1201.02 Premature Final
Trademark Act § 12(b), 15 U.S.C. § 1062(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.
A refusal of registration or an insistence upon a requirement may be made final by the examining attorney only on the first or any subsequent reexamination or reconsideration of an application; a refusal or requirement may not be made final in a first action. [ Note 1.]
An action should not be stated to be final until the applicant has had at least one opportunity to reply to each ground of refusal, and each requirement, asserted by the examining attorney. [ Note 2.] Moreover, a final action should not be issued until all matters but for those that are to be the subject of the final action have been resolved, and a clear issue has been developed between the examining attorney and the applicant with respect to each remaining ground of refusal or requirement. [ Note 3.] As stated in TMEP § 714.03:
No refusal or requirement may be made final, even if it is a repeated refusal or requirement, unless the entire action is made final. Thus, if the examining attorney makes a new refusal or repeated requirement in a second or subsequent action, any previously issued refusals or requirements may not be made final, but instead should be maintained.
However, it is not considered a new refusal if the examining attorney has a different rationale for a previously made refusal or requirement. [ Note 4.]
Examples of new issues that would preclude the issuance of a final action until the applicant has had an opportunity to respond are amendments to the drawing, [ Note 5.] and amendments to the Supplemental Register or to assert acquired distinctiveness. [ Note 6.] However, if the amendment is irrelevant to an outstanding refusal or is merely cumulative, it is not deemed to raise a new issue. [ Note 7.]
If an applicant believes that a refusal to register, or the insistence upon a requirement, has been made final prematurely, the applicant may raise the matter by request to the examining attorney for reconsideration or by contacting the managing attorney or senior attorney in the examining attorney’s law office. If the examining attorney does not withdraw the finality, the applicant may file a petition under 37 C.F.R. § 2.146. [ Note 8.] If, prior to hearing from the examining attorney, managing attorney or senior attorney, or prior to a decision on a petition, an applicant chooses to file a notice of appeal in order to preserve its rights to an appeal, the applicant should advise the Board that it believes that the final action is premature or that there is a pending petition on this issue. If the notice of appeal is filed electronically through ESTTA, the applicant should also file through ESTTA, using the "file a document in a Board proceeding" menu, and checking the box for "Other Motions/Papers," an additional paper advising the Board that the final action is premature or that there is a pending petition on this issue. In the rare circumstance that the notice of appeal is submitted as a paper filing, the applicant should so advise the Board in the notice of appeal. See TBMP § 1202.03 regarding the filing of a notice of appeal.
That a final action is premature is not a ground for appeal to the Board. [ Note 9.] However, if it comes to the attention of the Board, when an appeal has been filed, that the final action was issued prematurely, the Board will vacate the institution order and will forward the application to the examining attorney for appropriate action. That action is generally that the finality of the examining attorney’s action is withdrawn and a new nonfinal action is issued. The Board letter will generally indicate that if the examining attorney finds, upon consideration of the applicant’s response to the new nonfinal action, that the application is in condition for publication (or for registration, if the application seeks registration on the Supplemental Register), the applicant may request a refund of the previously submitted appeal fee; and that if the examining attorney ultimately issues a new final action, and the applicant wishes to appeal, a new notice of appeal should be filed, in which the applicant requests that the previously submitted appeal fee should be applied to the appeal.
NOTES:
1. See Trademark Act § 12(b), 15 U.S.C. § 1062(b); 37 C.F.R. § 2.63(b); TMEP § 714.01 and TMEP § 1501.
2. TMEP § 714.01. See also In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1154 (TTAB 1992); In re Pierce Foods Corp., 230 USPQ 307, 308 n.1 (TTAB 1986). See also In re Jimmy Moore LLC, 119 USPQ2d 1764, 1769 (TTAB 2016) (examining attorney "instead of just denying the request for reconsideration" should have "issued a new final Office action") (quoting Petition Decision (Comm’r June 22, 2015)).
3. TMEP § 714.03. See also In re Dietrich, 91 USPQ2d 1622, 1624 (TTAB 2009) (to the extent examining attorney attempted to reject Trademark Act § 2(f) claim for the first time in appeal brief, rejection untimely and not considered); In re Moore Business Forms Inc., 24 USPQ2d 1638, 1638 n.2 (TTAB 1992) (ground for refusal first raised in examining attorney’s appeal brief given no consideration).
4. See In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Paper Doll Promotions Inc., 84 USPQ2d 1660, 1665 (TTAB 2007). See also In re Fantasia Distribution, Inc., 120 USPQ2d 1137, 1144 n.21 (TTAB 2016) (examining attorney’s argument about evidence of copying not waived because, while not specifically addressed in Office action, examining attorney nonetheless wrote that "the evidence and arguments provided are not sufficient to support the claim" of acquired distinctiveness).
5. See In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1154 (TTAB 1992).
6. See In re Audio Book Club Inc., 52 USPQ2d 1042, 1043 n.2 (TTAB 1999). See also TMEP § 714.05 et seq. But see In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015) (new nonfinal action not necessary when application was refused on Principal Register as functional and application amended to Supplemental Register).
7. See In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015) (amendment to Supplemental Register in response to a refusal of registration on ground of functionality does not raise a new issue); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (amendment to the Supplemental Register in response to a refusal of registration under Trademark Act § 2(a) does not raise a new issue); In re GTE Education Services, 34 USPQ2d 1478, 1480 (Comm’r 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for same reason as the original specimens). See also TMEP § 714.05, TMEP § 714.05(a), TMEP § 714.05(a)(i) and TMEP § 714.05(a)(ii).
8. See TMEP § 714.06.
9. See TMEP § 714.06.