| Trademark Publications 2014 |
Referenced Items (496, 497, 498) |
(498) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. PTO-T-2013-0027]
RIN 0651-AC89
Changes in Requirements for Collective Trademarks and
Service Marks, Collective Membership Marks, and Certification Marks
AGENCY: United States Patent and Trademark Office, Commerce
ACTIONS: Notice of Proposed Rulemaking
SUMMARY: The United States Patent and Trademark Office ("USPTO") proposes
to amend the rules related to collective trademarks, collective service
marks, and collective membership marks (together "collective marks"), and
certification marks to clarify application requirements, allegations of use
requirements, multiple-class application requirements, and registration
maintenance requirements for such marks. These proposed rule changes will
codify current USPTO practice set forth in the USPTO's "Trademark Manual of
Examining Procedure" ("TMEP") and precedential case law. These changes also
will permit the USPTO to provide the public more detailed guidance
regarding registering and maintaining registrations for these types of
marks and will promote the efficient and consistent processing of such
marks. Further, the USPTO proposes to amend several rules beyond those
related to collective marks and certification marks to create consistency
with rule changes regarding such marks and to streamline the rules, by
consolidating text and incorporating headings, for easier use.
DATES: Written comments must be received on or before May 21, 2014 to
ensure consideration.
ADDRESSES: The USPTO prefers that comments be submitted via electronic mail
message to TMFRNotices@uspto.gov. Written comments also may be submitted by
mail to Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA
22313-1451, attention Cynthia Lynch; by hand delivery to the Trademark
Assistance Center, Concourse Level, James Madison Building-East Wing, 600
Dulany Street, Alexandria, Virginia, attention Cynthia Lynch; or by
electronic mail message via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal. All
comments submitted directly to the USPTO or provided on the Federal
eRulemaking Portal should include the docket number (PTO-T-2013-0027).
Written comments will be available for public inspection on the USPTO's Web
site at http://www.uspto.gov as well as at the Federal eRulemaking Portal,
and at the Office of the Commissioner for Trademarks, Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia. Because comments will be
made available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included.
FOR FURTHER INFORMATION CONTACT: Cynthia Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, at (571) 272-8742 or
tmpolicy@uspto.gov.
SUPPLEMENTARY INFORMATION
Executive Summary: Purpose: The proposed rules will benefit the public
by providing more comprehensive and specific guidance regarding registering
collective marks and certification marks. The current rules incorporate by
reference the trademark and service mark application rules; however,
wording in the trademark and service mark application rules sometimes may
not be specifically suited to collective and certification mark
applications. Therefore, the USPTO proposes to revise the rules in parts 2
and 7 of title 37 of the Code of Federal Regulations to codify current
USPTO practice in TMEP sections 1302, 1303 et seq., 1304, and 1306, and to
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state clearly and provide sufficient detail regarding the requirements for
collective and certification mark applications. The USPTO also seeks to
harmonize registration maintenance requirements with application
requirements where appropriate.
Further, proposed rule changes beyond those related to collective marks
and certification marks will provide consistency with changes made
regarding those marks and streamline the rules, by consolidating text and
incorporating headings, for easier use.
To provide additional context for the ensuing discussion of the amended
and revised rules regarding collective marks and certification marks, the
following is a brief description of those types of marks.
There are two types of collective marks as defined by section 45 of the
Trademark Act of 1946, as amended ("the Act"): (1) collective trademarks
or collective service marks; and (2) collective membership marks. 15 U.S.C.
1127. A collective trademark or collective service mark is used by members
of a collective organization to identify and distinguish their goods or
services from those of nonmembers. TMEP section 1303. By contrast,
collective membership marks are used by members of a collective
organization to indicate membership in the collective membership
organization. TMEP section 1304.02.
Certification marks are used by authorized users to indicate the
following: (1) goods or services have been certified as to quality,
materials, or mode of manufacture; (2) goods or services have been
certified to originate in a specific geographic region; and/or (3) the work
labor on goods or for services was certified to have been performed by a
member of a union or other organization, or to certify that the performer
meets certain standards. TMEP section 1306.01. A certification mark is
similar to a collective trademark or collective service mark except that
the users are not members of a collective organization. See TMEP section
1306.09(a). That is, a collective trademark or collective service mark is
used by members of an organization who meet the collective organization's
standards of admission, while a certification mark is used by parties whose
products or services meet the certifying organization's established
standards.
Summary of Major Provisions: As stated above, the USPTO proposes to
revise the rules in parts 2 and 7 of title 37 of the Code of Federal
Regulations to codify current USPTO practice in TMEP sections 1302, 1303
et seq., 1304, and 1306, and to state clearly, and provide sufficient
detail regarding, the requirements for collective and certification mark
applications, as well as to harmonize registration maintenance requirements
with application requirements where appropriate. Further, the USPTO
proposes to revise additional rules within these parts for consistency and
clarity.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Discussion of Specific Rules
The USPTO proposes to amend the following rules: §§ 2.2, 2.20,
2.32-.34, 2.41-2.42, 2.44-2.45, 2.56, 2.59, 2.71, 2.74, 2.76, 2.86,
2.88-2.89, 2.146, 2.161, 2.167, 2.173, 2.175, 2.183, 2.193, 7.1, and 7.37.
PART 2: RULES OF PRACTICE IN TRADEMARK CASES
Rules Applicable to Trademark Cases
The USPTO proposes to amend and add terms to § 2.2, regarding
definitions, to delete repetitious wording elsewhere in the rules wherever
possible. Specifically, the USPTO proposes to amend § 2.2(h) to clarify
that the definition of "international application" is limited to an
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application for international registration seeking an extension of
protection to the United States or a subsequent designation of an
international registration to the United States. The USPTO also proposes
to add § 2.2(i) through (n) to set forth the following new definitions
designation; holder; use in commerce; bona fide intention to use the mark
in commerce; bona fide intention, and is entitled, to exercise legitimate
control over the use of the mark in commerce; and verified statement,
verify, verified, or verification.
Declarations
The USPTO proposes to amend § 2.20, regarding declarations in lieu of
oaths, to delete from the introductory text the term "verification," to
correspond with the definition of that term in § 2.2(n), and to add the
term "declaration."
Application for Registration
The USPTO proposes to amend the rule title of § 2.32 to "Requirements
for a complete trademark or service mark application." In addition, the
USPTO proposes to add § 2.32(f) to cross-reference § 2.44 for the
requirements for collective mark applications, and to add § 2.32(g) to
cross-reference § 2.45 for the requirements for certification mark
applications.
The USPTO proposes to amend § 2.33, regarding verified statements for
trademarks or service marks, to ensure the language corresponds with other
proposed rules, including the proposed new definitions in § 2.2. Also, the
USPTO proposes to add § 2.33(f) to set forth the type of verified statement
required for concurrent use applications under § 2.42. Additionallythe
USPTO proposes to amend the title of § 2.33 to "Verified statement for a
trademark or service mark."
The USPTO proposes to amend § 2.34, regarding filing bases for trademark
or service mark applications, to ensure the language corresponds with other
proposed rules, including the proposed new definitions in § 2.2, to delete
the definition of "commerce" provided in § 2.34(c) as redundant of section
45 of the Act, and to correct a typographical error. The USPTO further
proposes to amend the title to "Bases for filing a trademark or service
mark application." Additionally, the USPTO proposes to amend
§ 2.34(a)(1)(iv) to delete "actually" as a redundant term for consistency
with proposed amendments to § 2.56(b)(2) and (c) regarding specimens,
§ 2.76(b)(2) regarding amendments to allege use, § 2.88(b)(2) regarding
statements of use, and § 2.161(g)(1) regarding affidavits or declarations
of use in commerce or excusable nonuse under section 8 of the Act. Lastly,
the USPTO proposes to revise current § 2.34(b)(1)-(3) by condensing the
text in § 2.34(b), and add the title "More than one basis."
The USPTO proposes to revise § 2.41, regarding proof of distinctiveness
under section 2(f) of the Act, to specify the type of proof required to
establish such a claim for trademarks, service marks, collective marks, and
certification marks, and to make other changes consistent with current
USPTO practice. Specifically, the USPTO proposes to revise § 2.41 as
follows: in § 2.41(a), add the title "For a trademark or service mark" and
set forth in § 2.41(a)(1)-(3) the current text in existing § 2.41; in
§ 2.41(b), add the title "For a collective trademark or collective service
mark" and set forth in § 2.41(b)(1)-(3) the requirements for collective
trademarks or collective service marks. The USPTO also proposes to add the
following to § 2.41: in § 2.41(c), set forth the requirements for
collective membership marks; and in § 2.41(d), set forth the requirements
for certification marks. Further, the USPTO proposes additional revisions
to correspond with the proposed new definitions in § 2.2 and include
subsections with subheadings that set forth the three types of proof that
can be submitted to establish distinctiveness under 15 U.S.C. 1052(f). In
addition, proposed § 2.41(a)(1), (c)(1), and (d)(1) add the term "active"
to clarify and codify current USPTO practice, see TMEP section 1212.04(d),
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that evidence of distinctiveness must be based on ownership of an active
prior registration on the Principal Register or under the Trademark Act of
1905. Further, proposed § 2.41(a)(1) and (d)(1) clarify that such
registration must be for goods or services sufficiently similar to those in
the application, and proposed § 2.41(c)(1) adds that the nature of the
collective membership organization must be sufficiently similar to the prior
registration, and such requirement in proposed § 2.41(a)(1), (d)(1), and
(c)(1) codifies precedential case law and current USPTO practice, see In
re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807,
1812 (Fed. Cir. 2001), In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999), TMEP
sections 1212.04(c), 1212.09(a). Lastly, proposed § 2.41(e) excludes from
§ 2.41(d) geographic matter in certification marks that indicate regional
origin, because 15 U.S.C. 1052(e)(2) explicitly excepts such terms in
certification marks including indications of regional origin. See TMEP
section 1306.02.
The USPTO proposes to revise § 2.42, regarding concurrent use
requirements, to incorporate requirements for collective marks and
certification marks, as well as to make other changes consistent with
current USPTO practice. Specifically, the USPTO proposes to revise § 2.42
as follows: add § 2.42(a), to require an application for registration as a
lawful concurrent user to assert use in commerce in accordance with current
USPTO practice, see TMEP section 1207.04(b), and the USPTO's "Trademark
Trial and Appeal Board Manual of Procedure" section 1101.01, to require an
application for concurrent use be for a mark seeking registration on the
Principal Register under the Act, in accordance with current § 2.99(g), and
to include all relevant application requirements, including § 2.44 for
collective marks or § 2.45 for certification marks, if applicable. In
addition, the USPTO proposes to add § 2.42(b) to enumerate the additional
requirements for concurrent use applications set forth in the existing
second sentence of current § 2.42 and to modify such text to incorporate
the requirements for collective marks and certification marks. Further, the
USPTO proposes to add § 2.42(c) to cross-reference current § 2.73,
pertaining to amending an application to recite concurrent use, and to add
§ 2.42(d) to cross-reference current § 2.99, pertaining to concurrent use
proceedings at the Trademark Trial and Appeal Board.
The USPTO proposes to revise § 2.44, regarding collective marks, to
include all requirements for a collective mark application in one rule.
Specifically, the USPTO proposes to revise § 2.44 as follows: in § 2.44(a),
enumerate the application requirements for a collective mark, incorporating
the relevant application requirements from current § 2.32, regarding the
requirements for a complete trademark or service mark application, current
§ 2.44, and current USPTO practice, see TMEP sections 1303.02 et seq. for
collective trademarks and collective service marks, and TMEP section
1304.08(c)-(f) for collective membership marks; and in § 2.44(b), specify
the requirements for a verified statement that was not filed within a
reasonable time after signing or was omitted from the application to
correspond with proposed § 2.33(c) and § 2.34(a)(1)(i), (a)(2), (a)(3)(i),
and (a)(4)(ii). The USPTO also proposes to add the following to § 2.44:
in proposed § 2.44(c), specify the requirements for claiming more than one
filing basis in the application to correspond with proposed § 2.34(b); in
proposed § 2.44(d), specify the requirements for the verification in a
concurrent use application to correspond with proposed § 2.33(f); and in
proposed § 2.44(e), cross-reference the multiple-class application
requirements rule in proposed § 2.86 for consistency with proposed
§ 2.32(e). Further, the USPTO proposes additional revisions to correspond
with the proposed new definitions in § 2.2. Also, the USPTO proposes to
amend the title to "Requirements for a complete collective mark
application" for consistency with the title in proposed § 2.32 regarding
trademark and service mark application requirements.
The USPTO proposes to revise § 2.45, regarding certification marks, to
include all requirements for a certification mark application in one rule,
and to be consistent with the formatting of proposed § 2.44 for collective
mark application requirements. Specifically, the USPTO proposes to revise
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§ 2.45 as follows: in § 2.45(a), enumerate the application requirements
for a certification mark, incorporating the relevant application
requirements from current § 2.32, regarding the requirements for a complete
trademark or service mark application, current § 2.45, and current USPTO
practice, see TMEP sections 1306.06 et seq.; and in § 2.45(b), specify the
requirements for a verified statement that was not filed within a
reasonable time after signing or was omitted from the application to
correspond with proposed § 2.33(c) and § 2.34(a)(1)(i), (a)(2), (a)(3)(i),
and (a)(4)(ii) and proposed § 2.44(b). The USPTO also proposes to add the
following to § 2.45: in proposed § 2.45(c), specify the requirements for
claiming more than one filing basis in the application to correspond with
proposed § 2.34(b) and proposed § 2.44(c); in proposed § 2.45(d), specify
the requirements for the verification in a concurrent use application to
correspond with proposed § 2.33(f) and proposed § 2.44(d); in proposed
§ 2.45(e), cross-reference the multiple-class application requirements rule
in proposed § 2.86 for consistency with proposed § 2.32(e) and proposed
§ 2.44(e); and in proposed § 2.45(f), prohibit a single application from
including both a certification mark and another type of mark, because the
USPTO's databases preclude capturing different legal requirements for
multiple types of marks in a single application, and also prohibit the
registration of the same mark for the same goods and/or services as both
a certification mark and another type of mark, in accordance with sections
4 and 14(5)(B) of the Act and current USPTO practice, see TMEP section
1306.05(a). Further, the USPTO proposes additional revisions to correspond
with the proposed new definitions in § 2.2. Also, the USPTO proposes to
amend the rule title to "Requirements for a complete certification mark
application; restriction on certification mark application" for consistency
with the title of proposed § 2.32 regarding trademark and service mark
application requirements and proposed § 2.44 regarding collective mark
application requirements.
