1713    Petition to Reverse Holding of Abandonment of Application for Incomplete Response

1713.01    Standard of Review

Under 37 C.F.R. §2.65(a), an application may become abandoned when an applicant’s response, although received within the response period, is incomplete.  See TMEP §§718.03–718.03(b) regarding incomplete responses.

When an examining attorney holds an application abandoned because the applicant’s response is incomplete, the applicant may petition the Director to reverse the holding under 37 C.F.R. §2.146.  See TMEP §718.02(a) regarding partial abandonment for failure to respond completely to a final refusal or final requirement that is expressly limited to only certain goods/services/class(es) and §718.03(a) for failure to respond completely in all other situations. See TMEP §1705.07(a) regarding the requirement for representation of a non-U.S. domiciled petitioner.

However, the Director will reverse the examining attorney’s holding of abandonment only (1) if 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 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); see also TMEP §1713.02.

Questions of substance arising during the ex parte prosecution of applications, or expungement or reexamination of registrations, including, but not limited to, questions arising under Sections 2, 3, 4, 5, 6, 16A, 16B, and 23 of the Trademark Act, are not appropriate subject matter for petitions to the Director. 37 C.F.R §2.146(b). For example, petitions requesting the following will generally be denied:    

  • consideration of additional arguments against substantive refusals; the proper venue to present arguments against a substantive refusal is an appeal to the TTAB, not a petition to the Director. 37 C.F.R. §§2.63(b)(1)(i)-(ii), 2.146(b);
  • amendments to the application, such as filing-basis amendments;
  • amendments to the Supplemental Register; and
  • consideration of new evidence in the nature of consent agreements or substitute specimens.

The "unintentional delay" standard for reviving abandoned applications pursuant to 37 C.F.R. §2.66  does not apply to applications held abandoned because a response was deemed incomplete under 37 C.F.R. §2.65(a).  See TMEP §1714.01(f)(ii)(A).

1713.02    Failure to Respond to Notice of Incomplete Response or Denial of Request for Reconsideration with No Appeal Filed

If an examining attorney issues (1) a notice of incomplete response using the "Notice of Non-Responsive Amendment," (2) a "Continuing Final Action," or (3) a "Request for Reconsideration Denied" when no notice of appeal has been filed, and the applicant does not respond in the time provided, the application will be abandoned due to incomplete response. 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. See TMEP §1713.01 for situations when this type of petition may be granted. An applicant may not file a petition to revive under 37 C.F.R §2.66  based on unintentional delay or on the basis of failure to receive the Office action or failure to timely respond due to an extraordinary situation.

When it appears that a response is signed by an improper or excluded party and an examining attorney issues an Office action granting an applicant additional time (30 days or the time remaining in the response period) to complete a response, if the applicant fails to respond or to complete the response within the time granted or remaining, the examining attorney must issue an action abandoning the application for incomplete response. See TMEP §§715.03(a)(ii)(E), 718.03, 718.03(b). If the applicant wishes to submit evidence that a proper party signed the original response, the applicant may petition the Director to exercise supervisory authority and reverse the holding and reinstate the application under 37 C.F.R. §2.146(a)(3). If the evidence establishes that a proper party signed the response, the Director will grant the petition and instruct the examining attorney to review the response.

If the evidence submitted on petition or the application record itself establishes that the response was signed by an improper party, the Director will find that: (1) the application should have been abandoned for failure to respond, (2) the petition will be construed as a petition to revive under 37 C.F.R §2.66, (3) revival based on unintentional delay is proper, and (4) a response signed by a proper party must be submitted. To expedite revival in these circumstances, the petition should include a statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional, and a properly signed response to the Office action. In this situation, if evidence is provided in response to a final Office action, the response will be treated as a request for reconsideration under 37 C.F.R §2.63(b)(3)  and the applicant must also file a notice of appeal to the Trademark Trial and Appeal Board under 37 C.F.R §2.141  or a statement that no appeal is being filed from the final refusal(s) or requirement(s). 37 C.F.R §2.66(b)(3). If a revocation of a previous power of attorney or a new power of attorney properly signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) has been submitted, a response signed by the newly appointed attorney after the date of the revocation or appointment must be provided in order for the petition to be considered.

The granting of the petition does not extend the time for filing a notice of appeal or filing a petition to review the examining attorney’s action under 37 C.F.R. §2.63(a)  and (b). 15 U.S.C. §1062(b);  37 C.F.R. §2.142(a). Therefore, in most circumstances, if the response does not overcome all outstanding refusals or satisfy all outstanding requirements, the application will again be abandoned and a notice will issue abandoning the application for incomplete response (but see TMEP §1714.01(a)(ii) regarding a petition to revive for failure to respond to a final action).