TMEP 708.05: Combined Examiner’s Amendment/Priority Action

This is the October 2015 Edition of the TMEP

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708.05    Combined Examiner’s Amendment/Priority Action

An examining attorney may issue an Office action that combines an examiner’s amendment and priority action, if the requirements for both have been met. The examiner’s-amendment portion reflects the authorized amendments, and the priority-action section addresses the refusals and requirements that remain outstanding and to which the applicant must still respond. An examining attorney may not issue a “no-call” examiner’s amendment/priority action, because the issues in the priority action portion of the action have not been discussed with the applicant or applicant’s qualified practitioner.

The action must include a six-month response clause (see TMEP §705.08) so that it is clear that the applicant must timely respond to the issues raised in the priority action to avoid abandonment of the application. The action must also include the subheadings “Priority Action” and “Examiner’s Amendment” to facilitate processing.

Example: After determining that an application requires a disclaimer and clarification of the entity type and color claim, and that the specimen shows ornamental use of the mark, if the examining attorney obtains authorization from the applicant or applicant’s attorney only to amend the entity type and color claim, a combined examiner’s amendment/priority action may be issued. The examiner’s-amendment section memorializes the amendments to the entity type and color claim. The priority action portion fully addresses the ornamental refusal and disclaimer requirement, includes sufficient evidence to support each, and reiterates the action that would put the application in condition for publication or registration.

Example: If the examining attorney determines that an application lacks the necessary translation statement and that the specimen is unacceptable, and during a discussion of these issues the applicant agrees to entry of a suggested translation statement, but states that she needs to consider what to do about the specimen, the examining attorney may issue a combined examiner’s amendment/priority action. The examiner’s-amendment section memorializes the agreed-upon translation statement. The priority-action portion fully addresses the specimen refusal and includes all actions that would put the application in condition for publication or registration.

Example: If the application contains the “SM” symbol on the drawing, an indefinite identification, and an unclear entity type, the examining attorney may not issue a no-call examiner’s amendment/priority action to delete by examiner’s amendment the “SM” symbol and address by priority action the identification and entity requirements. Since no discussion occurred, the requirements for a priority action have not been met. However, the examining attorney may telephone or e-mail the applicant or applicant’s attorney, discuss the requirements, and issue a combined examiner’s amendment/priority action, if appropriate.

NOTE: In a §66(a) application, an examining attorney may not issue a combined examiner’s amendment/priority action as a first action. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.