Examination Guide 1-94
U.S. Patent and Trademark Office
Trademark Examining Groups
EXAMINATION GUIDE NO. 1-94
Issued January 28, 1994
Contents
Merely Descriptive and Generic Refusals
1. Use of Proper Terminology
2. Issuance of the Appropriate Refusal
a. First-Action Refusals
b. Actions After the First-Action Refusal
3. Advisory Statements Concerning Future Prosecution of the Application
B. Marks Consisting of Merely Descriptive or Generic Terms in the Form of
Telephone Numbers
C. Catalogs as Trademark Specimens
D. Delineating New Issues Requiring Issuance of Nonfinal Action
E. Appeals Asserting Entitlement to Registration on the Principal and Supplemental
Register in the Alternative
F. Musical Performer/Group Names
G. Fees
H. Suspension
1. Grounds for Suspension
2. Suspension Pending Cancellation or Expiration of Cited Registration
I. Assignment of Foreign Application or Registration
J. Inquiries Concerning the Names of Other Parties on the Specimens
K. Class 16 Specimens
L. Individuals or Corporations Using Corporate DBA's
M. Filing the Same Papers as Either Amendments to Allege Use or Statements of Use
N. Requests for Extensions of Time to File a Statement of Use: Fees in Multi-
class Applications
O. Requirements Relating to Extensions Beyond the First Six-Month Extension: Good
Cause Extensions
P. Waiver of Trademark Rule 2.76(a) [p.2]
A. Merely Descriptive and Generic Refusals
1. Use of Proper Terminology
The Trademark Trial and Appeal Board reversed an examining attorney's refusal to
register the mark, DECORATING DIGEST, for magazines. The stated ground for refusal
was that the mark was, "so highly descriptive of applicant's magazine that it is
incapable of acting as a trademark." In re Women's Publishing Co. Inc., 23 USPQ2d
1876 (TTAB 1992). Apart from the decision on the merits, the Board pointed out that
the statement of the ground for refusal, that a mark is "so highly descriptive that
it is incapable of acting as a trademark," was inappropriate. Id. at 1877, n.2.
While the decision does not explicitly bar the use of this terminology under all
circumstances, the case illustrates that the use of this terminology may lead to
confusion and should be avoided. Therefore, examining attorneys should no longer
state that a mark is so highly descriptive that is it incapable of acting as a
trademark in issuing refusals.
This does not imply that marks which might have formerly been categorized as "so
highly descriptive" should no longer be regarded as incapable. The Board, in fact,
emphasized that, "[t]he critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term sought to be registered to
refer to the genus (category or class) of goods or services in question." Id. at
1877 (citations omitted). Also note that the expression "generic name for the goods
or services" is not limited to noun forms but also includes "generic adjectives,"
that is, adjectives which refer to a genus or species, category or class, of goods
or services. In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB)
1991).
In essence, the Board was merely emphasizing the need to use precise statutory
language in stating grounds for refusal. It is particularly important in this
context to use the precise statutory language to avoid doctrinal confusion. See
generally, Mcleod, The Status of So Highly Descriptive and Acquired Distinctiveness,
82 Trademark Rep. 607 (1992). The Trademark Law Revision Act of 1988 amended the Act
to adopt the term "generic name" to refer to generic designations. Trademark Act
<section><section> 14(3)and 15(4). Accordingly, the terminology, "generic name" for
the goods or services, should be used in appropriate refusals, and use of the
terminology, "so highly descriptive," should be discontinued when referring to
incapable matter.
Also note that it is entirely appropriate to consider whether a particular
designation is "highly descriptive" in evaluating registrability under <section>
2(f), or in similar circumstances.
2. Issuance of the Appropriate Refusal
a. First-Action Refusals
Furthermore, an examining attorney should not generally issue a refusal in an
application for the Principal Register on the ground that a mark is a generic name
for the goods or services unless the applicant asserts that the mark has acquired
distinctiveness under Trademark Act <section> 2(f). Absent such a claim, the
examining attorney should issue a refusal on the ground that the mark is merely
descriptive of [p.3]the goods or services under Trademark Act <section> 2(e)(1),
even if the mark appears to be a generic name for the goods or services. Thus the
Office will avoid subjecting itself to the more rigorous evidentiary showing that
would be required to prove that a term is a generic name for the goods or services
unless this is necessary.
