715 Action After Issuance of Final Action

715.01 Proper Response to Final Action

An applicant must timely respond to a final action to avoid abandonment. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a). See TMEP §711 for the deadline for response to an Office action and §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.

An applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2). Filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03.

For an application filed under Section 1(b) in which the applicant has filed a timely "insurance" extension request (i.e., in conjunction with the statement of use or within the same six-month period that the statement of use is filed; see TMEP §§1108.03–1108.03(a), 1109.16(c)), when the response period to a final Office action will expire before the expiration of the extension period, the applicant may respond to the final action by requesting suspension until the end of the extension period for the statement of use in order to overcome any substantive refusals and/or comply with any outstanding requirements maintained in the action. See TMEP §§716.02(f), 716.06, 1109.16(d).

After a final refusal to register on the Principal Register, an amendment requesting registration on the Supplemental Register or registration on the Principal Register under §2(f) of the Trademark Act may be a proper response in some circumstances. See TMEP §§714.05(a)(i), 816.04, 1212.02(h).

715.02 Action After Final Action

Once an action has been properly made final, the examining attorney normally should not change his or her position. However, this does not mean that an applicant’s amendment or argument will not be considered after final action. An amendment may be accepted and entered if it places the application in condition for publication or registration, or will put the application in better form for appeal (i.e., reduce the issues on appeal). For example, an amendment requesting registration on the Supplemental Register or on the Principal Register under §2(f) may be a proper response to a final refusal of registration on the Principal Register in some circumstances. See TMEP §§714.05(a)(i), 816.04, 1212.02(h).

The examining attorney should issue an examiner’s amendment (see TMEP §707─707.03 ) if it will immediately put the application in condition for publication or registration or reduce the issues on appeal.

If the applicant files a response that complies with all outstanding requirements and overcomes all outstanding refusals, the examining attorney should approve the application for publication or registration, as appropriate.

In the rare circumstance where the examining attorney determines that a final refusal should be withdrawn, even though the applicant has not submitted any further amendments or arguments after issuance of the final action, the examining attorney must withdraw the requirement or refusal and approve the application for publication or registration, if it is otherwise in condition for such action. The examining attorney must also promptly attempt to notify the applicant by telephone or email that the requirement or refusal is withdrawn, so that the applicant knows that filing an appeal is unnecessary, and must enter an appropriate Note to the File in the record.

The applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusals and/or comply with any outstanding requirements within the time period for responding to the the final action. However, filing a request for reconsideration does not stay or extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3).

See TMEP §716.06 regarding suspension after final action.

715.03 Request for Reconsideration After Final Action

Under 37 C.F.R. §2.63(b)(3), the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board or petition to the Director.

However, filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03(c). The USPTO cannot extend the deadline for filing an appeal, except as set forth in 37 C.F.R §2.62(a)(2). See 15 U.S.C. §1062(b)(3); 37 C.F.R. §2.142(a); TMEP §711. But see TMEP §1714.01(a)(ii) (concerning filing a petition to revive an abandoned application with a notice of appeal when an applicant fails to respond to a final action). Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the period for response to the final action, or the application will be abandoned. If the request for reconsideration is unsuccessful, and the applicant has not timely filed a notice of appeal, the application will be abandoned for incomplete response after the expiration of the response period. See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement and §§715.04–715.04(b) for information about processing a request for reconsideration filed with a notice of appeal.

The examining attorney should construe any document filed after final action that responds to the outstanding refusals or requirements as a request for reconsideration. If the request for reconsideration does not overcome or resolve all outstanding refusals and requirements, the examining attorney must follow the procedures outlined in TMEP §§715.03(a)(ii), (b), and 715.04(a), (b). An Office action issued in connection with those procedures should discuss any new evidence submitted with the request for reconsideration, regardless of whether it is significantly different from evidence previously submitted. If the evidence in the request for reconsideration is significantly different from the evidence currently of record, the examining attorney must issue a new final refusal (i.e., a "Subsequent Final Action"). See TMEP §715.03(b).

Regardless of whether an applicant submits new evidence with a request for reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for which reconsideration is sought. TBMP §1207.04; see In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1200–01 (TTAB 2009); In re Giger, 78 USPQ2d 1405, 1406–07 (TTAB 2006) .

To determine the appropriate action to take upon receipt of a request for reconsideration, the examining attorney must consider whether: (1) the applicant has timely filed a notice of appeal; (2) time remains in the period to respond to the final action; and (3) the request for reconsideration presents a new issue or new evidence significantly different from that previously submitted. See TMEP §715.03(a), §715.03(b), and §§715.04–715.04(b) for further information as to how examining attorneys should handle requests for reconsideration.

