Examination Guide 1-92
U.S. Patent and Trademark Office
Trademark Examining Groups
EXAMINATION GUIDE NO. 1-92
Issued September 9, 1992
Contents
A. Intent-to-Use Applications
1. Fees - Refunds After Cancellation of Notice of Allowance
2. Actionafter Issuance of the Notice of Allowance Based on "Clear Error" -
Consultation with Managing Attorney
3. Drawings - Typed Marks Including Nonstandard Characters
B. Provisions Affecting All Applications
1. Review of Denials of Filing Dates
2. Filing Dates - Multiple Drawing Pages
3. Drawings - Distinguishing Typed from Special Form
4. Drawings - Amendments
5. The Date of First Use Anywhere
6. Inquiries Concerning Other Names - Applicant Identified as Distributor
7. Time Between Execution and Filing of Papers
8. Examiner's Amendments Superseded by Issuance of Office-Action Letter
9. Suspension - Request to Remove Application from Suspended Status
10. Express Abandonment - Withdrawal
11. Examining Attorney's Request for Reconsideration
12. Reliance on Unpublished Decisions as Precedent
C. Provisions Affecting Applications under <section> 44 of the Act
A. Intent-to-Use Applications
1. Fees - Refunds After Cancellation of Notice of Allowance
If the Office cancels the notice of allowance to take action in an application
prior to the filing or examination of the statement of use, the Office will refund
any fees paid in conjunction with either a request for extension of time to file the
statement of use or the statement of use itself. When the notice of allowance is
canceled, the application is returned to initial examination. The examining attorney
should request that the applications examiner arrange for a refund. The Office will
not refund any fees if the statement of use has been examined, whether or not
refusals or requirements are issued for any reason during that examination. [p.2]
If the application is returned to initial examination, any statement of use which
had been submitted prior to that time will be retained in the file but will not be
considered unless it is resubmitted as an amendment to allege use or statement of
use at the appropriate time with the required fee.
2. Action after Issuance of the Notice of Allowance Based on "Clear Error" -
Consultation with Managing Attorney
If, after issuance of the notice of allowance, the examining attorney determines
that she or he must issue a refusal or requirement which could or should have been
issued during initial examination of the application, the examining attorney should
consult the managing attorney before taking any such action. This must be done
whether the action is to be taken before, during or after examination of the
statement of use, and whether or not the notice of allowance is canceled. This
applies to any refusal which arguably could or should have been issued during
initial examination, such as most refusals under <section> 2(d) or <section> 2(e)(1)
of the Act.
3. Drawings - Typed Marks Including Nonstandard Characters
There is apparently some confusion over the disposition of intent- to-use
applications for the typed version of a mark which includes a symbol or character
which may not be displayed in typed form. The specific characters, other than
letters and numbers, which are permitted in typed drawings are as follows:. ? " -; (
) % $ @ + [] = * # & / : ' !,. The characters not permitted in typed drawings
include the degree symbol (), raised or "rolled" periods or devices such as
subscripts or exponents, among others.
In an application filed based on use, the examining attorney would require a new
drawing in special form conforming to the mark as it is used on the specimens. In an
application under Trademark Act <section> 44, the mark must agree with the mark
displayed in the foreign registration.
Specimens are rarely available in the initial examination of an intent-to-use
application. In these cases, the examining attorney should require amendment to a
special-form drawing conforming to the special-form version the applicant intends to
use. If the applicant indicates that it is unable to so do for any reason, the
examining attorney should consult the Administrator for Trademark Policy and
Procedure. Note that intent-to-use applicants must comply with all formal
requirements related to drawings, whether typed or special form.
B. Provisions Affecting All Applications
1. Review of Denials of Filing Dates
If an applicant is denied a filing date and wishes to seek restoration of that
date, the usual procedure is to petition the Commissioner under Trademark Rule
2.146.
