Section 2 Refusal Response Checklist: Diagnosis, Evidence, and Filing

By Casey Scott McKay · 2025-01-24

This checklist walks a Section 2 office action from the day it issues to the day the mark registers, abandons, or goes up on appeal, in eleven phases that a competent practitioner can work top to bottom. It starts with docketing the three-month deadline under 37 C.F.R. § 2.62(a)(2) and building a ground inventory that separates appealable refusals from compliance requirements, then forces the one diagnosis that governs everything downstream: whether the bar is curable by evidence, curable by paperwork, or permanent. Separate evidence phases cover surname refusals under 2(e)(4), geographic refusals under 2(e)(2) and 2(e)(3), and 2(a) deceptiveness and false suggestion of a connection, each with the specific exhibits, declarations, and record defects that actually move an examining attorney. Further phases handle the paperwork cures — 2(c) written consents, disclaimers in the required format, identification amendments, and division — and the fallback architecture of a 2(f) claim pleaded in the alternative, 2(f) in part, and an express amendment to the Supplemental Register with its intent-to-use and Madrid gates. The last two phases cover drafting, electronic filing and exhibit hygiene, and preserving the appellate record before the notice of appeal closes it under 37 C.F.R. § 2.142(d). One worked example, a Wisconsin creamery facing four grounds in a single office action, runs through every phase, and a deadlines table collects every clock in one place.

IP and Technology > Trademarks | Checklist | Published 24 January 2025 - Updated 25 August 2025 | Casey Scott McKay - marksy.us

Summary. This checklist runs a Section 2 office action from the day it issues to the day the mark registers, abandons, or goes up on appeal. It starts with docketing the three-month deadline under 37 C.F.R. § 2.62(a)(2) and building a ground inventory that separates appealable refusals from compliance requirements, then forces the diagnosis that governs everything downstream: whether the bar is curable by evidence, curable by paperwork, or permanent. Separate evidence phases cover surname refusals under 2(e)(4), geographic refusals under 2(e)(2) and 2(e)(3), and 2(a) deceptiveness and false suggestion, each with the exhibits, declarations, and record defects that actually move an examining attorney. Later phases handle the paperwork cures — consents, disclaimers, identification amendments, division — and the fallback architecture of a 2(f) claim pleaded in the alternative and an express Supplemental Register amendment with its intent-to-use and Madrid gates. The final phases cover drafting, filing and exhibit hygiene, and closing the appellate record before 37 C.F.R. § 2.142(d) closes it for you.

Keywords: section 2 refusal response checklist · office action triage · 37 cfr 2.62 · three-month response deadline · ground inventory · primarily merely a surname · benthin factors · census surname file · geographically descriptive refusal · generally known location · goods place association · something more services · section 2(a) materiality · section 2(c) written consent · disclaimer requirement · section 2(f) in the alternative · supplemental register amendment · amendment to allege use · request for reconsideration · ex parte appeal deadlines

What this checklist is for

An office action refusing registration under 15 U.S.C. § 1052 is a set of separately dispositive grounds with a hard clock attached. This document is the working sheet for answering one: what to open, what to docket, what evidence to pull, what to sign, what to file, and in what order.

Who should use it. Prosecution counsel and paralegals responding to a refusal under 2(a), 2(b), 2(c), 2(e)(2), 2(e)(3), 2(e)(4), or 2(e)(5); in-house counsel supervising outside counsel; founders deciding whether to fight or rename. Likelihood-of-confusion refusals under 2(d) follow a different playbook — start with Responding to a §2(d) Likelihood-of-Confusion Refusal. Mere-descriptiveness refusals under 2(e)(1) overlap heavily with this sheet but have their own arguments; see How to Overcome a Descriptiveness §2(e)(1) Refusal.

What you'll need before you start. The complete office action PDF and every attached evidence exhibit downloaded from TSDR; the application as filed; the filing basis and applicant domicile; the client's complete marketing asset inventory for the last three years; the production, sourcing, and facility facts from operations, not from the website; finance's annual sales and advertising figures by year and territory; contact details for any individual whose name appears in the mark; and a signed budget authority. Assembling third-party evidence takes four to ten weeks. Start it in week one.

The doctrine is elsewhere on purpose. The tests, the leading cases, and the curability architecture are in The Section 2 Bars: Surnames, Geography, Deception, and the First Amendment. The reasoning behind each box below — why the order is what it is, and the model language for each argument — is in Overcoming a Section 2 Refusal: A Practitioner's Guide to Surname, Geographic, and Deceptiveness Arguments. This sheet does not re-teach either.

