1714.01(a)(ii) Response to Final Office Action
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s final Office action are the same as listed in TMEP §1714.01(a)(i). See 37 C.F.R. §2.66(b).
However, when a final action has issued, the petition must include a response, as defined in 37 C.F.R. §2.63(b)(1)-(2), unless the applicant alleges that it did not receive the final Office action. See 37 C.F.R. §2.66(b)(3). Specifically, an applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board ( see TMEP §§1501–1501.07); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2); see TMEP §715.01. In some cases, an amendment requesting registration on the Supplemental Register or registration under 15 U.S.C. §1052(f) may also be an appropriate response to a final refusal of registration on the Principal Register. See TMEP §714.05(a)(i), 816.04, TMEP §1212.02(h)
If the petition states that applicant did not receive the final action, and the petition is granted, the USPTO will issue a new final action and provide the applicant with a new response period. If all issues previously raised remain the same, the USPTO will send a notice to the applicant directing the applicant to view the previously issued final action on the TSDR portal on the USPTO website at http://tsdr.uspto.gov/, and provide the applicant with a new six-month period in which to file a response.
If the applicant received the Office action, and no response was filed within the statutory response period, a late notice of appeal may be submitted with the petition. 15 U.S.C. §1062(b)(2). However, if the applicant previously filed timely a request for reconsideration or a response to the Office action that does not overcome all outstanding refusals and satisfy all outstanding requirements, a late appeal will not be accepted on petition. That is because the filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. § 2.63(b)(3); TMEP §715.03.
If the petition does not include a response to the final action or claim that the final action was not received, the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting the required response (e.g., a notice of appeal) or claim of non-receipt. If the applicant does not submit a proper response or claim of non-receipt within the time allowed, the petition will be denied.
See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.