T.M.E.P. § 1904.03
Notice of Refusal
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.
For more information on trademark law, please see the Trademark Section of BitLaw.
Previous Section (§1904.02) | Next Section (§1904.04)
1904.03 Notice of Refusal
1904.03(a) Notice Must be Sent Within 18 Months
Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit:
(1) A notification of refusal based on examination;
(2) A notification of refusal based on the filing of an opposition; or
(3) A notification of the possibility that an opposition may be filed after expiration of the 18-month period. If the USPTO notifies the IB of the possibility of opposition, it must send the notification of refusal within 7 months after the beginning of the opposition period or within one month after the end of opposition period, whichever is earlier.
Section 68(c) of the Trademark Act, 15 U.S.C. 1141h(c); Article 5.
If the USPTO does not send a notification of refusal of the request for extension of protection to the IB within 18 months, the request for extension of protection cannot be refused. Section 68(c)(4) of the Trademark Act; Article 5(5); Common Reg. 17(2)(iv). If the USPTO sends a notification of refusal, no grounds of refusal other than those set forth in the notice can be raised more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. Section 68(c)(3) of the Trademark Act.
1904.03(b) Requirements for Notice of Refusal
A final decision is not necessary; a provisional refusal is sufficient to meet the 18-month requirement. Under Common Reg. 17, a notice of provisional refusal must be dated and signed by the USPTO and must contain:
- The number of the international registration, preferably accompanied by an indication of the mark;
- All grounds of refusal;
- If there is a conflicting mark, the filing date, number, priority date (if any), the registration date and number (if available), the name and address of the owner, reproduction of the conflicting mark, and list of goods/services;
- A statement that the provisional refusal affects all the goods and/or services, or a list of the goods/services affected;
- The procedures and time limit for contesting the refusal, i.e., period for response or appeal of the refusal, and the authority with which an appeal can be filed;
- If the refusal is based on an opposition, the name and address of the opposer.
The IB will record the provisional refusal in the International Register and transmit it to the holder of the registration. Article 5(3); Common Reg. 17(4).
1904.03(c) §66(a) Applicant Must Respond to Notification of Refusal
A holder of an international registration who applies for an extension of protection to the United States will receive any notification of refusal through the IB. The holder must respond directly to the USPTO. The holder may be represented by an attorney who meets the requirements of 37 C.F.R. 10.14 (see TMEP §§601 and 602). Standard examination procedures are used to examine §66(a) applications.
A foreign attorney who does not meet the requirements of 37 C.F.R. 10.14 cannot represent the applicant or sign a response to an Office action on behalf of the applicant. See TMEP §§712.01 and 712.03.
1904.03(d) Refusal Pertaining to Less Than All the Goods/Services
If a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark is protected for the remaining goods/services, even if the holder does not respond to the notification of refusal. Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C. §§1141h(c) and 1141i(a), provide that an application under §66(a) of the Trademark Act is automatically protected with respect to any goods or services for which the USPTO has not timely notified the IB of a refusal.
Accordingly, 37 C.F.R. 2.65(a) provides that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to file a response (or a complete response) to the refusal or requirement, the application shall be abandoned only as to those particular goods/services. See TMEP §718.02(a) for further information about partial abandonment.
1904.03(e) Confirmation or Withdrawal of Provisional Refusal
If the USPTO has sent a notice of provisional refusal, once procedures regarding the refusal are complete, the USPTO must notify the IB that:
(1) protection is refused for all goods/services;
(2) the mark is protected for all goods/services; or
(3) the mark is protected for some specified goods/services.
Common Reg. 17(5). The IB will record this notice and send it to the holder.