TMEP 706.01: "Clear Error"

October 2017 Edition of the TMEP

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706.01    "Clear Error"

The term "clear error" refers to an administrative internal guideline used by the USPTO to determine whether an examining attorney should issue a refusal or requirement that could or should have been raised in a previous action.

It is the policy of the USPTO to conduct a complete examination upon initial review of an application by an examining attorney and to issue all possible refusals and requirements in the first Office action. See TMEP §704.01.  The USPTO will not issue a new refusal or requirement unless it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act or applicable rules. See, e.g., TMEP §706.  For example, upon discovery of evidence, after publication, that clearly demonstrates the proposed mark is a generic identifier for the goods, registration on either the Principal or Supplemental Register would be in violation of the Trademark Act and the Director will restore jurisdiction to the examining attorney to issue a new refusal of registration. See TMEP §1504.04.  See also TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use that could or should have been issued during initial examination of the application.

The internal "clear-error" standard is merely an administrative guideline.  It does not confer on an applicant any entitlement to a showing of clear error, nor does it impose a higher standard of proof on the examining attorney than is otherwise required to establish a prima facie case for the refusal or requirement.

Except as provided in 15 U.S.C. §1141h(c)(4), there is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal.  Moreover, an applicant may not directly challenge the Office’s determination under the clear-error standard that a new requirement or refusal must issue. In re Driven Innovations, Inc., 115 USPQ2d 1261, 1264 (TTAB 2015), overruled on other grounds, 2017 U.S. App. LEXIS 241, 2017 WL 33574 (Fed. Cir. Jan. 4, 2017). The only way an applicant may challenge a refusal that was issued under the clear-error standard is by appealing the merits of the final refusal to the Board, which will review only the correctness of the underlying substantive refusal of registration. Id. See also In re Jump Designs, LLC, 80 USPQ2d 1370, 1373-74 (TTAB 2006); In re Sambado & Son, Inc., 45 USPQ2d 1312, 1314-15 (TTAB 1997).

The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees. See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) ("[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors."); see also BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner when withdrawing a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee, and notification of the issue date, and with publication of the drawing and claim in the Official Gazette).  Thus, if the USPTO discovers that a mistake made during examination would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been previously raised.

The question of whether a refusal or requirement was procedurally proper is reviewable on petition under 37 C.F.R. §2.146. However, "[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Director." 37 C.F.R. §2.146(b).  Thus, the Director cannot consider on petition whether the issuance of or failure to issue a substantive refusal was a "clear error."  See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review on petition.