714.05 Delineating New Issues Requiring Issuance of Nonfinal Action

It is sometimes difficult to determine what constitutes a new issue requiring a new nonfinal action, rather than a final action, after receipt of a response. See TMEP §§714.05(a)–714.05(f) regarding the propriety of issuing a final action in specific situations, and TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after date on which the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).

714.05(a) Unacceptable Amendment Proposed By Applicant

If an applicant submits an unacceptable amendment in response to a refusal or requirement issued by the examining attorney, the amendment generally does not raise a new issue.

If the applicant submits an amendment that is not offered in response to a refusal or requirement, and the amendment is not acceptable, the examining attorney generally must issue a new nonfinal action with a six-month response clause, addressing the issues raised by the amendment and continuing all other refusals and requirements. The following are examples of amendments that would require a new nonfinal action:

(1) Amendments to the drawing, unless the examining attorney had previously required that the drawing be amended or the amendment is acceptable and does not raise other issues;
(2) Amendments to the drawing that materially alter the mark, if the examining attorney had required a new drawing because the original drawing was of poor quality that could not be reproduced, but had not previously raised the issue of material alteration. See TMEP §714.05(c) regarding advisory statements;
(3) Amendments to the Supplemental Register and amendments to assert acquired distinctiveness under 15 U.S.C. §1052(f), unless the amendment overcomes an outstanding refusal or requirement or is irrelevant to an outstanding refusal (see TMEP §714.05(a)(i)).

The following are examples of amendments that do not require a new nonfinal action:

(1) An amendment to disclaim the entire mark, which never raises a new issue because an entire mark may not be disclaimed. See TMEP §1213.06.

(2) An amendment withdrawing a prior amendment that was submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer) does not raise a new issue.

Moreover, evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a nonfinal action. See In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm’r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for same reason as the original specimens).

714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness

If registration is refused under §2(e)(1), §2(e)(2), or §2(e)(4), of the Trademark Act, 15 U.S.C. §§1052(e)(1), 1052(e)(2), 1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter (e.g., product or container configurations (see TMEP §§1202.02(b)(i), (ii)), color marks (see TMEP §1202.05(a)), or marks that comprise matter that is purely ornamental (see TMEP §1202.03), an amendment to the Supplemental Register or to claim acquired distinctiveness under 15 U.S.C. §1052(f) generally presents a new issue. This is true even if the examining attorney previously issued an advisory statement indicating that the examining attorney believed the mark to be unregistrable on the Supplemental Register or under §2(f). If the examining attorney determines that the amendment does not overcome the refusal, the examining attorney should issue a new nonfinal refusal of registration with a six-month response clause.

In an application based on §1(b), the applicant may respond to one of the refusals listed above by filing an allegation of use that complies with the minimum requirements of 37 C.F.R. §2.76(e), together with an amendment to the Supplemental Register or an amendment seeking registration under §2(f). If such an amendment could overcome the refusal, but the allegation of use fails to establish use of the mark in commerce or, in combination with other evidence of record, fails to demonstrate use of the subject matter as a mark, the examining attorney must issue a new nonfinal action refusing registration. See TMEP §§904.07(a), (b). The examining attorney must also advise the applicant as follows:

If the applicant submitted an amendment to the Supplemental Register, the examining attorney must advise the applicant that: (1) the amendment to the Supplemental Register is acceptable; (2) the refusal is moot; and (3) if the applicant amends the application back to §1(b) in response to the new refusal, the amendment to the Supplemental Register must also be withdrawn and the original refusal will be reinstated or made final, as appropriate. See TMEP §§714.05(a), 715.03(a)(2)(A), and 715.04(a) regarding withdrawal of a prior amendment submitted in a request for reconsideration.
If the applicant submitted an amendment seeking registration under §2(f), the examining attorney must advise the applicant that: (1) the amendment to §2(f) is acceptable, (2) the refusal is moot, and (3) if the §2(f) amendment is based solely on five years’ use and the applicant amends the application back to §1(b) in response to the new refusal, the §2(f) amendment must also be withdrawn and the original refusal will be reinstated or made final, as appropriate. See TMEP §§714.05(a), 715.03(a)(2)(A), and 715.04(a) regarding withdrawal of a prior amendment submitted in a request for reconsideration.

However, if the applicant responds to one of the refusals listed above by submitting an amendment to the Supplemental Register, but does not concurrently file an allegation of use that complies with the minimum requirements of 37 C.F.R. §2.76(e), the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. See 37 C.F.R. §2.75(b); TMEP §1102.03. If the applicant responds to the refusal by filing a proper allegation of use, the examining attorney will proceed as noted above.

