DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, 3 and 6
[Docket No. 990401084-9227-02]
RIN 0651-AB00
Trademark Law Treaty Implementation Act Changes
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Patent and Trademark Office (Office) is amending its rules
to implement the Trademark Law Treaty Implementation Act of 1998
(TLTIA), Pub. L. No. 105-330, 112 Stat. 3064 (15 U.S.C. 1051), and to
otherwise simplify and clarify procedures for registering trademarks,
and for maintaining and renewing trademark registrations. TLTIA
implements the Trademark Law Treaty (TLT).
TLTIA was enacted October 30, 1998. Title I of TLTIA, which contains the
provisions that implement the treaty, will become effective October 30,
1999.
DATES:
Effective Date: October 30, 1999
Applicability Dates: See Supplementary Information
FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of Assistant
Commissioner for Trademarks, by telephone at (703) 308-8910, extension
137; by facsimile transmission addressed to her at (703) 308-9395; or by
mail marked to her attention and addressed to Assistant Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
SUPPLEMENTARY INFORMATION:
Pending Applications for Registration: The TLTIA amendments to the Act,
and these rule changes, shall apply to any application for registration
of a trademark pending on, or filed on or after, October 30, 1999.
Informal Applications: Application papers filed before October 30, 1999,
but not reviewed by the Office for compliance with minimum filing
requirements until after October 30, 1999, will be required to meet the
minimum filing requirements ( 2.21) in effect as of the date of
filing. If the application fails to meet the minimum filing requirements
in effect on the date of filing, but meets the minimum filing
requirements in effect on the date the papers are reviewed, the
application will be assigned a filing date of October 30, 1999.
Petitions to Revive: Petitions to revive pending on October 30, 1999,
will be reviewed under the unintentional delay standard. See the
discussion below of the changes to 2.66.
Post Registration: The revised provisions of 8 and 9 of the Act,
and these amendments to the rules, apply only to affidavits and renewal
applications filed on or after October 30, 1999. The old law applies to
affidavits and renewal applications filed before October 30, 1999, even
if the sixth or tenth anniversary, or the expiration date of the
registration is on or after October 30, 1999. This is true even for
affidavits and renewal applications that are filed before, but examined
after, October 30, 1999.
The revised provisions of 9 of the Act do not apply to applications
for renewal of registrations that expire before October 30, 1999, even
if the applications are examined after October 30, 1999. For example, if
a registration expires on October 29, 1999, the registrant may file a
renewal application within the three-month grace period provided under
the old law. The new six-month grace period does not apply to
registrations with expiration dates prior to October 30, 1999.
Likewise, the new law does not apply to a 8 affidavit due before
October 30, 1999, even if the affidavit is not examined until after
October 30, 1999. For example, if a registration issued on October 29,
1993, the registrant must meet the statutory requirements of 8 of the
Act on or before October 29, 1999. The registrant cannot take advantage
of the six-month grace period, or the deficiency period, provided under
the new law.
The revised provisions of 8 of the Trademark Act, 15 U.S.C. 1058, and
these rule changes, apply to the filing of an affidavit of continued use
or excusable nonuse under 8 of the Act if: (1) the sixth or tenth
anniversary of registration, or the sixth anniversary of publication
under 12(c) of the Act, is on or after October 30, 1999; and (2) the
affidavit is filed on or after October 30, 1999. However, the provisions
of 8(a)(3) of the Act, requiring the filing of a 8 affidavit at
the end of each successive ten-year period after registration, do not
apply to a registration issued or renewed for a twenty-year term (i.e.,
a registration issued or renewed before November 16, 1989) until a
renewal application is due.
A Notice of Proposed Rulemaking was published in the Federal Register
(64 FR 25223) on May 11, 1999, and in the Official Gazette of the Patent
and Trademark Office (1223 TMOG 41) on June 8, 1999. A public hearing
was held on June 10, 1999.
Written comments were submitted by two organizations, two law firms, and
five trademark attorneys. Three organizations and one attorney testified
at the oral hearing.
References below to "the Act," "the Trademark Act" or "the statute"
refer to the Trademark Act of 1946, as amended, 15 U.S.C. 1051 et seq.
"TMEP" is the Trademark Manual of Examining Procedure (2nd ed., Rev.
1.1, August 1997).
Application Filing Dates
TLTIA 103 adds 1(a)(4) and 1(b)(4) of the Act to give the Office
authority to establish and change filing date requirements. The Office
is amending 2.21 to require the following elements for receipt of a
filing date: (1) the name of the applicant; (2) a name and address for
correspondence; (3) a clear drawing of the mark; (4) a list of the goods
or services; and (5) the filing fee for at least one class of goods or
services.
Comment: One comment stated that the proposed requirement in
2.21(a)(3) for a "clear drawing of the mark" was confusing, and that it
could impose a hardship on some applicants, e.g., where the attorney's
only copy of the drawing is a fax received from a foreign client.
Response: The requirement for a "clear drawing of the mark" is intended
to be more lenient than the current requirement for a drawing
"substantially meeting all the requirements of 2.52." A clear drawing
of the mark is essential, so that the application can be properly
examined, and so that the public will have adequate notice of the mark.
The following elements will no longer be required for receipt of a
filing date: a certified copy of the foreign registration in a 44(e)
application; an allegation of the applicant's use or bona fide intention
to use the mark in commerce; a specimen and date of first use in
commerce in a 1(a) application; a stated filing basis; and a
signature. These elements will instead be required during examination.
Comment: One comment stated that while a filing date should not be
denied if the application does not include a filing basis, the basis
should be made of record as soon as possible.
Response: The Office expects that most applicants will state the filing
basis in the original application. If the application does not include
the filing basis, this information will be required in the first Office
action.
Bulky Specimens
Amended 2.56(d)(1) requires that specimens be flat and no larger than
8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. This is
consistent with current 2.56.Section 2.56(d)(2) is added, stating
that if an applicant submits a specimen that exceeds the size
requirement (a "bulky specimen"), the Office will create a facsimile of
the specimen that meets the requirements of the rule (i.e., is flat and
no larger than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.)
long), insert it in the application file wrapper, and destroy the
original bulky specimen.
Currently, when an applicant submits a specimen that does not meet the
requirements of 2.56 (i.e., is not flat, exceeds the size limitation,
etc.), the Office retains the specimen even though it is impossible to
attach it to the application file wrapper. This requires substantial
special handling because the Office must store and track the specimens
separately from the application file wrappers. Because the number of
newly filed applications has increased from approximately 83,000 to over
233,000 per year over the past ten years, and the number of pending
applications has increased from less than 100,000 to over 350,000 in the
same period, it has become increasingly difficult to ensure that the
bulky specimens follow the application files. As the number of
applications has increased, bulky materials submitted as specimens have
also increased, requiring an increased use of limited resources to
handle the bulky materials. Further, because specimens of this nature
are often misplaced or lost during examination processing, the Office
must then require new specimens, slowing examination and inconveniencing
applicants.
Because the requirement for flat specimens can be easily satisfied
through the use of photographs, photocopies, or other means of
reproduction, the Office will no longer retain bulky materials submitted
as specimens. In very limited circumstances, the Office will continue to
accept specimens consisting of videotapes, audiotapes, CDs, computer
diskettes, and similar materials where there are no non-bulky
alternatives, and the submission is the only means available for showing
use of the mark.
Comment: One comment supported the proposed procedure for creating
facsimiles of bulky specimens. Another comment supported the proposed
procedure, provided that the Office makes copies of the front, back, and
all portions of the specimens.
Response: The Office will attempt to capture the mark as used on the
specimen, but may not copy all portions of the bulky specimens. If an
additional specimen is needed, the examining attorney will require a
substitute specimen that meets the size requirements of the rules.
Number of Specimens Required
The Office is amending 2.56(a), 2.76(b)(2), 2.86(b), and 2.88(b)(2)
to require one rather than three specimens with an application under
1 of the Act, or an amendment to allege use or statement of use of a
mark in an application under 1(b) of the Act. The Office previously
required three specimens so that an interested party, such as a
potential opposer, could permanently remove a specimen from an
application file, yet not leave the file without specimens. TMEP
905.01. However, multiple copies of specimens are no longer necessary
because the public may make photocopies of a single specimen.
Comment: Three comments opposed the proposed requirement for only one
specimen, stating that if only one specimen is required, and that
specimen is lost, the file will be left with no specimen; that multiple
specimens enable interested third parties to obtain an original without
having to contact the applicant directly; and that current photocopying
technology does not adequately reproduce color, small details, tones,
low-contrast images, or highly ornate/intricate or densely worded
specimens.
Response: The Office does not permit the removal of other documents from
application files and will no longer permit specimens to be removed from
files. Prohibiting the removal of specimens will ensure that there is a
complete record of the submissions made by the applicant. Where removal
is permitted, a third party could mistakenly remove a unique specimen,
thinking it is merely a duplicate. This would leave the application file
incomplete.
Currently, 10% of new applications for registration are filed
electronically, and the Office expects this number to increase
dramatically in the near future. Only one specimen is required with an
electronically filed application, and it is submitted as a digitized
image ( 2.56(d)(4)). Considering the increasing number of electronic
filings and the move in the future to a paperless Office, the Office
believes that three specimens are unnecessary.
Comment: One comment stated that it generally supports the proposed
requirement for only one specimen, but noted that there will be a
greater urgency for the Office to ensure that the single specimen is
always available for public inspection.
Response: As noted above, the Office will no longer permit specimens to
be removed from files. The Office now microfilms all incoming
applications, so that a record of the specimen is available to the
public if it is lost. In the near future, the Office will be scanning
all incoming applications and allegations of use and will have an
electronic image of any specimen that is lost.
Comment: One comment asked whether more than one specimen may be
submitted.
Response: Yes, while only one specimen will be required, a party may
choose to file more than one specimen. Multiple specimens will be
retained in the file as long as they do not exceed the size limitations
of 2.56(d)(1).
Persons Who May Sign
Currently, 1(a)(1)(A) and 1(b)(1)(A) of the Act require that an
application by a juristic applicant be signed "by a member of the firm
or an officer of the corporation or association applying." TLTIA 103
amends 1(a) and 1(b) of the Act to eliminate the specification of
the appropriate person to sign on behalf of an applicant.
The applicant or registrant, and the applicant's or registrant's
attorney, are best able to determine who should sign documents filed in
the Office. Therefore, the Office will no longer question the authority
of the person who signs a verification, or a renewal application, unless
there is an inconsistency in the record as to the signatory's authority
to sign.
Proposed 2.33(a) stated that a person properly authorized to sign on
behalf of the applicant "includes a person with legal authority to bind
the applicant and/or a person with firsthand knowledge and actual or
implied authority to act on behalf of the applicant."
Comment: One comment suggested that 2.33(a) be amended to state that
a person who is properly authorized to sign on behalf of the applicant
includes: (1) a person with legal authority to bind the applicant, (2) a
person with firsthand knowledge of the facts asserted, and actual or
implied authority to act on behalf of the applicant, and (3) an attorney
as defined in 10.1(c) of this chapter who has an actual or implied,
written or verbal power of attorney from the applicant, provided that
the Office may require written confirmation of such power of attorney
subsequent to the filing of the verified statement.
Response: The suggestion has been adopted, but modified slightly. The
Office will not require written confirmation of a power of attorney, but
will accept the attorney's word that he or she is authorized to sign on
behalf of the applicant.
Comment: One comment suggested that "and/or" be changed to "or."
Response: The suggestion has been adopted.
Comment: One comment suggested that "implied authority" be changed to
"apparent authority."
Response: The suggestion has not been adopted. The Office believes that
the "implied authority" standard is broad enough to cover most
circumstances and to allow applicants flexibility in determining who can
sign verifications.
Comment: Four comments requested clarification as to whether attorneys
can sign on behalf of clients, and whether any special power of attorney
is needed.
Response: Sections 2.33(a) and 2.161(b) have been amended to provide for
signature of verifications by attorneys. No special power of attorney
will be required.
Renewal applications may also be signed by attorneys. Verification of
renewal applications is no longer required. Section 2.183(a) requires
that the renewal application be executed by "the registrant or the
registrant's representative."
Filing by Owner
Although TLTIA amends the statute to eliminate the specification of the
proper party to sign on behalf of an applicant or registrant, the
statute still requires that the owner of the mark file an application
for registration, amendment to allege use, statement of use, request for
extension of time to file a statement of use, and 8 affidavit. See
1(a)(1), 1(b)(1), 1(d)(1), 1(d)(2), and 8(b) of the Act.
TLTIA 105 amends 8 of the Act to require that the owner of the
mark file an affidavit of continued use or excusable nonuse within the
time period set forth in 8(a) of the Act.
The legislative history states:
Throughout the revised section 8, the term "registrant" has
been replaced by the term "owner." The practice at the Patent and
Trademark Office has been to require that the current owner of the
registration file all the post-registration affidavits needed to
maintain a registration. The current owner of the registration must aver
to actual knowledge of the use of the mark in the subject registration.
However, the definition of "registrant" in section 45 of the Act states
that the "terms `applicant' and `registrant' embrace the legal
representatives, predecessors, successors and assigns of each applicant
and registrant." Therefore, use of the term "registrant" in section 8 of
the Act would imply that any legal representative, predecessor,
successor or assign of the registrant could successfully file the
affidavits required by sections 8 and 9. To correct this situation, and
to keep with the general principal [sic], as set out in section 1, that
the owner is the proper person to prosecute an application, section 8
has been amended to state that the owner must file the affidavits
required by the section.
H.R. Rep. No. 194, 105th Cong., 1st Sess. 18-19 (1997).
Therefore, the Office is amending 2.163(a) and 2.164(b) to make it
clear that filing by the owner is a minimum requirement that cannot be
cured after expiration of the filing period set forth in 8 of the Act.
Under 1(a) and 1(b) of the Act, an application for registration of
a mark must also be filed by the owner. Therefore, new 2.71(d) states
that although a mistake in setting out the applicant's name can be
corrected, the application cannot be amended to set forth a different
entity as the applicant; and that an application is void if it is filed
in the name of an entity that did not own the mark as of the filing date
of the application. This codifies current practice. TMEP 802.07.
Huang v. Tzu Wei Chen Food Co. Ltd., 7 USPQ2d 1335 (Fed. Cir. 1988)
(application filed in name of individual two days after mark was
acquired by newly formed corporation held void); Accu Personnel Inc. v.
Accustaff Inc., 38 USPQ2d 1443 (TTAB 1996) (application filed in name of
entity that did not yet exist not void); In re Tong Yang Cement Corp.,
19 USPQ2d 1689 (TTAB 1991) (application filed by joint venturer void
where mark owned by joint venture); U.S. Pioneer Electronics Corp. v.
Evans Marketing, Inc., 183 USPQ 613 (Comm'r Pats. 1974)
(misidentification of applicant's name may be corrected).
The Office is also amending 2.88(e)(3), 2.89(a)(3), and 2.89(b)(3)
to state that if a statement of use or request for an extension of time
to file a statement of use is unsigned or signed by the wrong party, a
substitute verification must be submitted before the expiration of the
statutory period for filing the statement of use. This is consistent
with current practice. See TMEP 1105.05(f)(i)(A) and 1105.05(d).
Sections 1(d)(1) and (2) of the Act require verification by the owner
within the statutory period for filing the statement of use. Therefore,
the Office cannot extend or waive the deadline for filing the
verification. In re Kinsman, 33 USPQ2d 1057 (Comm'r Pats. 1993).
Material Alteration
The Federal Circuit held in In re ECCS, 94 F.3d 1578, 39 USPQ2d 2001
(Fed. Cir. 1996) that an applicant may amend an application based on use
to correct an "internal inconsistency" in the original application. Id.
at 1581, 39 USPQ2d at 2004. An application is "internally inconsistent"
if the mark on the drawing does not agree with the mark on the specimens
filed with the application. Id. As a result, the Office has been
accepting all amendments to drawings in use-based applications if there
is an inconsistency in the initial application.
However, the Office does not believe that it is in the public interest
to accept amendments that materially alter the mark on the original
drawing. When the Office receives a new application, the mark on the
drawing is promptly filed in the Trademark Search Library and entered
into the Office's electronic and administrative systems. Because the
granting of a filing date to an application potentially establishes a
date of constructive use of the mark under 7(c) of the Act, timely
and accurate public notification of the filing of applications is
important. Accepting an amendment that materially alters the mark on the
original drawing is unfair to third parties who search Office records
between the application filing date and the date of the amendment,
because they do not have accurate information about earlier-filed
applications. Relying on the search of Office records, a third party may
innocently begin using a mark that conflicts with the amended mark, but
not with the original mark. Also, an examining attorney may approve a
later-filed application for registration of a mark that conflicts with
the amended mark, but not with the original mark. Therefore, the Office
is amending 2.72 to prohibit amendments that materially alter the
mark on the original drawing.
Comments: One law firm opposed any amendment of 2.72, stating that
the decisions in ECCS and In re Dekra, 44 USPQ2d 1693 (TTAB 1997)
established a fair compromise between the rights of the applicant and
the rights of third parties. One organization stated that minor changes
like the change permitted in ECCS should be allowed, but that it "does
not endorse the type of substantial change to a drawing permitted in
Dekra," and expressed concern that the amendment to 2.72 could lead
to a more stringent standard for determining material alteration than
the standard set forth in ECCS. The comment further noted that the
standard for determining whether the mark in the drawing agrees with the
mark in the foreign registration in a 44 application is stricter than
the standard used to determine whether specimens support use of a mark
in an application under 1 of the Trademark Act, and suggested that if
a uniform standard for determining material alteration is adopted, the
more liberal standard applied to 1(a) or 1(b) applications should
be used.
Response: ECCS held that under current 2.72(b), the specimens filed
with the original application in a use-based application must be
considered in determining what mark the applicant seeks to register.
However, the court specifically noted that seven decisions cited in the
ECCS decision were not affected: "We have carefully examined all . . .
[seven] cases and find that none has any bearing on the situation before
us in which an original application is internally inconsistent as to
what the mark is, the specimen displaying one mark and the drawing a
slightly different mark . . . ." Id. at 1581, 39 USPQ2d at 2004
(emphasis added). ECCS specifically cited In re Abolio y Rubio S.A.C.I.
y G., 24 USPQ2d 1152 (TTAB 1992) and In re Meditech Int'l Corp., 25
USPQ2d 1159 (TTAB 1990). ECCS at 1581, 39 USPQ2d at 2004. Abolio y Rubio
involved an application based on a foreign registration (15 U.S.C.
1026(e)) in which the drawing omitted the design shown in the foreign
registration submitted with the application. Meditech concerned a
use-based application in which the drawing contained the typed words
"DESIGN OF A BLUE STAR" while the specimens showed a design of twenty
blue stars without the words shown in the drawing. In both of these
cases, the applicants were not permitted to amend their drawings.
Subsequently, the Federal Circuit in In re Hacot-Colombier, affirmed the
Board's refusal to permit an applicant to amend its drawing in an
application based on a foreign-filed application, 15 U.S.C. 1126(d).105
F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). Citing Abolio y Rubio with
approval, the Court gave deference to the agency's interpretation that
2.72 includes both a prohibition against material alterations and a
requirement that any alteration conform to the mark in the foreign
registration. Id. at 619, 41 USPQ2d at 1526. The present amendment to
2.72 is not intended to change the standard for determining what
constitutes a material alteration as discussed in the Board cases cited
in ECCS, or in Hacot-Colombier.
Color Drawings
Section 2.52 is amended to delete the color lining chart currently in
2.52(e).
Comment: One comment asked whether the Office would accept drawings in
actual color.
Response: The Office will no longer deny an application a filing date if
the mark is depicted in color. However, the Office does not yet have the
technology to scan marks in color, and the marks will be uploaded into
the Office's automated systems in black and white.