The worked example. Fontana Ridge Creamery LLC makes aged alpine-style cheese in Dodgeville, Wisconsin. Its founder, Marco Fontana, is named on the "Our Story" page. It filed an intent-to-use application under 15 U.S.C. § 1051(b) on 5 September 2023, Serial No. 98/123,456, for FONTANA RIDGE CREAMERY in Class 29 (cheese) and Class 43 (restaurant and tasting-room services). On 24 June 2024 the examining attorney refused both classes under 2(e)(2) and 2(e)(4), required a disclaimer of CREAMERY, and issued a request for information. That matter runs through every phase below.

| Phase | What it delivers | Typical elapsed time | |---|---|---| | 1. Triage and docket | Four calendared dates and a client reporting letter | Day 1-3 | | 2. Inventory every ground | A ground table; nothing unanswered later | Day 1-5 | | 3. Diagnose curability | Curable / paperwork / fatal, in writing, with a budget | Week 1 | | 4. Examiner call and requirement clean-up | Requirements disposed of; strategy intelligence | Week 2-3 | | 5. Surname evidence (2(e)(4)) | An audited database exhibit and a promotion declaration | Week 2-8 | | 6. Geographic evidence (2(e)(2), 2(e)(3)) | Negative reference evidence and an origin declaration | Week 2-8 | | 7. Deceptiveness and false connection (2(a)) | Materiality rebuttal; competing referents; authorization | Week 2-10 | | 8. Consents, disclaimers, amendments | Signed paperwork cures | Week 2-6 | | 9. Fallbacks: 2(f) and the Supplemental Register | Alternative positions that survive a maintained refusal | Week 6-10 | | 10. Draft and file | A filed response and a complete matter file | Week 8-12 | | 11. Final action, reconsideration, appeal | A closed record and a preserved appeal | Month 4-9 |

Phase 1 — Triage and docket, day one

[ ] Download the outgoing office action and every separately docketed evidence attachment from the TSDR "Documents" tab.
- Why. The emailed notice is a link, not the document. Attachments routinely run forty to a hundred pages, and the entire case against the mark lives in them.
- Trap. Responding to the examiner's prose without opening the exhibits is the single most common failure in this area. The reversals cited throughout this cluster are evidence cases, not doctrine cases.
[ ] Record the filing basis, the applicant's domicile, and the application's status on the TSDR "Status" tab.
- Why. A § 66(a) Madrid extension of protection gets six months to respond, cannot be extended, and has no Supplemental Register fallback at all. That changes the strategy on day one, not in month three.
- Authority. 37 C.F.R. § 2.62(a)(1)-(2); 37 C.F.R. § 2.47(c); TMEP § 1904.02(c). See WIPO Office Actions and Provisional Refusals.
[ ] Confirm the applicant is properly represented and that the correspondence email of record is current.
- Authority. 37 C.F.R. § 2.11(a) (foreign-domiciled applicants must be represented by a U.S.-licensed attorney); 37 C.F.R. § 2.23(b).
[ ] Docket four dates, not one.
- the statutory response date — three months from the issue date of the action for a domestic application;
- an internal go/no-go date two weeks earlier, when you decide whether to request the extension;
- the extended date, six months from issuance, available only if the request is filed before the original period expires and the $125 fee is paid;
- an evidence-complete date three weeks before the intended filing date.
- Authority. 37 C.F.R. § 2.62(a)(2); TMEP § 711. See The 3-Month Office Action Deadline: What It Means for Applicants and Docketing Deadlines: Never Miss a Renewal.
- Trap. There is no retroactive extension and no grace period. Secondary sources written before December 2022 still say "six months" for everything; they are wrong for current domestic filings.
[ ] Confirm that suspension is not being used as a substitute for the extension.
- Authority. 37 C.F.R. § 2.67; TMEP § 716.02. Suspension is available for a cited pending application or a pending foreign registration. It is not available so you can collect declarations.
[ ] Send the client a reporting letter within three business days naming every ground, the curability bucket for each, the deadline, and a fee estimate.
- Worked example. Fontana Ridge: action issued 24 June 2024; statutory response date 24 September 2024; go/no-go on the extension 10 September 2024; extended date 24 December 2024; evidence-complete date 30 August 2024.

Phase 2 — Inventory every ground before you read the reasoning

[ ] Build a ground table in the matter file with one row per item: statutory or regulatory basis, classes affected, refusal or requirement, evidence the examiner attached, and your intended position.
- Why. The Office will make final anything you fail to address. A response that defeats three refusals and ignores a disclaimer requirement produces a final refusal.
- Authority. TMEP § 718.03.
[ ] Tag each item refusal or requirement, and treat them differently.
- Why. Refusals go to registrability. Requirements — disclaimers, identification amendments, specimens, information requests — are compliance items, most of which you can satisfy at zero litigation risk. Arguing about a disclaimer of CREAMERY for a creamery burns credibility you will need later.
[ ] Log every question in a request for information under 37 C.F.R. § 2.61(b) separately and numbered.
- Authority. 37 C.F.R. § 2.61(b); TMEP § 814. Non-compliance is an independent ground for refusal, so you cannot decline to answer.
[ ] Write down the refusals the examiner did not make but plausibly could: 2(e)(3), 2(c), failure to function, ornamentation, specimen, lawful-use.
- Why. Your own arguments can invite them. Proving the goods do not originate in the named place defeats 2(e)(2) and hands the examiner element one of 2(e)(3).
- Trap. For federally regulated goods, run the lawful-use screen now rather than after you win on Section 2. See The Lawful Use Requirement and the Regulated-Industry Trademark Filing Checklist.
[ ] Load the examiner's attached evidence into a spreadsheet, one row per exhibit, with source, date, and what it purports to prove.

