T.M.E.P. § 1109.08
The 'Clear-Error' Standard in Examination of the Statement of Use
Executive summary:
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1109.08 The "Clear-Error" Standard in Examination of the Statement of Use
Generally, in examining the statement of use, the Office will only issue requirements or refusals concerning matters related to the statement of use. The Office will not issue any requirements or refusals concerning matters that could or should have been raised during initial examination unless the failure to do so in initial examination constitutes a clear error. "Clear error" means an error that, if not corrected, would result in issuance of a registration in violation of the Act. The failure to make a refusal is a clear error if reasonable minds could not differ as to the propriety of the refusal.
The examining attorney must act on all new issues arising in the examination of the statement of use. For example, the examining attorney must issue a refusal if the specimen fails to show use of the designation as a mark. See TMEP §§1202 et seq. and 1301.02 et seq.
The examining attorney may not issue a refusal under Trademark Act §2(e)(1), 15 U.S.C. 1052(e)(1), unless the refusal is dictated by changed circumstances from the time of initial examination, or the failure to issue such a refusal would be a clear error. If a significant length of time has elapsed since the initial examination, in some cases, the mark may have become descriptive or even generic as applied to the goods or services. In such a case, the evidence of the descriptive or generic use would not have been available during initial examination, so the clear error standard would not apply.
However, if evidence that the mark is merely descriptive was available during initial examination and the refusal could or should have been issued in initial examination, the examining attorney may not issue the refusal unless there is clear error. That is, the evidence of descriptiveness must be substantial and unequivocal.
Likewise, the examining attorney must not issue requirements or refusals related to informalities that could or should have been addressed during the initial examination unless there is clear error.
If the goods or services were classified incorrectly and published for opposition in the wrong class, the examining attorney should require correction of the classification, because publication in the wrong class is a clear error.
If a disclaimer could or should have been required during initial examination, the examining attorney should not require a disclaimer during the examination of the statement of use unless there is clear error. For example, a disclaimer of all of the wording in a mark may be required under the clear-error standard when the mark consists of merely descriptive wording and distinctive design elements if the evidence of descriptiveness is substantial and unequivocal. Issuing a registration without the disclaimer would violate the Act by granting the applicant rights beyond those to which the applicant is entitled.
Generally, the Office will not conduct any search for conflicting marks or issue any refusals under §2(d) of the Act in the examination of the statement of use. However, if the examining attorney determines that a second search is necessary, the examining attorney will conduct a second search and take any action that is appropriate. Sometimes, the Office may discover a clear error during internal Office quality review or through a letter of protest. The Office will not issue any refusal under §2(d) in the examination of the statement of use unless the failure to issue the refusal constitutes a clear error.
On appeal, the Trademark Trial and Appeal Board will review only the correctness of the underlying substantive refusal of registration. The Board will not second guess the application of the "clear error" standard. The question of whether the examining attorney properly applied the "clear error" standard is reviewable on petition under 37 C.F.R. 2.146. In re Sambado & Son, Inc., 45 USPQ2d 1312 (TTAB 1997). See TMEP §Chapter 1700 regarding petitions.