Comment: One comment asked whether marks would be published in the
Official Gazette and issued in color.
Response: The Office will not publish and issue marks in color on
October 30, 1999. However, the Office anticipates publishing and issuing
marks in color in the future.
Comment: Two comments requested that color photocopiers be made
available to the public.
Response: Color photocopiers are very expensive and will not be
available to the public on October 30, 1999. The Office is looking into
purchasing a color copier for use by the public, for a fee, and will
make it available as soon as possible.
Comment: One comment suggested that the Office should permit the use of
lining or stippling to indicate color on a drawing, at least until an
alternative method of indicating color gains wide acceptance.
Response: There will be a transition period in which the Office will
continue to publish and register marks that contain the color linings
currently in 2.52(e). An Official Gazette notice will advise when
color lining is no longer acceptable.
Comment: One comment noted that proposed 2.52(a)(2)(i) referred to
color lining, while the color lining chart was deleted from 2.52(e).
Response: The reference to color lining has been deleted from
2.52(a)(2)(i).
Comment: One comment suggested that the Office clarify what is a
sufficient description and location of color applied to a mark.
Response: The application must include a clear and specific description
of the mark, identifying the mark as consisting of the particular color
as applied to the goods or services. If the color is applied only to a
portion of the goods, the description must indicate the specific
portion. Similarly, if the mark includes gradations of color, the
description should so indicate. The Office will issue an examination
guide giving further guidance as to how it will process color drawings.
Comment: One comment suggested that the Office accept color photographs
to describe the color claimed in a mark.
Response: In addition to a written description of a mark, the Office
will accept color photographs for the record to describe the color
claimed in a mark.
Comment: Two comments suggested that applicants should have the option
to identify color using a generally accepted color identification system.
Response: The Office does not endorse any one commercial color
identification system.However, in addition to a written description of
the color contained in a mark, an applicant may refer to a commercial
color identification system to describe color.
Revival of Abandoned Applications
Effective October 30, 1999, 1(d)(4) and 12(b) of the Act, and
2.66 permit the revival of an abandoned application where the delay in
responding to an Office action or notice of allowance is
"unintentional." A showing of "unavoidable" delay is no longer required.
All petitions to revive pending on or filed on or after October 30,
1999, will be reviewed under the unintentional delay standard.
Under 2.66(a), the applicant must file a petition to revive (1)
within two months of the mailing date of the notice of abandonment; or
(2) within two months of actual knowledge of the abandonment, if the
applicant did not receive the notice of abandonment, and the applicant
was diligent in checking the status of the application. These deadlines
will be strictly enforced.
The written statement that the delay was unintentional must be signed by
someone with firsthand knowledge of the facts, but it need not be
verified or supported by a declaration under 2.20.
It is not necessary to explain the circumstances that caused the
unintentional delay. The Office will generally not question the
applicant's assertion that the delay in responding to an Office action
or notice of allowance was unintentional, and will grant the petition,
unless there is information in the record indicating that the delay was
in fact intentional.
See the discussion below of the amendments to 2.66 for further
information on the requirements for filing a petition to revive.
Comment: One comment suggested that 2.66(a)(1) and (2) be amended to
provide for filing a petition to revive within two months of "the
mailing date of an adverse decision on a Request For Reinstatement," so
as to avoid a disincentive for filing requests for reinstatement.
Response: The suggestion has not been adopted because it is unnecessary.
When the Office denies a request for reinstatement, the Office routinely
gives the applicant an opportunity to pay the petition fee and convert
the request for reinstatement into a petition to revive.
Comment: One comment suggested that 2.66(a) be amended to provide for
the filing of a petition to revive where the applicant did not timely
respond to "a decision on the petition (other than a petition to revive
under this rule)," because "[t]here may be instances where a decision on
petition is misdirected by the U.S. Postal Service and results in the
abandonment of the application. For example, consider a petition for an
extension of time to commence judicial review under 37 CFR 2.145(e)."
Response: The suggestion has not been adopted. Sections 1(d)(1) and
12(b) of the Act, 15 U.S.C. 1051(d)(1) and 1062(b), provide for
revival of an abandoned application based on a showing of unintentional
delay only where there is a delay in responding to an Office action or
filing a statement of use or request for an extension of time to file a
statement of use. In the example provided, the remedy is found in
2.145(e)(2), which provides that the Commissioner may extend the time
for filing an appeal or commencing a civil action "upon written request
after the expiration of the period for filing an appeal or commencing a
civil action upon a showing that the failure to act was the result of
excusable neglect." In other situations, the remedy is to file a
petition to the Commissioner under 2.146(a)(5), under which the
Commissioner may waive any provision of the rules that is not a
provision of the statute, where an extraordinary situation exists,
justice requires, and no other party is injured thereby.
Due Diligence
Sections 2.66(a)(2) and 2.146(i) are amended to indicate that where a
petitioner seeks to reactivate an application or registration that was
abandoned or cancelled due to the alleged loss or mishandling of papers
mailed to or from the Office, the petition will be denied if the
petitioner was not diligent in checking the status of the application or
registration. This codifies the long-standing past practice of the
Office. TMEP 413, 1112.05(b)(ii), and 1704. To be considered
diligent, the petitioner must check the status of the application or
registration that is the subject of the petition within one year of the
last filing or receipt of a notice from the Office for which further
action by the Office is expected.
The Office now denies petitions when the petitioner waits too long
before checking the status of an application or registration. The
rationale is that granting the petition would be unfair to third parties
who may have searched Office records and relied to their detriment on
information that an application was abandoned or that a registration had
expired or been cancelled. A third party may have diligently searched
Office records and begun using a mark because the search showed no
earlier-filed conflicting marks, or an examining attorney may have
searched Office records and approved a later-filed application for a
conflicting mark.
A party can check the status through the Trademark Status Line ((703)
305-8747) or through the Trademark Applications and Registrations
Retrieval (TARR) database on the Office's World Wide Web site at
http://www.uspto.gov/go/tarr/. Written status inquiries are discouraged.
Comment: One comment suggested that the one-year due diligence standard
be expressly incorporated into 2.66(a)(2) and 2.146(i).
Response: The suggestion has been adopted.
Comment: One comment requested guidance as to how one proves that he or
she has been diligent in monitoring the status of a pending matter.
Response: A party may call the Status Line, or access status information
through the World Wide Web, and make a notation in the party's own file
noting the date of the status inquiry, and the substance of the
information learned. If it is ever necessary to petition for corrective
action, the dates and substance of the status inquiries should be
summarized in the petition. No further documentation is necessary.
Comment: One comment objected to the requirement that petitioners be
diligent in monitoring the status of pending matters, noting that
docketing a one-year status check every time a paper is filed or
received results in a maze of confusing entries in docketing systems
that makes it difficult to tell which dates have been superseded.
Response: To protect the interests of third parties and to maintain the
integrity of the register, the Office believes that requests to
reactivate abandoned applications or cancelled registrations must be
made within a reasonable time; the Office does not believe that
requiring a status check once per year is unreasonable. Therefore, the
Office will continue its long-standing practice of denying petitions to
revive under 2.66 and petitions to the Commissioner under 2.146 if
the petitioner has waited too long before investigating the problem.
Amendment of Basis After Publication
Proposed 2.35(b) prohibited an amendment to add or substitute a basis
after publication.
Comments: Four comments opposed the proposed prohibition against
amending the basis after publication, and one comment supported the
proposal.
Response: Because of the arguments submitted by the opponents of the
proposed rule prohibiting amendment of the basis after publication, the
Office is withdrawing the proposal. Section 2.35(b) is instead amended
to incorporate current practice, i.e., to state that an application that
is not the subject of an inter partes proceeding before the Trademark
Trial and Appeal Board may be amended to add or substitute a basis after
publication, if the applicant files a petition to the Commissioner; and
that republication will always be required. TMEP 1006.04. An
application that is the subject of an inter partes proceeding before the
Trademark Trial and Appeal Board is governed by 2.133(a).
Specification of Type of Commerce No Longer Required
The Office will no longer require a specification of the type of
commerce in which a mark is used in an application for registration
based on use in commerce under 1(a) of the Act, allegation of use in
an application based on 1(b) of the Act, affidavit of continued use
under 8 of the Act ( 8 affidavit), or affidavit of incontestability
under 15 of the Act ( 15 affidavit).
The Office proposed to eliminate the requirements that 8 and 15
affidavits specify the type of commerce in which the mark is used,
currently required by 2.162(e) and 2.167(c). Sections 8 and 15 of
the Act do not require that the affidavits list the type of commerce.
Because the definition of "commerce" in 45 of the Act is "all
commerce which may lawfully be regulated by Congress," the Office will
presume that a registrant who states that the mark is in use in commerce
is stating that the mark is in use in a type of commerce that Congress
can regulate.
Comment: No comments opposed the proposed deletion of the requirement
that 8 and 15 affidavits specify the type of commerce. One comment
suggested that 2.33(b)(1), 2.34(a)(1)(iii), 2.76(b)(1)(ii), and
2.88(b)(1)(ii) be amended to require an allegation that the mark is in
"use in commerce that can be regulated by the Congress of the United
States of America," rather than a specification of the type of commerce
in which the mark is used, in an application for registration or
allegation of use.
Response: The suggestion has been adopted, but modified slightly.
Sections 1(a), 1(c), and 1(d) of the Act do not require that an
applicant specify the type of commerce in which the mark is used in an
application or allegation of use. Sections 2.33(b)(1), 2.34(a)(1)(iii),
2.76(b)(1)(ii), and 2.88(b)(1)(ii) are amended to delete the requirement
that the applicant specify the type of commerce in which the mark is
used. The Office will not require that the applicant specifically state
that the mark is in use in commerce that the United States Congress can
regulate. Instead, the Office will presume that an applicant who states
that the mark is in use in commerce is stating that the mark is in use
in a type of commerce that Congress can regulate.
Statement of Method of Use or Intended Use of Marks No Longer Required
The rules no longer require a statement of the applicant's method or
intended method of use of a mark, because 1(a), 1(b), and 1(d) of
the Act have been amended to omit these requirements.
Post Registration
TLTIA 105 and 106 amend: (1) 8 of the Act, 15 U.S.C. 1058, to
add a requirement for filing an affidavit or declarationšxn of continued
use or excusable nonuse in the year before the end of every ten-year
period after the date of registration; and (2) 9 of the Act, 15
U.S.C. 1059, to delete the requirement for a declaration of continued
use or excusable nonuse in a renewal application. Thus, every tenth
year, the owner of a registration must file both a 8 affidavit and a
renewal application.
The statutory filing periods for the ten-year 8 affidavits are the
same as the statutory filing periods for renewal applications. The
Office will create a combined "Section 8 and 9" form to make it easy to
make both filings in a single document. In substance, the requirements
of the combined filing under amended 8 and 9 of the Act will be the
same as the requirements for renewal under current law.
A 8 affidavit between the fifth and sixth year after the date of
registration is also required. This is consistent with current law. No
renewal application is required during the sixth year.
TLTIA 105 and 106 amend 8 and 9 of the Act to permit filing
within a six-month grace period after the deadline set forth in the
statute, with an additional surcharge. The surcharge for filing a 8
affidavit or 9 renewal application during the grace period is $100
per class. If a combined filing under 8 and 9 of the Act is filed
during the grace period, two grace period surcharges must be included
for each class, one for the 8 affidavit and another for the 9
renewal application.
TLTIA 105 and 106 also amend 8(c)(2) and 9(a) of the Act to
allow for the correction of most deficiencies after the deadline set
forth in the statute, with payment of an additional surcharge. The
surcharge for correcting a deficiency in a 8 affidavit or a 9
renewal application is $100. Only a single deficiency surcharge will be
required for correcting deficiencies in a combined 8 and 9 filing,
even if both the 8 affidavit and the renewal application are
deficient.
Comment: One comment requested clarification as to how the deficiency
and grace period fees would be applied to 8 affidavits and renewal
applications pending before or around the date of implementation.
Response: The new fees do not apply to 8 affidavits and renewal
applications filed before October 30, 1999. The revised provisions of
8 and 9 of the Act, and these amendments to the rules, apply only to
affidavits and renewal applications filed on or after October 30, 1999.
The old law, and the old fees, apply to affidavits and renewal
applications filed before October 30, 1999, even if the sixth or tenth
anniversary, or the expiration date, of the registration is on or after
October 30, 1999. This is true even for affidavits and renewal
applications that are filed before, but examined after, October 30,
1999. See the discussion under the heading "Dates/Applicability Dates,"
supra, for further information about the effective date of TLTIA and
this final rule.
Comment: One comment suggested that it would be unfair to charge the
deficiency surcharge if large backlogs prevent examination in a timely
manner.
Response: Ultimately, it is the registrant who is responsible for filing
documents that meet the requirements of the Act and the rules. The
surcharges required by 8(c)(2) and 9(a) of the Act will be charged
regardless of whether there are backlogs in examination. Under current
law, statutory requirements must be met before the end of the filing
period set forth in the Act, or the registration will be cancelled. The
new law provides a benefit to registrants because it permits correction
of most statutory deficiencies after the expiration of the statutory
filing period, albeit for an additional fee. To avoid deficiency fees,
registrants are encouraged to file 8 affidavits and renewal
applications early in the statutory period. Under both 8 and 9 of
the Act, there is a one-year period in which a 8 affidavit or renewal
application can be filed, plus an additional six-month grace period.
Section 8 affidavits are now examined within six months of filing,
and renewal applications are examined less than two months after filing.
Comment: One comment stated that it would be unfair to charge a
deficiency surcharge if the information needed to cure defects is within
the control of the PTO, e.g., an assignment or change of name waiting to
be recorded.
Response: If the party who filed was the owner of the registration at
the time of filing, there will be no deficiency surcharge for recording
documents or submitting other evidence of ownership, before or after the
expiration of the filing periods set forth in the Act.
Comment: One comment asked why there was a surcharge for correcting
deficiencies in a 8 affidavit, but not for a 15 affidavit.
Response: Section 8(c)(2) of the Act requires a surcharge for correcting
deficiencies after expiration of the deadline set forth in 8 of the
Act, while 15 of the Act does not require a deficiency surcharge.
There is no statutory cutoff date for filing a 15 affidavit.
Amendments or corrections to 15 affidavits are not accepted, but
substitute affidavits may be filed. TMEP 1604.03.
Comment: The Office had proposed decreasing the renewal fee from $300 to
$200 per class, and increasing the filing fees for 8 and 15
affidavits from $100 to $200 per class. Two comments objected to the
proposed increase in filing fees for 8 and 15 affidavits.
Response: The Office is withdrawing these proposals at this time.
Comment: One comment suggested that the automated records of the Office
should specify which affidavits had been filed under 8 of the Act,
e.g., "first 8 affidavit," "second 8 affidavit," etc.
Response: The Office's automated records will identify a 8 affidavit
as "Section 8 (6-year)" or "Section 8 (10-year)." Further information
may be obtained from the Status Line at (703) 305-8747, or from the
Trademark Applications and Registrations Retrieval (TARR) database on
the Office's World Wide Web site at http://www.uspto.gov/go/tarr/. The
prosecution history will show the number of 8 affidavits that have
been filed.
Recording Assignments and Changes of Name
Currently, the Office will record only an original document or a true
copy of an original. TLTIA 107 amends 10 of the Act to allow
recordation of a document that is not an original or a true copy.
Comment: One comment suggested that 3.25(a)(4) should be amended to
delete the requirement for signature by the assignee when an assignment
is supported by a statement explaining how the conveyance affects title.
The comment noted that assignments signed only by the assignor have been
routinely recorded for many years; that the rule as written would be a
major change in policy; that the assignment of trademarks and the
associated goodwill is regarded as a matter of state law, and signature
by the assignee is not required by the law of a number of states; and
that the proposed rule would seek to impose by Federal law an additional
requirement in a transaction that is clearly covered by state law, and
raises a question as to whether there is Federal authority for doing so.
Response: The suggestion has not been adopted. Section 3.25(a) sets
forth a number of types of underlying documents one can submit to the
Office to support a request to record an assignment. Section 3.25(a)(4)
is not a requirement, but only one alternative available to a party
seeking to record an assignment. Traditionally, the only document that
the Office accepted to support a request to record an assignment was the
original assignment document or a true copy of the original document.
Amended 3.25(a) provides a wider range of supporting documents. The
Office will continue to accept an original assignment document, or a
true copy of an original, that is signed only by the assignor.
Comment: One comment suggested that 3.25(b) should be amended to
continue the current requirement for an original or a true copy of an
original with a request to record a change of name. The comment noted
that it is generally easy to obtain a document reflecting a name change,
and would therefore not be a significant burden to parties seeking to
record assignments; and that the proposed rule requiring only a legible
cover sheet would result in a burden to members of the public seeking to
confirm the change in ownership.
Response: The suggestion has not been adopted. The deletion of the
requirement for an underlying document supporting a request to record a
change of name was made because 10 of the Act no longer requires an
underlying document in a request to record a name change.
Assignment of 1(b) Applications
TLTIA 107 amends 10 of the Act to permit an assignment after the
applicant files an amendment to allege use under 1(c) of the Act.
Currently, a 1(b) application cannot be assigned until after the
filing of a statement of use under 1(d) of the Act, except to a
successor to the applicant's business, or the portion of the business to
which the mark pertains. This amendment corrects an oversight in the
Trademark Law Revision Act of 1988 (Title 1 of Pub. Law. No. 100-667,
102 Stat. 3935 (15 U.S.C. 1051)), which amended 10 of the Act to
permit an assignment of a 1(b) application to someone other than a
successor to the applicant's business only after the filing of a
statement of use under 1(d) of the Act. The substance of statements
of use and amendments to allege use are the same, and the only
difference is the time of filing, so there is no reason to treat them
differently.
Discussion of Specific Rules Changed or Added
The Office is amending rules 1.1, 1.4, 1.5, 1.6, 1.23, 2.1, 2.6, 2.17,
2.20, 2.21, 2.31, 2.32, 2.33, 2.34, 2.35, 2.37, 2.38, 2.39, 2.45, 2.51,
2.52, 2.56, 2.57, 2.58, 2.59, 2.66, 2.71, 2.72, 2.76, 2.86, 2.88, 2.89,
2.101, 2.111, 2.146, 2.151, 2.155, 2.156, 2.160, 2.161, 2.162, 2.163,
2.164, 2.165, 2.166, 2.167, 2.168, 2.173, 2.181, 2.182, 2.183, 2.184,
2.185, 2.186, 3.16, 3.24, 3.25, 3.28, 3.31, and 6.1.
Section 1.1(a)(2) is amended to set forth all the addresses for filing
trademark correspondence in one rule.
Section 1.1(a)(2)(i) is amended to exempt papers filed electronically
from the requirement that correspondence be mailed to the street address
of the Office.
Section 1.1(a)(2)(v) is amended to state that an applicant may transmit
an application for trademark registration electronically, but only if
the applicant uses the Office's electronic form.
Section 1.4(a)(2) is amended to correct a cross-reference.
Section 1.4(d)(1)(iii) is added to provide for signature of
electronically transmitted trademark filings, where permitted.
Section 1.5(c) is amended to clarify the requirements for identifying
trademark applications and registrations.
Section 1.6(a) is amended to provide that the Office will consider
trademark-related correspondence transmitted electronically to have been
filed on the date of transmission, regardless of whether that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia.
This is consistent with the treatment of correspondence filed as Express
Mail with the United States Postal Service (USPS) under 1.10.
Comment: One comment suggested that 1.6(a)(1) be amended to state
that Express Mail deposited on a Saturday, Sunday, or Federal holiday
will receive a filing date as of the date of deposit with the USPS.
