| Trademark Examination |
Referenced Items (455, 456, 457, 458, 459, 460, 461, 462, 463, 464, 465) |
(464) Exam Guide No. 1-03
Changes Affecting All Applications and Registrations
Issued October 30, 2003
Effective November 2, 2003
This exam guide discusses changes to the Rules of Trademark Practice,
effective November 2, 2003, affecting all applications and registrations.
A final rule, published in the Federal Register on September 26, 2003,
at 68 FR 55748, is posted at
http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf.
These changes are effective November 2, 2003, unless stated otherwise
below.
Website addresses cited in this guide were available as of
October 29, 2003.
I. DRAWINGS 2
A. Standard Character Drawings 2
1. Requirements for Standard Character Drawings 2
2. List of Standard Characters 3
3. Drawings Containing Both a Standard Character Claim and Designs or
Other Elements 3
4. Changing From Special Form Elements to Standard Characters, or the
Reverse, is Likely to Be a Material Alteration 3
5. Standard Character Drawing and Specimen of Use 3
6. When a Special Form Drawing Is Required 4
7. Drawings in Typed Format Will Be Processed as Standard Character
Drawings 4
8. Drawings Where The Format Is Unclear 4
9. Drawings in Applications Filed Before November 2, 2003 4
10. Mark Drawing Code 5
B. Color Drawings 5
1. Requirements for Color Drawings 5
2. Color Drawings Filed Without a Color Claim 6
3. Color Drawings Filed With an Incorrect Color Claim 6
4. Black and White Drawings and Color Claims 6
5. Gray Tones in Drawings 6
6. Drawings in Applications Filed and Registrations Issued Before
November 2, 2003 7
7. Lining and Stippling Statements for Drawings 7
C. Requirements Applying to Electronically Submitted Drawings 7
1. Standard Character Drawings 7
2. Special Form Drawings 8
3. Requirements for Digitized Images 8
D. Requirements Applying to Drawings Submitted on Paper 8
II. SPECIMENS FILED ELECTRONICALLY 9
III. PARTIAL ABANDONMENT 9
IV. CHANGES TO THE REQUIREMENTS FOR A SHOWING OF DUE DILIGENCE
IN PETITIONS UNDER 37 C.F.R. 2.66 AND 2.146 10
V. AUTOMATIC UPDATING OF OWNERSHIP OF TRADEMARK APPLICATIONS
AND REGISTRATIONS 11
A. Previous Practice. 11
B. Change of Practice - Automatically Updating Ownership Records in the
Trademark Database 12
1. Circumstances in Which Trademark Database Will Not be Automatically
Updated 12
2. Processing Time for Automatic Updating 13
3. Correction to Automatic Update - Last Recorded Owner Does Not
Have Clear Title 13
C. Applicability of Change of Practice to Requests for Recordation Filed
Before November 2, 2003 15
D. Applicability of Change of Practice to International Applications and
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Registrations Under the Madrid Protocol 15
VI. POLICY CHANGE - RECLASSIFICATION AFTER PUBLICATION OR
REGISTRATION 15
A. Post-Publication Changes to Classification in Pending Applications 15
B. Post-Registration Changes to Classification and Requests for
Correction 15
I. DRAWINGS
A. Standard Character Drawings
Trademark Rule 2.52, 37 C.F.R. 2.52, has been amended to replace "typed"
drawings with "standard character" drawings. Applicants who seek to
register a mark without any claim as to the manner of display must submit
a standard character drawing that complies with the requirements of the
amended rule. See Appendix A for the text of the rule as amended.
1. Requirements for Standard Character Drawings
An applicant may submit a standard character drawing if:
a. All letters and words in the mark are depicted in Latin characters;
b. All numerals in the mark are depicted in Roman or Arabic numerals;
c. The mark includes only common punctuation or diacritical marks; and
d. The mark does not include a design element.
37 C.F.R. 2.52(a). In addition, the applicant must submit the following
statement:
The mark is presented in standard character format without claim to any
particular font style, size or color.
