If the applicant responds to a nonfinal Office action requiring an amendment to the identification of goods/services, and the examining attorney determines that the identification is still unacceptable, generally the examining attorney must issue a final requirement to amend the identification of goods/services. There are only three exceptions to this rule:

1. (1) If the amended identification is broader in scope than the original identification, and the prior Office action failed to advise the applicant that amendments broadening the identification are prohibited under 37 C.F.R. §2.71(a), the examining attorney may not issue a final Office action.
2. (2) If the amended identification sets forth goods/services in multiple classes, but the applicant has not submitted all the requirements for a multiple-class application (e.g., specimens and fees for all classes), and the prior Office action failed to advise the applicant that the missing elements were required, the examining attorney may not issue a final Office action. See TMEP §§1403–1403.01 regarding the requirements for multiple-class applications.
3. (3) If further amendment to the identification of goods and/or services is required as to issues not previously raised by the examining attorney (i.e., applicant properly responds to an identification requirement in a first non-final Office action and the examining attorney subsequently requires that other goods and/or services in the original identification be amended), the examining attorney may not issue a final Office action.

If the examining attorney issues a nonfinal action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite, but is otherwise unacceptable (e.g., because it includes a registered trademark or service mark (see TMEP §1402.09)), this is not considered a new issue, and the examining attorney must issue a final Office action requiring amendment of the identification.

However, if the examining attorney issues a final action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but is otherwise unacceptable (e.g., because it includes a registered mark), the examining attorney should treat the response as incomplete, and grant the applicant additional time to cure this deficiency, pursuant to 37 C.F.R. §2.65(a)(2). See TMEP §718.03(b) for further information about granting an applicant additional time to perfect an incomplete response. Examining attorneys are encouraged to try to resolve these issues by examiner’s amendment.