Response: The suggestion has not been adopted. Sections 1.6(a)(2) and
1.10(a) already state that correspondence filed by Express Mail will be
considered filed as of the date of deposit with USPS, and these sections
do not limit the date of deposit as Express Mail to a day that is not a
weekend or Federal holiday. Therefore, it is not necessary to repeat
this information in 1.6(a)(1). The Office now stamps correspondence
filed by Express Mail under 1.10 with the USPS "date in," regardless
of whether that date is a Saturday, Sunday, or Federal holiday within
the District of Columbia. TMEP 702.02(f); MPEP 513.
The current text of 1.23 is designated as paragraph (a), and amended
to clarify that payment must be made in U.S. dollars, and in the form of
a cashier's or certified check, Treasury note, or USPS money order to be
considered unconditional payment of a fee. As with current practice,
payment of a fee by other forms (e.g., by personal or corporate check,
or authorization to charge a credit card) is subject to actual
collection of the fee. Section 1.23 is also amended to add a paragraph
(b), providing that payments of money for fees in electronically filed
trademark applications, or electronic submissions in trademark
applications, may also be made by credit card. The Office previously
limited fee payment by credit card to the fees required for information
products, and will continue to accept payment of information product
fees by credit card.
Section 1.23(b) will also provide that payment of a fee by credit card
must specify the amount to be charged and such other information as is
necessary to process the charge, and is subject to collection of the fee.
Section 1.23(b) will further provide that the Office will not accept a
general authorization to charge fees to a credit card. The Office cannot
accept an authorization to charge "all required fees" or "the filing
fee" to a credit card, because the Office cannot determine with
certainty the amount of an unspecified fee (the amount of the "required
fee" or the applicable "filing fee") within the time frame for reporting
a charge to the credit card company. Also, the Office cannot accept
charges to credit cards that require the use of a personal
identification number (PIN) (e.g., certain debit cards or check cards).
Section 1.23(b) also contains a warning that if credit card information
is provided on a form or document other than a form provided by the
Office for the payment of fees by credit card, the Office will not be
liable if the credit card number is made public. The Office currently
provides an electronic form for use when paying a fee in an
electronically filed trademark application or electronic submission in a
trademark application. This form will not be included in the records
open to public inspection in the file of a trademark matter. However,
the inclusion of credit card information on forms or documents other
than the electronic form provided by the Office may result in the
release of credit card information.
Section 2.1 is amended to update a cross-reference.
Section 2.6(a)(6) is amended to delete reference to the three-month
renewal grace period. TLTIA changes the grace period to six months.
Section 2.6(a)(14) is removed because it is unnecessary. The cost of a
combined affidavit or declaration under 8 and 15 of the Act is the
sum of the cost of the individual filings.
Section 2.6(a)(14) is added, requiring a $100 surcharge per class for
filing a 8 affidavit during the grace period.
Section 2.6(a)(20) is added, requiring a $100 surcharge for correcting a
deficiency in a 8 affidavit.
Section 2.6(a)(21) is added, requiring a $100 surcharge for correcting a
deficiency in a renewal application.
Section 2.17(c) is added, stating that to be recognized as a
representative in a trademark case, an attorney as defined in 10.1(c)
may file a power of attorney, appear in person, or sign a paper that is
filed with the Office on behalf of an applicant or registrant. This
codifies current practice.
Section 2.17(d) is added, stating that someone may file a power of
attorney that relates to more than one trademark application or
registration, or to all existing and future applications and
registrations; and that someone relying on such a power of attorney
must: (1) include a copy of the previously filed power of attorney; or
(2) refer to the previously filed power of attorney, specifying: the
filing date; the application serial number, registration number, or
inter partes proceeding number for which the original power of attorney
was filed; and the name of the party who signed the power of attorney;
or, if the application serial number is not known, submit a copy of the
application or a copy of the mark, and specify the filing date.
Comment: One comment requested clarification as to whether a "global"
power of attorney will be effective for all registrations, including
those that have no immediate deadline.
Response: Yes, the power of attorney will be effective for registrations
that have no immediate deadline. When the attorney later takes an
action, such as filing an affidavit of continued use or a renewal
application, he or she must comply with the requirements of 2.17(d)
in order to rely on the power of attorney.
Comment: One comment asked whether a global power of attorney will
remain valid if the application for which the power was filed is
abandoned.
Response: Yes. The Office will maintain a record of the power of
attorney, and the power will remain valid even if the original power was
filed with an application that is later abandoned, or with a
registration that is later cancelled.
Comment: One comment suggested that the Office should require attorneys
to set forth the jurisdiction in which they are admitted and their bar
number in a power of attorney.
Response: The suggestion has not been adopted, because the Office does
not need this information to process applications and other documents.
The purpose of TLT is to minimize the number of formal requirements for
applications, powers of attorney and other documents, and to make the
procedural requirements of the different national trademark offices more
consistent. Instituting a new requirement that an attorney include the
jurisdiction in which he or she is admitted and a bar number would not
serve this purpose.
Section 2.20 is revised to delete the requirement for a declaration by a
"member of the firm or an officer of the corporation or association,"
because this requirement has been deleted from 1(a) and 1(b) of the
Act.
Comment: One comment suggested that 2.20 be amended to permit the use
of the language of 28 U.S.C. 1746 in a declaration.
Response: The suggestion has been adopted. Section 2.20 is amended to
permit the filing of a verification under 28 U.S.C. 1746 in lieu of
either an affidavit or a declaration under 2.20. This reflects
current practice. TMEP 803.02.
Section 2.21 is revised to require the following minimum requirements
for receipt of an application filing date: (1) the name of the
applicant; (2) a name and address for correspondence; (3) a clear
drawing of the mark; (4) an identification of goods or services; and (5)
the filing fee for at least one class of goods or services. See the
discussion under the heading "Supplementary Information/Application
Filing Dates," supra.
The following minimum requirements for receiving a filing date have been
deleted:a stated basis for filing; a verification or declaration signed
by the applicant; an allegation of use in commerce, specimen, and date
of first use in commerce in an application under 1(a) of the Act; an
allegation of the applicant's bona fide intention to use the mark in
commerce in an application under 1(b) or 44 of the Act; a claim of
priority in an application under 44(d) of the Act; and a certified
copy of a foreign registration in an application under 44(e) of the
Act. A claim of priority under 44(d) must be filed before the end of
the priority period. All other elements must be provided during
examination.
Section 2.21(a)(3) is amended to require a "clear drawing of the mark"
rather than the drawing "substantially meeting all the requirements of
2.52" that is now required.Section 2.21(b) is amended to state that the
Office "may" rather than "will" return the papers and fees to the
applicant when an application does not meet the minimum filing
requirements. A new procedure is being considered under which the Office
would retain applications that do not meet the minimum filing
requirements. Applicants would have an opportunity to supply the missing
element and receive a filing date as of the date the Office receives the
missing element. Until a new policy is announced, the Office will
continue to return the papers and fees to the applicant.
Comment: One comment stated that it reserves judgment on the possible
future change in procedures for handling informal applications.
Response: If the Office does decide to change procedures for handling
informal applications, it will seek input from the public before
instituting the changes. The center heading "THE WRITTEN APPLICATION"
before 2.31 is deleted because it is unnecessary. The heading
"APPLICATION FOR REGISTRATION," immediately before 2.21, encompasses
the rules that now fall under the heading "THE WRITTEN APPLICATION."
Section 2.31 is removed and reserved. The substance of the requirement
that the application be in English has been moved to revised 2.32(a).
The heading of 2.32 is changed to "Requirements for a complete
application." Revised 2.32(a) lists the requirements for the written
application, now listed in 2.33(a)(1). Proposed 2.32(a)(3)(ii)
required that a juristic applicant set forth the state or nation under
the laws of which the applicant is organized. This is consistent with
current 2.33(a)(1)(ii).
Comment: One comment suggested that "state or nation" in
2.32(a)(3)(ii) be changed to "jurisdiction (usually state or nation),"
because juristic persons such as corporations may be incorporated under
the law of a jurisdiction that is not a state or nation.
Response: The suggestion has been adopted.
Section 2.32(a)(6) requires a list of the goods or services on or in
connection with which the applicant uses or intends to use the mark, and
states that in an application filed under 44 of the Act, the scope of
the goods or services covered by the section 44 basis may not exceed the
scope of the goods or services in the foreign application or
registration.
Comment: One comment suggested that 2.32(a)(6) be amended to state
than an application may be filed under multiple bases, with some of the
goods/services supported by only one of the bases.
Response: The suggestion has not been adopted because it is unnecessary.
Section 2.34(b)(1) clearly states that an applicant may claim more than
one basis in a single application, and 2.34(b)(2) indicates that the
goods/services in such an application may be covered by different bases.
The heading of 2.33 is changed to "Verified statement."
Section 2.33(a) is amended to state that the application must include a
statement that is signed and verified by a person properly authorized to
sign on behalf of the applicant. Section 2.33(a) further states that a
person who is properly authorized to sign on behalf of the applicant is:
(1) a person with legal authority to bind the applicant; or (2) a person
with firsthand knowledge of the facts and actual or implied authority to
act on behalf of the applicant; or (3) an attorney as defined in
10.1(c) of this chapter who has an actual or implied written or verbal
power of attorney from the applicant. See the discussion under the
heading "Supplementary Information/Persons Who May Sign," supra.
The substance of current 2.32(b) is moved to 2.33(c). Revised
2.33 states that the Office may require a substitute verification of the
applicant's continued use or bona fide intention to use the mark when
the applicant does not file the verified statement within a reasonable
time after the date it is signed. This codifies present practice.
Section 2.32(b) now states only that a verification of the applicant's
continued use of the mark is required where the application is not filed
within a reasonable time after it is signed. However, the Office also
requires verification of the applicant's continued bona fide intention
to use the mark in commerce when a verification under 1(b) or 44
of the Act is not filed within a reasonable time after it is signed.
TMEP 803.04.
Section 2.33(b)(1) is amended to delete the requirement that the
applicant specify the type of commerce in which the mark is used. See
the discussion under the heading "Supplementary
Information/Specification of Type of Commerce No Longer Required," supra.
Section 2.33(d) is added, stating that where an electronically
transmitted filing is permitted, the person who signs the verified
statement must either: (1) place a symbol comprised of numbers and/or
letters between two forward slash marks in the signature block on the
electronic document; and print, sign and date in permanent ink, and
maintain a paper copy of the electronic submission; or (2) use some
other form of electronic signature that the Commissioner may designate.
Section 2.34 is added, setting forth the requirements for the four bases
for filing.
New 2.34(a)(1) lists the requirements for an application under
1(a) of the Act, now listed in 2.21(a)(5)(i), 2.33(a)(1)(iv),
2.33(a)(1)(vii), 2.33(a)(2), and 2.33(b)(1). Section 2.34(a)(2) lists
the requirements for an application under 1(b) of the Act, now listed
in 2.21(a)(5)(iv) and 2.33(a)(1)(iv).
Section 2.34(a)(iii) is amended to delete the requirement that the
applicant specify the type of commerce in which the mark is used. See
the discussion under the heading "Supplementary
Information/Specification of Type of Commerce No Longer Required," supra.
Comment: One comment suggested that 2.34(a)(1)(i), which pertains to
applications based on use in commerce under 1(a) of the Act, be
amended to change "application filing date" to "application filing date
(in the case of an application claiming priority under Section 44(d),
such use in commerce shall be required as of the U.S. filing date not
the filing date of the priority application)," to avoid any confusion,
because in a 44(d) application that claims priority, the effective
filing date is the filing date of the foreign application.
Response: The suggestion has not been adopted, because it is
unnecessary, and could be confusing to domestic applicants who base
their applications solely on use in commerce and are unfamiliar with the
requirements of 44(d). Under 1.6, correspondence is stamped with
the date of receipt in the Office, unless the correspondence is filed
under 1.10, which provides for the filing of papers and fees by
Express Mail. The term "application filing date" is now commonly used to
refer to the date the application is received in the Patent and
Trademark Office, and the priority date in a 44(d) application is
referred to as the "effective filing date." TMEP 708.02. The Office
knows of no instances in which a party whose application was based on
both 44(d) and 1(a) mistakenly believed that the requirements for
the 1(a) basis must be met as of the priority date.
Section 2.34(a)(3) lists the requirements for an application under
44(e) of the Act, now listed in 2.21(a)(5)(ii) and
2.33(a)(1)(viii). Section 2.34(a)(3)(ii) requires a certified copy of a
foreign registration. Currently, a 44(e) applicant must submit a
foreign certificate to receive a filing date. However, TLTIA 108
amends 44(e) of the Act to delete the requirement that the
application be "accompanied by" the foreign certificate. The Office will
require that the applicant submit the certificate during examination.
New 2.34(a)(3)(iii) is added, stating that if it appears that the
foreign registration will expire before the mark in the United States
application will register, the applicant must submit a certification
from the foreign country's trademark office, showing that the
registration has been renewed and will be in force at the time the
United States registration will issue. This codifies current practice.
TMEP 1004.03.
Comment: One comment suggested that the phrase "before the United States
registration will issue," be changed to "before the United States
registration is expected to issue assuming no unusual delays," because
at the time of examination the exact date of issue is subject to wide
variance.
Response: The suggestion has not been adopted. Even if there is a delay
in issuance of a registration in an application under 44(e) of the
Act, due to an opposition or for other reasons, the United States
registration will not issue unless the foreign registration has been
renewed and is in force.
New 2.34(a)(4) lists the requirements for an application under
44(d) of the Act, now listed in 2.21(a)(5)(iii), 2.33(a)(1)(ix),
and 2.39. Section 2.34(a)(4)(i) requires that a priority claim be filed
within six months of the filing date of the foreign application. This is
consistent with Articles 4(C)(1) and 4(D)(1) of the Paris Convention for
the Protection of Industrial Property, as revised at Stockholm on July
14, 1967 (Paris Convention).
New 2.34(b)(1) states that an applicant may claim more than one
basis, provided that the applicant meets the requirements for all bases
claimed. This codifies current practice. Section 2.34(b)(1) also states
that the applicant may not claim both 1(a) and 1(b) for the
identical goods or services in one application.
Revised 2.34(b)(2) requires that the applicant specify which basis
covers which goods or services when an applicant claims more than one
basis.
New 2.34(c) sets forth the definition of "commerce," currently found
in 2.33(a)(3).
Section 2.37 is removed.
Section 2.35 is redesignated as 2.37.
Section 2.35 is added: "Adding, deleting, or substituting bases."
New 2.35(a) states that the applicant may add or substitute a basis
for registration before publication, and that the applicant may delete a
basis at any time.
Section 2.35(b) is amended to state that an application may be amended
to add or substitute a basis after publication, if the applicant files a
petition to the Commissioner; and that republication will always be
required. This codifies current practice. TMEP 1006.04. See the
discussion under "Supplementary Information/Amendment of Basis After
Publication," supra.
New 2.35(c) changes current practice to allow a 44(d) applicant to
retain the priority filing date when the applicant substitutes a new
basis after the expiration of the six-month priority period. Currently,
if an application is filed solely under 44(d), and the applicant
amends to substitute a different basis after the expiration of the
six-month priority period, the effective filing date of the application
becomes the date the applicant perfects the amendment claiming the new
basis. TMEP 1006.03.
Comment: Proposed 2.35(c) stated that when the applicant substitutes
a basis, the Office will presume that the original basis was valid,
unless there is contradictory evidence in the record. One comment
questioned whether an application that was amended from 1(a) to
1(b) would be subject to attack on the ground that the original basis
was invalid because there was no use as a mark.
Response: A party who filed an application based on use in commerce, but
later discovered that what he or she thought was appropriate trademark
use was not in fact technical trademark use, clearly had a bona fide
intention to use the mark in commerce as of the filing date. If the use
basis is invalid, the applicant is entitled to retain the original
filing date because the applicant had a bona fide intention to use the
mark in commerce at all times. Section 2.35(c) is therefore amended to
delete the statement that the Office will presume that the original
basis was valid and substitute a statement that the Office will presume
that there was a continuing valid basis, unless there is contradictory
evidence in the record.
New 2.35(d) states that if an applicant properly claims a 44(d)
basis in addition to another basis, the applicant will retain the
priority filing date under 44(d) no matter which basis the applicant
perfects. This codifies current practice. TMEP 1006.01.
New 2.35(e) states that the applicant may add or substitute a
44(d) basis only within the six-month priority period following the
filing date of the foreign application. This is consistent with current
practice (TMEP 1006.05), and with Articles 4(C)(1) and 4(D)(1) of the
Paris Convention.
New 2.35(f) states that an applicant who adds a basis must state
which basis covers which goods or services.
New 2.35(g) states that if an applicant deletes a basis, the
applicant must also delete any goods or services covered solely by the
deleted basis. This codifies current practice.
New 2.35(h) states that once an applicant claims a 1(b) basis as
to any or all of the goods or services, the applicant may not amend the
application to seek registration under 1(a) of the Act for those
goods or services unless the applicant files an allegation of use under
1(c) or 1(d) of the Act.
Section 2.38(a) is amended to update a cross-reference.
Section 2.39 is removed and reserved. The requirements for filing a
priority claim under 44(d) of the Act are moved to 2.34(a)(4),
discussed above.
Sections 2.45(a) and (b) are revised to: (1) delete the requirement for
a statement of the method or intended method of use in a certification
mark application; and (2) require a copy of the standards that determine
whether others may use the certification mark on their goods and/or in
connection with their services. Sections 1(a) and 1(b) of the Act, as
amended, no longer require a statement of the method or intended method
of use of a mark. The requirement for a copy of the certification
standards codifies current practice. TMEP 1306.06(g)(ii).
Sections 2.51(c) through (e) are removed. The substance of those rules
is moved to new 2.52.
Section 2.52(a) is revised to define the term "drawing," to indicate
that a drawing may only depict a single mark, and to define the terms
"typed drawing" and "special form drawing."
Section 2.52(a) is revised to add guidelines for drawings of various
types of unusual marks, such as marks that include color,
three-dimensional objects, motion, sound or scent; and to add guidelines
for showing placement of the mark on goods, packaging for goods, or in
advertising of services.
Section 2.52(b) is revised to indicate the recommended format for the
drawing of a mark.
Section 2.52(c) is revised to state that for an electronically filed
application, if the mark cannot be shown as a "typed drawing," the
applicant must attach a digitized image of the mark to the application.
Sections 2.56, 2.57, and 2.58 are consolidated into 2.56.
Sections 2.57 and 2.58 are removed and reserved.
Section 2.56(a) is revised to require one rather than three specimens
with an application under 1(a) of the Act, or an allegation of use
under 1(c) or 1(d) of the Act in an application under 1(b) of
the Act. See the discussion under "Supplementary Information/Number of
Specimens Required," supra.
Section 2.56(b)(1) is added, stating that a trademark specimen is a
label, tag, or container for the goods, or a display associated with the
goods; and that the Office may accept another document related to the
goods or the sale of the goods when it is not possible to place the mark
on the goods or packaging for the goods. This is consistent with the
current 2.56.
Comment: One comment suggested that the second sentence of 2.56(b)(1)
should be amended to substitute "will" for "may," and that the following
sentence be added at the end of the paragraph: "The Office may accept a
display associated with the goods when this is the customary method of
use of a trademark in the relevant trade or industry."
Response: The suggestion has not been adopted. The first sentence of
2.56(b)(1) already states that a specimen may be a display associated
with the goods, so the suggested third sentence is unnecessary. The word
"may" is used in the second sentence of 2.56(b)(1) because it is
within the discretion of the examining attorney to determine whether
specimens are acceptable.
Section 2.56(b)(2) is added, stating that a service mark specimen must
show the mark as actually used in the sale or advertising of the
services. This is consistent with the current 2.58(a).
Section 2.56(b)(3) is added, stating that a collective trademark or
collective service mark specimen must show how a member uses the mark on
the member's goods or in the sale or advertising of the member's
services. This codifies current practice.TMEP 1303.02(b).
