Office Action Response Checklist

By Casey Scott McKay · 2026-01-15

This checklist is the mark-agnostic procedural sequence for producing a complete, on-time, correctly signed response to any USPTO trademark office action, in eleven phases a practitioner can work top to bottom. It builds the deadline ladder under 37 C.F.R. § 2.62(a) — three months for most actions since 3 December 2022, six months and no extension for Section 66(a) Madrid files — and fixes the extension go/no-go date that actually decides whether the application survives. It covers confirming the applicant's exact legal name and domicile, who is permitted to sign under 37 C.F.R. § 2.193(e)(2), inventorying every ground as either an appealable refusal or a petitionable requirement, calling the examining attorney before drafting, pricing amendments against the one-way ratchet of 37 C.F.R. § 2.71(a), and putting evidence actually into the record rather than merely referring to it. It carries one invented matter — Brindle & Co.'s FOG SIGNAL cold brew, refused 14 July 2025 on five separate items — through the inventory, the phone call, the amendments, the declaration, and the filing receipt. It closes with the fee schedule current to 18 January 2025, the mistakes that abandon files, a deadlines table, and the escalation ladder from final action to reconsideration, appeal, and petition to revive.

IP and Technology > Trademarks | Checklist | Published 15 January 2026 - Updated 3 March 2026 | Casey Scott McKay - marksy.us

Summary. Eleven phases that take an office action from the morning it lands to the day the response is confirmed in the file wrapper. Docket first and read second; confirm who the applicant legally is and who may sign for it; inventory every ground and label each one a refusal or a requirement, because they have different exits; call the examining attorney before you draft; price the amendments against the rule that lets you narrow and never broaden; make the evidence actually of record; sign it correctly; file it through Trademark Center and prove you did. This is deliberately mark-agnostic — the substantive arguments live next door in the Office Action Response Toolkit — which makes it the right final pass over any response, whatever refusal you answered. One invented matter, Brindle & Co.'s FOG SIGNAL cold brew, runs through every phase so you can see what finished looks like.

Keywords: office action response · uspto examining attorney · three-month response deadline · 37 cfr 2.62 · trademark center filing · non-final office action · final office action · request for reconsideration · petition to revive · examiner's amendment · priority action · rule 2.61(b) information request · disclaimer requirement · identification amendment · evidence of record · s-signature · notice of appeal · application abandonment · suspension notice · tsdr docketing

What this checklist is for

Use this checklist to make sure nothing is missed. Every item below matters, and the items are ordered the way the work actually has to happen — because the two most common ways to lose a trademark application are missing a date and answering four of the examiner's five points.

An office action is not a verdict. It is a letter from a lawyer who has spent perhaps ninety minutes with the file, and you are entitled to disagree in writing, with evidence. What you are not entitled to is a partial answer. A response that brilliantly defeats a likelihood-of-confusion refusal and quietly ignores a disclaimer requirement is an incomplete response, and an incomplete response abandons the application on the deadline as thoroughly as no response at all. 37 C.F.R. § 2.65(a); TMEP § 718.03.

Who should use it. Prosecution counsel and paralegals who own the file; in-house counsel supervising outside firms; founders who filed pro se and have just discovered that "final" does not mean what it sounds like. It assumes you already know which refusal you are answering. If you do not, start with the Office Action Response Toolkit, which is the map of every ground and the arguments that move each one, and the Section 2 Refusal Response Checklist for the statutory-bar diagnosis.

