(497) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
Docket No. PTO-T-2010-0073
RIN 0651-AC49
Changes in Requirements for Specimens
and for Affidavits or Declarations of
Continued Use or Excusable Nonuse in
Trademark Cases
AGENCY: United States Patent and Trademark Office, Commerce
ACTIONS: Proposed Rule
SUMMARY: In order to help assess and ensure the accuracy of the trademark
register, the United States Patent and Trademark Office ("USPTO") proposes
to revise the Trademark Rules of Practice and the Rules of Practice for
Filings Pursuant to the Madrid Protocol to provide for the USPTO to
require: any information, exhibits, and affidavits or declarations deemed
reasonably necessary to examine an affidavit or declaration of continued
use or excusable nonuse in trademark cases, or for the USPTO to assess the
accuracy and integrity of the register; and upon request, more than one
specimen in connection with a use-based trademark application, an
allegation of use, an amendment to a registered mark, or an affidavit or
declaration of continued use in trademark cases. A lack of ability to rely
on the trademark register as an accurate reflection of marks that are
actually in use in the United States for the goods/services identified in
the registration imposes costs and burdens on the public. The proposed
rules will allow the USPTO to require additional proof of use of a mark to
verify the accuracy of claims that a trademark is in use on particular
goods/services. The USPTO anticipates issuing requirements for such proof
in a relatively small number of cases to assess the accuracy of the
identifications. The proposed rules will facilitate an assessment of the
reliability of the trademark register in this regard, so that the USPTO and
stakeholders may determine whether and to what extent a general problem may
exist and consider measures to address it, if necessary.
DATES: Comments must be received by September 12, 2011 to ensure
consideration.
ADDRESSES: The USPTO prefers that comments be submitted via electronic
mail message to TMFRNotices@uspto.gov. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Cynthia C. Lynch; by hand delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Cynthia C. Lynch; or by electronic mail message via the Federal
eRulemaking Portal. See the Federal eRulemaking Portal Web site
(http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal. The comments will be
available for public inspection on the USPTO's Web site at
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
To benefit the public through a better ability to assess the accuracy of
the trademark register, the USPTO proposes to revise the Trademark Rules of
Practice (37 CFR Part 2) and the Rules of Practice for Filings Pursuant to
the Madrid Protocol ("Madrid Rules") (37 CFR Part 7) to provide for the
USPTO to require: (1) any information, exhibits, and affidavits or
declarations deemed reasonably necessary to examine a post registration
affidavit or declaration of continued use in trademark cases, or for the
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USPTO to assess the accuracy and integrity of the register; and (2) upon
request, more than one specimen in connection with a use-based trademark
application, an allegation of use, an amendment to a registered mark, or an
affidavit or declaration of continued use in trademark cases.
The proposed revisions will facilitate the USPTO's ability to verify the
accuracy of identifications of goods/services. The accuracy of the
trademark register as a reflection of marks that are actually in use in the
United States for the goods/services identified in the registration serves
an important purpose for the public. The public relies on the register to
clear trademarks that they may wish to adopt or are already using. Where a
party searching the register uncovers a potentially confusingly similar
mark, that party may incur a variety of resulting costs and burdens, such
as changing plans to avoid use of the mark, investigative costs to
determine how the similar mark is actually used and assess the nature of
any conflict, or cancellation proceedings or other litigation to resolve a
dispute over the mark. If a registered mark is not actually in use in the
United States, or is not in use on all the goods/services in the
registration, these types of costs and burdens may be incurred
unnecessarily. Thus, accuracy and reliability of the trademark register
help avoid such needless costs and burdens, and thereby benefit the public.
Specimens of use in use-based trademark applications illustrate how the
applicant is using the proposed mark in commerce on particular
goods/services identified in the application. Post registration affidavits
or declarations of use and their accompanying specimens demonstrate a
trademark owner's continued use of its mark in commerce for the
goods/services in the registration. The USPTO anticipates issuing
requirements for additional specimens or other information, exhibits, and
affidavits or declarations in a relatively small number of cases, to assess
the accuracy of the identifications of goods/services.
On April 26, 2010, the USPTO and the George Washington University Law
School hosted a roundtable discussion on the topic of "The Future of the
Use-Based Register." Panelists and audience members explored the
implications of the decision of the Court of Appeals for the Federal
Circuit in In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
2009), clarifying the high standard for fraud on the USPTO in connection
with trademark cases. Specifically, the roundtable focused on Bose's
impact on the growing length of identifications of goods and services in
U.S. trademark registrations and how to assess whether such identifications
accurately reflect actual use or intent to use.
