United States Patent and Trademark Office OG Notices: 05 August 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. 2003-T-010]
RIN 0651-AB45
Rules of Practice for
Trademark-Related Filings Under the
Madrid Protocol Implementation Act
AGENCY: 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 existing regulations and add new regulations to the
rules of practice to implement the Madrid Protocol Implementation Act
of 2002 (MPIA). The MPIA provides that: the owner of a U.S. application
or registration may seek protection of its mark in any of the 57
countries party to the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks (Madrid Protocol) by
submitting a single international application through the Office to the
International Bureau of the World Intellectual Property Organization
(IB); and the owner of an application or registration in a country
party to the Madrid Protocol may obtain an international registration
from the IB and request an extension of protection of its mark to the
United States.
DATES: Comments must be received by May 27, 2003 to ensure
consideration. A public hearing will be held at 10 a.m., Friday, May
30, 2003, in the Patent Theater, 2121 Crystal Drive, Room 200,
Arlington, Virginia. Submit requests to present oral testimony on or
before May 20, 2003.
ADDRESSES: Submit comments by electronic mail (e-mail) to:
madridrules.comments@uspto.gov. Written comments may also be
submitted by mail or hand delivery to: Commissioner for Trademarks,
2900 Crystal Drive, Arlington, VA 22202, attention Cheryl L. Black.
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: Cheryl L. Black, Office of the
Commissioner for Trademarks, by telephone at (703) 308-8910, extension
153, by e-mail to cheryl.black@uspto.gov, or by facsimile at
(703) 872-9292.
SUPPLEMENTARY INFORMATION: The Madrid Protocol Implementation Act of
2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (MPIA) amends the
Trademark Act of 1946 to implement the provisions of the Madrid
Protocol in the United States. The Madrid Protocol provides a process
of filing an international application with requests for extensions of
protection to any of the 57 member countries of the Protocol. The MPIA
was enacted on November 2, 2002, and becomes effective on November 2,
2003.
The Madrid Protocol and the Common Regulations Under the Madrid
Agreement and the Protocol (Common Regulations) are available online at
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.wipo.int/madrid/en/.
References below to "the Act," "the Trademark Act," or "the
statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq.,
as amended by the MPIA.
Filings under Madrid Protocol
Background
The Madrid Protocol provides a system for obtaining an
international registration. The IB maintains the system in accordance
with the guidelines set forth in the Common Regulations. To apply for
an international registration under the Protocol, an applicant for an
international application must be a national of, be domiciled in, or
have a real and effective business or commercial establishment in one
of the countries that are members of the Protocol (Contracting
Parties). An international applicant can submit an international
application only on the basis of a trademark application or
registration in one of the Contracting Parties (basic application or
basic registration). The international application must be for the same
mark and include a list of goods and/or services identical to or
narrower than the list of goods and/or services in the basic
application or registration. The international application must
designate one or more Contracting Parties in which an extension of
protection of the international application is sought.
The international application must be submitted through the
trademark office of the Contracting Party in which the basic
application or registration is held (office of origin). The office of
origin must certify that the information in the international
application corresponds with the information in the basic application
or registration, and transmit the international application to the IB.
The IB reviews the international application to determine whether
the Madrid Protocol filing requirements have been met and the required
fees have been paid. If an international application is unacceptable,
the IB will notify both the applicant and the office of origin of the
"irregularity." If the Madrid Protocol requirements have been met and
the fees have been paid, the IB will immediately register the mark,
publish the international registration in the WIPO Gazette of
International Marks, send a certificate to the holder, and notify the
offices of the designated Contracting Parties in which an extension of
protection of the international registration is sought.
The holder of an international registration may designate
additional Contracting Parties in a subsequent designation. A
subsequent designation is a request by the holder of an international
registration for an extension of protection of its international
registration to additional Contracting Parties. Each Contracting Party
designated in an international application or in a subsequent
designation will examine the request for extension of protection as a
national application under its laws.
Discussion of Specific Rules Changed or Added
The Office proposes to add new rules setting forth the requirements
for submitting international applications and subsequent designations
through the Office for forwarding to the IB. The Office also proposes
to add new rules for processing requests for extension of protection of
international registrations designating the United States.
The Office proposes to add rules 7.1, 7.3, 7.4, 7.6, 7.7, 7.11,
7.12, 7.13, 7.14, 7.21, 7.22, 7.23, 7.24, 7.25, 7.26, 7.27, 7.28, 7.29,
7.30, 7.31, 7.36, 7.37, 7.38, 7.39, 7.40, and 7.41; and designate part
7 of 37 CFR as the rules of practice in filings pursuant to the Madrid
Protocol.
Proposed Sec. 7.1 defines certain terms used in this part. Terms
defined in the MPIA are not included in the list of definitions in
Sec. 7.1.
Proposed Sec. 7.3 requires that correspondence relating to
international applications and registrations be in English.
Proposed Sec. 7.4 states that correspondence submitted
electronically will be accorded the date and time the complete
transmission is received in the Office based on Eastern Time.
Fees
The Office proposes to require fees for processing filings under
the Madrid Protocol. Proposed Sec. 7.6 sets forth the fees payable to
the Office for processing correspondence relating to international
applications and registrations. These fees must be paid in U.S. dollars
at the time of submission.
The Office proposes to charge a fee: (1) For reviewing and
certifying an international application; (2) for transmitting a
subsequent designation; (3) for transmitting a request to record an
assignment or restriction of a holder's right of disposal of an
international registration; (4) for requesting a notice of replacement;
and (5) for filing an affidavit of use in commerce or excusable nonuse
for a mark in a registered extension of protection to the United
States.
In addition to the fees required by the Office, there are
international fees for processing international applications and
registrations. Proposed Sec. 7.7 sets forth the international fees
payable to the IB in connection with international applications and
registrations, and the requirements and procedures for submitting these
fees through the Office. A schedule of the international fees is posted
at http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http://www.wipo.int/madrid/en/. The international
applicant or holder may pay the fees directly to the IB, or to the IB
through the Office. Fees paid directly to the IB must be paid in Swiss
francs, and fees paid through the Office must be paid in U.S. dollars.
The fees that may be paid through the Office are listed in proposed
Sec. 7.7(b).
Under proposed Sec. 7.7(c), international fees paid through the
Office must be paid in U.S. dollars at the time of submission. To pay
fees directly to the IB, the international applicant or holder must
either: (1) Establish an account with the IB for debiting fees, and set
forth the number of that account as proof of payment in its submission
to the Office; or (2) pay the fees to the IB using any other method of
payment, and include the IB receipt number for payment of the fees as
proof of payment in its submission to the Office.
International Applications Originating from the United States
The requirements for granting a date of receipt to an international
application submitted through the Office are set forth in proposed
Sec. 7.11(a). The Office proposes to require the submission of an
international application through the Trademark Electronic Application
System (TEAS). An international application must identify at least one
basic application or registration. The international application may be
based on more than one basic U.S. application and/or registration,
provided that the owner and the mark are the same for each basic U.S.
application or registration.
Under section 61 of the Act, and proposed Sec. 7.11(a)(10), the
international applicant must specify that applicant is a national of,
is domiciled in, or has a real and effective industrial or commercial
establishment in the United States.
Proposed Sec. 7.11(a)(3) requires a reproduction of the mark in
the international application that is identical to the mark in the
basic application or registration and that meets the drawing
requirements of Sec. 2.52. If the mark in the basic application or
registration is depicted in black and white, the reproduction of the
mark in the international application must be black and white. If the
mark in the basic application or registration is in color, the mark in
the international application must be in color. If a mark for which
there is a claim of color is depicted in black and white in the basic
application or registration, the international application must include
both a black and white reproduction of the mark and a color
reproduction of the mark.
Under proposed Secs. 7.11(a)(4) and 7.12, if color is claimed
as a feature of the mark, the same color claim must be made in the
international application. If color is not claimed as a feature of the
mark in the basic application or registration, the international
application may not include a claim of color.
Under proposed Sec. 7.11(a)(6), if the mark in the basic
application or registration is a three-dimensional mark, sound mark,
collective mark or certification mark, the international application
must indicate the type of mark.
Proposed Sec. 7.11(a)(7) requires a list of goods and/or services
in the international application that is identical to or narrower than
the list of goods and/or services in the basic application or
registration, and is classified according to the Nice Agreement
Concerning the International Classification of Goods and Services for
the Purposes of the Registration of Marks. The applicant may omit goods
and/or services from the international application as long as the
omission does not broaden the scope of the goods or services identified
in the basic application or registration.
Under proposed Sec. 7.11(a)(8), an international applicant must
designate at least one Contracting Party in which it seeks an extension
of protection.
Under proposed Sec. 7.11(a)(9), the international applicant must
pay the U.S. certification fee and the fees required by the IB for all
classes and all designated Contracting Parties at the time of
submission.
Proposed Sec. 7.13 sets forth the requirements for certifying and
forwarding an international application to the IB. Under proposed Sec.
7.13(a), if an international application meets the requirements of
proposed Sec. 7.11(a), the Office will grant a date of receipt and
certify that the information contained in the international application
corresponds to the basic application or registration. The Office will
forward the international application electronically to the IB.
Proposed Sec. 7.13(b), states that if the Office cannot certify
that the information contained in the international application
corresponds with the information in the basic application or
registration, the Office will notify the applicant that the
international application cannot be certified. Any IB fees submitted
through the Office will be refunded; however, the Office will not
refund the certification fee.
Correcting Irregularities in International Application--Proposed Sec.
7.14
The IB will notify both the international applicant and the Office
of any irregularities in the international application. The
international applicant is responsible for correcting the
irregularities before the end of the response period set forth in the
IB's notice to avoid abandonment of the international application.
Under rule 11 of the Common Regulations, there are some irregularities
that must be corrected through the Office and some that must be
corrected directly with the IB. Proposed Sec. 7.14 sets forth the
types of irregularities that must be corrected through the Office and
the procedures for responding to these irregularities through the
Office.
Under proposed Sec. 7.14(d), the Office would require that
applicants use TEAS to correct irregularities through the Office. To
assist the Office in its efforts to timely transmit the response or fee
to the IB, applicants should submit their responses or fee as early as
possible, at least one month prior to the end of the IB's response
period.
Irregularities in Classification and Identification of Goods/Services
Rules 12 and 13 of the Common Regulations provide that the IB will
not consider a response to irregularities in classification and
identification of goods and/or services that is not submitted through
the office of origin. Proposed Sec. 7.14(b) provides that an
international applicant must respond to irregularities in
classification and identification of goods and/or services through the
Office. The Office will forward an applicant's response to the IB;
however, the Office will not review the response or respond to an
irregularity on behalf of an applicant.
Additional Fees for Correcting Irregularities in an International
Application
The IB may require an international applicant to pay additional
fees as a result of irregularities in the classification of goods or
services, or because the international fees submitted with the
application were insufficient. Under proposed Sec. 7.14(c), the
applicant may pay the additional fees directly to the IB or through the
Office. The international applicant must correct the fee irregularities
before the end of the response period set forth in the IB's notice, or
the international application will abandon at the IB. Under proposed
Sec. 7.14(d), if the international applicant is paying the additional
fees through the Office, the fees must be paid through TEAS and should
be submitted at least one month before the end of the IB's response
period.
Other Irregularities
Under proposed Sec. 7.14(e), all other irregularities in the
international application must be corrected directly at the IB. Failure
to correct certain irregularities by the end of the IB's response
period will result in the abandonment of the international application.
Subsequent Designations--Proposed Sec. 7.21
Section 64 of the Act and proposed Sec. 7.21 permit the holder of
an international registration to submit a subsequent designation
through the Office, if the holder is a national of, is domiciled in, or
has a real and effective industrial or commercial establishment in the
United States. The holder also has
the option of filing the subsequent designation directly with the IB.
Under proposed Sec. 7.21, if the subsequent designation is
submitted through the Office, it must be submitted through TEAS and
include the international registration number, the name and address of
the holder of the international registration, one or more Contracting
Parties in which an extension of protection is sought, and a list of
goods and/or services that is identical to or narrower than the goods
and/or services listed in the international registration. The holder
can omit goods and/or services listed in the international registration
as long as the omission does not broaden the scope of the goods or
services identified in the international registration. The holder must
include the transmittal fee and all subsequent designation fees
required by the IB at the time of submission. The Office is not
required to certify the subsequent designation.
The IB will review the subsequent designation for completeness
before forwarding the request for extension of protection to the
designated Contracting Parties. If there are any irregularities in the
subsequent designation, the IB will notify both the holder and the
Office. The holder must file any responses to the notice directly with
the IB. The Office will not forward any responses to irregularities in
a subsequent designation to the IB, even if the subsequent designation
was submitted through the Office.