Worked example — the Fontana Ridge ground table.

| # | Basis | Classes | Type | Examiner's evidence | |---|---|---|---|---| | 1 | 15 U.S.C. § 1052(e)(2) | 29, 43 | Refusal | Wikipedia pages for Fontana, Wisconsin and Fontana, California; applicant's Wisconsin address | | 2 | 15 U.S.C. § 1052(e)(4) | 29, 43 | Refusal | 4,300 public-records database entries; the "Our Story" page | | 3 | 15 U.S.C. § 1056(a) | 29, 43 | Requirement | Dictionary definition of "creamery" | | 4 | 37 C.F.R. § 2.61(b) | 29, 43 | Requirement | Two questions: where is the cheese made, and is anyone associated with the applicant named Fontana |

Phase 3 — Diagnose: is this refusal curable at all?

[ ] Sort every refusal into one of three buckets and put the result in the client letter in the client's words.

| Bucket | Refusals | The one-sentence client answer | |---|---|---| | Curable by evidence or time | 2(e)(1), 2(e)(2), 2(e)(4) | "Worst case we take the Supplemental Register now and return to the Principal Register with a 2(f) showing. Nobody rebrands." | | Curable by paperwork or a fact change | 2(c), disclaimer and identification requirements, 2(e)(3) if the goods can honestly be sourced from the named place | "There is a signature or a supply-chain fact that fixes this. We find out this week." | | Not curable | 2(a) deceptive matter, 2(a) false suggestion, 2(b), 2(e)(3) where the misrepresentation is material, 2(e)(5) functionality | "If the examiner is right on the law, the mark is dead on both registers and cancellable forever under 15 U.S.C. § 1064(3). We attack the elements or we rename." |

[ ] Run the geographic fork to the end before drafting a single sentence: is the place generally known to U.S. purchasers of these goods; if yes, do the goods originate there; if not, is the place famous as a source for these goods?
- Why. Winning the wrong element converts a curable 2(e)(2) into a fatal 2(e)(3).
[ ] Decide whether to make the deceptiveness trade — conceding that a misdescription is immaterial to purchasers, which argues you out of 2(a) and into 2(e)(1) — and get the client's written sign-off.
- Authority. In re Budge Mfg. Co., 857 F.2d 773, 775 (Fed. Cir. 1988) (materiality is the third prong and the only thing separating the two bars); TMEP § 1203.02(a).
- Trap. You are asking the Office to hold on the public record that a product feature does not matter to buyers. Marketing will object. It is still usually right.
[ ] Price all three exits — argue only, argue plus evidence, Supplemental Register — and recommend one in writing.
[ ] If the diagnosis is "not curable," schedule the rebrand conversation this week rather than after $18,000 of argument.
- Why. The identification, the specimen work, the clearance file, and the class strategy all transfer to a replacement mark. See Trademark Clearance Searching and Choosing a Strong Trademark: The Distinctiveness Spectrum.

Practice tip. Put the bucket in the subject line of the reporting email. "FONTANA RIDGE CREAMERY — both refusals are curable" changes the client's next four months more than any paragraph you write underneath it.

Phase 4 — Call the examining attorney, then clear the requirements

[ ] Call the number printed on the office action within the first two weeks.
- Authority. TMEP § 709.
[ ] Authorize an examiner's amendment for anything you were going to concede: the disclaimer, an identification narrowing, an ownership claim.
- Authority. TMEP §§ 707, 707.02. Entered by amendment, these items leave the case entirely.
- Trap. An examiner's amendment entering a disclaimer resolves nothing about a pending refusal. Clients read it as progress every time; say so in the call memo.
[ ] Ask three specific questions and write the answers down.
- "If Applicant establishes that no production occurs in any place named Fontana, will the Office consider a refusal under 2(e)(3)?"
- "What evidence on the services/place association does the Office believe supports the Class 43 refusal?"
- "Would deleting or narrowing [specific goods] dispose of any ground?"
[ ] Volunteer nothing.
- Trap. "Marco's family has made cheese in Bergamo for four generations" is a lovely sentence and a gift to a 2(a) refusal nobody has written yet.
[ ] Send a short confirming email the same day restating what was discussed and what you undertook to file.
- Why. It is the attachment to your petition if the next action is improperly made final. TMEP § 714.05.