A "brainstorming" session at the conclusion of the roundtable resulted
in a list of suggestions for how to improve the accuracy of identifications
of goods/services. These suggestions were not focused on fraud, but rather
on accuracy in the register. Several participants made the suggestion that
the USPTO require additional specimens, or a specific type of proof of use
of a mark, for all, or more than one, of the identified goods/services.
Such additional requirements could help provide information about to what
extent a problem with inaccuracy exists on the register, and could help
discourage inaccuracies.
The Trademark Act gives the Director discretion regarding the number of
specimens to require, 15 U.S.C. 1051(a)(1), (d)(1), 1058(b)(1)(C),
1141k(b)(1)(C). However, the current Trademark Rules of Practice and
Madrid Rules mandate the submission of only one specimen per class in
connection with use-related filings, 37 CFR 2.34(a)(1)(iv), 2.56(a),
2.76(b)(2), 2.86(a)(3) and (b), 2.88(b)(2), 2.161(g), 7.37(g). Similarly,
the current rules require only one specimen to be submitted in connection
with the amendment to a registered mark, 37 CFR 2.173(b)(3). In addition,
although the current Trademark Rules of Practice allow the USPTO to require
additional information or exhibits deemed reasonably necessary to the
examination of a pending application (37 CFR 2.61(b)), no counterpart rule
exists in the post registration context to facilitate proper examination of
an affidavit or declaration of continued use or excusable nonuse.
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To ensure that the USPTO may properly examine affidavits or
declarations, and the nature and veracity of the use claimed therein,
additional specimens or other information or exhibits, such as a photograph
of the mark appearing on certain goods, may be needed. Accompanying
affidavits or declarations to verify information or exhibits may also be
needed. One purpose of the rule is to allow the USPTO to require trademark
applicants or registrants to submit any additional specimens or other
information, exhibits and affidavits or declarations necessary to properly
examine an applicant's or registrant's claim to be using the mark. The
USPTO wishes to use such requirements as a means to assess and improve the
accuracy and integrity of the register. The proposed rules do not focus on
fraud issues, but only on the more general concern with ensuring accuracy.
Another purpose of the rule is to harmonize the requirements that can be
made as part of the examination of use allegations made in post
registration maintenance documents with the requirements currently
authorized in the examination of use allegations made prior to
registration.
Though the proposed rules allow for the possibility that additional
specimens or evidence may be required in any case, the USPTO currently has
no plans to implement such requirements in all cases. Rather, the USPTO
likely would rely on the proposed rules to seek additional specimens or a
specific type of evidence of use in a relatively small subset of cases to
assess the accuracy of particular identifications of goods/services. Where
an Office action issues requiring additional specimens or evidence, a
response must be filed within six months of the Office action, or before
the end of the filing period for the Section 8 affidavit, whichever is
later, 37 CFR 2.163(b). If no response is filed within this time period,
the registration will be cancelled. 37 CFR 2.163(c). If a response is
filed but fails to include the required specimens or evidence, the USPTO
may deem the Section 8 affidavit unacceptable as to the goods/services to
which the requirement pertained and delete them from the registration, or
in the case of all goods/services, cancel the registration for failure to
file an acceptable Section 8 affidavit. See 37 CFR 2.163.
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 7th edition, October 2010.
Discussion of Proposed Rules Changes
The USPTO proposes to revise §§ 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2),
2.86(a)(3), 2.86(b), and 2.88(b)(2) to indicate that the USPTO may, upon
request, require more than one specimen, including more than one specimen
per class, if the USPTO deems additional specimens reasonably necessary to
examine the application or allegation of use. These revisions codify
existing practice, where such additional specimens occasionally are
requested under § 2.61 as information or exhibits necessary to examination.
The Trademark Act gives the Director discretion regarding the number of
specimens to require, 15 U.S.C. 1051(a)(1), (d)(1).
The USPTO proposes to revise § 2.61(b) to indicate that accompanying
affidavits or declarations may be required along with information or
exhibits, and to clarify that the requirement may issue for the Office to
assess the accuracy and integrity of the register.
