Updates to TMEP Nov. 2023

The Trademark Manual of Examining Procedure (“TMEP”) guides Trademark Examiners at the United States Patent & Trademark Office (“USPTO”) when reviewing applications. It is also the primary resource for applicants and attorneys in connection with the trademark examination process. There have been some important updates that I will summarize in this web page. This page will not discuss all of the updates, and if you wish to review the entirety of the updates, see the November 2023 version of the TMEP.

As of July 22, 2023, the USPTO accepts electronic signatures using document signing software for declarations or verifications (not for submission signatures) and the signatures must comply with TMEP §611.01. There have also been changes to the rules for reviewing domicile addresses. One of the more impactful modifications is that a detailed explanation of why the applicant or registrant does not have a fixed physical address will no longer suffice to satisfy the requirement for an “acceptable domicile address.” The reasoning is that the applicant or registrant is essentially seeking a waiver of the domicile rule, and therefore such a request must be filed in a Petition to the Director (which requires an extraordinary circumstance). Addresses that do not identify an actual street address or function as a mail forwarding address are presumed to be unacceptable as domicile addresses, such as post office (P.O.) boxes, “care of” (c/o) addresses, commercial mail receiving agency (CMRA) addresses, registered agent (RA) addresses, private mailboxes (PMB), Army Post Office (APO) addresses, Fleet Post Office (FPO) addresses, Diplomatic Post Office (DPO) addresses, Highway Contract Route (HCR or HC) addresses, and virtual office and shared workspace addresses.

Examining Attorneys may no longer enter a domicile address by an Examiner’s Amendment. If the applicant and/or registrant responds to the inquiry for a domicile address by asserting a Petition to the Director was filed to waive the requirement, then the Examining Attorney will confirm the status of the Petition. If the Petition is granted, no requirement for a domicile will issue, and if the Petition to the Director is pending, the application will be suspended if the applicant has requested a suspension in the Petition and the Petitions’ Office has provided permission to suspend. Even if a Petition to the Director is filed, an applicant must still provide a response to the Office Action to avoid abandonment of the application.

An update was made for the drawing requirement for trademarks not claiming color. It is now acceptable to present the mark in black on a white background or to present the mark in white on a black background. Either way the image must be depicted only in black and white (see TMEP 807.05(c)). Moving to identification language, certain punctuation can no longer be included in the identification. Commas, semicolons, and apostrophes are the only acceptable punctuation permitted in the IDs (the description of the goods or services). Other punctuation, such as periods, colons or questions marks must be excluded in the identification.

Another important update included in the November 2023 version of the TMEP impacts a scenario if the applicant changes its name or assigns the application during the examination process. The applicant or its counsel must file a request with the Examining Attorney before an application is approved for publication or registration or during the review of the Statement of Use. To suffice, the request must address three items: (1) indicate that the appropriate documents were filed for recordation with the Assignment Division of the USPTO; (2) state that the registration should be in the new name of the applicant or in the assignee; and (3) request the application be suspended pending recordation and updating of the Trademark Database.

Lastly, a few sentences were added to TMEP 1207.01(d)(viii) Consent Agreements, to underscore that in order for an Examining Attorney to give “substantial” or “great” weight to a submitted Consent Agreement in the context of a likelihood of confusion refusal, it must be a “clothed” agreement not a “naked” one. In addition, the updated language highlights that if “on balance, the other [du Pont] factors do not dictate a finding of likelihood of confusion, the parties' consent agreement favors the conclusion confusion in not likely". Therefore, it should not be presumed that a Consent Agreement will always tip the balance of finding no confusion. See our web page entitled, Consent Agreements May Be Rejected by the USPTO, for more information on the topic. If you have questions pertaining to any of the updates, or other trademark related questions, please contact the firm for a courtesy consultation.