Phase 5 — Surname refusals: take the printout apart, then rebuild it

[ ] Open the examiner's database printout in a spreadsheet and run five passes. Budget ninety minutes; it is the highest-value ninety minutes in the response.
1. Deduplicate. Public-records aggregators list the same person at multiple addresses across multiple years. In re Adlon Brand GmbH & Co. KG, 120 U.S.P.Q.2d 1717 (T.T.A.B. 2016).
2. Strip non-U.S. entries. Foreign listings have no bearing on primary significance to the U.S. public. TMEP § 1211.02(b)(i).
3. Strip false positives — the term as a given name, a business name, a street, or a municipality.
4. Grade the news evidence into "headline or byline" versus "buried mention," and count each. References in limited-readership publications and mentions buried in general-circulation text do not establish public exposure. In re Joint-Stock Co. "Baik", 84 U.S.P.Q.2d 1921 (T.T.A.B. 2007).
5. Flag conclusory sourcing — genealogy-site blurbs about a surname's popularity merely corroborate the directory evidence. Adlon, 120 U.S.P.Q.2d 1717.
- Trap. State the corrected number with your methodology, as a numbered exhibit. "The evidence is duplicative" is an adjective. "4,300 records resolve to 1,291 distinct U.S. individuals, per the deduplication key at Exhibit A" is a finding.
[ ] Decide whether rarity helps at all before you argue it.
- Why. Check the U.S. Census Bureau's decennial "Frequently Occurring Surnames" file, which lists every surname appearing at least 100 times. Absence is unimpeachable government evidence that fewer than a hundred Americans bear the name. Presence gives the examiner a count and a per-100,000 rate.
- Trap. Rarity is not a safe harbor. BELUSHI'S was refused on a record showing roughly five U.S. bearers, because two famous performers supplied the exposure rarity ordinarily negates. In re Beds & Bars Ltd., 122 U.S.P.Q.2d 1546 (T.T.A.B. 2017).
- Worked example. Fontana appears on the Census list. Fontana Ridge left the exhibit out and spent the pages elsewhere. Omitting a bad exhibit is a decision, not an oversight — record it in the file memo so the next lawyer does not "fix" it.
[ ] Build the marketing-inventory declaration that converts "the founder is named X" into "consumers are not exposed to a person named X."
- Why. The connection factor bites only when the association is promoted to the public — the framing Adlon uses. Refusals were affirmed where the applicant's own site called the founder its "namesake," In re Integrated Embedded, 120 U.S.P.Q.2d 1504 (T.T.A.B. 2016), and where the mark was the name of the family running the business, In re Eximius Coffee, LLC, 120 U.S.P.Q.2d 1276 (T.T.A.B. 2016).
- How. Count every discrete marketing asset over a defined period, state how many contain the name, and confirm it appears on no packaging and in no advertising. Attach the index.
- Worked example. 214 assets from 1 January 2021 through 31 May 2024; "Marco Fontana" appears in three, none of them packaging or paid advertising.
- Where nobody connected with the applicant bears the name at all, say so and cite In re Sava Research Corp., 32 U.S.P.Q.2d 1380 (T.T.A.B. 1994).
[ ] Document any non-surname meaning with more than a dictionary entry.
- Authority. HACKLER survived partly because the applicant produced promotional materials tying the name to a character in an Irish poem. In re United Distillers plc, 56 U.S.P.Q.2d 1220 (T.T.A.B. 2000). Unsupported assertion loses. In re Rebo High Definition Studio, Inc., 15 U.S.P.Q.2d 1314 (T.T.A.B. 1990).
- Worked example. Fontana is the ordinary Italian noun for "fountain"; the exhibit pairs a bilingual dictionary page with the four competing meanings assembled in Phase 6.
[ ] Demand record support for the "look and feel" assertion, and invoke the rule that doubt is resolved for the applicant.
- Authority. In re Benthin Mgmt. GmbH, 37 U.S.P.Q.2d 1332, 1334 (T.T.A.B. 1995); TMEP § 1211.01.
[ ] Attack dissection of a composite mark and support it with third-party registrations of the same formative that issued without a 2(e)(4) refusal.
- Authority. In re Hutchinson Tech. Inc., 852 F.2d 552, 554 (Fed. Cir. 1988). This is the most reliable reversal argument in composite-mark cases.
- Trap. Generic and business-designation add-ons contribute nothing — "Group," "Pharmaceuticals," "Creamery." The added word has to change the commercial impression. FONTANA RIDGE reads as a feature of the land; FONTANA CREAMERY does not.
[ ] Skip the stylization factor unless the mark has a design element that creates a separate commercial impression. Lowercase lettering does not. In re Pickett Hotel Co., 229 U.S.P.Q. 760 (T.T.A.B. 1986).

