DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1 and 2
[Docket No.: 010126026]
RIN 0651-AB31
Electronic Submission of Applications
for Registration and Other Documents
(Corrected Reprinting)
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking; Notice of hearing.
SUMMARY: The United States Patent and Trademark Office
(Office) proposes to amend its rules to make electronic filing of
trademark documents mandatory. Subject to certain exceptions for
individuals either without access to the Trademark Electronic
Application System (TEAS) or without the technical capability to use
TEAS, and persons described in 15 U.S.C. 1126(b), all documents for
which an electronic form is available in TEAS, will have to be filed
through TEAS rather than through the mail or by hand delivery. In
addition, the Office proposes to amend its rule concerning the use of
U.S. Postal Service "Express Mail Post Office to Addressee"
service, (Express Mail), to eliminate the filing of any document by
Express Mail for which an electronic form is currently available in
TEAS.
DATES: Comments must be received by October 29, 2001 to ensure
consideration. A public hearing will be held at 10 a.m.,
October 12, 2001, in Room 911, Crystal Park 2, 2121 Crystal Drive,
Arlington, VA. Submit requests to present oral testimony on or before
October 5, 2001.
ADDRESSES: Mail comments to the Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513,
attention Craig Morris; fax comments to (703) 872-9279, attention Craig
Morris; or e-mail comments to:tmefiling@uspto.gov. Copies of all
comments will be available for public inspection in Suite 10B10, South
Tower Building, 10th floor, 2900 Crystal Drive, Arlington, Virginia
22202-3513, from 8:30 a.m. until 5 p.m., Monday through Friday.
FOR FURTHER INFORMATION CONTACT: Craig Morris, Office
of the Commissioner for Trademarks, (703) 308-8910, extension 136; or
e-mail to: tmefiling@uspto.gov.
SUPPLEMENTARY INFORMATION: The Office proposes to
amend 1.4, 1.10, 2.21, 2.56, 2.76, 2.88, 2.89, 2.161, 2.166, 2.167
and 2.168 to make electronic filing through the Trademark Electronic
Application System (TEAS) mandatory. TEAS is a collection of electronic
forms for commonly filed trademark documents. Each document can be
easily completed by the trademark applicant or attorney and filed with
the Office at the click of a button. The system is available at
http://www.uspto.gov 24 hours a day, seven days a week, and can be used
by anyone with NETSCAPE NAVIGATOR (version 3.0 or higher) or
MICROSOFT INTERNET EXPLORER (Version 4.0 or higher). During the
hours between 11:00 p.m. EST, Saturday and 6:00 a.m. EST, Sunday TEAS
is available but credit card payments cannot be processed; therefore,
no documents requiring fees can be filed during that time period. In
addition, to file an initial application for a stylized or design mark,
or if a specimen is being filed, the filer must be able to attach a
black-and-white GIF or JPG image file.
The Office proposes to require electronic filing of all documents for
which forms are currently available in TEAS: applications for
registration of marks; amendments to allege use; statements of use;
requests for extensions of time to file a statement of use; affidavits
of continued use or excusable nonuse under 15 U.S.C. 1058 ( 8
affidavits); affidavits of incontestability under 15 U.S.C. 1065 ( 15
affidavits); combined affidavits under 15 U.S.C. 1058 and 1065 ( 8
and 15 affidavits) and combined filings under 15 U.S.C. 1058 and 1059
(combined 8 and 9 filings). In the future, after appropriate
notice, the Office may require the filing of other trademark-related
documents when the appropriate electronic form is available in TEAS.
There will be two exceptions to the requirement that trademark
documents be filed electronically: first, if the pro se
applicant or registrant, or an attorney for applicant or registrant,
verifies in an affidavit or declaration under 2.20 that he or she
does not have access to TEAS or does not have the technical capability
to use TEAS, the pro se applicant or registrant, or an
attorney for applicant or registrant, will not be required to file its
trademark documents using TEAS; and second, if the applicant or
registrant is a person described in 15 U.S.C. 1126(b), then the
applicant or registrant will not be required to file its trademark
documents using TEAS.
A person described in 15 U.S.C. 1126(b) is a person who has
citizenship, domicile or a real and effective industrial or commercial
establishment in a country other than the United States and whose
country of origin is a party to any convention or treaty relating to
trademarks, trade or commercial names, or the repression of unfair
competition, to which the United States is also a party, or extends
reciprocal rights to nationals of the United States by law.
