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.

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.  15 U.S.C. §1141h(c)(4); Article 5(5); Regs. Rules 17(2)(iv), 18(1)(a)(iii).  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.  15 U.S.C. §1141h(c)(3).

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 Regulations Rule 17(2), 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.

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

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

A holder of an international registration who applies for an extension of protection to the United States (also known as the §66(a) applicant) will receive an initial notification of refusal through the IB.  The holder must respond directly to the USPTO, not the IB.    Standard examination procedures are used to examine §66(a) applications.  15 U.S.C.  §1141h.

See TMEP §1904.02(h) regarding Office actions and responses in §66(a) applications and §1904.02(i) regarding who can correspond with the USPTO in a §66(a) application.

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), 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)(1)  provides that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to respond, or respond completely, 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.

Regs. Rule 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.  Regs. Rule 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.  Regs. Rule 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 Trademark database.  The MPU trademark specialist will update the prosecution history in the Trademark database 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 §1906.01(f) for information about filing requests for correction with the IB.

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

1904.03(g)(i)    Limitations to Goods/Services

Limitation Filed Separately from §66(a) Application

Upon receipt of notification from the IB that a limitation may affect a §66(a) application, the USPTO may declare that the limitation has no effect in whole or in part.  Such declaration must be issued promptly by the examining attorney to ensure that the IB will be notified within 18 months, as required by Regulations Rules 27(5)(a)-(c).

The MPU reviews all separately filed limitations and will enter any amendments to the listing of goods and services, as appropriate. Once completed, MPU will notify the examining attorney that a limitation was received, what changes were made to the listing of goods/services by MPU, if any, and the steps the examining attorney needs to take to review and process the limitation. The examining attorney will then review the limitation for definiteness and scope.

The examining attorney first will compare the limited goods/services to the basic goods/services in the §66(a) application and then, if any accepted interceding amendments or limitations have been given effect, to the goods/services set forth in the operative listing of goods/services to determine whether some or all of the limitation would result in an impermissible broadening or extension of the goods/services (see TMEP §1402.06(a)–(b)). See generally Regs. Rules 25(1)(a)(ii), 27(5)(a). Scope is generally determined by the ordinary meaning of the wording as well as the international class assigned by the IB. See TMEP §§1402.07(a), 1904.02(c)-(c)(iv).  

If the examining attorney determines that some or all of the goods/services listed in the limitation exceed the scope of the basic goods/services, the examining attorney must issue an Office action stating: (1) that the limitation has no effect in the United States, in whole or in part; (2) the particular goods/services that are not being given effect; (3) the reasons for the finding (i.e., an explanation of why the relevant goods/services in the limitation are considered a broadening of the basic goods/service); (4) the corresponding essential provisions of the law; and (5) whether the declaration is subject to review or appeal. See Regs. Rule 27(5)(a)-(c). The Office action should also set forth the goods/services as identified in the application record prior to notification of the limitation as well as goods/services listed in the limitation that do not exceed the scope of the basic goods/services, if any. The examining attorney also must notify the MPU that a new issue is being raised, and the MPU will send a copy of the Office action to the IB to notify them that the limitation has no effect in the United States, in whole or in part.

Additionally, if any goods/services in the limitation exceed the scope of the operative listing of goods/services in the application, the examining attorney must advise the applicant that the item or items that exceed the scope are unacceptable. See 37 C.F.R. §§2.32(a)(6), 2.71(a), 7.25(a); TMEP §§1012, 1402.06-1402.06(b), 1402.07. In such a case, the applicant is not bound by the scope of the relevant goods/services in the limitation that exceed the scope of the application, but rather by the goods/services of the identification that were operative prior to the date the limitation was received. 37 C.F.R. §§2.71(a), 7.25(a); TMEP §1904.02(c)(iv).

Further, if any of the goods/services in the limitation are not an expansion of the basic goods/services but are indefinite by USPTO standards (e.g., "clothing for women") (see TMEP §§1402.01, 1402.03), the examining attorney must issue a new requirement for a sufficiently definite identification. See TMEP §1904.02(c)(iv). The new requirement will supersede any previously issued requirement that is outstanding at the time the limitation is examined.

The applicant may respond to the examining attorney’s Office action by amending the limited goods/services to goods/services within the scope of the operative goods/services, if appropriate, or by deleting the limited goods/services that have been refused. However, once an application has been expressly amended to delete goods/services, those items generally may not be reinserted. TMEP §1402.07(e).

The applicant may also submit arguments in favor of accepting the goods/services that have been refused. If the issue is maintained and made final, the applicant may file an appeal to the Trademark Trial and Appeal Board pursuant to 37 C.F.R. §2.141 and §2.142  or a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2)(iii).

