T.M.E.P. § 1106.02
Action by Examining Attorney After Issuance of the Notice of Allowance

Executive summary:

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1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance

If, after issuance of the notice of allowance but before submission of the statement of use, the Office determines that a clear error was made in approving the mark for publication, the Office will cancel the notice of allowance and return the application to examination. The examining attorney will issue an appropriate Office action that includes the relevant requirement or refusal and informs the applicant of the cancellation of the notice of allowance. See TMEP §1106.03 regarding cancellation of the notice of allowance.

After the notice of allowance issues, the examining attorney has jurisdiction to act in the case. 37 C.F.R. 2.84(a). Therefore, the examining attorney does not have to request jurisdiction to take an action, as would be required to take an action after publication but before the notice of allowance issues. However, after a notice of allowance issues, the examining attorney should not make a refusal or requirement that could or should have been made during initial examination of the application unless the initial failure to make the refusal or requirement was a clear error. See TMEP §1109.08 regarding the "clear error" standard. If, after the notice of allowance issues, the examining attorney determines that he or she must make a refusal or requirement that could or should have been made during initial examination of the application, the examining attorney should consult the managing attorney or senior attorney before taking any such action. This must be done whether the action is to be taken before, during or after examination of the statement of use, and regardless of whether the notice of allowance is cancelled. This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.