Chapter 700
Procedure for Examining Applications

702.01 Order of Examination

In general, applications are assigned for examination in the order in which they are received in the United States Patent and Trademark Office (“USPTO”), unless the application is made “special.”  See TMEP §702.02 regarding “special” applications.

Generally, amended applications (i.e., applications that contain a response from the applicant), remands from the Trademark Trial and Appeal Board, and statements of use are also reviewed in the order in which they are received in the USPTO.

If a voluntary amendment is submitted before the application is assigned for examination, it is placed in the record when filed and will be considered by the assigned examining attorney during initial examination of the application. Voluntary amendments, including those submitted immediately after the filing of an application and prior to examination, are subject to the same examination standards as amendments made in response to a refusal or requirement. Thus, if a voluntary amendment proposes changing the identification of goods or services, the permissible scope of the amendment is based on the original identification (assuming there is no previously acceptable amendment of the identification). See TMEP §§1402.07(d) , (e) . Likewise, a pre-examination voluntary amendment of the mark drawing or mark description will be compared to the original drawing or description to determine whether the amendment is a material alteration. See TMEP §807.14 . See TMEP §807.17 regarding the processing of unacceptable amendments to drawings and TMEP §1402.15 regarding the processing of unacceptable amendments to identifications.

Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension.  See TMEP §§716–716.06 regarding suspension.

Examining attorneys should immediately act on inquiries regarding applications approved for publication or issue that are returned to the examining attorney to take action or provide information.

Where appropriate, the managing attorney may direct that a particular case be given special handling.

When an examining attorney resigns, the examining attorney should spend any remaining time in the Office getting his or her amended cases (including statements of use under 15 U.S.C. §1051(d) and appeal briefs), especially those with involved records, ready for final disposition.

702.02 “Special” Applications

While the USPTO normally processes applications in the order in which they are received, there are two procedures whereby an application can be made “special,” so that initial examination will be expedited.

Request to Make Special - Registration Inadvertently Cancelled or Expired Under 15 U.S.C. §1058 , §1059 , or §1141k .  A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired under 15 U.S.C. §1058 , §1059 , or §1141k will be made “special” upon the request of the applicant if the applicant is the prior registrant or the assignee of the prior registrant.  No petition fee is required in this situation.  However, the mark in the new application must be identical to the mark in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration.

A request to make an application special because a registration was inadvertently cancelled is reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy.  The applicant should first file the application via the Trademark Electronic Application System (“TEAS”).  The applicant should then submit a request to make special that includes the newly assigned serial number and the number of the cancelled registration.  To ensure proper routing and processing, the Office prefers that the request also be filed electronically.  In TEAS, the Request to Make Special form can be accessed at http://www.uspto.gov .

If it is not possible to file the request electronically, it should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number:  571-273-0032.

If the request is submitted by mail, it should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy.

Petition to Make Special.  A petition to make “special” is a request to the Director under 37 C.F.R. §2.146 to advance the initial examination of an application out of its regular order.  See TMEP §§1710–1710.02 regarding the petition requirements and filing procedure.  

The examining attorney must promptly examine any application that has been made “special.”

702.03 Related Applications

704.01 Initial Examination Must Be Complete

The initial examination of an application by the examining attorney must be a complete examination.  A complete examination includes a search for conflicting marks and an examination of the written application, any voluntary amendment(s) or other documents filed by applicant before an initial Office action is issued ( see TMEP §702.01 ), the drawing, and any specimen(s) or foreign registration(s), to determine whether the mark is eligible for the type of registration requested, whether amendment is necessary, and whether all required fees have been paid.

If, on initial examination, the examining attorney finds the mark in an application for registration on the Principal Register to be in condition for publication for opposition, the examining attorney will approve the application for publication.  Similarly, if the examining attorney finds the mark in an application for registration on the Supplemental Register to be in condition for registration, the examining attorney will approve the application for registration.  The USPTO will send a notice of publication or certificate of registration to the applicant in due course.

If the application is not in condition to be approved for publication or issue, the examining attorney will write, telephone, or e-mail the applicant, as appropriate, informing the applicant of the reason(s) why the mark may not be registered and of the defect(s) that can be corrected or amended to make the application acceptable.

The examining attorney’s first Office action must be complete, so the applicant will be advised of all requirements for amendment and all grounds for refusal, with the exception of use-related issues that are considered for the first time in the examination of an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) in an intent-to-use application.  See TMEP §§1102.01 and 1202–1202.19(k) regarding use-related issues that may be considered for the first time in the examination of an amendment to allege use or a statement of use.  Every effort should be made to avoid piecemeal prosecution, because it prolongs the time needed to dispose of an application.  See TMEP §705.01 about including wording in an Office action to indicate the status of the application and acknowledge documents received and TMEP §706 regarding new issues raised by the examining attorney after the first Office action.

Examining attorneys must also clearly explain all refusals and requirements.  For example, if the identification of goods/services is indefinite, the examining attorney must explain why the identification is not acceptable and, if possible, suggest an acceptable identification.  See TMEP §§705–705.08 for further information about examining attorneys’ Office actions.

704.02 Examining Attorney’s Search

If the examining attorney finds no conflicting marks, but must write to the applicant about other matters, the examining attorney must inform the applicant that no conflicting marks have been found.  This is commonly called the “search clause.”

In an application filed under §1 or §44 of the Trademark Act, if the examining attorney cannot make a proper search or cannot examine the application properly due to a lack of adequate information, the examining attorney must specifically indicate what information is needed, request that it be furnished, and state that further action on the matter will be taken as soon as the information is received.  See 37 C.F.R. §2.61(b) and TMEP §814 regarding requirements for additional information.

If some but not all of the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search in part.  The examining attorney must specifically indicate the good/services for which a search has been conducted by listing the goods/services for which no conflicting marks have been found, and, if relevant, issuing a §2(d) refusal that is specifically limited to certain goods/services.  See TMEP §718.02(a) regarding partial refusals.

If all the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search.  The examining attorney must issue a full refusal, require the necessary amendments to the goods/services, and state that further action on the merits with respect to likelihood of confusion will be considered as soon as a sufficiently definite identification of goods/services is received.

Before issuing a letter deferring action, the examining attorney should consult with the managing attorney or senior attorney.

704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney

When a non-signatory examining attorney examines an application, a supervisory examining attorney must thoroughly review the action.  The usual procedure is for the non-signatory examining attorney to explain relevant information to the supervisory examining attorney, discussing any potential refusals or requirements.  The supervisory examining attorney may indicate the action to be taken.

705.01 Language in Examining Attorney’s Letter

The examining attorney must indicate the status of the application at the beginning of each letter.

In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as “Upon examination of this application....”  The examining attorney must acknowledge any voluntary amendment or other document received before the first action by identifying the document and the date of its receipt.

In subsequent actions, examining attorneys should begin letters with a sentence such as, “This Office action is in response to applicant’s communication filed on [date].”  Other documents received, such as supplemental amendments, affidavits, and new drawings, should also be acknowledged. See TMEP §§713–713.03 regarding examination of amendments and responses to Office actions, TMEP §807.17 regarding the processing of unacceptable amendments to drawings, and TMEP §1402.15 regarding the processing of unacceptable amendments to identifications.

Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act.  For example, registration of a trademark should not be refused “because it is a surname,” but “because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act .”

Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested.  However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.

Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions.  However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.

705.02 Examining Attorneys Should Not Volunteer Statements

In Office actions, and e-mail and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in applications.  The examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application.   See In re Am. Physical Fitness Research Inst. Inc ., 181 USPQ 127, 127–28 (TTAB 1974) .   See also TMEP §1801.

705.03 Citation of Conflicting Marks

When refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) , based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and attach to the Office action a copy of each cited registration, which will become part of the record.  The examining attorney should explain the reasons that the mark in each cited registration is a basis for refusal under §2(d).

If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, or that the USPTO attached a registration but did not cite the registration as a bar to registration in the Office action, the USPTO will reissue the Office action citing and attaching the relevant registration(s) and provide the applicant with a new response period.

705.04 Reference to Matter in Printed or Online Publications

When the examining attorney refers to matter in a printed publication, the examining attorney should provide the citation for the publication, and include the relevant material with the Office action.  It is not necessary to attach a published legal decision to an Office action.  A citation is sufficient.  See TMEP §705.05 regarding citation of decisions.

When the examining attorney refers to an online publication, such as an article downloaded from the Internet, the examining attorney should provide any information that would aid a party in locating the document, including the complete URL address of the website, the time and date the search was conducted, and the terms searched.  See TMEP §710.01(b) for a discussion of the weight accorded to Internet evidence.  See also TMEP §710.01(a) regarding evidence from a research database.

705.05 Citation of Decisions and USPTO Publications

When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given.  If possible, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d), or Federal Supplement (F. Supp. or F. Supp.2d) should also be given.  The court or tribunal (2d Cir., C.C.P.A., Fed. Cir., TTAB, etc.) and the date of the decision should always be given.

When citing to a decision that is published and reported only in LexisNexis® and/or Westlaw®, for which there are no official print versions, the citing party should provide the name of the research service, case name, proceeding name and docket number, database identifier, court name, date, and screen, page, or paragraph numbers, if assigned.  When citing to an unpublished decision of the Board, the examining attorney must either provide the Board’s TTABVUE website address and explain how the applicant may locate and view the decision, or append the decision to the Office action.

Non-Precedential Decisions.  Prior to December 27, 2006, it was the policy of the Trademark Trial and Appeal Board that Board opinions not designated as precedential should not be cited and, if cited, were to be disregarded.   Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992) .  The Board has changed that policy.  In announcing the change, the Board stated that:

[T]he Board will henceforth permit citation to any TTAB disposition as follows:

• The TTAB will continue its current practice of designating all final decisions as either precedential or not precedential.  Unless specifically designated as precedential, an order on a motion should be considered not precedential.
• The TTAB will continue its practice of considering precedential decisions as binding upon the TTAB.
• A decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.
• Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database.  If a non-precedential decision does not appear in the United States Patent Quarterly or the USPTO's public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited.
• Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.

Citation of Opinions to the Trademark Trial and Appeal Board, OG Notice ( Jan. 23, 2007).

