705 The Examining Attorney’s Letter or Action

If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by email or telephone communication, which is typically followed by a written action. This constitutes the examining attorney’s official action.

Written Office actions may be of a variety of styles, including: (1) an "examiner’s amendment" (see TMEP §§707–707.03), in which the examining attorney formally makes amendments to the application; (2) a "priority action" (see TMEP §§708–708.05), setting forth and explaining the requirements discussed by telephone with the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or with a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner") designated by the applicant; (3) a letter explaining the bases for refusal(s) or requirement(s); (4) an examiner’s amendment combined with a priority action ( see TMEP §708.05); or (5) a suspension notice (see TMEP §§716–716.06). Office actions may be prepared through the use of standardized form paragraphs, in combination with language written to address the particular facts relevant to the refusal(s) or requirement(s).

The USPTO encourages the use of examiner’s amendments and priority actions whenever appropriate.

705.01 Language in Examining Attorney’s Letter

The examining attorney must indicate the status of the application at the beginning of each letter.

In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as "Upon examination of this application...." The examining attorney must acknowledge any voluntary amendment or other document received before the first action by identifying the document and the date of its receipt.

In subsequent actions, examining attorneys should begin letters with a sentence such as, "This Office action is in response to applicant’s communication filed on [date]." Other documents received, such as supplemental amendments, affidavits, and new drawings, should also be acknowledged. See TMEP §§713–713.03 regarding examination of amendments and responses to Office actions, TMEP §807.17 regarding the processing of unacceptable amendments to drawings, and TMEP §1402.15 regarding the processing of unacceptable amendments to identifications.

Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act. For example, registration of a trademark should not be refused "because it is a surname," but "because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act."

Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested. However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.

Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions. However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.

705.02 Examining Attorneys Should Not Volunteer Statements

In Office actions, and email and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in applications. The examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re Am. Physical Fitness Research Inst. Inc., 181 USPQ 127, 127–28 (TTAB 1974) . See also TMEP §1801.

705.03 Citation of Conflicting Marks

When refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and attach to the Office action a copy of each cited registration, which will become part of the record. The examining attorney should explain the reasons that the mark in each cited registration is a basis for refusal under §2(d).

If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, or that the USPTO attached a registration but did not cite the registration as a bar to registration in the Office action, the USPTO will reissue the Office action citing and attaching the relevant registration(s) and provide the applicant with a new response period.

705.04 Reference to Matter in Printed or Online Publications

When the examining attorney refers to matter in a printed publication, the examining attorney must provide the citation for the publication, and include the relevant material with the Office action. It is not necessary to attach a published legal decision to an Office action. A citation is sufficient. See TMEP §705.05 regarding citation of decisions.

When the examining attorney refers to an online publication, such as an article downloaded from the Internet, the examining attorney must provide information that would aid a party in locating the document, including the complete URL address of the website, the time and date the search was conducted, and the terms searched, and include the relevant material with the Office action. See TMEP §710.01(a) regarding evidence from a research database and TMEP §710.01(b) regarding Internet evidence.

705.05 Citation of Decisions and USPTO Publications

In addition to the Trademark Act of 1946, as amended, and the Trademark Rules of Practice, examination is also governed by precedential decisions in prior cases. See TBMP §§101.01, 101.03. These decisions include those from the United States Supreme Court (Supreme Court) and precedential decisions from the Court of Appeals for the Federal Circuit (Federal Circuit) (which determines appeals from decisions of the Trademark Trial and Appeal Board (Board)), the Court of Customs and Patent Appeals (the predecessor of the Federal Circuit), the Board, and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) (Director) (who determines petitions on examination procedural matters, among other things). See TBMP §101.03.

Decisions of the Supreme Court, the Federal Circuit, the Board, and the Director appear in the Bloomberg Law database as the United States Patent Quarterly (USPQ) and may also be found in LexisNexis Corporation’s LEXIS/NEXIS legal database and in the Intellectual Property Library of ThomsonReuters Corporation’s WESTLAW database. Recent, and a certain number of older, final Board decisions are available by accessing the TTAB Reading Room electronic database at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions on the USPTO website. In addition, docket information and images of Board files may be viewed by accessing TTABVUE at http://ttabvue.uspto.gov/ttabvue/.

Precedential Court Decisions. When citing to court decisions, citation should be to the appropriate reporter, such as the Federal Reporter or the Federal Supplement, preferably with the pinpoint cite. Parallel citations are permitted.

Precedential Board Decisions. Decisions designated by the Board as "Citable as Precedent," "Precedent of the Board," "Precedent of the TTAB," or "for publication in full" are citable as precedent. TBMP §101.03.

