T.M.E.P. § 708.02
Discussion of Issues and Agreements
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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708.02 Discussion of Issues and Agreements
The examining attorney must discuss the issues with the individual applicant, the applicant's attorney, or a person with legal authority to bind a juristic applicant. The broad definition of "persons properly authorized to sign on behalf of an applicant" in 37 C.F.R. 2.33(a) (see TMEP §804.04) does not apply to priority actions. Priority actions are governed by 37 C.F.R. 10.14(e). Only the applicant or the applicant's attorney can agree to a priority action. If the applicant has an attorney, the examining attorney must speak to the attorney of record. If the applicant is pro se, the examining attorney must speak to the individual applicant or to someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership). A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. 2.33(a)(2) is not entitled to authorize a priority action unless he or she has legal authority to bind the applicant. See TMEP §§712.01 et seq. for guidelines on persons who have legal authority to bind various types of applicants.
During the telephone conversation or other communication with the applicant or the applicant's attorney, the examining attorney should fully discuss all issues and requirements relating to the application, and should explain the reason for each requirement. The examining attorney should suggest appropriate language for amendments, where appropriate.
A priority action is not appropriate when the examining attorney leaves a voice mail or e-mail message for the applicant or the applicant's attorney, but the applicant or attorney does not call back or respond.
An agreement as to precisely how all issues will be resolved is not necessary. For example, the priority action may state that "the applicant will submit an acceptable identification of goods that specifies the common commercial names of the 'computer equipment.'" It is not necessary that there be an agreement that "the applicant will amend the identification of goods to read: computer keyboards, computer monitors and computer printers."
The priority action may state that the applicant will follow one of two alternative courses of action, for example, providing either an amended drawing or a new specimen.