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.
A written response to an examiner’s amendment is not required. If an applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by telephone or e-mail), so that the objection can be considered before publication or issue.
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.
The examiner’s amendment must be signed by the primary examiner, entered into the file and a copy sent to applicant. The changes specified in the amendment are entered by the technical support staff in the regular way. An examiner’s amendment should include form paragraph 13.02 and form paragraph 13.02.01.
A Section 2(e)(1) refusal is made when an examining attorney finds evidence showing that all the text or design in your trademark merely describes some aspect of your goods or services. For example, an examining attorney would issue a refusal for “creamy” for yogurt, or “crusty and chewy” for bagels.
Overcoming an ornamental refusalSubmit a verified substitute specimen – available to applicants filing under “use in commerce” basis. ... Amend your application from the Principal to the Supplemental Register – available to most* applicants.More items...•
Amendment Amendment after Notice of Allowance (Rule 312) When applicant files an amendment after the Notice of Allowance has been mailed but before the issue fee is paid, the amendment is not entered automatically. It may only be entered upon recommendation of a Primary Examiner.
A major concern with a refusal of this nature is that the company with the similar mark could eventually see your filing or use of the trademark in the marketplace and send you a cease and desist letter, or worse, sue you in federal court.
An ornamental refusal is when the USPTO refuses registration of your mark because the sample of how you actually use the applied-for mark (the "specimen") or other information in the record shows use of your mark merely as an ornamental or decorative feature on the goods and not as a trademark to indicate the source of ...
If a design is “merely ornamental,” that means it is considered more decorative, and does not clearly tell the consumer the source of the goods (or the brand). Decorative or ornamental features often include words, designs, slogans, or trade dress (packaging design).
Can you file a post-allowance amendment after paying the issue fee? No. A post-allowance amendment must be filed on or before payment of the issue fee.
An RCE can be used to withdraw an allowed application from issue. After a Notice of Allowance, but before payment of the Issue Fee, an Applicant begins to evaluate whether the claims are of adequate scope or whether additional claims are warranted. If there is a risk of the application issuing, an RCE will stop it.
If you've received a Notice of Allowance in your patent application – that is, you've had patent claims allowed in an application – you should decide soon if you want to file a continuation, so that you have enough time to prepare the new claims and file them before filing for the issuance of the allowed patent claims.
Filing a TTAB appeal is the first step for applicants that disagree with the trademark examining attorney's ruling.
Likelihood of confusion is the most common reason an application will be rejected by the USPTO. Essentially, if there is a high probability that the general public will confuse your trademark with someone else's (already existing) trademark, your registration will not be granted. The two marks need not be identical.
If the registration is refused the applicant has the final option of appealing to the Intellectual Property Appellate Board (hereinafter referred to as IPAB). An appeal to the IPAB must e filed within three months of the date of issuance of the refusal order by the registrar.
Section 45 of the Lanham Act states a trademark is considered abandoned when “its use has been discontinued with intent not to resume such use.” Abandonment may be inferred from the surrounding circumstances, but proof of nonuse for three consecutive years is prima facie evidence of abandonment.
A conflict can be defined as simply as trademarks that are similar to your own (not necessarily identical) and goods and/or services that are related. Note that trademarks that are no longer alive will not conflict with yours.
Use the Reading Room to search TTAB final decisions and precedential orders. You can search cases by date, issue, and other criteria. You can also search by language within the decision. Please send comments, questions, and suggestions to [email protected] .
This is a frequently misunderstood topic because many people believe that you must register your work before you can claim a copyright. However, no publication, registration or other action in the Copyright Office is required to secure a copyright.
Updated November 26, 2020: The response to Office Action is the additional information you are asked to provide to the United States Patent and Trademark Office (USPTO) during the patent or trademark examination phase.
When the US Patent Office named the final office “final,” it made a mistake. In Japan, a final rejection is truly final. It’s the end of the line.
