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Response to Applicant’s Arguments in its Response to Office action

When the applicant submits arguments attempting to overcome a refusal or requirement, the Examiner must respond to each of the applicant’s arguments.

In response to a refusal under Section 2(d) of the Trademark Act, the applicant may respond that the cited registration should be cancelled because the registrant has not filed the required maintenance documents.  If that occurs, the Examiner must not withdraw a refusal of registration under Section 2(d) until the Trademark database shows that the cited registration is cancelled or expired.  To allow ample time for processing of timely filed post-registration maintenance documents, the USPTO waits until 30 days after the expiration of the six-month grace period before updating its records to show that the registration is cancelled or expired.

Proper Response to Final Action

Under TMEP § 715.01, an applicant must respond to a final action within six months of the issuance date.[1]15 U.S.C. §1062(b); 37 C.F.R. §2.62(a)   In general, the only proper response to a final action is a notice of appeal to the TTAB, a petition to the Director for relief under 37 C.F.R. §2.63(b)(2), or compliance with an outstanding requirement.[2]37 C.F.R. §2.64(a)   For an application filed under Section 1(b) in which the applicant has filed a timely request for extension in which to file a statement of use,[3]TMEP §§ 1108.03-1108.03(a), 1109.16(c)  when the six-month response period to a final Office action will expire before the expiration of the extension period, the applicant may respond to the final action by requesting suspension until the end of the extension period in order to overcome any refusal and/or satisfy any requirement raised in the action.[4]TMEP §§ 716.02(f), 716.06, 1109.16(d)


1 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a)
2 37 C.F.R. §2.64(a)
3 TMEP §§ 1108.03-1108.03(a), 1109.16(c)
4 TMEP §§ 716.02(f), 716.06, 1109.16(d)