Trademark Examination Guides, Notes and Announcements - Examination Guide 2-91

Examination Guide 2-91 [FNa1]

U.S. Patent and Trademark Office

Trademark Examining Operation

EXAMINATION GUIDE NO. 2-91

Issued November 5, 1991

 

Contents

A. Intent-to-Use Applications

1. Fees

2. Concurrent Use Asserted at Filing

3. Untimely Amendments to Allege Use

4. Action After Issuance of Notice of Allowance Before Filing of Statement of

Use

B. Provisions Affecting All Applications

1. Filing-Date Problems Discovered After Examining Attorney's Action

2. Notification of Later-Filed Applications

3. Identifying Sole Proprietorships

4. Individuals Using Corporate DBA's

5. Corporations Using More Than One Corporate Designation

6. Procedures for Unacceptable Amendments to Drawings

7. Procedures for Unacceptable Amendments to the Identification of Goods and

Services

8. Disclaimers

a. Disclaimers Volunteered by the Applicant

b. Form of Disclaimers

9. Requests for Reconsideration

10. Action on Applications After Removal from Suspension

 

 

A. Intent-to-Use Applications

1. Fees

If an intent-to-use application is amended to add a class, the applicant must

submit the basic application fee related to the added classes and fees for either

the amendment to allege use or statement of use related to the added classes. This

applies even if the classes are added after the amendment to allege use or statement

of use is filed.[p.2]

For the purpose of meeting the minimum requirements related to the filing of an

amendment to allege use or statement of use, the applicant must file the fee for at

least one class of goods or services. If the applicant fails to file the fees for

additional classes, the examining attorney must require payment of the additional

fees in the examination of the amendment to allege use or statement of use. In the

case of a statement of use, the additional fees may be paid after the time for

filing the statement of use has expired but within the relevant response period.

However, the additional fees must be paid no later than 36 months after issuance of

the notice of allowance. If sufficient fees have not been received within 36 months

of the issuance of the notice of allowance and the applicant has not indicated the

classes to which the fees which were paid pertain, the fees paid will be applied to

the lowest numbered classes in ascending order.

All fees related to a request for an extension of time to file a statement of use

must be filed within the time for filing the request. If insufficient fees to cover

all classes have been filed and the applicant has not indicated the classes to which

the fees which were paid pertain, the fees paid will be applied to the lowest

numbered classes in ascending order.

 

2. Concurrent Use Asserted at Filing

If an applicant files an intent-to-use application and asserts concurrent use at

the time of filing, the application will be denied a filing date and the papers will

be returned to the applicant.

 

3. Untimely Amendments to Allege Use

If an applicant files an amendment to allege use after the date of approval for

publication, the amendment to allege use must be returned to the applicant as

untimely. Trademark Rule 2.76(a), 37 C.F.R. <section> 2.76(a). The examining

attorney should not cancel the approval or withdraw the application from publication

to process the amendment. Furthermore, the examining attorney should not suspend

action in the case or take any other similar action for the specific purpose of

extending the time for filing an amendment to allege use.

 

4. Action After Issuance of Notice of Allowance Before Filing of Statement of

Use

If, after issuance of the notice of allowance but before submission of the

statement of use, the Office determines that a clear error was committed in

approving the mark for publication, the Office will withdraw the notice of allowance

and will return the application to examination. The examining attorney will issue an

appropriate action including the relevant requirement or refusal. If the applicant

ultimately overcomes the refusal or complies with the requirement, the examining

attorney may approve the mark for publication once again. The mark must be

republished.

After issuance of the notice of allowance, the examining attorney has jurisdiction

to act in the case. Trademark Rule 2.84, 37 C.F.R. <section> 2.84. Therefore, the

examining attorney need not request jurisdiction to act in the caseas would be

required after publication but before issuance of the notice of allowance. [p.3]

 

B. Provisions Affecting All Applications

1. Filing-Date Problems Discovered After Examining Attorney's Action

If, after issuing an action in a case, an examining attorney determines that the

applicant was not entitled to a filing date, the examining attorney should issue a

supplemental action advising the applicant that the filing date was granted in error

and giving the applicant six months to comply with the filing- date requirements. If

the applicant fails to qualify for a filing date within the response period, the

examining attorney should declare the application abandoned and refund the filing

fee.