Phase 6 — Geographic refusals: element one first, origin second, materiality last

[ ] Attack "generally known to the relevant U.S. purchaser" before anything else.
- Why. Winning element one defeats 2(e)(2) and 2(e)(3) at the same time. It is the only argument that does.
- Authority. In re Newbridge Cutlery Co., 776 F.3d 854, 863 (Fed. Cir. 2015) ("The internet (and websites such as Wikipedia) contains enormous amounts of information: some of it is generally known and some of it is not."); TMEP §§ 1210.01(a), 1210.02.
[ ] Name the relevant purchaser in the first sentence of the geographic argument — the American buyer of these goods, not the American public and not local residents.
- Authority. In re Brouwerij Nacional Balashi N.V., 80 U.S.P.Q.2d 1820 (T.T.A.B. 2006).
[ ] Pull five general-audience atlases, gazetteers, and encyclopedias, document the absence of the place, and attach the pages as negative evidence.
- Trap. A specialized gazetteer proves nothing about general knowledge; if the examiner used one, say which one and what its audience is.
[ ] Inventory every competing meaning of the term and put them in one exhibit.
- Worked example. "Fontana" names a California city of over 200,000, a Wisconsin village of roughly 1,700, an Italian common noun, and a surname. Four meanings compete; none is primary.
[ ] Draft the origin declaration to the operation, not the mailing address — but only after running materiality to the end.
- Why. Goods originate where they are manufactured, produced, or sold. A headquarters address is not origin. In re Mankovitz, 90 U.S.P.Q.2d 1246 (T.T.A.B. 2009); In re John Harvey & Sons Ltd., 32 U.S.P.Q.2d 1451 (T.T.A.B. 1994); TMEP § 1210.03.
- How. Name the facility and address; state that no production, aging, packaging, or sale occurs in the named place; identify the ingredient sources by county.
- Trap. That paragraph defeats 2(e)(2) and hands the examiner element one of 2(e)(3). It is safe only if the place is not famous as a source for these goods. Fontana is not known for cheese. Change the name to PARMA RIDGE CREAMERY and the same paragraph is a confession.
[ ] Argue the services class separately, and make the examiner produce the "something more."
- Authority. In re Les Halles de Paris J.V., 334 F.3d 1371, 1373-74 (Fed. Cir. 2003); TMEP § 1210.04(b). COOPERSTOWN for restaurant services was reversed because the examining attorney "failed to present 'that something more.'" In re Mun. Capital Mkts. Corp., 51 U.S.P.Q.2d 1369 (T.T.A.B. 1999).
- Why. Examiners routinely apply the goods analysis to both classes in one paragraph. In the worked example this was the weakest ground in the action, and it was the first one withdrawn.
[ ] If the case really is a 2(e)(3) case, fight materiality with category evidence, not adjectives: trade data, retail assortment records, a declaration from a category buyer.
- Authority. The misrepresentation must matter to a substantial portion of relevant consumers. In re Spirits Int'l, N.V., 563 F.3d 1347, 1353, 1356 (Fed. Cir. 2009); In re Cal. Innovations, Inc., 329 F.3d 1334, 1339 (Fed. Cir. 2003); TMEP § 1210.05(c)(i).
- Every foreign-language geographic mark should make the Spirits argument: the doctrine of foreign equivalents gets the examiner to comprehension, and Spirits then demands a quantitative showing the record rarely supports.
[ ] Where the mark is worth it, commission a survey — an ex parte proceeding has no discovery and no opposing expert, which makes a well-designed survey disproportionately powerful. See Consumer Surveys in Trademark Cases and the Trademark Survey Design and Challenge Checklist.
[ ] Decide the identification-amendment fork with operations in the room, not just the general counsel.
- Why. Amending the identification to state that the goods come from the named place converts 2(e)(3) into 2(e)(2). It also becomes a permanent, enforceable restriction. Move production and the registration is vulnerable. See Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist.
[ ] If what the client actually wants is control of a regional-origin term for a whole industry, stop and price a certification mark under 15 U.S.C. § 1054 instead. See Applying for a Certification or Collective Mark.

