1715.04(c) Action by Examining Attorney After Publication
If the Deputy Commissioner determines that evidence submitted with a letter of protest filed on the date of publication or after publication establishes a prima facie case for refusal on the identified ground(s) and should be included in the record of the protested application, the examining attorney must issue the refusal or requirement, except in unusual circumstances. The examining attorney must inform the applicant that such evidence was entered after submission of a letter of protest. If the notice of allowance was cancelled, the examining attorney must so inform the applicant. Before issuing the Office action with the refusal or requirement, the examining attorney must have the action reviewed by his or her managing attorney.
However, the inclusion of evidence submitted with the letter of protest into the application record is not a final determination by the USPTO that registration must be refused. In unusual circumstances, the examining attorney may discover additional evidence that would justify approval of the application for registration after acceptance of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement. In such a case, if the examining attorney later determines that the mark should be approved for issuance of a registration or notice of allowance, the examining attorney must obtain permission from the Office of the Deputy Commissioner for Trademark Examination Policy before approving the application for issue. After conferring with that Office, an appropriate Note to the File must be entered in the record.