The examining attorney may cite sections of the Trademark Manual of Examining Procedure (“TMEP”) or Trademark Trial and Appeal Board Manual of Procedure (“TBMP”).  The abbreviations “TMEP” and “TBMP” are usually sufficient; however, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney should identify the Manuals by their full names in the first citation to the Manuals.  It is not necessary to provide a copy of the relevant section(s) of the Manuals.

When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Official Gazette in which it may be found.

705.06 Reviewing and Signing of Letters

Examining attorneys must review and sign every Office action using an electronic signature.  The signature block should include the name, title, law office, telephone number, and e-mail address of the examining attorney.  Thus, the signature block for an Office action issued by an examining attorney should be set forth as follows:

/Examining attorney’s full name/

Trademark Examining Attorney

Law Office xxx

(571) xxx-xxxx

_____________@uspto.gov

If an examining attorney does not have signatory authority, he or she must sign the action and refer it to an authorized signatory examining attorney, who will review and approve the action.  Review by a reviewer should ordinarily be done within two working days after receipt from the non-signatory examining attorney.

705.07 Processing Outgoing Office Actions

A date is placed on all copies of paper Office actions when they are issued.  For outgoing e-mail communications, including electronically issued Office actions, the date is applied automatically when the communication is released to the USPTO's electronic mail system.

One copy of the action signed by the examining attorney, along with any supporting evidence and/or copies of registered marks or pending applications cited as a bar to registration, is sent to the Trademark Image Capture and Retrieval System (“TICRS”) and is available for review by the public through the Trademark Status and Document Retrieval (“TSDR”) portal on the USPTO website at http://tsdr.uspto.gov/ .

An applicant who authorizes e-mail communication will not receive the actual Office action by e-mail.  Instead, upon issuance of the Office action, the USPTO will e-mail a notice to the applicant with a link or web address to access the Office action using TSDR.  The Office action will not be attached to the e-mail notice.  Upon receipt of the e-mail notice, the applicant may use the link or web address to view and print the actual Office action and any evidentiary attachments.

705.08 Six-Month Response Clause

Generally, the examining attorney’s letter or Office action should include a “six-month response clause” notifying the applicant that the applicant must respond to the action within six months of the issuance date to avoid abandonment under 15 U.S.C. §1062(b) .  See TMEP §§711–711.02 regarding the deadline for response to an Office action.

The examining attorney must not include a six-month response clause in an examiner’s amendment (see TMEP §§707–707.03 ) or suspension notice (see TMEP §§716–716.06 ), or in a situation where the time for response runs from the issuance date of a previous Office action (see TMEP §§711.01 , 715.03(c) ).

706.01 “Clear Error”

The term “clear error” refers to an administrative internal guideline used by the USPTO to determine whether an examining attorney should issue a refusal or requirement that could or should have been raised in a previous action.

It is the policy of the USPTO to conduct a complete examination upon initial review of an application by an examining attorney and to issue all possible refusals and requirements in the first Office action.   See TMEP §704.01 .  The USPTO will not issue a new refusal or requirement unless it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act or applicable rules.   See, e.g., TMEP §706 .  For example, upon discovery of evidence, after publication, that clearly demonstrates the proposed mark is a generic identifier for the goods, registration on either the Principal or Supplemental Register would be in violation of the Trademark Act and the Director will restore jurisdiction to the examining attorney to issue a new refusal of registration.   See TMEP §1504.04 .  See also TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use that could or should have been issued during initial examination of the application.

The internal “clear-error” standard is merely an administrative guideline.  It does not confer on an applicant any entitlement to a showing of clear error, nor does it impose a higher standard of proof on the examining attorney than is otherwise required to establish a prima facie case for the refusal or requirement.

Except as provided in 15 U.S.C. §1141h(c)(4) ,  there is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal.  Moreover, an applicant may not directly challenge the Office’s determination under the clear-error standard that a new requirement or refusal must issue. In re Driven Innovations, Inc., 115 USPQ2d 1261, 1264 (TTAB 2015), overruled on other grounds, 2017 U.S. App. LEXIS 241, 2017 WL 33574 (Fed. Cir. Jan. 4, 2017). The only way an applicant may challenge a refusal that was issued under the clear-error standard is by appealing the merits of the final refusal to the Board, which will review only the correctness of the underlying substantive refusal of registration. Id. See also In re Jump Designs, LLC, 80 USPQ2d 1370, 1373-74 (TTAB 2006); In re Sambado & Son, Inc., 45 USPQ2d 1312, 1314-15 (TTAB 1997).

The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees.   See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) (“[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors.”); see also BlackLight Power Inc. v. Rogan , 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner when withdrawing a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee, and notification of the issue date, and with publication of the drawing and claim in the Official Gazette).  Thus, if the USPTO discovers that a mistake made during examination would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been previously raised.

The question of whether a refusal or requirement was procedurally proper is reviewable on petition under 37 C.F.R. §2.146 . However, “[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Director.”   37 C.F.R. §2.146(b) .  Thus, the Director cannot consider on petition whether the issuance of or failure to issue a substantive refusal was a “clear error.”  See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review on petition.

707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney

Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual applicant, someone with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner by telephone, e-mail, or in person during an interview.   Cf. 37 C.F.R. §§2.62(b) , 2.74(b) ;  see TMEP §§ 304.01 , 304.02 , 602 , 709.01–709.05 .

If the applicant is represented by a qualified practitioner, the examining attorney must communicate directly with the practitioner by phone or e-mail.  If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to conduct business, and will note this fact in the examiner’s amendment.  Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified practitioner’s approval by indicating that the practitioner has approved the amendment.

If the applicant is pro se, the examining attorney must communicate directly with the individual applicant or with someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).   Cf. 37 C.F.R. §11.14(e) .  For joint applicants who are not represented by a qualified practitioner, each joint applicant must authorize the examiner’s amendment.  See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) is notentitled to authorize an examiner’s amendment, unless he or she has legal authority to bind the applicant.  The broad definition of “person properly authorized to sign on behalf of the [applicant]” in 37 C.F.R. §2.193(e)(1) ( see TMEP §§611.03(a) , 804.04 ) does not apply to examiner’s amendments.

The applicant or the applicant’s qualified practitioner must actually authorize the examiner’s amendment.  The examining attorney may not leave an e-mail or voicemail message for the applicant or the qualified practitioner indicating that an amendment shall be entered if the applicant or practitioner does not respond to the message.

If an examining attorney contacts an applicant and reaches agreement to issue an examiner’s amendment, but later determines that an Office action must be issued instead to state a refusal or requirement, the examining attorney should telephone or e-mail the applicant immediately to advise the applicant of the change of position.

Examining attorneys without partial signatory authority must advise applicants that issuance of the examiner’s amendment is subject to review by a supervisory attorney.

707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney

Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified practitioner (sometimes referred to as a “no-call” examiner’s amendment) in the following situations:

• (1) In applications under §1 or §44, changes to international classification, either before or after publication ( see Groening v. Mo. Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r Pats. 1999));
• (2) Deletion of “TM,” “SM,” “©,” or “®” from the drawing;
• (3) Addition of a description of the mark where an Office action or regular examiner’s amendment is otherwise unnecessary and one of the following conditions applies:
• (a) The record already contains an informal indication of what the mark comprises ( see TMEP §808.03(b) );

          Example - The cover letter accompanying a paper application refers to the mark as a stylized golf ball design.  If appropriate, the examining attorney could enter an amendment that “the mark consists of the stylized design of a golf ball.”

          Example – The application refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but the color yellow is omitted from the formal description of the colors in the mark ( see TMEP §807.07(a)(ii)) .  The examining attorney may enter an amendment of the formal color description to accurately reflect all colors in the mark;

• (b) The mark consists only of wording in stylized font, with no color claim and with no design element, and the applicant did not provide the “literal element” of the mark in the appropriate field ( see TMEP §808.03(b) ); or
• (c) The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording ( see TMEP §808.03(b) ).
• (4) If the examining attorney determines that a description of the mark will not be printed in the Official Gazette or on the registration certificate, and it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters, the examining attorney may enter a Note to the File in the record or issue a "no-call" amendment to that effect.   See TMEP § 808.03 ;
• (5) In applications under §1, amendment of the application to enter a standard character claim when the record clearly indicates that the drawing is intended to be in standard character form.   See TMEP § 807.03(g) ;
• (6) Correction of obvious misspellings, typographical errors, and redundancies in the identification of goods/services, or in an otherwise accurate and complete description of the mark.  See TMEP §§808.03(a) , 1402.01(a) ;

          Example - The goods are identified as “T-shurtz.”  The examining attorney may amend to “T-shirts.”  However, “shurtz” may not be amended to “shirts” without calling the applicant, because “shurtz” (without the “T-” prefix) might also be a misspelling of “shorts.”

• (7) When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods, services, and/or class(es), the examining attorney may issue an examiner’s amendment deleting the goods/services/classes to which the refusal or requirement pertained.  Similarly, when an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney may issue an examiner’s amendment deleting the unacceptable terminology from the identification.   See TMEP §§718.02(a) , 1402.13 ;
• (8) In applications under §1 or §44, deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual.  Bracketed material sometimes appears in the Manual for informational purposes but should not be included in an identification of goods/services.   See TMEP §1402.12 . If this material is entered in an identification in an application submitted through TEAS, it will be automatically deleted in all TEAS applications.  If submitted in a paper application or in an amendment or response submitted through TEAS, the examining attorney may delete the bracketed material with a “no-call” examiner’s amendment;
• (9) If, in response to a general or specific inquiry about translation and/or transliteration of non-English wording in the mark, the applicant does not directly state that the term has no meaning in a foreign language but instead responds to the effect that “the mark has only trademark significance,” the examining attorney may enter a statement that “the term has no meaning in a foreign language” into the record.   See TMEP §809.01(a) ;
• (10) When an applicant provides a translation statement that has the proper translation but is in a format that is not suitable for printing, the examining attorney may “reformat” the statement, without changing the substance, into a simple, clear statement as to meaning.   See TMEP §809.03 .
• (11) When an application includes foreign wording that is not translated, and a translation of the same foreign wording appears in a prior registration for which the applicant has claimed ownership, and the translation is acceptable to the examining attorney, the examining attorney may enter the identical translation into the record. Note: If the application was filed using the TEAS Plus form and the translation was omitted, the examining attorney may not issue an examiner’s amendment without prior authorization. The examining attorney must take appropriate action requiring the translation and the additional TEAS Plus processing fee. 37 C.F.R. §§2.6(a)(1)(iv) , 2.22(a)(16) , (b) ; TMEP §§ 819.01 , 819.01(m) .
• 12 When an application under §1 or §44 includes a disclaimer of the entire mark, and the application would otherwise be in condition for approval for publication or registration without the need to contact the applicant or issue an Office action, the examining attorney may issue an examiner’s amendment noting that the entire mark may not be disclaimed and that the disclaimer will be deleted from the record. See TMEP §1213.01(c) regarding unecessary disclaimers in applications under §66(a). The examining attorney must ensure that the disclaimer is removed.
• 13 When a response to an Office action includes a disclaimer of the entire mark, and the application would otherwise be in condition for approval for publication or registration, the examining attorney may issue an examiner’s amendment noting that the entire mark may not be disclaimed and that the disclaimer will be deleted from the record. The examining attorney must ensure that the disclaimer is removed.

