Examination Guide 4-00

UNITED STATES PATENT AND TRADEMARK OFFICE

OFFICE OF THE COMMISSIONER FOR TRADEMARKS

EXAMINATION GUIDE NO. 4-00

December 11, 2000

 

 Requirements to Amend the Identification of Goods and Services: 

 When Final Action is Appropriate 

The purpose of this exam guide is to clarify when an examining attorney should issue a final requirement to amend the identification of goods and services. The Trademark Manual of Examining Procedure ("TMEP") will be changed in accordance with this examination guide at the next revision.

If the applicant responds to a non-final Office action requiring an amendment to the identification of goods and services, and the examining attorney determines that the identification is still unacceptable, generally the examining attorney must issue a final requirement to amend the identification of goods and services. There are only two exceptions to this rule:

1. If the amended identification is broader in scope than the original identification, and the prior Office action failed to advise the applicant that amendments broadening the identification are prohibited under 37 CFR §2.71(a) , the examining attorney cannot issue a final Office action.
2. If the amended identification sets forth goods and services in multiple classes, but the applicant has not submitted all of the requirements for a multi-class application ( e.g., fees for all classes have not been submitted), and the prior Office action failed to advise the applicant that the missing elements were required, the examining attorney cannot issue a final Office action.

Of course, a requirement to amend the identification of goods and services can never be made final, even if it is a repeated requirement, unless all remaining refusals or requirements are also ready for final action. TMEP §1105.04(c). Thus, if in the second or subsequent Office action the examining attorney makes a new, non-final refusal or requirement regarding another issue, the requirement for an amended identification of goods and services cannot be made final either.