In the drawing of the mark, the applicant will no longer have to display
the mark in all uppercase letters. Instead, the applicant may depict
the mark in any font style; may use bold or italicized letters; and may
use both uppercase and lowercase letters, all uppercase letters or all
lowercase letters.
2. List of Standard Characters
The Office has created a standard character set that lists letters,
numerals, punctuation marks, and diacritical marks that may be used in a
standard character drawing. The standard character set is available on the
Office's website at http://www.uspto.gov/teas/StandardCharacterSet.html.
If the drawing includes elements that are not in the set, then the
examining attorney must treat the drawing as a special form drawing
and require the applicant to delete the standard character claim.
3. Drawings Containing Both a Standard Character Claim and Designs or
Other Elements
If the application contains a standard character claim, but the mark
includes a design element; or color; or a claim of a particular style or
size of lettering; or other elements so that the mark does not meet the
requirements of 37 C.F.R. 2.52(a), then the examining attorney must:
(1) treat the drawing as a special form drawing; and (2) require that the
applicant delete the standard character claim from the record.
37 C.F.R. 2.52(b). In addition, the examining attorney must either enter
the appropriate mark drawing code in the TradeUps database and enter a note
to the file, or instruct a Legal Instruments Examiner to update the
TradeUps database. See section I.A.10 of this exam guide concerning mark
drawing codes.
4. Changing From Special Form Elements to Standard Characters, or the
Reverse, is Likely to Be a Material Alteration
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A special form drawing containing a design element, color, a claim to a
particular style or size of lettering, or other distinctive elements cannot
be amended to a standard character drawing unless the amendment is
non-material. 37 C.F.R. 2.72.
Conversely, a standard character drawing cannot be amended to a special
form drawing containing a design element, color, or a claim to a
distinctive style or size of lettering, unless the amendment is
non-material. 37 C.F.R. 2.72.
5. Standard Character Drawing and Specimen of Use If applicant submits a
claim of standard character format, the mark shown in the drawing does
not have to appear in the same font style, size, or color as the mark shown
on the specimen of use. However, the examining attorney must review the
mark depicted on the specimen to determine whether a standard character
claim is appropriate, or whether a special form drawing is required.
TMEP 807.07(b).
6. When a Special Form Drawing Is Required
If the applicant has claimed standard character format and the examining
attorney determines that the standard characters are displayed in a
distinctive manner that changes the meaning or overall commercial
impression of the mark, the examining attorney must process the drawing as
a special form drawing, and require the applicant to delete the standard
character claim. The examining attorney may delete the standard character
claim by examiner's amendment after obtaining approval from the applicant
or applicant's attorney.
There is no change to current practice regarding when a special form
drawing is required. The examining attorney must require the applicant to
submit a special form drawing if the mark is displayed in a distinctive
manner that changes the meaning or overall commercial impression of
the mark. See Trademark Manual of Examining Procedure (TMEP) 807.07(b).
7. Drawings in Typed Format Will Be Processed as Standard Character
Drawings
If the application does not include a standard character claim, but the
mark is shown in a format that previously would have been considered
"typed" (i.e., the mark is shown in all capital letters, or the mark is
specified as "typed" in the body of the application, on a separate drawing
page, or on a cover letter filed with the application), then the examining
attorney shall treat the drawing of the mark as a standard character
drawing.
If the application is ready to be published for opposition, the examining
attorney should enter the standard character claim by examiner's amendment.
No prior authorization from the applicant is required to add a claim by an
examiner's amendment in this situation. See TMEP 707.02. If an Office
action is necessary, it should include a requirement that the applicant
submit a standard character claim.
8. Drawings Where The Format Is Unclear
Where it is unclear from the record whether the submitted drawing was
intended to be a standard character drawing, then the examining attorney
must contact the applicant for clarification. For example, clarification
is needed if the font style used in the mark on the drawing does not match
the font style used on the specimen and there is no standard character
claim in the application file. If the mark is intended to be in standard
characters, then the examining attorney must require that the applicant
amend the application to include the standard character claim. This may be
done by examiner's amendment.
