(437) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. 2003-T-010]
RIN 0651-AB45
Rules of Practice for Trademark-Related Filings Under the
Madrid Protocol Implementation Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
(Office) is adding new regulations to implement the Madrid Protocol
Implementation Act of 2002 (MPIA), and is amending existing regulation
both to implement the MPIA and to otherwise clarify and improve the
procedures for processing trademark applications and conducting
proceedings before the Trademark Trial and Appeal Board. The MPIA
provides that: The owner of a U.S. application or registration may seek
protection of its mark in any of the other 58 countries party to the
Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks (Madrid Protocol) by submitting a single
international application through the Office to the International
Bureau of the World Intellectual Property Organization (IB); and the
owner of an application or registration in a country party to the
Madrid Protocol may obtain an international registration from the IB
and request an extension of protection of its mark to the United
States.
DATES: Effective Date: November 2, 2003.
Applicability Dates: New rules added as part 7 of 37 CFR and
the amendments to rules in part 2 of 37 CFR shall apply to any
application for international registration filed on or after November
2, 2003, and any application for registration in the United States
under section 1, section 44 or section 66(a) of the Act filed on or
after November 2, 2003, except as noted below.
Drawing requirements under 2.52: Applicants with pending
applications filed prior to November 2, 2003, will not be required to
file amended drawings. However, applicants may voluntarily amend their
drawings to comply with the new standard character or color drawing
requirements. See discussion below of changes to 2.52. The Office
will consider voluntary amendments filed on or after November 2, 2003,
in accordance with standard procedures for processing of amendments.
Partial abandonment under 2.65(a): This rule as amended shall apply
to all Office actions issued on or after November 2, 2003, even if the
application was filed prior to that date. See discussion below of the
changes to 2.65.
Requests to extend the time to file an opposition under 2.102(c): If
a first request for an extension of time to oppose was filed before
November 2, 2003, the rules in effect on the filing date of that first
request will apply to the first request and any subsequent request
filed by the same potential opposer or one in privity with it. If a
first request for an extension of time to oppose is filed on or after
November 2, 2003, the amended regulation will apply to the first
request and any subsequent request filed by the same potential opposer
or one in privity with it.
Petitions to the Director under 2.146(i): For petitions filed on or
after May 2, 2004, petitioners will be held to the new six-month
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standard of diligence in monitoring the status of applications and
registrations. Petitions filed prior to May 2, 2004, will be reviewed
under the one-year diligence standard, even if the application was
filed on or after November 2, 2003. See the discussion below of changes
to 2.146(i).
FOR FURTHER INFORMATION CONTACT: Cheryl L. Black,
Office of the Commissioner for Trademarks, by telephone at (703)
308-8910, ext. 153, or by e-mail to cheryl.black@uspto.gov.
SUPPLEMENTARY INFORMATION: A Notice of Proposed Rule
Making was published in the Federal Register (68 FR 15119) on March 28,
2003. A public hearing was held on May 30, 2003.
Four organizations, two law firms, seven attorneys, one business and
three individuals submitted written comments. Two organizations and one
attorney testified at the oral hearing.
The Madrid Protocol Implementation Act of 2002, Public Law 107-273, 116
Stat. 1758, 1913-1921 (MPIA) amends the Trademark Act of 1946 to
implement the provisions of the Madrid Protocol in the United States.
The MPIA was enacted on November 2, 2002, and becomes effective on
November 2, 2003.
The Madrid Protocol and the Common Regulations Under the Madrid
Agreement Concerning the International Registration of Marks and the
Protocol Relating to that Agreement (April 1, 2002) (Common
Regulations) are available on the World Intellectual Property
Organization's (WIPO) Web site, currently at
http://www.wipo.int/madrid/en/. The Common Regulations are
the procedures agreed to by the parties to the Madrid Protocol
regarding the administration of the Madrid Protocol, pursuant to
Article 10(2)(iii).
References below to "the Act," "the Trademark Act," or "the
statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051, et seq.,
as amended by the MPIA. The "TMEP" referenced below is the
Trademark Manual of Examining Procedure (3rd ed. Rev. 2, May 2003).
Filings Under Madrid Protocol
Background
The Madrid Protocol provides a system for obtaining an
international registration. The IB maintains the system in accordance
with the guidelines set forth in the Common Regulations. To apply for
an international registration under the Madrid Protocol, an applicant
must be a national of, be domiciled in, or have a real and effective
business or commercial establishment in one of the countries that are
members of the Madrid Protocol (Contracting Parties). An international
application must be based on a trademark application or registration in
one of the Contracting Parties (basic application or basic
registration). The international application must be for the same mark
and include a list of goods and/or services identical to or narrower
than the list of goods and/or services in the basic application or
registration. The international application must designate one or more
Contracting Parties in which an extension of protection of the
international registration is sought.
The international application must be submitted through the trademark
office of the Contracting Party in which the basic application is
pending or basic registration is held (office of origin). The office of
origin must certify that the information in the international
application corresponds with the information in the basic application
or registration, and transmit the international application to the IB.
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The IB will review an international application to determine whether
the Madrid Protocol filing requirements have been met and the required
fees have been paid. If an international application is unacceptable,
the IB will notify both the applicant and the office of origin of the
"irregularity." If the Madrid Protocol requirements have been met
and the fees have been paid, the IB will immediately register the mark,
publish the international registration in the WIPO Gazette of
International Marks, send a certificate to the holder, and notify the
offices of the designated Contracting Parties in which an extension of
protection of the international registration is sought. Registration by
the IB does not mean that the mark is automatically granted protection
in the designated Contracting Parties.
The holder of an international registration may designate additional
Contracting Parties in a subsequent designation. A subsequent
designation is a request by the holder of an international registration
for an extension of protection of its international registration to
additional Contracting Parties. Each Contracting Party designated in an
international application or subsequent designation will examine the
request for extension of protection as a national application under its
laws, and if it complies with the requirements for registration, grant
protection of the mark in its country. A Contracting Party must notify
the IB of the refusal of a request for extension of protection within
the time limits set forth in Article 5(2) of the Madrid Protocol. If a
notification of refusal is not sent to the IB within the required time
limits, the Contracting Party must grant protection of the mark in its
country.
Discussion of Specific Rules Added or Changed
The Office is adding new rules setting forth the requirements
for submitting international applications and subsequent designations
through the Office for forwarding to the IB. The Office is also adding
new rules for processing requests for extension of protection of
international registrations to the United States, and changing current
regulations to bring the rules of practice in trademark cases into
conformance with the MPIA.
New Rules Added as Part 7
The Office is adding rules 7.1, 7.3, 7.4, 7.6, 7.7, 7.11, 7.12,
7.13, 7.14, 7.21, 7.22, 7.23, 7.24, 7.25, 7.26, 7.27, 7.28, 7.29, 7.30,
7.31, 7.36, 7.37, 7.38, 7.39, 7.40, and 7.41; and designating part 7 of
37 CFR as the rules of practice in filings pursuant to the Protocol
Relating to the Madrid Agreement Concerning the International
Registration of Marks.
Section 7.1 defines certain terms used in this part. Terms defined in
the MPIA are not included in the list of definitions in 7.1.
Section 7.3 requires that correspondence relating to international
applications and registrations be in English.
Section 7.4 states that correspondence submitted through the Trademark
Electronic Application System (TEAS) will be accorded the date and time
the complete transmission is received in the Office based on Eastern
Time.
Fees
Section 7.6 sets forth the fees required by the Office for
processing correspondence relating to international applications and
registrations under the Madrid Protocol. These fees must be paid in
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U.S. dollars at the time of submission.
The Office is charging fees for: (1) Reviewing and certifying an
international application; (2) transmitting a subsequent designation;
(3) transmitting a request to record an assignment or restriction
(usually a security interest), or the release of a restriction, of a
holder's right of disposal of an international registration; (4)
requesting a notice of replacement; and (5) filing an affidavit of use
in commerce or excusable nonuse for a mark in a registered extension of
protection to the United States.
In addition to the fees required by the Office, there are international
fees for processing international applications and registrations.
Section 7.7 sets forth the international fees that may be paid to the
IB through the Office in connection with international applications and
registrations, and the requirements and procedures for submitting those
fees through the Office. A schedule of the international fees is
currently posted on the WIPO Web site, available at
http://www.wipo.int/madrid/en/. An international applicant
or holder may pay the fees directly to the IB, or to the IB through the
Office. Fees paid directly to the IB must be paid in Swiss francs, and
fees paid through the Office must be paid in U.S. dollars.
Under 7.7(b), if an international applicant or holder pays the
international fees through the Office, payment must be made at the time
of submission by any of the acceptable payment methods set forth in
2.207 and 2.208. If the international fees are paid directly to the
IB using an acceptable form of payment established by the IB, the
international applicant or holder must include the IB account number
for debiting fees or the IB receipt number as proof of payment of fees
in its submission to the Office. The fee calculator and acceptable
methods for paying fees to the IB may currently be viewed on the WIPO
Web site at http://www.wipo.int/madrid/en/.
International Applications Originating From the United States
The requirements for granting a date of receipt to an
international application are set forth in 7.11(a). An international
application must identify at least one basic application or
registration. The international application may be based on more than
one U.S. application and/or registration, provided that the owner and
the mark are the same for each basic application or registration.
An international application must be submitted through TEAS. The Office
has developed a TEAS form for filing an application for international
registration that conforms to the official IB form created by WIPO.
TEAS will require the applicant to select between two different types
of forms, namely, a pre-populated form containing information from the
basic application or registration, or a free-text form. The applicant
can use the pre-populated form if: (1) The international application is
based on a single basic application or registration; and (2)
applicant's changes to the international application are limited to
narrowing the list of goods or services. For all other international
applications, the applicant must fill in all the fields in the free
text form.
Section 7.11(a)(3) requires a reproduction of the mark in the
international application that is the same as the mark in the basic
application or registration, and that meets the drawing requirements of
2.52. If the mark in the basic application or registration is
depicted in black and white and does not include a color claim, the
reproduction of the mark in the international application must be black
and white. If a mark is depicted in black and white in the basic
application or registration but there is a claim of color, the
international application must include both a black and white
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reproduction of the mark and a color reproduction of the mark. If the
mark in the basic application or registration is in color, the
reproduction of the mark in the international application must be in
color.
Under 7.11(a)(4) and 7.12, if color is claimed as a feature of the
mark, the same color claim must be made in the international
application. If color is not claimed as a feature of the mark in the
basic application or registration, the international application may
not include a claim of color.
Under 7.11(a)(5), if the basic application or registration includes
a description of the mark, the international application must include
the same description of the mark.
Under 7.11(a)(6), if the mark in the basic application or
registration is a three-dimensional mark, sound mark, collective mark
or certification mark, the international application must indicate the
type of mark.
Section 7.11(a)(7) requires a list of goods and/or services in the
international application that is identical to or narrower than the
list of goods and/or services in the basic application or registration,
and is classified according to the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes of
the Registration of Marks. An applicant may omit or revise goods and/or
services from the international application as long as the omission or
revision does not broaden the scope of the goods or services identified
in the basic application or registration.
The pre-populated form will include the list of goods/services in the
basic application or registration. The applicant may edit the list of
goods and/or services by either omitting particular goods or services
or revising the description of goods or services populated from the
basic application or registration. In the free text form, the applicant
must enter the goods/services manually. The applicant may omit goods or
services, or revise the list of goods/services. The list of goods and
services for each designated Contracting Party must be identical to or
narrower than the list of goods or services in the international
application.
Both the pre-populated form and the free-text form will also allow an
applicant to change the classification of goods and services in an
international application. If the goods or services in the basic
application or registration are classified in U.S. Classes A, B or 200
or entirely under the U.S. classification system, an applicant may want
to reclassify goods or services into international classes. Classes A,
B and 200 are not part of the international classification system under
the Nice Agreement. Failure to properly classify goods or services in
an international application according to the international
classification system under the Nice Agreement may result in an IB
notice of irregularity. The Office will issue an examination guide
regarding classification on or before November 2, 2003.
Under 7.11(a)(8), an international applicant must designate at least
one Contracting Party in which it seeks an extension of protection.
Under 7.11(a)(9), the international applicant must pay the U.S.
certification fee and the international fees (see 7.7) for all
classes and all designated Contracting Parties at the time of
submission.
Under section 61 of the Act, and 7.11(a)(10), an international
applicant must specify that applicant is a national of, is domiciled
in, or has a real and effective industrial or commercial establishment
in the United States. If the applicant is not a national of the United
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States and the applicant's address on the application is outside of the
United States, the applicant will be required to provide the address of
the U.S. domicile or establishment.
Section 7.13 sets forth the requirements for certifying and forwarding
an international application to the IB. Under 7.13(a), if an
international application meets the requirements of 7.11(a), the
Office will grant a date of receipt, certify that the information
contained in the international application corresponds to the basic
application or registration, and forward the international application
electronically to the IB.
The Office must certify and forward an international application to the
IB within two months of the date of receipt in the Office in order to
provide the applicant with an international registration date as of the
date of receipt of the international application in the Office. The
Office will automatically certify and forward to the IB all
international applications based on a single basic application or
registration, with no limitations on the goods/services and no color
claim, that meet the requirements of 7.11(a). Limited review by the
Madrid Processing Unit (MPU) is required for international applications
where the goods or services have been narrowed or a color drawing is
attached. International applications that are completed on free text
forms are reviewed by the MPU. The use of a fully automated filing
system expedites the processing of international applications because
information is either pre-populated from Office records or entered by
the applicant directly into the Office's automated systems, and
electronically reviewed for certification.
Section 7.13(b) states that if the Office cannot certify that the
information contained in the international application corresponds with
the information in the basic application or registration, the Office
will notify the applicant that the international application cannot be
certified. Any international fees (see 7.7) paid through the Office
will be refunded; however, the Office will not refund the certification
fee.
Correcting Irregularities in International Application - 7.14
The IB will notify both the international applicant and the
Office of any irregularities in an international application. Under
Rule 11 of the Common Regulations, the international applicant must
correct certain irregularities through the Office. Fees for correcting
irregularities in an international application must be paid directly to
the IB. All other irregularities requiring applicant's response may
either be submitted through the Office or filed directly at the IB.
Section 7.14(b) sets forth the types of irregularities that must be
corrected through the Office, and 7.14(e) sets forth the procedures
for responding to irregularities through the Office.
To be considered timely, responses to IB notices of irregularities must
be received by the IB before the end of the response period set forth
in the IB's notice. Receipt in the Office does not fulfill this
requirement.
Information about filing directly with the IB is available on the WIPO
Web site, currently at http://www.wipo.int/madrid/en/. The
applicant may contact the IB by mail to the World Intellectual Property
Organization, 34 chemin des Colombettes, PO Box 18, CH-1211 Geneva 20,
Switzerland; by telephone at 41 22 338 9111; by fax to 41 22 740 1429;
or by e-mail to intreg.mail@wipo.int.
Irregularities in Classification and Identification of Goods/Services
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Rules 12 and 13 of the Common Regulations provide that the IB
will not consider a response to irregularities in classification or
identification of goods and/or services unless the response is
submitted through the office of origin. Section 7.14(b) therefore
requires that an international applicant respond to irregularities in
classification and identification of goods and/or services through the
Office. Because the Office must certify that the goods or services in
an applicant's response are within the scope of the basic application
or registration at the time the response is filed, responses to
irregularities in the identification will be reviewed by the MPU.
If the goods or services in the basic application or registration have
been amended since the date the international application was submitted
to the Office, the goods and services in the response to the IB notice
must be within the scope of the amended goods and services. If the
response includes goods and services that exceed the scope of the goods
and services in the basic application or registration as amended, the
MPU will reject the response and notify the applicant. If there is time
remaining in the IB response period, the applicant may submit a
corrected response. If the goods and services in an applicant's
response do not exceed the scope of the goods and services in the basic
application or registration as amended, and the IB response period has
not expired, the MPU will certify the goods and services and forward
the response to the IB.
Fees To Correct Irregularities Must Be Paid Directly to the IB
Section 7.14(c) provides that fees for correcting
irregularities in an international application must be paid directly to
the IB. This is true even if the applicant is filing a response to
correct other irregularities through the Office. At this time, the
Office's automated system cannot process fees to correct irregularities
in an international application.
Other Irregularities Requiring Response From Applicant
Under 7.14(d), applicants may respond to all other
irregularities either through the Office in accordance with 7.14(e),
or directly at the IB. The Office will not respond to any
irregularities on behalf of an applicant. Except for an applicant's
response to irregularities in the identification of goods and services,
the Office will not review responses to IB notices of irregularities.
Procedures for Responding to IB Notices of Irregularities Through the
Office
To be considered timely, responses to IB notices of irregularities must
be received by the IB before the end of the response period set forth
in the IB's notice. Receipt in the Office does not fulfill the
requirement for timely submission to the IB.
Under 7.14(e), the Office requires that applicants use TEAS to
submit responses through the Office. Responses submitted through the
Office for forwarding to the IB should be submitted as soon as
possible, but at least one month before the end of the response
deadline set forth in the IB's notice. The Office will not process any
response submitted to the Office after the IB response deadline.
Subsequent Designations - 7.21
Section 64 of the Act and 7.21 permit the holder of an
international registration to submit a subsequent designation through
the Office, if: (1) The international registration is based on a U.S.
application or registration; and (2) the holder of the international
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registration is a national of, is domiciled in, or has a real and
effective industrial or commercial establishment in the United States.
The holder also has the option of filing a subsequent designation
directly with the IB.
Under 7.21, if a subsequent designation is submitted through the
Office, it must be submitted through TEAS and include the international
registration number, the name and address of the holder of the
international registration, one or more Contracting Parties in which an
extension of protection is sought, and a list of goods and/or services
that is identical to or narrower than the goods and/or services listed
in the international registration. The holder can omit or revise goods
and/or services from the subsequent designation as long as the omission
or revision does not broaden the scope of the goods or services
identified in the international registration. The holder must include
the U.S. transmittal fee and all subsequent designation fees (see
7.7) at the time of submission. The Office is not required to certify a
subsequent designation.
