BitLaw

714.05(a)    When an Amendment Proposed By Applicant Requires a New Nonfinal Action

If an applicant submits an unacceptable amendment in response to a refusal or requirement issued by the examining attorney, the amendment generally does not raise a new issue that requires a nonfinal action.

However, if the applicant submits an unacceptable amendment that is not offered in response to a refusal or requirement, the examining attorney generally must issue a new nonfinal action with a six-month response clause, addressing the issues raised by the amendment and continuing all other refusals and requirements.

The following are examples of amendments that require a new nonfinal action:

• (1) Unacceptable drawing amendments, unless the examining attorney had previously made a requirement for an acceptable drawing (e.g., a requirement to remove matter that is not part of the mark or to provide a clear drawing of the mark);
• (2) Acceptable drawing amendments that necessitate other requirements that were not previously made by the examining attorney, such as a requirement to amend a mark description or disclaimer statement;
• (3) Amendments to the drawing that materially alter the mark, unless the examining attorney had previously rejected a drawing amendment because it was a material alteration (see TMEP §714.05(c) regarding advisory statements);
• (4) Amendments to the Supplemental Register and amendments to assert acquired distinctiveness under 15 U.S.C. §1052(f), unless the amendment overcomes an outstanding refusal or requirement or is irrelevant to an outstanding refusal (see TMEP §714.05(a)(i)).

The following are examples of amendments that do not require a new nonfinal action:

• (1) An amendment to disclaim the entire mark, which never raises a new issue because an entire mark may not be disclaimed. See TMEP § 1213.06.
• (2) An amendment withdrawing a prior amendment that was submitted in response to a refusal or requirement made by the examining attorney in an Office action (e.g., an amendment to the Supplemental Register or disclaimer) does not raise a new issue.

Moreover, evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a nonfinal action. See In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm’r Pats. 1994) (finding examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, because the substitute specimens submitted with the request were deficient for same reason as the original specimens).