1604.16    Response to Office Action

Deadline.  Under 37 C.F.R. §2.163(b), the owner must file a response to a refusal within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) of the Act, whichever is later.  If no response is received within that time, the registration will be cancelled, unless time remains in the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3).   If time remains in the grace period, the owner may file a complete new affidavit or declaration, with a new fee.

The owner may file a petition to the Director under 37 C.F.R. §2.146(a)(5)  and §2.148  to waive 37 C.F.R. §2.163(b)  so that a late response to an Office action may be accepted.  However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. See TMEP §1708.  The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.163(b).  See TMEP §1712.02(b). The "unintentional delay" standard of 37 C.F.R. §2.66  does not apply to the failure to respond to an Office action issued in connection with a §8 affidavit or declaration.   TMEP §1714.01(f)(ii)(D).

TEAS Response Required. The owner must file a response using the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at https://teas.uspto.gov, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); TMEP §301.01. See TMEP §301.02 for the limited exceptions for paper submissions.

Signature.  The response must be properly signed in accordance with the guidelines in TMEP §611.03(b). See TMEP §§611.06-611.06(h) for persons with legal authority to bind various types of juristic entities and §§602-602.03(c) regarding persons qualified to represent others before the USPTO in trademark cases.

When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must follow the procedures in TMEP §§611.05-611.05(c).

Correction of Deficiencies.  See TMEP §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.