708    Priority Action

708.01    Priority Action Defined

A "priority action" is an Office action that is issued following a telephone conversation, personal interview, or e-mail communication in which the examining attorney and the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner discuss the various issues raised in an application and what actions the applicant must take to put the application in condition for publication or registration.  A priority action is generally used when the action requires verification by the applicant.  The use of priority actions is encouraged to expedite examination.

A priority action should be issued according to the following procedure:  (1) the examining attorney telephones or e-mails the applicant or applicant’s qualified practitioner and requests that the applicant take some specific action, explaining the reasons; (2) the applicant or applicant’s qualified practitioner specifically discusses the merits of the application with the examining attorney; (3) the examining attorney prepares and signs a priority action that fully discusses all refusals or requirements, includes evidence to support the refusals and/or requirements, and specifically describes what action the applicant may take in order to put the application into condition for publication or registration; and (4) the USPTO sends a copy of the priority action to the applicant.

If the evidence of record supports a statutory refusal of registration, a priority action may be issued only if the examining attorney believes that an amendment or explanation will obviate the refusal.   See TMEP §708.04.

See TMEP §708.03 regarding the form of a priority action.

Note: In a §66(a) application, an examining attorney may issue a priority action as a first action. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

708.02    Discussion of Issues and Agreements

The examining attorney must discuss the issues with the individual applicant, a person with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner.  The broad definition of "person properly authorized to sign on behalf of the [applicant]" in 37 C.F.R. §2.193(e)(1)  ( see TMEP §§611.03(a), 804.04) does not apply to priority actions.

Only the applicant, someone with legal authority to bind the applicant, or a qualified practitioner can agree to a priority action.  If the applicant is represented by a qualified practitioner, the examining attorney must speak directly to the practitioner.  See TMEP §§602–602.03(e) for guidelines on persons authorized to practice before the USPTO in trademark matters.

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

Paralegals and legal assistants cannot authorize issuance of a priority action, even if only conveying the qualified practitioner’s approval by indicating that the practitioner has agreed to the priority action.

If the applicant is pro se, 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)  may not authorize issuance of a priority action, unless he or she also has legal authority to bind the applicant.

During the telephone conversation, e-mail discussion, or other 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 e-mail message for the applicant or applicant’s qualified practitioner, but the applicant or practitioner 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 e-mails 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 applicant or the applicant’s qualified practitioner 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."

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.

708.03    Form of the Priority Action

The priority action should reference the date of the telephone call, e-mail message, or other communication, and the name and title (where appropriate) of the person who authorized the priority action.  See TMEP §708.02 for information about who may authorize issuance of a priority action.

A priority action must include a six-month response clause ( see TMEP §705.08) so that it is clear that the applicant must timely respond to the priority action to avoid abandonment of the application.

The priority action must include a search clause ( see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.  

The priority action must also:  (1) fully discuss all refusals and/or requirements; (2) include sufficient evidence to support all refusals and/or requirements; and (3) specifically describe what action the applicant may take in order to put the application into condition for publication or registration.  See TMEP §708.02 regarding discussion of issues on the merits.

The examining attorney should discuss each issue separately, stating the reason for the refusal and/or requirement and/or citing the relevant sections of the statute, rules, and/or TMEP.  The essential nature of the refusal or requirement, and any pertinent advisories relating thereto, must be clearly stated in the priority action, and fully supported by appropriate evidence (if applicable), because the action of the USPTO is based exclusively on the written record.  37 C.F.R. §2.191.

A priority action may be used for a final or nonfinal refusal or requirement.  See TMEP §708.04 regarding refusal of registration in a priority action, and TMEP §§714–714.06 regarding final actions.

708.04    Refusal of Registration in Priority Action

Priority actions are generally used when there are no statutory refusals.  However, if there is sufficient evidence to support a statutory refusal, and the examining attorney believes that an amendment or explanation will obviate the refusal, the examining attorney may attempt to resolve the issues through a priority action.

Example:  If the applicant could overcome a surname refusal by submitting a claim of acquired distinctiveness under §2(f) of the Trademark Act for a mark that has been used in commerce for more than five years, the examining attorney may initiate telephone or e-mail contact and discuss the refusal and the requirements for submitting a claim of acquired distinctiveness.  See TMEP §§1212–1212.10 regarding §2(f).  Because the claim of five years of use is generally required to be supported by a properly signed affidavit or declaration under 37 C.F.R. §2.20, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and reiterates the suggested amendment and requirement.

Example: If the applicant could overcome a likelihood-of-confusion refusal limited to a particular class or classes in a multiple-class application by deleting the class(es), the examining attorney may initiate telephone or e-mail contact and suggest the amendment. If the applicant or applicant’s attorney does not authorize an examiner’s amendment, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and expressly states that the refusal is limited to only certain class(es). See TMEP §718.02(a).

