718.03(b)   Granting Additional Time to Perfect Response

Under 37 C.F.R. §2.65(b), the examining attorney has discretion to give an applicant additional time to perfect the response if:

    • (1) the response was filed within the six-month period;
    • (2) the response was a bona fide attempt to advance the examination;
    • (3) the response was a substantially complete response to the examining attorney’s action; and
    • (4) consideration of some matter or compliance with some requirement was inadvertently omitted.

Generally, this discretion should be exercised in connection with a response to a final action. If an applicant makes a good faith, but incomplete, effort to comply in response to a nonfinal action, the examining attorney generally should issue a final action. See TMEP §§715.03-715.03(c) regarding processing requests for reconsideration after final action.

If the examining attorney decides that the response meets all four criteria, he or she should issue a notice of incomplete response explaining why the response is incomplete and granting the applicant 30 days, or to the end of the response period set forth in the action, whichever is longer, to perfect the response.  The examining attorney must not include a six-month response clause in the action.

If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. §2.65(b), the time for filing an appeal to the Trademark Trial and Appeal Board (or a petition to the Director under 37 C.F.R. §2.63(b)) is not extended.  The applicant must file a notice of appeal (or petition) within six months of the issuance date of the final action.  15 U.S.C. §1062(b); 37 C.F.R. §§2.64(b), 2.142(a).

If the applicant fails to complete the response within the time granted pursuant to 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §718.03(a).  In this situation, the applicant cannot file a petition to revive due to unintentional delay, pursuant to 37 C.F.R. §2.66.  The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment.  See TMEP §1713.02. The Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion.  See TMEP §1713.01.

If the application is abandoned for failure to file a complete response, but the applicant did not receive the action granting additional time to complete a response, or was unable to respond to the action due to some other extraordinary circumstance, the applicant may file a petition requesting that the Director exercise supervisory authority under 37 C.F.R. §2.146 and reverse the holding of abandonment.   See TMEP §1713.02.