Citation to precedential Board decisions may be to the USPQ, LEXIS/NEXIS, or Westlaw. The serial number or registration number for appeal cases and the proceeding number for trial cases should be included. If the submitting party does not have any access to legal research databases, citation may be made to a USPTO public electronic database containing the decision (e.g., TTABVUE), indicating the relevant docket entry and page. The citation should include the serial number or registration number for appeal cases and the proceeding number for trial cases.

Non-precedential Board Decisions. Prior to January 23, 2007, it was the Board's policy that its opinions not designated as precedential should not be cited and, if cited, were to be disregarded. See, e.g., In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001); In re Polo Int’l Inc., 51 USPQ2d 1061, 1063 n.3 (TTAB 1999); Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992). Since that date, the Board has permitted citation to any Board decision. TBMP §§101.03, 1203.02(f); see generally Citation of Ops. to the Trademark Trial & Appeal Bd., OG Notice (Jan. 23, 2007). Although Board decisions designated as not precedential are not binding upon the Board, they may be cited and considered for whatever persuasive value they might have. In re UST Glob. (Sing.) Pte. Ltd., 2020 USPQ2d 10435, at *7 n.23 (TTAB 2020) (citing In re Soc’y of Health & Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018)); TBMP §§101.03, 1203.02(f). However, the Board does not encourage the practice of citing non-precedential decisions. See TBMP §§101.03, 1203.02(f).

When citing to an unpublished decision of the Board in an Office action, if the decision does not appear in the USPTO’s public electronic databases, the examining attorney should append the decision to the Office action; otherwise, citation may be to TTABVUE by docket entry and page number. When citing to an unpublished decision of the Board in a brief, the examining attorney should append the decision to the brief, if it is not already in the record. TBMP §§101.03, 1203.02(f). Any nonprecedential cases referenced must be clearly identified as nonprecedential.

USPTO Publications. The examining attorney may cite sections of the Trademark Manual of Examining Procedure (TMEP) or Trademark Trial and Appeal Board Manual of Procedure (TBMP). The abbreviations TMEP and TBMP are usually sufficient. However, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney may identify the manuals by their full names in the first citation to the manuals. It is not necessary to provide a copy of the relevant section(s) of the manuals.

When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Trademark Official Gazette in which it may be found.

705.06 Reviewing and Signing of Letters

Examining attorneys must review and sign every Office action using an electronic signature. The signature block should include the name, title, law office, telephone number, and email address of the examining attorney. Thus, the signature block for an Office action issued by an examining attorney should be set forth as follows:

/Examining attorney’s full name/

Trademark Examining Attorney

Law Office xxx

(571) xxx-xxxx

_____________@uspto.gov

If an examining attorney does not have signatory authority, he or she must sign the action and refer it to an authorized signatory examining attorney, who will review and approve the action. Review by a reviewer should ordinarily be done within two working days after receipt from the non-signatory examining attorney.

705.07 Processing Outgoing Office Actions

Except for first Office actions in a §66(a) application, a date is placed on Office actions when they are issued. See TMEP §1904.02(h). For outgoing email communications, including electronically issued Office actions, the date is applied automatically when the communication is released to the USPTO's electronic mail system.

The Office action signed by the examining attorney, along with any supporting evidence and/or copies of registered marks or pending applications cited as a bar to registration, is available for review by the public through the Trademark Status and Document Retrieval (TSDR) portal on the USPTO website at https://tsdr.uspto.gov/.

When an Office action issues, the USPTO will email a notice to the applicant with a link or web address to access the Office action using TSDR. The Office action will not be attached to the email notice. Upon receipt of the email notice, the applicant may use the link or web address to view and print the actual Office action and any evidentiary attachments. In the rare case of a treaty-exempt applicant who is not required to provide an email address for correspondence with the USPTO, the USPTO will mail a copy of the Office action to the applicant.

705.08 Response Clause

Each Office action must set forth the deadline for response, if applicable. 37 C.F.R §2.62(a).

Generally, the examining attorney’s letter or Office action will include a "response clause" notifying the applicant that the applicant must respond to the action within the following time period, as applicable, to avoid abandonment under 15 U.S.C. §1062(b)(2): (1) for Office actions issued on or after December 3, 2022 for §1 and/or §44 applications, within three months of the issuance date ("three-month response clause"); or (2) for Office actions issued for §66(a) applications and for Office actions issued before December 3, 2022, within six months of the issuance date ("six-month response clause"). See TMEP §§711–711.03 regarding the deadline for response to an Office action.

An Office action with a three-month response clause also includes information regarding the option to request one three-month extension of the time to respond. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.

The examining attorney must not include a response clause in an examiner’s amendment (see TMEP §§707–707.03) or suspension notice (see TMEP §§716–716.06), in a situation where the time for response runs from the issuance date of a previous Office action (see TMEP §§711.02, 715.03(c)), or in a subsequent final action where a notice of appeal has previously been filed (see TMEP §715.04(b)).