904.07(a)(i) Action After Submission of Substitute Specimen
If the applicant responds to the Office action refusing registration by submitting a substitute specimen that does not show use of the mark in commerce for the same or a different "use-in-commerce" reason, such as the examples listed above, the examining attorney must issue a final refusal because the substitute specimen does not present a new issue. For example, if the original specimen was a photocopy of the drawing, and the applicant submits, in a response to the refusal, a substitute specimen that comprises advertising for its goods, this does not present a new issue. However, if the applicant responds to the refusal by submitting a substitute specimen that fails to show the applied-for mark functioning as a trademark or service mark (e.g., shows the mark is merely ornamental), this presents a new issue that requires issuance of a new nonfinal Office action. See TMEP §904.07(b) for a contrasting list of substantive reasons, relating to failure to function as a mark, that might present a new issue. Therefore, the examining attorney must issue a new refusal as to the substitute specimen, and must maintain the prior refusal as to the original specimen and indicate that the substitute specimen did not obviate the initial refusal.
If the applicant responds to the "use-in-commerce" refusal by submitting a substitute specimen, 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 commerce, 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.
See TMEP §714.05 regarding new issues requiring issuance of nonfinal action.