I filed a trademark application, is there a form to get an extension of time to respond to the USPTO

filed a application for a trademark . I am trying to trademark for a brand that I would like to print on tshirts.
I recieved a office action and as usual granted a 6month period to respond.
Due to circumstances beyond my control(death in family) I have not been able to file a response and I am worried that it may get abandoned if I dont get my response filed.
I am wanting to file an extension of time to respond if there is such a form or document .Can you please advise me as to what I can do?
Thank you
Answer this question Add to list

Answers (4)

Pamela Koslyn

Pamela Koslyn

Contributor Level 10
Trademark examining attorneys have no discretion to extend the time for filing a response to an office action, so you need to get a response filed within the 6 month time frame to avoid abandoning your application.

You should consult with an IP lawyer to get this response filed and to discuss whether what you've already filed is what you need, since you may need to re-apply anyway. A trademark for t-shirts should be the SOURCE of the t-shirts, not the design itself, so your mark should be for t-shirts and whatever other clothing items you've put on your description. Clothng, as a type of creative work, is considered functional and is usually not copyrightable.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.
1 1
Kenneth Eric Sharperson

Kenneth Eric Sharperson

Contributor Level 1
What issues were raised in the office action? Maybe the response is simple. You should have an IP lawyer review the office action.
1 1
Daniel Nathan Ballard

Daniel Nathan Ballard

Contributor Level 7
As noted, you're obligated to file your response within the six month period.

If you don't timely file your response, some or all parts of your application will go abandoned (depending on what objections were made to your application). You should read sections 718.02 and 718.03 of the TMEP which discuss incomplete Office Action responses and the potential for additional time to respond as well as section 1714.01(a) which includes links to other sections that discuss how to revive abandoned applications (which is quite easy). You can read the TMEP at < http://tess2.uspto.gov/tmdb/tmep/ >.

You should, of course, hire a trademark attorney to do all of this for you and to provide you with advice about how to properly brand a clothing line.
1 1
Alexis Nicholas Mueller

Alexis Nicholas Mueller

Contributor Level 3
The above answers are all correct in stating that there is no official way to extend the six month deadline to respond to an Office Action. Failure to respond will lead to abandonment.

However, if the Office Action is not marked "FINAL", you might be able to submit a response which addresses the issues raised in the Office Action, even if it does not fully dispose of each issue. The Examining Attorney will then maintain any remaining issues which were not fully addressed by the first answer and will issue a Final Office Action, which also gives the applicant six months to respond.

Applicant will then need to file a Request for Reconsideration after Final Office Action. If this request adequately addresses the issues raised in the Final Office action, the application will proceed to the next step in the application process. If the request fails to address and resolve all of the issues in the Final Office Action, the trademark application will be abandoned. This approach is generally not recommended if the issues raised in the Office Action are complex

Finally, please keep in mind that if your application does in fact go abandoned, you will have two months from the mailing date of the Notice of Abandonment to file a Petition to Revive your application. This petition will need to include complete responses fully resolving each of the issues listed in the most recent Office Action. The filing fee for a Petition to Revive is $100. Failure to file the Petition to Revive within two months after the Notice of Abandonment, will result in the irreversible abandonment of the application. At that point, your only option is to apply for a new trademark application.

I will echo the recommendation of my colleagues that you should seek further advice from a trademark attorney who could review the Office Action and recommend and/or draft the appropriate response.

Disclaimer: This answer is for informational purposes only and is not intended to serve as legal advice and so should not be used as a substitute for the advice of a competent attorney licensed in your state. This answer does not create an attorney client relationship.
0 0
Back to Search Results

Ask a Question

Get free answers from real lawyers.

Federal Regulation Resources