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Office Actions & automatic rejections

The Trademark Office has begun rejecting applications automatically where an Office Action has been issued an no response is filed.

The new practice has apparently been introduced in an effort to clear an examination backlog at the Trademark Office.  Efforts are being made to address the backlog before the Madrid Protocol is introduced, after which it is expected that there will be a significant increase in the volume of applications being processed.

It is regrettable that the Trademark Office implemented this new practice without notice.  It would have been relatively easy to arrange an announcement, at least to registered IP Consultants.

In the case of Office Actions issued against multi-class applications, the consequences of being unfamiliar with the new practice can be heavy.  Where an Office Action is issued against one class of goods in a multi-class application, if a response to the Office Action is not filed the entire multi-case application (i.e. all classes) will be automatically rejected (whereas previously, there would have been an examination, and only the problematic class would have been affected).

What we really need is a publicly accessible copy of examination guidelines, and a system for notification of changes - but so far the Trademark Office does not appear to have any plans to provide these facilities.