Alternatively, the applicant may overcome the refusal of the limited goods/services by filing a new limitation with the IB listing goods/services that are within the scope of the operative goods/services. If the applicant chooses to file a new limitation, it must notify the examining attorney in a timely filed response to avoid abandonment of the §66(a) application. The response should indicate that another limitation has been filed with the IB, which the applicant believes will resolve the issue, should request suspension, and should include a copy of the limitation filed with the IB. See TMEP §716.02(g). The examining attorney will then suspend action awaiting receipt of the notification of the limitation. If notification of the limitation is not received within six months of the issuance of the suspension, the examining attorney must inquire as to the status of the limitation. See TMEP §§716.02(g), 716.05.

If an identification proposed in a limitation resolves the requirements in a previously issued Office action and places the application in condition for approval for publication, the examining attorney should issue a no-call examiner’s amendment that acknowledges receipt of the limitation and states that the requirement for a more definite identification has been satisfied. After issuing the no-call examiner’s amendment, the examining attorney will approve the application for publication.

The following examples of limitations filed separately from the §66(a) application illustrate the procedures discussed above:

Example: The §66(a) application identifies the basic goods as "metal materials for building and construction" in International Class 6. The USPTO receives a limitation filed after the §66(a) application is filed and before an Office action is issued, which indicates that the limited goods are "metal materials for residential building and construction." While these limited goods are not sufficiently definite under existing USPTO identification policy, they are within the scope of the basic goods and are deemed to have effect in the United States. Therefore, the limited ID supersedes the basic ID, but because the ID is not sufficiently definite, the examining attorney must require the applicant to amend the ID to list the particular Class 6 metal materials for residential building and construction (e.g., "metal materials for residential building and construction, namely, soffits, fascia, and drywall corner bead").

Example: The §66(a) application identifies the basic goods as "medical instruments" in International Class 10. The USPTO receives a limitation filed after the §66(a) application is filed but before an Office action is issued, which indicates that the limited goods are "medical instruments for use in surgery and instruments for use in scientific research." As "medical instruments for use in surgery" are within the scope of the ordinary meaning of "medical instruments," such goods are within the scope of the basic goods and are deemed to have effect in the United States. However, "instruments for use in scientific research" are not within the scope of the ordinary meaning of "medical instruments" and would be classified in International Class 9. See TMEP §1401.02(a) for the Explanatory Note for International Class 9. The examining attorney must indicate in the first Office action that the limitation has no effect "in part" as to the "instruments for use in scientific research" and that those goods are not entitled to extension of protection to the United States. As the limitation acceptably narrows the goods to "medical instruments for use in surgery," such wording comprises the operative language of the identification for purposes of future amendment.

Example: The §66(a) application identifies the basic goods as "medical apparatus" in International Class 10. The examining attorney issues a provisional refusal requiring further specificity of the type of "medical apparatus," in accordance with USPTO policy. The USPTO then receives a limitation, which indicates that the limited goods are "medicine cabinets." Such goods exceed the scope of International Class 10 since "medicine cabinets" are properly classified in International Class 20. In addition, the wording "medicine cabinets" exceeds the scope of the ordinary meaning of "medical apparatus." "Medical apparatus" refers to "machines, tools, and equipment for doing something" related to medical activities, and this would not encompass a "small cupboard in a bathroom in which you keep soap, toothpaste etc." See Macmillan Dictionary, Macmillan Publishers Limited 2009-2017. Therefore, the examining attorney’s new non-final Office action must indicate that the limited goods/services have no effect and are not entitled to extension of protection to the United States. The Office action should indicate that prosecution of the application will continue with the goods as originally identified, "medical apparatus" in International Class 10," and the examining attorney’s previously issued requirement for amendment of the goods to conform to USPTO specificity requirements is continued.

Example: A §66(a) application otherwise entitled to approval for publication originally lists the goods as "clothing, headgear and footwear" in International Class 25. The examining attorney issues an Office action requiring clarification of the goods "clothing" and "headgear" in accordance with USPTO standards of acceptability. A limitation is received by the USPTO after the issuance of the Office action but before any response to the Office action is received, and the goods are thereby limited to "clothing, namely, pants and shirts; headwear and footwear." The examining attorney will issue a no-call examiner’s amendment stating that the limitation has been received, that the requirements regarding the identification have been satisfied, and that the mark will be approved for publication.

