Examiner’s Amendments
An Examiner may amend applications to cure deficiencies in applications, an expedited practice encouraged by the USPTO. Examiner’s amendments cannot be used for statutory refusals, such as a refusal to register a mark on the ground that it is likely to cause confusion with a conflicting registered mark under Section 2(d) and other similar issues that require a substantive response, evidence (e.g. use dates, substitute specimens), or a declaration. Usually, the Examiner will call the applicant and propose an examiner’s amendment for defects that can easily be cured, and upon receipt of applicant’s consent, then issue its examiner’s amendment. For example, an Examiner may call an applicant if an applied-for mark includes a merely descriptive term in an insignificant manner and propose that the applicant agree to “disclaim” that descriptive term, which can be accomplished by an examiner’s amendment.
Examiner’s amendments must be specifically authorized by the applicant or its attorney by phone, email or an in-person interview, except for a few non-substantive circumstances enumerated under TMEP § 707.02, allowing for so-called “No Call Examiner’s Amendments”:
- In applications under §1 or §44, changes to international classification, either before or after publication.
- Deletion of “TM,” “SM,” “©,” or “®” from the drawing.
- Addition of a description of the mark where an office action or regular examiner’s amendment is otherwise unnecessary and one of the following conditions applies:
- The record already contains an informal indication of what the mark comprises, e.g., a cover letter accompanying a paper application refers to the mark as a stylized golf ball design. If appropriate, the Examiner could enter an amendment that “the mark consists of the stylized design of a golf ball”;
- The mark consists only of wording in stylized font, with no color claim and with no design element, and the applicant did not provide the “literal element” of the mark in the appropriate field as required by TMEP § 808.03(b); or
- The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording.
- If the Examiner determines that a description of the mark will not be printed in the Official Gazette or on the registration certificate, and it is unnecessary to issue an office action or a regular examiner’s amendment regarding other matters, the Examiner may enter a Note to the File in the record or issue a “no-call” amendment to that effect.[1]TMEP § 808.03
- In applications under §1, amendment of the application to enter a standard character claim when the record clearly indicates that the drawing is intended to be in standard character form.[2]TMEP § 807.03(g)
- Correction of obvious misspellings, typographical errors, and redundancies in the identification of goods/services, or in an otherwise accurate and complete description of the mark TMEP § 808.03(a) and 1402.01(a).
- When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods, services, and/or class(es), the Examiner may issue an examiner’s amendment deleting the goods/services/classes to which the refusal or requirement pertained. Similarly, when an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the Examiner may issue an examiner’s amendment deleting the unacceptable terminology from the identification.[3]TMEP § 718.02(a) and 1402.13
- In applications under §1 or §44, deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual, which includes descriptions of goods/services already approved by the USPTO in prior applications.
- If, in response to a general or specific inquiry about translation and/or transliteration of non-English wording in the mark, the applicant does not directly state that the term has no meaning in a foreign language but instead responds to the effect that “the mark has only trademark significance,” the Examiner may enter a statement that “the term has no meaning in a foreign language” into the record.[4]TMEP § 809.01(a)
- When an applicant provides a translation statement that has the proper translation but is in a format that is not suitable for printing, the Examiner may “reformat” the statement, without changing the substance, into a simple, clear statement as to meaning.[5]TMEP § 809.03
- When an application includes foreign wording that is not translated, and a translation of the same foreign wording appears in a prior registration for which the applicant has claimed ownership, and the translation is acceptable to the Examiner, the Examiner may enter the identical translation into the record.
An examiner’s amendment must not include a six-month response clause because a written response by the applicant is not required. In its examiner’s amendment the Examiner must also not state that the application is ready for publication or issue because further action may be required. As set forth above, the examiner’s amendment must still include a search clause with regard to conflicting marks, if any, if the applicant has not yet been advised of the results of such a search. Finally, the examiner’s amendment must indicate any refusals or requirements that are withdrawn or continued by the Examiner. The USPTO will notify applicant that an examiner’s amendment has been issued, including “No Call Examiner’s Amendments.” It is important that the applicant promptly print the examiner’s amendment and carefully review it for any errors, discrepancies or other issues. It is important that the applicant call, email or otherwise contact the Examiner immediately if the applicant disagrees with any changes.