See TMEP §816.04 regarding refusal of registration after an amendment to the Supplemental Register, TMEP §1212.02(h) regarding refusal of registration after an applicant submits a claim of acquired distinctiveness under §2(f), and TMEP §1212.09(a) regarding a §2(f) claim in a §1(b) application based on prior use.

If an amendment to the Supplemental Register or to claim acquired distinctiveness under §2(f) is irrelevant to the outstanding refusal(s), and there are otherwise no new issues, the examining attorney may issue a final action. For example, if registration is refused under Trademark Act §2(a), §2(b), §2(d), §2(e)(3), or §2(e)(5), an amendment to the Supplemental Register or a claim of distinctiveness under §2(f) does not raise a new issue and does not preclude the examining attorney from issuing a final refusal. See In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (noting that an amendment to the Supplemental Register in response to a §2(a) refusal does not raise a new issue). Likewise, in a §66(a) application, an amendment to the Supplemental Register does not raise a new issue, because a mark in a §66(a) application is not eligible for registration on the Supplemental Register. See 15 U.S.C. §1141h(a)(4). Thus, an amendment to the Supplemental Register cannot overcome the refusal.

See TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.

714.05(a)(ii) Amendment of Identification of Goods/Services

If the applicant responds to a nonfinal Office action requiring an amendment to the identification of goods/services, and the examining attorney determines that the identification is still unacceptable, generally the examining attorney must issue a final requirement to amend the identification of goods/services. There are only two exceptions to this rule:

(1) If the amended identification is broader in scope than the original identification, and the prior Office action failed to advise the applicant that amendments broadening the identification are prohibited under 37 C.F.R. §2.71(a), the examining attorney may not issue a final Office action.
(2) If the amended identification sets forth goods/services in multiple classes, but the applicant has not submitted all the requirements for a multiple-class application (e.g., specimens and fees for all classes), and the prior Office action failed to advise the applicant that the missing elements were required, the examining attorney may not issue a final Office action. See TMEP §§1403–1403.01 regarding the requirements for multiple-class applications.

If the examining attorney issues a nonfinal action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite, but is otherwise unacceptable (e.g., because it includes a registered trademark or service mark (see TMEP §1402.09)), this is not considered a new issue, and the examining attorney must issue a final Office action requiring amendment of the identification.

However, if the examining attorney issues a final action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but is otherwise unacceptable (e.g., because it includes a registered mark), the examining attorney should treat the response as incomplete, and grant the applicant additional time to cure this deficiency, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b) for further information about granting an applicant additional time to perfect an incomplete response. Examining attorneys are encouraged to try to resolve these issues by examiner’s amendment.

714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application that Has Matured Into Registration

The examining attorney must issue a new nonfinal action when first refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), as to an earlier-filed application that has registered, even if the applicant had been advised of the existence of the earlier-filed application in a prior Office action. See TMEP §716.02(c) regarding procedure when application is suspended pending the disposition of more than one earlier-filed conflicting application.

In a §66(a) application, a new nonfinal refusal under §2(d) may be issued more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO, provided that the USPTO had notified the IB of the conflicting application prior to expiration of the 18-month period. See TMEP §1904.03(b).

714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement

Except as provided in TMEP §714.05(a)(ii), an advisory statement in an Office action indicating that a refusal or requirement will be issued if specified circumstances arise cannot serve as the foundation for issuing a final requirement or refusal in the next action. To establish the foundation for issuing a final refusal or requirement in the next Office action, an initial requirement or refusal must relate to matter that is of record at the time of the action.

714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal

Consent Agreement. If an applicant files a consent agreement in response to a nonfinal refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney should issue a final refusal, assuming the application is otherwise in condition for final refusal.

If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney should issue a new final refusal, i.e., an "Examiner’s Subsequent Final Refusal," with a six-month response clause. However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement.

Assertion of Unity of Control. If an applicant asserts unity of control (see TMEP §1201.07) in response to a nonfinal refusal under §2(d), and the examining attorney determines that unity of control has not been established, the examining attorney should issue a final refusal, assuming that the application is otherwise in condition for final refusal.

If an applicant asserts unity of control in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established, the examining attorney should issue an "Examiner’s Subsequent Final Refusal," with a six-month response clause.

714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce

If an applicant submits a substitute specimen in response to a nonfinal refusal for failure to show use of the mark in commerce, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to show use in connection with the goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney must issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.

If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal, assuming the application is otherwise in condition for final refusal, because the substitute specimen does not present a new issue. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark in commerce, remains the same.

See TMEP §904.07(a) for further information about refusal of registration because the specimen does not show the mark used in commerce.

714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark

If an applicant submits a substitute specimen in response to a nonfinal refusal for failure to show the applied-for mark functioning as a mark, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney must issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.

See TMEP §904.07(b) for further information about refusal of registration because the specimen does not show the applied-for mark functioning as a mark.

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