T.M.E.P. § 1102.01
Substantive Refusals
Executive summary:
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1102.01 Substantive Refusals
To the fullest extent possible, the examining attorney will examine an intent-to-use application for registrability under Trademark Act §§1, 2(a), 2(b), 2(c), 2(d), and 2(e), 15 U.S.C. §§1051 and 1052(a), (b), (c), (d), and (e), according to the same procedures and standards that apply to any other application. That is, the examining attorney must make all appropriate refusals with respect to issues such as ownership, deceptiveness, mere descriptiveness, geographic significance, and surname significance. In re Bacardi & Co. Limited, 48 USPQ2d 1031 (TTAB 1997); In re American Psychological Association, 39 USPQ2d 1467 (Comm'r Pats. 1996). The examining attorney cannot issue a requirement or refusal under these sections during examination of the statement of use if the issue could or should have been raised during initial examination, unless the failure to issue the refusal or requirement would be a clear error. See TMEP §1109.08.
Where a significant length of time has elapsed since the initial examination, a mark may have become descriptive or even generic as applied to the goods or services. In such a case, since the evidence of the descriptive or generic use would not have been available during initial examination, the refusal may be issued during second examination. TMEP §1109.08.
The examining attorney should investigate all possible issues regarding registrability through all available sources. If appropriate, the examining attorney may request that the applicant provide literature or an explanation concerning the intended manner of use of the mark under 37 C.F.R. 2.61(b). See In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).
While the examining attorney must examine and act on all possible issues in the initial examination of the application, refusals specifically tied to use of the mark (e.g., ornamentation) should generally be addressed after the applicant submits an amendment to allege use or statement of use and a specimen. See TMEP §§1202 et seq. regarding use as a mark. However, in a §1(b) application for which no specimen has been submitted, if the examining attorney believes that a refusal of registration on the ground that the subject matter does not function as a mark may be made after an allegation of use is submitted, this potential refusal should be brought to the applicant's attention in the first action issued by the Office. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the Office is not precluded from refusing registration on this basis.