| Trademark Examination |
Referenced Items (431, 432, 433, 434, 435, 436, 437, 438, 439, 440, 441) |
(431) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2, 3, 6 and 7
[Docket No. PTO-T-2005-0018]
RIN 0651-AB89
Miscellaneous Changes to Trademark Rules of Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office ("Office") is
amending the Trademark Rules of Practice to clarify certain
requirements for applications, intent to use documents, amendments to
classification, requests to divide, and Post Registration practice; to
modernize the language of the rules; and to make other miscellaneous
changes. For the most part, the rule changes are intended to codify
existing practice, as set forth in the Trademark Manual of Examining
Procedure ("TMEP").
DATES: This rule is effective January 16, 2009.
FOR FURTHER INFORMATION: Contact Mary Hannon, Office of the
Commissioner for Trademarks, by telephone at (571) 272-9569.
SUPPLEMENTARY INFORMATION: A proposed rule was published in the Federal
Register on June 12, 2008 at 73 FR 33356, and in the Official Gazette
on July 8, 2008. The Office received comments from one law firm and one
organization. These comments are posted on the Office's Web site at
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/tm_
comments2008aug20/index.htm, and are addressed below.
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. References to "TMEP" or "Trademark Manual of Examining
Procedure" refer to the 5th edition, September 2007. References to the
"TBMP" or "Trademark Trial and Appeal Board Manual of Procedure"
refer to the 2nd edition, Rev. 1, March 12, 2004.
Where appropriate, the Office has reworded or reorganized the rules
for clarity, and added headings to facilitate navigation through the
rules.
On August 14, 2008, the Office published a final rule that, inter
alia, removed §§ 10.14 and 10.18 of this chapter and replaced
them with new §§ 11.14 and 11.18; added a definition of
"attorney" to § 11.1 of this chapter; and changed cross-
references in several of the rules in parts 2 and 7 of this chapter.
The rule change was effective September 15, 2008. See notice at 73 FR
47650 (Aug. 14, 2008). The cross-references in this notice have been
changed accordingly.
Applications for Registration
The Office is amending § 2.21(a) to require that an application
under section 1 or section 44 of the Trademark Act must be in the
English language to receive a filing date.
Comment: One comment requested clarification as to whether the rule
applies to applications under section 66(a) of the Trademark Act.
Response: The preamble of § 2.21 explicitly states that the
rule applies only to "an application under section 1 or section 44 of
the Act." In a section 66(a) application (i.e., a request for
extension of protection of an international registration to the United
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States pursuant to the Madrid Protocol), the minimum filing
requirements are set forth in section 66(b) of the Act, and compliance
with these requirements is determined by the International Bureau of
the World Intellectual Property Organization ("IB") prior to sending
to the Office the request for extension of protection to the United
States. See TMEP section 1904.01(b) for further information about the
filing date of a section 66(a) application.
The Office is removing § 2.21(c) because it is unnecessary.
While it remains true that applicants who file on paper may resubmit
the application documents and receive a new filing date as of the date
of resubmission, it is unnecessary to say so in a rule.
The Office is amending § 2.23(a)(2), which requires that a TEAS
Plus applicant continue to receive communications from the Office by
electronic mail during the pendency of the application, to add a
requirement that a TEAS Plus applicant maintain a valid e-mail
correspondence address in order to maintain TEAS Plus status. If the
e-mail address changes, the applicant must notify the Office of the new
e-mail address. If an applicant chooses to receive correspondence on
paper, the applicant will have to pay the processing fee required by
§§ 2.6(a)(1)(iv) and 2.23(b).
The Office is amending § 2.32(a)(3)(iii) to indicate that the
requirement for inclusion of the names and citizenship of the general
partners in an application by a partnership applies only to domestic
partnerships. Similarly, the Office is adding § 2.32(a)(3)(iv) to
provide that if the applicant is a domestic joint venture,
the application must include the names and citizenship of all active
members of the joint venture. These requirements are consistent with
TMEP section 803.03(b). Because the Office does not track the varying
legal effects of partnership and joint venturer status in foreign
countries, and the relevance of this additional information has not
been established, this requirement does not apply to foreign
partnerships or foreign joint ventures.
Comment: Though noting that these requirements are consistent with
the long-standing past practice of the Office, one commenter asserted
that the requirements to set forth the names and citizenship of general
partners and joint venturers impose an unfair burden of disclosure on
domestic applicants because it does not apply to foreign partnerships.
Response: The Office is considering whether current practice
regarding the requirement for the names and citizenship of general
partners and active members of joint venturers should be changed, and
will issue a new proposed rule if necessary. However, the Office
believes it appropriate to incorporate its long-standing practice into
the rules at this time.
The Office is amending § 2.32(a)(6) to delete the word "and."
The Office is amending § 2.32(a)(8) to change a period to a
semicolon.
New § 2.32(a)(9) provides that if a mark includes non-English
wording, the applicant must submit an English translation of that
wording. New § 2.32(a)(10) provides that if the mark includes non-
Latin characters, the applicant must submit a transliteration of those
characters and either a translation of the corresponding non-English
word(s) or a statement that the transliterated term has no meaning in
English. This is consistent with the long-standing practice of the
Office. TMEP section 809 et seq.
Comment: One commenter noted "inconsistent treatment requiring
translations between non-English wording and non-Latin characters,"
and asked the Office to "consider whether the rules should also
require an applicant to state whether non-English wording has no direct
English meaning (e.g., idiomatic expressions)."
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Response: Section 2.32(a)(9) as written requires applicants to set
forth both the direct literal translation of foreign wording and the
meaning of foreign idiomatic expressions, and thus there is no
inconsistency on this point. The requirement for translation of "non-
English wording" encompasses only terms that have meaning in a foreign
language, and does not apply to coined terms. In cases where a term has
no meaning in a foreign language, it is often unnecessary to submit any
statement regarding the significance of the term. However, in marks
that include non-Latin characters, a transliteration is always
necessary. Where a transliteration must be provided, the Office
requires that the applicant also indicate whether the transliterated
term has meaning in a foreign language.
The Office is amending § 2.33(b)(1) to remove the requirement
that an application include a verified statement that the applicant
"has adopted and is using the mark shown in the accompanying
drawing." This language is not required by statute and is deemed
unnecessary. The rule as amended requires an allegation that "the mark
is in use in commerce."
The Office is amending §§ 2.34(a)(1)(i), (a)(2), (a)(3)(i),
and (a)(4)(ii) to change "must allege" to "must also allege." This
clarifies that the requirement for an allegation of current use or bona
fide intention to use the mark in commerce applies to verifications
filed after the application filing date.
The Office is adding § 2.34(a)(1)(v) to provide that if more
than one item of goods or services is specified in a section 1(a)
application, the dates of use need be for only one of the items
specified in each class, provided that the particular item to which the
dates apply is designated. This requirement for section 1(a)
applications previously appeared in § 2.33(a)(2), but was
inadvertently removed effective October 30, 1999, by the final rule
published at 64 FR 48900 (Sept. 8, 1999). This requirement is
consistent with the current requirements for allegations of use under
§§ 2.76(c) and 2.88(c).
Comment: The Trademark Electronic Application System ("TEAS")
forms for filing applications and allegations of use do not provide for
disclosure of the goods/services to which the date of first use
applies, and should be updated accordingly.
Response: It is possible to designate the goods or services to
which the dates of use apply in the current TEAS forms. In a TEAS Plus
application, or a regular TEAS application in which the applicant
enters the goods/services using the Office's on-line Acceptable
Identification of Goods and Services Manual ("USPTO ID Manual"),
different dates of use can be provided for any particular item (after
assigning a section 1(a) filing basis to the item and clicking on the
"1(a)" link for that item and entering the relevant information). If
the applicant uses the free-text entry approach to identify the goods/
services in a regular TEAS application, the on-line instructions advise
the applicant to parenthetically indicate the item to which the dates
apply (e.g., "pants, shirts (02/02/2000), shoes"). Alternatively, the
applicant can use the Miscellaneous Statement field of the Additional
Statement section of the application form to enter the information. In
the Allegation of Use form, the applicant may enter the information in
the existing free-text field for describing the submitted specimen
(e.g., "The specimen consists of a label. The stated dates of first
use apply specifically to shirts.").
The Office is amending §§ 2.44(b) and 2.45(b), which
pertain to collective and certification marks, to add a reference to
section 66(a) applications. This corrects an oversight.
The Office is amending § 2.47(a) to remove the requirement for
a specific allegation that a mark has been in "lawful" use in
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commerce in an application for registration on the Supplemental
Register. Because the definition of "commerce" in section 45 of the
Trademark Act is "all commerce which may lawfully be regulated by
Congress," the Office presumes that an applicant who alleges that
"the mark is in use in commerce" is claiming lawful use. The Office
generally questions the lawfulness of the alleged use in commerce only
where the record shows a clear violation of law, such as the sale or
transportation of a controlled substance. TMEP section 907.
The Office is also removing the requirement in § 2.47(a) that
the applicant specify the type of commerce in which the mark is used.
Because the definition of "commerce" in section 45 of the Act is
"all commerce which may lawfully be regulated by Congress," the
Office presumes that a registrant who alleges that the mark is in use
in commerce is alleging that the mark is in use in a type of commerce
that Congress may regulate. The Office amended the Trademark Rules of
Practice to remove the requirement for a specification of the type of
commerce in applications for registration under section 1(a) of the
Act, allegations of use in applications under section 1(b) of the Act,
and affidavits under sections 8 and 15 of the Act, effective October
30, 1999 (see notice at 64 FR 48900 (Sept. 8, 1999)), but inadvertently
overlooked §§ 2.47(a) and 2.153.
The Office is adding § 2.48, providing that the Office does not
issue duplicate registrations. If two applications on the same register
would result in registrations that are exact duplicates, the Office
will permit only one application to mature into registration,
and will refuse registration in the other application. This codifies
the long-standing practice of the Office. TMEP section 703. The Office
will normally refuse registration in the later-filed application. The
applicant may overcome the refusal by abandoning one of the
applications or surrendering the registration.
The Office is amending § 2.52(b) to provide that special form
drawings of marks that do not include color "should" show the mark in
black on a white background, rather than that the drawing "must" show
the mark in black on a white background. This gives examining attorneys
discretion to accept a drawing that shows the mark in white on a black
background, if this will more accurately depict the mark.
The Office is amending § 2.52(b)(1) to change the heading
"Color marks" to "Marks that include color." This corrects an
error. "Color marks" are marks that consist solely of one or more
colors used on particular objects, and § 2.52(b)(1) applies to all
marks that include color.
The Office is amending § 2.53(a) to remove the reference to
submission of a digitized image of a standard character mark as a
drawing in a TEAS application. This option no longer exists. An
applicant who wants to apply for a standard character mark through TEAS
must use the default setting within the form, namely, the selected
button for "Standard Characters," and type the characters comprising
the mark in the appropriate field on the TEAS form. TEAS generates the
drawing. The Office is combining §§ 2.53(a)(1) and (2), because
the requirements for standard character drawings in TEAS and TEAS Plus
applications are now identical.
The Office is amending § 2.56(b)(1) to add a reference to
"displays associated with the goods." This conforms the rule with the
definition of "use in commerce" in section 45 of the Act.
The Office is amending § 2.56(d)(2) to add a provision that
where an applicant files a paper specimen that exceeds the size
requirements of paragraph (d)(1), and the Office creates a digital
facsimile copy of the specimen, the Office may destroy the original
bulky specimen. This is consistent with current practice. TMEP section
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904.02(b).
The Office is amending § 2.56(d)(4) to provide that specimens
filed through TEAS may be in .pdf format. This provides TEAS filers
with an additional option for filing specimens, and is consistent with
current practice.