Phase 7 — Section 2(a): deceptiveness and false suggestion of a connection

[ ] Test prongs one and two against the actual packaging, not the drawing.
- Why. The question is whether prospective purchasers would believe the misdescription describes the goods. A prominent contrary statement on the front panel is evidence; a lawyer's assurance is not.
[ ] Build the materiality rebuttal as evidence: category data, trade declarations, internal research showing the misdescribed feature does not drive purchase.
- Authority. In re Budge Mfg. Co., 857 F.2d 773, 775 (Fed. Cir. 1988).
[ ] Plead the 2(e)(1) fallback expressly and in the alternative in the same filing.
[ ] For a false-suggestion refusal, build the competing-referent file: dictionary entries, other institutions and individuals of the same name, third-party registrations.
- Why. Element two — that the mark points uniquely and unmistakably to the named party — is where these responses are won. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1375-77 (Fed. Cir. 1983); TMEP § 1203.03(c)(i).
[ ] Obtain a documented relationship, not a "no objection" letter.
- Why. Element three asks whether the named party is connected with the applicant. An empty consent does not defeat it; a license, a royalty, an advisory role, or authorized use of archival material does. Compare In re Jackson Int'l Trading Co., 103 U.S.P.Q.2d 1417 (T.T.A.B. 2012) (BENNY GOODMAN COLLECTION, no authorization).
[ ] Attach proof of the signer's authority — letters testamentary, a corporate resolution, or the trust instrument.
- Trap. A signature from one of four heirs is worse than no letter at all: it puts the estate's existence in the record without resolving who speaks for it.
[ ] Check the state-law layer separately. Registration and the right of publicity are different animals. See Your Face Is Not Public Domain and Clearing and Licensing Name, Image, and Likeness.

Phase 8 — Consents, disclaimers, and the amendments that are actually available

[ ] For a 2(c) refusal, obtain a written consent signed by the individual personally, consenting to both the use and the registration of the mark.
- Authority. 15 U.S.C. § 1052(c); TMEP § 1206.04(a). A corporate signature block does not satisfy the statute. Consent to use alone is the common and fatal drafting error.
[ ] Check whether consent is already presumed because the named individual personally signed the application.
- Authority. TMEP § 1206.04(b).
[ ] Confirm whether the named individual is living.
- Why. 2(c) protects only the living. Death moots the refusal; submit the record and ask for withdrawal. Death does not moot 2(a) false suggestion — protection simply shifts to a harder showing the Office must make.
[ ] Tell the client, in writing, that one signature resolves 2(c) and does nothing for 2(e)(4). They will assume otherwise.
[ ] Enter any disclaimer in the exact standardized format.
- Authority. 15 U.S.C. § 1056(a); TMEP § 1213.08(a)(i) — "No claim is made to the exclusive right to use 'CREAMERY' apart from the mark as shown."
- Trap. A disclaimer addresses an unregistrable component. It does not cure a refusal directed at the mark as a whole, and you cannot disclaim the dominant element. TMEP § 1213.03.
[ ] Do not try to amend the mark itself out of the problem.
- Authority. 37 C.F.R. § 2.72 forbids a material alteration; TMEP § 807.14. Deleting a dominant element or adding a house mark materially alters. FONTANA RIDGE CREAMERY to RIDGE CREAMERY is a new application with a new filing date and a new fee — sometimes the right call early, never a free one.
[ ] Consider dividing the application so a clean class registers while a contested class continues.
- Authority. 37 C.F.R. § 2.87; the request carries a fee of $100 per new application created.
- Why. Registration in one class often satisfies the business need — enforcement leverage, a marketplace brand-registry listing, a distributor requirement — for a fraction of the cost of the fight.

Phase 9 — Fallbacks: 2(f), 2(f) in part, and the Supplemental Register

[ ] Pick the 2(f) route: ownership of a prior Principal Register registration for the same or essentially the same mark on related goods; five years of substantially exclusive and continuous use; or actual evidence.
- Authority. 15 U.S.C. § 1052(f); 37 C.F.R. § 2.41(a); TMEP § 1212.
- Trap. "May accept" in the statute is load-bearing. For highly descriptive matter the Office routinely refuses to take the five-year statement alone. A Supplemental registration cannot support the prior-registration route. TMEP § 1212.04(a).
[ ] Plead 2(f) in the alternative, in words, in the response body — never by implication.
- Why. A 2(f) claim concedes the mark is not inherently distinctive, and the concession follows the registration into litigation. TMEP §§ 1212.02(b), 1212.02(c).
[ ] Use the standard five-year wording verbatim; a paraphrase draws a requirement. TMEP § 1212.05(d).
[ ] Consider 2(f) in part where only one element of a composite carries the defect, paired with a disclaimer of any generic component.
[ ] Assemble the 2(f) record from finance and marketing, not from adjectives: annual sales and units, advertising spend by year and territory, unsolicited media, look-for advertising, customer and trade declarations, survey.
- See Claiming Acquired Distinctiveness at the USPTO, the Secondary Meaning Evidence Checklist, and From Descriptive to Distinctive.
[ ] Before requesting the Supplemental Register, check three gates.
- Is the refusal 2(a), 2(b), 2(c), 2(e)(3), or 2(e)(5)? The Supplemental Register is closed. 15 U.S.C. §§ 1091, 1091(c).
- Is this a § 66(a) extension of protection? No fallback exists. 37 C.F.R. § 2.47(c).
- Is this a § 1(b) intent-to-use application? An acceptable amendment to allege use must be filed first, and the amendment's filing date becomes the effective filing date. 37 C.F.R. §§ 2.47(d), 2.76; TMEP §§ 816.02, 1102.03.
[ ] Write the request as an express amendment, not a reservation of rights.
- Authority. TMEP § 816.04; In re Integrated Embedded, 120 U.S.P.Q.2d 1504, 1511-12 (T.T.A.B. 2016). "Applicant reserves the right to seek registration on the Supplemental Register" accomplishes nothing.
[ ] If you file an amendment to allege use to unlock the fallback, send the client a written memo explaining the constructive-use priority you are giving up.
- See Intent-to-Use Applications, From Notice of Allowance to Registration, and the Statement of Use Filing Checklist.
- Worked example. Fontana Ridge pleaded nothing under 2(f) — eleven months of use will not carry it — and instead filed an amendment to allege use under 37 C.F.R. § 2.76 with an express Supplemental Register request in the alternative, plus a one-page client memo on the priority cost.

