| Trademark Correspondence and Fees |
Referenced Items (440, 441, 442, 443, 444, 445, 446, 447, 448, 449, 450, 451, 452, 453, 454) |
(441) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 2
[Docket No. PTO-T-2008-0021]
RIN 0651-AC26
Changes in Requirements for
Signature of Documents, Recognition of Representatives, and
Establishing and Changing the Correspondence Address in Trademark Cases
AGENCY: United States Patent and Trademark Office, Commerce.
ACTIONS: Proposed rule.
SUMMARY: The United States Patent and Trademark Office ("Office")
proposes to revise the Trademark Rules of Practice to set forth the
requirements for signature of documents filed in the Office,
recognition of representatives, and establishing and changing the
correspondence address in trademark cases.
DATES: Comments must be received by August 11, 2008 to ensure
consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to TMSignature@uspto.gov. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building - East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Mary Hannon; or by electronic mail message via the Federal eRulemaking
Portal. See the Federal eRulemaking Portal Web site (http://frwebgate.
access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=
http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal. The comments will be available
for public inspection on the Office's Web site at http://frwebgate.
access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=
http://www.uspto.gov, and will also be available at the Office of the
Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany Street,
Alexandria, Virginia.
SUPPLEMENTARY INFORMATION: The Office proposes to revise the Trademark
Rules of Practice (37 CFR Part 2) to set forth the requirements for
signature of documents filed in the Office, recognition of
representatives, and establishing and changing the correspondence
address in trademark cases. The purpose of the rule is to codify and
clarify current practice.
References below to "the Act," "the Trademark Act," or "the
statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as
amended. References to "TMEP" or "Trademark Manual of Examining Procedure"
refer to the 5th edition, September 2007. References to a "party to a
proceeding" refer to a party to a proceeding before the Trademark
Trial and Appeal Board, e.g., an opposer, cancellation petitioner, or a
party to an interference or concurrent use proceeding.
Overview of Current Practice
Persons Authorized To Represent Others
Under 37 CFR 10.14, only the following individuals may represent an
applicant, registrant, or party to a proceeding before the Office in a
trademark case:
An attorney as defined in § 10.1(c), i.e., an attorney
who is a member in good standing of the bar of the highest court of a
state in the United States;
A Canadian patent agent who is registered and in good
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standing as a patent agent under § 11.6(c) for the limited purpose
of representing parties located in Canada;
A Canadian attorney or agent who has been granted
recognition by the Director of the Office of Enrollment and Discipline
of the United States Patent and Trademark Office ("OED Director") to
represent parties located in Canada; or
An individual who is not an attorney but was recognized to
practice before the Office in trademark cases under this chapter prior
to January 1, 1957.
See Trademark Manual of Examining Procedure ("TMEP") Sections 602 and
602.06 et seq.
An individual who does not meet the requirements of § 10.14
cannot: Prepare documents to be filed in the Office; sign amendments,
responses to Office actions, petitions to the Director under § 2.146,
or letters of express abandonment; authorize examiner's amendments,
priority actions, or changes of correspondence address; or otherwise
represent an applicant, registrant, or party to a proceeding in the
Office. 5 U.S.C. 500(d); 37 CFR 10.14(e); TMEP sections 602.03
and 605.02.
Recognition of Representative
To be recognized as a representative, a practitioner who meets the
requirements of § 10.14 ("qualified practitioner") may:
File a power of attorney signed by the applicant,
registrant, or party to a proceeding in a trademark case, or by someone
with legal authority to bind the applicant, registrant, or party (e.g.,
a corporate officer or general partner of a partnership);
Sign a document on behalf of an applicant, registrant, or
party to a proceeding who is not already represented by a qualified
practitioner from a different firm; or
Appear in person on behalf of an applicant, registrant, or
party to a proceeding who is not already represented by a qualified
practitioner from a different firm.
37 CFR 2.17(c); TMEP sections 602.01 and 602.07.
Once the Office has recognized a qualified practitioner as the
representative of an applicant or registrant, the Office will
communicate and conduct business only with that practitioner, or with
another qualified practitioner from the same firm. The Office will not
conduct business directly with the applicant or registrant, or with
another qualified practitioner from a different firm, unless the
applicant or registrant files a new power of attorney or revocation of
the previous power. TMEP sections 601.02, 602.07, and 603.02(a).
For purposes of recognition as a representative, the Office
considers a power of attorney to end when the mark is registered, when
ownership changes, or when the application is abandoned. TMEP section
602.01.
After a change in ownership has been recorded, if a new qualified
practitioner appears on behalf of the new owner, the Office will
communicate and conduct business with that practitioner even if no new
power of attorney or revocation of the previous power is filed. On the
other hand, if the previously recognized practitioner appears on behalf
of the new owner (which might occur when the new owner is a related
company), the Office will continue to conduct business and correspond
with that practitioner.
Establishing the Correspondence Address for Application or Registration
Upon receipt of an application, the Office enters the
correspondence address in accordance with the following guidelines:
If the application is transmitted by a qualified
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practitioner, or includes a power of attorney designating a qualified
practitioner, the Office will send correspondence to the practitioner.
If an application is not being prosecuted by a qualified
practitioner and the applicant has not designated a correspondence
address, but a domestic representative has been appointed, the Office
will send correspondence to the domestic representative.
If an application is not being prosecuted by a qualified
practitioner but the applicant designates in writing a correspondence
address other than its own address, the Office will send correspondence
to that address.
If the application is not being prosecuted by a qualified
practitioner, no domestic representative has been appointed, and the
applicant has not designated a different address for correspondence,
the Office will send correspondence directly to the applicant at its
address of record.
37 CFR 2.18; TMEP section 603.01
The Office reestablishes the correspondence address in accordance
with these same guidelines upon the examination of an affidavit of use
or excusable nonuse under section 8 of the Trademark Act, affidavit or
declaration of incontestability under section 15 of the Act, renewal
application under section 9 of the Act, or request for amendment or
correction of a registration under section 7 of the Act. TMEP section
603.02(c). Due to the length of time that elapses between registration
and filings under sections 7, 8, 9, 15 and 71 of the Act (which can be
10 years or more), the Office will recognize a qualified practitioner
who transmits such a filing even if there is no new power of attorney
or revocation of a previous power.
Changing the Correspondence Address
Once the correspondence address is established as discussed above,
the Office will send correspondence to that address unless there is a
written request to change the address, signed by the practitioner who
has been recognized by the Office, or by the applicant or registrant or
someone with legal authority to bind the applicant or registrant (e.g.,
a corporate officer or general partner of a partnership) if the
applicant or registrant is not represented by a qualified practitioner.
37 CFR 2.18(b); TMEP sections 601.02, 602.07, and 603.02(a).
Once the Office has recognized a qualified practitioner as the
representative of an applicant or registrant, only that practitioner,
or another qualified practitioner from the same firm, can sign a
request to change the address, unless the applicant or registrant files
a new power of attorney or revocation of the previous power, or the
recognized practitioner files a request to withdraw. TMEP sections
603.02(a) and 605.02.
If a qualified practitioner transmits documents on behalf of an
applicant or registrant who is not already represented by another
qualified practitioner from a different firm, the Office will construe
this as including a request to change the correspondence address to that
of the practitioner. TMEP section 603.02(a).
Documents Must Be Properly Signed
Because an individual who is not authorized under § 10.14
cannot represent an applicant, registrant, or party to a proceeding
before the Office, the Office will not act on documents that are not
properly signed. TMEP sections 602.03 and 605.02. When it is unclear
whether a response to an Office action is signed by a proper person,
the Office will notify the applicant or registrant that the response is
incomplete. See TMEP sections 605.05(a) and 712.03 regarding notices of
incomplete response. When it is unclear whether a document other than a
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response to an Office action is signed by a proper person, the Office
will notify the applicant or registrant that no action will be taken on
the document, unless the applicant or registrant either establishes the
signatory's authority or submits a properly signed document. See TMEP
section 605.05.