The Office is amending § 2.62 and its heading to add a
requirement that a response to an Office action be signed by the
applicant, someone with legal authority to bind the applicant (e.g., a
corporate officer or general partner of a partnership), or a
practitioner who meets the requirements of § 11.14 ("qualified
practitioner"). This is consistent with TMEP section 712.01.
The Office is amending § 2.64(c)(1) to state that the filing of
an amendment to allege use does not extend the deadline for filing a
response to an outstanding Office action, an appeal to the Trademark
Trial and Appeal Board ("TTAB"), or a petition to the Director. This
is consistent with current practice. TMEP section 1104.
The Office is amending § 2.65(a) to add a reference to a notice
of appeal as a response that avoids abandonment of an application. This
is consistent with section 12(b) of the Act.
The Office is revising § 2.73 to provide that only an
application that includes section 1(a) of the Trademark Act as a filing
basis, or for which an acceptable allegation of use under § 2.76 or
§ 2.88 has been filed, may be amended to seek concurrent use
registration. The rule currently provides that applications under
section 44 or section 66(a) of the Act may be amended to recite
concurrent use. However, because section 2(d) of the Act requires
concurrent lawful use in commerce by the parties to a concurrent use
proceeding, the Office deems it inappropriate to allow amendment to
seek concurrent use absent allegations and evidence of use in commerce.
The Office is also adding a statement to § 2.99(g) that
applications based solely on section 44 or section 66(a) are not
subject to concurrent use registration proceedings.
The Office is revising § 2.74 to modernize the language and to
add a provision that an amendment to an application must be signed by
the applicant, someone with legal authority to bind the applicant
(e.g., a corporate officer or general partner of a partnership), or a
qualified practitioner. This is consistent with TMEP section 605.02.
Intent To Use
The Office is amending § 2.76(d) to provide that an amendment
to allege use ("AAU") should be captioned "Allegation of Use"
rather than "amendment to allege use." This is consistent with the
language on the Office's TEAS form. The term "allegation of use"
encompasses both AAUs under § 2.76 and statements of use ("SOUs")
under § 2.88. The principal difference between AAUs and SOUs is the
time of filing, and the same TEAS form is used for both filings. The
rule merely sets forth the preferred title; the Office will still
accept documents titled "amendment to allege use" or "statement of
use."
The Office is amending § 2.77 to add a provision that
amendments deleting a basis in a multiple-basis application, notices of
change of attorney, and notices of change of address may be entered in
a section 1(b) application during the period between the issuance of
the notice of allowance and the submission of a statement of use. This
is consistent with current practice. TMEP section 1107.
The Office is amending § 2.88(b)(1)(ii) to clarify that the
dates of use specified in a statement of use must pertain to the goods
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or services identified in the notice of allowance, and that where an
applicant claims section 1(a) for some goods/services in a class and
section 1(b) for other goods/services in the same class, the statement
of use must include dates for the section 1(b) goods/services.
The Office is amending § 2.88(b)(3) to provide that the
applicant must pay a filing fee sufficient to cover at least one class
within the statutory time for filing the statement of use, or the
application will be abandoned. If the applicant submits a fee
insufficient to cover all the classes in a multiple-class application,
the applicant must specify the class(es) to be abandoned. If the
applicant submits a fee sufficient to pay for at least one class, but
insufficient to cover all the classes, and the applicant has not
specified the class(es) to which the fee applies, the Office will issue
a notice granting the applicant additional time to submit the fee(s)
for the remaining class(es), or specify the class(es) to be abandoned.
If the applicant does not submit the required fee(s) or specify the
class(es) to be abandoned within the set time period, the Office will
apply the fees paid, beginning with the lowest numbered class(es), in
ascending order. The Office will delete the goods/services in the
remaining class(es) not covered by the fees submitted. This is
consistent with current practice.
The Office is amending § 2.88(d) to provide that an SOU should
be captioned "Allegation of Use" rather than "statement of use."
This is consistent with the amendment to § 2.76(d), discussed
above.
The Office is amending § 2.88(i)(2) to remove the provision
that if any goods or services specified in the notice of allowance are
omitted from the identification of goods or services in the SOU, the
examining attorney will question the discrepancy and permit the applicant
to reinsert the omitted goods/services, and substitute a provision that the
Office will delete the omitted goods/services from the application and will
not permit the applicant to reinsert them. Currently, if the applicant
omits goods/services identified in the notice of allowance from a paper
SOU, but the applicant has not indicated an intention to delete those
goods/services from the application or filed a request to divide the
application, the examining attorney will contact the applicant to
confirm that the applicant intends to delete the omitted goods/services,
and will permit the applicant to amend the SOU to claim use on or in
connection with the omitted goods/services. However, when an
SOU is filed electronically, the TEAS form requires the applicant to
expressly indicate an intention to delete any omitted goods/services/
class(es), or include them within a separately filed request to divide.
Therefore, if any of the goods/services identified in the notice of
allowance do not appear in the identification of goods/services in a
TEAS SOU, the examining attorney does not question the discrepancy and
the applicant may not reinsert the omitted goods/services. TMEP section
1109.13. These inquiries concerning paper SOUs have sometimes caused
unnecessary delay in applications after the applicant intentionally
omitted goods/services. Therefore, the Office is changing its practice
and will discontinue questioning goods/services that are omitted from
paper SOUs. Under the new rule, the practice with paper SOUs would
conform with the current practice for electronically filed SOUs.
Applicants must set forth (or incorporate by reference) the goods/
services on or in connection with which the mark is in use. This is
consistent with the Office's long-standing practice with respect to
requests for extensions of time to file a statement of use, set forth
in § 2.89(f).
The Office is revising §§ 2.89(a)(2) and (b)(2) to add a
provision that if an applicant timely submits a fee sufficient to pay
for at least one class, but insufficient to cover all the classes, and
the applicant has not specified the class(es) to which the fee applies,
the Office will issue a notice granting the applicant additional time
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to submit the fee(s) for the remaining class(es), or specify the
class(es) to be abandoned. If the applicant does not submit the
required fee(s) or specify the class(es) to be abandoned within the set
time period, the Office will apply the fees paid, beginning with the
lowest numbered class(es), in ascending order. The Office will delete
the remaining goods/services not covered by the fees submitted. This is
consistent with current practice. TMEP section 1108.02(c).
Comment: Additional time is "undefined." No time period is set
forth in the rule or TMEP.
Response: The Office will amend TMEP section 1108.02(c) to indicate
that the applicant will be given thirty days in which to cure the fee
deficiency in an extension request that includes a fee sufficient to
pay for at least one class, but insufficient to cover all the classes.
Amendments to Classification
The Office is amending § 2.85(a) to add a reference to
amendments to adopt international classification.
The Office is combining §§ 2.85(b) and (c), pertaining to
the old United States classification system, and adding a reference to
amendments to adopt international classification.
The Office is redesignating § 2.85(f), pertaining to
certification marks and collective membership marks, as § 2.85(c),
and adding a statement that the classes set forth in §§ 6.3 and
6.4 do not apply to applications based on section 66(a) of the
Trademark Act and registered extensions of protection. This is
consistent with current practice. TMEP section 1904.02(b). Classes A,
B, and 200 are from the old United States classification system that
the United States still uses to classify certification and collective
membership marks, but are not included in the international classes
under the Nice Agreement Concerning the International Classification of
Goods and Services for the Purposes of the Registration of Marks
("Nice Agreement"). Therefore, these classes do not apply to section
66(a) applications and registered extensions of protection, in which
the IB determines classification. The Office is similarly amending
§§ 6.3 and 6.4, indicating that these sections apply only to
applications based on sections 1 and 44 of the Trademark Act and
registrations resulting from such applications.
Current § 2.85(d), which now provides that renewals filed on
registrations issued under a prior classification system are processed
on the basis of that system, is redesignated as § 2.183(f), and
amended to add an exception for registrations that have been amended to
adopt international classification pursuant to § 2.85(e)(3).
New § 2.85(d) provides that in an application under section
66(a) of the Act or registered extension of protection, the
classification cannot be changed from the classification that the IB
has assigned, classes cannot be added, and goods or services cannot be
transferred from one class to another in a multiple-class application.
This is consistent with current practice. TMEP sections 1401.03(d) and
1904.02(b).
Comment: One comment requests that the Office clarify and/or
reconsider this change. The commenter notes that in some instances
"the applicant is seeking to identify a good/service that was not the
subject of classification by the IB." For example, if the
international registration covered "nutritional aids" in Class 30,
the applicant could not amend to "nutritional supplements," because
the United States classifies nutritional supplements in Class 5. This
"works a complete forfeiture of rights" as to the goods or services
that must be deleted from Class 30 in the section 66(a) application.
Response: Under Article 3(2) of the Madrid Protocol, the IB
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controls classification in an international registration. Under section
70(a) of the Trademark Act and Articles 6(3) and 6(4) of the Protocol,
a section 66(a) application and any resulting registration remains part
of and dependent upon the international registration. Since the
international registration is limited to those classes that the IB has
assigned, no legal basis exists for registration of the mark as to
goods/services that fall outside these classes under U.S. standards.
Upon notification of the final grant of protection, the IB would
ultimately refuse any change in classification made during examination
of a section 66(a) application. Therefore, the international
classification of goods/services in a section 66(a) application cannot
be changed from the classification that the IB has assigned.
While the IB controls classification, the same standards of
specificity used in examining applications under sections 1 and 44 of
the Act govern the propriety of the identification of goods/services in
a section 66 (a) application. Section 68(a) of the Act; Madrid Protocol
Article 5(1). Accordingly, if the initial identification of goods/
services in a section 66(a) application is definite but misclassified
under U.S. standards, the Office will accept the identification in the
IB-assigned class. However, if the initial identification of goods/
services is not definite, the classification cannot be changed and the
scope of the identification for purposes of permissible amendment is
limited by the classification that the IB has assigned. See TMEP
section 1904.02(b) and Examination Guide 3-08, Examination Procedures
for Identifications of Goods and Services in Applications under
Trademark Act Section 66(a) pursuant to the Madrid Protocol (July 2,
2008), available on the Office's Web site at
http://www.uspto.gov/web/offices/tac/notices/examguide3-08.htm.
Thus, in the commenter's example above, if the international
registration covered "nutritional aids" in Class 30, the applicant
could not amend to "nutritional supplements," because "nutritional
aids" is an indefinite identification that can only be amended within
the scope of the IB-designated Class 30. However, if the international
registration covered "nutritional supplements" in Class 30, the
Office would permit registration in Class 30, even though the Office
classifies these goods in Class 5. No rights would be forfeited. Thus,
international applicants who plan to seek an extension of protection to
the United States can avoid forfeiting rights in a particular item by
reviewing the USPTO ID Manual before filing the request for extension
of protection of an international registration to the United States.
The applicant can then include language in the international
application, or by entry of a limitation of the goods or services
extended to the United States, that will be acceptable in the United
States. Alternatively, the applicant can seek registration in the
United States under a different basis, such as section 1(b) or section
44. Regarding limitations, see TMEP sections 1904.03(g) and 1904.15,
and Examination Guide 3-08, sections IV et seq.
Comment: The Office should consider implementing a pseudo-
classification system so that the Office's automated search system
would show the classes that the Office considers to be "correct" in
cases where the classification designated by the IB differs from that
of the Office. This would permit all Madrid applicants to amend the
classification of goods/services in the same way non-Madrid filers
presently do, and retain the full scope of protection afforded by
registration. This would also ensure that a product or service that is
"misclassified" by the IB is discovered in a search of Office
records.
