Examination Guide 2-91 [FNa1]
U.S. Patent and Trademark Office
Trademark Examining Operation
EXAMINATION GUIDE NO. 2-91
Issued November 5, 1991
Contents
A. Intent-to-Use Applications
1. Fees
2. Concurrent Use Asserted at Filing
3. Untimely Amendments to Allege Use
4. Action After Issuance of Notice of Allowance Before Filing of Statement of
Use
B. Provisions Affecting All Applications
1. Filing-Date Problems Discovered After Examining Attorney's Action
2. Notification of Later-Filed Applications
3. Identifying Sole Proprietorships
4. Individuals Using Corporate DBA's
5. Corporations Using More Than One Corporate Designation
6. Procedures for Unacceptable Amendments to Drawings
7. Procedures for Unacceptable Amendments to the Identification of Goods and
Services
8. Disclaimers
a. Disclaimers Volunteered by the Applicant
b. Form of Disclaimers
9. Requests for Reconsideration
10. Action on Applications After Removal from Suspension
A. Intent-to-Use Applications
1. Fees
If an intent-to-use application is amended to add a class, the applicant must
submit the basic application fee related to the added classes and fees for either
the amendment to allege use or statement of use related to the added classes. This
applies even if the classes are added after the amendment to allege use or statement
of use is filed.[p.2]
For the purpose of meeting the minimum requirements related to the filing of an
amendment to allege use or statement of use, the applicant must file the fee for at
least one class of goods or services. If the applicant fails to file the fees for
additional classes, the examining attorney must require payment of the additional
fees in the examination of the amendment to allege use or statement of use. In the
case of a statement of use, the additional fees may be paid after the time for
filing the statement of use has expired but within the relevant response period.
However, the additional fees must be paid no later than 36 months after issuance of
the notice of allowance. If sufficient fees have not been received within 36 months
of the issuance of the notice of allowance and the applicant has not indicated the
classes to which the fees which were paid pertain, the fees paid will be applied to
the lowest numbered classes in ascending order.
All fees related to a request for an extension of time to file a statement of use
must be filed within the time for filing the request. If insufficient fees to cover
all classes have been filed and the applicant has not indicated the classes to which
the fees which were paid pertain, the fees paid will be applied to the lowest
numbered classes in ascending order.
2. Concurrent Use Asserted at Filing
If an applicant files an intent-to-use application and asserts concurrent use at
the time of filing, the application will be denied a filing date and the papers will
be returned to the applicant.
3. Untimely Amendments to Allege Use
If an applicant files an amendment to allege use after the date of approval for
publication, the amendment to allege use must be returned to the applicant as
untimely. Trademark Rule 2.76(a), 37 C.F.R. <section> 2.76(a). The examining
attorney should not cancel the approval or withdraw the application from publication
to process the amendment. Furthermore, the examining attorney should not suspend
action in the case or take any other similar action for the specific purpose of
extending the time for filing an amendment to allege use.
4. Action After Issuance of Notice of Allowance Before Filing of Statement of
Use
If, after issuance of the notice of allowance but before submission of the
statement of use, the Office determines that a clear error was committed in
approving the mark for publication, the Office will withdraw the notice of allowance
and will return the application to examination. The examining attorney will issue an
appropriate action including the relevant requirement or refusal. If the applicant
ultimately overcomes the refusal or complies with the requirement, the examining
attorney may approve the mark for publication once again. The mark must be
republished.
After issuance of the notice of allowance, the examining attorney has jurisdiction
to act in the case. Trademark Rule 2.84, 37 C.F.R. <section> 2.84. Therefore, the
examining attorney need not request jurisdiction to act in the caseas would be
required after publication but before issuance of the notice of allowance. [p.3]
B. Provisions Affecting All Applications
1. Filing-Date Problems Discovered After Examining Attorney's Action
If, after issuing an action in a case, an examining attorney determines that the
applicant was not entitled to a filing date, the examining attorney should issue a
supplemental action advising the applicant that the filing date was granted in error
and giving the applicant six months to comply with the filing- date requirements. If
the applicant fails to qualify for a filing date within the response period, the
examining attorney should declare the application abandoned and refund the filing
fee.
