TMEP 1715.02(b): Action by Examining Attorney Before Publication

This is the October 2015 Edition of the TMEP

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1715.02(b)    Action by Examining Attorney Before Publication

Under the standard for accepting a pre-publication letter of protest, the examining attorney is not required to issue a refusal as a result of the acceptance. The examining attorney is required only to consider the evidence and make an independent determination whether to issue the requirement or refusal requested in the letter of protest. The examining attorney need not inform the applicant that a letter of protest was accepted unless he or she is issuing a refusal based upon the information provided with the letter of protest. The prosecution history of the application will reflect the acceptance of a letter of protest and a memorandum accepting the letter of protest and all relevant evidence will become part of the official record. If the examining attorney decides against issuing the requirement or refusal, the prosecution history of the application in the Trademark database will be updated to indicate “LETTER OF PROTEST EVIDENCE REVIEWED.”

Letters of Protest Filed Before Publication but Accepted After Publication

In certain circumstances, a letter of protest filed before publication may not be reviewed by the Deputy Commissioner until after publication or during the period when the USPTO cannot withdraw the mark from publication. Such letters are reviewed under the pre-publication standard. If accepted and referred to the examining attorney after publication, the examining attorney is not required to issue a refusal or requirement as a result of the acceptance. However, the examining attorney must consult with his or her managing attorney to determine whether a refusal or requirement is warranted.

If it is determined that a refusal or requirement must be made after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take action on the application. See TMEP §1504.04. If a notice of opposition has been filed, the examining attorney must request that the Board remand the application so that the examining attorney may take the specified action. See TMEP §1504.05.

If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction over the application. 37 C.F.R. §2.84(a). If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and a statement of use has not been filed, before issuing an Office action, he or she must contact the ITU/Divisional Unit to cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use. See TMEP §1106.03.

If the letter of protest concerns a mark for which a statement of use has been filed, the examining attorney has jurisdiction over the application. If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and no action has been taken on the statement of use, he or she must review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest. If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusal(s) or requirement(s) resulting from the letter of protest and incorporating by reference or restating any other outstanding refusal(s) or requirement(s).