TMEP 704.02: Examining Attorney’s Search

October 2017 Edition of the TMEP

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704.02    Examining Attorney’s Search

If the examining attorney finds no conflicting marks, but must write to the applicant about other matters, the examining attorney must inform the applicant that no conflicting marks have been found.  This is commonly called the "search clause."

In an application filed under §1 or §44 of the Trademark Act, if the examining attorney cannot make a proper search or cannot examine the application properly due to a lack of adequate information, the examining attorney must specifically indicate what information is needed, request that it be furnished, and state that further action on the matter will be taken as soon as the information is received.  See 37 C.F.R. §2.61(b) and TMEP §814 regarding requirements for additional information.

If some but not all of the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search in part.  The examining attorney must specifically indicate the good/services for which a search has been conducted by listing the goods/services for which no conflicting marks have been found, and, if relevant, issuing a §2(d) refusal that is specifically limited to certain goods/services.  See TMEP §718.02(a) regarding partial refusals.

If all the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search.  The examining attorney must issue a full refusal, require the necessary amendments to the goods/services, and state that further action on the merits with respect to likelihood of confusion will be considered as soon as a sufficiently definite identification of goods/services is received.

Before issuing a letter deferring action, the examining attorney should consult with the managing attorney or senior attorney.