The IB will review a subsequent designation for compliance with Rule 24
of the Common Regulations before forwarding the request for extension
of protection to the designated Contracting Parties. If there are any
irregularities in the subsequent designation, the IB will notify both
the holder and the Office. The holder must file any responses to the
notice or irregularities directly with the IB. The Office will not
forward any responses to irregularities in a subsequent designation to
the IB, even if the subsequent designation was submitted through the
Office.
Recording Changes to International Registration
The IB shall record changes to international registrations
pursuant to Articles 9 and 9bis of the Madrid Protocol. Section
7.22 requires that all requests to record changes to an international
registration be filed at the IB, except in the limited circumstances in
which an assignment, or restriction of a holder's right of disposal of
an international registration or the release of such a restriction,
must be submitted through the Office, as set forth in 7.23 and
7.24. Section 10 of the Act and 37 CFR part 3 are not applicable to
such assignments or restrictions.
The Office will not take note of an assignment or restriction of a
holder's right of disposal of an international registration in its
records unless the IB notifies the Office that the assignment or
restriction has been recorded in the International Register. When the
IB sends notice of an assignment of an international registration with
an extension of protection to the United States, the MPU will update
the ownership information in the Trademark database and forward the IB
notice to the Assignment Services Division to update its automated
records. An assignment of an extension of protection that has not been
recorded at the IB will not be reflected in the Trademark database,
even if the assignment has been inadvertently recorded by the
Assignment Services Division.
Section 7.23 sets forth the limited circumstances in which a request to
record an assignment of an international registration may be submitted
through the Office. The Office will accept and forward to the IB a
request to record an assignment of an international registration by an
assignee who is a national of, is domiciled in or has a real and
effective commercial or industrial establishment in the U.S. only if
the assignee cannot obtain the assignor's signature for the request to
record the assignment and the request meets the requirements of
7.23.
Section 7.24 sets forth the limited circumstances in which a request to
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record a restriction of a holder's right of disposal of an
international registration, or the release of such a restriction, may
be submitted through the Office. Under 7.24, the Office will accept
for submission and forward to the IB a request to record a restriction
of a holder's right of disposal of an international registration
(usually a security interest), or the release of such a restriction, by
a party holding the restriction who is a national of, is domiciled in
or has a real and effective commercial or industrial establishment in
the U.S. only if: (1) (i) The restriction is the result of a court
order; or (ii) the restriction is the result of an agreement between
the holder of the international registration and the party restricting
the holder's right of disposal, and the signature of the holder of the
international registration cannot be obtained; (2) the party who
obtained the restriction is a national of, is domiciled in, or has a
real and effective industrial or commercial establishment in the United
States; and (3) the restriction or release applies to the holder's
right to dispose of the international registration in the United
States. The request must meet the requirements of 7.24(b). The
Office will charge a fee for transmitting a request to record an
assignment or restriction, or the release of a restriction, to the IB.
Requests for Extension of Protection to the United States
Under section 65 of the Act, the holder of an international
registration may request an extension of protection of the
international registration to the United States, provided the
international registration is not based on a U.S. application or
registration.
The holder may file with the IB a request for extension of protection
to the United States in either an international application or a
subsequent designation. Section 66(a) of the Act requires that a
request for extension of protection to the United States include a
declaration of bona fide intention to use the mark in commerce that the
United States Congress can regulate. The allegations in a verified
statement required by an international applicant or holder seeking an
extension of protection of an international registration to the United
States are set forth in 2.33(e). See discussion below of new
2.33(e). The IB will certify that the request for extension of
protection contains a properly signed declaration of bona fide
intention to use the mark in commerce when it forwards the request to
the Office. The declaration will remain part of the international
registration on file at the IB.
The IB will forward the request for extension of protection to the
Office electronically. A holder cannot file a request for extension of
protection to the United States directly with the Office.
Section 7.25 provides that for purposes of examination and opposition,
a request for an extension of protection to the United States will be
referred to as an application for registration under section 66(a) of
the Act; that references to "applications" and "registrations"
in 37 CFR part 2 include extensions of protection to the United States;
and that upon registration, an extension of protection will be referred
to as a "registration," a "registered extension of protection,"
or a "section 66(a) registration." With the exception of
2.130-2.131, 2.160-2.166, 2.168, 2.172, 2.173, 2.175 and 2.181-2.186,
all the sections in 37 CFR parts 2 and 10 apply to a request for
extension of protection to the United States.
Under 7.26, the filing date of a request for extension of protection
to the United States for purposes of examination in the Office is: (1)
The international registration date, if the request for extension of
protection to the United States was made in the international
application, or (2) the date the IB recorded the subsequent
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designation, if the request for extension of protection to the United
States was made in a subsequent designation. Under section 66(b) of the
Act, the filing date of the extension of protection will be considered
the date of constructive notice pursuant to section 7(c) of the Act.
Under section 67 of the Act and 7.27, the holder of an international
registration may claim priority under Article 4 of the Paris Convention
for the Protection of Industrial Property if: (1) The request for an
extension of protection contains a claim of priority; and (2) the
international registration date or the date of recordal of the
subsequent designation at the IB requesting an extension of protection
to the United States is no later than six months after the filing date
of the application that formed the basis of the claim of priority.
Replacement
Under Article 4bis of the Madrid Protocol, where a mark that is
the subject of a national or regional registration in the Office of a
Contracting Party is also the subject of an international registration
and both registrations are in the name of the same person, the
international registration is deemed to replace the national or
regional registration, without prejudice to any rights acquired by
virtue of the latter, provided that: (1) The protection resulting from
the international registration extends to that Contracting Party; (2)
all the goods and services listed in the national or regional
registration are also listed in the international registration with
respect to that Contracting Party; and (3) the extension of protection
takes effect after the date of the national or regional registration.
Under section 74 of the Act and 7.28(a), a registered extension of
protection to the United States affords the same rights as a previously
issued U.S. registration if: (1) Both registrations are owned by the
same person and identify the same mark; and (2) the goods/services in
the previously issued U.S. registration are covered by the registered
extension of protection. Under 7.28(b), the holder of a registered
extension of protection may request that the Office note in its records
replacement of the earlier U.S. registration by the extension of
protection. The Office will require a fee to note replacement.
Under 7.29, the replaced U.S. registration will remain in force,
unless cancelled, expired or surrendered, as long as the owner files
affidavits or declarations of use or excusable nonuse under section 8
of the Act and renews the registration under section 9 of the Act.
Effect of Cancellation or Expiration of InternationalRegistration on
Extension of Protection
Under section 70 of the Act and 7.30, the Office will cancel
a pending or registered extension of protection to the United States,
in whole or in part, if the IB notifies the Office of the cancellation
or expiration of the corresponding international registration, in whole
or in part.
Transformation
Under section 70(c) of the Act and 7.31, if an international
registration is cancelled, in whole or in part, by the IB at the
request of the office of origin under Article 6(4) of the Madrid
Protocol (due to the cancellation or expiration of the basic
application or registration), the holder of the international
registration may file a request to transform the corresponding
extension of protection to the United States into an application under
sections 1 and/or 44 of the Act. If only a portion of the cancelled
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goods and services in the international registration pertains to the
extension of protection to the United States, the Office will not
cancel the entire extension of protection, but will instead delete the
cancelled goods or services from the extension of protection. The
holder of the extension of protection may request transformation only
as to the cancelled goods or services.
The requirements for transformation are set forth in 7.31(a). The
holder of an international registration must file the request for
transformation through TEAS within three months of the date of
cancellation of the international registration. The request must
include an application filing fee for at least one class of goods and/
or services.
Under 7.31(b), if a request for transformation contains all the
elements in 7.31(a), the cancelled extension of protection to the
United States will be transformed into an application under sections 1
and/or 44 of the Act. The application will be accorded the same filing
date and same priority (if any) as the cancelled extension of
protection to the United States. The application resulting from the
transformation will be examined as a new application under part 2 and,
if approved for publication, published for opposition. The application
must meet all the requirements of the Act and rules for an application
under section 1 and/or section 44 of the Act, as appropriate.
If the holder does not meet the requirements of 7.31(a), the Office
will not process the request for transformation.
Maintaining an Extension of Protection to the United States
Section 71 of the Act and 7.36 require the holder of an
international registration with a registered extension of protection to
the United States to file an affidavit or declaration of use in
commerce or excusable nonuse during the following time periods: (1)
Between the fifth and sixth year after the date of registration in the
United States; and (2) within the six-month period before the end of
every ten-year period after the date of registration in the United
States, or upon payment of a grace period surcharge, within the three-
month grace period immediately following.
There is no requirement in the MPIA that the holder of a registered
extension of protection to the United States renew the extension of
protection in the Office under section 9 of the Act. Renewal of
international registrations is governed by Article 7 of the Madrid
Protocol and Rules 29-31 of the Common Regulations. The term of an
international registration is ten years, and it may be renewed for ten
years upon payment of the renewal fee.
Under 7.41, renewal of an international registration and its
extension of protection to the United States must be made directly with
the IB. A request for renewal of an international registration cannot
be submitted through the Office. If an international registration is
not renewed at the IB, the registration will lapse, and the IB will
notify the Office. Pursuant to section 70(b) of the Act, the Office
will cancel the corresponding extension of protection to the United
States.
Comments to Part 7 Rules
Comment: One comment voiced a concern that people
who reside in the West will be disadvantaged by the Office's adherence
to Eastern Time for according date and time of receipt of
correspondence under 7.4.
Response: The Office currently uses Eastern Time to accord a
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date and time of receipt to trademark-related correspondence, even when
documents are submitted by customers on the West Coast and overseas.
Under the current practice, the Office is able to consistently accord a
receipt date to the thousands of documents it receives daily, without
regard to the time zone in which the correspondence originated. This
ensures effective and expeditious processing of incoming
correspondence. Applying the same practice to correspondence related to
international applications and registrations will provide continuity to
the incoming correspondence process.
Comment: One comment requested an explanation of the
Office's fees for transmitting IB filings submitted electronically by
applicants and the associated burden on the Office in comparison with
the fees and associated burden on other national trademark offices.
Response: The fees for processing IB filings under the
Madrid Protocol reflect not only the "handling fee" but also the
cost of redesigning the Office's automated systems so that it can
receive documents from and transmit documents to the IB, and maintain
electronic copies of documents sent to and received from the IB; the
cost of reprogramming and expanding TEAS to add new forms for filings
related to the Madrid Protocol; and the expense associated with
establishing, staffing and operating a new business unit, the Madrid
Processing Unit (MPU). Each Contracting Party sets their own
transmittal fees. The Office does not provide information about other
national trademark offices.
Comment: Two comments opposed mandatory electronic filing
and requested that the Office provide an alternative to electronic
filing.
Response: It is imperative that the Office process
international applications expeditiously because the Office must
certify and forward an international application meeting the
requirements of 7.11 to the IB within two months of the date of
receipt in the Office in order to provide the applicant with an
international registration date as of the date of receipt of the
international application in the Office. Electronic filing saves the
Office time in processing international applications and provides
greater assurance to customers and the Office that the information
contained in the electronic application is accurate. The pre-populated
form takes information directly from the Office records, and the
information entered by an applicant in the free text form is entered
directly into the Office's automated system. The use of a completely
automated system eliminates the additional time and work steps involved
in scanning a paper application into electronic form and reduces the
possibility of the paper application becoming lost within the Office.
Comment: Four comments requested that the Office eliminate
the requirement for an address that is identical to the address in the
basic application or registration.
Response: The Office has eliminated that requirement.
Comment: Two comments suggested that the Office adopt a
mechanism to link the trademark automated records with the assignment
automated records to avoid ownership discrepancies in the Office
records.
Response: The Office has created an interface between the
automated system in the Assignment Services Division of the Office and
the Trademark database that will enable the Office to update ownership
information in the Trademark database when an assignment of the entire
interest and goodwill, a name change or a merger has been recorded in
the Assignment Services Division. This change in practice will apply
only to documents recorded on and after the date on which the new
procedures are implemented. The Office will implement these new
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procedures on or before November 2, 2003. A notice with detailed
guidelines will be published in the Official Gazette and posted on the
Office's Web site prior to November 2, 2003.
Comment: One comment asked if the TEAS form will permit an
international applicant to authorize some charges to a U.S. deposit
account and other charges to an IB account in a single filing.
Response: The TEAS form is designed to permit an
international applicant to authorize some charges to a U.S. deposit
account and other charges to an IB account in a single filing.
Comment: Two comments requested that the Office treat
international applications that do not meet the requirements of
7.11(a) as informal and allow applicants an opportunity to correct any
deficiencies.
Response: Setting up a docketing system for informal
international applications is unnecessary and inefficient. Since an
international application is filed in "real" time through TEAS, if
required information is omitted from an international application, the
applicant will immediately receive a TEAS error message. If the Office
cannot certify an international application, the MPU will send an
e-mail message. In either case, the applicant may immediately re-file
the international application with the correct information through
TEAS.
Comment: One comment suggested that 7.14 identify the
irregularities that the Office must correct under the Common
Regulations.
Response: The suggestion has not been adopted. The
irregularities that the Office must remedy are set forth in Rule 11(4)
of the Common Regulations, and are not repeated in part 7 of these
rules.
Comment: One comment requested that the Office change the
applicant's deadline for submitting responses to IB notices of
irregularities through TEAS from one month to seven days prior to the
IB deadline.
Response: The one-month response period set forth in
7.14(e) is a suggestion, not a deadline. Only responses to correct
irregularities in classification and identification of goods and
services must be submitted through the Office. Early submission is
encouraged to allow the Office sufficient time to process responses to
irregularities in classification and identification of goods and/or
services through the Office. Fees for correcting irregularities must be
paid directly to the IB. All other responses to correct irregularities
can be filed directly at the IB or submitted through the Office for
forwarding to the IB. See discussion above of 7.14.
Comment: One comment stated that the Office should be
willing to assist international applicants in resolving classification
or identification issues raised by the IB.
Response: The IB will propose changes to the identification
and classification of goods and services in its notice of
irregularities concerning goods and services. Because the final
decision on classification and identification for an international
application rests with the IB, the Office recommends that applicants
adopt suggestions offered by the IB, if accurate.
Comment: One comment requested that the Office treat
deficient requests to record an assignment or restriction (see
7.23 and 7.24) as informal and allow the filer an opportunity to
correct deficiencies within a reasonable time.
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Response: Setting up a docketing system for deficient
requests is unnecessary and inefficient. If the request is deficient,
the Office will inform the filer of the deficiency in an e-mail
message. The applicant/holder will have the opportunity to immediately
re-file.
Comment: One comment stated that noting replacement of an
extension of protection before registration could cause confusion as to
the effect of such notice.
Response: The Office has revised 7.28. Under Article 4bis
of the Madrid Protocol and section 74 of the Act, replacement does not
take effect until the extension of protection matures into a
registration. Therefore, the Office will not note replacement of an
extension of protection unless the mark has registered.
Comment: Two comments stated that the grace period for
affidavits of use under 7.36 should be changed from three months to
six months.
Response: The grace period for filing an affidavit of use of
a registered extension of protection is set forth in section 71 of the
Act and will require a statutory amendment.
Amendment to Part 2 Rules
In addition to the new rules added as part 7 of 37 CFR, the
Office is amending rules and adding new rules to part 2 of 37 CFR to
bring the rules of practice in trademark cases into conformance with
the MPIA, to set forth the requirements for examination and
registration of extensions of protection to the United States, as well
as proceedings before the Trademark Trial and Appeal Board relating to
them, and to otherwise clarify and improve the procedures for
processing trademark applications and conducting proceedings before the
Trademark Trial and Appeal Board.
The Office is amending rules 2.2, 2.11, 2.17, 2.18, 2.19, 2.21, 2.33,
2.34, 2.35, 2.37, 2.47, 2.51, 2.52, 2.56, 2.65, 2.66, 2.73, 2.75, 2.84,
2.88, 2.101, 2.102, 2.104, 2.105, 2.107, 2.111, 2.112, 2.113, 2.118,
2.121, 2.123, 2.127, 2.128, 2.130, 2.131, 2.142, 2.145, 2.146, 2.151,
2.161, and 2.171; and adding rules 2.53, 2.54, and 2.126.
The Office is amending 2.2 to add definitions of "ESTTA"
(Electronic System for Trademark Trials and Appeals) and
"international application."
The Office is revising 2.11 and its heading to indicate that
representation before the Office is governed by 37 CFR 10.14. It is
redundant to have provisions governing representation before the Office
in both parts 2 and 10.
The Office is rewording 2.17(b) by adding a reference to
10.14(b), and rewording 2.17(a) and (c) by replacing "paper"
with "document."
The Office is amending 2.18 to clarify procedures for establishing a
correspondence address in trademark cases. The amendment does not
change current practice.
The Office is amending 2.19(a) to clarify procedures for sending
correspondence after a power of attorney is revoked, and amending
2.19(b) to indicate that the procedures for permissive withdrawal of an
attorney are governed by 10.40.
The Office is amending 2.21(a) to indicate that 2.21 sets
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forth the minimum filing requirements only for applications under sections
1 and 44 of the Act. The filing date of an application under section
66(a) of the Act is governed by section 66(b) of the Act and 7.26.
Section 2.33(d)(1) is amended to delete the requirement that a party
who signs a trademark document electronically print, sign, date and
maintain a paper copy of the electronic submission. It is burdensome
and inefficient to require parties who file electronically to maintain
both paper and electronic records of the filings.
The Office is also amending 2.33 by adding paragraph (e), setting
forth the requirements for a verified statement for an application
under section 66(a) of the Act, and stating that the verified statement
is part of the international registration on file at the IB.
The Office is removing 2.34(a)(1)(v), 2.34(a)(2)(ii),
2.34(a)(3)(iv) and 2.34(a)(4)(iv), which state that an application may
list more than one item of goods or more than one service, provided
that the applicant has used or has a bona fide intention to use the
mark in commerce on or in connection with all the specified goods or
services. This is stated in 2.32(a)(6), 2.33(b)(1) and
2.33(b)(2), and it is unnecessary to repeat it in 2.34.