Response: The Office is developing such a system, to ensure that
relevant marks in section 66(a) applications will be found in a search
of Office records, even if the IB and USPTO classifications differ.
However, that does not change the fact that no legal basis exists for
registration of the mark in the United States as to goods/services that
do not fall within the class(es) that the IB has assigned. Thus, even
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if a pseudo-classification system is implemented for search purposes,
amendment of the classification in a section 66(a) application will
still be prohibited.
Comment: Since there are already situations where the
classification in section 66(a) applications and registered extensions
of protection is "wrong," due to the Office's practice of accepting
definite identifications that are misclassified under U.S. standards,
the Office should also permit amendment of indefinite identifications
within the class assigned by the IB, even if that class is incorrect
under U.S. standards.
Response: When a particular product or service identified in an
international application could be classified in more than one class,
but only one of the applicable classes has been indicated, the IB
assumes "that the reference is only to the product or service falling
in the identified class." Guide to the International Registration of
Marks under the Madrid Agreement and Protocol, Para. B.II.23.02 (Jan.
2008), available on the IB Web site at http://www.wipo.int/madrid/en/
guide/index.html. Therefore, the Office believes that the scope of
permissible amendment of an indefinite identification must be limited
by the IB-assigned class. Furthermore, the practice of accepting
identifications that are misclassified under U.S. standards must be
limited to the extent possible.
The Office is removing § 2.85(e), which now pertains to appeal
and renewal fee deficiencies in multiple-class applications and
registrations, and moving the provisions on appeal fees to §
2.141(b). Section 2.183(e) already covers procedures for processing
renewal fee deficiencies in multiple-class registrations.
Section 2.85(e) provides for changes in classification pursuant to
the Nice Agreement. The international classification changes
periodically, and the International Classification of Goods and
Services for the Purposes of the Registration of Marks, which is
published by the World Intellectual Property Organization, lists these
changes. The current edition of the Nice Agreement is the 9th edition,
2006, which became effective January 1, 2007.
Section 2.85(e)(1) provides that when international classification
changes, the new requirements apply only to applications filed on or
after the effective date of the change.
Section 2.85(e)(2) and (3) provide that in section 1 and 44
applications filed before the effective date of a change in
classification, and registrations resulting from such applications, the
applicant or registrant may reclassify the goods or services in
accordance with the current edition, upon payment of the required fees.
This is consistent with current practice, set forth in TMEP sections
1401.11 and 1609.04.
The Office is redesignating § 2.85(g), which provides that
classification schedules shall not limit or extend the applicant's
rights, as § 2.85(f), and amending it to note an exception that in
section 66(a) applications, the scope of the identification of goods or
services for purposes of permissible amendments is limited by the
class, because the classification that the IB has assigned may not be
changed. This is consistent with TMEP section 1402.07(a). See
discussion, above, of the scope of permissible amendment of an
indefinite identification in a section 66(a) application, in the
responses to comments on § 2.85(d).
Requests To Divide
The Office is separating the current § 2.87(c) into subsections
2.87(c)(1) and (c)(2).
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The Office is adding § 2.87(c)(3) to provide that in a multiple
basis application, a request to divide out goods or services having a
particular basis may be filed during the period between the issuance of
the notice of allowance under section 13(b)(2) of the Act and the
filing of a statement of use under § 2.88. This is consistent with
current practice. TMEP section 1107.
The Office is adding § 2.87(e) to provide that any outstanding
time period for action by the applicant in the original application at
the time of the division will apply to each new separate application
that the division creates. This provision appeared in § 2.87(a)
when the rule was first enacted in 1989, but was inadvertently removed
when the rules were amended to adjust application filing fees on
January 19, 2005. See notices at 54 FR 37562 (Sept. 11, 1989) and 70 FR
2952 (Jan. 19, 2005). Subsections (e)(1) through (e)(3) set forth
certain specified exceptions, consistent with current practice, as set
forth in TMEP sections 1110.04 and 1110.05.
The Office is adding § 2.87(f), requiring that a request to
divide be signed by the applicant, someone with legal authority to bind
the applicant (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner. This is consistent with TMEP
section 1110.
The Office is adding § 2.87(g), setting forth the procedures
for division of a section 66(a) application after a change in ownership
with respect to some, but not all, of the goods or services. This
incorporates existing practice, set forth in TMEP section 1110.08.
The Office is adding § 2.171(b)(2), to provide for division of registered
extensions of protection upon notification by the IB that ownership of an
international registration has changed with respect to some, but not all, of
the goods or services. This reflects current practice. TMEP section 1615.02.
Post Registration
The Office is amending § 2.153 to change "registrant" to
"owner," to make it clear that an affidavit or declaration under
section 12(c) of the Act must be filed by the owner of the
registration, and to add a requirement that the affidavit or
declaration be signed by a person properly authorized to sign on behalf
of the owner. This is consistent with current practice, set forth in
TMEP section 1603, and with the requirements of § 2.161 for
affidavits or declarations under section 8 of the Act.
The Office is further amending § 2.153 to remove the
requirement for specification of the type of commerce in an affidavit
claiming the benefits of section 12(c) of the Trademark Act of 1946 for
a registration issued under the Trademark Acts of 1881 or 1905. This is
consistent with the amendment of § 2.47(a), discussed above.
The Office is amending the center heading immediately after § 2.158
to delete the wording "DURING SIXTH YEAR," to correct an
oversight. The heading covers rules pertaining to affidavits or
declarations under section 8 of the Act ("section 8 affidavits").
Effective October 30, 1999, such affidavits must be filed every tenth
year after registration as well as during the sixth year.
The Office is amending § 2.161(g)(3) to provide that specimens
filed through TEAS may be in .pdf format. This offers TEAS filers an
additional option for filing specimens, and is consistent with current
practice.
The Office is separating the current § 2.163(b) into new
§§ (b) and (c). Section 2.163(b) is amended to require that a
response to an Office action issued in connection with a section 8
affidavit be signed by the owner, someone with legal authority to bind
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the owner, or a qualified practitioner. This is consistent with TMEP
section 1604.16.
The last sentence of the current § 2.163(b) is moved to new
§ (c), and revised to indicate that a registration will be
cancelled for failure to respond to an Office action issued in
connection with a section 8 affidavit only if no time remains in the
grace period under section 8(c)(1) of the Act. This corrects an
oversight in the current rule. Cancelling a registration under section
8 before expiration of the grace period would be inappropriate. If time
remains in the grace period, the owner may file a complete new
affidavit.
The Office is amending § 2.167(a) to provide that an affidavit
or declaration of incontestability under section 15 of the Trademark
Act must be filed in the name of the owner of the registration, and
verified by the owner or a person properly authorized to sign on behalf
of the owner (§ 2.161(b)). The Office is amending § 2.167(d) to
substitute "owner" for "registrant," to make it clear that the
affidavit or declaration must be filed by the owner of the
registration. These changes are consistent with TMEP section 1605.04.
The Office is amending § 2.167(f) for clarity.
The Office is amending § 2.171(a) to remove the requirement
that a request for a new certificate of registration upon change of
ownership include the original certificate of registration. This is
consistent with current practice, and with Office practice in
connection with requests to amend or correct registrations under
section 7 of the Trademark Act. See notice at 69 FR 51362 (Aug. 19,
2004), removing the requirement that a section 7 request include the
original certificate.
The Office is amending § 2.171(a) to add a statement that in a
registered extension of protection, the assignment must be recorded
with the IB before recordation in the Office. This is consistent with
current § 7.22.
The Office is redesignating § 2.171(b) as (b)(1), and amending
the section to indicate applicability only to registrations resulting
from applications based on section 1 or 44 of the Act.
The Office is adding § 2.171(b)(2), providing for division of
registered extensions of protection upon notification by the IB that
ownership of an international registration has changed with respect to
some, but not all, of the goods or services. This reflects current
practice. TMEP section 1615.02.
The Office is reorganizing § 2.173, pertaining to amendment of
registrations. The current paragraph (a) is separated into new
paragraphs (a) through (d).
Section 2.173(a) provides that the owner of a registration may file
a written request to amend a registration or to disclaim part of the
mark in the registration; and that if the registration is involved in
an inter partes proceeding before the TTAB, the request must be filed
by appropriate motion to the TTAB. This is consistent with current
§ 2.173(a) and TMEP section 1609.01(b).
The current paragraph (b) is separated into new paragraphs (e) and
(g).
New § 2.173(b) sets forth the requirements for the request for
amendment.
Section 2.173(b)(2) requires that the request be filed in the name
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of the owner and signed by the owner, someone with legal authority to
bind the owner (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner. The requirement for filing
in the name of the owner is consistent with current practice. However,
the requirement for signature by someone with legal authority to bind
the owner or by a qualified practitioner changes current practice
slightly. TMEP section 1609.01(b) now permits signature by a person
with firsthand knowledge of the facts and actual or implied authority
to act on behalf of the owner, which could include someone without
legal authority to bind the owner. The Office believes that the better
practice is to require that a request to amend a registration be signed
by someone with legal authority to bind the owner or by a qualified
practitioner.
Section 2.173(b)(3) requires that an amendment to change the mark
include a specimen showing the mark as used on or in connection with
the goods or services, an affidavit or a declaration under § 2.20
stating that the specimen was in use in commerce at least as early as
the filing date of the amendment, and a new drawing of the amended
mark. This is consistent with current § 2.173(a) and TMEP section
1609.02(c).
Section 2.173(c) provides that the registration must still contain
registrable matter, and § 2.173(d) provides that the amendment may
not materially alter the mark. This is consistent with current
§ 2.173(a).
Section 2.173(e) provides that no amendment to the identification
of goods or services in a registration will be permitted, except to
restrict the identification or change it in ways that would not require
republication of the mark. This is consistent with current § 2.173(b).
The Office is adding § 2.173(f) to provide that if the
registration includes a disclaimer, description of the mark, or
miscellaneous statement, any amendment must include a request to make
any necessary conforming amendments to the disclaimer, description, or
other miscellaneous statements. For example, if the mark is XYZ INC.,
with a disclaimer of the entity designator "INC.," and the owner of
the registration proposes to amend the mark to remove "INC.," the
proposed amendment should also request that the disclaimer be deleted.
If a proposed amendment does not include all necessary conforming
amendment(s), the examiner will issue an Office action requiring the
amendment(s).
New § 2.173(g) provides that an amendment seeking the
elimination of a disclaimer will be permitted only if deletion of the
disclaimed portion of the mark is also sought. This provides an
exception to the general prohibition against amendments to delete
disclaimers, currently set forth in § 2.173(b), in the limited
situation where the mark is amended to delete the disclaimer.
The Office is amending § 2.175(b)(2) to require that a request
to correct the owner's error in a registration be filed in the name of
the owner and signed by the owner, someone with legal authority to bind
the owner (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner. This is consistent with the
amendment of § 2.173(b)(2), discussed above. The Office is also
amending the heading and paragraph (a) of § 2.175 to substitute
"owner" for "registrant," for consistency.
The Office is adding § 2.183(f) to provide that applications
for renewal of registrations issued under a prior classification system
will be processed on the basis of that system, except where the
registration has been amended to adopt international classification.
The provision that applications for renewal of registrations issued
under a prior classification system are processed on the basis of that
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system is currently set forth in § 2.85(d). The reference to
amendment of classification is consistent with § 2.85(e)(3),
discussed above.
Section 2.184(b) is redesignated as § 2.184(b)(1), and amended
to provide that a registration will expire for failure to respond to an
Office action issued in connection with a renewal application only if
no time remains in the grace period under section 9(a) of the Act. This
corrects an oversight in the current rule. It would be inappropriate to
cancel a registration for failure to renew before the renewal grace
period has expired. If time remains in the grace period, the registrant
may file a complete new renewal application.
