711 Deadline for Response to Office Action

Section 1 and/or 44 Applications (Office Actions Issued on or After December 3, 2022) – Three-month Response Period, With an Option to Extend the Time to Respond. For §1 and/or §44 applications, the response period for an examining attorney’s Office action issued on or after December 3, 2022 is three months from the Office action issue date. 15 U.S.C §1062(b)(2); 37 C.F.R §2.62(a)(1)(i). An applicant may, before filing any response, make one request for a three-month extension of the deadline. See 15 U.S.C §1062(b)(3); 37 C.F.R §2.62(a)(2). See TMEP §711.01 regarding requests for an extension of time to respond. If granted, the response period will be extended to six months from the Office action issue date

Section 66(a) Applications – Six-month Response Period. For §66(a) applications, the response period for an examining attorney’s Office action is six months from the Office action issue date. 15 U.S.C. §1062(b)(2); 37 C.F.R. §2.62(a)(1)(ii). In a §66(a) application, a response to an Office action must be sent to the USPTO, not the IB, and is due in the USPTO within six months of the date on which the USPTO sends the action to the IB, not the date on which the IB processes the refusal. See TMEP §1904.02(h) for further information about Office actions and responses in §66(a) applications.

Office Actions Issued Before December 3, 2022 – Six-month Response Period. The response period for an examining attorney’s Office action issued before December 3, 2022 is six months from the Office action issue date. 15 U.S.C §1062(b)(2); 37 C.F.R §2.62(a)-(a)(1).

An applicant may not request an extension of time to respond to any Office action for a §66(a) application or to an Office action issued prior to December 3, 2022. The maximum time period for response to an Office action is six months from the Office action issue date. 15 U.S.C §1062(b)(2)-(3).

The examining attorney has no discretion to extend the response period. Thus, the applicant must file a response within the applicable time period unless the examining attorney has issued a supplemental action resetting the period for response. See TMEP §711.03 regarding supplemental Office actions.

Generally, responses to Office actions must be filed through TEAS at https://teas.uspto.gov. See 37 C.F.R §§2.23(a), 2.62(c), 7.25; TMEP §301.01.

Filing an amendment to allege use does not stay or extend the deadline for filing a response to an outstanding Office action, appeal to the Board, or petition to the Director. 37 C.F.R. §2.63(d); TMEP §1104. Filing an assignment or other ownership document is not considered a response to an outstanding Office action. TMEP §503.01(d).

See TMEP §310 for information about computing the response period, and §718.02 and §§718.03–718.03(a) regarding abandonment for failure to respond or incomplete response to an Office action.

711.01 Request for Extension of Time to Respond

Under 37 C.F.R §2.62(a)(2), an applicant may request one three-month extension of the time to respond, subject to payment of the applicable fee. If granted, the response deadline, including the deadline to file a notice of appeal, if applicable, will be extended to six months from the Office action issue date.

Only one request for an extension of time to respond may be filed for each Office action with a three-month response period. The total time period for response may not be extended beyond six months from the Office action issue date. See 15 U.S.C §1062(b)(3); 37 C.F.R §2.62(a)(2).

No extensions of time to respond are available for Office actions setting forth a six-month response period, such as an Office action for a §66(a) application or an Office action issued prior to December 3, 2022. See TMEP §711.

711.01(a) Requirements for Request for Extension of Time to Respond

A complete request for an extension of time to respond must include: (1) a written request for an extension from the applicant, filed before the expiration of the three-month response period; and (2) payment of the fee required by 37 C.F.R §2.6(a)(28).

Applicants must file the request for an extension of time to respond through the Trademark Electronic Application System (TEAS) at https://teas.uspto.gov, unless an exception to the requirement to file electronically applies. See 37 C.F.R §§2.23(a), 2.62(c); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions.

The TEAS Request for Extension of Time to File a Response form must be used for this purpose. The submission must be properly signed by someone with firsthand knowledge of the facts pertaining to the request for an extension of time to respond. See TMEP §611.03(a) regarding who can sign a verification.

Any request for an extension of time to respond that is not accompanied by the applicable fee, or any request filed using a form other than the TEAS Request for Extension of Time to File a Response form, will be treated as a non-responsive communication and given no effect. See TMEP §301.01(b) regarding TEAS availability and §719 for information about non-responsive communications.

711.01(b) Time for Filing a Request for Extension of Time to Respond

To be considered timely, a complete request for an extension of time to respond must be received by the USPTO on or before the end of the three-month response period. 37 C.F.R §2.62(a)(2).

