TMEP 814: Requesting Additional Information

October 2017 Edition of the TMEP

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814    Requesting Additional Information

Sometimes, it is necessary for the examining attorney to request such additional information from an applicant as may be "reasonably necessary" to examine the application properly, pursuant to 37 C.F.R. §2.61(b).  This rule is designed to encourage high-quality, efficient examination and recognizes that an applicant is often in the best position to provide the facts and information that the USPTO needs to properly examine an application and assess registrability of the applicant’s mark. If an information request is phrased clearly and focused on obtaining the information most relevant to evaluate a particular ground of refusal or requirement, examination is more efficient and refusals (or allowances) of registration based on insufficient facts and information can be avoided. Cf. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule 1.105(a)(1), which is the equivalent of Trademark Rule 2.61(b)).

The Court of Appeals for the Federal Circuit has determined that the wording "reasonably necessary" should be interpreted broadly, and applies to information that is "relevant to" registrability or "reasonably calculated" to lead to such relevant information. Id. at 1282-85, 73 USPQ2d at 1413-15. A question is considered "relevant" if an examining attorney has a legitimate reason for asking for the information and if the information is pertinent to the examining attorney’s legal inquiry. Id. at 1284-85, 73 USPQ2d at 1415.

An examining attorney should ask questions designed to obtain specific information that is factual in nature under Rule 2.61(b). The examining attorney may also request literature, exhibits, affidavits or declarations, and general information concerning circumstances surrounding the mark, as well as, if applicable, its use or intended use. Requests for information that is not public knowledge, but is within the knowledge of the applicant or available to the applicant, are particularly appropriate.  The examining attorney must explain why the information is needed, if the reason is not obvious.

The applicant has a duty to participate in the examination process by responding directly and completely to each request for information. See Star Fruits, 393 F.3d at 1284-1285; 73 USPQ2d at 1415 ("So long as there is some legitimate reason for seeking the information... the applicant has a duty to respond.") If the applicant wants to provide information from its website in response to the examining attorney’s request for information, the applicant must attach the relevant information to its response. It is not sufficient to provide only the applicant’s website address. In addition, a mere statement that information about the goods or services is available on the applicant’s website is an inappropriate response to the examining attorney’s request for information, and insufficient to make the relevant information of record. In re Planalytics, Inc., 70 USPQ2d 1453, 1457 (TTAB 2004).

If the applicant does not believe that it has relevant information, applicant should submit a statement to this effect. Id. at n.2.

If the applicant does not comply with the examining attorney’s request for information, the requirement should be repeated and, if appropriate, made final. An applicant’s failure to respond to an information requirement is itself grounds for refusal. See In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (affirming refusal of registration because applicant’s appeal brief failed to address the relevant refusals, including a refusal based on noncompliance with a requirement for information); In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) ("Failure to comply with a request for information is grounds for refusal," where applicant provided equivocal responses to examining attorney’s questions and did not address this issue in its brief); In re DTI P'ship LLP, 67 USPQ2d 1699 (TTAB) 2003) (deeming §2(e)(1) refusal moot, since failure to comply with requirement for information is sufficient basis, in itself, for refusal); In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (finding registration properly refused where applicant ignored request for information); In re Page, 51 USPQ2d 1660 (TTAB 1999) (finding intent-to-use applicant’s failure to comply with requirement for information as to the intended use of the mark constituted grounds for refusal); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (finding registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information); In re Air Prods. & Chems., Inc., 192 USPQ 157, 158 (TTAB 1976) ("[Trademark Rule 2.61(b)] has the effect of law.")

An applicant’s failure to respond to an information requirement also can result in an adverse evidentiary inference being drawn regarding the issue to which the information requirement was directed. See In re AOP LLC, 107 USPQ2d at 1651 (noting because applicant had failed to comply with examining attorney’s information requirement, "to the extent there is any ambiguity regarding the origin and certification of applicant’s goods we address both [merely descriptive and deceptively misdescriptive] refusals in the alternative based on the presumption that had applicant directly and fully responded to the examining attorney’s inquiries, the responses would have been unfavorable,"); In re, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008) (making factual presumptions unfavorable to applicant in considering alternative statutory refusals under §§2(e)(2) and 2(e)(3), in view of applicant’s failure to comply with examining attorney’s requirement for information as to the geographic origin of the goods); cf. In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (reversing a refusal based on a failure to comply with an information request after finding that applicant’s response was "reasonably forthcoming" and "did not withhold the required information").

If the requested information is confidential, or if, for a valid reason, the applicant does not want to have the information become part of a public record, the applicant should consider redacting such portions of documents prior to their submission. Documents filed in the USPTO by the applicant become part of the official record and will not be returned or removed. 37 C.F.R. §2.25; TMEP §404. Placing confidential information in the record is not required. A written explanation or summary will usually suffice.