The USPTO proposes to revise § 2.161(g) and § 7.37(g) to indicate that
the USPTO may require more than one specimen in connection with the
examination of the affidavit or declaration of continued use. For example,
additional specimens may be requested in a case to verify the accuracy and
the nature of the use when the identification includes a large number of,
or significant disparity in, goods/services. The Trademark Act gives the
Director discretion regarding the number of specimens to require, 15
U.S.C. 1058(b)(1)(C), 1141k(b)(1)(C).
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The USPTO proposes to add § 2.161(h) and § 7.37(h) to provide that the
USPTO may require such information, exhibits, and affidavits or
declarations as the USPTO deems reasonably necessary to the proper
examination of the affidavit or declaration of continued use, or for the
USPTO to assess the accuracy and integrity of the register. These
provisions are corollaries to § 2.61(b), which currently allows the USPTO
to require additional information or exhibits in connection with the
examination of a pending application. These provisions also clarify that
accompanying affidavits or declarations may be required.
For example, the USPTO may require a verified photograph showing use of
the mark on particular goods in a registration for which an affidavit or
declaration of continued use is being examined in order to verify the
accuracy of goods/services in the identification. This type of requirement
may more likely be made where an identification includes a large number of,
or significant disparity in, goods/services. Or, such a requirement may
issue as part of an effort to assess and improve the accuracy and integrity
of the register.
The USPTO proposes to revise § 2.173(b)(3) to clarify that where an
amendment involves a change in the mark, a new specimen must be provided
for each class in a multiple-class registration and to add § 2.173(b)(4) to
provide that the USPTO may require additional specimens and such
information, exhibits, and affidavits or declarations as the USPTO deems
reasonably necessary to the proper examination of the proposed amendment.
Rule Making Requirements
Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866.
Executive Order 13563: The Office has complied with Executive Order
13563. Specifically, the Office has: (1) used the best available
techniques to quantify costs and benefits, and has considered values such
as equity, fairness and distributive impacts, (2) provided the public with
a meaningful opportunity to participate in the regulatory process,
including soliciting the views of those likely affected prior to issuing a
notice of proposed rule making, and provided online access to the rule
making docket, (3) attempted to promote coordination, simplification and
harmonization across government agencies and identified goals designed to
promote innovation, (4) considered approaches that reduce burdens and
maintain flexibility and freedom of choice for the public, and (5) ensured
the objectivity of scientific and technological information and processes,
to the extent applicable.
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 USPTO has chosen to seek public
comment before implementing the rule.
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 or any other law,
neither a Regulatory Flexibility Act analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C.
603. The proposed rules involve rules of agency practice and procedure.
Nonetheless, in an abundance of caution, the USPTO has undertaken an
Initial Regulatory Flexibility Act Analysis of the proposed rule.
1. Description of the reasons that action by the Office is being
considered:
The United States Patent and Trademark Office (USPTO) is proposing to
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require: (1) any information, exhibits, and affidavits or declarations
deemed reasonably necessary to examine an affidavit or declaration of
continued use in trademark cases; and (2) upon request, more than one
specimen in connection with a use-based trademark application, an
allegation of use, an amendment to a registered mark, or an affidavit or
declaration of continued use in trademark cases.
These proposed revisions will facilitate the USPTO's ability to verify
the accuracy of identifications of good/services. Specimens of use in
use-based trademark applications illustrate how the applicant is using the
proposed mark in commerce on particular goods/services identified in the
application. Post registration affidavits or declarations of use and their
accompanying specimens demonstrate a trademark owner's continued use of its
mark in commerce for the goods/services in the registration.
2. Succinct statement of the objectives of, and legal basis for, the
proposed rule:
The objective of the proposed rules is to facilitate the USPTO's ability
to verify the accuracy of identifications of goods/services in trademark
applications and registrations. The proposed rules would ensure that the
USPTO may properly examine the nature and veracity of allegations of use
made during the trademark application or post registration phase, and upon
request, may require additional specimens or other information or exhibits,
such as a photograph of the mark appearing on certain goods. Another
purpose of the rule is to harmonize the requirements that can be made as
part of the examination of use allegations made in post registration
maintenance documents, which are currently more limited, with the
requirements authorized in the examination of use allegations made prior to
registration.
