TMEP 702.01: Order of Examination

October 2017 Edition of the TMEP

Previous: §702 | Next: §702.02

702.01    Order of Examination

In general, applications are assigned for examination in the order in which they are received in the United States Patent and Trademark Office ("USPTO"), unless the application is made "special."  See TMEP §702.02 regarding "special" applications.

Generally, amended applications (i.e., applications that contain a response from the applicant), remands from the Trademark Trial and Appeal Board, and statements of use are also reviewed in the order in which they are received in the USPTO.

If a voluntary amendment is submitted before the application is assigned for examination, it is placed in the record when filed and will be considered by the assigned examining attorney during initial examination of the application. Voluntary amendments, including those submitted immediately after the filing of an application and prior to examination, are subject to the same examination standards as amendments made in response to a refusal or requirement. Thus, if a voluntary amendment proposes changing the identification of goods or services, the permissible scope of the amendment is based on the original identification (assuming there is no previously acceptable amendment of the identification). See TMEP §§1402.07(d), (e). Likewise, a pre-examination voluntary amendment of the mark drawing or mark description will be compared to the original drawing or description to determine whether the amendment is a material alteration. See TMEP §807.14. See TMEP §807.17 regarding the processing of unacceptable amendments to drawings and TMEP §1402.15 regarding the processing of unacceptable amendments to identifications.

Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension.  See TMEP §§716–716.06 regarding suspension.

Examining attorneys should immediately act on inquiries regarding applications approved for publication or issue that are returned to the examining attorney to take action or provide information.

Where appropriate, the managing attorney may direct that a particular case be given special handling.

When an examining attorney resigns, the examining attorney should spend any remaining time in the Office getting his or her amended cases (including statements of use under 15 U.S.C. §1051(d) and appeal briefs), especially those with involved records, ready for final disposition.