(a) Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made....

(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.

702 Order of Work

702.01 Order of Examination

In general, examining attorneys should examine applications 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.

Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension. See TMEP §§716 et seq. 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 is a procedure whereby an application can be made “special,” so that initial examination will be expedited. Initial examination can be expedited in the following circumstances:

(1) Petition to Make Special Granted. Applications made “special” as a result of a petition under 37 C.F.R. §2.146 (see TMEP §§1710 et seq.); and

(2) Registration Inadvertently Cancelled 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 applicant’s request. 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. To ensure that these applications are processed as “special,” the applicant should include a cover letter requesting that the application be made “special,” together with a copy of the cancelled or expired registration, when filing the application.

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

702.03 Related Applications

702.03(a) Companion Applications

The term “companion applications” refers to pending applications filed by the same applicant. An application is pending until it registers or abandons. Pending applications include applications that have been approved for publication or for registration on the Supplemental Register, applications in the Intent-to-Use (“ITU”) Unit of the Office, and revived or reinstated applications.

702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks

If an applicant has multiple pending applications, the issues in the applications are likely to be similar. When assigned a new application, an examining attorney will be assigned the companion applications filed within three months of the filing date of the first assigned application. If an applicant files more than ten applications within a three-month period, only the first ten will be assigned to one examining attorney. Examining attorneys are encouraged to assign all unassigned companion applications for the same or similar marks to themselves, even if the applications were filed outside the three-month period.

The assignment of companion applications is done electronically, based upon the owner’s name as set forth in the application. Therefore, the owner’s name should be set forth consistently in all applications.

See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.

702.03(a)(ii) Companion Applications Previously Assigned

If TRAM indicates that a companion application has been assigned to a different examining attorney, the examining attorney should not transfer his or her application to that person. However, the examining attorney must review the electronic record of the earlier companion application before taking action in a later companion case, and should act consistently, unless it would be clear error to do so. If the examining attorney believes that acting consistently with the prior action(s) would be erroneous, he or she should bring the issue to the attention of the managing attorney or senior attorney.

See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.

702.03(a)(iii) Companion Registrations

If the applicant previously filed another application that has matured into a registration, the examining attorney should not transfer his or her application to the prior examining attorney. Generally, in the later application, the examining attorney should act consistently with the registration, unless it would be clear error to do so. However, the USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records. Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought. See TMEP §1216.01 and cases cited therein.

See TMEP §702.03(a)(iv) regarding classification and identification in companion registrations.

702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition

If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable, unless the identification or classification is clearly wrong. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion application or registration, the examining attorney must note the companion application serial number or registration number in the “Notes to the File” section of the record.

Sometimes, the classification and identification of goods or services in the prior companion application or registration is clearly wrong. For example, identifications and class assignments that were acceptable in the past may no longer be in accord with the current Nice Agreement classification system (see TMEP §§1401.02 et seq.) or with Office policy on acceptable identifications, which change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration. See TMEP §1402.14.

702.03(b) Conflicting Applications

The term “conflicting applications” refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), due to a likelihood of confusion between the marks. When assigned a new application, the examining attorney must search the USPTO’s automated records to determine whether there are any conflicting applications. If there are conflicting applications, the examining attorney should not transfer the conflicting application to the examining attorney who acted on the first conflicting application. Instead, the examining attorney should simply examine the assigned application and issue an Office action that includes a notice to the applicant that there is a prior-filed application to register a mark that may be likely to cause confusion with the applicant’s mark. See TMEP §§1208 et seq. The actions of the examining attorney handling the later-filed application should be consistent with the actions of the examining attorney who handled the earlier-filed application, unless it would be clear error to act consistently. If necessary, the examining attorney should review the electronic record of the earlier-filed application before taking an action in the later-filed conflicting application.

703 Office Does Not Issue Duplicate Registrations

The USPTO will not issue two or more identical registrations. If two applications would result in registrations that are exact duplicates, the USPTO will permit only one application to mature into registration, and will refuse registration in the other application. If practicable, the USPTO will permit the applicant to choose which application should mature into registration.

