TMEP 806.02(d)(i): Abandonment for Failure to Respond to an Office Action

October 2017 Edition of the TMEP

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806.02(d)(i)    Abandonment for Failure to Respond to an Office Action

When an applicant fails to respond to an Office action in which a refusal or requirement was specifically limited to particular goods/services/classes, the examining attorney will abandon the application in part as to the particular goods/services/classes to which the refusal or requirement is limited. To the extent those goods/services/classes are the only goods/services/classes supported by one basis of multiple filing bases, the filing basis corresponding to such goods/services/classes will also be deleted from the application.

Example: An application includes "pants" (based on §1(a)) in Class 25 and "toys" (based on §1(b)) in Class 28. The examining attorney issues an Office action that clearly and explicitly limits a refusal or requirement to Class 28 and includes a partial-abandonment advisory, if otherwise appropriate. If the applicant does not respond, the examining attorney will issue an examiner’s amendment deleting (abandoning) Class 28 and the §1(b) basis. The application will be approved for publication with a basis of §1(a). If no opposition is filed, the application will proceed to issuance of a registration of the mark for "pants."

Example: An application includes "pants" (based on §1(a)) and "shoes" (based on §1(b)) in Class 25. The examining attorney issues an Office action that clearly and explicitly limits a refusal or requirement to the "pants" in Class 25 and includes a partial-abandonment advisory, if otherwise appropriate. If the applicant does not respond, the examining attorney will issue an examiner’s amendment deleting (abandoning) "pants" and the §1(a) basis. The application will be approved for publication with a basis of §1(b). If no opposition is filed, a notice of allowance for "shoes" will be issued.

See TMEP §718.02(a) regarding failure to respond to a partial refusal or requirement.

However, if the different bases apply to all goods/services within a class or to all classes, a partial-abandonment advisory must not be given. The failure to respond will result in abandonment of the entire application.

Example: An application includes "shoes and shirts" (based on §44(e) and §1(b)) in Class 25, but the foreign registration does not cover "shoes." When issuing a refusal of the §44(e) basis for "shoes," the examining attorney must not include a partial-abandonment advisory. The applicant must submit an amendment specifically deleting the §44(e) basis if it wishes to go forward under the §1(b) basis alone.

Example: An application includes "shoes and shirts" in Class 25 and "dolls" in Class 28. Both classes are based on §44(e) and §1(a). If a refusal must be issued regarding the specimen of use for Class 28, the examining attorney must not include a partial-abandonment advisory. The applicant must submit an amendment specifically deleting the §1(a) basis as to Class 28 if it wishes to go forward under the §44(e) basis alone.

If the failure to respond to the Office action was unintentional, the applicant may file a petition to revive. See TMEP §§1714–1714.01(g) regarding petitions to revive.