Trademark Examination Guides, Notes and Announcements - Examination Guide 1-92

Examination Guide 1-92

U.S. Patent and Trademark Office

Trademark Examining Groups

EXAMINATION GUIDE NO. 1-92

Issued September 9, 1992

Contents

A. Intent-to-Use Applications

1. Fees - Refunds After Cancellation of Notice of Allowance

2. Actionafter Issuance of the Notice of Allowance Based on "Clear Error" -

Consultation with Managing Attorney

3. Drawings - Typed Marks Including Nonstandard Characters

B. Provisions Affecting All Applications

1. Review of Denials of Filing Dates

2. Filing Dates - Multiple Drawing Pages

3. Drawings - Distinguishing Typed from Special Form

4. Drawings - Amendments

5. The Date of First Use Anywhere

6. Inquiries Concerning Other Names - Applicant Identified as Distributor

7. Time Between Execution and Filing of Papers

8. Examiner's Amendments Superseded by Issuance of Office-Action Letter

9. Suspension - Request to Remove Application from Suspended Status

10. Express Abandonment - Withdrawal

11. Examining Attorney's Request for Reconsideration

12. Reliance on Unpublished Decisions as Precedent

C. Provisions Affecting Applications under <section> 44 of the Act

 

A. Intent-to-Use Applications

1. Fees - Refunds After Cancellation of Notice of Allowance

If the Office cancels the notice of allowance to take action in an application

prior to the filing or examination of the statement of use, the Office will refund

any fees paid in conjunction with either a request for extension of time to file the

statement of use or the statement of use itself. When the notice of allowance is

canceled, the application is returned to initial examination. The examining attorney

should request that the applications examiner arrange for a refund. The Office will

not refund any fees if the statement of use has been examined, whether or not

refusals or requirements are issued for any reason during that examination. [p.2]

If the application is returned to initial examination, any statement of use which

had been submitted prior to that time will be retained in the file but will not be

considered unless it is resubmitted as an amendment to allege use or statement of

use at the appropriate time with the required fee.

 

2. Action after Issuance of the Notice of Allowance Based on "Clear Error" -

Consultation with Managing Attorney

If, after issuance of the notice of allowance, the examining attorney determines

that she or he must issue a refusal or requirement which could or should have been

issued during initial examination of the application, the examining attorney should

consult the managing attorney before taking any such action. This must be done

whether the action is to be taken before, during or after examination of the

statement of use, and whether or not the notice of allowance is canceled. This

applies to any refusal which arguably could or should have been issued during

initial examination, such as most refusals under <section> 2(d) or <section> 2(e)(1)

of the Act.

 

3. Drawings - Typed Marks Including Nonstandard Characters

There is apparently some confusion over the disposition of intent- to-use

applications for the typed version of a mark which includes a symbol or character

which may not be displayed in typed form. The specific characters, other than

letters and numbers, which are permitted in typed drawings are as follows:. ? " -; (

) % $ @ + [] = * # & / : ' !,. The characters not permitted in typed drawings

include the degree symbol (), raised or "rolled" periods or devices such as

subscripts or exponents, among others.

In an application filed based on use, the examining attorney would require a new

drawing in special form conforming to the mark as it is used on the specimens. In an

application under Trademark Act <section> 44, the mark must agree with the mark

displayed in the foreign registration.

Specimens are rarely available in the initial examination of an intent-to-use

application. In these cases, the examining attorney should require amendment to a

special-form drawing conforming to the special-form version the applicant intends to

use. If the applicant indicates that it is unable to so do for any reason, the

examining attorney should consult the Administrator for Trademark Policy and

Procedure. Note that intent-to-use applicants must comply with all formal

requirements related to drawings, whether typed or special form.

 

B. Provisions Affecting All Applications

1. Review of Denials of Filing Dates

If an applicant is denied a filing date and wishes to seek restoration of that

date, the usual procedure is to petition the Commissioner under Trademark Rule

2.146.

