TMEP 708.04: Refusal of Registration in Priority Action

October 2017 Edition of the TMEP

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708.04    Refusal of Registration in Priority Action

Priority actions are generally used when there are no statutory refusals.  However, if there is sufficient evidence to support a statutory refusal, and the examining attorney believes that an amendment or explanation will obviate the refusal, the examining attorney may attempt to resolve the issues through a priority action.

Example:  If the applicant could overcome a surname refusal by submitting a claim of acquired distinctiveness under §2(f) of the Trademark Act for a mark that has been used in commerce for more than five years, the examining attorney may initiate telephone or e-mail contact and discuss the refusal and the requirements for submitting a claim of acquired distinctiveness.  See TMEP §§1212–1212.10 regarding §2(f).  Because the claim of five years of use is generally required to be supported by a properly signed affidavit or declaration under 37 C.F.R. §2.20, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and reiterates the suggested amendment and requirement.

Example: If the applicant could overcome a likelihood-of-confusion refusal limited to a particular class or classes in a multiple-class application by deleting the class(es), the examining attorney may initiate telephone or e-mail contact and suggest the amendment. If the applicant or applicant’s attorney does not authorize an examiner’s amendment, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and expressly states that the refusal is limited to only certain class(es). See TMEP §718.02(a).

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.  If the applicant or applicant’s attorney does not authorize an examiner’s amendment, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and reiterates the suggested amendment to the identification.  However, if amending the identification would obviate the refusal as to fewer than all of the registrations, the examining attorney must not initiate telephone or e-mail communication, and, therefore, may not issue a priority action.

Example:  If there are multiple co-pending applications, and a likelihood-of-confusion refusal could be obviated as to some of the applications by amending the identification, the examining attorney may initiate telephone or e-mail contact and suggest the amendment only as to those applications.  If the applicant or applicant’s attorney does not authorize an examiner’s amendment, the examining attorney may issue priority actions that fully discuss the refusal, include sufficient evidence to support the refusal, and reiterate the suggested amendment to the identification.  The examining attorney may not issue a priority action for any co-pending applications where an amendment to the identification would not obviate the refusal.

Example:  If the applicant could overcome a descriptiveness 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 to discuss the refusal and suggest the amendment.  If the applicant’s attorney agrees that the mark is descriptive, but needs to consult with the applicant about amending to the Supplemental Register, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and offers the option of amending to the Supplemental Register.

Example:  If the applicant could overcome a geographically descriptive 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 to discuss the refusal and suggest the amendment.  Even if the applicant disagrees as to the merits of the underlying refusal, the examining attorney may issue a priority action that fully discusses the refusal, includes sufficient evidence to support the refusal, and reiterates the option of amending to the Supplemental Register.

In the priority action, the examining attorney must clearly state the basis for the refusal that was discussed, citing the relevant sections of the statute and rules, attaching evidence to support the refusal, and indicating the resolutions agreed upon or the options offered.

If the priority action includes a final refusal, the priority action must clearly indicate that the refusal is FINAL, and should contain any additional supporting evidence necessary for a complete record on appeal.  See TMEP §§714–714.06 regarding final actions.