Recording Changes to International Registration
Most changes to international registrations can be recorded
directly with the IB. Proposed Sec. 7.22(a) requires that all requests
to record changes to an international registration be filed at the IB,
except in the limited circumstances in which they must be submitted
through the Office, as set forth in proposed Secs. 7.23 and 7.24.
Proposed Sec. 7.22(b) provides that assignments or restrictions of
a holder's rights of disposal of an international registration must be
recorded by the IB, and that section 10 of the Act and part 3 of this
chapter are not applicable to such assignments or restrictions.
Proposed Sec. 7.22(c) provides that when the Office is notified by
the IB of an assignment or restriction of a holder's right to dispose
of an international registration with an extension of protection to the
United States, the Office will take note of the assignment or
restriction in its records. The Assignment Services Division of the
Office will record only assignments and restrictions of extensions of
protection to the United States that have been recorded at the IB.
Proposed Sec. 7.23 sets forth the limited circumstances in which a
request to record an assignment of an international registration may be
submitted through the Office, and the requirements for submitting these
requests. Under proposed Sec. 7.23, the Office will forward a request
to record an assignment of an international registration to the IB only
if: (1) The request is submitted by an assignee who is a national of,
is domiciled in or has a real and effective commercial or industrial
establishment in the U.S.; and (2) the assignee cannot obtain the
assignor's signature for the request to record the assignment.
Proposed Sec. 7.24 sets forth the limited circumstances in which a
request to record a restriction of a holder's right to dispose of an
international registration may be submitted through the Office, and the
requirements for submitting these requests. Under proposed Sec. 7.24,
the Office will forward a request to record a restriction of a holder's
right of disposal of an international registration (usually a security
interest) only if: (1) The restriction is the result of an agreement
between the holder of the international registration and the party
restricting the holder's right of disposal; (2) the party holding the
restriction is a national of, is domiciled in or has a real and
effective commercial or industrial establishment in the U.S.; and (3)
the signature of the holder of the international registration cannot be
obtained for the request to record the restriction. The Office proposes
to charge a fee for transmitting a request to record an assignment or
restriction to the IB.
Requests for Extension of Protection to the United States
Under section 65 of the Act, the holder of an international
registration may request an extension of protection of the
international registration to the United States, provided the
international registration is not based on a U.S. basic application or
registration.
The holder may make a request for extension of protection to the
United States either in the international application or in a
subsequent designation filed with the IB. Section 66(a) of the Act
requires that a request for extension of protection to the United
States include a declaration of bona fide intention to use the mark in
commerce. The IB will certify that the request for extension of
protection contains a declaration of bona fide intention to use the
mark in commerce when it forwards the request to the Office. The
declaration will remain as part of the international registration on
file at the IB.
The IB will forward the request for extension of protection to the
Office electronically. The holder cannot file a request for extension
of protection to the United States directly with the Office.
Proposed Sec. 7.25 provides that for purposes of examination and
opposition, a request for an extension of protection to the United
States will be treated as an application for registration based on an
extension of protection of an international registration under section
66(a) of the Act; and that references to "applications" and
"registrations" in part 2 of this chapter include extensions of
protection to the United States. With the exception of Secs.
2.130-2.131, 2.160-2.166, 2.168 and 2.181-2.186, all the sections in
part 2 apply to a request for extension of protection to the United
States.
Under proposed Sec. 7.26, the filing date of a request for
extension of protection to the United States for purposes of
examination in the Office is: (1) The international registration date,
if the request for extension of protection to the United States was
made in the international application, or (2) the date the IB recorded
the subsequent designation, if the request for extension of protection
to the United States was made in a subsequent designation. Under
section 66(b) of the Act, the filing date of the extension of
protection will be considered the date of constructive notice pursuant
to section 7(c) of the Act.
Under section 67 of the Act and proposed Sec. 7.27, the holder of
an international registration may claim priority under Article 4 of the
Paris Convention for the Protection of Industrial Property if: (1) the
request for an extension of protection contains a claim of priority;
and (2) the international registration date or the date of recordal of
the subsequent designation requesting an extension of protection to the
United States is no later than 6 months after the filing date of the
application that formed the basis of the claim of priority.
Replacement
Under section 74 of the Act and proposed Sec. 7.28(a), a
registered extension of protection to the United States has the same
rights as a previously issued U.S. registration if: (1) both
registrations are owned by the same person and identify the same mark;
and (2) the goods/services in the previously issued U.S. registration
are covered by the registered extension of protection. Under proposed
Sec. 7.28(b), the holder of a pending or registered
extension of protection may request that the Office note in its records
replacement of the earlier U.S. registration by the extension of
protection. The Office proposes to require a fee to note replacement.
Under proposed Sec. 7.29, the replaced U.S. registration will
remain in force, unless cancelled, expired or surrendered, as long as
the owner files affidavits or declarations of use or excusable nonuse
under section 8 of the Act and renews the registration under section 9
of the Act.
Effect of Cancellation or Expiration of International Registration on
Extension of Protection
Under section 70 of the Act and proposed Sec. 7.30, the Office
will cancel a pending or registered extension of protection to the
United States if the IB notifies the Office of the cancellation or
expiration of the corresponding international registration, in whole or
in part.
Transformation
Under section 70(c) of the Act and proposed Sec. 7.31(a), if an
international registration is cancelled by the IB at the request of the
office of origin under Article 6(4) of the Madrid Protocol (due to the
cancellation or expiration of the basic application or registration),
the holder of the international registration may file a request to
transform the corresponding extension of protection to the United
States into an application under section 1 or 44 of the Act. The
requirements for transformation are set forth in proposed Sec. 7.31(b).
The holder of an international registration must file the request
for transformation through TEAS within 3 months of the cancellation
date of the international registration. The request must include an
application filing fee for at least one class of goods and/or services.
Under proposed Sec. 7.31(c), if a request for transformation
contains all the elements in Sec. 7.31(b), the cancelled extension of
protection to the United States will be transformed into an application
under section 1 or 44 of the Act. The application will be accorded the
same filing date and same priority (if any) as the cancelled extension
of protection to the United States. The application resulting from the
transformation will be examined as a new application under part 2 and,
if approved for publication, published for opposition. The application
must meet all the requirements of the Act and rules for an application
under section 1 or section 44 of the Act.
Under proposed Sec. 7.31(e), if the holder does not meet the
requirements of Sec. 7.31(b), the Office will not process the request
for transformation.
Maintaining an Extension of Protection to the United States
Section 71 of the Act and proposed Sec. 7.36 require a holder of
an international registration with a registered extension of protection
to the United States to file an affidavit or declaration of use in
commerce or excusable nonuse during the following time periods: (1)
between the fifth and sixth year after registration; and (2) within the
six-month period before the end of every ten-year period after the date
of registration, or upon payment of a grace period surcharge, within
the three-month grace period immediately following.
Under proposed Sec. 7.41, renewal of an international registration
must be made directly with the IB. A request for renewal of an
international registration cannot be submitted through the Office.
Renewal of international registrations is governed by Article 7 of the
Madrid Protocol and Rules 29-31 of the Common Regulations. The term of
an international registration is ten years, and it may be renewed for
ten years upon payment of the renewal fee.
Amendment to Part 2 Rules
If an international registration is not renewed, the registration
will lapse, and the IB will notify the Office. Pursuant to section
70(b) of the Act, the Office will cancel the extension of protection to
the United States.
There is no requirement in the MPIA that the holder of a registered
extension of protection to the United States renew the extension of
protection in the Office under section 9 of the Act.
In addition to the new rules added as part 7 of 37 CFR, the Office
proposes to amend rules and add new rules to part 2 of 37 CFR to bring
the rules of practice in trademark cases into conformance with the MPIA
and to set forth the requirements for examination of, registration of
and proceedings before the Trademark Trial and Appeal Board relating to
extensions of protection to the United States.
The Office proposes to amend rules 2.2, 2.11, 2.17, 2.18, 2.19,
2.21, 2.33, 2.34, 2.35, 2.37, 2.47, 2.51, 2.52, 2.65, 2.66, 2.72, 2.73,
2.75, 2.84, 2.101, 2.102, 2.104, 2.105, 2.107, 2.111, 2.112, 2.113,
2.118, 2.123, 2.127, 2.128, 2.130, 2.131, 2.142, 2.145, 2.146, 2.151,
and 2.171; and to add rules 2.53, 2.54, and 2.126.
The Office proposes to amend Sec. 2.2 to add definitions of
"ESTTA" (Electronic System for Trademark Trials and Appeals),
"international application," and "Office."
The Office proposes to revise Sec. 2.11 and its heading to
indicate that representation before the Office is governed by Sec.
10.14 of this chapter. It is redundant to have provisions governing
representation before the Office in both parts 2 and 10.
The Office proposes to reword Sec. 2.17(b) and to add a reference
to Sec. 10.14(b).
The Office proposes to amend Sec. 2.18 to clarify procedures for
establishing a correspondence address in trademark cases. The proposed
amendment does not change current practice.
The Office proposes to amend Sec. 2.19(a) to clarify procedures
for sending correspondence after a power of attorney is revoked, and to
amend Sec. 2.19(b) to indicate that the procedures for permissive
withdrawal of an attorney are governed by Sec. 10.40.
The Office proposes to amend Sec. 2.21(a) to indicate that Sec.
2.21 sets forth the minimum filing requirements only for applications
under sections 1 and 44 of the Act. The filing date of an application
under section 66(a) of the Act is governed by section 66(b) of the Act
and proposed Sec. 7.26.
The Office proposes to amend Sec. 2.33 by adding a new paragraph
(e), stating that in an application under section 66(a) of the Act, the
verified statement is part of the international registration on file at
the IB.
The Office proposes to remove Secs. 2.34(a)(1)(v),
2.34(a)(2)(ii), 2.34(a)(3)(iv) and 2.34(a)(4)(iv), which state that an
application may list more than one item of goods or more than one
service, provided that the applicant has used or has a bona fide
intention to use the mark in commerce on or in connection with all the
specified goods or services. This is stated in Secs. 2.32(a)(6),
2.33(b)(1) and 2.33(b)(2), and it is unnecessary to repeat it in Sec.
2.34.
The Office proposes to amend Sec. 2.34(a)(4)(i)(A) to require that
an application based on section 44(d) of the Act specify the serial
number of the foreign application. This incorporates a requirement of
Article 4(D)(5) of the Paris Convention, and codifies current practice,
as stated in Trademark Manual of Examining Procedure (TMEP) Sec. 1003.
The Office proposes to add a new Sec. 2.34(a)(5), setting forth a
request for extension of protection of an international registration
under section 66(a) of the Act as a fifth basis for filing a trademark
application.
The Office proposes to revise Sec. 2.34(b) to provide that more
than one basis can be claimed only in an application under
section 1 or 44 of the Act, and that a basis under section 66(a) of the
Act cannot be combined with any other basis.
The Office proposes to revise Sec. 2.35(a) to state that in an
application under section 66(a) of the Act, the applicant may not add,
substitute or delete a basis, unless the applicant meets the
requirements for transformation under section 70(c) of the Act and
proposed Sec. 7.31.
The Office proposes to revise Sec. 2.35(b) to set forth the
requirements for adding, substituting or deleting a basis in an
application under section 1 or section 44 of the Act. This is
consistent with current Secs. 2.35(a) and 2.35(b).
The Office proposes to redesignate Secs. 2.35(c) through
2.35(h) as Secs. 2.35(b)(3) through 2.35(b)(8).
The Office proposes to add a new Sec. 2.37(b), requiring that if a
mark has color, the applicant must identify the color(s) and describe
where they appear on the mark. This is consistent with the requirements
for international applications under the Madrid Protocol.
The Office proposes to amend Sec. 2.47 to indicate that an
application under section 66(a) of the Act is not eligible for
registration on the Supplemental Register. Section 68(a)(4) of the Act
provides that registration of an extension of protection of an
international registration shall be refused to any mark not eligible
for registration on the Principal Register.
The Office proposes to reword Sec. 2.51(d) to simplify the rule
and to add a provision that, in an application under section 66(a) of
the Act, the drawing of the mark must be a substantially exact
representation of the mark that appears in the international
registration.
The Office proposes to revise Sec. 2.52 to clarify the types of
drawings and format for drawings. There are two types of drawings: (1)
Standard character (typed) drawings; and (2) special form drawings.
