708.02    Discussion of Issues and Agreements

An examining attorney must discuss the issues with the proper person.

If the applicant is represented by a qualified U.S. attorney, the examining attorney must speak directly to the attorney.  See TMEP §§602–602.03(e) for guidelines on persons authorized to practice before the USPTO in trademark matters.

If a qualified attorney from the same firm as the qualified attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the attorney to authorize issuance of the priority action, and will note this fact in the priority action.

A Canadian trademark attorney or agent who has been appointed in addition to a qualified U.S. attorney may not authorize issuance of a priority action. Paralegals and legal assistants cannot authorize issuance of a priority action, even if only conveying the qualified attorney’s approval by indicating that the attorney has agreed to the priority action.

If the applicant is pro se and not required to be represented under 37 C.F.R §2.11(a) , the examining attorney must speak directly to the individual applicant or to someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).   Cf. 37 C.F.R. §11.14(e).  See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1)  (see TMEP §611.03(a)) may not authorize issuance of a priority action on behalf of a pro se applicant who is not required to be represented under 37 C.F.R §2.11(a), unless he or she also has legal authority to bind the applicant.

If the applicant is required to be represented under 37 C.F.R §2.11(a)  but has not appointed a qualified U.S. attorney, the examining attorney may not contact the applicant to authorize issuance of a priority action. See TMEP §§712-712.03.

During the telephone conversation, email discussion, or in-person communication, the examining attorney must fully discuss all refusals and requirements relating to the application, and explain the reason(s) for each refusal or requirement.  Whenever possible, the examining attorney should suggest appropriate language for amendments. A priority action is not appropriate when:

  • 1. the examining attorney leaves a voicemail or email message for the applicant or applicant’s qualified attorney, but the applicant or attorney does not call back or respond to the message;
  • 2. the examining attorney telephones the applicant or applicant’s attorney but the attorney does not have time to discuss the application and requests that the examining attorney send a letter; or
  • 3. the examining attorney emails the applicant or applicant’s attorney and merely states that there are problems with the application (e.g., indefinite identification, a disclaimer requirement, and clarification of entity type) and that a letter will be sent.

All the issues in the priority action must be discussed on the merits with the proper person in a good-faith attempt to resolve any issues and place the application in condition for publication or registration, as appropriate. However, an agreement as to precisely how all issues will be resolved is not necessary.

Example:  If the goods are identified as "computer equipment," the examining attorney may seek authorization to amend the identification to list the types of computer equipment.  If the applicant or applicant’s attorney does not agree to the suggested amendment, the examining attorney may issue a priority action that fully explains the identification requirement.  It may also state that "the applicant will submit an acceptable identification of goods that specifies the common commercial names of the types of computer equipment."  It is not necessary that there be an agreement that "the applicant will amend the identification of goods to, for example, computer keyboards, computer monitors, and computer printers for printing documents."

The priority action may state that the applicant will follow one of two alternative courses of action, for example, providing either an amended drawing or a new specimen.