In some limited circumstances, it may be appropriate to issue a refusal at the
outset on the ground that the subject matter is incapable of functioning as a mark
under Trademark Act <section><section> 1, Trademark Act <section><section> 2,
Trademark Act <section><section> 3 and Trademark Act <section><section> 45, either
by itself or in addition to the refusal under Trademark Act <section> 2(e)(1). See,
e.g., In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN
AMERICA held incapable of functioning as a mark). This should be done when the
subject matter would not be perceived as a mark, as in the Remington case where the
wording would be perceived as an informational statement.
b. Actions After the First-Action Refusal
If, in response to the first-action refusal, the applicant merely argues that the
mark is registrable on the Principal Register without claiming acquired
distinctiveness or amending to the Supplemental Register, the examining attorney
should simply issue a final refusal under <section> 2(e)(1), provided it is
otherwise proper.
If the applicant amends to the Supplemental Register and the mark is a generic
name for the goods or services, the examining attorney should then refuse
registration on the Supplemental Register. The statutory ground is Trademark Act
<section> 23. This action must be nonfinal.
If the applicant amends to assert acquired distinctiveness under Trademark Act
<section> 2(f) and the mark is a generic name for the goods or services, the
examining attorney should then refuse registration on the Principal Register under
Trademark Act <section> 2(e)(1) on the ground that the mark is a generic name for
the goods or services. Secondly, the examining attorney should refuse registration
under Trademark Act <section> 2(e)(1) on the ground that the showing of acquired
distinctiveness is insufficient, even if the subject matter were found to be capable
of functioning as a mark. The action must be nonfinal.
3. Advisory Statements Concerning Future Prosecution of the Application
When issuing any refusal under Trademark Act <section> 2(e)(1), if the mark does
appear to be a generic name for the goods or services, the examining attorney should
provide an advisory statement that the mark appears to be a generic name for the
goods or services in conjunction with the refusal on the ground that the mark is
merely descriptive. If, on the other hand, the mark appears to be capable, the
examining attorney should provide appropriate advice concerning a possible amendment
to the Supplemental Register or assertion of a claim of acquired distinctiveness. If
the record is unclear as to whether the designation is capable of functioning as a
mark, the examining attorney should refrain from giving any advisory statement. In
general, the Office should make every effort to apprise applicants as early as
possible of the prospects for registration through appropriate amendments, if
feasible.
B. Marks Consisting of Merely Descriptive or Generic Terms in the Form of
Telephone Numbers
If an applicant applies to register a mark which consists of a merely descriptive
or generic term with numerals in the form of a telephone number, for example 800 or
900 followed by a word, the examining attorney should refuse registration under
Trademark Act <section> 2(e)(1). The fact that the mark is in the form of a
telephone number is insufficient, by itself, to render a mark distinctive. See
Dranoff- Perlstein Associates v. Sklar, 23 USPQ2d 1174 (3d Cir. 1992). But see
Dial-A-Mattress Franchise Corp. v. Page, [p.4] 888 F.2d 826, 11 USPQ2d 1644 (2d Cir.
1989); Murrin v. Midco Communications Inc., 726 F. Supp. 1195, 13 USPQ2d 1815 (D.
Minn. 1989). If the relevant term is merely descriptive, but not generic, the mark
may be registered on the Principal Register with a proper showing of acquired
distinctiveness under Trademark Act <section> 2(f), or on the Supplemental Register.
Of course, the designation must also be used in the manner of a mark. If the
relevant term is generic, the mark is unregistrable on either the Principal or the
Supplemental Register.
This policy is effective immediately, and supersedes all previous guidance related
to this subject.
C. Catalogs as Trademark Specimens
The U.S. District Court for the Eastern District of Virginia reversed a decision
of the Trademark Trial and Appeal Board which had held that catalog specimens failed
to show trademark use. Land's End Inc. v. Manbeck, 24 USPQ2d 1314 (E.D. Va. 1992).
In that case, the applicant had applied to register "KETCH" for purses. The
specimens consisted of a catalog page including a picture of the goods, and a
description of the goods and the mark below the picture. The Court stated, "The
alleged trademark 'KETCH' appears prominently in large bold lettering on the display
of purses in the Lands' End specimen in a manner which closely associates the term
with the purses." Id. at 1315.