Example: The §66(a) application identifies the basic goods as "hand tools" in International Class 8. The examining attorney issues an Office action requiring the applicant to specify the particular hand tools. The applicant subsequently amends the listing of goods/services to "hand tools, namely, manual can openers, kitchen scissors, kitchen knives, non-electric fruit peelers, egg slicers." The USPTO then receives a limitation indicating that the limited goods are "hand tools for use in preparing food; hand tools for use in home repair." The examining attorney first compares the listing of goods in the limitation with the basic goods and determines that the limitation is within the scope of the basic. As "hand tools for use in preparing food; hand tools for use in home repair" are within the scope of the ordinary meaning of "hand tools," such goods are within the scope of the basic goods. Therefore, the examining attorney need not issue an Office action declaring the limitation to have no effect for any of the goods listed in the limitation. The examining attorney then compares the goods in the limitation with the goods as amended by the applicant during prosecution of the application. Here, the "hand tools for use in home repair" in the limitation are beyond the scope of the operative listing of goods "hand tools, namely, manual can openers, kitchen scissors, kitchen knives, non-electric fruit peelers, egg slicers" since none of these goods are for use in home repair. Therefore, the examining attorney must issue a new, non-final Office action refusing the "hand tools for use in home repair" as beyond the scope of the application as amended. Further, the examining attorney must incorporate the acceptable wording from the limitation into the operative listing of goods and notify the applicant in the Office action that "hand tools for use in preparing food, namely, manual can openers, kitchen scissors, kitchen knives, non-electric fruit peelers, egg slicers" comprises the operative language of the identification for purposes of future amendment.

Limitation Within §66(a) Application

When a holder includes a limitation of the goods/services within the international application or subsequent designation form and indicates that the limitation should apply to the extension of protection to the United States, the limitation appears within the §66(a) application, rather than as a separate filing. In this circumstance, the basic goods/services in the international registration are not extended to the United States for protection. Instead, only the limited goods/services are extended to the United States for protection. Accordingly, the limited goods/services, rather than the basic goods/services, are treated as the original listing of goods/services in the §66(a) application. However, by law, the basic listing of goods/services in the international registration continues to set the scope of the goods/services that may be included in an extension of protection. 15 U.S.C. §1141e(a); Article 3(1); Regs. Rule 9(5)(d)(vi). Therefore, the goods/services in a limitation that appear within a §66(a) application are refused if they exceed the scope of the basic goods/services listed in the application.

If the examining attorney determines that some or all of the limitation is not acceptable because the requested change would result in a broadening or extension, rather than a narrowing, of the basic goods/services (see TMEP §1402.06(a)–(b)), he or she must issue an Office action: (1) refusing to accept the listing of goods/services in the limitation, in whole or in part; (2) explaining the reasons for the finding; (3) stating the corresponding essential provisions of the law; and (4) indicating that the limited goods/services are not entitled to the benefits of extension of protection to the United States. See 15 U.S.C. §1141e(a).

When the limitation included within a §66(a) application exceeds the scope of the basic goods/services, the examining attorney does not advise the applicant that the basic goods/services remain operative for purposes of future amendment because the basic goods/services were never extended to the United States. Instead, the examining attorney will advise the applicant that it must amend the goods/services to conform to the scope established by the limited goods/services as well as the scope of the basic goods/services.

The applicant may respond to such a refusal by amending the limited goods/services to goods/services within the scope of the basic goods/services and the scope of the limitation, if appropriate. The applicant may not add goods/services from the basic listing that were deleted by the limitation. Where a conforming amendment cannot be submitted, the applicant can respond by deleting the limited goods/services that have been refused. Once an application has been expressly amended to delete goods/services, those items generally may not be reinserted. TMEP §1402.07(e).

The applicant may also submit arguments in favor of accepting the goods/services that have been refused. If the refusal is maintained and made final, the applicant may file an appeal to the Trademark Trial and Appeal Board pursuant to 37 C.F.R. §2.141 and §2.142  or petition to the Director pursuant to 37 C.F.R. §2.63(b)(2)(iii).

Additionally, the applicant may overcome the refusal of the limited goods/services by filing a new limitation with the IB that lists goods/services that are within the scope of the basic goods/services. If the applicant chooses to file a new limitation, it must notify the examining attorney in a timely filed response in order to avoid abandonment of the §66(a) application. The response should indicate that another limitation has been filed with the IB, which the applicant believes will resolve the issue, should request suspension, and should include a copy of the limitation filed with the IB. See TMEP §716.02(g). The examining attorney will then suspend action awaiting receipt of the notification of the limitation. If notification of the limitation is not received within six months of the issuance of the suspension, the examining attorney must inquire as to the status of the limitation. See TMEP §§716.02(g), 716.05.

In rare circumstances, a limitation that exceeds the scope of the entire listing of goods/services in the international registration could result in there being no goods/services in the §66(a) application that are entitled to extension of protection to the United States. For example, this may happen if a limitation within the §66(a) application lists only goods/services that exceed the scope of the basic goods/services and that cannot be amended to stay within the scope of the limitation as well as the basic. In such case, the examining attorney must consult with his or her managing or senior attorney, who will notify the Office of the Deputy Commissioner for Trademark Examination Policy.

