Trademark examiners in the U.S. often will reach out to applicants to handle certain amendments to their applications, avoiding the issuance of formal office actions. There are many benefits to working with the examiners, even though the window of opportunity is usually quite short. Notably, prosecution will proceed much more quickly if applicants can take advantage of working with the examiners to effect amendments that are often simple or require minimum substantive review.
The U.S. Patent & Trademark Office (USPTO) has a Trademark Manual of Examining Procedure and Section 707 provides guidance on an examiner’s amendment:
- “The amendment must be specifically authorized by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner.”
- “An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application” (emphasis added).
Examiners have a range of matters they can address through examiners’ amendments: disclaimers, amendments to identifications of goods and services, entity clarifications, and mark descriptions.
While amendments that require a verification from the applicant or are required to overcome statutory errors cannot be handled through an examiner’s amendment, there are important exceptions to note. Amendments to Supplemental Register or claiming acquired distinctiveness through claiming a prior registration to overcome a descriptiveness refusal can be done through an examiner’s amendment, for example. Under recent changes to USPTO policy, the applicant’s domicile can be added by examiner’s amendment.
An important practice tip to keep in mind, though, is that the examiner cannot add the URL or date accessed to a webpage specimen. A simple mistake in a filing like forgetting a URL on a specimen can take several months to resolve and delays the application passing to the publication stage.
In sum, when you can work with the examiner on an amendment short of an office action issuing, do it!
- It really does expedite the process – examiners have limited time to get out a first action on a case, which is why they request such a quick turnover time when they reach out for an examiner’s amendment. Once an applicant approves an examiner’s amendment, it will be entered quickly, and the application will move forward to publication within a few days.
- If an applicant doesn’t respond, the examiner will have to issue an office action. Once the applicant files its written response, it can take a few months for the examiner to receive the file back in their docket, and then months again for the examiner to attend to reviewing the response (especially right now, given the backlog at the USPTO).