Currently the rules refer to a standard character drawing as a "typed
drawing." The Office proposes to use the term "standard character"
because this is the term used for international applications under the
Madrid Protocol. Proposed Sec. 2.52(a) sets forth the requirements for
a standard character drawing, and proposed Sec. 2.52(b) sets forth the
requirements for a special form drawing. Additional requirements for
drawings filed through TEAS are set forth in proposed Sec. 2.53, and
additional requirements for paper drawings are set forth in proposed
Sec. 2.54.
Proposed Sec. 2.52(b)(1) requires that if color is claimed as a
feature of the mark or if the mark consists only of color, the drawing
must show the mark in color. Currently, the Office does not accept
color drawings. Under current rules, to show color in a mark, an
applicant must submit a black and white drawing, with a statement
identifying the color(s) and describing where they appear in the mark.
Alternatively, an applicant may show color by using the lining chart
set forth in TMEP Sec. 807.09(b).
Effective November 2, 2003, the Office will accept color drawings,
and will require that applicants whose marks comprise color submit a
drawing that shows color. The Office will no longer accept black and
white drawings with a color claim, or drawings that are "lined for
color."
Proposed Sec. 2.52(b)(1) requires that an applicant submit a black
and white drawing if color is not claimed as a feature of the mark.
This is consistent with the requirements for international applications
under the Madrid Protocol.
Proposed Sec. 2.52(b)(1) further requires that applicant name the
color(s) and describe where they appear on the mark.
The proposed rule does not prohibit the use of gray tones. The
Office will process drawings with gray tones as black and white
drawings unless the application includes a statement that applicant is
claiming the color gray. Thus, an applicant must submit a color claim
if applicant wants to show gray in the mark.
The Office proposes to add Sec. 2.53, setting forth the
requirements for a drawing filed through TEAS. Proposed Sec. 2.53(b)
requires that applicant attach a digitized image of the mark to the
electronic submission. The image must be no larger than 3.15 inches (8
cm) high by 3.15 inches (8 cm) wide; must be in .jpg format; and must
be scanned at no less than 250 and no more than 350 dots per inch. The
image that is scanned must be made with a pen or by a process that will
provide high definition when copied. These requirements are necessary
to ensure that the Office database contains a clear and accurate
reproduction of the mark. The 8 cm by 8 cm size requirement is
consistent with the size requirement for an international application.
The Office proposes to add Sec. 2.54, setting forth the
requirements for a paper drawing. These requirements are necessary to
ensure that the Office receives an image that can be scanned into its
database without losing clarity.
The Office proposes to amend Sec. 2.65 to add a new paragraph (d),
stating that, if a refusal or requirement is expressly limited to only
certain goods/services and the applicant fails to file a complete
response to the refusal or requirement, the application shall be
abandoned only as to those particular goods/services. This is a change
in practice. Currently, failure to respond to a refusal that pertains
to fewer than all the goods and services, or fewer than all the
classes, in an application will result in abandonment of the entire
application. See TMEP Sec. 1403.05. This change will result in fewer
abandonments and comports with sections 68(c) and 69(a) of the Act,
which provide that an application under section 66(a) of the Act is
automatically protected with respect to any goods or services for which
the Office has not timely notified the IB of a refusal.
The Office proposes to amend Sec. 2.66(a) to require that a
petition to revive an abandoned application based on unintentional
delay be filed within two months of the mailing date of the notice of
abandonment. The Office proposes to remove Sec. 2.66(a)(2), which
provides that such a petition may be filed 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.
Effective October 30, 1999, the standard for reviving abandoned
applications was changed from "unavoidable delay" to "unintentional
delay." See notices at 64 FR 48900 (Sept. 8, 1999) and 1226 TMOG 103
(Sept. 28, 1999). Since that time, there has been a substantial
increase in the number of petitions to revive filed in the Office.
Third parties may be harmed by the revival of a pending application
many months after its abandonment and removal from the Office database.
For example, a third party may have searched the Office database and
commenced using a mark because the search showed no earlier-filed
conflicting marks. Or an examining attorney may have searched the
Office database and approved a later-filed application for a
conflicting mark because the database indicated that the earlier-filed
application was abandoned. To minimize this problem, the Office
proposes to adopt a stricter time limit for filing petitions to revive
under Sec. 2.66. Moreover, the strict time limits for issuing refusals
to requests for extension of protection under section 66(a) of the Act
requires greater accuracy of the Office database.
The Office proposes to add a new Sec. 2.72(d), stating that in an
application under section 66(a) of the Act, the applicant may amend the
description or drawing of the mark only if the proposed amendment does
not materially alter 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 international application on file at the IB.
The Office proposes to amend Sec. 2.73(a) to add references to
applications under sections 44 and 66(a) of the Act. Section 2.73 sets
forth the requirements for amendment of an application to recite
concurrent use under section 2(d) of the Act.
The Office proposes to add a new Sec. 2.75(c), stating that in an
application under section 66(a) of the Act, the applicant may not amend
the application to the Supplemental Register. As noted above, section
68(a)(4) of the Act provides that registration of an extension of
protection of an international registration shall be refused to any
mark not eligible for registration on the Principal Register.
The Office proposes to revise Secs. 2.84(a) and (b) to add
references to the new filing basis under section 66(a) of the Act. The
provisions with respect to jurisdiction over published section 66(a)
applications are the same as those in applications under sections 1(a)
and 44 of the Act.
The Office proposes to amend Secs. 2.101(a), 2.111(a), 2.118
and 2.145(c)(4) to refer to the United States Patent and Trademark
Office as Office.
The Office proposes to amend Sec. 2.101(b) to substitute
"person" for "entity" to track the statutory language; to make the
rule gender neutral; to clarify the definitions of "attorney" and
"other authorized representative" by reference to Secs. 10.1(c)
and 10.14(b), respectively; to clarify that an opposition must be
signed; and to indicate that electronic signatures are required for
electronically filed oppositions.
The Office proposes to add a new Sec. 2.101(b)(1) and a new Sec.
2.101(b)(2) stating that an opposition to an application based on
section 1 or 44 of the Act may be filed either on paper or
electronically through ESTTA, but that an opposition to an application
based on section 66(a) of the Act may be filed only through ESTTA.
The Office proposes to revise Sec. 2.101(d)(1) through Sec.
2.101(d)(3) and to add new Sec. 2.101(d)(3)(i) through Sec.
2.101(d)(3)(iii) to indicate that the Office will not accept an
opposition submitted through ESTTA that does not include fees to cover
all named party opposers and all classes opposed; that the Office will
not institute an opposition proceeding if an opposition submitted on
paper does not include a fee sufficient to pay for one person to oppose
the registration of a mark in at least one class; and that the Office
will no longer correspond with an opposer in an opposition submitted on
paper to permit submission of additional fees or designation of party
opposers and/or classes where an opposition is submitted with
insufficient fees to pay for opposition by all party opposers and/or in
all classes. The revision explains how the Office will apply a fee
accompanying a paper submission that is insufficient to cover all
classes and/or to cover all party opposers.
The Office proposes to amend Sec. 2.102(a) to make the rule gender
neutral; to clarify the definitions of "attorney" and "authorized
representative" by reference to Secs. 10.1(c) and 10.14(b),
respectively; to clarify that a request to extend the time for filing
an opposition must be signed; and to indicate that electronic
signatures are required for electronically filed requests to extend the
time for filing oppositions.
The Office proposes to add a new Sec. 2.102(a)(1) and a new Sec.
2.102(a)(2) stating that a written request to extend the time for
filing an opposition to an application based on section 1 or 44 of the
Act may be filed either on paper or electronically through ESTTA, but
stating that a request to extend the time for filing an opposition to
an application based on section 66(a) of the Act may be filed only
through ESTTA.
The Office proposes to revise Sec. 2.102(c) to set out the time
frames for extensions of time to oppose and to indicate that the
Trademark Trial and Appeal Board will no longer extend a potential
opposer's time to file an opposition beyond 120 days from the date the
mark is published for opposition. The Office proposes to add Secs.
2.102(c)(1) and (2) to state the requirements concerning the filing of
permitted requests to extend the time for filing an opposition.
The Office proposes to remove Sec. 2.102(d), which requires
submission of extension requests in triplicate.
The Office proposes to revise Sec. 2.104(a) to remove the
requirement that a duplicate copy of the opposition, including
exhibits, be filed with an opposition.
The Office proposes to reword the heading for Sec. 2.105 to
specify that notification of opposition proceedings is to the parties.
The Office proposes to revise Sec. 2.105 to clarify the
definitions of "attorney" and "authorized representative" by
reference to Secs. 10.1(c) and 10.14(b), respectively; and to
indicate that, if no attorney or other authorized representative is
appointed, notification will be sent to a party's domestic
representative, or, if there is no domestic representative,
notification will be sent to the party.
The Office proposes to redesignate Sec. 2.107 as Sec. 2.107(a);
to limit this paragraph to oppositions against an application filed
under section 1 or 44 of the Act; and to state in the rule the Board
practice which prohibits an opposer in a proceeding against an
application filed under section 1 or 44 of the Act from adding to the
goods or services in an opposition after the period for filing the
opposition has closed.
The Office proposes to add a new Sec. 2.107(b) to state that
pleadings in an opposition proceeding against an application filed
under section 66(a) of the Act may be amended in the same manner and to
the same extent as in a civil action in a United States district court;
except that, once filed, such opposition may not be amended to change
or add to the grounds for opposition or to add to the goods or services
opposed.
The Office proposes to revise Sec. 2.111(b) to substitute
"person" for "entity" to track the statutory language; to make the
rule gender neutral; to clarify the definitions of "attorney" and
"authorized representative" by reference to Secs. 10.1(c) and
10.14(b), respectively; to clarify that an opposition must be signed;
and to indicate that electronic signatures are required for
electronically filed oppositions.
The Office proposes to revise Sec. 2.111(c) to divide it into four
paragraphs; to state that the Office will not accept a petition
submitted through ESTTA that does not include fees to cover all named
party petitioners and all classes; that the Office will not institute a
cancellation proceeding if a petition submitted on paper does not
include a fee sufficient to pay for one person for a cancellation in at
least one class; and that the Office will no longer correspond with a
petitioner in a cancellation submitted on paper to permit submission of
additional fees or designation of party petitioners and/or classes
where a cancellation is submitted with insufficient fees to pay for
cancellation by all party petitioners and/or in all classes. The
revision explains how the Office will apply a fee accompanying a paper
submission that is insufficient to cover all classes and/or to cover
all party petitioners.
The Office proposes to amend Sec. 2.112(a) to substitute
"person" for "entity" to track the statutory language; to make the
rule gender neutral; and to remove the requirement that a duplicate
copy of the petition, including exhibits, be filed with the petition.
The Office proposes to reword the heading for Sec. 2.113 to
specify that notification of cancellation proceedings is to the
parties.
The Office proposes to revise Sec. 2.113 to divide it into
paragraphs (a), (b), (c) and (d) for clarity; to clarify the
definitions of "attorney" and "authorized representative" by
reference to Secs. 10.1(c) and 10.14(b), respectively; and to
indicate that, if no attorney or other authorized representative is
appointed by a party, notification will be sent to that party's
domestic representative, or, if there is no domestic representative for
that party, notification will be sent to the party.
The Office proposes to amend Sec. 2.118 to delete reference to a
party residing abroad and his representative in the United States in
order to clarify that when any notice sent by the Office to a
registrant is returned to the Office, notice may be given by
publication in the Official Gazette, regardless of whether that
registrant resides in the United States or elsewhere.
The Office proposes to amend Sec. 2.123(g)(1) to require that
depositions be in written form, but to delete reference to specific
requirements that may vary depending upon the media used for
submission. Requirements for submissions are specified in proposed
Sec. 2.126.
The Office proposes to add new Sec. 2.126, entitled "Form of
submissions to the Trademark Trial and Appeal Board," which includes
paragraphs (a) through (d). Paragraphs (a) through (c) provide that
submissions may be made to the Board on paper, CD-ROM, or
electronically, as permitted by the rules contained in this part or
Board practice; and specify the requirements for each type of
submission. Paragraph (d) specifies the requirements for making a
submission to the Board that is confidential in whole or in part.
The Office proposes to amend Sec. 2.127(a) to delete the
specifications for filing on paper a brief in support of, or response
to, a motion, referring, instead to Sec. 2.126.
The Office proposes to amend Sec. 2.128(b) to require that briefs
be in written form; and to delete the specifications for filing a brief
on paper, referring, instead to Sec. 2.126.
The Office proposes to amend both the heading and the body of Sec.
2.130 to change "Examiner of Trademarks" to "trademark examining
attorney." The Office proposes to revise Sec. 2.130 to provide that,
during an inter partes proceeding, only applications under section 1 or
section 44 of the Act may be remanded, at the request of the trademark
examining attorney, for consideration of facts which appear to render
the mark unregistrable.
