37 C.F.R. §2.63 Reexamination.

1. (a) After response by the applicant, the application will be reexamined or reconsidered. If registration is again refused or any formal requirement[s] is repeated, but the examiner’s action is not stated to be final, the applicant may respond again.
2. (b) After reexamination the applicant may respond by filing a timely petition to the Director for relief from a formal requirement if: (1) The requirement is repeated, but the examiner’s action is not made final, and the subject matter of the requirement is appropriate for petition to the Director (see §2.146(b)); or (2) the examiner’s action is made final and such action is limited to subject matter appropriate for petition to the Director. If the petition is denied, the applicant shall have until six months from the date of the Office action which repeated the requirement or made it final or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement. A formal requirement which 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.

The examining attorney will consider the applicant’s response and will determine whether the mark may be approved for publication or registration. The examining attorney must carefully consider all arguments, comments, and amendments made or proposed by the applicant.

If the applicant’s response has put the application in condition for approval for publication for opposition or registration on the Supplemental Register, the examining attorney will approve the application for publication or registration, as appropriate.

If the applicant’s response has not put the application in condition for publication or registration, the examining attorney will issue an Office action, or telephone or e-mail the applicant, depending on the circumstances.

If the applicant’s response neither resolves all of the outstanding issues nor raises any new issues, and the applicant has had an opportunity to reply to all points raised by the examining attorney, the examining attorney’s next action should be stated to be final. See TMEP §§714-714.05(f).

If the examining attorney has cited an earlier-filed conflicting application, and the applicant responds by arguing that there is no likelihood of confusion, the examining attorney should suspend the application pending disposition of the conflicting application, if applicant’s arguments are not persuasive. See TMEP §716.02(c) regarding suspension pending disposition of an earlier-filed conflicting application, TMEP §716.03 regarding the applicant’s request to remove an application from suspension, and TMEP §§1208-1208.02(f) regarding conflicting marks in pending applications.

When assigned to act on an application that was previously handled by a different examining attorney, the examining attorney 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.

Every refusal or requirement made in a prior Office action that is still outstanding must be referenced in any subsequent action, including Notices of Suspension. In addition, when a particular refusal or requirement has been withdrawn, obviated, or satisfied because of applicant’s response or otherwise, the examining attorney should notify the applicant in any action that immediately follows.

Noting all outstanding refusals and requirements is done only as a courtesy to prevent any misunderstanding. A refusal or requirement issued in a previous action remains in effect unless the examining attorney specifically indicates that it has been withdrawn, obviated, or satisfied. Thus, if an examining attorney issues an Office action that does not mention an outstanding refusal or requirement that was raised in a previous action, the refusal or requirement may nonetheless be made final in a subsequent action, if the application is otherwise in condition to be made final.

When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments.

In response to a refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), the applicant may respond that the cited registration should be cancelled because the registrant has not filed the required maintenance documents.

The examining attorney must not withdraw a refusal of registration under §2(d) until the Trademark database shows that the 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 grace period before updating its records to show that the registration is cancelled or expired.

If the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired. If a party other than the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the party should contact the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 and request that the database be updated to show that the registration is cancelled or expired.