Section 2.56(b)(4) is added, stating that a collective membership mark
specimen must show use by members to indicate membership in the
collective organization. This codifies current practice. TMEP
1304.09(c).
Section 2.56(b)(5) is added, stating that a certification mark specimen
must show how a person other than the owner uses the mark to certify
regional or other origin, material, mode of manufacture, quality,
accuracy, or other characteristics of the person's goods or services; or
that members of a union or other organization performed the work or
labor on the goods or services. This codifies current practice. TMEP
1306.06(c).
Section 2.56(c) is added, stating that a photocopy or other reproduction
of a specimen is acceptable, but that a photocopy or facsimile that
merely reproduces the drawing is not a proper specimen. This is
consistent with the current 2.57.
New 2.56(d)(1) states that a specimen must be flat and no larger than
8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. This is
consistent with the current 2.56.
Section 2.56(d)(2) is added, stating that if the applicant files a
specimen that is too large (a "bulky specimen"), the Office will create
a facsimile of the specimen that meets the requirements of the rule
(i.e., is flat and no larger than 8 1/2 inches (21.6 cm.) wide by 11.69
inches (29.7 cm.) long) and put it in the file wrapper. See the
discussion under "Supplementary Information/Bulky Specimens," supra.
Section 2.56(d)(4) is added, stating that if the application is filed
electronically, the specimen must be submitted as a digitized image.
Section 2.59, which governs the filing of substitute specimens, is
revised to clarify and simplify the language. Section 2.59(b)(1)
provides that when an applicant submits substitute specimens after
filing an amendment to allege use under 2.76, the applicant must
verify the substitute specimens were in use in commerce prior to filing
the amendment to allege use.
Comment: One comment suggested that 2.59(b)(1) be amended to provide
for the filing of substitute specimens that were in use "prior to filing
the substitute specimen(s)," even if the specimens were not in use as of
the filing date of the amendment to allege use. The comment noted that
under the current rule, if the substitute specimens are not in use as of
the filing date of the amendment to allege use, then the applicant must
cancel the first amendment to allege use and substitute a new one, and
stated that this serves no useful purpose.
Response: The suggestion has not been adopted. Section 1(c) of the Act
provides for the filing of an amendment to allege use only after the
applicant "has made use of the mark in commerce." Under 2.76(e)(2), a
minimum filing requirement for an amendment to allege use is a specimen
showing that the mark is in use in commerce on or in connection with the
goods or services. If the applicant cannot show use in commerce as of
the filing date of the amendment to allege use, then the amendment
cannot be considered "filed" as of that date. The Office believes that
its records should accurately show the date when an intent-to-use
applicant files an acceptable amendment to allege use under 1(c) of
the Act, because this date can be significant. For example, under
2.75(b), if an intent-to-use applicant amends to the Supplemental
Register, the effective filing date of the application becomes the date
the amendment to allege use was perfected. It would be unfair to grant
the intent-to-use applicant an effective filing date on the Supplemental
Register before the mark was actually in use in commerce.
Section 2.66 is revised to set forth the requirements for filing a
petition to revive an abandoned application when the delay in responding
to an Office action or notice of allowance is "unintentional." See the
discussion under "Supplementary Information/Revival of Abandoned
Applications," supra.
Sections 2.66(a)(1) and (2) are added, requiring that the applicant file
a petition to revive within (1) two months of the mailing date of the
notice of abandonment; or (2) two months of actual knowledge of
abandonment. Currently, the deadline for filing a petition to revive is
sixty days from the mailing date of the notice of abandonment or the
date of actual knowledge of abandonment. TMEP 1112.05(a). The
two-month deadline will make it easier to calculate the due date for a
petition because it will not be necessary to count days.
Section 2.66(a)(2) states that an applicant must be diligent in checking
the status of an application, and that to be diligent, the applicant
must check the status of the application within one year of the last
filing or receipt of a notice from the Office for which further action
by the Office is expected. This codifies current practice. TMEP 413
and 1112.05(b)(ii). See the discussion under the heading "Supplementary
Information/Due Diligence," supra.
Sections 2.66(b)(2) and (c)(2) are amended to require "a statement,
signed by someone with firsthand knowledge of the facts, that the delay
. . . was unintentional." This statement need not be verified.
Section 2.66(b)(3) is amended to state that if the applicant did not
receive the Office action, the applicant need not include a proposed
response to an Office action with a petition to revive. This codifies
current practice.
Sections 2.66(c)(3) and (4) are amended to state that if the applicant
did not receive the notice of allowance and requests cancellation of the
notice of allowance, the petition to revive need not include a statement
of use or request for an extension of time to file a statement of use,
or the fees for the extension requests that would have been due if the
application had never been abandoned. This codifies current practice.
Section 2.66(c)(5) is added, stating that the applicant must file any
further requests for extensions of time to file a statement of use under
2.89 that become due while the petition is pending, or file a
statement of use unless: (1) a statement of use is filed with or before
the petition to revive, or (2) the petition states that the applicant
did not receive the notice of allowance and requests cancellation of the
notice of allowance. This codifies current practice.
Section 2.66(f)(3) is added, stating that if the Commissioner denies the
petition to revive, the applicant may request reconsideration by: (1)
filing the request within two months of the mailing date of the decision
denying the petition; and (2) paying a second petition fee under 2.6.
Currently, the rules do not specifically provide for requests for
reconsideration of petition decisions, but the Commissioner has the
discretion to consider these requests under 2.146(a)(3). The Office
believes that an additional fee should be required to pay for the work
done in processing the request for reconsideration. This is consistent
with new 2.146(j).
Section 2.71(a) is revised to state that the applicant may amend the
identification to clarify or limit, but not broaden, the identification
of goods and/or services. This simplifies the language of the current
2.71(b).
New 2.71(b)(1) states that if the declaration or verification of an
application under 2.33 is unsigned or signed by the wrong person, the
applicant may submit a substitute verification or declaration under
2.20. This changes current practice. Currently, the applicant must
submit a signed verification to receive an application filing date, and
if the verification is signed by the wrong party, the applicant cannot
file a substitute verification unless the party who originally signed
had "color of authority" (i.e., firsthand knowledge of the facts and
actual or implied authority to act on behalf of the applicant). TMEP
803. As discussed above, the Office is deleting the requirement that the
applicant submit a signed verification in order to receive a filing
date. If the verification is unsigned or signed by the wrong party, the
applicant must replace the declaration during examination.
The requirement for a verification "by the applicant, a member of the
applicant firm, or an officer of the applicant corporation or
association" has been removed from 2.71(c). This is consistent with
the amendments to 1(a) and 1(b) of the Act. See the discussion
under "Supplementary Information/Persons Who May Sign," supra.
The "color of authority" provisions have been deleted from 2.71(c).
Because the statute no longer specifies who has "statutory" authority to
sign, the "color of authority" provisions are unnecessary.
New 2.71(b)(2) states that if the declaration or verification of a
statement of use under 2.88 or a request for extension of time to
file a statement of use under 2.89 is unsigned or signed by the wrong
party, the applicant must submit a substitute verification before the
expiration of the statutory deadline for filing the statement of use.
Section 2.71(d) is added, stating that a mistake in setting out the
applicant's name can be corrected, but the application cannot be amended
to set forth a different entity as the applicant; and that an
application filed in the name of an entity that did not own the mark on
the filing date of the application is void. This codifies current
practice. TMEP 802.07. See the discussion under "Supplementary
Information/Filing by Owner," supra.
Section 2.72 is revised to remove paragraph (a), and redesignate
paragraphs (b) through (d) as (a) through (c).
New paragraphs (a) through (c) will each state that an applicant may not
amend the description or drawing of the mark if the amendment materially
alters the mark; and that the Office will determine whether a proposed
amendment materially alters a mark by comparing the proposed amendment
with the description or drawing of the mark in the original application.
See the discussion under the heading "Supplementary Information/Material
Alteration," supra.
Comment: One comment suggested that 2.72(b) should be amended to
provide that in an application based on 1(b) of the Act, the
applicant "may amend the heading on the drawing to reflect a change in
applicant's name, jurisdiction of citizenship or organization, and/or
address at any time," to encourage the prompt amendment of applications
to reflect changes in the applicant's name, address and/or jurisdiction.
Response: The suggestion has not been adopted because it is unnecessary.
Section 2.72(b) pertains only to amendment of the "description or
drawing of the mark," not to amendment of the heading on a drawing. An
applicant who submits a substitute drawing is free to amend the heading
in the substitute drawing.
Comment: One comment suggested that 2.72(c)(1) be amended to provide
that in an application based on 44(d) of the Act, the applicant may
amend the drawing of the mark if the amendment is supported by the
foreign application, "because there may never be a `foreign registration
certificate' if the foreign priority application lapses."
Response: The suggestion has not been adopted. Section 44(d) is a basis
for filing an application, not a basis for registration. If the
applicant perfects the 44(e) basis, the mark in the United States
application must be a substantially exact representation of the mark in
the home country registration. If the applicant elects not to perfect
the 44(e) basis, the mark in the United States application must be a
substantially exact representation of the mark on the specimens filed
with a 1(a) application or with an allegation of use in a 1(b)
application. A mark would not be registrable if it were a substantially
exact representation of the mark in the foreign application, but not a
substantially exact representation of the mark in the foreign
registration in a 44(e) application, or the specimens in a use-based
application.
Section 2.76(b)(1) is revised to state that a complete amendment to
allege use must include a statement that is verified or supported by a
declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant.
Section 2.76(b)(1) is further revised to delete the requirement for a
statement of the method or manner of use of the mark in an amendment to
allege use, because this requirement has been removed from 1(a) of
the Act.
Section 2.76(b)(1)(ii) is amended to delete the requirement that the
applicant specify the type of commerce in which the mark is used. See
the discussion under the heading "Supplementary
Information/Specification of Type of Commerce No Longer Required," supra.
Section 2.76(b)(2) is revised to require one rather than three specimens
with an amendment to allege use.
Section 2.76(i) is added, stating that if an amendment to allege use is
not filed within a reasonable time after it is signed, the Office may
require a substitute verification or declaration under 2.20 that the
mark is still in use in commerce. This codifies current practice. TMEP
803.04.
Section 2.76(j) is added, noting that the requirements for multi-class
applications are stated in 2.86.
The heading of 2.86 is changed to "Application may include multiple
classes." The current 2.86(a), which states that an applicant may
recite more than one item of goods, or more than one service, in a
single class, if the applicant either has used or has a bona fide
intention to use the mark on all the goods or services, is removed. The
substance of this provision is moved to 2.34(a)(1)(v),
2.34(a)(2)(ii), 2.34(a)(3)(iv), and 2.34(a)(4)(iv).
Section 2.86(a) is revised to include sections now found in 2.86(b),
stating that the applicant may apply to register the same mark for goods
and/or services in multiple classes in a single application, provided
that the applicant specifically identifies the goods and services in
each class; submits a fee for each class; and either includes dates of
use and one specimen, or a statement of a bona fide intention to use the
mark in commerce, for each class.
Section 2.86(a)(3) is amended to add a provision that the applicant may
not claim both use in commerce and a bona fide intention to use the mark
in commerce for the identical goods or services in one application.
Section 2.86(b) is amended to state that a statement of use or amendment
to allege use must include the required fee, dates of use, and one
specimen for each class. Section 2.86(b) is amended to add a provision
that the applicant may not file the statement of use or amendment to
allege use until the applicant has used the mark on all the goods or
services, unless the applicant files a request to divide. This is
consistent with the current 2.76(c) and 2.88(c).
Section 2.86(c), which prohibits an applicant from claiming both use in
commerce and intent-to-use in a single multi-class application, is
deleted. However, new 2.86(a)(3) will state that the applicant may
not claim both use in commerce and intent-to-use for the identical goods
or services in one application.
The substance of the last sentence of the current 2.86(b) is moved to
new 2.86(c).
Section 2.88(b)(1) is revised to state that a complete statement of use
must include a statement that is verified or supported by a declaration
under 2.20 by a person properly authorized to sign on behalf of the
applicant.
Section 2.88(b)(1) is revised to delete the requirement for a statement
of the method or manner of use in a statement of use. This requirement
has been removed from 1(d)(1) of the Act.
Section 2.88(b)(1)(ii) is amended to delete the requirement that the
applicant specify the type of commerce in which the mark is used. See
the discussion under the heading "Supplementary
Information/Specification of Type of Commerce No Longer Required," supra.
Section 2.88(b)(2) is revised to require one specimen with a statement
of use, rather than the three specimens now required.
Section 2.88(e)(3) is revised to state that if the verification or
declaration is unsigned or signed by the wrong party, the applicant must
submit a substitute verification or declaration on or before the
statutory deadline for filing the statement of use. This is consistent
with current practice. TMEP 1105.05(f)(i)(A). Section 1(d)(1) of the
Act specifically requires verification by the applicant within the
statutory period for filing the statement of use.
Section 2.88(k) is added, stating that if the statement of use is not
filed within a reasonable time after it is signed, the Office may
require a substitute verification or declaration under 2.20 stating
that the mark is still in use in commerce. This codifies current
practice. TMEP 803.04.
Section 2.88(l) is added, noting that the requirements for multi-class
applications are stated in 2.86.
Sections 2.89(a)(3) and (b)(3) are revised to require that the statement
that the applicant has a bona fide intention to use the mark in commerce
in a request for an extension of time to file a statement of use be
verified or supported by a declaration under 2.20 by a person
properly authorized to sign on behalf of the applicant; and that if the
extension request is unsigned or signed by the wrong party, the
applicant must submit a substitute verification or declaration on or
before the statutory deadline for filing the statement of use. This is
consistent with current practice. TMEP 1105.05(d). Sections 1(d)(1)
and (2) of the Act specifically require verification by the applicant
within the statutory filing period.
Section 2.89(d) is revised to remove paragraph (1), which requires a
statement that the applicant has not yet made use of the mark in
commerce on all the goods and services. The Commissioner has held that
an extension request that omits this allegation is substantially in
compliance with 2.89(d) if the request contains a statement that the
applicant has a continued bona fide intention to use the mark in
commerce. In re Schering-Plough Healthcare Products Inc., 24 USPQ2d 1709
(Comm'r Pats. 1992). Therefore, the requirement is unnecessary.
Section 2.89(g) is amended to change the time limit for filing a
petition to the Commissioner from the denial of a request for an
extension of time to file a statement of use from one month to two
months. The two-month deadline is consistent with the deadline for
filing a petition to revive an unintentionally abandoned application
under 2.66, and with the amendment of the deadline for filing
petitions under 2.146(d).
Section 2.89(h) is added, stating that if the extension request is not
filed within a reasonable time after it is signed, the Office may
require a substitute verification or declaration under 2.20 that the
applicant still has a bona fide intention to use the mark in commerce.
This codifies current practice. TMEP 803.04.
Section 2.101(d)(1) is revised to update a cross-reference.
Section 2.111(c)(1) is revised to update a cross-reference.
Section 2.146(d) is revised to delete "sixty days" and substitute "two
months" as the deadline for filing certain petitions. This will make it
easier to calculate the due date for a petition, because it will not be
necessary to count days.
Section 2.146(i) is added, stating that where a petitioner seeks to
reactivate an application or registration that was abandoned or
cancelled due to the loss or mishandling of papers mailed to or from the
Office, the petition will be denied if the petitioner was not diligent
in checking the status of the application or registration; and that to
be considered diligent, the applicant must check the status of the
application or registration within one year of the last filing or
receipt of a notice from the Office for which further action by the
Office is expected. This codifies current practice. TMEP 413 and
1704. See the discussion under the heading "Supplementary
Information/Due Diligence," supra.
Section 2.146(j) is added, stating that if the Commissioner denies the
petition, the petitioner may request reconsideration by: (1) filing the
request within two months of the mailing date of the decision denying
the petition; and (2) paying a second petition fee under 2.6.
Currently, the rules do not specifically provide for requests for
reconsideration of petition decisions, but the Commissioner has the
discretion to consider these requests under 2.146(a)(3). The Office
believes that an additional fee should be required to pay for the work
done in processing the request for reconsideration. This is consistent
with new 2.66(f)(3), discussed above.
Section 2.151 is revised to update a cross-reference and simplify the
language.
Section 2.155 is revised to update a cross-reference and simplify the
language.
Section 2.156 is revised to update a cross-reference and simplify the
language.
Section 2.160 is added, "Affidavit or declaration of continued use or
excusable nonuse required to avoid cancellation." New 2.160(a)(1)
and (2) list the deadlines for filing the affidavit or declaration, and
new 2.160(a)(3) states that the owner may file the affidavit or
declaration within six months after expiration of these deadlines, with
an additional grace period surcharge. Currently, there is no grace
period for filing a 8 affidavit.
Comment: Since many registrations are still in twenty-year registration
terms, one comment suggested that 2.160(a)(2) be amended to require
filing of an affidavit or declaration of continued use or excusable
nonuse "within the year before the end of every ten-year period after
the date of registration or renewal."
Response: The suggestion has not been adopted. The language of new
2.160(a)(2) tracks the language of 8(a)(3) of the Act. However, the
provisions of 8(a)(3) of the Act, requiring the filing of a 8
affidavit at the end of each successive ten-year period after
registration, do not apply to a twenty-year registration until a renewal
application is due. See the discussion under the heading
"Dates/Applicability Dates," supra.
Comment: One comment suggested that 2.160(a)(1)(i) should be amended
to require filing "after the fifth anniversary of the date of
registration and no later than the sixth anniversary of the date of
registration," rather than "between the fifth and sixth year after the
date of registration," because the phrase "between the fifth and the
sixth year" could be interpreted to be a single day.
Response: The suggestion has been adopted, but modified slightly.
Section 2.160(a)(1)(i) is amended to state that an affidavit of
continued use or excusable nonuse must be filed "on or after the fifth
anniversary and no later than the sixth anniversary after the date of
registration." This makes it clear that the affidavit may be filed on
the fifth anniversary of the registration. A similar amendment is made
to 2.160(a)(1)(ii).
Comment: One comment suggested that 2.160(a)(2) be amended to require
filing "after the ninth anniversary of either the date of registration
or the most recent renewal, and no later than the tenth anniversary of
the date of registration or the date of the most recent renewal,
respectively," rather than "within the year before the end of every
ten-year period after the date of registration," because the "rule as
proposed appears to allow the filing of a renewal application [sic] on
the ninth anniversary of the date of registration, which may not be
allowed by the statute."
Response: The suggestion has not been adopted. The Office will accept
8 affidavits filed on either the ninth or the tenth anniversary after
the date of registration. This is consistent with current practice,
which permits the filing of a 8 affidavit on either the fifth or the
sixth anniversary after the date of registration. TMEP 1603.03.
New 2.160(b) advises that 2.161 lists the requirements for the
affidavit or declaration.
The heading of 2.161 is changed to "Requirements for a complete
affidavit or declaration of continued use or excusable nonuse." Section
2.161 is revised to list the requirements for the affidavit or
declaration.
Section 2.161(a) is revised to state that the owner must file the
affidavit or declaration within the period set forth in 8 of the Act.
Comment: One comment suggested that 2.161(a) be amended to require
that the affidavit "be filed within the time period set forth in
2.160 by the owner, provided that if the owner is an assignee or other
transferee, then such assignment or transfer shall be recorded with the
Office on or before the filing of a section 8 [affidavit], or within six
months after an official action requiring such recordal."
Response: The suggestion has not been adopted. An assignee is not
required to record the assignment in order to file a 8 affidavit.
Under 3.73(b), the assignee also has the option of submitting other
proof of the change of ownership (i.e., material showing the transfer of
title). TMEP 502 and 1603.05(a).
