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.