If the applicant corrects the application to comply with the filing- date
requirements, the examining attorney should refer the case to the TRAM Unit to
change the filing date to the date on which the applicant satisfied all filing- date
requirements. The examining attorney should then resume examination. The examining
attorney must conduct a new search. This policy applies to all applications and
supersedes all previous policies on this issues.
2. Notification of Later-Filed Applications
The Office will discontinue the practice of notifying applicants about potentially
conflicting later-filed applications. This change in no way affects Office policy
with respect to the assignment of companion and conflicting applications to a single
examining attorney.
3. Identifying Sole Proprietorships
An applicant may identify itself as a sole proprietorship. If an applicant does
so, the applicant must also indicate the state where the sole proprietorship is
organized as well as the name and citizenship of the sole proprietor.
If the application, as filed, specifically identifies the applicant as a sole
proprietorship and indicates the state of organization of the sole proprietorship
and the name and citizenship of the sole proprietor, the Office will accept the
characterization of the entity without further action. If, on the other hand, the
application refers to a sole proprietorship but lacks some of the necessary
information or is ambiguous as to whether the applicant should be identified as a
sole proprietorship or an individual, the examining attorney must require
appropriate clarification of the entity type.
4. Individuals Using Corporate DBA's
If an individual indicates that he or she is doing business under a corporate
designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.), the
examining attorney should confirm that the law in the relevant state permits such a
practice. If so, the Office will print the DBA. If the relevant state law does not
permit such a practice, the Office will not print the DBA. The applicant need not
provide copies of relevant state statutes. If inquiry discloses that the applicant
was misidentified, the examining attorney should take action consistent with Office
policies governing corrections to applicant's name and entity and changes in the
applicant entity. [p.4]
5. Corporations Using More Than One Corporate Designation
If a corporate applicant provides a DBA which includes a corporate designation
(e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.) in addition to its
official corporate name, the examining attorney should confirm that the official
corporate name is correct and that the relevant state law permits use of the
additional DBA. If use of the DBA is permitted, the Office will print the DBA. If
not, the Office will not print the DBA. The applicant need not provide copies of
relevant state statutes.
6. Procedures for Unacceptable Amendments to Drawings
If an applicant submits an amendment to the drawing and the examining attorney
determines that the amendment is unacceptable, the examining attorney should issue
an action rejecting the amendment and advising the applicant that the drawing prior
to the amendment remains the operative drawing in the case. The examining attorney
should ensure that the TRAM and T-Search databases reflect the operative drawing.
If the applicant later submits further arguments in support of acceptance of the
amendment and the examining attorney determines that the amendment is still
unacceptable, the examining attorney should issue a final rejection of the
amendment, provided the case is otherwise in condition for final action. The
examining attorney should again ensure that the TRAM and T-Search databases reflect
the operative drawing.
7. Procedures for Unacceptable Amendments to the Identification of Goods and
Services
If the applicant submits an amendment to the identification of goods and services
and the examining attorney determines that it is unacceptable, in whole or in part,
the examining attorney should advise the applicant of the item or items that are
unacceptable. The examining attorney should also advise the applicant that the
previous items corresponding to the unacceptable substitute remain operative for
purposes of future amendment.
If the applicant submitted the amendment in response to a requirement, the
examining attorney should issue a final requirement for amendment to the
identification, provided the proposed amendment raises no new issues and the case is
otherwise in condition for final action.
8. Disclaimers
a. Disclaimers Volunteered by the Applicant
In In re MCI Communications Corp., Petition 91-33 (Comm'r Pats. July 15, 1991),
the Commissioner held that Trademark Act <section> 6, 15 U.S.C. <section> 1056,
permits an applicant to disclaim matter voluntarily whether the matter is
registrable or unregistrable. In the decision the Commissioner specifically
overruled all previous authority holding otherwise and directed revision of TMEP
<section><section> 904.01(c) and 904.08 to eliminate portions inconsistent with this
holding.