What you'll need before you start. The office action PDF pulled from TSDR, not the forwarded email; the application as filed and every prior submission in the file wrapper; the examining attorney's name, law office number, and direct line from the signature block; the applicant's exact legal name and entity type from the state of formation, not from the letterhead; the cited registrations and their current TSDR status; a named human at the client who can sign a declaration; and $0 to $125 per class in extension fees depending on the decision you make in Phase 9.

| Phase | What you accomplish | When | |---|---|---| | 1 | Docket the action; build the three-date ladder | Day it issues | | 2 | Confirm the party, the domicile, and the signatory | Week 1 | | 3 | Build the matter identification block | Week 1 | | 4 | Inventory every ground; label refusal or requirement | Week 1 | | 5 | Call the examining attorney | Weeks 2-3 | | 6 | Decide the amendments | Weeks 3-4 | | 7 | Assemble and vet the evidence | Weeks 3-8 | | 8 | Draft the response | Weeks 6-10 | | 9 | Fees and the extension go/no-go | Two weeks before the original deadline | | 10 | Sign, file, prove you filed | Before the deadline | | 11 | Work what comes back | On the next action |

The matter we carry through. Brindle & Co., a Portland cold-brew roaster, filed an intent-to-use application for FOG SIGNAL on 3 March 2025 in Class 30 ("coffee; coffee-based beverages; ready-to-drink coffee") and Class 43 ("coffee shop services; mobile coffee cart services"). A non-final office action issued Monday, 14 July 2025 with five separate items. Brindle responded on 6 October 2025, was approved for publication, and received a notice of allowance on 13 January 2026 — which is where the Statement of Use Filing Checklist picks the file up.

Phase 1 — Open the file the day it issues, docket first and read second

[ ] Pull the action from TSDR and read the issue date printed on its face. Every deadline runs from that date, not from the day the email arrived or the day the client forwarded it.
- Authority. 37 C.F.R. § 2.62(a); TMEP § 711.
[ ] Identify which clock applies before calendaring anything.
- Why. For most office actions issued on or after 3 December 2022, the response period is three months, extendable once by three months on a request filed and paid before the original period expires. Requests for extension of protection under Section 66(a) — Madrid designations of the United States — keep the full six months with no extension mechanism at all. Post-registration office actions moved to the three-month period on 7 October 2023.
- Authority. 37 C.F.R. § 2.62(a); 15 U.S.C. § 1062(b), which since the Trademark Modernization Act of 2020 permits a period shorter than six months but not shorter than sixty days; 37 C.F.R. §§ 2.163(b), 2.184(b) for maintenance filings.
- Trap. A Madrid file and a domestic file sitting side by side on one docket, both calendared at three months, is how a Section 66(a) applicant loses three months of thinking time. The full rule is in The 3-Month Office Action Deadline; the WIPO routing is in WIPO Office Actions and Provisional Refusals.
[ ] Calendar three dates, not one: the response deadline; the extension go/no-go date two weeks earlier; and the extended deadline, provisionally, so it exists if you need it.
[ ] Flag any date landing on a Saturday, Sunday, or federal holiday, then plan to file a week early anyway. 37 C.F.R. § 2.196.
[ ] Verify the correspondence email of record is an address a live person monitors, and set a standing thirty-day TSDR check driven by your docket rather than by inbound mail. 37 C.F.R. §§ 2.18, 2.23(b).
- Why. The Office's duty is to send to the address of record. It has no duty to confirm anyone read it. Files die because that address belonged to an employee who left in March. See Docketing Deadlines.
[ ] Send a client report within five business days containing three things: the deadline, the plain-English list of what the examiner is objecting to, and a request for the specific facts you will need. Do not wait until you have an opinion.

Brindle, 14 July 2025. Three entries the same afternoon: response due Tuesday, 14 October 2025; extension go/no-go 30 September 2025; provisional extended deadline 14 January 2026. The file was worked to the first date and never needed the others.

Phase 2 — Confirm the party, the domicile, and who may sign

The stub version of this checklist began with "confirm the responsible party and their correct legal name," and it is first for a reason: it is the only item on the list that can void an application outright rather than merely delay it.

