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 generally must issue the refusal or requirement. If the refusal is made, the examining attorney must inform the applicant that such evidence was entered after submission of a letter of protest. If the application was withdrawn from issuance of a notice of allowance or registration, the examining attorney must so inform the applicant.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 some 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 determines that the mark should be approved for issuance of a registration or notice of allowance, the managing attorney must obtain permission from the Office of the Deputy Commissioner for Trademark Examination Policy to approve the application for issue. If permission is granted, Examination Policy staff will enter an appropriate Note to the File.