Besides nonfinal and final office actions, an examining attorney can issue other types of office actions. Some require a response and others don’t. Before responding, check the title of the office action to see which type you received, whether a response is required, and the response deadline. The common types of office actions are described below.
An examiner's amendment confirms in writing a change to your application authorized by phone or email. Changes to your application can be authorized by you, your attorney, or another person who can sign contracts for you and who has authority to legally bind you. Generally, examiner’s amendments do not require responses. They are typically issued for minor legal problems with your application that can be resolved by phone or email. Examiner’s amendments are used to move your application toward registration faster.
A priority action confirms in writing a discussion you had with the examining attorney by phone or email about the legal problems with your application. A priority action includes explanations about legal problems with your application and, if possible, how to fix them. A priority action can be a nonfinal or final action. You must respond to a priority action within three months from the date it issues, unless you file a request to extend the deadline. Madrid applicants must respond within six months from the issue date and have no option to extend this deadline. Priority actions are typically issued when an examining attorney believes the legal problems can be resolved in writing by the applicant once the problems are discussed by phone or email. Priority actions are used to move your application toward registration faster.
A suspension letter, or letter of suspension, issues when your application is put on hold while the examining attorney waits for something to happen outside the examination process. For example, your application could be suspended while we wait for an assignment of ownership to be processed or a foreign registration to issue from another country. You may file a response to a suspension letter, but you are not required to.
We review suspended applications every six months to determine whether suspension is still appropriate. However, you can notify the examining attorney at any time if you think suspension is no longer necessary. For example, if we suspended your application because of a conflicting trademark in an earlier-filed application and you check the Trademark Status and Document Retrieval (TSDR) system and find that the other application was “abandoned,” you can call or email the examining attorney and request your application be removed from suspension.
A suspension inquiry requires you to provide information about why your application was initially suspended so we can determine if it should remain suspended. Typically, the examining attorney will issue a suspension inquiry only after your application has been suspended for six months or more. Suspension inquiries are also issued when information relevant to the suspension is not available to us in the USPTO databases. You must respond to this inquiry within three months of when it issues, unless you file a request to extend this deadline. Madrid applicants must respond within six months from the issue date and have no option to extend the deadline.
Notice of incomplete response
A notice of incomplete response generally issues when we receive a response to an office action that does not appear to be signed by someone with legal authority to sign it. You must submit a properly signed response either within 30 days from the date the notice issues, or within the time remaining in the response period—the notice will specify the deadline. If you file a response after the deadline, the application will be abandoned.