707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney
Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified practitioner (sometimes referred to as a "no-call" examiner’s amendment) in the following situations:
- (1) In applications under §1 or §44, changes to international classification, either before or after publication ( see Groening v. Mo. Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r Pats. 1999));
- (2) Deletion of "TM," "SM," "©," or "®" from the drawing;
- (3) Addition of a description of the mark where an Office action or regular examiner’s amendment is otherwise unnecessary and one of the following conditions applies:
- (a) The record already contains an informal indication of what the mark comprises ( see TMEP §808.03(b));
Example - The cover letter accompanying a paper application refers to the mark as a stylized golf ball design. If appropriate, the examining attorney could enter an amendment that "the mark consists of the stylized design of a golf ball."
Example – The application refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but the color yellow is omitted from the formal description of the colors in the mark ( see TMEP §807.07(a)(ii)). The examining attorney may enter an amendment of the formal color description to accurately reflect all colors in the mark;
- (b) The mark consists only of wording in stylized font, with no color claim and with no design element, and the applicant did not provide the "literal element" of the mark in the appropriate field ( see TMEP §808.03(b)); or
- (c) The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording ( see TMEP §808.03(b)).
- (4) If the examining attorney determines that a description of the mark will not be printed in the Official Gazette or on the registration certificate, and it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters, the examining attorney may enter a Note to the File in the record or issue a "no-call" amendment to that effect. See TMEP § 808.03;
- (5) In applications under §1, amendment of the application to enter a standard character claim when the record clearly indicates that the drawing is intended to be in standard character form. See TMEP § 807.03(g);
- (6) Correction of obvious misspellings, typographical errors, and redundancies in the identification of goods/services, or in an otherwise accurate and complete description of the mark. See TMEP §§808.03(a), 1402.01(a);
Example - The goods are identified as "T-shurtz." The examining attorney may amend to "T-shirts." However, "shurtz" may not be amended to "shirts" without calling the applicant, because "shurtz" (without the "T-" prefix) might also be a misspelling of "shorts."
- (7) When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods, services, and/or class(es), the examining attorney may issue an examiner’s amendment deleting the goods/services/classes to which the refusal or requirement pertained. Similarly, when an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney may issue an examiner’s amendment deleting the unacceptable terminology from the identification. See TMEP §§718.02(a), 1402.13;
- (8) In applications under §1 or §44, deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual. Bracketed material sometimes appears in the Manual for informational purposes but should not be included in an identification of goods/services. See TMEP §1402.12. If this material is entered in an identification in an application submitted through TEAS, it will be automatically deleted in all TEAS applications. If submitted in a paper application or in an amendment or response submitted through TEAS, the examining attorney may delete the bracketed material with a "no-call" examiner’s amendment;
- (9) If, in response to a general or specific inquiry about translation and/or transliteration of non-English wording in the mark, the applicant does not directly state that the term has no meaning in a foreign language but instead responds to the effect that "the mark has only trademark significance," the examining attorney may enter a statement that "the term has no meaning in a foreign language" into the record. See TMEP §809.01(a);
- (10) When an applicant provides a translation statement that has the proper translation but is in a format that is not suitable for printing, the examining attorney may "reformat" the statement, without changing the substance, into a simple, clear statement as to meaning. See TMEP §809.03.
- (11) When an application includes foreign wording that is not translated, and a translation of the same foreign wording appears in a prior registration for which the applicant has claimed ownership, and the translation is acceptable to the examining attorney, the examining attorney may enter the identical translation into the record. Note: If the application was filed using the TEAS Plus form and the translation was omitted, the examining attorney may not issue an examiner’s amendment without prior authorization. The examining attorney must take appropriate action requiring the translation and the additional TEAS Plus processing fee. 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a)(16), (b); TMEP §§ 819.01, 819.01(m).
- 12 When an application under §1 or §44 includes a disclaimer of the entire mark, and the application would otherwise be in condition for approval for publication or registration without the need to contact the applicant or issue an Office action, the examining attorney may issue an examiner’s amendment noting that the entire mark may not be disclaimed and that the disclaimer will be deleted from the record. See TMEP §1213.01(c) regarding unecessary disclaimers in applications under §66(a). The examining attorney must ensure that the disclaimer is removed.
- 13 When a response to an Office action includes a disclaimer of the entire mark, and the application would otherwise be in condition for approval for publication or registration, the examining attorney may issue an examiner’s amendment noting that the entire mark may not be disclaimed and that the disclaimer will be deleted from the record. The examining attorney must ensure that the disclaimer is removed.
If the examining attorney must contact the applicant or the applicant’s qualified practitioner about other matters, or if the record contains any ambiguity as to the applicant’s intent, the examining attorney should advise the applicant that the above changes have been made.
If the applicant has authorized e-mail communication with the USPTO, the applicant will receive an e-mail notification when an examiner’s amendment is issued. The applicant may then view and/or print the examiner’s amendment from the USPTO website. If the applicant has not authorized e-mail communication with the USPTO, a copy of the examiner’s amendment will be sent to the applicant. Any applicant who disagrees with any of these changes should contact the examining attorney immediately after reviewing or receipt of the examiner’s amendment, preferably by telephone or e-mail.
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.