The Office proposes to amend Sec. 2.131 to change the term
"examiner" to "trademark examining attorney"; and to limit the
applicability of this section to inter partes proceedings involving
applications under sections 1 and 44 of the Act.
The Office proposes to revise Sec. 2.142(a) and (b)(2) to state
that notices of appeal and briefs must be filed in written form, as
prescribed in Sec. 2.126, and to delete the specifications for filing
a brief on paper.
The Office proposes to amend Sec. 2.145(b)(3) to indicate that
notices of appeal to the U.S. Court of Appeals for the Federal Circuit
be sent to the Office of the General Counsel, with a duplicate copy
addressed to the Board.
The Office proposes to amend Sec. 2.145(c)(3) to indicate that any
adverse party to an appeal taken to the U.S. Court of Appeals for the
Federal Circuit by a defeated party in an inter partes proceeding who
files a notice with the Office as provided in section 21(b) of the Act,
must address that notice to the Office of the General Counsel.
The Office proposes to amend Sec. 2.145(c)(4) to indicate that, in
order to avoid premature termination of a proceeding, a party who
commences a civil action, pursuant to section 21(b) of the Act, must
file written notice thereof at the Trademark Trial and Appeal Board.
The Office proposes to amend Sec. 2.146(c) to delete reference to
a petition to revive as an example of a situation where an affidavit or
declaration is required in support of a petition. This is a technical
correction to the rule. Effective October 30, 1999, Sec. 2.66 was
amended to delete the requirement for an affidavit or declaration in a
petition to revive based on unintentional delay. An unverified
statement is sufficient. See notices at 64 FR 48900 (Sept. 8, 1999) and
1226 TMOG 103 (Sept. 28, 1999). However, Sec. 2.146(c) still requires
a verified statement in other situations where facts are to be proven
on petition. For example, if the petition arises from the loss or
misplacement of a document submitted to the Office, it should be
accompanied by the affidavit or declaration of the person who mailed
the document, attesting to the date of submission and identifying the
document filed with the petition as a true copy of the document
previously filed. TMEP Sec. 1705.03.
The Office proposes to amend Sec. 2.146(i) to change the standard
for a showing of due diligence for petitions in which the petitioner
seeks to reactivate an application or registration that was abandoned,
cancelled or expired due to the loss or mishandling of papers.
Currently, the rule requires that to be considered diligent,
petitioners must check the status of pending matters 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 proposes to
shorten the time period from one year to six months. A showing of due
diligence would require that a petitioner check the status of a pending
application every six months between the filing date of the application
and issuance of a registration; check the status of a registration
every six months after filing an affidavit of use or excusable nonuse
under section 8 or 71 of the Act or a renewal application under section
9 of the Act until the petitioner receives notice that the affidavit or
renewal application has been accepted; and request corrective action
where necessary.
Third parties are harmed by the removal and later reinsertion of an
application or registration in the Office database. To minimize this
problem, the Office proposes to adopt stricter time limits for the
filing of petitions to revive or reinstate abandoned applications and
cancelled or expired registrations.
The Office proposes to revise Sec. 2.151 to add a reference to
section 71 of the Act, which requires periodic affidavits of use or
excusable nonuse to maintain a registration based on an extension of
protection of an international registration.
The Office proposes to add a new Sec. 2.171(b), stating that when
ownership of a registration has changed with respect to some but not
all of the goods and/or services, the registrant(s) may file a request
that the registration be physically divided into two or more separate
registrations, upon payment of the required fee for each new separate
registration created by the division.
Rule Making Requirements
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined not to
be significant for purposes of Executive Order 12866.
Regulatory Flexibility Act: The Deputy General Counsel for General
Law of the United States Patent and Trademark Office 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 main purpose of the
proposed rules is to implement legislation that provides an additional
means for filing trademark applications. Additionally, the rules
provide for some technical and other changes that will simplify the
trademark application process. Hence, the rules merely provide all
applicants for trademark registration, including small businesses, with
additional benefits.
Paperwork Reduction Act: The proposed rules are in conformity with
the requirements of the Paperwork Reduction Act of 1995 (PRA) (44
U.S.C. 3501 et seq.). 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 proposed rule contains collections of information requirements
subject to the PRA. This rule adds provisions allowing parties to (1)
file applications for international trademark registration with the IB
through the Office; (2) file subsequent designations with the IB
through the Office; (3) file responses to notices of irregularities in
international applications issued by the IB through the Office; (4)
request the Office to note in its records that a registered extension
of protection of an international registration to the United States
replaces a previously issued U.S. registration; (5) file requests to
record assignments or restrictions of a holder's right to dispose of an
international registration with the IB through the Office; and (6) file
a request that the Office transform an extension of protection that was
cancelled by the IB into an application for registration in the United
States under section 1 or section 44 of the Act. Additionally, the
proposed rule sets forth requirements for submitting an affidavit of
continued use or excusable nonuse under section 71 of the Act and
discusses changes in the information required from the public to file
notices of opposition, petitions to cancel, and requests for extensions
of time to oppose.
An information collection package supporting the changes to the
above information requirements, as set forth in this rule, has been
submitted to the Office of Management and Budget for review and
approval. Previously, a separate information package was submitted in
support of oppositions, requests for extensions of time to file
oppositions, and petitions to cancel. The public reporting burden for
this collection of information is estimated to average as follows:
fifteen minutes for international trademark applications; three minutes
for subsequent designations; ten minutes to respond to notices of
irregularities issued by the IB in connection with international
applications; two minutes to request that the Office replace a United
States registration with a subsequently registered extension of
protection to the United States; five minutes for a request to record
an assignment or restriction of a holder's right to dispose of an
international registration; five minutes for a request that the Office
transform a cancelled extension of protection into an application for
registration under section 1 or 44 of the Act; fourteen minutes for an
affidavit of continued use or excusable nonuse under section 71 of the
Act; ten minutes to forty-five minutes for notices of opposition and
petitions to cancel, depending on the particular circumstances; and ten
minutes for requests for extensions of time to oppose. 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 20230
(Attn: PTO Desk Officer).
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
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. 1123, as amended, the Office
proposes to amend title 37 as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR Part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Amend Sec. 2.2 to add new paragraphs (c) through (e), to read
as follows:
Sec. 2.2 Definitions.
* * * * *
(c) The acronym ESTTA means the Electronic System for Trademark
Trials and Appeals, available at
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=
linklog&to=http://www.uspto.gov.
(d) The term international application as used in this part means
an application for international registration that is filed under the
Madrid Protocol.
(e) The term Office means the United States Patent and Trademark
Office.
3. Revise Sec. 2.11 and its heading to read as follows:
Sec. 2.11 Representation before the Office.
Representation before the Office is governed by Sec. 10.14 of this
chapter. The Office cannot aid in the selection of an attorney.
4. Amend Sec. 2.17 by revising paragraph (b) to read as follows:
Sec. 2.17 Recognition for representation.
* * * * *
(b) Before any authorized representative, as specified in Sec.
10.14(b) of this chapter, will be allowed to take action of any kind
with respect to an application, registration or proceeding, a written
authorization from the applicant, registrant, party to the proceeding,
or other person entitled to prosecute such application or proceeding
must be filed.
* * * * *
5. Revise Sec. 2.18 to read as follows:
Sec. 2.18 Correspondence, with whom held.
(a) If documents are transmitted by an attorney, or a written power
of attorney is filed, the Office will send correspondence to the
attorney transmitting the documents, or to the attorney designated in
the power of attorney, provided that the attorney is an attorney as
defined in Sec. 10.1(c) of this chapter.
(b) The Office will not undertake double correspondence. If more
than one attorney appears or signs a document, the Office's reply will
be sent to the address already established in the record until the
applicant, registrant or party, or its duly appointed attorney,
requests in writing that correspondence be sent to another address.
(c) If an application, registration or proceeding is not being
prosecuted by an attorney but a domestic representative has been
appointed, the Office will send correspondence to the domestic
representative, unless the applicant, registrant or party designates in
writing another correspondence address.
(d) If the application, registration or proceeding is not being
prosecuted by an attorney and no domestic representative has been
appointed, the Office will send correspondence directly to the
applicant, registrant or party, unless the applicant, registrant or
party designates in writing another correspondence address.
6. Revise Sec. 2.19 and its heading to read as follows:
Sec. 2.19 Revocation of power of attorney; withdrawal.
(a) Authority to represent an applicant, registrant or a party to a
proceeding may be revoked at any stage in the proceedings of a case
upon notification to the Director; and when it is revoked, the Office
will communicate directly with the applicant, registrant or party to
the proceeding, or with the new attorney or domestic representative if
one has been appointed. The Office will notify the person affected of
the revocation of his or her authorization.
(b) If the requirements of Sec. 10.40 of this chapter are met, an
attorney authorized under Sec. 10.14 of this chapter to represent an
applicant, registrant or party in a trademark case may withdraw upon
application to and approval by the Director.
7. Amend Sec. 2.21 by revising paragraph (a) introductory text to
read as follows:
Sec. 2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application under
section 1 or section 44 of the Act that contains all of the following:
* * * * *
8. Amend Sec. 2.33 by adding a new paragraph (e) to read as
follows:
Sec. 2.33 Verified statement.
* * * * *
(e) In an application under section 66(a) of the Act, the verified
statement is part of the international registration on file at the
International Bureau.
9. Amend Sec. 2.34 by removing paragraphs (a)(1)(v), (a)(3)(iv)
and (a)(4)(iv), revising paragraphs (a) introductory text, (a)(2),
(a)(4)(i)(A), and (b), and adding a new paragraph (a)(5), to read as
follows:
Sec. 2.34 Bases for filing.
(a) The application must include one or more of the following five
filing bases:
(1) * * *
(2) Intent-to-use under section 1(b) of the Act. In an application
under section 1(b) of the Act, the applicant 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.
(3) * * *
(4) * * *
(i) * * *
(A) Specify the filing date, serial number and country of the first
regularly filed foreign application; or
* * * * *
(5) Extension of protection of an international registration under
section 66(a) of the Act. In an application under section 66(a) of the
Act, the international application or subsequent designation requesting
an extension of protection to the United States must contain a verified
statement that the applicant has a bona fide intention to use the mark
in commerce on or in connection with the goods or services listed in
the application.
(b)(1) In an application under section 1 or section 44 of the Act,
an applicant may claim more than one basis, provided 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) In an application under section 1 or section 44 of the Act, if
an 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.
(3) A basis under section 66(a) of the Act cannot be combined with
any other basis.
* * * * *
10. Revise Sec. 2.35 to read as follows:
Sec. 2.35 Adding, deleting, or substituting bases.
(a) In an application under section 66(a) of the Act, an applicant
may not add, substitute or delete a basis, unless the applicant meets
the requirements for transformation under section 70(c) of the Act and
Sec. 7.31 of this chapter.
(b) In an application under section 1 or section 44 of the Act:
(1) Before publication for opposition, an applicant may add or
substitute a basis, if the applicant meets all requirements for the new
basis, as stated in Sec. 2.34. The applicant may delete a basis at any
time.
(2) After publication, an applicant may add or substitute a basis
in an application that is not the subject of an inter partes proceeding
before the Trademark Trial and Appeal Board, but only with the express
permission of the Director, 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 Sec. 2.133(a).
(3) When an 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.
(4) 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.
(5) 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.
(6) 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.
(7) When the applicant deletes a basis, the applicant must also
delete any goods or services covered solely by the deleted basis.
(8) 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.
11. Revise Sec. 2.37 to read as follows:
Sec. 2.37 Description of mark.
(a) A description of the mark, which must be acceptable to the
trademark examining attorney, may be included in the application, and
must be included if required by the examining attorney.
(b) If a mark is displayed in color or a color combination, the
applicant must name the color(s), and describe where the color(s)
appear on the mark.
12. Amend Sec. 2.47 by redesignating paragraphs (c) and (d) as (d)
and (e) and adding a new paragraph (c) to read as follows:
Sec. 2.47 Supplemental Register.
* * * * *
(c) An application under section 66(a) of the Act is not eligible
for registration on the Supplemental Register.
* * * * *
13. Revise Sec. 2.51 to read as follows:
Sec. 2.51 Drawing required.
(a) In an application under section 1(a) of the Act, the drawing of
the mark must be a substantially exact representation of the mark as
used on or in connection with the goods and/or services.