If the examining attorney must contact the applicant or the applicant’s qualified practitioner about other matters, or if the record contains any ambiguity as to the applicant’s intent, the examining attorney should advise the applicant that the above changes have been made.

If the applicant has authorized e-mail communication with the USPTO, the applicant will receive an e-mail notification when an examiner’s amendment is issued. The applicant may then view and/or print the examiner’s amendment from the USPTO website. If the applicant has not authorized e-mail communication with the USPTO, a copy of the examiner’s amendment will be sent to the applicant.  Any applicant who disagrees with any of these changes should contact the examining attorney immediately after reviewing or receipt of the examiner’s amendment, preferably by telephone or e-mail.

Note: In a §66(a) application, an examiner’s amendment may not be issued on first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

707.03 Form of the Examiner’s Amendment

An examiner’s amendment should include the following information:  the name, law office, telephone number, and e-mail address of the examining attorney; the name of the person interviewed; the date of the interview; the actual amendment; and, if applicable, a statement to the effect that the amendment has been authorized by the applicant or the applicant’s qualified practitioner.

The examiner’s amendment must not include a six-month response clause, because a written response by the applicant is not required for an examiner’s amendment.

The examiner’s amendment must include a search clause ( see TMEP §704.02 ) if it is a first action, or if the applicant has not previously been advised of the results of a search.

The examining attorney must not state in the examiner’s amendment that the application is ready for publication or issue, because some unforeseen circumstance might require that further action be taken in the application.

The examiner’s amendment must indicate any refusals or requirements that are withdrawn and/or continued by the examining attorney.

708.01 Priority Action Defined

A “priority action” is an Office action that is issued following a telephone conversation, personal interview, or e-mail communication in which the examining attorney and the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner discuss the various issues raised in an application and what actions the applicant must take to put the application in condition for publication or registration.  A priority action is generally used when the action requires verification by the applicant.  The use of priority actions is encouraged to expedite examination.

A priority action should be issued according to the following procedure:  (1) the examining attorney telephones or e-mails the applicant or applicant’s qualified practitioner and requests that the applicant take some specific action, explaining the reasons; (2) the applicant or applicant’s qualified practitioner specifically discusses the merits of the application with the examining attorney; (3) the examining attorney prepares and signs a priority action that fully discusses all refusals or requirements, includes evidence to support the refusals and/or requirements, and specifically describes what action the applicant may take in order to put the application into condition for publication or registration; and (4) the USPTO sends a copy of the priority action to the applicant.

If the evidence of record supports a statutory refusal of registration, a priority action may be issued only if the examining attorney believes that an amendment or explanation will obviate the refusal.   See TMEP §708.04 .

See TMEP §708.03 regarding the form of a priority action.

Note: In a §66(a) application, an examining attorney may issue a priority action as a first action. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

708.02 Discussion of Issues and Agreements

The examining attorney must discuss the issues with the individual applicant, a person with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner.  The broad definition of “person properly authorized to sign on behalf of the [applicant]” in 37 C.F.R. §2.193(e)(1) ( see TMEP §§611.03(a) , 804.04 ) does not apply to priority actions.

Only the applicant, someone with legal authority to bind the applicant, or a qualified practitioner can agree to a priority action.  If the applicant is represented by a qualified practitioner, the examining attorney must speak directly to the practitioner.  See TMEP §§602–602.03(e) for guidelines on persons authorized to practice before the USPTO in trademark matters.

If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the qualified practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to authorize issuance of the priority action, and will note this fact in the priority action.

Paralegals and legal assistants cannot authorize issuance of a priority action, even if only conveying the qualified practitioner’s approval by indicating that the practitioner has agreed to the priority action.

If the applicant is pro se, the examining attorney must speak directly to the individual applicant or to someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).   Cf. 37 C.F.R. §11.14(e) .  See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) may not authorize issuance of a priority action, unless he or she also has legal authority to bind the applicant.

During the telephone conversation, e-mail discussion, or other communication, the examining attorney must fully discuss all refusals and requirements relating to the application, and explain the reason(s) for each refusal or requirement.  Whenever possible, the examining attorney should suggest appropriate language for amendments. A priority action is not appropriate when:

• 1. the examining attorney leaves a voicemail or e-mail message for the applicant or applicant’s qualified practitioner, but the applicant or practitioner does not call back or respond to the message;
• 2. the examining attorney telephones the applicant or applicant’s attorney but the attorney does not have time to discuss the application and requests that the examining attorney send a letter; or
• 3. the examining attorney e-mails the applicant or applicant’s attorney and merely states that there are problems with the application (e.g., indefinite identification, a disclaimer requirement, and clarification of entity type) and that a letter will be sent.

All the issues in the priority action must be discussed on the merits with the applicant or the applicant’s qualified practitioner in a good-faith attempt to resolve any issues and place the application in condition for publication or registration, as appropriate. However, an agreement as to precisely how all issues will be resolved is not necessary.

The priority action may state that the applicant will follow one of two alternative courses of action, for example, providing either an amended drawing or a new specimen.

708.03 Form of the Priority Action

The priority action should reference the date of the telephone call, e-mail message, or other communication, and the name and title (where appropriate) of the person who authorized the priority action.  See TMEP §708.02 for information about who may authorize issuance of a priority action.

A priority action must include a six-month response clause ( see TMEP §705.08 ) so that it is clear that the applicant must timely respond to the priority action to avoid abandonment of the application.

The priority action must include a search clause ( see TMEP §704.02 ) if it is a first action, or if the applicant has not previously been advised of the results of a search.  

The priority action must also:  (1) fully discuss all refusals and/or requirements; (2) include sufficient evidence to support all refusals and/or requirements; and (3) specifically describe what action the applicant may take in order to put the application into condition for publication or registration.  See TMEP §708.02 regarding discussion of issues on the merits.

The examining attorney should discuss each issue separately, stating the reason for the refusal and/or requirement and/or citing the relevant sections of the statute, rules, and/or TMEP.  The essential nature of the refusal or requirement, and any pertinent advisories relating thereto, must be clearly stated in the priority action, and fully supported by appropriate evidence (if applicable), because the action of the USPTO is based exclusively on the written record.   37 C.F.R. §2.191 .

A priority action may be used for a final or nonfinal refusal or requirement.  See TMEP §708.04 regarding refusal of registration in a priority action, and TMEP §§714–714.06 regarding final actions.

708.04 Refusal of Registration in Priority Action

Priority actions are generally used when there are no statutory refusals.  However, if there is sufficient evidence to support a statutory refusal, and the examining attorney believes that an amendment or explanation will obviate the refusal, the examining attorney may attempt to resolve the issues through a priority action.

In the priority action, the examining attorney must clearly state the basis for the refusal that was discussed, citing the relevant sections of the statute and rules, attaching evidence to support the refusal, and indicating the resolutions agreed upon or the options offered.

If the priority action includes a final refusal, the priority action must clearly indicate that the refusal is FINAL, and should contain any additional supporting evidence necessary for a complete record on appeal.  See TMEP §§714–714.06 regarding final actions.

708.05 Combined Examiner’s Amendment/Priority Action

An examining attorney may issue an Office action that combines an examiner’s amendment and priority action, if the requirements for both have been met.  The examiner’s-amendment portion reflects the authorized amendments, and the priority-action section addresses the refusals and requirements that remain outstanding and to which the applicant must still respond.  An examining attorney may not issue a “no-call” examiner’s amendment/priority action, because the issues in the priority action portion of the action have not been discussed with the applicant or applicant’s qualified practitioner.

The action must include a six-month response clause ( see TMEP §705.08 ) so that it is clear that the applicant must timely respond to the issues raised in the priority action to avoid abandonment of the application.  The action must also include the subheadings “Priority Action” and “Examiner’s Amendment” to facilitate processing.

NOTE:  In a §66(a) application, an examining attorney may not issue a combined examiner’s amendment/priority action as a first action.  See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

709.01 Personal Interviews

Personal interviews with examining attorneys concerning applications and other matters pending before the USPTO are permissible on any working day and must be in the office of the respective examining attorney, within office hours that the examining attorney may designate.

Personal interviews must be arranged in advance, preferably by fax, e-mail, or telephone.  This will ensure that the assigned examining attorney will be available for the interview at the scheduled time and will have an opportunity to review the application record.  The unexpected appearance of a qualified practitioner or applicant requesting an interview without any previous notice to the examining attorney is not appropriate.

An interview should be conducted only when it could serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant.  Interviews should not extend beyond a reasonable time.

The examining attorney should not hesitate to state that matter presented for consideration during the interview requires further research, if this is the case.  Furthermore, the examining attorney may conclude an interview when it appears that no common ground can be reached.

During an interview with a pro se applicant who is not familiar with USPTO procedure, the examining attorney may in his or her discretion make suggestions that will advance the prosecution of the application, but these interviews should not be allowed to become unduly long.