9. Drawings in Applications Filed Before November 2, 2003
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For applications filed before November 2, 2003, the applicant has the
option of submitting a typed drawing in all uppercase letters under the old
rules, or a standard character drawing under the new rules. If the drawing
of record does not meet the requirements for a typed drawing under the old
rules (e.g., the drawing shows the mark in upper and lower case letters),
the examining attorney must require a new drawing. In response, the
applicant may submit a claim of standard characters to convert the drawing
to a standard character drawing, or submit a new drawing in all uppercase
letters to comply with the old rules for typed drawings. The examining
attorney may enter the standard character claim by an examiner's amendment,
if appropriate.
If the typed drawing in the application is acceptable under the old rules,
no action by the examining attorney is required regarding the drawing.
However, the applicant may voluntarily amend the typed drawing to a
standard character drawing by submitting a claim of standard characters.
Voluntary amendments are not permitted in the period between approval for
publication and issuance of a registration or Notice of Allowance, or in
the period between approval for registration and issuance of a
registration.
If the applicant amends to a standard character drawing, either in response
to the examining attorney's requirement or voluntarily, the examining
attorney must have Office records updated to change the mark drawing code
to 4. See section I.A.10 of this exam guide concerning mark drawing codes.
10. Mark Drawing Code
Standard character drawings are coded in the Office's systems as "mark
drawing code 4." Typed drawings are coded as "mark drawing code 1."
"Mark drawing code 1" will no longer be available for applications filed on
or after November 2, 2003. Therefore, standard character drawings must use
only "mark drawing code 4." Applications that were filed before November
2, 2003, may be amended to "mark drawing code 1," if appropriate for that
drawing.
B. Color Drawings
1. Requirements for Color Drawings
The Office will begin accepting color drawings on November 2, 2003.
Starting on that date, the Office will no longer accept black and white
drawings with a color claim, or drawings that show color by use of lining
patterns. 37 C.F.R. 2.52(b)(1).
Color drawings must be accompanied by the following: (1) a color claim
naming the colors that are a feature of the mark; and (2) a separate
statement describing where the color(s) appear on the mark. A color
drawing will not publish without both of these statements.
A properly worded color claim would read as follows:
The color(s) <name the color(s)> are claimed as a distinctive feature of
the mark.
A properly worded description would read as follows:
The color(s) <name the color(s)> appear in <specify portion of mark on
which color(s) appear>.
If the color claim or description is unclear or ambiguous, the examining
attorney must require clarification. The applicant may supplement the
required written description of the color contained in a mark with a
reference to a commercial color identification system. The Office
does not endorse or recommend any one commercial color identification
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system. The written description of the mark must include a generic
description of the color, in addition to the reference to the commercial
color identification system.
2. Color Drawings Filed Without a Color Claim
If the applicant submits a color drawing but does not include a color claim
in the written application, and if the color is a material element of the
mark, the examining attorney must require the applicant to submit a color
claim naming the color(s) that appear in the mark, and a separate statement
describing where the color appears on the mark. If the examining attorney
determines that the color is a non-material element of the drawing, the
applicant may instead elect to submit a black and white drawing.
3. Color Drawings Filed With an Incorrect Color Claim
Where the color shown in the drawing is inconsistent with the color claimed
in the written application, e.g., the mark is shown in blue in the drawing,
but the color claimed is orange, then the drawing controls. The color
claim may be corrected to conform to the drawing, unless amending the
drawing to conform to the color claim materially alters the mark shown in
the drawing.
4. Black and White Drawings and Color Claims
If an applicant submits a black and white drawing that is lined for color,
or if the application includes a color claim in the written application,
the examining attorney must require that applicant submit a color drawing,
a color claim naming the color(s), and a separate statement describing
where the color appears on the mark. If, however, the examining attorney
determines that the color is a non-material element of the drawing, the
applicant may instead elect to submit a black and white drawing that is not
lined for color, or delete the color claim in the written application,
whichever is applicable.
If an applicant submits a black and white drawing that is not lined for
color, and there is no color claim in the written application, generally
the applicant cannot substitute a color drawing and claim color, unless the
color is a non-material element of the drawing.
