[E-trademarks] Trademark Center blocks me from filing for an extension of time

[Pamela Chestek]

These seems to me to be working as intended. You have a duty to respond 
completely in your first response ("An application will be abandoned if 
an applicant fails to respond to an Office action, /*or to respond 
completely*/, within the relevant time period for response," 37 CFR § 
2.65). AFAIK you have never been able to send a second response to an 
Office Action. You can file a Preliminary Statement before you get an 
Office Action, but once you filed a response you don't get to file 
anything further until you get another Office Action. That's always been 
the case, with the added gloss now that you can't file an extension 
after you filed a response either.

I would be surprised though if they actually abandoned the application 
due to an incomplete response. Has it happened to anyone?

Pam

Pamela S. Chestek
Chestek Legal
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com

Set a meeting with me <https://calendly.com/pamela-chesteklegal/30min>
On 10/21/2025 3:27 PM, Gerry J. Elman via E-trademarks wrote:
>
> Does anyone know of a workaround?
>
> Is this yet another example of inadequate beta testing?
>
> An individual filed a trademark application pro se.   She received an 
> Action from a trademark examining attorney that refused the 
> application as filed.  She then engaged me to take over prosecution.  
> It was agreed that I would interview the Examining Attorney and then 
> decide whether to seek an extension of time, since we are almost at 
> the 3-month deadline from the date of the Action.
>
> To provide a basis for the EA to speak with me about the case, I 
> immediately  “entered my appearance” in the case by filing an 
> “incomplete” Response to the OA.  I was able to provide my contact 
> information to add an attorney to the case where none had previously 
> trod.  Then I interviewed the EA and told him that I’d be seeking an 
> extension to file a written response.
>
> But upon seeking to submit electronically a Request for Extension of 
> Time, up popped an error message blocking me from proceeding, saying 
> it deemed my entry of appearance to be a Response to the Action, 
> implying that the extension  of time would be superfluous.   A
>
> And then when I sought to file a supplemental Response, the system 
> also blocked me, announcing that a Final Action hadn’t yet been 
> issued.  (Is there now a rule preventing an applicant from 
> supplementing a Response on further thought?)   So I’m in the 
> anomalous position where the government is refusing to  take my 
> client’s payment for the needed extension of time, and I am concerned 
> that the application might be declared abandoned when the 3-month 
> deadline passes.  Any suggestions? //
>
> -Gerry
>
> Gerry J. Elman, J.D.
>
> *E**lman **IP***
>
> *Intellectual Property Matters*
>
> 6117 St. James Place, Denton, TX 76210
>
> cellphone 610-909-2468 www.elman.com <http://www.elman.com/>
>
>
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