Specimens
The USPTO proposes to amend § 2.56(b)(2) and (c), regarding specimens,
to delete the term "actually" as a redundant term and for consistency with
similar proposed amendments to § 2.34(a)(1)(iv), § 2.76(b)(2),
§ 2.88(b)(2), and § 2.161(g). Additionally, the USPTO proposes to amend
§ 2.56(b)(5) to delete "to certify" and replace it with "to reflect
certification of." Lastly, the USPTO proposes to amend § 2.56(d)(3), to
delete "audio or video cassette tape recording, CD-ROM" and replace it with
"compact disc, digital video disc," in accordance with current practice,
see TMEP section 904.03(d), (f).
The USPTO proposes to amend § 2.59, regarding substitute specimens, to
change existing text to "verified statement" to correspond with § 2.2(n).
Additionally, the USPTO proposes to amend § 2.59(a) to reference substitute
specimens for a collective membership mark.
Amendment of Application
The USPTO proposes to amend § 2.71(a), regarding amendments to the
identification of goods and/or services, to reference amending the
description of the nature of a collective membership mark. In addition, the
USPTO proposes to amend § 2.71(b)-(d) to change existing text to correspond
with § 2.2(n). Further, the USPTO proposes to add § 2.71(e) to set forth
that an amendment that would materially alter a certification statement
pursuant to proposed § 2.45(a)(4)(i)(A) and (a)(4)(ii)(A), is not
permitted, which is consistent with proposed § 2.173(f) regarding such
amendments after registration.
The USPTO proposes to amend § 2.74(b), regarding the form and signature
of an amendment, to change existing text to "verification" to correspond
with § 2.2(n).
The USPTO proposes to amend § 2.76, regarding amendments to allege use,
to include the relevant requirements for collective marks and certification
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marks, and to be consistent with proposed § 2.88 for statements of use.
Specifically, the USPTO proposes to amend § 2.76 as follows: in § 2.76(a),
add the title "When to file an amendment to allege use;" in § 2.76(a)(1)
and (a)(2), include the text from existing § 2.76(a) and (c), except delete
the language regarding the USPTO returning an untimely filed amendment to
allege use because under current practice the USPTO will not return or
review such amendment; in § 2.76(b), add the title "A complete amendment to
allege use" and include in § 2.76(b)(1)-(5) the text from existing
§ 2.76(b) and (c) and the requirements for collective marks and
certification marks, in § 2.76(b)(6), require the title "Amendment to
Allege Use" on the first page of the document for those documents not filed
using the Trademark Electronic Application System (TEAS); in § 2.76(c), add
the title "Minimum filing requirements for a timely filed amendment to
allege use" and include the text from existing § 2.76(e) and change existing
text to "verified statement" to correspond with § 2.2(n); in § 2.76(d), add
the title "Deficiency notification" and include the text from existing
§ 2.76(g); in § 2.76(e), add the title "Notification of refusals and
requirements" and include the text from existing § 2.76(f), except the last
two sentences regarding the USPTO providing notification of acceptance of
an amendment to allege use because current practice is that a notice of
approval for publication provides such notice; in § 2.76(f), add the title
"Withdrawal" and include the text from existing § 2.76(h); in § 2.76(g),
add the title "Verification not filed within reasonable time," and include
the text from existing § 2.76(i) and change existing text to "verified
statement" to correspond with § 2.2(n); in § 2.76(h), add the title "An
amendment to allege use is not a response but may include amendments" and
include the text from the last sentence of existing § 2.76(f) and clarify
that an amendment to allege use may include amendments in accordance with
§ 2.59 and § 2.71 through § 2.75; in § 2.76(i), specify the requirements
for the verification in a concurrent use application under § 2.42; and in
§ 2.76(j), add the title "Multiple-class application."
Classification
The USPTO proposes to amend § 2.86, regarding multiple-class application
requirements, to include the requirements for collective marks and
certification marks, and to make other changes consistent with current
USPTO practice. Specifically, the USPTO proposes to amend § 2.86 as
follows: in § 2.86(a), set forth the requirements for a single trademark,
service mark, and/or collective mark application for multiple classes,
clarifying that such an application must satisfy either the trademark or
service mark application requirements in § 2.32 or the collective mark
application requirements in § 2.44, in addition to providing the applicable
goods, services, or nature of the collective membership organization in
each appropriate international or U.S. class, and providing a fee, dates of
use, and a specimen for each class based on use in commerce or a bona fide
intent statement for each class based on section 1(b), 44, or 66(a) of the
Act; in § 2.86(b), set forth the requirements for a single certification
mark application for goods and services, clarifying that such multiple
class application must satisfy the certification mark application
requirements in § 2.45, in addition to identifying the applicable goods and
services in each appropriate U.S. class for applications filed under
section 1 or 44 or in the international classes assigned by the World
Intellectual Property Organization's International Bureau for applications
filed under section 66(a) of the Act, and providing a fee, dates of use,
and a specimen for each class based on use in commerce or a bona fide
intent statement for each class based on section 1(b), 44, or 66(a) of the
Act; and in § 2.86(c), amend to include the text in the last sentence of
existing § 2.86(a)(3) regarding an applicant not claiming both section 1(a)
and 1(b) of the Act for identical goods or services in a single
application. The USPTO also proposes to add the following to § 2.86: in
proposed § 2.86(d), restrict a single application from including goods or
services in U.S. Classes A and/or B and either goods or services in any
international class or with a collective membership organization in U.S.
Class 200, for consistency with proposed § 2.45(f); in proposed § 2.86(e),
add the text from existing § 2.86(b) regarding multiple-class requirements
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for amendments to allege use and statements of use; and in § 2.86(f), add
the text in existing § 2.86(c) regarding issuing a single registration
certificate for multiple-class applications. Additionally, the USPTO
proposes to amend the rule title to "Multiple-class applications."
Post Notice of Allowance
The USPTO proposes to amend § 2.88, regarding statements of use, to
include the relevant requirements for collective marks and certification
marks, and to be consistent with proposed § 2.76 for amendments to allege
use. Specifically, the USPTO proposes to amend § 2.88 as follows: in
§ 2.88(a), add the title "When to file a statement of use;" in § 2.88(a)(1)
and (a)(2), include the text from existing § 2.88(a), except delete the
language regarding the USPTO returning a premature statement of use filed
prior to issuance of a notice of allowance because under current practice
the USPTO will not return or review such amendment, and include the text
from existing § 2.88(c), except for the last sentence; in § 2.88(b), add
the title "A complete statement of use," include in § 2.88 (b)(1)-(3) the
text from existing § 2.88(b), in § 2.88(b)(1)(iii) additionally include the
last sentence from existing § 2.88(c), in § 2.88(b)(1)(iv) additionally
include the text from existing § 2.88(i)(1)-(2), in § 2.88 (b)(6) require
the title "Statement of Use" on the first page of the document for those
documents not filed using the TEAS, and in § 2.88(b) incorporate the
requirements for collective marks and certification marks and change
existing text to "verified statement" to correspond with§ 2.2(n); in
§ 2.88(c), add the title "Minimum filing requirements for a timely filed
statement of use," include the text in § 2.88(c), change existing text to
"verified statement" to correspond with § 2.2(n); in § 2.88(d), add the
title "Deficiency notification" and include the text from existing
§ 2.88(g), except for the last sentence; in § 2.88(e), add the title
"Notification of refusals and requirements" and include the text from
existing § 2.88(f), except delete the language regarding the USPTO
providing notification of acceptance of a statement of use because the
registration certificate provides such notice; in § 2.88(f), add the title
"Statement of use may not be withdrawn" and include the text in the last
sentence of existing § 2.88(g); in § 2.88(g), add the title "Verification
not filed within reasonable time," include the text from existing
§ 2.88(k), and change existing text to "verified statement" to correspond
with § 2.2(n); in § 2.88(h), add the title "Amending the application,"
include the text from the second to last sentence of existing § 2.88(f),
and specify that statements of use may include amendments in accordance
with § 2.51, § 2.59, and § 2.71 through § 2.75, as the TEAS on-line
statement of use form will now accept such amendments within the same form;
in § 2.88(i), add the requirements for the verification in a concurrent use
application under § 2.42; in § 2.88(j), add the title "Multiple-class
application" and include the text from existing § 2.88(l); and in
§ 2.88(k), add the title "Abandonment" and include the text from existing
§ 2.88(h). Additionally, the USPTO proposes to amend the rule title to
"Statement of use after notice of allowance."
The USPTO proposes to amend § 2.89, regarding submitting a request for
an extension of time to file a statement of use ("extension request"), to
include the relevant requirements for collective marks and certification
marks as well as to make other changes consistent with current USPTO
practice. The USPTO proposes to amend § 2.89 as follows: in § 2.89(a), add
the title "First extension request after issuance of notice of allowance;"
in § 2.89(a)(3), change existing text to "verified statement" to correspond
with § 2.2(n), and incorporate the requirements for collective marks and
certification marks; in § 2.89(b), add the title "Subsequent extension
requests" and a cross-reference in proposed § 2.89(b)(2) to proposed
§ 2.89(a)(2), as the fee requirements are the same for first and subsequent
extension requests; in § 2.89(c), add the title "Four subsequent extension
requests permitted;" in § 2.89(d), add the title "Good cause," enumerate in
proposed § 2.89(d)(1)-(3) the requirements for showing good cause for all
marks, including collective marks and certification marks, and include the
text from existing § 2.89(d) in (d)(1); in § 2.89(e), add the title
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"Extension request filed in conjunction with or after a statement of use"
and amend the current text for clarity; in § 2.89(f), add the title "Goods
or services" and incorporate the requirements for collective marks and
certification marks; in § 2.89(g), add the title "Notice of grant or
denial;" and in § 2.89(h), add the title "Verification not filed within
reasonable time," incorporate the requirements for collective marks and
certification marks, and change existing text to "verified statement" to
correspond with § 2.2(n).
Petitions and Action by the Director
The USPTO proposes to amend § 2.146(c), regarding petitions to the
Director, to change existing text to "verified statements" to correspond
with § 2.2(n). Additionally, the USPTO proposes to amend § 2.146(d) to
specify that a petition regarding a cancelled or expired registration must
be submitted to the Office within two months of the date when Office
records are updated to show the registration as cancelled or expired, to
ensure that all interested parties will be able to accurately determine the
deadline for filing a petition under these circumstances.
Cancellation for Failure to File Affidavit or Declaration
The USPTO proposes to amend § 2.161, regarding affidavits or
declarations of use in commerce or excusable nonuse under section 8 of the
Act, to include the relevant requirements for collective marks and
certification marks, to change existing text to correspond with § 2.2, and
to make other changes consistent with current USPTO practice. The USPTO
proposes to amend § 2.161(g) to cross-reference current § 2.56 regarding
specimens and remove § 2.161(g)(1)-(3), as similar language appears in
current § 2.56. The USPTO proposes to add § 2.161(i) and (j), as follows,
to include requirements for collective marks and certification marks to
harmonize the USPTO's post registration practice with current examination
practice, and to be consistent with proposed § 7.37(i)-(j), regarding
affidavits or declarations of use in commerce or excusable nonuse under
section 71 of the Act: in § 2.161(i), add the title "Additional
requirements for a collective mark" and the additional requirements for
such marks, see TMEP sections 1303.01, 1303.02(c)(i), 1304.08(f)(i)-(ii);
in § 2.161(j), add the title "Additional requirements for a certification
mark" and the additional requirements for such marks, see TMEP section
1306.06(f)(i)-(iii), (f)(v). The USPTO also proposes to add § 2.161(k) to
cross-reference to § 7.37 regarding the requirements for a complete
affidavit or declaration of use in commerce or excusable nonuse for a
registration with an underlying application based on section 66(a). The
sunset provision in current § 2.161(h)(3), in which § 2.161(h)(2) will no
longer be applied after June 21, 2014, to affidavits or declarations filed
under section 8 of the Act, is not altered by this rulemaking.
Affidavit or Declaration Under Section 15
The USPTO proposes to amend § 2.167, regarding an affidavit or
declaration of incontestability under section 15 of the Act, to include the
relevant requirements for collective marks and certification marks, to
change existing text to "verified" to correspond with § 2.2(n), and to make
other changes consistent with current USPTO practice. Specifically, the
USPTO proposes to amend § 2.167(f) to delete the last sentence of the
existing rule because, under current USPTO practice, notification
acknowledging receipt of the affidavit or declaration only issues if the
requirements of § 2.167(a) through (g) have been satisfied, consistent with
proposed § 2.167(i). See TMEP section 1605. The USPTO also proposes to add
§ 2.167(h), (i), (j), and (k), as follows, to clarify current USPTO
practice: in § 2.167(h), clarify that notification will be provided to an
owner that an affidavit or declaration cannot be acknowledged if the
affidavit or declaration fails to satisfy any requirements in paragraphs
§ 2.167(a) through (g), that the affidavit or declaration will be abandoned
if a response is not received in the time specified in the notification;
in § 2.167(i), clarify that a notice of acknowledgement will only issue if
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an affidavit or declaration satisfies § 2.167(a) through (g); in
§ 2.167(j), clarify that an affidavit or declaration may be abandoned by
petitioning the Director under § 2.146 either before or after a notice of
acknowledgement issues; and in § 2.167(k), clarify that a new affidavit or
declaration with a new fee may be filed if an affidavit or declaration is
abandoned. See TMEP section 1605.
