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Highlights of TMEP 8th Edition, October 2011

This outline highlights some changes that are set forth in the TMEP 8th edition.  For a more complete listing of all the changes in this new edition, see the “Changes in the TMEP 8th Edition” document, which is posted as part of the TMEP.

PART I: EXAMINATION

CERTIFICATION MARKS      

Regional Origin – TMEP 1306.02(a)

  • The defined region in the certification statement should be limited to the place named in the mark if the named place is famous as a source of the goods or the goods are a principal product of that place.
  • The defined region in the certification statement may be broader than the place named in the mark as long as the place named in the mark is within the larger defined region and there is no evidence that it is famous as a source of the goods or they are a principal product of the place.

Standards – TMEP §1306.06(f)(ii)

  • The standards must cover the full scope of the goods/services identified in the application.  For example, if the goods are “olive oil,” but the standards are only for “extra virgin olive oil,” the applicant must submit standards that cover all types of olive oil or amend the identification to “extra virgin olive oil.”

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COLOR CLAIM

If the color claim is unclear or ambiguous, the examining attorney must require clarification.  If the color claim or mark description references changeable colors, the examining attorney must require an amended mark description that deletes the reference to the color in the mark varying or being changeable and restricts the description to only those colors shown on the drawing.  TMEP §§807.07(a)(i) and (a)(ii).

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CONCURRENT USE

Refusals/Advisories - TMEP §1207.04(e)

  • If an application that seeks registration through a concurrent use proceeding before the Board complies with the relevant requirements and it appears that the applicant is otherwise entitled to registration but for the question of concurrent rights, the examining attorney must not issue a refusal under §2(d) as to any registration named by the applicant as an exception to its exclusive rights and will approve the application for publication subject to a concurrent use proceeding. 
  • If, in response to a refusal under §2(d) or an advisory regarding an earlier-filed application, an application is amended to seek registration through a concurrent use proceeding and complies with the relevant requirements, and it appears that the applicant is otherwise entitled to registration but for the question of concurrent rights, the examining attorney will withdraw the previously issued refusal or advisory as to any registration or application named by the applicant as an exception to its exclusive rights and will approve the application for publication subject to a concurrent use proceeding.

 Prior Concurrent Use Proceeding – TMEP §§1207.04(g) and (g)(i)

  •  A concurrent use registration may also be based on a final determination by the Trademark Trial and Appeal Board, in a prior concurrent use proceeding, that applicant is entitled to a concurrent use registration of its mark.

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CONSENT AGREEMENTS

  •  If a consent agreement makes representations about both parties’ beliefs regarding the likelihood of confusion and/or indicates that both parties have agreed to undertake certain actions to avoid confusion, then it should be signed by both parties or by individuals with legal authority to bind the respective parties. 
  • If only the registrant has provided its consent, agreed to take certain actions, or made representations as to the likelihood of confusion, the consent may be signed only by the registrant.  The absence of applicant’s signature on the document in such cases does not necessarily render the document unacceptable, but, like any other consent document, its persuasive value should be determined in light of all other evidence in the record.

 TMEP §1207.01(d)(viii).

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CONSENT TO REGISTER – SECTION 2(c) REFUSAL

Connection with Goods/Services - TMEP §1206.02 

  • The standard for determining whether the individual bearing the name in the mark will be associated with the mark as used on the goods/services is that: (1) the person is so well known that the public would reasonably assume a connection between the person and the goods/services; or (2) the individual is publicly connected with the business in which the mark is used. 
  • An individual may be considered to be publicly connected with the business in which the mark is used if the record shows that the individual is associated in some manner with the applicant, is actually connected to the goods or services at issue, and/or is well known in the relevant field of goods or services. 

Inquiry/Refusal Regarding Name/Portrait/Likeness - TMEP §1206.03 

  • If there is sufficient evidence that the name, portrait, or signature identifies a particular living individual, the examining attorney may exercise discretion regarding whether to issue a §2(c) refusal instead of an inquiry.
  • It is not necessary to establish that the individual is generally known or publicly connected with the business in which the mark is used before making an inquiry.  If there is sufficient evidence that the individual is generally known or publicly connected with the business in which the mark is used, the examining attorney may, at his or her discretion, issue a §2(c) refusal rather than an inquiry.
  • If the mark comprises the name of a famous deceased person or historical character that is distinctive and well known, the examining attorney may consult with his or her manager regarding foregoing the inquiry.