The number of trademark applications and other trademark documents
filed in the Office has increased substantially in the last few years,
and filings are expected to continue to increase dramatically in the
next few years. The Office received over 295,000 trademark applications
in fiscal year 1999 and over 375,000 applications in 2000 - an increase
each year of 27% over the prior year. In fiscal year 2001, filings are
currently forecast to be 25% higher than 2000, which means the Office
is likely to receive over 300,000 new applications and over 150,000
application and registration-related filings this year. Although the
Office has made substantial changes in an attempt to keep up with the
increased filings, the Office believes that it must make further
changes in its business practices to ensure that every applicant and
registrant receives a high level of customer service.
Currently, parties may file paper documents via mail or hand delivery,
or file electronically using TEAS. It is now possible to file
essentially all trademark-related documents electronically over the
Internet, at http://www.uspto.gov.
The Office now maintains both paper files and electronic databases of
critical application and registration data. Processing paper is
extremely labor-intensive and subject to error and misfiling. A new
application must undergo multiple steps before it is ready for
examination, including fee processing, minimum filing requirement
review, capture of data into automated databases, and paper file jacket
assembly. In addition to processing new applications, the Office must
sort through several thousand documents that are received on a daily
basis. These documents must be delivered to the appropriate work unit,
matched with the paper file, and entered into the file jacket and the
automated systems.
To expedite processing of trademark documents and to improve the
quality of data capture, the Office proposes to require that all
trademark documents available in TEAS be filed electronically.
Mandatory electronic filing will increase efficiency, improve the
accuracy of the information in the Office's automated systems, and
eliminate delays caused by mailing, manual data capture and paper
processing. It will also result in fewer lost and misdirected papers.
Electronic forms contain standardized data that is tagged to permit
transfer into the Office's databases.
Better Service for Customers
Electronic filing benefits the public as well as the Office.
TEAS is available for the filing of trademark documents 24 hours a day,
seven days a week at http://www.uspto.gov. During the hours
between 11:00 p.m. EST, Saturday and 6:00 a.m. EST, Sunday TEAS is
available but credit card payments cannot be processed. Therefore,
during that time period, documents that must be accompanied by a fee
cannot be filed. When a document is filed electronically, the Office
receives it within seconds after filing, and immediately issues a
confirmation of filing via e-mail. This confirmation is evidence of
filing should any question arise as to the filing date of the document.
Under 1.6(a)(4), trademark-related correspondence filed via TEAS is
considered to have been filed on the date the Office receives the
transmission, regardless of whether that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia. Thus by using TEAS
applicants, registrants and their attorneys can ensure a "date
certain" for any filing made using TEAS. This benefit eliminates the
need for the filing of applications by Express Mail.
Electronically filed applications are processed much faster than
their paper counterparts. Filing receipts for TEAS applications are
sent via e-mail the same day of filing, while filing receipts for paper
applications are mailed about 14 days after filing; critical data
concerning TEAS applications (e.g., mark, goods and
services, owner, etc.) are entered into the automated systems (and
therefore made available to anyone searching Office records for
conflicting marks) within 10 days, while data concerning paper
applications are entered and made available to the public approximately
14-15 days after filing; and TEAS applications are received in the
e-Commerce law offices and available for review in 20 days, while paper
application files are assembled and delivered to law offices
approximately 70 days after filing.
Continued increases in trademark application filings dictate
that the Office change its business approach for serving the Office's
customers. Electronic filing and communication allows us to provide
more customers with better quality, using fewer resources. Electronic
filing improves the quality and accuracy of the information that is
submitted to and processed by the Office. Customers have greater
assurance that the content of the electronic application is complete,
because the information provided by the customer is loaded directly
into the Office's automated systems. By requiring that everyone, with
few exceptions, file electronically, all of the Office's customers will
receive better service, because electronic filing provides a level of
consistency, accuracy, and predictability that a paper-based process
cannot.
The results of customer surveys clearly indicate that customers
who file electronically are far more satisfied than customers who file
paper applications. All of the Office's electronic customers stated
that they were satisfied with the ease of access and use of the filing
system and the time it took to receive a filing receipt, and 94 percent
of the Office's electronic customers were satisfied with the accuracy
of the filing receipt. Customers who filed paper applications were less
satisfied: only 44 percent were satisfied with the accuracy of the
filing receipt, and only 27 percent were satisfied with the time it
took to receive it.