Basis. Applications filed under §1 of the Trademark Act are considered identical if the only difference between them is that one is based on use in commerce under §1(a) and the other is based on intent-to-use under §1(b). However, an application filed under §1 and an application filed under §44 that are otherwise identical are not regarded as duplicate registrations, nor is an application under §66(a) of the Trademark Act regarded as a duplicate of an application filed under §1 or §44.

Classification Change. Where the international classification of goods or services has changed, a new application for registration of the same mark for the same goods/services in a different class will not be considered a duplicate. For example, if applicant owns a registration of a mark for legal services in Class 42, and files a new application after January 1, 2007, for registration of the same mark for legal services in Class 45, this is not a duplicate.

Standard Character/Typed Drawing. An application for registration of a mark depicted in standard characters is considered a duplicate of an application for registration of the same mark in “typed” format (see TMEP §807.03(g)) for the same goods/services.

Standard Character/Special Form. A standard character drawing and a special form drawing of the same mark are not considered identical.

Overlapping Goods/Services. Applications/registrations with identifications that include some of the same goods or services, but also different goods or services, are not identical.

Color. A drawing on which the entire mark is lined for color (see TMEP §808.01(d)), is considered a duplicate of a color drawing of the mark, if the colors are identical. See TMEP §§807.07 et seq. regarding color drawings.

If the applicant claims different shades of a color (e.g., purple in one and lavender in the other), the marks are not duplicates.

Where one application/registration is not completely lined for color (i.e., if the mark on the drawing includes color(s) in addition to unclaimed or unexplained black, white, and/or gray), this is not considered a duplicate of an application seeking registration that includes a claim of the same color(s) in addition to a claim of color for, or an explanation of the presence of, the black/white/gray in the drawing. See TMEP §§807.07(d) et seq. regarding drawings that include black/white/gray.

Principal/Supplemental Register. An application for registration of a mark on the Principal Register is not considered a duplicate of an application for registration of the same mark on the Supplemental Register.

Registrations Issued Under Prior Acts. If eligible, marks registered under the Acts of 1881, 1905, and 1920 may also be registered under the Act of 1946 (see §46(b) of the Trademark Act of 1946). Even if the mark and the goods or services in a registration issued under the 1946 Act are identical to the mark and goods or services in a registration issued under a prior Act, the registrations are not considered duplicates. See TMEP §§1601.04, 1601.05, 1602.02 and 1602.03 regarding registrations issued under prior Acts.

When an application is a duplicate of a registration owned by the applicant, and USPTO records show that the registration is still active, the examining attorney must refuse registration. If the registration is subject to cancellation for failure to file an affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k, or due to expire for failure to file a renewal application under 15 U.S.C. §1059 (i.e., because the grace period has passed and no affidavit or renewal application has been filed), and the application is otherwise in condition for approval or final refusal, the examining attorney must suspend the application until the TRAM system is updated to show that the registration is cancelled or expired. See TMEP §1611 for information about how a registrant who has not timely filed a §8 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.

704 Initial Examination

704.01 Initial Examination Must be Complete

37 C.F.R. §2.61(a). Applications for registration, including amendments to allege use under §1(c) of the Act, and statements of use under §1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.

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, the drawing and any specimen(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 Office 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, call, or e-mail the applicant, 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 et seq. regarding use-related issues that are 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 also TMEP §706 regarding new issues raised by the examining attorney after the first Office action.

Examining attorneys must also clearly explain all requirements. For example, if the identification of goods or services is indefinite, the examining attorney should explain why the identification is not acceptable and, if possible, suggest an acceptable identification. See TMEP §§705 et seq. 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 lack of adequate information, the examining attorney should 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 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 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 reference marks or other grounds for refusal and any requirements or objections. The supervisory examining attorney may indicate the action to be taken.

705 The Examining Attorney’s Letter or Action

If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by a telephone conversation that is normally followed by a written action. This constitutes the examining attorney’s official action.

