1904.03   Notice of Refusal  

1904.03(a)   Notice Must Be Sent Within 18 Months  

Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit:

  • (1) A notification of refusal based on examination;
  • (2) A notification of refusal based on the filing of an opposition; or
  • (3) A notification of the possibility that an opposition may be filed after expiration of the 18-month period.  If the USPTO notifies the IB of the possibility of opposition, it must send the notification of refusal within 7 months after the beginning of the opposition period, or within one month after the end of opposition period, whichever is earlier.

Section 68(c) of the Trademark Act, 15 U.S.C. §1141h(c); Article 5.

If the USPTO does not send a notification of refusal of the request for extension of protection to the IB within 18 months, the request for extension of protection cannot be refused.  Section 68(c)(4) of the Trademark Act; Article 5(5); Common Reg. 17(2)(iv).  If the USPTO sends a notification of refusal, no grounds of refusal other than those set forth in the notice can be raised more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO.  Section 68(c)(3) of the Trademark Act.

If upon re-examination the examining attorney determines a new ground of refusal exists, a second Office action raising this new ground may be issued only if time remains in the 18-month period.  In such a case, the examining attorney must contact the MPU upon issuance of the Office action, so that a notification of the new ground of refusal can be sent to the IB.

1904.03(b)   Requirements for Notice of Refusal

A final decision is not necessary; a provisional refusal is sufficient to meet the 18-month requirement.  Under Common Reg. 17, a notice of provisional refusal must be dated and signed by the USPTO and must contain:

  • The number of the international registration, preferably accompanied by an indication of the mark;
  • All grounds of refusal;
  • If there is a conflicting mark, the filing date, serial number, priority date (if any), registration date and number (if available), name and address of the owner, reproduction of the conflicting mark, and list of goods/services;
  • A statement that the provisional refusal affects all the goods/services, or a list of the goods/services affected;
  • The procedures and time limit for contesting the refusal, i.e., period for response or appeal of the refusal, and the authority with which an appeal can be filed;
  • If the refusal is based on an opposition, the name and address of the opposer.

Common Reg. 17(2).

The IB will record the provisional refusal in the International Register and transmit it to the holder of the registration.  Article 5(3); Common Reg. 17(4).

1904.03(c)   §66(a) Applicant Must Respond to Notification of Refusal

A holder of an international registration who applies for an extension of protection to the United States will receive an initial notification of refusal through the IB.  The holder must respond directly to the USPTO.  The holder may be represented by an attorney, but only if such attorney meets the requirements of 37 C.F.R. §11.14 (see TMEP §§602 et seq.).  Standard examination procedures are used to examine §66(a) applications.  15 U.S.C. §1141h.

A foreign attorney who does not meet the requirements of 37 C.F.R. §11.14 cannot represent the applicant before the USPTO or sign a response to an Office action on behalf of the applicant.  37 C.F.R. §11.5(b)(2).  See TMEP §§602.03 et seq., 611.02, 712.01, and 712.03.

1904.03(d)   Refusal Pertaining to Less than All the Goods/Services  

If a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark may be protected for the remaining goods/services, even if the holder does not respond to the notification of refusal.  Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C. §§1141h(c) and 1141i(a), provide that an application under §66(a) of the Trademark Act is automatically protected with respect to any goods or services for which the USPTO has not timely notified the IB of a refusal by either ex officio examination or opposition.

Accordingly, 37 C.F.R. §2.65(a) provides that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to file a complete response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services.  See TMEP §718.02(a) for further information about partial abandonment.

1904.03(e)   Confirmation or Withdrawal of Provisional Refusal  

If the USPTO has sent a notice of provisional refusal, once the procedures regarding the refusal are complete, the USPTO must notify the IB that:

  • (1) protection is refused for all goods/services;
  • (2) the mark is protected for all goods/services; or
  • (3) the mark is protected for some specified goods/services.

Common Reg. 17(5).  The IB will record this notice and send it to the holder.

1904.03(f)   Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection

When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio.  The IB will also correct an error at the request of the holder or the Office of Origin.  Common Reg. 28(1).  If the IB notifies the USPTO of a correction with regard to an international registration, the USPTO may declare in a notification to the IB that protection cannot, or can no longer, be granted to the international registration as corrected.  Such a declaration must be sent to the IB within 18 months of notification of the correction.  This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international registration as originally notified to the USPTO.  Common Reg. 28(3).

Unlike limitations, which affect only the listing of goods and/or services, a correction can involve any element of the international registration, including the mark for which registration is sought, the effective filing date, or the claim of priority.  Corrections are not to be treated as amendments from the applicant.  They are also not responses to Office actions and do not toll the statutory response period.