[ ] Pull the applicant's exact legal name and entity type from the state of formation, not from the client's letterhead, invoices, or website footer.
- Trap. "Brindle & Co." on the packaging is "Brindle Coffee Company LLC" at the Oregon Secretary of State. The application named an Oregon corporation. That is a correctable misstatement of entity type under 37 C.F.R. § 2.71(d) — but a filing by a party that never owned the mark is void ab initio and cannot be fixed by substitution. TMEP § 1201.02(b)-(c). Know which one you have before you draft.
[ ] Confirm ownership has not moved since filing. Ask for every assignment, contribution agreement, IP schedule, and security agreement signed since the filing date, recorded or not. 15 U.S.C. § 1060(a).
- Trap. A Section 1(b) application cannot be assigned before an amendment to allege use or a statement of use, except to a successor to the ongoing and existing business. 15 U.S.C. § 1060(a)(1). The founder who filed personally and assigned to a two-month-old corporation has a problem the office action did not mention.
[ ] Determine whether the applicant is foreign-domiciled. An individual with a permanent legal residence outside the United States, or an entity with its principal place of business outside it, must be represented by a US-licensed attorney. 37 C.F.R. §§ 2.2, 2.11(a); TMEP § 601.01(a).
- Trap. A response filed by an unrepresented foreign-domiciled applicant is not merely irregular. The Office may deny it entry, and the clock does not stop while that gets sorted out.
[ ] Confirm your firm is the attorney of record and that any prior representative has been properly revoked. 37 C.F.R. §§ 2.17(b), 2.19.
[ ] Identify, by name and title, the human who will sign, and confirm they qualify.
- Authority. 37 C.F.R. § 2.193(e)(2): a person with legal authority to bind the applicant; or a person with firsthand knowledge of the facts and actual or implied authority to act; or a qualified practitioner. TMEP § 611.03.
- Trap. A paralegal typing the attorney's name is not a signature. The signatory must personally enter the S-signature, and everyone who files a paper certifies its factual basis under 37 C.F.R. § 11.18(b), with sanctions available under § 11.18(c).

Phase 3 — Build the matter identification block

[ ] Write a header block you will reuse in every document in this matter and paste into the response caption: serial number, filing date, filing basis, classes, mark as it appears in the drawing, applicant's exact legal name, examining attorney, law office number, and the office action issue date.
- Why. Roughly one in ten avoidable prosecution errors is a transposed serial number. Type it once, verify it once, reuse it.
[ ] State the filing basis for each class — Section 1(a) use, 1(b) intent to use, 44(d) priority, 44(e) foreign registration, 66(a) extension of protection. Different bases carry different response periods, different specimen timing, and different amendment rights.
- Trap. An intent-to-use file cannot draw a specimen refusal yet, and cannot be amended to the Supplemental Register until an amendment to allege use is filed. 37 C.F.R. § 2.47(d); TMEP § 816.02. Brindle's file was 1(b), which took two otherwise-obvious exits off the table in Phase 6.
[ ] For every cited registration, record the registration number, owner of record, goods and services as registered, registration date, and current TSDR status — live, cancelled, expired, or subject to a pending Section 8.
- Why. A cited registration that is about to lapse for failure to file a Section 8 changes the entire strategy from argument to patience. Check the maintenance dates, not just the status line. See Section 8 & 9 Renewal Checklist.
[ ] Note any prior-filed pending application the examiner has flagged as a potential future citation, and calendar its own publication date. 37 C.F.R. § 2.83; TMEP § 1208.01.
[ ] Record the examiner's direct telephone number and email from the signature block. You are going to use them in Phase 5.