However, if the returned papers, standing alone, demonstrate that the denial was

due to Office error, the applicant may request restoration of the filing date

without a formal petition. To file such a request, the applicant must submit the

same papers, showing the canceled filing date, with a cover letter identified as a

"Request for Restoration of the Filing Date." The request should be [p.3] directed

to the Attention of the Administrator for Trademark Policy and Procedure, Office of

the Director, Trademark Examining Groups. If the papers demonstrate that all

relevant filing-date requirements were met at the time of the initial filing, the

Administrator may restore the filing date without a formal petition. The resubmitted

papers must demonstrate entitlement to a filing date without any additional

explanation or evidence. If any additional explanation or evidence is required, the

applicant must file a formal petition.

Furthermore, if the filing date is denied or canceled due to the omission of an

element, such as the drawing or specimens, and the applicant can present a return

postcard, or the equivalent, indicating that the Office had specifically

acknowledged receipt of the element in question, the Administrator can restore the

filing date without a formal petition. The applicant must provide a substitute to

replace the lost element, along with the papers that were returned, when requesting

restoration of the filing date.

In all requests to restore the filing date, the applicant must resubmit the

relevant fees, even if the applicant has not yet received a refund of any fees paid

previously.

Applicants must exercise due diligence in monitoring the status of applications to

ensure that remedies available through petition or otherwise are preserved where

they are otherwise proper. All requests to restore filing dates, whether by petition

or otherwise, should be filed promptly. If the Office mails an action advising the

applicant of the denial or cancellation of the filing date, the applicant must file

the petition or the request to restore the filing date within sixty days of the date

of mailing of the action. Trademark Rule 2.146.

If no action has issued, the applicant must submit a petition, a request to

restore the filing date or an inquiry with due diligence, normally within six months

of the asserted filing date. The Office issues filing receipts for applications,

usually within thirty days of filing. The failure to receive a filing receipt should

alert the applicant that there may be a problem with the application. If this

occurs, the applicant should at least inquire concerning the status of the

application. The applicant should submit any such status inquiry in writing to the

attention of the Office of Trademark Services. Any request to restore a filing date

which does not satisfy the due diligence requirement and the requirements related to

the timely filing of petitions will be denied.

 

2. Filing Dates - Multiple Drawing Pages

If an applicant submits two or more drawings displaying different marks or

different versions of a mark, the application will be denied a filing date.

Trademark Rule 2.21(a)(3) requires submission of " a drawing" to receive a filing

date (emphasis provided). Therefore, an application including two or more drawings

displaying different marks will not be accorded a filing date.

3. Drawings - Distinguishing Typed from Special Form

Due to the availability of typewriters and word processors which are capable of

producing varied type styles and type sizes, some confusion has arisen over whether

a mark is in typed form or special form. The Office has published a notice

recommending that applicants use standard type in typed drawings of marks. See 1135

TMOG 44.

If there is any doubt concerning whether a drawing is in typed or special form,

the examining [p.4] attorney should request clarification from the applicant

concerning the nature of the drawing. After the applicant has indicated the nature

of the drawing, the examining attorney should ensure that the TRAM data base,

including the drawing code, has been corrected, if necessary. To enter a correction,

the examining attorney should submit the standard request to the responsible

applications examiner in the law office. The drawing cannot be amended if the

amendment would result in a material alteration of the mark.

 

4. Drawings - Amendments

In certain instances, case law permits the amendment of a mark to add an element

which the applicant has already registered for the same goods or services covered by

the application which is being examined. See In re Nationwide Industries Inc., 6

USPQ2d 1882 (TTAB 1988); Florasynth Laboratories Inc. v. Mulhens, 122 USPQ 284

(Comm'r Pats. 1959). However, an applicant may not delete matter on this basis. Any

proposed amendment to delete matter from the mark must be evaluated as to whether

the deletion would represent a material alteration of the mark without regard to

whether the matter to be deleted is the subject of an existing registration.

 

5. The Date of First Use Anywhere

TMEP <section> 806.01 now specifies that the date of first use anywhere required

by Trademark Act <section> 1 must be a date of first use in the United States. This

policy no longer applies. Applicants may state a date of first use anywhere to

comply with this requirement. See In re Sevi S.p.A., 1 USPQ2d 1671 (TTAB 1986).

