705.01 Language in Examining Attorney’s Letter
The examining attorney must indicate the status of the application at the beginning of each letter.
In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as “Upon examination of this application....” The examining attorney must acknowledge any document received before the first action by identifying the document and the date of its receipt.
In subsequent actions, examining attorneys should begin letters with a sentence such as, “This Office action is in response to applicant’s communication filed on [date].” Other documents received, such as supplemental amendments, affidavits, and new drawings, should also be acknowledged.
Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act. For example, registration of a trademark should not be refused “because it is a surname,” but “because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act.”
Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested. However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.
The words “capable” and “incapable” should be reserved for addressing an amendment to the Supplemental Register.
Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions. However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.