Unauthorized Practice
When the Office learns that a person who is not qualified under
§ 10.14 is acting as the representative of an applicant,
registrant, or party to a proceeding, the Office will notify the
affected applicant, registrant, or party that the individual is not
entitled to practice before the Office in trademark matters, and
therefore, may not represent the applicant, registrant, or party; that
any power of attorney is void ab initio; that the individual may not
sign responses to Office actions; and that all correspondence will be
sent to the domestic representative if one has been designated, or
alternatively, to the applicant, registrant, or party to a proceeding
at its address of record. If the Office receives a response signed by
such an unqualified person, the response will be treated as incomplete.
This same practice is followed when the Office learns that a
practitioner has been suspended or excluded from practice before the
Office.
Discussion of Proposed Rules Changes
Where appropriate, the Office proposes to reword or reorganize the
rules for clarity, and to add headings to make it easier to navigate
through the rules.
The Office proposes to redesignate § 2.17(a) as § 2.17(b)(2).
The Office proposes to redesignate § 2.17(b) as § 2.17(f).
The Office proposes to redesignate § 2.17(c) as § 2.17(b),
and to revise it to provide that the Office will recognize a qualified
practitioner who signs a document or appears in person in a trademark
case only if the applicant, registrant, or party to a proceeding is not
already represented by a qualified practitioner from a different firm.
This is consistent with TMEP sections 602.01 and 602.07.
The Office proposes to set forth the requirements for powers of
attorney in § 2.17(c). A power must: (1) Designate by name at least
one practitioner who meets the requirements of 37 CFR 10.14; and (2) be
signed by the individual applicant, registrant, or party to a
proceeding pending before the Office, or by someone with legal
authority to bind the applicant, registrant, or party (e.g., a
corporate officer or general partner of a partnership). Once the
applicant, registrant, or party to a proceeding has designated a
qualified practitioner(s), that practitioner may sign an associate
power of attorney appointing another qualified practitioner(s) as an
additional person(s) authorized to represent the applicant, registrant,
or party to a proceeding. This is consistent with TMEP sections 602.01
and 602.01(b).
The Office proposes to amend § 2.17(d) to add a provision that
the owner of an application or registration may appoint an attorney
through TEAS for up to 20 applications or registrations that have the
identical owner and attorney. This is consistent with TMEP section
602.01(a).
The Office proposes to add § 2.17(e) to set forth the
circumstances under which a Canadian attorney or agent may represent
parties located in Canada. A Canadian patent agent who is registered
with the Office and in good standing as a patent agent under § 11.6(c)
may represent parties located in Canada before the Office in
trademark matters. A Canadian attorney or agent who is registered or in
good standing with the Canadian Intellectual Property Office, but not
registered as a patent agent under § 11.6(c), may represent parties
located in Canada if he or she has been authorized to do so by the OED
Director. Before undertaking to represent an applicant, registrant, or
party before the Office, and before filing a paper with the Office, a
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Canadian attorney or agent who is not registered with the Office and in
good standing as a patent agent under § 11.6(c) must both file a
request for and be granted recognition to practice before the Office in
trademark cases. The request for recognition must be filed with OED.
The request must be granted by the OED Director before representation
is undertaken and before any application or other document is filed in
the Office. The request for recognition must include proof that he/she
satisfies the requirements of 35 U.S.C. 32 and 37 CFR § 10.14(c).
This is consistent with TMEP section 602.06(a). The Office has
separately proposed to replace 37 CFR 10.14(c) with 37 CFR 11.14(c) and
add 37 CFR 11.14(f). Under 37 CFR 11.14(c), a Canadian attorney or
agent will be required to file a written application for reciprocal
recognition under 37 CFR 11.14(f), provide evidence satisfying § 11.14(c),
and pay an application fee that will be required by 37 CFR 1.21(a)(1)(i).
Once recognized by OED, the Canadian attorney or agent can only
represent parties who are located in Canada. He or she cannot represent
Canadian nationals who are not located in Canada. Thus, a Canadian
attorney or agent could not represent a Canadian national who resides
in California and has access to a mailing address in Canada.
The Office proposes to add § 2.17(g)(1), to provide that the
Office considers a power of attorney to end with respect to a pending
application when the mark is registered, when ownership changes, or
when the application is abandoned. This is consistent with TMEP section
602.01.
The Office proposes to add § 2.17(g)(2), to provide that the
Office considers a power of attorney filed after registration to end
when the mark is cancelled or expired, or when ownership changes. If
the power was filed in connection with an affidavit of use or excusable
nonuse under section 8 or 71 of the Trademark Act, affidavit or
declaration of incontestability under section 15 of the Act, renewal
application under section 9 of the Act, or request for amendment or
correction under section 7 of the Act, the power is deemed to end upon
acceptance or final rejection of the filing.
Current § 2.18 sets forth the procedures for establishing the
correspondence address. The Office proposes to revise and reorganize
§ 2.18 to clarify the procedures for establishing and changing a
correspondence address.
Proposed § 2.18(a)(2) provides that if a qualified practitioner
transmits a document(s) on behalf of an applicant, registrant, or party
to a proceeding in a trademark case, the Office will send
correspondence to the practitioner transmitting the documents only if
the applicant, registrant, or party to a proceeding is not already
represented by another qualified practitioner. This is consistent with
TMEP sections 602.07, 603.01, and 603.02(a).
Proposed § 2.18(a)(6) provides that the Office will send
correspondence to only one address. This is consistent with current
§ 2.18(b).
Proposed § 2.18(a)(7) provides that once the Office has
recognized a qualified practitioner as the representative of an
applicant, registrant, or party to a proceeding, the Office will
communicate and conduct business only with that practitioner, or with
another qualified practitioner from the same firm. The Office will not
conduct business directly with the applicant, registrant, or party to a
proceeding, or with another qualified practitioner from a different
firm, unless the applicant, registrant, or party to a proceeding files
a revocation of the power of attorney under § 2.19(a), and/or a new
power of attorney that meets the requirements of § 2.17(c). The
proposed rule further provides that a written request to change the
correspondence address does not revoke a power of attorney. This is
consistent with TMEP sections 601.02, 602.07, and 603.02(a).
Proposed § 2.18(b)(1) provides that when a physical or e-mail
correspondence address changes, the applicant, registrant, or party to
a proceeding must file a written request to change the correspondence
address. The request should be promptly filed. This is consistent with
TMEP section 603.03.
Proposed § 2.18(b)(2) provides that a request to change the
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correspondence address must be made in writing, signed by the
applicant, registrant, or party to a proceeding, someone with legal
authority to bind the applicant, registrant, or party (e.g., a
corporate officer or general partner of a partnership), or a qualified
practitioner, in accordance with § 2.193(e)(2). This is consistent
with current § 2.18(b) and TMEP sections 603.02 and 603.02(a).
Proposed § 2.18(b)(3) provides that if an applicant or
registrant files a new power of attorney that meets the requirements of
§ 2.17(c), the Office will change the correspondence address to
that of the practitioner named in the power.
Proposed § 2.18(b)(4) provides that if a qualified practitioner
transmits a document(s) on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by another qualified
practitioner, the Office will construe this as including a request to
change the correspondence address to that of the practitioner, and will
send correspondence to the practitioner. This is consistent with TMEP
section 603.02(a).