The Office is adding § 2.184(b)(2) to require that a response
to an Office action issued in connection with a renewal application be
signed by the registrant, someone with legal authority to bind the
registrant (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner. This is consistent with TMEP
section 1606.12.
Madrid Protocol
The Office is amending § 7.11(a)(2) to provide that the
applicant's entity in an application for international registration
must be identical to the entity listed as owner of the basic
application or registration. This is consistent with current practice.
TMEP section 1902.02(c). Under section 61(a) of the Trademark Act, only
the owner of the basic application or registration may file an
international application.
The Office is amending the last sentence of § 7.14(e) to change
"submitted to" to "received in," for clarity.
The Office is amending § 7.25(a) to remove §§ 2.175 and 2.197 from the
list of rules in part 2 that do not apply to an extension of protection of
an international registration to the United States. Section 2.175 pertains
to correction of mistakes by a registrant. Generally, all requests to
record changes to an international registration must be filed at the IB,
because an extension of protection of an international registration remains
part of the international registration even after registration in the
United States. However, in the limited circumstance where the holder of an
international registration makes a mistake in a document filed during
prosecution in the Office that affects only the extension of protection
to the United States, the registrant may request correction of the
error pursuant to § 2.175. For example, if there was a minor
typographical error in an amendment to the identification of goods in a
section 66(a) application, and the mark registered, the owner of the
registration could request correction under § 2.175. If the Office
grants the request, the Office will notify the IB of the change to the
extension of protection to the United States.
Section § 2.197 provides a "certificate of mailing or
transmission" procedure to avoid lateness due to mail delay. Section
66(a) applicants may currently use this procedure during prosecution of
applications. Owners of registered extensions of protection who file
affidavits of use or excusable nonuse under section 71 of the Trademark
Act may also use this procedure. Therefore, its inclusion in
§ 7.25(a) was an error. Under §§ 2.197(a)(2)(ii) and 7.4(e), the
certificate of mailing or transmission procedure remains inapplicable
to international applications under § 7.11, responses to notices of
irregularity under § 7.14, subsequent designations under
§ 7.21, requests to record changes of ownership under § 7.23,
requests to record restrictions of the holder's right of disposal (or
the release of such restrictions) under § 7.24, and requests for
transformation under § 7.31.
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Note: On February 29, 2008, the Office published a proposed rule
that would prohibit the use of certificates of mailing or
transmission for certain specified documents for which an electronic
form is available in TEAS. See notice at 73 FR 11079. The Office is
still reviewing the comments received in response to this proposal.
See the discussion of amendments to classification in section 66(a)
applications in connection with new § 2.85(d), above.
Assignment Cover Sheet
The Office is amending § 3.31 to add a new paragraph (a)(8)
requiring that a cover sheet submitted with a request to record a
change of ownership of a trademark application or registration must
include the citizenship or state or country of organization of the
party receiving the interest; and that if the party receiving the
interest is a domestic partnership or domestic joint venture, the cover
sheet must include the names, legal entities, and national citizenship
(or state or country of organization) of all general partners or active
members that compose the partnership or joint venture. Currently,
§ 3.31(f) provides that the cover sheet "should" include this
information, but the new rule makes it mandatory, to allow for more
efficient processing of trademark applications and registrations.
The applicant's entity and citizenship or state or country of
organization are required in an application for registration under
§ 2.32(a)(3)(iii) and must be submitted before the Office can issue
a registration certificate in the name of the new owner. This
information is also required when the new owner of a registration wants
to change ownership in the trademark database and/or obtain a new
certificate of registration in the name of the new owner. Requiring the
information whenever a change of ownership is recorded will eliminate
the need for the examining attorney or Post Registration examiner to
issue an Office action requiring submission, which can cause
substantial delay. Furthermore, in many cases, having complete
information about the receiving party will ensure that the trademark
database is automatically updated at the time of recordation or shortly
thereafter. See TMEP sections 504 et seq. regarding automatic updating
of the trademark database upon recordation of a change of ownership
(automatic updating should ensure that the original certificate of
registration issues in the name of the new owner).
References to "Paper"
The Office is amending §§ 2.6(b)(6), 2.21(b), 2.21(c),
2.27(d), 2.87(d), 2.146(e)(1), 2.146(e)(2), and 2.146(i) to delete
references to "papers" and substitute "documents" where
appropriate, in order to encompass documents filed or issued
electronically.
The Office is amending §§ 2.6(a)(19), 2.6(b)(3), and
2.56(d)(2) to delete references to "file wrapper" and substitute
"record" or "official record." The Office now maintains electronic
records of applications and registrations.
The Office is amending §§ 2.62, 2.65(a), 2.66(a)(1),
2.66(d), 2.66(f)(1), 2.81(b), 2.89(a), 2.89(a)(3), 2.89(g), 2.93,
2.99(d)(2), 2.146(d), 2.146(e)(1), 2.146(e)(2), 2.146(j)(1), 2.163(b),
2.165(b), 2.176, 2.184(b), 2.186(b), 7.39(b), and 7.40(b) to change
references to "mailing" to "issuance," to encompass Office actions
and communications issued electronically.
Comment: One commenter asserts that "issuance" is ambiguous
because it "could refer to either the date an Office Action is written
or is mailed." The commenter notes that the Trademark Applications and
Registrations Retrieval ("TARR") database currently lists either
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"Non-Final Action Mailed" or "Non-Final Action E-Mailed." The
commenter suggests that the rules be amended to change "mailing" to
"mailing and e-mailing," or, alternatively, that TARR be changed to
list an "issuance" date where it formerly listed "Mailed" or "E-
Mailed."
Response: The Office has reviewed the context in which the term
"issuance" is used in these rules, and believes the term clearly does
not refer to the date on which an Office action is written, as opposed
to the date on which it is mailed or e-mailed. "Issuance" is defined
as "[t]he provision of something by issuing it." The verb "issue"
can be defined as "[t]o send out officially, as in to issue an order"
(Law); "[p]repare and issue for public distribution or sale;"
"[c]irculate or distribute;" or "[b]ring out [as] an official
document. * * *" Webster's Online Dictionary, search of "issuance"
and "issue," http://www.websters-online-dictionary.org/definition/
issue (Aug. 14, 2008). Therefore, the Office deems it unnecessary to
change the rule or the information in TARR. The information in TARR
indicates specifically whether the notice was mailed or e-mailed, which
could be useful information.
The Office is amending § 2.81(b) to remove the sentence stating
that "The mailing date that appears on the notice of allowance will be
the issue date of the notice of allowance," because it is unnecessary.
The rule already states that the notice of allowance will include the
issue date.
The Office is amending §§ 2.84(b), 2.173, 2.174, and 2.175
to delete references to "printed," and substitute "issued" where
appropriate, to encompass documents issued electronically.
The Office is amending §§ 2.87(d), 2.146(e)(i), and
2.146(i) to delete references to "paper" and to substitute
"document," to encompass documents filed through TEAS.
Sections 2.173(c), 2.174, and 2.175(c) are amended to remove the
statements that printed copies of amendments and corrections under
section 7 of the Act are attached to printed copies of the
registration.
Comment: One commenter asked for clarification of how amendments
and corrections would be communicated when certified copies of the
registration are printed.
Response: The Office previously attached an updated registration
certificate showing an amendment or correction to the original
certificate and returned it to the owner of the registration, but this
practice was changed in 2004. See notice at 69 FR 51362 (Aug. 19, 2004)
(removing the requirement that the owner of a registration send the
original certificate of registration or a certified copy thereof with a
request for amendment or correction under section 7 of the Act).
Currently, when a request for amendment or correction is granted, the
Office sends an updated registration certificate showing the amendment
or correction to the owner of record, and updates Office records
accordingly. TMEP sections 1609.01(b) and 1609.10. A certified copy of
the updated registration certificate may be obtained from the Document
Services Branch of the Public Records Division for a fee.
Appeal Fees
The Office is reorganizing § 2.141 to move the provisions
pertaining to appeal fees, some of which were previously set forth in
§ 2.85(e), to § 2.141(b). This is consistent with current
practice, set forth in TBMP section 1202.04.
Other Changes
The Office is amending § 2.6(a)(13) to replace a section symbol
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with the word "section." This is consistent with references to the
statute in other rules, and with the format recommended in the Federal
Register Document Drafting Handbook, National Archives and Records
Administration, Office of the Federal Register (Oct. 1998). Section
symbols are used in rules and Federal Register notices only to refer to
other sections of the CFR.
The Office is amending § 2.6(a)(8) to delete "assignee" and
substitute "registrant." This clarifies that any registrant may
request a new certificate of registration, upon payment of the required
fee.
The Office is revising § 2.25 to provide that documents filed
by an applicant or registrant become part of the official record and
will not be returned or removed. The rule currently provides only for
applications, but the new rule encompasses all documents filed in
connection with an application or registration. This is consistent with
current practice. See TMEP section 404. There is an exception for
documents ordered to be filed under seal pursuant to a protective order
issued by a court or by the TTAB.
The Office is removing § 2.26, which provides that a drawing
from an abandoned application may be transferred to and used in a new
application, if the file has not been destroyed. This rule is no longer
in use and is deemed unnecessary.
The Office is amending § 2.32(a)(6) to delete the word "and"
after the semicolon, and is amending § 2.32(a)(7) to change a
period to a semicolon.
The Office is amending § 2.41 to add a reference to
"services" at the end of the last sentence. This corrects an
oversight.
The Office is amending § 2.86(a)(2) to delete the period and
substitute a semicolon, followed by the word "and" ("; and").
The Office is amending § 2.146(c) to add a provision that a
petition to the Director be signed by the petitioner, someone with
legal authority to bind the petitioner (e.g., a corporate officer or
general partner of a partnership), or a qualified practitioner. The
rule further provides that when facts are to be proved on petition, the
petitioner must submit proof in the form of affidavits or declarations
in accordance with § 2.20, signed by someone with firsthand
knowledge of the facts to be proved. This is consistent with TMEP
sections 1705.03 and 1705.07.
The Office is amending § 2.195(b) to delete the phrase "In
addition to being mailed," because it is unnecessary.
The Office is amending § 2.195(e) to clarify the procedures for filing a
petition to the Director to consider correspondence filed on the date of
attempted filing by Express Mail during a postal service interruption or
emergency within the meaning of 35 U.S.C. 21(a). New § 2.195(e)(1)
provides that a person who attempted to file correspondence by Express
Mail, but was unable to deposit the correspondence with the United
States Postal Service due to the interruption or emergency, may
petition the Director to consider the correspondence to have been filed
on the date of attempted filing. New § 2.195(e)(2) sets forth the
requirements for the petition. New § 2.195(e)(3) notes that this
procedure does not apply to correspondence that is excluded from the
Express Mail procedure pursuant to § 2.198(a)(1). This is
consistent with current practice.
The Office is amending § 2.208(c)(3) and removing § 2.208(c)(4),
to update the mailing address for payments to replenish deposit accounts.
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This is consistent with § 1.25(c)(4) of this chapter.
Rule Making Requirements
Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866.
Administrative Procedure Act: This rule merely involves rules of
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A).
Therefore, this rule may be adopted without prior notice and
opportunity for public comment under 5 U.S.C. 553(b) and (c), or
thirty-day advance publication under 5 U.S.C. 553(d). However, the
Office has chosen to seek public comment before implementing the rule.