Written Office actions may be of a variety of styles, including: (1) an “examiner’s amendment,” in which the examining attorney formally makes amendments to the application (see TMEP §§707 et seq.); (2) a “priority action,” setting forth requirements and/or reasons for refusal discussed by telephone with the applicant or the applicant’s attorney (see TMEP §§708 et seq.); (3) a letter explaining the bases for refusal and/or requirements; (4) an examiner’s amendment combined with a priority action (see TMEP §708.05); or (5) a suspension notice (see TMEP §§716 et seq.). Office actions may be prepared through the use of standardized form paragraphs, in combination with language written to address the particular facts relevant to the refusal(s) and requirement(s). The examining attorney may send the Office action by regular mail or e-mail (if the applicant has authorized e-mail communications). See TMEP §§304 et seq. regarding e-mail.

The USPTO encourages the use of examiner’s amendments and priority actions whenever appropriate.

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 document received before the first action by identifying the document and the date of its receipt.

In second or subsequent actions, examining attorneys should begin letters with a sentence such as, “This letter responds to the communication filed on [date].” Other papers received, such as supplemental amendments, affidavits, and new drawings, should also be acknowledged.

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 should 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.

The words “capable” and “incapable” should be reserved for the Supplemental Register.

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 American Physical Fitness Research Institute Inc., 181 USPQ 127 (TTAB 1974). See also TMEP §1801.

705.03 Citation of Conflicting Marks

When refusing registration under 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 copies 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 grounds for refusal under §2(d).

If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, the USPTO will reissue the Office action with the relevant registrations 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 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 Office 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.

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 case appears to be unfamiliar with Office 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.

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. General 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.

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

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, law office and telephone number of the examining attorney. The signature block should be set forth as follows:

/Examining attorney’s full name/

Trademark Examining Attorney

Law Office xxx

(571) 272-xxxx

If an examining attorney does not have signatory authority, he or she should 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 being issued. For outgoing e-mail communications, 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 Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov. One copy of the Office action and supporting evidence is sent to the applicant.

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 mailing date to avoid abandonment under 15 U.S.C. §1062(b). See TMEP §§711 et seq. regarding the deadline for response to an Office action.

The examining attorney should not include a six-month response clause in an examiner’s amendment (see TMEP §§707 et seq.) or suspension notice (see TMEP §§716 et seq.), or in a situation where the time for response runs from the mailing date of a previous action (see TMEP §§711.01 and 715.03(c)).

706 New Matter Raised by Examining Attorney After First Action

If in the first Office action an examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to correct the inadvertent error in a subsequent action. Examining attorneys should exercise great care to avoid these situations, and should take this step only when absolutely necessary. After the first action, supervisors (e.g., supervisors reviewing the quality of the examining attorney’s work) should not introduce any new reason for refusal that is not clearly justified under the Act or rules.

Since it is unusual to make a new refusal or requirement that could have been raised in the first action, an examining attorney who does make a new refusal or requirement must clearly explain why the refusal or requirement is necessary, and apologize for the delay in raising the issue, if appropriate. See TMEP §711.02 regarding supplemental Office actions.

Sometimes, the examining attorney must issue a new refusal or requirement because the applicant submits information that raises a new issue.

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. See TMEP §1904.03(a).

See TMEP §1109.08 regarding application of the “clear-error” standard in the examination of statements of use under §1(d) of the Act.

707 Examiner’s Amendment

An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application. An examiner’s amendment is a communication to the applicant in which the examining attorney states that the application has been amended in a specified way. Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the applicant or the applicant’s attorney. See TMEP §707.01 regarding the authorization of an examiner’s amendment. Authorization is usually given in a telephone conversation, e-mail communication, or interview between the examining attorney and the applicant or the applicant’s attorney. See TMEP §§304 et seq. regarding e-mail.

The examining attorney may issue an examiner’s amendment whenever the required amendment does not have to be verified by the applicant. For example, in appropriate circumstances, an examiner’s amendment may be used to amend the identification of goods or services, enter a disclaimer, add the state of incorporation, or change from the Principal to the Supplemental Register.