The Office is amending 2.34(a)(4)(i)(A) to require that an
application based on section 44(d) of the Act specify the serial number
of the foreign application. This incorporates a requirement of Article
4(D)(5) of the Paris Convention, and codifies current practice, as
stated in TMEP 1003.
The Office is adding a new 2.34(a)(5), setting forth a request for
extension of protection of an international registration under section
66(a) of the Act as a fifth basis for filing a trademark application.
The Office is revising 2.34(b) to provide that more than one basis
can be claimed only in an application under section 1 or 44 of the Act,
and that a basis under section 66(a) of the Act cannot be combined with
any other basis.
The Office is revising 2.35(a) to state that in an application under
section 66(a) of the Act, the applicant may not add, substitute or
delete a basis, unless the applicant meets the requirements for
transformation under section 70(c) of the Act and 7.31.
The Office is revising 2.35(b) to clarify that the requirements for
adding, substituting or deleting a basis apply only to applications
under sections 1 and 44 of the Act. This does not change current
practice.
The Office is redesignating 2.35(c) through 2.35(h) as 2.35(b)(3)
through 2.35(b)(8).
The Office is amending 2.37(b) to delete the requirement for a
description of a mark that has color. The requirement for a description
of color for marks where color is claimed as a feature of the mark is
already set forth in 2.52, and it is unnecessary to repeat the
requirement in 2.37.
The Office is amending 2.47 to indicate that an application under
section 66(a) of the Act is not eligible for registration on the
Supplemental Register. Section 68(a)(4) of the Act provides that
registration of an extension of protection of an international
registration shall be refused to any mark not eligible for registration
on the Principal Register.
The Office is rewording 2.51 to simplify the rule and to add a
provision that, in an application under section 66(a) of the Act, the
drawing of the mark must be a substantially exact representation of the
mark that appears in the international registration.
The Office is revising 2.52 to clarify the types of drawings and
format for drawings. There are two types of drawings: (1) Standard
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character drawings; and (2) special form drawings. Currently the rules
refer to "typed drawings." The Office is using the term "standard
character" in the amended rules instead of the term "typed"
because this is the term used for international applications under the
Madrid Protocol. Section 2.52(a) sets forth the requirements for a
standard character drawing, and 2.52(b) sets forth the requirements
for a special form drawing.
Section 2.52(a) permits an applicant to submit a standard character
drawing, if the applicant seeks to register words, letters, and/or
numbers without claim to any particular font style, size, or color, and
the mark does not include a design element. Only Latin characters,
Roman or Arabic numerals and common punctuation and diacritical marks
may be used in a standard character drawing. The Office has created a
chart of acceptable characters that may be included in a standard
character drawing. The Office's standard characters set is attached as
an appendix to this notice and will be published on the Office's Web
site and linked to TEAS forms.
A standard character drawing does not have to display the mark in all
upper case letters, but may display the mark in any font style. To
avoid any confusion as to whether an applicant is seeking registration
of a mark in standard characters or in the particular font style
depicted in the drawing, 2.52(a)(1) requires an applicant seeking
registration of a mark in standard characters to submit a statement
that the mark is in standard characters and that no claim is made to
any particular font style, size, or color. If a drawing displays a mark
in all capital letters or includes the wording "typed drawing," the
Office will treat the drawing as a standard character drawing and the
examining attorney will amend the application to include a standard
characters statement by Examiner's Amendment. No prior authorization
from the applicant is required for this type of Examiner's Amendment.
If it is unclear whether the drawing is a standard character drawing or
a special form drawing, the examining attorney will require the
applicant to clarify the type of drawing during examination.
Section 2.52(b) requires a special form drawing if an applicant seeks
to register a design, a mark that contains color, or a mark comprised
of words, letters and/or numbers in a particular font style or size.
Section 2.52(b)(1) requires that if a mark includes color, the drawing
must show the mark in color and the applicant must claim color as a
feature of the mark, name the color(s) and describe where the color(s)
appear in the mark.
Currently, the Office does not accept color drawings. Under the current
rules, to show color in a mark, an applicant must submit a black and
white drawing, with a statement identifying the color(s) and describing
where they appear in the mark. Alternatively, an applicant may show
color by using the lining chart set forth in TMEP 807.09(b).
Effective November 2, 2003, the Office will accept color drawings, and
will require that applicants whose marks include color submit a drawing
that shows color. The Office will no longer accept black and white
drawings with a color claim, or drawings that are "lined for
color." Under 2.52(b)(1), if color is not claimed as a feature of
the mark, the applicant must submit a black and white drawing. This is
consistent with the requirements for international applications under
the Madrid Protocol.
The new requirements under 2.52(b)(1) do not prohibit the use of
stippling in a black and white drawing. The Office will continue to
process drawings with stippling as black and white drawings. However,
if shading in a mark produces gray tones or gray is a feature of the
mark, the Office will process the drawing as a color drawing and
require a color claim.
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The Office is adding 2.53, setting forth additional requirements for
drawings filed through TEAS, and 2.54, setting forth additional
requirements for drawings submitted on paper.
Section 2.53(a) requires an applicant submitting a standard character
drawing to type the mark in the appropriate field on the TEAS form or
attach a digitized image of the mark that meets the requirements of
2.53(c). If the applicant enters the mark in the appropriate text field
on the TEAS form and the standard characters in the applicant's mark
are all included in the Office's standard character set (see Appendix),
the Office will create a digitized image of the mark in .jpg format and
attach the image to the TEAS submission. If the applicant enters a mark
that includes characters not in the Office's standard character set, an
error message will appear. The applicant will then be required to
attach a digitized image of the mark that meets the requirements of
2.53(c).
Section 2.53(b) requires an applicant filing a special form drawing to
attach to its TEAS submission a digitized image of the mark that meets
the requirements of 2.53(c).
Section 2.53(c) requires a digitized image of the mark that is in .jpg
format and scanned at no less than 300 dots per inch and no more than
350 dots per inch with a length and width of no less than 250 pixels
and no more than 944 pixels. The image must be clear and produce a high
quality image when copied. These requirements are necessary to ensure
that the Office database contains a clear and accurate reproduction of
the mark and meets the 8 cm by 8 cm size limit that is required for an
international application.
The Office is adding 2.54, setting forth the requirements for a
paper drawing. These requirements are necessary to ensure that the
Office receives an image that can be scanned into its database without
losing clarity.
The Office is amending 2.56(d)(4) to require that a specimen
transmitted electronically be a digitized image in .jpg format.
The Office is amending 2.65(a) to add a statement that if a refusal
or requirement is expressly limited to only certain goods and/or
services and the applicant fails to file a complete response to the
refusal or requirement, the application shall be abandoned only as to
those particular goods and/or services. This is a change in practice.
Currently, failure to respond to a refusal that pertains to fewer than
all the goods and/or services, or fewer than all the classes, will
result in abandonment of the entire application. See TMEP 1403.05.
This change in practice will result in fewer abandoned applications and
comports with sections 68(c) and 69(a) of the Act, which provide that
an application under section 66(a) of the Act is automatically
protected with respect to any goods or services for which the Office
has not timely notified the IB of a refusal.
Proposed 2.66(a) required an applicant to file a petition to revive
an abandoned application based on unintentional delay within two months
of the mailing date of the notice of abandonment. The proposed rule
removed 2.66(a)(2), which provides that such a petition may be filed
within two months of actual knowledge of the abandonment if the
applicant did not receive the notice of abandonment and the applicant
was diligent in checking the status of the application. This change in
practice was proposed to improve the accuracy and integrity of the
Office database, to prevent harm to third parties who have searched
Office records, and to prevent the loss of international registrations
due to the abandonment of the basic application.
The strict time limits imposed by Article 5(2) of the Madrid Protocol
for issuing refusals of requests for extension of protection of
international registrations to the United States increase the
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importance of the accuracy and integrity of the Office database.
Moreover, because of the dependency of an international registration on
a basic application under Article 6 of the Madrid Protocol, filing a
petition to revive an abandoned application that serves as the basis of
an international registration, more than two months after the date of
abandonment may result in the loss of the international registration.
If the basic application is abandoned, and a petition to revive is not
filed within two months of the mailing date of the notice of
abandonment, the Office will notify the IB of the abandonment of the
application. The IB will then cancel the international registration
that was based on the U.S. application. Once the IB cancels an
international registration, it cannot be revived, even if the basic
application is revived.
However, in view of several comments objecting to the proposed
amendment, the Office has reconsidered this proposed change and is not
removing 2.66(a)(2). Instead, the Office is revising 2.66(a)(2)
to require that an applicant, who files a petition to revive within two
months of actual knowledge of the abandonment of the application and
who did not receive a notice of abandonment of the application, must
have been diligent in checking the status of the application every six
months from the filing date of the application to the issuance of a
registration in accordance with 2.146(i).
The Office is not adopting proposed 2.72(d), which would have
provided that in an application under section 66(a) of the Act, the
applicant could amend the description or drawing of the mark if the
proposed amendment does not materially alter the mark. The Madrid
Protocol and the Common Regulations do not permit the amendment of a
mark in an international registration. If the holder of the
international registration wants to change the mark in any way, even
slightly, the holder must file a new international application. See the
IB's Guide to International Registration, Para. B.II.69.02 (2002).
Because an application under section 66(a) of the Act is a request to
extend protection of the mark in an international registration to the
United States, the Office will not permit any amendment to the mark in
a section 66(a) application.
Section 2.73 sets forth the requirements for amendment of an
application to recite concurrent use under section 2(d) of the Act. The
Office is amending 2.73(a) to add references to applications under
sections 44 and 66(a) of the Act.
The Office is adding a new 2.75(c), stating that in an application
under section 66(a) of the Act, the applicant may not amend the
application to the Supplemental Register. As noted above, section
68(a)(4) of the Act provides that registration of an extension of
protection of an international registration shall be refused to any
mark not eligible for registration on the Principal Register.
The Office is revising 2.84(a) and (b) to add references to the new
filing basis under section 66(a) of the Act. The provisions with
respect to requesting jurisdiction over published section 66(a)
applications are similar to those in applications under sections 1(a)
and 44 of the Act. However, when deciding whether to grant requests for
jurisdiction of section 66(a) applications, the Director must also
consider the strict time limits for notifying the IB of a refusal of an
application under section 66(a) of the Act, set forth in Article 5(2)
of the Madrid Protocol and section 68(c) of the Act.
Section 2.88(i)(3) is amended to correct a cross-reference.
The Office is amending 2.101(a), 2.111(a), 2.118 and 2.145(c)(4)
to refer to the United States Patent and Trademark Office as Office.
The Office is amending 2.101(b) to substitute "person" for
"entity" to track the statutory language; to make the rule gender
neutral; to clarify the definitions of "attorney" and "other
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authorized representative" by reference to 10.1(c) and 10.14(b),
respectively; to clarify that an opposition must be signed; and to
indicate that electronic signatures are required for electronically
filed oppositions.
The Office is adding a new 2.101(b)(1) and a new 2.101(b)(2)
stating that an opposition to an application based on section 1 or 44
of the Act must be filed either on paper or electronically through
ESTTA, but that an opposition to an application based on section 66(a)
of the Act must be filed only through ESTTA.
The Office is revising 2.101(d)(1) through 2.101(d)(3) and adding
new 2.101(d)(3)(i) through 2.101(d)(3)(iii) to indicate that the
Office will not accept an opposition submitted through ESTTA that does
not include fees to cover all named party opposers and all classes
opposed; and that the Office will not institute an opposition
proceeding if an opposition submitted on paper does not include a fee
sufficient to pay for one person to oppose the registration of a mark
in at least one class. Prior to instituting an opposition, the Board
will no longer correspond with an opposer in an opposition submitted on
paper to permit submission of additional fees or designation of party
opposers and/or classes where an opposition is submitted with
insufficient fees to pay for opposition by all party opposers and/or in
all classes. The amended regulation explains how the Office will apply
a fee accompanying a paper submission that is insufficient to cover all
classes and/or to cover all party opposers. The Board will notify
opposer when the opposition is instituted and will indicate in the
notification the opposers and classes opposed, i.e., for which the
required fees were submitted.
The Office is amending 2.102(a) to make the rule gender neutral; to
clarify the definitions of "attorney" and "authorized
representative" by reference to 10.1(c) and 10.14(b),
respectively; to clarify that a request to extend the time for filing
an opposition must be signed; and to indicate that electronic
signatures are required for electronically filed requests to extend the
time for filing oppositions.
The Office is adding a new 2.102(a)(1) and a new 2.102(a)(2)
stating that a written request to extend the time for filing an
opposition to an application based on section 1 or 44 of the Act must
be filed either on paper or electronically through ESTTA, but stating
that a request to extend the time for filing an opposition to an
application based on section 66(a) of the Act must be filed only
through ESTTA.
The Office is revising 2.102(c) to set out the time frames for
extensions of time to oppose and to indicate that the Trademark Trial
and Appeal Board will no longer extend a potential opposer's time to
file an opposition beyond 180 days from the date the mark is published
for opposition. The Office is adding 2.102(c)(1), (2) and (3) to
state the requirements concerning the filing of permitted requests to
extend the time for filing an opposition.
The Office is removing 2.102(d), which requires submission of
extension requests in triplicate.
The Office is revising 2.104(a) to remove the requirement that a
duplicate copy of the opposition, including exhibits, be filed with an
opposition.
The Office is rewording the heading for 2.105 to specify that
notification of opposition proceedings is to the parties.
The Office is revising 2.105 to clarify the definitions of
"attorney" and "authorized representative" by reference to
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10.1(c) and 10.14(b), respectively; and to indicate that, if no
attorney or other authorized representative is appointed, notification
will be sent to a party's domestic representative, or, if there is no
domestic representative, notification will be sent to the party.
The Office is redesignating 2.107 as 2.107(a); and revising it to
limit this paragraph to oppositions against an application filed under
section 1 or 44 of the Act; and to incorporate in the rule the existing
Board practice which prohibits an opposer in a proceeding against an
application filed under section 1 or 44 of the Act from adding to the
goods or services in an opposition after the period for filing the
opposition has closed.
The Office is adding a new 2.107(b) to state that pleadings in an
opposition proceeding against an application filed under section 66(a)
of the Act may be amended in the same manner and to the same extent as
in a civil action in a United States district court; except that, once
filed, such opposition may not be amended to add to the goods or
services opposed, or to add to the grounds for opposition. Thus,
opposer may not add an entirely new ground for opposition or add an
additional claimed registration to a previously stated section 2(d)
ground. An opposer may make amendments to grounds asserted in the
notice of opposition, for example, for clarification.
The Office is revising 2.111(b) to substitute "person" for
"entity" to track the statutory language; to make the rule gender
neutral; to clarify the definitions of "attorney" and "authorized
representative" by reference to 10.1(c) and 10.14(b),
respectively; to clarify that a petition for cancellation must be
signed; and to indicate that electronic signatures are required for
electronically filed petitions for cancellation.
The Office is revising 2.111(c) to divide it into four paragraphs;
to state that the Office will not accept a petition for cancellation
submitted through ESTTA that does not include fees to cover all named
party petitioners and all classes; that the Office will not institute a
cancellation proceeding if a petition for cancellation submitted on
paper does not include a fee sufficient to pay for one person for a
petition for cancellation against at least one class; and that prior to
instituting a cancellation proceeding, the Office will no longer
correspond with the petitioner named in a petition for cancellation
submitted on paper to permit submission of additional fees or
designation of party petitioners and/or classes where a petition for
cancellation is submitted with insufficient fees to pay for
cancellation by all party petitioners and/or in all classes. The
revision explains how the Office will apply a fee accompanying a paper
submission that is insufficient to cover all classes and/or to cover
all party petitioners.
The Office is amending 2.112(a) to make the rule gender neutral and
to remove the requirement that a duplicate copy of the petition for
cancellation, including exhibits, be filed with the petition for
cancellation.
The Office is rewording the heading for 2.113 to specify that
notification of cancellation proceedings is to the parties.
The Office is revising 2.113 to divide it into paragraphs (a), (b),
(c) and (d) for clarity; to clarify the definitions of "attorney"
and "authorized representative" by reference to 10.1(c) and
10.14(b), respectively; and to indicate that, if no attorney or other
authorized representative is appointed by a party, notification will be
sent to that party's domestic representative, or, if there is no
domestic representative for that party, notification will be sent to
the party.
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The Office is amending 2.118 to delete reference to a party residing
abroad and his representative in the United States in order to clarify
that when any notice sent by the Office to a registrant is returned to
the Office, notice may be given by publication in the Official Gazette,
regardless of whether that registrant resides in the United States or
elsewhere.
The Office is amending 2.121(d) to eliminate the requirement for
multiple copies of a stipulated/consent motion to extend the discovery
or testimony periods in view of the fact that the Board is no longer
stamping copies as "approved" and returning the copies to the
parties.
The Office is amending 2.123(g)(1) to require that depositions be in
written form, but to delete reference to specific requirements that may
vary depending upon the media used for submission. Requirements for
submissions are specified in 2.126.
The Office is adding new 2.126, entitled "Form of submissions to
the Trademark Trial and Appeal Board," which includes paragraphs (a)
through (d). Paragraphs (a) through (c) provide that submissions may be
made to the Board on paper, CD-ROM, or electronically, as permitted by
the rules contained in this part or Board practice; and specify the
requirements for each type of submission. Paragraph (d) specifies the
requirements for making a submission to the Board that is confidential
in whole or in part.
The Office is amending 2.127(a) to delete the specifications for
filing on paper a brief in support of, or response to, a motion,
referring instead to 2.126.
The Office is amending 2.128(b) to require that briefs be in written
form and to delete the specifications for filing a brief on paper,
referring instead to 2.126.