Phase 4 — Inventory every ground and label it refusal or requirement

[ ] Read the action twice: once for what it says, once for what it attaches. Then number every separate item the examiner raised, including items buried in a paragraph rather than given a heading.
[ ] Label each item a refusal or a requirement, because they have different exits.
- Why. A refusal is a substantive holding that the mark is unregistrable — 15 U.S.C. § 1052(d) confusion, § 1052(e)(1) descriptiveness, § 1052(e)(5) functionality — and refusals are appealable to the Trademark Trial and Appeal Board under 15 U.S.C. § 1070. A requirement is an instruction to fix something: amend the identification, enter a disclaimer under 15 U.S.C. § 1056(a), answer an information request under 37 C.F.R. § 2.61(b), correct the entity type. Requirements are generally reviewable by petition to the Director under 37 C.F.R. § 2.146, not by appeal.
- Trap. Applicants who appeal a requirement, or petition a refusal, lose on the wrong ground and do not get the fee back.
[ ] Note whether each item applies to all classes or only some. A partial refusal in one class can often be solved by dividing the application under 37 C.F.R. § 2.87 at $100 per child, letting the clean class register on its own schedule.
[ ] Assign each item an exit, an owner, and a due date. Do not begin drafting until every line has all three.

Brindle's inventory, 14 July 2025:

| # | What the examiner said | Type | Class | Exit | |---|---|---|---|---| | 1 | § 2(d) refusal citing Reg. No. 5,884,207, FOG BELL for "tea; iced tea" | Refusal | 30 | Argue DuPont; consider consent | | 2 | "Mobile coffee cart services" is indefinite | Requirement | 43 | Amend to ID Manual wording | | 3 | Rule 2.61(b) request: do the goods contain hemp-derived CBD? | Requirement | 30 | Verified answer, no hedging | | 4 | Entity type stated as corporation; records show an LLC | Requirement | Both | Correct under § 2.71(d) | | 5 | Advisory: prior-filed application Serial No. 98/412,660 | Advisory | 30 | Monitor; possible suspension |

Item 3 is the one that decides the file. A Rule 2.61(b) request is not a formality — failure to comply is itself a ground for refusal, and an evasive answer is worse than a bad one. 37 C.F.R. § 2.61(b); TMEP § 814. Brindle's website advertised a "FOG SIGNAL + CBD" limited run, which raised the lawful-use requirement of TMEP § 907 for goods containing cannabidiol outside the 2018 Farm Bill's 0.3% delta-9 THC threshold. That is not an argument you win about the mark. Read The Lawful Use Requirement and work the Regulated-Industry Trademark Filing Checklist before answering; the hemp-specific analysis is in Registering a Cannabis-Adjacent Trademark.

Trap. Answer the Rule 2.61(b) question the examiner asked, in a verified statement, and then delete the goods that create the problem. Brindle answered that the applied-for goods contain no cannabinoids and amended Class 30 to add "none of the foregoing containing cannabidiol or any cannabis-derived compound." Two sentences, refusal avoided.

Phase 5 — Call the examining attorney before you draft a word

[ ] Call the examiner about every requirement on your list, before you spend an hour writing.
- Why. Examiners rarely withdraw substantive refusals on the phone, but they routinely resolve identifications, disclaimers, claims of ownership of prior registrations, entity corrections, and description-of-the-mark wording. What comes back is an examiner's amendment — the examiner enters the change and no written response is required at all. 37 C.F.R. § 2.62(b); TMEP §§ 707, 709.
[ ] Before dialing, know the exact amendment wording you are willing to accept. Never authorize an identification change on a phone call you did not prepare for.
- Trap. Scope is forever. The identification you accept over the phone in July is the identification you must prove use for at the statement of use, defend at audit, and live inside when you enforce. Check the wording against the ID Manual and against the client's actual roadmap first. See Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist; the strategic stakes are in The Nice Classification System.
[ ] Ask the examiner directly whether a proposed amendment would resolve the refusal. You will often get a straight answer, and it is free.
[ ] Read every examiner's amendment the day it issues and confirm it says what you agreed to. No response is required — which means an error in it becomes the record unless you catch it.
[ ] If the examiner still needs something from you, expect a priority action instead. It carries the same response deadline as a full office action but usually needs only a short confirming submission. TMEP § 708.
[ ] Memorialize the call in the file the same day: who, when, what was agreed, what was not.

Brindle, 29 July 2025. Nine minutes on the phone cleared items 2 and 4. The examiner accepted "mobile café services featuring coffee and coffee-based beverages" from the ID Manual and entered the entity correction. An examiner's amendment issued 31 July. The written response now had to answer two items, not five.