The Court determined that the specimens were not mere advertising, but that the
catalog met the relevant criteria for displays associated with the goods. The Court
evaluated the catalog specimen as follows:
A customer can identify a listing and make a decision to purchase by filing out
the sales form and sending it in or by calling in a purchase by phone. A customer
can easily associate the product with the word "KETCH" in the display... The point
of sale nature of this display, when combined with the prominent display of the
alleged mark with the product, leads this court to conclude that this mark
constitutes a display associated with the goods.
Id. at 1316.
In accordance with this decision, examining attorneys should accept any catalog or
similar specimen as a display associated with the goods, provided that (1) it
includes a picture of the relevant goods, (2) it includes the mark sufficiently near
the picture of the goods to associate the mark with the goods, and (3) it includes
information necessary to order the goods. See TMEP <section> 905.06. Any form of
advertising which satisfies these criteria should be construed as a display
associated with the goods.
D. Delineating New Issues Requiring Issuance of Nonfinal Action
In a decision, the Trademark Trial and Appeal Board specifically noted that an
examining attorney had acted properly in issuing a nonfinal action after receiving
a response including an amendment to a mark, even though the amendment was
unacceptable and all other requirements or refusals had been stated previously. In
re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152 (TTAB 1992). The purpose of this
section is to provide further clarification as to when an examining attorney should
issue a nonfinal action, rather than a final action, after receipt of a response.
Trademark Rule 2.64 provides, "On the first or any subsequent reexamination or
reconsideration the refusal of the registration or the insistence upon a requirement
may be stated to be final.... " TMEP [p.5] <section> 1105.04(c) indicates generally
when final action is appropriate. Consistent with the referenced decision, the
examining attorney should not issue a final action when the applicant proposes an
amendment which is unacceptable, provided the amendment is not a direct response to
a previous requirement. Of course, if the amendment is unrelated to the relevant
requirement or refusal, and the amendment does not raise a new issue, the amendment
in no way precludes the examining attorney from issuing a final refusal or
requirement. See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992).
If, as in the referenced decision, the amendment was not offered in direct
response to a requirement, the examining attorney must issue a new, nonfinal action,
addressing the issues raised by the amendment and continuing all other refusals and
requirements, as appropriate. The following are examples of amendments which would
require a new nonfinal action:
1. amendments to the drawing, unless the examining attorney had specifically
required amendment to the drawing previously;
2. amendments to the identification of goods and services, unless the examining
attorney had specifically required amendment previously;
3. amendments to the Supplemental Register, including such amendments in
applications under Trademark Act <section> 1(b) where the amendment is premature
under Trademark Rules 2.47 and 2.75;
4. amendments to assert acquired distinctiveness; and
5. amendments to disclaim the entire mark.
An initial requirement or refusal must relate to matter which is of record at the
time of the action to establish the foundation for issuing a final refusal or
requirement in the next action. If the examining attorney includes advisory
statements in an office action indicating that a refusal or requirement will be
issued if specified circumstances arise, the advisory statement does not constitute
an initial requirement or refusal. Therefore, the advisory statement cannot serve as
the foundation for issuing a final requirement or refusal in the next action.
For example, if the examining attorney requires amendment to the identification of
goods and services, it is advisable to note the requirement that the amendment
conform to Trademark Rule 2.71(b). However, when the applicant responds, if the
amended identification exceeds the scope of the identification of goods and services
prior to amendment, the examining attorney must issue a nonfinal action regarding
the scope issue.
On the other hand, if the examining attorney issues requirements related to the
addition of classes to the application on the basis of the operative identification
of goods and services and the applicant attempts to add one or more classes but
fails to comply with the relevant requirements, the proper foundation has been
established for issuance of a final refusal as to the relevant requirements.
Also, the examining attorney must issue a nonfinal action when first refusing
registration under Trademark Act <section> 2(d), even if the applicant had been
advised about the existence of the prior-filed application which matured into the
registration which forms the basis for the refusal. [p.6]
If the examining attorney issues a conditional refusal based on matter which is of
record, this does constitute an initial refusal and serves as the foundation for
issuing a final refusal in the next action.
Note that all refusals and requirements must be appropriate for final action to
issue a final office action.