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 CORRESPONDENCE/SIGNATURE

  •  If an application or other document is signed by a qualified practitioner, but does not contain a separate address for the practitioner, and an Office action is required, the USPTO will ask the practitioner to specify his or her address for correspondence or state that the USPTO should continue to address correspondence to his or her attention in care of the previously submitted correspondence address.  If the practitioner does not respond to the request, the USPTO will continue to send correspondence to the attention of the practitioner at the correspondence address of record.  TMEP §609.01. 
  • The name of the person who signs a document filed in connection with an application, registration, or Board proceeding must be set forth in printed or typed form immediately below or adjacent to the signature, or identified elsewhere in the filing, or the Office may require that it be stated for the record.  TMEP §§611.01(b)-(c) and 804.04.

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DECEPTIVENESS – ID AMENDMENT

The Office construes the wording "made in significant part of" as indicating that the goods contain a sufficient amount of the named ingredient/material composition to meet the standard for use of the term in the relevant industry.  However, the wording "made in part of" is not acceptable.  TMEP §1203.02(f)(i).

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ENTITY

Foreign Entity.  If a foreign designation, its abbreviation, a description, or the equivalent U.S. entity appears in Appendix D, the examining attorney may accept any of those terms as the entity designation without further inquiry (even if the translation of the foreign designation is not an acceptable U.S. entity type).  However, if an applicant identifies itself by a name that includes a foreign entity designation in Appendix D (e.g., “Business SpA”), but provides a characterization of the entity that does not match the translation or U.S. equivalent (e.g., General Partnership) in the description in Appendix D, the examining attorney must clarify the nature of the entity.  TMEP §803.03(i).

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IDENTIFICATION OF GOODS/SERVICES

Moving G/S Between Applications – TMEP §1402.08

  • Such an amendment will be permitted only if some of the goods/services in one application should be classified in a different class and the companion application includes that class and has the same or a later filing date.  If the companion application does not include that class, the proper recourse is for the applicant to file a request to divide.
  • The applicant must file the amendment as a request to delete specified goods/services in the application from which they are to be moved and to add those goods/services into a specified companion application.  The amendment must include the serial numbers of both applications. 

Unclear Wording - §66(a) Applications.  TMEP §1904.02(c)

  •  Although the IB sometimes includes the parenthetical language “considered too vague for classification,” “incomprehensible,” or “linguistically incorrect” in the listing of goods/services of a request for extension of protection, the language is not part of the identification and must not be part of any application that is eventually approved for publication.
  • The USPTO has discretion to consider the terms in the ID characterized by the IB as “considered too vague for classification,” “incomprehensible,” or “linguistically incorrect” de novo based on established policies regarding specificity within the context of the class assigned.

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INCOMPLETE RESPONSE

To Nonfinal Action - TMEP §718.03

  •  Properly Signed Responses.  The examining attorney should generally issue a final action, if the application is in condition for final action.  In limited circumstances, the examining attorney has discretion to issue a notice of incomplete response, if the response meets the requirements of 37 C.F.R. §2.65(b).  If the application is not in condition for final action, and the response does not meet the requirements of 37 C.F.R. §2.65(b), the examining attorney should issue another nonfinal action, explaining why the response was incomplete and continuing all outstanding refusals and requirements. 
  • TEAS Responses Consisting Only of a Signature or Missing Significant Data or Attachments.  The examining attorney should not issue a notice of incomplete response, but must issue a final action, if appropriate, or a nonfinal action explaining why the response was incomplete, continuing all outstanding refusals and requirements, and addressing any new issues. 

To Final Action - TMEP §§715.03(a), 718.03(a), and 718.03(b) 

  • Properly Signed Responses:
  • If the applicant has not made a good-faith effort to comply and there is time remaining in the response period, or the applicant has made a good-faith effort and there is more than 30-days remaining in the response period, the examining attorney must issue a “Request for Reconsideration Denied – No Appeal Filed - Time Remaining” (or, if appropriate, “SU - Request for Reconsideration Denied – No Appeal Filed - Time Remaining”). 
  • If the applicant has made a good-faith but incomplete attempt to comply and there is no time remaining or fewer than thirty days remaining in the six-month response period, the examining attorney has discretion to issue an Office action using the “Examiner’s Action Continuing a Final Refusal – 30 day Letter” selection.
  • If the time for responding has expired and the examining attorney is not persuaded by a request for reconsideration, the applicant files an incomplete response which does not include a good-faith effort to comply with the outstanding requirements and/or to overcome all outstanding refusals, or the applicant fails to respond to a notice of incomplete response, the examining attorney may issue an “Abandoned Due to Incomplete Response” without a six-month response clause.

