INTA/PTO Roundtable Discussion

Suggestions from PTO Personnel to Avoid Problems in Processing Application

A. From the Mailroom/Intake Section

• Place each application or other distinct paper in a separate envelope. Smaller envelopes can be combined and mailed in one larger envelope.

• Do not submit bulky specimens. Submit photos or photocopies instead.

• Attach smaller specimens, such as labels, to a sheet of paper labeled "specimens."

• Make sure checks and applications are signed.

• Check drawings carefully - no color in the mark or color paper; no marks larger than 4"x4".

• Indicate preferred correspondence address, identifying the principal attorney - preferably in a separately titled paragraph in application distinct from power of attorney.

• Be patient; we are adjusting to new procedures and expect to provide better and quicker service by next Spring.

• Check the filing receipt. It is best to fix errors up front (703) 308-7199.

B. From the Intent-To-Use Unit

• Do not submit bulky specimens.

• Be sure to include specimens.

• Indicate clearly when goods or services are deleted from the identification appearing in the notice of allowance by using "except" language and indicating that the identification is amended.

C. From Examining Attorneys

• Use the Office forms, if possible. See Appendix C to the TMEP.

• If you do not use the Office forms, make sure important elements are set out prominently. The identification of goods and services, the dates of use and any statement which is to be printed should be highlighted in bold or otherwise.

• If you do not use the Office forms, also check the declaration carefully. If you develop your own form, we recommend that you use the declaration from the Office form which is generic and applies to any type of applicant and any type of application. See TMEP section 803.01.

• Check the application for other errors - method of use or intended method of use for goods or services, as appropriate; type of commerce (not "foreign commerce"); domestic representative, if appropriate.

• Make sure the application is clear and consistent as to the type of entity applying. If it is an unusual type of entity, explain the nature of the entity.

• Note that disclaimers will be printed in standard form. It is preferable to use this language in the application.

• Claim ownership of prior registrations to avoid unnecessary refusals.

• Provide translations at filing, if possible, so that a complete search can be performed.

• Explain that a mark is an acronym, if appropriate, to avoid confusion.

• If the nature of the mark is not readily apparent, provide a description, both on the drawing and in the application papers. All configuration marks should be described.

• be sure the drawing displays the correct mark;
• be sure there is only one drawing;
• place the mark on the first page even if the drawing extends to two or more;
• display all design elements claimed - don't just describe or refer to it;
• provide typed drawings all in caps;
• describe the mark in the heading;
• note - no gray or half tones in the mark;
• if possible, repeat the applicant's attorney's name and phone number on the drawing;
• note - no amendments to effect material changes.

Concerning the application basis,

• see Rule 2.33(d) and TMEP section 1006 for instructions on asserting more than one basis;
• it is best to refer to statutory sections when claiming more than one basis;
• include an ITU statement when claiming sections 1(a) and 44;
• if ITU and section 44 have been claimed, indicate whether the ITU basis should be retained when submitting a foreign certificate;
• note - no amendments to add a basis after publication.

Concerning specimens,

• no bulky specimen (use photographs or photocopies);
• make sure the method of use and specimens are consistent;
• make sure specimens are appropriate to the type of application, goods or services, and that the best possible specimens are provided;
• see TMEP section 905.06 for Office policy following Lands' End.

Concerning identifications of goods and services,

• be as specific as possible;
• make it clear whether you are describing goods or services or both;
• proof the identification carefully to make sure it includes everything you want;
• ask foreign applicants to provide specifics on goods and services as early as possible;
• use the Office Manual of Acceptable Identifications of Goods and Services in drafting identifications.

Concerning ownership, proper signatories and assignments,

• if the applicant is a partnership, joint venture or joint applicants, indicate so clearly;
• make sure an officer signs for a corporation;
• if the corporate title is unconventional, explain;
• see TMEP section 803.10 regarding signatures on behalf of foreign, corporate-type entities;
• when proceeding under Rule 2.71(c), you must establish both first-hand knowledge and implied or actual authority, and the applicant must provide a properly signed, substitute declaration;
• remember to request that the registration issue in an assignee's name;
• when recording, submit the request, fees and cover sheet;
• keep the examining attorney informed both when the assignment is filed for recording and when it is recorded.

Concerning responses to office actions,

• use section titles to identify different issues covered in a response;
• set forth all amendments to the application clearly at the beginning of the response;
• in responding to section 2(d) refusals, provide specific information about relevant facts, such as goods and services, channels of trade and class of purchasers;
• do not send confirmation letters after examiner's amendments or faxes;
• file amendments to allege use and responses on separate papers and/or clearly indicate that the amendment to allege use incorporates amendments to the application;
• note that you must respond to suspension inquiry letters;
• do not file responses to regular suspension notices unless you are requesting removal from suspension;
• if an action is not received, the Office will presume it was sent if the file copy is correct (we will fax a copy as a courtesy);
• if the file copy indicates an error in mailing, the Office will remail the action with a new mailing date;
• always use a Rule 1.8 or 1.10 certificate of mailing, as appropriate.

Concerning changes of address,

• actions will be remailed if changes of address are properly filed, but not processed;
• changes of address must be in writing;
• a request must be specific, submitting papers on new letterhead is not sufficient;
• it is best to fax changes directly to the examining attorneys during examination;
• contact Yvonne Evans in the Office of Trademark Program Control ((703) 308-7199) to effect a global address change affecting numerous applications and/or registrations.

Concerning fees, note that the Office will defer action on the merits on an application if the application clearly sets forth numerous classes, but the applicant submits only one fee. Action will not be deferred if it appears that the applicant was acting in good faith. Additional fees can be covered by an authorization to charge a deposit account.

Concerning decorum,

• note that examining attorneys must be away from their desks for substantial periods of time to perform tasks, such as searching;
• please leave complete messages, including serial number of relevant applications, on voice messaging;
• speak slowly when stating serial numbers or phone numbers;
• please try to call concerning actions before the end of the response period;
• indicate the name of the telephone contact if different from the principal attorney;
• remember that an attorney must confirm any amendment worked out with a paralegal;
• please do not address examining attorneys as "examiner so-and-so; "examining attorney" or simply "Mr..." or "Ms..." is preferred.

Concerning due diligence,

• the current standard is six months (see TMEP section 413);
• it is especially important to follow up on newly filed applications with no filing receipt after six months and applications in abandoned status;
• use the automated status line ((703) 305-8747) and the Trademark Assistance Center ((703) 308-9000) to check status;
• although written inquiries are discouraged, the Office will respond by phone to such inquiries.

Prepared by Jim Walsh, Administrator for Trademark Policy and Procedures, USPTO

Last Modified: March 1995