Correction, Disclaimer, Surrender, Etc.
The USPTO proposes to amend § 2.173, regarding an amendment to a
registration, to include the relevant requirements for collective marks and
certification marks, to change existing text to correspond with § 2.2, and
to make other changes consistent with current USPTO practice. The USPTO
proposes to make the following amendments to § 2.173: in § 2.173(b)(2),
cross-reference § 2.193(e)(6), regarding trademark signature requirements,
and delete the language in this subsection that is similar to wording in
current § 2.193(e)(6); in § 2.173(d), clarify that an amendment that would
materially alter the mark will not be permitted in accordance with section
7(e) of the Act; in § 2.173(e), amend the title to "Amendment of
identification of goods, services, or collective membership organization,"
and in the text of (e), add a reference to a description of the nature of
the collective membership organization; and in § 2.173(f), amend the title
to "Amendment of certification statement for certification marks" and set
forth the prohibition regarding amending a certification statement, as
specified in proposed § 2.45(a)(4)(i)(A) and (a)(4)(ii)(A), in accordance
with section 7(e) of the Act and for consistency with proposed § 2.71(e).
The USPTO proposes to redesignate current § 2.173(f) as § 2.173(g), and
redesignate current § 2.173(g) as § 2.173(h). The USPTO also proposes to
add § 2.173(i) with the heading "No amendment to add or delete a section
2(f) claim of acquired distinctiveness" to clarify that the USPTO will not
permit an amendment seeking the addition or elimination of a claim of
acquired distinctiveness, just as an owner cannot amend a registration
from the Supplemental to the Principal Register. See TMEP section 1609.09.
The USPTO proposes to amend § 2.175(b)(2), regarding correcting an
owner's mistake, to change existing text to "verified" to correspond with
§ 2.2(n).
Term and Renewal
The USPTO proposes to amend § 2.183(d), regarding requirements for a
renewal application, to specify that a renewal application may cover less
than all the classes in a registration, in addition to covering less than
all the goods or services in a registration.
General Information and Correspondence in Trademark Cases
The USPTO proposes to amend § 2.193, regarding trademark correspondence
and signature requirements, to correct a typographical error in
§ 2.193(c)(2), to change existing text in § 2.193(e)(1) to correspond with
§ 2.2(n), and to revise the final sentence of § 2.193(f) to delete
reference to § 10.23(c)(15) and instead refer to § 11.804, as part 10 of
this chapter has been removed and reserved and the content in § 11.804
corresponds with content previously set out in § 10.23.
PART 7: RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
Subpart A - General Information
The USPTO proposes to amend § 7.1, regarding definitions, to add
§ 7.1(f), which incorporates by reference the definitions in proposed
§ 2.2(k) and (n), to apply to filings pursuant to the Protocol relating to
the Madrid Agreement concerning the international registration of marks.
Subpart F - Affidavit Under Section 71 of the Act for Extension of
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Protection to the United States
The USPTO proposes to amend § 7.37, regarding affidavits or declarations
of use in commerce or excusable nonuse under section 71 of the Act, to
include the relevant requirements for collective marks and certification
marks and to change existing text to correspond with § 2.2. Specifically,
the USPTO proposes to add § 7.37(i) and (j) as follows, to include
requirements for collective marks and certification marks so as to
harmonize the USPTO's post registration practice with current examination
practice, and to be consistent with proposed § 2.161(i)-(j), regarding
affidavits or declarations of use in commerce or excusable nonuse under
section 8 of the Act: in proposed § 7.37(i), add the title "Additional
requirements for a collective mark" and the additional requirements for
such marks, see TMEP sections 1303.01, 1303.02(c)(i), 1304.08(f)(i)-(ii),
1904.02(d); in proposed § 7.37(j), add the title "Additional requirements
for a certification mark" and additional requirements for such marks, see
TMEP sections 1306.06(f)(i)-(iii), (f)(v), 1904.02(d). The sunset provision
in current § 7.37(h)(3), in which § 7.37(h)(2) will no longer be applied
after June 21, 2014, to affidavits or declarations filed under section 71
of the Act, is not altered by this rulemaking.
Rulemaking Considerations
Administrative Procedure Act: The changes in this proposed rulemaking
involve rules of agency practice and procedure, and/or interpretive rules.
See Nat'l Org. of Veterans' Advocates v. Sec'y of Veterans Affairs, 260
F.3d 1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a
statute is interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for reviewing
claims).
Accordingly, prior notice and opportunity for public comment for the
changes in this proposed rulemaking are not required pursuant to 5 U.S.C.
553(b) or (c), or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2)(B), does not require notice and comment rulemaking for
"interpretative rules, general statements of policy, or rules of agency
organization, procedure, or practice," quoting 5 U.S.C. 553(b)(A)). The
USPTO, however, is publishing these proposed rule changes for comment as it
seeks the benefit of the public's views regarding collective and
certification marks.
Regulatory Flexibility Act: 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 Act analysis, nor a certification under
the Regulatory Flexibility Act (5 U.S.C. 601, et seq.), is required. See 5
U.S.C. 603.
In addition, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark Office
(USPTO) has certified to the Chief Counsel for Advocacy of the Small
Business Administration that rule changes proposed in this document will
not have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
To the extent the rule changes proposed in this document primarily
codify existing USPTO practice set forth in the TMEP and precedential case
law regarding collective marks and certification marks, those proposed
rule changes impose no new burdens on applicants and registration owners.
Some rule changes have been proposed to harmonize registration maintenance
requirements with current application requirements. The USPTO also has
proposed to change existing practice regarding maintenance requirements
regarding certification marks to require filers of the first affidavit of
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use after registration in registrations based on Trademark Act Sections 44
and 66(a) to submit certification standards, and to require that all filers
of such affidavits submit updated standards if the standards have changed
or a statement indicating they have not. The USPTO does not collect or
maintain statistics in trademark cases on small versus large entity
applicants, and this information would be required in order to precisely
calculate the number of small entities that would be affected. However,
these proposed rule changes will have no impact on the vast majority of
trademark owners, and only a slight effect on the very small subset of
certification mark registrations, where standards previously have not been
provided, or change post registration. Certification marks account for
approximately 0.2% of the total number of registered marks in the USPTO
database (approximately 4,000 registrations out of a total of approximately
2,000,000 registrations). For fiscal year 2013, affidavits of use for all
filers have totaled approximately 170,000 of which approximately 0.2%, or
340 affidavits, were submitted for certification mark registrations. Of
those 340 affidavits, only a small subset will be required to include
certification standards or revised standards. Even in the event that
standards must be submitted, the burden is quite minimal, as it merely
involves attaching an already existing document to a filing that must
otherwise be made to maintain the registration. For these reasons, the
proposed rule changes will not have a significant economic impact on a
substantial number of small entities.
Executive Order 12866 (Regulatory Planning and Review): The proposed
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
Executive Order 13563 (Improving Regulation and Regulatory Review): The
USPTO has complied with Executive Order 13563 (Jan. 18, 2011).
Specifically, the USPTO has, to the extent feasible and applicable: (1)
made a reasoned determination that the benefits justify the costs of the
proposed rule changes; (2) tailored the proposed rules to impose the least
burden on society consistent with obtaining the regulatory objectives;
(3) selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) provided the public with a meaningful opportunity to
participate in the regulatory process, including soliciting the views of
those likely affected prior to issuing a notice of proposed rulemaking, and
provided on-line access to the rulemaking docket; (7) attempted to promote
coordination, simplification, and harmonization across government agencies
and identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific and
technological information and processes, to the extent applicable.
Executive Order 13132 (Federalism): This proposed rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4,
1999).
Congressional Review Act: Under the Congressional Review Act provisions
of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C.
801 et seq.), prior to issuing any final rule, the USPTO will submit a
report containing the final rule and other required information to the
U.S. Senate, the U.S. House of Representatives, and the Comptroller General
of the Government Accountability Office. The changes proposed in this
document are not expected to result in an annual effect on the economy of
100 million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based enterprises
to compete with foreign-based enterprises in domestic and export markets.
Therefore, this document is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
Unfunded Mandates Reform Act of 1995: The changes set forth in this
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proposed rulemaking do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments, in
the aggregate, of 100 million dollars (as adjusted) or more in any one
year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted) or
more in any one year, and will not significantly or uniquely affect small
governments. Therefore, no actions are necessary under the provisions of
the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
Paperwork Reduction Act: This proposed rulemaking involves information
collection requirements which are subject to review by the U.S. Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The USPTO has determined that there would be no new
information collection requirements or impacts to existing information
collection requirements associated with this proposed rulemaking. The
collections of information involved in this proposed rulemaking have been
reviewed and previously approved by OMB under control numbers 0651-0009,
0651-0050, 0651-0051, 0651-0054, 0651-0055, 0651-0056, and 0651-0061.
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 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 USPTO proposes to amend
parts 2 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. Amend § 2.2 as follows:
a. Revise paragraphs (f) and (h).
b. Add paragraphs (i) through (n).
§ 2.2 Definitions.
* * * * *
(f) The acronym TEAS means the Trademark Electronic Application System,
available at http://www.uspto.gov.
* * * * *
(h) The term international application as used in this part means an
application seeking an extension of protection of an international
registration to the United States or a subsequent designation of the
international registration to the United States, and is filed under the
Protocol Relating to the Madrid Agreement Concerning the International
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Registration of Marks. See section 60 of the Act.
(i) The term subsequent designation as used in this part means a request
for extension of protection of an international registration to the United
States made after the International Bureau registers the mark.
(j) The term holder as used in this part means the natural or juristic
person in whose name an international registration seeking an extension of
protection to the United States is recorded on the International Register.
See section 60 of the Act.
(k) The term use in commerce as used in this part means, in addition to
the definition in section 45 of the Act:
(1) For a trademark or service mark, use of the mark in commerce by an
applicant or owner on or in connection with the goods or services specified
in a U.S. application, amendment to allege use, statement of use, or
affidavit or declaration of use or excusable nonuse;
(2) For a collective trademark or collective service mark, use of the
mark in commerce by members on or in connection with the goods or services
specified in a U.S. application, amendment to allege use, statement of use,
or affidavit or declaration of use or excusable nonuse;
(3) For a collective membership mark, use of the mark in commerce by
members to indicate membership in the collective organization as specified
in a U.S. application, amendment to allege use, statement of use, or
affidavit or declaration of use or excusable nonuse; and
(4) For a certification mark, use of the mark in commerce by authorized
users on or in connection with the goods or services specified in a U.S.
application, amendment to allege use, statement of use, or affidavit or
declaration of use or excusable nonuse.
(l) The term bona fide intention to use the mark in commerce as used in
this part means, for a trademark or service mark, that an applicant or
holder has a bona fide intention to use the mark in commerce on or in
connection with the goods or services specified in a U.S. application
or international application.
(m) The term bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce as used in this
part means:
(1) For a collective trademark or collective service mark, that an
applicant or holder has a bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce by members on or in
connection with the goods or services specified in a U.S. application or
international application;
(2) For a collective membership mark, that an applicant or holder has a
bona fide intention, and is entitled, to exercise legitimate control over
the use of the mark in commerce by members to indicate membership in the
collective organization as specified in a U.S. application or international
application; and
(3) For a certification mark, that an applicant or holder has a bona
fide intention, and is entitled, to exercise legitimate control over the
use of the mark in commerce by authorized users on or in connection with
the goods or services specified in a U.S. application or international
application.
(n) The term verified statement, and the terms verify, verified, or
verification as used in this part refers to a statement that is sworn to,
made under oath or in an affidavit, or supported by a declaration under
§ 2.20 or 28 U.S.C. 1746, and signed in accordance with the requirements
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of § 2.193.
3. Revise the introductory text to § 2.20 to read as follows:
§ 2.20 Declarations in lieu of oaths.
Instead of an oath, affidavit, or sworn statement, the language of 28
U.S.C. 1746, or the following declaration language, may be used:
* * * * *
4. Amend § 2.32 as follows:
a. Revise the section heading and paragraphs (a)(3)(ii), (a)(6), and (c).
b. Add paragraphs (f) and (g).
§ 2.32 Requirements for a complete trademark or service mark application.
(a) * * *
(3) * * *
(iii) If the applicant is a domestic partnership, the names and
citizenship of the general partners; or
* * * * *
(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 U.S. application
filed under section 44 of the Act, the scope of the goods or services
covered by the section 44 basis may not exceed the scope of the goods or
services in the foreign application or registration;
* * * * *
(c) The application must include a drawing that meets the requirements
of § 2.51 and § 2.52.
* * * * *
(e) For the requirements of a multiple-class application, see § 2.86.
(f) For the requirements of all collective mark applications, see § 2.44.
(g) For the requirements of a certification mark application, see § 2.45.
5. Revise § 2.33 to read as follows:
§ 2.33 Verified statement for a trademark or service mark.
(a) The application must include a verified statement.
(b)(1) In an application under section 1(a) of the Act, the verified
statement must allege:
That the applicant believes the applicant is the owner of the mark; that
the mark is in use in commerce; that to the best of the signatory'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 such other person, to
cause confusion or mistake, or to deceive; that the specimen shows the mark
as used on or in connection with the goods or services; and that the facts
set forth in the application are true.
(2) In an application under section 1(b) or 44 of the Act, the verified
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statement must allege:
That the applicant has a bona fide intention to use the mark in
commerce; that the applicant believes the applicant is entitled to use the
mark in commerce on or in connection with the goods or services specified
in the application; that to the best of the signatory'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 such other person, to cause confusion
or mistake, or to deceive; and that the facts set forth in the application
are true.
(c) If the verified statement in paragraph (b)(1) or (b)(2) of this
section is not filed within a reasonable time after it is signed, the
Office may require the applicant to submit a substitute verified statement
attesting, as of the filing date, that the mark has been in use in commerce
or the applicant has had a bona fide intention to use the mark in commerce.
