T.M.E.P. § 707
Examiner's Amendment

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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707 Examiner's Amendment

An examiner's amendment should be used whenever appropriate to expedite prosecution of an application. The 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 authorized by the applicant or the applicant's attorney. Authorization is usually given in a telephone conversation, e-mail communication (if the applicant has authorized e-mail communications), or interview between the examining attorney and the applicant or the applicant's attorney. See TMEP §§304 et seq. regarding e-mail.

The examining attorney may issue an examiner's amendment whenever the required amendment does not have to be verified by the applicant. For example, in appropriate circumstances, an examiner's amendment may be used to amend the identification of goods or services, enter a disclaimer, add the state of incorporation or change from the Principal to the Supplemental Register.

The following matters may not be changed by examiner's amendment: the dates of use, if verification would be required (see TMEP §903.05) ; the mark on a special form drawing (see TMEP §807.04) , if the changes would require the filing of a substitute special form drawing; and amendments that require the submission of substitute specimen(s) (see TMEP §904.09). An application cannot be expressly abandoned (see TMEP §718.01) by examiner's amendment.

Examiner's amendments are generally used when there are no statutory refusals. However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner's amendment. For example, in appropriate cases, the applicant may overcome a surname refusal of a mark that is in use in commerce by amending the application to the Supplemental Register.

A non-signatory examining attorney must have proper authorization from the managing attorney, senior attorney, or a reviewing examining attorney before initiating an examiner's amendment.

See TMEP §707.03 regarding the form of an examiner's amendment.

A written response by the applicant is not required for an examiner's amendment. Applicants should not file correspondence confirming an examiner's amendment, because this will delay processing of the application.

If the applicant wishes to object to the examiner's amendment, this should be done immediately (preferably by phone, e-mail or fax), so that the objection can be considered before publication or issue. See TMEP §1402.07(e) regarding an applicant's objection to an examiner's amendment of the identification of goods or services on the ground that the examiner's amendment does not reflect the agreement between the applicant and the examining attorney.

Often an applicant will seek to respond to an outstanding Office action with an amendment or other response by telephone. The examining attorney is encouraged to enter an examiner's amendment if this amendment will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See TMEP §§716 et seq. regarding suspension. However, an applicant or an applicant's attorney does not have a right to the entry of an examiner's amendment in response to an Office action. If the applicant does not agree to an amendment that the examining attorney believes will immediately place the application in condition for publication for opposition or issuance of a registration, the applicant must file a complete written response to the outstanding Office action.

See TMEP §708.05 regarding combined examiner's amendment/priority actions.

NOTE: In a §66(a) application, an examiner's amendment may not be issued on a first action, because the International Bureau of the World Intellectual Property Organization ("IB") will not accept such amendments. Examiner's amendments may be issued on second and subsequent actions. See TMEP §1904.02(e) regarding Office actions in §66(a) applications.