E. Appeals Asserting Entitlement to Registration on the Principal and
Supplemental Register in the Alternative
TMEP <section> 1212.02(c) now permits an applicant to seek registration on the
Principal Register under <section> 2(f) and on the Supplemental Register in the
alternative. Accordingly, the applicant may submit an amendment to the Supplemental
Register, provided it is otherwise proper, and continue to argue entitlement to
registration on the Principal Register in an appeal. Both the amendment to the
Supplemental Register and the appeal must be submitted within the six- month
response period following the final refusal of registration on the Principal
Register.
If the applicant files a notice of appeal in such a case, the examining attorney
should forward the application to the Trademark Trial and Appeal Board to institute
the appeal. The Board will suspend action on the appeal and remand the application
to the examining attorney to determine registrability on the Supplemental Register.
If the examining attorney determines that the applicant is entitled to
registration on the Supplemental Register, the examining attorney will return the
application to the Board to resume action on the appeal with respect to registration
on the Principal Register. The examining attorney should also send a letter
notifying the applicant of the acceptance of the amendment and telling the applicant
that the application is being referred to the Board for resumption of the appeal. If
the examining attorney determines that the applicant is not entitled to registration
on the Supplemental Register, the examining attorney will issue a nonfinal action
refusing registration on the Supplemental Register. If the applicant fails to
overcome the refusal, the examining attorney will return the application to the
Board to resume action on the appeal with respect to entitlement to registration on
either the Principal or the Supplemental Register.
F. Musical Performer/Group Names
The purpose of this section is to ensure consistent action on applications to
register the names of musical performers for musical sound recordings in accordance
with In re Polar Music International AB, 714 USPQ 1567, 221 USPQ 315 (Fed. Cir.
1983) and In re Spirer, 225 USPQ 693 (TTAB 1985).
First, the names of musical performers may only be registered if the mark is used
on a series of musical sound recordings. The identification of goods must
specifically indicate that there is a series. If the application does not identify
the goods in this fashion, the examining attorney must require an appropriate
amendment before publication.
Secondly, the applicant must provide evidence that the mark has been applied to at
least two different recordings in the series. In an intent-to-use application, the
applicant must provide evidence of use on at least two recordings at the time the
applicant files either the amendment to allege use or the statement of use. It is
also advisable to provide advance notice of this requirement during initial
examination. If the applicant is unable to demonstrate use on a series, the mark may
be registered on the Supplemental [p.7] Register, provided it is otherwise proper.
These procedures apply specifically to performers' names used on recordings and not
to other types of marks used on other types of artistic material.
Finally, under Spirer, it is only necessary to inquire about the applicant's
control over the nature and quality of the goods if the application record indicates
the name of a party other than the applicant and Office policy otherwise would
require such an inquiry.
G. Fees
The Office has established the following policy to ensure the collection of fees
from all applicants on an equitable basis and the examination of applications
efficiently.
This policy applies to any application in which the applicant specifically
delineates more than one class of goods or services and the applicant has paid the
fee for only one class. The delineation may be by indicating class numbers or any
other means demonstrating a clear intention to seek registration in more than one
class.
If the applicant has specifically authorized the Office to charge any additional
fees to a deposit account, the examining attorney should arrange for appropriate
charges to be made to the specified account and proceed with examination of the
application on the merits. If the applicant has not provided a specific
authorization to charge an account, the examining attorney should attempt to contact
the applicant by phone to secure such a written authorization by fax. If this is
successful, proceed with routine examination.
If authorization has not been provided and the examining attorney is unable to
secure one, the examining attorney should issue a written action noting the
deficiency and requiring either payment of the fees or deletion of classes. In the
action, the examining attorney should advise the applicant that action on the merits
of the application is deferred pending response to the action.
If the entire record indicates a good faith attempt to pay all relevant fees, the
examining attorney should simply act on the merits of the application and require
the additional fees. For example, it would be inappropriate to defer action in a pro
se application or in other cases where the applicant has, in good faith, attempted
to pay the appropriate fees. Before issuing a letter deferring action until
additional fees are paid, the examining attorney should consult with the managing
attorney.