Section 2.161(b) is revised to state that the affidavit or declaration
must include a verified statement that is signed and verified (sworn to)
or supported by a declaration under 2.20 by a person properly
authorized to sign on behalf of the owner, attesting to the continued
use or excusable nonuse of the mark within the period set forth in 8
of the Act. Section 2.161(b) further states that a person properly
authorized to sign on behalf of the owner is: (1) a person with legal
authority to bind the owner; or (2) a person with firsthand knowledge of
the facts and actual or implied authority to act on behalf of the owner;
or (3) an attorney as defined in 10.1(c) of this chapter who has an
actual or implied written or verbal power of attorney from the owner.
See the discussion under the heading "Supplementary Information/Persons
Who May Sign," supra.
Section 2.161(b) also states that the verified statement must be
executed on or after the beginning of the filing period specified in
2.160(a).
Section 2.161(d)(2) is added, requiring a surcharge for filing an
affidavit or declaration of continued use or excusable nonuse during the
grace period.
Section 2.161(d)(3) is added, stating that if the fee submitted is
enough to pay for at least one class, but not enough to pay for all the
classes, and the particular class(es) covered by the affidavit or
declaration are not specified, the Office will issue a notice requiring
either the submission of additional fee(s) or an indication of the
class(es) to which the original fee(s) should be applied; that
additional fee(s) may be submitted if the requirements of 2.164 are
met; and that if additional fees are not submitted and the class(es) to
which the original fee(s) should be applied are not specified, the
Office will presume that the fee(s) cover the classes in ascending
order, beginning with the lowest numbered class.
New 2.161(e) requires that the affidavit or declaration list both the
goods or services on which the mark is in use in commerce and the goods
or services for which excusable nonuse is claimed. Currently, a list of
the goods or services is not required when excusable nonuse is claimed.
In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993). However, TLTIA
105 amends 8(b)(2) of the Act to specifically require "an affidavit
setting forth those goods on or in connection with which the mark is not
in use."
Comment: One comment stated that if the goods for which excusable nonuse
is claimed are not listed in a 8 affidavit, registrants should be
given the opportunity to correct the oversight.
Response: If the goods or services for which excusable nonuse is claimed
are not listed in an affidavit, the registrant will be given an
opportunity to correct the deficiency.However, because 8(b)(2) of the
Act specifically requires that the affidavit set forth the goods or
services on or in connection with which the mark is not in use in
commerce, a deficiency surcharge will be required if the deficiency is
corrected after the deadline specified in 8 of the Act.
The requirement that the affidavit or declaration specify the type of
commerce in which the mark is used, currently required by 2.162(e),
is removed. See the discussion under the heading "Supplementary
Information/Specification of Type of Commerce No Longer Required," supra.
The substance of 2.162(f) is moved to 2.161(f)(2). New
2.161(f)(2) is revised to add a requirement that the affidavit state the
date when use of the mark stopped and the approximate date when use will
resume. This codifies current practice. Office actions are often issued
requiring a statement as to when use of the mark stopped and when use
will resume, because this information is needed to determine whether the
nonuse is excusable, within the meaning of 8 of the Act.
The substance of 2.162(e) is moved to 2.161(g). New 2.161(g) is
revised to state that the affidavit must include a specimen for each
class of goods or services; that the specimen should be no larger than 8
1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long; and that if
the applicant files a specimen that exceeds these size requirements (a
"bulky specimen"), the Office will create a facsimile of the specimen
that meets the requirements of the rule (i.e., is flat and no larger
than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and
put it in the file wrapper. See the discussion under "Supplementary
Information/Bulky Specimens," supra.
Section 2.161(h) is added, requiring a designation of a domestic
representative if the registrant is not domiciled in the United States.
This reflects 8(f) of the Act, as amended, and is consistent with
current practice.
The substance of 2.163 is moved to 2.162. New 2.162 is revised
to state that the only notice of the requirement for filing the 8
affidavit or declaration of continued use or excusable nonuse is sent
with the certificate of registration when it is originally issued. This
merely clarifies, and does not change, current practice.
The substance of current 2.164 is moved to the introductory text of
new 2.163.
New 2.163(a) states that if the owner of the registration files the
affidavit or declaration within the time periods set forth in 8 of
the Act, deficiencies may be corrected if the requirements of 2.164
are met.
Section 2.163(b) is added, stating that a response to an examiner's
Office action must be filed within six months of the mailing date, or
before the end of the filing period set forth in 8(a) or 8(b) of
the Act, whichever is later, or the registration will be cancelled.
Section 2.164 is added, "Correcting deficiencies in affidavit or
declaration." This section changes current practice. There are now some
deficiencies that can be corrected after the statutory deadline for
filing the affidavit or declaration, while other requirements must be
satisfied before the expiration of the statutory deadline to avoid
cancellation of the registration.
TLTIA 105 adds 8(c)(2) of the Act to allow correction of
deficiencies, with payment of a deficiency surcharge. The Act does not
define "deficiency," but instead gives the Office broad discretion to
set procedures and fees for correcting deficiencies.
New 2.164(a)(1) states that if the owner files the affidavit or
declaration within the period set forth in 8(a) or 8(b) of the
Act, deficiencies can be corrected before the end of this period without
paying a deficiency surcharge; and deficiencies can be corrected after
the expiration of this period with payment of the deficiency surcharge.
New 2.164(a)(2) states that if the owner files the affidavit or
declaration during the grace period, deficiencies can be corrected
before the expiration of the grace period without paying a deficiency
surcharge, and after the expiration of the grace period with a
deficiency surcharge.
New 2.164(b) states that if the affidavit or declaration is not filed
within the time periods set forth in 8 of the Act, or if it is filed
within that period by someone other than the owner, the registration
will be cancelled. These deficiencies cannot be cured.
See the discussion under the heading "Supplementary Information/Post
Registration," supra, for additional information about curing
deficiencies in 8 affidavits.
The heading of 2.165 is changed to "Petition to Commissioner to
review refusal." The last two sentences of the current 2.165(a)(1)
are removed.
Old 2.166 is removed because it is unnecessary. New 2.163(b) and
2.165(b) set forth the times when a registration will be cancelled.
New 2.166 is added, "Affidavit of continued use or excusable nonuse
combined with renewal application," stating that an affidavit or
declaration under 8 of the Act and a renewal application under 9
of the Act may be combined in a single document.
Section 2.167(c) is revised to delete the requirement that an affidavit
or declaration under 15 of the Act specify the type of commerce in
which the mark is used.
The heading of 2.168 is changed to "Affidavit or declaration under
15 combined with affidavit or declaration under 8, or with renewal
application." Section 2.168(a) is revised to state that a 15
affidavit may be combined with a 8 affidavit, if the combined
affidavit meets the requirements of both 8 and 15 of the Act.
Section 2.168(b) is revised to state that a 15 affidavit can be
combined with a renewal application under 9 of the Act, if the
requirements of both 9 and 15 of the Act are met.
Section 2.173(a) is revised to simplify the language.
Sections 2.181(a)(1) and (2) are revised to indicate that renewal of a
registration is subject to the provisions of 8 of the Act. This is
consistent with the amendment to 9(a) of the Act.
Comment: One comment suggested that 2.181(a)(1) should be amended to
provide that registrations remain in force "from their date of issue or
the date of expiration of their preceding term," rather than "from their
date of issue or expiration," because an expired registration cannot be
renewed.
Response: The suggestion has been adopted and modified slightly to
simplify the language. Section 2.181(a)(1) is amended to state that
registrations issued prior to November 16, 1989, remain in force for
twenty years "from their date of issue or the date of renewal." A
similar amendment is made to 2.181(a)(2).
The heading of 2.182 is changed to "Time for filing renewal
application." The section is revised to state that the renewal
application must be filed within one year before the expiration date of
the registration, or within the six-month grace period after the
expiration date with an additional fee.
The heading of 2.183 is changed to "Requirements for a complete
renewal application." This section is revised to delete the present
renewal requirements and substitute new ones based on amended 9 of
the Act. The requirements for a specimen and declaration of use or
excusable nonuse on or in connection with the goods or services listed
in the registration are removed, because these requirements have been
removed from 9 of the Act. The new requirements for renewal are: (1)
a request for renewal, signed by the registrant or the registrant's
representative; (2) a renewal fee for each class; (3) a grace period
surcharge for each class if the renewal application is filed during the
grace period; (4) if the registrant is not domiciled in the United
States, a designation of a domestic representative; and (5) if the
renewal application covers less than all the goods or services, a list
of the particular goods or services to be renewed.
New 2.183(f) states that if the fee submitted is enough to pay for at
least one class, but not enough to pay for all the classes, and the
class(es) covered by the renewal application are not specified, the
Office will issue a notice requiring either the submission of additional
fee(s) or an indication of the class(es) to which the original fee(s)
should be applied; that additional fee(s) may be submitted if the
requirements of 2.185 are met; and that if the required fee(s) are
not submitted and the class(es) to which the original fee(s) should be
applied are not specified, the Office will presume that the fee(s) cover
the classes in ascending order, beginning with the lowest numbered class.
Section 2.184 is revised to simplify the language and to transfer some
of its provisions to new 2.186. Section 2.184 states that the Office
will issue a notice if the renewal application is not acceptable; that a
response to the refusal of renewal must be filed within six months of
the mailing date of the Office action, or before the expiration date of
the registration, whichever is later; and that the registration will
expire if the renewal application is not filed within the time periods
set forth in 9(a) of the Act.
Section 2.185 is added, "Correcting deficiencies in renewal application."
Under amended 9, the renewal application must be filed within the
renewal period or grace period specified in 9(a) of the Act, or the
registration will expire. However, if the renewal application is timely
filed, any deficiencies may be corrected after expiration of the
statutory filing period, with payment of a deficiency surcharge.
New 2.185(a)(1) states that if the renewal application is filed
within one year before the registration expires, deficiencies may be
corrected before the registration expires without paying a deficiency
surcharge, or after the registration expires with payment of the
deficiency surcharge required by 9(a) of the Act.
New 2.185(a)(2) states that if the renewal application is filed
during the grace period, deficiencies may be corrected before the
expiration of the grace period without paying a deficiency surcharge,
and after the expiration of the grace period with payment of the
deficiency surcharge required by 9(a) of the Act.
New 2.185(b) states that if the renewal application is not filed
within the time periods set forth in 9(a) of the Act, the
registration will expire. This deficiency cannot be cured.
Comment: One comment noted that 2.184(c) appears to be a duplicate of
2.185(b) and suggested that one be deleted.
Response: The suggestion has not been adopted. Sections 2.184 and 2.185
are not duplicates, and both are necessary for the following reason.
Section 2.184(c) states the general rule that a registration will expire
if the renewal application is not filed during the proper time period.
Section 2.185(b) specifically addresses whether the failure to file a
renewal application in the proper time period will be considered a
deficiency that can be cured during a six-month deficiency period. The
rule states that "[t]his deficiency cannot be cured" (emphasis added).
Section 2.186 is added, "Petition to Commissioner to review refusal of
renewal."
New 2.186(a) states that a response to the examiner's initial refusal
is required before filing a petition to the Commissioner, unless the
examiner directs otherwise. This is consistent with the current
2.184(a).
New 2.186(b) states that if the examiner maintains the refusal of the
renewal application, a petition to the Commissioner to review the action
may be filed within six months of the mailing date of the Office action
maintaining the refusal; and that if no petition is filed within six
months of the mailing date of the Office action, the registration will
expire. This is consistent with the current 2.184(b).
New 2.186(c) states that a decision by the Commissioner is necessary
before filing an appeal or commencing a civil action in any court. This
is consistent with the current 2.184(d).
Section 3.16 is amended to state that an applicant may assign an
application based on 1(b) of the Act once the applicant files an
amendment to allege use under 1(c) of the Act.
The heading of 3.24 is changed to "Requirements for documents and
cover sheets relating to patents and patent applications." The recording
requirements for patents are listed in 3.24. New 3.25 is added to
list the recording requirements for trademark applications and
registrations.
Section 3.25 identifies the types of documents one can submit when
recording documents that affect some interest in trademark applications
or registrations. The section also sets forth the Office's preferred
format for cover sheets and other documents.
Section 3.28 is revised to state that separate cover sheets should be
used for patents and trademarks.
Section 3.31(a)(4) is revised to set forth the requirements for
identifying a trademark application when the application serial number
is not known.
Section 3.31(a)(7) requires that a cover sheet state that the assignee
of a trademark application or registration who is not domiciled in the
United States has designated a domestic representative. This is
consistent with current 3.31(a)(8).
Comment: One comment suggested that 3.31(a)(7) be amended to require
that the domestic representative "either sign the cover sheet or
countersign the indication," in order to prevent a foreign assignee from
designating a domestic representative who is unaware of the designation.
Response: The suggestion has not been adopted. The Office has never
required a domestic representative to countersign a designation or a
cover sheet, and knows of no instances where an assignee or applicant
designated a domestic representative who is not aware of the fact that
he or she has been designated. Instituting a new requirement that a
domestic representative sign each cover sheet could be burdensome to
assignees and is contrary to the goal of minimizing formal requirements
and making the procedural requirements of the different national
trademark offices more consistent.
The requirement currently in 3.31(a)(9) that a cover sheet contain a
statement that the information on the cover sheet is correct and that
any copy of the document submitted is a true copy is deleted.
Section 3.31(b) is amended to state that a cover sheet should not refer
to both patents and trademarks; and to put the public on notice that if
a cover sheet contains both patent and trademark information, all
information will become public after recordation.
Section 3.31(d) is added, stating that a trademark cover sheet should
include the serial number or registration number of the trademark
affected by the conveyance or transaction, an identification of the
mark, and a description of the mark.
Section 3.31(e) is added, stating that the cover sheet should include
the total number of applications, registrations, or patents identified
on the cover sheet and the total fee.
Section 6.1 is revised to incorporate classification changes that became
effective January 1, 1997, as listed in the International Classification
of Goods and Services for the Purposes of the Registration of Marks (7th
ed. 1996), published by the World Intellectual Property Organization
(WIPO).
Rulemaking Requirements
The Office has determined that the rule changes have no federalism
implications affecting the relationship between the National Government
and the State as outlined in Executive Order 12612.
The Chief Counsel for Regulation of the Department of Commerce has
certified to the Chief Counsel for Advocacy of the Small Business
Administration, that the rule changes will not have a significant impact
on a substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)). This rule implements the Trademark Law Treaty
Implementation Act and simplifies and clarifies procedures for
registering trademarks and maintaining and renewing trademark
registrations. The rule will not significantly impact any businesses.
The principal effect of the rule is to make it easier for applicants to
obtain a filing date. No additional requirements are added to maintain
registrations. Furthermore, this rule simplifies the procedures for
registering trademarks in new sections 2.21, 2.32, 2.34, 2.45, 2.76,
2.88, 2.161, 2.167 and 2.183 of the Trademark rules. As a result, an
initial regulatory flexibility analysis was not prepared.
The rule changes are in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et
seq.). No comments were received regarding the certification under the
Regulatory Flexibility Act. The changes have been determined to be not
significant for purposes of Executive Order 12866.
Notwithstanding any other provision of law, no person is required to nor
shall a person be subject to a penalty for failure to comply with a
collection of information subject to the requirements of the PRA unless
that collection of information displays a currently valid OMB control
number.
This final rule contains collections of information requirements subject
to the PRA. This rule discusses changes in the information required from
the public to obtain registrations for trademarks and service marks, to
submit affidavits or declarations of continued use or excusable nonuse,
statements of use, requests for extensions of time to file statements of
use, and to renew registrations. This rule deletes requirements to
identify the method of use of a mark and the type of commerce in which a
mark is used. Additionally, the rule removes the requirement that
requests for recordation of documents be accompanied by originals or
true copies of these documents. The rule allows the filing of powers of
attorney that pertain to multiple registrations or applications for
registration, and sets forth certain requirements for filing such powers
of attorney. Additionally, the rule sets forth requirements for
submitting 8 affidavits of continued use or excusable nonuse combined
with 9 renewal applications, or 15 affidavits or declarations of
incontestability combined with either 8 affidavits or declarations or
with 9 renewal applications.
An information collection package supporting the changes to the above
information requirements, as discussed in this final rule, was submitted
to OMB for review and approval. This information collection has been
approved by OMB under OMB Control Number 0651-0009. The public reporting
burden for this collection of information is estimated to average as
follows: seventeen minutes for applications to obtain registrations
based on an intent to use the mark under 1(b) of the Act, if
completed using paper forms; fifteen minutes for applications to obtain
registrations based on an intent to use the mark under 1(b) of the
Act, if completed using an electronic form; twenty-three minutes for
applications to obtain registrations based on use of the mark under
1(a) of the Act, if completed using paper forms; twenty-one minutes for
applications to obtain registrations based on use of the mark under
1(a) of the Act, if completed using an electronic form; twenty minutes
for applications to obtain registrations based on an earlier-filed
foreign application under 44(d) of the Act, if completed using paper
forms; nineteen minutes for applications to obtain registrations based
on an earlier-filed foreign application under 44(d) of the Act, if
completed using an electronic form; twenty minutes for applications to
obtain registrations based on registration of a mark in a foreign
applicant's country of origin under 44(e) of the Act; thirteen
minutes for allegations of use of the mark under 2.76 and 2.88; ten
minutes for requests for extension of time to file statements of use
under 2.89; fourteen minutes for renewal applications under 9 of
the Act combined with affidavits or declarations of continued use or
excusable nonuse under 8 of the Act; fourteen minutes for combined
affidavits/declarations of use and incontestability under 8 and 15
of the Act; eleven minutes for an affidavit or declaration of continued
use or excusable nonuse under 8 of the Act; eleven minutes for a
renewal application under 9 of the Act; eleven minutes for a
declaration of incontestability under 15 of the Act; three minutes
for powers of attorney and designations of domestic representatives; and
thirty minutes for a trademark recordation form cover sheet. These time
estimates include the time for reviewing instructions, searching
existing data sources, gathering and maintaining the data needed, and
completing and reviewing the collection of information. Comments are
invited on: (1) whether the collection of information is necessary for
proper performance of the functions of the agency; (2) the accuracy of
the agency's estimate of the burden; (3) ways to enhance the quality,
utility, and clarity of the information to be collected; and (4) ways to
minimize the burden of the collection of information to respondents.
This final rule also involves information requirements associated with
amendments, oppositions, and petitions to cancel. The amendments and the
oppositions have been previously approved by OMB under control number
0651-0009. The petitions to cancel have been previously approved by OMB
under control number 0651-0040. These requirements are not being
resubmitted for review at this time. Send comments regarding this burden
estimate, or any other aspect of this data collection, including
suggestions for reducing the burden, to the Assistant Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513 (Attn: Ari
Leifman), and to the Office of Information and Regulatory Affairs,
Office of Management and Budget, 725 17th Street, N.W., Washington, D.C.
20230 (Attn: PTO Desk Officer).
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Patents.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
37 CFR Part 6
Trademarks.
For the reasons given in the preamble and under the authority contained
in 35 U.S.C. 6 and 15 U.S.C. 41, as amended, the Patent and Trademark
Office is amending parts 1, 2, 3, and 6 of title 37 as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for part 1 continues to read as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Amend 1.1 by revising paragraph (a)(2) to read as follows:
1.1 Addresses for correspondence with the Patent and Trademark Office.
(a) * * *
(2) Trademark correspondence.
(i) Send all trademark filings and correspondence, except as specified
below or unless submitting electronically, to:
Assistant Commissioner for Trademarks
2900 Crystal Drive
Arlington, Virginia 22202-3513
(ii) Send trademark-related documents for the Assignment Division to
record to:
Commissioner of Patents and Trademarks
Box Assignment
Washington, D.C. 20231
(iii) Send requests for certified or uncertified copies of trademark
applications and registrations, other than coupon orders for uncertified
copies of registrations, to:
Commissioner of Patents and Trademarks
Box 10
Washington, D.C. 20231
(iv) Send requests for coupon orders for uncertified copies of
registrations to:
Commissioner of Patents and Trademarks
Box 9
Washington, D.C. 20231
(v) An applicant may transmit an application for trademark registration
electronically, but only if the applicant uses the Patent and Trademark
Office's electronic form.
