BitLaw

Chapter 700: Procedure for Examining Applications

701: Statutory Authority for Examination

702: Order of Work

702.01: Order of Examination

702.02: "Special" Applications

702.03: Related Applications

702.03(a): Companion Applications

702.03(a)(i): Companion Applications Not Previously Assigned for the Same or Similar Marks

702.03(a)(ii): Companion Applications Previously Assigned

702.03(a)(iii): Companion Registrations

702.03(a)(iv): Classification and Identification in Companion Applications that Have Registered or Been Published for Opposition

702.03(b): Conflicting Applications

703: USPTO Does Not Issue Duplicate Registrations

704: Initial Examination

704.01: Initial Examination Must Be Complete

704.02: Examining Attorney’s Search

704.03: Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney

705: The Examining Attorney’s Letter or Action

705.01: Language in Examining Attorney’s Letter

705.02: Examining Attorneys Should Not Volunteer Statements

705.03: Citation of Conflicting Marks

705.04: Reference to Matter in Printed or Online Publications

705.05: Citation of Decisions and USPTO Publications

705.06: Reviewing and Signing of Letters

705.07: Processing Outgoing Office Actions

705.08: Response Clause

706: New Matter Raised by Examining Attorney After First Action

706.01: Clear Error

707: Examiner’s Amendment

707.01: Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney

707.02: Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney

707.03: Form of the Examiner’s Amendment

708: Priority Action

708.01: Priority Action Defined

708.02: Discussion of Issues and Agreements

708.03: Form of the Priority Action

708.04: Refusal of Registration in Priority Action

708.05: Combined Examiner’s Amendment and Priority Action

709: Interviews

709.01: Personal Interviews

709.02: Persons With Whom the Examining Attorney May Discuss the Application in an Interview

709.03: Making Substance of Interview of Record

709.04: Telephone and Email Communications

709.05: Informal Communications

709.06: Interviews Prior to Filing Application

709.07: Decorum Required in Communications with the Office

710: Evidence

710.01: Evidence Supporting Refusal or Requirement

710.01(a): Evidence from Research Database

710.01(b): Internet Evidence

710.01(c): Record Must Be Complete Prior to Appeal

710.02: Search for Evidence Indicating No Refusal or Requirement Necessary

710.03: Evidence of Third-Party Registrations

711: Deadline for Response to Office Action

711.01: Request for Extension of Time to Respond

711.01(a): Requirements for Request for Extension of Time to Respond

711.01(b): Time for Filing a Request for Extension of Time to Respond

711.02: Time May Run from Previous Action

711.03: Supplemental Office Action Resetting Response Period

712: Signature on Response to Office Action

712.01: Persons Who May Sign Response

712.02: Unsigned Response

712.03: Response Signed by an Improper Person

713: Examination of Amendments and Responses to Office Actions

713.01: Previous Action by Different Examining Attorney

713.02: Noting All Outstanding Refusals or Requirements

713.03: Response to Applicant’s Arguments in Nonfinal Actions

714: Final Action

714.01: Not Permissible on First Action

714.02: Not Permissible on Suspension

714.03: When Final Action is Appropriate

714.04: Form of the Final Action

714.05: Delineating New Issues Requiring Issuance of Nonfinal Action

714.05(a): When an Amendment Proposed By Applicant Requires a New Nonfinal Action

714.05(a)(i): Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness

714.05(a)(ii): Amendment of Identification of Goods/Services

714.05(b): Section 2(d) Refusal Based on Earlier-Filed Application that Has Matured Into Registration

714.05(c): Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement

714.05(d): Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal

714.05(e): Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce

714.05(f): Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark

714.06: Applicant’s Recourse When Final Action is Premature

715: Action After Issuance of Final Action

715.01: Proper Response to Final Action

715.02: Action After Final Action

715.03: Request for Reconsideration After Final Action

715.03(a): Examining Attorney’s Action When No New Issue or No Significantly Different Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed

715.03(a)(i): Request for Reconsideration Resolves All Outstanding Issues and No Notice of Appeal Has Been Filed

715.03(a)(ii): Request for Reconsideration Does Not Resolve All Outstanding Issues and No Notice of Appeal Has Been Filed

715.03(a)(ii)(A): Prior Amendment Withdrawn

715.03(a)(ii)(B): Outstanding Refusals and/or Requirements Must Be Continued, Time Remains in Response Period for Applicant to Appeal, and No Notice of Appeal Has Been Filed

715.03(a)(ii)(C): Outstanding Refusals and/or Requirements May Be Resolved if Applicant Is Given 30 Days or Time Remaining in Response Period to Comply with Issues

715.03(a)(ii)(D): Outstanding Refusals and/or Requirements Must Be Continued, Time for Appeal Has Expired, and No Notice of Appeal Has Been Filed – Abandon for Incomplete Response

715.03(a)(ii)(E): Responses After Final Refusal Signed by Unauthorized Persons, Unsigned Responses, TEAS Responses Consisting Solely of a Signature, and TEAS Responses Missing Significant Data or Attachments

715.03(b): Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed

715.03(c): Time for Appeal Runs from Issue Date of Final Action

715.04: Request for Reconsideration Filed in Conjunction with Notice of Appeal

715.04(a): Examining Attorney's Action When No New Issue Is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed

715.04(b): Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed

716: Suspension of Action by USPTO

716.01: Form of Suspension Notice

716.02: Circumstances Under Which Action May Be Suspended

716.02(a): Applicant’s Petition to Cancel Cited Registration

716.02(b): Submission of Copy of Foreign Registration in §44(d) Application

716.02(c): Conflicting Marks in Pending Applications

716.02(d): Inter Partes or Court Proceeding

716.02(e): Pending Cancellation or Expiration of Cited Registration

716.02(f): Pending Expiration of "Insurance" Extension Request

716.02(g): Pending Receipt of a Correction, Limitation, Assignment, or other Change to the International Record from the International Bureau

716.02(h): Pending Recordation of an Assignment Document

716.02(i): Pending Registry Agreement with ICANN for Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services

716.02(j): Pending Disposition of Expungement or Reexamination Proceedings

716.02(k): Pending Disposition of Post Registration Audit

716.02(l): Pending Decision on a Petition to Waive the Domicile Address Requirement

716.03: Applicant’s Arguments Against Suspension

716.04: Suspended Docket Checked

716.05: Inquiry by Examining Attorney Regarding Suspended Application

716.06: Suspension After Final Action

717: Reissuing an Office Action

717.01: Email Notice of Office Action Undeliverable

717.02: Permitted Paper Filings: Non-Receipt of Mailed Office Action

718: Abandonment

718.01: Express Abandonment by Applicant or Applicant’s Attorney

718.02: Failure by Applicant to Take Required Action During the Relevant Response Period

718.02(a): Partial Abandonment

718.03: Incomplete Response

718.03(a): Holding of Abandonment for Failure to Respond Completely

718.03(b): Granting Additional Time to Perfect Response

718.04: Failure to File Statement of Use

718.05: Failure to Perfect Appeal

718.06: Notice of Abandonment for Failure to Respond

718.07: Revival or Reinstatement of Abandoned Application - New Search Required

719: Non-Responsive Communications

720: Fraudulent Filings