709 Interviews

A discussion between the applicant or applicant’s qualified practitioner and the examining attorney in which the applicant presents matters for the examining attorney’s consideration is considered an interview. An interview can be conducted in person, by telephone, or by e-mail. See TMEP §§304–304.09 regarding e-mail.

The application will not normally be processed out of turn as a result of the interview, and the interview does not extend the deadline for response to an outstanding Office action.

The examining attorney may not discuss inter partes questions with any of the interested parties. See TMEP §1801.

709.01 Personal Interviews

Personal interviews with examining attorneys concerning applications and other matters pending before the USPTO are permissible on any working day and must be in the office of the respective examining attorney, within office hours that the examining attorney may designate.

Personal interviews must be arranged in advance, preferably by fax, e-mail, or telephone. This will ensure that the assigned examining attorney will be available for the interview at the scheduled time and will have an opportunity to review the application record. The unexpected appearance of a qualified practitioner or applicant requesting an interview without any previous notice to the examining attorney is not appropriate.

An interview should be conducted only when it could serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant. Interviews should not extend beyond a reasonable time.

The examining attorney should not hesitate to state that matter presented for consideration during the interview requires further research, if this is the case. Furthermore, the examining attorney may conclude an interview when it appears that no common ground can be reached.

During an interview with a pro se applicant who is not familiar with USPTO procedure, the examining attorney may in his or her discretion make suggestions that will advance the prosecution of the application, but these interviews should not be allowed to become unduly long.

When an agreement is reached during an interview but it is not possible to resolve all issues through an examiner’s amendment, the examining attorney should enter a Note to the File in the record concerning the agreement, and request that the applicant incorporate the agreement in its response.

Sometimes, the examining attorney who conducted the interview is transferred, resigns, or retires, and examination of the application is taken over by another examining attorney. If there is an indication in the record that an interview was held, the new examining attorney should endeavor to ascertain whether any agreements were reached during the interview. The new examining attorney should take a position consistent with agreements previously reached, unless doing so would be a clear error (see TMEP §706.01).

Except in unusual situations, no interview on the merits is permitted after the brief on appeal is filed, or after an application has been forwarded for publication or issue.

709.02 Persons Who May Represent Applicant in an Interview

In general, interviews are not granted to persons who lack proper authority from the applicant. See TMEP §§602–602.03(e) regarding persons who may represent an applicant before the USPTO in a trademark matter, and TMEP §§611.06–611.06(h) for information on persons with legal authority to bind various types of juristic applicants.

The examining attorney may request proof of a person’s authority if there is any reason to suspect that the person is not, in fact, a qualified practitioner who is authorized to represent the applicant. 37 C.F.R. §2.17(b)(2).

For an interview with an examining attorney who does not have signatory authority, arrangements should be made for the presence of an examining attorney who does have such authority and who is familiar with the application, so that an authoritative agreement may be reached, if possible, at the time of the interview.

USPTO employees are forbidden to engage in oral or written communication with a disbarred, suspended, or excluded practitioner (see TMEP §608.02), unless the practitioner is the applicant.

Requests for interviews from third parties are inappropriate and should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy. See TMEP §1801.

709.03 Making Substance of Interview of Record

The substance of an interview must always be made of record in the application, since the action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191. This should be done promptly after the interview while the matters discussed are fresh in the minds of the parties.

If possible, agreements reached in the interview should be incorporated in an examiner’s amendment or priority action. Otherwise, to ensure that any agreements reached at an interview will be implemented, and to avoid subsequent misunderstanding, the examining attorney should include, in a Note to the File, a list of the issues discussed and indicate whether any agreement was reached. See TMEP §709.04 for further information about Notes to the File.

The applicant or the applicant’s qualified practitioner may also make the substance of an interview part of the record by incorporating a summary of the interview in the applicant’s response to the Office action. If there is any disagreement between the examining attorney and the applicant as to the substance of the interview, the written record governs. 37 C.F.R. §2.191.