Regulatory Flexibility Act: The Deputy General Counsel for General
Law of the United States Patent and Trademark Office hereby certifies
to the Chief Counsel for Advocacy of the Small Business Administration
that this final rule, Miscellaneous Changes to Trademark Rules of
Practice (RIN 0651-AB89), will not have a significant impact on a
substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)).
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), neither a
regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5
U.S.C. 603.
The new rules clarify certain requirements for trademark
applications and other trademark-related documents, modernize the
language of the rules, and make some other miscellaneous procedural
changes. In large part, the rule changes are intended to codify
existing practice. Although the rules may affect any trademark
applicant or registrant, because they codify the existing practice of
the Office or concern relatively minor procedural matters, the changes
will not have a significant economic impact on a substantial number of
small entities.
Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2
U.S.C. 1532, that agencies prepare an assessment of anticipated costs
and benefits before issuing any rule that may result in expenditure by
State, local, and tribal governments, in the aggregate, or by the
private sector, of $100 million or more (adjusted annually for
inflation) in any given year. This rule will have no such effect on
State, local, and tribal governments or the private sector.
Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Paperwork Reduction Act: This rule involves information collection
requirements which are subject to review by the Office of Management
and Budget ("OMB") under the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The collection of information in this rule has
been reviewed and previously approved by OMB under control numbers
0651-0009, 0651-0050, 0651-0051, 0651-0054, 0651-0055, and 0651-0056.
The United States Patent and Trademark Office is not resubmitting
any information collection package to OMB for its review and approval
because the changes in this rule will not affect the information
collection requirements associated with the information collections
under the OMB control numbers listed above. The changes in this notice
are limited to amending the rules of practice to simplify and clarify
the requirements for amendments to applications and registrations,
reword and reorganize the rules for clarity, and codify current
practices and procedures.
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Interested persons are requested to send comments regarding these
information collections, including suggestions for reduction of this
burden to: (1) The Office of Information and Regulatory Affairs, Office
of Management and Budget, New Executive Office Building, Room 10202,
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for
the Patent and Trademark Office; and (2) Commissioner for Trademarks,
P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
Notwithstanding any other provision of law, no person is required
to respond 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 Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Trademarks.
37 CFR Part 6
Administrative practice and procedure, Trademarks, Classification.
37 CFR Part 7
Administrative practice and procedure, Trademarks, International
Registration.
. For the reasons given in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is amending
parts 2, 3, 6, and 7 of 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. Revise § 2.6(a)(8), (13), and (19), and § 2.6(b)(3) and (6)
to read as follows:
§ 2.6 Trademark fees.
* * * * *
(a) * * *
(8) For issuing a new certificate of registration upon request of
registrant - $100.00
* * * * *
(13) For filing an affidavit under section 15 of the Act, per
class - $200.00
* * * * *
(19) Dividing an application, per new application created - $100.00
* * * * *
(b) * * *
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(3) Certified or uncertified copy of a trademark-related official
record - $50.00
* * * * *
(6) For recording each trademark assignment, agreement or other
document relating to the property in a registration or application
* * * * *
. 3. Amend § 2.21 by revising paragraphs (a) introductory text and
(b) to read as follows, and by removing paragraph (c):
§ 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 is in the English language and
contains all of the following:
* * * * *
(b) If the applicant does not submit all the elements required in
paragraph (a) of this section, the Office will deny a filing date and
issue a notice explaining why the filing date was denied.
. 4. Revise § 2.23(a)(2) to read as follows:
§ 2.23 Additional requirements for TEAS Plus application.
(a) * * *
(2) Maintain a valid e-mail correspondence address, and continue to
receive communications from the Office by electronic mail.
* * * * *
. 5. Revise § 2.25 to read as follows:
§ 2.25 Documents not returnable.
Except as provided in § 2.27(e), documents filed in the Office
by the applicant or registrant become part of the official record and
will not be returned or removed.
. 6. Remove § 2.26.
. 7. Revise § 2.27(d) to read as follows:
§ 2.27 Pending trademark application index; access to
applications.
* * * * *
(d) Except as provided in paragraph (e) of this section, the
official records of applications and all proceedings relating thereto
are available for public inspection and copies of the documents may be
furnished upon payment of the fee required by § 2.6.
* * * * *
. 8. Revise § 2.32(a)(3)(iii), (a)(6), and (a)(8), and add new
§ 2.32(a)(3)(iv), (a)(9), and (a)(10) to read as follows:
§ 2.32 Requirements for a complete application.
(a) * * *
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(3) * * *
(iii) If the applicant is a domestic partnership, the names and
citizenship of the general partners;
(iv) If the applicant is a domestic joint venture, the names and
citizenship of the active members of the joint venture;
* * * * *
(6) A list of the particular goods or services on or in connection
with which the applicant uses or intends to use the mark. In a United
States application filed under section 44 of the Act, the scope of the
goods and/or services covered by the section 44 basis may not exceed
the scope of the goods and/or services in the foreign application or
registration;
(7) * * *
(8) If the mark is not in standard characters, a description of the
mark;
(9) If the mark includes non-English wording, an English
translation of that wording; and
(10) If the mark includes non-Latin characters, a transliteration
of those characters, and either a translation of the transliterated
term in English, or a statement that the transliterated term has no
meaning in English.
* * * * *
. 9. Revise § 2.33(b)(1) to read as follows:
§ 2.33 Verified statement.
* * * * *
(b)(1) In an application under section 1(a) of the Act, the
verified statement must allege:
That the applicant believes it is the owner of the mark; that the
mark is in use in commerce; that to the best of the declarant's
knowledge and belief, no other person has the right to use the mark in
commerce, either in the identical form or in such near resemblance as
to be likely, when applied to the goods or services of the other
person, to cause confusion or mistake, or to deceive; that the specimen
shows the mark as used on or in connection with the goods or services;
and that the facts set forth in the application are true.
* * * * *
. 10. Revise § 2.34(a)(1)(i), (a)(2), (a)(3)(i) and (a)(4)(ii), and
add new paragraph (a)(1)(v) to read as follows:
§ 2.34 Bases for filing.
(a) * * *
(1) * * *
(i) The trademark owner's verified statement that the mark is in
use in commerce on or in connection with the goods or services listed
in the application. If the verification is not filed with the initial
application, the verified statement must also allege that the mark was
in use in commerce on or in connection with the goods or services
listed in the application as of the application filing date;
* * * * *
(v) If more than one item of goods or services is specified in the
application, the dates of use required in paragraphs (ii) and (iii) of
this section need be for only one of the items specified in each class,
provided that the particular item to which the dates apply is
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designated.
(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 also allege that the applicant had a bona fide intention
to use the mark in commerce on or in connection with the goods or
services listed in the application as of the filing date of the
application.
(3) * * *
(i) The applicant's verified statement that it has a bona fide
intention to use the mark in commerce on or in connection with the
goods or services listed in the application. If the verification is not
filed with the initial application, the verified statement must also
allege that the applicant had a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the
application as of the filing date of the application.
* * * * *
(4) * * *
(i) * * *
(ii) Include the applicant's verified statement that it has a bona
fide intention to use the mark in commerce on or in connection with the
goods or services listed in the application. If the verification is not
filed with the initial application, the verified statement must also
allege that the applicant had a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the
application as of the filing date of the application.
* * * * *
. 11. Amend § 2.41 by revising paragraph (a) to read as follows:
§ 2.41 Proof of distinctiveness under section 2(f).
(a) When registration is sought of a mark which would be
unregistrable by reason of section 2(e) of the Act but which is said by
applicant to have become distinctive in commerce of the goods or
services set forth in the application, applicant may, in support of
registrability, submit with the application, or in response to a
request for evidence or to a refusal to register, affidavits, or
declarations in accordance with § 2.20, depositions, or other
appropriate evidence showing duration, extent and nature of use in
commerce and advertising expenditures in connection therewith
(identifying types of media and attaching typical advertisements), and
affidavits, or declarations in accordance with § 2.20,
letters or statements from the trade or public, or both, or other
appropriate evidence tending to show that the mark distinguishes such
goods or services.
* * * * *
. 12. Revise § 2.44(b) to read as follows:
§ 2.44 Collective mark.
(a) * * *
(b) In an application to register a collective mark under section
1(b), section 44 or section 66(a) of the Act, the application shall
specify and contain all applicable elements required by the preceding
sections for trademarks, but shall also specify the class of persons
intended to be entitled to use the mark, indicating what their
relationship to the applicant will be, and the nature of the control
applicant intends to exercise over the use of the mark.
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. 13. Revise § 2.45(b) to read as follows:
§ 2.45 Certification mark.
(a) * * *
(b) In an application to register a certification mark under
section 1(b), section 44 or section 66(a) of the Act, the application
shall include all applicable elements required by the preceding
sections for trademarks. In addition, the application must: specify the
conditions under which the certification mark is intended to be used;
allege that the applicant intends to exercise legitimate control over
the use of the mark; and allege that the applicant will not engage in
the production or marketing of the goods or services to which the mark
is applied. When the applicant files an allegation of use under §
2.76 or § 2.88, the applicant must submit a copy of the standards
that determine whether others may use the certification mark on their
goods and/or in connection with their services.
. 14. Revise § 2.47(a) to read as follows:
§ 2.47 Supplemental Register.
(a) In an application to register on the Supplemental Register
under section 23 of the Act, the application shall so indicate and
shall specify that the mark has been in use in commerce.
* * * * *
. 15. Add new § 2.48, to read as follows:
§ 2.48 Office does not issue duplicate registrations.
If two applications on the same register would result in
registrations that are exact duplicates, the Office will permit only
one application to mature into registration, and will refuse
registration in the other application.
. 16. Revise § 2.52(b) introductory text and (b)(1) to read as
follows:
§ 2.52 Types of drawings and format for drawings.
* * * * *
(b) Special form drawing. Applicants who seek to register a mark
that includes a two or three-dimensional design; color; and/or words,
letters, or numbers or the combination thereof in a particular font
style or size must submit a special form drawing. The drawing should
show the mark in black on a white background, unless the mark includes
color.
(1) Marks that include color. If the mark includes color, the
drawing must show the mark in color, and the applicant must name the
color(s), describe where the color(s) appear on the mark, and submit a
claim that the color(s) is a feature of the mark.
* * * * *
. 17. Revise § 2.53(a) to read as follows:
§ 2.53 Requirements for drawings filed through the TEAS.
* * * * *
(a) Standard character drawings. If an applicant seeks registration
of a standard character mark, the applicant must enter the mark in the
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appropriate field on the TEAS form, and check the box to claim that the
mark consists of standard characters.
* * * * *
. 18. Revise § 2.56(b)(1), (d)(2), and (d)(4) to read as follows:
§ 2.56 Specimens.
* * * * *
(b)(1) A trademark specimen is a label, tag, or container for the
goods, or a display associated with the goods. The Office may accept
another document related to the goods or the sale of the goods when it
is impracticable to place the mark on the goods, packaging for the
goods, or displays associated with the goods.
* * * * *
(d)(1) * * *
(2) If the applicant files a specimen exceeding these size
requirements (a "bulky specimen"), the Office will create a digital
facsimile of the specimen that meets the requirements of the rule
(i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by
11.69 inches (29.7 cm.) long) and put it in the record. The Office may
destroy the original bulky specimen.
* * * * *
(4) For a TEAS submission, the specimen must be a digitized image
in .jpg or .pdf format.
. 19. Revise § 2.62 to read as follows:
§ 2.62 Procedure for filing response.
(a) Deadline. The applicant's response to an Office action must be
received within six months from the date of issuance.
(b) Signature. The applicant, someone with legal authority to bind
the applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of § 11.14
of this chapter must sign the response.
. 20. Revise § 2.64(c)(1) to read as follows:
§ 2.64 Final action.
