708.02 Discussion of Issues and Agreements
The examining attorney must discuss the issues with the individual applicant, a person with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner. The broad definition of “person properly authorized to sign on behalf of the [applicant]” in 37 C.F.R. §2.193(e)(1) (see TMEP §§611.03(a), 804.04) does not apply to priority actions.
Only the applicant, someone with legal authority to bind the applicant, or a qualified practitioner can agree to a priority action. If the applicant is represented by a qualified practitioner, the examining attorney must speak directly to the practitioner. See TMEP §§602–602.03(e) for guidelines on persons authorized to practice before the USPTO in trademark matters.
If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the qualified practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to authorize issuance of the priority action, and will note this fact in the priority action.
Paralegals and legal assistants cannot authorize issuance of a priority action, even if only conveying the qualified practitioner’s approval by indicating that the practitioner has agreed to the priority action.
If the applicant is pro se, the examining attorney must speak directly to the individual applicant or to someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership). Cf. 37 C.F.R. §11.14(e). See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) may not authorize issuance of a priority action, unless he or she also has legal authority to bind the applicant.
During the telephone conversation, e-mail discussion, or other communication, the examining attorney must fully discuss all refusals and requirements relating to the application, and explain the reason(s) for each refusal or requirement. Whenever possible, the examining attorney should suggest appropriate language for amendments. A priority action is not appropriate when:
- 1. the examining attorney leaves a voicemail or e-mail message for the applicant or applicant’s qualified practitioner, but the applicant or practitioner does not call back or respond to the message;
- 2. the examining attorney telephones the applicant or applicant’s attorney but the attorney does not have time to discuss the application and requests that the examining attorney send a letter; or
- 3. the examining attorney e-mails the applicant or applicant’s attorney and merely states that there are problems with the application (e.g., indefinite identification, a disclaimer requirement, and clarification of entity type) and that a letter will be sent.
All the issues in the priority action must be discussed on the merits with the applicant or the applicant’s qualified practitioner in a good-faith attempt to resolve any issues and place the application in condition for publication or registration, as appropriate. However, an agreement as to precisely how all issues will be resolved is not necessary.
Example: If the goods are identified as “computer equipment,” the examining attorney may seek authorization to amend the identification to list the types of computer equipment. If the applicant or applicant’s attorney does not agree to the suggested amendment, the examining attorney may issue a priority action that fully explains the identification requirement. It may also state that “the applicant will submit an acceptable identification of goods that specifies the common commercial names of the types of computer equipment.” It is not necessary that there be an agreement that “the applicant will amend the identification of goods to, for example, computer keyboards, computer monitors, and computer printers.”
The priority action may state that the applicant will follow one of two alternative courses of action, for example, providing either an amended drawing or a new specimen.