5. Gray Tones in Drawings
The Office now accepts drawings that contain the color gray, or stippling
that produces gray tones. The drawing is processed as a color drawing.
Drawings with gray tones are processed like any other color drawing. See
section I.B.1 of this exam guide. If the drawing contains the color gray,
or stippling that produces gray tones, and the record is unclear as to
whether applicant is claiming color, applicant must clarify the ambiguity.
6. Drawings in Applications Filed and Registrations Issued Before
November 2, 2003
In applications filed before November 2, 2003, if the drawing of record
does not meet the requirements for claiming color under the old rules, the
examining attorney must require a new drawing. In response, the applicant
may submit either (1) a black and white drawing that meets the requirements
for claiming color under the old rules, or (2) a color drawing with the
required statements for claiming color under the new rules.
If the drawing in the application is acceptable to claim color under the
old rules, no action by the examining attorney is required. However, the
applicant may voluntarily submit a color drawing under the new rules with
the requisite color claim and a separate description of the color(s) in
the mark. Voluntary amendments are not permitted in the period between
approval for publication and issuance of a registration or Notice of
Allowance, or in the period between approval for registration and issuance
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of registration.
Similarly, a registrant may substitute a color drawing for a black and
white drawing in a registration where color is claimed, by filing a 7
request to amend the registration certificate. The request must include a
color drawing, a color claim, a description of where the color appears in
the mark, and a $100 fee.
7. Lining and Stippling Statements for Drawings
Black and white drawings lined for color will not be accepted after
November 2, 2003. See section I.B.1 of this exam guide. Thus, the
examining attorney will no longer be required to enter a statement that the
lining or stippling represents shading or a feature of the mark unless
he/she believes such a statement is necessary to accurately describe the
mark.
C. Requirements Applying to Electronically Submitted Drawings
The drawing must meet the requirements of both 37 C.F.R. 2.52 and 37
C.F.R. 2.53. See Appendix A.
1. 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 that meets the requirements of 37 C.F.R. 2.53(c). The applicant must
also submit a standard character claim. See section I.A.1 of this exam
guide.
If a standard character drawing is filed through the Trademark Electronic
Application System (TEAS), the characters entered in the appropriate field
in the TEAS application or response form are automatically checked against
the standard character set.
The standard character set includes two lists: supported characters and
unsupported characters. If any of the characters in the mark are not in
the "supported character" list, then the applicant must attach a digitized
image that meets the requirements of 37 C.F.R. 2.53(c). If all the
characters in the mark are in the "supported character" list, then the
Office will create a .jpg image. The application record will indicate that
standard characters have been claimed and that the Office has created the
image. If the Office created the digitized image, the examining attorneys
need not check the standard character drawing against the standard
character set during examination.
If the Office did not create the digitized image, then the examining
attorney must check the standard characters in the drawing against the
standard character set. If the characters are not in the set, then the
examining attorney must process the drawing as a special form drawing, and
require the applicant to delete the standard character claim. See section
I.A.1 of this exam guide.
2. Special Form Drawings
If an applicant is filing a special form drawing, the applicant must attach
to the electronic submission a digitized image of the mark that meets the
requirements of 37 C.F.R. 2.53(c). The same issues and requirements
discussed in section I.A.6 of this exam guide apply to special form
drawings submitted electronically.
3. Requirements for Digitized Images
The image must be in .jpg format; scanned at no less than 300 dots per inch
and no more than 350 dots per inch, with a length of no less than 250
pixels and no more than 944 pixels, and a width of no less than 250 pixels
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and no more than 944 pixels. All lines must be clean, sharp and solid,
must not be fine or crowded, and must produce a high quality image when
copied. 37 C.F.R 2.53(c)
Digitized images that are outside the stated pixel count will be accepted
for filing, but must be corrected by the applicant prior to approval for
publication. Examining attorneys must review the pixel count as shown on
the input field of the application data sheet. If the pixel count is less
than 250 pixels or more than 944 pixels in either direction, then the
examining attorney must require that the applicant submit a new digitized
image that complies with the pixel requirement. This is also necessary for
substitute drawings submitted via the TEAS response form.