Phase 10 — Draft, file, and prove you filed

[ ] Open with a roadmap paragraph listing every ground and stating, for each, whether the applicant is complying, arguing, or arguing in the alternative.
- Why. It is the single most useful paragraph in the document for an examining attorney working a large docket.
[ ] Order the response: requirements first; then each refusal separately headed in the examiner's own order; then alternative positions clearly labeled; then an evidence index.
[ ] Put every fact in a signed declaration, not in attorney argument.
- Authority. 37 C.F.R. § 2.20 or 28 U.S.C. § 1746. Unverified attorney statements about facts get little weight.
- Trap. Declarations that overstate use or dates are how a routine prosecution becomes a fraud allegation. See Fraud on the Trademark Office and the Trademark Fraud Claim and Self-Audit Checklist.
[ ] Stamp every internet exhibit with its URL and date accessed, and attach the page rather than linking to it.
- Authority. Safer, Inc. v. OMS Invs., Inc., 94 U.S.P.Q.2d 1031, 1039 (T.T.A.B. 2010); TBMP § 1208.03. A hyperlink in a brief is not evidence. The Board takes judicial notice of standard dictionaries but not of website content. TBMP § 1208.04.
[ ] Name every exhibit file so the examiner can find it — 98123456_Ex-C_Census-Surname-File-Excerpt.pdf — and write the evidence-description field as argument, not as a label.
[ ] Confirm the signature complies with the electronic signature and authority rules. 37 C.F.R. § 2.193.
[ ] File electronically through the USPTO's Trademark Center response form, which replaced the legacy TEAS forms; paper filing is permitted only in narrow circumstances. 37 C.F.R. § 2.23(a).
[ ] Save the filing receipt and the complete submission to the matter file the same day, and confirm the response appears in TSDR within 24 hours.
[ ] Docket the next action on the assumption the examiner responds in one to four months. TMEP § 705; see What Happens After You File: The Examination Timeline.
- Length discipline. Fifteen tight pages with forty exhibits beats forty pages with four. General filing hygiene is in the Office Action Response Checklist; a starting structure is in the Response to Office Action — Template.

Phase 11 — Final action, reconsideration, and preserving the appeal

[ ] Calendar three months from the issue date of the final action, plus the extension go/no-go date. The same $125 three-month extension is available.
- Authority. 37 C.F.R. §§ 2.62(a)(2), 2.63(b), 2.142(a). Missing that date abandons the application.
[ ] File a request for reconsideration together with the notice of appeal in almost every case.
- Why. Reconsideration does not extend the appeal deadline, but filing both causes the Board to acknowledge the appeal, suspend, and remand. You get one last chance to complete the record, more time before the brief, and the examiner gets a face-saving exit. TMEP § 715.04; TBMP § 1204.
- The exception. Where the Office has failed to carry a burden it bears — a geographic refusal with no general-knowledge evidence, a surname refusal resting on an unaudited printout — reconsideration invites the examiner to plug the hole. Appeal on the deficient record instead.
[ ] Close the evidentiary record before the notice of appeal goes in.
- Authority. "The record in the application should be complete prior to the filing of an appeal." 37 C.F.R. § 2.142(d); evidence filed afterward is untimely absent a granted remand, TBMP § 1207.02.
[ ] File the notice of appeal through ESTTA — $225 per class — stating the intent to appeal and the classes covered. 15 U.S.C. § 1070; 37 C.F.R. § 2.142(a); TBMP § 1202.03.
[ ] Docket the briefing chain: applicant's brief 60 days after the notice ($200 per class, 25-page limit); examiner's brief 60 days later; reply within 20 days; oral hearing request within 10 days after the reply deadline. 37 C.F.R. §§ 2.126, 2.142(b), 2.142(e)(1).
[ ] Confirm every argument you want on appeal was raised during prosecution. TBMP § 1203.02(g). See the Ex Parte Appeal Checklist and Taking an Ex Parte Appeal.
[ ] Route procedural defects to the Director under 37 C.F.R. § 2.146, not to the Board.
- Why. A premature final action — a new ground raised in the second action and not necessitated by your amendment — is a petitionable error. TMEP § 714.05. Appeal it to the Board and it declines jurisdiction and keeps the fee.
[ ] Preserve both post-Board routes and choose deliberately: Federal Circuit review on the closed record under 15 U.S.C. § 1071(a), or a civil action under § 1071(b) where new evidence is admissible.
- Trap. Section 1071(b)(3) makes the applicant pay "all the expenses of the proceeding" win or lose. Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015), read that to include the Office's attorney's fees; Peter v. NantKwest, Inc., 589 U.S. 23 (2020), held the American Rule bars such an award under the parallel patent provision. Budget for the exposure and tell the client it exists. See Appealing a Final Refusal.
[ ] If the application goes abandoned, file a petition to revive within two months of the issue date of the notice of abandonment, stating unintentional delay, with the fee and the response that should have been filed. 37 C.F.R. § 2.66.

