718.03(b)    Granting Additional Time to Perfect Response

Under 37 C.F.R. §2.65(a)(2), the examining attorney has discretion to grant an applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response if:

  • (1) the response was filed within the relevant response period (see TMEP §711);
  • (2) the response was a bona fide attempt to advance the examination;
  • (3) the response was a substantially complete response to the examining attorney’s action; and
  • (4) consideration of some matter or compliance with some requirement was omitted.

Nonfinal Action: If an applicant’s attempt to comply with an examining attorney’s nonfinal action is incomplete, the examining attorney generally should issue a "Final Action" when the application is otherwise in condition for final action, and not grant a 30-day extension of time under 37 C.F.R. §2.65(a)(2). See TMEP §718.02(a) regarding processing an incomplete response to a partial nonfinal refusal or requirement and TMEP §718.03 regarding processing TEAS responses to nonfinal actions that consist only of a signature or are missing significant data or attachments.

Final Action: The discretion to give an applicant extra time to perfect a response under 37 C.F.R. §2.65(a)(2)  should generally be exercised in connection with a response to a final action. See TMEP §§715.03─715.03(c) regarding processing requests for reconsideration after final action and TMEP §718.02(a) regarding processing an incomplete response to a partial final refusal or requirement. To grant additional time after a response to a final action, the examining attorney must issue a "Continuing Final Action." See TMEP §§715.03(a)(ii)(C), (a)(ii)(E).

Granting the applicant additional time to complete a response under 37 C.F.R. §2.65(a)(2)  after final action does not extend the time for filing an appeal to the Trademark Trial and Appeal Board (or a petition to the Director under 37 C.F.R. §2.63(b)(2) ). The applicant must file a notice of appeal (or petition) within the response period for the final action. 15 U.S.C. §1062(b);  37 C.F.R. §2.142(a); see 37 C.F.R. §2.63(b)(1)–(2). See TMEP §711 regarding 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.

Unsigned Response or Response Signed by Unauthorized Person: If the response to a nonfinal or final action is unsigned or signed by an unauthorized person, the examining attorney must issue a notice of incomplete response explaining why the response is incomplete and granting the applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response. To issue a notice after a nonfinal action, the examining attorney must use the "Notice of Non-Responsive Amendment" action. To issue a notice after a final action, the examining attorney must use the "Continuing Final Action" and omit the response clause. See TMEP §§715.03(a)(ii)(E) and 718.03 regarding processing responses to actions that are not signed or not properly signed.

Failure to Respond or Respond Completely to Notice of Incomplete Response: If the applicant fails to respond to a notice or to complete the response within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must abandon the application for incomplete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive due to unintentional delay pursuant to 37 C.F.R. §2.66. The applicant’s only recourse is to file a petition to the Director to exercise supervisory authority under 37 C.F.R. §2.146(a)(3)  to reverse the examining attorney’s holding of abandonment. However, the Director will reverse an examining attorney’s action on petition only (1) where there has been clear error or an abuse of discretion, (2) where a petitioner can show that it has substantially complied with the requirements of the statute or rules, or (3) when an application was abandoned due to an improperly signed response to Office action and the petitioner submits evidence that the response was properly signed. See TMEP §1713.01.