The following are examples of matters that may not be changed by examiner’s amendment: the dates of use, if verification would be required (see TMEP §903.05); the mark on a special form drawing (see TMEP §807.04), if the changes would require the filing of a substitute special form drawing; and amendments that require the submission of substitute specimen(s) (see TMEP §904.05). An application cannot be expressly abandoned (see TMEP §718.01) by examiner’s amendment.

An authorization to charge a fee to a deposit account cannot be entered by examiner’s amendment, unless the record already contains a written authorization, signed and submitted by someone authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.

Examiner’s amendments generally are not used when there are statutory refusals. However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner’s amendment. For example, in appropriate cases, the applicant may overcome a surname refusal of a mark that is in use in commerce by amending the application to the Supplemental Register. See TMEP §708.04 regarding priority actions involving statutory refusals.

An examining attorney without partial signatory authority must have proper authorization from the managing attorney, senior attorney, or a reviewing examining attorney before initiating an examiner’s amendment.

See TMEP §707.03 regarding the form of an examiner’s amendment.

Applicants should not file correspondence confirming an examiner’s amendment, because this will delay processing of the application. A written response to an examiner’s amendment is not required.

If the applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by phone or e-mail), so that the objection can be considered before publication or issue. See TMEP §1402.07(e) regarding an applicant’s objection to an examiner’s amendment of the identification of goods/services on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.

Often an applicant will seek to respond to an outstanding Office action with an amendment or other response by telephone. The examining attorney is encouraged to enter an examiner’s amendment if this amendment will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See TMEP §§716 et seq. regarding suspension. However, an applicant or an applicant’s attorney does not have an unlimited right to the entry of an examiner’s amendment in response to an Office action. If the applicant does not agree to an amendment that the examining attorney believes will immediately place the application in condition for publication for opposition or issuance of a registration, the applicant must file a complete written response to the outstanding Office action.

See TMEP §708.05 regarding combined examiner’s amendment/priority actions.

NOTE: In a §66(a) application, an examiner’s amendment may not be issued on a first action because the International Bureau of the World Intellectual Property Organization (“IB”) will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(e) regarding Office actions in §66(a) applications.

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

Except in the situations enumerated in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant or the applicant’s attorney, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the applicant or the applicant’s attorney by telephone or e-mail, or in person during an interview.

Only the applicant or a practitioner authorized to practice before the Office pursuant to 37 C.F.R. §10.14 can authorize an examiner’s amendment. If the applicant has an attorney, the examining attorney must speak directly with the attorney of record. If the applicant is pro se, the examining attorney must speak directly with the individual applicant or to someone who has legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership). 37 C.F.R. §10.14(e). For joint applicants who are not represented by an attorney, each joint applicant must authorize the examiner’s amendment. Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed attorney’s approval by indicating that the appointed attorney has approved the amendment.

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

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) is not entitled to authorize an examiner’s amendment, unless he or she has legal authority to bind the applicant. See TMEP §§712.01 et seq. for guidelines on persons who have legal authority to bind various types of applicants. The broad definition of “persons properly authorized to sign on behalf of an applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04) does not apply to examiner’s amendments.

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.

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 attorney in the following situations:

(1) Changes to international classification, either before or after publication (see Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm’r Pats. 1999) regarding amendments to international classification after publication);

(2) Deletion of “TM,” “SM,” “©,” or “®” from the drawing;

(3) Addition of a formal description of the mark where it is necessary (see TMEP §§808 et seq.) and where the record already contains an informal indication of what the mark comprises;

Example - The cover letter accompanying the 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.”

(4) 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));

(5) Addition of lining and stippling statements, where the statement is necessary (see TMEP §808.01(d)), and where the significance of the lining or stippling is indicated by the specimen or other information of record;

(6) Correction of obvious misspellings, typographical errors, and redundancies in the identification of goods and services;

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

(7) 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) and 1402.13;

(8) Deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual. Bracketed material should not be included in an identification of goods, but sometimes appears in the Manual for informational purposes. If this material is entered in an identification, it will be automatically deleted in a TEAS Plus application. In a TEAS or paper application, the bracketed material may be deleted with a no-call examiner’s amendment.

If the examining attorney must contact the applicant or the applicant’s attorney 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.