The Office proposes to add § 2.18(c)(1), to provide that even
if there is no new power of attorney or written request to change the
correspondence address, the Office will change the correspondence
address upon the examination of an affidavit of use or excusable nonuse
under section 8 or 71 of the Trademark Act, affidavit or declaration of
incontestability under section 15 of the Act, renewal application under
section 9 of the Act, or request for amendment or correction under
section 7 of the Act. This is consistent with TMEP section 603.02(c).
Due to the length of time that elapses between filings under sections
7, 8, 9, 15 and 71 of the Act (which can be 10 years or more), the
Office automatically enters a new correspondence address upon
examination of each filing.
The Office proposes to add § 2.18(c)(2), to provide that once
the Office establishes a correspondence address upon examination of an
affidavit, renewal application or section 7 request, a written request
to change the address is required to change the address during the
pendency of that filing.
Example 1: Attorney A transmits an affidavit of use under
section 8, and the examiner issues an Office action in connection
with the affidavit. If another attorney from a different firm
(Attorney B) wants to file a response to the Office action, Attorney
B must file a new power of attorney and/or revocation of the
previous power, signed by the owner of the registration or someone
with legal authority to bind the owner, before the Office will act
on the response and send correspondence to Attorney B.
Example 2: Attorney A transmits an affidavit of use under
section 8, and the Office accepts the affidavit. If another attorney
from a different firm (Attorney B) later files a request for
amendment under section 7, the Office will recognize and correspond
with Attorney B regardless of whether a new power of attorney or
revocation of the previous power is filed.
Example 3: Attorney A transmits an affidavit of use under
section 8, and the examiner issues an Office action in connection
with the affidavit. If another attorney from a different firm
(Attorney B) wants to file a request for amendment under section 7
before the Office accepts or issues a final rejection of the section
8 affidavit, Attorney B must file a new power of attorney and/or
revocation of the previous power, signed by the owner of the
registration or someone with legal authority to bind the owner,
before the Office will act on the section 7 request and send
correspondence to Attorney B.
The Office proposes to revise § 2.19(a) to clarify the
requirements for revocation of a power of attorney. Proposed § 2.19(a)(1)
provides that a request to revoke a power of attorney must
be signed by the applicant, registrant, or party to a proceeding, or by
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someone with legal authority to bind the applicant, registrant, or
party. This is consistent with TMEP section 602.04.
The Office proposes to add § 2.19(a)(3), stating that a request
to change the correspondence address does not revoke a power of
attorney.
The Office proposes to add § 2.19(a)(4), stating that a new
power of attorney that meets the requirements of § 2.17(c) will be
treated as a revocation of the previous power.
The Office proposes to remove the provision in the current § 2.19(a)
that the Office will notify the affected person of the
revocation of his or her authorization. The Office no longer issues
such notices. Anyone who wants to know whether the revocation of a
power of attorney has been entered can check the TARR database on the
Office's Web site at http://frwebgate.access.gpo.gov/cgi-bin/leaving.
cgi?from=leavingFR.html&log=linklog&to=http://tarr.uspto.gov.
The Office proposes to revise § 2.19(b) to set forth the
requirements for filing a request to withdraw as attorney. This is
consistent with TMEP section 602.05. The request should be filed soon
after the practitioner notifies the client of his/her intent to
withdraw, and must include the application serial number, registration
number, or proceeding number; a statement of the reason(s) for the
request to withdraw; and either (1) a statement that the practitioner
has given due notice to the client that the practitioner is withdrawing
from employment and will be filing the necessary documents with the
Office; that the client was given notice of the withdrawal at least two
months before the expiration of the response period, if applicable;
that the practitioner has delivered to the client all documents and
property in the practitioner's file concerning the application or
registration to which the client is entitled; and that the practitioner
has notified the client of any responses that may be due, and of the
deadline for response; or (2) if there is more than one attorney of
record, a statement that representation by co-counsel is ongoing.
The Office proposes to amend § 2.22(a)(11) to change a cross-
reference.
The Office proposes to amend § 2.23(a)(2), which requires that
a TEAS Plus applicant continue to receive communications from the
Office by electronic mail during the pendency of the application, to
add a requirement that a TEAS Plus applicant maintain a valid e-mail
correspondence address in order to maintain TEAS Plus status. If the
e-mail address changes, the applicant must notify the Office of the
change.
The Office proposes to redesignate § 2.24 as § 2.24(a), and
amend it to provide that if an applicant is not domiciled in the United
States, the applicant may designate the name and address of some person
resident in the United States on whom may be served notices or process in
proceedings affecting the mark by: (1) Setting forth the name of the
domestic representative in the initial application, or (2) filing a
separate designation signed by the applicant, someone with legal
authority to bind the applicant (e.g., a corporate officer or general
partner of a partnership), or a qualified practitioner.
Where the designation of domestic representative is set forth in
the initial application, the designation may be signed by a person
authorized to sign the application on behalf of applicant, pursuant to
proposed § 2.193(e)(1). The Office does not question the authority
of the signatory, unless there is an inconsistency in the record as to
the signatory's authority to sign. TMEP section 804.04.
The Office proposes to add new § 2.24(b), to provide that a
request to change or revoke a designation of domestic representative
must be signed by the applicant, someone with legal authority to bind
the applicant, or a qualified practitioner.
The Office proposes to amend § 2.33(a) to remove the definition
of "person properly authorized to sign" a verification on behalf of
applicant, and replace it with a cross-reference to proposed § 2.193(e)(1).
The substance of this definition is unchanged.
The Office proposes to remove § 2.33(d), which provided for
signature of verifications in applications filed through TEAS, because
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it is unnecessary. The procedure for signing a TEAS document is set
forth in proposed § 2.193(c). This procedure is unchanged.
The Office proposes to amend § 2.62 and its heading to add a
requirement that a response to an Office action be signed by the
applicant, someone with legal authority to bind the applicant, or a
qualified practitioner, in accordance with the requirements of proposed
§ 2.193(e)(2). This includes responses to suspension inquiries or
letters of suspension. This is consistent with TMEP section 712.01.
The Office proposes to amend § 2.64(b) to add a requirement
that a request for reconsideration of a final action be signed by the
applicant, someone with legal authority to bind the applicant, or a
qualified practitioner, in accordance with the requirements of proposed
§ 2.193(e)(2). This is consistent with current practice.
The Office proposes to amend § 2.68 to add a requirement that a
request for express abandonment of an application be signed by the
applicant, someone with legal authority to bind the applicant, or a
qualified practitioner, in accordance with the requirements of proposed
§ 2.193(e)(2). This is consistent with TMEP section 718.01.
The Office proposes to revise § 2.74 to add a new paragraph
(c), requiring that such an amendment be signed by the applicant,
someone with legal authority to bind the applicant, or a qualified
practitioner, in accordance with the requirements of proposed §
2.193(e)(2). This is consistent with TMEP section 605.02.
The Office proposes to amend § 2.76(b)(1) to change a cross-
reference.
The Office proposes to amend § 2.87(d) to add a provision that
a request to divide be signed by the applicant, someone with legal
authority to bind the applicant (e.g., a corporate officer or general
partner of a partnership), or a qualified practitioner, in accordance
with the requirements of proposed § 2.193(e)(2). This is consistent
with TMEP section 1110.
The Office proposes to amend § 2.88(b)(1) to change a cross-
reference.
The Office proposes to amend § § 2.89 (a)(3) and (b)(3) to
change cross-references.
The Office proposes to amend § 2.146(c) to add a provision that
a petition to the Director be signed by the petitioner, someone with
legal authority to bind the petitioner, or a qualified practitioner, in
accordance with the requirements of proposed § 2.193(e)(2). This is
consistent with TMEP section 1705.07. The proposed rule further
provides that when facts are to be proved on petition, the petitioner
must submit proof in the form of affidavits or declarations in
accordance with § 2.20, signed by someone with firsthand knowledge
of the facts to be proved. TMEP section 1705.03.
