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).