(b) In an application under section 1(b) of the Act, the drawing of
the mark must be a substantially exact representation of the mark as
intended to be used on or in connection with the goods and/or services
specified in the application, and once an amendment to allege use under
Sec. 2.76 or a statement of use under Sec. 2.88 has been filed, the
drawing of the mark must be a substantially exact representation of the
mark as used on or in connection with the goods and/or services.
(c) In an application under section 44 of the Act, the drawing of
the mark must be a substantially exact representation of the mark as it
appears in the drawing in the registration certificate of a mark duly
registered in the applicant's country of origin.
(d) In an application under section 66(a) of the Act, the drawing
of the mark must be a substantially exact representation of the mark as
it appears in the international registration.
14. Revise Sec. 2.52 to read as follows:
Sec. 2.52 Types of drawings and format for drawings.
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:
(a) Standard character (typed) drawing. Applicants who seek to
register words, letters, numbers, or any combination thereof without
claim to any particular font style must submit a standard character
drawing. An applicant may submit a standard character drawing if:
(1) The application includes a statement that the mark is in
standard characters and no claim is made to any particular font style;
(2) The mark does not include a design element;
(3) All letters and words in the mark are depicted in Latin
characters;
(4) All numerals in the mark are depicted in Roman or Arabic
numerals; and
(5) The mark includes only common punctuation or diacritical marks.
(b) Special form drawing. Applicants who seek to register a mark
that includes a two or three-dimensional design; or color; or words,
letters, or numbers in a particular style of lettering; or a mark that
does not meet the requirements of paragraph (a) must submit a special
form drawing.
(1) Color marks. When color is claimed as a feature of the mark or
if the mark consists only of color, the drawing must show the mark in
color, and the applicant must name the color(s), and describe where the
color(s) appear on the mark. If color is not claimed as a feature of
the mark, the applicant must submit a black and white drawing.
(2) Three dimensional marks. If the mark has three-dimensional
features, the drawing must depict a single rendition of the mark, and
the applicant must indicate that the mark is three-dimensional.
(3) Motion mark. If the mark has motion, the drawing may depict a
single point in the movement, or the drawing may depict up to five
freeze frames showing various points in the movement, whichever best
depicts the commercial impression of the mark. The applicant must also
describe the mark.
(4) 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 describe the mark and explain the purpose of
the broken lines.
(5) If a drawing cannot adequately depict all significant features
of the mark, the applicant must also describe the mark.
(c) A drawing filed through TEAS must meet the requirements of
Sec. 2.53.
(d) A paper drawing must meet the requirements of Sec. 2.54.
(e) Sound, scent, and non-visual marks. An applicant is not
required to submit a drawing if the 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 description of the mark.
15. Add Sec. 2.53 to read as follows:
Sec. 2.53 Requirements for drawings filed through the Trademark
Electronic Application System (TEAS).
The drawing must meet the requirements of Sec. 2.52. In addition,
in a TEAS application, the drawing must meet the following
requirements:
(a) Standard character drawings: If an applicant is filing a
standard character drawing, the applicant must enter the mark in the
appropriate box. The applicant must indicate that the mark is in
standard characters and that no claim is made to any particular font
style.
(b) Special form drawings: If an applicant is filing a special form
drawing, the applicant must attach a digitized image of the mark to the
electronic submission.
(c) Requirements for digitized images: The image must be no larger
than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide; must be in
.jpg format; and must be scanned at no less than 250 and no more than
350 dots per inch. The image that is scanned 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. All lines must be clean, sharp
and solid, and must not be fine or crowded.
16. Add Sec. 2.54 to read as follows:
Sec. 2.54 Requirements for drawings submitted on paper.
The drawing must meet the requirements of Sec. 2.52. In addition,
in a paper application, the drawing should:
(a) Be on non-shiny white paper that is separate from the
application;
(b) Be on paper that is 8 to 8.5 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 image must be no
larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
(c) Include the caption "DRAWING PAGE" at the top of the drawing
beginning one inch (2.5 cm.) from the top edge; and
(d) Depict the mark in black ink, or in color if color is claimed
as a feature of the mark.
(e) Drawings must be typed or 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. All lines must be clean, sharp and solid, and must not be
fine or crowded.
17. Amend Sec. 2.65 by revising paragraph (a) to read as follows:
Sec. 2.65 Abandonment.
(a) If an applicant fails to respond, or to respond completely,
within six months after the date an action is mailed, the application
shall be deemed abandoned unless the refusal or requirement is
expressly limited to only certain goods and/or services. If the refusal
or requirement is expressly limited to only certain goods and/or
services, the application will be abandoned only as to those particular
goods/services. A timely petition to the Director pursuant to
Secs. 2.63(b) and 2.146, if appropriate, is a response that avoids
abandonment of an application.
* * * * *
18. Amend Sec. 2.66 by revising paragraph (a) to read as follows:
Sec. 2.66 Revival of abandoned applications.
(a) An applicant may file a petition to revive an application
abandoned because applicant did not timely respond to an Office action
or notice of allowance, if the delay was unintentional. The applicant
must file the petition within two months of the mailing date of the
notice of abandonment.
* * * * *
19. Amend Sec. 2.72 to add a new paragraph (d) to read as follows:
Sec. 2.72 Amendments to description or drawing of the mark.
* * * * *
(d) In an application under section 66(a) of the Act, the applicant
may amend the description or drawing of the mark only if 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 in the
international registration.
20. Amend Sec. 2.73 by revising paragraph (a) to read as follows:
Sec. 2.73 Amendment to recite concurrent use.
(a) An application under section 1(a), section 44, or section 66(a)
of the Act may be amended to an application for concurrent use
registration, provided the application as amended satisfies the
requirements of Sec. 2.42. The trademark examining attorney will
determine whether the application, as amended, is acceptable.
* * * * *
21. Amend Sec. 2.75 to add a new paragraph (c) to read as follows:
Sec. 2.75 Amendment to change application to different register.
* * * * *
(c) In an application under section 66(a) of the Act, the applicant
may not amend the application to the Supplemental Register.
22. Revise Sec. 2.84 to read as follows:
Sec. 2.84 Jurisdiction over published applications.
(a) The trademark examining attorney may exercise jurisdiction over
an application up to the date the mark is published in the Official
Gazette. After publication of an application under section 1(a), 44 or
66(a) of the Act the trademark examining attorney may, with the
permission of the Director, exercise jurisdiction over the application.
After publication of an application under section 1(b) of the Act, the
trademark examining attorney may exercise jurisdiction over the
application after the issuance of the notice of allowance under section
13(b)(2) of the Act. After publication, and prior to issuance of a
notice of allowance in an application under section 1(b), the trademark
examining attorney may, with the permission of the Director, exercise
jurisdiction over the application.
(b) After publication, but before the certificate of registration
in an application under section 1(a), 44 or 66(a) of the Act is
printed, or before the notice of allowance in an application under
section 1(b) of the Act is printed, an application that is not the
subject of an inter partes proceeding before the Trademark Trial and
Appeal Board may be amended if the amendment does not necessitate
republication of the mark or issuance of an Office action. Otherwise,
an amendment to such an application may be submitted only upon petition
to the Director to restore jurisdiction over the application to the
trademark examining attorney for consideration of the amendment and
further examination. The amendment of an application that is the
subject of an inter partes proceeding before the Trademark Trial and
Appeal Board is governed by Sec. 2.133.
23. Revise Sec. 2.101 to read as follows:
Sec. 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by filing a timely
opposition, together with the required fee, in the Office.
(b) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file an
opposition addressed to the Trademark Trial and Appeal Board. The
opposition need not be verified, and must be signed by the opposer or
the opposer's attorney, as specified in Sec. 10.1(c) of this chapter,
or other authorized representative, as specified in Sec. 10.14(b) of
this chapter. Electronic signatures pursuant to Sec. 1.4(d)(1)(iii) of
this chapter are required for oppositions submitted electronically
under paragraphs (b)(1) or (2) of this section.
(1) An opposition to an application based on section 1 or 44 of the
Act must be filed either on paper or through ESTTA.
(2) An opposition to an application based on section 66(a) of the
Act must be filed through ESTTA.
(c) The opposition must be filed within thirty days after
publication (Sec. 2.80) of the application being opposed or within an
extension of time (Sec. 2.102) for 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 Sec. 2.6).
(2) A timely opposition submitted through ESTTA will not be
accepted if it is accompanied by a fee that is insufficient to pay in
full for each named party opposer to oppose the registration of a mark
in each class specified in the opposition.
(3) If a timely opposition is submitted on paper, the following is
applicable if less than all required fees are submitted:
(i) If the opposition is accompanied by no fee or a fee
insufficient to pay for one person to oppose the registration of a mark
in at least one class, the opposition will be refused.
(ii) If the opposition is accompanied by fees sufficient to pay for
one person to oppose registration in at least one class, but fees are
insufficient to oppose registration in all the classes in the
application, and the particular class or classes against which the
opposition is filed are not specified, the opposition will be presumed
to be against the class or classes in ascending numerical order,
including only the number of classes in the application for which
sufficient fees have been submitted.
(iii) If persons are joined as party opposers, each must submit a
fee for each class for which opposition is sought. If the fees
submitted are sufficient to pay for one person to oppose registration
in at least one class, but are insufficient for each named party
opposer, the first-named party will be presumed to be the party
opposer. Additional parties will be deemed to be party opposers only to
the extent that the fees submitted are sufficient to pay the fee due
for each party opposer. If persons are joined as party opposers against
a multiple class application, the fees submitted are insufficient, and
no specification of opposers and classes is
made at the time the party is joined, the fees submitted will be
applied first on behalf of the first-named opposer against as many of
the classes in the application as the submitted fees are sufficient to
pay. Any excess will be applied on behalf of the second-named party to
the opposition against the classes in the application in ascending
numerical order.
24. Revise Sec. 2.102 to read as follows:
Sec. 2.102 Extension of time for filing an opposition.
(a) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file a written
request to extend the time for filing an opposition. The written
request must be signed by the potential opposer or by the potential
opposer's attorney, as specified in Sec. 10.1(c) of this chapter, or
authorized representative, as specified in Sec. 10.14(b) of this
chapter. Electronic signatures pursuant to Sec. 1.4(d)(1)(iii) of this
chapter are required for electronically filed extension requests.
(1) A written request to extend the time for filing an opposition
to an application filed under section 1 or 44 of the Act must be filed
either on paper or through ESTTA.
(2) A written request to extend the time for filing an opposition
to an application filed under section 66(a) of the Act must be filed
through ESTTA.
(b) A written request to extend the time for filing an opposition
must identify the potential opposer with reasonable certainty. Any
opposition filed during an extension of time should be in the name of
the person to whom the extension was granted. An opposition may be
accepted if the person in whose name the extension was requested was
misidentified through mistake or if the opposition is filed in the name
of a person in privity with the person who requested and was granted
the extension of time.
(c) A person may file no more than two requests to extend the time
for filing an opposition. The time for filing an opposition shall not
be extended beyond 120 days from the date of publication. A request to
extend the time for filing an opposition must be filed in the Office
and addressed to the Trademark Trial and Appeal Board.
(1) If two consecutive requests to extend the time for filing an
opposition are filed:
(i) A first request for an extension of time for thirty days must
be filed before thirty days have expired from the date of publication,
and will be granted upon request; and
(ii) A second request for an extension of time for sixty days must
be filed before the previously granted thirty-day extension of time has
expired, and will be granted by the Board only for good cause shown. No
further extensions of time to file an opposition will be granted under
any circumstances.
(2) Alternatively, a potential opposer may file a single request
for an extension of time for 90 days for good cause shown. Such a
request must be filed before thirty days have expired from the date of
publication, and will be granted by the Board only for good cause
shown. If a potential opposer does not show good cause, the Board will
treat the request as a first request for extension of time for thirty
days under Sec. 2.102(c)(1).
25. Revise Sec. 2.104(a) to read as follows:
Sec. 2.104 Contents of opposition.
(a) The opposition must set forth a short and plain statement
showing why the opposer believes it would be damaged by the
registration of the opposed mark and state the grounds for opposition.
* * * * *
26. Revise Sec. 2.105 and its heading to read as follows:
Sec. 2.105 Notification to parties of opposition proceeding(s).
When an opposition in proper form has been filed and the correct
fee(s) has been submitted, the Trademark Trial and Appeal Board shall
prepare a notification, which shall identify the title and number of
the proceeding and the application involved and shall designate a time,
not less than thirty days from the mailing date of the notification,
within which an answer must be filed. A copy of the notification shall
be forwarded to opposer's attorney, as defined in Sec. 10.1(c) of this
chapter, or other authorized representative, as defined in Sec.