The Office is amending both the heading and the body of 2.130 to
change "Examiner of Trademarks" to "trademark examining
attorney." The Office is revising 2.130 to provide that during an
inter partes proceeding, only applications under section 1 or section
44 of the Act may be remanded, at the request of the trademark
examining attorney, for consideration of facts which appear to render
the mark unregistrable.
The Office is amending 2.131 to change the term "examiner" to
"trademark examining attorney" and to limit the applicability of
this section to inter partes proceedings involving applications under
sections 1 and 44 of the Act.
The Office is revising 2.142(a) and (b)(2) to state that notices of
appeal and briefs must be filed in written form, as prescribed in
2.126, and to delete the specifications for filing a brief on paper.
The Office is amending 2.145(b)(3) to indicate that notices of
appeal to the U.S. Court of Appeals for the Federal Circuit should be
sent to the Office of the General Counsel, with a duplicate copy
addressed to the Board.
The Office is amending 2.145(c)(3) to indicate that any adverse
party to an appeal taken to the U.S. Court of Appeals for the Federal
Circuit by a defeated party in an inter partes proceeding who files a
notice with the Office as provided in section 21(b) of the Act, must
address that notice to the Office of the General Counsel.
The Office is amending 2.145(c)(4) to indicate that, in order to
avoid premature termination of a Board proceeding, a party who
commences a civil action, pursuant to section 21(b) of the Act, must
file written notice thereof at the Trademark Trial and Appeal Board.
The Office is amending 2.146(c) to delete reference to a petition to
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revive as an example of a situation where an affidavit or declaration
is required in support of a petition. This is a technical correction to
the rule. Effective October 30, 1999, 2.66 was amended to delete the
requirement for an affidavit or declaration in a petition to revive
based on unintentional delay. An unverified statement is sufficient.
See notices at 64 FR 48900 (Sept. 8, 1999) and 1226 TMOG 103 (Sept. 28,
1999). However, 2.146(c) still requires a verified statement in
other situations where facts are to be proven on petition. For example,
if the petition arises from the loss or misplacement of a document
submitted to the Office, it should be accompanied by the affidavit or
declaration of the person who mailed the document, attesting to the
date of submission and identifying the document filed with the petition
as a true copy of the document previously filed. TMEP 1705.03.
The Office is amending 2.146(i) to change the standard for a showing
of due diligence for petitions in which the petitioner seeks to
reactivate an application or registration that was abandoned, cancelled
or expired due to the loss or mishandling of papers. Currently, the
rule requires that to be considered diligent, petitioners must check
the status of pending matters within one year of the last filing or
receipt of a notice from the Office for which further action by the
Office is expected. The Office is shortening the time period from one
year to six months. A showing of due diligence will require that a
petitioner check the status of a pending application every six months
between the filing date of the application and issuance of a
registration; check the status of a registration every six months after
filing an affidavit of use or excusable nonuse under section 8 or 71 of
the Act, or a renewal application under section 9 of the Act, until the
petitioner receives notice that the affidavit or renewal application
has been accepted; and promptly request corrective action where
necessary.
Third parties may be harmed by the removal and later reinsertion of an
application or registration in the Office database. Hundreds of
petitions are filed each month to reinstate applications and
registrations. To minimize this problem, the Office is adopting
stricter time limits for filing petitions to revive or reinstate
abandoned applications and cancelled or expired registrations.
The Office is revising 2.151 to add a reference to section 71 of the
Act, which requires periodic affidavits of use or excusable nonuse to
maintain a registration based on an extension of protection of an
international registration.
The Office is revising 2.161(g)(2) and adding paragraph (g)(3),
stating that an audio or video cassette tape recording, CD-ROM, or a
specimen in another appropriate medium may be submitted in the absence
of a non-bulky specimen, and that an electronically submitted specimen
must be in .jpg format. The requirement that a specimen filed through
TEAS be a digitized image in .jpg format is consistent with the
specimen requirement in revised 2.56(d)(4).
The Office is adding a new 2.171(b), stating that when ownership of
a registration has changed with respect to some but not all of the
goods and/or services, the registrant(s) may file a request that the
registration be divided into two or more separate registrations. The
new owner(s) must pay a fee for each new separate registration created
by the division (child registration), and record the change of
ownership in the Office.
When the IB notifies the Office of the division of an international
registration resulting from a partial change of ownership of the
international registration with respect to some of the goods or
services in the registered extension of protection to the United
States, the Office will record the partial change of ownership, divide
out the assigned goods or services from the registered extension of
protection (parent registration), issue an updated certificate for the
parent registration and publish notice of the parent registration in
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the Official Gazette. The Office will not issue a new certificate for
the child registration or publish notice of the child registration
until the assignee files a request to divide under 2.171(b), and
pays the required fee.
A U.S. registration based on an application under section 1 and/or
section 44 of the Act may also be divided as a result of a partial
change of ownership, if the partial change of ownership is recorded in
the Assignment Services Division and the assignee files a request to
divide under 2.171(b), with the required fee.
Comments to Part 2 Rules
Comment: One comment indicated that the
"relationship" of proposed 2.17 and 10.14(b) appears to need
clarification. Another comment asked whether the Office would accept a
response in which the written authorization for the attorney was not
filed with the response.
Response: The requirement for written authorization in
2.17(b) applies only to non-lawyers. The Office is changing the
language of 2.17(b) to make this clear. It is generally not
necessary for an attorney as defined in 10.1(c) to file a power of
attorney or any other special authorization in a trademark case. Under
2.17(a) and (c), an attorney who appears in person or signs a
document on behalf of an applicant or registrant will be accepted as
the representative of the applicant or registrant. See TMEP 602.01.
Comment: One comment suggested that "written" be
inserted before "notification" in 2.19(a).
Response: The Office has adopted the suggestion.
Comment: Two comments suggested that the Office add the
requirements for a verified statement under section 66(a) to the rules,
and require that the IB send a copy of the signed verified statement
with the request for extension of protection to the United States.
Response: The Office has adopted the suggestion to add the
requirements for a verified statement in a section 66(a) application to
the rules. These requirements have been added to 2.33(e). However,
the Office will not require that the IB send a copy of the signed
verified statement with the request for extension of protection to the
United States.
The Office has provided the IB with wording for a declaration of a bona
fide intention to use the mark in commerce. The declaration will be
made part of the official IB form for international applications and
subsequent designations in which the United States is designated for an
extension of protection, and will remain as part of the international
registration on file at the IB. The wording of the declaration and
instructions for who may sign the declaration comport with the
requirements of section 66(a) of the Act and 2.33. The IB will
review the required declaration as part of the request for an extension
of protection to the United States. The IB will not certify and forward
a request for extension of protection to the United States, if: (1) The
declaration is not signed and dated; (2) there have been any changes or
modifications to the declaration; or (3) the declaration is not
presented on the official IB form.
Comment: One comment suggests that the Office add the
wording "on or in connection with the goods or services listed in the
application," to 2.34(b).
Response: The Office has adopted that suggestion.
Comment: One comment requested clarification as to whether a
priority claim for a Section 66(a) application is part of an
international registration or an additional basis for filing in the
Office.
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Response: If a claim of priority is part of an international
registration and meets the requirements of 7.27, the priority claim
is part of the application under Section 66(a), not a separate filing
basis.
Comment: Three comments recommended that the Office
eliminate the requirement to petition the Director to review a
post-publication amendment of the basis under 2.35(b)(2), and
delegate the responsibility to trademark examining attorneys. Two of
the comments suggested that republication of a mark may not be
necessary in every instance.
Response: The recommendation cannot be adopted at this time.
Although routinely granted, amendments to change the basis after
publication require special manual and automated processing, including
republication of the mark.
Comment: One comment suggests that the Office permit section
66(a) applications to register on the Supplemental Register.
Response: The suggestion cannot be adopted because the Act
provides only for registration on the Principal Register. See section
68(a)(4) of the Act.
Comment: Three comments requested clarification of the term
"standard character" drawing, and asked whether a "standard
character drawing" is the equivalent of a "typed drawing" under
current practice. One of the comments also requested that the Office
delete the requirement for a statement that no claim is made to a
particular font style or size.
Response: In the United States, a "standard character
drawing" under revised 2.52(a), is the equivalent in its effect of
a "typed drawing" under current 2.52(a)(1). The requirement for
a statement that no claim is made to a particular font style, size, or
color ensures that there is no ambiguity as to whether the applicant
seeks registration of a mark in standard characters. See changes to
2.52(a) discussed above.
Comment: One comment suggested that the Office make the
requirement to name the colors and describe where they appear on the
mark optional for applications under sections 1 and 44 of the Act.
Response: The Office has not adopted this suggestion.
Applications under sections 1 and 44 of the Act are required to name
the colors and describe where the colors appear in the marks under
current 2.52. Moreover, requirements for applications under sections
1 and 44 of the Act should be consistent with the requirements for
section 66(a) applications, since they may serve as the basis for an
international application.
Comment: One comment asked whether marks with gray tones but
no claim of color will publish with gray tones or be converted to black
and white.
Response: The Office will not convert drawings that contain
gray tones to black and white drawings. Drawings with gray tones will
be processed as color drawings. If the application does not contain a
color claim, the examining attorney will inquire whether gray is a
feature of the mark. If gray is a feature of the mark, the examining
attorney will require a color claim, and the Office will publish the
mark in color. If gray is not a feature of the mark, the examining
attorney will require a black and white drawing.
Comment: Two comments opposed the requirement in 2.53
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that a digitized image of a drawing be in .jpg format. The comments
suggested that the Office amend the rule to allow flexibility in
accepting other digital formats as they develop.
Response: That suggestion has not been adopted. The Office
will only accept .jpg format for digitized images at this time. The
Office is concerned about the level of stability, uniformity and
quality of images that are received and entered into the Office
database. The Office currently accepts the .jpg format and has had
success handling images in this format. Both the applicant and the
Office can be assured that a visible image is attached to the
submission because the applicant can view the image in the browser
before it is transmitted to the Office. The .jpg format is user
friendly and non-proprietary, and it is available to all potential
applicants. The Office has not foreclosed the possibility of accepting
other formats in the future, and will continue to assess image formats
that are currently available and new ones as they develop.
Comment: One comment requested information as to the
consequences of excluding the caption "Drawing Page" from the top
of a paper drawing page.
Response: The Office encourages applicants to include the
caption "Drawing Page" so that the Office can properly flag the
mark when the drawing is scanned into the database. The caption is not
mandatory, but its omission may delay processing of the application.
Comment: Six comments opposed the proposed amendment of
2.66(a), to limit the time period for filing a petition to revive to
two months from the mailing date of the notice of abandonment.
Response: The Office is withdrawing the proposal to remove
2.66(a)(2). Section 2.66(a)(2) is instead amended to change the
standard for a showing of due diligence in a petition to revive from
one year to six months as set forth in 2.146(i). Under 2.146(i),
as amended, an applicant will be considered diligent if the applicant
checks the status of the application every six months between the
filing date of the application and issuance of a registration. The
modification to 2.66(a)(2) provides recourse for applicants who are
diligent in monitoring the status of the application. However, if a
petition to revive an abandoned application that forms the basis of an
international registration is filed more than two months after the
mailing date of the notice of abandonment, it is likely that the
international registration will be cancelled. A cancelled international
registration will not be revived even if the basic application is
revived. See discussion above of changes to 2.66.
Comment: One comment asked if a concurrent use application
or registration can be the basis of an international application.
Response: An international application submitted through the
Office can be based on a concurrent use application or registration.
Comment: Three comments noted that oppositions with
insufficient fees appear to be treated differently for documents filed
electronically via ESTTA and those filed on paper; and requested that
the rules be amended to allow for uniform treatment for notices of
opposition with insufficient fees regardless of the manner in which
they are filed. One of the three comments suggested that the Office
implement a mechanism in ESTTA to ensure that all required fees are
paid as part of the electronic filing of a notice of opposition.
Response: The language of 2.101(d)(2) has been modified
to more clearly reflect the fact that a potential opposer may not
submit a notice of opposition electronically via ESTTA with an
insufficient fee, i.e., the sender will immediately receive an
electronic message that the transmission is not possible because the
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fee is insufficient. To be able to transmit the electronic notice of
opposition, a potential opposer filing via ESTTA may then elect to
submit the correct fee for the number of parties and classes set forth
in the electronic notice of opposition, or delete classes and/or
parties from the electronic notice of opposition. For a paper filing
with insufficient fees, the Board will notify opposer when the
opposition is instituted and will indicate in the notification the
opposers and classes opposed, i.e., for which the required fees were
submitted. There will be no opportunity to submit additional fees for a
paper filing.
Comment: Seven comments disagreed with the proposed 120-day
limitation from the date of publication on extensions of time to oppose
an application, noting that a longer period of time is necessary to
facilitate settlement negotiations. Of these comments, four comments
recommended that the 120-day limitation on extensions of time to oppose
be extended to 180 days; one comment recommended that the 120-day
limitation on extensions of time to oppose pertain only to applications
filed under section 66(a); and one comment recommended both that the
limitation on extensions of time to oppose pertain only to applications
filed under section 66(a) and that the limitation be extended to 180
days.
Response: The Office has adopted the recommendation that
potential opposers be permitted to extend the time for filing an
opposition to up to 180 days from the date of publication. The Office
has not adopted the recommendation that this limitation pertain only to
section 66(a) applications. The Office encourages use of its electronic
systems and does not have the resources at this time to develop an
electronic opposition filing system that can handle different filing
deadlines for different types of applications. Further, different
opposition filing deadlines for different types of applications would
be difficult for the Board to handle administratively and would be
likely to confuse potential opposers. Finally, the Board will
discontinue its practice of suspending a potential opposer's time to
file a notice of opposition when a letter of protest or an amendment to
the application has been filed. However, the Board is continuing its
practice of permitting suspension of an opposition, once filed, to
facilitate and encourage settlement negotiations.
Comment: Two comments expressed concern that 2.105 is not
written clearly and could be easily misconstrued. The comments
recommended that 2.105 be rewritten to clarify to whom notification
will be sent in each instance.
Response: The section has been rewritten to parallel
2.18, as appropriate, and to clarify its intent.
Comment: Three comments noted that petitions to cancel with
insufficient fees for documents filed electronically via ESTTA are
treated differently from those filed on paper; and requested that the
rules be amended to allow for uniform treatment for petitions to cancel
with insufficient fees regardless of the manner in which they are
filed. One of the three comments suggested that the Office implement a
mechanism in ESTTA to ensure that all sufficient fees are paid as part
of the electronic filing of a petition to cancel.
Response: The language of 2.111(c)(2) has been modified
to more clearly reflect the fact that a potential cancellation
petitioner may not submit a petition to cancel electronically via ESTTA
with an insufficient fee. In addition to not being able to transmit the
petition for cancellation via ESTTA with an insufficient fee, the
sender should receive an immediate electronic message that the
transmission is not possible and the reason why transmission is not
possible. A potential cancellation petitioner filing via ESTTA must
either submit the correct fee for the numbers of parties and classes
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set forth in the electronic petition to cancel, or delete classes and/
or parties from the electronic petition to cancel. If a paper filing is
submitted with insufficient fees for at least one party to petition for
cancellation against at least one class, the Board will simply return
the papers to the sender. If a paper filing is submitted with
sufficient fees for at least one party to petition for cancellation
against at least one class in the registration sought to be cancelled
but with insufficient fees for all stated parties and/or all classes,
the Board will institute the cancellation proceeding with respect to
the number of parties and classes for which fees have been submitted,
according to 2.111(b)(3), and send notification of the petition for
cancellation to the parties. The notification will list only the
parties and classes for which the required fees were submitted.
Comment: Two comments expressed concern that 2.113(a) is
not written clearly and could be easily misconstrued. The comments
recommended that 2.113(a) be rewritten to clarify to whom
notification will be sent in each instance.
Response: The section has been rewritten to parallel
2.18, as appropriate, and to clarify its intent. Sections 2.113(b), (c)
and (d) have been relabeled accordingly.
Comment: One comment pertaining to \s 2.118 recommended that
all correspondence be sent to the correspondence address of record.
Response: This recommendation has not been adopted. In
relation to 2.118, this is essentially a recommendation to send
notification of a petition to cancel to the attorney of record during
the prosecution of an application that subsequently registered and is
now the subject of a petition for cancellation, rather than sending
such notification directly to respondent. The practice under the
existing rule, and this provision has not been changed by this
regulation, is for the Office to correspond directly with the
registrant until notified otherwise by the registrant. The Office
considers the appointment of an attorney to prosecute the application
to lapse once the registration issues. The Board will send the
notification to the registrant of record in the Office at the
registrant's address of record, or if registrant is located outside the
United States and a domestic representative is of record, to the
registrant at the address of the domestic representative.
Comment: One comment recommended that 12.126(a)(4) permit
paper submissions to the Board to be bound or fastened if the contents
can be easily separated. The comment expressed concern that after
scanning, the papers will not be replaced in the file in their original
order.
Response: This recommendation has not been adopted. All
paper submissions are scanned electronically into the Board's Trademark
Trials and Appeals Information System (TTABIS). When the papers are
scanned, the Board's scanning equipment keeps pages in their original
order throughout the scanning process. Where papers are filed with
pages simply clipped together, the scanning process has not been
adversely affected. On the other hand, removing staples or binding
prior to scanning has been difficult and time-consuming, especially
where papers have been bound by machine. Moreover, disassembling
stapled or bound papers can damage pages, resulting in misfeeds to the
scanning equipment and increasing the likelihood that pages will become
disordered during scanning.
Comment: One comment recommended, with respect to
2.127(a) regarding motions in inter partes proceedings at the Board,
that, rather than retaining discretion to consider reply briefs, the
Board should consider all reply briefs; and reduce the time for filing
a reply brief, if a reply brief is filed, from fifteen to ten days from
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the date of service of a brief in response to the motion.
Response: This recommendation was not accepted. The
recommendation to consider all reply briefs, including reply briefs
that improperly address matters outside a proper response to statements
in the brief responding to the motion, would be burdensome. Therefore,
the Board will retain its discretion to consider reply briefs with
respect to motions. There is no reason stated for the recommendation to
shorten the time for filing a reply brief; and, at this time, the Board
considers the existing fifteen-day period for filing a reply brief to
be reasonable.