In their first annual report to the President, the Secretary of
Commerce, and the Judiciary Committees of the United States Senate and
House of Representatives, the Trademark Public Advisory Committee
(TPAC) endorsed mandatory electronic filing for trademark applications.
The TPAC concluded that the Office should take immediate steps to
maximize the use of technology in fulfilling its mission by mandating
electronic filing, to the extent allowed by law, and by replacing
paper-based processes and information with electronic processes.
On December 17, 1999, the President issued a Memorandum,
"Electronic Government," which called on Federal agencies to use
information technology to ensure that the American people can easily
access governmental services and information. The Government Paperwork
Elimination Act (GPEA), Title XVII, 1701 - 1710, Pub. L. 105-277,
112 Stat. 2681-749 (44 U.S.C. 3504), was signed into law on October 21,
1998. GPEA requires Federal agencies, by October 21, 2003, to provide
individuals or entities that deal with agencies the option to submit
information or transact with the agency electronically, and to maintain
records electronically, when practicable. GPEA is an important tool to
improve customer service and governmental efficiency through the use of
information technology. This improvement involves transacting business
electronically with Federal agencies and widespread use of the Internet
and the World Wide Web and thus furthers the goals of the GPEA.
Discussion of Specific Rules Changed or Added
The Office proposes to add a new 1.4(h), providing that if
any form required to be filed under any provision of this section is
available for filing using TEAS, the form must be filed electronically,
unless 2.22 applies.
The Office proposes to amend 1.10(a) to prohibit the use of
Express Mail for any correspondence for which an electronic form
exists.
The Office proposes to amend 2.21 to add a new subsection (a)(1),
requiring that an application for registration of a mark be filed using
TEAS to receive a filing date, unless 2.22 applies. applications
filed on paper will be returned and not given a filing date, unless
filed with an affidavit or declaration under 2.20 that meets the
requirement of 2.22. The Office further proposes to redesignate
2.21(a)(1) through (a)(5) as 2.21(a)(2)(i) through (a)(2)(v).
The Office proposes to add new 2.22 to provide two exceptions to the
requirement that trademark documents be filed electronically: first, if
the pro se applicant or registrant, or an attorney for
applicant or registrant, verifies in an affidavit or declaration under
2.20 that it does not have access to TEAS or does not have the
technical capability to use TEAS, the pro se applicant or
registrant, or an attorney for applicant or registrant, will not be
required to file his or her trademark documents using TEAS; and second,
if the applicant or registrant is a person described in 15 U.S.C.
1126(b), then the applicant or registrant will not be required to file
its trademark documents using TEAS.
The Office proposes to revise 2.76(b) to require that an amendment
to allege use be filed using TEAS, unless 2.22 applies.
The Office proposes to remove 2.76(d), which now provides that the
title "Amendment to allege use under 2.76" should appear at the
top of the first page of an amendment to allege use. This requirement
is no longer necessary.
The Office proposes to redesignate 2.76(e) as 2.76(d), and to add
a new 2.76 (d)(1) to state that filing electronically is a minimum
requirement that must be met before an amendment to allege use can be
referred to an examining attorney for examination, unless 2.22
applies.
The Office proposes to redesignate 2.76(f) and (g) as 2.76(e)
and (f), and to revise them to update cross-references. The Office
proposes to redesignate 2.76(h) through (j) as 2.76(g)
through (i).
The Office proposes to revise 2.88(b) to require that a statement of
use be filed using TEAS, unless 2.22 applies.
The Office proposes to remove 2.88(d), which now provides that the
title "Statement of use under 2.88" should appear at the top of
the first page of a statement of use. This requirement is no longer
necessary.
The Office proposes to redesignate 2.88(e) as 2.88(d), and to add
a new 2.88(d)(1) to state that filing electronically is a minimum
requirement that must be met before a statement of use can be referred
to an examining attorney for examination, unless 2.22 applies.
The Office proposes to redesignate 2.88(f) and (g) as 2.88(e)
and (f), and to revise them to update cross-references. The Office
proposes to redesignate 2.88(h) through (l) as 2.88(g)
through (k).
The Office proposes to amend 2.89(a) and (b) to require that a
request for an extension of time to file a statement of use be filed
using TEAS, unless 2.22 applies.
The Office proposes to amend 2.161 by redesignating paragraphs (a)
through (h) as (b) through (i), adding a new paragraph (a) to require
8 affidavits be filed using TEAS, unless 2.22 applies, and to
revise the redesignated 2.161(f)(1) to update a cross-reference.