709.04 Telephone and E-Mail Communications

Examining attorneys should initiate telephone or e-mail communications (i.e., "informal communications") whenever possible to expedite prosecution of an application. Similarly, applicants and qualified practitioners may telephone or e-mail examining attorneys, if they feel that a telephone call or e-mail will advance prosecution of an application. See TMEP §709.05 regarding guidelines for informal communications. Therefore, all documents filed in connection with the application should include the telephone number of the applicant or the applicant’s qualified practitioner.

The examining attorney must respond to telephone calls and e-mail messages within a reasonable time, normally the same working day and never later than the next working day.

Generally, the examining attorney who prepared the action, and not the supervisory or reviewing examining attorney, should be the person contacted by telephone or e-mail. However, a non-signatory examining attorney must secure proper authorization from the managing attorney, senior attorney, or reviewing examining attorney before approving an amendment.

The action of the USPTO is based exclusively on the written record and all relevant communications, including informal communications, must be made part of the record. 37 C.F.R. §2.191. Therefore, the examining attorney must use an examiner’s amendment (see TMEP §§707–707.03), or priority action (see TMEP §§708–708.05), upload all relevant e-mail communications, and enter a Note to the File regarding issues discussed by telephone. See TMEP §709.03.

Notes to the File must not summarize arguments or legal conclusions. Rather, the Note to the File must merely list the issues discussed and indicate any agreement that may have been reached. If no agreement was reached, that should be noted also.

If an examining attorney does not respond to a telephone or e-mail message within two business days, the applicant may telephone the law office manager or supervisor. Contact information is available on the USPTO website at http://www.uspto.gov/trademarks/contact_trademarks.jsp.

709.05 Informal Communications

An applicant may conduct informal communications with an examining attorney regarding a particular application by telephone, e-mail (see TMEP §§304.01-304.02 ), or fax. Informal communications should be conducted only if they serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant. For example, an applicant may telephone or send an e-mail regarding:

Questions regarding an outstanding Office action that do not constitute a response;
Authorization to issue an examiner’s amendment or priority action (see TMEP §§707.01, 708.01);
Objection to an examiner's amendment (see TMEP §§707, 707.02);
Notification of termination of a cancellation proceeding that is the basis for suspension (see TMEP §716.02(a)); or
A request to arrange a convenient time to speak by telephone.

Informal communications may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal. The examining attorney should advise the applicant to file a formal response for consideration of arguments regarding any substantive refusal.

If the examining attorney determines that continuing (or prolonged) informal communications by telephone or e-mail will not serve to further develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant, he or she must advise the applicant to file a formal response.

An informal communication does not constitute a response to an outstanding Office action and does not extend the deadline for response.

Relevant e-mail and phone communications must be made part of the record, because the USPTO uses them in decision making, and anything used in decision making must be made of record. 37 C.F.R. §2.191. Therefore, the examining attorney must upload all relevant e-mail communications and must enter a Note to the File regarding issues discussed by telephone. See TMEP §709.04 for further information about Notes to the File.

The applicant should monitor the status of an application after an informal communication to avoid abandonment. For example, if the applicant expects an examiner’s amendment or priority action to be issued and the status does not show that it has been sent, the applicant should promptly contact the examining attorney to inquire. Reviewing the status may be done through the Trademark Status and Document Retrieval ("TSDR") database at http://tsdr.uspto.gov/, or by calling the Trademark Assistance Center ("TAC") at (571) 272-9250 or (800) 786-9199. See TMEP §§108.03 and 1705.05 regarding the duty to monitor the status of an application in cases where a notice or action from the USPTO is expected.

709.06 Interviews Prior to Filing Application

No interviews are permitted before the filing of an application. If a party has general questions about how to file an application, he or she can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. See TMEP §108.02.

USPTO employees cannot give advice on trademark law. It is inappropriate for USPTO personnel to give legal advice, to act as a counselor for individuals, or to recommend a qualified practitioner. 37 C.F.R. §2.11.