(d) [Reserved]
(e) In an application under section 66(a) of the Act, the verified
statement, which is part of the international registration on file with the
International Bureau, must allege that:
(1) The applicant/holder has a bona fide intention to use the mark in
commerce;
(2) The signatory is properly authorized to execute the declaration on
behalf of the applicant/holder;
(3) The signatory believes the applicant/holder to be entitled to use
the mark in commerce that the U.S. Congress can regulate on or in
connection with the goods or services specified in the international
application/registration; and
(4) To the best of his/her knowledge and belief, no other person, firm,
corporation, association, or other legal entity has the right to use the
mark in commerce either in the identical form thereof or in such near
resemblance thereto as to be likely, when used on or in connection with the
goods or services of such other person, firm, corporation, association, or
other legal entity, to cause confusion, or to cause mistake, or to deceive.
(f) In an application for concurrent use under § 2.42, the verified
statement in paragraph (b)(1) of this section must be modified to indicate
that no other person except as specified in the application has the right
to use the mark in commerce.
6. Amend § 2.34 as follows:
a. Revise the section heading and paragraphs (a) introductory text,
(a)(1) introductory text, (a)(1)(i), (a)(1)(iii) through (a)(1)(v), (a)(2),
(a)(3) introductory text, (a)(3)(i), (a)(3)(iii), (a)(4) introductory text,
(a)(4)(i)(B), (a)(4)(ii), (a)(4)(iii), (a)(5), and (b); and
b. Remove paragraph (c).
§ 2.34 Bases for filing a trademark or service mark application.
(a) An application for a trademark or service mark must include one or
more of the following five filing bases:
(1) Use in commerce under section 1(a) of the Act. The requirements for
an application under section 1(a) of the Act are:
(i) The applicant's verified statement that the mark is in use in
commerce. If the verified statement is not filed with the initial
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application, the verified statement must also allege that the mark has been
in use in commerce as of the application filing date;
* * * * *
(iii) The date of the applicant's first use of the mark in commerce;
(iv) One specimen showing how the applicant uses the mark in commerce;
and
(v) If the application specifies more than one item of goods or services
in a class, the dates of use in paragraphs (a)(1)(ii) and (iii) of this
section are required for only one item of goods or services specified in
that class.
(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 the applicant has a
bona fide intention to use the mark in commerce. If the verified statement
is not filed with the initial application, the verified statement must also
allege that the applicant has had a bona fide intention to use the mark in
commerce as of the application filing date.
(3) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application under
section 44(e) of the Act are:
(i) The applicant's verified statement that the applicant has a bona
fide intention to use the mark in commerce. If the verified statement is
not filed with the initial application, the Office will require submission
of the verified statement, which must also allege that the applicant has
had a bona fide intention to use the mark in commerce as of the application
filing date.
* * * * *
(iii) If the record indicates that the foreign registration will expire
before the U.S. registration will issue, the applicant must submit a true
copy, a photocopy, a certification, or a certified copy of a proof of
renewal from the applicant's country of origin to establish that the
foreign registration has been renewed and will be in full force and effect
at the time the U.S. registration will issue. If the proof of renewal is
not in the English language, the applicant must submit a translation.
(4) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application under
section 44(d) of the Act are:
(i) * * *
(B) State that the application is based upon a subsequent regularly
filed application in the same foreign country, and that any prior-filed
application has been withdrawn, abandoned, or otherwise disposed of,
without having been laid open to public inspection and without having any
rights outstanding, and has not served as a basis for claiming a right of
priority.
(ii) The applicant's verified statement that the applicant has a bona
fide intention to use the mark in commerce. If the verified statement is
not filed with the initial application, the Office will require submission
of the verified statement, which must also allege that the applicant
has had a bona fide intention to use the mark in commerce as of the
application filing date.
(iii) Before the application can be approved for publication, or for
registration on the Supplemental Register, the applicant must establish
a basis under section 1 or 44 of the Act.
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(5) Extension of protection of an international registration under
section 66(a) of the Act. In an application under section 66(a) of the Act,
the international application or subsequent designation requesting an
extension of protection to the United States must contain a signed
declaration that meets the requirements of § 2.33(a), (e).
(b) More than one basis. In an application under section 1 or 44 of the
Act, an applicant may claim more than one basis, provided the applicant
satisfies all requirements for the bases claimed. In such case, the
applicant must specify each basis, followed by the goods or services to
which that basis applies. An applicant must specify the goods or services
covered by more than one basis. Section 1(a) and 1(b) of the Act may not
both be claimed for identical goods or services in the same application. A
basis under section 66(a) of the Act may not be combined with another
basis.
7. Revise § 2.41 to read as follows:
§ 2.41 Proof of distinctiveness under section 2(f).
(a) For a trademark or service mark - (1) Ownership of prior
registration(s). In appropriate cases, ownership of one or more prior
active registrations on the Principal Register or under the Trademark Act
of 1905 of the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently similar to the
goods or services in the application; however, further evidence may be
required.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a trademark or service mark is said to have become
distinctive of the applicant's goods or services by reason of the
applicant's substantially exclusive and continuous use of the mark in
commerce for the five years before the date on which the claim of
distinctiveness is made, a showing by way of verified statements in the
application may be accepted as prima facie evidence of distinctiveness;
however, further evidence may be required.
(3) Other evidence. When registration is sought for a trademark or
service mark that would be unregistrable by reason of section 2(e) of the
Act, but which is said by the applicant to have become distinctive in
commerce of the applicant's goods or services, the applicant may, in
support of registrability, submit with the application, or in response to a
request for evidence or to a refusal to register, verified statements,
depositions, or other appropriate evidence showing duration, extent, and
nature of the use in commerce and advertising expenditures in connection
therewith (identifying types of media and attaching typical
advertisements), and verified statements, letters or statements from the
trade or public, or both, or other appropriate evidence of distinctiveness.
(b) For a collective trademark or collective service mark -
(1) Ownership of prior registration(s). See the requirements of paragraph
(a)(1) of this section.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a collective trademark or collective service mark
is said to have become distinctive of the members' goods or services by
reason of the members' substantially exclusive and continuous use of the
mark in commerce for the five years before the date on which the claim of
distinctiveness is made, a showing by way of verified statements in the
application may be accepted as prima facie evidence of distinctiveness;
however, further evidence may be required.
(3) Other evidence. When registration is sought for a collective
trademark or service mark that would be unregistrable by reason of section
2(e) of the Act, but which is said by the applicant to have become
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distinctive in commerce of the members' goods or services, the applicant
may, in support of registrability, submit with the application, or in
response to a request for evidence or to a refusal to register, verified
statements, depositions, or other appropriate evidence showing duration,
extent, and nature of the use in commerce, and advertising expenditures in
connection therewith (identifying types of media and attaching typical
advertisements), and verified statements, letters or statements from the
trade or public, or both, or other appropriate evidence of distinctiveness.
(c) For a collective membership mark - (1) Ownership of prior
registration(s). In appropriate cases, ownership of one or more prior
active registrations on the Principal Register or under the Act of 1905 of
the same mark may be accepted as prima facie evidence of distinctiveness if
the goods, services, or nature of the collective membership organization
are sufficiently similar to the collective membership organization in the
application; however, further evidence may be required.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a collective membership mark is said to have
become distinctive of indicating membership in the applicant's collective
membership organization by reason of the members' substantially exclusive
and continuous use of the mark in commerce for the five years before the
date on which the claim of distinctiveness is made, a showing by way of
verified statements in the application may be accepted as prima facie
evidence of distinctiveness; however, further evidence may be required.
(3) Other evidence. When registration is sought for a collective
membership mark that would be unregistrable by reason of section 2(e) of
the Act, but which is said by the applicant to have become distinctive in
commerce of indicating membership in the applicant's collective membership
organization, the applicant may, in support of registrability, submit with
the application, or in response to a request for evidence or to a refusal
to register, verified statements, depositions, or other appropriate
evidence showing duration, extent, and nature of the members' use in
commerce, and advertising expenditures in connection therewith (identifying
types of media and attaching typical advertisements), and verified
statements, letters or statements from the trade or public, or both, or
other appropriate evidence of distinctiveness.
(d) For a certification mark - (1) Ownership of prior certification mark
registration(s). In appropriate cases, ownership of one or more prior
active certification mark registrations on the Principal Register or under
the Act of 1905 of the same mark may be accepted as prima facie evidence of
distinctiveness if the authorized users' goods or services are sufficiently
similar to the goods or services certified in the application, subject to
the limitations of the statement set forth in § 2.45(a)(4)(i)(C); however,
further evidence may be required.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a certification mark is said to have become
distinctive of the certified goods or services by reason of the authorized
users' substantially exclusive and continuous use of the mark in commerce
for the five years before the date on which the claim of distinctiveness is
made, a showing by way of verified statements in the application may be
accepted as prima facie evidence of distinctiveness; however, further
evidence may be required.
(3) Other evidence. When registration is sought for a certification mark
that would be unregistrable by reason of section 2(e) of the Act, but which
is said by the applicant to have become distinctive of the certified goods
or services program, the applicant may, in support of registrability,
submit with the application, or in response to a request for evidence or to
a refusal to register, verified statements, depositions, or other
appropriate evidence showing duration, extent, and nature of the authorized
users' use in commerce and advertising expenditures in connection therewith
(identifying types of media and attaching typical advertisements), and
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verified statements, letters or statements from the trade or public, or
both, or other appropriate evidence of distinctiveness.
(e) Paragraph (d) does not apply to geographical matter in a
certification mark pursuant to section 2(e)(2) of the Act.
8. Revise § 2.42 to read as follows:
§ 2.42 Concurrent use.
(a) Prior to seeking concurrent use, an application for registration on
the Principal Register under the Act must assert use in commerce and
include all the application elements required by the preceding sections, in
addition to § 2.44 or § 2.45, if applicable.
(b) The applicant must also include a verified statement that indicates
the following, to the extent of the applicant's knowledge:
(1) For a trademark or service mark, the geographic area in which the
applicant is using the mark in commerce; for a collective mark or
certification mark, the geographic area in which the applicant's members
or authorized users are using the mark in commerce;
(2) For a trademark or service mark, the applicant's goods or services;
for a collective trademark, collective service mark, or certification mark,
the applicant's members' or authorized users' goods or services; for a
collective membership mark, the nature of the applicant's collective
membership organization;
(3) The mode of use for which the applicant seeks registration;
(4) The concurrent users' names and addresses;
(5) The registrations issued to or applications filed by such concurrent
users, if any;
(6) For a trademark or service mark, the geographic areas in which the
concurrent user is using the mark in commerce; for a collective mark or
certification mark, the geographic areas in which the concurrent user's
members or authorized users are using the mark in commerce;
(7) For a trademark or service mark, the concurrent user's goods or
services; for a collective trademark, collective service mark, or
certification mark, the concurrent user's members' or authorized users'
goods or services; for a collective membership mark, the nature of
the concurrent user's collective membership organization;
(8) The mode of use by the concurrent users or the concurrent users'
members or authorized users; and
(9) The time periods of such use by the concurrent users or the
concurrent users' members or authorized users.
(c) For the requirements to amend an application to concurrent use, see
§ 2.73.
(d) For the requirements of a concurrent use proceeding, see § 2.99.
9. Revise § 2.44 to read as follows:
§ 2.44 Requirements for a complete collective mark application.
(a) A complete application to register a collective trademark,
collective service mark, or collective membership mark must include the
following:
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(1) The requirements specified in § 2.32 (a) introductory text-(a)(4),
(a)(8)-(10), (c)-(d);
(2)(i) For a collective trademark or collective service mark, a list of
the particular goods or services on or in connection with which the
applicant's members use or intend to use the mark; or
(ii) For a collective membership mark, a description of the nature of
the membership organization such as by type, purpose, or area of activity
of the members; and
(iii) In a U.S. application filed under section 44 of the Act, the scope
of the goods or services or the nature of the membership organization
covered by the section 44 basis may not exceed the scope of the goods or
services or nature of the membership organization in the foreign
application or registration.
(3)(i) For a collective trademark or collective service mark application,
the international class of goods or services, if known. See § 6.1 of this
chapter for a list of the international classes of goods and services; or
(ii) For a collective membership mark application filed under sections
1 or 44 of the Act, classification in U.S. Class 200; and for a collective
membership mark application filed under section 66(a) of the Act, the
international class(es) assigned by the International Bureau in the
corresponding international registration.
(4) One or more of the following five filing bases:
(i) Use in commerce under section 1(a) of the Act. The requirements for
an application under section 1(a) of the Act are:
(A) A statement specifying the nature of the applicant's control over
the use of the mark by the members;
(B) For a collective trademark or collective service mark, the date of
the applicant's member's first use of the mark anywhere on or in connection
with the goods or services and the date of the applicant's member's first
use of the mark in commerce; or for a collective membership mark, the date
of the applicant's member's first use anywhere to indicate membership in
the collective organization and the date of the applicant's member's first
use in commerce. If the application specifies more than one item of goods
or services in a class, the dates of use are required for only one item of
goods or services specified in that class;
(C) One specimen showing how a member uses the mark in commerce; and
(D) A verified statement alleging:
That the applicant believes the applicant is the owner of the mark; that
the mark is in use in commerce; that the applicant is exercising legitimate
control over the use of the mark in commerce by members on or in connection
with the goods, services, or collective membership organization specified
in the application; that to the best of the signatory's knowledge and
belief, no other persons except members have the right to use the mark in
commerce, either in the identical form or in such near resemblance as to be
likely, when used on or in connection with the goods, services, or
collective membership organization of such other persons to cause confusion
or mistake, or to deceive; that the specimen shows the mark as used in
commerce by the applicant's members; and that the facts set forth in the
application are true.
