In general, applications are assigned for examination in the order in which they are received in the U.S. Patent and Trademark Office (USPTO), unless the application is made "special." See TMEP §702.02 regarding "special" applications.
Generally, amended applications (i.e., applications that contain a response from the applicant), remands from the Trademark Trial and Appeal Board (Board), and statements of use are also reviewed in the order in which they are received in the USPTO.
If a voluntary amendment is submitted before the application is assigned for examination, it is placed in the record when filed and will be considered by the assigned examining attorney during initial examination of the application. Voluntary amendments, including those submitted immediately after the filing of an application and prior to examination, are subject to the same examination standards as amendments made in response to a refusal or requirement. Thus, if a voluntary amendment proposes changing the identification of goods or services, the permissible scope of the amendment is based on the original identification (assuming there is no previously acceptable amendment of the identification). See TMEP §§1402.07(d), (e). Likewise, a pre-examination voluntary amendment of the mark drawing or mark description will be compared to the original drawing or description to determine whether the amendment is a material alteration. See TMEP §807.14. See TMEP §807.17 regarding the processing of unacceptable amendments to drawings and TMEP §1402.15 regarding the processing of unacceptable amendments to identifications.
Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension. See TMEP §§716–716.06 regarding suspension.
Examining attorneys should immediately act on inquiries regarding applications approved for publication or issue that are returned to the examining attorney to take action or provide information.
Where appropriate, the managing attorney may direct that a particular case be given special handling.
When an examining attorney resigns, the examining attorney should spend any remaining time in the Office getting his or her amended cases (including statements of use under 15 U.S.C. §1051(d) and appeal briefs), especially those with involved records, ready for final disposition.
While the USPTO normally processes applications in the order in which they are received, there are two procedures whereby an application can be made "special," so that initial examination will be expedited.
Request to Make Special - Registration Inadvertently Cancelled or Expired Under 15 U.S.C. §1058, §1059, or §1141k . A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired under 15 U.S.C. §1058, §1059, or §1141k will be made special upon the request of the applicant if the applicant is the prior registrant or the assignee of the prior registrant. No petition fee is required in this situation. However, the mark in the new application must be identical to the mark in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration.
A request to make an application special because a registration was inadvertently cancelled is reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy. The applicant must first file the application via the Trademark Electronic Application System (TEAS), except in limited circumstances. See 37 C.F.R §2.21(a); TMEP §301.01. The applicant should then submit a request to make special that includes the newly assigned serial number and the number of the cancelled registration. Generally, the request must be filed electronically, using the TEAS Request to Make Special form, available at https://www.uspto.gov. See 37 C.F.R §2.23(a); TMEP §301.01.
Petition to Make Special. A petition to make special is a request to the Director under 37 C.F.R. §2.146 to advance the initial examination of an application out of its regular order. See TMEP §§1710–1710.02 regarding the petition requirements and filing procedure.
The examining attorney must promptly examine any application that has been made "special."
The term "companion applications" refers to pending applications filed by the same applicant. An application is pending until it registers or abandons. Pending applications include applications that have been approved for publication or for registration on the Supplemental Register, applications in the Intent-to-Use (ITU)/Divisional Unit, and revived or reinstated applications.
If an applicant has multiple pending applications, the issues in the applications are likely to be similar. When assigned a new application, an examining attorney will be assigned the companion applications filed within three months of the filing date of the first assigned application. If an applicant files more than ten applications within a three‑month period, only the first ten will be assigned to one examining attorney. Examining attorneys are encouraged to assign all unassigned companion applications for the same or similar marks to themselves, even if the applications were filed outside the three-month period. However, any companion applications may only be self-assigned by the examining attorney at the time of initial examination of the new application.
The assignment of companion applications is done electronically, based upon the owner’s name as set forth in the application. Therefore, the owner’s name should be set forth consistently in all applications.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
If the Trademark database indicates that a companion application has been assigned to a different examining attorney, the examining attorney should not transfer his or her application to the other examining attorney. However, the examining attorney must review the electronic record of the earlier companion application before taking action in a later companion case, and should act consistently, unless it would be clear error ( see TMEP §706.01) to do so. If the examining attorney believes that acting consistently with the prior action(s) would be erroneous, he or she should bring the issue to the attention of the managing attorney or senior attorney.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
If the applicant previously filed a companion application that has matured into a registration, the examining attorney should not transfer his or her application to the prior examining attorney. Generally, in the later application, the examining attorney should act consistently with the registration, unless it would be clear error ( see TMEP §706.01) to act consistently. However, the USPTO is not bound by the decisions of the examining attorneys who examined the applications for the applicant’s previously registered marks, based on different records. Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought. See TMEP §1216.01 and cases cited therein.
