718.02    Failure by Applicant to Take Required Action During the Relevant Response Period

15 U.S.C. §1062(b) 

 (1) If the applicant is found not entitled to registration, the examiner shall notify the applicant thereof and of the reasons therefor. The applicant may reply or amend the application, which shall then be reexamined. This procedure may be repeated until the examiner finally refuses registration of the mark or the application is abandoned as described in paragraph (2).

(2) After notification under paragraph (1), the applicant shall have a period of 6 months in which to reply or amend the application, or such shorter time that is not less than 60 days, as prescribed by the Director by regulation. If the applicant fails to reply or amend or appeal within the relevant time period, including any extension under paragraph (3), the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the application may be revived and such time may be extended. The Director may prescribe a fee to accompany any request to revive.

(3) The Director shall provide, by regulation, for extensions of time to respond to the examiner for any time period under paragraph (2) that is less than 6 months. The Director shall allow the applicant to obtain extensions of time to reply or amend aggregating 6 months from the date of notification under paragraph (1) when the applicant so requests. However, the Director may set by regulation the time for individual periods of extension, and prescribe a fee, by regulation, for any extension request. Any request for extension shall be filed on or before the date on which a reply or amendment is due under paragraph (1).

Under 15 U.S.C. §1062(b)  and 37 C.F.R. §2.65(a), an application becomes abandoned if the applicant fails to respond, or fails to respond completely, within the relevant response period.  See TMEP §§711-711.03 regarding the deadline for response to an Office action and TMEP §§718.03–718.03(b) regarding incomplete responses.  

When an applicant is granted additional time to perfect its response under 37 C.F.R. §2.65(a)(2)  (TMEP §718.03(b)), but fails to respond or responds late, the date of abandonment is not affected.  It remains the day after the date on which the response period ends, since the grant of additional time to perfect a response does not extend the statutory response period.

The examining attorney has no authority to accept a late response.  If an applicant files a late response, the examining attorney must immediately send a notice to the applicant stating that the response was untimely; that the application is abandoned; and that the applicant may file a petition to revive under 37 C.F.R. §2.66  if the failure to timely respond was unintentional.  See TMEP §§1714–1714.01(g) regarding petitions to revive.

See TMEP §718.02(a) regarding partial abandonment.

718.02(a)    Partial Abandonment

General Rule. Trademark Rule 2.65(a)(1), 37 C.F.R. §2.65(a)(1), provides that if all refusals and/or requirements are expressly limited to certain goods/services, and the applicant fails to respond, or to respond completely, to an Office action, the application will be abandoned only as to those particular goods/services.

Exception - Requirements for Fees to Cover All Classes in a Multiple-Class Application. If the fees paid in a multiple-class application are sufficient to cover one class but insufficient to cover all the classes, the examining attorney will require that the applicant submit the additional fees or specify the classes to which the original fee(s) should be applied. Under such circumstances, it is not appropriate to give a partial-abandonment advisory. If the applicant does not respond to the Office action, the entire application will be abandoned.

Office Action Must State That Refusal Applies Only to Certain Goods, Services or Classes. If the examining attorney issues a refusal or requirement that applies only to certain goods/services/class(es) in any Office action (i.e., a first or subsequent nonfinal Office action, final action, or denial of a request for reconsideration), this must be expressly stated in the Office action.  Partial abandonment applies only if the Office action expressly states that a refusal or requirement is limited to only certain goods/services/class(es).  Unless the action includes a clear and explicit statement that the refusal or requirement applies to only certain goods/services/class(es), the refusal or requirement will apply to all the goods/services/class(es), and failure to respond to the action will result in abandonment of the entire application.

Incomplete Response to Partial Refusal or Requirement. Partial abandonment may also occur when an applicant fails to file a complete response to a final refusal or final requirement that is expressly limited to only certain goods/services/class(es).  If an applicant files an incomplete response to a nonfinal action that is limited to only certain goods/services/class(es), the examining attorney should generally issue an action making all outstanding requirements and refusals final rather than partially abandoning the application.  See TMEP §§718.03–718.03(b) regarding incomplete responses.  When an examining attorney holds an application abandoned for failure to file a complete response, the applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146  to reverse the holding.   See TMEP §1713.01. If an applicant files an incomplete response to a final action that is limited to only certain goods/services/class(es) and there is time remaining in the response period to file a notice of appeal, the examining attorney must treat it as a request for reconsideration and deny the request, but must wait to issue the partial abandonment until all time to respond has expired. If there is no time remaining to appeal, the examining attorney must issue an examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained. The examiner’s amendment must clearly set forth the changes that will be made to the identification of goods/services. No prior authorization from the applicant or its attorney is needed to issue an examiner’s amendment in this situation.

Failure to Respond to Partial Refusal or Requirement. When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods/services/class(es), the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained.  The examiner’s amendment should clearly set forth the changes that will be made to the identification of goods/services in the application.  No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation.  TMEP §707.02.  If the failure to respond to the partial refusal or requirement was unintentional, the applicant may file a petition to the Director to revive the deleted goods/services/classes within two months of the issuance date of the examiner’s amendment.  When seeking to revive a portion of an application that was partially abandoned, the applicant must use the TEAS Petition to the Director under Trademark Rule 2.146 form. See TMEP §301 regarding the requirement to file electronically and §§1714-1714.01(g) regarding petitions to revive.

Failure to Perfect Appeal of Partial Refusal or Requirement. Partial abandonment can also occur when a partial refusal or requirement is upheld on appeal, and the applicant fails to perfect an appeal to, or an appeal is dismissed by, the Court of Appeals for the Federal Circuit or civil court, or when an applicant withdraws or fails to prosecute an appeal of a partial refusal to the Board.  In these situations, the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/class(es) to which the appeal pertained.  No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation.

Use of Headings in Office Actions Encouraged. When issuing a partial refusal or requirement, the examining attorney is encouraged to use the heading "Partial Refusal" or "Partial Requirement," so the record is clear that the refusal or requirement applies only to certain goods/services/class(es).

Use of Abandonment Advisory in Office Actions. When issuing a partial refusal or requirement, the examining attorney should advise the applicant that if the applicant does not respond to the Office action within the response period, certain goods/services/class(es) will be deleted from the application (abandoned) and the application will proceed forward with only the remaining goods/services/class(es).

Requirements for Amendment of Identification of Goods/Services. See TMEP §1402.13 regarding an examining attorney’s requirement for amendment of an identification of goods/services that includes some terminology that is indefinite and some terminology that is acceptable, and the processing of applications in which an applicant fails to respond to such a requirement.