The Office proposes to amend 2.166 to require that combined 8
and 9 filings be filed using TEAS unless 2.22 applies.
The Office proposes to redesignate 2.167(a) through (g) as
2.167(b) through (h), and to add a new 2.167(a) to require
that 15 affidavits be filed using TEAS, unless 2.22 applies.
The Office proposes to amend 2.168(a) to require that 8
and 15 affidavits be filed using TEAS, unless 2.22 applies.
Rulemaking Requirements
The Office has determined that the proposed 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 proposed rule changes will not have a
significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The rule will not
significantly impact any businesses. As a result, an initial regulatory
flexibility analysis was not prepared.
The proposed 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.). The proposed changes have been determined to be
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 rule contains collections of information
requirements that have 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 15 U.S.C. 1051(b), if completed using paper forms; fifteen
minutes for applications based on 15 U.S.C. 1051(b), if completed using
electronic forms; twenty-three minutes for applications to obtain
registrations based on use of the mark in commerce under 15 U.S.C.
1051(a), if completed using paper forms; twenty-one minutes for
applications to obtain registrations based on 15 U.S.C. 1051(a), if
completed using electronic forms; twenty minutes for applications to
obtain registrations based on an earlier-filed foreign application
under 15 U.S.C. 1126(d), if completed using paper forms; nineteen
minutes for applications to obtain registrations based on 15 U.S.C.
1126(d), if completed using electronic forms; twenty minutes for
applications to obtain registrations based on registration of a mark in
a foreign applicant's country of origin under 15 U.S.C. 1126(e), if
completed using paper forms; eighteen minutes for applications to
obtain registrations based on 15 U.S.C. 1126(e), if completed using
electronic forms; thirteen minutes for allegations of use of the mark
under 2.76 and 2.88 if completed using paper forms; twelve
minutes for allegations of use under 2.76 and 2.88 if completed
using electronic forms; ten minutes for requests for extensions of time
to file statements of use under 2.89 if completed using paper
forms; nine minutes for requests for extensions of time to file
statements of use if completed using electronic forms; eleven minutes
for 8 affidavits if completed using paper forms; ten minutes for
8 affidavits if completed using electronic forms; fourteen minutes
for combined 8 and 9 filings if completed using paper forms;
thirteen minutes for combined 8 and 9 filings if completed using
electronic forms; fourteen minutes for combined 8 and 15
affidavits if completed using paper forms; thirteen minutes for
combined 8 and 15 affidavits if completed using electronic forms;
eleven minutes for 15 affidavits if completed using paper forms;
and ten minutes for 15 affidavits if completed using electronic
forms. 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.
Send comments regarding this burden estimate, or any other aspect of
this data collection, including suggestions for reducing the burden, to
the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA
22202-3513 (Attn: Ari Leifman), and to the Office of Information and
Regulatory Affairs, OMB, 725 17th Street, NW., Washington, DC 20503
(Attn: PTO Desk Officer).
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Trademarks.
37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority
contained in 35 U.S.C. 2 and 15 U.S.C. 41, as amended, the Office
proposes to amend parts 1 and 2 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. 2, unless otherwise noted.
2. Amend Sec. 1.4 to add a new paragraph (h), to read as follows:
1.4 Nature of correspondence and signature requirements.
* * * * *
(h) If any form required to be filed under any provision of this
section is available for filing using the Trademark Electronic
Application System (TEAS, available at http://uspto.gov), the form
must be filed using TEAS, unless 2.22 of this chapter applies.
3. Revise 1.10(a) to read as follows:
1.10 Filing of correspondence by "Express Mail."
(a) Any correspondence received by the Patent and Trademark Office
(Office), except for correspondence available for filing using the
Trademark Electronic Application System (TEAS, available at
http://www.uspto.gov, that was delivered by the "Express Mail Post Office
to Addressee" service of the United States Postal Service (USPS) will be
considered filed in the Office on the date of deposit with the USPS.
* * * * *
PART 2 - RULES APPLICABLE TO TRADEMARK CASES
4. The authority citation for part 2 continues to read as follow:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted.
5. Revise 2.21(a) to read as follows:
2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application if:
(1) The application is filed using the Trademark Electronic Application
System (TEAS, available at http://www.uspto.gov), unless
2.22 applies; and
(2) The application contains all of the following:
(i) The name of the applicant;
(ii) A name and address for correspondence;
(iii) A clear drawing of the mark;
(iv) A listing of the goods or services; and
(v) The filing fee for at least one class of goods or services,
required by 2.6.