Phase 6 — Decide the amendments, and price the one-way ratchet

[ ] Before proposing anything, internalize the governing rule: you may clarify or limit, never broaden. 37 C.F.R. § 2.71(a); TMEP § 1402.06.
[ ] Test each candidate amendment against three questions: does it actually remove the examiner's stated basis; is it consistent with what the client will really sell; and what does it cost in enforcement radius five years from now.
[ ] Choose from the amendments that are genuinely available:
- Narrow the identification or restrict trade channels to defeat relatedness under the second and third DuPont factors. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).
- Enter a disclaimer of an unregistrable component. 15 U.S.C. § 1056(a); TMEP § 1213. See In re Charger Ventures LLC, 64 F.4th 1375 (Fed. Cir. 2023).
- Claim acquired distinctiveness under 15 U.S.C. § 1052(f), in whole or in part — pleaded in the alternative, always.
- Amend to the Supplemental Register under 15 U.S.C. § 1091, available for a Section 1(a) file and for a 1(b) file only after an amendment to allege use.
- Amend the mark itself, but only if the change is not a material alteration. 37 C.F.R. § 2.72; TMEP § 807.14.
- Delete goods, services, or an entire class. Deleting a class does not refund the filing fee.
[ ] Price the restriction honestly before you offer it.
- Authority. Registrability is judged on the identification as written, not on how the applicant actually sells. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014). A restriction must also be meaningful — cosmetic limitations that do not change the commercial reality are given no weight. In re i.am.symbolic, llc, 866 F.3d 1315 (Fed. Cir. 2017).
- Trap. "Sold exclusively through applicant's own website" reads like a clever carve-out and functions like a cap on the registration's value. Offer it when it is true and you intend to live with it, not as a negotiating gesture.
[ ] Where the refusal is 2(d) and the registrant is reachable, decide whether to pursue a consent agreement. Consents are given substantial weight when they recite the parties' reasoning and the steps taken to avoid confusion, and little weight when they are naked. TMEP § 1207.01(d)(viii). Start from the Trademark Coexistence Agreement Template.
- Trap. Asking for consent tells a registrant you exist. Decide in advance whether you will abandon the mark if the answer is no, and read Responding to a §2(d) Likelihood-of-Confusion Refusal before making contact.
[ ] If the cited registration is genuinely vulnerable, consider a petition to cancel and a request that the application be suspended pending its outcome. You may not attack the cited registration collaterally in the response itself. TMEP §§ 716.02(a), 1207.01(d)(iv); see Filing a Petition for Cancellation.

Phase 7 — Assemble the evidence so it is actually of record

[ ] Understand the distinction that decides appeals: evidence referred to is not evidence of record. A hyperlink in a brief is nothing. Attach the page.
- Authority. Every internet exhibit needs its URL and the date accessed printed on it. Safer, Inc. v. OMS Invs., Inc., 94 U.S.P.Q.2d 1031, 1039 (T.T.A.B. 2010); TMEP § 710.01(b).
[ ] Submit third-party registrations as TSDR printouts or copies, never as a list. A mere listing of registration numbers does not make them of record. TMEP § 710.03.
- Why. Third-party registrations and third-party uses are how you show a cited mark is conceptually weak and entitled to a narrow scope. Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334 (Fed. Cir. 2015); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011).
[ ] Put every fact in a signed declaration under 37 C.F.R. § 2.20 or 28 U.S.C. § 1746, from a person with firsthand knowledge. Attorney argument about facts gets the weight it deserves, which is none.
[ ] For acquired distinctiveness, build the record against the recognized factors rather than dumping documents. Converse, Inc. v. International Trade Commission, 909 F.3d 1110 (Fed. Cir. 2018). The full evidentiary build is in Claiming Acquired Distinctiveness at the USPTO and the Secondary Meaning Evidence Checklist.
[ ] Audit the examiner's evidence with the same discipline. Undated printouts, foreign websites with no showing of US exposure, and dictionary entries from unnamed sources are all attackable, and the Office bears the burden on most grounds.
[ ] Name each exhibit file so a busy examiner can find it: 98412559_Ex-C_TSDR-Third-Party-Regs.pdf. Confirm file types and size limits before the deadline, not during it.
[ ] Ask, for each exhibit, what it will look like when opposing counsel quotes it in five years.
- Trap. Forty third-party registrations submitted to prove FOG BELL is weak also prove FOG SIGNAL is weak. The prosecution file is public and permanent. See Fraud on the Trademark Office for the outer boundary — In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009) requires intent to deceive — and the Trademark Fraud Claim and Self-Audit Checklist before signing anything verified.
[ ] If any part of the response was drafted or researched with a generative AI tool, confirm before filing that every citation exists and says what you claim, and that no client-confidential material left your controlled environment. Your 37 C.F.R. § 11.18(b) certification does not have a software exception. See the Generative AI IP Compliance Checklist.

