T.M.E.P. § 714.05
Delineating New Issues Requiring Issuance of Nonfinal 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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714.05 Delineating New Issues Requiring Issuance of Nonfinal Action
It is sometimes difficult to determine what constitutes a new issue requiring a new nonfinal action, rather than a final action, after receipt of a response. See TMEP §§714.05(a) through 714.05(c) regarding the propriety of issuing a final action in specific situations, and TMEP §715.03(b) regarding new issues presented in a request for reconsideration of an examining attorney's final action.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after date on which the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
714.05(a) Unacceptable Amendment Proposed By Applicant
Generally, an amendment that is unacceptable raises a new issue requiring a nonfinal action, unless the amendment is a direct response to a previous requirement.
If an amendment was not offered in direct response to a requirement, and the amendment is not acceptable, the examining attorney generally must issue a new, nonfinal action addressing the issues raised by the amendment and continuing all other refusals and requirements. The following are examples of amendments that would require a new nonfinal action:
(1) Amendments to the drawing, unless the examining attorney had previously required that the drawing be amended;
(2) Amendments to the Supplemental Register and amendments to assert acquired distinctiveness under 15 U.S.C. 1052(f), unless the amendment is irrelevant to an outstanding refusal (see TMEP §714.05(a)(i)) ;
(3) Amendments to disclaim the entire mark (see TMEP §1213.06) ;
(4) Amendments to the drawing that materially alter the mark, if the examining attorney had required a new drawing because the original drawing was of poor quality that could not be reproduced, but had not previously raised the issue of material alteration. See TMEP §714.05(c) regarding advisory statements.
However, evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a nonfinal action. See In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for same reason as the original specimens). Generally, the examining attorney may issue a final action if the same refusal or requirement was made before.
714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness
If registration is refused under §2(e)(1), §2(e)(2) or §2(e)(4) of the Trademark Act, 15 U.S.C. 1052(e)(1), §1052(e)(2) or §1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter (e.g., product or container configurations (see TMEP §§1202.02(b)(i) and (ii)) , color marks (see TMEP §§1202.05 et seq.), or marks that comprise matter that is purely ornamental (see TMEP §§1202.03 et seq.)), an amendment to the Supplemental Register or to claim acquired distinctiveness under 15 U.S.C. 1052(f) presents a new issue. This is true even if the examining attorney previously issued an advisory statement indicating that the examining attorney believed the mark to be unregistrable on the Supplemental Register or under §2(f).
If the examining attorney determines that the amendment does not overcome the refusal, the examining attorney should issue a nonfinal refusal of registration. See TMEP §816.04 regarding refusal of registration after an amendment to the Supplemental Register, and TMEP §1212.02(h) regarding refusal of registration after an applicant submits a claim of acquired distinctiveness under §2(f).
However, if the amendment is irrelevant to an outstanding refusal, the examining attorney may issue a final refusal or requirement. For example, if registration is refused under §2(a) (see TMEP §1203 et seq.), §2(b) (see TMEP §1204) , §2(d) (see TMEP §§1207 et seq.), §2(e)(3) (see TMEP §1210.01(b)) or §2(e)(5) (see TMEP §§1202.02(a) et seq.) of the Trademark Act, an amendment to the Supplemental Register or a claim of distinctiveness under §2(f) does not raise a new issue, and the examining attorney may issue a final refusal. See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (amendment to the Supplemental Register in response to a refusal of registration under §2(a) does not raise a new issue). Likewise, in a request for extension of protection of an international registration to the United States under §66(a) of the Trademark Act, an amendment to the Supplemental Register does not raise a new issue: A mark in a §66(a) application cannot be registered on the Supplemental Register. Section 68(a)(4) of the Trademark Act, 15 U.S.C. 1141h(a)(4). Thus, an amendment to the Supplemental Register cannot overcome the refusal.
Exception: An amendment to the Supplemental Register in a §1(b) application for which no allegation of use has been filed does raise a new issue, because the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. 1091, on the ground that the mark is not in lawful use in commerce. 37 C.F.R. 2.75(b); TMEP §1102.03. In this situation, if the applicant files a proper amendment to allege use or statement of use, the examining attorney will consider the amendment to the Supplemental Register.
See TMEP §715.03(b) regarding new issues presented in a request for reconsideration of an examining attorney's final action.
714.05(a)(ii) Amendment of Identification of Goods and Services
If the applicant responds to a nonfinal Office action requiring an amendment to the identification of goods and services, and the examining attorney determines that the identification is still unacceptable, generally the examining attorney must issue a final requirement to amend the identification of goods and services. There are only two exceptions to this rule:
(1) If the amended identification is broader in scope than the original identification, and the prior Office action failed to advise the applicant that amendments broadening the identification are prohibited under 37 C.F.R. 2.71(a), the examining attorney cannot issue a final Office action.
(2) If the amended identification sets forth goods and services in multiple classes, but the applicant has not submitted all the requirements for a multiple-class application (e.g., specimens and fees for all classes), and the prior Office action failed to advise the applicant that the missing elements were required, the examining attorney cannot issue a final Office action. See TMEP §§1403 et seq. regarding multiple-class applications.
714.05(b) Section 2(d) Refusal Based on Prior-Filed Application That Has Matured Into Registration
The examining attorney must issue a nonfinal action when first refusing registration under §2(d) of the Trademark Act, 15 U.S.C. 1052(d), even if the applicant had been advised of the existence of the prior-filed application before it matured into the registration on which the refusal is based.
In a §66(a) application, a nonfinal refusal under §2(d) of the Act may be issued more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO, provided that the USPTO had notified the IB of the conflicting application prior to expiration of the 18-month period.
714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
Except as provided in TMEP §714.05(a)(ii) , an advisory statement in an Office action indicating that a refusal or requirement will be issued if specified circumstances arise cannot serve as the foundation for issuing a final requirement or refusal in the next action. To establish the foundation for issuing a final refusal or requirement in the next Office action, an initial requirement or refusal must relate to matter that is of record at the time of the action.