714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
Except as provided in TMEP §714.05(a)(ii), an advisory statement in an Office action indicating that a refusal or requirement will be issued if specified circumstances arise cannot serve as the foundation for issuing a final requirement or refusal in the next action. To establish the foundation for issuing a final refusal or requirement in the next Office action, an initial requirement or refusal must relate to matter that is of record at the time of the action.
In addition, a mere advisory statement made in an Office action is not subject to appeal to the Trademark Trial and Appeal Board by the applicant. In re Harley , 119 USPQ2d 1755, 1757 (TTAB 2016) ("An advisory statement made by an examining attorney indicating that a refusal or requirement may issue if specified circumstances arise is not a refusal to register, let alone a final refusal to register, and is therefore not subject to appeal."); see also In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403-04 (TTAB 2018) (limiting review to a failure-to-function refusal based on mere ornamentation and refusing to consider the "merely informational" rationale included in the examining attorney’s appeal brief because it was raised only in an advisory manner during examination and it was not clear that applicant had a full opportunity to address the rationale prior to appeal).