T.M.E.P. § 708.04
Refusal of Registration in 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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708.04 Refusal of Registration in Priority Action

Priority actions are generally used when there are no statutory refusals. However, if there is a potential statutory refusal, and the examining attorney believes that an amendment or explanation will obviate the refusal, the examining attorney may attempt to resolve the issues through a priority action. An example would be a surname refusal where it is evident that the mark has been used in commerce for more than five years, and thus the refusal could be overcome by the submission of a claim of acquired distinctiveness under §2(f) of the Trademark Act. See TMEP §§1212 et seq. regarding §2(f).

When the applicant agrees to submit evidence to overcome a statutory refusal, the examining attorney should issue the refusal in the priority action, stating the basis for the refusal, citing the relevant sections of the statute and rules, and indicating the resolutions agreed upon.

If the priority action includes a final refusal, the priority action must clearly indicate that the refusal is FINAL, and should contain the supporting evidence necessary for a complete record on appeal. See TMEP §§714 et seq. regarding final actions.