702 Order of Work
702.01 Order of Examination
In general, applications are assigned for examination in the order in which they are received in the United States Patent and Trademark Office ("USPTO"), unless the application is made "special." See TMEP §702.02 regarding "special" applications. If a voluntary amendment is filed before the application is assigned for examination, it is placed in the record for consideration at the time the application is assigned to an examining attorney.
Generally, amended applications (i.e., applications that contain a response from the applicant), remands from the Trademark Trial and Appeal Board ("Board"), and statements of use are also reviewed in the order in which they are received in the USPTO.
Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension. See TMEP §§716–716.06 regarding suspension.
Examining attorneys should immediately act on inquiries regarding applications approved for publication or issue that are returned to the examining attorney to take action or provide information.
Where appropriate, the managing attorney may direct that a particular case be given special handling.
When an examining attorney resigns, the examining attorney should spend any remaining time in the Office getting his or her amended cases (including statements of use under 15 U.S.C. §1051(d) and appeal briefs), especially those with involved records, ready for final disposition.
702.02 "Special" Applications
While the USPTO normally processes applications in the order in which they are received, there are two procedures whereby an application can be made "special," so that initial examination will be expedited.
Request to Make Special - Registration Inadvertently Cancelled or Expired Under 15 U.S.C. §1058, §1059, or §1141k . A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired under 15 U.S.C. §1058, §1059, or §1141k will be made "special" upon the request of the applicant if the applicant is the prior registrant or the assignee of the prior registrant. No petition fee is required in this situation. However, the mark in the new application must be identical to the mark in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration.
A request to make an application special because a registration was inadvertently cancelled is reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy. The applicant should first file the application via the Trademark Electronic Application System ("TEAS"). The applicant should then submit a request to make special that includes the newly assigned serial number and the number of the cancelled registration. To ensure proper routing and processing, the Office prefers that the request also be filed electronically. In TEAS, the Request to Make Special form can be accessed at http://www.uspto.gov.
If it is not possible to file the request electronically, it should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number: 571-273-0032.
If the request is submitted by mail, it should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy.
Petition to Make Special. A petition to make "special" is a request to the Director under 37 C.F.R. §2.146 to advance the initial examination of an application out of its regular order. See TMEP §§1710–1710.02 regarding the petition requirements and filing procedure.
The examining attorney must promptly examine any application that has been made "special."
702.03 Related Applications
702.03(a) Companion Applications
The term "companion applications" refers to pending applications filed by the same applicant. An application is pending until it registers or abandons. Pending applications include applications that have been approved for publication or for registration on the Supplemental Register, applications in the Intent-to-Use ("ITU")/Divisional Unit, and revived or reinstated applications.
702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks
If an applicant has multiple pending applications, the issues in the applications are likely to be similar. When assigned a new application, an examining attorney will be assigned the companion applications filed within three months of the filing date of the first assigned application. If an applicant files more than ten applications within a three‑month period, only the first ten will be assigned to one examining attorney. Examining attorneys are encouraged to assign all unassigned companion applications for the same or similar marks to themselves, even if the applications were filed outside the three-month period.
The assignment of companion applications is done electronically, based upon the owner’s name as set forth in the application. Therefore, the owner’s name should be set forth consistently in all applications.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(ii) Companion Applications Previously Assigned
If the Trademark database indicates that a companion application has been assigned to a different examining attorney, the examining attorney should not transfer his or her application to the other examining attorney. However, the examining attorney must review the electronic record of the earlier companion application before taking action in a later companion case, and should act consistently, unless it would be clear error ( see TMEP §706.01) to do so. If the examining attorney believes that acting consistently with the prior action(s) would be erroneous, he or she should bring the issue to the attention of the managing attorney or senior attorney.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(iii) Companion Registrations
If the applicant previously filed a companion application that has matured into a registration, the examining attorney should not transfer his or her application to the prior examining attorney. Generally, in the later application, the examining attorney should act consistently with the registration, unless it would be clear error ( see TMEP §706.01) to act consistently. However, the USPTO is not bound by the decisions of the examining attorneys who examined the applications for the applicant’s previously registered marks, based on different records. Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought. See TMEP §1216.01 and cases cited therein.
See TMEP §702.03(a)(iv) regarding classification and identification in companion registrations.
702.03(a)(iv) Classification and Identification in Companion Applications that Have Registered or Been Published for Opposition
If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable, unless the identification or classification is clearly wrong. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion application or registration, the examining attorney must note the companion application serial number or registration number in a Note to the File.
Sometimes, the classification and identification of goods and/or services in the prior companion application or registration is clearly wrong. For example, identifications and class assignments that were acceptable in the past may no longer be in accord with the current Nice Agreement classification system ( see TMEP §§1401.02–1401.02(c) ) or with USPTO policy on acceptable identifications, which change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration. See TMEP §§1402.14, 1904.02(c)(v).
702.03(b) Conflicting Applications
The term "conflicting applications" refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), due to a likelihood of confusion between the marks. When assigned a new application, the examining attorney must search the USPTO’s automated records to determine whether there are any conflicting applications. If there are conflicting applications, the examining attorney should not transfer the conflicting application to the examining attorney who acted on the first conflicting application. Instead, the examining attorney should examine the assigned application and issue an Office action that includes a notice to the applicant that there is a prior-filed application to register a mark that may be likely to cause confusion with the applicant’s mark. See TMEP §§1208–1208.03(c). The examining attorney handling the later-filed application should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error ( see TMEP §706.01) to act consistently. If necessary, the examining attorney should review the electronic record of the earlier-filed application before taking an action in the later-filed conflicting application.