* * * * *
3. Amend 1.4 by revising the last sentence of paragraph (a)(2),
revising paragraphs (d)(1), introductory text, and (d)(1)(ii), and
adding a new paragraph (d)(1)(iii) to read as follows:
1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) * * * See particularly the rules relating to the filing, processing,
or other proceedings of national applications in subpart B, 1.31 to
1.378; of international applications in subpart C, 1.401 to 1.499;
of reexamination of patents in subpart D, 1.501 to 1.570; of
interferences in subpart E, 1.601 to 1.690; of extension of patent
term in subpart F, 1.710 to 1.785; and of trademark applications
and registrations, 2.11 to 2.186.
* * * * *
(d)(1) Each piece of correspondence, except as provided in paragraphs
(e) and (f) of this section, filed in an application, patent file,
trademark registration file, or other proceeding in the Office which
requires a person's signature, must:
(i) * * *
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission( 1.6(d)), of an original. In the event that a copy of the
original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Office may
require submission of the original; or
(iii) Where an electronically transmitted trademark filing is permitted,
the person who signs the filing must either:
(A) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic submission;
and print, sign and date in permanent ink, and maintain a paper copy of
the electronic submission; or
(B) Sign the verified statement using some other form of electronic
signature specified by the Commissioner.
* * * * *
4. Amend 1.5 by revising paragraph (c) to read as follows:
1.5 Identification of application, patent or registration.
* * * * *
(c)(1) A letter about a trademark application should identify the serial
number, the name of the applicant, and the mark.
(2) A letter about a registered trademark should identify the
registration number, the name of the registrant, and the mark.
* * * * *
5. Amend 1.6 by revising paragraph (a)(1), and adding new paragraph
(a)(4), to read as follows:
1.6 Receipt of correspondence.
(a) * * *
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile under paragraph (a)(3) of this section, or filed
electronically under paragraph (a)(4) of this section, no correspondence
is received in the Office on Saturdays, Sundays, or Federal holidays
within the District of Columbia.
* * * * *
(4) Trademark-related correspondence transmitted electronically will be
stamped with the date on which the Office receives the transmission.
* * * * *
6. Revise 1.23 to read as follows:
1.23 Method of payment.
(a) All payments of money required for Patent and Trademark Office fees,
including fees for the processing of international applications (
1.445), shall be made in U.S. dollars and in the form of a cashier's or
certified check, Treasury note, or United States Postal Service money
order. If sent in any other form, the Office may delay or cancel the
credit until collection is made. Checks and money orders must be made
payable to the Commissioner of Patents and Trademarks. Payments from
foreign countries must be payable and immediately negotiable in the
United States for the full amount of the fee required. Money sent by
mail to the Office will be at the risk of the sender, and letters
containing money should be registered with the United States Postal
Service.
(b) Payments of money required for Patent and Trademark Office fees in
an electronically filed trademark application or electronic submission
in a trademark application may also be made by credit card. Payment of a
fee by credit card must specify the amount to be charged to the credit
card and such other information as is necessary to process the charge,
and is subject to collection of the fee. The Office will not accept a
general authorization to charge fees to a credit card. If credit card
information is provided on a form or document other than a form provided
by the Office for the payment of fees by credit card, the Office will
not be liable if the credit card number becomes public knowledge.
PART 2 - RULES APPLICABLE TO TRADEMARK CASES
7. The authority citation for part 2 continues to read as follow:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
8. Revise 2.1 to read as follows:
2.1 Sections of part 1 applicable.
Sections 1.1 to 1.26 of this chapter apply to trademark cases, except
those parts that specifically refer to patents, and except 1.22 to
the extent that it is inconsistent with 2.85(e), 2.101(d),
2.111(c), 2.164, or 2.185. Other sections of part 1 incorporated by
reference in part 2 also apply to trademark cases.
9. Section 2.6 is amended by revising the introductory text, paragraphs
(a)(6) and (a)(14), and by adding paragraphs (a)(20), and (a)(21) to
read as follows:
2.6 Trademark fees.
The Patent and Trademark Office requires the following fees and charges:
(a) * * *
(6) Additional fee for filing a renewal application during the grace
period, per class . . . $100.00
* * * * *
(14) Additional fee for filing a section 8 affidavit during the grace
period, per class . . . $100.00
* * * * *
(20) For correcting a deficiency in a section 8
affidavit . . . $100.00
(21) For correcting a deficiency in a renewal
application . . . $100.00
10. Amend 2.17 by adding paragraphs (c) and (d) to read as follows:
2.17 Recognition for representation.
* * * * *
(c) To be recognized as a representative, an attorney as defined in
10.1(c) of this chapter may file a power of attorney, appear in person,
or sign a paper on behalf of an applicant or registrant that is filed
with the Office in a trademark case.
(d) A party may file a power of attorney that relates to more than one
trademark application or registration, or to all existing and future
applications and registrations of that party. A party relying on such a
power of attorney must:
(1) Include a copy of the previously filed power of attorney; or
(2) Refer to the power of attorney, specifying the filing date of the
previously filed power of attorney; the application serial number (if
known), registration number, or inter partes proceeding number for which
the original power of attorney was filed; and the name of the party who
signed the power of attorney; or, if the application serial number is
not known, submit a copy of the application or a copy of the mark, and
specify the filing date.
11. Revise 2.20 to read as follows:
2.20 Declarations in lieu of oaths.
Instead of an oath, affidavit, verification, or sworn statement, the
language of 28 U.S.C. 1746, or the following language, may be used:
The undersigned being warned that willful false statements and
the like are punishable by fine or imprisonment, or both, under 18
U.S.C. 1001, and that such willful false statements and the like may
jeopardize the validity of the application or document or any
registration resulting therefrom, declares that all statements made of
his/her own knowledge are true; and all statements made on information
and belief are believed to be true.
12. Revise 2.21 to read as follows:
2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application that contains
all of the following:
(1) The name of the applicant;
(2) A name and address for correspondence;
(3) A clear drawing of the mark;
(4) A listing of the goods or services; and
(5) The filing fee for at least one class of goods or services, required
by 2.6.
(b) If the applicant does not submit all the elements required in
paragraph (a), the Office may return the papers with an explanation of
why the filing date was denied.
(c) The applicant may correct and resubmit the application papers. If
the resubmitted papers and fee meet all the requirements of paragraph
(a) of this section, the Office will grant a filing date as of the date
the Office receives the corrected papers.
13. Remove and reserve 2.31.
14. Revise 2.32 to read as follows:
2.32 Requirements for a complete application.
(a) The application must be in English and include the following:
(1) A request for registration;
(2) The name of the applicant(s);
(3)(i) The citizenship of the applicant(s); or
(ii) If the applicant is a corporation, association, partnership or
other juristic person, the jurisdiction (usually state or nation) under
the laws of which the applicant is organized; and
(iii) If the applicant is a partnership, the names and citizenship of
the general partners;
(4) The address of the applicant;
(5) One or more bases, as required by 2.34(a);
(6) A list of the particular goods or services on or in connection with
which the applicant uses or intends to use the mark. In a United States
application filed under section 44 of the Act, the scope of the goods or
services covered by the section 44 basis may not exceed the scope of the
goods or services in the foreign application or registration; and
(7) The international class of goods or services, if known. See 6.1
of this chapter for a list of the international classes of goods and
services.
(b) The application must include a verified statement that meets the
requirements of 2.33.
(c) The application must include a drawing that meets the requirements
of 2.51 and 2.52.
(d) The application must include fee required by 2.6 for each class
of goods or services.
(e) For the requirements for a multiple class application, see 2.86.
15. Revise 2.33 to read as follows:
2.33 Verified statement.
(a) The application must include a statement that is signed and verified
(sworn to) or supported by a declaration under 2.20 by a person
properly authorized to sign on behalf of the applicant. A person who is
properly authorized to sign on behalf of the applicant is:
(1) a person with legal authority to bind the applicant; or
(2) a person with firsthand knowledge of the facts and actual or implied
authority to act on behalf of the applicant; or
(3) an attorney as defined in 10.1(c) of this chapter who has an
actual or implied written or verbal power of attorney from the applicant.
(b)(1) In an application under section 1(a) of the Act, the verified
statement must allege:
That the applicant has adopted and is using the mark shown in
the accompanying drawing; that the applicant believes it is the owner of
the mark; that the mark is in use in commerce; that to the best of the
declarant's knowledge and belief, no other person has the right to use
the mark in commerce, either in the identical form or in such near
resemblance as to be likely, when applied to the goods or services of
the other person, to cause confusion or mistake, or to deceive; that the
specimen shows the mark as used on or in connection with the goods or
services; and that the facts set forth in the application are true.
(2) In an application under section 1(b) or section 44 of the Act, the
verified statement must allege:
That the applicant has a bona fide intention to use the mark
shown in the accompanying drawing in commerce on or in connection with
the specified goods or services; that the applicant believes it is
entitled to use the mark; that to the best of the declarant's knowledge
and belief, no other person has the right to use the mark in commerce,
either in the identical form or in such near resemblance as to be
likely, when applied to the goods or services of the other person, to
cause confusion or mistake, or to deceive; and that the facts set forth
in the application are true.
(c) If the verified statement is not filed within a reasonable time
after it is signed, the Office may require the applicant to submit a
substitute verification or declaration under 2.20 of the applicant's
continued use or bona fide intention to use the mark in commerce.
(d) Where an electronically transmitted filing is permitted, the person
who signs the verified statement must either:
(1) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic submission;
and print, sign and date in permanent ink, and maintain a paper copy of
the electronic submission; or
(2) Sign the verified statement using some other form of electronic
signature specified by the Commissioner.
16. Add 2.34 to read as follows:
2.34 Bases for filing.
(a) The application must include one or more of the following four
filing bases:
(1) Use in commerce under section 1(a) of the Act. The requirements for
an application based on section 1(a) of the Act are:
(i) The trademark owner's verified statement that the mark is in use in
commerce on or in connection with the goods or services listed in the
application. If the verification is not filed with the initial
application, the verified statement must allege that the mark was in use
in commerce on or in connection with the goods or services listed in the
application as of the application filing date;
(ii) The date of the applicant's first use of the mark anywhere on or in
connection with the goods or services;
(iii) The date of the applicant's first use of the mark in commerce as a
trademark or service mark; and
(iv) One specimen showing how the applicant actually uses the mark in
commerce.
(v) An application may list more than one item of goods, or more than
one service, provided the applicant has used the mark on or in
connection with all the specified goods or services. The dates of use
required by paragraphs (a)(1)(ii) and (iii) of this section may be for
only one of the items specified.
(2) Intent-to-use under section 1(b) of the Act.
(i) In an application under section 1(b) of the Act, the trademark owner
must verify that it has a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the
application. If the verification is not filed with the initial
application, the verified statement must allege that the applicant had a
bona fide intention to use the mark in commerce as of the filing date of
the application.
(ii) The application may list more than one item of goods, or more than
one service, provided the applicant has a bona fide intention to use the
mark in commerce on or in connection with all the specified goods or
services.
(3) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application
under section 44(e) of the Act are:
(i) The trademark owner's verified statement that it has a bona fide
intention to use the mark in commerce on or in connection with the goods
or services listed in the application. If the verification is not filed
with the initial application, the verified statement must allege that
the applicant had a bona fide intention to use the mark in commerce as
of the filing date of the application.
(ii) A certification or certified copy of a registration in the
applicant's country of origin showing that the mark has been registered
in that country, and that the registration is in full force and effect.
The certification or certified copy must show the name of the owner, the
mark, and the goods or services for which the mark is registered. If the
certification or certified copy is not in the English language, the
applicant must submit a translation.
(iii) If the record indicates that the foreign registration will expire
before the United States registration will issue, the applicant must
submit a certification or certified copy from the country of origin to
establish that the registration has been renewed and will be in force at
the time the United States registration will issue. If the certification
or certified copy is not in the English language, the applicant must
submit a translation.
(iv) The application may list more than one item of goods, or more than
one service, provided the applicant has a bona fide intention to use the
mark in commerce on or in connection with all the specified goods or
services.
(4) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application
under section 44(d) of the Act are:
(i) A claim of priority, filed within six months of the filing date of
the foreign application. Before publication or registration on the
Supplemental Register, the applicant must either:
(A) Specify the filing date and country of the first regularly filed
foreign application; or
(B) State that the application is based upon a subsequent regularly
filed application in the same foreign country, and that any prior-filed
application has been withdrawn, abandoned or otherwise disposed of,
without having been laid open to public inspection and without having
any rights outstanding, and has not served as a basis for claiming a
right of priority.
(ii) Include the trademark owner's verified statement that it has a bona
fide intention to use the mark in commerce on or in connection with the
goods or services listed in the application. If the verification is not
filed with the initial application, the verified statement must allege
that the applicant had a bona fide intention to use the mark in commerce
as of the filing date of the application.
(iii) Before the application can be approved for publication, or for
registration on the Supplemental Register, the applicant must establish
a basis under section 1(a), section 1(b) or section 44(e) of the Act.
(iv) The application may list more than one item of goods, or more than
one service, provided the applicant has a bona fide intention to use the
mark in commerce on or in connection with all the specified goods or
services.
(b)(1) The applicant may claim more than one basis, provided that the
applicant satisfies all requirements for the bases claimed. However, the
applicant may not claim both sections 1(a) and 1(b) for the identical
goods or services in the same application.
(2) If the applicant claims more than one basis, the applicant must list
each basis, followed by the goods or services to which that basis
applies. If some or all of the goods or services are covered by more
than one basis, this must be stated.
(c) The word "commerce" means commerce that Congress may lawfully
regulate, as specified in section 45 of the Act.
17. Remove 2.37.
18. Redesignate 2.35 as 2.37.
19. Add new 2.35, to read as follows:
2.35 Adding, deleting, or substituting bases.
(a) Before publication, the applicant may add or substitute a basis, if
the applicant meets all requirements for the new basis, as stated in
2.34. The applicant may delete a basis at any time.
(b) An applicant may amend an application that is not the subject of an
inter partes proceeding before the Trademark Trial and Appeal Board to
add or substitute a basis after the mark has been published for
opposition, but only with the express permission of the Commissioner,
after consideration on petition. Republication will be required. The
amendment of an application that is the subject of an inter partes
proceeding before the Board is governed by 2.133(a).
(c) When the applicant substitutes one basis for another, the Office
will presume that there was a continuing valid basis, unless there is
contradictory evidence in the record, and the application will retain
the original filing date, including a priority filing date under section
44(d), if appropriate.
(d) If an applicant properly claims a section 44(d) basis in addition to
another basis, the applicant will retain the priority filing date under
section 44(d) no matter which basis the applicant perfects.
(e) The applicant may add or substitute a section 44(d) basis only
within the six-month priority period following the filing date of the
foreign application.
(f) When the applicant adds or substitutes a basis, the applicant must
list each basis, followed by the goods or services to which that basis
applies.
(g) When the applicant deletes a basis, the applicant must also delete
any goods or services covered solely by the deleted basis.
(h) Once an applicant claims a section 1(b) basis as to any or all of
the goods or services, the applicant may not amend the application to
seek registration under section 1(a) of the Act for those goods or
services unless the applicant files an allegation of use under section
1(c) or section 1(d) of the Act.
20. Amend 2.38 by revising paragraph (a) to read as follows:
2.38 Use by predecessor or by related companies.
(a) If the first use of the mark was by a predecessor in title or by a
related company (sections 5 and 45 of the Act), and the use inures to
the benefit of the applicant, the dates of first use (
2.34(a)(1)(ii) and (iii)) may be asserted with a statement that first
use was by the predecessor in title or by the related company, as
appropriate.
* * * * *
21. Remove and reserve 2.39.
22. Revise 2.45 to read as follows:
2.45 Certification mark.
(a) In an application to register a certification mark under section
1(a) of the Act, the application shall include all applicable elements
required by the preceding sections for trademarks. In addition, the
application must: specify the conditions under which the certification
mark is used; allege that the applicant exercises legitimate control
over the use of the mark; allege that the applicant is not engaged in
the production or marketing of the goods or services to which the mark
is applied; and include a copy of the standards that determine whether
others may use the certification mark on their goods and/or in
connection with their services.
(b) In an application to register a certification mark under section
1(b) or section 44 of the Act, the application shall include all
applicable elements required by the preceding sections for trademarks.
In addition, the application must: specify the conditions under which
the certification mark is intended to be used; allege that the applicant
intends to exercise legitimate control over the use of the mark; and
allege that the applicant will not engage in the production or marketing
of the goods or services to which the mark is applied. When the
applicant files an amendment to allege use under section 1(c) of the
Act, or a statement of use under section 1(d) of the Act, the applicant
must submit a copy of the standards that determine whether others may
use the certification mark on their goods and/or in connection with
their services.
23. In 2.51, remove paragraphs (c), (d) and (e).
24. Revise 2.52 to read as follows:
2.52 Types of drawings and format for drawings.
(a) A drawing depicts the mark sought to be registered. The drawing must
show only one mark. The applicant must include a clear drawing of the
mark when the application is filed. There are two types of drawings:
(1) Typed drawing. The drawing may be typed if the mark consists only of
words, letters, numbers, common forms of punctuation, or any combination
of these elements.In a typed drawing, every word or letter must be typed
in uppercase type. If the applicant submits a typed drawing, the
application is not limited to the mark depicted in any special form or
lettering.
(2) Special form drawing. A special form drawing is required if the mark
has a two or three-dimensional design; or color; or words, letters, or
numbers in a particular style of lettering; or unusual forms of
punctuation.
(i) Special form drawings must be made with a pen or by a process that
will provide high definition when copied. A photolithographic, printer's
proof copy, or other high quality reproduction of the mark may be used.
Every line and letter, including lines used for shading, must be black.
All lines must be clean, sharp, and solid, and must not be fine or
crowded. Gray tones or tints may not be used for surface shading or any
other purpose.
(ii) If necessary to adequately depict the commercial impression of the
mark, the applicant may be required to submit a drawing that shows the
placement of the mark by surrounding the mark with a proportionately
accurate broken-line representation of the particular goods, packaging,
or advertising on which the mark appears. The applicant must also use
broken lines to show any other matter not claimed as part of the mark.
For any drawing using broken lines to indicate placement of the mark, or
matter not claimed as part of the mark, the applicant must include in
the body of the application a written description of the mark and
explain the purpose of the broken lines.
(iii) If the mark has three-dimensional features, the applicant must
submit a drawing that depicts a single rendition of the mark, and the
applicant must include a description of the mark indicating that the
mark is three-dimensional.
(iv) If the mark has motion, the applicant may submit a drawing that
depicts a single point in the movement, or the applicant may submit a
square drawing that contains up to five freeze frames showing various
points in the movement, whichever best depicts the commercial impression
of the mark. The applicant must also submit a written description of the
mark.
(v) If the mark has color, the applicant may claim that all or part of
the mark consists of one or more colors. To claim color, the applicant
must submit a statement explaining where the color or colors appear in
the mark and the nature of the color(s).
(vi) If a drawing cannot adequately depict all significant features of
the mark, the applicant must also submit a written description of the
mark.
(3) Sound, scent, and non-visual marks. The applicant is not required to
submit a drawing if the applicant's mark consists only of a sound, a
scent, or other completely non-visual matter. For these types of marks,
the applicant must submit a detailed written description of the mark.
(b) Recommended Format for special form drawings
(1) Type of paper and ink. The drawing should be on a piece of
non-shiny, white paper that is separate from the application. Black ink
should be used to depict the mark.
