Procedure for Examining Applications - General Examination Procedures



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  • It is poor examination practice not to make all the evidence and arguments of record during examination, before the briefing stage.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007).
      • It is poor examination practice not to make all the evidence and arguments of record during examination, before the briefing stage. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 n.4 (TTAB 2006) ("The preferable procedure would have been, of course, for the definitions and arguments in connection therewith to have been submitted during examination."). Nonetheless, the Board normally will consider all arguments set forth by an applicant or examining attorney in an appeal brief; and we note that an applicant has the option of filing a reply brief to object to an examining attorney's late-raised argument.
  • The Board normally will consider all arguments set forth by an applicant or examining attorney in an appeal brief; and we note that an applicant has the option of filing a reply brief to object to an examining attorney's late-raised argument.
    • In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007).
      • It is poor examination practice not to make all the evidence and arguments of record during examination, before the briefing stage. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 n.4 (TTAB 2006) ("The preferable procedure would have been, of course, for the definitions and arguments in connection therewith to have been submitted during examination."). Nonetheless, the Board normally will consider all arguments set forth by an applicant or examining attorney in an appeal brief; and we note that an applicant has the option of filing a reply brief to object to an examining attorney's late-raised argument.
  • An applicant may provide temporary specimens so long as those specimens were actually used in commerce.
    • In re Chica, Inc., Serial No. 76627857, (TTAB 2007).
      • Nothing prohibits the registration of a mark in an application that contains only "temporary" specimens provided that the specimens were actually used in commerce.
  • Where required to support the basis of the application, any specimens of record must support the goods or services remaining after the amendment is entered, and the applicant must introduce evidence during its testimony period to prove use of its mark on those remaining goods or services prior to the relevant date as determined by the basis of the application.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007).
      • Further, where required to support the basis of the application, any specimens of record must support the goods or services remaining after the amendment is entered, and the applicant must introduce evidence during its testimony period to prove use of its mark on those remaining goods or services prior to the relevant date as determined by the basis of the application. In the case of a use-based application, as here, the relevant date is the filing date of such application. Id. See also Trademark Act §1(a).
  • An unconsented motion to amend an application ordinarily should be made prior to trial, in order to give the other party or parties fair notice thereof.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007).
      • Finally, an unconsented motion to amend an application ordinarily should be made prior to trial, in order to give the other party or parties fair notice thereof. See International Harvester Company v. International Telephone and Telegraph Corporation, supra.
  • After the close of the time period for filing an opposition, including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed.
    • Drive Trademark Holdings LP v. Inofin and Mark Walsh, Opposition No. 91168402, (TTAB 2007).
      • After the close of the time period for filing an opposition, including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed. Trademark Rule 2.107.
  • In a use-based application under Trademark Act Section 1(a), only the owner of the mark may file the application for registration of the mark; if the entity filing the application is not the owner of the mark as of the filing date, the application is void ab initio. This statutory ownership requirement cannot be waived.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • In a use-based application under Trademark Act Section 1(a), only the owner of the mark may file the application for registration of the mark; if the entity filing the application is not the owner of the mark as of the filing date, the application is void ab initio. See Trademark Act Section 1(a), 15 U.S.C. §1051(a); Trademark Rule 2.71(d), 37 C.F.R. §2.71(d). This statutory ownership requirement cannot be waived. Huang v. Tzu Wei Chen Food Co., Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988).
  • General rule regarding differences between the entity using a mark and the entity registering the mark.
    • Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007).
      • Where there exists as of the application filing date but a single continuing commercial enterprise which is the owner of the mark, and it is that entity which files the application, the application is deemed to have been filed by the owner of the mark even if the applicant, that single commercial enterprise, is misidentified in the application as to its name or entity designation (such as corporation, partnership, etc.). If the named applicant is merely an earlier or later manifestation of the same single continuing commercial enterprise which is the owner of the mark, a mistake in the manner in which that single entity is identified in the application is not fatal to the application but instead is a curable defect. See Accu Personnel Inc. v. Accustaff Inc., supra (applicant corporation, formed by merger of four separate companies which did not survive the merger, was proper "person" to file the application even if corporation technically did not yet exist on application filing date; the four companies and the corporation constituted earlier and later manifestations of the same single commercial enterprise which was the owner of the mark but which was merely misidentified in the application). See also Gaylord Bros. Inc. v. Strobel Products Co., Inc., supra (for purposes of establishing Section 2(d) priority, defendant corporation which had been formed by an individual who formerly did business under the mark as a sole proprietorship was entitled to rely on the proprietorship's earlier use of the mark; the proprietorship and the corporation constituted a single enterprise, where the proprietorship had "ceased doing business" under the mark upon the formation of the corporation, and the business formerly operated as a proprietorship "was taken over and continued by" the corporation).
