Trademark Examiner’s Amendment of Application
A Trademark Examiner’s amendment is sometimes suggested and/or required during examination a US Trademark Application*.
Some Examiner’s amendments will alter the scope of rights associated with a future Trademark Registration. Other Trademark Examiner’s amendments will not modify the scope of rights associated with a future Trademark Registration.
Whether or not to accept the Trademark Examiner’s amendment is a business decision.
Potential Consequences of an Amendment
Applicant’s acceptance of the Trademark Examiner’s amendment generally results in Trademark Registration for the Applicant.
Failure to agree to the Examiner’s amendment can result in:
- Legal arguments that the Examiner’s suggested amendment is inappropriate
- A refusal to register the Trademark and the loss of long-term federal rights associated with a US Registration
- An appeal to the Trademark Trial and Appeal Board where the Applicant can lose the appeal
- Filing a new Application to register the Trademark, where the new Application is modified from the previously filed Trademark Application
About Section 707 – TMEP – Examiner’s Amendment*
Examples of Section 707 relevant procedures for Trademark Examiners include:
- An Examiner’s amendment should be used whenever appropriate to expedite prosecution of an Application
- An Examiner’s amendment is a communication to the Applicant in which the examining attorney states that the Application has been amended in a specified way
- Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual Applicant, someone with legal authority to bind a juristic Applicant 700-20 October 2010 (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner
- Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the Applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual Applicant, someone with legal authority to bind a juristic Applicant, or the Applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b)
- If the Applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner
- If the Applicant is pro se, the examining attorney must speak directly with the individual Applicant or with someone with legal authority to bind a juristic Applicant (e.g., a corporate officer or general partner of a partnership)
- For joint Applicants who are not represented by a qualified practitioner, each joint Applicant must authorize the examiner’s amendment
*Along with Trademarks, the USPTO Trademark Manual of Examining Procedure (TME) also applies to Service Mark Applications.
If your company needs assistance with its Trademarks/Service Marks, please contact Business Patent Law.
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