The Office proposes to amend § 2.161(b) to remove the
definition of "person properly authorized to sign" an affidavit or
declaration of use or excusable nonuse under section 8 of the Trademark
Act ("section 8 affidavit") and replace it with a cross-reference to
proposed § 2.193(e)(1). The substance of this definition is
unchanged.
The Office proposes to amend § 2.163(b) to add a provision that
a response to an Office action issued in connection with a section 8
affidavit be signed by the owner, someone with legal authority to bind
the owner, or a qualified practitioner, in accordance with the
requirements of proposed § 2.193(e)(2). This is consistent with
TMEP section 1604.16.
The Office proposes to amend § 2.167 to add a provision that an
affidavit or declaration of incontestability under section 15 of the
Trademark Act be filed in the name of the owner of the registration,
and verified by the owner or a person properly authorized to sign on
behalf of the owner under proposed § 2.193(e)(1). This is
consistent with TMEP section 1605.04.
The Office proposes to amend § 2.171(a) to add a provision that
a request for a new certificate of registration upon change of
ownership be signed by the owner of the registration, someone with
legal authority to bind the owner, or a qualified practitioner.
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The Office proposes to remove the requirement in § 2.171(a)
that the original certificate of registration be included with a
request for a new certificate of registration upon change of ownership.
This is consistent with current practice, and with Office practice in
connection with requests to amend or correct registrations under
section 7 of the Trademark Act. See notice at 69 FR 51362 (Aug. 29,
2004), removing the requirement that the original certificate be
included with a section 7 request.
The Office proposes to amend § 2.171(b) to add a provision that
a request to divide a registration upon change of ownership with
respect to some but not all of the goods/services be signed by the
owner of the registration, someone with legal authority to bind the
owner (e.g., a corporate officer or general partner of a partnership),
or a qualified practitioner. This is consistent with current practice.
The Office proposes to amend § 2.172 to add a provision that a
request for surrender of a registration be filed in the name of the
owner of the registration, and signed by the owner, a person with legal
authority to bind the owner, or a qualified practitioner. This is
consistent with current practice.
The Office proposes to amend §§ 2.173(a) and 2.175(b)(2) to
add a provision that a request to amend a registration or to correct
the owner's error in a registration be filed by the owner and signed by
the owner, someone with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership), or a qualified
practitioner. The requirement for filing in the name of the owner is
consistent with current practice. However, the requirement for
signature by someone with legal authority to bind the owner or a
qualified practitioner changes current practice slightly. TMEP sections
1609.01(b) and 1609.10(b) now permit signature by a person with
firsthand knowledge of the facts and actual or implied authority to act
on behalf of the owner, which could include someone without legal authority
to bind the owner. The Office believes that the better practice would be to
require that requests to amend or correct a registration be signed by
someone with legal authority to bind the owner or by a qualified
practitioner.
The Office proposes to amend § 2.184(b) to add a provision that
a response to an Office action issued in connection with a renewal
application be signed by the registrant, someone with legal authority
to bind the registrant (e.g., a corporate officer or general partner of
a partnership), or a qualified practitioner, in accordance with the
requirements of proposed § 2.193(e)(2). This is consistent with
TMEP section 1606.12.
The Office proposes to redesignate § 2.193(a) as § 2.193(g).
The Office proposes to redesignate § 2.193(b) as § 2.193(h).
The Office proposes to move and reorganize the current § 2.193(c)(1)
in proposed § § 2.193 (a), (b) and (c).
Proposed § 2.193(a) provides that each piece of correspondence
that requires a signature must bear: (1) A handwritten signature
personally signed in permanent ink by the person named as the
signatory, or a true copy thereof; or (2) an electronic signature that
meets the requirements of paragraph (c). The proposed rule makes it
clear that a handwritten signature must be personally signed by the
person named as the signatory, and an electronic signature must be
personally entered by the person named as the signatory.
Proposed § 2.193(a)(2) provides that the Office will accept a
signature that meets the requirements of paragraph (c) on all
correspondence, whether filed on paper, by facsimile transmission, or
through TEAS or ESTTA. This is consistent with TMEP section 804.05.
Proposed § 2.193(c) sets forth the requirements for signing a
document electronically, previously set forth in § 2.193(c)(1)(iii).
The Office proposes to redesignate § 2.193(c)(2) as § 2.193(f).
The Office proposes to add new § 2.193(d), to require that the
name of the person who signs a document in connection with a trademark
application or registration must be set forth in printed or typed form
immediately below or adjacent to the signature, or identified elsewhere
in the filing (e.g., in a cover letter or other document that
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accompanies the filing).
The Office proposes to redesignate § 2.193(d) as § 2.193(i).
The Office proposes to add new § 2.193(e), setting forth the
proper person to sign various types of documents that are commonly
filed in connection with trademark applications and registrations.
Proposed § 2.193(e)(1) sets forth the definition of a person
who is properly authorized to sign a verification in support of an
application for registration, amendment to an application for
registration, allegation of use under § 2.76 or § 2.78, request
for extension of time to file a statement of use under § 2.89, or
an affidavit under section 8, 15 or 71 of the Trademark Act. This is
consistent with current §§ 2.33(a) and 2.161(b).
Proposed § 2.193(e)(2) provides that the applicant or
registrant, someone with legal authority to bind the applicant or
registrant (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner must sign responses to Office
actions, amendments to applications, requests for reconsideration of
final actions, requests for express abandonment, requests to divide,
notices of change of address, and petitions under § 2.146. This is
consistent with proposed §§ 2.62(b), 2.64(b), 2.68(a), 2.74(c),
2.87(d), 2.146(c), 2.163(b), and 2.184(b), discussed above.
Proposed § 2.193(e)(2)(i) provides that if the applicant or
registrant is represented by a qualified practitioner, the practitioner
must sign, except where correspondence is required to be signed by the
applicant or registrant. This is consistent with current § 10.18(a).
This applies to both in-house and outside counsel.
Proposed § 2.193(e)(2)(ii) provides that if the applicant or
registrant is not represented by a qualified practitioner, the
individual applicant or registrant, or someone with legal authority to
bind the applicant or registrant (e.g., a corporate officer or general
partner of a partnership) must sign. In the case of joint applicants or
joint registrants who are not represented by a qualified practitioner,
all must sign. This is consistent with TMEP sections 605.02, 712.01 and
712.01(a)(i).
Proposed § 2.193(e)(3) provides that the individual applicant
or registrant or someone with legal authority to bind the applicant or
registrant (e.g., a corporate officer or general partner of a
partnership) must sign powers of attorney and revocations of powers of
attorney; that in the case of joint applicants or joint registrants,
all must sign; that once the applicant or registrant has designated a
qualified practitioner(s), the named practitioner may sign an associate
power of attorney appointing another qualified practitioner(s) as an
additional person(s) authorized to prosecute the application or
registration; and that if the applicant or registrant revokes the
original power of attorney, this revocation also discharges any
associate power signed by the practitioner whose power has been
revoked. This is consistent with proposed §§ 2.17(c) and
2.19(a), discussed above.
Proposed § 2.193(e)(4) provides that someone with firsthand
knowledge of the facts regarding unintentional delay must sign a
petition to revive under § 2.66. This is consistent with current
§§ 2.66(b)(2) and (c)(2).
Proposed § 2.193(e)(5) provides that the registrant or the
registrant's representative must sign a renewal application. This is
consistent with current § 2.183(a).
Proposed § 2.193(e)(6) provides that the owner of the
registration, someone with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership), or a qualified
practitioner must sign a request for correction, amendment or surrender
of a registration; and that in the case of joint owners who are not
represented by a practitioner authorized to practice before the Office
under 37 CFR 10.14, all must sign. This is consistent with proposed
§§ 2.172, 2.173(a) and 2.175(b)(2).
