TMEP 707: Examiner’s Amendment

This is the October 2015 Edition of the TMEP

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707    Examiner’s Amendment

An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application. An examiner’s amendment is a communication to the applicant in which the examining attorney states that the application has been amended in a specified way. Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner. Cf. 37 C.F.R. §§2.62(b), 2.74(b). See TMEP §707.01 regarding the authorization of an examiner’s amendment. Authorization is usually given in a telephone conversation, e-mail communication, or interview between the examining attorney and the applicant or the applicant’s qualified practitioner. See TMEP §§304–304.09 regarding e-mail.

The examining attorney may issue an examiner’s amendment whenever the required amendment does not have to be verified by the applicant. For example, in appropriate circumstances, an examiner’s amendment may be used to amend the identification of goods/services, enter a disclaimer, add the state of incorporation, or amend from the Principal to the Supplemental Register.

The following are examples of amendments that may not be made by examiner’s amendment: the dates of use, if verification would be required (see TMEP §903.04); the mark on a special-form drawing (see TMEP §§807.04–807.04(b)), if the changes would require the filing of a substitute special form drawing; and amendments that require the submission of substitute specimen(s) (see TMEP §904.05). An application cannot be expressly abandoned by examiner’s amendment (see TMEP §718.01).

An authorization to charge a fee to a deposit account cannot be entered by examiner’s amendment, unless the record already contains a written authorization, signed and submitted by someone authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.

Examiner’s amendments generally are not used when there are statutory refusals. However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner’s amendment.

Example: If the applicant could overcome a surname refusal for a mark that is in use in commerce by amending to the Supplemental Register, the examining attorney may initiate telephone or e-mail contact and suggest the amendment. If the applicant authorizes the amendment, the examining attorney may issue an examiner’s amendment amending the application to the Supplemental Register.

Example: If the mark contains the term “organic” and the applicant could overcome a potential deceptiveness refusal by amending the identification to state that the goods are organic, the examining attorney may initiate telephone or e-mail contact and suggest the amendment. If the applicant authorizes the amendment, the examining attorney may issue an examiner’s amendment amending the identification.

Example: If the applicant could overcome a likelihood-of-confusion refusal as to several registrations by amending a vague or indefinite identification of goods/services, the examining attorney may initiate telephone or e-mail contact and suggest the amendment only if it would obviate the refusals as to all the registrations that would be cited. If the applicant agrees to the proposed amendment clarifying the identification, the examining attorney may issue an examiner’s amendment. If the applicant does not agree with the examining attorney’s suggested identification and proposes an amendment that would obviate the refusal as to some, but not all, of registrations, the examining attorney may issue a combined examiner’s amendment/priority action. See TMEP §708.05. However, when it is clear from the outset that amending the identification would not obviate the refusal as to one or more of the registrations, the examining attorney must not initiate telephone or e-mail contact, because it is not possible to offer the applicant a specific action to place the application in condition for publication, suspension, or registration.

Example: If the identification is vague or indefinite, the examining attorney may seek authorization to amend the identification by examiner’s amendment, even when the amendment would not overcome a potential likelihood-of-confusion refusal. The examining attorney would then issue a notice of suspension. To ensure that the applicant understands that amending the identification will only put the application in condition for suspension, during the telephone or e-mail discussion, the examining attorney must notify the applicant of the prior pending application and the forthcoming suspension. The resulting examiner’s amendment should also include this information.

See TMEP §708.04 regarding priority actions involving statutory refusals.

An examining attorney without partial signatory authority must have proper authorization from the managing attorney, senior attorney, or a reviewing examining attorney before initiating an examiner’s amendment.

See TMEP §707.03 regarding the form of an examiner’s amendment.

An applicant should not file correspondence confirming an examiner’s amendment, because this will delay processing of the application. A written response to an examiner’s amendment is not required.

If an applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by telephone or e-mail), so that the objection can be considered before publication or issue. See TMEP §1402.07(e) regarding an applicant’s objection to an examiner’s amendment of the identification of goods/services on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.

Often an applicant will seek to respond to an outstanding Office action with an amendment or other response by telephone. The examining attorney is encouraged to enter an examiner’s amendment if this amendment will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See TMEP §§716–716.06 regarding suspension. However, an applicant does not have an unlimited right to the entry of an examiner’s amendment in response to an Office action. If the applicant does not agree to an amendment that the examining attorney believes will immediately place the application in condition for publication for opposition or issuance of a registration, the applicant must file a complete written response to the outstanding Office action.

See TMEP §708.05 regarding combined examiner’s amendment/priority actions.

NOTE: In a §66(a) application, an examiner’s amendment may not be issued on first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.