A copy of the examiner’s amendment will be sent to the applicant or applicant’s attorney. Any applicant or applicant’s attorney who disagrees with any of these changes should contact the examining attorney immediately after receipt of the examiner’s amendment, preferably by phone or e-mail.

707.03 Form of the Examiner’s Amendment

An examiner’s amendment should include the following information: the name, law office, and telephone number 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 attorney.

The examiner’s amendment should 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 should 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 and/or requirements that are withdrawn and/or continued by the examining attorney.

708 Priority Action

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 applicant or applicant’s attorney discuss the various issues raised in an application. 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 attorney and requests that the applicant take some specific action, explaining the reasons; (2) the applicant or applicant’s attorney 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 and/or requirements, includes evidence to support the refusals/requirements, and specifically describes what action the applicant may take in order to place the application in condition for publication or registration; and (4) the Office sends a copy of the priority action to the applicant or applicant’s attorney.

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.

708.02 Discussion of Issues and Agreements

The examining attorney must discuss the issues with the individual applicant, the applicant’s attorney, or a person with legal authority to bind a juristic applicant. The broad definition of “persons properly authorized to sign on behalf of an applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04) does not apply to priority actions. Priority actions are governed by 37 C.F.R. §10.14(e).

Only the applicant or a practitioner authorized to practice before the Office pursuant to 37 C.F.R. §10.14 can agree to a priority action. If the applicant has an attorney, the examining attorney must speak directly to the attorney of record. 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). Paralegals and legal assistants cannot agree to a priority action even if only conveying the appointed attorney’s approval by indicating that the appointed attorney has agreed to the priority action.

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) is not entitled to authorize a priority action, unless he/she also has legal authority to bind the applicant. See TMEP §§712.01 et seq. for guidelines on persons who have legal authority to bind various types of applicants.

During the telephone conversation or other communication with the applicant or the applicant’s attorney, the examining attorney must fully discuss all refusals and requirements relating to the application, and explain the reason for each refusal or requirement. Whenever possible, the examining attorney should suggest appropriate language for amendments.

A priority action is not appropriate when the examining attorney leaves a voice mail or e-mail message for the applicant or the applicant’s attorney, but the applicant or attorney does not call back or respond to the message. All the issues in the priority action must be discussed on the merits with the applicant or applicant’s attorney in a good faith attempt to resolve any issues and place the application in condition for publication or registration, as appropriate.

An agreement as to precisely how all issues will be resolved is not necessary. For example, the priority action may state that “the applicant will submit an acceptable identification of goods that specifies the common commercial names of the ‘computer equipment.’” It is not necessary that there be an agreement that “the applicant will amend the identification of goods to read: computer keyboards, computer monitors and computer printers.”

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 is authorized to agree to 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 issues raised in 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 requirements; (2) include sufficient evidence to support all refusals and requirements; and (3) specifically describe what action the applicant may take in order to place the application in 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 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 et seq. 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. An example would be a surname refusal where it is evident that the mark has been used in commerce for more than five years, and thus the refusal could be overcome by the submission of a claim of acquired distinctiveness under §2(f) of the Trademark Act. See TMEP §§1212 et seq. regarding §2(f).

When the applicant agrees to submit evidence to overcome a statutory refusal, the examining attorney should issue the refusal in the priority action, stating the basis for the refusal, citing the relevant sections of the statute and rules, attaching evidence to support the refusal, and indicating the resolutions agreed upon.

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 et seq. 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. 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 attorney.

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. The action should be reported in the USPTO’s automated TRAM system as a priority action.

709 Interviews

A discussion between the applicant or applicant’s attorney and the examining attorney in which the applicant presents matters for the examining attorney’s consideration is considered an interview. An interview can be conducted in person, by telephone, or by e-mail. See TMEP §§304 et seq. regarding e-mail.

The application will not normally be processed out of turn as a result of the interview, and the interview does not extend the deadline for response to an outstanding Office action.

The examining attorney may not discuss inter partes questions with any of the interested parties. See TMEP §1801.

