TMEP 705: The Examining Attorney’s Letter or Action

This is the October 2015 Edition of the TMEP

Previous: §704.03 | Next: §705.01

705    The Examining Attorney’s Letter or Action

If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by e-mail or telephone communication, which is typically followed by a written action. This constitutes the examining attorney’s official action.

Written Office actions may be of a variety of styles, including: (1) an “examiner’s amendment” (see TMEP §§707–707.03), in which the examining attorney formally makes amendments to the application; (2) a “priority action” (see TMEP §§708–708.05), setting forth and explaining the requirements discussed by telephone with the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or with a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 (“qualified practitioner”) designated by the applicant; (3) a letter explaining the bases for refusal(s) or requirement(s); (4) an examiner’s amendment combined with a priority action (see TMEP §708.05); or (5) a suspension notice (see TMEP §§716–716.06). Office actions may be prepared through the use of standardized form paragraphs, in combination with language written to address the particular facts relevant to the refusal(s) or requirement(s). The examining attorney may send the Office action by regular mail or e-mail (if applicant has authorized e-mail communications). See TMEP §§304–304.09 regarding e-mail.

The USPTO encourages the use of examiner’s amendments and priority actions whenever appropriate.