707    Examiner’s Amendment

An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application.  An examiner’s amendment is a communication to the applicant in which the examining attorney states that the application has been amended in a specified way.  Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by 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.  Cf. 37 C.F.R. §§2.62(b), 2.74(b).  See TMEP §707.01 regarding the authorization of an examiner’s amendment.  Authorization is usually given in a telephone conversation, email communication, or interview between the examining attorney and the applicant or the applicant’s qualified practitioner.  See TMEP §§304–304.09 regarding email.

The examining attorney may issue an examiner’s amendment whenever the required amendment does not have to be verified by the applicant, unless an examiner's amendment is specifically not permitted. For example, in appropriate circumstances, an examiner’s amendment may be used to amend the identification of goods/services, enter a disclaimer, add the state of incorporation, or amend from the Principal to the Supplemental Register.

The following are examples of amendments that may not be made by examiner’s amendment:  the dates of use, if verification would be required (see TMEP §903.04); the mark on a special-form drawing (see TMEP §§807.04–807.04(b)), if the changes would require the filing of a substitute special form drawing; amendments that require the submission of substitute specimen(s) (see TMEP §904.05); and the applicant’s domicile address (see TMEP §601.01(c)(i)).  An application cannot be expressly abandoned by examiner’s amendment (see TMEP §718.01).  

An authorization to charge a fee to a deposit account cannot be entered by examiner’s amendment, unless the record already contains a written authorization, signed and submitted by someone authorized to charge fees to the account.  See TMEP §405.03 regarding deposit accounts.

Examiner’s amendments generally are not used when there are statutory refusals.  However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner’s amendment.

Example:  If the applicant could overcome a surname refusal for a mark that is in use in commerce by amending to the Supplemental Register, the examining attorney may initiate telephone or email contact and suggest the amendment.  If the applicant authorizes the amendment, the examining attorney may issue an examiner’s amendment amending the application to the Supplemental Register.

Example:  If the mark contains the term "organic" and the applicant could overcome a potential deceptiveness refusal by amending the identification to state that the goods are organic, the examining attorney may initiate telephone or email contact and suggest the amendment.  If the applicant authorizes the amendment, the examining attorney may issue an examiner’s amendment amending the identification.

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 email contact and suggest the amendment only if it would obviate the refusals as to all the registrations that would be cited.  If the applicant agrees to the proposed amendment clarifying the identification, the examining attorney may issue an examiner’s amendment.  If the applicant does not agree with the examining attorney’s suggested identification and proposes an amendment that would obviate the refusal as to some, but not all, of registrations, the examining attorney may issue a combined examiner’s amendment and priority action. See TMEP §708.05.  However, when it is clear from the outset that amending the identification would not obviate the refusal as to one or more of the registrations, the examining attorney must not initiate telephone or email contact, because it is not possible to offer the applicant a specific action to place the application in condition for publication, suspension, or registration.

Example:  If the identification is vague or indefinite, the examining attorney may seek authorization to amend the identification by examiner’s amendment, even when the amendment would not overcome a potential likelihood-of-confusion refusal.  The examining attorney would then issue a notice of suspension.  To ensure that the applicant understands that amending the identification will only put the application in condition for suspension, during the telephone or email discussion, the examining attorney must notify the applicant of the prior pending application and the forthcoming suspension.  The resulting examiner’s amendment should also include this information.

See TMEP §708.04 regarding priority actions involving statutory refusals.

An examining attorney without partial signatory authority must have proper authorization from the managing attorney, senior attorney, or a reviewing examining attorney before initiating an examiner’s amendment.

See TMEP §707.03 regarding the form of an examiner’s amendment.

An applicant should not file correspondence confirming an examiner’s amendment, because this will delay processing of the application.  A written response to an examiner’s amendment is not required.

If an applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by telephone or email), so that the objection can be considered before publication or issue.  See TMEP §1402.07(e) regarding an applicant’s objection to an examiner’s amendment of the identification of goods/services on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.

Often an applicant will seek to respond to an outstanding Office action with an amendment or other response by telephone.  The examining attorney is encouraged to enter an examiner’s amendment if this amendment will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §§716–716.06 regarding suspension.  However, an applicant does not have an unlimited right to the entry of an examiner’s amendment in response to an Office action.  If the applicant does not agree to an amendment that the examining attorney believes will immediately place the application in condition for publication for opposition or issuance of a registration, the applicant must file a complete written response to the outstanding Office action.

See TMEP §708.05 regarding combined examiner’s amendment and priority actions.