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 should 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. The unexpected appearance of an attorney 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 Office 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 make a note to the file 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 second examining attorney should endeavor to ascertain whether any agreements were reached during the interview. In the absence of clear error, the second examining attorney should take a position consistent with agreements previously reached.

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 or the attorney of record. See TMEP §§602 et seq. regarding persons who may represent an applicant before the USPTO in a trademark matter, and TMEP §§712.01 et seq. for information as to persons who have authority to bind various types of juristic applicants.

The examining attorney may request proof of the attorney’s authority if there is any reason to suspect that the attorney is not, in fact, the applicant’s representative. 37 C.F.R. §2.17(a).

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 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 attorney regarding an application, unless the disbarred attorney is the applicant.

Requests for interviews from third parties are inappropriate and should be directed to the Office of the Commissioner for Trademarks. 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.

To ensure that any agreements reached at an interview will be implemented, and to avoid subsequent misunderstanding, the examining attorney should include, in the “Notes-to-the-File” section of the record, a summary of the conclusions reached and of any exhibits considered at an interview.

If possible, agreements reached in the interview may be incorporated in an examiner’s amendment or priority action.

The applicant or the applicant’s attorney 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 Communications

Use of the telephone is encouraged. Examining attorneys should initiate telephone interviews whenever possible to expedite prosecution of an application. Similarly, applicants and attorneys for applicants may telephone examining attorneys, if they feel that a call will advance prosecution of an application.

All amendments and other papers filed in the USPTO should include the telephone number of the applicant or the applicant’s attorney.

The examining attorney should return telephone calls 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 in a telephone interview. 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. 37 C.F.R. §2.191. Therefore, the examining attorney must use an examiner’s amendment (see TMEP §§707 et seq.), priority action (see TMEP §§708 et seq.), memo to the file, or notation in the “Notes to the File” section of the record to make the substance of the call or the resolution of any issue part of the record. See TMEP §709.03.

709.05 Informal Submissions

An applicant may conduct informal communications with an examining attorney regarding a particular application by fax, e-mail (see TMEP §§304 et seq.), or other means. 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.

Informal 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. When a communication is informal, the applicant should clearly identify it as such. If it is unclear whether a communication is an informal inquiry or a response to an Office action, the USPTO will process the communication as a response.

Filing an informal communication does not extend the deadline for response to an outstanding Office action.

709.06 Interviews Prior to Filing Application

No interviews are permitted before the filing of an application. If a party has general questions, 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 an attorney.

710 Evidence

710.01 Evidence Supporting Refusal or Requirement

In general, the examining attorney should always support his or her action with relevant evidence.

All evidence that the examining attorney relies on in making any requirement or refusal to register 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 Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).

710.01(a) Evidence From Research Database

If evidence is obtained from a research database, the record should include an indication of the specific search that was conducted. The record should indicate the libraries and/or files that were searched and the results. If the examining attorney does not review all of the documents the search locates, the record should indicate the number of documents that were reviewed. The search summary should be made a part of the record and will provide most of this information. Information not indicated on the summary, such as the number of documents viewed, should be stated in narrative in the Office action. The Office action should include a citation to the research service, indicating the service, the library and the file searched, and the date of the search (e.g., “LEXIS®, New and Business, All News (June 5, 2007)”).

When evidence is obtained from a research database, the examining attorney does not have to make all stories of record. It is sufficient to include only a portion of the search results, as long as that portion is a representative sample of what the entire search revealed. In re Vaughan Furniture Co. Inc., 24 USPQ2d 1068, 1069 n.2 (TTAB 1992). See also In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).

See TMEP §710.01(b) regarding evidence originating in foreign publications.

710.01(b) Internet Evidence

Articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. However, the weight given to this evidence must be carefully evaluated, because the source is often unknown. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-71 (TTAB 1998). When making Internet evidence part of the record, the examining attorney should provide complete information as to the source or context of the evidence. Any information that would aid a party in locating the relevant document should be included in the citation (e.g., the complete URL address of the website, the time and date the search was conducted, and the terms searched).