However, if the returned papers, standing alone, demonstrate that the denial was
due to Office error, the applicant may request restoration of the filing date
without a formal petition. To file such a request, the applicant must submit the
same papers, showing the canceled filing date, with a cover letter identified as a
"Request for Restoration of the Filing Date." The request should be [p.3] directed
to the Attention of the Administrator for Trademark Policy and Procedure, Office of
the Director, Trademark Examining Groups. If the papers demonstrate that all
relevant filing-date requirements were met at the time of the initial filing, the
Administrator may restore the filing date without a formal petition. The resubmitted
papers must demonstrate entitlement to a filing date without any additional
explanation or evidence. If any additional explanation or evidence is required, the
applicant must file a formal petition.
Furthermore, if the filing date is denied or canceled due to the omission of an
element, such as the drawing or specimens, and the applicant can present a return
postcard, or the equivalent, indicating that the Office had specifically
acknowledged receipt of the element in question, the Administrator can restore the
filing date without a formal petition. The applicant must provide a substitute to
replace the lost element, along with the papers that were returned, when requesting
restoration of the filing date.
In all requests to restore the filing date, the applicant must resubmit the
relevant fees, even if the applicant has not yet received a refund of any fees paid
previously.
Applicants must exercise due diligence in monitoring the status of applications to
ensure that remedies available through petition or otherwise are preserved where
they are otherwise proper. All requests to restore filing dates, whether by petition
or otherwise, should be filed promptly. If the Office mails an action advising the
applicant of the denial or cancellation of the filing date, the applicant must file
the petition or the request to restore the filing date within sixty days of the date
of mailing of the action. Trademark Rule 2.146.
If no action has issued, the applicant must submit a petition, a request to
restore the filing date or an inquiry with due diligence, normally within six months
of the asserted filing date. The Office issues filing receipts for applications,
usually within thirty days of filing. The failure to receive a filing receipt should
alert the applicant that there may be a problem with the application. If this
occurs, the applicant should at least inquire concerning the status of the
application. The applicant should submit any such status inquiry in writing to the
attention of the Office of Trademark Services. Any request to restore a filing date
which does not satisfy the due diligence requirement and the requirements related to
the timely filing of petitions will be denied.
2. Filing Dates - Multiple Drawing Pages
If an applicant submits two or more drawings displaying different marks or
different versions of a mark, the application will be denied a filing date.
Trademark Rule 2.21(a)(3) requires submission of " a drawing" to receive a filing
date (emphasis provided). Therefore, an application including two or more drawings
displaying different marks will not be accorded a filing date.
3. Drawings - Distinguishing Typed from Special Form
Due to the availability of typewriters and word processors which are capable of
producing varied type styles and type sizes, some confusion has arisen over whether
a mark is in typed form or special form. The Office has published a notice
recommending that applicants use standard type in typed drawings of marks. See 1135
TMOG 44.
If there is any doubt concerning whether a drawing is in typed or special form,
the examining [p.4] attorney should request clarification from the applicant
concerning the nature of the drawing. After the applicant has indicated the nature
of the drawing, the examining attorney should ensure that the TRAM data base,
including the drawing code, has been corrected, if necessary. To enter a correction,
the examining attorney should submit the standard request to the responsible
applications examiner in the law office. The drawing cannot be amended if the
amendment would result in a material alteration of the mark.
4. Drawings - Amendments
In certain instances, case law permits the amendment of a mark to add an element
which the applicant has already registered for the same goods or services covered by
the application which is being examined. See In re Nationwide Industries Inc., 6
USPQ2d 1882 (TTAB 1988); Florasynth Laboratories Inc. v. Mulhens, 122 USPQ 284
(Comm'r Pats. 1959). However, an applicant may not delete matter on this basis. Any
proposed amendment to delete matter from the mark must be evaluated as to whether
the deletion would represent a material alteration of the mark without regard to
whether the matter to be deleted is the subject of an existing registration.