When an agreement is reached during an interview but it is not possible to resolve all issues through an examiner’s amendment, the examining attorney should enter a Note to the File in the record concerning the agreement, and request that the applicant incorporate the agreement in its response.

Sometimes, the examining attorney who conducted the interview is transferred, resigns, or retires, and examination of the application is taken over by another examining attorney.  If there is an indication in the record that an interview was held, the new examining attorney should endeavor to ascertain whether any agreements were reached during the interview.  The new examining attorney should take a position consistent with agreements previously reached, unless doing so would be a clear error ( see TMEP §706.01 ).

Except in unusual situations, no interview on the merits is permitted after the brief on appeal is filed, or after an application has been forwarded for publication or issue.

709.02 Persons Who May Represent Applicant in an Interview

In general, interviews are not granted to persons who lack proper authority from the applicant.  See TMEP §§602–602.03(e) regarding persons who may represent an applicant before the USPTO in a trademark matter, and TMEP §§611.06–611.06(h) for information on persons with legal authority to bind various types of juristic applicants.

The examining attorney may request proof of a person’s authority if there is any reason to suspect that the person is not, in fact, a qualified practitioner who is authorized to represent the applicant.   37 C.F.R. §2.17(b)(2) .

For an interview with an examining attorney who does not have signatory authority, arrangements should be made for the presence of an examining attorney who does have such authority and who is familiar with the application, so that an authoritative agreement may be reached, if possible, at the time of the interview.

USPTO employees are forbidden to engage in oral or written communication with a disbarred, suspended, or excluded practitioner ( see TMEP §608.02 ), unless the practitioner is the applicant.

Requests for interviews from third parties are inappropriate and should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.   See TMEP §1801.

709.03 Making Substance of Interview of Record

The substance of an interview must always be made of record in the application, since the action of the USPTO is based exclusively on the written record.   37 C.F.R. §2.191 .  This should be done promptly after the interview while the matters discussed are fresh in the minds of the parties.

If possible, agreements reached in the interview should be incorporated in an examiner’s amendment or priority action.  Otherwise, to ensure that any agreements reached at an interview will be implemented, and to avoid subsequent misunderstanding, the examining attorney should include, in a Note to the File, a list of the issues discussed and indicate whether any agreement was reached.  See TMEP §709.04 for further information about  Notes to the File.

The applicant or the applicant’s qualified practitioner may also make the substance of an interview part of the record by incorporating a summary of the interview in the applicant’s response to the Office action.  If there is any disagreement between the examining attorney and the applicant as to the substance of the interview, the written record governs.   37 C.F.R. §2.191 .

709.04 Telephone and E-Mail Communications

 Examining attorneys should initiate telephone or e-mail communications (i.e., "informal communications") whenever possible to expedite prosecution of an application.  Similarly, applicants and qualified practitioners may telephone or e-mail examining attorneys, if they feel that a telephone call or e-mail will advance prosecution of an application. See TMEP §709.05 regarding guidelines for informal communications. Therefore, all documents filed in connection with the application should include the telephone number of the applicant or the applicant’s qualified practitioner.

The examining attorney must respond to telephone calls and e-mail messages within a reasonable time, normally the same working day and never later than the next working day.

Generally, the examining attorney who prepared the action, and not the supervisory or reviewing examining attorney, should be the person contacted by telephone or e-mail.  However, a non-signatory examining attorney must secure proper authorization from the managing attorney, senior attorney, or reviewing examining attorney before approving an amendment.

The action of the USPTO is based exclusively on the written record and all relevant communications, including informal communications, must be made part of the record.   37 C.F.R. §2.191 .  Therefore, the examining attorney must use an examiner’s amendment ( see TMEP §§707–707.03 ), or priority action ( see TMEP §§708–708.05 ), upload all relevant e-mail communications, and enter a Note to the File regarding issues discussed by telephone.   See TMEP §709.03 .

Notes to the File must not summarize arguments or legal conclusions.  Rather, the Note to the File must merely list the issues discussed and indicate any agreement that may have been reached.  If no agreement was reached, that should be noted also.

If an examining attorney does not respond to a telephone or e-mail message within two business days, the applicant may telephone the law office manager or supervisor.  Contact information is available on the USPTO website at http://www.uspto.gov/trademarks/Other_TM_Contact_Info.jsp .

709.05 Informal Communications

An applicant may conduct informal communications with an examining attorney regarding a particular application by telephone, e-mail ( see TMEP §§304.01–304.02 ), or fax.  Informal communications should be conducted only if they serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant.  For example, an applicant may telephone or send an e-mail regarding:

• Questions regarding an outstanding Office action that do not constitute a response;
• Authorization to issue an examiner’s amendment or priority action ( see TMEP §§707.01 , 708.01 );
• Objection to an examiner's amendment (see TMEP §§ 707 , 707.02 );
• Notification of termination of a cancellation proceeding that is the basis for suspension ( see TMEP §716.02(a) ); or
• A request to arrange a convenient time to speak by telephone.

Informal communications may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal. The examining attorney should advise the applicant to file a formal response for consideration of arguments regarding any substantive refusal.

If the examining attorney determines that continuing (or prolonged) informal communications by telephone or e-mail will not serve to further develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant, he or she must advise the applicant to file a formal response.

An informal communication does not constitute a response to an outstanding Office action and does not extend the deadline for response.

Relevant e-mail and phone communications must be made part of the record, because the USPTO uses them in decision making, and anything used in decision making must be made of record.   37 C.F.R. §2.191 .  Therefore, the examining attorney must upload all relevant e-mail communications and must enter a Note to the File regarding issues discussed by telephone. See TMEP §709.04 for further information about Notes to the File.

The applicant should monitor the status of an application after an informal communication to avoid abandonment.  For example, if the applicant expects an examiner’s amendment or priority action to be issued and the status does not show that it has been sent, the applicant should promptly contact the examining attorney to inquire. Reviewing the status may be done through the Trademark Status and Document Retrieval (“TSDR”) database at http://tsdr.uspto.gov/ , or by calling the Trademark Assistance Center (“TAC”) at (571) 272-9250 or (800) 786-9199.  See TMEP §§108.03 and 1705.05 regarding the duty to monitor the status of an application in cases where a notice or action from the USPTO is expected.

709.06 Interviews Prior to Filing Application

No interviews are permitted before the filing of an application.  If a party has general questions about how to file an application, he or she can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.   See TMEP §108.02 .

USPTO employees cannot give advice on trademark law.  It is inappropriate for USPTO personnel to give legal advice, to act as a counselor for individuals, or to recommend a qualified practitioner.   37 C.F.R. §2.11 .

710.01 Evidence Supporting Refusal or Requirement

In general, the examining attorney must always support his or her action with relevant evidence and ensure that proper citations to the evidence are made in the Office action.

All evidence that the examining attorney relies on in making a requirement or refusal must be placed in the record and copies must be sent to the applicant.  

In appropriate cases, the examining attorney may also present evidence that may appear contrary to the USPTO’s position, with an appropriate explanation as to why this evidence was not considered controlling.  In some cases, this may foreclose objections from an applicant and present a more complete picture if there is an appeal.   Cf. In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987) (noting that the examining attorney is not obligated to provide every story found in a LexisNexis® search though it may present a more complete picture).

710.02 Search for Evidence Indicating No Refusal or Requirement Necessary

USPTO practice is to indicate the results of a search for evidence when the examining attorney considers an issue and determines that no action will be taken on it.  This information is helpful for internal review.  A Note to the File should be entered in the record to reflect that a search for evidence was conducted in any case in which the examining attorney determines that a search would be useful for review of the application, but that no further action is required.

 The examining attorney should simply note the parameters of the search conducted without stating any opinions or conclusions .

For instance, in the case of a search of telephone directories for surnames, the record should indicate only the directories investigated and the number of occurrences of the surname.  Or, in the case of a search for the meaning of a term, the record should show the sources checked and whether the term was found.  

The Note to the File should not provide any of the examining attorney's analysis, opinions, or conclusions regarding the evidence when the examining attorney determines that a refusal or requirement is not appropriate.  Nor should the examining attorney place in the record copies of e-mail messages or other communications between the examining attorney and other USPTO personnel concerning the application.  And the examining attorney should not refer to, or place copies of, any registration or pending application that was considered in a §2(d) search, unless the examining attorney determines that there is a conflict and issues an Office action based on the application or registration.

710.03 Evidence of Third-Party Registrations

The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record.   In re 1st USA Realty Prof'ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) ; In re Duofold Inc ., 184 USPQ 638, 640 (TTAB 1974) ; TBMP §1208.02 (“[T]he Board does not take judicial notice of records residing in the Patent and Trademark Office.”).   Furthermore, the submission of a copy of a commercial search report is not proper evidence of third-party registrations.   In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983).

To make registrations of record, copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from the USPTO’s Trademark database) must be submitted.   In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002) ; In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998) ; In re Broadway Chicken Inc. , 38 USPQ2d 1559, 1561 n.6 (TTAB 1996) ; In re Smith & Mehaffey , 31 USPQ2d 1531, 1532 n.3 (TTAB 1994) .

If the applicant's response includes improper evidence of third-party registrations, the examining attorney must object to the evidence in the first Office action following the response. Otherwise the Board may consider the objection to be waived.   See In re Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (finding that the examining attorney's failure to advise applicant of the insufficiency of the list of registrations when it was proffered during examination constituted a waiver of any objection to consideration of that list); In re 1st USA Realty Prof'ls, 84 USPQ2d at 1583 (allowing evidence of a list of third-party registrations because the examining attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake) ; In re Broyhill Furniture Indus., Inc. , 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (finding examining attorney's objection to a listing of third-party registrations waived because it was not raised in the Office action immediately following applicant's response in which applicant’s reliance on the listing as evidence was indicated).  If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.

Note that third-party applications have no probative value other than as evidence that the applications were filed. In re Toshiba Med. Sys. Corp ., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009) ; In re Fiesta Palms LLC , 85 USPQ2d 1360, 1366 n.7 (TTAB 2007) ; In re 1st USA Realty Prof’ls Inc ., 84 USPQ2d 1581, 1583 (TTAB 2007) ; In re Phillips-Van Heusen Corp ., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002) ; TBMP §1208.02 .

