T.M.E.P. § 1704
Petitionable Matter

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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1704 Petitionable Matter

Ex Parte Examination

Under 37 C.F.R. 2.63(b), an applicant may petition the Director to review an examining attorney's repeated or final requirement if the subject matter of the requirement is appropriate for petition. Under 37 C.F.R. 2.146(b), "[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions...."

Procedural issues reviewable on petition include whether a disclaimer was properly printed in standardized format; whether an examining attorney acted properly in suspending an application; whether an examining attorney acted properly in holding an application abandoned for failure to file a complete response to an Office action (see TMEP §1713) ; and whether it was premature for an examining attorney to issue a final action.

Substantive issues that arise in ex parte examination are not proper subject matter for petition, and may be reviewed only by the Trademark Trial and Appeal Board on appeal. See TMEP §§1501 et seq. regarding appeal procedure. For example, an examining attorney's requirement for a special form drawing that agrees with the mark shown on the specimens of record may not be reviewed on petition, because it requires an analysis of the commercial impression of the mark. In re Hart, 199 USPQ 585 (Comm'r Pats. 1978). An examining attorney's requirement for a disclaimer of a feature of a mark is also improper subject matter for petition. Ex parte Florida Citrus Canners Cooperative, 37 USPQ 463 (Comm'r Pats. 1938); Ex parte Kleen-O-Dent Laboratories, Inc., 37 USPQ 232 (Comm'r Pats. 1938). The question of whether an amendment to a drawing is a material alteration of the mark is not petitionable, but the question of whether USPTO practice permits an applicant to correct an allegedly obvious typographical error on a drawing was found to be reviewable on petition. In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm'r Pats. 1990). The determination of what is appealable and what is petitionable is made on a case by case basis.

Some issues that arise in ex parte examination may be reviewed by either petition or appeal. For example, a requirement for amendment of an identification of goods may be reviewed either by petition or appeal. In re Stenographic Machines, Inc., 199 USPQ 313 (Comm'r Pats. 1978). On the other hand, a requirement for amendment of the classification is a procedural matter that can only be reviewed on petition. In re Tee-Pak, Inc., 164 USPQ 88 (TTAB 1969).

If an applicant files a petition from an examining attorney's formal requirement, the applicant may not subsequently appeal the requirement to the Trademark Trial and Appeal Board. 15 U.S.C. 1070; 37 C.F.R. 2.63(b).

See TBMP §1201.05 for further information about appealable versus petitionable subject matter in examination.

Post Registration

Trademark Rule 2.146(b) applies only to questions of substance that arise during ex parte examination of applications for registration. The Director considers questions of substance, such as whether a proposed amendment materially alters a registered mark, or whether a specimen supports use of a registered mark, when reviewing the action of a Post Registration examiner in connection with a proposed amendment filed under 15 U.S.C. 1057, or an affidavit of use under 15 U.S.C. 1058 or §1141k. The decisions of Post Registration examiners under 15 U.S.C. §§1057, 1058, 1059, and 1141k may not be appealed to the Trademark Trial and Appeal Board.

Inter Partes Proceedings Before Trademark Trial and Appeal Board

In an inter partes proceeding before the Trademark Trial and Appeal Board, a party may petition the Director to review an order or decision of the Board that concerns a matter of procedure and does not put an end to the litigation before the Board. See TBMP §§901.02(a) and 905.