5. The Date of First Use Anywhere
TMEP <section> 806.01 now specifies that the date of first use anywhere required
by Trademark Act <section> 1 must be a date of first use in the United States. This
policy no longer applies. Applicants may state a date of first use anywhere to
comply with this requirement. See In re Sevi S.p.A., 1 USPQ2d 1671 (TTAB 1986).
6. Inquiries Concerning Other Names - Applicant Identified as Distributor
If the specimens identify the applicant as the distributor of a product, and there
is no information of record indicating a possible foreign manufacturer/owner, or
other evidence of record suggesting that another party is owner of the mark or that
the applicant is a mere distributor, the Office will presume that the applicant is
both owner and distributor. No injury is necessary concerning the reference to the
applicant as distributor. For procedures related to situations where the applicant
is identified as the distributor or importer of a foreign-made product see TMEP
1201.09(b).
7. Time Between Execution and Filing of Papers
TMEP <section> 803.04 discusses the circumstances in which the examining attorney
should require a new verification of the application due to the time which elapsed
between the execution and filing of the application. These same policies were
extended to cover the execution and filing of papers in intent- to-use applications,
specifically, amendments to allege use, statements of use and requests for
extensions of time to file statements of use. See Examination Guide 3-90 at page 6.
The policy affords the examining attorney discretion in determining whether a new
verification is required and specifies a guideline of eight weeks for domestic
applicants and twelve weeks for foreign applicants as a reasonable time between
execution and filing. Examining attorneys have had the discretion to accept the
paper even if a longer delay had occurred if circumstances warrant.
The Office will now consider six months between execution and filing as reasonable
for all [p.5] applicants and all papers. No new verification should be required if
the paper is filed within six months of execution. Although the examining attorney
retains the discretion to accept papers where a longer delay has occurred, this
discretion should be exercised in view of the liberalized guideline.
For example, it may be reasonable to accept a statement of use which was
originally prepared for filing as an amendment to allege use if it exceeds the
guideline by a modest period of time. This would be appropriate if the delay was due
to Office processing times and the bar against filing the statement of use prior to
the issuance of the notice of allowance. However, if there is a delay which exceeds
the guideline by a substantial period of time, due to the filing of an opposition or
other unusual circumstances, a new verification should be required.
8. Examiner's Amendments Superseded by Issuance of Office- Action Letter
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
the applicant immediately to advise the applicant of the change of position.
Furthermore, examining attorneys without partial signatory authority should
generally advise applicants that issuance of the examiner's amendment is subject to
approval by a supervisory attorney.
9. Suspension - Request to Remove Application from Suspended Status
If an examining attorney suspends action on an application to await disposition of
a conflicting, earlier-filed application, or for any other reason, and the applicant
believes the suspension is improper, the applicant may file a request to remove the
application from suspension. The request should state the reasons for the belief
that the suspension was improper and should provide any relevant evidence. For
example, the applicant may argue that there is no likelihood of confusion between
the applicant's mark and the mark in a prior-filed application.
If not persuaded by the request, the examining attorney should issue a new
suspension action with an appropriate explanation of the reasons why the request is
not granted.
If persuaded that suspension is not appropriate, the examining attorney should
resume examination of the application and take appropriate action.
If an examining attorney suspends action on an application based on one or more
prior-filed applications, the examining attorney should advise the applicant that
arguments concerning whether a conflict exists between the relevant applications may
be presented in a request to remove the application from suspension.
10. Express Abandonment - Withdrawal
If an applicant files an express abandonment of an application which is not the
subject of an inter partes proceeding before the Trademark Trial and Appeal Board,
and wishes to withdraw the abandonment to resume prosecution of the application, the
Office will not reinstate the application. In appropriate circumstances, an
applicant may petition the Commissioner to request withdrawal of the express
abandonment. [p.6]
Note the policy which governs when 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 prior to receipt of the Board's
notice of the filing of the opposition. In such a case, the Board allows the
applicant an opportunity to withdraw the abandonment because such an abandonment, if
not withdrawn, may result in entry of judgment against the applicant in the
opposition.