See TMEP §702.03(a)(iv) regarding classification and identification in companion registrations.
If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable, unless the identification or classification is clearly wrong. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion application or registration, the examining attorney must note the companion application serial number or registration number in a Note to the File.
Sometimes, the classification and identification of goods and/or services in the prior companion application or registration is clearly wrong. For example, identifications and class assignments that were acceptable in the past may no longer be in accord with the current Nice Agreement classification system ( see TMEP §§1401.02–1401.02(c) ) or with USPTO policy on acceptable identifications, which change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration. See TMEP §§1402.14, 1904.02(c)(v).
The term "conflicting applications" refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), due to a likelihood of confusion between the marks. When assigned a new application, the examining attorney must search the USPTO’s automated records to determine whether there are any conflicting applications. If there are conflicting applications, the examining attorney should not transfer the conflicting application to the examining attorney who acted on the first conflicting application. Instead, the examining attorney should examine the assigned application and issue an Office action that includes a notice to the applicant that there is a prior-filed application to register a mark that may be likely to cause confusion with the applicant’s mark. See TMEP §§1208–1208.03(c). The examining attorney handling the later-filed application should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error ( see TMEP §706.01) to act consistently. If necessary, the examining attorney should review the electronic record of the earlier-filed application before taking an action in the later-filed conflicting application.
The USPTO will not issue two or more identical registrations on the same register. If two applications on the same register would result in registrations that are exact duplicates, the USPTO will permit only one application to mature into registration, and will refuse registration in the other application. 37 C.F.R. §2.48. For instance, if two identical applications are filed by an applicant, and the USPTO has not taken action in either application, then the USPTO will refuse registration in both applications. However, if the USPTO has already taken action in one of the applications but not the other, then the USPTO will refuse registration in the second application.
The applicant may overcome the refusal(s) by abandoning one of the applications. If practicable, the USPTO will permit the applicant to choose which application should mature into registration. If one of the applications has matured into registration, the applicant may choose to either surrender the registration and allow the application to proceed to registration, or retain the registration and abandon the application.
Basis. Applications filed under or amended to §1 of the Trademark Act would result in duplicate registrations if the only difference between them is that one is based on use in commerce under §1(a) and the other is based on intent-to-use under §1(b). However, an application filed under §1 and an application filed under §44 that are otherwise identical would not result in duplicate registrations, nor would an application under §66(a) of the Trademark Act that is otherwise identical to an application filed under §1 or §44.
Classification Change. Where the international classification of goods/services has changed, a new application for registration of the same mark for the same goods/services in a different class will not result in a duplicate registration. For example, if applicant owns a registration of a mark for legal services in Class 42, and files a new application after January 1, 2007, for registration of the same mark for legal services in Class 45, this is not a duplicate.
Standard Character/Typed Drawing. An application for registration of a mark depicted in standard characters would result in a duplicate registration of an application of the same mark in "typed" format ( see TMEP §807.03(g)) for the same goods/services.
Standard Character/Special Form. A standard character drawing and a special form drawing of the same mark would not result in duplicate registrations.
Overlapping Goods/Services. Applications/registrations with identifications that include some of the same goods/services, but also different goods/services, would not result in duplicate registrations.
Color. A drawing in which the entire mark is lined for color ( see TMEP §808.01(b)), would result in a duplicate registration of a color drawing of the mark, if the colors are identical. See TMEP §§807.07–807.07(g) regarding color drawings.
If the applicant claims different shades of a color (e.g., purple in one and lavender in the other), any resulting registrations are not duplicates.
Where one application/registration is not completely lined for color (i.e., if the mark on the drawing includes color(s) in addition to unclaimed or unexplained black, white, and/or gray), this would not result in a duplicate registration of an application seeking registration that includes a claim of the same color(s) in addition to a claim of color for, or an explanation of the presence of, the black/white/gray in the drawing. See TMEP §§807.07(d)–807.07(d)(iii) regarding drawings that include black/white/gray.
Principal/Supplemental Register. An application for registration of a mark on the Principal Register would not result in a duplicate of an application for registration of the same mark on the Supplemental Register.