NOTE:  In a §66(a) application, an examiner’s amendment may not be issued on first action because the IB will not accept such amendments.  Examiner’s amendments may be issued on second and subsequent actions.  See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

707.01    Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney

Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the proper person by telephone, email, or in person during an interview.   Cf. 37 C.F.R. §§2.62(b), 2.74(b);  see TMEP §§304.01, 304.02, 602, 611.03-611.03(i)709.01–709.05.

If the applicant is represented by a qualified U.S. attorney, the examining attorney must communicate directly with the attorney by phone or email.  If a qualified U.S. attorney from the same firm as the qualified attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the attorney to conduct business, and will note this fact in the examiner’s amendment.  

A Canadian trademark attorney or agent who has been appointed in addition to a qualified U.S. attorney may not authorize an examiner’s amendment. Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified attorney’s approval by indicating that the attorney has approved the amendment.

If the applicant is pro se and not required to be represented under 37 C.F.R. §2.11(a), the examining attorney must communicate directly with the individual applicant or with 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).  For joint applicants who are not represented by a qualified U.S. attorney and not required to be represented under 37 C.F.R. §2.11(a), each joint applicant must authorize the examiner’s amendment.  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)  (see TMEP §611.03(a)) is not entitled to authorize an examiner’s amendment on behalf of a pro se applicant who is not required to be represented under 37 C.F.R. §2.11(a), unless he or she has also legal authority to bind the applicant.

The applicant or the applicant’s qualified attorney must actually authorize the examiner’s amendment.  The examining attorney may not leave an email or voicemail message for the applicant or the qualified attorney indicating that an amendment shall be entered if the applicant or attorney does not respond to the message.

If the applicant is required to be represented under 37 C.F.R §2.11(a)  but has not appointed a qualified U.S. attorney, the examining attorney may not contact the applicant to authorize an examiner’s amendment. See TMEP §§712-712.03.

If an examining attorney contacts a pro se applicant who is not required to be represented and reaches agreement to issue an examiner’s amendment, but later determines that an Office action must be issued instead to state a refusal or requirement, the examining attorney should telephone or email the applicant immediately to advise the applicant of the change of position.

Examining attorneys without partial signatory authority must advise applicants that issuance of the examiner’s amendment is subject to review by a supervisory attorney.

707.02    Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney

Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified U.S. attorney (sometimes referred to as a "no-call" examiner’s amendment) in the following situations:

  • (1) In applications under §1 or §44, changes to international classification, either before or after publication ( see Groening v. Mo. Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r Pats. 1999));
  • (2) Deletion of "TM," "SM," "©," or "®" from the drawing;
  • (3) Addition of a description of the mark where an Office action or regular examiner’s amendment is otherwise unnecessary and one of the following conditions applies:
  • (a) The record already contains an informal indication of what the mark comprises (see TMEP §808.03(b));

            Example – The cover letter accompanying a permitted paper application (see TMEP §301.01) refers to the mark as a stylized golf ball design.  If appropriate, the examining attorney could enter an amendment that "the mark consists of the stylized design of a golf ball."

            Example – The application refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but the color yellow is omitted from the formal description of the colors in the mark (see TMEP §807.07(a)(ii)).  The examining attorney may enter an amendment of the formal color description to accurately reflect all colors in the mark;

  • (b) The mark consists only of wording in stylized font, with no color claim and with no design element, and the applicant did not provide the "literal element" of the mark in the appropriate field (see TMEP §808.03(b)); or
  • (c) The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording (see TMEP §808.03(b)).
  • (4) If the examining attorney determines that a description of the mark will not be published in the Trademark Official Gazette or included on the registration certificate, and it is not necessary to issue an Office action or a regular examiner’s amendment regarding other matters, the examining attorney may enter a Note to the File in the record or issue a "no-call" amendment to that effect. See TMEP §808.03;
  • (5) In applications under §1, amendment of the application to enter a standard character claim when the record clearly indicates that the drawing is intended to be in standard character form. See TMEP § 807.03(g);
  • (6) Correction of obvious misspellings, typographical errors, and redundancies in the identification of goods/services, or in an otherwise accurate and complete description of the mark. See TMEP §§808.03(a), 1402.01(a);

            Example - The goods are identified as "T-shurtz."  The examining attorney may amend to "T-shirts."  However, "shurtz" may not be amended to "shirts" without calling the applicant, because "shurtz" (without the "T-" prefix) might also be a misspelling of "shorts."