The Trademark Act gives the Director of the USPTO discretion regarding
the number of specimens to require, 15 U.S.C. 1051(a)(1), (d)(1),
1058(b)(1)(C), 1141k(b)(1)(C). However, the current Trademark Rules of
Practice and the Rules of Practice for Filings Pursuant to the Madrid
Protocol Trademark mandate the submission of only one specimen per class in
connection with use-related filings, 37 CFR 2.34(a)(1)(iv), 2.56(a),
2.76(b)(2), 2.86(a)(3) and (b), 2.88(b)(2), 2.161(g), 7.37(g). Similarly,
the current rules require only one specimen to be submitted in connection
with a proposed amendment of a registered mark, 37 CFR 2.173(b)(3). In
addition, although the current Trademark Rules of Practice allow the USPTO
to require additional information or exhibits deemed reasonably necessary
to the examination of a pending application (37 CFR 2.61(b)), no
counterpart rule exists in the post registration context to facilitate
proper examination of an affidavit or declaration of continued use or
excusable nonuse.
3. Description and estimate of the number of affected small entities:
The USPTO does not collect or maintain statistics in trademark cases on
small versus large entity applicants, and this information would be
required in order to estimate the number of small entities that would be
affected by the proposed rules. However, the USPTO believes that the
overall impact of the proposed rules on applicants and registrants will be
relatively minimal.
The proposed rules could apply to any entity filing a use-based
trademark application and to any entity filing trademark registration
maintenance filings or amendments. With respect to allegations of use in
trademark applications, the proposed rules merely codify existing practice,
whereby the USPTO already occasionally requests additional specimens or
other information under 37 CFR 2.61. Thus, because no change in practice
would result from the proposed rules in this regard, they will have no
impact in the trademark application context.
After registration, registrants must make periodic filings with the
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USPTO to maintain their registrations. A Section 8 affidavit of continued
use is a sworn statement that the mark is in use in commerce, filed by the
owner of a registration, 15 U.S.C. 1058. The purpose of the Section 8
affidavit is to facilitate the cancellation of registrations for marks no
longer in use. With respect to post registration maintenance filings, the
Office estimates that only a small subset of registrants would be required
to provide more than one specimen, or information or exhibits in connection
with a Section 8 affidavit. The USPTO is unable to estimate what subset of
the registrants would be small entities impacted by the proposed rules. In
Fiscal Year 2010, 105,244 Section 8 affidavits were filed.
4. Description of the reporting, recordkeeping, and other compliance
requirements of the proposed rule, including an estimate of the classes
of small entities which will be subject to the requirement and the type
of professional skills necessary for preparation of the report or record:
The proposed rules impose no new recordkeeping requirements on trademark
applicants or registrants.
Regarding compliance with the proposed rules, as an initial matter, the
USPTO does not anticipate that the proposed rules would have a
disproportionate impact upon any particular class of small or large
entities. Any entity that has a registered trademark could potentially be
impacted by the proposed rules.
The USPTO estimates that in those post registration cases where a
requirement for additional information, exhibits, declarations, or
specimens is issued, it will take less than one hour to comply.
While the statement of use is a similar type of filing to those at issue
in the proposed rules applied in the post registration context, as the
statement of use involves providing one or more specimens of use and an
accompanying declaration, the compliance time involved to comply with the
proposed rules should be less. Under the proposed rules applied in the
post registration context, the type of fact gathering and review of the
nature and extent of the use of the mark that underlies a statement of use
will already have occurred. Compliance with the proposed requirement will
only necessitate gathering and submitting the evidence to demonstrate what
has already been assessed.
Assuming the mark is in use, as claimed, the compliance time involves
the length of time to secure a specimen, exhibit (such as taking a digital
photograph), information, or declaration, plus any time it takes an
attorney to communicate with the client in order to obtain what is required
and make the necessary filing with the USPTO. In reality, approximately
one-third of applications are filed pro se. These applicants and
registrants, therefore, would likely have a lower compliance time than the
USPTO has estimated, which assumes the involvement of counsel. These
proposed rules do not mandate the use of counsel.
The Office does not estimate any change in compliance cost associated
with the proposed rules with respect to allegations of use in trademark
applications, since the USPTO's current practice already allows for this.
The rule change merely codifies existing practice.
5. Description of any significant alternatives to the proposed rule which
accomplish the stated objectives of applicable statutes and which
minimize any significant economic impact of the rule on small entities:
The USPTO has considered whether and how it is appropriate to reduce
any burden on small businesses through increased flexibility. The
following options have been considered, but rejected, by the USPTO.
