TMEP 714.05(c): Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement

October 2017 Edition of the TMEP

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714.05(c)    Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement

Except as provided in TMEP §714.05(a)(ii), an advisory statement in an Office action indicating that a refusal or requirement will be issued if specified circumstances arise cannot serve as the foundation for issuing a final requirement or refusal in the next action.  To establish the foundation for issuing a final refusal or requirement in the next Office action, an initial requirement or refusal must relate to matter that is of record at the time of the action.

In addition, a mere advisory statement made in an Office action is not subject to appeal to the Trademark Trial and Appeal Board by the applicant. In re Harley 119 USPQ2d 1755, 1757 (TTAB 2016) ("An advisory statement made by an examining attorney indicating that a refusal or requirement may issue if specified circumstances arise is not a refusal to register, let alone a final refusal to register, and is therefore not subject to appeal.").