711.01 Time May Run from Previous Action

In most cases, the six-month statutory period to respond to an Office action runs from the issuance date of the Office action.  In some situations, the examining attorney’s Office action does not re-start the beginning of a statutory response period.  For example, a notice that an applicant’s response was incomplete ( see TMEP §718.03 ), or a notice that an applicant’s request for reconsideration of a final action fails to overcome a refusal or satisfy an outstanding requirement ( see TMEP §715.03(c) ), does not begin a new response period.  In all cases in which the statutory response period runs from the date of a previous Office action, the examining attorney must include a statement to that effect in the Office action, and must omit the six-month response clause.

711.02 Supplemental Office Action Resetting Response Period

Sometimes the examining attorney must issue a supplemental Office action that resets the six-month statutory period for response.  If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response.   See TMEP §706 .  The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a previous Office action (e.g. , during examination of an amendment to allege use).

If the examining attorney issues a supplemental Office action, a new six-month response period will begin running from the issuance date of the supplemental action.   See 15 U.S.C. §1062(b) .  In a supplemental Office action, the examining attorney should:  (1) indicate that the action is supplemental to and supersedes the previous action; (2) specifically identify all of the outstanding refusals and/or requirements; and (3) include the standard six-month response clause.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO.   15 U.S.C.  §1141h(c) ; TMEP §1904.03(a) .

See TMEP §717 regarding reissuing of Office actions.

712.01 Persons Who May Sign Response

If an applicant is represented by a qualified practitioner, the practitioner must personally sign the response.   37 C.F.R. §§2.193(e)(2)(i) , 11.18(a) .  This applies to both in-house and outside counsel.

If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) must sign the response.   37 C.F.R. §§2.62(b) , 2.193(e)(2)(ii) .  In the case of joint applicants who are not represented by a qualified practitioner, all must sign the response. 37 C.F.R §2.193(e)(2)(ii) . See TMEP §611.06 for guidelines as to persons who have legal authority to bind various types of juristic entities.  A person who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) is not entitled to sign responses to Office actions, unless he or she also has legal authority to bind the applicant or is a qualified practitioner.

If the applicant is represented by a qualified practitioner, and the response consists only of a declaration (e.g., if the verification was omitted from the initial application and no other issues were raised in the Office action), the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) ( see TMEP §804.04 ), and no separate signature by the practitioner is required.  However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the practitioner. See 37 C.F.R. §2.193(e)(2) .

Similarly, if the applicant is not represented by a qualified practitioner, and the response consists only of a declaration, the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) , and no separate signature by the applicant or someone with legal authority to bind the applicant is required.  However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant.   37 C.F.R. §§2.62(b) , 2.74(b) , 2.193(e)(2) .

The examining attorney must ensure that the record establishes the authority of the person who signs the response. If a response to an Office action appears to be signed by an unauthorized person (e.g. , a foreign attorney who is not authorized to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must treat the response as incomplete and require the applicant to submit a properly signed response.  The response cannot be ratified by an examiner’s amendment.  See TMEP §§ 608.01 , 611.05–611.05(c) , and 712.03 for further information.

See TMEP §§602–602.03(e) regarding persons who are authorized to represent others before the USPTO, and TMEP §611.04 for examples of authorized and potentially unauthorized signatories.

These same principles apply to authorizations of examiner’s amendments and priority actions.   See TMEP §§ 707.01 , 708.02 .

712.02 Unsigned Response

The examining attorney should treat an unsigned response as an incomplete response, and should either call the applicant to obtain permission to enter an examiner’s amendment from an authorized party (if appropriate), or issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) .   See TMEP §718.03(b) .  To issue a notice of incomplete response, the examining attorney should use the “Examiner’s Non-Responsive Amendment” (or, if appropriate, “SU – Examiner’s Non-Responsive Amendment”) selection for a response to a nonfinal action or the “Examiner’s Action Continuing a Final Refusal – 30-day Letter” (or, if appropriate, “SU – Examiner’s Action Continuing a Final Refusal – 30-day Letter”) selection if the response is to a final action. In either instance, the notice of incomplete response must not include a six-month response clause.

If the applicant is not represented by a qualified practitioner and the response does not require a signed verification ( see TMEP §§804–804.05 ), the applicant or a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) may either request that the amendment(s) be entered through an examiner’s amendment or submit a properly signed copy of the response.  If the applicant is represented by a qualified practitioner, that practitioner must submit the response or request entry of an examiner’s amendment. A duplicate of the original response can be submitted through TEAS (using the response to Office action form) or a properly signed copy of the original document can be submitted by fax (unless it is excluded by 37 C.F.R. §2.195(d) ).  In a TEAS Plus or TEAS RF application, the response must be filed through TEAS or the application will lose TEAS Plus or TEAS RF status (see TMEP §§819.02(b), 820.02(b) ). The examining attorney must defer action on the merits of the response until the applicant files a properly signed response.  

The substitute response must be personally signed by a qualified practitioner or, if the applicant is not represented by a qualified practitioner, by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).   37 C.F.R. §§2.62(b) , 2.193(e)(2) , and 11.18(a) ;   see TMEP §§611.03(b) .

If an applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(a)(2) , the examining attorney must hold the application abandoned for failure to file a complete response.   See TMEP §718.03 .  In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66 .  The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146 .   See TMEP §1713.02 .

712.03 Response Signed by an Unauthorized Person

Notice of Incomplete Response.  When it appears that a response to an Office action was signed by an improper party (e.g., a foreign attorney who is not authorized to practice before the USPTO, a corporate employee who does not have legal authority to bind the applicant, or, when the applicant is represented by a qualified practitioner, someone other than the practitioner or another qualified practitioner from the same firm), the examining attorney must treat the response as incomplete.  The examining attorney must issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) ( see TMEP §§ 611.05(a), 718.03(b) ).  Note that if the correspondence address was changed as the result of a submission by an unauthorized party (e.g., a revocation and new power of attorney signed by the new attorney or other unauthorized signatory), the examining attorney must ensure that the new address is removed from the Trademark electronic record and that the notice of incomplete response is sent to the last previous correct correspondence address. The examining attorney must defer action on the merits of the response until a properly signed response is filed.

Applicant’s Reply to Notice of Incomplete Response.  If the person who signed the response was authorized to sign, the applicant’s reply to the notice of incomplete response should state the nature of the relationship of the signer to the applicant.  If the signer has legal authority to bind the applicant, the person should so state, and should set forth his or her title or position.  If the signer is an attorney authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14(a) , the attorney should identify him or herself as an attorney and indicate the United States state bar of which he or she is a member in good standing.  If the signer meets the requirements of either 37 C.F.R. §11.14(b) or (c) , the person should explain how he or she meets these requirements.  See TMEP §611.05(b) for further information.

If the person who signed the response is not an authorized signer, the applicant is unrepresented, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant may telephone the examining attorney to authorize such an amendment.  If the applicant is represented by a qualified practitioner, that practitioner must authorize any examiner’s amendment. Otherwise, the applicant must submit a response signed by the applicant or someone with legal authority to bind the applicant ( see TMEP §§712.01 et seq.), or by a qualified practitioner.  This should be done through TEAS (using either the "Response to Office Action" or "Request for Reconsideration after Final Office Action" form, as appropriate), or may be done by fax (unless it is excluded by 37 C.F.R. §2.195(d) ).  In a TEAS Plus or TEAS RF application, the response must be filed through TEAS, or the application will lose TEAS Plus or TEAS RF status ( see TMEP §§819.02(b), 820.02(b)) .  See TMEP §611.01(c) regarding signature of documents submitted through TEAS.  When a response is signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.

Unsatisfactory Response or No Response.  If no acceptable response is received within the time granted under 37 C.F.R. §2.65(a)(2) , the examining attorney must hold the application abandoned for failure to file a complete response.   See TMEP §718.03 .  In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66 .  The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146 .  See TMEP §1713.01 regarding the standard of review for reversing an examining attorney’s holding of abandonment due to incomplete response.

713.01 Previous Action by Different Examining Attorney

When assigned to act on an application that was previously handled by a different examining attorney, the examining attorney should act consistently with the prior examining attorney, unless it would be clear error ( see TMEP §706.01 ) to do so.

713.02 Noting All Outstanding Refusals or Requirements

Every refusal or requirement made in a prior Office action that is still outstanding must be referenced in any subsequent action, including Notices of Suspension. In addition, when a particular refusal or requirement has been withdrawn, obviated, or satisfied because of applicant’s response or otherwise, the examining attorney should notify the applicant in any action that immediately follows.

Noting all outstanding refusals and requirements is done only as a courtesy to prevent any misunderstanding. A refusal or requirement issued in a previous action remains in effect unless the examining attorney specifically indicates that it has been withdrawn, obviated, or satisfied. Thus, if an examining attorney issues an Office action that does not mention an outstanding refusal or requirement that was raised in a previous action, the refusal or requirement may nonetheless be made final in a subsequent action, if the application is otherwise in condition to be made final.

713.03 Response to Applicant’s Arguments in Nonfinal Actions

When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments. See TMEP §718.02(a) for an examining attorney’s response to an applicant’s incomplete response to a partial nonfinal refusal or requirement and TMEP §§715.03 and 715.04 for an examining attorney’s response to an applicant’s arguments in a request for reconsideration after final action.

In response to a refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) ,  the applicant may respond that the cited registration should be cancelled because the registrant has not filed the required maintenance documents.

The examining attorney must not withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired.  To allow ample time for processing of timely filed post-registration maintenance documents, the USPTO waits until 30 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired.

If the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired. See TMEP §1611 . If a party other than the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the party should contact the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 and request that the database be updated to show that the registration is cancelled or expired.

See TMEP §716.02(e) regarding when suspension is proper for awaiting cancellation/expiration of a cited registration for failure to file required maintenance documents.

714.01 Not Permissible on First Action

A first action by an examining attorney may not be a final action.  An applicant is entitled to at least one opportunity to reply to any refusal(s) or requirement(s) raised by the examining attorney.

714.02 Not Permissible on Suspension

A letter of suspension cannot be made final.  See TMEP §§716–716.06 regarding suspension.