INFORMAL COMMUNICATIONS 

  • Informal communications (telephone or e-mail) may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement.  Unless the examining attorney is certain that a certain action, e.g., amendment to the ID or amendment to the Supplemental Register, will overcome the refusal, the examining attorney should advise the applicant to file a formal response for consideration of arguments regarding any refusal or requirement.
  • If the examining attorney determines that continuing (or prolonged) informal communications by telephone or e-mail will not serve to further develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant, he or she must advise the applicant to file a formal response. 

TMEP §§304.02 and 709.05.

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 INTENT-TO-USE APPLICATIONS

 AAU Submitted with Amendment to Supplemental Register or Claim of Acquired Distinctiveness.  If the applicant responds to a refusal by filing an allegation of use that complies with the minimum requirements together with an amendment to the Supplemental Register or an amendment to register under §2(f), and the amendment could overcome the refusal, but the AAU fails to establish use of the mark in commerce or to demonstrate use of the subject matter as a mark, the examining attorney must issue a new nonfinal action refusing registration and advise the applicant as follows:

  •  Amendment to the Supplemental Register - advise the applicant that:  (1) the amendment to the Supplemental Register is acceptable; (2) the refusal is moot; and (3) if the applicant amends the application back to §1(b) in response to the new refusal regarding the specimen, the amendment to the Supplemental Register must also be withdrawn and the original refusal will be reinstated. 
  • Amendment to register under §2(f) - advise the applicant that:  (1) the amendment to §2(f) is acceptable, (2) the refusal is moot, and (3) if the §2(f) amendment is based solely on five years’ use and the applicant amends the application back to §1(b) in response to the new refusal regarding the specimen, the §2(f) amendment must also be withdrawn and the original refusal will be reinstated.  

TMEP §714.05(a)(i).

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LAWFUL USE IN COMMERCE

 The Controlled Substances Act makes it unlawful to: manufacture, distribute, dispense, or possess a controlled substance; and sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia.  Regardless of state law, the federal law provides no exception for marijuana for “medical use.”  TMEP §907.

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SECONDARY SOURCE

Ownership of a U.S. registration on the Principal Register of the same mark for other goods or services, based on a foreign registration under §44(e), for which an affidavit of use in commerce under §8 has been accepted, is acceptable to show secondary source in response to an ornamentation refusal.  TMEP §1202.03(c).

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 SPECIMENS

  • “Full Line” of Pharmaceuticals - If the goods are a “full line of pharmaceuticals,” the applicant must provide evidence that it uses the mark in connection with pharmaceuticals to treat diseases or health problems in all categories in the World Health Organization (“WHO”) International Statistical Classification of Diseases and Related Health Problems.  TMEP §904.01(a) and 1402.03(c). 
  • “Beta” Versions - Although some beta versions of products or websites may not be made available to consumers, others are.  The appearance of this term on a specimen for software, websites, or services does not, by itself, necessarily mean that the relevant goods/services are not in actual use in commerce or that the specimen is unacceptable.  If it is not clear whether the beta version is in actual use in commerce, the examining attorney should issue an information request asking whether the version is in use in commerce.  TMEP §§904.03(e), 904.03(i), and 1301.03(a).

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SUSPENSION

Pending Expiration of “Insurance” Extension Request - TMEP §§716.02(f) and 1109.16(d)

When the applicant files a timely “insurance” extension request, but the six-month period for response to a final Office action may expire before the expiration of the extension, and the applicant intends to overcome any refusal and/or comply with any requirement before expiration of the extension, but not within the time for responding to the final action, the applicant must still file a timely response to the Office action and may request suspension of the application.  The examining attorney should suspend for only the amount of time remaining in the extension period. 

  • If the applicant files a response after suspension, but prior to the expiration of the extension period, that overcomes the refusal and/or complies with any requirement, the examining attorney will remove the application from suspension and withdraw the refusal. 
  • If the applicant files a response after suspension, but prior to the expiration of the extension period, that does not overcome the refusal and/or comply with any requirement, the examining attorney must issue an “Examiner’s Subsequent Final Refusal.” 