Common Mistakes

Answering the prose and never opening the exhibits. The examiner's record is the case. Audit it before you argue.
Ignoring a requirement while winning the refusals. Everything unaddressed goes final. TMEP § 718.03.
Believing the deadline is six months. It is three for domestic pre-registration actions, extendable once for $125, and the request must be filed before the original period expires. 37 C.F.R. § 2.62(a)(2).
Proving the goods do not come from the named place without first testing materiality. That is how a curable 2(e)(2) becomes a fatal 2(e)(3).
Conceding origin from a mailing address. Origin means where the goods are produced or sold. Make the examiner prove it.
Applying the goods analysis to a services class. Services require "something more." Argue the class separately.
Arguing rarity when a famous person shares the name. Beds & Bars wasted that argument for everyone.
Reserving the Supplemental Register instead of amending to it. A reservation of rights does nothing. TMEP § 816.04.
Claiming 2(f) without saying "in the alternative." You have just admitted the mark is not inherently distinctive, in a public file, forever.
A 2(c) consent signed by the company. The individual signs, and consents to use and registration.
Disclaiming the dominant element, or expecting a disclaimer to cure a refusal aimed at the whole mark.
Submitting screenshots with no URL and no access date. They are worth nothing on appeal. Safer, 94 U.S.P.Q.2d at 1039.
Filing evidence after the notice of appeal. The record closes. 37 C.F.R. § 2.142(d).
Appealing a procedural error to the Board. Petition the Director instead. 37 C.F.R. § 2.146.

Deadlines at a Glance

| Event | Clock | Authority | Extendable | Fee | |---|---|---|---|---| | Response to office action, domestic application | 3 months from issue date | 37 C.F.R. § 2.62(a)(2) | Once, by 3 months, request filed before expiry | $125 | | Response to office action, § 66(a) extension of protection | 6 months from issue date | 37 C.F.R. § 2.62(a)(1) | No | — | | Response to a final action, or notice of appeal | 3 months from issue date of the final | 37 C.F.R. §§ 2.63(b), 2.142(a) | Once, by 3 months | $125 | | Request for reconsideration after final | Filed with or before the notice of appeal | 37 C.F.R. § 2.63(b)(3); TMEP § 715.04 | No separate extension | None | | Notice of ex parte appeal (ESTTA) | With the post-final response deadline | 15 U.S.C. § 1070; 37 C.F.R. § 2.142(a) | No | $225 per class | | Applicant's appeal brief | 60 days after the notice of appeal | 37 C.F.R. § 2.142(b)(1) | On motion | $200 per class | | Examining attorney's brief | 60 days after applicant's brief | 37 C.F.R. § 2.142(b)(1) | — | — | | Applicant's reply brief | 20 days after the examiner's brief | 37 C.F.R. § 2.142(b)(1) | — | — | | Request for oral hearing | Within 10 days after the reply period closes | 37 C.F.R. § 2.142(e)(1) | No | Hearing fee applies | | Request for rehearing of a Board decision | 30 days from the decision | 37 C.F.R. § 2.144 | On motion | — | | Appeal to the Federal Circuit or civil action | 63 days from the Board's decision | 15 U.S.C. § 1071; 37 C.F.R. § 2.145(d) | Limited | Court fees | | Petition to revive an abandoned application | 2 months from the issue date of the notice of abandonment | 37 C.F.R. § 2.66 | No | Petition fee | | Request to divide an application | Any time before registration | 37 C.F.R. § 2.87 | — | $100 per new application |

USPTO fees change, and several are charged per class. Confirm the current amounts on the USPTO fee schedule before quoting a client.