Comment: Four comments opposed the proposal to shorten the
due diligence standard from one year to six months in 2.146(i).
Response: The Office's electronic systems for records are
readily available over the Internet 24 hours a day, seven days a week.
Applicants and registrants have immediate and free access to
information concerning their applications and registrations. An
applicant or registrant can check the status of a pending application
or registration using the TARR (Trademark Application Registration
Retrieval) database. If the application is newly filed, applicant can
search TESS (Trademark Electronic Search System) to see if the mark was
loaded into the Office's automated database. Moreover, allegations of
use under section 1 of the Act, responses to Office actions, changes to
correspondence address and affidavits of use under section 8 of the Act
and renewal applications under section 9 of the Act can be filed
through TEAS.
In most cases, the Office will take action on filings related to a
trademark application or registration within six months of receipt of
the correspondence for which action is expected. Therefore, it is
reasonable to require applicants and registrants to check the status of
their application or registration at least twice a year until a final
outcome (that is, registration for a pending application or notice of
acceptance of an affidavit under section 8 of the Act or grant of
renewal under section 9 of the Act) is reached. By monitoring the
application or registration every six months, an applicant or
registrant can take corrective action more quickly if the Office did
not receive applicant's or registrant's correspondence or if
correspondence sent by the Office was not received.
Rule Making Requirements
Executive Order 13132: This rule making does not contain
policies with federalism implications sufficient to warrant preparation
of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined not to be
significant for purposes of Executive Order 12866.
Regulatory Flexibility Act: The Deputy General Counsel for General Law
of the United States Patent and Trademark Office has certified to the
Chief Counsel for Advocacy of the Small Business Administration that
the rule changes will not have a significant impact on a substantial
number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).
The main purpose of the rule change is to implement legislation that
provides an additional means for filing trademark applications.
Additionally, the rules provide for some technical and other changes
that will simplify the trademark application process. Hence, the rules
merely provide all applicants for trademark registration, including
small businesses, with additional benefits.
Paperwork Reduction Act: The final rules are in conformity with the
requirements of the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C.
3501 et seq.).
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Notwithstanding any other provision of law, no person is required to
nor shall a person be subject to a penalty for failure to comply with a
collection of information subject to the requirements of the PRA unless
that collection of information displays a currently valid OMB control
number.
This final rule contains collections of information requirements
subject to the PRA. This rule adds provisions allowing parties to (1)
file applications for international trademark registration with the IB
through the Office; (2) file subsequent designations with the IB
through the Office; (3) file responses to notices of irregularities in
international applications issued by the IB through the Office; (4)
request the Office to note in its records that a registered extension
of protection of an international registration to the United States
replaces a previously issued U.S. registration; (5) file requests to
record assignments or restrictions of a holder's right to dispose of an
international registration, or the release of such a restriction, with
the IB through the Office; and (6) file a request that the Office
transform an extension of protection that was cancelled by the IB into
an application for registration in the United States under section 1 or
section 44 of the Act. Additionally, the rule sets forth requirements
for submitting an affidavit of continued use or excusable nonuse under
section 71 of the Act and discusses changes in the information required
from the public to file notices of opposition, petitions to cancel, and
requests for extensions of time to oppose.
An information collection package supporting the changes to the above
information requirements, as set forth in this rule, has been approved
by the Office of Management and Budget under 0651-0051. Previously, a
separate information package, 0651-0040, was submitted in support of
oppositions, requests for extensions of time to file oppositions, and
petitions to cancel. The public reporting burden is estimated to
average as follows: Fifteen minutes for international trademark
applications; three minutes for subsequent designations; ten minutes to
respond to notices of irregularities issued by the IB in connection
with international applications; two minutes to request that the Office
replace a United States registration with a subsequently registered
extension of protection to the United States; five minutes for a
request to record an assignment or restriction of a holder's right to
dispose of an international registration, or the release of such a
restriction; five minutes for a request that the Office transform a
cancelled extension of protection into an application for registration
under section 1 or 44 of the Act; fourteen minutes for an affidavit of
continued use or excusable nonuse under section 71 of the Act; ten
minutes to forty-five minutes for notices of opposition and petitions
to cancel, depending on the particular circumstances; and ten minutes
for requests for extensions of time to oppose. These time estimates
include the time for reviewing instructions, searching existing data
sources, gathering and maintaining the data needed, and completing and
reviewing the collection of information. Comments are invited on: (1)
Whether the collection of information is necessary for proper
performance of the functions of the agency, (2) the accuracy of the
agency's estimate of the burden, (3) ways to enhance the quality,
utility, and clarity of the information to be collected, and (4) ways
to minimize the burden of the collection of information to respondents.
Send comments regarding this burden estimate, or any other aspect of
this data collection, including suggestions for reducing the burden, to
the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA
22202-3514 (Attn: Ari Leifman), and to the Office of Information and
Regulatory Affairs, OMB, 725 17th Street, NW., Washington, DC 20503
(Attn: USPTO Desk Officer).
Comment: One comment asked for an explanation for the time
estimates and stated that the time periods for filing electronically
should be increased to account for documents filed by attorneys where
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the signature of an applicant or registrant must be obtained or a
specimen that must be attached to the electronic submission is not
scanned according to Office requirements prior to filing the document.
Response: The estimates given are meant to describe the
overall average of time expended by all filers. The Office recognizes
that the time parties expend in preparing submissions may vary,
depending on the particular circumstances. However, the Office is
confident that the estimates are reasonable descriptions of the average
time expended by all filers.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority
contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office is
amending part 2 and adding part 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 to add new paragraphs (g) and (h) to read as follows:
2.2 Definitions.
* * * * *
(g) The acronym ESTTA means the Electronic System for Trademark Trials
and Appeals, available at http://www.uspto.gov.
(h) The term international application means an application for
international registration that is filed under the Protocol Relating to
the Madrid Agreement Concerning the International Registration of
Marks.
3. Revise 2.11 to read as follows:
2.11 Representation before the Office.
Representation before the Office is governed by 10.14 of
this chapter. The Office cannot aid in the selection of an attorney.
4. Amend 2.17 by revising paragraphs (a), (b) and (c) to read
as follows:
2.17 Recognition for representation.
(a) When an attorney as defined in 10.1(c) of this chapter
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acting in a representative capacity appears in person or signs a
document in practice before the United States Patent and Trademark
Office in a trademark case, his or her personal appearance or signature
shall constitute a representation to the United States Patent and
Trademark Office that, under the provisions of 10.14 and the law, he
or she is authorized to represent the particular party in whose behalf
he or she acts. Further proof of authority to act in a representative
capacity may be required.
(b) Before any non-lawyer, as specified in 10.14(b) of this chapter,
will be allowed to take action of any kind with respect to an
application, registration or proceeding, a written authorization from
the applicant, registrant, party to the proceeding, or other person
entitled to prosecute such application or proceeding must be filed.
(c) To be recognized as a representative, an attorney as defined in
10.1(c) of this chapter may file a power of attorney, appear in person,
or sign a document on behalf of an applicant or registrant that is
filed with the Office in a trademark case.
* * * * *
5. Revise 2.18 to read as follows:
2.18 Correspondence, with whom held.
(a) If documents are transmitted by an attorney, or a written
power of attorney is filed, the Office will send correspondence to the
attorney transmitting the documents, or to the attorney designated in
the power of attorney, provided that the attorney is an attorney as
defined in 10.1(c) of this chapter.
(b) The Office will not undertake double correspondence. If two or more
attorneys appear or sign a document, the Office's reply will be sent to
the address already established in the record until the applicant,
registrant or party, or its duly appointed attorney, requests in
writing that correspondence be sent to another address.
(c) If an application, registration or proceeding is not being
prosecuted by an attorney but a domestic representative has been
appointed, the Office will send correspondence to the domestic
representative, unless the applicant, registrant or party designates in
writing another correspondence address.
(d) If the application, registration or proceeding is not being
prosecuted by an attorney and no domestic representative has been
appointed, the Office will send correspondence directly to the
applicant, registrant or party, unless the applicant, registrant or
party designates in writing another correspondence address.
6. Revise 2.19 to read as follows:
2.19 Revocation of power of attorney; withdrawal.
(a) Authority to represent an applicant, registrant or a party
to a proceeding may be revoked at any stage in the proceedings of a
case upon written notification to the Director; and when it is revoked,
the Office will communicate directly with the applicant, registrant or
party to the proceeding, or with the new attorney or domestic
representative if one has been appointed. The Office will notify the
person affected of the revocation of his or her authorization.
(b) If the requirements of 10.40 of this chapter are met, an
attorney authorized under 10.14 to represent an applicant,
registrant or party in a trademark case may withdraw upon application
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to and approval by the Director.
7. Amend 2.21 by revising paragraph (a), introductory text, to
read as follows:
2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application under
section 1 or section 44 of the Act that contains all of the following:
* * * * *
8. Amend 2.33 by revising paragraph (d)(1) and adding a new
paragraph (e) to read as follows:
2.33 Verified statement.
* * * * *
(d) * * *
(1) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic
submission; or
* * * * *
(e) In an application under section 66(a) of the Act, the
verified statement is part of the international registration on file at
the International Bureau. The verified statement must allege that:
(1) The applicant/holder has a bona fide intention to use the mark in
commerce that the United States Congress can regulate on or in
connection with the goods/services identified in the international
application/subsequent designation;
(2) The signatory is properly authorized to execute this 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 United States Congress can regulate on or
in connection with the goods/services identified 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 that the United States Congress can regulate,
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 of such other person, firm, corporation, association, or other
legal entity, to cause confusion, or to cause mistake, or to deceive.
9. Amend 2.34 as follows:
a. By removing paragraphs (a)(1)(v), (a)(3)(iv), and (a)(4)(iv);
b. By revising paragraphs (a), introductory text, (a)(2),
(a)(4)(i)(A), and (b); and
c. By adding new paragraph (a)(5).
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2.34 The revisions and addition read as follows: Bases for filing.
(a) The application must include one or more of the following
five filing bases:
* * * * *
(2) Intent-to-use under section 1(b) of the Act. In an
application under section 1(b) of the Act, the applicant must verify
that it has a bona fide intention to use the mark in commerce on or in
connection with the goods or services listed in the application. If the
verification is not filed with the initial application, the verified
statement must allege that the applicant had a bona fide intention to
use the mark in commerce on or in connection with the goods or services
listed in the application as of the filing date of the application.
* * * * *
(4) * * *
(i) * * *
(A) Specify the filing date, serial number and country of the first
regularly filed foreign application; or
* * * * *
(5) Extension of protection of an international registration
under section 66(a) of the Act. In an application under section 66(a)
of the Act, the international application or subsequent designation
requesting an extension of protection to the United States must contain
a signed declaration that meets the requirements of 2.33.
(b)(1) In an application under section 1 or section 44 of the Act, an
applicant may claim more than one basis, provided the applicant
satisfies all requirements for the bases claimed. However, the
applicant may not claim both sections 1(a) and 1(b) for the identical
goods or services in the same application.
(2) In an application under section 1 or section 44 of the Act, if an
applicant claims more than one basis, the applicant must list each
basis, followed by the goods or services to which that basis applies.
If some or all of the goods or services are covered by more than one
basis, this must be stated.
(3) A basis under section 66(a) of the Act cannot be combined with any
other basis.
* * * * *
10. Revise 2.35 to read as follows:
2.35 Adding, deleting, or substituting bases.
(a) In an application under section 66(a) of the Act, an
applicant may not add, substitute or delete a basis, unless the
applicant meets the requirements for transformation under section 70(c)
of the Act and 7.31 of this chapter.
(b) In an application under section 1 or section 44 of the Act:
(1) Before publication for opposition, an applicant may add or
substitute a basis, if the applicant meets all requirements for the new
basis, as stated in 2.34. The applicant may delete a basis at any
time.
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(2) After publication, an applicant may add or substitute a basis in an
application that is not the subject of an inter partes proceeding
before the Trademark Trial and Appeal Board, but only with the express
permission of the Director, after consideration on petition.
Republication will be required. The amendment of an application that is
the subject of an inter partes proceeding before the Board is governed
by 2.133(a).
(3) When an applicant substitutes one basis for another, the Office
will presume that there was a continuing valid basis, unless there is
contradictory evidence in the record, and the application will retain
the original filing date, including a priority filing date under
section 44(d), if appropriate.
(4) If an applicant properly claims a section 44(d) basis in addition
to another basis, the applicant will retain the priority filing date
under section 44(d) no matter which basis the applicant perfects.
(5) The applicant may add or substitute a section 44(d) basis only
within the six-month priority period following the filing date of the
foreign application.
(6) When the applicant adds or substitutes a basis, the applicant must
list each basis, followed by the goods or services to which that basis
applies.
(7) When the applicant deletes a basis, the applicant must also delete
any goods or services covered solely by the deleted basis.
(8) Once an applicant claims a section 1(b) basis as to any or all of
the goods or services, the applicant may not amend the application to
seek registration under section 1(a) of the Act for those goods or
services unless the applicant files an allegation of use under section
1(c) or section 1(d) of the Act.
11. Revise 2.37 to read as follows:
2.37 Description of mark.
A description of the mark may be included in the application
and must be included if required by the trademark examining attorney.
12. Amend 2.47 by redesignating paragraphs (c) and (d) as
paragraphs (d) and (e) and adding a new paragraph (c) to read as
follows:
2.47 Supplemental Register.
* * * * *
(c) An application under section 66(a) of the Act is not
eligible for registration on the Supplemental Register.
* * * * *
13. Revise 2.51 to read as follows:
2.51 Drawing required.
(a) In an application under section 1(a) of the Act, the
drawing of the mark must be a substantially exact representation of the
mark as used on or in connection with the goods and/or services.
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(b) In an application under section 1(b) of the Act, the drawing of the
mark must be a substantially exact representation of the mark as
intended to be used on or in connection with the goods and/or services
specified in the application, and once an amendment to allege use under
2.76 or a statement of use under 2.88 has been filed, the drawing
of the mark must be a substantially exact representation of the mark as
used on or in connection with the goods and/or services.
(c) In an application under section 44 of the Act, the drawing of the
mark must be a substantially exact representation of the mark as it
appears in the drawing in the registration certificate of a mark duly
registered in the applicant's country of origin.
(d) In an application under section 66(a) of the Act, the drawing of
the mark must be a substantially exact representation of the mark as it
appears in the international registration.
14. Revise 2.52 to read as follows:
2.52 Types of drawings and format for drawings.
A drawing depicts the mark sought to be registered. The drawing
must show only one mark. The applicant must include a clear drawing of
the mark when the application is filed. There are two types of
drawings:
(a) Standard character (typed) drawing. Applicants who seek to register
words, letters, numbers, or any combination thereof without claim to
any particular font style, size, or color must submit a standard
character drawing that shows the mark in black on a white background.
An applicant may submit a standard character drawing if:
(1) The application includes a statement that the mark is in standard
characters and no claim is made to any particular font style, size, or
color;
(2) The mark does not include a design element;
(3) All letters and words in the mark are depicted in Latin characters;
(4) All numerals in the mark are depicted in Roman or Arabic numerals;
and
(5) The mark includes only common punctuation or diacritical marks.
(b) Special form drawing. Applicants who seek to register a mark that
includes a two or three-dimensional design; color; and/or words,
letters, or numbers or the combination thereof in a particular font
style or size must submit a special form drawing. The drawing must show
the mark in black on a white background, unless the mark includes
color.
(1) Color marks. If the mark includes color, the drawing must show the
mark in color, and the applicant must name the color(s), describe where
the color(s) appear on the mark, and submit a claim that the color(s)
is a feature of the mark.
(2) Three dimensional marks. If the mark has three-dimensional
features, the drawing must depict a single rendition of the mark, and
the applicant must indicate that the mark is three-dimensional.
(3) Motion marks. If the mark has motion, the drawing may depict a
single point in the movement, or the drawing may depict up to five
freeze frames showing various points in the movement, whichever best
depicts the commercial impression of the mark. The applicant must also
describe the mark.
(4) Broken lines to show placement. If necessary to adequately depict
the commercial impression of the mark, the applicant may be required to
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submit a drawing that shows the placement of the mark by surrounding
the mark with a proportionately accurate broken-line representation of
the particular goods, packaging, or advertising on which the mark
appears. The applicant must also use broken lines to show any other
matter not claimed as part of the mark. For any drawing using broken
lines to indicate placement of the mark, or matter not claimed as part
of the mark, the applicant must describe the mark and explain the
purpose of the broken lines.
(5) Description of mark. If a drawing cannot adequately depict all
significant features of the mark, the applicant must also describe the
mark.
(c) TEAS drawings. A drawing filed through TEAS must meet the
requirements of 2.53.
(d) Paper drawings. A paper drawing must meet the requirements of
2.54.
(e) Sound, scent, and non-visual marks. An applicant is not required to
submit a drawing if the mark consists only of a sound, a scent, or
other completely non-visual matter. For these types of marks, the
applicant must submit a detailed description of the mark.
15. Add 2.53 to read as follows:
2.53 Requirements for drawings filed through the TEAS.
The drawing must meet the requirements of 2.52. In addition,
in a TEAS submission, the drawing must meet the following requirements:
(a) Standard character drawings: If an applicant is filing a standard
character drawing, the applicant must enter the mark in the appropriate
field or attach a digitized image of the mark to the TEAS submission
that meets the requirements of paragraph (c) of this section.
(b) Special form drawings: If an applicant is filing a special form
drawing, the applicant must attach a digitized image of the mark to the
TEAS submission that meets the requirements of paragraph (c) of this
section.
(c) Requirements for digitized image: The image must be in .jpg format
and scanned at no less than 300 dots per inch and no more than 350 dots
per inch with a length and width of no less than 250 pixels and no more
than 944 pixels. All lines must be clean, sharp and solid, not fine or
crowded, and produce a high quality image when copied.