Accordingly, the policies stated in these sections which are inconsistent with the
referenced decision are no longer operative. If an applicant offers a disclaimer of
any matter in a mark, the Office will accept the disclaimer. Examining attorneys
should note that the decision states [p.5] emphatically that the entry of such a
disclaimer does not render registrable a mark which is otherwise unregistrable under
relevant sections of the Act, such as <section> 2(e) and <section> 2(d). The
examining attorney must continue to evaluate the entire mark, including the
disclaimed matter, in determining registrability. Furthermore, the decision notes
that the applicant may not disclaim the entire mark.
Also note that an applicant may volunteer a disclaimer in the mistaken belief that
a disclaimer would be required when, in fact, Office policy would not require a
disclaimer. If this appears to be the case, the examining attorney should offer the
applicant the opportunity to withdraw the disclaimer.
b. Form of Disclaimers
If the mark consists of a word or words which are misspelled in the mark but
nonetheless must be disclaimed, the examining attorney should require disclaimer of
the word or words in the correct spelling, provided a disclaimer is otherwise
required under Office policy. See In re Omaha National Corp., 836 F.2d 520, 2
USPQ2d 1859 (Fed. Cir. 1987); In re Newport Fastener Company Inc., 5 USPQ2d 1064
(TTAB 1987). The entry of the disclaimer does not necessarily render registrable a
mark which is otherwise unregistrable. The examining attorney must evaluate the
entire mark, including the misspelled wording, to determine whether the mark as a
whole is inherently distinctive or even capable of functioning as a mark.
If the examining attorney has not required any disclaimer of misspelled wording
because a disclaimer is not necessary under Office policy, the applicant may provide
a disclaimer of the term as spelled in the mark or in its correct spelling
voluntarily. In such a case, the examining attorney should accept the disclaimer.
Again, such a disclaimer does not necessarily render an otherwise unregistrable mark
registrable. The examining attorney must consider the entire mark, including the
disclaimed matter, to determine whether the entire mark is registrable.
9. Requests for Reconsideration
The purpose of this section is to clarify Office policy regarding disposition of
requests for reconsideration. The policies set forth here supersede TMEP <section>
1105.04(h) in its entirety and TMEP <section><section> 1105.04(f) and (g) and
<section> 1110 only to the extent that these sections are inconsistent with this
section.
If the examining attorney issues a proper final action, the only proper response
is an appeal or a petition, if appropriate, or compliance with the requirement or
action to overcome the refusal. See Trademark Rule 2.64(a), 37 C.F.R. <section>
2.64(a).
The rules also provide for a request for reconsideration. 37 C.F.R. 2.64(b). Such
a request must be made before the expiration of the time period for filing an
appeal. The filing of such a request does not extend the time for filing an appeal.
The rule specifies further that, "...normally the examiner will respond to a request
for reconsideration before the end of the six-month period if the request is filed
within three months after the date of the final action." Id.
The examining attorney should construe any paper filed after final action
containing new amendments, new evidence or new arguments as a request for
reconsideration. If the applicant files a notice of appeal with such a request, the
examining attorney should ensure that the case is first [p.6] referred to the
Trademark Trial and Appeal Board so that the appeal can be noted and proceedings on
the appeal suspended pending the examining attorney's action on the request for
reconsideration.
To be construed as a request for reconsideration, the paper must be filed within
the six-month response period following the final refusal. If the applicant has
filed a timely notice of appeal and files a paper after the expiration of the
six-month response period, the Board must act on the paper. In appropriate cases,
the Board may remand the case to the examining attorney to consider matter presented
in the paper with appropriate instructions for the examining attorney with respect
to consideration of the paper and disposition of the case after such consideration.
