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Chapter 700
Procedure for Examining Applications
701
Statutory Authority for
Examination
702.03(a)
Companion Applications
702.03(a)(i)
Companion Applications Not
Previously Assigned for the Same or Similar Marks
702.03(a)(ii)
Companion
Applications Previously Assigned
702.03(a)(iii)
Companion
Registrations
702.03(b)
Conflicting Applications
703
USPTO
Does Not Issue Duplicate Registrations
704.01
Initial Examination Must be Complete
704.02
Examining Attorney’s Search
704.03
Supervisory Examining Attorney May Indicate Action
for Non-Signatory Examining Attorney
705
The
Examining Attorney’s Letter or Action
705.01
Language in Examining Attorney’s Letter
705.02
Examining Attorneys Should Not Volunteer Statements
705.03
Citation of Conflicting Marks
705.04
Reference to Matter in Printed or Online Publications
705.05
Citation of Decisions and USPTO Publications
705.06
Reviewing and Signing of Letters
705.07
Processing Outgoing Office Actions
705.08
Six-Month Response Clause
706
New
Matter Raised by Examining Attorney After First Action
707.01
Approval of Examiner’s Amendment by Applicant or
Applicant’s Attorney
707.02
Examiner’s Amendment Without Prior Authorization by
Applicant or Applicant’s Attorney
707.03
Form of the Examiner’s Amendment
708.01
Priority Action Defined
708.02
Discussion of Issues and Agreements
708.03
Form of the Priority Action
708.04
Refusal of Registration in Priority Action
708.05
Combined Examiner’s Amendment/Priority Action
709.02
Persons Who May Represent Applicant in an Interview
709.03
Making Substance of Interview of Record
709.04
Telephone and E-Mail Communications
709.05
Informal Communications
709.06
Interviews Prior to Filing Application
710.01
Evidence Supporting Refusal or Requirement
710.01(a)
Evidence From Research Database
710.01(c)
Record Must Be Complete Prior to
Appeal
710.02
Search for Evidence Indicating No Refusal or
Requirement Necessary
710.03
Evidence of Third-Party Registrations
711
Deadline
for Response to Office Action
711.01
Time May Run from Previous Action
711.02
Supplemental Office Action Resetting Response Period
712
Signature
on Response to Office Action
712.01
Persons Who May Sign Response
712.03
Response Signed by an Unauthorized Person
713
Examination
of Amendments and Responses to Office Actions
713.01
Previous Action by Different Examining Attorney
713.02
Noting All Outstanding Refusals or Requirements
713.03
Response to Applicant’s Arguments
714.01
Not Permissible on First Action
714.02
Not Permissible on Suspension
714.03
When Final Action is Appropriate
714.04
Form of the Final Action
714.05
Delineating New Issues Requiring Issuance of Nonfinal
Action
714.05(a)
Unacceptable Amendment Proposed By
Applicant
714.05(a)(i)
Amendment to Supplemental
Register or Submission of Claim of Acquired Distinctiveness
714.05(a)(ii)
Amendment
of Identification of Goods/Services
714.05(b)
Section 2(d) Refusal Based on
Earlier-Filed Application That Has Matured Into Registration
714.05(c)
Advisory Statement Cannot Serve as
Foundation for Final Refusal or Requirement
714.06
Applicant’s Recourse When Final Action is Premature
715
Action
After Issuance of Final Action
715.01
Proper Response to Final Action
715.02
Action After Final Action
715.03
Request for Reconsideration After Final Action
715.03(c)
Time for Appeal Runs from Issuance
Date of Final Action
715.04
Request for Reconsideration Filed in Conjunction With
Notice of Appeal
716
Suspension
of Action by USPTO
716.01
Form of Suspension Notice
716.02
Circumstances Under Which Action May Be Suspended
716.02(a)
Applicant’s Petition to Cancel
Cited Registration
716.02(b)
Submission of Copy of Foreign
Registration in §44(d) Application
716.02(c)
Conflicting Marks in Pending
Applications
716.02(d)
Inter Partes or Court Proceeding
716.02(e)
Suspension Pending Cancellation or
Expiration of Cited Registration
716.03
Applicant’s Request to Remove Application from
Suspension
716.04
Suspended Docket Checked
716.05
Inquiry by Examining Attorney Regarding Suspended
Application
716.06
Suspension After Final Action
717
Reissuing
an Office Action
717.02
Non-Receipt of Office Action
718.01
Express Abandonment by Applicant or Applicant’s
Attorney
718.02
Failure by Applicant to Take Required Action During
Statutory Period
718.03(a)
Holding of Abandonment for Failure
to Respond Completely
718.03(b)
Granting Additional Time to
Perfect Response
718.03(c)
Reconsideration of Holding of
Abandonment
718.04
Failure to File Statement of Use
718.05
Failure to Perfect Appeal
718.06
Notice of Abandonment for Failure to Respond
718.07
Revival or Reinstatement of Abandoned Application -
New Search Required