 

6. Inquiries Concerning Other Names - Applicant Identified as Distributor

If the specimens identify the applicant as the distributor of a product, and there

is no information of record indicating a possible foreign manufacturer/owner, or

other evidence of record suggesting that another party is owner of the mark or that

the applicant is a mere distributor, the Office will presume that the applicant is

both owner and distributor. No injury is necessary concerning the reference to the

applicant as distributor. For procedures related to situations where the applicant

is identified as the distributor or importer of a foreign-made product see TMEP

1201.09(b).

 

7. Time Between Execution and Filing of Papers

TMEP <section> 803.04 discusses the circumstances in which the examining attorney

should require a new verification of the application due to the time which elapsed

between the execution and filing of the application. These same policies were

extended to cover the execution and filing of papers in intent- to-use applications,

specifically, amendments to allege use, statements of use and requests for

extensions of time to file statements of use. See Examination Guide 3-90 at page 6.

The policy affords the examining attorney discretion in determining whether a new

verification is required and specifies a guideline of eight weeks for domestic

applicants and twelve weeks for foreign applicants as a reasonable time between

execution and filing. Examining attorneys have had the discretion to accept the

paper even if a longer delay had occurred if circumstances warrant.

The Office will now consider six months between execution and filing as reasonable

for all [p.5] applicants and all papers. No new verification should be required if

the paper is filed within six months of execution. Although the examining attorney

retains the discretion to accept papers where a longer delay has occurred, this

discretion should be exercised in view of the liberalized guideline.

For example, it may be reasonable to accept a statement of use which was

originally prepared for filing as an amendment to allege use if it exceeds the

guideline by a modest period of time. This would be appropriate if the delay was due

to Office processing times and the bar against filing the statement of use prior to

the issuance of the notice of allowance. However, if there is a delay which exceeds

the guideline by a substantial period of time, due to the filing of an opposition or

other unusual circumstances, a new verification should be required.

 

8. Examiner's Amendments Superseded by Issuance of Office- Action Letter

If an examining attorney contacts an applicant and reaches agreement to issue an

examiner's amendment, but later determines that an Office action must be issued

instead to state a refusal or requirement, the examining attorney should telephone

the applicant immediately to advise the applicant of the change of position.

Furthermore, examining attorneys without partial signatory authority should

generally advise applicants that issuance of the examiner's amendment is subject to

approval by a supervisory attorney.

 

9. Suspension - Request to Remove Application from Suspended Status

If an examining attorney suspends action on an application to await disposition of

a conflicting, earlier-filed application, or for any other reason, and the applicant

believes the suspension is improper, the applicant may file a request to remove the

application from suspension. The request should state the reasons for the belief

that the suspension was improper and should provide any relevant evidence. For

example, the applicant may argue that there is no likelihood of confusion between

the applicant's mark and the mark in a prior-filed application.

If not persuaded by the request, the examining attorney should issue a new

suspension action with an appropriate explanation of the reasons why the request is

not granted.

If persuaded that suspension is not appropriate, the examining attorney should

resume examination of the application and take appropriate action.

If an examining attorney suspends action on an application based on one or more

prior-filed applications, the examining attorney should advise the applicant that

arguments concerning whether a conflict exists between the relevant applications may

be presented in a request to remove the application from suspension.

 

10. Express Abandonment - Withdrawal

If an applicant files an express abandonment of an application which is not the

subject of an inter partes proceeding before the Trademark Trial and Appeal Board,

and wishes to withdraw the abandonment to resume prosecution of the application, the

Office will not reinstate the application. In appropriate circumstances, an

applicant may petition the Commissioner to request withdrawal of the express

abandonment. [p.6]

Note the policy which governs when an applicant whose application is the subject

of an opposition proceeding files an express abandonment of the application after

the commencement of the opposition proceeding, but prior to receipt of the Board's

notice of the filing of the opposition. In such a case, the Board allows the

applicant an opportunity to withdraw the abandonment because such an abandonment, if

not withdrawn, may result in entry of judgment against the applicant in the

opposition.

