After Filing a Response

After Filing a Response

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Examination of Responses to Office actions and Amendments

TMEP § 713 and 37 C.F.R. § 2.63 govern reexamination of an application following applicant’s response to Office actions.  After response by the applicant, the application will be reexamined or reconsidered.  If registration is again refused or any formal requirement[s] is repeated, but the Examiner’s Office action is not stated to be final, the applicant may respond again.  After reexamination the applicant may respond by filing a timely petition to the Director of the USPTO for relief from a formal requirement if:  (1) the requirement is repeated, but the Examiner’s action is not made final, and the subject matter of the requirement is appropriate for petition to the Director;^[1]See TMEP § 2.146(b)  or (2) the Examiner’s action is made final and such action is limited to subject matter appropriate for petition to the Director.

If the petition is denied, the applicant shall have six months from the date of the Office action  that repeated the requirement or made it final or thirty days from the date of the denial of the petition, whichever date is later, to comply with the requirement.  A formal requirement which is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the TTAB.

Generally, the Examiner will consider the applicant’s response to an Office action and will determine whether the mark may be approved for publication or registration.  The Examiner must carefully consider all arguments, comments, and amendments made or proposed by the applicant.  If the applicant’s response has not put the application in condition for publication or registration, the Examiner will issue another Office action, or telephone or e-mail the applicant, depending on the circumstances.  If the applicant’s response neither resolves all of the outstanding issues nor raises any new issues, and the applicant has had an opportunity to reply to all points raised by the Examiner, the Examiner’s next action should be stated to be final.^[2]TMEP §§ 714-714.05(f)

If the Examiner has cited an earlier-filed conflicting application, and the applicant responds by arguing that there is no likelihood of confusion, the Examiner should suspend the application pending disposition of the prior-filed conflicting application, if applicant’s arguments are not persuasive.^[3]TMEP § 716.02(c) regarding suspension pending disposition of an earlier-filed conflicting application; TMEP § 716.03 regarding the applicant’s request to remove an application from suspension; … Continue reading )

Applicant’s Recourse When Final Action is Premature

Under TMEP § 714.06, if an applicant believes that a refusal to register or a requirement has been made final prematurely, the applicant must raise the issue while the application is still pending before the Examiner, because it is not a ground for appeal to the TTAB.  The applicant may raise the matter by filing a request for reconsideration with the Examiner or by contacting the managing attorney or senior attorney in the Examiner’s law office.  If the Examiner does not withdraw the finality, the applicant may file a petition for relief to the Director under 37 C.F.R. §2.146.  If, on request for reconsideration, the Examiner finds the final action to have been premature, the Examiner should issue a new non-final action with a six-month response clause.

Action After Final Action

Once an action has been properly made final, the Examiner 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).  The Examiner should issue an examiner’s amendment 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 Examiner should approve the application for publication or registration, as the case may be.