T.M.E.P. § 707.02
Examiner's Amendment Without Prior Authorization by Applicant or Applicant's Attorney

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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707.02 Examiner's Amendment Without Prior Authorization by Applicant or Applicant's Attorney

Examining attorneys have the discretion to amend applications by examiner's amendment without prior approval by the applicant or the applicant's attorney, in the following situations:

(1) changes to international classification, either before or after publication (see Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm'r Pats. 1999) regarding amendments to international classification after publication);

(2) deletion of "TM," "SM," "(c)" or "(r)" from the drawing;

(3) addition of a formal description of the mark where it is necessary (see TMEP §§808 et seq.) and where the record already contains an informal indication of what the mark comprises;

Example - The cover letter accompanying the application refers to the mark as a stylized golf ball design. If appropriate, the examining attorney could enter an amendment that "the mark consists of the stylized design of a golf ball."

(4) amendment of the application to enter a standard character claim, when the record clearly indicates that the drawing is intended to be in standard character form (see TMEP §§807.03(a) and 807.03(g)) ;

(5) addition of lining and stippling statements, where the statement is necessary (see TMEP §808.01(d)) , and where the significance of the lining or stippling is indicated by the specimen or other information of record;

(6) correction of obvious misspellings in the identification of goods and services.

Example - The goods are recited as "T-shurtz." The examining attorney could amend to "T-shirts." However, "shirtz" could not be amended to "shirts" without calling the applicant, because "shirtz" (without the "T-" prefix) might also be a misspelling of "shorts."

(7) When an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney may issue an examiner's amendment deleting the unacceptable terminology from the identification. See TMEP §§718.02(a) and 1402.13.

If the examining attorney must contact the applicant or the applicant's attorney about other matters, or if the record contains any ambiguity as to the applicant's intent, the examining attorney should advise the applicant that the above changes have been made.

A copy of the examiner's amendment will be sent to the applicant or applicant's attorney. Any applicant or applicant's attorney who disagrees with any of these changes should contact the examining attorney immediately after receipt of the examiner's amendment, preferably by phone, e-mail or fax.