(2) Size of paper and size of mark. The drawing should be on paper that
is 8 to 8 1/2 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches
(27.9 to 29.7 cm.) long. One of the shorter sides of the sheet should be
regarded as its top edge. The drawing should be between 2.5 inches (6.1
cm.) and 4 inches (10.3 cm.) high and/or wide. There should be at least
a 1 inch (2.5 cm.) margin between the drawing and the edges of the
paper, and at least a 1 inch (2.5 cm.) margin between the drawing and
the heading.
(3) Heading. Across the top of the drawing, beginning one inch (2.5 cm.)
from the top edge, the applicant should type the following: applicant's
name; applicant's address; the goods or services recited in the
application, or a typical item of the goods or services if numerous
items are recited in the application; the date of first use of the mark
and first use of the mark in commerce in an application under section
1(a) of the Act; the priority filing date of the relevant foreign
application in an application claiming the benefit of a prior foreign
application under section 44(d) of the Act. If the information in the
heading is lengthy, the heading may continue onto a second page, but the
mark should be depicted on the first page.
(c) Drawings in electronically transmitted applications. For an
electronically transmitted application, if the drawing is in special
form, the applicant must attach a digitized image of the mark to the
electronic submission.
25. Revise 2.56 to read as follows:
2.56 Specimens.
(a) An application under section 1(a) of the Act, an amendment to allege
use under 2.76, and a statement of use under 2.88 must each
include one specimen showing the mark as used on or in connection with
the goods, or in the sale or advertising of the services in commerce.
(b)(1) A trademark specimen is a label, tag, or container for the goods,
or a display associated with the goods. The Office may accept another
document related to the goods or the sale of the goods when it is not
possible to place the mark on the goods or packaging for the goods.
(2) A service mark specimen must show the mark as actually used in the
sale or advertising of the services.
(3) A collective trademark or collective service mark specimen must show
how a member uses the mark on the member's goods or in the sale or
advertising of the member's services.
(4) A collective membership mark specimen must show use by members to
indicate membership in the collective organization.
(5) A certification mark specimen must show how a person other than the
owner uses the mark to certify regional or other origin, material, mode
of manufacture, quality, accuracy, or other characteristics of that
person's goods or services; or that members of a union or other
organization performed the work or labor on the goods or services.
(c) A photocopy or other reproduction of a specimen of the mark as
actually used on or in connection with the goods, or in the sale or
advertising of the services, is acceptable. However, a photocopy of the
drawing required by 2.51 is not a proper specimen.
(d)(1) The specimen should be flat, and not larger than 8 1/2 inches
(21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen of this
size is not available, the applicant may substitute a suitable
photograph or other facsimile.
(2) If the applicant files a specimen exceeding these size requirements
(a "bulky specimen"), the Office will create a facsimile of the specimen
that meets the requirements of the rule (i.e., is flat and no larger
than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and
put it in the file wrapper.
(3) In the absence of non-bulky alternatives, the Office may accept an
audio or video cassette tape recording, CD-ROM, or other appropriate
medium.
(4) For an electronically transmitted application, or other electronic
submission, the specimen must be submitted as a digitized image.
26. Remove and reserve 2.57.
27. Remove and reserve 2.58.
28. Revise 2.59 to read as follows:
2.59 Filing substitute specimen(s).
(a) In an application under section 1(a) of the Act, the applicant may
submit substitute specimens of the mark as used on or in connection with
the goods, or in the sale or advertising of the services. The applicant
must verify by an affidavit or declaration under 2.20 that the
substitute specimens were in use in commerce at least as early as the
filing date of the application. Verification is not required if the
specimen is a duplicate or facsimile of a specimen already of record in
the application.
(b) In an application under section 1(b) of the Act, after filing either
an amendment to allege use under 2.76 or a statement of use under
2.88, the applicant may submit substitute specimens of the mark as used
on or in connection with the goods, or in the sale or advertising of the
services. If the applicant submits substitute specimen(s), the applicant
must:
(1) For an amendment to allege use under 2.76, verify by affidavit or
declaration under 2.20 that the applicant used the substitute
specimen(s) in commerce prior to filing the amendment to allege use.
(2) For a statement of use under 2.88, verify by affidavit or
declaration under 2.20 that the applicant used the substitute
specimen(s) in commerce either prior to filing the statement of use or
prior to the expiration of the deadline for filing the statement of use.
29. Revise 2.66 to read as follows:
2.66 Revival of abandoned applications.
(a) The applicant may file a petition to revive an application abandoned
because the applicant did not timely respond to an Office action or
notice of allowance, if the delay was unintentional. The applicant must
file the petition:
(1) Within two months of the mailing date of the notice of abandonment;
or (2) Within two months of actual knowledge of the abandonment, if the
applicant did not receive the notice of abandonment, and the applicant
was diligent in checking the status of the application. To be diligent,
the applicant must check the status of the application within one year
of the last filing or receipt of a notice from the Office for which
further action by the Office is expected.
(b) The requirements for filing a petition to revive an application
abandoned because the applicant did not timely respond to an Office
action are:
(1) The petition fee required by 2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the response on or before the due date
was unintentional; and
(3) Unless the applicant alleges that it did not receive the Office
action, the proposed response.
(c) The requirements for filing a petition to revive an application
abandoned because the applicant did not timely respond to a notice of
allowance are:
(1) The petition fee required by 2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the statement of use (or request for
extension of time to file a statement of use) on or before the due date
was unintentional;
(3) Unless the applicant alleges that it did not receive the notice of
allowance and requests cancellation of the notice of allowance, the
required fees for the number of requests for extensions of time to file
a statement of use that the applicant should have filed under 2.89 if
the application had never been abandoned;
(4) Unless the applicant alleges that it did not receive the notice of
allowance and requests cancellation of the notice of allowance, either a
statement of use under 2.88 or a request for an extension of time to
file a statement of use under 2.89; and
(5) Unless a statement of use is filed with or before the petition, or
the applicant alleges that it did not receive the notice of allowance
and requests cancellation of the notice of allowance, the applicant must
file any further requests for extensions of time to file a statement of
use under 2.89 that become due while the petition is pending, or file
a statement of use under 2.88.
(d) In an application under section 1(b) of the Act, the Commissioner
will not grant the petition if this would permit the filing of a
statement of use more than 36 months after the mailing date of the
notice of allowance under section 13(b)(2) of the Act.
(e) The Commissioner will grant the petition to revive if the applicant
complies with the requirements listed above and establishes that the
delay in responding was unintentional.
(f) If the Commissioner denies a petition, the applicant may request
reconsideration, if the applicant:
(1) Files the request within two months of the mailing date of the
decision denying the petition; and
(2) Pays a second petition fee under 2.6.
30. Revise 2.71 to read as follows:
2.71 Amendments to correct informalities.
The applicant may amend the application during the course of
examination, when required by the Office or for other reasons.
(a) The applicant may amend the application to clarify or limit, but not
to broaden, the identification of goods and/or services.
(b)(1) If the declaration or verification of an application under
2.33 is unsigned or signed by the wrong party, the applicant may submit
a substitute verification or declaration under 2.20.
(2) If the declaration or verification of a statement of use under
2.88, or a request for extension of time to file a statement of use
under 2.89, is unsigned or signed by the wrong party, the applicant
must submit a substitute verification before the expiration of the
statutory deadline for filing the statement of use.
(c) The applicant may amend the dates of use, provided that the
applicant supports the amendment with an affidavit or declaration under
2.20, except that the following amendments are not permitted:
(1) In an application under section 1(a) of the Act, the applicant may
not amend the application to specify a date of use that is subsequent to
the filing date of the application;
(2) In an application under section 1(b) of the Act, after filing a
statement of use under 2.88, the applicant may not amend the
statement of use to specify a date of use that is subsequent to the
expiration of the deadline for filing the statement of use.
(d) The applicant may amend the application to correct the name of the
applicant, if there is a mistake in the manner in which the name of the
applicant is set out in the application. The amendment must be supported
by an affidavit or declaration under 2.20, signed by the applicant.
However, the application cannot be amended to set forth a different
entity as the applicant. An application filed in the name of an entity
that did not own the mark as of the filing date of the application is
void.
31. Revise 2.72 to read as follows:
2.72 Amendments to description or drawing of the mark.
(a) In an application based on use in commerce under section 1(a) of the
Act, the applicant may amend the description or drawing of the mark only
if:
(1) The specimens originally filed, or substitute specimens filed under
2.59(a), support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
(b) In an application based on a bona fide intention to use a mark in
commerce under section 1(b) of the Act, the applicant may amend the
description or drawing of the mark only if:
(1) The specimens filed with an amendment to allege use or statement of
use, or substitute specimens filed under 2.59(b), support the
proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
(c) In an application based on a claim of priority under section 44(d)
of the Act, or on a mark duly registered in the country of origin of the
foreign applicant under section 44(e) of the Act, the applicant may
amend the description or drawing of the mark only if:
(1) The description or drawing of the mark in the foreign registration
certificate supports the amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
32. Amend 2.76 by revising paragraphs (b), (e)(2), and (e)(3), and
adding paragraphs (i) and (j) to read as follows:
2.76 Amendment to allege use.
* * * * *
(b) A complete amendment to allege use must include:
(1) A statement that is signed and verified (sworn to) or supported by a
declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant (see 2.33(a)(2)) that:
(i) The applicant believes it is the owner of the mark; and
(ii) The mark is in use in commerce, specifying the date of the
applicant's first use of the mark and first use of the mark in commerce,
and those goods or services specified in the application on or in
connection with which the applicant uses the mark in commerce.
(2) One specimen of the mark as actually used in commerce. See 2.56
for the requirements for specimens; and
(3) The fee per class required by 2.6.
* * * * *
(e) * * *
(2) One specimen or facsimile of the mark as used in commerce; and
(3) A statement that is signed and verified (sworn to) or supported by a
declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant that the mark is in use in commerce.
* * * * *
(i) If the applicant does not file the amendment to allege use within a
reasonable time after it is signed, the Office may require a substitute
verification or declaration under 2.20 stating that the mark is still
in use in commerce.
(j) For the requirements for a multiple class application, see 2.86.
33. Revise 2.86 to read as follows:
2.86 Application may include multiple classes.
(a) In a single application, an applicant may apply to register the same
mark for goods and/or services in multiple classes. The applicant must:
(1) Specifically identify the goods or services in each class;
(2) Submit an application filing fee for each class; and
(3) Include either dates of use (see 2.34(a)(1)(ii) and (iii)) and
one specimen for each class, or a statement of a bona fide intention to
use the mark in commerce on or in connection with all the goods or
services specified in each class. The applicant may not claim both use
in commerce and a bona fide intention to use the mark in commerce for
the identical goods or services in one application.
(b) An amendment to allege use under 2.76 or a statement of use under
2.88 must include, for each class, the required fee, dates of use,
and one specimen. The applicant may not file the amendment to allege use
or statement of use until the applicant has used the mark on all the
goods or services, unless the applicant files a request to divide. See
2.87 for information regarding requests to divide.
(c) The Office will issue a single certificate of registration for the
mark, unless the applicant files a request to divide. See 2.87 for
information regarding requests to divide.
34. Amend 2.88 by revising paragraphs (b) and (e) and by adding
paragraphs (k) and (l) to read as follows:
2.88 Filing statement of use after notice of allowance.
* * * * *
(b) A complete statement of use must include:
(1) A statement that is signed and verified (sworn to) or supported by a
declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant (see 2.33(a)(2)) that:
(i) The applicant believes it is the owner of the mark; and
(ii) The mark is in use in commerce, specifying the date of the
applicant's first use of the mark and first use of the mark in commerce,
and those goods or services specified in the notice of allowance on or
in connection with which the applicant uses the mark in commerce;
(2) One specimen of the mark as actually used in commerce. See 2.56
for the requirements for specimens; and
(3) The fee per class required by 2.6.
* * * * *
(e) The Office will review a timely filed statement of use to determine
whether it meets the following minimum requirements:
(1) The fee for at least a single class, required by 2.6;
(2) One specimen of the mark as used in commerce;
(3) A statement that is signed and verified (sworn to) or supported by a
declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant that the mark is in use in commerce. If the
verification or declaration is unsigned or signed by the wrong party,
the applicant must submit a substitute verification on or before the
statutory deadline for filing the statement of use.
* * * * *
(k) If the statement of use is not filed within a reasonable time after
the date it is signed, the Office may require a substitute verification
or declaration under 2.20 stating that the mark is still in use in
commerce.
(l) For the requirements for a multiple class application, see 2.86.
35. Amend 2.89 by revising paragraphs (a), (b), and (d), amending the
fifth sentence of paragraph (g), and by adding paragraph (h) to read as
follows:
2.89 Extensions of time for filing a statement of use.
(a) The applicant may request a six-month extension of time to file the
statement of use required by 2.88. The extension request must be
filed within six months of the mailing date of the notice of allowance
under section 13(b)(2) of the Act and must include the following:
(1) A written request for an extension of time to file the statement of
use;
(2) The fee per class required by 2.6; and
(3) A statement that is signed and verified (sworn to) or supported by a
declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant (see 2.33(a)(2)) that the applicant still has
a bona fide intention to use the mark in commerce, specifying the
relevant goods or services. If the verification is unsigned or signed by
the wrong party, the applicant must submit a substitute verification
within six months of the mailing date of the notice of allowance.
(b) Before the expiration of the previously granted extension of time,
the applicant may request further six-month extensions of time to file
the statement of use by submitting the following:
(1) A written request for an extension of time to file the statement of
use;
(2) The fee per class required by 2.6;
(3) A statement that is signed and verified (sworn to) or supported by a
declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant (see 2.33(a)(2)) that the applicant still has
a bona fide intention to use the mark in commerce, specifying the
relevant goods or services. If the verification is unsigned or signed by
the wrong party, the applicant must submit a substitute verification
before the expiration of the previously granted extension; and
(4) A showing of good cause, as specified in paragraph (d) of this
section.
* * * * *
(d) The showing of good cause must include a statement of the
applicant's ongoing efforts to make use of the mark in commerce on or in
connection with each of the relevant goods or services. Those efforts
may include product or service research or development, market research,
manufacturing activities, promotional activities, steps to acquire
distributors, steps to obtain governmental approval, or other similar
activities. In the alternative, the applicant must submit a satisfactory
explanation for the failure to make efforts to use the mark in commerce.
* * * * *
(g) * * * A petition from the denial of a request for an extension of
time to file a statement of use shall be filed within two months of the
mailing date of the denial of the request. If the petition is granted,
the term of the requested six-month extension that was the subject of
the petition will run from the date of the expiration of the previously
existing six-month period for filing a statement of use.
(h) If the extension request is not filed within a reasonable time after
it is signed, the Office may require a substitute verification or
declaration under 2.20 stating that the applicant still has a bona
fide intention to use the mark in commerce.
36. Amend 2.101 by revising paragraph (d)(1) to read as follows:
2.101 Filing an opposition.
* * * * *
(d)(1) The opposition must be accompanied by the required fee for each
party joined as opposer for each class in the application for which
registration is opposed (see 2.6). If no fee, or a fee insufficient
to pay for one person to oppose the registration of a mark in at least
one class, is submitted within thirty days after publication of the mark
to be opposed or within an extension of time for filing an opposition,
the opposition will not be refused if the required fee(s) is submitted
to the Patent and Trademark Office within the time limit set in the
notification of this defect by the Office.
* * * * *
37. Amend 2.111 by revising paragraph (c)(1) to read as follows:
2.111 Filing petition for cancellation.
* * * * *
(c)(1) The petition must be accompanied by the required fee for each
class in the registration for which cancellation is sought (see 2.6).
If the fee submitted is insufficient for a cancellation against all of
the classes in the registration, and the particular class or classes
against which the cancellation is filed are not specified, the Office
will issue a written notice allowing petitioner a set time in which to
submit the required fees(s) (provided that the five-year period, if
applicable, has not expired) or to specify the class or classes sought
to be cancelled. If the required fee(s) is not submitted, or the
specification made, within the time set in the notice, the cancellation
will be presumed to be against the class or classes in ascending order,
beginning with the lowest numbered class, and including the number of
classes in the registration for which the fees submitted are sufficient
to pay the fee due for each class.
* * * * *
38. Amend 2.146 by revising paragraph (d) and by adding paragraphs
(i) and (j) to read as follows:
2.146 Petitions to the Commissioner.
* * * * *
(d) A petition must be filed within two months of the mailing date of
the action from which relief is requested, unless a different deadline
is specified elsewhere in this chapter.
* * * * *
(i) Where a petitioner seeks to reactivate an application or
registration that was abandoned or cancelled because papers were lost or
mishandled, the Commissioner may deny the petition if the petitioner was
not diligent in checking the status of the application or registration.
To be considered diligent, the applicant must check the status of the
application or registration within one year of the last filing or
receipt of a notice from the Office for which further action by the
Office is expected.
(j) If the Commissioner denies a petition, the petitioner may request
reconsideration, if the petitioner:
(1) Files the request within two months of the mailing date of the
decision denying the petition; and
(2) Pays a second petition fee under 2.6.
39. Revise 2.151 to read as follows:
2.151 Certificate.
When the Office determines that a mark is registrable, a certificate
will be issued stating that the applicant is entitled to registration on
the Principal Register or on the Supplemental Register. The certificate
will state the date on which the application for registration was filed
in the Office, the act under which the mark is registered, the date of
issue, and the number of the registration. A reproduction of the mark
and pertinent data from the application will be sent with the
certificate. A notice of the requirements of section 8 of the Act will
accompany the certificate.
40. Revise 2.155 to read as follows:
2.155 Notice of publication.
The Office will send the registrant a notice of publication of the mark
and of the requirement for filing the affidavit or declaration required
by section 8 of the Act. 41. Revise 2.156 to read as follows:
2.156 Not subject to opposition; subject to cancellation.
The published mark is not subject to opposition, but is subject to
petitions to cancel as specified in 2.111 and to cancellation for
failure to file the affidavit or declaration required by section 8 of
the Act.
42. Add 2.160 to read as follows:
2.160 Affidavit or declaration of continued use or excusable nonuse
required to avoid cancellation of registration.
(a) During the following time periods, the owner of the registration
must file an affidavit or declaration of continued use or excusable
nonuse, or the registration will be cancelled:
(1)(i) For registrations issued under the Trademark Act of 1946, on or
after the fifth anniversary and no later than the sixth anniversary
after the date of registration; or
(ii) For registrations issued under prior Acts, on or after the fifth
anniversary and no later than the sixth anniversary after the date of
publication under section 12(c) of the Act; and
(2) For all registrations, within the year before the end of every
ten-year period after the date of registration.
(3) The affidavit or declaration may be filed within a grace period of
six months after the end of the deadline set forth in paragraphs (a)(1)
and (a)(2) of this section, with payment of the grace period surcharge
required by section 8(c)(1) of the Act and 2.6.
(b) For the requirements for the affidavit or declaration, see 2.161.
43. Revise 2.161 to read as follows:
2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
A complete affidavit or declaration under section 8 of the Act must:
(a) Be filed by the owner within the period set forth in 2.160(a);
(b) Include a statement that is signed and verified (sworn to) or
supported by a declaration under 2.20 by a person properly authorized
to sign on behalf of the owner, attesting to the continued use or
excusable nonuse of the mark within the period set forth in section 8 of
the Act. The verified statement must be executed on or after the
beginning of the filing period specified in 2.160(a). A person who is
properly authorized to sign on behalf of the owner is:
(1) a person with legal authority to bind the owner; or
(2) a person with firsthand knowledge of the facts and actual or implied
authority to act on behalf of the owner; or
(3) an attorney as defined in 10.1(c) of this chapter who has an
actual or implied written or verbal power of attorney from the owner.