Phase 8 — Draft the response

[ ] Open with a roadmap paragraph listing every numbered item and stating, for each, whether the applicant is complying, arguing, or arguing in the alternative. It is the most useful paragraph in the document for an examiner working a large docket.
[ ] Order the response the way the examiner ordered the action: requirements first, then each refusal under its own heading, then alternative positions clearly labeled, then an evidence index.
[ ] State amendments in operative language, quoted exactly, class by class — not described.
[ ] Cite precedential authority. Non-precedential Board decisions may be cited for persuasive value but bind nothing, and a response built on them reads as thin. TBMP § 101.03.
- Trap. "The Office registered three similar marks last year" is not an argument. Each application is decided on its own record. In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001). The narrow exception is the thirteenth DuPont factor where the applicant's own prior registration has coexisted with the cited mark for years. In re Strategic Partners, Inc., 102 U.S.P.Q.2d 1397 (T.T.A.B. 2012).
[ ] Keep it tight. Fifteen disciplined pages with forty exhibits beats forty pages with four. The Response to Office Action — Template is the right skeleton; ground-specific model arguments are in How to Overcome a Descriptiveness §2(e)(1) Refusal, Specimen Refusals, Overcoming a Section 2 Refusal, the Genericness Defense and Prevention Checklist, and, for drawing and description problems on colors, sounds, and product shapes, the Non-Traditional Trademark Application Checklist.
[ ] Proofread against the inventory table from Phase 4, item by item, and initial each line. This is the single highest-yield five minutes in the whole process.

Phase 9 — Fees, and the extension go/no-go

[ ] Two weeks before the original deadline, make an explicit go/no-go decision on the extension and write it in the file.
- Authority. 37 C.F.R. § 2.62(a). The request must be filed and paid before the original period expires. There is no grace period, no retroactive extension, and no partial credit for having intended to file one.
- Trap. Do not treat the extension as a default. It is cheap insurance when a declaration is outstanding or a consent is being negotiated, and it is three months of drift when it is used to avoid a decision.

| Filing | Fee (effective 18 January 2025) | Authority | |---|---|---| | Extension of time to respond to an office action | $125 per class | 37 C.F.R. §§ 2.6(a), 2.62(a) | | Petition to revive an abandoned application | $150 | 37 C.F.R. §§ 2.6(a), 2.66 | | Petition to the Director | $250 | 37 C.F.R. §§ 2.6(a), 2.146 | | Request to divide an application | $100 per child | 37 C.F.R. §§ 2.6(a), 2.87 | | Notice of ex parte appeal | $225 per class | 37 C.F.R. §§ 2.6(a), 2.142(a) | | Appellant's brief | $200 per class | 37 C.F.R. § 2.6(a) | | Response to an office action | No fee | — |

[ ] Confirm no deleted class triggers a refund expectation, and no added wording triggers a surcharge under the 2025 fee structure.
[ ] Give the client a written estimate before drafting begins: professional time, government fees, and the realistic cost of the escalation path if the refusal goes final. Budgeting for prosecution as a portfolio line item is covered in The Solo and Small Firm IP Practice Toolkit.
[ ] Confirm the current amounts on the USPTO fee schedule before quoting. Fees change, several are charged per class, and a stale number in an engagement letter is your problem.