714.03 When Final Action is Appropriate

Final action is appropriate when a clear issue has been developed between the examining attorney and the applicant, i.e., the examining attorney has previously raised all outstanding issues and the applicant has had an opportunity to respond to them.

For a second action to be made final, all substantive refusals or requirements must have been made in the first action.  No refusal or requirement may be made final, even if it is a repeated refusal or requirement, unless the entire action is made final.  Thus, if the examining attorney makes a new refusal or requirement in a second or subsequent action, any previously issued refusals or repeated requirements may not be made final, but instead should be maintained.

In an application with a claim of priority based on §44(d) in which the applicant has indicated an intent to rely on §44(e) as a basis for registration, the examining attorney may not issue a final action until the applicant submits a copy of the foreign registration.  When the application is otherwise in condition for final refusal, the examining attorney must suspend action on the application pending receipt of a copy of the foreign registration.  The notice of suspension must indicate all outstanding refusals or requirements that will be made final upon receipt of the foreign registration if no new issues are raised.   See TMEP §§716.02(b) , 1003.04(a), (b) .

Second actions should be final actions whenever possible.  While an applicant is entitled to a full and fair hearing, it is in the public interest that prosecution be limited to as few actions as is consistent with proper examination.  Neither the Act nor the rules of practice give an applicant the right to an extended prosecution.

See TMEP §§714.05–714.05(f) for further discussion of when an examining attorney should issue a nonfinal action rather than a final action, and TMEP §714.06 regarding final actions that are premature.

714.04 Form of the Final Action

When making an action final, the examining attorney must restate any substantive refusals or requirements that remain outstanding, and must cite the rule(s) and/or statute(s) that provide the basis for these refusals or requirements.  The examining attorney should place all evidence in support of his or her refusal in the record at the time the final action is issued.

The final action should include a clear and unequivocal statement that the refusal or requirement is final.  When there is more than one ground set out as the basis for the final action, the action may begin or conclude with a paragraph containing wording such as “This action is made FINAL” or “This is a FINAL action,” which covers all grounds.

The final action must also mention any refusals or requirements that have been obviated, withdrawn, or satisfied.   See TMEP §713.02 .

The examining attorney must include a statement that the only proper response to a final action is an appeal to the Board (or a petition to the Director, if permitted under 37 C.F.R. §2.63(b)(2) ), or compliance with the outstanding requirement(s).   37 C.F.R. §2.63(b)(1)-(2) .

A final action must include a six-month response clause ( see TMEP §705.08 ) so that is it clear that the applicant must file a timely response to avoid abandonment of the application.

714.05 Delineating New Issues Requiring Issuance of Nonfinal Action

It is sometimes difficult to determine what constitutes a new issue requiring a new nonfinal action, rather than a final action, after receipt of a response.  See TMEP §§714.05(a) – 714.05(f) regarding the propriety of issuing a final action in specific situations, and TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.

In a §66(a) application, the Madrid Processing Unit should be notified if a new issue is raised. See TMEP §1904.03(a) . However, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for an extension of protection to the USPTO.   See TMEP §1904.03(a) .

714.06 Applicant’s Recourse When Final Action is Premature

If an applicant believes that a refusal to register or a requirement has been made final prematurely, the applicant must raise the issue while the application is still pending before the examining attorney.  It is not a ground for appeal to the Trademark Trial and Appeal Board. TBMP §1201.02 .  The applicant may raise the matter by filing a request for reconsideration with the examining attorney, or by contacting the managing attorney or senior attorney in the examining attorney’s law office.  If the examining attorney does not withdraw the final action, the applicant may file a petition to the Director under 37 C.F.R. §2.146 .  See TMEP Chapter 1700 regarding petitions.

If, on request for reconsideration, the examining attorney finds the final action to have been premature, the examining attorney should issue a new nonfinal action with a six-month response clause.

715.01 Proper Response to Final Action

An applicant must respond to a final action within six months of the issuance date.   15 U.S.C. §1062(b) ; 37 C.F.R. §2.62(a) .

An applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07 ); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2) . Filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2) . 37 C.F.R. §2.63(b)(3) ; TMEP §715.03 .

For an application filed under Section 1(b) in which the applicant has filed a timely “insurance” extension request (i.e., in conjunction with the statement of use or within the same six-month period that the statement of use is filed; see TMEP §§1108.03–1108.03(a), 1109.16(c) ), when the six-month response period to a final Office action will expire before the expiration of the extension period, the applicant may respond to the final action by requesting suspension until the end of the extension period in order to overcome any substantive refusals and/or comply with any outstanding requirements maintained in the action. See TMEP §§716.02(f) , 716.06 , 1109.16(d) .

After a final refusal to register on the Principal Register, an amendment requesting registration on the Supplemental Register or registration on the Principal Register under §2(f) of the Trademark Act may be a proper response in some circumstances.   See TMEP §§714.05(a)(i) , 816.04 , 1212.02(h) .

715.02 Action After Final Action

Once an action has been properly made final, the examining attorney normally should not change his or her position.  However, this does not mean that an applicant’s amendment or argument will not be considered after final action.  An amendment may be accepted and entered if it places the application in condition for publication or registration, or will put the application in better form for appeal (i.e., reduce the issues on appeal).  For example, an amendment requesting registration on the Supplemental Register or on the Principal Register under §2(f) may be a proper response to a final refusal of registration on the Principal Register in some circumstances.   See TMEP §§714.05(a)(i) , 816.04 , 1212.02(h) .

The examining attorney should issue an examiner’s amendment ( see TMEP §707─707.03 ) if it will immediately put the application in condition for publication or registration or reduce the issues on appeal.

If the applicant files a response that complies with all outstanding requirements and overcomes all outstanding refusals, the examining attorney should approve the application for publication or registration, as appropriate.

In the rare circumstance where the examining attorney determines that a final refusal should be withdrawn, even though the applicant has not submitted any further amendments or arguments after issuance of the final action, the examining attorney must withdraw the requirement or refusal and approve the application for publication or registration, if it is otherwise in condition for such action. The examining attorney must also promptly attempt to notify the applicant by telephone or e-mail that the requirement or refusal is withdrawn, so that the applicant knows that filing an appeal is unnecessary, and must enter an appropriate Note to the File in the record.

The applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusals and/or comply with any outstanding requirements within six months of the issuance date of the final action.  However, filing a request for reconsideration does notstay or extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2) .   37 C.F.R. §2.63(b)(3) .

See TMEP §716.06 regarding suspension after final action.

715.03 Request for Reconsideration After Final Action

Under 37 C.F.R. §2.63(b)(3) , the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board or petition to the Director.

However, filing a request for reconsideration does notstay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2) .   37 C.F.R. §2.63(b)(3) ; TMEP §715.03(c) .  The USPTO cannot extend the statutory deadline for filing an appeal.   See 15 U.S.C. §1062(b) ;  37 C.F.R. §2.142(a) . But see TMEP §1714.01(a)(ii) (concerning filing a petition to revive an abandoned application with a notice of appeal when an applicant fails to respond to a final action).  Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the six-month period for response to the final action, or the application will be abandoned.  If the request for reconsideration is unsuccessful, and the applicant has not timely filed a notice of appeal, the application will be abandoned for incomplete response after the expiration of the six-month response period.   See 15 U.S.C. §1062(b) ;  37 C.F.R. §2.65(a) . See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement and TMEP §§715.04–715.04(b) for information about processing a request for reconsideration filed with a notice of appeal.

The examining attorney should construe any document filed after final action that responds to the outstanding refusals or requirements as a request for reconsideration.  If the request for reconsideration does not overcome or resolve all outstanding refusals and requirements, the examining attorney must follow the procedures outlined in TMEP §§715.03(a)(ii) , (b) , and 715.04(a), (b) .  An Office action issued in connection with those procedures should discuss any new evidence submitted with the request for reconsideration, regardless of whether it is significantly different from evidence previously submitted. If the evidence in the request for reconsideration is significantly different from the evidence currently of record, the examining attorney must issue a new final refusal (i.e., an “Examiner’s Subsequent Final Refusal”). See TMEP §715.03(b) .

Regardless of whether an applicant submits new evidence with a request for reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for which reconsideration is sought.   TBMP §1207.04 ;  see In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1200–01 (TTAB 2009); In re Giger, 78 USPQ2d 1405, 1406–07 (TTAB 2006) .  

To determine the appropriate action to take upon receipt of a request for reconsideration, the examining attorney must consider whether:  (1) the applicant has timely filed a notice of appeal; (2) time remains in the six-month period to respond to the final action; and (3) the request for reconsideration presents a new issue or new evidence significantly different from that previously submitted.  See TMEP §§715.03(a) , 715.03(b) , and 715.04–715.04(b) for further information as to how examining attorneys should handle requests for reconsideration.

715.04 Request for Reconsideration Filed in Conjunction with Notice of Appeal  

The Board has jurisdiction over an application upon the filing of a notice of appeal.  In response to a request from an applicant, the Board may remand an application to the examining attorney for consideration of specific facts or issues.   37 C.F.R. §2.142(d) .  See TBMP §1209 regarding remand during an ex parte appeal, TBMP §515 regarding remand to the examining attorney during an inter partes proceeding, and TMEP §1504.05 regarding requests for remand.

If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration.   TBMP §1204.   See TBMP Chapter 1200 and TMEP §§1501–1501.07 for further information about ex parte appeals.

If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration.  The examining attorney may issue an examiner’s amendment if he/she determines that an examiner's amendment ( see TMEP §§707–707.03 ) will immediately put the application in condition for publication or registration. In these situations, the appeal is moot and no further action is needed after approving the application for publication or registration.  If there are remaining unresolved refusals or requirements, the request for reconsideration must be denied. See TMEP §715.04(a) . In some circumstances, the examining attorney may also issue an examiner’s amendment to reduce the issues on appeal. See TMEP §715.02 regarding action after issuance of a final action.