* * * * *
(c)(1) If an applicant in an application under section 1(b) of the
Act files an amendment to allege use under § 2.76 during the six-
month response period after issuance of a final action, the examiner
shall examine the amendment. The filing of an amendment to allege use
does not extend the deadline for filing a response to an outstanding
Office action, appeal to the Trademark Trial and Appeal Board, or
petition to the Director.
* * * * *
. 21. Revise § 2.65(a) to read as follows:
§ 2.65 Abandonment.
(a) If an applicant fails to respond, or to respond completely,
within six months after the date an action is issued, the application
shall be deemed abandoned unless the refusal or requirement is
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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 and/or services. A timely petition to the Director pursuant to
§§ 2.63(b) and 2.146 or notice of appeal to the Trademark Trial
and Appeal Board pursuant to § 2.142, if appropriate, is a response
that avoids abandonment of an application.
* * * * *
. 22. Revise § 2.66(a)(1), (d), and (f)(1) to read as follows:
§ 2.66 Revival of abandoned applications.
(a) * * *
(1) Within two months of the date of issuance of the notice of
abandonment; or
* * * * *
(d) In an application under section 1(b) of the Act, the Director
will not grant the petition if this would permit the filing of a
statement of use more than 36 months after the date of issuance of the
notice of allowance under section 13(b)(2) of the Act.
* * * * *
(f) * * *
(1) Files the request within two months of the date of issuance of
the decision denying the petition; and
* * * * *
. 23. Revise § 2.73 to read as follows:
§ 2.73 Amendment to recite concurrent use.
An application that includes section 1(a) of the Trademark Act as a
filing basis, or for which an acceptable allegation of use under §
2.76 or § 2.88 has been filed, may be amended to an application for
concurrent use registration, provided that the application as amended
meets the requirements of § 2.42. The trademark examining attorney
will determine whether the application, as amended, is acceptable.
. 24. Revise § 2.74 to read as follows:
§ 2.74 Form and signature of amendment.
(a) Form of Amendment. Amendments should be set forth clearly and
completely. Applicant should either set forth the entire wording,
including the proposed changes, or, if it would be more efficient,
indicate which words should be added and which words should be deleted.
The examining attorney may require the applicant to rewrite the entire
amendment, if necessary for clarification of the record.
(b) Signature. The applicant, someone with legal authority to bind
the applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of §
11.14 must sign the request for amendment. If the amendment requires
verification, the verification must be sworn to or supported by a
declaration under § 2.20 by a person properly authorized to sign on
behalf of the applicant (§ 2.33(a)).
. 25. Revise § 2.76(d) to read as follows:
§ 2.76 Amendment to allege use.
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* * * * *
(d) The title "Allegation of Use" should appear at the top of the
document.
* * * * *
. 26. Revise § 2.77 to read as follows:
§ 2.77 Amendments between notice of allowance and statement of
use.
(a) The only amendments that can be entered in an application
between the issuance of the notice of allowance and the submission of a
statement of use are:
(1) The deletion of specified goods or services from the
identification of goods/services;
(2) The deletion of a basis in a multiple-basis application; and
(3) A change of attorney or change of address.
(b) Other amendments filed during this period will be placed in the
application file and considered when the statement of use is examined.
. 27. Revise § 2.81(b) to read as follows:
§ 2.81 Post publication.
(a) * * *
(b) In an application under section 1(b) of the Act for which no
amendment to allege use under § 2.76 has been submitted and
accepted, if no opposition is filed within the time permitted or all
oppositions filed are dismissed, and if no interference is declared, a
notice of allowance will issue. The notice of allowance will state the
serial number of the application, the name of the applicant, the
correspondence address, the mark, the identification of goods and/or
services, and the issue date of the notice of allowance. Thereafter,
the applicant must submit a statement of use as provided in § 2.88.
. 28. Revise § 2.84(b) to read as follows:
§ 2.84 Jurisdiction over published applications.
* * * * *
(b) After publication, but before the certificate of registration
is issued in an application under section 1(a), 44, or 66(a) of the
Act, or before the notice of allowance is issued in an application
under section 1(b) of the Act, 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 § 2.133.
. 29. Revise § 2.85 to read as follows:
§ 2.85 Classification schedules.
(a) International classification system. Section 6.1 of this
chapter sets forth the international system of classification for goods
and services, which applies for all statutory purposes to:
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(1) Applications filed in the Office on or after September 1, 1973,
and resulting registrations; and
(2) Registrations resulting from applications filed on or before
August 31, 1973, that have been amended to adopt international
classification pursuant to § 2.85(e)(3).
(b) Prior United States classification system. Section 6.2 of this
chapter sets forth the prior United States system of classification for
goods and services, which applies for all statutory purposes to
registrations resulting from applications filed on or before August 31,
1973, unless:
(1) The registration has been amended to adopt international
classification pursuant to § 2.85(e)(3); or
(2) The registration was issued under a classification system prior
to that set forth in § 6.2.
(c) Certification marks and collective membership marks. Sections
6.3 and 6.4 specify the system of classification which applies to
certification marks and collective membership marks in applications
based on sections 1 and 44 of the Act, and to registrations resulting
from applications based on sections 1 and 44. These sections do not
apply to applications under section 66(a) or to registered extensions
of protection.
(d) Section 66(a) applications and registered extensions of
protection. In an application under section 66(a) of the Act or
registered extension of protection, the classification cannot be
changed from the classification assigned by the International Bureau of
the World Intellectual Property Organization, unless the International
Bureau corrects the classification. Classes cannot be added, and goods
or services cannot be transferred from one class to another in a
multiple-class application.
(e) Changes to Nice Agreement. The international classification
system changes periodically, pursuant to the Nice Agreement Concerning
the International Classification of Goods and Services for the Purposes
of the Registration of Marks. These changes are listed in the
International Classification of Goods and Services for the Purposes of
the Registration of Marks, which is published by the World Intellectual
Property Organization.
(1) If international classification changes pursuant to the Nice
Agreement, the new classification applies only to applications filed on
or after the effective date of the change.
(2) In a section 1 or section 44 application filed before the
effective date of a change to the Nice Agreement, the applicant may
amend the application to comply with the requirements of the current
edition. The applicant must comply with the current edition for all
goods or services identified in the application. The applicant must pay
the fees for any added class(es).
(3) In a registration resulting from a section 1 or section 44
application that was filed before the effective date of a
change to the Nice Agreement, the owner may amend the registration to
comply with the requirements of the current edition. The owner must
reclassify all goods or services identified in the registration to the
current edition. The owner must pay the fee required by § 2.6 for
amendments under section 7 of the Act. The owner may reclassify
registrations from multiple United States classes (§ 2.85(b)) into
a single international classification, where appropriate.
(f) Classification schedules shall not limit or extend the
applicant's rights, except that in a section 66(a) application, the
scope of the identification of goods or services for purposes of
permissible amendments (see § 2.71(a)) is limited by the class,
pursuant to § 2.85(d).
. 30. Revise § 2.86(a)(2) to read as follows:
§ 2.86 Application may include multiple classes.
(a) * * *
(2) Submit an application filing fee for each class, as set forth
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in § 2.6(a)(1); and
* * * * *
. 31. Revise § 2.87 to read as follows:
§ 2.87 Dividing an application.
(a) Application may be divided. An application may be divided into
two or more separate applications upon the payment of a fee for each
new application created and submission by the applicant of a request in
accordance with paragraph (d) of this section.
(b) Fee. In the case of a request to divide out one or more entire
classes from an application, only the fee for dividing an application
as set forth in § 2.6(a)(19) will be required. However, in the case
of a request to divide out some, but not all, of the goods or services
in a class, the applicant must submit the application filing fee as set
forth in § 2.6(a)(1) for each new separate application to be
created by the division, in addition to the fee for dividing an
application.
(c) Time for filing. (1) A request to divide an application may be
filed at any time between the application filing date and the date on
which the trademark examining attorney approves the mark for
publication; or during an opposition, concurrent use, or interference
proceeding, upon motion granted by the Trademark Trial and Appeal
Board.
(2) In an application under section 1(b) of the Act, a request to
divide may also be filed with a statement of use under § 2.88 or at
any time between the filing of a statement of use and the date on which
the trademark examining attorney approves the mark for registration.
(3) In a multiple-basis application, a request to divide out goods
or services having a particular basis may also be filed during the
period between the issuance of the notice of allowance under section
13(b)(2) of the Act and the filing of a statement of use under § 2.88.
(d) Form. A request to divide an application should be made in a
separate document from any other amendment or response in the
application. The title "Request to Divide Application" should appear
at the top of the first page of the document.
(e) Outstanding time periods apply to newly created applications.
Any time period for action by the applicant which is outstanding in the
original application at the time of the division will apply to each
separate new application created by the division, except as follows:
(1) If an Office action pertaining to less than all the classes in
a multiple-class application is outstanding, and the applicant files a
request to divide out the goods, services, and/or class(es) to which
the Office action does not pertain before the response deadline, a
response to the Office action is not due in the new (child)
application(s) created by the division of the application;
(2) If an Office action pertaining to less than all the bases in a
multiple-basis application is outstanding, and the applicant files a
request to divide out the goods/services having the basis or bases to
which the Office action does not pertain before the response deadline,
a response to the Office action is not due in the new (child)
application(s) created by the division of the application; or
(3) In a multiple-basis application in which a notice of allowance
has issued, if the applicant files a request to divide out the goods/
services having the basis or bases to which the notice of allowance
does not pertain before the deadline for filing the statement of use,
the new (child) applications created by the division are not affected
by the notice of allowance.
(f) Signature. The request to divide must be signed by the
applicant, someone with legal authority to bind the applicant (e.g., a
corporate officer or general partner of a partnership), or a
practitioner who meets the requirements of § 11.14.
(g) Section 66(a) applications - change of ownership with respect to
some but not all of the goods or services. (1) When the International
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Bureau of the World Intellectual Property Organization notifies the
Office that an international registration has been divided as the
result of a change of ownership with respect to some but not all of the
goods or services, the Office will construe the International Bureau's
notice as a request to divide. The Office will record the partial
change of ownership in the Assignment Services Branch, and divide out
the assigned goods/services from the original (parent) application. The
Office will create a new (child) application serial number, and enter
the information about the new application in its automated records.
(2) To obtain a certificate of registration in the name of the new
owner for the goods/services that have been divided out, the new owner
must pay the fee(s) for the request to divide, as required by § 2.6
and paragraph (b) of this section. The examining attorney will issue an
Office action in the child application requiring the new owner to pay
the required fee(s). If the owner of the child application fails to
respond, the child application will be abandoned. It is not necessary
for the new owner to file a separate request to divide.
(3) The Office will not divide a section 66(a) application based
upon a change of ownership unless the International Bureau notifies the
Office that the international registration has been divided.
. 32. Revise § 2.88(b)(1)(ii), (b)(3), (d), and (i)(2) to read as
follows:
§ 2.88 Filing statement of use after notice of allowance.