Phase 10 — Sign it, file it, and prove you filed it

[ ] Confirm the S-signature format: the signatory personally types any combination of letters, numbers, spaces, and punctuation between two forward slashes — /Anna Reyes/ — with the name and title printed beneath. 37 C.F.R. § 2.193(a)(2), (c), (d).
[ ] Confirm the signatory is one of the categories in 37 C.F.R. § 2.193(e)(2), and that any supporting declaration is signed by the person with firsthand knowledge, not by counsel as a convenience.
[ ] File electronically through the Response to Office Action form in Trademark Center, which replaced the legacy TEAS forms in January 2025. Paper filing requires a granted petition. 37 C.F.R. §§ 2.23(a), 2.147.
- Trap. Post-publication and post-registration responses use different forms. A statement-of-use or ITU/Divisional Unit response filed on the examining-attorney response form can sit unrouted while the clock runs.
[ ] Enter substantive positions in the dedicated fields the form provides — the 2(f) claim, the disclaimer text, the amended identification — rather than burying them in an attached brief. Fields get indexed; attachments get read late.
[ ] File before the deadline day, and understand that the filing date is the date of receipt in the Office in Eastern Time. 37 C.F.R. § 2.195(a). A 9:30 p.m. Pacific filing on the deadline is a next-day filing.
[ ] Save the filing receipt, the confirmation email, and the complete submission as filed to the matter file the same day.
[ ] Confirm in TSDR within seventy-two hours that the response appears and that every attachment came through. Attachments fail silently.
[ ] Send the client a closing note with the filing receipt and a realistic next-action window — one to four months in most law offices. See What Happens After You File: The Examination Timeline.

Brindle, 6 October 2025. Filed at 10:14 a.m. Pacific, eight days early. Response to items 1 and 3, an evidence index of eleven exhibits, and a declaration from Brindle's founder on the CBD question. TSDR confirmed all eleven exhibits the next morning. Approved for publication 4 November.

Phase 11 — Work what comes back

[ ] Approval for publication. Docket the Official Gazette date and the thirty-day opposition window, then the notice of allowance if the file is 1(b). Hand off to the Statement of Use Filing Checklist.
[ ] A suspension notice. No response is required, but a short letter asking the examiner to lift the suspension sometimes works. 37 C.F.R. § 2.67; TMEP § 716.02(c). Calendar the six-month suspension inquiries — those do require a response, and ignoring one abandons the application. TMEP § 716.05.
[ ] A second non-final action. Treat it as a new matter and run this checklist again from Phase 1. A new deadline, a new inventory.
[ ] A final action. Three responses are proper and not mutually exclusive: comply with any outstanding requirement; file a request for reconsideration under 37 C.F.R. § 2.63(b)(3); and file a notice of appeal under 15 U.S.C. § 1070 and 37 C.F.R. § 2.142(a). All three run on the same three-month period, extendable once for $125 per class.
- Why file both. Reconsideration does not extend the appeal deadline, but filing them together causes the Board to acknowledge the appeal, suspend it, and remand — one last chance to complete a record that otherwise closes. TMEP § 715.04; TBMP § 1204. Close the record before the notice of appeal: evidence filed afterward is untimely absent a granted remand. 37 C.F.R. § 2.142(d).
- Trap. Two systems, one afternoon. The notice of appeal goes to the Board through ESTTA; the request for reconsideration goes to the examining attorney through Trademark Center.
- See the Ex Parte Appeal Checklist, Taking an Ex Parte Appeal, and Appealing a Final Refusal for the route, the odds, and the two doors out under 15 U.S.C. § 1071.
[ ] A procedural error — a new ground raised in a second action and not necessitated by your amendment, an improperly premature final — goes to the Director by petition under 37 C.F.R. § 2.146, not to the Board. TMEP § 714.05.
[ ] A notice of abandonment. File a petition to revive within two months of the notice's issue date, with the fee, a statement that the delay was unintentional, and the response that should have been filed. 37 C.F.R. § 2.66; TMEP § 1714. Most are granted. None are free, and none are guaranteed.

