TMEP 1904.03(d): Refusal Pertaining to Less than All the Goods/Services

October 2017 Edition of the TMEP

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1904.03(d)    Refusal Pertaining to Less than All the Goods/Services

If a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark may be protected for the remaining goods/services, even if the holder does not respond to the notification of refusal.  Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C. §§1141h(c), 1141i(a), provide that an application under §66(a) of the Trademark Act is automatically protected with respect to any goods or services for which the USPTO has not timely notified the IB of a refusal by either ex officio examination or opposition.

Accordingly, 37 C.F.R. §§2.65(a) and 2.65(a)(i) provide that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to respond, or respond completely, to the refusal or requirement, the application shall be abandoned only as to those particular goods/services.  See TMEP §718.02(a) for further information about partial abandonment.