1904.02(h) Office Actions and Responses 
The USPTO will send the first Office action in a §66(a) application to the IB. The first Office action is known as a "provisional refusal" and must be reviewed by the IB. See Regs. Rule 17. If the provisional refusal meets the applicable requirements (see TMEP §1904.03), the IB will process the refusal and send it to the holder (i.e., the §66(a) applicant or their representative, if one is designated). Regs. Rule 17(4). The IB notifies the USPTO of the date on which it processed the refusal, and the USPTO updates the Trademark database with this information.
A response to the first and any subsequent Office action must be filed with the USPTO (using the Trademark Electronic Application System (TEAS); see 37 C.F.R. §§2.23(a), 7.25; TMEP §301.01), not with the IB, and is due in the USPTO within six months of the date on which the USPTO sent the action to the IB, not the date on which the refusal was processed by the IB. 15 U.S.C. §1062(b)(2); 37 C.F.R. §2.62(a)(1)(ii); TMEP §1904.03(c). Failure to respond to an Office action within the time provided will result in abandonment of the application. 15 U.S.C. §1062(b)(2); 37 C.F.R. §2.65(a). See TMEP §711 regarding the deadline for response to an Office action and §718.02 and §§718.03-718.03(a) regarding abandonment for failure to respond or incomplete response to an Office action.
A priority action generally may not be issued as a first Office action in a §66(a) application if the applicant has not yet appointed a qualified U.S. attorney. See TMEP §§712-712.03. In addition, a suspension notice generally may not be issued as a first Office action in a §66(a) application. See TMEP §§716, 716.02-.02(i).
An examiner’s amendment or a combined examiner’s amendment and priority action (see TMEP §§707–707.03, 708.05) may not be issued as a first Office action because the IB will not accept such amendments. However, in rare circumstances, a no-call examiner’s amendment may be issued in a first Office action, for example, to remove certain parenthetical wording from an identification of goods/services if the application is otherwise in condition for approval for publication. The examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. See TMEP §601.01(a) regarding applicants with a non-U.S. domicile, §803.05(b) regarding applicant’s email address as a required element of an application, and TMEP §1904.02(c) regarding parenthetical language added by the International Bureau to the listing of goods/services. Examiner’s amendments and combined examiner’s amendments and priority actions may be issued as second and subsequent actions, if properly authorized. See TMEP §707.01 regarding who can authorize examiner’s amendments and §708.02 regarding who can authorize priority actions.
If the applicant has appointed a qualified U.S. attorney in the §66(a) application, the USPTO will issue second and subsequent Office actions directly to the attorney. See 37 C.F.R. §2.11(a), 2.18(a)(2), 7.25(a). If the applicant has not appointed a qualified U.S. attorney, second and subsequent Office actions will issue directly to the applicant. 37 C.F.R. §§2.18(a)(1), 7.25(a). See TMEP §§609.01–609.01(a), and §1904.02(i) regarding second and subsequent Office actions and other correspondence in §66(a) applications.