3. Response to Suspension Inquiry or Letter of Suspension. Use this form to respond either to (1) a Suspension Inquiry; or (2) a Letter of Suspension.
Tools & links; Legislative resources. Learn about our current legislative initiatives. IPR toolkits. Find out how to protect intellectual property in other countries.
Possible Grounds for Refusal of a Mark. The USPTO may be required to refuse registration of your mark on numerous grounds. The most common are: Likelihood of Confusion: The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed.
When a conflict exists between the applicant's mark and a registered mark, the examining attorney will refuse registration of the applicant's mark on the ground of likelihood of confusion. If a conflict exists between the applicant's mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant ...
A mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.
For more information about conducting a search of existing trademarks, please watch the news broadcast-style video titled “Searching” (video #3 in the Trademark Information Network (TMIN) series).
For example, the mark “ BLACKER THE COLLEGE SWEETER THE KNOWLEDGE ” centered in large letters across most of the upper half of a shirt, was found to be a primarily ornamental slogan that was not likely to be perceived as a trademark (source indicator).
An applicant 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.
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 individual applicant, someone with legal authority to bind a juristic applicant (e.g., ...
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.
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 §§716–716.06 regarding suspension. However, an applicant 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.
The following are examples of amendments that may not be made by examiner’s amendment: the dates of use, if verification would be required ( see TMEP §903.04 ); the mark on a special-form drawing ( see TMEP §§807.04–807.04 (b) ), 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 by examiner’s amendment ( see TMEP §718.01 ).
Example: If the identification is vague or indefinite, the examining attorney may seek authorization to amend the identification by examiner’s amendment , even when the amendment would not overcome a potential likelihood-of-confusion refusal. The examining attorney would then issue a notice of suspension. To ensure that the applicant understands that amending the identification will only put the application in condition for suspension, during the telephone or e-mail discussion, the examining attorney must notify the applicant of the prior pending application and the forthcoming suspension. The resulting examiner’s amendment should also include this information.
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.
An applicant 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 an applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by telephone 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.
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.
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 §§716–716.06 regarding suspension. However, an applicant 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.
Example: If the identification is vague or indefinite, the examining attorney may seek authorization to amend the identification by examiner’s amendment, even when the amendment would not overcome a potential likelihood-of-confusion refusal. The examining attorney would then issue a notice of suspension. To ensure that the applicant understands ...
The following are examples of amendments that may not be made by examiner’s amendment: the dates of use, if verification would be required ( see TMEP §903.04 ); the mark on a special-form drawing ( see TMEP §§807.04–807.04 (b) ), 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 by examiner’s amendment ( see TMEP §718.01 ).
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.
The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.
Suggestions for improving the form and content of the Manual are always welcome. They should be e-mailed to [email protected], or addressed to:
As an alternative, the examiner’s amendment utilizing paragraph/claim replacement can be created by the examiner with authorization from the applicant. The examiner’s amendment can also be created from a facsimile transmission or e-mailed amendment received by the examiner and referenced in the examiner’s amendment and attached thereto. Any subject matter, in clean version form (containing no brackets or underlining), to be added to the specification/claims should be set forth separately by applicant in the e-mail or facsimile submission apart from the remainder of the submission. A clean version of a paragraph/claim, or portion of a paragraph/claim, submitted by applicant in a fax or e-mail, should be printed and attached to the examiner’s amendment and may be relied on as part of the examiner’s amendment. The examiner should mark "requested" on the entire attachment to indicate that the fax or e-mail was requested by the examiner, so as to not lead to a reduction in patent term adjustment ( 37 CFR 1.704 (c) (8) ). As the attachment is made part of the examiner’s amendment, it does not get a separate PALM code and will not trigger any reduction in patent term adjustment. A paper copy of the entire e-mail or facsimile submission should be entered in the application file. Examiners are not required to electronically save any e-mails once any e-mails or attachments thereto are printed and become part of an application file record. The e-mail practice that is an exception for examiner’s amendments is restricted to e-mails to the examiner from the applicant and should not be generated by the examiner to the applicant unless such e-mails are in compliance with all of the requirements set out in MPEP § 502.03.