(ii) Intent-to-use under section 1(b) of the Act. The requirement for an
application based on section 1(b) of the Act is a verified statement
alleging:
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That the applicant has a bona fide intention, and is entitled, to
exercise legitimate control over the use in commerce of the mark; that to
the best of the signatory's knowledge and belief, no other persons, except
members, have the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when used on or
in connection with the goods, services, or collective membership
organization of such other persons, to cause confusion or mistake, or to
deceive; and that the facts set forth in the application are true.
(iii) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application under
section 44(e) of the Act are:
(A) The requirements of § 2.34(a)(3)(ii)-(iii); and
(B) A verified statement in accordance with paragraph (a)(4)(ii) of this
section.
(iv) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application under
section 44(d) of the Act are:
(A) The requirements of § 2.34(a)(4)(i), (iii); and
(B) A verified statement in accordance with paragraph (a)(4)(ii) of this
section.
(v) Extension of protection of an international registration under
section 66(a) of the Act. The requirement for an application under section
66(a) of the Act is a verified statement, which is part of the
international registration on file with the International Bureau, alleging
that:
(A) The applicant/holder has a bona fide intention, and is entitled, to
exercise legitimate control over the use of the mark in commerce;
(B) The signatory is properly authorized to execute the declaration on
behalf of the applicant/holder; and
(C) to the best of his/her knowledge and belief, no other person, firm,
corporation, association, or other legal entity, except members, has the
right to use the mark in commerce either in the identical form thereof or
in such near resemblance thereto as to be likely, when used on or in
connection with the goods, services, or collective membership organization
of such other person, firm, corporation, association, or other legal
entity, to cause confusion, or to cause mistake, or to deceive.
(b) Verification not filed within reasonable time or omitted - (1) If
the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii),
(a)(4)(iii)(B), or (a)(4)(iv)(B) of this section is not filed within
a reasonable time after it is signed, the Office may require a substitute
verified statement attesting, as of the application filing date, that the
mark has been in use in commerce or the applicant has had a bona fide
intention, and is entitled, to exercise legitimate control over the use
of the mark in commerce; or
(2) If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii),
(a)(4)(iii)(B), or (a)(4)(iv)(B) of this section is not filed with the
initial application, the verified statement must also allege that, as of
the application filing date, the mark has been in use in commerce, or the
applicant has had a bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce.
(c) More than one basis. In an application under section 1 or 44 of the
Act, an applicant may claim more than one basis, provided the applicant
satisfies all requirements for the bases claimed. In such case, the
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applicant must specify each basis, followed by the goods or services to
which that basis applies. An applicant must specify the goods or services
covered by more than one basis. Section 1(a) and 1(b) of the Act may not
both be claimed for identical goods or services in the same application.
A basis under section 66(a) of the Act may not be combined with another
basis.
(d) In an application for concurrent use under § 2.42, the verified
statement in paragraph (a)(4)(i)(D) of this section must be modified to
indicate that no other persons except members and the concurrent users as
specified in the application have the right to use the mark in commerce.
(e) Multiple-class applications. For the requirements of a
multiple-class application, see § 2.86.
10. Revise § 2.45 to read as follows:
§ 2.45 Requirements for a complete certification mark application;
restriction on certification mark application.
(a) A complete application to register a certification mark must include
the following:
(1) The requirements specified in § 2.32 (a) introductory text-(a)(4),
(a)(8)-(10), (c)-(d);
(2) A list of the particular goods or services on or in connection with
which the applicant's authorized users use or intend to use the mark. In an
application filed under section 44 of the Act, the scope of the goods or
services covered by the section 44 basis may not exceed the scope of the
goods or services in the foreign application or registration;
(3) For applications filed under section 1 or 44 of the Act,
classification in U.S. Class A for an application certifying goods and U.S.
Class B for an application certifying services. For applications filed
under section 66(a) of the Act, the international class(es) of goods or
services assigned by the International Bureau in the corresponding
international registration;
(4) One or more of the following five filing bases:
(i) Use in commerce under section 1(a) of the Act. The requirements for
an application under section 1(a) of the Act are:
(A) A statement specifying what the applicant is certifying about the
goods or services in the application;
(B) A copy of the certification standards governing use of the
certification mark on or in connection with the goods or services specified
in the application;
(C) A statement that the applicant is not engaged in the production or
marketing of the goods or services to which the mark is applied, except to
advertise or promote recognition of the certification program or of the
goods or services that meet the certification standards of the applicant;
(D) The date of the applicant's authorized user's first use of the mark
anywhere on or in connection with the goods or services and the date of the
applicant's authorized user's first use of the mark in commerce. If the
application specifies more than one item of goods or services in a class,
the dates of use are required for only one item of goods or services
specified in that class;
(E) One specimen showing how an authorized user uses the mark in
commerce; and
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(F) A verified statement alleging: That the applicant believes the
applicant is the owner of the mark; that the mark is in use in commerce;
that the applicant is exercising legitimate control over the use of the
mark in commerce by authorized users on or in connection with the goods or
services specified in the application; that to the best of the signatory's
knowledge and belief, no other persons except authorized users have the
right to use the mark in commerce, either in the identical form or in such
near resemblance as to be likely, when used on or in connection with the
goods or services of such other persons, to cause confusion or mistake, or
to deceive; that the specimen shows the mark as used in commerce by the
applicant's authorized users; and that the facts set forth in the
application are true.
(ii) Intent-to-use under section 1(b) of the Act. The requirements for
an application based on section 1(b) of the Act are:
(A) A statement specifying what the applicant will be certifying about
the goods or services;
(B) A statement that the applicant will not engage in the production or
marketing of the goods or services to which the mark is applied, except to
advertise or promote recognition of the certification program or of the
goods or services that meet the certification standards of the applicant;
and
(C) A verified statement alleging: That the applicant has a bona fide
intention, and is entitled, to exercise legitimate control over the use of
the mark in commerce; that to the best of the signatory's knowledge and
belief, no other persons, except authorized users, have the right to use
the mark in commerce, either in the identical form or in such near
resemblance as to be likely, when used on or in connection with the goods
or services of such other persons, to cause confusion or mistake, or to
deceive; and that the facts set forth in the application are true.
(iii) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application under
section 44(e) of the Act are:
(A) The requirements of § 2.34(a)(3)(ii)-(iii);
(B) The requirements of § 2.45(a)(4)(ii)(A), (B); and
(C) A verified statement in accordance with § 2.45(a)(4)(ii)(C).
(iv) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application under
section 44(d) of the Act are:
(A) The requirements of § 2.34(a)(4)(i), (iii);
(B) The requirements of § 2.45(a)(4)(ii)(A), (B); and
(C) A verified statement in accordance with § 2.45(a)(4)(ii)(C).
(v) Extension of protection of an international registration under
section 66(a) of the Act.
The requirements for an application under section 66(a) of the Act are:
(A) The requirements of § 2.45(a)(4)(ii)(A), (B); and
(B) A verified statement, which is part of the international
registration on file with the International Bureau, alleging that:
(1) The applicant/holder has a bona fide intention, and is entitled,
to exercise legitimate control over the use of the mark in commerce;
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(2) The signatory is properly authorized to execute the declaration on
behalf of the applicant/holder; and
(3) To the best of his/her knowledge and belief, no other person, firm,
corporation, association, or other legal entity, except authorized users,
has the right to use the mark in commerce either in the identical form
thereof or in such near resemblance thereto as to be likely, when used on
or in connection with the goods or services of such other person, firm,
corporation, association, or other legal entity, to cause confusion, or to
cause mistake, or to deceive.
(b) Verification not filed within reasonable time or omitted - (1) If
the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C),
(a)(4)(iii)(C), or (a)(4)(iv)(C) of this section is not filed within a
reasonable time after it is signed, the Office may require the applicant to
submit a substitute verified statement attesting that, as of the
application filing date, the mark has been in use in commerce or the
applicant has had a bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce; or
(2) If the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C),
(a)(4)(iii)(C), or (a)(4)(iv)(C) of this section is not filed with the
initial application, the verified statement must also allege that, as of
the application filing date, the mark has been in use in commerce, or
applicant has had a bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce.
(c) More than one basis. In an application under section 1 or 44 of the
Act, an applicant may claim more than one basis, provided the applicant
satisfies all requirements for the bases claimed. In such case, the
applicant must specify each basis, followed by the goods or services to
which that basis applies. An applicant must specify the goods or services
covered by more than one basis. Section 1(a) and 1(b) of the Act may not
both be claimed for identical goods or services in the same application.
A basis under section 66(a) of the Act may not be combined with another
basis.
(d) Concurrent use. In an application for concurrent use under § 2.42,
the verified statement in paragraph (a)(4)(i)(F) of this section must be
modified to indicate that no other persons except authorized users and
concurrent users as specified in the application have the right to use the
mark in commerce.
(e) Multiple-class applications. For the requirements of a
multiple-class application, see § 2.86.
(f) Restriction on certification mark application. A single application
may not include a certification mark and another type of mark. The same
mark for the same goods or services is not registrable as both a
certification mark and another type of mark. See sections 4 and 14(5)(B) of
the Act.
11. Amend § 2.56 by revising paragraphs (b)(2), (b)(5), (c), and (d)(3) to
read as follows:
§ 2.56 Specimens.
* * * * *
(b) * * *
(2) A service mark specimen must show the mark as used in the sale or
advertising of the services.
* * * * *
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(5) A certification mark specimen must show how a person other than the
owner uses the mark to reflect certification of regional or other origin,
material, mode of manufacture, quality, accuracy, or other characteristics
of that person's goods or services; or that members of a union or other
organization performed the work or labor on the goods or services.
(c) A photocopy or other reproduction of a specimen of the mark as used
on or in connection with the goods, or in the sale or advertising of the
services, is acceptable. However, a photocopy of the drawing required by
§ 2.51 is not a proper specimen.
* * * * *
(d) * * *
(3) In the absence of non-bulky alternatives, the Office may accept a
compact disc, digital video disc, or other appropriate medium.
* * * * *
12. Amend § 2.59 by revising paragraphs (a), (b)(1), and (b)(2) to read as
follows:
§ 2.59 Filing substitute specimen(s).
(a) In an application under section 1(a) of the Act, the applicant may
submit substitute specimens of the mark as used on or in connection with
the goods or in the sale or advertising of the services, or as used to
indicate membership in the collective organization. The applicant must
submit a verified statement that the substitute specimen was in use in
commerce at least as early as the filing date of the application. The
verified statement is not required if the specimen is a duplicate or
facsimile of a specimen already of record in the application.
(b) * * *
(1) For an amendment to allege use under § 2.76, submit a verified
statement that the applicant used the substitute specimen(s) in commerce
prior to filing the amendment to allege use.
(2) For a statement of use under § 2.88, submit a verified statement
that the applicant used the substitute specimen(s) in commerce either prior
to filing the statement of use or prior to the expiration of the deadline
for filing the statement of use.
13. Amend § 2.71 as follows:
a. Revise paragraphs (a) through (b), the introductory text of paragraph
(c), and paragraph (d).
b. Add paragraph (e).
§ 2.71 Amendments to correct informalities.
* * * * *
(a) The applicant may amend the application to clarify or limit, but
not to broaden, the identification of goods and/or services or the
description of the nature of the collective membership organization.
(b)(1) If the verified statement in an application under § 2.33 is
unsigned or signed by the wrong party, the applicant may submit a
substitute verification.
(2) If the verified statement in a statement of use under § 2.88, or a
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request for extension of time to file a statement of use under § 2.89, is
unsigned or signed by the wrong party, the applicant must submit a
substitute verification before the expiration of the statutory deadline for
filing the statement of use.
(c) The applicant may amend the dates of use, provided that the
amendment is verified, except that the following amendments are not
permitted:
* * * * *
(d) The applicant may amend the application to correct the name of the
applicant, if there is a mistake in the manner in which the name of the
applicant is set out in the application. The amendment must be verified.
However, the application cannot be amended to set forth a different entity
as the applicant. An application filed in the name of an entity that did
not own the mark as of the filing date of the application is void.
(e) An amendment that would materially alter the certification statement
specified in § 2.45(a)(4)(i)(A) or § 2.45(a)(4)(ii)(A) will not be
permitted.
14. Revise § 2.74(b) to read as follows:
§ 2.74 Form and signature of amendment.
* * * * *
(b) Signature. A request for amendment of 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 practitioner
qualified to practice under § 11.14 of this chapter, in accordance with
the requirements of § 2.193(e)(2). If the amendment requires verification,
see § 2.2(n).
15. Revise § 2.76 to read as follows:
§ 2.76 Amendment to allege use.
(a) When to file an amendment to allege use. (1) An application under
section 1(b) of the Act may be amended to allege use of the mark in
commerce under section 1(c) of the Act at any time between the filing of
the application and the date the examiner approves the mark for
publication. Thereafter, an allegation of use may be submitted only as a
statement of use under § 2.88 after the issuance of a notice of allowance
under section 13(b)(2) of the Act. An amendment to allege use filed outside
the time period specified in this paragraph will not be reviewed.
(2)(i) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, an amendment to allege use may be
filed only when the mark has been in use in commerce on or in connection
with all the goods or services specified in the application, for which the
applicant will seek registration. For a collective membership mark, an
amendment to allege use may be filed only when the mark has been in use in
commerce to indicate membership in the collective organization specified in
the application, for which the applicant will seek registration.
(ii) An amendment to allege use may be accompanied by a request in
accordance with § 2.87 to divide out from the application the goods,
services, or classes not yet in use in commerce.
(b) A complete amendment to allege use. A complete amendment to allege
use must include the following:
(1) A verified statement alleging:
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(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods or services, and/or to indicate membership in the collective
organization specified in the application, and the date of first use of the
mark in commerce. If the amendment to allege use specifies more than one
item of goods or services in a class, the dates of use are required for
only one item of goods or services specified in that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the application; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark.
