T.M.E.P. § 1504.04
Restoration of Jurisdiction to Examining Attorney by Director
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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1504.04 Restoration of Jurisdiction to Examining Attorney by Director
If it is necessary to refuse registration or to make a requirement after publication of the mark for opposition and prior to the filing of a notice of opposition (see TMEP §1504.02) , the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take the specified action on the application. As noted in TMEP §1504.01 , however, the examining attorney does not have to request jurisdiction to act in a §1(b) application after issuance of the notice of allowance.
Normally, the Director will restore jurisdiction to the examining attorney only if there has been a clear error.
After actual publication of a mark, a restoration of jurisdiction to the examining attorney is possible only in the case of an application for registration on the Principal Register. A mark found registrable on the Supplemental Register is not published for opposition but is published only when it has registered.
The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act. 37 C.F.R. 2.84. However, when deciding whether to grant requests for jurisdiction of §66(a) applications, the Director must consider the time limits for notifying the IB of a refusal of a §66(a) application, set forth in Article 5(2) of the Madrid Protocol and §68(c) of the Trademark Act. See TMEP §1904.03(a).
1504.04(a) Request for Jurisdiction
The examining attorney's request for jurisdiction should be in the form of a memorandum to the Director, accompanied by the Office action that the examining attorney proposes to send to the applicant. The request should be signed by the examining attorney, the managing attorney, and the Administrator for Trademark Policy and Procedure.
In the Office action, the examining attorney should apologize for the untimeliness of the action because, at this point, except for possible opposition issues, the applicant is expecting issuance of a registration or notice of allowance. The action should provide a detailed explanation of the basis for the refusal or requirement, citing appropriate case law, even when addressing basic and well-established propositions.