Department of Commerce
Patent and Trademark Office
U.S. Patent and Trademark Office
Trademark Examining Groups
EXAMINATION GUIDE NO. 1 - 95
Issued April 14, 1995
A. Examiner's Amendments
B. Assertion of Use in "Interstate Commerce" by Foreign
Applicants
C. Prior U.S. Classification
D. Disclaimers
E. Signatory Identified as Officer of Corporate Applicant
F. Apparent Discrepancies Between Dates of Use and
Execution Dates
A. Examiner's Amendments
Previously, in order to initiate most examiners amendments, examining
attorneys were required to contact the applicant or its attorney for
approval. Examiner's amendments without the applicant's or attorney's
authorization were permitted only for changes in classification prior to
publication. TMEP 1111 and 1111.02. Examining attorneys may now
exercise discretion to amend applications by examiner's amendment without
the applicant's prior approval in the following situations:
1. changes to international classification, except where the change is
made after publication and the change would require republication of the
mark;
2. deletion of "TM," "SM," " " or " " from the drawing;
3. addition of a formal description of the mark where it is necessary
and where the record already contains an informal indication of what the
mark comprises;
example: The cover letter with the application refers to
the mark as a stylized golf ball design. If appropriate, the
examining attorney could enter an amendment that "the
mark consists of the stylized design of a golf ball."
4. amendment of the application to clarify that the mark is in typed
form when the record clearly indicates that the drawing is supposed to be
in typed form;
5. amendment of the method-of-use clause to insert a reference to the
use shown by the specimens (including substitute specimens), when the
application includes a method-of-use clause that does not refer to such
use (The method-of-use clause need not be amended, however, if it
specifies use "in other ways customary in the trade," and the specimens
show a type of use customary in the trade, or if the clause includes other
language that encompasses the use shown by the specimens.);
6. addition of lining and stippling statements, other than color lining
statements, where such a statement is necessary, and where the
significance of the lining or stippling is indicated by specimens or other
information of record;
7. correction of obvious misspellings in the identification of goods
and services.
example: The goods are recited as "T-shurtz." The exam-
ining attorney could amend to "T-shirts." However,
"shirtz" could not be amended to "shirts" without calling
the applicant, because "shirtz" might also be a misspelling
of "shorts."
Disregard TMEP 1111 to the extent that it conflicts with
the above policy. Examining attorneys should continue to secure the
applicant's approval for the above changes if calling the applicant on
other matters, or if the record contains any ambiguity as to the
applicant's intent.
Any applicant who disagrees with any of these changes should contact
the examining attorney promptly after receipt of the examiner's amendment.
See: TMEP 804.10(d).
B. Assertion of Use in "Interstate Commerce"
by Foreign Applicants
Examining Attorneys should discontinue issuing inquiries concerning the
assertion of use in "interstate commerce" by foreign applicants under TMEP
904.03(c).
C. Prior U.S. Classification
Examining attorneys no longer need to determine or enter the "correct"
U.S. classes for goods and services. Effective March 2, 1995, all U.S.
classes are automatically assigned by TRAM-2 based upon the International
Class that has been assigned to the goods or services.
Whenever an International Class is added, dropped, or changed, TRAM-2
will update the U.S. Class with an automated table. Examining attorneys
not only are not expected to modify the U.S. Class listing, but are not
able to amend this field. This applies whether the amendment arises in a
response or through an examiner's amendment.
D. Disclaimers
A disclaimer may be limited to pertain to only certain classes or
certain goods or services.
E. Signatory Identified as Officer of Corporate Applicant
If the individual who signed an application or other document on behalf
of a corporate applicant is identified as an officer of the applicant, the
examining attorney need not require that the applicant specify the
particular office held by that person. Disregard TMEP 803.09 to the
extent that it conflicts with this policy.
F. Apparent Discrepancies Between Dates of Use
and Execution Dates
If an application, amendment to allege use or statement of use
specifies a date of first use or first use in commerce only by the year,
or by the month and year, and the date would be interpreted, according to
TMEP 904.07, as later than the date on which the document was signed,
the Office will now presume that the date specified is the date of signing
of the application, amendment to allege use or statement of use. In this
case, it is unnecessary to amend to indicate the date more specifically or
to secure a new declaration.
April 17, 1995 PHILIP G. HAMPTON, II
Assistant Commissioner
for Trademarks