If the applicant corrects the application to comply with the filing- date

requirements, the examining attorney should refer the case to the TRAM Unit to

change the filing date to the date on which the applicant satisfied all filing- date

requirements. The examining attorney should then resume examination. The examining

attorney must conduct a new search. This policy applies to all applications and

supersedes all previous policies on this issues.

 

2. Notification of Later-Filed Applications

The Office will discontinue the practice of notifying applicants about potentially

conflicting later-filed applications. This change in no way affects Office policy

with respect to the assignment of companion and conflicting applications to a single

examining attorney.

 

3. Identifying Sole Proprietorships

An applicant may identify itself as a sole proprietorship. If an applicant does

so, the applicant must also indicate the state where the sole proprietorship is

organized as well as the name and citizenship of the sole proprietor.

If the application, as filed, specifically identifies the applicant as a sole

proprietorship and indicates the state of organization of the sole proprietorship

and the name and citizenship of the sole proprietor, the Office will accept the

characterization of the entity without further action. If, on the other hand, the

application refers to a sole proprietorship but lacks some of the necessary

information or is ambiguous as to whether the applicant should be identified as a

sole proprietorship or an individual, the examining attorney must require

appropriate clarification of the entity type.

 

4. Individuals Using Corporate DBA's

If an individual indicates that he or she is doing business under a corporate

designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.), the

examining attorney should confirm that the law in the relevant state permits such a

practice. If so, the Office will print the DBA. If the relevant state law does not

permit such a practice, the Office will not print the DBA. The applicant need not

provide copies of relevant state statutes. If inquiry discloses that the applicant

was misidentified, the examining attorney should take action consistent with Office

policies governing corrections to applicant's name and entity and changes in the

applicant entity. [p.4]

 

5. Corporations Using More Than One Corporate Designation

If a corporate applicant provides a DBA which includes a corporate designation

(e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.) in addition to its

official corporate name, the examining attorney should confirm that the official

corporate name is correct and that the relevant state law permits use of the

additional DBA. If use of the DBA is permitted, the Office will print the DBA. If

not, the Office will not print the DBA. The applicant need not provide copies of

relevant state statutes.

 

6. Procedures for Unacceptable Amendments to Drawings

If an applicant submits an amendment to the drawing and the examining attorney

determines that the amendment is unacceptable, the examining attorney should issue

an action rejecting the amendment and advising the applicant that the drawing prior

to the amendment remains the operative drawing in the case. The examining attorney

should ensure that the TRAM and T-Search databases reflect the operative drawing.

If the applicant later submits further arguments in support of acceptance of the

amendment and the examining attorney determines that the amendment is still

unacceptable, the examining attorney should issue a final rejection of the

amendment, provided the case is otherwise in condition for final action. The

examining attorney should again ensure that the TRAM and T-Search databases reflect

the operative drawing.

 

7. Procedures for Unacceptable Amendments to the Identification of Goods and

Services

If the applicant submits an amendment to the identification of goods and services

and the examining attorney determines that it is unacceptable, in whole or in part,

the examining attorney should advise the applicant of the item or items that are

unacceptable. The examining attorney should also advise the applicant that the

previous items corresponding to the unacceptable substitute remain operative for

purposes of future amendment.

If the applicant submitted the amendment in response to a requirement, the

examining attorney should issue a final requirement for amendment to the

identification, provided the proposed amendment raises no new issues and the case is

otherwise in condition for final action.

 

8. Disclaimers

a. Disclaimers Volunteered by the Applicant

In In re MCI Communications Corp., Petition 91-33 (Comm'r Pats. July 15, 1991),

the Commissioner held that Trademark Act <section> 6, 15 U.S.C. <section> 1056,

permits an applicant to disclaim matter voluntarily whether the matter is

registrable or unregistrable. In the decision the Commissioner specifically

overruled all previous authority holding otherwise and directed revision of TMEP

<section><section> 904.01(c) and 904.08 to eliminate portions inconsistent with this

holding.