The alternative of never requiring additional specimens or other
information in connection with Section 8 affidavits or exempting small
entities from such requirements would have a lesser economic impact on
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small entities, but would not accomplish the stated objective of verifying
the accuracy of identifications of goods/services in trademark
registrations. As set forth above, the USPTO will rely on the proposed
rules to assess the accuracy of use allegations. This assessment may
provide a better sense of whether significant problems may exist with the
accuracy of identifications of goods and services. Thus, exempting small
entities would prevent the potential consideration of all Section 8
affidavits for this purpose, and therefore would not achieve the stated
objective of verifying accuracy.
The stated objective of the proposed rules also facilitates the
cancellation of any registrations for marks that are no longer in use, the
policy underlying the statutory requirement for Section 8 affidavits.
Exempting small entities from any possible scrutiny regarding use
allegations would fail to reach non-use of marks by small entity owners,
thereby failing to achieve the objective.
Other options to potentially lessen the impact on small entities have
been rejected. For example, the USPTO deems unnecessary extended time
periods for small entity compliance because there appears to be no reason
that compliance with the requirements in the proposed rules would be more
time-consuming for small entities, and because the USPTO's standard
six-month time for responding to trademark Office actions allows sufficient
time regardless of small entity status.
The USPTO deems any streamlined or simplified compliance mechanism for
small entities unnecessary, given the ease of responding to trademark
Office actions electronically. Thus, compliance will be as streamlined and
simplified as possible for all affected entities. Moreover, where the
objective is to verify the accuracy of a claim of use in an affidavit, the
proposed requirements of one or more additional examples of the manner of
the claimed use, or of other information such as photographic proof already
seem to be the least burdensome and complex way to achieve the objective.
Any more minimal requirement would not demonstrate use and therefore would
not meet the objective to verify use claims.
Use of performance rather than design standards is not applicable to the
proposed rule making because the USPTO is not issuing any sort of standard.
Rather, the proposed rules will require applicants and registrants to
furnish evidence of use, rather than comply with a performance or design
standard.
Finally, with respect to allegations of use in trademark applications,
the proposed rules merely codify existing practice, whereby the USPTO
already occasionally requests additional specimens or other information
under 37 CFR 2.61. Thus, because no change in practice would result from
the proposed rules in this regard, any different treatment of small
entities in this context would fail to meet the stated objective and likely
would generate concern and confusion about a change in practice.
6. Identification, to the extent practicable, of all relevant Federal
rules which may duplicate, overlap or conflict with the proposed rule:
The proposed rules would not duplicate, overlap or conflict with any
other Federal rules.
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
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Assessment under Executive Order 13132 (Aug. 4, 1999).
Paperwork Reduction Act: The changes in this rule making involve
information collection requirements which are subject to review by the
Office of Management and Budget (OMB) under the Paperwork Reduction Act of
1995 (44 U.S.C. 3501 et seq.). The Office will be submitting an
information collection request to OMB for its review and approval because
the changes in this proposed rule would affect the information collection
requirements associated with the information collection under OMB control
number 0651-0055.
This rule making will provide for the USPTO to require: (1) any
information, exhibits, and affidavits or declarations deemed reasonably
necessary to examine an affidavit or declaration of continued use or
excusable nonuse in trademark cases, or for the USPTO to assess the
accuracy and integrity of the register; and (2) upon request, more than one
specimen in connection with a use-based trademark application, an
allegation of use, an amendment to a registered mark, or an affidavit or
declaration of continued use in trademark cases.
There is no fee impact for submission of specimens. Additional burden
due to postage costs for paper submissions for the post-registration office
actions is estimated at $181, for a total increase in fee burden by an
estimated $181. The agency estimates the following overall impact on
burden: an increase of responses of 3,165; an increase in burden hours of
1,120; and an increase in burden hour costs of $364,000.
Comments are invited on: (1) whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency's estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and (4)
ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden, to
Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451,
attention Cynthia C. Lynch, or to the Office of Information and Regulatory
Affairs, Office of Management and Budget, New Executive Office Building,
Room 10235, 725 17th Street, N.W., Washington, D.C. 20503, Attention: Desk
Officer for the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks, International
Registration.
For the reasons stated in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the USPTO proposes to amend
parts 2 and 7 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR Part 2 continues to read as follows:
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Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Revise § 2.34(a)(1)(iv) to read as follows:
§ 2.34 Bases for filing.
(a) ***
(1) ***
(iv) One specimen per class showing how the applicant actually uses the
mark in commerce. When requested by the Office, additional specimens
must be provided.