A list of Internet search results has little probative value, because such a list does not show the context in which the term is used on the web page that could be accessed by the link. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007) (GOOGLE® search results that provided very little context of the use of ASPIRINA deemed to be “of little value in assessing the consumer public perception of the ASPIRINA mark”); In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board rejected an applicant’s attempt to show weakness of a term in a mark through citation to a large number of GOOGLE® “hits” because the “hits” lacked sufficient context); In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006); In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002); In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002). The examining attorney should attach copies of the website pages that show how the term is actually used.

As long as it is written in the English language, information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern United States consumer impression of a proposed mark. The probative value of such evidence will vary depending upon the context and manner in which the term is used. In Bayer, NEXIS® evidence that originated in foreign publications was deemed to be of “some probative value with respect to prospective consumer perception in the United States,” the Court noting “the growing availability and use of the internet as a resource for news, medical research results, and general medical information.” 82 USPQ2d at 1835. In Remacle, the Board held evidence from a website in Great Britain admissible, noting that:

[I]t is reasonable to assume that professionals in medicine, engineering, computers, telecommunications and many other fields are likely to utilize all available resources, regardless of country of origin or medium. Further, the Internet is a resource that is widely available to these same professionals and to the general public in the United States. Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin.

66 USPQ2d at 1224 n.5. However, the weight given to such evidence may vary depending upon the context and manner in which the term is used. In King Koil, the Board gave only “limited probative value” to the contents of websites of commercial entities outside the United States showing use of the term “Breathable” in relation to mattresses and bedding, stating that:

We ... disagree with applicant’s essential contention that a general consumer in the United States would not turn to foreign web sites when researching products they may be planning to purchase. Such consumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser. That would appear especially likely in a case such as this, where the item in question, a mattress, is large and potentially more expensive to ship than a smaller item. Accordingly, while we do not discount entirely the impact of foreign web sites in this case, we find them of much more limited probative value than in the Remacle case.

79 USPQ2d at 1050. See also In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1797-98 (TTAB 2003) (relying on several NEXIS® items from foreign wire services to refuse registration of mark and distinguishing earlier decisions that accorded such evidence little probative value given the sophisticated public and the widespread use of personal computers that increase access to such sources).

With respect to evidence taken from the online Wikipedia® encyclopedia, at www.wikipedia.org, the Board has noted that “[t]here are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries,” and has stated as follows:

[T]he Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information. Our consideration of Wikipedia evidence is with the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information)....

As a collaborative online encyclopedia, Wikipedia is a secondary source of information or a compilation based on other sources. As recommended by the editors of Wikipedia, the information in a particular article should be corroborated. The better practice with respect to Wikipedia evidence is to corroborate applicant’s Wikipedia evidence....

In re IP Carrier Consulting Group, ___ USPQ2d ___, ___, Serial Nos. 78542726 and 78542734 (TTAB June 18, 2007).

The examining attorney must check applicant’s own website for information about the goods or services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006), where the Board rejected applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent-to-use and no specimens were yet required. According to the Board, “The fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession.” See also In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007).

When a document found on the Internet is not the original publication, the examining attorney or Trademark Law Library staff should try to obtain a copy of the originally published document, if practicable. Electronic-only documents are considered to be original publications, and scanned images are considered to be copies of original publications. See notice at 64 Fed. Reg. 33056, 33063 (June 21, 1999).

See also TBMP §1208.03.

710.01(c) Record Must Be Complete Prior to Appeal

The record in any application must be complete prior to appeal. 37 C.F.R. §2.142(d). Accordingly, if an examining attorney or applicant attempts to introduce new evidence at the time of the appeal, the new evidence will generally be excluded from the record. TBMP §§1207 et seq. See Rexall Drug Co. v. Manhattan Drug Co., 284 F.2d 391, 128 USPQ 114 (C.C.P.A. 1960); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999). However, the Board may consider evidence submitted after appeal, despite its untimeliness, if the nonoffering party: (1) does not object to the evidence; and (2) discusses the evidence or otherwise treats it as being of record. See TBMP §1207.03 and cases cited therein. Therefore, examining attorneys and applicants should either consider or object to new evidence.

