If in the first Office action an examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to correct the inadvertent error in a subsequent action. Examining attorneys should exercise great care to avoid these situations, and should take this step only when the failure to do so would result in clear error (see TMEP §706.01). After the first action, supervisors (e.g., supervisors reviewing the quality of the examining attorney’s work) should not introduce any new reason for refusal that is not clearly justified under the Act or rules.

Since it is unusual to make a new refusal or requirement that could have been raised in the first action, an examining attorney who does make a new refusal or requirement must clearly explain why the refusal or requirement is necessary, and apologize for the delay in raising the issue, if appropriate. See TMEP §711.03 regarding supplemental Office actions.

Sometimes, the examining attorney must issue a new refusal or requirement because the applicant submits information that raises a new issue.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the International Bureau of the World Intellectual Property Organization ("IB") forwards the request for extension of protection to the USPTO. Thus, if the examining attorney determines that a new ground of refusal exists that should have been raised in the first Office action, a second Office action raising this new ground may be issued only if time remains in the 18-month period. In such a case, the examining attorney must ensure that a notification of the new ground of refusal is sent to the IB. See TMEP §1904.03(a).

The term "clear error" refers to an administrative internal guideline used by the USPTO to determine whether an examining attorney should issue a refusal or requirement that could or should have been raised in a previous action. See In re Nursecon, LLC, Ser. No. 88052194, 2024 TTAB LEXIS 545, at *9-10 (2024) (quoting In re Driven Innovations, Inc., Ser. No. 77073701, 2015 TTAB LEXIS 179, at *6-7 (2015), rev'd and remanded on other grounds, 674 Fed. Appx. 996 (Fed. Cir. 2017)).

It is the policy of the USPTO to conduct a complete examination upon initial review of an application by an examining attorney and to issue all possible refusals and requirements in the first Office action. See TMEP §704.01. The USPTO will not issue a new refusal or requirement unless it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act or applicable rules. See TMEP §706. For example, upon discovery of evidence, after publication, that demonstrates the proposed mark is a generic identifier for the goods, registration on either the Principal or Supplemental Register would be in violation of the Trademark Act and the Director will restore jurisdiction to the examining attorney to issue a new refusal of registration. See TMEP §1504.04. See also TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use that could or should have been issued during initial examination of the application.

The internal clear-error standard is merely an administrative guideline. It does not confer on an applicant any entitlement to a showing of clear error, nor does it impose a higher standard of proof on the examining attorney than is otherwise required to establish a prima facie case for the refusal or requirement. In re Nursecon, LLC, 2024 TTAB LEXIS 545, at *9-10 (quoting In re Driven Innovations, Inc., 2015 TTAB LEXIS 179, at *7).

The USPTO has inherent authority to reconsider its decisions and broad authority to correct errors made by examining attorneys and other USPTO employees. See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340 (4th Cir. 2007) ("[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors.")); In re Nursecon, LLC, 2024 TTAB LEXIS 545, at *8 (citing GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015); Macktal v. Chao, 286 F.3d 822, 825-26 (5th Cir. 2002)); see also In re Vivint, Inc., 14 F.4th 1342, 1351-52 (Fed. Cir. 2021) (holding that the USPTO has authority to reconsider its decision ordering ex parte reexam); Tokyo Kikai Seisakusho, Ltd. v. United States, 529 F.3d 1352, 1360 (Fed. Cir. 2008) ("administrative agencies possess inherent authority to reconsider their decisions"; collecting cases); BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 1273-74 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner when withdrawing a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee, and notification of the issue date, and with publication of the drawing and claim in the Official Gazette).

The USPTO has a duty to issue valid registrations. Except as provided in 15 U.S.C. §1141h(c)(4), there is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal. Thus, if the USPTO discovers that a mistake made during examination would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been previously raised.

Moreover, an applicant may not directly challenge the USPTO’s determination under the clear-error standard that a new requirement or refusal must issue. In re Driven Innovations, Inc., 2015 TTAB LEXIS 179, at *11. The only way an applicant may challenge a refusal that was issued under the clear-error standard is by appealing the merits of the final refusal to the Board, which will review only the correctness of the underlying substantive refusal of registration. In re Nursecon, LLC, 2024 TTAB LEXIS 545, at *11-12 (quoting In re Driven Innovations, Inc., 2015 TTAB LEXIS 179, at *13). See also In re Sambado & Son, Inc., 45 USPQ2d 1312, 1314-15 (TTAB 1997).

The question of whether a refusal or requirement was procedurally proper is reviewable on petition under 37 C.F.R. §2.146. However, "[q]uestions of substance arising during the ex parte prosecution of applications, . . . including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, . . . and 23 of the Act of 1946, are not appropriate subject matter for petitions to the Director." 37 C.F.R. §2.146(b). Thus, the Director cannot consider on petition whether the issuance of or failure to issue a substantive refusal was a "clear error." See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review on petition.