16. Add 2.54 to read as follows:
2.54 Requirements for drawings submitted on paper.
The drawing must meet the requirements of 2.52. In addition,
in a paper submission, the drawing should:
(a) Be on non-shiny white paper that is separate from the application;
(b) Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11
to 11.69 inches (27.9 to 29.7 cm.) long. One of the shorter sides of
the sheet should be regarded as its top edge. The image must be no
larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
(c) Include the caption "DRAWING PAGE" at the top of the drawing
beginning one inch (2.5 cm.) from the top edge; and
(d) Depict the mark in black ink, or in color if color is claimed as a
feature of the mark.
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(e) Drawings must be typed or made with a pen or by a process that will
provide high definition when copied. A photolithographic, printer's
proof copy, or other high quality reproduction of the mark may be used.
All lines must be clean, sharp and solid, and must not be fine or
crowded.
17. Amend 2.56 by revising paragraph (d)(4) to read as
follows:
2.56 Specimens.
* * * * *
(d) * * *
(4) For a TEAS submission, the specimen must be a digitized image in
.jpg format.
18. Amend 2.65 by revising paragraph (a) to read as follows:
2.65 Abandonment.
(a) If an applicant fails to respond, or to respond completely,
within six months after the date an action is mailed, the application
shall be deemed abandoned unless the refusal or requirement is
expressly limited to only certain goods and/or services. If the refusal
or requirement is expressly limited to only certain goods and/or
services, the application will be abandoned only as to those particular
goods and/or services. A timely petition to the Director pursuant to
2.63(b) and 2.146, if appropriate, is a response that avoids
abandonment of an application.
* * * * *
19. Amend 2.66 by revising paragraph (a)(2) to read asfollows:
2.66 Revival of abandoned applications.
(a) * * *
(2) Within two months of actual knowledge of the abandonment, if the
applicant did not receive the notice of abandonment, and the applicant
was diligent in checking the status of the application every six months
in accordance with 2.146(i).
* * * * *
20. Amend 2.73 by revising paragraph (a) to read as follows:
2.73 Amendment to recite concurrent use.
(a) An application under section 1(a), section 44, or section
66(a) of the Act may be amended to an application for concurrent use
registration, provided the application as amended satisfies the
requirements of 2.42. The trademark examining attorney will
determine whether the application, as amended, is acceptable.
* * * * *
21. Amend 2.75 by adding a new paragraph (c) to read as follows:
2.75 Amendment to change application to different register.
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* * * * *
(c) In an application under section 66(a) of the Act, the
applicant may not amend the application to the Supplemental Register.
22. Revise 2.84 to read as follows:
2.84 Jurisdiction over published applications.
(a) The trademark examining attorney may exercise jurisdiction
over an application up to the date the mark is published in the
Official Gazette. After publication of an application under section
1(a), 44 or 66(a) of the Act, the trademark examining attorney may,
with the permission of the Director, exercise jurisdiction over the
application. After publication of an application under section 1(b) of
the Act, the trademark examining attorney may exercise jurisdiction
over the application after the issuance of the notice of allowance
under section 13(b)(2) of the Act. After publication, and prior to
issuance of a notice of allowance in an application under section 1(b),
the trademark examining attorney may, with the permission of the
Director, exercise jurisdiction over the application.
(b) After publication, but before the certificate of registration in an
application under section 1(a), 44 or 66(a) of the Act is printed, or
before the notice of allowance in an application under section 1(b) of
the Act is printed, an application that is not the subject of an inter
partes proceeding before the Trademark Trial and Appeal Board may be
amended if the amendment does not necessitate republication of the mark
or issuance of an Office action. Otherwise, an amendment to such an
application may be submitted only upon petition to the Director to
restore jurisdiction over the application to the trademark examining
attorney for consideration of the amendment and further examination.
The amendment of an application that is the subject of an inter partes
proceeding before the Trademark Trial and Appeal Board is governed by
2.133.
23. Amend 2.88 by revising paragraph (i)(3) to read as follows:
2.88 Filing statement of use after notice of allowance
* * * * *
(i) * * *
(3) The statement of use may be accompanied by a separate request to
amend the identification of goods or services in the application, as
stated in the notice of allowance, in accordance with 2.71(a).
* * * * *
24. Revise 2.101 to read as follows:
2.101 Filing an opposition.
(a) An opposition proceeding is commenced by filing a timely
opposition, together with the required fee, in the Office.
(b) Any person who believes that he, she or it would be damaged by the
registration of a mark on the Principal Register may file an opposition
addressed to the Trademark Trial and Appeal Board. The opposition need
not be verified, but must be signed by the opposer or the opposer's
attorney, as specified in 10.1(c) of this chapter, or other
authorized representative, as specified in 10.14(b) of this chapter.
Electronic signatures pursuant to 2.193(c)(1)(iii) are required for
oppositions submitted electronically under paragraphs (b)(1) or (2) of
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this section.
(1) An opposition to an application based on section 1 or 44 of the Act
must be filed either on paper or through ESTTA.
(2) An opposition to an application based on section 66(a) of the Act
must be filed through ESTTA.
(c) The opposition must be filed within thirty days after publication
( 2.80) of the application being opposed or within an extension of
time ( 2.102) for filing an opposition.
(d)(1) The opposition must be accompanied by the required fee for each
party joined as opposer for each class in the application for which
registration is opposed (see 2.6).
(2) An otherwise timely opposition will not be accepted via ESTTA
unless the opposition is accompanied by a fee that is sufficient to pay
in full for each named party opposer to oppose the registration of a
mark in each class specified in the opposition.
(3) If an otherwise timely opposition is submitted on paper, the
following is applicable if less than all required fees are submitted:
(i) If the opposition is accompanied by no fee or a fee insufficient to
pay for one person to oppose the registration of a mark in at least one
class, the opposition will be refused.
(ii) If the opposition is accompanied by fees sufficient to pay for one
person to oppose registration in at least one class, but fees are
insufficient to oppose registration in all the classes in the
application, and the particular class or classes against which the
opposition is filed is not specified, the opposition will be presumed
to be against the class or classes in ascending numerical order,
including only the number of classes in the application for which
sufficient fees have been submitted.
(iii) If persons are joined as party opposers, each must submit a fee
for each class for which opposition is sought. If the fees submitted
are sufficient to pay for one person to oppose registration in at least
one class, but are insufficient for each named party opposer, the
first-named party will be presumed to be the party opposer. Additional
parties will be deemed to be party opposers only to the extent that the
fees submitted are sufficient to pay the fee due for each party
opposer. If persons are joined as party opposers against a multiple
class application, the fees submitted are insufficient, and no
specification of opposers and classes is made at the time the party is
joined, the fees submitted will be applied first on behalf of the
first-named opposer against as many of the classes in the application
as the submitted fees are sufficient to pay. Any excess will be applied
on behalf of the second-named party to the opposition against the
classes in the application in ascending numerical order.
(4) The filing date of an opposition is the date of receipt in the
Office of the opposition together with the required fee.
25. Revise 2.102 to read as follows:
2.102 Extension of time for filing an opposition.
(a) Any person who believes that he, she or it would be damaged
by the registration of a mark on the Principal Register may file in the
Office a written request, addressed to the Trademark Trial and Appeal
Board, to extend the time for filing an opposition. The written request
need not be verified, but must be signed by the potential opposer or by
the potential opposer's attorney, as specified in 10.1(c) of this
chapter, or authorized representative, as specified in 10.14(b) of
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this chapter. Electronic signatures pursuant to 2.193(c)(1)(iii) are
required for electronically filed extension requests.
(1) A written request to extend the time for filing an opposition to an
application filed under section 1 or 44 of the Act must be filed either
on paper or through ESTTA.
(2) A written request to extend the time for filing an opposition to an
application filed under section 66(a) of the Act must be filed through
ESTTA.
(b) A written request to extend the time for filing an opposition must
identify the potential opposer with reasonable certainty. Any
opposition filed during an extension of time should be in the name of
the person to whom the extension was granted. An opposition may be
accepted if the person in whose name the extension was requested was
misidentified through mistake or if the opposition is filed in the name
of a person in privity with the person who requested and was granted
the extension of time.
(c) The time for filing an opposition shall not be extended beyond 180
days from the date of publication. Any request to extend the time for
filing an opposition must be filed before thirty days have expired from
the date of publication or before the expiration of a previously
granted extension of time, as appropriate. Requests to extend the time
for filing an opposition must be filed as follows:
(1) A person may file a first request for either a thirty-day extension
of time, which will be granted upon request, or a ninety-day extension
of time, which will be granted only for good cause shown.
(2) If a person was granted a thirty-day extension of time, that person
may file a request for an additional sixty-day extension of time, which
will be granted only for good cause shown.
(3) After receiving one or two extensions of time totaling ninety days,
a person may file one final request for an extension of time for an
additional sixty days. The Board will grant this request only upon
written consent or stipulation signed by the applicant or its
authorized representative, or a written request by the potential
opposer or its authorized representative stating that the applicant or
its authorized representative has consented to the request, or a
showing of extraordinary circumstances. No further extensions of time
to file an opposition will be granted under any circumstances.
26. Revise 2.104(a) to read as follows:
2.104 Contents of opposition.
(a) The opposition must set forth a short and plain statement
showing why the opposer believes he, she or it would be damaged by the
registration of the opposed mark and state the grounds for opposition.
* * * * *
27. Revise 2.105 to read as follows:
2.105 Notification to parties of opposition proceeding(s).
(a) When an opposition in proper form has been filed and the
correct fee has been submitted, the Trademark Trial and Appeal Board
shall prepare a notification, which shall identify the title and number
of the proceeding and the application involved and shall designate a
time, not less than thirty days from the mailing date of the
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notification, within which an answer must be filed.
(b) The Board shall forward a copy of the notification to opposer, as
follows:
(1) If the opposition is transmitted by an attorney, or a written power
of attorney is filed, the Board will send the notification to the
attorney transmitting the opposition or to the attorney designated in
the power of attorney, provided that the person is an "attorney" as
defined in 10.1(c) of this chapter.
(2) If opposer is not represented by an attorney in the opposition, but
opposer has appointed a domestic representative, the Board will send
the notification to the domestic representative, unless opposer
designates in writing another correspondence address.
(3) If opposer is not represented by an attorney in the opposition, and
no domestic representative has been appointed, the Board will send the
notification directly to opposer, unless opposer designates in writing
another correspondence address.
(c) The Board shall forward a copy of the opposition and any exhibits
with a copy of the notification to applicant, as follows:
(1) If the opposed application contains a clear indication that the
application is being prosecuted by an attorney, as defined in
10.1(c) of this chapter, the Board shall send the documents described
in this section to applicant's attorney.
(2) If the opposed application is not being prosecuted by an attorney
but a domestic representative has been appointed, the Board will send
the documents described in this section to the domestic representative,
unless applicant designates in writing another correspondence address.
(3) If the opposed application is not being prosecuted by an attorney,
and no domestic representative has been appointed, the Board will send
the documents described in this section directly to applicant, unless
applicant designates in writing another correspondence address.
28. Revise 2.107 to read as follows:
2.107 Amendment of pleadings in an opposition proceeding.
(a) Pleadings in an opposition proceeding against an
application filed under section 1 or 44 of the Act may be amended in
the same manner and to the same extent as in a civil action in a United
States district court, except that, after the close of the time period
for filing an opposition including any extension of time for filing an
opposition, an opposition may not be amended to add to the goods or
services opposed.
(b) Pleadings in an opposition proceeding against an application filed
under section 66(a) of the Act may be amended in the same manner and to
the same extent as in a civil action in a United States district court,
except that, once filed, the opposition may not be amended to add to
the grounds for opposition or to add to the goods or services subject
to opposition.
29. Revise 2.111 to read as follows:
2.111 Filing petition for cancellation.
(a) A cancellation proceeding is commenced by the filing of a
timely petition for cancellation, together with the required fee, in
the Office.
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(b) Any person who believes that he, she or it is or will be damaged by
a registration may file a petition, addressed to the Trademark Trial
and Appeal Board, for cancellation of the registration in whole or in
part. The petition for cancellation need not be verified, but must be
signed by the petitioner or the petitioner's attorney, as specified in
10.1(c) of this chapter, or other authorized representative, as
specified in 10.14(b) of this chapter. Electronic signatures
pursuant to 2.193(c)(1)(iii) are required for petitions submitted
electronically via ESTTA. The petition for cancellation may be filed at
any time in the case of registrations on the Supplemental Register or
under the Act of 1920, or registrations under the Act of 1881 or the
Act of 1905 which have not been published under section 12(c) of the
Act, or on any ground specified in section 14(3) or (5) of the Act. In
all other cases, the petition for cancellation and the required fee
must be filed within five years from the date of registration of the
mark under the Act or from the date of publication under section 12(c)
of the Act.
(c)(1) The petition for cancellation must be accompanied by the
required fee for each party joined as petitioner for each class in the
registration for which cancellation is sought (see 2.6).
(2) An otherwise timely petition for cancellation will not be accepted
via ESTTA unless the petition for cancellation is accompanied by a fee
that is sufficient to pay in full for each named party petitioner to
petition for cancellation of the registration of a mark in each class
specified in the petition for cancellation.
(3) If an otherwise timely petition for cancellation is submitted on
paper, the following is applicable if less than all required fees are
submitted:
(i) If the petition for cancellation is accompanied by no fee or a fee
insufficient to pay for one person to petition for cancellation against
at least one class in the registration, the petition for cancellation
will be refused.
(ii) If the petition for cancellation is accompanied by fees sufficient
to pay for one person to petition for cancellation against at least one
class in the registration, but fees are insufficient for a petition for
cancellation against all the classes in the registration, and the
particular class or classes against which the petition for cancellation
is filed is not specified, the petition for cancellation will be
presumed to be against the class or classes in ascending numerical
order, including only the number of classes in the registration for
which sufficient fees have been submitted.
(iii) If persons are joined as party petitioners, each must submit a
fee for each class for which cancellation is sought. If the fees
submitted are sufficient to pay for one person to petition for
cancellation of the registration in at least one class but are
insufficient for each named party petitioner, the first-named party
will be presumed to be the party petitioner. Additional parties will be
deemed to be party petitioners only to the extent that the fees
submitted are sufficient to pay the fee due for each party petitioner.
If persons are joined as party petitioners against a multiple class
registration, the fees submitted are insufficient, and no specification
of parties and classes is made at the time the party is joined, the
fees submitted will be applied first on behalf of the first-named
petitioner against as many of the classes in the registration as the
submitted fees are sufficient to pay. Any excess will be applied on
behalf of the second-named party to the cancellation against the
classes in the registration in ascending numerical order.
(4) The filing date of a petition for cancellation is the date of
receipt in the Office of the petition for cancellation together with
the required fee.
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30. Revise 2.112 to read as follows:
2.112 Contents of petition for cancellation.
(a) The petition for cancellation must set forth a short and
plain statement showing why the petitioner believes he, she or it is or
will be damaged by the registration, state the ground for cancellation,
and indicate, to the best of petitioner's knowledge, the name and
address of the current owner of the registration.
(b) When appropriate, petitions for cancellation of different
registrations owned by the same party may be joined in a consolidated
petition for cancellation. The required fee must be included for each
party joined as a petitioner for each class sought to be cancelled in
each registration against which the petition for cancellation is filed.
31. Revise 2.113 to read as follows:
2.113 Notification to parties of cancellation proceeding.
(a) When a petition for cancellation has been filed in proper
form (see 2.111 and 2.112), the Trademark Trial and Appeal Board
shall prepare a notification which shall identify the title and number
of the proceeding and the registration(s) involved and shall designate
a time, not less than thirty days from the mailing date of the
notification, within which an answer must be filed.
(b) The Board shall forward a copy of the notification to petitioner,
as follows:
(1) If the petition for cancellation is transmitted by an attorney, or
a written power of attorney is filed, the Board will send the
notification to the attorney transmitting the petition for cancellation
or to the attorney designated in the power of attorney, provided that
person is an "attorney" as defined in 10.1(c) of this chapter.
(2) If petitioner is not represented by an attorney in the cancellation
proceeding, but petitioner has appointed a domestic representative, the
Board will send the notification to the domestic representative, unless
petitioner designates in writing another correspondence address.
(3) If petitioner is not represented by an attorney in the cancellation
proceeding, and no domestic representative has been appointed, the
Board will send the notification directly to petitioner, unless
petitioner designates in writing another correspondence address.
(c) The Board shall forward a copy of the petition for cancellation and
any exhibits with a copy of the notification to the respondent (see
2.118). The respondent shall be the party shown by the records of the
Office to be the current owner of the registration(s) sought to be
cancelled, except that the Board, in its discretion, may join or
substitute as respondent a party who makes a showing of a current
ownership interest in such registration(s).
(d) When the party alleged by the petitioner, pursuant to 2.112(a),
as the current owner of the registration(s) is not the record owner, a
courtesy copy of the petition for cancellation shall be forwarded with
a copy of the notification to the alleged current owner. The alleged
current owner may file a motion to be joined or substituted as
respondent.
(e) If the petition for cancellation is found to be defective as to
form, the party filing the petition for cancellation shall be advised
and allowed reasonable time for correcting the informality.
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32. Revise 2.118 to read as follows:
2.118 Undelivered Office notices.
When a notice sent by the Office to any registrant is returned
to the Office undelivered, additional notice may be given by
publication in the Official Gazette for the period of time prescribed
by the Director.
33. Amend 2.121 by revising paragraph (d) to read as follows:
2.121 Assignment of times for taking testimony.
* * * * *
(d) When parties stipulate to the rescheduling of testimony
periods or to the rescheduling of the closing date for discovery and
the rescheduling of testimony periods, a stipulation presented in the
form used in a trial order, signed by the parties, or a motion in said
form signed by one party and including a statement that every other
party has agreed thereto, shall be submitted to the Board.