Proposed § 2.193(e)(7) provides that a designation or
revocation of a domestic representative must be signed by applicant or
registrant, someone with legal authority to bind the applicant or
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registrant (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner.
Proposed § 2.193(e)(8) provides that a person transmitting
documents to the Office may sign a cover letter or transmittal letter;
and that the Office neither requires cover letters nor questions the
authority of a person who signs a communication that merely transmits
documents. This is consistent with TMEP section 605.03.
Rule Making Requirements
Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866.
Administrative Procedure Act: This rule merely involves rules of
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A).
Therefore, this rule may be adopted without prior notice and
opportunity for public comment under 5 U.S.C. 553(b) and (c), or
thirty-day advance publication under 5 U.S.C. 553(d). However, the
Office has chosen to seek public comment before implementing the rule.
Regulatory Flexibility Act: The Deputy General Counsel for General
Law of the United States Patent and TrademarkOffice hereby certifies
to the Chief Counsel for Advocacy of the Small Business Administration
that this notice of proposed rule making, Changes in Requirements for
Signature of Documents, Recognition of Representatives, and Establishing
and Changing the Correspondence Address in Trademark Cases (RIN 0651-AC26),
will not have a significant impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), neither a
regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required.
See 5 U.S.C. 603.
The proposed rules clarify certain requirements for signature of
documents filed in the Office, recognition of representatives, and
establishing and changing the correspondence address in trademark
cases. In large part, the proposed rule changes are intended to codify
existing practice. Although the proposed rules may affect trademark
applicants or registrants, because they codify the existing practice of
the Office, the changes proposed in this notice will not have a
significant economic impact on a substantial number of small entities.
Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2
U.S.C. 1532, that agencies prepare an assessment of anticipated costs
and benefits before issuing any rule that may result in expenditure by
State, local, and tribal governments, in the aggregate, or by the
private sector, of $100 million or more (adjusted annually for
inflation) in any given year. This rule would have no such effect on
State, local, and tribal governments or the private sector.
Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Paperwork Reduction Act: This proposed rule involves information
collection requirements which are subject to review by the Office of
Management and Budget under the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The collection of information in this proposed
rule have been reviewed and previously approved by the OMB under OMB
control numbers: 0651-0054, 0651-0027 and 0651-0040.
The United States Patent and Trademark Office is not resubmitting
an information collection package to OMB for its review and approval
because the changes in this proposed rule would not affect the
information collection requirements associated with the information
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collections under OMB control numbers 0651-0054, 0651-0027 and 0651-
0040. The changes in this notice are limited to amending the rules of
practice to codify current practice with respect to the proper party to
sign various documents and current procedures for appointment,
revocation or withdrawal of attorneys and domestic representatives.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reduction of this
burden to: (1) The Office of Information and Regulatory Affairs, Office
of Management and Budget, New Executive Office Building, Room 10202,
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for
the Patent and Trademark Office; and (2) Commissioner for Trademarks,
P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office
proposes to amend part 2 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Revise § 2.17 to read as follows:
§ 2.17 Recognition for representation.
(a) Authority to practice in trademark cases. Only an individual
who meets the requirements of § 10.14 of this chapter may represent
an applicant, registrant, or party to a proceeding before the Office in
a trademark case.
(b)(1) Recognition of practitioner as representative. To be
recognized as a representative in a trademark case, a practitioner
qualified under § 10.14 of this chapter may:
(i) File a power of attorney that meets the requirements of
paragraph (c) of this section;
(ii) Sign a document on behalf of an applicant, registrant, or
party to a proceeding who is not already represented by a practitioner
qualified under § 10.14 of this chapter from a different firm; or
(iii) Appear in person on behalf of an applicant, registrant, or
party to a proceeding who is not already represented by a practitioner
qualified under § 10.14 of this chapter from a different firm.
(2) Signature as certificate of authorization to represent. When a
practitioner qualified under § 10.14 of this chapter appears in
person or signs a document pursuant to paragraph (b) of this section,
his or her personal appearance or signature shall constitute a
representation to the Office that he or she is authorized to represent
the person or entity on whose behalf he or she acts. The Office may
require further proof of authority to act in a representative capacity.
(c) Requirements for power of attorney. A power of attorney must:
(1) Designate by name at least one practitioner meeting the
requirements of § 10.14 of this chapter; and
(2) Be signed by the individual applicant, registrant, or party to
a proceeding pending before the Office, or by someone with legal
authority to bind the applicant, registrant, or party (e.g., a
corporate officer or general partner of a partnership). Once the
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applicant, registrant, or party has designated a practitioner(s) who
meets the requirements of § 10.14 of this chapter, that
practitioner may sign an associate power of attorney appointing another
qualified practitioner(s) as an additional person(s) authorized to
represent the applicant, registrant, or party. If the applicant,
registrant, or party revokes the original power of attorney (§ 2.19(a)),
this revocation also discharges any associate power signed by whose power
has been revoked.
(d) Power of attorney relating to multiple applications or
registrations. (1) The owner of an application or registration may
appoint a practitioner(s) who meets the requirements of § 10.14 of
this chapter for up to twenty applications or registrations that have
the identical owner and attorney through TEAS. The owner may not file a
power of attorney relating to future applications through TEAS.
(2) The owner of an application or registration may file a power of
attorney that relates to more than one trademark application or
registration, or to all existing and future applications of that owner,
on paper. A person relying on such a power of attorney must:
(i) Include a copy of the previously filed power of attorney; or
(ii) Refer to the power of attorney, specifying the filing date of
the previously filed power of attorney; the application serial number
(if known), registration number, or inter partes proceeding number for
which the original power of attorney was filed; and the name of the
person who signed the power of attorney; or, if the application serial
number is not known, submit a copy of the application or a copy of the
mark, and specify the filing date.
(e) Canadian attorneys and agents. (1) A Canadian patent agent who
is registered and in good standing as a patent agent under § 11.6(c)
may represent parties located in Canada before the Office in trademark
matters.
(2) A Canadian attorney or agent who is registered or in good
standing with the Canadian Intellectual Property Office, but not
registered as a patent agent under § 11.6(c), may represent parties
located in Canada if he or she has been authorized to do so by the
Director of Enrollment and Discipline. See 37 CFR 11.14(c) and (f).
(f) Non-lawyers. A non-lawyer may not act as a representative
except in the limited circumstances set forth in § 10.14(b) of this
chapter. Before any non-lawyer who meets the requirements of § 10.14(b)
of this chapter may take action of any kind with respect to an
application, registration or proceeding, a written authorization must
be filed, signed by the applicant, registrant, or party to the
proceeding, or by someone with legal authority to bind the applicant,
registrant, or party (e.g., a corporate officer or general partner of a
partnership).
(g) Duration of power of attorney. (1) For purposes of recognition
as a representative, the Office considers a power of attorney filed
while an application is pending to end when the mark registers, when
ownership changes, or when the application is abandoned.
(2) The Office considers a power of attorney filed after
registration to end when the mark is cancelled or expired, or when
ownership changes. If the power was filed in connection with an
affidavit of use or excusable nonuse under section 8 or 71 of the
Trademark Act, affidavit or declaration of incontestability under
section 15 of the Act, renewal application under section 9 of the Act,
or request for amendment or correction under section 7 of the Act, the
power is deemed to end upon acceptance or final rejection of the filing.
3. Revise § 2.18 to read as follows:
§ 2.18 Correspondence, with whom held.
(a) Establishing the correspondence address. (1) If a written power
of attorney that meets the requirements of § 2.17 is filed, the
Office will send correspondence to the practitioner designated in the
power.
