1716.04(b) Responding to the Initial Office Action
The registrant must respond to the initial Office action via TEAS within three months of the issue date, but, within that time period, may request a one-month extension of time to respond, which requires the payment of the fee set forth in 37 C.F.R. §2.6(a)(27). 37 C.F.R. §2.93(b)(1).
The response must contain documentary evidence of use supported by information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case of nonuse by establishing that the required use in commerce has been made on or in connection with the goods and/or services at issue and be properly signed. See 37 C.F.R. §§2.92(f)(2), 2.93(a), (b)(3). See TMEP §611.03(b) regarding signature of responses to Office actions and §1716.04(d) regarding submitting a response that deletes some or all of the goods and/or services at issue in the proceeding or surrenders the entire registration for cancellation.
When a timely response by the registrant is a bona fide attempt to advance the proceeding and is a substantially complete response to the Office action, but consideration of some matter or compliance with a requirement has been omitted, the registrant may be granted 30 days, or to the end of the time period for response set forth in the Office action to which the substantially complete response was submitted, whichever is longer, to resolve the issue. See 37 C.F.R. §2.93(b)(2). Granting the registrant additional time in such circumstances does not extend the time for filing an appeal to the Trademark Trial and Appeal Board (TTAB) or a petition to the Director.
If the registrant timely responds to the initial Office action in the expungement or reexamination proceeding, the USPTO will review the response to determine if use of the mark in commerce at the relevant time has been established for each of the goods and/or services at issue. If the USPTO finds, during the course of the proceeding, that the registrant has: (1) demonstrated relevant use of the mark in commerce sufficient to rebut the prima facie case, (2) demonstrated excusable nonuse in appropriate expungement cases, or (3) deleted goods and/or services, such that no goods and/or services remain at issue, the proceeding will be terminated, and the USPTO will issue a notice of termination under 37 C.F.R. §2.94. See TMEP §1716.04(e) regarding termination of expungement and reexamination proceedings.
If the registrant fails to timely respond to the initial Office action or timely submit a request for extension, the proceeding will terminate and the registration will be cancelled, in whole or in part, as appropriate. See TMEP §1716.04(f) regarding requesting reinstatement after cancellation for failure to respond to an Office action.
To ensure that registrants are aware of any correspondence or activity associated with any ex parte cancellation proceedings concerning their registered marks, registrants must monitor the status of their registrations in the USPTO’s electronic systems at least every three months after notice of the institution of an expungement or reexamination proceeding until the registrant receives a notice of termination under 37 C.F.R. §2.94. See 37 C.F.R. §2.23(d)(3).