709.05    Informal Communications

An applicant may conduct informal communications with an examining attorney regarding a particular application by telephone or email (see TMEP §§304.01–304.02, 709.04 ).  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 email 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. For a legal opinion about any trademark matter, a party must consult a private trademark attorney. TMEP §1805.

If the examining attorney determines that continuing (or prolonged) informal communications by telephone or email 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 extend the deadline for response and does not constitute a response to an outstanding Office action except as specified elsewhere. See, e.g., TMEP §§716.02(a), 716.02(j).

Relevant email 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 email 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.