Accordingly, the policies stated in these sections which are inconsistent with the

referenced decision are no longer operative. If an applicant offers a disclaimer of

any matter in a mark, the Office will accept the disclaimer. Examining attorneys

should note that the decision states [p.5] emphatically that the entry of such a

disclaimer does not render registrable a mark which is otherwise unregistrable under

relevant sections of the Act, such as <section> 2(e) and <section> 2(d). The

examining attorney must continue to evaluate the entire mark, including the

disclaimed matter, in determining registrability. Furthermore, the decision notes

that the applicant may not disclaim the entire mark.

Also note that an applicant may volunteer a disclaimer in the mistaken belief that

a disclaimer would be required when, in fact, Office policy would not require a

disclaimer. If this appears to be the case, the examining attorney should offer the

applicant the opportunity to withdraw the disclaimer.

 

b. Form of Disclaimers

If the mark consists of a word or words which are misspelled in the mark but

nonetheless must be disclaimed, the examining attorney should require disclaimer of

the word or words in the correct spelling, provided a disclaimer is otherwise

required under Office policy. See In re Omaha National Corp., 836 F.2d 520, 2

USPQ2d 1859 (Fed. Cir. 1987); In re Newport Fastener Company Inc., 5 USPQ2d 1064

(TTAB 1987). The entry of the disclaimer does not necessarily render registrable a

mark which is otherwise unregistrable. The examining attorney must evaluate the

entire mark, including the misspelled wording, to determine whether the mark as a

whole is inherently distinctive or even capable of functioning as a mark.

If the examining attorney has not required any disclaimer of misspelled wording

because a disclaimer is not necessary under Office policy, the applicant may provide

a disclaimer of the term as spelled in the mark or in its correct spelling

voluntarily. In such a case, the examining attorney should accept the disclaimer.

Again, such a disclaimer does not necessarily render an otherwise unregistrable mark

registrable. The examining attorney must consider the entire mark, including the

disclaimed matter, to determine whether the entire mark is registrable.

 

9. Requests for Reconsideration

The purpose of this section is to clarify Office policy regarding disposition of

requests for reconsideration. The policies set forth here supersede TMEP <section>

1105.04(h) in its entirety and TMEP <section><section> 1105.04(f) and (g) and

<section> 1110 only to the extent that these sections are inconsistent with this

section.

If the examining attorney issues a proper final action, the only proper response

is an appeal or a petition, if appropriate, or compliance with the requirement or

action to overcome the refusal. See Trademark Rule 2.64(a), 37 C.F.R. <section>

2.64(a).

The rules also provide for a request for reconsideration. 37 C.F.R. 2.64(b). Such

a request must be made before the expiration of the time period for filing an

appeal. The filing of such a request does not extend the time for filing an appeal.

The rule specifies further that, "...normally the examiner will respond to a request

for reconsideration before the end of the six-month period if the request is filed

within three months after the date of the final action." Id.

The examining attorney should construe any paper filed after final action

containing new amendments, new evidence or new arguments as a request for

reconsideration. If the applicant files a notice of appeal with such a request, the

examining attorney should ensure that the case is first [p.6] referred to the

Trademark Trial and Appeal Board so that the appeal can be noted and proceedings on

the appeal suspended pending the examining attorney's action on the request for

reconsideration.

To be construed as a request for reconsideration, the paper must be filed within

the six-month response period following the final refusal. If the applicant has

filed a timely notice of appeal and files a paper after the expiration of the

six-month response period, the Board must act on the paper. In appropriate cases,

the Board may remand the case to the examining attorney to consider matter presented

in the paper with appropriate instructions for the examining attorney with respect

to consideration of the paper and disposition of the case after such consideration.