(a) * * *
(b) * * *
(1) * * *
(ii) The mark is in use in commerce, specifying the date of the
applicant's first use of the mark and first use of the mark in commerce
on or in connection with the goods or services identified in the notice
of allowance, and setting forth or incorporating by reference those
goods/services identified in the notice of allowance on or in
connection with which the mark is in use in commerce. Where an
applicant claims section 1(a) of the Act for some goods/services in a
class and section 1(b) of the Act for other goods/services in the same
class, the statement of use must include dates for the section 1(b) of
the Act goods/services;
* * * * *
(3) The fee per class required by § 2.6. The applicant must pay
a filing fee sufficient to cover at least one class within the
statutory time for filing the statement of use, or the application will
be abandoned. If the applicant submits a fee insufficient to cover all
the classes in a multiple-class application, the applicant must specify
the classes to be abandoned. If the applicant submits a
fee sufficient to pay for at least one class, but insufficient to cover
all the classes, and the applicant has not specified the class(es) to
be abandoned, the Office will issue a notice granting the applicant
additional time to submit the fee(s) for the remaining class(es), or
specify the class(es) to be abandoned. If the applicant does not submit
the required fee(s) or specify the class(es) to be abandoned within the
set time period, the Office will apply the fees paid, beginning with
the lowest numbered class(es), in ascending order. The Office will
delete the goods/services in the remaining class(es) not covered by the
fees submitted.
* * * * *
(d) The title "Allegation of Use" should appear at the top of the
first page of the document.
* * * * *
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(i) * * *
(2) If any goods or services specified in the notice of allowance
are omitted from the identification of goods or services in the
statement of use, the Office will delete the omitted goods/services
from the application. The applicant may not thereafter reinsert these
goods/services.
* * * * *
. 33. Revise § 2.89(a) introductory text, (a)(2), (a)(3), (b)(2), and
(g) to read as follows:
§ 2.89 Extensions of time for filing a statement of use.
(a) The applicant may request a six-month extension of time to file
the statement of use required by § 2.88. The extension request must
be filed within six months of the date of issuance of the notice of
allowance under section 13(b)(2) of the Act and must include the
following:
(1) * * *
(2) The fee per class required by § 2.6. The applicant must pay
a filing fee sufficient to cover at least one class within the
statutory time for filing the extension request, or the request will be
denied. If the applicant timely submits a fee sufficient to pay for at
least one class, but insufficient to cover all the classes, and the
applicant has not specified the class(es) to which the fee applies, the
Office will issue a notice granting the applicant additional time to
submit the fee(s) for the remaining classes, or specify the class(es)
to be abandoned. If the applicant does not submit the required fee(s)
or specify the class(es) to be abandoned within the set time period,
the Office will apply the fees paid, beginning with the lowest numbered
class(es), in ascending order. The Office will delete the goods/
services in the remaining classes not covered by the fees submitted;
and
(3) A statement that is signed and verified (sworn to) or supported
by a declaration under § 2.20 by a person properly authorized to
sign on behalf of the applicant (see § 2.33(a)) that the applicant
still has a bona fide intention to use the mark in commerce, specifying
the relevant goods or services. If the verification is unsigned or
signed by the wrong party, the applicant must submit a substitute
verification within six months of the date of issuance of the notice of
allowance.
(b) * * *
(2) The fee per class required by § 2.6. The applicant must pay
a filing fee sufficient to cover at least one class within the
statutory time for filing the extension request, or the request will be
denied. If the applicant submits a fee insufficient to cover all the
classes in a multiple-class application, the applicant must specify the
classes to be abandoned. If the applicant submits a fee sufficient to
pay for at least one class, but insufficient to cover all the classes,
and the applicant has not specified the class(es) to which the fee
applies, the Office will issue a notice granting the applicant
additional time to submit the fee(s) for the remaining classes, or
specify the class(es) to be abandoned. If the applicant does not submit
the required fee(s) or specify the class(es) to be abandoned within the
set time period, the Office will apply the fees, beginning with the
lowest numbered class(es), in ascending order. The Office will delete
the remaining goods/services not covered by the fees submitted;
* * * * *
(g) The applicant will be notified of the grant or denial of a
request for an extension of time, and of the reasons for a denial.
Failure to notify the applicant of the grant or denial of the request
prior to the expiration of the existing period or requested extension
does not relieve the applicant of the responsibility of timely filing a
statement of use under § 2.88. If, after denial of an extension
request, there is time remaining in the existing six-month period for
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filing a statement of use, applicant may submit a substitute request
for extension of time. Otherwise, the only recourse available after
denial of a request for an extension of time is a petition to the
Director in accordance with § 2.66 or § 2.146. A petition from
the denial of an extension request must be filed within two months of
the date of issuance of the denial of the request. If the petition is
granted, the term of the requested six-month extension that was the
subject of the petition will run from the date of expiration of the
previously existing six-month period for filing a statement of use.
* * * * *
. 34. Revise § 2.93 to read as follows:
§ 2.93 Institution of interference.
An interference is instituted by the issuance of a notice of
interference to the parties. The notice shall be sent to each
applicant, in care of the applicant's attorney or other representative
of record, if any, and if one of the parties is a registrant, the
notice shall be sent to the registrant or the registrant's assignee of
record. The notice shall give the name and address of every adverse
party and of the adverse party's attorney or other authorized
representative, if any, together with the serial number and date of
filing and publication of each of the applications, or the registration
number and date of issuance of each of the registrations, involved.
. 35. Revise § 2.99(d)(2) and (g) to read as follows:
§ 2.99 Application to register as concurrent user.
* * * * *
(d)(1) * * *
(2) An answer to the notice is not required in the case of an
applicant or registrant whose application or registration is specified
as a concurrent user in the application, but a statement, if desired,
may be filed within forty days after the issuance of the notice; in the
case of any other party specified as a concurrent user in the
application, an answer must be filed within forty days after the
issuance of the notice.
* * * * *
(g) Registrations and applications to register on the Supplemental
Register and registrations under the Act of 1920 are not subject to
concurrent use registration proceedings. Applications under section
1(b) of the Act of 1946 are subject to concurrent use registration
proceedings only after the applicant files an acceptable allegation of
use under § 2.76 or § 2.88. Applications based solely on
section 44 or section 66(a) of the Act are not subject to concurrent
use registration proceedings.
* * * * *
. 36. Revise § 2.141 to read as follows:
§ 2.141 Ex parte appeals from action of trademark examining
attorney.
(a) An applicant may, upon final refusal by the trademark examining
attorney, appeal to the Trademark Trial and Appeal Board upon payment
of the prescribed fee for each class in the application for which an appeal
is taken, within six months of the date of issuance of the final action. A
second refusal on the same grounds may be considered as final by the
applicant for purpose of appeal.
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(b) The applicant must pay an appeal fee for each class from which
the appeal is taken. If the applicant does not pay an appeal fee for at
least one class of goods or services before expiration of the six-month
statutory filing period, the application will be abandoned. In a
multiple-class application, if an appeal fee is submitted for fewer
than all classes, the applicant must specify the class(es) in which the
appeal is taken. If the applicant timely submits a fee sufficient to
pay for an appeal in at least one class, but insufficient to cover all
the classes, and the applicant has not specified the class(es) to which
the fee applies, the Board will issue a written notice setting a time
limit in which the applicant may either pay the additional fees or
specify the class(es) being appealed. If the applicant does not submit
the required fee or specify the class(es) being appealed within the set
time period, the Board will apply the fee(s) to the class(es) in
ascending order, beginning with the lowest numbered class.
. 37. Revise § 2.146(c), (d), (e), (i) introductory text, and (j)(1)
to read as follows:
§ 2.146 Petitions to the Director.
* * * * *
(c) Every petition to the Director must include a statement of the
facts relevant to the petition, the points to be reviewed, the action
or relief requested, and the fee required by § 2.6. Any brief in
support of the petition should be embodied in or accompany the
petition. The petitioner, someone with legal authority to bind the
petitioner (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of §
11.14 of this chapter must sign the petition. When facts are to be
proved on petition, the petitioner must submit proof in the form of
affidavits or declarations in accordance with § 2.20, signed by
someone with firsthand knowledge of the facts to be proved, and any
exhibits.
(d) A petition must be filed within two months of the date of
issuance of the action from which relief is requested, unless a
different deadline is specified elsewhere in this chapter.
(e)(1) A petition from the grant or denial of a request for an
extension of time to file a notice of opposition must be filed within
fifteen days from the date of issuance of the grant or denial of the
request. A petition from the grant of a request must be served on the
attorney or other authorized representative of the potential opposer,
if any, or on the potential opposer. A petition from the denial of a
request must be served on the attorney or other authorized
representative of the applicant, if any, or on the applicant. Proof of
service of the petition must be made as provided by § 2.119. The
potential opposer or the applicant, as the case may be, may file a
response within fifteen days from the date of service of the petition
and must serve a copy of the response on the petitioner, with proof of
service as provided by § 2.119. No further document relating to the
petition may be filed.
(2) A petition from an interlocutory order of the Trademark Trial
and Appeal Board must be filed within thirty days after the date of
issuance of the order from which relief is requested. Any brief in
response to the petition must be filed, with any supporting exhibits,
within fifteen days from the date of service of the petition. Petitions
and responses to petitions, and any documents accompanying a petition
or response under this subsection must be served on every adverse party
pursuant to § 2.119.
* * * * *
(i) Where a petitioner seeks to reactivate an application or
registration that was abandoned, cancelled or expired because documents
were lost or mishandled, the Director may deny the petition if the
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petitioner was not diligent in checking the status of the application
or registration. To be considered diligent, a petitioner must:
(1) * * *
* * * * *
(j) * * *
(1) Files the request within two months of the date of issuance of
the decision denying the petition; and
* * * * *
. 38. Revise § 2.153 to read as follows:
§ 2.153 Publication requirements.
The owner of a mark registered under the provisions of the Acts of
1881 or 1905 may at any time prior to the expiration of the period for
which the registration was issued or renewed, upon the payment of the
prescribed fee, file an affidavit or declaration in accordance with
§ 2.20 setting forth those goods or services in the registration on
or in connection with which said mark is in use in commerce, and
stating that the owner claims the benefits of the Trademark Act of
1946. The affidavit or declaration must be signed by a person properly
authorized to sign on behalf of the owner (§ 2.161(b)).
. 39. Revise the undesignated center heading immediately preceding § 2.160 to
read as follows:
Cancellation for Failure To File Affidavit or Declaration
. 40. Revise § 2.161(g)(3) to read as follows:
§ 2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
* * * * *
(g) * * *
(3) Be a digitized image in .jpg or .pdf format, if transmitted
through TEAS.
. 41. Revise § 2.163(b) and add a new paragraph (c) to read as
follows:
§ 2.163 Acknowledgment of receipt of affidavit or declaration.
* * * * *
(b) A response to the refusal must be filed within six months of
the date of issuance of the Office action, or before the end of the
filing period set forth in section 8(a) or section 8(b) of the Act,
whichever is later. The response must be signed by the owner, someone
with legal authority to bind the owner (e.g., a corporate officer or
general partner of a partnership), or a practitioner qualified to
practice under § 11.14 of this chapter.
(c) If no response is filed within this time period, the
registration will be cancelled, unless time remains in the grace period
under section 8(c)(1) of the Act. If time remains in the grace period,
the owner may file a complete new affidavit.
. 42. Revise § 2.165(b) to read as follows:
§ 2.165 Petition to Director to review refusal.
* * * * *
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(b) If the examiner maintains the refusal of the affidavit or
declaration, the owner may file a petition to the Director to review
the action. The petition must be filed within six months of the date of
issuance of the action maintaining the refusal, or the Office will
cancel the registration and issue a notice of the cancellation.
* * * * *
. 43. Revise § 2.167(a), (d) and (f) to read as follows:
§ 2.167 Affidavit or declaration under section 15.
* * * * *
(a) Be verified (sworn to) or supported by a declaration under
§ 2.20, signed by the owner of the registration or a person
properly authorized to sign on behalf of the owner (§ 2.161(b));
* * * * *
(d) Specify that there has been no final decision adverse to the
owner's claim of ownership of such mark for such goods or services, or
to the owner's right to register the same or to keep the same on the
register;
* * * * *
(f) Be filed within one year after the expiration of any five-year
period of continuous use following registration or publication under
section 12(c). The Office will issue a notice acknowledging receipt of
the affidavit or declaration.