10.14(b) of this chapter, if any, or to opposer's domestic
representative, if any, or to opposer. The Board shall forward a copy
of the opposition and any exhibits with a copy of the notification to
applicant's attorney, other authorized representative, or domestic
representative, if any, or to the applicant.
27. Revise Sec. 2.107 to read as follows:
Sec. 2.107 Amendment of pleadings in an opposition proceeding.
(a) Pleadings in an opposition proceeding against an application
filed under sections 1 or 44 of the Act may be amended in the same
manner and to the same extent as in a civil action in a United States
district court, except that, after the close of the time period for
filing an opposition including any extension of time for filing an
opposition, an opposition may not be amended to add to the goods or
services opposed.
(b) Pleadings in an opposition proceeding against an application
filed under section 66(a) of the Act, may be amended in the same manner
and to the same extent as in a civil action in a United States district
court, except that, once filed, the opposition may not be amended to
change or add to the grounds for opposition or to add to the goods or
services opposed.
28. Revise Sec. 2.111 to read as follows:
Sec. 2.111 Filing petition for cancellation.
(a) A cancellation proceeding is commenced by the filing of a
timely petition for cancellation, together with the required fee, in
the Office.
(b) Any person who believes that he, she or it is or will be
damaged by a registration may file a petition, addressed to the
Trademark Trial and Appeal Board, to cancel the registration in whole
or in part. The petition need not be verified, and must be signed by
the petitioner or the petitioner's attorney, as specified in Sec.
10.1(c) of this chapter, or other authorized representative, as
specified in Sec. 10.14(b) of this chapter. Electronic signatures
pursuant to Sec. 1.4(d)(1)(iii) of this chapter are required for
petitions submitted electronically. * * *
(c)(1) The petition must be accompanied by the required fee for
each party joined as petitioner for each class in the registration for
which cancellation is sought (see Sec. 2.6).
(2) A petition submitted through ESTTA will not be accepted if it
is accompanied by a fee that is insufficient to pay in full for each
named party petitioner and for each class specified in the petition.
(3) If the petition is submitted on paper, the following is
applicable if less than all required fees are submitted:
(i) If the petition is accompanied by no fee or a fee insufficient
to pay for one person for a cancellation in at least one class, the
cancellation will be refused.
(ii) If the petition is accompanied by fees sufficient to pay for
one person for a cancellation in at least one class, but fees are
insufficient for a cancellation against all the classes in the
registration, and the particular class or classes against which the
cancellation is filed are not specified, the cancellation will be
presumed to be against the class or classes in ascending numerical
order, including only the number of classes in
the registration for which sufficient fees have been submitted.
(iii) If persons are joined as party petitioners, each must submit
a fee for each class for which cancellation is sought. If the fees
submitted are sufficient to pay for one person to oppose registration
in at least one class but are insufficient for each named party
petitioner, the first-named party will be presumed to be the party
petitioner. Additional parties will be deemed to be party petitioners
only to the extent that the fees submitted are sufficient to pay the
fee due for each party petitioner. If persons are joined as party
petitioners against a multiple class registration, the fees submitted
are insufficient, and no specification of parties and classes is made
at the time the party is joined, the fees submitted will be applied
first on behalf of the first-named petitioner against as many of the
classes in the registration as the submitted fees are sufficient to
pay. Any excess will be applied on behalf of the second-named party to
the cancellation against the classes in the application in ascending
numerical order.
(4) The filing date of the petition is the date of receipt in the
Office of the petition together with the required fee.
29. Revise Sec. 2.112 to read as follows:
Sec. 2.112 Contents of petition for cancellation.
(a) The petition must set forth a short and plain statement showing
why the petitioner believes he, she or it is or will be damaged by the
registration, state the grounds for cancellation, and indicate, to the
best of petitioner's knowledge, the name and address of the current
owner of the registration.
(b) When appropriate, petitions to cancel different registrations
owned by the same party may be joined in a consolidated petition. The
required fee must be included for each party joined as a petitioner for
each class sought to be cancelled in each registration against which
the petition to cancel is filed.
30. Revise Sec. 2.113 and its heading to read as follows:
Sec. 2.113 Notification to parties of cancellation proceeding.
(a) When a petition for cancellation has been filed in proper form
(see Secs. 2.111 and 2.112), the Trademark Trial and Appeal Board
shall prepare a notification which shall identify the title and number
of the proceeding and the registration(s) involved and shall designate
a time, not less than thirty days from the mailing date of the
notification, within which an answer must be filed. A copy of the
notification shall be forwarded to petitioner's attorney, as defined in
Sec. 10.1(c) of this chapter, or other authorized representative, as
defined in Sec. 10.14(b) of this chapter, if any, or to petitioner's
domestic representative, if any, or to the petitioner. The Board shall
forward a copy of the petition to cancel and any exhibits with a copy
of the notification to the respondent (see Sec. 2.118).
(b) The respondent shall be the party shown by the records of the
Office to be the current owner of the registration(s) sought to be
cancelled, except that the Board, in its discretion, may join or
substitute as respondent a party who makes a showing of a current
ownership interest in such registration(s).
(c) When the party identified by the petitioner, pursuant to Sec.
2.112(a), as the current owner of the registration(s) is not the record
owner, a courtesy copy of the petition for cancellation shall be
forwarded with a copy of the notification to the alleged current owner.
The alleged current owner may file a motion to be joined or substituted
as respondent.
(d) If the petition is found to be defective as to form, the party
filing the petition shall be advised and allowed reasonable time for
correcting the informality.
31. Revise Sec. 2.118 to read as follows:
Sec. 2.118 Undelivered Office notices.
When a notice sent by the Office to any registrant is returned to
the Office undelivered, additional notice may be given by publication
in the Official Gazette for the period of time prescribed by the
Director.
32. Amend Sec. 2.123 by revising paragraph (g)(1) to read as
follows:
Sec. 2.123 Trial testimony in inter partes cases.
* * * * *
(g) Form of deposition. (1) The pages of each deposition must be
numbered consecutively, and the name of the witness plainly and
conspicuously written at the top of each page. A deposition must be in
written form. The questions propounded to each witness must be
consecutively numbered unless the pages have numbered lines. Each
question must be followed by its answer.
* * * * *
33. Add new Sec. 2.126 to read as follows:
Sec. 2.126 Form of submissions to the Trademark Trial and Appeal
Board.
(a) Submissions may be made to the Trademark Trial and Appeal Board
on paper where the rules in this part or Board practice permit. A paper
submission, including exhibits and depositions, must meet the following
requirements:
(1) A paper submission must be printed in at least 11-point type
and double-spaced, with text on one side only of each sheet;
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.)
wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no
tabs or other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not
have any extruding tabs or other devices, and must be on the same size
and weight paper as the submission;
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits
shall be identified in the manner prescribed in Sec. 2.123(g)(2);
(6) Exhibits pertaining to a paper submission must be filed on
paper or CD-ROM concurrently therewith, and comply with the
requirements for a paper or CD-ROM submission.
(b) Submissions may be made to the Trademark Trial and Appeal Board
on CD-ROM where the rules in this part or Board practice permit. A CD-
ROM submission must identify the parties and case number and contain a
list that clearly identifies the documents and exhibits contained
thereon. This information must appear in the data contained in the CD-
ROM itself, on a label affixed to the CD-ROM, and on the packaging for
the CD-ROM. Text in a CD-ROM submission must be in at least 11-point
type and double-spaced. A brief filed on CD-ROM must be accompanied by
a single paper copy of the brief. A CD-ROM submission must be
accompanied by a transmittal letter on paper that identifies the
parties, the case number and the contents of the CD-ROM.
(c) Submissions may be made to the Trademark Trial and Appeal Board
electronically via the Internet where the rules in this part or Board
practice permit, according to the parameters established by the Board
and published at
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html
&log=linklog&to=http://www.uspto.gov. Text in an electronic submission
must be in at least 11-point type and double-spaced. Exhibits
pertaining to an electronic submission must be made electronically as
an attachment to the submission.
(d) To be handled as confidential, submissions to the Trademark
Trial and Appeal Board that are confidential in whole or part pursuant
to Sec. 2.125(e), must be submitted under a separate cover. Both the
submission and its cover must be marked confidential and identify the
case number and the parties. A copy of the submission with the
confidential portions redacted must be submitted.
34. Revise Sec. 2.127(a) to read as follows:
Sec. 2.127 Motions.
(a) Every motion shall be submitted in written form and must meet
the requirements prescribed in Sec. 2.126. It shall contain a full
statement of the grounds, and shall embody or be accompanied by a
brief. Except as provided in paragraph (e)(1) of this section, a brief
in response to a motion shall be filed within fifteen days from the
date of service of the motion unless another time is specified by the
Trademark Trial and Appeal Board, or the time is extended by
stipulation of the parties approved by the Board, or upon motion
granted by the Board, or upon order of the Board. If a motion for an
extension is denied, the time for responding to the motion remains as
specified under this section, unless otherwise ordered. The Board may,
in its discretion, consider a reply brief. Except as provided in
paragraph (e)(1) of this section, a reply brief, if filed, shall be
filed within fifteen days from the date of service of the brief in
response to the motion. The time for filing a reply brief will not be
extended. No further papers in support of or in opposition to a motion
will be considered by the Board. The brief in support of a motion and
the brief in response to the motion shall not exceed twenty-five pages
in length, and a reply brief shall not exceed ten pages in length.
Exhibits submitted in support of or in opposition to a motion shall not
be deemed to be part of the brief for purposes of determining the
length of the brief. When a party fails to file a brief in response to
a motion, the Board may treat the motion as conceded. An oral hearing
will not be held on a motion except on order by the Board.
* * * * *
35. Amend Sec. 2.128 by revising paragraph (b) to read as follows:
Sec. 2.128 Briefs at final hearing.
* * * * *
(b) Briefs must be submitted in written form and must meet the
requirements prescribed in Sec. 2.126. Each brief shall contain an
alphabetical index of cited cases. Without prior leave of the Trademark
Trial and Appeal Board, a main brief on the case shall not exceed
fifty-five pages in length in its entirety, including the table of
contents, index of cases, description of the record, statement of the
issues, recitation of the facts, argument, and summary; and a reply
brief shall not exceed twenty-five pages in its entirety.
36. Revise Sec. 2.130 and its heading to read as follows:
Sec. 2.130 New matter suggested by the trademark examining attorney.
If, while an inter partes proceeding involving an application under
section 1 or 44 of the Act is pending, facts appear which, in the
opinion of the trademark examining attorney, render the mark in the
application unregistrable, the facts should be called to the attention
of the Trademark Trial and Appeal Board. The Board may suspend the
proceeding and refer the application to the trademark examining
attorney for an ex parte determination of the question of
registrability. A copy of the trademark examining attorney's final
action will be furnished to the parties to the inter partes proceeding
following the final determination of registrability by the trademark
examining attorney or the Board on appeal. The Board will consider the
application for such further inter partes action as may be appropriate.
37. Revise Sec. 2.131 to read as follows:
Sec. 2.131 Remand after decision in inter partes proceeding.
If, during an inter partes proceeding involving an application
under section 1 or 44 of the Act, facts are disclosed which appear to
render the mark unregistrable, but such matter has not been tried under
the pleadings as filed by the parties or as they might be deemed to be
amended under Rule 15(b) of the Federal Rules of Civil Procedure to
conform to the evidence, the Trademark Trial and Appeal Board, in lieu
of determining the matter in the decision on the proceeding, may remand
the application to the trademark examining attorney for reexamination
in the event the applicant ultimately prevails in the inter partes
proceeding. Upon remand, the trademark examining attorney shall
reexamine the application in light of the reference by the Board. If,
upon reexamination, the trademark examining attorney finally refuses
registration to the applicant, an appeal may be taken as provided by
Secs. 2.141 and 2.142.
38. Amend Sec. 2.142 by revising paragraphs (a) and (b)(2) to read
as follows:
Sec. 2.142 Time and manner of ex parte appeals.
(a) Any appeal filed under the provisions of Sec. 2.141 must be
filed within six months from the date of the final refusal or the date
of the action from which the appeal is taken. An appeal is taken by
filing a notice of appeal in written form, as prescribed in Sec.
2.126, and paying the appeal fee.
(b) * * *
(2) Briefs must be submitted in written form and must meet the
requirements prescribed in Sec. 2.126. Each brief shall contain an
alphabetical index of cited cases. Without prior leave of the Trademark
Trial and Appeal Board, a brief shall not exceed twenty-five pages in
length in its entirety, including the table of contents, index of
cases, description of the record, statement of the issues, recitation
of the facts, argument, and summary.
* * * * *
39. Amend Sec. 2.145 by revising paragraphs (b)(3), (c)(3) and
(c)(4) to read as follows:
Sec. 2.145 Appeal to court and civil action.