715.03(a) Examining Attorney’s Action When No New Issue or No Significantly Different Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed

If a request for reconsideration presents no new issues or no new evidence significantly different from that previously submitted and the applicant has not filed a notice of appeal, the examining attorney must consider whether to: (1) approve the application for publication or registration; (2) deem the application abandoned in whole or in part for an incomplete response; or (3) issue an Office action. See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.

715.03(a)(i) Request for Reconsideration Resolves All Outstanding Issues and No Notice of Appeal Has Been Filed

If the request for reconsideration convinces the examining attorney that a refusal or requirement should be withdrawn, and no other issues remain, the examining attorney may approve the application for publication or registration.

715.03(a)(ii) Request for Reconsideration Does Not Resolve All Outstanding Issues and No Notice of Appeal Has Been Filed

715.03(a)(ii)(A) Prior Amendment Withdrawn

If, in a request for reconsideration that does not overcome or resolve all outstanding issues, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.

715.03(a)(ii)(B) Outstanding Refusals and/or Requirements Must Be Continued, Time Remains in Response Period for Applicant to Appeal, and No Notice of Appeal Has Been Filed

The examining attorney must issue a "Request for Reconsideration Denied" action if: (1) the request for reconsideration does not overcome or resolve all outstanding refusal(s) and/or requirement(s); (2) the applicant’s response does not meet the criteria under 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, because such issues cannot be resolved with additional time granted; and (3) no notice of appeal has been filed. This action must (1) acknowledge receipt of the request for reconsideration, (2) indicate that the request is denied and explain why it does not overcome or resolve the final refusal(s) and/or requirements, (3) identify the final refusal(s) and/or requirements that are maintained and continued and any that are satisfied or withdrawn, (4) advise the applicant that the time for appeal runs from the issuance date of the final Office action, (5) advise that the applicant has the remainder of the response period to comply with any outstanding refusal(s) and/or requirement(s) and/or to file a notice of appeal to the Board, and (6) omit the response clause. See TMEP §705.08.

Once the examining attorney has issued a "Request for Reconsideration Denied" action, the examining attorney must abandon the application for incomplete response if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned due to incomplete response, and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration.

See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.

715.03(a)(ii)(C) Outstanding Refusals and/or Requirements May Be Resolved if Applicant Is Given 30 Days or Time Remaining in Response Period to Comply with Issues

The preferred action is to issue a "Continuing Final Action" if: (1) the request for reconsideration does not overcome or resolve all outstanding refusal(s) and/or requirement(s); (2) the applicant’s response complies with the criteria in 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, regardless of whether time remains in the response period, because such issues can be resolved with additional time, including where the record indicates that the applicant can place the application in condition for approval for publication or registration by completing the response or all issues can be resolved by examiner’s amendment; and (3) no notice of appeal has been filed. See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013). See TMEP §715.03(a)(ii)(E) regarding responses to final actions that comply with the criteria in 37 C.F.R. §2.65(a)(2) (those signed by unauthorized persons, unsigned responses, and TEAS responses consisting solely of a signature or missing significant data or attachments).

This Office action must: (1) include an appropriate explanation of the problem with the response; (2) give the applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to submit a complete response; and (3) omit the response clause. See TMEP §§705.08, 718.03(b).

If the examining attorney determines that an examiner's amendment (see TMEP §§707─707.03) will immediately put the application in condition for publication or registration, the examining attorney should attempt to contact the applicant to obtain authorization to issue an examiner's amendment to resolve the matters that remain outstanding.

Once the examining attorney has issued a "Continuing Final Action," the examining attorney must abandon the application for incomplete response if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned for incomplete response and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration.

Granting additional time to complete a response under 37 C.F.R. §2.65(a)(2) does not stay or extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a). See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.

715.03(a)(ii)(D) Outstanding Refusals and/or Requirements Must Be Continued, Time for Appeal Has Expired, and No Notice of Appeal Has Been Filed – Abandon for Incomplete Response

If (1) the examining attorney is not persuaded by the request for reconsideration, (2) the applicant's response does not meet the criteria in 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, (3) there is no time remaining in the response period, and (4) no notice of appeal has been filed, the examining attorney must hold the application abandoned due to incomplete response. The examining attorney must deny the request for reconsideration by issuing an action abandoning the application for incomplete response. See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.