(2) One specimen showing how the applicant, member, or authorized user
uses the mark in commerce. See § 2.56 of this chapter for the requirements
for specimens;
(3) The fee per class required by § 2.6;
(4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of
§ 2.45(a)(4)(i)(A)-(C); and
(6) The title "Amendment to Allege Use" should appear at the top of the
first page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed amendment to allege
use. The Office will review a timely filed amendment to allege use to
determine whether it meets the following minimum requirements:
(1) The fee required by § 2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
(3) The verified statement in paragraph (b)(1)(ii) of this section.
(d) Deficiency notification. If the amendment to allege use is filed
within the permitted time period but does not meet the minimum requirements
specified in paragraph (c) of this section, the Office will notify the
applicant of the deficiency. The deficiency may be corrected provided the
mark has not been approved for publication. If an acceptable amendment to
correct the deficiency is not filed prior to approval of the mark for
publication, the amendment will not be examined, and the applicant must
instead file a statement of use after the notice of allowance issues.
(e) Notification of refusals and requirements. A timely filed amendment
to allege use that meets the minimum requirements specified in paragraph
(c) of this section will be examined in accordance with § 2.61 through
§ 2.69. If, as a result of the examination of the amendment to allege use,
the applicant is found not entitled to registration for any reason not
previously stated, the applicant will be notified and advised of the
reasons and of any formal requirements or refusals. The notification shall
restate or incorporate by reference all unresolved refusals or requirements
previously stated. The amendment to allege use may be amended in accordance
with § 2.59 and § 2.71 through § 2.75.
(f) Withdrawal. An amendment to allege use may be withdrawn for any
reason prior to approval of a mark for publication.
(g) Verification not filed within reasonable time. If the verified
statement in paragraph (b)(1)(ii) of this section is not filed within a
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reasonable time after it is signed, the Office may require the applicant to
submit a substitute verified statement attesting that the mark is still in
use in commerce.
(h) An amendment to allege use is not a response but may include
amendments. The filing of an amendment to allege use does not constitute
a response to any outstanding action by the examiner. See § 2.62. The
amendment to allege use may include amendments in accordance with § 2.59
and § 2.71 through § 2.75.
(i) In an application for concurrent use under § 2.42, the amendment to
allege use must include a verified statement modified in accordance with
§ 2.33(f), § 2.44(d), or § 2.45(d).
(j) Multiple-class application. For the requirements of a multiple-class
application, see § 2.86.
16. Revise § 2.86 to read as follows:
§ 2.86 Multiple-class applications.
(a) In a single application for a trademark, service mark, and/or
collective mark, an applicant may apply to register the same mark for
goods, services, and/or a collective membership organization in multiple
classes. In a multiple-class application, the applicant must satisfy the
following, in addition to the application requirements of § 2.32 for a
trademark or service mark, and § 2.44 for collective marks:
(1) For an application filed under section 1 or 44 of the Act, identify
the goods or services in each international class and/or the nature of the
collective membership organization in U.S. Class 200; for applications
filed under section 66(a) of the Act, identify the goods, services, and/or
the nature of the collective membership organization in each international
class assigned by the International Bureau in the corresponding
international registration;
(2) Submit the application filing fee required by § 2.6 for each class;
and
(3) Include either dates of use and one specimen for each class based
on section 1(a) of the Act; or a statement that the applicant has a bona
fide intention to use the mark in commerce, for a trademark or service
mark, or a statement that the applicant has a bona fide intention, and is
entitled, to exercise legitimate control over the use of the mark in
commerce, for collective marks, for each class based on section 1(b), 44,
or 66(a) of the Act. When requested by the Office, additional specimens
must be provided.
(b) In a single application for a certification mark, an applicant may
apply to register the same mark for goods and services. In such case, the
applicant must satisfy the following, in addition to the application
requirements of § 2.45:
(1) For an application filed under section 1 or 44 of the Act, identify
the goods in U.S. Class A and the services in U.S. Class B; for
applications filed under section 66(a) of the Act, identify the goods and
services in each international class assigned by the International Bureau
in the corresponding international registration;
(2) Submit the application filing fee required by § 2.6 for both
classes; and
(3) Include either dates of use and one specimen for each class based
on section 1(a) of the Act; or a statement that the applicant has a bona
fide intention, and is entitled, to exercise legitimate control over the
use of the mark in commerce for each class based on section 1(b), 44,
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or 66(a) of the Act. When requested by the Office, additional specimens
must be provided.
(c) In a single application, both section 1(a) and 1(b) of the Act may
not be claimed for identical goods or services.
(d) In a single application, goods or services in U.S. Classes A and/or
B may not be combined with either goods or services in any international
class or with a collective membership organization in U.S. Class 200.
See § 2.45(f).
(e) An amendment to allege use under § 2.76 or a statement of use under
§ 2.88 for multiple classes must include, for each class, the required fee,
dates of use, and one specimen. When requested by the Office, additional
specimens must be provided. The applicant may not file an amendment to
allege use or a statement of use until the applicant has used the mark on
or in connection with all the goods, services, or classes, unless the
applicant also files a request to divide under § 2.87.
(f) The Office will issue a single certificate of registration for the
mark, unless the applicant files a request to divide under § 2.87.
17. Revise § 2.88 to read as follows:
§ 2.88 Statement of use after notice of allowance.
(a) When to file a statement of use. (1) In an application under section
1(b) of the Act, a statement of use, required under section 1(d) of the
Act, must be filed within six months after issuance of a notice of
allowance under section 13(b)(2) of the Act, or within an extension of
time granted under § 2.89. A statement of use filed prior to issuance of a
notice of allowance is premature and will not be reviewed.
(2)(i) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, a statement of use may be filed only
when the mark has been in use in commerce on or in connection with all the
goods or services specified in the notice of allowance, for which the
applicant will seek registration in that application. For a collective
membership mark, a statement of use may be filed only when the mark has
been in use in commerce to indicate membership in the collective membership
organization specified in the notice of allowance, for which the applicant
will seek registration in that application.
(ii) A statement of use may be accompanied by a request in accordance
with § 2.87 to divide out from the application the goods, services, or
classes not yet in use in commerce.
(b) A complete statement of use. A complete statement of use must
include the following:
(1) A verified statement alleging:
(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods, services, and/or to indicate membership in the collective
organization specified in the application, and the date of first use of
the mark in commerce. If the statement of use specifies more than one item
of goods or services in a class, the dates of use are required for only one
item of goods or services specified in that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the notice of allowance. The goods or services
specified in a statement of use must conform to those goods or services
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specified in the notice of allowance for trademark, service mark,
collective trademark, collective service mark, or certification mark
applications. Any goods or services specified in the notice of allowance
that are omitted from the identification of goods or services in the
statement of use will be presumed to be deleted and the deleted goods or
services may not be reinserted in the application. For collective
membership mark applications, the description of the nature of the
collective membership organization in the statement of use must conform to
that specified in the notice of allowance; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark;
(2) One specimen showing how the applicant, member, or authorized user
uses the mark in commerce. See § 2.56 for the requirements for specimens;
(3) Fee(s). The fee required by § 2.6 per class. 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 should specify the classes to be
abandoned. 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 be abandoned, the Office will
issue a notice granting the applicant additional time to submit the fee(s)
for the remaining class(es) or to 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 or services not covered by the fees
submitted;
(4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of
§ 2.45(a)(4)(i)(A)-(C); and
(6) The title "Statement of Use" should appear at the top of the first
page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed statement of use.
The Office will review a timely filed statement of use to determine whether
it meets the following minimum requirements:
(1) The fee required by § 2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
(3) The verified statement in paragraph (b)(1) of this section. If this
verified statement is unsigned or signed by the wrong party, the applicant
must submit a substitute verified statement on or before the statutory
deadline for filing the statement of use.
(d) Deficiency notification. If the statement of use is filed within the
permitted time period but does not meet the minimum requirements specified
in paragraph (c) of this section, the Office will notify the applicant of
the deficiency. If the time permitted for the applicant to file a statement
of use has not expired, the applicant may correct the deficiency.
(e) Notification of refusals and requirements. A timely filed statement
of use that meets the minimum requirements specified in paragraph (c) of
this section will be examined in accordance with § 2.61 through § 2.69. If,
as a result of the examination of the statement of use, the applicant is
found not entitled to registration, the applicant will be notified and
advised of the reasons and of any formal requirements or refusals. The
statement of use may be amended in accordance with § 2.59 and § 2.71
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through § 2.75.
(f) Statement of use may not be withdrawn. The applicant may not
withdraw a timely filed statement of use to return to the previous status
of awaiting submission of a statement of use, regardless of whether it is
in compliance with paragraph (c) of this section.
(g) Verification not filed within reasonable time. If the verified
statement in paragraph (b)(1) of this section is not filed within a
reasonable time after it is signed, the Office may require the applicant to
submit a substitute verified statement attesting that the mark is still in
use in commerce.
(h) Amending the application. The statement of use may include
amendments in accordance with § 2.51, § 2.59, and § 2.71 through § 2.75.
(i) In an application for concurrent use under § 2.42, the statement of
use must include a verified statement modified in accordance with
§ 2.33(f), § 2.44(d), or § 2.45(d).
(j) Multiple-class application. For the requirements of a multiple-class
application, see § 2.86.
(k) Abandonment. The failure to timely file a statement of use which
meets the minimum requirements specified in paragraph (c) of this section
shall result in the abandonment of the application.
18. Revise § 2.89 to read as follows:
§ 2.89 Extensions of time for filing a statement of use.
(a) First extension request after issuance of notice of allowance. 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) A written request for an extension of time to file the statement of
use;
(2) The fee required by § 2.6 per class. 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 should specify the classes to be
abandoned. 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 be abandoned, 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 or services not covered by the fees submitted;
and
(3) A verified statement that the applicant continues to have a bona
fide intention to use the mark in commerce, for trademarks or service
marks, or that the applicant continues to have a bona fide intention, and
is entitled, to exercise legitimate control over the use of the mark
commerce, for collective marks or certification marks. If this verified
statement is unsigned or signed by the wrong party, the applicant must
submit a substitute verified statement within six months of the date of
issuance of the notice of allowance.
(b) Subsequent extension requests. Before the expiration of the
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previously granted extension of time, the applicant may request further
six-month extensions of time to file the statement of use by submitting
the following:
(1) A written request for an extension of time to file the statement
of use;
(2) The requirements of paragraph (a)(2) of this section for a fee;
(3) A verified statement that the applicant continues to have a bona
fide intention to use the mark in commerce, for trademarks or service
marks, or that the applicant continues to have a bona fide intention, and
is entitled, to exercise legitimate control over the use of the mark in
commerce, for collective marks or certification marks. If this verified
statement is unsigned or signed by the wrong party, the applicant must
submit a substitute verified statement before the expiration of the
previously granted extension; and
(4) A showing of good cause, as specified in paragraph (d) of this
section.
(c) Four subsequent extension requests permitted. Extension requests
specified in paragraph (b) of this section will be granted only in
six-month increments and may not aggregate more than 24 months total.
(d) Good cause. A showing of good cause must include:
(1) For a trademark or service mark, a statement of the applicant's
ongoing efforts to make use of the mark in commerce on or in connection
with each of the relevant goods or services. Those efforts may include
product or service research or development, market research, manufacturing
activities, promotional activities, steps to acquire distributors, steps to
obtain governmental approval, or other similar activities. In the
alternative, the applicant must submit a satisfactory explanation for the
failure to make efforts to use the mark in commerce.
(2) For a collective mark, a statement of ongoing efforts to make use of
the mark in commerce by members on or in connection with each of the
relevant goods or services or in connection with the applicant's collective
membership organization. Those efforts may include the development of
standards, the steps taken to acquire members such as marketing and
promotional activities targeted to potential members, training members
regarding the standards,or other similar activities. In the alternative,
the applicant must submit a satisfactory explanation for the failure to
make efforts for applicant's members to use the mark in commerce.
(3) For a certification mark, a statement of ongoing efforts to make use
of the mark in commerce by authorized users on or in connection with each
of the relevant goods or services. Those efforts may include the development
of certification standards, steps taken to obtain governmental approval or
acquire authorized users, marketing and promoting the recognition of the
certification program or of the goods or services that meet the
certification standards of the applicant, training authorized users
regarding the standards, or other similar activities. In the alternative,
the applicant must submit a satisfactory explanation for the failure to
make efforts for applicant's authorized users to use the mark in commerce.
(ii) An amendment to allege use may be accompanied by a request in
accordance with § 2.87 to divide out from the application the goods,
services, or classes not yet in use in commerce.
(b) A complete amendment to allege use. A complete amendment to allege
use must include the following:
(1) A verified statement alleging:
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(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods or services, and/or to indicate membership in the collective
organization specified in the application, and the date of first use of the
mark in commerce. If the amendment to allege use specifies more than one
item of goods or services in a class, the dates of use are required for
only one item of goods or services specified in that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the application; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark.
(2) One specimen showing how the applicant, member, or authorized user
uses the mark in commerce. See § 2.56 of this chapter for the requirements
for specimens;
(3) The fee per class required by § 2.6;
(4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of
§ 2.45(a)(4)(i)(A)-(C); and
(6) The title "Amendment to Allege Use" should appear at the top of the
first page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed amendment to allege
use. The Office will review a timely filed amendment to allege use to
determine whether it meets the following minimum requirements:
(1) The fee required by § 2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
(3) The verified statement in paragraph (b)(1)(ii) of this section.
(d) Deficiency notification. If the amendment to allege use is filed
within the permitted time period but does not meet the minimum requirements
specified in paragraph (c) of this section, the Office will notify the
applicant of the deficiency. The deficiency may be corrected provided the
mark has not been approved for publication. If an acceptable amendment to
correct the deficiency is not filed prior to approval of the mark for
publication, the amendment will not be examined, and the applicant must
instead file a statement of use after the notice of allowance issues.
