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

Tue Oct 21 23:08:29 UTC 2025

I had a situation recently where I wanted to file a supplemental response, but the form wont let us do that,  b/c I had received a consent agreement after the deadline to respond to the OA and so OI was facing a final 2(d)  b/c I could not submit the consent.

I called the Examiner, and she issued a priority action noting that she was expecting me to file a consent, and that gave me something to respond to.

Janet

Janet F. Satterthwaite|Partner/ Chair, Trademark Practice|Potomac Law Group, PLLC

1717 Pennsylvania Avenue, NW, Suite 1025

Washington, D.C. 20006

202-486-1578

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Tuesday, October 21, 2025 6:50 PM
To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: Re: [E-trademarks] Trademark Center blocks me from filing for an extension of time

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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
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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.

Elman IP

Intellectual Property Matters

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