Example:  If the applicant could overcome a likelihood-of-confusion refusal as to several registrations by amending a vague or indefinite identification of goods/services, the examining attorney may initiate telephone or e-mail contact and suggest the amendment.  If the applicant or applicant’s attorney does not authorize an examiner’s amendment, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and reiterates the suggested amendment to the identification.  However, if amending the identification would obviate the refusal as to fewer than all of the registrations, the examining attorney must not initiate telephone or e-mail communication, and, therefore, may not issue a priority action.

Example:  If there are multiple co-pending applications, and a likelihood-of-confusion refusal could be obviated as to some of the applications by amending the identification, the examining attorney may initiate telephone or e-mail contact and suggest the amendment only as to those applications.  If the applicant or applicant’s attorney does not authorize an examiner’s amendment, the examining attorney may issue priority actions that fully discuss the refusal, include sufficient evidence to support the refusal, and reiterate the suggested amendment to the identification.  The examining attorney may not issue a priority action for any co-pending applications where an amendment to the identification would not obviate the refusal.

Example:  If the applicant could overcome a descriptiveness refusal for a mark that is in use in commerce by amending to the Supplemental Register, the examining attorney may initiate telephone or e-mail contact to discuss the refusal and suggest the amendment.  If the applicant’s attorney agrees that the mark is descriptive, but needs to consult with the applicant about amending to the Supplemental Register, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and offers the option of amending to the Supplemental Register.

Example:  If the applicant could overcome a geographically descriptive refusal for a mark that is in use in commerce by amending to the Supplemental Register, the examining attorney may initiate telephone or e-mail contact to discuss the refusal and suggest the amendment.  Even if the applicant disagrees as to the merits of the underlying refusal, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and reiterates the option of amending to the Supplemental Register.

In the priority action, the examining attorney must clearly state the basis for the refusal that was discussed, citing the relevant sections of the statute and rules, attaching evidence to support the refusal, and indicating the resolutions agreed upon or the options offered.

If the priority action includes a final refusal, the priority action must clearly indicate that the refusal is FINAL, and should contain any additional supporting evidence necessary for a complete record on appeal.  See TMEP §§714–714.06 regarding final actions.

708.05    Combined Examiner’s Amendment/Priority Action

An examining attorney may issue an Office action that combines an examiner’s amendment and priority action, if the requirements for both have been met.  The examiner’s-amendment portion reflects the authorized amendments, and the priority-action section addresses the refusals and requirements that remain outstanding and to which the applicant must still respond.  An examining attorney may not issue a "no-call" examiner’s amendment/priority action, because the issues in the priority action portion of the action have not been discussed with the applicant or applicant’s qualified practitioner.

The action must include a six-month response clause ( see TMEP §705.08) so that it is clear that the applicant must timely respond to the issues raised in the priority action to avoid abandonment of the application.  The action must also include the subheadings "Priority Action" and "Examiner’s Amendment" to facilitate processing.

Example:  After determining that an application requires a disclaimer and clarification of the entity type and color claim, and that the specimen shows ornamental use of the mark, if the examining attorney obtains authorization from the applicant or applicant’s attorney only to amend the entity type and color claim, a combined examiner’s amendment/priority action may be issued.  The examiner’s-amendment section memorializes the amendments to the entity type and color claim.  The priority action portion fully addresses the ornamental refusal and disclaimer requirement, includes sufficient evidence to support each, and reiterates the action that would put the application in condition for publication or registration.

Example:  If the examining attorney determines that an application lacks the necessary translation statement and that the specimen is unacceptable, and during a discussion of these issues the applicant agrees to entry of a suggested translation statement, but states that she needs to consider what to do about the specimen, the examining attorney may issue a combined examiner’s amendment/priority action.  The examiner’s-amendment section memorializes the agreed-upon translation statement.  The priority-action portion fully addresses the specimen refusal and includes all actions that would put the application in condition for publication or registration.

Example:  If the application contains the "SM" symbol on the drawing, an indefinite identification, and an unclear entity type, the examining attorney may not issue a no-call examiner’s amendment/priority action to delete by examiner’s amendment the "SM" symbol and address by priority action the identification and entity requirements.  Since no discussion occurred, the requirements for a priority action have not been met.  However, the examining attorney may telephone or e-mail the applicant or applicant’s attorney, discuss the requirements, and issue a combined examiner’s amendment/priority action, if appropriate.

NOTE:  In a §66(a) application, an examining attorney may not issue a combined examiner’s amendment/priority action as a first action.  See TMEP §1904.02(h) regarding Office actions in §66(a) applications.