Whenever an examining attorney objects to evidence submitted by an applicant, the objection should be raised as soon as possible and continued in the examining attorney’s brief, or the Board may consider the objection to be waived. In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).

If the applicant or examining attorney wishes to introduce new evidence at the time of or during appeal, the party seeking to introduce the new evidence may request the Board to suspend the appeal and remand the case. See TMEP §§1504.05 et seq. and TBMP §1207.02 regarding requests for remand.

The Board may take judicial notice of definitions from printed dictionaries, even if they are not made of record by the applicant or examining attorney prior to appeal. In re Dodd International, Inc., 222 USPQ 268 (TTAB 1983); In re Canron, Inc., 219 USPQ 820 (TTAB 1983); TBMP §1208.04. However, the better practice is to attach the relevant material to ensure that it is in the record. The examining attorney must include a copy of the title page of the dictionary. In re Gregory, 70 USPQ2d 1792 (TTAB 2004) (Board declined to take judicial notice of dictionary definitions submitted with examining attorney’s appeal brief, where neither the photocopied pages nor the examining attorney’s brief specified the dictionaries from which the copies were made).

The Board will not take judicial notice of online dictionary definitions that are not available in printed form, unless the dictionary is readily available and verifiable, due to concerns about the reliability of such material. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006), where the Board took judicial notice of the Encarta Dictionary, because it was a widely known reference that was readily available in specifically denoted editions via the Internet and CD-ROM, holding that it was “the electronic equivalent of a print publication and applicant may easily verify the excerpt.” However, it refused to take judicial notice of a definition excerpted from www.wordsmyth.net, where the source of the definition was not identified on the submitted website excerpt or by the examining attorney and thus could not be verified. See also In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (Board took judicial notice of online dictionary that was also available in printed form); In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) (Board refused to take judicial notice of online dictionary that did not exist in printed format, where the source was unknown and the Board was unsure whether the dictionary was readily available or reliable, stating that the evidence should have been made of record prior to appeal, so applicant would have the opportunity to check the reliability of the evidence and offer rebuttal evidence).

710.02 Evidence Indicating No Refusal or Requirement Necessary

It is Office practice 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. The “Notes-to-the-File” section of the record should be used to reflect the results of a search for evidence in any case where the examining attorney determines that no action is required, but that inclusion of the results of the search would be useful in review and approval of the file. The examining attorney should simply note the parameters and results 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. Examining attorneys should provide the same information indicated in TMEP §710.01(a) regarding searches of research databases in this type of case.

Examining attorneys should not provide any analysis, opinions, or conclusions regarding the evidence when the examining attorney determines that a refusal or requirement is not appropriate. The examining attorney should not place in the record copies of e-mail messages or other communications between the examining attorney and other USPTO personnel concerning the application. Also, the examining attorney should not refer to 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. The examining attorney should not place copies of marks not cited under §2(d) in the record.

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 Duofold Inc., 184 USPQ 638 (TTAB 1974). Furthermore, the submission of a copy of a commercial search report is not proper evidence of third-party registrations. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).

To make registrations of record, soft copies of the registrations or the complete electronic equivalent (i.e., printouts or electronic copies of the registrations taken from the electronic search records of the USPTO) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (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); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992).

If the applicant submits improper evidence of third-party registrations, the examining attorney should object to the evidence in the next Office action, or the Board may consider the objection to be waived. See In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (objection to evidence waived where it was not interposed in response to applicant’s reliance on listing of third-party registrations in response to initial Office action). If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.

See TMEP §1207.01(d)(iii) regarding the relevance of third-party registrations to a determination of likelihood of confusion under 15 U.S.C. §1052(d).

711 Deadline for Response to Office Action

The statutory period for response to an examining attorney’s Office action is six months. 15 U.S.C. §1062(b); 37 C.F.R. §2.62. The examining attorney has no discretion to shorten or extend this period. The applicant must file a response within six months of the mailing date of the Office action, unless the examining attorney has issued a supplemental action resetting the period for response. See TMEP §711.02 regarding supplemental Office actions.

To expedite processing, the Office recommends that responses to Office actions be filed through TEAS, at