D. Requirements Applying to Drawings Submitted on Paper
The drawing must meet the requirements of both 37 C.F.R. 2.52 and
37 C.F.R. 2.54. See Appendix A.
The Office will create a digitized image of any drawing submitted on paper.
These images will have an acceptable pixel count. However, the examining
attorney is responsible for determining whether the image submitted on
paper meets the size requirements of 37 C.F.R. 2.54. Specifically, the
image in the drawing cannot be larger than 3.15 inches high by 3.15 inches
wide (8 cm high by 8 cm wide). If the image does not meet this
requirement, then the examining attorney must require a new drawing.
II. SPECIMENS FILED ELECTRONICALLY
Trademark Rule 2.56(d)(4), 37 C.F.R. 2.56(d)(4), has been amended to
require that a specimen transmitted through TEAS be a digitized image in
.jpg format. The Office will not accept or open attachments in any other
format. Attachments in .gif format are no longer acceptable.
III. PARTIAL ABANDONMENT
37 C.F.R. 2.65(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.
General Rule. Trademark Rule 2.65(a), 37 C.F.R. 2.65(a), has been amended
to provide that if a refusal or requirement is expressly limited to only
certain goods/services, and the applicant fails to file a response to the
refusal or requirement, the application shall be abandoned only as to those
particular goods/services.
Partial abandonment applies only where the Office action expressly states
that a refusal or requirement is limited to only certain goods/services or
certain class(es). If the Office action contains any requirement or
refusal that applies to all the goods/services, and the applicant fails
to respond, the entire application will be abandoned.
Effective Date. The rule applies to all Office actions issued on or after
November 2, 2003, regardless of the filing date of the application. It
does not apply to Office actions issued before November 2, 2003.
Incomplete Response to Partial Refusal. Partial abandonment may also occur
when an applicant fails to file a complete response to a final refusal or
final requirement that is limited to only certain goods/services or certain
class(es). If an applicant files an incomplete response to a nonfinal
action that is limited to only certain goods/services or certain class(es),
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the examining attorney should issue a final action, making all outstanding
requirements and refusals final. See TMEP 718.03 et seq. regarding
incomplete responses.
Use of Headings in Office Actions. When issuing a partial refusal or
requirement, the examining attorney is encouraged to use the heading
"Partial Refusal" or "Partial Requirement," so it is clear in the record
that the refusal or requirement applies only to certain goods/services
or certain class(es).
Requirements for Amendment of Identification of Goods/Services. When the
identification of goods/services includes some terminology that is
indefinite and some terminology that is acceptable, the examining attorney
should specify which terminology is indefinite, suggest amended language if
possible, and indicate that the rest of the identification is acceptable.
When an applicant fails to respond to a requirement to amend some
terminology in an otherwise acceptable identification of goods/services,
the examining attorney, in his or her discretion, should (1) delete the
indefinite goods/services from the identification, (2) instruct the Legal
Instruments Examiner to delete the indefinite goods/services from the
identification, or (3) issue an examiner's amendment deleting the
unacceptable terminology from the identification. No prior authorization
from the applicant or the applicant's attorney is needed to issue an
examiner's amendment in this situation.
IV. CHANGES TO THE REQUIREMENTS FOR A SHOWING OF DUE DILIGENCE IN PETITIONS
UNDER 37 C.F.R. 2.66 AND 2.146
Effective May 2, 2004, the standard for a showing of due diligence in
petitions to revive abandoned trademark applications under 37 C.F.R. 2.66
and petitions to the Director under 37 C.F.R. 2.146 will change from one
year to six months. See notice at 68 FR 55748 (Sept. 26, 2003).
Applicants and registrants are responsible for tracking the status of
matters pending before the Office. When a petitioner seeks to reactivate
an application or registration that was abandoned, cancelled, or expired
due to the loss or mishandling of documents sent to or from the Office, the
Office will deny the petition if the petitioner was not diligent in
checking the status of the application or registration, even if the
petitioner can show that the Office actually received documents, or can
swear that a notice from the Office was never received by the petitioner.