(c) Include the registration number;
(d)(1) Include the fee required by 2.6 for each class of goods or
services that the affidavit or declaration covers;
(2) If the affidavit or declaration is filed during the grace period
under section 8(c)(1) of the Act, include the late fee per class
required by 2.6;
(3) If at least one fee is submitted for a multi-class registration, but
the class(es) to which the fee(s) should be applied are not specified,
the Office will issue a notice requiring either the submission of
additional fee(s) or an indication of the class(es) to which the
original fee(s) should be applied. Additional fee(s) may be submitted if
the requirements of 2.164 are met. If the required fee(s) are not
submitted and the class(es) to which the original fee(s) should be
applied are not specified, the Office will presume that the fee(s) cover
the classes in ascending order, beginning with the lowest numbered class;
(e)(1) Specify the goods or services for which the mark is in use in
commerce, and/or the goods or services for which excusable nonuse is
claimed under 2.161(f)(2);
(2) If the affidavit or declaration covers less than all the goods or
services, or less than all the classes in the registration, specify the
goods or services being deleted from the registration;
(f)(1) State that the registered mark is in use in commerce on or in
connection with the goods or services in the registration; or
(2) If the registered mark is not in use in commerce on or in connection
with all the goods or services in the registration, set forth the date
when use of the mark in commerce stopped and the approximate date when
use is expected to resume; and recite facts to show that nonuse as to
those goods or services is due to special circumstances that excuse the
nonuse and is not due to an intention to abandon the mark;
(g) Include a specimen showing current use of the mark for each class of
goods or services, unless excusable nonuse is claimed under
2.161(f)(2). The specimen must:
(1) Show the mark as actually used on or in connection with the goods or
in the sale or advertising of the services. A photocopy or other
reproduction of the specimen showing the mark as actually used is
acceptable. However, a photocopy that merely reproduces the registration
certificate is not a proper specimen;
(2) Be flat and no larger than 8 1/2 inches (21.6 cm.) wide by 11.69
inches (29.7 cm.) long. If a specimen exceeds these size requirements (a
"bulky specimen"), the Office will create a facsimile of the specimen
that meets the requirements of the rule (i.e., is flat and no larger
than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and
put it in the file wrapper;
(h) If the registrant is not domiciled in the United States, the
registrant must list the name and address of a United States resident
upon whom notices or process in proceedings affecting the registration
may be served.
44. Revise 2.162 to read as follows:
2.162 Notice to registrant.
When a certificate of registration is originally issued, the Office
includes a notice of the requirement for filing the affidavit or
declaration of use or excusable nonuse under section 8 of the Act.
However the affidavit or declaration must be filed within the time
period required by section 8 of the Act even if this notice is not
received.
45. Revise 2.163 to read as follows:
2.163 Acknowledgment of receipt of affidavit or declaration.
The Office will issue a notice as to whether an affidavit or declaration
is acceptable, or the reasons for refusal.
(a) If the owner of the registration filed the affidavit or declaration
within the time periods set forth in section 8 of the Act, deficiencies
may be corrected if the requirements of 2.164 are met.
(b) A response to the refusal must be filed within six months of the
mailing date of the Office action, or before the end of the filing
period set forth in section 8(a) or section 8(b) of the Act, whichever
is later. If no response is filed within this time period, the
registration will be cancelled.
46. Revise 2.164 to read as follows:
2.164 Correcting deficiencies in affidavit or declaration.
(a) If the owner of the registration files an affidavit or declaration
within the time periods set forth in section 8 of the Act, deficiencies
may be corrected, as follows:
(1) Correcting deficiencies in affidavits or declarations timely filed
within the periods set forth in sections 8(a) and 8(b) of the Act. If
the owner timely files the affidavit or declaration within the relevant
filing period set forth in section 8(a) or section 8(b) of the Act,
deficiencies may be corrected before the end of this filing period
without paying a deficiency surcharge. Deficiencies may be corrected
after the end of this filing period with payment of the deficiency
surcharge required by section 8(c)(2) of the Act and 2.6.
(2) Correcting deficiencies in affidavits or declarations filed during
the grace period. If the affidavit or declaration is filed during the
six-month grace period provided by section 8(c)(1) of the Act,
deficiencies may be corrected before the expiration of the grace period
without paying a deficiency surcharge. Deficiencies may be corrected
after the expiration of the grace period with payment of the deficiency
surcharge required by section 8(c)(2) of the Act and 2.6.
(b) If the affidavit or declaration is not filed within the time periods
set forth in section 8 of the Act, or if it is filed within that period
by someone other than the owner, the registration will be cancelled.
These deficiencies cannot be cured.
47. Revise 2.165 to read as follows:
2.165 Petition to Commissioner to review refusal.
(a) A response to the examiner's initial refusal to accept an affidavit
or declaration is required before filing a petition to the Commissioner,
unless the examiner directs otherwise. See 2.163(b) for the deadline
for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, a petition to the Commissioner to review the action may be
filed. The petition must be filed within six months of the mailing date
of the action maintaining the refusal, or the Office will cancel the
registration and issue a notice of the cancellation.
(c) A decision by the Commissioner is necessary before filing an appeal
or commencing a civil action in any court.
48. Revise 2.166 to read as follows:
2.166 Affidavit of continued use or excusable nonuse combined with
renewal application.
An affidavit or declaration under section 8 of the Act and a renewal
application under section 9 of the Act may be combined into a single
document, provided that the document meets the requirements of both
sections 8 and 9 of the Act.
49. Amend 2.167 by revising paragraph (c) to read as follows:
2.167 Affidavit or declaration under section 15.
* * * * *
(c) Recite the goods or services stated in the registration on or in
connection with which the mark has been in continuous use in commerce
for a period of five years after the date of registration or date of
publication under section 12(c) of the Act, and is still in use in
commerce;
* * * * *
50. Revise 2.168 to read as follows:
2.168 Affidavit or declaration under section 15 combined with
affidavit or declaration under section 8, or with renewal application.
(a) The affidavit or declaration filed under section 15 of the Act may
also be used as the affidavit or declaration required by section 8, if
the affidavit or declaration meets the requirements of both sections 8
and 15.
(b) The affidavit or declaration filed under section 15 of the Act may
be combined with an application for renewal of a registration under
section 9 of the Act, if the requirements of both sections 9 and 15 are
met.
51. Amend 2.173 by revising the heading and paragraph (a) to read as
follows:
2.173 Amendment of registration.
(a) The registrant may apply to amend the registration or to disclaim
part of the mark in the registration. A written request specifying the
amendment or disclaimer must be submitted. The request must be signed by
the registrant and verified or supported by a declaration under 2.20,
and accompanied by the required fee. If the amendment involves a change
in the mark, a new specimen showing the mark as used on or in connection
with the goods or services, and a new drawing of the amended mark, must
be submitted. The certificate of registration or, if the certificate is
lost or destroyed, a certified copy of the certificate, must also be
submitted. The registration as amended must still contain registrable
matter, and the mark as amended must be registrable as a whole. An
amendment or disclaimer must not materially alter the character of the
mark.
* * * * *
52. Amend 2.181 by revising paragraph (a) to read as follows:
2.181 Term of original registrations and renewals.
(a)(1) Subject to the provisions of section 8 of the Act requiring an
affidavit or declaration of continued use or excusable nonuse,
registrations issued or renewed prior to November 16, 1989, whether on
the Principal Register or on the Supplemental Register, remain in force
for twenty years from their date of issue or the date of renewal, and
may be further renewed for periods of ten years, unless previously
cancelled or surrendered.
(2) Subject to the provisions of section 8 of the Act requiring an
affidavit or declaration of continued use or excusable nonuse,
registrations issued or renewed on or after November 16, 1989, whether
on the Principal Register or on the Supplemental Register, remain in
force for ten years from their date of issue or the date of renewal, and
may be further renewed for periods of ten years, unless previously
cancelled or surrendered.
* * * * *
53. Revise 2.182 to read as follows:
2.182 Time for filing renewal application.
An application for renewal must be filed within one year before the
expiration date of the registration, or within the six-month grace
period after the expiration date of the registration. If no renewal
application is filed within this period, the registration will expire.
54. Revise 2.183 to read as follows:
2.183 Requirements for a complete renewal application.
A complete renewal application must include:
(a) A request for renewal of the registration, signed by the registrant
or the registrant's representative;
(b) The fee required by 2.6 for each class;
(c) The additional fee required by 2.6 for each class if the renewal
application is filed during the six-month grace period set forth in
section 9(a) of the Act;
(d) If the registrant is not domiciled in the United States, the name
and address of a United States resident on whom notices or process in
proceedings affecting the registration may be served; and
(e) If the renewal application covers less than all the goods or
services in the registration, a list of the particular goods or services
to be renewed.
(f) If at least one fee is submitted for a multi-class registration, but
the class(es) to which the fee(s) should be applied are not specified,
the Office will issue a notice requiring either the submission of
additional fee(s) or an indication of the class(es) to which the
original fee(s) should be applied. Additional fee(s) may be submitted if
the requirements of 2.185 are met. If the required fee(s) are not
submitted and the class(es) to which the original fee(s) should be
applied are not specified, the Office will presume that the fee(s) cover
the classes in ascending order, beginning with the lowest numbered class.
55. Revise 2.184 to read as follows:
2.184 Refusal of renewal.
(a) If the renewal application is not acceptable, the Office will issue
a notice stating the reason(s) for refusal.
(b) A response to the refusal of renewal must be filed within six months
of the mailing date of the Office action, or before the expiration date
of the registration, whichever is later, or the registration will expire.
(c) If the renewal application is not filed within the time periods set
forth in section 9(a) of the Act, the registration will expire.
56. Add 2.185 to read as follows:
2.185 Correcting deficiencies in renewal application.
(a) If the renewal application is filed within the time periods set
forth in section 9(a) of the Act, deficiencies may be corrected, as
follows:
(1) Correcting deficiencies in renewal applications filed within one
year before the expiration date of the registration. If the renewal
application is filed within one year before the expiration date of the
registration, deficiencies may be corrected before the expiration date
of the registration without paying a deficiency surcharge. Deficiencies
may be corrected after the expiration date of the registration with
payment of the deficiency surcharge required by section 9(a) of the Act
and 2.6.
(2) Correcting deficiencies in renewal applications filed during the
grace period. If the renewal application is filed during the six-month
grace period, deficiencies may be corrected before the expiration of the
grace period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of the
deficiency surcharge required by section 9(a) of the Act and 2.6.
(b) If the renewal application is not filed within the time periods set
forth in section 9(a) of the Act, the registration will expire. This
deficiency cannot be cured.
57. Add 2.186 to read as follows:
2.186 Petition to Commissioner to review refusal of renewal.
(a) A response to the examiner's initial refusal of the renewal
application is required before filing a petition to the Commissioner,
unless the examiner directs otherwise. See 2.184(b) for the deadline
for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the renewal application, a
petition to the Commissioner to review the refusal may be filed. The
petition must be filed within six months of the mailing date of the
Office action maintaining the refusal, or the renewal application will
be abandoned and the registration will expire.
(c) A decision by the Commissioner is necessary before filing an appeal
or commencing a civil action in any court.
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
58. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
59. Revise 3.16 to read as follows:
3.16 Assignability of trademarks prior to filing of an allegation of
use.
Before an allegation of use under either 15 U.S.C. 1051(c) or 15 U.S.C.
1051(d) is filed, an applicant may only assign an application to
register a mark under 15 U.S.C. 1051(b) to a successor to the
applicant's business, or portion of the business to which the mark
pertains, if that business is ongoing and existing.
60. Amend 3.24 by revising the heading to read as follows:
3.24 Requirements for documents and cover sheets relating to patents
and patent applications.
* * * * *
61. Add 3.25 to read as follows:
3.25 Recording requirements for trademark applications and
registrations.
(a) Documents affecting title. To record documents affecting title to a
trademark application or registration, a legible cover sheet (see
3.31) and one of the following must be submitted:
(1) The original document;
(2) A copy of the document;
(3) A copy of an extract from the document evidencing the effect on
title; or
(4) A statement signed by both the party conveying the interest and the
party receiving the interest explaining how the conveyance affects title.
(b) Name changes. Only a legible cover sheet is required (See 3.31).
(c) All documents. All documents submitted to the Office should be on
white and non-shiny paper that is no larger than 8 1/2 x 14 inches (21.6
x 33.1 cm.) with a one-inch (2.5 cm) margin on all sides. Only one side
of each page should be used.
62. Revise 3.28 to read as follows:
3.28 Requests for recording.
Each document submitted to the Office for recording must include at
least one cover sheet as specified in 3.31 referring either to those
patent applications and patents, or to those trademark applications and
registrations, against which the document is to be recorded. If a
document to be recorded includes interests in, or transactions
involving, both patents and trademarks, separate patent and trademark
cover sheets should be submitted. Only one set of documents and cover
sheets to be recorded should be filed. If a document to be recorded is
not accompanied by a completed cover sheet, the document and the
incomplete cover sheet will be returned pursuant to 3.51 for proper
completion. The document and a completed cover sheet should be
resubmitted.
63. Amend 3.31 by revising paragraphs (a) and (b) and by adding
paragraphs (d) and (e) to read as follows:
3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by 3.28 must
contain:
(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be recorded;
(4) Identification of the interests involved:
(i) For trademark assignments and trademark name changes: Each trademark
registration number and each trademark application number, if known,
against which the Office is to record the document. If the trademark
application number is not known, a copy of the application or a
reproduction of the trademark must be submitted, along with an estimate
of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or patent
application, registration or patent: Each trademark or patent
application number or each trademark registration number or patent
against which the document is to be recorded, or an indication that the
document is filed together with a patent application;
(5) The name and address of the party to whom correspondence concerning
the request to record the document should be mailed;
(6) The date the document was executed;
(7) An indication that the assignee of a trademark application or
registration who is not domiciled in the United States has designated a
domestic representative (see 3.61); and
(8) The signature of the party submitting the document.
(b) A cover sheet should not refer to both patents and trademarks, since
any information, including information about pending patent
applications, submitted with a request for recordation of a document
against a trademark application or trademark registration will become
public record upon recordation.
* * * * *
(d) Each trademark cover sheet required by 3.28 seeking to record a
document against a trademark application or registration should include,
in addition to the serial number or registration number of the
trademark, identification of the trademark or a description of the
trademark, against which the Office is to record the document.
(e) Each patent or trademark cover sheet required by 3.28 should
contain the number of applications, patents or registrations identified
in the cover sheet and the total fee.
PART 6 - CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT
64. The authority citation for part 6 continues to read as follows:
Authority: 15 U.S.C. 1112, 1123; 35 U.S.C. 6, unless otherwise noted.
65. Revise 6.1 to read as follows:
6.1 International schedule of classes of goods and services.
GOODS
1. Chemicals used in industry, science and photography, as well as in
agriculture, horticulture and forestry; unprocessed artificial resins;
unprocessed plastics; manures; fire extinguishing compositions;
tempering and soldering preparations; chemical substances for preserving
foodstuffs; tanning substances; adhesives used in industry.
2. Paints, varnishes, lacquers; preservatives against rust and against
deterioration of wood; colorants; mordants; raw natural resins; metals
in foil and powder form for painters, decorators, printers and artists.
3. Bleaching preparations and other substances for laundry use;
cleaning, polishing, scouring and abrasive preparations; soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices.
4. Industrial oils and greases; lubricants; dust absorbing, wetting and
binding compositions; fuels (including motor spirit) and illuminants;
candles, wicks.
5. Pharmaceutical, veterinary, and sanitary preparations; dietetic
substances adapted for medical use, food for babies; plasters, materials
for dressings; material for stopping teeth, dental wax; disinfectants;
preparations for destroying vermin; fungicides, herbicides.
6. Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway tracks;
nonelectric cables and wires of common metal; ironmongery, small items
of metal hardware; pipes and tubes of metal; safes; goods of common
metal not included in other classes; ores.
7. Machines and machine tools; motors and engines (except for land
vehicles); machine coupling and transmission components (except for land
vehicles); agricultural implements other than hand-operated; incubators
for eggs.
8. Hand tools and implements (hand-operated); cutlery; side arms; razors.
9. Scientific, nautical, surveying, electric, photographic,
cinematographic, optical, weighing, measuring, signalling, checking
(supervision), life-saving and teaching apparatus and instruments;
apparatus for recording, transmission or reproduction of sound or
images; magnetic data carriers, recording discs; automatic vending
machines and mechanisms for coin operated apparatus; cash registers,
calculating machines, data processing equipment and computers; fire
extinguishing apparatus.
10. Surgical, medical, dental, and veterinary apparatus and instruments,
artificial limbs, eyes, and teeth; orthopedic articles; suture materials.
11. Apparatus for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply, and sanitary purposes.
12. Vehicles; apparatus for locomotion by land, air, or water.
13. Firearms; ammunition and projectiles; explosives; fireworks.
14. Precious metals and their alloys and goods in precious metals or
coated therewith, not included in other classes; jewelry, precious
stones; horological and chronometric instruments.
15. Musical instruments.
16. Paper, cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists'
materials; paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except apparatus);
plastic materials for packaging (not included in other classes); playing
cards; printers' type; printing blocks.
17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these
materials and not included in other classes; plastics in extruded form
for use in manufacture; packing, stopping and insulating materials;
flexible pipes, not of metal.
18. Leather and imitations of leather, and goods made of these materials
and not included in other classes; animal skins, hides; trunks and
travelling bags; umbrellas, parasols and walking sticks; whips, harness
and saddlery.
19. Building materials (non-metallic); nonmetallic rigid pipes for
building; asphalt, pitch and bitumen; nonmetallic transportable
buildings; monuments, not of metal.
20. Furniture, mirrors, picture frames; goods (not included in other
classes) of wood, cork, reed, cane, wicker, horn, bone, ivory,
whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for
all these materials, or of plastics.
21. Household or kitchen utensils and containers (not of precious metal
or coated therewith); combs and sponges; brushes (except paint brushes);
brush-making materials; articles for cleaning purposes; steel-wool;
unworked or semi-worked glass (except glass used in building);
glassware, porcelain and earthenware not included in other classes.
22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and
bags (not included in other classes); padding and stuffing materials
(except of rubber or plastics); raw fibrous textile materials.
23. Yarns and threads, for textile use.
24. Textiles and textile goods, not included in other classes; beds and
table covers.
25. Clothing, footwear, headgear.
26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes,
pins and needles; artificial flowers.
27. Carpets, rugs, mats and matting, linoleum and other materials for
covering existing floors; wall hangings (non-textile).
28. Games and playthings; gymnastic and sporting articles not
included in other classes; decorations for Christmas trees.
29. Meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk
and milk products; edible oils and fats.
30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee;
flour and preparations made from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking powder; salt,
mustard; vinegar, sauces (condiments); spices; ice.
31. Agricultural, horticultural and forestry products and grains not
included in other classes; live animals; fresh fruits and vegetables;
seeds, natural plants and flowers; foodstuffs for animals; malt.
32. Beers; mineral and aerated waters and other nonalcoholic drinks;
fruit drinks and fruit juices; syrups and other preparations for making
beverages.
33. Alcoholic beverages (except beers).
34. Tobacco; smokers' articles; matches.
SERVICES
35. Advertising; business management; business administration; office
functions.
36. Insurance; financial affairs; monetary affairs; real estate affairs.
37. Building construction; repair; installation services.
38. Telecommunications.
39. Transport; packaging and storage of goods; travel arrangement.
40. Treatment of materials.
41. Education; providing of training; entertainment; sporting and
cultural activities.
42. Providing of food and drink; temporary accommodation; medical,
hygienic and beauty care; veterinary and agricultural services; legal
services; scientific and industrial research; computer programming;
services that cannot be classified in other classes.
Aug. 30, 1999 Q. TODD DICKINSON
Acting Assistant Secretary of Commerce and
Acting Commissioner of Patents and Trademarks