TMEP 814: Requesting Additional Information

This is the October 2015 Edition of the TMEP

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814    Requesting Additional Information

Sometimes, it is necessary for the examining attorney to request additional information from an applicant in order to examine the application properly, pursuant to 37 C.F.R. §2.61(b). If the applicant does not comply with a requirement for additional information, registration may be refused.

If the applicant does not comply with the examining attorney’s request for information, the requirement should be repeated and, if appropriate, made final. See 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 the 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.”).

The examining attorney may request literature, exhibits, affidavits or declarations, and general information concerning circumstances surrounding the mark, as well as, if applicable, its use or intended use. See 37 C.F.R. §2.61(b). 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.

If applicant wants to provide information from its website in response to the examining attorney’s request for information, 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 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 applicant does not believe that it has relevant information, applicant should submit a statement to this effect. Id. at n.2.

An applicant’s failure to comply with an information request may lead to the presumption that had applicant responded to the requirement, the response would have been unfavorable to the applicant. See In re AOP LLC, 107 USPQ2d at 1651 (noting because applicant had failed to comply with the 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 Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008) (making factual presumptions unfavorable to the applicant in considering alternative statutory refusals under §§2(e)(2) and 2(e)(3), in view of the applicant’s failure to comply with the examining attorney’s requirement for information as to the geographic origin of the goods).

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. Sometimes a written explanation or summary will suffice.