TMEP 1705.05.
In petitions filed prior to May 2, 2004, a petitioner will be considered
diligent if the party inquired as to the status of a pending matter within
one year of the filing or receipt of a document for which further action by
the Office is expected. In petitions filed on or after May 2, 2004, to be
considered diligent, a petitioner must:
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 8 or 71 of the Trademark Act,
or a renewal application under 9 of the Trademark Act, until the petitioner
receives notice that the affidavit or renewal application has been
accepted; and
Promptly request corrective action where necessary.
37 C.F.R. 2.66(a)(2) and 2.146(i). The required showing of diligence is
necessary to protect third parties who may be harmed by the removal and
later reinsertion of an application or registration in the Office's
database. Moreover, in view of the strict time limits for issuing
refusals in 66(a) applications (see Guide To Implementation of Madrid
Protocol in the United States, Exam Guide No. 2-03, section IV.B.4), the
accuracy and integrity of the Office's database is more important than
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ever.
The Office's electronic systems 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 easily check the status of a
pending application or registration using the Trademark Applications and
Registrations Retrieval ("TARR") database, available at
http://tarr.uspto.gov/.
Delay in filing a Petition May Result in Cancellation of International
Registration. If a petition to revive is filed more than two months after
the mailing date of the notice of abandonment, and the subject application
forms the basis of an international registration under the Madrid Protocol,
it is likely that the international registration will be cancelled
regardless of whether the basic application is revived. See Guide To
Implementation of Madrid Protocol in the United States, Exam Guide No.
2-03, section II.I regarding the dependence of an international
registration on the basic application or registration during the first five
years after issuance of the international registration.
Similarly, a delay in filing a petition to reinstate a cancelled or expired
registration that forms the basis of an international registration may
result in cancellation of the international registration regardless of
whether the basic registration is revived.
V. AUTOMATIC UPDATING OF OWNERSHIP OF TRADEMARK APPLICATIONS AND
REGISTRATIONS
Effective November 2, 2003, except in certain limited circumstances, the
Office will automatically update the ownership information in the Trademark
database of registrations and pending applications when one of the
following documents is recorded with the Assignment Services Division of
the Office:
Assignment of entire interest and goodwill
Nunc Pro Tunc Assignment of entire interest and goodwill
Merger
Name Change
The Office has created an interface between the Assignment Services
Division's database and the Trademark database that will enable the Office
to automatically update ownership information in the Trademark database
when the appropriate documents have been recorded in the Assignment
Services Division. The Trademark database includes the TRAM (Trademark
Reporting and Monitoring) System and the TARR database.
A. Previous Practice.
Prior to November 2, 2003, recording a document with the Assignment
Services Division of the Office did not automatically change the ownership
record in the Trademark database. To change the ownership record in the
Trademark database, a new owner had to notify the Trademark Operation that
ownership had changed. The procedures for notifying the Trademark
Operation of ownership changes both prior to registration and after
registration are set forth in TMEP 502.02 and 502.03.
The Office does not update the Trademark database unless the records of the
Assignment Services Division show a clear chain of title.
B. Change of Practice - Automatically Updating Ownership Records in the
Trademark Database
If an assignment, merger, or change of name is recorded in the Assignment
Services Division on or after November 2, 2003, the Office will
automatically update the ownership of the application or registration in
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the Trademark database, except in the limited circumstances discussed in
section V.B.1 below. In these situations, it is unnecessary for the new
owner to notify the Trademark Operation of the change of ownership, or to
file a request in a pending application that the certificate of
registration issue in the name of the new owner.
The Trademark database will show only the last recorded owner, not the
complete chain of title. The complete chain of title can be obtained from
the Assignment database. The ownership field in the Trademark database
will be automatically updated regardless of whether the records of
the Assignment Services Division show a clear chain of title transferring
ownership to the last recorded owner. The Trademark database will include
the reel and frame number and execution date of the recorded document, as
well as a notation to "Check Assignments." Both examining attorneys and
trademark owners should check assignment records to ensure that the
owner of record in the Trademark database has a clear chain of title.