* * * * *
6. Add 2.22 to read as follows:
2.22 Exceptions to mandatory electronic filing.
Notwithstanding any other provision of this section, filing
through the Trademark Electronic Application System (TEAS, available at
http://www.uspto.gov) is not required in the following two
cases:
(a) The pro se applicant or registrant, or an attorney for applicant or
registrant, who verifies in an affidavit or declaration under 2.20
that he or she does not have access to TEAS or does not have the
technical capability to use TEAS, will not be required to file its
trademark documents using TEAS. Such affidavit or declaration must
accompany the relevant document.
(b) The applicant or registrant who is a person described in 15 U.S.C.
1126(b) will not be required to file its trademark documents using
TEAS.
7. Amend 2.76 by removing paragraph (d), revising paragraph (b)
introductory text, redesignating paragraphs (e) through (j) as (d)
through (i) and revising them to read as follows:
2.76 Amendment to allege use.
(a) * * *
(b) The amendment to allege use must be filed using the Trademark
Electronic Application System (TEAS, available at
http://www.uspto.gov, unless 2.22 applies. A complete
amendment to allege use must include:
* * * * *
(d) The Office will review a timely filed amendment to allege
use to determine whether it meets the following minimum requirements:
(1) Is filed using TEAS, unless 2.22 applies;
(2) Includes the fee for at least a single class, required by 2.6;
(3) Includes one specimen of the mark as used in commerce; and
(4) Includes 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.
(e) A timely filed amendment to allege use that meets the minimum
requirements specified in paragraph (d) of this section will be
examined in accordance with 2.61 through 2.69. If, as a result of
the examination of the amendment to allege use, applicant is found not
entitled to registration for any reason not previously stated,
applicant will be so notified and advised of the reasons and of any
formal requirements or refusals. The notification shall restate or
incorporate by reference all unresolved refusals or requirements
previously stated. The amendment to allege use may be amended in
accordance with 2.59 and 2.71 through 2.75. If the amendment to
allege use is acceptable in all respects, the applicant will be
notified of its acceptance. The filing of such an amendment shall not
constitute a response to any outstanding action by the Trademark
Examining Attorney.
(f) If the amendment to allege use is filed within the permitted time
period but does not meet the minimum requirements specified in
paragraph (d) of this section, applicant will be notified of the
deficiency. The deficiency may be corrected if the mark has not been
approved for publication. If an acceptable amendment to correct the
deficiency is not filed prior to approval of the mark for publication,
the amendment to allege use will not be examined on the merits.
(g) An amendment to allege use may be withdrawn for any reason prior to
approval of a mark for publication.
(h) 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.
(i) For the requirements for a multiple class application, see 2.86.
8. Amend 2.88 by removing paragraph (d), revising paragraph (b)
introductory text, redesignating paragraphs (e) through (l) as (d)
through (k) and revising them to read as follows.
2.88 Filing statement of use after notice of allowance.
(a) * * *
(b) The statement of use must be filed using the Trademark Electronic
Application System (TEAS, available at http://www.uspto.gov,
unless 2.22 applies. A complete statement of use must include:
* * * * *
(d) The Office will review a timely filed statement of use to
determine whether it meets the following minimum requirements:
(1) Is filed using TEAS, unless 2.22 applies;
(2) Includes the fee for at least a single class, required by 2.6;
(3) Includes one specimen of the mark as used in commerce;
(4) Includes 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.
(e) A timely filed statement of use that meets the minimum requirements
specified in paragraph (d) of this section will be examined in
accordance with 2.61 through 2.69. If, as a result of the
examination of the statement of use, applicant is found not entitled to
registration, applicant will be notified and advised of the reasons and
of any formal requirements or refusals. The statement of use may be
amended in accordance with 2.59 and 2.71 through 2.75. If the
statement of use is acceptable in all respects, the applicant will be
notified of its acceptance.
(f) If the statement of use does not meet the minimum requirements
specified in paragraph (d) of this section, applicant will be notified
of the deficiency. If the time permitted for applicant to file a
statement of use has not expired, applicant may correct the deficiency.
After the filing of a statement of use during a permitted time period
for such filing, the applicant may not withdraw the statement to return
to the previous status of awaiting submission of a statement of use,
regardless of whether it complies with paragraph (d) of this section.
(g) The failure to timely file a statement of use that meets the
minimum requirements specified in paragraph (d) of this section shall
result in the abandonment of the application.