* * * * *
. 44. Revise § 2.171 to read as follows:
§ 2.171 New certificate on change of ownership.
(a) Full change of ownership. If the ownership of a registered mark
changes, the new owner may request that a new certificate of
registration be issued in the name of the new owner. The assignment or
other document changing title must be recorded in the Office. The
request for the new certificate must include the fee required by
§ 2.6(a)(8) and be signed by the owner of the registration, someone with
legal authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice
under § 11.14 of this chapter. In a registered extension of
protection, the assignment must be recorded with the International
Bureau of the World Intellectual Property Organization before it can be
recorded in the Office (see § 7.22).
(b) Partial change of ownership. (1) In a registration resulting
from an application based on section 1 or 44 of the Act, if ownership
of a registration has changed with respect to some but not all of the
goods and/or services, the owner(s) may file a request that the
registration be divided into two or more separate registrations. The
assignment or other document changing title must be recorded in the
Office. The request to divide must include the fee required by
§ 2.6(a)(8) for each new registration created by the division, and be
signed by the owner of the registration, someone with legal authority
to bind the owner (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under § 11.14
of this chapter.
(2)(i) When the International Bureau of the World Intellectual
Property Organization notifies the Office that an international
registration has been divided as the result of a change of ownership
with respect to some but not all of the goods or services, the Office
will construe the International Bureau's notice as a request to divide.
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The Office will record the partial change of ownership in the
Assignment Services Branch, and divide out the assigned goods/services
from the registered extension of protection (parent registration),
issue an updated certificate for the parent registration, and publish
notice of the parent registration in the Official Gazette.
(ii) The Office will create a new registration number for the child
registration, and enter the information about the new registration in
its automated records. The Office will notify the new owner that the
new owner must pay the fee required by § 2.6 to obtain a new
registration certificate for the child registration. It is not
necessary for the new owner to file a separate request to divide.
(iii) The Office will not divide a registered extension of
protection unless the International Bureau notifies the Office that the
international registration has been divided.
. 45. Revise § 2.173 to read as follows:
§ 2.173 Amendment of registration.
(a) Form of amendment. The owner of a registration may apply to
amend a registration or to disclaim part of the mark in the
registration. The owner must submit a written request specifying the
amendment or disclaimer. If the registration is involved in an inter
partes proceeding before the Trademark Trial and Appeal Board, the
request must be filed by appropriate motion to the Board.
(b) Requirements for request. A request for amendment or disclaimer
must:
(1) Include the fee required by § 2.6;
(2) Be signed by the owner of the registration, someone with legal
authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 11.14, and verified or supported by a declaration under § 2.20; and
(3) If the amendment involves a change in the mark: a new specimen
showing the mark as used on or in connection with the goods or
services; an affidavit or declaration under § 2.20 stating that the
specimen was in use in commerce at least as early as the filing date of
the amendment; and a new drawing of the amended mark.
(c) Registration must still contain registrable matter. The
registration as amended must still contain registrable matter, and the
mark as amended must be registrable as a whole.
(d) Amendment may not materially alter the mark. An amendment or
disclaimer must not materially alter the character of the mark.
(e) Amendment of identification of goods. No amendment in the
identification of goods or services in a registration will be permitted
except to restrict the identification or to change it in ways that
would not require republication of the mark.
(f) Conforming amendments may be required. If the registration
includes a disclaimer, description of the mark, or other miscellaneous
statement, any request to amend the registration must include a request
to make any necessary conforming amendments to the disclaimer,
description, or other statement.
(g) Elimination of disclaimer. No amendment seeking the elimination
of a disclaimer will be permitted, unless deletion of the disclaimed
portion of the mark is also sought.
. 46. Revise § 2.174 to read as follows:
§ 2.174 Correction of Office mistake.
Whenever Office records clearly disclose a material mistake in a
registration, incurred through the fault of the Office, the Office will
issue a certificate of correction stating the fact and nature of the
mistake, signed by the Director or by an employee designated by the
Director, without charge. Thereafter, the corrected certificate shall
have the same effect as if it had been originally issued in the
corrected form. In the discretion of the Director, the Office may issue
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a new certificate of registration without charge.
. 47. In § 2.175 revise the section heading and paragraphs (a) and
(b)(2) to read as follows, and remove paragraph (c):
§ 2.175 Correction of mistake by owner.
(a) Whenever a mistake has been made in a registration and a
showing has been made that the mistake occurred in good faith through
the fault of the owner, the Director may issue a certificate of
correction. In the discretion of the Director, the Office may issue a
new certificate upon payment of the required fee, provided that the
correction does not involve such changes in the registration as to
require republication of the mark.
(b) * * *
(2) Be signed by the owner of the registration, someone with legal
authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 11.14 of this chapter, and verified or include a declaration
in accordance with § 2.20; and
* * * * *
. 48. Revise § 2.176 to read as follows:
§ 2.176 Consideration of above matters.
The matters in §§ 2.171 to 2.175 will be considered in the
first instance by the Post Registration examiners, except for requests
to amend registrations involved in inter partes proceedings before the
Trademark Trial and Appeal Board, as specified in § 2.173(a), which
shall be considered by the Board. If an action of the examiner is
adverse, the owner of the registration may petition the Director to
review the action under § 2.146. If the owner does not respond to
an adverse action of the examiner within six months of the date of
issuance, the matter will be considered abandoned.
. 49. Amend § 2.183 by adding a new paragraph (f), to read as
follows:
§ 2.183 Requirements for a complete renewal application.
* * * * *
(f) Renewals of registrations issued under a prior classification
system will be processed on the basis of that system, unless the
registration has been amended to adopt international classification
pursuant to § 2.85(e)(3).
. 50. Revise § 2.184(b) to read as follows:
§ 2.184 Refusal of renewal.
* * * * *
(b)(1) The registrant must file a response to the refusal of
renewal within six months of the date of issuance of the Office action,
or before the expiration date of the registration, whichever is later.
If no response is filed within this time period, the registration will
expire, unless time remains in the grace period under section 9(a) of
the Act. If time remains in the grace period, the registrant may file a
complete new renewal application.
(2) The registrant, someone with legal authority to bind the
registrant (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of § 11.14 must
sign the response.
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* * * * *
. 51. Revise § 2.186(b) to read as follows:
§ 2.186 Petition to Director to review refusal of renewal.
* * * * *
(b) If the examiner maintains the refusal of the renewal
application, a petition to the Director to review the refusal may be
filed. The petition must be filed within six months of the date of
issuance of the Office action maintaining the refusal, or the renewal
application will be abandoned and the registration will expire.
* * * * *
. 52. Revise § 2.195(b) and (e) to read as follows:
§ 2.195 Receipt of trademark correspondence.
* * * * *
(b) Correspondence delivered by hand. Correspondence may be
delivered by hand during hours the Office is open to receive
correspondence.
* * * * *
(e) Interruptions in U.S. Postal Service. (1) If the Director
designates a postal service interruption or emergency within the
meaning of 35 U.S.C. 21(a), any person attempting to file
correspondence by "Express Mail Post Office to Addressee" service who
was unable to deposit the correspondence with the United States Postal
Service due to the interruption or emergency may petition the Director
to consider such correspondence as filed on a particular date in the
Office.
(2) The petition must:
(i) Be filed promptly after the ending of the designated
interruption or emergency;
(ii) Include the original correspondence or a copy of the original
correspondence; and
(iii) Include a statement that the correspondence would have been
deposited with the United States Postal Service on the requested filing
date but for the designated interruption or emergency in "Express
Mail" service; and that the correspondence attached to the petition is
the original correspondence or a true copy of the correspondence
originally attempted to be deposited as Express Mail on the requested
filing date.
(3) Paragraphs (e)(1) and (e)(2) of this section do not apply to
correspondence that is excluded from the Express Mail procedure
pursuant to § 2.198(a)(1).
. 53. Revise § 2.208(c)(3) to read as follows, and remove paragraph
(c)(4):
§ 2.208 Deposit accounts.
* * * * *
(c) * * *
(3) A payment to replenish a deposit account may be addressed to:
Director of the United States Patent and Trademark Office, Attn:
Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia
22314.
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PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
. 54. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1112, 1123; 35 U.S.C. 2, unless otherwise
noted.
. 55. In § 3.31, add paragraph (a)(8) and revise (f) to read as
follows:
§ 3.31 Cover sheet content.
(a) * * *
(8) For trademark assignments, the entity and citizenship of the
party receiving the interest. In addition, if the party receiving the
interest is a domestic partnership or domestic joint venture, the cover
sheet must set forth the names, legal entities, and national
citizenship (or the state or country of organization) of all general
partners or active members that compose the partnership or joint
venture.
* * * * *
(f) Each trademark cover sheet should include the citizenship of
the party conveying the interest.
* * * * *
PART 6 - CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT
. 56. The authority citation for part 6 continues to read as follows:
Authority: 15 U.S.C. 1112, 1123; 35 U.S.C. 2, unless otherwise
noted.
. 57. Revise § 6.3 to read as follows:
§ 6.3 Schedule for certification marks.
In applications for registration of certification marks based on
sections 1 and 44 of the Trademark Act and registrations resulting from
such applications, goods and services are classified in two classes as
follows:
A. Goods.
B. Services.
. 58. Revise § 6.4 to read as follows:
§ 6.4 Schedule for collective membership marks.
All collective membership marks in applications based on sections 1
and 44 of the Trademark Act and registrations resulting from such
applications are classified as follows:
- - - - - - - - - - - - - - - - - - - - - - - - -
Class Title
- - - - - - - - - - - - - - - - - - - - - - - - -
200.............................. Collective Membership.
- - - - - - - - - - - - - - - - - - - - - - - - -
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
. 59. The authority citation for 37 CFR part 7 continues to read as
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follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
. 60. Revise § 7.11(a)(2) to read as follows:
§ 7.11 Requirements for international application originating from
the United States.
(a) * * *
(2) The name and entity of the international applicant that is
identical to the name and entity of the applicant or registrant in the
basic application or basic registration, and the applicant's current
address;
* * * * *
. 61. Revise § 7.14(e) to read as follows:
§ 7.14 Correcting irregularities in international application.
* * * * *
(e) Procedure for response. To be considered timely, a response
must be received by the International Bureau before the end of the
response period set forth in the International Bureau's notice. Receipt
in the Office does not fulfill this requirement. Any response submitted
through the Office for forwarding to the International Bureau should be
submitted as soon as possible, but at least one month before the end of
the response period in the International Bureau's notice. The Office
will not process any response received in the Office after the
International Bureau's response deadline.
. 62. Revise § 7.25(a) to read as follows:
§ 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for §§ 2.22-2.23, 2.130-2.131, 2,160-2.166,
2.168, 2.173, and 2.181-2.186, all sections in parts 2, 10, and 11 of
this chapter shall apply to an extension of protection of an
international registration to the United States, including sections
related to proceedings before the Trademark Trial and Appeal Board,
unless otherwise stated.
* * * * *
. 63. Revise § 7.39(b) to read as follows:
§ 7.39 Acknowledgment of receipt of affidavit or declaration of
use in commerce or excusable nonuse.
* * * * *
(b) A response to a refusal under paragraph (a) of this section
must be filed within six months of the date of issuance 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.
. 64. Revise § 7.40(b) to read as follows:
§ 7.40 Petition to Director to review refusal.
* * * * *
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(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 date of issuance of the action maintaining the refusal, or the
Office will cancel the registration.
* * * * *
November 10, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1337 TMOG 125]