Possible USPTO Communications from Examining Attorneys
The USPTO examining attorney may issue several different types of official letters about your application. Below is a description of each type and information on how to respond.
Types of Official Letters:
1. Examiner's Amendment
An examiner’s amendment is a written confirmation of an amendment made to an application. Unless the applicant disagrees with the amendment, the applicant need not respond.
2. Priority Action
A priority action issues after the examining attorney consults with the applicant regarding problems with the application. This will include the reason why registration is being refused or how to satisfy certain application requirements. Unlike an examiner’s amendment, the applicant must respond to a priority action within 6 months from the date the priority action is issued or the application will be abandoned.
3. Office Action
An Office action issues to notify the applicant regarding problems with the application. This will include the reason why registration is being refused or what requirements must be satisfied. In most cases, the applicant must respond to an Office action within 6 months from the date the Office action is issued or the application will be abandoned.
There are two types of Office actions: non-final and final. A non-final Office action raises an issue for the first time. A final Office action issues when the applicant's response to the prior Office action fails to address or overcome all issues. An applicant’s only response to a final Office action is either compliance with the requirements or appeal to the Trademark Trial and Appeal Board.
4. Suspension Letter
A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons. These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.
Response Deadlines:
Most responses to Office actions (official letters) must be received within 6 months from the mailing date on the Office action. In certain circumstances, the Office action will specify a different response period. There are no extensions to the deadline specified in the letter. Examining attorneys have no discretion to extend the time period for filing a response. If applicants do not submit a timely response to an Office action, their applications will be declared abandoned.
How to Respond to Official Letters:
The USPTO strongly recommends filing a response electronically through the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/trademarks/teas/response_forms.jsp. All forms filed via TEAS are time/date stamped when received on the USPTO server, according to Eastern Standard Time (EST) and EST controls for purposes of determining the timeliness of a document. Any submission that arrives as of 11:59 p.m. EST will be given that day's filing date (i.e., regardless of the USPTO's "normal" business hours).
However, responses may also be submitted by facsimile or regular mail. Applicants should address each issue raised by the examining attorney and include the applicant’s name, mark, serial number, law office, and examining attorney in the body of the response. To ensure that a response if considered timely, an applicant may wish to add to the end of the response a properly completed "certificate of transmission" for responses submitted by facsimile or a properly completed "certificate of mailing" for responses submitted by mail. Applicants should retain a photocopy of the response with the signed certificate in the event that the response is lost or misplaced by the Office. See TMEP Section 306.05 for additional information on the certificate of transmission procedure and TMEP Section 305.02 for additional information on the certificate of mailing procedure.
