TMEP 1904.03(b): Requirements for Notice of Refusal

October 2017 Edition of the TMEP

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1904.03(b)    Requirements for Notice of Refusal

A final decision is not necessary; a provisional refusal is sufficient to meet the 18-month requirement.  Under Common Reg. 17, a notice of provisional refusal must be dated and signed by the USPTO and must contain:

  • The number of the international registration, preferably accompanied by an indication of the mark;
  • All grounds of refusal;
  • If there is a conflicting mark, the filing date, serial number, priority date (if any), registration date and number (if available), name and address of the owner, reproduction of the conflicting mark, and list of goods/services;
  • A statement that the provisional refusal affects all the goods/services, or a list of the goods/services affected;
  • The procedures and time limit for contesting the refusal, i.e., period for response or appeal of the refusal, and the authority with which an appeal can be filed;
  • If the refusal is based on an opposition, the name and address of the opposer.

Common Reg. 17(2).

The IB will record the provisional refusal in the International Register and transmit it to the holder of the registration.  Article 5(3); Common Reg. 17(4).