1109.08 Examination of the Statement of Use – New Requirements and Refusals
Generally, in examining the statement of use, the USPTO will issue only requirements or refusals concerning matters related to the statement of use. The examining attorney should not make a requirement or refusal concerning matters that could or should have been raised during initial examination, unless the failure to do so in initial examination constitutes a "clear error;" i.e., would result in issuance of a registration in violation of the Act or applicable rules. See TMEP §706.01 regarding "clear error."
If the examining attorney determines that he or she must make a refusal or requirement that could or should have been made during initial examination of the application, the examining attorney must consult the managing or senior attorney before taking action. This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.
The examining attorney must act on all new issues arising in the examination of the statement of use. For example:
- The examining attorney must issue a refusal if the specimen fails to show use of the designation as a mark. See TMEP §§1202–1202.17(e)(vi) and 1301.02–1301.02(f) regarding use as a mark.
- The examining attorney must issue an appropriate refusal or requirement if there is evidence that the mark has become descriptive or generic as applied to the goods/services during the time that has elapsed since initial examination.
The applicant may also submit amendments to the application with the statement of use. Such amendments will be examined according to the same standards used during initial examination. If an amendment is not acceptable, and thus raises a new issue, the examining attorney will inform the applicant of the reason(s) why the amendment(s) is unacceptable and of any defect(s) that can be corrected to make the amendment acceptable.
Generally, the USPTO will not conduct a search for conflicting marks or issue any refusals under §2(d) of the Act during examination of the statement of use. However, if the examining attorney determines that, based on use on the specimen, for example, a second search is necessary, the examining attorney will conduct a second search and take any action that is appropriate.