(2) If a practitioner qualified under § 10.14 of this chapter
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transmits a document(s) on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by another qualified
practitioner from a different firm, the Office will send correspondence
to the practitioner transmitting the documents.
(3) If an application, registration or proceeding is not being
prosecuted by a practitioner qualified under § 10.14 of this
chapter and the applicant, registrant, or party to the proceeding
designates a correspondence address in writing, the Office will send
the correspondence to the designated address.
(4) If an application, registration or proceeding is not being
prosecuted by a practitioner qualified under § 10.14 of this
chapter and the applicant, registrant, or party to the proceeding has
not designated a correspondence address in writing, but a domestic
representative has been appointed, the Office will send correspondence
to the domestic representative.
(5) If the application, registration or proceeding is not being
prosecuted by a practitioner qualified under § 10.14 of this
chapter, the applicant, registrant, or party to the proceeding has not
designated a correspondence address, and no domestic representative has
been appointed, the Office will send correspondence directly to the
applicant, registrant or party to the proceeding.
(6) The Office will send correspondence to only one address.
(7) Once the Office has recognized a practitioner qualified under
§ 10.14 of this chapter as the representative of an applicant,
registrant, or party to a proceeding, the Office will communicate and
conduct business only with that practitioner, or with another qualified
practitioner from the same firm. The Office will not conduct business
directly with the applicant, registrant, or party to the proceeding, or
with another practitioner from a different firm, unless the applicant,
registrant, or party to the proceeding files a revocation of the power
of attorney under § 2.19(a), and/or a new power of attorney that
meets the requirements of § 2.17(c). A written request to change
the correspondence address does not revoke a power of attorney.
(b) Changing the correspondence address. (1) If a physical or
e-mail correspondence address changes, the applicant, registrant, or
party to a proceeding must file a written request to change the
correspondence address. The request should be promptly filed.
(2) A request to change the correspondence address must be made in
writing, signed by the applicant, registrant, or party to a proceeding,
someone with legal authority to bind the applicant, registrant, or
party to the proceeding (e.g., a corporate officer or general partner
of a partnership), or a practitioner who meets the requirements of
§ 10.14 of this chapter , in accordance with proposed § 2.193(e)(2).
(3) If an applicant or registrant files a new power of attorney
that meets the requirements of § 2.17(c), the Office will change
the correspondence address to that of the practitioner named in the
power.
(4) If a practitioner qualified under § 10.14 of this chapter
transmits a document(s) on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by another qualified
practitioner, the Office will construe this as including a request to
change the correspondence address to that of the practitioner, and will
send correspondence to the practitioner.
(c) Post registration filings under sections 7, 8, 9, 15, and 71.
(1) Even if there is no new power of attorney or written request to
change the correspondence address, the Office will change the
correspondence address upon the examination of an affidavit of use or
excusable nonuse under section 8 or 71 of the Trademark Act, affidavit
or declaration of incontestability under section 15 of the Act, renewal
application under section 9 of the Act, or request for amendment or
correction under section 7 of the Act. If a practitioner qualified
under § 10.14 of this chapter transmits the affidavit, renewal
application, or section 7 request, the Office will send correspondence
to the practitioner. If the owner of the registration is not
represented by a qualified practitioner, the Office will send
correspondence directly to the owner, or to the domestic
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representative, in accordance with paragraph (a).
(2) Once the Office establishes a correspondence address upon
examination of an affidavit, renewal application or section 7 request,
a written request to change the address in
accordance with the requirements of paragraph (b)(2) of this section is
required to change the address during the pendency of that filing.
4. Revise § 2.19 to read as follows:
§ 2.19 Revocation or withdrawal of attorney.
(a) Revocation. (1) Authority to represent an applicant, registrant
or party to a proceeding before the Office may be revoked at any stage
in the proceedings of a trademark case, upon written notification
signed by the applicant, registrant, or party to the proceeding, or by
someone with legal authority to bind the applicant, registrant, or
party (e.g., a corporate officer or general partner of a partnership).
(2) When a power of attorney 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.
(3) A request to change the correspondence address does not revoke
a power of attorney.
(4) A new power of attorney that meets the requirements of § 2.17(c)
will be treated as a revocation of the previous power.
(b) Withdrawal of attorney. If the requirements of § 10.40 of
this chapter are met, a practitioner authorized to represent an
applicant, registrant, or party to a proceeding in a trademark case may
withdraw upon application to and approval by the Director. The
practitioner should file the request to withdraw soon after the
practitioner notifies the client of his/her intent to withdraw. The
request must include the following:
(1) The application serial number, registration number, or
proceeding number;
(2) A statement of the reason(s) for the request to withdraw; and
(3) Either (i) a statement that the practitioner has given notice
to the client that the practitioner is withdrawing from employment and
will be filing the necessary documents with the Office; that the client
was given notice of the withdrawal at least two months before the
expiration of the response period, if applicable; that the practitioner
has delivered to the client all documents and property in the
practitioner's file concerning the application, registration or
proceeding to which the client is entitled; and that the practitioner
has notified the client of any responses that may be due, and of the
deadline for response; or
(ii) if more than one attorney is of record, a statement that
representation by co-counsel is ongoing.
5. Revise § 2.22(a)(11) to read as follows:
§ 2.22 Filing requirements for a TEAS Plus application.
(a) * * *
(11) A verified statement that meets the requirements of § 2.33,
dated and signed by a person properly authorized to sign on behalf of the
applicant pursuant to § 2.193(e)(1);
* * * * *
6. Revise § 2.23(a)(2) to read as follows:
§ 2.23 Additional requirements for TEAS Plus application.
(a) * * *
(2) Maintain a valid e-mail correspondence address and continue to
receive communications from the Office by e-mail.
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* * * * *
7. Revise § 2.24 to read as follows:
§ 2.24 Designation and revocation of domestic representative by
foreign applicant.
(a)(1) If an applicant is not domiciled in the United States, the
applicant may designate the name and address of some person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark by:
(i) setting forth the name of the domestic representative in the
initial application; or
(ii) filing a separate designation signed by the applicant, someone
with legal authority to bind the applicant (e.g., a corporate officer
or general partner of a partnership), or a practitioner who meets the
requirements of § 10.14 of this chapter.
(2) If the applicant does not file a document designating the name
and address of a person resident in the United States on whom may be
served notices or process in proceedings affecting the mark, or if the
last person designated cannot be found at the address given in the
designation, then notices or process in proceedings affecting the mark
may be served on the Director.
(3) The mere designation of a domestic representative does not
authorize the person designated to represent the applicant unless
qualified under § 10.14 of this chapter.
(b) A request to change or revoke a designation of domestic
representative must be signed by the applicant, someone with legal
authority to bind the applicant (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 10.14 of this chapter.
8. Amend § 2.33 by revising paragraph (a) to read as follows,
and removing paragraph (d):
§ 2.33 Verified statement.
(a) The application must include a statement that is signed in
accordance with the requirements of § 2.193 and verified (sworn to)
or supported by a declaration under § 2.20 by a person properly
authorized to sign on behalf of the applicant under § 2.193(e)(1).
* * * * *
9. Revise § 2.62 to read as follows:
§ 2.62 Procedure for filing response.
(a) Deadline. The applicant's response to an Office action must be
received within six months from the date of issuance.
(b) Signature. The applicant, someone with legal authority to bind
the applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of § 10.14
of this chapter must sign the response, in accordance with the requirements
of § 2.193(e)(2).
10. Revise § 2.64(b) to read as follows:
§ 2.64 Final action.