716.01 Form of Suspension Notice

In a suspension notice, the examining attorney must specifically state that action is suspended and must omit any reference to a six-month response period. If the application is in condition for a final action but for the matter necessitating suspension, the notice of suspension must clearly indicate which refusals or requirements have been resolved, if any, and which will be made final when the application is removed from suspension, assuming that no new issues have arisen. When the application is removed from suspension, the examining attorney must promptly issue a final action, if appropriate. 

716.02 Circumstances Under Which Action May Be Suspended  

Under 37 C.F.R. §2.67 , an examining attorney has the discretion to suspend an application “for good and sufficient cause.”  The most common reasons for suspension of an application are discussed below.

As a general rule, the USPTO will not suspend an application to give an applicant time to secure a consent agreement.

Any request to stay a deadline for responding to an Office action pending disposition of a petition to the Director should be directed to the Deputy Commissioner for Trademark Examination Policy.  If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Deputy Commissioner for Trademark Examination Policy.  The examining attorney should not suspend action on an application pending a decision on petition to the Director except upon express permission from the Office of the Deputy Commissioner for Trademark Examination Policy.   See 37 C.F.R. §2.146(g) ; TMEP §1705.06 .

716.03 Applicant’s Arguments Against Suspension

If an examining attorney suspends action on an application, and the applicant believes the suspension is improper, the applicant may file a request to remove the application from suspension.  The applicant should state the reasons for the belief that the suspension is improper and attach any relevant evidence.

If persuaded by the request, the examining attorney should remove the application from suspension, resume examination of the application, and take appropriate action.

If not persuaded by the request, the examining attorney must issue a new suspension action that addresses the applicant’s arguments and explains the reasons why the request is not granted .  The applicant’s recourse is to file a petition to the Director to review the examining attorney’s action continuing the suspension.  The Director will reverse the examining attorney’s action only where there has been clear error or an abuse of discretion.  See TMEP Chapter 1700 for information about petitions.

If an applicant argues preemptively against suspension based on a conflicting mark in a prior-filed application, and the examining attorney finds the arguments unpersuasive, the examining attorney must include a statement to that effect in the suspension notice. The recommended practice is to briefly address the merits of the unpersuasive arguments prior to an initial suspension.

716.04 Suspended Docket Checked

A legal instruments examiner (“LIE”) will review each case in the suspended docket at least every six months to determine whether continued suspension is appropriate.  If the LIE determines that the application should remain suspended, he or she should report the suspension check in the Trademark database.  If suspension is no longer necessary, the LIE will notify the examining attorney and the examining attorney will take the appropriate action.

716.05 Inquiry by Examining Attorney Regarding Suspended Application

In certain circumstances, if the application has been suspended for six months or more, the examining attorney will issue an Office action inquiring as to the status of the matter on which suspension was based. For example, if action is suspended pending the receipt of a copy of a foreign registration or proof of renewal of a foreign registration, the examining attorney will inquire every six months during the suspension period as to the status of the foreign application or registration.  Similarly, for applications that are suspended pending the outcome of a civil action, the examining attorney will inquire every six months as to the status of the proceeding.  If the foreign application or the civil action is still pending, a statement by the applicant to this effect is a proper response. Upon receipt of such a proper response to such a suspension inquiry, the examining attorney must issue a new suspension letter.

If the applicant does not respond to the suspension inquiry, the application will be abandoned for failure to respond. To expedite processing, the USPTO recommends that the applicant’s response to a suspension inquiry be filed through TEAS, at http://www.uspto.gov/trademarks/teas/index.jsp , using the “Response to Suspension Inquiry or Letter of Suspension” form.

The examining attorney should not issue any inquiry if the relevant information is available in the USPTO databases, including information regarding the status of a proceeding pending in the USPTO (e.g., an inter partes proceeding).

716.06 Suspension After Final Action

If the examining attorney determines that action on an application should be suspended after issuance of a final refusal, the examining attorney must issue a suspension notice.  This may occur, for example, when the applicant files a petition to cancel a cited registration or in the limited circumstance in a Section 1(b) application when the applicant files a timely “insurance” extension request but the six-month response period may expire before the end of the extension period.   See TMEP §§716.02(a) and (f) , 1109.16(d) .  The examining attorney should not “withdraw the finality” of the refusal in order to suspend; however, in the suspension notice, the examining attorney should inform the applicant that the refusal of registration is continued but that it is not necessary to respond to the final refusal until the application is removed from suspension.

If the application is eventually removed from suspension and the grounds for refusal remain operative, the examining attorney should issue an “Examiner’s Subsequent Final Refusal,” thereby reissuing the final refusal, and the applicant will have six months to respond.  It is inappropriate to remove the case from suspension and immediately declare the application abandoned.  

717.01 Returned Office Action

If an emailed notification of an issued Office action is returned as undeliverable, the USPTO will not send a paper copy of the Office action. See TMEP §304 regarding email and TMEP §403 for more information about returned correspondence. Trademark applicants and registrants should monitor the status of their applications and submissions in support of maintenance of registrations by checking the status every six months between the filing date of the application or maintenance submission and the issuance of a registration or notice of acceptance. See TMEP §§108.03 and 1705.05 regarding due diligence and the duty to monitor status.

If a mailed Office action is returned to the USPTO because the United States Postal Service was not able to deliver it, the returned action and envelope will be scanned into the electronic record.  See TMEP §717 regarding the applicable procedure if an Office action is sent to the wrong address due to a USPTO error. If no communication from the applicant is received within the period for response, the application will be abandoned. See TMEP §§1712–1712.02(b)(iii) regarding requesting reinstatement of applications and registrations abandoned due to USPTO error and TMEP §§1714–1714.01(f)(i) concerning filing a petition to revive an application abandoned due to unintentional delay.

717.02 Non-Receipt of Office Action

If an applicant notifies the USPTO that the applicant did not receive an action, either before or after the expiration of the response period, the examining attorney must check to determine whether the action was sent to the correspondence address of record.   See TMEP §§609–609.04.

If the Office action was sent to the correspondence address of record, and there is time remaining in the response period, the examining attorney should direct the applicant to view the full record on the TSDR portal on the USPTO website, and advise the applicant that the deadline for response runs from the original issuance date and that a response must be received in the USPTO before this deadline to avoid abandonment.  

If the response period has expired, the examining attorney should advise the applicant that the application is abandoned, and that the applicant may file a petition to revive if the applicant can meet the timeliness requirements in 37 C.F.R. §2.66(a) .  See TMEP §§1714–1714.01(g) regarding petitions to revive.  In either situation, the examining attorney should enter an appropriate Note to the File in the application record documenting the discussion.

If there is evidence in the record that the USPTO sent the Office action to the wrong address due to a USPTO error ( see TMEP §717 ), the USPTO will reissue the action and provide the applicant with a new response period.  The examining attorney should first ensure that the correspondence address has been corrected, and then e-mail the internal TM Clerical Support mailbox, stating that the action was sent to the wrong address, and requesting that the action be reissued with a new response period.  The deadline for response will run from the new issuance date.  If the application had been abandoned, it will be reinstated.  See TMEP §1712.01 regarding reinstatement of applications that are abandoned due to USPTO error.

718.01 Express Abandonment by Applicant or Applicant’s Attorney

To expedite processing, the USPTO recommends that letters of express abandonment be filed through TEAS, at http://www.uspto.gov .  Generally, all express abandonments filed via TEAS are processed electronically and the Trademark database is automatically updated to indicate that the application has been expressly abandoned and generates a notice to the applicant that the application is abandoned.  However, in the later stages after the application has been approved for publication, the TEAS system will not automatically process an incoming express abandonment, and the express abandonment must be reviewed manually.  The USPTO is generally unable to withdraw a mark from publication or issue unless the express abandonment is received and processed at least twenty days before the scheduled publication date or registration issuance date. 

Paper letters of express abandonment are reviewed by examining attorneys.

All letters of express abandonment must be signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership), or a qualified practitioner.   37 C.F.R. §2.68(a) ; see TMEP §§608.01 , 611.02 .  The same principles that govern the signature of responses to Office actions ( see TMEP §§712 , 712.01 ) apply to the signature of express abandonments.  For express abandonments filed on paper, the examining attorney must ensure that the letter of express abandonment is signed by a proper party.  If the applicant is represented by a qualified practitioner, the practitioner must personally sign the letter of express abandonment.   37 C.F.R. §§2.193(e)(2)(i) , 11.18(a) .  If the applicant is pro se, the letter of express abandonment must be personally signed by the individual applicant or someone with legal authority to bind a juristic applicant.   37 C.F.R. §§2.193(e)(2)(ii) , 11.14(e) .  See TMEP §611.06 for more information about persons who have legal authority to bind various types of juristic applicants, and TMEP §§611.05–611.05(b) and 712.03 regarding documents signed by unauthorized parties.

An application cannot be expressly abandoned by examiner’s amendment.

When an applicant files a letter of express abandonment on paper that meets the requirements of 37 C.F.R. §2.68(a) , the examining attorney should perform a database transaction expressly abandoning the application, effective as of the filing date of the letter of express abandonment, which will generate a letter notifying the applicant that the application is abandoned.

If it is unclear whether a document is a letter of abandonment, the examining attorney should contact the applicant to inquire about his or her intention before abandoning the application.  

If an applicant files an express abandonment of an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, and wants to withdraw the abandonment to resume prosecution of the application, the applicant must petition the Director under 37 C.F.R. §§2.146(a)(5) and 2.148 to waive 37 C.F.R. §2.68(a) to permit withdrawal of the express abandonment, within two months of the effective date of abandonment.   See 37 C.F.R. §2.146(d) .  However, such a petition will be granted only in an extraordinary situation, where justice requires, and no other party is injured.   See In re Glaxo Grp. Ltd., 33 USPQ2d 1535 (Comm’r Pats. 1993); cf. Christiane E, LLC v. Int’l Expeditions, Inc., 106 USPQ2d 2042 (TTAB 2013).

If the applicant files a written request to abandon the application after the commencement of an opposition proceeding, the request for abandonment must be filed with the Board, and must include the written consent of every adverse party to the proceeding.  If the applicant files a request for abandonment without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant.   37 C.F.R. §2.135 .  If an applicant whose application is the subject of an opposition proceeding files an express abandonment of the application after the commencement of the opposition proceeding, but before receipt of the Board’s notice of the filing of the opposition, the Board will allow the applicant an opportunity to obtain and submit the written consent of every adverse party or to withdraw the abandonment because an unconsented abandonment, if not withdrawn, may result in entry of judgment against the applicant in the opposition.   TBMP §602.01 .  It is not necessary to obtain consent of a potential opposer during an extension of time to oppose.   TBMP §218 .

