713 Examination of Amendments and Responses to Office Actions
37 C.F.R. §2.63(a) Repeated non-final refusal or requirement.
After response by the applicant, the examining attorney will review all statutory refusals and/or requirement(s) in light of the response.
- (1) If, after review of the applicant’s response, the examining attorney issues a non-final action that maintains any previously issued substantive refusal(s) to register or repeats any requirement(s), the applicant may submit a timely response to the action under § 2.62(a).
- (2) If, after review of the applicant’s response, the examining attorney issues a non-final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond to such repeated requirement(s) by filing a timely petition to the Director for relief from the repeated requirement(s) if the subject matter of the repeated requirement(s) is appropriate for petition to the Director (see § 2.146(b)).
The examining attorney will review all statutory refusals and/or requirements in light of the applicant’s response and determine whether the mark may be approved for publication or registration. The examining attorney must carefully consider all arguments, comments, and amendments made or proposed by the applicant. See TMEP §705.01 about including wording in an Office action to indicate the status of the application and acknowledge documents received, TMEP §807.17 regarding the processing of unacceptable amendments to drawings, and TMEP §1402.15 regarding the unacceptable amendments to identifications.
If the applicant’s response has put the application in condition for approval for publication for opposition or registration on the Supplemental Register, the examining attorney will approve the application for publication or registration, as appropriate.
If the applicant’s response has not put the application in condition for publication or registration, the examining attorney will issue an Office action, or telephone or e-mail the applicant, depending on the circumstances.
If the applicant’s response neither resolves all of the outstanding issues nor raises any new issues, and the applicant has had an opportunity to reply to all points raised by the examining attorney, the examining attorney’s next action should be stated to be final. See TMEP §§714–714.05(f).
If the examining attorney has cited an earlier-filed conflicting application, and the applicant responds by arguing that there is no likelihood of confusion, the examining attorney should suspend the application pending disposition of the conflicting application, if applicant’s arguments are not persuasive. See TMEP §716.02(c) regarding suspension pending disposition of an earlier-filed conflicting application, TMEP §716.03 regarding the applicant’s request to remove an application from suspension, and TMEP §§1208–1208.02(f) regarding conflicting marks in pending applications.
713.01 Previous Action by Different Examining Attorney
When assigned to act on an application that was previously handled by a different examining attorney, the examining attorney 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.
713.02 Noting All Outstanding Refusals or Requirements
Every refusal or requirement made in a prior Office action that is still outstanding must be referenced in any subsequent action, including Notices of Suspension. In addition, when a particular refusal or requirement has been withdrawn, obviated, or satisfied because of applicant’s response or otherwise, the examining attorney should notify the applicant in any action that immediately follows.
Noting all outstanding refusals and requirements is done only as a courtesy to prevent any misunderstanding. A refusal or requirement issued in a previous action remains in effect unless the examining attorney specifically indicates that it has been withdrawn, obviated, or satisfied. Thus, if an examining attorney issues an Office action that does not mention an outstanding refusal or requirement that was raised in a previous action, the refusal or requirement may nonetheless be made final in a subsequent action, if the application is otherwise in condition to be made final.
713.03 Response to Applicant’s Arguments in Nonfinal Actions
When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments. See TMEP §718.02(a) for an examining attorney’s response to an applicant’s incomplete response to a partial nonfinal refusal or requirement and TMEP §§715.03 and 715.04 for an examining attorney’s response to an applicant’s arguments in a request for reconsideration after final action.
In response to a refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), the applicant may respond that the cited registration should be cancelled because the registrant has not filed the required maintenance documents.
The examining attorney must not withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired. To allow ample time for processing of timely filed post-registration maintenance documents, the USPTO waits until 30 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired.
If the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired. See TMEP §1611. If a party other than the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the party should contact the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 and request that the database be updated to show that the registration is cancelled or expired.
See TMEP §716.02(e) regarding when suspension is proper for awaiting cancellation/expiration of a cited registration for failure to file required maintenance documents.