b).

See TMEP §717.02 regarding the procedure for handling an applicant’s claim that the applicant did not receive the Office action.