Order of Examination

In general, applications are assigned for examination in the

order in which they are received in the U.S. Patent and Trademark Office (USPTO), unless

the application is made “special.”  See

TMEP

§702.02

regarding “special” applications.

Generally, amended applications (i.e., applications that

contain a response from the applicant), remands from the Trademark Trial and Appeal

Board (Board), and statements of use are also reviewed in the order in which they are

received in the USPTO.

If a voluntary amendment is submitted before the

application is assigned for examination, it is placed in the record when filed and will

be considered by the assigned examining attorney during initial examination of the

application. Voluntary amendments, including those submitted immediately after the

filing of an application and prior to examination, are subject to the same examination

standards as amendments made in response to a refusal or requirement. Thus, if a

voluntary amendment proposes changing the identification of goods or services, the

permissible scope of the amendment is based on the original identification (assuming

there is no previously acceptable amendment of the identification).

See

TMEP §§1402.07(d)

,

(e)

. Likewise, a pre-examination voluntary amendment of the

mark drawing or mark description will be compared to the original drawing or description

to determine whether the amendment is a material alteration.

See

TMEP §807.14

. See

TMEP

§807.17

regarding the processing of unacceptable amendments to

drawings and

TMEP §1402.15

regarding the processing of

unacceptable amendments to identifications.

Examining attorneys should act on applications that have been

suspended as soon as they are removed from suspension.  See

TMEP §§716–716.06

regarding

suspension.

Examining attorneys should immediately act on inquiries

regarding applications approved for publication or issue that are returned to the

examining attorney to take action or provide information

unacceptable amendments to identifications.

Examining attorneys should act on applications that have been

suspended as soon as they are removed from suspension.  See

TMEP §§716–716.06

regarding

suspension.

Examining attorneys should immediately act on inquiries

regarding applications approved for publication or issue that are returned to the

examining attorney to take action or provide information.

Where appropriate, the managing attorney may direct that a

particular case be given special handling.

When an examining attorney resigns, the examining attorney

should spend any remaining time in the Office getting their amended cases (including

statements of use under

15 U.S.C.

§1051(d)

and appeal briefs), especially those with involved

records, ready for final disposition.