  • (7) When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods, services, and/or class(es), the examining attorney may issue an examiner’s amendment deleting the goods/services/classes to which the refusal or requirement pertained.  Similarly, when an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney may issue an examiner’s amendment deleting the unacceptable terminology from the identification. See TMEP §§718.02(a), 1402.13;
  • (8) In applications under §1 or §44, deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual.  Bracketed material sometimes appears in the Manual for informational purposes but should not be included in an identification of goods/services. See TMEP §1402.12. If this material is entered in an identification in an application submitted through TEAS, it will be automatically deleted in all TEAS applications.  If submitted in a permitted paper application (see TMEP §301.01) or in an amendment or response submitted through TEAS, the examining attorney may delete the bracketed material with a "no-call" examiner’s amendment;
  • (9) If, in response to a general or specific inquiry about translation and/or transliteration of non-English wording in the mark, the applicant does not directly state that the term has no meaning in a foreign language but instead responds to the effect that "the mark has only trademark significance," the examining attorney may enter a statement that "the term has no meaning in a foreign language" into the record.  See TMEP §809.01(a);
  • (10) When an applicant provides a translation statement that has the proper translation but is in a format that is not suitable for printing, the examining attorney may "reformat" the statement, without changing the substance, into a simple, clear statement as to meaning.  See TMEP §809.03.
  • (11) When an application includes foreign wording that is not translated, and a translation of the same foreign wording appears in a prior registration for which the applicant has claimed ownership, and the translation is acceptable to the examining attorney, the examining attorney may enter the identical translation into the record. Note: If the application was filed using the TEAS Plus form and the translation was omitted, the examining attorney may not issue an examiner’s amendment without prior authorization. The examining attorney must take appropriate action requiring the translation and the additional TEAS Plus processing fee. 37 C.F.R. §§2.6(a)(1)(v), 2.22(a)(15), (c); TMEP §§ 819.01, 819.01(m).
  • (12) If the examining attorney determines that a translation statement will not be published in the Trademark Official Gazette or included on the registration certificate, and it is not necessary to issue an Office action or a regular examiner’s amendment regarding other matters, the examining attorney may enter a Note to the File in the record or issue a "no-call" amendment to that effect. See TMEP §809.03;
  • (13) When an application under §1 or §44 includes a disclaimer of the entire mark, and the application would otherwise be in condition for approval for publication or registration without the need to contact the applicant or issue an Office action, the examining attorney may issue an examiner’s amendment noting that the entire mark may not be disclaimed and that the disclaimer will be deleted from the record. See TMEP §1213.01(c) regarding unnecessary disclaimers in applications under §66(a). The examining attorney must ensure that the disclaimer is removed.
  • (14) When a response to an Office action includes a disclaimer of the entire mark, and the application would otherwise be in condition for approval for publication or registration, the examining attorney may issue an examiner’s amendment noting that the entire mark may not be disclaimed and that the disclaimer will be deleted from the record. The examining attorney must ensure that the disclaimer is removed.

If the examining attorney must contact the applicant or the applicant’s qualified U.S. attorney about other matters, or if the record contains any ambiguity as to the applicant’s intent, the examining attorney should advise the applicant or the applicant’s attorney that the above changes have been made.

The USPTO will issue an email notification when an examiner’s amendment is issued. The applicant or applicant’s attorney may then view and/or print the examiner’s amendment from the USPTO website. In the rare case of a treaty-exempt applicant who is not required to provide an email address for correspondence with the USPTO, the USPTO will mail the examiner’s amendment to the applicant. If an applicant or qualified attorney disagrees with any changes in the examiner’s amendment, he or she should contact the examining attorney immediately after reviewing or receipt of the examiner’s amendment, preferably by telephone or email.

Note: In a §66(a) application, an examiner’s amendment may not be issued on first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

707.03    Form of the Examiner’s Amendment

An examiner’s amendment should include the following information:  the name, law office, telephone number, and email address of the examining attorney; the name of the person interviewed; the date of the interview; the actual amendment; and, if applicable, a statement to the effect that the amendment has been authorized by the applicant or the applicant’s qualified U.S. attorney.

The examiner’s amendment must not include a response clause, because a written response by the applicant is not required for an examiner’s amendment.

The examiner’s amendment must include a search clause (see TMEP §704.02) if it is a first action.

The examining attorney must not state in the examiner’s amendment that the application is ready for publication or issue, because some unforeseen circumstance might require that further action be taken in the application.

The examiner’s amendment must indicate any refusals or requirements that are withdrawn and/or continued by the examining attorney.