TMEP 713: Examination of Amendments and Responses to Office Actions

October 2017 Edition of the TMEP

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713    Examination of Amendments and Responses to Office Actions

37 C.F.R. §2.63(a) Repeated non-final refusal or requirement.

After response by the applicant, the examining attorney will review all statutory refusals and/or requirement(s) in light of the response.

  • (1) If, after review of the applicant’s response, the examining attorney issues a non-final action that maintains any previously issued substantive refusal(s) to register or repeats any requirement(s), the applicant may submit a timely response to the action under § 2.62(a).
  • (2) If, after review of the applicant’s response, the examining attorney issues a non-final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond to such repeated requirement(s) by filing a timely petition to the Director for relief from the repeated requirement(s) if the subject matter of the repeated requirement(s) is appropriate for petition to the Director (see § 2.146(b)).

The examining attorney will review all statutory refusals and/or requirements in light of the applicant’s response and determine whether the mark may be approved for publication or registration.  The examining attorney must carefully consider all arguments, comments, and amendments made or proposed by the applicant. See TMEP §705.01 about including wording in an Office action to indicate the status of the application and acknowledge documents received, TMEP §807.17 regarding the processing of unacceptable amendments to drawings, and TMEP §1402.15 regarding the unacceptable amendments to identifications.

If the applicant’s response has put the application in condition for approval for publication for opposition or registration on the Supplemental Register, the examining attorney will approve the application for publication or registration, as appropriate.

If the applicant’s response has not put the application in condition for publication or registration, the examining attorney will issue an Office action, or telephone or e-mail the applicant, depending on the circumstances.

If the applicant’s response neither resolves all of the outstanding issues nor raises any new issues, and the applicant has had an opportunity to reply to all points raised by the examining attorney, the examining attorney’s next action should be stated to be final. See TMEP §§714–714.05(f).

If the examining attorney has cited an earlier-filed conflicting application, and the applicant responds by arguing that there is no likelihood of confusion, the examining attorney should suspend the application pending disposition of the conflicting application, if applicant’s arguments are not persuasive.  See TMEP §716.02(c) regarding suspension pending disposition of an earlier-filed conflicting application, TMEP §716.03 regarding the applicant’s request to remove an application from suspension, and TMEP §§1208–1208.02(f) regarding conflicting marks in pending applications.