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1. Response to Examining Attorney Office Action Form
Use this form either to (1) respond to a nonfinal Office Action that a Law Office examining attorney has issued (i.e., a regular letter; a Priority Action; an Examiner's Amendment/Priority Action (where a response is still required for the "Priority Action" portion), based on an application or Statement of Use; or (2) pay an additional fee. Do not use this form to respond after a final action has issued. To submit a request for reconsideration of a final action, you must use the Request for Reconsideration form, or file an appeal to the Trademark Trial and Appeal Board. Also, do not use this form to respond to any actions sent after the mark is published and/or registered, or if the action issued by the Intent-to-Use (ITU) or Post-Registration unit. Also, if the original application was filed under Section 1(b), Intent to Use, do not use this form to add use dates of record. You must file an Allegation of Use form.
If you received an Office Action from an examining attorney regarding your application, you must respond within three months of the Office action “Issue date,” or within six months of the issue date of the Office action if you filed and were granted a three-month extension of the deadline, or your application will be abandoned. For Madrid applications under Section 66(a), the response deadline is six months from the “Issue date” of the Office action, with no option to extend the deadline. If the delay in responding to the Office action was unintentional, you may submit a Petition to Revive. Your response must be received by the USPTO server prior to 11:59 p.m., Eastern Standard Time, of the last day of the response period. Any problem with transmission will not excuse an untimely response. Should the last day of the response period fall on a Saturday, Sunday or U.S. Federal Holiday, you may submit your response prior to 11:59 p.m., Eastern Standard Time, of the next regular business day and it will be considered "timely." You should respond to each issue raised in the Office action.
2. Request for Reconsideration after Final Office Action Form
Use this form to respond to a final refusal of registration based on an application or Statement of Use. NOTE: Use this form only after issuance of a final Examining Attorney Office action and before the deadline for filing an appeal. The filing of this form does not extend the time for filing an appeal or other proper response to the final action. 37 C.F.R. §2.64(b). A Notice of Appeal is a different form that you must file separately to preserve your right to appeal the final refusal, if appropriate. See the Trademark Trial and Appeal Board forms.
If you file a Notice of Appeal at the same time as a Request for Reconsideration, your application will be referred to the Trademark Trial and Appeal Board (TTAB) for processing of the appeal first. The TTAB will (1) acknowledge the appeal first; (2) suspend further proceedings with respect to the appeal (including the applicant's time to file an appeal brief; and (3) remand the application to the examining attorney for review of the Request for Reconsideration. TMEP §715.04; TBMP §1204.
Also, do NOT use this form to respond to any actions mailed after the mark is published and/or registered, or if issued by the Intent-to-Use (ITU) or Post-Registration unit. Access the Intent to Use (ITU) forms to file a Statement of Use/Amendment to Allege Use and/or Request for Extension of Time to File a Statement of Use.
3. Response to Suspension Inquiry or Letter of Suspension
Use this form to respond either to (1) a Suspension Inquiry; or (2) a Letter of Suspension. You must respond to any Suspension Inquiry within three months from the issue date, or within six months of the issue date of the final office action if you filed and were granted a three-month extension of the deadline, or your application will be abandoned. For Madrid applications under Section 66(a), the response deadline is six months from the "Issue date" of the Suspension inquiry, with no options to extend the deadline. Although not required, you may use this form to respond to an actual Letter of Suspension, to present arguments in favor of removal of the application from suspension. Applicant's election not to present argument during suspension will not affect the applicant's right to present argument later should a refusal, in fact, issue at a later point. If a refusal does issue, the applicant will be afforded three months from the issue date of that Office action to submit a response or extension. Madrid applicants will be afforded six months to respond, with no option to extend. NOTE: Within this response form, you may also address any existing requirement(s) or other matter regarding your application; for example, to amend the listing of goods/services or enter a disclaimer.
4. Request for Extension of Time to File a Response
Use this form to request a single three-month extension of time to file a response due to an examining attorney issuing a pre-registration office action with a three-month deadline for applications with a filing basis of section 1 or section 44.
Learn how to use the form with our user guide.
Time limit. We must receive the request on or before the initial deadline in your office action. If the extension request is granted, we must receive your response within six months of the “issue date” in the office action. You can only file the Request for Extension of Time to File a Response form if you haven’t already filed your response.
5. Response to Intent-to-Use (ITU)/Divisional Unit Office action
Use this form either to: (1) respond to an Office Action that the Intent-to-Use (ITU) unit has issued after a mark has been published; or (2) pay an additional fee after a telephone or e-mail communication from ITU. Do not use this form to respond to an Office Action issued by either a law office examining attorney or a Post-Registration examiner. Also, do not use this form to file a Statement of Use; instead, you must file the specific Allegation of Use form. If you have received an Office Action from ITU regarding your application, you must respond within thirty (30) days of the issuance date of the Office action or prior to the expiration of the statutory filing period, or your application will be abandoned. Please refer to the Office Action to determine the proper response period. You should respond to each point raised in the Office Action fully and completely.
6. Response to Post-Registration Office action
Use this form either to (1) respond to an Office action that a Post-Registration examiner has issued; or (2) pay an additional fee related to a Post-Registration matter. See our user guide to learn how to use the form.
Do not use this form if your application has not yet registered; otherwise, a different TEAS response form would be appropriate. If you have received an Office action from a Post-Registration examiner regarding your registration, you must respond within six (6) months of the issue date of the Office action. You should respond to each point raised in the Office Action fully and completely.
7. Response to Petition to Revive Deficiency Letter
Use this form only if as a petitioner you are attempting to respond to a notice of deficiency that the USPTO issued after your filing of an incomplete Petition to Revive.
8. Response to Petition to Director Inquiry Letter
Use this form only if as a petitioner you are attempting to respond to a notice of deficiency that the USPTO issued after your filing of an incomplete Petition to Director.
9. Response to a Notice of Irregularity
Use this form only if (1) you are submitting a response to a notice of irregularity in an international application issued by the International Bureau of the World Intellectual Property Organization (IB); and (2) the IB response deadline has not expired. You may not use this form to respond to any IB irregularities notice concerning another Madrid-related filing.
Note – Response Must Be Complete: If your previous response was denied, you must respond completely to each issue raised in the notice of irregularity from the IB to which you are responding through the USPTO. Please note that all fee irregularities must be remedied directly with the IB. Even if your previous response to the irregularity submitted to the USPTO successfully addressed some of the issues, those responses must be restated in this response, along with addressing the additional issue(s) raised in the USPTO denial.