(h)(1) The goods or services specified in a statement of use must
conform to those goods or services identified in the notice of
allowance. An applicant may specify the goods or services by choosing
the statement that "The applicant is using the mark in commerce on or
in connection with all goods and/or services listed in the application
or Notice of Allowance;" or, if appropriate, choosing the statement
that "The applicant is using the mark in commerce on or in connection
with all goods and/or services listed in the application or Notice of
Allowance, except the goods and/or services listed below," and
listing in the space provided the goods or services to be deleted.
(2) If any goods or services specified in the notice of allowance are
omitted from the identification of goods or services in the statement
of use, the Trademark Examining Attorney shall inquire about the
discrepancy and permit the applicant to amend the statement of use to
include any omitted goods or services, provided that the amendment is
supported by a verification that the mark was in use in commerce, on or
in connection with each of the goods or services sought to be included,
prior to the expiration of the time allowed to applicant for filing a
statement of use.
(3) The statement of use may be accompanied by a separate request to
amend the identification of goods or services in the application, as
stated in the notice of allowance, in accordance with 2.71(b).
(i) The statement of use may be accompanied by a separate request to
amend the drawing in the application, in accordance with 2.51 and
2.72.
(j) 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.
(k) For the requirements for a multiple class application, see 2.86.
9. Amend 2.89 by revising paragraphs (a) introductory text,
(a)(1), (b) introductory text, and (b)(1) 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 be filed using
the Trademark Electronic Application System (TEAS, available at
http://www.uspto.gov), unless 2.22 applies. The extension
request must include the following:
(1) A request for an extension of time to file the statement of use;
* * * * *
(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. The extension request must be filed using
TEAS unless 2.22 applies, and must include the following:
(1) A request for an extension of time to file the statement of use;
* * * * *
10. 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 using the Trademark Electronic Application System (TEAS,
available at http://www.uspto.gov).
(b) Be filed by the owner within the period set forth in 2.160(a);
(c) 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.
(d) Include the registration number;
(e)(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;
(f)(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 paragraph (g)(2) of this section;
(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;
(g)(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;
(h) Include a specimen showing current use of the mark for each class
of goods or services, unless excusable nonuse is claimed under
paragraph (g)(2) of this section. The specimen must:
(1) Show the mark as actually used on or in connection with the goods
or in the sale or advertising of these 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 not submitted electronically. 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;
(i) 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.
11. Revise 2.166 to read as follows:
2.166 Affidavit of continued use or excusable
nonuse combined with renewal application.
An affidavit of 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. The combined document must be filed
using the Trademark Electronic Application System (TEAS, available at
http://www.uspto.gov).
12. Revise 2.167 to read as follows:
2.167 Affidavit or declaration under section 15.
The affidavit or declaration in accordance with 2.20
provided by section 15 of the Act for acquiring incontestability for a
mark registered on the Principal Register or a mark registered under
the Act of 1881 or 1905 and published under section 12(c) of the Act
( 2.153) must:
(a) Be filed using the Trademark Electronic Application System (TEAS,
available at http://www.uspto.gov), unless 2.22 applies;
(b) Be signed by the registrant;
(c) Identify the certificate of registration by the certificate number
and date of registration;
(d) 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;
(e) Specify that there has been no final decision adverse to
registrant's claim of ownership of such mark for such goods or
services, or to registrant's right to register the same or to keep the
same on the register;
(f) Specify that there is no proceeding involving said rights pending
in the Patent and Trademark Office or in a court and not finally
disposed of;
(g) Be filed within one year after the expiration of any five-year
period of continuous use following registration or publication under
section 12(c). The registrant will be notified of the receipt of the
affidavit or declaration.
(h) Include the required fee for each class to which the affidavit or
declaration pertains in the registration. If no fee, or a fee
insufficient to cover at least one class, is filed at an appropriate
time, the affidavit or declaration will not be refused if the required
fee(s) (See 2.6) are filed in the Patent and Trademark Office within
the time limit set forth in the notification of this defect by the
Office. If insufficient fees are included to cover all classes in the
registration, the particular class or classes to which the affidavit or
declaration pertains should be specified.
13. Amend 2.168 by revising paragraph (a) 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. The document must be filed using the Trademark
Electronic Application System (TEAS, available at
http://www.gpo.gov), unless 2.22 applies.
* * * * *
August 24, 2001 NICHOLAS P. GODICI
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office