The examining attorney need not "suspend the finality" to act on a request for
reconsideration. However, in responding to any request for reconsideration the
examining attorney must specify the status of the case with respect to possible
further action. Specifically, the examining attorney must indicate whether the case
is being returned to the Trademark Trial and Appeal Board for resumption of an
appeal, whether the applicant has any time remaining to file an appeal, whether
further time is being provided to respond to a requirement or refusal or whether the
application stands abandoned for failure to respond.
If, in the request for reconsideration, the applicant complies with all
outstanding requirements and overcomes all outstanding refusals, the examining
attorney should approve the application for publication or registration, as
appropriate.
If, in the request for reconsideration, the applicant makes a good faith, but
incomplete, attempt to comply with all outstanding requirements and to overcome all
outstanding refusals, the examining attorney has the discretion to invoke Trademark
Rule 2.65(b), 37 C.F.R. <section> 2.65(b), to provide the applicant with additional
time to resolve the matters which remain outstanding. This should only be done if
the applicant can place the application in condition for approval by completing the
response. The amount of additional time granted may vary according to the
circumstances, but 30 or 60 days should usually suffice.
If, in the request for reconsideration, the applicant presents amendments or
evidence which either present new issues or which differ significantly from
previously submitted material, the examining attorney should issue a new final or
nonfinal action superseding the outstanding final refusal.
The action should be nonfinal if the amendment or evidence raises a new issue. For
example, in the case of an amendment which asserts a claim of acquired
distinctiveness for the first time, or an amendment which attempts to seek
registration on the Supplemental Register for the first time, but which fails to
place the application in condition for approval, a nonfinal action is appropriate.
Likewise, an amendment to the mark or an amendment to the identification of goods or
services which is unrelated to any previous requirement would require a new nonfinal
action. This, of course, presumes that the amendment is not acceptable.
The action should be final if the amendment or evidence is significantly different
from anything presented earlier but does not present a new issue. For example, if
the applicant presents additional evidence, such as a consent agreement, the
examining attorney should issue a new final action because the consent does not
raise a new issue but the consent would represent significant new evidence which
warrants reissuance of a final which properly addresses the entire record including
[p.7] the consent. A consent agreement is but one factor to be considered in a
likelihood-of-confusion determination and does not present a new issue as such. The
issue remains likelihood of confusion. The additional evidence must be qualitatively
different from any previous evidence to warrant issuance of a new final action. As
noted below, additional evidence which is merely cumulative and not significantly
different from that which is already of record would not warrant issuance of a new
final refusal.
If, in the request for reconsideration, the applicant presents amendments,
evidence or arguments which fail to raise any new issue or which are not
significantly different from previously submitted material, the examining attorney
should merely deny the request for reconsideration and advise the applicant of the
status of the case. That is, the examining attorney should advise that the
application is being returned to the Trademark Trial and Appeal Board for resumption
of the appeal, that the applicant may file an appeal within the response period
related to the outstanding final refusal or that the case stands abandoned if no
appeal has been filed and no time remains for filing an appeal. In this instance, no
additional time should be given to file an appeal or to respond.
If an applicant files a notice of appeal and later fails to respond to an office
action issued in response to a request for reconsideration, the examining attorney
should return the case to the Board for appropriate action. It should not be
declared abandoned.
It is difficult to delineate with precision what constitutes a new issue requiring
a new nonfinal action, new evidence requiring issuance of a new final action or
material which is merely cumulative. The examining attorney must evaluate the
request and determine the appropriate course of action. The examining attorney
should weigh considerations, such as fairness and the need to develop a full record
for a possible appeal, in determining how to respond to the request.
10. Action on Applications After Removal from Suspension
If after issuance of a final refusal, the examining attorney determines that
action on the application should be suspended, the examining attorney must withdraw
the final action in conjunction with the action to suspend. This may arise, for
example, when the applicant files a petition to cancel a cited registration.
If such a case is eventually removed from suspension and the grounds for refusal
remain operative, the examining attorney should issue another final refusal. It is
inappropriate to remove the case from suspension and declare the application
abandoned immediately.
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