* * * * *
(b) During the period between a final action and expiration of the
time for filing an appeal, the applicant may request the examiner to
reconsider the final action. The applicant, someone with legal
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authority to bind the applicant (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 10.14 of this chapter must sign the request, in accordance
with the requirements of § 2.193(e)(2). The filing of a request for
reconsideration will not extend the time for filing an appeal or
petitioning the Director, but normally the examiner will reply to a
request for reconsideration before the end of the six-month period if
the request is filed within three months after the date of the final
action. The Office will enter amendments accompanying requests for
reconsideration after final action if the amendments comply with the
rules of practice in trademark cases and the Act of 1946.
11. Revise § 2.68 to read as follows:
§ 2.68 Express abandonment (withdrawal) of application.
(a) Written document required. An applicant may expressly abandon
an application by filing a written request for abandonment or
withdrawal of the application, signed by the applicant, someone with
legal authority to bind theapplicant (e.g., a corporate officer
or general partner of a partnership), or a practitioner who meets the
requirements of § 10.14 of this chapter, in accordance with the
requirements of § 2.193(e)(2).
(b) Rights in the mark not affected. Except as provided in § 2.135,
the fact that an application has been expressly abandoned shall
not, in any proceeding in the Office, affect any rights that the
applicant may have in the mark in the abandoned application.
12. Amend § 2.74 by revising the heading and adding a new
paragraph (c) to read as follows:
§ 2.74 Form and signature of amendment.
* * * * *
(c) The applicant, someone with legal authority to bind the
applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of § 10.14
of this chapter must sign the request for amendment, in
accordance with the requirements of § 2.193(e)(2). If the amendment
requires verification, the verification must be sworn to or supported
by a declaration under § 2.20 by a person properly authorized to
sign on behalf of the applicant under § 2.193(e)(1).
13. Revise § 2.76(b)(1) introductory text to read as follows:
§ 2.76 Amendment to allege use.
* * * * *
(b) A complete amendment to allege use must include:
(1) A statement that is signed and verified (sworn to) or supported
by a declaration under § 2.20 by a person properly authorized to
sign on behalf of the applicant (see § 2.193(e)(1)) that:
* * * * *
14. Revise § 2.87(d) to read as follows:
§ 2.87 Dividing an application.
* * * * *
(d) The applicant, someone with legal authority to bind the
applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of § 10.14
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of this chapter must sign the request to divide, in accordance
with the requirements of § 2.193(e)(2). The request should be made
in a separate document from any other amendment or response in the
application, and captioned as a "Request to divide application."
15. Revise § 2.88(b)(1) introductory text to read as follows:
§ 2.88 Filing statement of use after notice of allowance.
* * * * *
(b) A complete statement of use must include:
(1) A statement that is signed and verified (sworn to) or supported
by a declaration under § 2.20 by a person properly authorized to
sign on behalf of the applicant (see § 2.193(e)(1)) that:
* * * * *
16. Revise § § 2.89(a)(3) and (b)(3) to read as follows:
§ 2.89 Extensions of time for filing a statement of use.
(a) * * *
(3) A statement that the applicant still has a bona fide intention
to use the mark in commerce, specifying the relevant goods or services,
signed and verified (sworn to) or supported by a declaration under
§ 2.20 by a person properly authorized to sign on behalf of the
applicant (see § 2.193(e)(1)). If the verification is unsigned or
signed by the wrong party, the applicant must submit a substitute
verification within six months of the date of issuance of the notice of
allowance.
(b) * * *
(3) A statement that the applicant still has a bona fide intention
to use the mark in commerce, specifying the relevant goods or services,
signed and verified (sworn to) or supported by a declaration under
§ 2.20 by a person properly authorized to sign on behalf of the
applicant (see § 2.193(e)(1)). If the verification is unsigned or
signed by the wrong party, the applicant must submit a substitute
verification before the expiration of the previously granted extension;
and
* * * * *
17. Revise § 2.146(c) to read as follows:
§ 2.146 Petitions to the Director.
* * * * *
(c) Every petition to the Director shall include a statement of the
facts relevant to the petition, the points to be reviewed, the action
or relief requested, and the fee required by § 2.6. Any brief in
support of the petition shall be embodied in or accompany the petition.
The petitioner, someone with legal authority to bind the petitioner
(e.g., a corporate officer or general partner of a partnership), or a
practitioner who meets the requirements of § 10.14 of this chapter
must sign the petition, in accordance with the requirements of
§ 2.193(e)(2). When facts are to be proved on petition, the petitioner
must submit proof in the form of affidavits or declarations in
accordance with § 2.20, signed by someone with firsthand knowledge
of the facts to be proved, and any exhibits.
* * * * *
18. Revise § 2.161(b) to read as follows:
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§ 2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
* * * * *
(b) Include a statement that is signed and verified (sworn to) or
supported by a declaration under § 2.20 by a person properly
authorized to sign on behalf of the owner under § 2.193(e)(1),
attesting to the use or excusable nonuse of the mark within the period
set forth in section 8 of the Act. The verified statement must be
executed on or after the beginning of the filing period specified in
§ 2.160(a).
* * * * *
19. Revise § 2.163(b) to read as follows:
§ 2.163 Acknowledgment of receipt of affidavit or declaration, and
response to Office action.
* * * * *
(b) The owner must file a response to a refusal within six months
of the mailing date of the Office action, or before the end of the
filing period set forth in section 8(a) or section 8(b) of the Act,
whichever is later. The owner, someone with legal authority to bind the
owner (e.g., a corporate officer or general partner of a partnership),
or a practitioner who meets the requirements of § 10.14 of this
chapter must sign the response, in accordance with the requirements of
§ 2.193(e)(2). If no response is filed within this time period, the
registration will be cancelled.
20. Amend § 2.167 by revising the introductory text and
paragraph (a) to read as follows:
§ 2.167 Affidavit or declaration under Section 15.
The owner of a mark registered on the Principal Register or a mark
registered under the Act of 1881 or 1905 and published under section
12(c) of the Act (§ 2.153) may file an affidavit or declaration of
incontestability under section 15 of the Act. The affidavit or
declaration must:
(a) Be verified (sworn to) or supported by a declaration under
§ 2.20, signed by the owner of the registration or a person
properly authorized to sign on behalf of the owner under § 2.193(e)(1);
* * * * *
21. 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 new owner
may request that a new certificate of registration be issued in the
name of the new owner for the unexpired part of the original period.
The assignment or other
document changing title must be recorded in the Office, and the request
for the new certificate must include the fee required by §
2.6(a)(8). The owner of the registration, someone with legal authority
to bind the owner (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of § 10.14
of this chapter must sign the request.
(b) When ownership of a registration has changed with respect to
some, but not all, of the goods and/or services, the owner(s) may file
a request that the registration be divided into two or more separate
registrations. The fee required by § 2.6(a)(8) must be paid for
each new registration created by the division, and the change of
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ownership must be recorded in the Office. The owner, someone with legal
authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 10.14 of this chapter must sign the request.
22. Revise § 2.172 to read as follows:
§ 2.172 Surrender for cancellation.
Upon application by the owner, the Director may permit any
registration to be surrendered for cancellation. The owner of the
registration, someone with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership), or a
practitioner who meets the requirements of § 10.14 of this chapter
must sign the application for surrender. When a registration has more
than one class, one or more entire class(es) but fewer than the total
number of classes may be surrendered. Deletion of fewer than all the
goods or services in a single class constitutes amendment of
registration as to that class (see § 2.173), not surrender.
23. Revise § 2.173(a) to read as follows:
§ 2.173 Amendment of registration.
