{"id":1147,"date":"2022-02-04T18:12:31","date_gmt":"2022-02-04T18:12:31","guid":{"rendered":"https:\/\/inventedly.com\/?page_id=1147"},"modified":"2022-02-04T18:12:31","modified_gmt":"2022-02-04T18:12:31","slug":"examiners-amendments","status":"publish","type":"page","link":"https:\/\/inventedly.com\/index.php\/resources\/trademark-prosecution\/examiners-amendments\/","title":{"rendered":"Examiner’s Amendments"},"content":{"rendered":"\n
\n
\n
\"\"<\/figure>\n\n\n
\n\t\t\tHome<\/a>\n\t\t<\/span>»<\/span>\n\t\t\tResources<\/a>\n\t\t<\/span>»<\/span>\n\t\t\tTrademark Prosecution<\/a>\n\t\t<\/span>»<\/span>\n\t\t\tExaminer\u2019s Amendments\n\t\t<\/span><\/div>\n\n\n

Examiner’s Amendments<\/h2>\n\n\n\n
\n\n\n\n

An Examiner may amend applications to cure deficiencies in applications, an expedited practice encouraged by the USPTO.  Examiner\u2019s 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\u2019s amendment for defects that can easily be cured, and upon receipt of applicant\u2019s consent, then issue its examiner\u2019s 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 \u201cdisclaim\u201d that descriptive term, which can be accomplished by an examiner\u2019s amendment.<\/p>\n\n\n\n

Examiner\u2019s 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 \u00a7 707.02, allowing for so-called \u201cNo Call Examiner\u2019s Amendments\u201d:<\/p>\n\n\n\n

  1. In applications under \u00a71 or \u00a744, changes to international classification, either before or after publication.<\/li>
  2. Deletion of \u201cTM,\u201d \u201cSM,\u201d \u201c\u00a9,\u201d or \u201c\u00ae\u201d from the drawing.<\/li>
  3. Addition of a description of the mark where an office action or regular examiner\u2019s amendment is otherwise unnecessary and one of the following conditions applies:<\/li>
  4. 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 \u201cthe mark consists of the stylized design of a golf ball\u201d;<\/li>
  5. 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 \u201cliteral element\u201d of the mark in the appropriate field as required by TMEP \u00a7 808.03(b); or<\/li>
  6. 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.<\/li>
  7. 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\u2019s 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]<\/sup><\/a>TMEP \u00a7 808.03<\/span><\/span>