In addition, the request for an extension of time to respond must be filed before filing any response. In the context of a request for an extension of time to respond, a response includes a notice of appeal to the Trademark Trial and Appeal Board. Therefore, no extension of time to respond will be granted following the filing of a notice of appeal as to the preceding final Office action. However, the filing of an amendment to allege use (see TMEP §1104), a request to divide (see TMEP §1110.08), or a Change Address or Representation (CAR) form does not generally constitute a response to an outstanding Office action. See also TMEP §719 regarding communications that are treated as "non-responsive communications."

Furthermore, a request for an extension of time to respond only extends the response deadline for the particular Office action to which it applies. Each Office action that issues with a new three-month response period sets a new time for filing an extension of time to respond as to that Office action. For example, a supplemental Office action (see TMEP §711.03) or a subsequent final action in which an appeal has not previously been filed (see TMEP §715.03(b)) are Office actions that begin a new three-month response period and therefore set a new time for filing a request for an extension of time to respond. See TMEP §711.02 regarding Office actions that do not begin a new response period and where the response period runs from the date of a previous Office action and §715.04(b) regarding subsequent final actions that do not begin a new response period.

Consider the following examples:

Example: If an Office action was issued on December 6, 2022, and the applicant timely files a complete request for an extension of time to respond on or before March 6, 2023, prior to filing a response, the applicant has until June 6, 2023, to file a response. If the applicant later files a response within the extended response period and a notice of incomplete response must issue, the relevant deadline is 30 days from the issuance of the notice of incomplete response or June 6, 2023, whichever is longer.

Example: An Office action was issued on December 6, 2022, and the applicant filed a response on December 13, 2022. No timely request for an extension of time to respond was filed prior to the response. If the examining attorney issues a 30-day letter following review of the response, the relevant deadline is 30 days from the issuance of the 30-day letter or the remainder of the original three-month response period (March 6, 2023), whichever is longer. No request for an extension of time to respond may be filed because the applicant has already submitted a response.

Example: If a final Office action was issued on December 6, 2022, and the applicant files a request for reconsideration on March 6, 2023, but did not file a request for an extension of time to respond prior to filing the request for reconsideration, the end of the response period and time for filing an appeal is March 6, 2023. No request for an extension of time to respond may be filed because the applicant has already filed a response.

Similarly, if the applicant filed a notice of appeal on or before March 6, 2023, the notice of appeal constitutes a response, and no request for an extension of time to respond may be filed.

If the examining attorney later issues a nonfinal Office action, the nonfinal Office action begins a new three-month response period. The applicant may file a request for an extension of time to respond as to that Office action, provided it is filed before the applicant submits a response.

711.02 Time May Run from Previous Action

In most cases, the period to respond to an Office action runs from the issuance date of the Office action. In some situations, the examining attorney’s Office action does not re-start the beginning of a new response period. For example, a notice that an applicant’s response was incomplete (see TMEP §718.03), or a notice that an applicant’s request for reconsideration of a final action fails to overcome a refusal or satisfy an outstanding requirement (see TMEP §715.03(c)), does not begin a new response period. In all cases in which the response period runs from the date of a previous Office action, the examining attorney must include a statement to that effect in the Office action, and must omit the response clause.

711.03 Supplemental Office Action Resetting Response Period

Sometimes the examining attorney must issue a supplemental Office action that resets the period for response. If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response. See TMEP §706. The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a previous Office action (e.g., during examination of an amendment to allege use).

If the examining attorney issues a supplemental Office action, a new response period will begin running from the issuance date of the supplemental action. See 15 U.S.C. §1062(b). In a supplemental Office action, the examining attorney should: (1) indicate that the action is supplemental to and supersedes the previous action; (2) specifically identify all of the outstanding refusals and/or requirements; and (3) include a response clause (see TMEP §705.08).

When the examining attorney must issue a supplemental Office action in a §1 and/or §44 application to address a refusal or requirement that should have been raised in the previous Office action, and the applicant was granted an extension of time to respond to the previous Office action, the USPTO will refund the fee for the extension of time to respond if the response period for the supplemental Office action is earlier than the extended response period for the previous Office action. The examining attorney will submit the request to TM Finance with the information necessary for processing the refund. See TMEP §405.04 regarding refunds and §711.01 regarding requests for an extension of time to respond to an Office action.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. 15 U.S.C. §1141h(c); TMEP §1904.03(a).

See TMEP §717 regarding reissuing of Office actions.