At the time of allowance, substantive changes made by the examiner to the abstract must be done by an examine r’s amendment after first obtaining approval from the applicant.
For continuing applications filed under 37 CFR 1.53 (b), a reference to a parent application in the first sentence (s) of the specification is no longer required when the reference appears in an Application Data Sheet. If a reference to the parent application has not been included in the first sentence (s) of the specification an examiner should not add a reference to the prior application without the approval of the applicant and an examiner’s amendment. If applicant has included a reference to the parent application, the examiner should review the statement and the application data sheet for accuracy. Applicant may decide to delete the benefit claim in the application filed under 37 CFR 1.53 (b). Furthermore, a petition under 37 CFR 1.78 to accept an unintentionally delayed benefit claim may be required if the application is a utility or plant application filed on or after November 29, 2000. See MPEP § 211.04.
A clean version of a paragraph/claim, or portion of a paragraph/claim, submitted by applicant in a fax or e-mail, should be printed and attached to the examiner’s amendment and may be relied on as part of the examiner’s amendment.
See MPEP § 706.07 (f) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
If after reviewing, screening, or surveying an allowed application the Office of Patent Quality Assurance discovers any informality in the application suitable for correction by examiner’s amendment or in an informality in an examiner’s amendment, the Review Quality Assurance Specialist will return the application to the Technology Center (TC) personnel via the TC Director suggesting, as appropriate, specific changes for approval and correction by the examiner through the use of an examiner’s amendment.
The amendment or cancellation of claims by examiner’s amendment is permitted when passing an application to issue where these changes have been authorized by applicant (or his/her attorney or agent) in an interview. The examiner’s amendment should indicate that the changes were authorized, the date and type of interview, and with whom it was held.
Examiner’s amendments are used to move your application toward registration faster. Priority action. A priority action confirms in writing a discussion you had with the examining attorney by phone or email about the legal problems with your application.
If you have an attorney, the attorney must sign the response. Only attorneys licensed to practice in the United States and in good standing with a bar of the highest court of a U.S. state or territory can represent you in a trademark matter at the USPTO and sign responses. Canadian trademark attorneys and agents who are reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) can also sign responses, but the USPTO will only correspond with a U.S.-licensed attorney. Be advised that employing someone to represent you who is not authorized to practice before the USPTO in connection with your trademark application could put your application and any resulting registration at risk.
A nonfinal office action raises a legal problem about your application for the first time. You must respond to this letter within six months from the date it issues. If your response satisfies each legal problem in the nonfinal office action and doesn’t raise any new problems, your application will proceed toward registration. If your response doesn’t satisfy each problem and doesn’t raise any new problems, you will be sent a final office action. If your response raises a new problem, the examining attorney will send you a new nonfinal office action to address the new problem and indicate any outstanding refusals and/or requirements previously raised.
We review suspended applications every six months to determine whether suspension is still appropriate. However, you can notify the examining attorney at any time if you think suspension is no longer necessary. For example, if we suspended your application because of a conflicting trademark in an earlier-filed application and you check the Trademark Status and Document Retrieval (TSDR) system and find that the other application was “abandoned,” you can call or email the examining attorney and request your application be removed from suspension.
The United States Patent and Trademark Office (USPTO) may issue several different types of office actions about your trademark application. This page focuses on office actions that trademark examining attorneys send during the application process.
Typically, the examining attorney will issue a suspension inquiry only after your application has been suspended for six months or more. Suspension inquiries are also issued when information relevant to the suspension is not available to us in the USPTO databases. You must respond to this inquiry within six months of when it issues.
When you receive a final office action, it’s your last opportunity to file a response during the application process. If your response satisfies each legal problem in the final office action, your application will proceed toward registration.