 

11. Examining Attorney's Request for Reconsideration

In a recent decision an augmented panel of the Trademark Trial and Appeal Board

expressly overruled prior precedent and held that an examining attorney may request

reconsideration of a Board decision reversing the examining attorney in an ex parte

appeal. In re Ferrero S.p.A., __ USPQ2d__, Serial No. 73/748,088 (TTAB, April 22,

1992).

An examining attorney may request reconsideration only if the Board reverses the

attorney's decision as to all issues and determines that the mark must be published

for opposition or that the registration must issue.

To request reconsideration, the examining attorney must prepare a request and a

supporting brief and submit the request to the managing attorney for occurrence in

the decision to seek reconsideration. If the managing attorney does concur, then the

request and brief must be submitted to the Office of the Director for approval. The

request must be approved by the Administrator for Trademark Policy and Procedure and

the Director prior to filing the request with the Board. If the managing attorney

does not concur in the decision to seek reconsideration, or the Administrator for

Trademark Policy and Procedure or the Director does not approve, the request cannot

be filed with the Board.

If the managing attorney concurs in the request, and both the Administrator for

Trademark Policy and Procedure and the Director approve the request, the examining

attorney will file the request with the Board. A copy should also be mailed to the

applicant or applicant's attorney at the same time. The Board will set an

appropriate time for the applicant to respond to the request. The examining attorney

may not file a reply brief in response to the applicant's brief.

The request for reconsideration should be filed with the Board within 30 days of

the Board decision which is the subject of the request. Later filing is permitted

only if the time is extended by the Board upon a showing of sufficient cause. In re

Ferrero S.p.A., __ USPQ2d__, Serial No. 73/748,088 (TTAB, April 22, 1992). The

managing attorney should review all decisions of the Board in ex parte appeals

involving attorneys in the law office and should promptly forward copies to the

responsible examining attorneys in view of the time limit for filing requests for

reconsideration.

 

12. Reliance on Unpublished Decisions as Precedent

In another recent decision the Board has stated:

Upon reflection, the Board has decided that citation of "unpublished" or "digest"

Board decisions as precedent will no longer be allowed. In the future, the Board

will disregard as precedent citation of any unpublished or digest decision. Even if

a complete copy of the unpublished or digest decision is submitted, the Board will

[p.7] disregard citation as precedent thereof. An exception exists, of course, for

those situations in which a party is asserting issues of claim preclusion, issue

preclusion, judicial estoppel, or law of the case or the like based on a decision of

the Board rendered in a nonprecedential (i.e., unpublished or digest) decision.

General Mills, Inc. v. Health Valley Foods, __ USPQ2d__, Opposition No. 76,303,

n.9 (TTAB, May 1, 1992).

This policy applies to both ex parte and inter partes cases. Accordingly,

examining attorneys should not cite as precedent either unpublished or digest

decisions in either Office actions or appeal briefs. Consistent with this decision,

examining attorneys should also discontinue providing informational copies of

unpublished decisions with office actions.

If a decision is not designated for publication and an examining attorney wishes

to recommend that the decision be published, the examining attorney should forward

the recommendation to the Administrator for Trademark Policy and Procedure. The

recommendation should specify the name of the case, the serial number and the date

of the decision.

 

C. Provisions Affecting Applications under <section> 44 of the Act

Serial Number of Foreign Applications

If the applicant asserts a priority claim under Trademark Act <section> 44(d), or

asserts a foreign registration as a basis for registration under Trademark Act

<section> 44(e), the applicant must provide the serial number of the relevant

foreign application. If the applicant fails to indicate the serial number at filing,

the examining attorney should require the applicant to provide this information in

the first office action.

If the application is approved for publication without the serial number of the

relevant foreign application, the photocomposition program for the Official Gazette

will reject the application. Then, the application will have to be returned to the

examining attorney in order to determine the relevant foreign- application serial

number.

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