*****
3. Revise § 2.56(a) to read as follows:
§ 2.56 Specimens.
(a) An application under section 1(a) of the Act, an amendment to allege
use under § 2.76, and a statement of use under § 2.88 must each include one
specimen per class showing the mark as used on or in connection with the
goods, or in the sale or advertising of the services in commerce. When
requested by the Office, additional specimens must be provided.
*****
4. Revise § 2.61(b) to read as follows:
§ 2.61 Action by examiner.
*****
(b) The Office may require the applicant to furnish such information,
exhibits, and affidavits or declarations as may be reasonably necessary to
the proper examination of the application, or for the Office to assess the
accuracy and integrity of the register.
*****
5. Revise § 2.76(b)(2) to read as follows:
§ 2.76 Amendment to allege use.
*****
(b) ***
(2) One specimen per class showing the mark as actually used in
commerce. When requested by the Office, additional specimens must be
provided. See § 2.56 for the requirements for specimens; and
*****
6. Revise §§ 2.86(a)(3) and (b) to read as follows:
§ 2.86 Application may include multiple classes.
(a) * * *
(3) Include either dates of use (see §§ 2.34(a)(1)(ii) and (iii)) and
one specimen for each class, or a statement of a bona fide intention to use
the mark in commerce on or in connection with all the goods or services
specified in each class. When requested by the Office, additional
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specimens must be provided. The applicant may not claim both use in
commerce and a bona fide intention to use the mark in commerce for the
identical goods or services in one application.
(b) An amendment to allege use under § 2.76 or a statement of use under
§ 2.88 must include, for each class, the required fee, dates of use, and
one specimen. When requested by the Office, additional specimens must be
provided. The applicant may not file the amendment to allege use or
statement of use until the applicant has used the mark on all the goods or
services, unless the applicant files a request to divide. See § 2.87 for
information regarding requests to divide.
* * * * *
7. Revise § 2.88(b)(2) to read as follows:
§ 2.88 Filing statement of use after notice of allowance.
*****
(b) * * *
(2) One specimen of the mark as actually used in commerce. When
requested by the Office, additional specimens must be provided. See § 2.56
for the requirements for specimens; and
* * * * *
8. Amend § 2.161 by revising the introductory text of paragraph (g) and
adding paragraph (h) to read as follows:
§ 2.161 Requirements for a complete affidavit or declaration of continued
use or excusable nonuse.
*****
(g) Include one specimen showing current use of the mark for each class
of goods or services, unless excusable nonuse is claimed under §
2.161(f)(2). When requested by the Office, additional specimens must be
provided. The specimen must:
*****
(h) The Office may require the owner to furnish such information,
exhibits, and affidavits or declarations as may be reasonably necessary to
the proper examination of the affidavit or declaration under section 8 of
the Act, or for the Office to assess the accuracy and integrity of the
register.
9. Amend § 2.173 by revising paragraph (b)(3) and adding paragraph (b)(4)
to read as follows:
§ 2.173 Amendment of registration.
* * * * *
(b) ***
(3) If the amendment involves a change in the mark: one new specimen
per class showing the mark as used on or in connection with the goods or
services; an affidavit or declaration under § 2.20 stating that the
specimen was in use in commerce at least as early as the filing date of the
amendment; and a new drawing of the amended mark. When requested by the
Office, additional specimens must be provided.
(4) The Office may require the owner to furnish such information,
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US PATENT AND TRADEMARK OFFICE |
1493 CNOG 3498 |
exhibits, and affidavits or declarations as may be reasonably necessary to
the proper examination of the amendment, or for the Office to assess the
accuracy and integrity of the register.
*****
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO
THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
10. The authority citation for 37 CFR Part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
11. Amend § 7.37 by revising paragraph (g) and adding paragraph (h) to
read as follows:
§ 7.37 Requirements for a complete affidavit or declaration of continued
use or excusable nonuse.
*****
(g) Include a specimen showing current use of the mark for each class of
goods or services, unless excusable nonuse is claimed under § 7.37(f)(2).
When requested by the Office, additional specimens must be provided. The
specimen must meet the requirements of § 2.56 of this chapter.
(h) The Office may require the holder to furnish such information,
exhibits, and affidavits or declarations as may be reasonably necessary to
the proper examination of the affidavit or declaration under section 71 of
the Act, or for the Office to assess the accuracy and integrity of the
register.
June 29, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1369 TMOG]