34. Amend 2.123 by revising paragraph (g)(1) to read as follows:
2.123 Trial testimony in inter partes cases.
* * * * *
(g) Form of deposition. (1) The pages of each deposition must
be numbered consecutively, and the name of the witness plainly and
conspicuously written at the top of each page. A deposition must be in
written form. The questions propounded to each witness must be
consecutively numbered unless the pages have numbered lines. Each
question must be followed by its answer.
* * * * *
35. Add new 2.126 to read as follows:
2.126 Form of submissions to the Trademark Trial and Appeal Board.
(a) Submissions may be made to the Trademark Trial and Appeal
Board on paper where Board practice or the rules in this part permit. A
paper submission, including exhibits and depositions, must meet the
following requirements:
(1) A paper submission must be printed in at least 11-point type and
double-spaced, with text on one side only of each sheet;
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide
and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or
other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not have
any extruding tabs or other devices, and must be on the same size and
weight paper as the submission;
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits shall
be identified in the manner prescribed in 2.123(g)(2);
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(6) Exhibits pertaining to a paper submission must be filed on paper or
CD-ROM concurrently with the paper submission, and comply with the
requirements for a paper or CD-ROM submission.
(b) Submissions may be made to the Trademark Trial and Appeal Board on
CD-ROM where the rules in this part or Board practice permit. A CD- ROM
submission must identify the parties and case number and contain a list
that clearly identifies the documents and exhibits contained thereon.
This information must appear in the data contained in the CD- ROM
itself, on a label affixed to the CD-ROM, and on the packaging for the
CD-ROM. Text in a CD-ROM submission must be in at least 11-point type
and double-spaced. A brief filed on CD-ROM must be accompanied by a
single paper copy of the brief. A CD-ROM submission must be accompanied
by a transmittal letter on paper that identifies the parties, the case
number and the contents of the CD-ROM.
(c) Submissions may be made to the Trademark Trial and Appeal Board
electronically via the Internet where the rules in this part or Board
practice permit, according to the parameters established by the Board
and published on the Web site of the Office. Text in an electronic
submission must be in at least 11-point type and double-spaced.
Exhibits pertaining to an electronic submission must be made
electronically as an attachment to the submission.
(d) To be handled as confidential, submissions to the Trademark Trial
and Appeal Board that are confidential in whole or part pursuant to \s
2.125(e) must be submitted under a separate cover. Both the submission
and its cover must be marked confidential and must identify the case
number and the parties. A copy of the submission with the confidential
portions redacted must be submitted.
36. Amend 2.127 by revising paragraph (a) to read as follows:
2.127 Motions.
(a) Every motion must be submitted in written form and must
meet the requirements prescribed in 2.126. It shall contain a full
statement of the grounds, and shall embody or be accompanied by a
brief. Except as provided in paragraph (e)(1) of this section, a brief
in response to a motion shall be filed within fifteen days from the
date of service of the motion unless another time is specified by the
Trademark Trial and Appeal Board, or the time is extended by
stipulation of the parties approved by the Board, or upon motion
granted by the Board, or upon order of the Board. If a motion for an
extension is denied, the time for responding to the motion remains as
specified under this section, unless otherwise ordered. The Board may,
in its discretion, consider a reply brief. Except as provided in
paragraph (e)(1) of this section, a reply brief, if filed, shall be
filed within fifteen days from the date of service of the brief in
response to the motion. The time for filing a reply brief will not be
extended. No further papers in support of or in opposition to a motion
will be considered by the Board. The brief in support of a motion and
the brief in response to the motion shall not exceed twenty-five pages
in length, and a reply brief shall not exceed ten pages in length.
Exhibits submitted in support of or in opposition to a motion shall not
be deemed to be part of the brief for purposes of determining the
length of the brief. When a party fails to file a brief in response to
a motion, the Board may treat the motion as conceded. An oral hearing
will not be held on a motion except on order by the Board.
* * * * *
37. Amend 2.128 by revising paragraph (b) to read as follows:
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2.128 Briefs at final hearing.
* * * * *
(b) Briefs must be submitted in written form and must meet the
requirements prescribed in 2.126. Each brief shall contain an
alphabetical index of cited cases. Without prior leave of the Trademark
Trial and Appeal Board, a main brief on the case shall not exceed
fifty-five pages in length in its entirety, including the table of
contents, index of cases, description of the record, statement of the
issues, recitation of the facts, argument, and summary; and a reply
brief shall not exceed twenty-five pages in its entirety.
38. Revise 2.130 to read as follows:
2.130 New matter suggested by the trademark examining attorney.
If, while an inter partes proceeding involving an application
under section 1 or 44 of the Act is pending, facts appear which, in the
opinion of the trademark examining attorney, render the mark in the
application unregistrable, the facts should be called to the attention
of the Trademark Trial and Appeal Board. The Board may suspend the
proceeding and refer the application to the trademark examining
attorney for an ex parte determination of the question of
registrability. A copy of the trademark examining attorney's final
action will be furnished to the parties to the inter partes proceeding
following the final determination of registrability by the trademark
examining attorney or the Board on appeal. The Board will consider the
application for such further inter partes action as may be appropriate.
39. Revise 2.131 to read as follows:
2.131 Remand after decision in inter partes proceeding.
If, during an inter partes proceeding involving an application
under section 1 or 44 of the Act, facts are disclosed which appear to
render the mark unregistrable, but such matter has not been tried under
the pleadings as filed by the parties or as they might be deemed to be
amended under Rule 15(b) of the Federal Rules of Civil Procedure to
conform to the evidence, the Trademark Trial and Appeal Board, in lieu
of determining the matter in the decision on the proceeding, may remand
the application to the trademark examining attorney for reexamination
in the event the applicant ultimately prevails in the inter partes
proceeding. Upon remand, the trademark examining attorney shall
reexamine the application in light of the reference by the Board. If,
upon reexamination, the trademark examining attorney finally refuses
registration to the applicant, an appeal may be taken as provided by
2.141 and 2.142.
40. Amend 2.142 by revising paragraphs (a) and (b)(2) to read
as follows:
2.142 Time and manner of ex parte appeals.
(a) Any appeal filed under the provisions of 2.141 must be
filed within six months from the date of the final refusal or the date
of the action from which the appeal is taken. An appeal is taken by
filing a notice of appeal in written form, as prescribed in 2.126,
and paying the appeal fee.
(b) * * *
(2) Briefs must be submitted in written form and must meet the
requirements prescribed in 2.126. Each brief shall contain an
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alphabetical index of cited cases. Without prior leave of the Trademark
Trial and Appeal Board, a brief shall not exceed twenty-five pages in
length in its entirety, including the table of contents, index of
cases, description of the record, statement of the issues, recitation
of the facts, argument, and summary.
* * * * *
41. Amend 2.145 by revising paragraphs (b)(3), (c)(3) and
(c)(4) to read as follows:
2.145 Appeal to court and civil action.
* * * * *
(b) * * *
(3) Notices of appeal directed to the Director shall be mailed to or
served by hand on the General Counsel, according to part 104 of this
chapter, with a duplicate copy mailed or served by hand on the
Trademark Trial and Appeal Board.
(c) * * *
(3) Any adverse party to an appeal taken to the U.S. Court of Appeals
for the Federal Circuit by a defeated party in an inter partes
proceeding may file a notice with the Office, addressed to the Office
of the General Counsel, according to part 104 of this chapter, within
twenty days after the filing of the defeated party's notice of appeal
to the court (paragraph (b) of this section), electing to have all
further proceedings conducted as provided in section 21(b) of the Act.
The notice of election must be served as provided in 2.119.
(4) In order to avoid premature termination of a proceeding, a party
who commences a civil action, pursuant to section 21(b) of the Act,
must file written notice thereof at the Trademark Trial and Appeal
Board.
* * * * *
42. Amend 2.146 by revising paragraphs (c) and (i) 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 that is requested, and the fee required by 2.6. Any
brief in support of the petition shall be embodied in or accompany the
petition. When facts are to be proved in ex parte cases, proof in the
form of affidavits or declarations in accordance with 2.20, and any
exhibits, shall accompany the petition.
* * * * *
(i) Where a petitioner seeks to reactivate an application or
registration that was abandoned, cancelled or expired because papers
were lost or mishandled, the Director may deny the petition if the
petitioner was not diligent in checking the status of the application
or registration. To be considered diligent, a petitioner must:
(1) During the pendency of an application, check the status of the
application every six months between the filing date of the application
and issuance of a registration;
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(2) After registration, check the status of the registration every six
months from the filing of an affidavit of use or excusable nonuse under
section 8 or 71 of the Act, or a renewal application under section 9 of
the Act, until the petitioner receives notice that the affidavit or
renewal application has been accepted; and
(3) If the status check reveals that the Office has not received a
document filed by the petitioner, or that the Office has issued an
action or notice that the petitioner has not received, the petitioner
must promptly request corrective action.
* * * * *
43. Revise 2.151 to read as follows:
2.151 Certificate.
When the Office determines that a mark is registrable, the
Office will issue a certificate stating that the applicant is entitled
to registration on the Principal Register or on the Supplemental
Register. The certificate will state the application filing date, the
act under which the mark is registered, the date of issue, and the
number of the registration. A reproduction of the mark and pertinent
data from the application will be sent with the certificate. A notice
of the requirements of sections 8 and 71 of the Act will accompany the
certificate.
44. Amend 2.161 by revising paragraph (g)(2) and adding a new
paragraph (g)(3) to read as follows:
2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
* * * * *
(g) * * *
(2) Be flat and no larger than 8.5 inches (21.6 cm.) wide by 11.69
inches (29.7 cm.) long. If a specimen exceeds these size requirements
(a "bulky specimen"), the Office will create a facsimile of the
specimen that meets the requirements of the rule (i.e., is flat and no
larger than 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long)
and put it in the record. In the absence of non-bulky alternatives, the
Office may accept an audio or video cassette tape recording, CD-ROM, or
a specimen in another appropriate medium.
(3) Be a digitized image in .jpg format, if transmitted through TEAS.
45. Revise 2.171 to read as follows:
2.171 New certificate on change of ownership.
(a) If the ownership of a registered mark changes, the assignee
may request that a new certificate of registration be issued in the
name of the assignee for the unexpired part of the original period. The
assignment must be recorded in the Office, and the request for the new
certificate must be signed by the assignee and accompanied by the fee
required by 2.6(a)(8). If available, the original certificate of
registration must be submitted.
(b) When ownership of a registration has changed with respect to some,
but not all, of the goods and/or services, the registrant(s) may file a
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request that the registration be divided into two or more separate
registrations. The fee required by 2.6(a)(8) must be paid for each
new registration created by the division, and the change of ownership
must be recorded in the Office.
1. Add a new part 7:
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
7.1 Definitions of terms as used in this part.
7.2 [Reserved]
7.3 Correspondence must be in English.
7.4 Receipt of correspondence.
7.5 [Reserved]
7.6 Schedule of U.S. process fees.
7.7 Payments of fees to International Bureau.
Subpart B - International Application Originating From The United States
7.11 Requirements for international application originating from the
United States.
7.12 Claim of color.
7.13 Certification of international application.
7.14 Correcting irregularities in international application.
Subpart C - Subsequent Designation Submitted Through the Office
7.21 Subsequent designation.
Subpart D - Recording Changes to International Registration
7.22 Recording changes to international registration.
7.23 Requests for recording assignments at the International Bureau.
7.24 Requests to record security interest or other restriction of holder's
rights of disposal or release of such restriction submitted through the
Office.
Subpart E - Extension of Protection to the United States
7.25 Sections of part 2 applicable to extension of protection.
7.26 Filing date of extension of protection for purposes of examination in
the Office.
7.27 Priority claim of extension of protection for purposes of examination
in the Office.
7.28 Replacement of U.S. registration by registered extension of
protection.
7.29 Effect of replacement on U.S. registration.
7.30 Effect of cancellation or expiration of international registration.
7.31 Requirements for transformation of an extension of protection to the
United States into a U.S. application.
Subpart F - Affidavit Under Section 71 of the Act forExtension of
Protection to the United States
7.36 Affidavit or declaration of use in commerce or excusable nonuse
required to avoid cancellation of an extension of protection to the
United States.
7.37 Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse.
7.38 Notice to holder of extension of protection.
7.39 Acknowledgment of receipt of affidavit or declaration of use in
commerce or excusable nonuse.
7.40 Petition to Director to review refusal.
Subpart G - Renewal of International Registration and Extension of
Protection
7.41 Renewal of international registration and extension of protection.
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
Subpart A - General Information
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7.1 Definitions of terms as used in this part.
(a) the Act means the Trademark Act of 1946, 60 Stat. 427, as
amended, codified in 15 U.S.C. 1051 et seq.
(b) Subsequent designation means a request for extension of protection
of an international registration to a Contracting Party made after the
International Bureau registers the mark.
(c) The acronym TEAS means the Trademark Electronic Application System
available on-line through the Office's Web site at: http://www.uspto.gov.
(d) The term Office means the United States Patent and Trademark
Office.
(e) All references to sections in this part refer to 37 Code of Federal
Regulations, except as otherwise stated.
7.2 [Reserved]
7.3 Correspondence must be in English.
International applications and registrations, requests for
extension of protection and all other related correspondence with the
Office must be in English. The Office will not process correspondence
that is in a language other than English.
7.4 Receipt of correspondence.
Correspondence relating to international applications and
registrations and requests for extension of protection submitted
through TEAS will be accorded the date and time on which the complete
transmission is received in the Office based on Eastern Time. Eastern
Time means eastern standard time or eastern daylight time, as
appropriate.
7.5 [Reserved]
7.6 Schedule of U.S. process fees.
(a) The Office requires the following process fees:
(1) For certifying an international application based on a single basic
application or registration, per class - $100.00
(2) For certifying an international application based on more than one
basic application or registration, per class - $150.00
(3) For transmitting a subsequent designation under 7.21 - $100.00
(4) For transmitting a request to record an assignment or restriction,
or release of a restriction, under 7.23 or 7.24 - $100.00
(5) For filing a notice of replacement under 7.28, per
class - $100.00
(6) For filing an affidavit under 71 of the Act, per class - $100.00
(7) Surcharge for filing an affidavit under 71 of the Act during the
grace period, per class - $100.00
(b) The fees required in paragraph (a) of this section must be paid in
U.S. dollars at the time of submission of the requested action. See
2.207 of this chapter for acceptable forms of payment and 2.208 of
this chapter for payments using a deposit account established in the
Office.
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7.7 Payments of fees to International Bureau.
(a) The following fees may be paid either directly to the
International Bureau or through the Office:
(1) International application fees;
(2) Subsequent designation fees; and
(3) Recording fee for an assignment of an international registration
under 7.23.
(b) The fees in paragraph (a) of this section may be paid as follows:
(1)(i) Directly to the International Bureau by debit to a current
account with the International Bureau. In this case, an applicant or
holder's submission to the Office must include the International Bureau
account number; or
(ii) Directly to the International Bureau using any other acceptable
method of payment. In this case, an applicant or holder's submission to
the Office must include the International Bureau receipt number for
payment of the fees; or
(2) Through the Office. Fees paid through the Office must be paid in
U.S. dollars at the time of submission. See 2.207 of this chapter
for acceptable forms of payment and 2.208 of this chapter for
payments using a deposit account established in the Office.
(c) The International Bureau fee calculator may be viewed on the Web
site of the World Intellectual Property Organization, currently
available at: http://www.wipo.int/madrid/en/.
Subpart B - International Application Originating From the United States
7.11 Requirements for international application originating
from the United States.
(a) The Office will grant a date of receipt to an international
application that is submitted through TEAS and contains all of the
following:
(1) The filing date and serial number of the basic application and/or
the registration date and registration number of the basic
registration;
(2) The name of the international applicant that is identical to the
name of the applicant or registrant as it appears in the basic
application or basic registration and applicant's current address;
(3) A reproduction of the mark that is the same as the mark in the
basic application and/or registration and meets the requirements of
2.52 of this chapter. If the mark in the basic application and/or
registration is depicted in black and white and the basic application
or registration does not include a color claim, the reproduction of the
mark in the international application must be black and white. If the
mark in the basic application or registration is depicted in black and
white and includes a color claim, the international application must
include both a black and white reproduction of the mark and a color
reproduction of the mark. If the mark in the basic application and/or
registration is depicted in color, the reproduction of the mark in the
international application must be in color;
(4) A color claim as set out in 7.12, if appropriate;
(5) A description of the mark that is the same as the description of
the mark in the basic application or registration, as appropriate;
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(6) An indication of the type of mark if the mark in the basic
application and/or registration is a three-dimensional mark, a sound
mark, a collective mark or a certification mark;
(7) A list of the goods and/or services that is identical to or
narrower than the list of goods and/or services in each claimed basic
application or registration and classified according to the Nice
Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks;
(8) A list of the designated Contracting Parties. If the goods and/or
services in the international application are not the same for each
designated Contracting Party, the application must list the goods and/
or services in the international application that pertain to each
designated Contracting Party;
(9) The certification fee required by 7.6, the international
application fees for all classes, and the fees for all designated
Contracting Parties identified in the international application (see
7.7);
(10) A statement that the applicant is entitled to file an
international application in the Office, specifying that applicant: Is
a national of the United States; has a domicile in the United States;
or has a real and effective industrial or commercial establishment in
the United States. Where an applicant's address is not in the United
States, the applicant must provide the address of its U.S. domicile or
establishment; and
(11) An e-mail address for receipt of correspondence from the Office.
(b) For requirements for certification, see 7.13.
7.12 Claim of color.
(a) If color is claimed as a feature of the mark in the basic
application and/or registration, the international application must
include a statement that color is claimed as a feature of the mark and
set forth the same name(s) of the color(s) claimed in the basic
application and/or registration.
(b) If color is not claimed as a feature of the mark in the basic
application and/or registration, color may not be claimed as a feature
of the mark in the international application.
7.13 Certification of international application.
(a) When an international application contains all the elements
set forth in 7.11(a), the Office will certify to the International
Bureau that the information contained in the international application
corresponds to the information contained in the basic application(s)
and/or basic registration(s) at the time of certification, and will
then forward the international application to the International Bureau.
