714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
Because the examining attorney has advised the applicant of the appropriate response options, which may include the general requirements for a substitute specimen, if the applicant responds to a failure-to-function refusal by submitting a specimen that does not show the mark in commerce for a reason such as those set out in TMEP §904.07(a), the examining attorney must issue a final refusal, as no new issue is presented. By contrast, if the applicant responds to the Office action refusing registration by submitting a substitute specimen that reflects failure to function as a mark for a different substantive reason, such as the examples listed in TMEP §904.07(b), the examining attorney must issue a new nonfinal Office action because the substitute specimen presents a new issue.
If an applicant submits a substitute specimen in response to a nonfinal refusal for failure to show the applied-for mark functioning as a mark, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing ( see TMEP §807.12), but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney must issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.
If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal, assuming the application is otherwise in condition for final refusal, because the substitute specimen does not present a new issue.
See TMEP §904.07(b) for further information about refusal of registration because the specimen does not show the applied-for mark functioning as a mark.