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 listed in 37 C.F.R. §2.66(b).  The petition must include all of the following:

  • (1) The petition fee required by 37 C.F.R. §2.6;
  • (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional. The statement does not have to be verified; and
  • (3) A properly signed response to the Office action or a statement that the applicant did not receive the Office action or the notification that an Office action issued. Receipt is presumed in cases where the applicant filed an extension of time to respond under 37 C.F.R §2.62(a)(2)  (see TMEP §711.01).
  • (4) If the applicant asserts unintentional delay in failing to timely respond to the Office action or notification and does not assert non-receipt of the Office action or notification, the applicant must also file: (a) a notice of appeal to the Trademark Trial and Appeal Board under §2.141  or a petition to the Director under §2.146, if permitted by §2.63(b)(2)(iii)  or (b) a statement that no appeal or petition is being filed from the final refusal(s) or requirement(s). Any response filed with the petition, or subsequently filed in response to a notice of deficiency issued by a paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy, will be treated as a request for reconsideration under 37 C.F.R. §2.66(b)(3).

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, 1212.02(h) .

Generally, if the petition does not include the requirements set out in 37 C.F.R. §2.66(b), the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting the required items 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. However, if the applicant previously filed a timely request for reconsideration that did 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.

Office Actions With a Three-month Response Period and No Request for an Extension of Time to Respond Was Granted. If the applicant does not assert non-receipt of the Office action or notification, in addition to the requirements set forth above, the petition must also include the fee under 37 C.F.R §2.6(a)(28)  for a request for extension of time to respond. However, payment of this fee with the petition to revive does not provide additional time to file a further response, including a further request for reconsideration, or extend the time for filing a notice of appeal. A response, including filing a notice of appeal to the Board, is due at the time of filing the petition to revive.

If applicant asserts non-receipt of the Office action or notification, the fee under 37 C.F.R §2.6(a)(28)  is not required.

Assertion of Non-Receipt of the Office Action. 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 issue a notice to the applicant directing the applicant to view the previously issued final action on the TSDR portal on the USPTO website and provide the applicant with a new response period in which to file a response. See TMEP §711 regarding the deadline for response to an Office action.

Office Actions With an Extended Response Period. The filing of an extension of time to respond under 37 C.F.R §2.62(a)(2)  (see TMEP §711.01) presumes knowledge of the issuance of the Office action. Accordingly, in the limited circumstance in which an applicant has been granted an extension of the response period to six months and does not file a response within the extended time period, the applicant may not claim non-receipt of the final Office action in any petition to revive under 37 C.F.R §2.66. In such case, the applicant must provide a response to the outstanding final Office action with the petition to revive. In the rare circumstance in which the applicant alleges that an extraordinary situation resulted in non-receipt of the Office action, even though a request for an extension of time to respond was filed, the applicant may provide proof of such alleged extraordinary situation in a petition to the Director under 37 C.F.R §2.146(a)(5).

The applicant may not assert again that it did not receive the final Office action or notification in a subsequent petition. 37 C.F.R. §2.66(b)(3).

See TMEP §1705.04 and §1714.01(d) regarding petition timeliness, and §1705.05 regarding due diligence in monitoring the status of an application.