1. Circumstances in Which Trademark Database Will Not be Automatically
Updated
In the circumstances discussed below, the Office will not automatically
update the Trademark database to show the change in ownership, even if the
appropriate document is recorded in the Assignment Services Division on or
after November 2, 2003. In these situations, the applicant must notify the
Trademark Operation that the assignment or other title document has been
recorded and request that the Trademark database be updated to show title
in the new owner. 37 C.F.R. 3.85; TMEP 502.01 and 502.02.
a. Execution Date Conflicts With Previously Recorded Document
If a previously recorded assignment, merger or change of name document
for the same application or registration has an execution date that is the
same as or later than the execution date of the subsequently recorded
document, the Trademark database will not be automatically updated. Office
personnel will have to review the assignment records and update the
database manually.
b. Blackout Period: Ownership of Pending Applications Cannot be Updated
During Certain Time Periods
The Trademark database will not be automatically updated to show a
change of ownership during the following stages of the registration
process:
For 1(a) and 44 applications:
Between approval for publication and issuance of registration
For 1(b) applications:
Between approval for publication and issuance of Notice of Allowance;
and
Between approval for registration and issuance of registration
c. Maximum Number of Ownership Changes
The Trademark database will not be automatically updated if the maximum
number of ownership changes permitted for the following time periods has
been reached:
Prior to publication - up to nine changes of ownership
Between publication and registration - up to nine additional changes
of ownership
2. Processing Time for Automatic Updating
The process for automatically updating the Trademark database requires that
the Assignment Services Division: (1) record the document transferring
title in the Assignment database; and (2) extract the trademark assignment
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information from the Assignment database and send it electronically to the
Trademark Operation for automatic updating. The Assignment Services
Division will extract trademark assignment information from the Assignment
database and transmit it to the Trademark Operation once a week.
To expedite recordation, new owners are encouraged to file requests for
recordation through the Office's website, at http://etas.uspto.gov.
If a trademark owner wants the Trademark database updated within a certain
timeframe, and there is insufficient time for the Assignment Services
Division to process a recently recorded title document for automatic
updating, the owner should notify the Trademark Operation of the change of
ownership. 37 C.F.R. 3.85; TMEP 502.02 and 502.03.
3. Correction to Automatic Update - Last Recorded Owner Does Not Have Clear
Chain of Title
The Trademark database will be automatically updated to show the last
recorded owner regardless of whether the Assignment database shows that the
last recorded owner has a clear chain of title. See section V.B above. If
the Trademark database is automatically updated to show ownership of an
application or registration in a party who does not have a clear chain of
title as evidenced by the Assignment database, the true owner of the
application or registration may file a written request to have the
ownership field in the Trademark database corrected. The Office will grant
a request for correction of the ownership field if: (1) the Trademark
database was automatically updated to show ownership in a party who does
not have a clear chain of title according to the Assignment database; and
(2) the Assignment database shows a clear chain of title transferring
ownership to the party requesting correction of the ownership field in the
Trademark database.
The correction of the Trademark database will not be automatically
reflected in the Assignment database. To correct the assignment records, a
party must follow the procedures set forth in TMEP 503.06 et seq. for
correcting errors in the Assignment database.
Example: ABC Corporation owns Application No. 1. An assignment of the
entire interest and goodwill is filed transferring ownership of Application
1 from ZED Corporation to XYZ Corporation. The Assignment Services
Division records the assignment and transmits the trademark assignment
information to the Trademark Operation. The Trademark database is
automatically updated to show XYZ Corporation as the new owner of
Application 1. The Trademark Operation will correct its databases, upon
ABC Corporation's request, because the Assignment database does not show a
clear chain of title to XYZ Corporation.
In all other situations, a party requesting correction of the ownership
records of the Trademark Operation must follow the procedures for
correcting errors in recorded documents or cover sheets, as set forth in
TMEP 503.06 et seq. That is, the party must file corrective documents
with the Assignment Services Division and pay the recordal fees necessary
to correct the error, then notify the Trademark Operation that the
corrective documents have been recorded.