If the examining attorney denies the request for reconsideration and holds the application abandoned for incomplete response, the applicant may file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion or where a petitioner can show that it has substantially complied with the requirements of the statute or rules. See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir. USPTO 2013); In re GTE Educ. Servs., 34 USPQ2d 1478, 1479–80 (Comm'r Pats. 1994); In re Legendary Inc., 26 USPQ2d 1478, 1479 (Comm’r Pats. 1992); TMEP §1713.01. The unintentional delay standard of 37 C.F.R. §2.66 does not apply in this situation. See TMEP §§1713.02, 1714.01(f)(ii)(A).

715.03(a)(ii)(E) Responses After Final Refusal Signed by Unauthorized Persons, Unsigned Responses, TEAS Responses Consisting Solely of a Signature, and TEAS Responses Missing Significant Data or Attachments

If an examining attorney receives a response to a final action signed by an unauthorized person, an unsigned response to a final action, a TEAS response to a final action that consists solely of a signature, or a TEAS response to a final action missing significant data or attachments, the examining attorney should not hold the application abandoned for failure to respond completely. The examining attorney must issue a "Continuing Final Action" that (1) includes an appropriate explanation of the problem with the response, (2) gives the applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to submit a complete response, and (3) omits the response clause. See TMEP § 705.08. Granting additional time to complete a response under 37 C.F.R. §2.65(a)(2) does not extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).

Once an examining attorney has issued a "Continuing Final Action," the examining attorney must abandon the application for incomplete response if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned for incomplete response and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration. See TMEP §718.03(a).

715.03(b) Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed

If the request for reconsideration includes an amendment that presents a new issue, whether related to the final refusal or not, the examining attorney must issue a nonfinal action with a response clause that addresses the new issue and maintains the final refusal. See TMEP §705.08. For example, if the applicant’s request for reconsideration contains a §2(f) claim of acquired distinctiveness in response to a final §2(e)(1) refusal, and the claim fails to place the application in condition for approval, the examining attorney must issue a nonfinal action. See TMEP §714.05(a)(i). However, if the applicant withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or §2(f) claim of acquired distinctiveness submitted in response to a §2(e)(1) refusal or a disclaimer submitted in response to a requirement), this does not raise a new issue. See TMEP §§715.03(a)(ii)(A), 715.04(a).

Whenever the examining attorney issues a new nonfinal action after review of an applicant’s request for reconsideration, the Office action must include a response clause (see TMEP §705.08) and should explain that the applicant must respond to all requirements or refusals, but that the applicant should not file an appeal to the Board because an appeal would be premature under 15 U.S.C. §1070 and 37 C.F.R. §2.141(a). If the applicant’s response to the new nonfinal action does not resolve all outstanding requirements or refusals and put the application in condition for publication or registration, the examining attorney must issue a "Subsequent Final Action" with a response clause. This provides the applicant the opportunity to file an appeal. See TMEP §715.04(b) if a notice of appeal has been filed.

Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new final or nonfinal action. In re GTE Educ. Servs.,34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for the same reason as original specimens).

If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney must issue a "Subsequent Final Action" with a response clause. This provides applicant with the opportunity to respond before filing an appeal. Any response to the subsequent final action will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.03–715.03(b).

Example: If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue a "Subsequent Final Action." However, the examining attorney should not issue a subsequent final action if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d).

Example: The examining attorney must issue a "Subsequent Final Action" if the applicant asserts unity of control (see TMEP §1201.07 ) in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established. See TMEP §714.05(d).

Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a subsequent final or nonfinal action. Generally, if the same refusal or requirement was made before, the examining attorney does not have to issue a subsequent final or nonfinal action.

See TMEP §§714.05–714.05(f) for further information about delineating new issues that require issuance of a nonfinal action.

Sometimes action on an application is suspended after a final refusal has issued. If the grounds for refusal remain operative after the application is removed from suspension and no new issues have been raised, the examining attorney must issue a "Subsequent Final Action" with a response clause. See TMEP §716.06.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).

