T.M.E.P. § 708.03
Form of the Priority Action

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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708.03 Form of the Priority Action

The priority action should reference the date of the telephone call, e-mail message or other communication, and the name and title (where appropriate) of the person who authorized the priority action. See TMEP §708.02 for information about who is authorized to agree to a priority action.

The priority action should also discuss all refusals and requirements, and reference all agreements reached during the communication between the examining attorney and the applicant. See TMEP §708.02 regarding agreements.

The examining attorney should discuss each issue separately, stating the reason for the requirement and/or citing the relevant sections of the statute, rules, and/or TMEP. In view of the initial discussion between the examining attorney and the applicant or applicant's attorney, the explanation of a requirement may be more abbreviated in a priority action than in a regular Office action. However, the essential nature of the requirement must be clearly stated in the priority action, because the action of the USPTO is based exclusively on the written record. 37 C.F.R. 2.191.

A priority action must include a six-month response clause (see TMEP §705.08) so that it is clear that the applicant must timely respond to the issues raised in the priority action to avoid abandonment of the application.

The priority action should include a search clause (see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.

A priority action may be used for a final or nonfinal refusal or requirement. See TMEP §708.04 regarding refusal of registration in a priority action, and TMEP §§714 et seq. regarding final actions.