Prior to registration, a request for correction of the ownership field in
the Trademark database should be made in an amendment directed to the
examining attorney. If such a request is filed after publication, it will
be handled in accordance with standard procedures for processing
amendments after publication, as set forth in TMEP 1505.02 et seq. In a
1(b) application, if a request for correction of the ownership field is
filed between the issuance of the notice of allowance and the submission of
a statement of use, the Office will place the request in the file for
consideration at the time of examination of the statement of use.
37 C.F.R. 2.77; TMEP 1107.
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After registration, a request for correction of the ownership field should
be made in the form of a request for correction under 7(g) of the
Trademark Act and 37 C.F.R. 2.174.
C. Applicability of Change of Practice to Requests for Recordation Filed
Before November 2, 2003
This change of practice applies to all assignments, mergers, and name
changes recorded in the Assignment Services Division on or after
November 2, 2003, even if the request for recordation was filed before
November 2, 2003.
This change of practice does not apply to assignments, mergers, or name
changes that were recorded in the Assignment Services Division prior to
November 2, 2003. For documents recorded prior to November 2, 2003, the
new owner must notify the Trademark Operation of the change of ownership,
and request that the Trademark database be updated.
D. Applicability of Change of Practice to International Applications
and Registrations Under the Madrid Protocol
The procedures discussed above do not apply to 66(a) applications and
registrations. Changes of ownership of international registrations and
requests for extensions of protection of international registrations to the
United States must be recorded with the International Bureau of the World
Intellectual Property Organization (IB). The Office will record only those
assignments (or other documents of title) that have been recorded in the
International Register. The Trademark databases will be automatically
updated to reflect any change of ownership that is recorded in the
International Register. See Guide To Implementation of Madrid Protocol
in the United States, Exam Guide No. 2-03, sections IV.F and VI.A.1.
VI. POLICY CHANGE - RECLASSIFICATION AFTER PUBLICATION OR REGISTRATION
A. Post-Publication Changes to Classification in Pending Applications
The Office has generally required republication of a mark when
classification changes after publication. As of November 2, 2003, however,
republication of a mark after a post-publication classification change will
no longer be required. This new policy applies to all amendments to
classification after publication, including those that occur during
examination of Statements of Use.
B. Post-Registration Changes to Classification and Requests for
Correction
Historically, if a United States registrant requested correction of
classification under 15 U.S.C. 1057(g), due to a clerical error made by
the Office, the Office would cancel the registration, restore the
application to pendency, and republish the mark in the correct class. If
the registrant requested amendment of classification pursuant to 15
U.S.C. 1057(e), the Office would deny the request, because the change
would require republication.
As of November 2, 2003, requests to correct or amend the International
Classification of a registration filed pursuant to Section 7 may be granted
without canceling the registration and republishing. Such a request will
be granted only if the requested International Classification for those
goods and/or services listed in the registration is consistent with the
current version of the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration
of Marks. In such a case, the Office will accept the request to correct or
amend the International Classification of goods/services and issue an
Updated Registration Certificate (URC) with the new classification noted.
Registrants will also be able to reclassify registrations from multiple
U.S. classes into a single International Classification. For example,
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goods in U.S. classes 21 and 26 often fall into only International Class 9.
Hence, a registrant can request an amendment from U.S. classes 21 and 26
into International Class 9.
Registrants requesting an amendment to the International Classification
must pay the $100.00 filing fee required for Section 7 amendments. If the
request for correction is due to a clear Office error, no filing fee will
be charged to handle the request.
This applies only to registrations that issued from applications under 1
or 44 of the Trademark Act. The classification of goods/services in a
66(a) application cannot be changed from the classification assigned by
the IB, even if the IB's classification of goods/services is different from
the classification set forth in the Office's Manual of Acceptable
Identification of Goods and Services. See Guide To Implementation of
Madrid Protocol in the United States, Exam Guide No. 2-03, section IV.B.2.
APPENDIX A
37 C.F.R. 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
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
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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.
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.
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.
(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.
[1277 TMOG 98]