(a) The owner of a registration may apply to amend a registration
or to disclaim part of the mark in the registration. The owner must
submit a written request specifying the amendment or disclaimer. If the
registration is involved in an inter partes proceeding before the
Trademark Trial and Appeal Board, the request must be filed by
appropriate motion to the Board. The request must include the required
fee, and be signed by the owner of the registration, someone with legal
authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 10.14 of this chapter, and verified or supported by a
declaration under § 2.20. If the amendment involves a change in the
mark, the owner must submit a new specimen showing the mark as used on
or in connection with the goods or services, and a new drawing of the
amended mark. The registration as amended must still contain
registrable matter, and the mark as amended must be registrable as a
whole. An amendment or disclaimer must not materially alter the
character of the mark.
* * * * *
24. Revise § 2.175(b)(2) to read as follows:
§ 2.175 Correction of mistake by owner of registration.
* * * * *
(b) * * *
(2) Be signed by the owner of the registration, someone with legal
authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 10.14 of this chapter, and verified (sworn to) or supported by
a declaration in accordance with § 2.20; and
* * * * *
25. Revise § 2.184(b) to read as follows:
§ 2.184 Refusal of renewal.
* * * * *
(b) A response to the refusal of renewal must be filed within six
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months of the mailing date of the Office action, or before the
expiration date of the registration, whichever is later, or the
registration will expire. The registrant, someone with legal authority
to bind the registrant (e.g., a corporate officer or general partner of
a partnership), or a practitioner who meets the requirements of § 10.14
of this chapter must sign the response, in accordance with the
requirements of § 2.193(e)(2).
* * * * *
26. Revise § 2.193 to read as follows:
§ 2.193 Trademark correspondence and signature requirements.
(a) Signature required. Each piece of correspondence that requires
a signature must bear:
(1) A handwritten signature personally signed in permanent ink by
the person named as the signatory, or a true copy thereof; or
(2) An electronic signature that meets the requirements of
paragraph (c) of this section, personally entered by the person named
as the signatory. The Office will accept an electronic signature that
meets the requirements of paragraph (c) of this section on
correspondence filed on paper, by facsimile transmission (§ 2.195(c)),
or through TEAS or ESTTA.
(b) Copy of original signature. If a copy, such as a photocopy or
facsimile copy of an original signature is filed, the filer should
retain the original as evidence of authenticity. If a question of
authenticity arises, the Office may require submission of the original.
(c) Requirements for electronic signature. A person signing a
document electronically must:
(1) Personally enter any combination of letters, numbers, spaces
and/or punctuation marks that he or she has adopted as a signature,
placed between two forward slash ("/") symbols in the signature block
on the electronic submission; or
(2) Sign the verified statement using some other form of electronic
signature specified by the Director.
(d) Signatory must be identified. The name of the person who signs
a document in connection with a trademark application or registration
must be set forth in printed or typed form immediately below or
adjacent to the signature, or identified elsewhere in the filing (e.g.,
in a cover letter or other document that accompanies the filing).
(e) Proper person to sign. Documents filed in connection with a
trademark application or registration must be signed by a proper
person. Unless otherwise specified by law, the following requirements
apply:
(1) Verification of facts. A verification in support of an
application for registration, amendment to an application for
registration, allegation of use under § 2.76 or § 2.78, request
for extension of time to file a statement of use under § 2.89, or
an affidavit under section 8, 15 or 71 of the Trademark Act must be
sworn to or supported by a declaration under § 2.20, signed by the
applicant or registrant, or a person properly authorized to sign on
behalf of the applicant or registrant. A person who is properly
authorized to verify facts on behalf of an applicant or registrant is:
(i) A person with legal authority to bind the applicant or
registrant (e.g., a corporate officer or general partner of a
partnership);
(ii) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the applicant or registrant; or
(iii) 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 applicant or registrant.
(2) Responses, amendments to applications, requests for express
abandonment, requests for reconsideration of final actions, notices of
change of address, requests to divide, and petitions under § 2.146. The
applicant or registrant, someone with legal authority to bind the applicant
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or registrant (e.g., a corporate officer or general partner of a
partnership), or a practitioner who meets the requirements of § 10.14
of this chapter must sign responses to Office actions, amendments
to applications, requests for express abandonment, requests for
reconsideration of final actions, notices of change of address,
requests to divide, and petitions under § 2.146, in accordance with
the following guidelines:
(i) If the applicant or registrant is represented by a practitioner
authorized to practice before the Office under § 10.14 of this
chapter, the practitioner must sign, except where correspondence is
required to be signed by the applicant or registrant; or
(ii) If the applicant or registrant is not represented by a
practitioner authorized to practice before the Office under § 10.14
of this chapter, the individual applicant or registrant, or someone
with legal authority to bind the applicant or registrant (e.g., a
corporate officer or general partner of a partnership) must sign. In
the case of joint applicants or joint registrants who are not
represented by a practitioner authorized to practice before the Office
under § 10.14 of this chapter, all must sign.
(3) Powers of attorney and revocations of powers of attorney. The
individual applicant or registrant or someone with legal authority to
bind the applicant or registrant (e.g., a corporate officer or general
partner of a partnership) must sign powers of attorney and revocations
of powers of attorney. In the case of joint applicants or joint
registrants, all must sign. Once the applicant or registrant has
designated a qualified practitioner(s), the named practitioner may sign
an associate power of attorney appointing another qualified
practitioner(s) as an additional person(s) authorized to prosecute the
application or registration. If the applicant or registrant revokes the
original power of attorney, this revocation also discharges any
associate power signed by the practitioner whose power has been
revoked.
(4) Petition to revive under § 2.66. Someone with firsthand
knowledge of the facts regarding unintentional delay must sign a
petition to revive under § 2.66.
(5) Renewal applications. The registrant or the registrant's
representative must sign a renewal application.
(6) Requests for correction, amendment or surrender of
registrations. The owner of the registration, someone with legal
authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner authorized to practice
before the Office under § 10.14 of this chapter must sign a request
for correction, amendment or surrender of a registration. In the case
of joint owners who are not represented by a practitioner authorized to
practice before the Office under § 10.14 of this chapter, all must
sign.
(7) Designations and revocations of domestic representative. A
designation or revocation of a domestic representative must be signed
by the applicant or registrant, someone with legal authority to bind
the applicant or registrant (e.g., a corporate officer or general
partner of a partnership), or a practitioner who meets the requirements
of § 10.14 of this chapter.
(8) Cover letters. The person transmitting documents to the Office
may sign a cover letter or transmittal letter. The Office neither
requires cover letters nor questions the authority of a person who
signs a communication that merely transmits documents.
(f) Signature as certification. The presentation to the Office
(whether by signing, filing, submitting, or later advocating) of any
document by any person, whether a practitioner or non-practitioner,
constitutes a certification under § 10.18(b) of this chapter.
Violations of § 10.18(b) of this chapter may jeopardize the
validity of the application or registration, and may result in the
imposition of sanctions under § 10.18(c) of this chapter. Any
practitioner violating § 10.18(b) of this chapter may also be
subject to disciplinary action. See § § 10.18(d) and 10.23(c)(15)
of this chapter.
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(g) Separate copies for separate files. (1) Since each file must be
complete in itself, a separate copy of every document to be filed in
connection with a trademark application, registration, or inter partes
proceeding must be furnished for each file to which the document
pertains, even though the contents of the documents filed in multiple
files may be identical.
(2) Parties should not file duplicate copies of correspondence in a
single application, registration, or proceeding file, unless the Office
requires the filing of duplicate copies. The Office may dispose of
duplicate copies of correspondence.
(h) Separate documents for separate branches of the Office. Since
different branches or sections of the Office may consider different
matters, each distinct subject, inquiry or order must be contained in a
separate document to avoid confusion and delay in answering
correspondence.
(i) Certified documents required by statute. When a statute
requires that a document be certified, a copy or facsimile transmission
of the certification is not acceptable.
June 4, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1332 TMOG 221]