11. Examining Attorney's Request for Reconsideration
In a recent decision an augmented panel of the Trademark Trial and Appeal Board
expressly overruled prior precedent and held that an examining attorney may request
reconsideration of a Board decision reversing the examining attorney in an ex parte
appeal. In re Ferrero S.p.A., __ USPQ2d__, Serial No. 73/748,088 (TTAB, April 22,
1992).
An examining attorney may request reconsideration only if the Board reverses the
attorney's decision as to all issues and determines that the mark must be published
for opposition or that the registration must issue.
To request reconsideration, the examining attorney must prepare a request and a
supporting brief and submit the request to the managing attorney for occurrence in
the decision to seek reconsideration. If the managing attorney does concur, then the
request and brief must be submitted to the Office of the Director for approval. The
request must be approved by the Administrator for Trademark Policy and Procedure and
the Director prior to filing the request with the Board. If the managing attorney
does not concur in the decision to seek reconsideration, or the Administrator for
Trademark Policy and Procedure or the Director does not approve, the request cannot
be filed with the Board.
If the managing attorney concurs in the request, and both the Administrator for
Trademark Policy and Procedure and the Director approve the request, the examining
attorney will file the request with the Board. A copy should also be mailed to the
applicant or applicant's attorney at the same time. The Board will set an
appropriate time for the applicant to respond to the request. The examining attorney
may not file a reply brief in response to the applicant's brief.
The request for reconsideration should be filed with the Board within 30 days of
the Board decision which is the subject of the request. Later filing is permitted
only if the time is extended by the Board upon a showing of sufficient cause. In re
Ferrero S.p.A., __ USPQ2d__, Serial No. 73/748,088 (TTAB, April 22, 1992). The
managing attorney should review all decisions of the Board in ex parte appeals
involving attorneys in the law office and should promptly forward copies to the
responsible examining attorneys in view of the time limit for filing requests for
reconsideration.
12. Reliance on Unpublished Decisions as Precedent
In another recent decision the Board has stated:
Upon reflection, the Board has decided that citation of "unpublished" or "digest"
Board decisions as precedent will no longer be allowed. In the future, the Board
will disregard as precedent citation of any unpublished or digest decision. Even if
a complete copy of the unpublished or digest decision is submitted, the Board will
[p.7] disregard citation as precedent thereof. An exception exists, of course, for
those situations in which a party is asserting issues of claim preclusion, issue
preclusion, judicial estoppel, or law of the case or the like based on a decision of
the Board rendered in a nonprecedential (i.e., unpublished or digest) decision.
General Mills, Inc. v. Health Valley Foods, __ USPQ2d__, Opposition No. 76,303,
n.9 (TTAB, May 1, 1992).
This policy applies to both ex parte and inter partes cases. Accordingly,
examining attorneys should not cite as precedent either unpublished or digest
decisions in either Office actions or appeal briefs. Consistent with this decision,
examining attorneys should also discontinue providing informational copies of
unpublished decisions with office actions.
If a decision is not designated for publication and an examining attorney wishes
to recommend that the decision be published, the examining attorney should forward
the recommendation to the Administrator for Trademark Policy and Procedure. The
recommendation should specify the name of the case, the serial number and the date
of the decision.
C. Provisions Affecting Applications under <section> 44 of the Act
Serial Number of Foreign Applications
If the applicant asserts a priority claim under Trademark Act <section> 44(d), or
asserts a foreign registration as a basis for registration under Trademark Act
<section> 44(e), the applicant must provide the serial number of the relevant
foreign application. If the applicant fails to indicate the serial number at filing,
the examining attorney should require the applicant to provide this information in
the first office action.
If the application is approved for publication without the serial number of the
relevant foreign application, the photocomposition program for the Official Gazette
will reject the application. Then, the application will have to be returned to the
examining attorney in order to determine the relevant foreign- application serial
number.
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