The examining attorney need not "suspend the finality" to act on a request for

reconsideration. However, in responding to any request for reconsideration the

examining attorney must specify the status of the case with respect to possible

further action. Specifically, the examining attorney must indicate whether the case

is being returned to the Trademark Trial and Appeal Board for resumption of an

appeal, whether the applicant has any time remaining to file an appeal, whether

further time is being provided to respond to a requirement or refusal or whether the

application stands abandoned for failure to respond.

If, in the request for reconsideration, the applicant complies with all

outstanding requirements and overcomes all outstanding refusals, the examining

attorney should approve the application for publication or registration, as

appropriate.

If, in the request for reconsideration, the applicant makes a good faith, but

incomplete, attempt to comply with all outstanding requirements and to overcome all

outstanding refusals, the examining attorney has the discretion to invoke Trademark

Rule 2.65(b), 37 C.F.R. <section> 2.65(b), to provide the applicant with additional

time to resolve the matters which remain outstanding. This should only be done if

the applicant can place the application in condition for approval by completing the

response. The amount of additional time granted may vary according to the

circumstances, but 30 or 60 days should usually suffice.

If, in the request for reconsideration, the applicant presents amendments or

evidence which either present new issues or which differ significantly from

previously submitted material, the examining attorney should issue a new final or

nonfinal action superseding the outstanding final refusal.

The action should be nonfinal if the amendment or evidence raises a new issue. For

example, in the case of an amendment which asserts a claim of acquired

distinctiveness for the first time, or an amendment which attempts to seek

registration on the Supplemental Register for the first time, but which fails to

place the application in condition for approval, a nonfinal action is appropriate.

Likewise, an amendment to the mark or an amendment to the identification of goods or

services which is unrelated to any previous requirement would require a new nonfinal

action. This, of course, presumes that the amendment is not acceptable.

The action should be final if the amendment or evidence is significantly different

from anything presented earlier but does not present a new issue. For example, if

the applicant presents additional evidence, such as a consent agreement, the

examining attorney should issue a new final action because the consent does not

raise a new issue but the consent would represent significant new evidence which

warrants reissuance of a final which properly addresses the entire record including

[p.7] the consent. A consent agreement is but one factor to be considered in a

likelihood-of-confusion determination and does not present a new issue as such. The

issue remains likelihood of confusion. The additional evidence must be qualitatively

different from any previous evidence to warrant issuance of a new final action. As

noted below, additional evidence which is merely cumulative and not significantly

different from that which is already of record would not warrant issuance of a new

final refusal.

If, in the request for reconsideration, the applicant presents amendments,

evidence or arguments which fail to raise any new issue or which are not

significantly different from previously submitted material, the examining attorney

should merely deny the request for reconsideration and advise the applicant of the

status of the case. That is, the examining attorney should advise that the

application is being returned to the Trademark Trial and Appeal Board for resumption

of the appeal, that the applicant may file an appeal within the response period

related to the outstanding final refusal or that the case stands abandoned if no

appeal has been filed and no time remains for filing an appeal. In this instance, no

additional time should be given to file an appeal or to respond.

If an applicant files a notice of appeal and later fails to respond to an office

action issued in response to a request for reconsideration, the examining attorney

should return the case to the Board for appropriate action. It should not be

declared abandoned.

It is difficult to delineate with precision what constitutes a new issue requiring

a new nonfinal action, new evidence requiring issuance of a new final action or

material which is merely cumulative. The examining attorney must evaluate the

request and determine the appropriate course of action. The examining attorney

should weigh considerations, such as fairness and the need to develop a full record

for a possible appeal, in determining how to respond to the request.

 

10. Action on Applications After Removal from Suspension

If after issuance of a final refusal, the examining attorney determines that

action on the application should be suspended, the examining attorney must withdraw

the final action in conjunction with the action to suspend. This may arise, for

example, when the applicant files a petition to cancel a cited registration.

If such a case is eventually removed from suspension and the grounds for refusal

remain operative, the examining attorney should issue another final refusal. It is

inappropriate to remove the case from suspension and declare the application

abandoned immediately.

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