717    Reissuing an Office Action

USPTO error. If the USPTO issued an Office action to the wrong email address (e.g., if the USPTO entered the correspondence address of record incorrectly or did not enter a proper previously filed request to change the correspondence address), the USPTO may reissue the Office action with a new response period if the applicant notifies the USPTO prior to the expiration of any deadline for response. The USPTO will reissue the Office action by notifying the applicant that it may view and print the Office action via the TSDR portal at https://tsdr.uspto.gov. If there is no time remaining in the response period, the applicant may request reinstatement. See TMEP §1712.

No USPTO error. If the USPTO issued an Office action to the correct email address, the Office action will not be reissued. If there is no time remaining in the response period, the applicant may file a petition to revive the application. See TMEP §1714.

An applicant must maintain a valid email address for correspondence for itself and its attorney, if one is appointed, and periodically monitor the status of the application to ensure that deadlines are met. 37 C.F.R §§2.18(c), 2.23(d); see TMEP §§108.03, 609.03. See TMEP §§609.02–609.02(f) regarding changing the correspondence address.

See TMEP §608.02 regarding Office actions sent to individuals who are subsequently excluded from practice before the USPTO, §717.01 regarding Office actions returned as undeliverable, and §717.02 regarding non-receipt of mailed Office actions.

717.01    Email Notice of Office Action Undeliverable

If an email transmission fails for any reason, the USPTO will not attempt to contact the correspondent by any other means. Thus, if an emailed notification of an issued Office action is returned as undeliverable, the USPTO will not reissue the email or mail a paper copy of the Office action. See TMEP §304 regarding email and TMEP §403 for more information about returned correspondence. Trademark applicants are required to monitor the status of their applications by checking the status every six months between the filing date of the application and the issuance of a registration to ensure that crucial deadlines are met. 37 C.F.R §2.23(d)(1). See TMEP §108.03 and §1705.05 regarding due diligence and the duty to monitor status.

See TMEP §717 regarding the applicable procedure if an Office action is sent to the wrong address due to a USPTO error. If no communication from the applicant is received within the period for response, the application will be abandoned.

See TMEP §1712 regarding requesting reinstatement of applications abandoned due to USPTO error and §1714 concerning filing a petition to revive an application abandoned due to unintentional delay.

717.02    Permitted Paper Filings: Non-Receipt of Mailed Office Action

If an applicant notifies the USPTO that the applicant did not receive a mailed Office action, either before or after the expiration of the response period, the examining attorney must check to determine whether the action was sent to the correct correspondence address.  See TMEP §§609–609.03. See TMEP §301.01 regarding the limited exceptions when paper submissions may be submitted.

No USPTO error. If the Office action was sent to the correspondence address of record, and there is time remaining in the response period, the examining attorney should direct the applicant to view the full record on the TSDR portal on the USPTO website at https://tsdr.uspto.gov/, and advise the applicant that the deadline for response runs from the original issue date and that a response must be received in the USPTO before this deadline to avoid abandonment.  

If the response period has expired, the examining attorney should advise the applicant that the application is abandoned, and that the applicant may file a petition to revive if the applicant can meet the timeliness requirements in 37 C.F.R. §2.66(a).  See TMEP §§1714–1714.01(g) regarding petitions to revive.  In either situation, the examining attorney should enter an appropriate Note to the File in the application record documenting the discussion.

USPTO error. If there is evidence in the record that the USPTO sent the Office action to the wrong address due to a USPTO error (see TMEP §717), and the application has not been abandoned, the USPTO will reissue the action and provide the applicant with a new response period.  The examining attorney should first ensure that the correspondence address has been corrected, and then email the internal TM Clerical Support mailbox, stating that the Office action was sent to the wrong address, and requesting that the Office action be reissued with a new response period.  The deadline for response will run from the new issue date.  If the application had been abandoned, it will be reinstated and the Office action reissued.  See TMEP §1712.01 regarding reinstatement of applications that are abandoned due to USPTO error.