Pending Correction of or Limitation to an International Registration – TMEP §716.02(g)

In a §66(a) application, if it appears that there is an error in the classification of the goods/services in the underlying international registration, the USPTO will suspend prosecution of the §66(a) application if the applicant requests suspension in a timely response to an Office action requiring amendment of the identification and supports the suspension request with a copy of a request for correction filed with the IB.

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TRANSLATION OF NON-ENGLISH WORDING

The requirement to translate applies to compound word marks comprised of two or more distinct words (or words and syllables) that are represented as one word, in which one or more of the words in the mark appears to be non-English wording that would clearly be perceived as a distinct word(s) within the compound. 

  • If the mark is MAÑANACOMPUTERS, the commercial impression is that the mark is comprised of the words MAÑANA and COMPUTERS.  The application must include a translation of the Spanish word MAÑANA, which means “tomorrow” in English. 

If the combination would be perceived as a single word or conveys a different commercial impression than that the mark is comprised of two separate words, no translation of the non-English portion should be required. 

  • If the mark is FELIZCITY, the commercial impression is that the mark is a play on the word “felicity” and no translation of the term “feliz” (which means “happy” in English) is required. 

TMEP §809.

PART II: MATTERS SUBMITTED TO THE DIRECTOR

LETTERS OF PROTEST

  • A separate itemized index must accompany any submission of evidence exceeding 75 pages.  The Office encourages the use of an index in all letters of protests that contain multiple forms of evidence.  The index must be provided on plain paper and contain a concise factual description of each category or form of evidence included.  To maintain the integrity of the ex parte examination process, the index should not identify the protestor or its representatives or contain any arguments or persuasive language.  TMEP §1715.04.
  • A separate letter of protest must be filed for each individual application that is being protested.  TMEP §1715.04(a).

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PETITIONS

If an application is abandoned for failure to file a complete response because it appeared that the response was signed by an improper party, and the applicant failed to complete the response within the time granted or remaining in the response period, the applicant may submit evidence that an authorized party signed the original response and petition the Director to reverse the holding and reinstate the application under 37 C.F.R. §2.146.

  • If the evidence establishes that a proper party signed the response, the Director will grant the petition and instruct the examining attorney to review the response. 
  • If the evidence establishes that the response was signed by an unauthorized party, the Director will find (1) that the application should have been abandoned for failure to respond, (2) that the petition will be construed as a petition to revive under 37 C.F.R.§2.66, and (3) that revival based on unintentional delay is proper.

TMEP §1713.02.

PART III: POST REGISTRATION

§8/§71 AFFIDAVIT

Once an owner or holder expressly indicates an intention to delete goods, services, or classes from a registration, they may not be reinserted.  For example, reinsertion is prohibited after the owner or holder submits a TEAS §8 or §71 form indicating that certain goods, services, or classes are to be deleted.  TMEP §§1604.09(b) and 1613.09(b).

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§15 AFFIDAVIT

  • If the §15 affidavit does not comply with the statute and rules, the USPTO issues a written action notifying the owner of any inconsistency or error, but does not require correction.  The owner is given six months from the issuance date of the Office action to file a response.  If no response is received within that time, the §15 affidavit will be abandoned.  TMEP §1605.
  • The USPTO will not acknowledge a §15 affidavit unless a §8 affidavit is pending or has been accepted by the Office.  If a §15 affidavit is filed alone during the statutory period for filing the §8 affidavit, the Post Registration staff will notify the owner that the registration will be cancelled without an acceptable §8 affidavit.  In response to such notification, the owner may request that the §15 affidavit be treated as a deficient §8 affidavit.  TMEP §1605.03.

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AMENDMENT OF MARK

Although the mark in a registered extension of protection cannot be amended, in some situations the holder of a registered extension of protection may file a request under §7 of the Trademark Act to add a standard character claim.  If the international registration does not indicate that the mark is in standard characters, and the holder seeks to amend the registered extension of protection to add a standard character claim, the Post Registration staff must contact the Supervisor of the Madrid Processing Unit via e-mail for instructions on how to proceed. The holder may not add a standard character claim unless the mark meets the United States requirements for a standard character claim.  TMEP §1609.02.

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Last Modified: 10/20/2011 12:09:02 PM