H. Suspension
1. Grounds for Suspension
TMEP <section> 1108.01 describes the circumstances under which suspension is
appropriate with certain examples. These examples are not exhaustive of all of the
circumstances where the examining attorney may exercise the discretion to suspend
action in an application. As additional examples, the examining attorney may
withdraw a final action and issue a new suspension action if the applicant requests
suspension because the applicant is securing a consent from a registrant or because
the applicant is in the process of obtaining an assignment of a registration. The
examining attorney should only grant a request to suspend in these situations when
all of the circumstances indicate that the request is made in good faith and that
the applicant's efforts are likely to succeed. In these types of circumstances, the
examining attorney should suspend for a limited period of time, usually 60 to 90
days. [p.8]
2. Suspension Pending Cancellation or Expiration of Cited Registration
The Office's automated records are regularly updated to indicate the status of
registrations as follows:
In the case of a registration where the affidavit of use under <section> 8 of the
Act is due, if Office records show that the registrant has not submitted an
affidavit six years and six months after the date of registration, the automated
record is updated to indicate that the registration is cancelled.
In the case of a registration where the renewal under <section> 9 of the Act is
due, if Office records show that the registrant has not submitted a renewal nine
months after the expiration of the previous term, the automated record is updated to
indicate that the registration is expired.
In cases where the applicant has submitted a timely affidavit or renewal, the
Office records are updated to indicate receipt of the paper and the action taken on
the paper.
Before issuing any final refusal under Trademark Act <section> 2(d) with respect
to a registration, the examining attorney should confirm the status of the
registration. If at the time the examining attorney intends to issue the final
refusal, the subject registration is still active according to the Office's
automated records and either (a) subject to cancellation under <section> 8 because
an affidavit of use was required and none was filed within the prescribed period or
(b) apparently expired because a renewal was due and none was filed during the
prescribed period, the examining attorney should suspend action for six months
pending final disposition of the registration.
I. Assignment of Foreign Application or Registration
In a recent decision, the Court of Appeals for the Federal Circuit held that an
applicant under Trademark Act <section> 44 may assign the United States application
to another party without assigning the underlying foreign application or
registration to that same party. In re De Luxe N.V., 26 USPQ2d 1475 (Fed. Cir. 1993)
. According to the Court, the Act requires only that the applicant own the
underlying application or registration at the time of filing in the United States.
Therefore, examining attorneys should not require proof of assignment of the
underlying foreign application or registration in the event of assignment of the
United States application. Disregard TMEP <section> 1007 to the extent that it
conflicts with this decision.
If the foreign registration will expire before the United States registration will
issue, examining attorneys should continue to require the applicant to submit
certification from the foreign country to establish that the foreign registration
has been renewed and will be in force at the time of issuance of the registration in
the United States. Marie Claire Album S.A. v. Kruger GmbH & Co. KG, Opposition No.
88,932, __ USPQ2d __ (TTAB November 16, 1993). Similarly, if the assignee is not
domiciled or incorporated in the country where the relevant registration issued,
examining attorneys should continue to require the assignee to establish that the
country which issued the relevant registration in the assignee's country of origin
under <section> 44(e). [p.9]
J. Inquiries Concerning the Names of Other Parties on the Specimens
The Office will discontinue inquiring about the relationship between the applicant
and other parties named on the specimens or elsewhere in the record, except when the
reference to another party clearly contradicts the applicant's verified statement
that it is the owner of the mark or entitled to use the mark.
For example, the examining attorney should inquire concerning another party if the
record specifically states that another party is the owner of the mark. The
examining attorney also should inquire concerning another party if the record
specifically identifies the applicant in a manner which contradicts the claim of
ownership, for example, as a licensee. In these circumstances, registration should
be refused under <section> 1 of the Trademark Act on the ground that the applicant
is not the owner of the mark. Similarly, where the record indicates that the
applicant is a United States distributor, importer or other distributing agent for a
foreign manufacturer, examining attorneys should continue to require the applicant
to establish its ownership rights in the United States in accordance with TMEP
<section> 1201.06(a).
The examining attorney should not inquire concerning any party which is merely
named in the specimen or elsewhere, even if the applicant's name does not appear.
Where the specimens of use indicate that the goods are manufactured in a country
other than the applicant's home country, the examining attorney normally should not
inquire whether the mark is used by a foreign manufacturer. Also, where the
application states that use of the mark is by related companies, an explanation of
how applicant controls use of the mark by the related companies is no longer
required.
If an inquiry is required, the inquiry should be pursued in accordance with TMEP
<section> 1201.