(b) When an international application does not meet the requirements of
7.11(a), the Office will not certify or forward the international
application. If the international applicant paid the international
application fees (see 7.7) through the Office, the Office will
refund the international fees. The Office will not refund the
certification fee.
7.14 Correcting irregularities in international application.
(a) Response period. Upon receipt of a notice of irregularities
in an international application from the International Bureau, the
applicant must respond to the International Bureau within the period
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set forth in the notice.
(b) Classification and Identification of Goods and Services. Responses
to International Bureau notices of irregularities in the classification
or identification of goods or services in an international application
must be submitted through the Office for forwarding to the
International Bureau. The Office will review an applicant's response to
a notice of irregularities in the identification of goods or services
to ensure that the response does not identify goods or services that
are broader than the scope of the goods or services in the basic
application or registration.
(c) Fees. If the International Bureau notice of irregularities requires
the payment of fees, the fees for correcting irregularities in the
international application must be paid directly to the International
Bureau.
(d) Other Irregularities Requiring Response from Applicant. Except for
responses to irregularities mentioned in paragraph (b) of this section
and payment of fees for correcting irregularities mentioned in
paragraph (c) of this section, all other responses may be submitted
through the Office in accordance with 7.14(e), or filed directly at
the International Bureau. The Office will forward timely responses to
the International Bureau, but will not review the responses or respond
to any irregularities on behalf of the international applicant.
(e) Procedure for response. An international applicant submitting a
response to the International Bureau through the Office must use TEAS.
To be considered timely, a response must be received by the
International Bureau before the end of the response period set forth in
the International Bureau notice. Receipt in the Office does not fulfill
this requirement. Any response submitted through the Office for
forwarding to the International Bureau should be submitted as soon as
possible, but at least one month before the end of the response period
in the International Bureau's notice. The Office will not process any
response submitted to the Office after the IB response deadline.
Subpart C - Subsequent Designation Submitted Through the Office
7.21 Subsequent designation.
(a) A subsequent designation may be filed directly with the
International Bureau, or, if it meets the requirements of paragraph (b)
of this section, submitted through the Office.
(b) The date of receipt in the Office of a subsequent designation is
the date that the subsequent designation is submitted through TEAS, if
it contains all of the following:
(1) The international registration number;
(2) The serial number of the U.S. application or registration number of
the U.S. registration that formed the basis of the international
registration;
(3) The name and address of the holder of the international
registration;
(4) A statement that the holder is entitled to file a subsequent
designation in the Office, specifying that holder: Is a national of the
United States; has a domicile in the United States; or has a real and
effective industrial or commercial establishment in the United States.
Where a holder's address is not in the United States, the holder must
provide the address of its U.S. domicile or establishment;
(5) A list of goods and/or services that is identical to or narrower
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than the list of goods and/or services in the international
registration;
(6) A list of the designated Contracting Parties. If the goods and/or
services in the subsequent designation are not the same for each
designated Contracting Party, the holder must list the goods and/or
services covered by the subsequent designation that pertain to each
designated Contracting Party;
(7) The U.S. transmittal fee required by 7.6 and the subsequent
designation fees (see 7.7); and
(8) An e-mail address for receipt of correspondence from the Office.
(c) If the subsequent designation is accorded a date of receipt, the
Office will then forward the subsequent designation to the
International Bureau.
(d) If the subsequent designation fails to contain all the elements set
forth in paragraph (b) of this section, the Office will not forward the
subsequent designation to the International Bureau. The Office will
notify the holder of the reason(s). If the holder paid the subsequent
designation fees (see 7.7) through the Office, the Office will
refund the subsequent designation fees. The Office will not refund the
transmittal fee.
(e) Correspondence to correct any irregularities in a subsequent
designation must be made directly with the International Bureau.
Subpart D - Recording Changes to International Registration
7.22 Recording changes to international registration.
Except as provided in 7.23 and 7.24, requests to record
changes to an international registration must be filed with the
International Bureau. If a request to record an assignment or
restriction of a holder's right of disposal of an international
registration or the release of such a restriction meets the
requirements of 7.23 or 7.24, the Office will forward the request to
the International Bureau. Section 10 of the Act and part 3 of this
chapter are not applicable to assignments or restrictions of
international registrations.
7.23 Requests for recording assignments at the International Bureau.
A request to record an assignment of an international
registration may be submitted through the Office for forwarding to the
International Bureau only if the assignee cannot obtain the assignor's
signature for the request to record the assignment.
(a) A request to record an assignment submitted through the Office must
include all of the following:
(1) The international registration number;
(2) The name and address of the holder of the international
registration;
(3) The name and address of the assignee of the international
registration;
(4) A statement that the assignee: Is a national of the United States;
has a domicile in the United States; or has a real and effective
industrial or commercial establishment in the United States. Where an
assignee's address is not in the United States, the assignee must
provide the address of its U.S. domicile or establishment;
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(5) A statement that the assignee could not obtain the assignor's
signature for the request to record the assignment;
(6) An indication that the assignment applies to the designation to the
United States;
(7) A statement that the assignment applies to all the goods and/or
services in the international registration, or if less, a list of the
goods and/or services in the international registration that have been
assigned that pertain to the designation to the United States; and
(8) The U.S. transmittal fee required by 7.6 and the international
fee required to record the assignment (see 7.7).
(b) If a request to record an assignment contains all the elements set
forth in paragraph (a) of this section, the Office will forward the
request to the International Bureau. Forwarding the request to the
International Bureau is not a determination by the Office of the
validity of the assignment or the effect that the assignment has on the
title of the international registration.
(c) If the request fails to contain all the elements set forth in
paragraph (a) of this section, the Office will not forward the request
to the International Bureau. The Office will notify the assignee(s) of
the reason(s). If the assignee paid the fees to record the assignment
(see 7.7) through the Office, the Office will refund the recording
fee. The Office will not refund the transmittal fee.
(d) Correspondence to correct any irregularities in a request to record
an assignment must be made directly with the International Bureau.
7.24 Requests to record security interest or other restriction
of holder's rights of disposal or release of such restriction submitted
through the Office.
(a) A party who obtained a security interest or other
restriction of a holder's right to dispose of an international
registration, or the release of such a restriction, may submit a
request to record the restriction or release through the Office for
forwarding to the International Bureau only if:
(1) The restriction or release:
(i) Is the result of a court order; or
(ii) Is the result of an agreement between the holder of the
international registration and the party restricting the holder's right
of disposal, and the signature of the holder cannot be obtained for the
request to record the restriction or release;
(2) The party who obtained the restriction is a national of, is
domiciled in, or has a real and effective industrial or commercial
establishment in the United States; and
(3) The restriction or release applies to the holder's right to dispose
of the international registration in the United States.
(b) A request to record a restriction or the release of a restriction
must be submitted by the party who obtained the restriction of the
holder's right of disposal and include all the following:
(1) The international registration number;
(2) The name and address of the holder of the international
registration;
(3) The name and address of the party who obtained the restriction;
(4) A statement that the party who submitted the request: Is a national
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of the United States; has a domicile in the United States; or has a
real and effective industrial or commercial establishment in the United
States. Where a party's address is not in the United States, the party
must provide the address of its U.S. domicile or establishment;
(5) (i) A statement that the restriction is the result of a court
order, or
(ii) Where the restriction is the result of an agreement between the
holder of the international registration and the party restricting the
holder's right of disposal, a statement that the signature of the
holder of the international registration could not be obtained for the
request to record the restriction or release of the restriction;
(6) A summary of the main facts concerning the restriction;
(7) An indication that the restriction, or the release of the
restriction, of the holder's right of disposal of the international
registration applies to the designation to the United States; and
(8) The U.S. transmittal fee required by 7.6.
(c) If a request to record a restriction, or the release of a
restriction, contains all the elements set forth in paragraph (b) of
this section, the Office will forward the request to the International
Bureau. Forwarding the request to the International Bureau is not a
determination by the Office of the validity of the restriction, or its
release, or the effect that the restriction has on the holder's right
to dispose of the international registration.
(d) If the request fails to contain all the elements set forth in
paragraph (b) of this section, the Office will not forward the request.
The Office will notify the party who submitted the request of the
reason(s). The Office will not refund the transmittal fee.
(e) Correspondence to correct any irregularities in a request to record
a restriction of a holder's right to dispose of an international
registration or the release of such a restriction must be made directly
with the International Bureau.
Subpart E - Extension of Protection to the United States
7.25 Sections of part 2 applicable to extension of protection.
(a) Except for 2.130-2.131, 2.160-2.166, 2.168, 2.172,
2.173, 2.175, and 2.181-2.186, all sections in part 2 and all sections
of part 10 of this chapter apply to a request for extension of
protection of an international registration to the United States,
including sections related to proceedings before the Trademark Trial
and Appeal Board, unless stated otherwise.
(b) The Office will refer to a request for an extension of protection
to the United States as an application under section 66(a) of the Act,
and references to applications and registrations in part 2 of this
chapter include extensions of protection to the United States.
(c) Upon registration in the United States under section 69 of the Act,
an extension of protection to the United States is referred to as a
registration, a registered extension of protection, or a section 66(a)
registration.
7.26 Filing date of extension of protection for purposes of
examination in the Office.
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(a) If a request for extension of protection of an
international registration to the United States is made in an
international application and the request includes a declaration of a
bona fide intention to use the mark in commerce as set out in
2.33(e) of this chapter, the filing date of the extension of protection
to the United States is the international registration date.
(b) If a request for extension of protection of an international
registration to the United States is made in a subsequent designation
and the request includes a declaration of a bona fide intention to use
the mark in commerce as set out in 2.33(e), the filing date of the
extension of protection to the United States is the date that the
International Bureau records the subsequent designation.
7.27 Priority claim of extension of protection for purposes of
examination in the Office.
An extension of protection of an international registration to
the United States is entitled to a claim of priority under section 67
of the Act if:
(a) The request for extension of protection contains a claim of
priority;
(b) The request for extension of protection specifies the filing date,
serial number and the country of the application that forms the basis
for the claim of priority; and
(c) The date of the international registration or the date of recording
of the subsequent designation at the International Bureau of the
request for extension of protection to the United States is not later
than six months after the filing date of the application that forms the
basis for the claim of priority.
7.28 Replacement of U.S. registration by registered extension
of protection.
(a) A registered extension of protection affords the same
rights as those afforded to a previously issued U.S. registration if:
(1) Both registrations are owned by the same person and identify the
same mark; and
(2) All the goods and/or services listed in the U.S. registration are
also listed in the registered extension of protection.
(b) The holder of an international registration with a registered
extension of protection to the United States that meets the
requirements of paragraph (a) of this section may file a request to
note replacement of the U.S. registration with the extension of
protection. If the request contains all of the following, the Office
will take note of the replacement in its automated records:
(1) The serial number or registration number of the extension of
protection;
(2) The registration number of the replaced U.S. registration; and
(3) The fee required by 7.6.
(c) If the request to note replacement is denied, the Office will
notify the holder of the reason(s) for refusal.
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7.29 Effect of replacement on U.S. registration.
A U.S. registration that has been replaced by a registered
extension of protection under section 74 of the Act and 7.28 will
remain in force, unless cancelled, expired or surrendered, as long as:
(a) The owner of the replaced U.S. registration continues to file
affidavits or declarations of use in commerce or excusable nonuse under
section 8 of the Act; and
(b) The replaced U.S. registration is renewed under section 9 of the
Act.
7.30 Effect of cancellation or expiration of international
registration.
When the International Bureau notifies the Office of the
cancellation or expiration of an international registration, in whole
or in part, the Office shall cancel, in whole or in part, the
corresponding pending or registered extension of protection to the
United States. The date of cancellation of an extension of protection
or relevant part shall be the date of cancellation or expiration of the
corresponding international registration or relevant part.
7.31 Requirements for transformation of an extension of
protection to the United States into a U.S. application.
If the International Bureau cancels an international
registration in whole or in part, under Article 6(4) of the Madrid
Protocol, the holder of that international registration may file a
request to transform the corresponding pending or registered extension
of protection to the United States into an application under section 1
or 44 of the Act.
(a) The holder of the international registration must file a request
for transformation through TEAS within three months of the date of
cancellation of the international registration and include:
(1) The serial number or registration number of the extension of
protection to the United States;
(2) The name and address of the holder of the international
registration;
(3) The application filing fee for at least one class of goods or
services required by 2.6(a)(1) of this chapter; and
(4) An e-mail address for receipt of correspondence from the Office.
(b) If the request for transformation contains all the elements set
forth in paragraph (a) of this section, the extension of protection
shall be transformed into an application under section 1 and/or 44 of
the Act and accorded the same filing date and the same priority that
was accorded to the extension of protection.
(c) The application under section 1 and/or 44 of the Act that results
from a transformed extension of protection will be examined under part
2 of this chapter.
(d) A request for transformation that fails to contain all the elements
set forth in paragraph (a) of this section will not be accepted.
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Subpart F - Affidavit Under Section 71 of the Act for Extension of
Protection to the United States
7.36 Affidavit or declaration of use in commerce or excusable
nonuse required to avoid cancellation of an extension of protection to
the United States.
(a) Subject to the provisions of section 71 of the Act, a
registered extension of protection shall remain in force for the term
of the international registration upon which it is based unless the
international registration expires or is cancelled under section 70 of
the Act due to cancellation of the international registration by the
International Bureau.
(b) During the following time periods, the holder of an international
registration must file an affidavit or declaration of use or excusable
nonuse, or the registered extension of protection will be cancelled
under section 71 of the Act:
(1) On or after the fifth anniversary and no later than the sixth
anniversary after the date of registration in the United States; and
(2) Within the six-month period preceding the end of each ten-year
period after the date of registration in the United States, or the
three-month grace period immediately following, with payment of the
grace period surcharge required by section 71(a)(2)(B) of the Act and
7.6.
7.37 Requirements for a complete affidavit or declaration of
use in commerce or excusable nonuse.
A complete affidavit or declaration under section 71 of the Act must:
(a) Be filed by the holder of the international registration within the
period set forth in 7.36(b);
(b) Include a statement that is signed and verified (sworn to) or
supported by a declaration under 2.20 of this chapter by a person
properly authorized to sign on behalf of the holder, attesting to the
use in commerce or excusable nonuse of the mark within the period set
forth in section 71 of the Act. The verified statement must be executed
on or after the beginning of the filing period specified in 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; or
(2) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the holder; or
(3) An attorney as defined in 10.1(c) of this chapter who has an
actual written or verbal power of attorney or an implied power of
attorney from the holder.
(c) Include the U.S. registration number;
(d)(1) Include the fee required by 7.6 for each class of goods or
services that the affidavit or declaration covers;
(2) If the affidavit or declaration is filed during the grace period
under section 71(a)(2)(B) of the Act, include the grace period
surcharge per class required by 7.6;
(3) If at least one fee is submitted for a multi-class registration,
but the class(es) to which the fee(s) should be applied are not
specified, the Office will issue a notice requiring either the
submission of additional fee(s) or an indication of the class(es) to
which the original fee(s) should be applied. If the required fee(s) are
not submitted within the time period set out in the Office action and
the class(es) to which the original fee(s) should be applied are not
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specified, the Office will presume that the fee(s) cover the classes in
ascending order, beginning with the lowest numbered class;
(e)(1) Specify the goods or services for which the mark is in use in
commerce, and/or the goods or services for which excusable nonuse is
claimed under 7.37(f)(2);
(2) Specify the goods or services being deleted from the registration,
if the affidavit or declaration covers less than all the goods or
services or less than all the classes in the registration;
(f)(1) State that the registered mark is in use in commerce on or in
connection with the goods or services in the registration; or
(2) If the registered mark is not in use in commerce on or in
connection with all the goods or services in the registration, set
forth the date when use of the mark in commerce stopped and the
approximate date when use is expected to resume and recite facts to
show that nonuse as to those goods or services is due to special
circumstances that excuse the nonuse and is not due to an intention to
abandon the mark; and
(g) Include a specimen showing current use of the mark for each class
of goods or services, unless excusable nonuse is claimed under
7.37(f)(2). The specimen must meet the requirements of 2.56 of this
chapter.
7.38 Notice to holder of extension of protection.
The registration certificate for an extension of protection to
the United States includes a notice of the requirement for filing the
affidavit or declaration of use or excusable nonuse under section 71 of
the Act. However, the affidavit or declaration must be filed within the
time period required by section 71 of the Act regardless of whether
this notice is received.
7.39 Acknowledgment of receipt of affidavit or declaration of
use in commerce or excusable nonuse.
(a) The Office will issue a notice that states an affidavit or
declaration of use in commerce or excusable nonuse is acceptable or if
the affidavit or declaration is refused, an Office action that states
the reason(s) for refusal.
(b) A Response to a refusal under paragraph (a) of this section must be
filed within six months of the mailing date of the Office action, or
before the end of the filing period set forth in section 71(a) of the
Act, whichever is later. The Office will cancel the extension of
protection if no response is filed within this time period.
7.40 Petition to Director to review refusal.
(a) A response to the examiner's initial refusal to accept an
affidavit or declaration is required before filing a petition to the
Director, unless the examiner directs otherwise. See 7.39(b) for the
deadline for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, the holder may file a petition to the Director to review
the examiner's action. The petition must be filed within six months of
the mailing date of the action maintaining the refusal, or the Office
will cancel the registration.
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(c) A decision by the Director is necessary before filing an appeal or
commencing a civil action in any court.
Subpart G - Renewal of International Registration and Extension of
Protection
7.41 Renewal of international registration and extension of
protection.
(a) Any request to renew an international registration and its
extension of protection to the United States must be made at the
International Bureau in accordance with Article 7 of the Madrid
Protocol.
(b) A request to renew an international registration or extension of
protection to the United States submitted through the Office will not
be processed.
September 10, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and
Director of the United States Patent and
Trademark Office
[1275 TMOG 143]