Registrations Issued Under Prior Acts. If eligible, marks registered under the Acts of 1881, 1905, and 1920 may also be registered under the Act of 1946 ( see §46(b) of the Trademark Act of 1946). Even if the mark and the goods/services in a registration issued under the 1946 Act are identical to the mark and goods/services in a registration issued under a prior Act, the registrations are not considered duplicates. See TMEP §§ 1601.04, 1601.05, 1602.02, and 1602.03 regarding registrations issued under prior Acts.
Section 66(a) Application Based on Different Int’l Registration. A §66(a) application would not result in a duplicate registration of another §66(a) application or registered extension of protection based on a different international registration.
When an application is a duplicate of a registration owned by the applicant, and USPTO records show that the registration is still active, the examining attorney must refuse registration. If the registration is subject to cancellation for failure to file an affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k, or due to expire for failure to file a renewal application under 15 U.S.C. §1059 (i.e., because the grace period has passed and no affidavit or renewal application has been filed), and the application is otherwise in condition for approval or final refusal, the examining attorney must suspend the application until the Trademark database is updated to show that the registration is cancelled or expired. See TMEP §1611 for information about how the owner of a registration who has not timely filed a §8 or §71 affidavit or declaration or §9 renewal application may expedite the cancellation or expiration of its own registration.
Applications for registration, including amendments to allege use under section 1(c) of the Act, and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
The initial examination of an application by the examining attorney must be a complete examination. A complete examination includes a search for conflicting marks and an examination of the written application, any voluntary amendment(s) or other documents filed by applicant before an initial Office action is issued (see TMEP §702.01), the drawing, and any specimen(s) or foreign registration(s), to determine whether the mark is eligible for the type of registration requested, whether amendment is necessary, and whether all required fees have been paid.
If, on initial examination, the examining attorney finds the mark in an application for registration on the Principal Register to be in condition for publication for opposition, the examining attorney will approve the application for publication. Similarly, if the examining attorney finds the mark in an application for registration on the Supplemental Register to be in condition for registration, the examining attorney will approve the application for registration. The USPTO will send a notice of publication or certificate of registration to the applicant in due course.
If the application is not in condition to be approved for publication or issue, the examining attorney will write, telephone, or email the applicant, as appropriate, informing the applicant of the reason(s) why the mark may not be registered and of the defect(s) that can be corrected or amended to make the application acceptable.
The examining attorney’s first Office action must be complete, so the applicant will be advised of all requirements for amendment and all grounds for refusal, with the exception of use-related issues that are considered for the first time in the examination of an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) in an intent-to-use application. See TMEP §§1102.01 and 1202–1202.19(k) regarding use-related issues that may be considered for the first time in the examination of an amendment to allege use or a statement of use. Every effort should be made to avoid piecemeal prosecution, because it prolongs the time needed to dispose of an application. See TMEP §705.01 about including wording in an Office action to indicate the status of the application and acknowledge documents received and TMEP §706 regarding new issues raised by the examining attorney after the first Office action.
Examining attorneys must also clearly explain all refusals and requirements. For example, if the identification of goods/services is indefinite, the examining attorney must explain why the identification is not acceptable and, if possible, suggest an acceptable identification. See TMEP §§705–705.08 for further information about examining attorneys’ Office actions.
If the examining attorney finds no conflicting marks, but must write to the applicant about other matters, the examining attorney must inform the applicant that no conflicting marks have been found. This is commonly called the "search clause."
In an application filed under §1 or §44 of the Trademark Act, if the examining attorney cannot make a proper search or cannot examine the application properly due to a lack of adequate information, the examining attorney must specifically indicate what information is needed, request that it be furnished, and state that further action on the matter will be taken as soon as the information is received. See 37 C.F.R. §2.61(b) and TMEP §814 regarding requirements for additional information.
If some but not all of the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search in part. The examining attorney must specifically indicate the good/services for which a search has been conducted by listing the goods/services for which no conflicting marks have been found, and, if relevant, issuing a §2(d) refusal that is specifically limited to certain goods/services. See TMEP §718.02(a) regarding partial refusals.
If all the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search. The examining attorney must issue a full refusal, require the necessary amendments to the goods/services, and state that further action on the merits with respect to likelihood of confusion will be considered as soon as a sufficiently definite identification of goods/services is received.
Before issuing a letter deferring action, the examining attorney should consult with the managing attorney or senior attorney.
When a non-signatory examining attorney examines an application, a supervisory examining attorney must thoroughly review the action. The usual procedure is for the non-signatory examining attorney to explain relevant information to the supervisory examining attorney, discussing any potential refusals or requirements. The supervisory examining attorney may indicate the action to be taken.