K. Class 16 Specimens
Marks used on publications will be treated like all other types of products for
purposes of specimen-of-use requirements. The Office will discontinue requiring a
complete copy of the publication, or a title page in lieu of the complete
publication in every case. A copy of the publication will be required when, in the
opinion of the examining attorney, such material is reasonably necessary for the
proper examination of the application. For example, a copy of the publication might
be necessary to determine whether a mark is merely descriptive of the goods.
L. Individuals or Corporations Using Corporate DBA's
Where an individual indicates that he or she is doing business under a corporate
designation, the Office will discontinue inquiring whether relevant state law
permits such a practice. The DBA will simply be printed on the registration
certificate. If the record is ambiguous as to who is the owner of the mark, a
corporation or an individual, examining attorneys must continue to require the
applicant to clarify the record regarding ownership. Similarly, in the unusual
situation where a corporate applicant provides a DBA which includes a corporate
designation in addition to its official corporate name, the Office will discontinue
inquiring whether relevant state law permits such a practice, and will print the DBA
on the registration certificate.
M. Filing the Same Papers as Either Amendments to Allege Use or Statements of
Use
An applicant may file papers as a statement of use which had been prepared for
filing as an amendment to allege use, provided the papers are filed at the
appropriate time and are otherwise acceptable under Trademark Rule 2.88. The
applicant may do so whether or not the papers had been [p.10]submitted previously as
an amendment to allege use. The Office will not reject the papers merely because
they are titled incorrectly.
As noted in TMEP <section> 803.04, the applicant need not reexecute the papers
unless an inordinate time has elapsed between the execution and filing of the
papers. Although the general guideline is six months, in appropriate cases papers
which have been executed more than six months previously may be accepted. Also,
copies of papers are generally acceptable.
If an applicant is filing a statement of use which was prepared for filing as an
amendment to allege use, the applicant should ensure that it is clear that the paper
is to be considered a statement of use. The applicant can provide a transmittal
letter or cover sheet to identify the paper clearly as a statement of use. The
papers should be sent to Box ITU.
The Office will not retain an untimely amendment to allege use and process it as a
statement of use.
Examining attorneys should provide information to applicants concerning these
policies in all appropriate cases.
N. Requests for Extensions of Time to File a Statement of Use: Fees in Multi-
class Applications
In a request for extension of time to file a statement of use, an extension filing
fee to cover at least one class must be submitted within the time for filing the
request, or the extension request will be denied. In a multi-class application, if
at least one complete fee is filed, the extension request will be accepted, and the
ITU Unit will issue a notice of fee deficiency allowing a 30-day period in which the
party may remit the deficient amount. In re Wolf, Serial No. 74/285,798, __ USPQ2d
__ (Comm'r Pats. December 6, 1993). If no timely response to a fee deficiency letter
is received, the fees paid will be applied to the lowest numbered classes in
ascending order, unless, within the thirty-day period, applicant expressly abandons
a specific unpaid-for class.
O. Requirements Relating to Extensions Beyond the First Six-Month Extension:
Good Cause Extensions
The showing of good cause in extension requests must include a statement of the
applicant's ongoing efforts to make use of the mark in commerce. Trademark Rule
2.89(d)(2). A statement that the applicant has made use of the mark in commerce and
is in the process of preparing a statement of use will be accepted as meeting the
requirement of the rule only once. Repetition of the same allegation in a subsequent
extension request is not, without more, a statement of the applicant's ongoing
efforts. In re SPARC International, Inc., Serial No. 74/098,026, __ USPQ2d __
(Comm'r Pats. December 27, 1993). If that explanation is the basis for any
subsequent extension request, the extension request will be denied.
P. Waiver of Trademark Rule 2.76(a)
Trademark Rule 2.76(a) prohibits the filing of an amendment to allege use after
the expiration of the six-month response period after issuance of a final action.
The Office has waived the application of Rule 2.76(a), in pertinent part, to
eliminate the time limit during which an amendment to allege use may be filed after
the examining attorney's final refusal to register. Although an amendment to allege
use will now be considered timely even if filed during the pendency of an ex parte
appeal, the Board retains [p.11] jurisdiction over the application once an appeal is
filed. The Board may, in its discretion, suspend action on the appeal and remand the
application to the examining attorney for consideration of the amendment to allege
use; or it may continue action on the appeal, thus deferring examination of the
amendment to allege use until after disposition of the appeal.
The Office will, in due course, publish a notice of proposed rulemaking to amend
Trademark Rule 2.76(a).
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