  • It was proper for the Examining Attorney to request information as to applicant‘s planned use of the mark in an intent-to-use application as the request is relevant to the public's perception of the mark.
    • In Re Joseph Edward Page, Serial No. 75/066,101, (TTAB 1999).
      • We agree that the Examining Attorney's requests for information herein were prompted by applicant's assertion that his use of the numbers 888 in the asserted mark is not or will not be descriptive. These requests were reasonably necessary for the proper examination of this application. That is to say, because this is an intent-to-use application, the Examining Attorney, we believe correctly, asked applicant whether the asserted mark will at any time be used as a telephone number. Such a request is relevant to the perception of a mark. The Examining Attorney's additional requests for the submission of advertising or promotional materials (if available) or, in the alternative, to describe the nature and channels of trade of applicant's services, are also legitimate requests for information. The manner in which a mark is likely to be encountered by the public has a bearing upon its perception by the public. Also, and contrary to applicant's contention, we do not believe that a statement of whether the mark will be used as a phone number forms "some covenant with the Patent Office regarding future use as a telephone number." Applicant's brief, 3.
  • Failing to comply with the Examining Attorneys request(s) for information constitutes grounds for refusal to register.
    • In Re Joseph Edward Page, Serial No. 75/066,101, (TTAB 1999).
      • The Examining Attorney argues that applicant's failure to comply with her three requests for information constitutes grounds for refusal to register. We agree. Trademark Rule 2.61(b) provides:
        "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application."
    • In Re Joseph Edward Page, Serial No. 75/066,101, (TTAB 1999).
      • The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration. In re Babies Beat, Inc., 13 USPQ2d 1729, 1731 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).
  • Scenarios where amendment of the application to the Supplemental Register is not permissible.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • FOOTENOTE 2 "...Finally, as to the request in applicant's brief that, "even if these refusals are maintained, ... its application be amended to the Supplemental Register," it is pointed out that under Trademark Rule 2.142(g), "[a]n application which has been considered and decided on appeal will not be reopened" for such purpose. In addition, as correctly noted by the Examining Attorney in his brief, not only can applicant, in light of Trademark Rule 2.47(c), presently "not go on the Supplemental Register until it has alleged use of the mark in commerce by filing an Amendment to Allege Use," but an amendment of the application to the Supplemental Register would not contravene the refusal under Section 2(a) of the statute that the term "SUPER SILK" is deceptive. Section 23(a) of the Trademark Act and TMEP §1203.02(a). Accordingly, amendment of the application to the Supplemental Register is not permissible."
  • Examining attorneys may request information as to the intended use of the mark to better understand how a proposed mark may be perceived.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • FOOTNOTE 6: "We further note that examining attorneys may request information as to the intended use of the mark to better understand how a proposed mark may be perceived. Trademark Rule 2.61(b), 37 C.F.R. §2.61(b)."
  • Extension of protection shall be refused to any mark not registrable on the Principal Register and under Section 68(a) a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • Section 68(a)(4) of the Trademark Act provides that "[e]xtension of protection shall be refused to any mark not registrable on the Principal Register," and the Trademark Manual of Examining Procedure instructs that "[u]nder Section 68(a) of the Trademark Act, a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register." TMEP §1904.02(a).
Great Seats, Ltd. v. Great Seats, Inc., Cancellation No. 92032524, (TTAB 2007) In re Paper Doll Promotions, Inc., Serial No. 76451078, (TTAB 2007) In Re Joseph Edward Page, Serial No. 75/066,101, (TTAB 1999) Grand Total
In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) 1
In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990) 1
Huang v. Tzu Wei Chen Food Co., Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) 1
In re Big Daddy's Lounges Inc., 200 USPQ 371 (TTAB 1978) 1
In re Air Products and Chemicals Inc., 192 USPQ2d 84 (TTAB 1976) 1
In re Morrison Industries Inc., 178 USPQ 432 (TTAB 1973) 1
Grand Total 1 1 4 6

Sec. 1091. Supplemental register

  1. (a) Marks registerable
    In addition to the principal register, the Director shall keep a continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled ``An Act to give effect to certain provisions of the convention for the protection of trademarks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes'', to be called the supplemental register. All marks capable of distinguishing applicant's goods or services and not registrable on the principal register provided in this chapter, except those declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the prescribed fee and compliance with the provisions of subsections (a) and (e) of section 1051 of this title so far as they are applicable. Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant's goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services, since before December 8, 1993.
  2. (b) Application and proceedings for registration
    Upon the filing of an application for registration on the supplemental register and payment of the prescribed fee the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and if on such examination it shall appear that the applicant is entitled to registration, the registration shall be granted. If the applicant is found not entitled to registration the provisions of subsection (b) of section 1062 of this title shall apply.
  3. (c) Nature of mark
    For the purposes of registration on the supplemental register, a mark may consist of any trademark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname, geographical name, numeral, device, any matter that as a whole is not functional, or any combination of any of the foregoing, but such mark must be capable of distinguishing the applicant's goods or services.