37 CFR 2.63 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Action after response.

§ 2.63 Action after response. (a) Repeated non-final refusal or requirement. After response by the applicant, the examining attorney will review all statutory refusals and/or requirement(s) in light of the response. (1) If, after review of the applicant's response, the examining attorney issues a non-final action that maintains any previously issued substantive refusal(s) to register or repeats any requirement(s), the applicant may submit a timely response to the action under § 2.62(a). (2) If, after review of the applicant's response, the examining attorney issues a non-final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond to such repeated requirement(s) by filing a timely petition to the Director for relief from the repeated requirement(s) if the subject matter of the repeated requirement(s) is appropriate for petition to the Director ( see § 2.146(b)). (b) Final refusal or requirement. Upon review of a response, the examining attorney may state that any refusal to register or requirement is final. (1) If the examining attorney issues a final action that maintains any substantive refusal to register, the applicant may respond by timely filing: (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to overcome any substantive refusal to register, and comply with any outstanding requirement, maintained in the final action; (ii) An appeal to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142; or (iii) A request for extension of time to respond or appeal under § 2.62(a)(2). (2) If the examining attorney issues a final action that contains no substantive refusals to register, but maintains any requirement, the applicant may respond by timely filing: (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to comply with any outstanding requirement maintained in the final action; (ii) An appeal of any requirement to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142; (iii) A petition to the Director under § 2.146 to review any requirement, if the subject matter of the requirement is procedural, and therefore appropriate for petition; or (iv) A request for extension of time to respond or appeal under § 2.62(a)(2). (3) Prior to the expiration of the time for filing an appeal or a petition, the applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusal(s) and/or comply with any outstanding requirement(s). Filing a request for reconsideration does not stay or extend the time for filing an appeal or petition. The Office will enter amendments accompanying requests for reconsideration after final action if the amendments comply with the rules of practice in trademark cases and the Act. (4) Filing a request for reconsideration that does not result in the withdrawal of all refusals and requirements, without the filing of a timely appeal or petition, will result in abandonment of the application for incomplete response, pursuant to § 2.65(a). (c) Denial of petition. A requirement that is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board. If a petition to the Director under § 2.146 is denied, the applicant will have the later of the following periods to comply with the requirement: (1) The time remaining in the period for response to the Office action that repeated the requirement or made it final; (2) The time remaining after the filing of a timely request for extension of time to respond or appeal under § 2.62(a)(2); or (3) Thirty days from the date of the decision on the petition. (d) Amendment to allege use. If an applicant in an application under section 1(b) of the Act files an amendment to allege use under § 2.76 during the response period after issuance of a final action, the examining attorney will examine the amendment. The filing of such an amendment does not stay or extend the time for filing an appeal or petition. [80 FR 2310, Jan. 16, 2015, as amended at 86 FR 64326, Nov. 17, 2021]