(e) Notification of refusals and requirements. A timely filed amendment
to allege use that meets the minimum requirements specified in paragraph
(c) of this section will be examined in accordance with § 2.61 through
§ 2.69. If, as a result of the examination of the amendment to allege use,
the applicant is found not entitled to registration for any reason not
previously stated, the applicant will be notified and advised of the
reasons and of any formal requirements or refusals. The notification shall
restate or incorporate by reference all unresolved refusals or
requirements previously stated. The amendment to allege use may be amended
in accordance with § 2.59 and § 2.71 through § 2.75.
(f) Withdrawal. An amendment to allege use may be withdrawn for any
reason prior to approval of a mark for publication.
(g) Verification not filed within reasonable time. If the verified
statement in paragraph (b)(1)(ii) of this section is not filed within a
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reasonable time after it is signed, the Office may require the applicant
to submit a substitute verified statement attesting that the mark is still
in use in commerce.
(h) An amendment to allege use is not a response but may include
amendments. The filing of an amendment to allege use does not constitute a
response to any outstanding action by the examiner. See § 2.62. The
amendment to allege use may include amendments in accordance with § 2.59
and § 2.71 through § 2.75.
(i) In an application for concurrent use under § 2.42, the amendment to
allege use must include a verified statement modified in accordance with
§ 2.33(f), § 2.44(d), or § 2.45(d).
(j) Multiple-class application. For the requirements of a multiple-class
application, see § 2.86.
16. Revise § 2.86 to read as follows:
§ 2.86 Multiple-class applications.
(a) In a single application for a trademark, service mark, and/or
collective mark, an applicant may apply to register the same mark for
goods, services, and/or a collective membership organization in multiple
classes. In a multiple-class application, the applicant must satisfy the
following, in addition to the application requirements of § 2.32 for a
trademark or service mark, and § 2.44 for collective marks:
(1) For an application filed under section 1 or 44 of the Act, identify
the goods or services in each international class and/or the nature of the
collective membership organization in U.S. Class 200; for applications
filed under section 66(a) of the Act, identify the goods, services, and/or
the nature of the collective membership organization in each international
class assigned by the International Bureau in the corresponding
international registration;
(2) Submit the application filing fee required by § 2.6 for each class;
and
(3) Include either dates of use and one specimen for each class based
on section 1(a) of the Act; or a statement that the applicant has a bona
fide intention to use the mark in commerce,for a trademark or service mark,
or a statement that the applicant has a bona fide intention, and is
entitled, to exercise legitimate control over the use of the mark in
commerce, for collective marks, for each class based on section 1(b), 44,
or 66(a) of the Act. When requested by the Office, additional specimens must
be provided.
(b) In a single application for a certification mark, an applicant may
apply to register the same mark for goods and services. In such case, the
applicant must satisfy the following, in addition to the application
requirements of § 2.45:
(1) For an application filed under section 1 or 44 of the Act, identify
the goods in U.S. Class A and the services in U.S. Class B; for
applications filed under section 66(a) of the Act, identify the goods and
services in each international class assigned by the International Bureau
in the corresponding international registration;
(2) Submit the application filing fee required by § 2.6 for both
classes; and
(3) Include either dates of use and one specimen for each class based
on section 1(a) of the Act; or a statement that the applicant has a bona
fide intention, and is entitled, to exercise legitimate control over the
use of the mark in commerce for each class based on section 1(b), 44,
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or 66(a) of the Act. When requested by the Office, additional specimens
must be provided.
(c) In a single application, both section 1(a) and 1(b) of the Act may
not be claimed for identical goods or services.
(d) In a single application, goods or services in U.S. Classes A and/or
B may not be combined with either goods or services in any international
class or with a collective membership organization in U.S. Class 200.
See § 2.45(f).
(e) An amendment to allege use under § 2.76 or a statement of use under
§ 2.88 for multiple classes must include, for each class, the required fee,
dates of use, and one specimen. When requested by the Office, additional
specimens must be provided. The applicant may not file an amendment to
allege use or a statement of use until the applicant has used the mark on
or in connection with all the goods, services, or classes, unless the
applicant also files a request to divide under § 2.87.
(f) The Office will issue a single certificate of registration for the
mark, unless the applicant files a request to divide under § 2.87.
17. Revise § 2.88 to read as follows:
§ 2.88 Statement of use after notice of allowance.
(a) When to file a statement of use. (1) In an application under section
1(b) of the Act, a statement of use, required under section 1(d) of the
Act, must be filed within six months after issuance of a notice of
allowance under section 13(b)(2) of the Act, or within an extension of time
granted under § 2.89. A statement of use filed prior to issuance of a
notice of allowance is premature and will not be reviewed.
(2)(i) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, a statement of use may be filed only
when the mark has been in use in commerce on or in connection with all the
goods or services specified in the notice of allowance, for which the
applicant will seek registration in that application. For a collective
membership mark, a statement of use may be filed only when the mark has
been in use in commerce to indicate membership in the collective membership
organization specified in the notice of allowance, for which the applicant
will seek registration in that application.
(ii) A statement of use may be accompanied by a request in accordance
with § 2.87 to divide out from the application the goods, services, or
classes not yet in use in commerce.
(b) A complete statement of use. A complete statement of use must
include the following:
(1) A verified statement alleging:
(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods, services, and/or to indicate membership in the collective
organization specified in the application, and the date of first use of the
mark in commerce. If the statement of use specifies more than one item of
goods or services in a class, the dates of use are required for only one
item of goods or services specified in that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the notice of allowance. The goods or services
specified in a statement of use must conform to those goods or services
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specified in the notice of allowance for trademark, service mark,
collective trademark, collective service mark, or certification mark
applications. Any goods or services specified in the notice of allowance
that are omitted from the identification of goods or services in the
statement of use will be presumed to be deleted and the deleted goods or
services may not be reinserted in the application. For collective
membership mark applications, the description of the nature of the
collective membership organization in the statement of use must conform to
that specified in the notice of allowance; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark;
(2) One specimen showing how the applicant, member, or authorized user
uses the mark in commerce. See § 2.56 for the requirements for specimens;
(3) Fee(s). The fee required by § 2.6 per class. 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 should specify the classes to be
abandoned. 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 be abandoned, the Office will
issue a notice granting the applicant additional time to submit the fee(s)
for the remaining class(es) or to 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 or services not covered by the fees submitted;
(4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of
§ 2.45(a)(4)(i)(A)-(C); and
(6) The title "Statement of Use" should appear at the top of the first
page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed statement of use.
The Office will review a timely filed statement of use to determine whether
it meets the following minimum requirements:
(1) The fee required by § 2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
(3) The verified statement in paragraph (b)(1) of this section. If this
verified statement is unsigned or signed by the wrong party, the applicant
must submit a substitute verified statement on or before the statutory
deadline for filing the statement of use.
(d) Deficiency notification. If the statement of use is filed within
the permitted time period but does not meet the minimum requirements
specified in paragraph (c) of this section, the Office will notify the
applicant of the deficiency. If the time permitted for the applicant to
file a statement of use has not expired, the applicant may correct the
deficiency.
(e) Notification of refusals and requirements. A timely filed statement
of use that meets the minimum requirements specified in paragraph (c) of
this section will be examined in accordance with § 2.61 through § 2.69.
If, as a result of the examination of the statement of use, the applicant
is found not entitled to registration, the applicant will be notified and
advised of the reasons and of any formal requirements or refusals. The
statement of use may be amended in accordance with § 2.59 and § 2.71
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through § 2.75.
(f) Statement of use may not be withdrawn. The applicant may not
withdraw a timely filed statement of use to return to the previous status
of awaiting submission of a statement of use, regardless of whether it is
in compliance with paragraph (c) of this section.
(g) Verification not filed within reasonable time. If the verified
statement in paragraph (b)(1) of this section is not filed within a
reasonable time after it is signed, the Office may require the applicant to
submit a substitute verified statement attesting that the mark is still in
use in commerce.
(h) Amending the application. The statement of use may include
amendments in accordance with § 2.51, § 2.59, and § 2.71 through § 2.75.
(i) In an application for concurrent use under § 2.42, the statement of
use must include a verified statement modified in accordance with
§ 2.33(f), § 2.44(d), or § 2.45(d).
(j) Multiple-class application. For the requirements of a multiple-class
application, see § 2.86.
(k) Abandonment. The failure to timely file a statement of use which
meets the minimum requirements specified in paragraph (c) of this section
shall result in the abandonment of the application.
18. Revise § 2.89 to read as follows:
§ 2.89 Extensions of time for filing a statement of use.
(a) First extension request after issuance of notice of allowance. 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) A written request for an extension of time to file the statement of
use;
(2) The fee required by § 2.6 per class. 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 should specify the classes to be
abandoned. 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 be abandoned, 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 or services not covered by the fees submitted;
and
(3) A verified statement that the applicant continues to have a bona
fide intention to use the mark in commerce, for trademarks or service
marks, or that the applicant continues to have a bona fide intention, and
is entitled, to exercise legitimate control over the use of the mark in
commerce, for collective marks or certification marks. If this verified
statement is unsigned or signed by the wrong party, the applicant must
submit a substitute verified statement within six months of the date of
issuance of the notice of allowance.
(b) Subsequent extension requests. Before the expiration of the
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previously granted extension of time, the applicant may request further
six-month extensions of time to file the statement of use by submitting
the following:
(1) A written request for an extension of time to file the statement of
use;
(2) The requirements of paragraph (a)(2) of this section for a fee;
(3) A verified statement that the applicant continues to have a bona
fide intention to use the mark in commerce, for trademarks or service
marks, or that the applicant continues to have a bona fide intention, and
is entitled, to exercise legitimate control over the use of the mark in
commerce, for collective marks or certification marks. If this verified
statement is unsigned or signed by the wrong party, the applicant must
submit a substitute verified statement before the expiration of the
previously granted extension; and
(4) A showing of good cause, as specified in paragraph (d) of this
section.
(c) Four subsequent extension requests permitted. Extension requests
specified in paragraph (b) of this section will be granted only in
six-month increments and may not aggregate more than 24 months total.
(d) Good cause. A showing of good cause must include:
(1) For a trademark or service mark, a statement of the applicant's
ongoing efforts to make use of the mark in commerce on or in connection
with each of the relevant goods or services. Those efforts may include
product or service research or development, market research, manufacturing
activities, promotional activities, steps to acquire distributors, steps to
obtain governmental approval, or other similar activities. In the
alternative, the applicant must submit a satisfactory explanation for the
failure to make efforts to use the mark in commerce.
(2) For a collective mark, a statement of ongoing efforts to make use of
the mark in commerce by members on or in connection with each of the
relevant goods or services or in connection with the applicant's collective
membership organization. Those efforts may include the development of
standards, the steps taken to acquire members such as marketing and
promotional activities targeted to potential members, training members
regarding the standards, or other similar activities. In the alternative,
the applicant must submit a satisfactory explanation for the failure to
make efforts for applicant's members to use the mark in commerce.
(3) For a certification mark, a statement of ongoing efforts to make
use of the mark in commerce by authorized users on or in connection with
each of the relevant goods or services. Those efforts may include the
development of certification standards, steps taken to obtain governmental
approval or acquire authorized users, marketing and promoting the
recognition of the certification program or of the goods or services that
meet the certification standards of the applicant, training authorized
users regarding the standards, or other similar activities. In the
alternative, the applicant must submit a satisfactory explanation for the
failure to make efforts for applicant's authorized users to use the mark
in commerce.
(e) Extension request filed in conjunction with or after a statement of
use. (1) An applicant may file one request for a six-month extension of
time for filing a statement of use when filing a statement of use or after
filing a statement of use if time remains in the existing six-month period
in which the statement of use was filed, provided that the time requested
would not extend beyond 36 months from the date of issuance of the notice
of allowance. Thereafter, applicant may not request any further extensions
of time.
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(2) A request for an extension of time that is filed under paragraph
(e)(1) of this section, must comply with all the requirements of paragraph
(a) of this section, if it is an applicant's first extension request, or
paragraph (b) of this section, if it is a second or subsequent extension
request. However, in a request under paragraph (b) of this section, an
applicant may satisfy the requirement for a showing of good cause by
asserting the applicant believes the applicant has made valid use of the
mark in commerce, as evidenced by the submitted statement of use, but that
if the statement of use is found by the Office to be fatally defective, the
applicant will need additional time in which to file a new statement of
use.
(f) Goods or services. For trademark, service mark, collective
trademark, collective service mark, or certification mark applications,
the goods or services specified in a request for an extension of time for
filing a statement of use must conform to those goods or services specified
in the notice of allowance. Any goods or services specified in the notice
of allowance that are omitted from the identification of goods or services
in the request for extension of time will be presumed to be deleted and the
deleted goods or services may not thereafter be reinserted in the
application. For collective membership mark applications, the description
of the nature of the collective membership organization in the request for
extension of time must conform to that set forth in the notice of
allowance.
(g) Notice of grant or denial. 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
filing a statement of use, applicant may submit a substitute request for
extension of time to correct the defects of the prior request. Otherwise,
the only recourse available after denial of a request for an extension of
time is to file 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.
(h) Verification not filed within reasonable time. If the verified
statement is not filed within a reasonable time after it is signed, the
Office may require the applicant to submit a substitute verified statement
attesting that the applicant continues to have a bona fide intention to
use the mark in commerce, or the applicant continues to have a bona fide
intention, and is entitled, to exercise legitimate control over the use of
the mark in commerce.
19. Amend § 2.146 by revising paragraphs (c) and (d) to read as follows:
§ 2.146 Petitions to the Director.
* * * * *
(c) Every petition to the Director shall include a statement of the
facts relevant to the petition, the points to be reviewed, the action or
relief requested, and the fee required by § 2.6. Any brief in support of
the petition shall be embodied in or accompany the petition. The petition
must 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 practitioner qualified to practice under § 11.14 of this chapter, in
accordance with the requirements of § 2.193(e)(5). When facts are to be
proved on petition, the petitioner must submit proof in the form of
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verified statements 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, and no later than two months from
the date when Office records are updated to show that the registration has
been cancelled or has expired.