Common Mistakes

Believing the deadline is six months. It has been three for most actions since 3 December 2022, extendable once for $125 per class, and the request must land before the original period expires. 37 C.F.R. § 2.62(a).
Calendaring the response date and not the extension date. By the time the response date is close enough to worry about, the extension is already unavailable.
Answering four of five items. Everything unaddressed goes final, and the application abandons. TMEP § 718.03.
Treating a Rule 2.61(b) information request as optional. Non-compliance is an independent ground for refusal. 37 C.F.R. § 2.61(b).
Authorizing an identification amendment on an unprepared phone call. Scope is permanent; the call takes nine minutes; the preparation should take an hour.
Submitting screenshots with no URL and no access date. Worth nothing on appeal. Safer, 94 U.S.P.Q.2d at 1039.
Listing third-party registrations instead of attaching them. A list is not evidence. TMEP § 710.03.
Putting facts in attorney argument rather than a declaration. 37 C.F.R. § 2.20.
Claiming 2(f) without saying "in the alternative." You have just conceded the mark is not inherently distinctive, in a public file, forever.
Appealing a requirement, or petitioning a refusal. Wrong forum, lost fee, running clock.
Filing at 9 p.m. Pacific on the deadline. Eastern Time governs. 37 C.F.R. § 2.195(a).
Never checking TSDR after filing. Attachments fail silently, and the confirmation email does not verify them.
Forgetting that everything you file is public. The argument that saves this application is the exhibit that sinks your next enforcement action.

Deadlines at a Glance

| Event | Clock | Authority | Extendable | Fee | |---|---|---|---|---| | Response to a non-final office action, domestic application | 3 months from issue date | 37 C.F.R. § 2.62(a) | Once, by 3 months, requested before expiry | $125 per class | | Response to an office action, § 66(a) extension of protection | 6 months from issue date | 37 C.F.R. § 2.62(a) | No | — | | Response to a post-registration office action | 3 months from issue date | 37 C.F.R. §§ 2.163(b), 2.184(b) | Once, by 3 months | $125 | | Response to a priority action | Same as the underlying action | TMEP § 708 | Same | Same | | Response to a suspension inquiry | 3 months from issue date | TMEP § 716.05 | Once, by 3 months | $125 per class | | Response to a final action, or notice of appeal | 3 months from the final action's issue date | 37 C.F.R. §§ 2.63(b), 2.142(a) | Once, by 3 months | $125 per class | | Request for reconsideration after final | With or before the notice of appeal | 37 C.F.R. § 2.63(b)(3); TMEP § 715.03 | No separate extension | None | | Notice of ex parte appeal (ESTTA) | With the post-final response deadline | 15 U.S.C. § 1070; 37 C.F.R. § 2.142(a) | No | $225 per class | | Appellant's brief | 60 days after the notice of appeal | 37 C.F.R. § 2.142(b)(1) | On motion | $200 per class | | Petition to the Director on a procedural error | 2 months from the action complained of | 37 C.F.R. § 2.146; TMEP § 1705.04 | Limited | $250 | | Petition to revive an abandoned application | 2 months from the notice of abandonment's issue date | 37 C.F.R. § 2.66 | No | $150 | | Opposition period after publication | 30 days from publication | 15 U.S.C. § 1063(a) | On request | Extension fees apply |

Fees are current to the USPTO schedule effective 18 January 2025 and several are charged per class. Confirm before quoting a client.