1504.04 Restoration of Jurisdiction to Examining Attorney by Director
If it is necessary to refuse registration or to make a requirement after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take the specified action on the application. See TMEP §1106.02 regarding action by the examining attorney after issuance of a notice of allowance.
Normally, the Director will restore jurisdiction to the examining attorney only if there has been a clear error ( see TMEP §706.01 ) After publication of a mark, a restoration of jurisdiction to the examining attorney is possible only in the case of an application for registration on the Principal Register. A mark found registrable on the Supplemental Register is not published for opposition but is published only when it has registered.
The examining attorney does not have to request jurisdiction to act in a §1(b) application after issuance of the notice of allowance. If, after the notice of allowance issues, the examining attorney determines that he or she must issue a new refusal or requirement, the examining attorney must request cancellation of the notice of allowance. However, the examining attorney should not make a refusal or requirement that could or should have been made during initial examination of the application unless the initial failure to make the refusal or requirement was a clear error, and must consult with the managing attorney or senior attorney before taking the action. See TMEP §706.01 regarding "clear error" and TMEP §§1106.02 and 1106.03 .
The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act. 37 C.F.R. §2.84. However, when deciding whether to grant requests for jurisdiction of §66(a) applications, the Director must consider the time limits for notifying the IB of a refusal of a §66(a) application, set forth in Article 5(2) of the Madrid Protocol and §68(c) of the Trademark Act, 15 U.S.C. §1141h(c). See TMEP §1904.03(a) for further information.
1504.04(a) Request for Jurisdiction
The examining attorney’s request for jurisdiction should be in the form of a memorandum to the Director, accompanied by the Office action that the examining attorney proposes to send to the applicant. The request should be signed by the examining attorney, the managing attorney, and the Administrator for Trademark Policy and Procedure.
In the Office action, the examining attorney should apologize for the untimeliness of the action because, at this point, except for possible opposition issues, the applicant is expecting issuance of a registration or notice of allowance. The action should provide a detailed explanation of the basis for the refusal or requirement, citing appropriate case law, even when addressing basic and well-established propositions.