705 The Examining Attorney’s Letter or Action

If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by e-mail or telephone communication, which is typically followed by a written action. This constitutes the examining attorney’s official action.

Written Office actions may be of a variety of styles, including: (1) an "examiner’s amendment" ( see TMEP §§707–707.03), in which the examining attorney formally makes amendments to the application; (2) a "priority action" ( see TMEP §§708–708.05), setting forth and explaining the requirements discussed by telephone with the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or with a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner") designated by the applicant; (3) a letter explaining the bases for refusal(s) or requirement(s); (4) an examiner’s amendment combined with a priority action ( see TMEP §708.05); or (5) a suspension notice ( see TMEP §§716–716.06). Office actions may be prepared through the use of standardized form paragraphs, in combination with language written to address the particular facts relevant to the refusal(s) or requirement(s). The examining attorney may send the Office action by regular mail or e-mail (if applicant has authorized e-mail communications). See TMEP §§304–304.09 regarding e-mail.

The USPTO encourages the use of examiner’s amendments and priority actions whenever appropriate.

705.01 Language in Examining Attorney’s Letter

The examining attorney must indicate the status of the application at the beginning of each letter.

In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as "Upon examination of this application...." The examining attorney must acknowledge any voluntary amendment or other document received before the first action by identifying the document and the date of its receipt.

In subsequent actions, examining attorneys should begin letters with a sentence such as, "This Office action is in response to applicant’s communication filed on [date]." Other documents received, such as supplemental amendments, affidavits, and new drawings, should also be acknowledged. See TMEP §§713–713.03 regarding examination of amendments and responses to Office actions, TMEP §807.17 regarding the processing of unacceptable amendments to drawings, and TMEP §1402.15 regarding the processing of unacceptable amendments to identifications.

Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act. For example, registration of a trademark should not be refused "because it is a surname," but "because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act."

Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested. However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.

Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions. However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.

705.02 Examining Attorneys Should Not Volunteer Statements

In Office actions, and e-mail and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in applications. The examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re Am. Physical Fitness Research Inst. Inc., 181 USPQ 127, 127–28 (TTAB 1974) . See also TMEP §1801.

705.03 Citation of Conflicting Marks

When refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and attach to the Office action a copy of each cited registration, which will become part of the record. The examining attorney should explain the reasons that the mark in each cited registration is a basis for refusal under §2(d).

If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, or that the USPTO attached a registration but did not cite the registration as a bar to registration in the Office action, the USPTO will reissue the Office action citing and attaching the relevant registration(s) and provide the applicant with a new response period.

705.04 Reference to Matter in Printed or Online Publications

When the examining attorney refers to matter in a printed publication, the examining attorney should provide the citation for the publication, and include the relevant material with the Office action. It is not necessary to attach a published legal decision to an Office action. A citation is sufficient. See TMEP §705.05 regarding citation of decisions.

When the examining attorney refers to an online publication, such as an article downloaded from the Internet, the examining attorney should provide any information that would aid a party in locating the document, including the complete URL address of the website, the time and date the search was conducted, and the terms searched. See TMEP §710.01(b) for a discussion of the weight accorded to Internet evidence. See also TMEP §710.01(a) regarding evidence from a research database.

705.05 Citation of Decisions and USPTO Publications

When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given. If possible, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d), or Federal Supplement (F. Supp. or F. Supp.2d) should also be given. The court or tribunal (2d Cir., C.C.P.A., Fed. Cir., TTAB, etc.) and the date of the decision should always be given.

When citing to a decision that is published and reported only in LexisNexis® and/or Westlaw®, for which there are no official print versions, the citing party should provide the name of the research service, case name, proceeding name and docket number, database identifier, court name, date, and screen, page, or paragraph numbers, if assigned. When citing to an unpublished decision of the Board, the examining attorney must either provide the Board’s TTABVUE website address and explain how the applicant may locate and view the decision, or append the decision to the Office action.

Non-Precedential Decisions. Prior to December 27, 2006, it was the policy of the Trademark Trial and Appeal Board that Board opinions not designated as precedential should not be cited and, if cited, were to be disregarded. Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992) . The Board has changed that policy. In announcing the change, the Board stated that:

[T]he Board will henceforth permit citation to any TTAB disposition as follows:

The TTAB will continue its current practice of designating all final decisions as either precedential or not precedential. Unless specifically designated as precedential, an order on a motion should be considered not precedential.
The TTAB will continue its practice of considering precedential decisions as binding upon the TTAB.
A decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.
Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database. If a non-precedential decision does not appear in the United States Patent Quarterly or the USPTO's public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited.
Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.

Citation of Opinions to the Trademark Trial and Appeal Board, OG Notice ( Jan. 23, 2007).

The examining attorney may cite sections of the Trademark Manual of Examining Procedure ("TMEP") or Trademark Trial and Appeal Board Manual of Procedure ("TBMP"). The abbreviations "TMEP" and "TBMP" are usually sufficient; however, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney should identify the Manuals by their full names in the first citation to the Manuals. It is not necessary to provide a copy of the relevant section(s) of the Manuals.

When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Official Gazette in which it may be found.

705.06 Reviewing and Signing of Letters

Examining attorneys must review and sign every Office action using an electronic signature. The signature block should include the name, title, law office, telephone number, and e-mail address of the examining attorney. Thus, the signature block for an Office action issued by an examining attorney should be set forth as follows:

/Examining attorney’s full name/

Trademark Examining Attorney

Law Office xxx

(571) xxx-xxxx

_____________@uspto.gov

If an examining attorney does not have signatory authority, he or she must sign the action and refer it to an authorized signatory examining attorney, who will review and approve the action. Review by a reviewer should ordinarily be done within two working days after receipt from the non-signatory examining attorney.

705.07 Processing Outgoing Office Actions

A date is placed on all copies of paper Office actions when they are issued. For outgoing e-mail communications, including electronically issued Office actions, the date is applied automatically when the communication is released to the USPTO's electronic mail system.

One copy of the action signed by the examining attorney, along with any supporting evidence and/or copies of registered marks or pending applications cited as a bar to registration, is sent to the Trademark Image Capture and Retrieval System ("TICRS") and is available for review by the public through the Trademark Status and Document Retrieval ("TSDR") portal on the USPTO website at http://tsdr.uspto.gov/.

An applicant who authorizes e-mail communication will not receive the actual Office action by e-mail. Instead, upon issuance of the Office action, the USPTO will e-mail a notice to the applicant with a link or web address to access the Office action using TSDR. The Office action will not be attached to the e-mail notice. Upon receipt of the e-mail notice, the applicant may use the link or web address to view and print the actual Office action and any evidentiary attachments.

705.08 Six-Month Response Clause

Generally, the examining attorney’s letter or Office action should include a "six-month response clause" notifying the applicant that the applicant must respond to the action within six months of the issuance date to avoid abandonment under 15 U.S.C. §1062(b). See TMEP §§711–711.02 regarding the deadline for response to an Office action.

The examining attorney must not include a six-month response clause in an examiner’s amendment (see TMEP §§707–707.03) or suspension notice (see TMEP §§716–716.06), or in a situation where the time for response runs from the issuance date of a previous Office action (see TMEP §§711.01, 715.03(c)).