TMEP 1102.01: Substantive Refusals

October 2017 Edition of the TMEP

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1102.01    Substantive Refusals

To the fullest extent possible, the examining attorney will examine an intent-to-use application for registrability under Trademark Act §§1, 2(a), 2(b), 2(c), 2(d), and 2(e), 15 U.S.C. §§1051   and 1052(a), (b), (c), (d), and (e), according to the same procedures and standards that apply to any other application.  That is, the examining attorney must make all appropriate refusals and/or requirements with respect to issues such as ownership, deceptiveness, likelihood of confusion, mere descriptiveness, geographic significance, and surname significance. In re Bacardi & Co., 48 USPQ2d 1031, 1035 (TTAB 1997); In re Am. Psychological Ass’n, 39 USPQ2d 1467, 1469 (Comm’r Pats. 1996).

The examining attorney should not issue a requirement or refusal under these sections during examination of the statement of use if the issue could or should have been raised during initial examination, unless the failure to issue the refusal or requirement would be a clear error. See TMEP §§706.01, 1109.08.

Where a significant length of time has elapsed since the initial examination, a mark may have become descriptive or even generic with respect to the goods/services.  In such a case, since the evidence of the descriptive or generic use would not have been available during initial examination, the requirement or refusal must be issued during second examination.

The examining attorney should investigate all possible issues regarding registrability through all available sources.  If appropriate, the examining attorney may require that the applicant provide literature or an explanation concerning the intended manner of use of the mark, or the meaning of the mark in relation to the goods/services, under 37 C.F.R. §2.61(b). See TMEP §814; In re DTI P'ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).

The examining attorney should also search applicant’s website to see if it provides information about the goods/services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (rejecting applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent to use and no specimens were yet required, and stating that "[t]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession."); TMEP §710.01(b).

While the examining attorney must examine and act on all possible issues in the initial examination of the application, requirements or refusals specifically tied to use of the mark (e.g., ornamentation) should generally be addressed after the applicant submits an allegation of use and a specimen showing use of the mark in commerce.  See TMEP §§1202–1202.17(e)(vi) regarding use as a mark.  However, an examining attorney may review a §1(b) application for which no allegation of use and specimen have been submitted, and believe it likely that a refusal of registration on the ground that the subject matter does not function as a mark may be made after an allegation of use is submitted.  In that instance, this potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO.  This is done strictly as a courtesy.  If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from later refusing registration on this basis.