The following are examples of limitations filed within the §66(a) application that illustrate the procedures discussed above:

Example: The §66(a) application identifies the basic goods as "pharmaceuticals" in International Class 5. The limitation included in the §66(a) application indicates that the limited goods are "pharmaceuticals being aspirin, allergy tablets, and adhesive bandages." Since "aspirin" and "allergy tablets" are within the scope of the ordinary meaning of "pharmaceuticals," such goods are within the scope of the basic goods and are entitled to the benefits of extension of protection to the United States. However, as "adhesive bandages" are not within the scope of the ordinary meaning of "pharmaceuticals," the examining attorney must indicate in the first Office action that the limitation is refused "in part" as to the "adhesive bandages." As the limitation otherwise acceptably narrows the goods to "pharmaceuticals being aspirin [and] allergy tablets," such wording comprises the operative language of the identification for purposes of future amendment.

Example: The §66(a) application identifies the basic services as "advertising; business management; business administration; office functions" in International Class 35. The limitation included in the §66(a) application indicates that the limited services are "advertising, window dressing services for advertising purposes, production of advertising matter and commercials, business administration, filing documents or magnetic-tapes." Such services are within the scope of the ordinary meaning of the wording of the basic services and are in accordance with USPTO standards of acceptability. Thus, this wording comprises the operative language of the identification for purposes of future amendments.

Example: The §66(a) application identifies the basic goods as "artists’ materials" in International Class 16. The limitation included in the §66(a) application indicates that the limited goods are "molds, brushes, pens, pencils, paint, sculptors’ chisels and palette knives." The "paint, sculptor’s chisels and palette knives" exceed the scope of International Class 16 as they are properly classified in International Classes 2 and 8, respectively. Thus, the examining attorney’s Office action must refuse registration as to the "paint, sculptors’ chisels and palette knives" on the ground that these goods exceed the scope of the basic goods and thus are not entitled to the benefits of extension of protection to the United States. While "molds, brushes" constitutes broad wording that may encompass goods in other International Classes, these goods are within the scope of the basic goods because this wording includes types of artists’ materials that are classified in International Class 16. Therefore, the examining attorney should refuse these goods as unacceptably indefinite and require the applicant to amend to goods that are properly classified in International Class 16 and that reflect the scope of the basic listing of goods in the international registration. For example, the examining attorney may suggest: "artists’ materials, namely, molds for modeling clays, artists’ brushes, pens, pencils" in International Class 16.

Example: The §66(a) application identifies the basic goods as "clothing" in International Class 25 and "watches; necklaces" in International Class 14. The limitation included in the §66(a) application indicates that the limited goods are "watches; jewelry" in International Class 14 and "clothing" in International Class 25. In this case, "watches" in the limitation are within the scope of the basic goods in the international registration and would be accepted. However, "jewelry" in the limitation exceeds the scope of "necklaces" and would not be accepted. Thus, while "watches" would remain in the identification of record for International Class 14 of the §66(a) application, "jewelry" would not be entitled to the benefits of extension of protection to the United States. The examining attorney must refuse "jewelry" as beyond the scope of the basic listing of goods in the international registration. However, the examining attorney may suggest that applicant simply amend this wording to "jewelry, namely, necklaces" to bring the limited goods into alignment with the scope of the basic goods in the international registration. Additionally, "clothing" in International Class 25 would remain in the application as it is the same as the basic listing in the international registration.

Example: The §66(a) application identifies the basic goods as "clothing" in International Class 25. The limitation included in the §66(a) application lists "watches; jewelry" in International Class 25. The limited goods "watches; jewelry," exceed the scope of the basic listing of goods in the international registration. However, "clothing" would no longer be included in the identification in the §66(a) application because it was not included in the listing of limited goods, "watches; jewelry." In this case, because the applicant cannot amend the limited goods to bring them within the scope of the basic listing of goods in the international registration, the application contains no goods/services that are entitled to the benefits of extension of protection to the United States. The examining attorney must consult with his or her managing or senior attorney regarding how to proceed with this application.

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

1904.03(g)(ii)    Partial Cancellation of an International Registration

When the USPTO receives notification from the IB that the international registration has been restricted in part due to a partial cancellation, the MPU will determine what, if any, goods/services remain extended to the United States and amend the listing of goods/services in the relevant pending extension of protection to reflect the changes in the notice of cancellation. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30.

1904.03(g)(iii)    Partial Ceasing of Effect of a Basic Mark

When the USPTO receives notification from the IB that the international registration has been restricted in part due to the partial ceasing of effect of the basic registration, the MPU will determine what, if any, goods/services remain extended to the United States and amend the listing of goods/services in the relevant pending extension of protection to reflect the changes in the notice of ceasing of effect. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30.