T.M.E.P. § 814
Requesting Additional Information
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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814 Requesting Additional Information
Sometimes it is necessary for the examining attorney to request additional information from an applicant in order to examine the application properly. In re Air Products and Chemicals, Inc., 192 USPQ 157 (TTAB 1976); 37 C.F.R. 2.61(b). If the applicant does not comply with a requirement for information, registration may be refused.
If the applicant does not comply with the examining attorney's request for information, the requirement should be repeated and, if appropriate, made final. See In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003) (§2(e)(1) refusal moot, since failure to comply with requirement for information is sufficient basis, in itself, for refusal); In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (registration properly refused where applicant ignores request for information); In re Page, 51 USPQ2d 1660 (TTAB 1999) (intent-to-use applicant's failure to comply with requirement for information as to the intended use of the mark constitutes grounds for refusal); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney's request for copies of patent applications and other patent information).
The examining attorney may request literature, exhibits, and general information concerning circumstances surrounding the mark and, if applicable, its use or intended use. Requests for information that is not public knowledge, but is peculiarly within the knowledge of the applicant or available to the applicant, are particularly appropriate. The examining attorney should explain why the information is needed, if the reason is not obvious.
If applicant wants to provide information from its website in response to the examining attorney's request for information, applicant should print out the information and supply it to the examining attorney. A mere statement that information about the goods or services is available on applicant's website is an inappropriate response to the examining attorney's request for information, and insufficient to make the relevant information of record. In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004).
If applicant does not believe it has relevant information, applicant should submit a statement to this effect.
If the requested information is confidential, or if for a valid reason the applicant does not want to have the information become part of a public record, the applicant should explain those circumstances. Placing confidential information in a file is not required. Sometimes an explanation will suffice, or material may be shown to the examining attorney without formal filing. Usually a way can be found to give the necessary information to the examining attorney without imposing an undue burden on the applicant.