* * * * *
(b) * * *
(3) The notice, if mailed to the Office, shall be addressed as
follows: Office of the General Counsel, P.O. Box 15667, Arlington,
Virginia 22215, and should include a duplicate copy addressed to the
Trademark Trial and Appeal Board.
(c) * * *
(3) Any adverse party to an appeal taken to the U.S. Court of
Appeals for the Federal Circuit by a defeated party in an inter partes
proceeding may file a notice with the Office, addressed to the Office
of the General Counsel, within twenty days after the filing of the
defeated party's notice of appeal to the court (paragraph (b) of this
section), electing to have all further proceedings conducted as
provided in section 21(b) of the Act. The notice of election must be
served as provided in Sec. 2.119.
(4) In order to avoid premature termination of a proceeding, a
party who commences a civil action, pursuant to section 21(b) of the
Act, must file written notice thereof at the Trademark Trial and Appeal
Board.
* * * * *
40. Amend Sec. 2.146 by revising paragraphs (c) and (i) to read as
follows:
Sec. 2.146 Petitions to the Director.
* * * * *
(c) Every petition to the Director shall include a statement of the
facts relevant to the petition, the points to be reviewed, the action
or relief that is requested, and the fee required by Sec. 2.6. Any
brief in support of the petition shall be embodied in or accompany the
petition. When facts are to be proved in ex parte cases, proof in the
form of affidavits or declarations in accordance with Sec. 2.20, and
any exhibits, shall accompany the petition.
* * * * *
(i) Where a petitioner seeks to reactivate an application or
registration that was abandoned, cancelled or expired because papers
were lost or mishandled, the Director may deny the petition if the
petitioner was not diligent in checking the status of the application
or registration. To be considered diligent, a petitioner must:
(1) During the pendency of an application, check the status of the
application every six months between the filing date of the application
and issuance of a registration;
(2) After filing an affidavit of use or excusable nonuse under
section 8 or 71 of the Act, or a renewal application under section 9 of
the Act, check the status of the registration every six months until
the petitioner receives notice that the affidavit or renewal
application has been accepted; and
(3) If the status check reveals that the Office has not received a
paper filed by the petitioner, or that the Office has issued an action
or notice that the petitioner has not received, the petitioner must
request corrective action.
* * * * *
41. Revise Sec. 2.151 to read as follows:
Sec. 2.151 Certificate.
When the Office determines that a mark is registrable, the Office
will issue a certificate stating that the applicant is entitled to
registration on the Principal Register or on the Supplemental Register.
The certificate will state the application filing date, 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 sections 8 and 71 of the Act will accompany the
certificate.
42. Revise Sec. 2.171 to read as follows:
Sec. 2.171 New certificate on change of ownership.
(a) If the ownership of a registered mark changes, the assignee may
request that a new certificate of registration be issued in the name of
the assignee for the unexpired part of the original period. The
assignment must be recorded in the Office, and the request for the new
certificate must be signed by the assignee and accompanied by the fee
required by Sec. 2.6(a)(8). If available, the original certificate of
registration must be submitted.
(b) When ownership of a registration has changed with respect to
some, but not all, of the goods and/or services, the registrant(s) may
file a request that the registration be physically divided into two or
more separate registrations. The fee required by Sec. 2.6(a)(8) must
be paid for each new separate registration created by the division, and
the change of ownership must be recorded in the Office.
43. Add a new part 7, to read as follows:
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE MADRID
PROTOCOL
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
Subpart A--General Information
Sec. 7.1 Definitions of terms as used in this part.
(a) The Act means the Trademark Act of 1946, 60 Stat. 427, as
amended, codified in 15 U.S.C. 1051 et seq.
(b) Subsequent designation means a request for extension of
protection of an international registration to a Contracting Party made
after international registration.
(c) The acronym TEAS means the Trademark Electronic Application
System available online through the Office's web site at:
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=
linklog&to=www.uspto.gov.
(d) The term Office means the United States Patent and Trademark
Office.
Sec. 7.3 Correspondence must be in English.
All correspondence relating to international applications and
registrations and requests for extension of protection filed in the
Office must be in English. The Office will not process correspondence
that is in a language other than English.
Sec. 7.4 Receipt of correspondence.
Correspondence relating to international applications and
registrations and requests for extension of protection transmitted
electronically will be accorded the date and time on which the complete
transmission is received in the Office based on Eastern Time. Eastern
Time means eastern standard time or eastern daylight time, as
appropriate.
Sec. 7.6 Schedule of U.S. process fees.
(a) The Office requires the following process fees:
(1) For certifying an international application based on a single
basic application or registration, per class--$100.00
(2) For certifying an international application based on more than
one basic application or registration, per class--$150.00
(3) For transmitting a request to record an assignment or
restriction under Sec. 7.23 or Sec. 7.24+$100.00
(4) For filing a notice of replacement, per class--$100.00
(5) For filing an affidavit under section 71 of the Act, per
class--$100.00
(6) Surcharge for filing an affidavit under section 71 of the Act
during the grace period, per class--$100.00
(7) For transmitting a subsequent designation--$100.00
(b) The fees required in paragraph (a) of this section must be paid
in U.S. dollars at the time of filing. See Sec. 1.23 of this chapter
for acceptable forms of payment and Sec. 1.24 of this chapter for
payments using a deposit account established in the Office.
Sec. 7.7 Payments of fees to International Bureau.
(a) The schedule of fees required by the International Bureau and
fee calculator may be viewed online at:
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.wipo.int/madrid.
(b) The following fees required by the International Bureau may be
paid either directly to the International Bureau or through the Office:
(1) International application fee;
(2) Fee for correcting irregularities in an international
application;
(3) Subsequent designation fee; and
(4) Recording fee for an assignment of or restriction to an
international registration under Sec. 7.23 or Sec. 7.24.
(c) The fees required in paragraph (b) of this section may be paid
as follows:
(1)(i) Directly to the International Bureau by debit to a current
account with the International Bureau. As proof of payment in this
case, an applicant or holder's submission to the Office must include
the International Bureau account number; or
(ii) Directly to the International Bureau using any other method of
payment. As proof of payment in this case, an applicant or holder's
submission to the Office must include the International Bureau receipt
number for payment of the fees; or
(2) Through the Office. Fees paid through the Office must be paid
in U.S. dollars at the time of submission. See Sec. 1.23 of this
chapter for acceptable forms of payment and Sec. 1.24 of this chapter
for payments using a deposit account established in the Office.
Subpart B--International Application Originating From the United
States
Sec. 7.11 Requirements for international application originating from
the United States.
(a) The Office will grant a date of receipt to an international
application that is submitted through TEAS and contains all of the
following:
(1) The filing date and serial number of the basic application and/
or the registration date and registration number of the basic
registration;
(2) The name and address of the international applicant that are
identical to the name and address of the applicant or registrant as
they appear in the basic application or basic registration;
(3) A reproduction of the mark that is identical to the mark in the
basic application and/or registration and meets the requirements of
Sec. 2.52 of this chapter. If the mark in the basic application and/or
registration is depicted in black and white, the mark in the
international application must be black and white. If the mark in the
basic application and/or registration is depicted in color, the mark in
the international application must be in color;
(4) A color claim as set out in Sec. 7.12, if appropriate;
(5) A description of the mark that is identical to the description
of the mark in the basic application or registration, as appropriate;
(6) An indication of the type of mark if the mark in the basic
application and/or registration is a three-dimensional mark, a sound
mark, a collective mark or a certification mark;
(7) A list of the goods and/or services that is identical to or
narrower than the list of goods and/or services in each claimed basic
application or registration and classified according to the Nice
Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks;
(8) A list of the Contracting Parties designated for an extension
of protection. If the goods and/or services in the international
application are not the same for all Contracting Parties, the
application must include a list of the goods and/or services in the
international application that pertain to each designated Contracting
Party;
(9) The certification fee required by Sec. 7.6, and the
international application fees for all classes and designated
Contracting Parties identified in the international application (see
Sec. 7.7);
(10) A statement that the applicant is entitled to file an
international application in the Office, specifying that applicant: is
a national of the United States; has a domicile in the United States;
or has a real and effective industrial or commercial establishment in
the United States. Where an applicant's address is not in the United
States, the applicant must provide the address of its U.S. domicile or
establishment; and
(11) An e-mail address for receipt of correspondence from the
Office.
(b) For requirements for certification, see Sec. 7.13.
Sec. 7.12 Claim of color.
(a) If color is claimed as a feature of the mark in the basic
application and/or registration, the international applicant must
include a statement that color is claimed as a feature of the mark and
set forth the same name(s) of the color(s) claimed in the basic
application and/or registration. If the basic application and/or
registration claim color as a feature of the mark, but the mark is
depicted in black and white, the international application must include
both a black and white reproduction of the mark and a color
reproduction of the mark that meet the requirements of Sec. 2.52 of
this chapter.
(b) If color is not claimed as a feature of the mark in the basic
application and/or registration, color may not be claimed as a feature
of the mark in the international application.
Sec. 7.13 Certification of international application.
(a) Where an international application contains all the elements
set forth in Sec. 7.11(a), the Office will certify to the
International Bureau that the information contained in the
international application corresponds to the information contained in
the basic application(s) and/or basic registration(s) at the time of
certification, and will forward the international application to the
International Bureau.
(b) Where an international application does not meet the
requirements of Sec. 7.11(a), the Office will not certify or forward
the international application. If the international applicant paid the
international application fees required by Sec. 7.7 through the
Office, the Office will refund the international fees. The Office will
not refund the certification fee.
Sec. 7.14 Correcting irregularities in international application.
(a) Upon receipt of a notice of irregularities in an international
application from the International Bureau, the applicant must respond
to the International Bureau within the period set forth in the notice.
Failure to file a timely response to a notice of irregularities may
result in the abandonment of the international application by the
International Bureau.
(b) Classification and identification of goods and services.
Responses to International Bureau notices of irregularities in the
classification or identification of goods or services in an
international application must be submitted through the Office for
forwarding to the International Bureau. The Office will not review the
response or respond to the irregularities on behalf of the
international applicant.
(c) Fees. If the International Bureau notifies an international
applicant that the fees filed in connection with the international
application are insufficient or that irregularities in the
classification of goods or services require additional fees, the
international applicant must pay the additional fees directly to the
International Bureau or through the Office for forwarding to the
International Bureau.
(d) An international applicant submitting a response or paying
additional fees to the International Bureau through the Office must use
TEAS. The International Bureau must receive the response or fees before
the end of the response period set forth in the International Bureau
notice, even if the response or payment of fees is sent through the
Office. To assist the Office in its efforts to timely transmit the
response or fees to the International Bureau, the response or fees
should be submitted as soon as possible, at least one month before the
end of the response period in the International Bureau's notice.
(e) Other Irregularities. Except for irregularities mentioned in
paragraphs (b) and (c) of this section, responses to irregularities
must be filed directly at the International Bureau.
Subpart C--Subsequent Designation Submitted Through the Office
Sec. 7.21 Subsequent designation.
(a) A subsequent designation may be filed either directly with the
International Bureau or submitted through the Office.
(b) The date of receipt in the Office of a subsequent designation
is the date that the subsequent designation is submitted through TEAS
and contains all of the following:
(1) The international registration number;
(2) The name and address of the holder of the international
registration;
(3) A statement that the holder is entitled to file a subsequent
designation in the Office, specifying that holder: is a national of the
United States; has a domicile in the United States; or has a real and
effective industrial or commercial establishment in the United States.
Where a holder's address is not in the United States, the holder must
provide the address of its U.S. domicile or establishment;
(4) A list of goods and/or services that is identical to or
narrower than the list of goods and/or services in the international
registration;
(5) A list of the Contracting Parties designated for an extension
of protection. If the goods and/or services in the subsequent
designation are not the same for all the Contracting Parties
designated, the holder must include a list of the goods and/or services
covered by the subsequent designation that pertain to each designated
Contracting Party;
(6) The U.S. transmittal fee required by Sec. 7.6 and the
subsequent designation fees required by the International Bureau (Sec.
7.7); and
(7) An e-mail address for receipt of correspondence from the
Office.
(c) If the subsequent designation is accorded a date of receipt,
the Office will forward the subsequent designation to the International
Bureau.
(d) Correspondence to correct any irregularities in a subsequent
designation must be made directly with the International Bureau, even
if the subsequent designation is submitted through the Office. If such
correspondence is sent to the Office, the Office will not process the
correspondence.
Subpart D--Recording Changes to International Registration
Sec. 7.22 Recording changes to international registration.