* * * * *
20. Amend § 2.161 as follows:
a. Revise paragraphs (b), (c), (d)(1), (d)(3), and (e) through (g).
b. Add paragraphs (i) through (k).
§ 2.161 Requirements for a complete affidavit or declaration of continued
use or excusable nonuse.
* * * * *
(b) Include a verified statement attesting to the use in commerce or
excusable nonuse of the mark within the period set forth in section 8 of
the Act. This verified statement must be executed on or after the beginning
of the filing period specified in § 2.160(a);
(c) Include the U.S. registration number;
(d)(1) Include the fee required by § 2.6 for each class that the
affidavit or declaration covers;
* * * * *
(3) If at least one fee is submitted for a multiple-class registration,
but the fee is insufficient to cover all the classes, and the class(es) to
which the fee(s) should be applied are not specified, the Office will issue
a notice requiring either submission of the additional fee(s) or
specification of the class(es) to which the initial fee(s) should be
applied. Additional fee(s) may be submitted if the requirements of § 2.164
are met. If the additional fee(s) are not submitted within the time period
set out in the Office action and the class(es) to which the original fee(s)
should be applied are not specified, the Office will presume that the
fee(s) cover the classes in ascending order, beginning with the lowest
numbered class;
(e)(1) Specify the goods, services, or nature of the collective
membership organization for which the mark is in use in commerce, and/or
the goods, services, or nature of the collective membership organization
for which excusable nonuse is claimed under paragraph (f)(2) of this
section; and
(2) Specify the goods, services, or classes being deleted from the
registration, if the affidavit or declaration covers fewer than all the
goods, services, or classes in the registration;
(f)(1) State that the registered mark is in use in commerce; or
(2) If the registered mark is not in use in commerce on or in connection
with all the goods, services, or classes specified in the registration, set
forth the date when such use of the mark in commerce stopped and the
approximate date when such use is expected to resume; and recite facts to
show that nonuse as to those goods, services, or classes is due to special
circumstances that excuse the nonuse and is not due to an intention to
abandon the mark; and
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(g) Include one specimen showing how the mark is in use in commerce for
each class in the registration, unless excusable nonuse is claimed under
paragraph (f)(2) of this section. When requested by the Office, additional
specimens must be provided. The specimen must meet the requirements of
§ 2.56 of this chapter.
* * * * *
(i) Additional requirements for a collective mark. In addition to the
above requirements, a complete affidavit or declaration pertaining to a
collective mark must:
(1) State that the owner is exercising legitimate control over the use
of the mark in commerce; and
(2) State the nature of the owner's control over the use of the mark by
the members in the first affidavit or declaration filed under paragraph
(a) of this section for registrations which issued from an application
based solely on section 44 of the Act.
(j) Additional requirements for a certification mark. In addition to the
above requirements, a complete affidavit or declaration pertaining to a
certification mark must:
(1) Include a copy of the certification standards specified in
§ 2.45(a)(4)(i)(B);
(i) Submitting certification standards for the first time. If the
registration issued from an application based solely on section 44 of the
Act, include a copy of the certification standards in the first affidavit
or declaration filed under paragraph (a) of this section; or
(ii) Certification standards submitted in prior filing. If the
certification standards in use at the time of filing the affidavit or
declaration have not changed since the date they were previously submitted
to the Office, include a statement to that effect; if the certification
standards in use at the time of filing the affidavit or declaration have
changed since the date they were previously submitted to the Office,
include a copy of the revised certification standards;
(2) State that the owner is exercising legitimate control over the use
of the mark in commerce; and
(3) Satisfy the requirements of § 2.45(a)(4)(i)(A), (C).
(k) For requirements of a complete affidavit or declaration of use in
commerce or excusable nonuse for a registration that issued from a section
66(a) basis application, see § 7.37.
21. Amend § 2.167 as follows:
a. Revise the introductory text and paragraphs (a), and (c) through (g).
b. Add paragraphs (h) through (k).
§ 2.167 Affidavit or declaration under section 15.
The affidavit or declaration in accordance with § 2.20 provided by
section 15 of the Act for acquiring incontestability for a mark registered
on the Principal Register or a mark registered under the Trademark Act of
1881 or 1905 and published under section 12(c) of the Act (see § 2.153 of
this chapter) must:
(a) Be verified;
* * * * *
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(c) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, recite the goods or services stated
in the registration on or in connection with which the mark has been in
continuous use in commerce for a period of five years after the date of
registration or date of publication under section 12(c) of the Act, and is
still in use in commerce; for a collective membership mark, describe the
nature of the owner's collective membership organization specified in the
registration in connection with which the mark has been in continuous use
in commerce for a period of five years after the date of registration or
date of publication under section 12(c) of the Act, and is still in use in
commerce;
(d) Specify that there has been no final decision adverse to the owner's
claim of ownership of such mark for such goods, services, or collective
membership organization, or to the owner's right to register the same or to
keep the same on the register;
(e) Specify that there is no proceeding involving said rights pending in
court and not finally disposed of;
(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) of the Act; and
(g) Include the fee required by § 2.6 for each class to which the
affidavit or declaration pertains in the registration. If no fee, or a fee
insufficient to cover at least one class, is filed at an appropriate time,
the affidavit or declaration will not be refused if the required fee(s)
(see § 2.6) is filed in the Office within the time limit set forth in the
notification of this defect by the Office. If the submitted fees are
insufficient to cover all classes in the registration, the particular class
or classes to which the affidavit or declaration pertains should be
specified.
(h) If the affidavit or declaration fails to satisfy any of the
requirements in paragraphs (a) through (g) of this section, the owner will
be notified in an Office action that the affidavit or declaration cannot be
acknowledged. If a response is not received within the time period provided
or does not satisfy the requirements of the Office action, the affidavit or
declaration will be abandoned.
(i) If the affidavit or declaration satisfies paragraphs (a) through (g)
of this section, the Office will issue a notice of acknowledgement.
(j) An affidavit or declaration may be abandoned by the owner upon
petition to the Director under § 2.146 either before or after the notice of
acknowledgement has issued.
(k) If an affidavit or declaration is abandoned, the owner may file a
new affidavit or declaration with a new filing fee.
22. Amend § 2.173 as follows:
a. Revise paragraphs (b), and (d) through (g).
b. Add paragraphs (h) and (i).
§ 2.173 Amendment of registration.
* * * * *
(b) Requirements for request. A request for amendment or disclaimer
must:
(1) Include the fee required by § 2.6;
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(2) Be verified and signed in accordance with § 2.193(e)(6); and
(3) If the amendment involves a change in the mark: a specimen showing
the mark as used on or in connection with the goods, services, or
collective membership organization; a verified statement 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. When requested by the
Office, additional specimens must be provided.
(4) The Office may require the owner to furnish such specimens,
information, exhibits, and affidavits or declarations as may be reasonably
necessary to the proper examination of the amendment.
(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 that materially alters the character of the mark will not be
permitted, in accordance with section 7(e) of the Act.
(e) Amendment of identification of goods, services, or collective
membership organization. No amendment in the identification of goods or
services, or description of the nature of the collective membership
organization, 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) Amendment of certification statement for certification marks. An
amendment of the certification statement specified in § 2.45(a)(4)(i)(A) or
(a)(4)(ii)(A) that would materially alter the certification statement will
not be permitted, in accordance with section 7(e) of the Act.
(g) 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.
(h) 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.
(i) No amendment to add or delete section 2(f) claim of acquired
distinctiveness. An amendment seeking the addition or elimination of a
claim of acquired distinctiveness will not be permitted.
23. Revise § 2.175(b)(2) as follows:
§ 2.175 Correction of mistake by owner.
* * * * *
(b) * * *
(2) Be verified; and
* * * * *
24. Amend § 2.183 by revising paragraphs (d) and (e) to read as follows:
§ 2.183 Requirements for a complete renewal application.
* * * * *
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(d) If the renewal application covers less than all the goods, services,
or classes in the registration, then a list specifying the particular
goods, services, or classes to be renewed.
(e) If at least one fee is submitted for a multiple-class registration,
but the fee is insufficient to cover all the classes and the class(es) to
which the fee(s) should be applied are not specified, the Office will issue
a notice requiring either the submission of additional fee(s) or an
indication of the class(es) to which the original fee(s) should be applied.
Additional fee(s) may be submitted if the requirements of § 2.185 are met.
If the required fee(s) are not submitted and the class(es) to which the
original fee(s) should be applied are not specified, the Office will
presume that the fee(s) cover the classes in ascending order, beginning
with the lowest numbered class.
* * * * *
25. Amend § 2.193 by revising paragraphs (c)(2), (e) introductory text,
(e)(1), and (f).to read as follows:
§ 2.193 Trademark correspondence and signature requirements.
* * * * *
(c) * * *
(2) Sign the document using some other form of electronic signature
specified by the Director.
* * * * *
(e) Proper person to sign. Documents filed in connection with a
trademark application or registration must be signed by a proper person.
Unless otherwise specified by law, the following requirements apply:
(1) Verified statement of facts. A verified statement in support of
an application for registration, amendment to an application for
registration, allegation of use under § 2.76 or § 2.88, request for
extension of time to file a statement of use under § 2.89, or an affidavit
under section 8, 12(c), 15, or 71 of the Act must satisfy the requirements
of § 2.2(n), and be signed by the owner or a person properly authorized to
sign on behalf of the owner. A person who is properly authorized to
verify facts on behalf of an owner is:
* * * * *
(f) Signature as certification. The presentation to the Office (whether
by signing, filing, submitting, or later advocating) of any document by
any person, whether a practitioner or non-practitioner, constitutes a
certification under § 11.18(b) of this chapter. Violations of § 11.18(b)
of this chapter may jeopardize the validity of the application or
registration, and may result in the imposition of sanctions under
§ 11.18(c) of this chapter. Any practitioner violating § 11.18(b) of
this chapter may also be subject to disciplinary action. See § 11.18(d)
and § 11.804 of this chapter.
* * * * *
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO
THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
26. The authority citation for 37 CFR Part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
27. Amend § 7.1 as follows:
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a. Revise paragraph (c).
b. Add paragraph (f).
§ 7.1 Definitions of terms as used in this part.
* * * * *
(c) The acronym TEAS means the Trademark Electronic Application System,
available at http://www.uspto.gov.
* * * * *
(f) The definitions specified in § 2.2(k) and (n) of this chapter are
incorporated in this part.
28. Amend § 7.37 as follows:
a. Revise paragraphs (b) introductory text, (b)(1), (d)(1), (d)(3), (e),
(f)(1), and (g).
b. Add paragraphs (i) and (j).
§ 7.37 Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse.
* * * * *
(b) Include a verified statement attesting to the use in commerce or
excusable nonuse of the mark within the period set forth in section 71 of
the Act. The verified statement must be executed on or after the beginning
of the filing period specified in § 7.36(b). A person who is properly
authorized to sign on behalf of the holder is:
(1) A person with legal authority to bind the holder;
* * * * *
(d)(1) Include the fee required by § 7.6 for each class that the
affidavit or declaration covers;
* * * * *
(3) If at least one fee is submitted for a multiple-class registration,
but the fee is insufficient to cover all the classes and the class(es) to
which the fee(s) should be applied are not specified, the Office will issue
a notice requiring either submission of the additional fee(s) or
specification of the class(es) to which the initial fee(s) should be
applied. Additional fees may be submitted if the requirements of § 7.39 are
met. If the additional fee(s) are not submitted within the time period set
out in the Office action and the class(es) to which the original fee(s)
should be applied are not specified, the Office will presume that the
fee(s) cover the classes in ascending order, beginning with the lowest
numbered class;
(e)(1) Specify the goods, services, or nature of the collective
membership organization for which the mark is in use in commerce, and/or
the goods, services, or nature of the collective membership organization
for which excusable nonuse is claimed under paragraph (f)(2) of this
section;
(2) Specify the goods, services, or classes being deleted from the
registration, if the affidavit or declaration covers fewer than all the
goods, services, or classes in the registration;
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(f)(1) State that the registered mark is in use in commerce; or
(2) If the registered mark is not in use in commerce on or in connection
with all the goods, services, or classes specified in the registration, set
forth the date when such use of the mark in commerce stopped and the
approximate date when such use is expected to resume and recite facts to
show that nonuse as to those goods, services, or classes is due to special
circumstances that excuse the nonuse and is not due to an intention to
abandon the mark;
(g) Include one specimen showing how the mark is used in commerce for
each class in the registration, unless excusable nonuse is claimed under
paragraph (f)(2) of this section. When requested by the Office, additional
specimens must be provided. The specimen must meet the requirements of
§ 2.56 of this chapter.
* * * * *
(i) Additional requirements for a collective mark. In addition to the
above requirements, a complete affidavit or declaration pertaining to a
collective mark must:
(1) State that the owner is exercising legitimate control over the use
of the mark in commerce; and
(2) State the nature of the owner's control over the use of the mark by
the members in the first affidavit or declaration filed under paragraph
(a) of this section.
(j) Additional requirements for a certification mark. In addition to the
above requirements, a complete affidavit or declaration pertaining to a
certification mark must:
(1) Include a copy of the certification standards specified in
§ 2.45(a)(4)(i)(B) of this chapter;
(i) Submitting certification standards for the first time. In the first
affidavit or declaration filed under paragraph (a) of this section, include
a copy of the certification standards; or
(ii) Certification standards submitted in prior filing. If the
certification standards in use at the time of filing the affidavit or
declaration have not changed since the date they were previously submitted
to the Office, include a statement to that effect; if the certification
standards in use at the time of filing the affidavit or declaration have
changed since the date they were previously submitted to the Office,
include a copy of the revised certification standards;
(2) State that the owner is exercising legitimate control over the use
of the mark in commerce; and
(3) Satisfy the requirements of § 2.45(a)(4)(i)(A) and (C) of this
chapter.
February 10, 2014 MICHELLE K. LEE
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director
United States Patent and Trademark Office
[1401 TMOG 138]
[1401 TMOG 138]