In a §66(a) application, an applicant may file a letter of express abandonment either with the USPTO or with the IB.

718.02 Failure by Applicant to Take Required Action During Statutory Period

Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a) , an application becomes abandoned if the applicant fails to respond, or fails to respond completely, within the six-month statutory response period.  See TMEP §§718.03–718.03(b) regarding incomplete responses.  When an applicant is granted additional time to perfect its response under 37 C.F.R. §2.65(a)(2) ( TMEP §718.03(b) ), but fails to respond or responds late, the date of abandonment is not affected.  It remains the day after the date on which the six-month response period ends, since the grant of additional time to perfect a response does not extend the statutory six-month response period.

The examining attorney has no authority to accept a late response.  If an applicant files a late response, the examining attorney must immediately send a notice to the applicant stating that the response was untimely; that the application is abandoned; and that the applicant may file a petition to revive under 37 C.F.R. §2.66 if the failure to timely respond was unintentional.  See TMEP §§1714–1714.01(g) regarding petitions to revive.

See TMEP §718.02(a) regarding partial abandonment.

718.03 Incomplete Response

Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a) , an applicant must respond completely to each issue raised in the examining attorney’s Office action to avoid abandonment.  Generally, a response is incomplete if it:  (1) does not address one or more of the requirements or refusals made in the Office action; (2) is unsigned; (3) is signed by an unauthorized person; or (4) is a response to a final action that does not overcome all refusals or satisfy all requirements, when the response period has expired, and the applicant has not timely filed a notice of appeal.   See TMEP §§715.03(a)─715.03(a)(ii)(E) .

Exception - TEAS Responses Consisting Solely of a Signature or Missing Significant Data or Attachments . Occasionally, the USPTO receives a response to an Office action filed through TEAS that consists solely of a signature or is missing significant data or attachments. This is generally due to user error. If an examining attorney receives a TEAS response to a nonfinal action that consists solely of a signature or is missing significant data or attachments, the examining attorney should not treat the response as non-responsive or issue a notice of incomplete response granting the applicant additional time to complete the response. Instead, the examining attorney must issue a final action, and include sufficient evidence and arguments for all refusals and requirements in preparation for a possible appeal, if the application is in condition for final action. If the application is not in condition for final action (e.g., because a prior pending application has matured into a registration), the examining attorney should issue another nonfinal action, with a six-month response clause, explaining why the response was incomplete, continuing all outstanding refusals and requirements, and addressing any new issues. See TMEP §715.03(a)(ii)(E) regarding TEAS responses to final actions that consist only of a signature or are missing significant data or attachments.

Unsigned Responses. If a response is unsigned, the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal.  The examining attorney must issue a notice of incomplete response, granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response pursuant to 37 C.F.R. §2.65(a)(2) .   See TMEP §§715.03(a)(ii)(E) , 718.03(b) .  The applicant must submit a properly signed copy of the response, or, if all issues raised are proper subject matter for an examiner’s amendment, the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s previously recognized qualified practitioner may authorize the examining attorney to enter an examiner’s amendment.  A new qualified practitioner who has not yet appeared may not authorize an examiner’s amendment, because a telephone call from a qualified practitioner does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(b) . See TMEP §604.01 . If all issues raised are not proper subject matter for an examiner’s amendment, the applicant may not ratify the unsigned response through an examiner’s amendment.   See TMEP §712.02 .  If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(a)(2) , the examining attorney must hold the application abandoned for failure to file a complete response.   See TMEP §718.03(a) .

Responses Signed by Unauthorized Persons.  If a response is signed by an unauthorized party (e.g., a foreign attorney who is not a member in good standing of the bar of the highest court of a state in the United States, which includes the District of Columbia and any Commonwealth or territory of the United States) or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal.  The examining attorney must issue a notice of incomplete response, granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response pursuant to 37 C.F.R. §2.65(a)(2) .   See TMEP §§715.03(a)(ii)(E) , 718.03(b) . The applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant (see TMEP §§611.06 , 712.01 ), or by a qualified practitioner ( see TMEP §§602–602.03(e) ).   37 C.F.R. §2.62(b) .  If a response was signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.  See TMEP §§611.05–611.05(b) and 712.03 for further information.  If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(a)(2) , the examining attorney must hold the application abandoned for failure to file a complete response.  See TMEP §718.03(a) regarding holdings of abandonment for failure to respond completely.

Properly Signed but Incomplete Responses to Nonfinal Actions.  When an applicant files an incomplete response to a nonfinal action (i.e., does not address one or more of the requirements or refusals made in the Office action), the examining attorney should not hold the application abandoned.  Instead, the examining attorney should generally issue a final action, if the application is in condition for final action. In limited circumstances, the examining attorney has discretion to issue a notice of incomplete response granting the applicant additional time to complete the response if the response meets the requirements of 37 C.F.R. §2.65(a)(2) . See TMEP §718.03(b) .  If the application is not in condition for final action, and the response does not meet the requirements of 37 C.F.R. §2.65(a)(2) , the examining attorney should issue another nonfinal action, explaining why the response was incomplete, and continuing all outstanding refusals and requirements.

A written disagreement with the examining attorney’s refusal or requirement may be a complete response to a nonfinal action with respect to that refusal or requirement.

See TMEP §718.02(a) for more information about processing an incomplete response to a partial nonfinal refusal or requirement.

Properly Signed but Incomplete Responses to Final Actions.  If the applicant files a properly signed but incomplete response that does not meet the criteria in 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, there is no time remaining in the six-month response period, and no notice of appeal has been filed, the examining attorney must hold the application abandoned due to incomplete response. See TMEP §§715.03(a)(ii)(D) , 718.03(a) .

See TMEP § 718.02(a) for more information about processing an incomplete response to a partial final refusal or requirement.

Non-Responsive Communications.  An inquiry, a request to extend the response period, or a communication on a matter unrelated to the preceding Office action should be treated as a non-responsive communication, not as an incomplete response.  See TMEP §719 for further information.

Failure to Respond to Notice of Incomplete Response.  If the examining attorney issues a notice of incomplete response, and the applicant fails to respond or submits an unsatisfactory response to the notice within the time granted under 37 C.F.R. §2.65(a)(2) , the examining attorney must issue an "Abandoned Due to Incomplete Response" action.   See TMEP §§715.03(a)(ii)(D) , 715.03(a)(ii)(E) , 718.03(b) .

See TMEP §717.02 regarding the procedure for handling an applicant’s claim that the applicant did not receive the Office action.

718.04 Failure to File Statement of Use

Under 15 U.S.C. §1051(d)(4) , an application under §1(b) of the Act is abandoned if the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use.   37 C.F.R. §§2.65(c) , 2.88(k) ; TMEP §§1108.01 , 1109.04 .

The ITU/Divisional Unit will abandon the application if the applicant fails to file a statement of use or request for an extension of time to file a statement of use within six months of the issuance date of the notice of allowance, or within a previously granted extension period.  The USPTO will send a computer-generated notice of abandonment to the applicant.

If the failure to timely file the statement of use or extension request was unintentional, the applicant may file a petition to revive under 15 U.S.C. §1051(d)(4) and 37 C.F.R. §2.66 .   See TMEP §§1714–1714.01(g) .

718.05 Failure to Perfect Appeal

An application may become abandoned because of withdrawal of, or failure to prosecute, an appeal to the Trademark Trial and Appeal Board. See  15 U.S.C. §1062(b) ; TBMP §1203.02(a) ; TMEP §1501.

An application may also become abandoned because of failure to perfect an appeal, or dismissal of an appeal, to the Court of Appeals for the Federal Circuit or civil court.  

See TMEP §718.02(a) regarding partial abandonment due to failure to perfect an appeal.

718.06 Notice of Abandonment for Failure to Respond

If no response is received by the USPTO within six months of the issuance date of an Office action, the application is sent to the examining attorney to be abandoned or partially abandoned, as appropriate.  The examining attorney must check the record to ensure that there is no response and that the Office action was sent to the correspondence address of record.  See TMEP §717 regarding reissuing an Office action that was sent to the wrong address due to a USPTO error.  The examining attorney must also check to see whether the Office action contained a partial refusal or requirement.  See TMEP §718.02(a) regarding partial abandonment.

An application is considered to be abandoned as of the day after the date on which a response was due, even though the examining attorney performs the Trademark database transaction that reports the abandonment at a later date.  The USPTO sends a computer-generated notice of abandonment to the correspondence address listed in the application.

Applications that are abandoned after ex parte appeals or inter partes proceedings are considered abandoned as of the date of the action by the Board that caused the application to abandon (e.g., affirming the examining attorney’s refusal or sustaining an opposition).  However, the Trademark database transaction reporting the abandonment is not performed until a month after expiration of the period for appeal from the Board’s decision.

718.07 Revival or Reinstatement of Abandoned Application - New Search Required

When an application listed as abandoned in the USPTO's Trademark database is revived or reinstated, the examining attorney must conduct a new search of USPTO records for conflicting marks.  If the new search shows that a later-filed application for a conflicting mark has been approved, or if a §2(d) search for a later-filed application for a conflicting mark was performed when the earlier-filed application was in abandoned status, the examining attorney with the earlier-filed application must inform the examining attorney with the later-filed application that the earlier-filed application has been revived or reinstated so that appropriate action may be taken. If the later-filed application has been published, the examining attorney handling that application should request jurisdiction ( see TMEP §1504.04(a) ) before suspending the application pending disposition of the earlier-filed application. 37 C.F.R. §2.83(c) ; TMEP §1208.02(c) .

However, if a later-filed conflicting application is registered, the examining attorney must refuse registration of the earlier-filed (revived or reinstated) application under 15 U.S.C. §1052(d) .   In this situation, an applicant may file a petition to cancel the registration under Section 14 of the Trademark Act, 15 U.S.C. §1064 .