If the MPU determines that a correction does have effect in the United States and does not require review by the examining attorney, the correction will be entered into the USPTO’s database.  The MPU trademark specialist will update the prosecution history in TRAM to reflect that the processing of the correction has been completed.

If the MPU determines that review by the examining attorney is required, the MPU will notify the examining attorney of the correction and the examining attorney will determine whether the correction raises any new grounds for refusal or basis for a new requirement.  If the examining attorney determines that the correction raises new issues, he or she must issue an Office action refusing registration or making the necessary requirements and indicating the reasons why, supported by evidence, where appropriate.  The examining attorney must also notify the MPU that a new Office action has been issued, and the MPU will ensure that the IB is notified of the new grounds for refusal.  The applicant may argue against the refusal or requirement, and, if such refusal or requirement is made final, file an appeal to the Trademark Trial and Appeal Board or petition to the Director pursuant to 37 C.F.R. §2.146.

See also TMEP §1904.14 regarding corrections to registered extensions of protection, and TMEP §1906.01(f) for information about filing requests for correction with the IB.

1904.03(g)   Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection

Limitation Due to Partial Cancellation of International Registration

When the USPTO receives notification from the IB that the international registration has been cancelled in part due to the ceasing of effect of the basic registration, the USPTO will partially cancel the pending request for extension of protection by limiting or removing the cancelled goods and/or services from the USPTO’s Trademark database.  15 U.S.C. §1141j(a); 37 C.F.R. §7.30.  The MPU trademark specialist will determine what, if any, goods and/or services remain extended to the United States and narrow the listing of goods and/or services accordingly.

Voluntary Limitation by Holder of International Registration

Upon receipt of notification from the IB that a voluntary limitation of the list of goods/services may affect an extension of protection to the United States, the USPTO may declare that the limitation has no effect.  Such a declaration must be sent to the IB within 18 months of notification of the limitation.  The USPTO will indicate the reasons why the limitation has no effect, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal.  Common Regs. 27(5)(a)-(c).

If the MPU determines that a limitation does have effect in the U.S., the limitation shall be entered into the Trademark database with respect to the goods/services as identified at the time of receipt of the notification of limitation.

If the MPU determines that review by the examining attorney is required, the MPU will notify the examining attorney, and the examining attorney will determine whether the limited goods/services are within the scope of the identification of goods/services as originally identified in the §66(a) application.  For example, if the request for extension of protection originally lists goods as "clothing" in International Class 25, and the applicant submits a response to an Office action proposing to amend such goods to "clothing, namely pants, shirts, and dresses," and the USPTO later receives a voluntary limitation that lists the goods as "clothing for women," the consideration of scope is against the original identification of "clothing."  If it is determined that the limitation is not an expansion of the scope of the original listing, the limited goods/services will then be considered in light of any interim amendments proposed by the applicant during prosecution of the application.  In the example above, the proposed wording "clothing, namely, pants, shirts, and dresses" will be further limited to "clothing for women, namely, pants, shirts, and dresses."  

If the examining attorney determines that the limitation is not acceptable (e.g., because he or she determines that the change requested results in an extension rather than a limitation of the goods/services), he or she must issue an Office action refusing the limitation and indicating the reasons why the limitation is unacceptable.  If the listing of goods/services is not an expansion of the original goods/services but is itself indefinite by USPTO standards (e.g., "clothing for women"), the examining attorney must issue a new requirement for a sufficiently definite identification and may supersede any previously issued requirement to the extent it remains outstanding at the time of examination of the limitation.  If the examining attorney issues a new Office action relating to the limitation of goods/services, he/she must also notify the MPU, and the MPU will ensure that the IB is notified when a limitation is found to have no effect in the United States.  The applicant may argue against the refusal of the limitation, and, if such refusal is made final, file an appeal to the Trademark Trial and Appeal Board or petition to the Director pursuant to 37 C.F.R. §2.63(b).

If an Office action requiring only that the identification be amended is outstanding, it is possible that a limitation notice processed before the end of the response period would resolve the issue.  If the examining attorney determines that the identification proposed in the limitation is acceptable and puts the application in condition for approval for publication, the examining attorney may issue a no-call examiner’s amendment that acknowledges receipt of the limitation and states that the requirement for a more definite identification is satisfied and may then approve the application for publication.

If a limitation results in the deletion of all goods/services identified in the §66(a) application, the application will be abandoned.

See also TMEP §1906.01(e) for information about filing requests to record limitations with the IB, and TMEP §1904.15 regarding limitations in the list of goods/services in registered extensions of protection.