On November 27, 2024, the USPTO announced that it has amended its Trademark Manual of Examining Procedure (“TMEP” or, “the Manual”).  The changes are summarized at the beginning of the November 2024 version of TMEP – under the Section called “Change Summary,” spanning about 44 pages, if printed.

These edits can be broken into several distinct categories – although the changes themselves are scattered through this update.  Below are the highlights – with the more substantive changes listed first, and the more routine/ administrative/ technical edits listed thereafter in the order of their applicable Section numbers:

Summary of the More Substantive Edits to TMEP

• Revised § 709 and § 709.01 to clarify procedures for conducting “interviews” with examining attorneys.  The current version of TMEP added an option for a video conference with an examining attorney (in addition the pre-existing phone or email options), but deleted the option for an in-person interview.  The revisions also removed additional text regarding the time of day of such interviews (theoretically because, among other things, emails can be sent any time of day and voicemail will pick up if one tries to call an examining attorney after hours), and whether the interaction must be scheduled in advance, providing the example of when applicants or their attorneys simply showed up at the USPTO expecting to meet with their examining attorney without prior notice (which is now an unnecessary clarification since in-person interviews have been deleted).
• Revised § 716.02(j) to clarify when suspension of a pending application would be appropriate in the context of expungement or reexamination proceedings.
  • Other than updating citations, the new text in this section appears in the very last paragraph:
    • “If the examining attorney is ready to write an appeal brief or has already submitted an appeal brief including a refusal of registration under §2(d), and the Trademark database shows that a petition for expungement or reexamination was filed and has not been acted upon, or that an expungement or reexamination proceeding was instituted and has not been terminated, the examining attorney may request suspension of the appeal pending the determination of the expungement or reexamination proceeding. See TBMP §1213.”
• Added a paragraph to § 1209.03(h) explaining the general rule regarding when abbreviations, acronyms or “initialisms” are considered generic, updated the title to affirmatively add “abbreviations” and “Initialisms” to this section and added relevant case citations.
• Added a completely new section at § 1304.03(d) relating to examination of collective membership marks entitled “False Suggestion of a Connection”.  This section discusses the TTAB’s decision in In re Leathernecks Motorcycle Club Int’l, Inc., Ser. No. 90498154, 2024 TTAB LEXIS 208, 2024 WL 2863442 (TTAB June 6, 2024), which modified the four factor test to determine whether a mark is properly characterized as a “collective membership mark.”
• Revised § 1402.11 to provide additional explanations about classification of services relating to “organizing fashion shows” depending on how the services are rendered.
• Revised § 1604.22 to delete “random” when identifying post-registration audits.  This edit is likely related to the USPTO’s recent Notice of Proposed Rulemaking (NPRM), in which the Office announced it was expanding its post-registration audits requiring proof of use of specific goods contained in a renewed identification of goods or services.  See “Changes in Post-Registration Audit Selection for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases,” 89 Fed. Reg. 85435 (Oct. 28, 2024).  The expansion would add targeted audits to the current random audits.
  • The NPRM provided a deadline of November 27, 2024 in order to submit comments to the Proposed Rule.  As of this writing, only one comment has been posted to the Regulations.gov page associated with this Proposed Rule.
• Revised § 1904.02(c) and § 1904.02(c)(iv) to clarify how to examine parenthetical language from the IB in a Section 66 (Madrid) application.  With regard to § 1904.02(c), the Change Summary notes, “if the wording preceding the parenthetical language is definite according to USPTO practice, it must be accepted as definite.”

Summary of Administrative or Technical Edits

• Updated case citations and cross references throughout the Manual.
  • Also updated citations to the Guide to the Madrid System International Registration of Marks under the Madrid Protocol.  See § 807.13(b).
• Updated § 1401.02(a) to provided links to the recent Nice Classification amendments – noting that the NCL 12-2024, which became effective on January 1, 2024, will only be available on the USPTO’s site through December 31, 2024.   The newer version – NCL 12-2025 – will be available on January 1, 2025, when it takes effect, at the same link.  Both versions will also be available on WIPO’s website at  https://www.wipo.int/classifications/nice/en.
• Global changes to remove references to “TEAS” from the manual.  These references are changed differently in different sections, depending on context, but generally use “trademark electronic filing system” or referring instead to filing certain forms “electronically”.  This change was likely made in anticipation of pivoting to mandatory use of the Trademark Center in order to implement the updated filing fees as of January 18, 2025.
• Global changes to remove references to “ESTTA” – which had been the long-standing filing system for the Trademark Trial and Appeal Board (TTAB) and which is being replaced by the TTAB Center.  TMEP will now use “Board’s electronic filing system” instead.  More about the TTAB Center can be found on its main page and its FAQ Section.
• Revised § 301.02(d) and § 306 to add a second phone number for filers to reach the Trademark Assistance Center (800-786-9199) in the event of a Postal Service interruption or emergency, or USPTO website outage on the day when a filing is due.
• Revised § 405.04 to correct the mailing address to send refund requests, removing the Jamieson Avenue address and replacing it with a Mail Stop at the USPTO using prior PO Box address.
• Revised § 716.04 (relating to suspension check procedures) to remove reference to a “legal instruments examiner” who would be responsible for reviewing the docket of any suspended application to confirm that continued suspension is appropriate.  The revised text does not refer to the role of the person conducting this review, but instead simply notes that the review will occur.
• Revised § 1604.12(b) and § 1613.12(b) to replace the generic reference to “the TEAS mailbox” with a specific email address: “[email protected]”.
• Deleted references to December 3, 2022 across multiple sections, which originally referred to the date on which the USPTO converted Office Action Response deadlines from six-months to three-months.  (See TMEP §§ 705.08, 711 and 711.01).
• Changes to multiple sections explaining that a “Note to the File” is referred to as a “Public Note” or “Notation to the File.”
• Numerous “miscellaneous text edits”, which appear through the manual.

If you typically rely on any of these sections when writing responses to substantive communications from the Office, be sure to double-check the current version of TMEP to be sure nothing changed that will impact your argument.

If you need to compare to the prior version to understand the scope of any changes – you can access the May 2024 version of TMEP in the USPTO’s Archives.