If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by email or telephone communication, which is typically followed by a written action. This constitutes the examining attorney’s official action.
Written Office actions may be of a variety of styles, including: (1) an "examiner’s amendment" (see TMEP §§707–707.03), in which the examining attorney formally makes amendments to the application; (2) a "priority action" (see TMEP §§708–708.05), setting forth and explaining the requirements discussed by telephone with the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or with a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner") designated by the applicant; (3) a letter explaining the bases for refusal(s) or requirement(s); (4) an examiner’s amendment combined with a priority action ( see TMEP §708.05); or (5) a suspension notice (see TMEP §§716–716.06). Office actions may be prepared through the use of standardized form paragraphs, in combination with language written to address the particular facts relevant to the refusal(s) or requirement(s).
The USPTO encourages the use of examiner’s amendments and priority actions whenever appropriate.
The examining attorney must indicate the status of the application at the beginning of each letter.
In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as "Upon examination of this application...." The examining attorney must acknowledge any voluntary amendment or other document received before the first action by identifying the document and the date of its receipt.
In subsequent actions, examining attorneys should begin letters with a sentence such as, "This Office action is in response to applicant’s communication filed on [date]." Other documents received, such as supplemental amendments, affidavits, and new drawings, should also be acknowledged. See TMEP §§713–713.03 regarding examination of amendments and responses to Office actions, TMEP §807.17 regarding the processing of unacceptable amendments to drawings, and TMEP §1402.15 regarding the processing of unacceptable amendments to identifications.
Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act. For example, registration of a trademark should not be refused "because it is a surname," but "because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act."
Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested. However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.
Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions. However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.
In Office actions, and email and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in applications. The examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re Am. Physical Fitness Research Inst. Inc., 181 USPQ 127, 127–28 (TTAB 1974) . See also TMEP §1801.
When refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and attach to the Office action a copy of each cited registration, which will become part of the record. The examining attorney should explain the reasons that the mark in each cited registration is a basis for refusal under §2(d).
If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, or that the USPTO attached a registration but did not cite the registration as a bar to registration in the Office action, the USPTO will reissue the Office action citing and attaching the relevant registration(s) and provide the applicant with a new response period.
When the examining attorney refers to matter in a printed publication, the examining attorney must provide the citation for the publication, and include the relevant material with the Office action. It is not necessary to attach a published legal decision to an Office action. A citation is sufficient. See TMEP §705.05 regarding citation of decisions.
When the examining attorney refers to an online publication, such as an article downloaded from the Internet, the examining attorney must provide information that would aid a party in locating the document, including the complete URL address of the website, the time and date the search was conducted, and the terms searched, and include the relevant material with the Office action. See TMEP §710.01(a) regarding evidence from a research database and TMEP §710.01(b) regarding Internet evidence.
In addition to the Trademark Act of 1946, as amended, and the Trademark Rules of Practice, examination is also governed by precedential decisions in prior cases. See TBMP §§101.01, 101.03. These decisions include those from the United States Supreme Court, precedential decisions from the Court of Appeals for the Federal Circuit (Federal Circuit) (which has exclusive jurisdiction over direct appeals from decisions of the Trademark Trial and Appeal Board (Board) and the Court of Customs and Patent Appeals (the predecessor of the Federal Circuit), precedential decisions of the Board, and the Director of The U.S. Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) (Director), who determines petitions on examination procedural matters, among other things. TBMP §101.03.
"Decisions of the Board, the Director, [] the . . . Federal Circuit [and the Supreme Court] appear in the United States Patents Quarterly (USPQ), Bloomberg Law database, and may also be found in LexisNexis Corporation’s LEXIS/NEXIS legal database and in the Intellectual Property Library of ThomsonReuters Corporation’s WESTLAW database." Id. (internal footnote omitted). Also, final Board decisions are available by accessing the TTAB Reading Room electronic database at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions on the USPTO website. Id.
In addition, docket information and images of Board files may be viewed by accessing TTABVUE at http://ttabvue.uspto.gov/ttabvue/. Id.
When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given. If possible, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d), or Federal Supplement (F. Supp. or F. Supp. 2d) should also be given. The court or tribunal (U.S., Fed. Cir., C.C.P.A., TTAB, 2d Cir., etc.) and the date of the decision should always be given.
Precedential Board Decisions. Decisions designated by the Board as "Citable as Precedent," "Precedent of the Board," "Precedent of the TTAB," or "for publication in full" are citable as precedent and a United States Patents Quarterly citation should be given. TBMP §101.03.