715.03(c) Time for Appeal Runs from Issue Date of Final Action

Filing a request for reconsideration does not stay or extend the time for responding to a final refusal. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.63(b)(3), 2.142(a). If the examining attorney denies an applicant’s request for reconsideration, the deadline for filing a notice of appeal to the Board (or petition to the Director if permitted by 37 C.F.R. §2.63(b)(2) ) runs from the issuance date of the final action. If this deadline has expired and the applicant has not filed a timely appeal or petition, the application will be abandoned due to an incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §§2.63(b)(4), 2.65(a). The applicant may not file a petition to revive under 37 C.F.R. §2.66, based on unintentional delay. See TMEP §1714.01(f)(ii)(A). The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only where there has been clear error or an abuse of discretion or where a petitioner can show that it has substantially complied with the requirements of the statute or rules. See TMEP §1713.01.

715.04 Request for Reconsideration Filed in Conjunction with Notice of Appeal

The Board has jurisdiction over an application upon the filing of a notice of appeal. In response to a request from an applicant, the Board may remand an application to the examining attorney for consideration of specific facts or issues. 37 C.F.R. §2.142(d). See TBMP §1209 regarding remand during an ex parte appeal, TBMP §515 regarding remand to the examining attorney during an inter partes proceeding, and TMEP §1504.05 regarding requests for remand.

If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration. TBMP §1204. See TBMP Chapter 1200 and TMEP §§1501–1501.07 for further information about ex parte appeals.

If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration. The examining attorney may issue an examiner’s amendment if he/she determines that an examiner's amendment (see TMEP §§707–707.03) will immediately put the application in condition for publication or registration. In these situations, the appeal is moot and no further action is needed after approving the application for publication or registration. If there are remaining unresolved refusals or requirements, the request for reconsideration must be denied. See TMEP §715.04(a). In some circumstances, the examining attorney may also issue an examiner’s amendment to reduce the issues on appeal. See TMEP §715.02 regarding action after issuance of a final action.

715.04(a) Examining Attorney's Action When No New Issue Is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed

If the request for reconsideration does not overcome or resolve the issues on appeal, and no new issue, or no new evidence significantly different from that previously submitted, is presented therein, the examining attorney must issue a "Request for Reconsideration Denied" action that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied and explains why it does not overcome all refusals or satisfy all requirements; (3) identifies the final refusal(s) and/or requirements that are maintained and any that are satisfied or withdrawn; and (4) advises the applicant that the Board will be notified to resume the appeal. An Office action denying reconsideration of the final action must not include a response clause.

If, in a request for reconsideration that does not overcome or resolve the issues on appeal, the applicant also withdraws a prior amendment submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer), this does not raise a new issue.

715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed

If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new nonfinal Office action with a response clause that addresses the new issue and maintains the refusals or requirements previously made final. For example, if the applicant’s request for reconsideration contains a §2(f) claim of acquired distinctiveness in response to a final §2(e)(1) refusal, and the claim fails to place the application in condition for approval, a nonfinal action may be appropriate. See TMEP §714.05(a)(i).

Whenever the examining attorney issues a new nonfinal action after remand of an application by the Trademark Trial and Appeal Board (Board), the Office action must include a response clause (see TMEP §705.08) and should explain that the applicant must respond to all refusals and/or requirements within the time period set forth in the Office action, but should not file another appeal to the Board. If the applicant does not respond to the new nonfinal action, the application will be abandoned for failure to respond. See TMEP §718.02. If the applicant’s response to the new nonfinal action does not resolve all outstanding refusals and/or requirements and put the application in condition for publication or registration on the Supplemental Register, the examining attorney must issue a "Subsequent Final Action," with the response clause omitted from the action. The subsequent final action should also notify the applicant that the appeal will be resumed. When proceedings with respect to the appeal are resumed, the Board will take further appropriate action with regard to any additional ground of refusal. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) §1209.01.

If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted by the applicant, the examining attorney must issue a "Subsequent Final Action" that omits the response clause, specifies which issues are withdrawn and/or which amendments are accepted, and addresses the new evidence. The examining attorney may also introduce additional evidence directed to the new evidence submitted by the applicant. TBMP §1207.04; TMEP §715.03. For example, if an applicant files a consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue a "Subsequent Final Action" that discusses applicant’s consent agreement. However, the examining attorney should not issue a subsequent final action if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d). Further, because a subsequent final action issued after the filing of an appeal does not give the applicant a new response period, the subsequent final action must also inform the applicant that the Board will be notified to resume the appeal. When proceedings with respect to the appeal are resumed, any further request for reconsideration of the application must be made via a request for remand, for which good cause must be shown. See TBMP §§1204, 1207.02.

Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action. In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for the same reason as the original specimens).

Submission of new arguments in response to the final refusal or requirement does not raise a new issue that requires the examining attorney to issue a new nonfinal or subsequent final action.