1504.03 Action by Examining Attorney After Publication
If it is found necessary (e.g., through internal quality review), for an examining attorney to refuse registration or to make a requirement after a mark has been published for opposition, jurisdiction over the application must be restored to the examining attorney.
With the exception of applications that are the subject of inter partes proceedings before the Board ( see TMEP §1504.05), the examining attorney can telephone an applicant and issue an examiner’s amendment without restoration of jurisdiction. However, if the examining attorney issues an Office action, even if merely asking for additional information, the examining attorney must request jurisdiction, because the request for additional information is a “requirement.”
If it is necessary to issue an Office action after publication, the examining attorney must check the status of the application to determine whether the Board has received a notice of opposition. If a request for an extension of time to file an opposition has been filed, the examining attorney should prepare a request to restore jurisdiction, directed to the Director. See TMEP §1504.04(a). If a notice of opposition has been filed, jurisdiction is with the Board, and the examining attorney should file a request for remand, directed to the Board. See TMEP §1504.05.
When it is necessary to issue an Office action after publication in a §1(a) application, but it is too late to withdraw the application from issuance of a registration, the examining attorney should bring the matter to the attention of the Deputy Commissioner for Trademark Examination Policy. After registration, the Deputy Commissioner may restore the application to pendency and refer it to the examining attorney for appropriate action.
See TMEP §§1505 et seq. regarding amendments proposed by applicants after publication.