Non-precedential Board Decisions. Prior to January 23, 2007, it was the Board's policy that its opinions not designated as precedential should not be cited and, if cited, were to be disregarded. See, e.g., In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001); In re Polo Int’l Inc., 51 USPQ2d 1061, 1063 n.3 (TTAB 1999); Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992) Since that date, the Board has changed that policy and permitted citation to any Board decision. TBMP §§101.03, 1203.02(f); see generally Citation of Ops. to the Trademark Trial & Appeal Bd., OG Notice (Jan. 23, 2007). Although Board decisions designated as not precedential are not binding upon the Board, they may be cited and considered for whatever persuasive value they might have. In re UST Glob. (Sing.) Pte. Ltd., 2020 USPQ2d 10435, at *7 n.23 (TTAB 2020) (citing In re Soc’y of Health & Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018)); TBMP §§101.03, 1203.02(f). However, the Board does not encourage the practice of citing non-precedential decisions. TBMP §§101.03, 1203.02(f).
When citing to an unpublished decision of the Board, if the decision does not appear in the United States Patents Quarterly or the USPTO’s public electronic databases, the examining attorney should append the decision to the Office action; otherwise, citation may be to TTABVUE by docket entry and page number. TBMP §§101.03, 1203.02(f).
USPTO Publications. The examining attorney may cite sections of the Trademark Manual of Examining Procedure (TMEP) or Trademark Trial and Appeal Board Manual of Procedure (TBMP). The abbreviations TMEP and TBMP are usually sufficient; however, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney may identify the Manuals by their full names in the first citation to the Manuals. It is not necessary to provide a copy of the relevant section(s) of the Manuals.
When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Trademark Official Gazette in which it may be found.
Examining attorneys must review and sign every Office action using an electronic signature. The signature block should include the name, title, law office, telephone number, and email address of the examining attorney. Thus, the signature block for an Office action issued by an examining attorney should be set forth as follows:
/Examining attorney’s full name/
Trademark Examining Attorney
Law Office xxx
(571) xxx-xxxx
_____________@uspto.gov
If an examining attorney does not have signatory authority, he or she must sign the action and refer it to an authorized signatory examining attorney, who will review and approve the action. Review by a reviewer should ordinarily be done within two working days after receipt from the non-signatory examining attorney.
Except for first Office actions in a §66(a) application, a date is placed on Office actions when they are issued. See TMEP §1904.02(h). For outgoing email communications, including electronically issued Office actions, the date is applied automatically when the communication is released to the USPTO's electronic mail system.
The Office action signed by the examining attorney, along with any supporting evidence and/or copies of registered marks or pending applications cited as a bar to registration, is available for review by the public through the Trademark Status and Document Retrieval (TSDR) portal on the USPTO website at https://tsdr.uspto.gov/.
When an Office action issues, the USPTO will email a notice to the applicant with a link or web address to access the Office action using TSDR. The Office action will not be attached to the email notice. Upon receipt of the email notice, the applicant may use the link or web address to view and print the actual Office action and any evidentiary attachments. In the rare case of a treaty-exempt applicant who is not required to provide an email address for correspondence with the USPTO, the USPTO will mail a copy of the Office action to the applicant.
Each Office action must set forth the deadline for response, if applicable. 37 C.F.R §2.62(a).
Generally, the examining attorney’s letter or Office action will include a "response clause" notifying the applicant that the applicant must respond to the action within the following time period, as applicable, to avoid abandonment under 15 U.S.C. §1062(b)(2): (1) for Office actions issued on or after December 3, 2022 for §1 and/or §44 applications, within three months of the issuance date ("three-month response clause"); or (2) for Office actions issued for §66(a) applications and for Office actions issued before December 3, 2022, within six months of the issuance date ("six-month response clause"). See TMEP §§711–711.03 regarding the deadline for response to an Office action.
An Office action with a three-month response clause also includes information regarding the option to request one three-month extension of the time to respond. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.
The examining attorney must not include a response clause in an examiner’s amendment (see TMEP §§707–707.03) or suspension notice (see TMEP §§716–716.06), in a situation where the time for response runs from the issuance date of a previous Office action (see TMEP §§711.02, 715.03(c)), or in a subsequent final action where a notice of appeal has previously been filed (see TMEP §715.04(b)).
If in the first Office action an examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to correct the inadvertent error in a subsequent action. Examining attorneys should exercise great care to avoid these situations, and should take this step only when the
