T.M.E.P. § 1504.03
Action By Examining Attorney After Publication
Executive summary:
This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.
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1504.03 Action By Examining Attorney After Publication
If it is found necessary, e.g., through internal quality review by the Office, for an examining attorney to refuse registration or to make a requirement after a mark has been published for opposition, jurisdiction over the application must be restored to the examining attorney.
With the exception of applications that are the subject of inter partes proceedings before the Board (see TMEP §1504.05(a)) , the examining attorney can telephone an applicant and issue an examiner's amendment without restoration of jurisdiction. However, if the examining attorney issues an Office action, even if merely asking for additional information, the examining attorney must request jurisdiction, because the request for additional information is a "requirement."
If it is necessary to issue an Office action after publication, the examining attorney must check the status of the application to determine whether the Board has received a notice of opposition. If the Board has not received a notice of opposition, the examining attorney should prepare a request to restore jurisdiction, directed to the Director. See TMEP §1504.04(a). If a notice of opposition has been filed, jurisdiction is with the Board, and the examining attorney should file a request for remand, directed to the Board. See TMEP §1504.05(a).
If a request for an extension of time to file an opposition has been filed, the Board does not have jurisdiction, so the examining attorney must file a request for jurisdiction addressed to the Director. It is not necessary for the examining attorney to notify the Board that he or she proposes to take action on the application.
See TMEP §§1505 et seq. regarding amendments proposed by applicants after publication.