(a) All requests to record changes to an international registration
must be filed directly with the International Bureau, except for
requests to record changes to an international registration under
Secs. 7.23 and 7.24. If a request to record an assignment or
restriction of a holder's right of disposal of an international
registration meets the requirements of Sec. 7.23 or 7.24, the Office
will forward the request to the International Bureau.
(b) Assignments or restrictions of a holder's rights of disposal of
an international registration must be recorded by the International
Bureau. Section 10 of the Act and part 3 of this chapter are not
applicable to such assignments or restrictions.
(c) When the Office is notified by the International Bureau of an
assignment or restriction of a holder's right of disposal of an
international registration with an extension of protection to the
United States, the Office will take note of the assignment or
restriction in its records.
Sec. 7.23 Request to record assignment submitted through the Office.
(a) In limited circumstances, a request to record an assignment of
an international registration may be submitted through the Office for
forwarding to the International Bureau. The following conditions must
apply:
(1) The assignee cannot obtain the assignor's signature on the
request to record an assignment; and
(2) The assignee is a national of the United States, has a domicile
in the United States, or has a real and effective industrial or
commercial establishment in the United States.
(b) The assignee must submit a request to record an assignment
under paragraph (a) of this section through the Office that includes
all of the following:
(1) The international registration number;
(2) The name and address of the holder of the international
registration;
(3) The name and address of the assignee of the international
registration;
(4) A statement that the assignee: is a national of the United
States; has a domicile in the United States; or has a real and
effective industrial or commercial establishment in the United States.
Where an assignee's address is not in the United States, the assignee
must provide the address of its U.S. domicile or establishment;
(5) A list of the designated Contracting Parties with respect to
which the international registration has been assigned;
(6) A list of the goods and/or services in the international
registration that have been assigned and the designated Contracting
Parties to which they pertain;
(7) A description of the interest conveyed; and
(8) The U.S. transmittal fee required by Sec. 7.6 and the fees
required by the International Bureau to record the assignment (See
Sec. 7.7).
(c) If a request to record an assignment contains all the elements
set forth in paragraph (b) of this section, the Office will forward the
request to the International Bureau. Forwarding the request to the
International Bureau is not a determination by the Office of the
validity of the assignment or the effect that the assignment has on the
title of the international registration.
(d) If the request fails to contain all of the elements set forth
in paragraph (b) of this section, the Office will not forward the
request. The Office will notify the assignee(s) of the refusal and the
reason(s) for the refusal.
(e) Except for those assignments meeting the conditions set forth
in paragraph (a) of this section, requests to record assignments may
not be submitted through the Office.
Sec. 7.24 Request to record security interest or other restriction of
holder's rights of disposal submitted through the Office.
(a) In limited circumstances, a request to record a security
interest or other restriction of a holder's right to dispose of an
international registration may be submitted through the Office for
forwarding to the International Bureau. The following conditions must
apply:
(1) The restriction is the result of an agreement between the
holder of the international registration and the party restricting the
holder's right of disposal and is not the result of a court order; and
(2) The signature of the holder of the international registration
cannot be obtained for the request to record the restriction.
(b) The party who obtained a restriction of the holder's right of
disposal must submit a request to record the restriction under
paragraph (a) of this section through the Office that includes all the
following:
(1) The international registration number;
(2) The name and address of the holder of the international
registration;
(3) The name and address of the party who holds the restriction;
(4) A statement that the party who submitted the request: is a
national of the United States; has a domicile in the United States; or
has a real and effective industrial or commercial establishment in the
United States. Where a party's address is not in the United States, the
party must provide the address of its U.S. domicile or establishment;
(5) A summary of the main facts concerning the restriction; and
(6) A list of the Contracting Parties designated in the
international registration to which the restriction applies.
(c) If a request to record a restriction contains all of the
elements set forth in paragraph (b) of this section, the Office will
forward the request to the International Bureau. Forwarding the request
to the International Bureau is not a determination by the Office of the
validity of the restriction or the effect that the restriction has on
the holder's right to dispose of the international registration.
(d) If the request fails to contain all the elements set forth in
paragraph (b) of this section, the Office will not forward the request.
The Office will notify the party who submitted the request of the
refusal and the reason(s) for the refusal.
(e) Except for restrictions meeting the conditions set forth in
paragraph (a) of this section, restrictions on a holder's right to
dispose of an international registration may not be submitted through the
Office.
Subpart E--Extension of Protection to the United States
Sec. 7.25 Applicability of part 2 to extension of protection.
(a) Except for Secs. 2.130, 2.131, 2.160 through 2.166, 2.168,
and 2.181 through 2.186, all sections in part 2 of this chapter apply
to a request for extension of protection of an international
registration to the United States, including sections related to
proceedings before the Trademark Trial and Appeal Board, unless stated
otherwise.
(b) For purposes of examination, a request for an extension of
protection to the United States is referred to as an application under
section 66(a) of the Act, and references to applications and
registrations in part 2 of this chapter include extensions of
protection to the United States.
(c) Upon registration, an extension of protection to the United
States is referred to as a registration or a registered extension of
protection.
Sec. 7.26 Filing date of extension of protection for purposes of
examination in the Office.
(a) If a request for extension of protection of an international
registration to the United States is made in an international
application and the request includes a declaration of a bona fide
intention to use the mark in commerce, the filing date of the extension
of protection to the United States is the international registration
date.
(b) If a request for extension of protection of an international
registration to the United States is made in a subsequent designation
and the request includes a declaration of a bona fide intention to use
the mark in commerce, the filing date of the extension of protection to
the United States is the International Bureau date of recording of the
subsequent designation.
Sec. 7.27 Priority claim of extension of protection for purposes of
examination in the Office.
An extension of protection of an international registration to the
United States is entitled to a claim of priority under section 67 of
the Act if:
(a) The request for extension of protection contains a claim of
priority;
(b) The request for extension of protection specifies the filing
date, serial number and the country of the application that form the
basis for the claim of priority; and
(c) The date of the international registration or the date of
recording of the subsequent designation at the International Bureau of
the request for extension of protection to the United States is not
later than six months after the filing date of the application that
forms the basis for the claim of priority.
Sec. 7.28 Replacement of U.S. registration by registered extension of
protection.
(a) A registered extension of protection shall have the same rights
accrued to a previously issued U.S. registration if:
(1) Both registrations are owned by the same person and identify
the same mark; and
(2) All of the goods and/or services listed in the U.S.
registration are also listed in the registered extension of protection.
(b) The holder of an international registration with an extension
of protection to the United States may file a request to note
replacement of the U.S. registration with the extension of protection.
If the request contains all of the following, the Office will take note
of the replacement in its automated records:
(1) The serial number or registration number of the extension of
protection;
(2) The registration number of the replaced U.S. registration; and
(3) The fee required by Sec. 7.6.
(c) If the request to note replacement is denied, the Office will
notify the holder of the reason(s) for refusal.
Sec. 7.29 Effect of replacement on U.S. registration.
A U.S. registration that has been replaced by a registered
extension of protection under section 74 of the Act and Sec. 7.28 will
remain in force, unless cancelled, expired or surrendered, as long as:
(a) The owner of the replaced U.S. registration continues to file
affidavits or declarations of use in commerce or excusable nonuse under
section 8 of the Act; and
(b) The replaced U.S. registration is renewed under section 9 of
the Act.
Sec. 7.30 Effect of cancellation or expiration of international
registration.
When the International Bureau notifies the Office of the
cancellation or expiration of an international registration, in whole
or in part, the Office shall cancel, in whole or in part, the
corresponding pending or registered extension of protection to the
United States. The date of cancellation of an extension of protection
or relevant part shall be the date of cancellation or expiration of the
corresponding international registration or relevant part.
Sec. 7.31 Requirements for transformation of an extension of
protection to the United States into a U.S. application.
(a) If the International Bureau cancels an international
registration in whole or in part, under Article 6(4) of the Madrid
Protocol, the holder of that international registration may file a
request to transform the corresponding pending or registered extension
of protection to the United States into an application under section 1
or 44 of the Act.
(b) The holder of the international registration must file a
request for transformation through TEAS within three months of the date
of cancellation of the international registration and include:
(1) The serial number or registration number of the extension of
protection to the United States;
(2) The name and address of the holder of the international
registration;
(3) The application filing fee for at least one class of goods or
services required by Sec. 2.6 of this chapter; and
(4) An e-mail address for receipt of correspondence from the
Office.
(c) If the request for transformation contains all of the elements
set forth in paragraph (b) of this section, the extension of protection
shall be transformed into an application under section 1 or 44 of the
Act and accorded the same filing date and the same priority that was
accorded to the extension of protection.
(d) The application under section 1 or 44 of the Act that results
from a transformed extension of protection will be examined under part
2 of this chapter.
(e) A request for transformation that fails to contain all of the
elements set forth in paragraph (b) of this section will not be
processed.
Subpart F--Affidavit Under Section 71 of the Act for Extension of
Protection to the United States
Sec. 7.36 Affidavit or declaration of use in commerce or excusable
nonuse required to avoid cancellation of an extension of protection to
the United States.
(a) Subject to the provisions of section 71 of the Act, a
registered extension of protection shall remain in force for the term
of the international registration upon which it is based unless the
international registration expires or is cancelled by the International
Bureau.
(b) During the following time periods, the holder of an
international registration must file an affidavit or declaration of use
or excusable nonuse,
or the registered extension of protection will be cancelled:
(1) On or after the fifth anniversary and no later than the sixth
anniversary after the date of registration; and
(2) Within the six-month period preceding the end of each ten-year
period after the date of registration, or the three-month grace period
immediately following, with payment of the grace period surcharge
required by section 71(a)(2)(B) of the Act and Sec. 7.6.
Sec. 7.37 Requirements for a complete affidavit or declaration of use
in commerce or excusable nonuse.
A complete affidavit or declaration under section 71 of the Act
must:
(a) Be filed by the holder of the international registration within
the period set forth in Sec. 7.36(a);
(b) Include a statement that is signed and verified (sworn to) or
supported by a declaration under Sec. 2.20 of this chapter by a person
properly authorized to sign on behalf of the holder, attesting to the
use in commerce or excusable nonuse of the mark within the period set
forth in section 71 of the Act. The verified statement must be executed
on or after the beginning of the filing period specified in Sec.
7.36(a). A person who is properly authorized to sign on behalf of the
holder is:
(1) A person with legal authority to bind the holder; or
(2) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the holder; or
(3) An attorney as defined in Sec. 10.1(c) of this chapter who has
an actual written or verbal power of attorney or an implied power of
attorney from the holder.
(c) Include the U.S. registration number;
(d)(1) Include the fee required by Sec. 7.6 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 71(a)(2)(B) of the Act, include the grace period
surcharge per class required by Sec. 7.6;
(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. If the required fee(s) are
not submitted within the time period set out in the Office action 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 Sec. 7.37(f)(2);
(2) Specify the goods or services being deleted from the
registration, if the affidavit or declaration covers less than all the
goods or services or less than all the classes in 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; and
(g) Include a specimen showing current use of the mark for each
class of goods or services, unless excusable nonuse is claimed under
Sec. 7.37(f)(2). The specimen must meet the requirements of Sec. 2.56
of this chapter.
Sec. 7.38 Notice to holder of extension of protection.
The registration certificate for an extension of protection to the
United States includes a notice of the requirement for filing the
affidavit or declaration of use or excusable nonuse under section 71 of
the Act. However, the affidavit or declaration must be filed within the
time period required by section 71 of the Act regardless of whether
this notice is received.
Sec. 7.39 Acknowledgment of receipt of affidavit or declaration of
use in commerce or excusable nonuse.
(a) The Office will issue a notice that states whether an affidavit
or declaration of use in commerce or excusable nonuse is acceptable,
and if the affidavit or declaration is refused as unacceptable, the
reasons for refusal.
(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 71(a) of the Act, whichever is later. The
Office will cancel the extension of protection if no response is filed
within this time period.
Sec. 7.40 Petition to Director 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
Director, unless the examiner directs otherwise. See Sec. 7.39(b) for
the deadline for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, the holder may file a petition to the Director to review
the examiner's action. 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.
(c) A decision by the Director is necessary before filing an appeal
or commencing a civil action in any court.
Subpart G--Renewal of International Registration and Extension of
Protection
Sec. 7.41 Renewal of international registration and extension of
protection.
(a) Any request to renew an international registration and its
extension of protection to the United States must be made at the
International Bureau in accordance with Article 7 of the Madrid
Protocol.
(b) A request to renew an international registration or extension
of protection to the United States submitted through the Office will
not be processed.
March 21, 2003 JON W. DUDAS
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office