| Trademark Publications 2015 |
Referenced Items (513, 514, 515) |
(515) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. PTO-T-2013-0027]
RIN 0651-AC89
Changes in Requirements for Collective Trademarks and
Service Marks, Collective Membership Marks, and Certification Marks
AGENCY: United States Patent and Trademark Office, Commerce.
ACTIONS: Final rule.
SUMMARY: The United States Patent and Trademark Office ("USPTO") is
amending the rules related to collective trademarks, collective service
marks, and collective membership marks (together "collective marks"), and
certification marks to clarify application requirements, allegations of use
requirements, multiple-class application requirements, and registration
maintenance requirements for such marks. These rule changes codify current
USPTO practice set forth in the USPTO's "Trademark Manual of Examining
Procedure" ("TMEP") and precedential case law. These changes also permit
the USPTO to provide the public more detailed guidance regarding
registering and maintaining registrations for these types of marks and
promote the efficient and consistent processing of such marks. Further, the
USPTO is amending several rules beyond those related to collective marks
and certification marks to create consistency with rule changes regarding
such marks and to streamline the rules, by consolidating text and
incorporating headings, for easier use.
DATES: This rule is effective on July 11, 2015.
FOR FURTHER INFORMATION CONTACT: Cynthia Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, at (571) 272-8742 or
tmpolicy@uspto.gov.
SUPPLEMENTARY INFORMATION
Executive Summary: Purpose: As noted above, the revised rules benefit
the public by providing more comprehensive and specific guidance regarding
registering collective marks and certification marks. The current rules
incorporate by reference the trademark and service mark application rules;
however, wording in the trademark and service mark application rules
sometimes may not be specifically suited to collective and certification
mark applications. Therefore, the USPTO is revising the rules in parts 2
and 7 of title 37 of the Code of Federal Regulations to codify current
USPTO practice in TMEP sections 1302, 1303 et seq., 1304, and 1306, and to
state clearly and provide sufficient detail regarding the requirements for
collective and certification mark applications. The USPTO is also
harmonizing registration maintenance requirements with application
requirements where appropriate.
Further, rule changes beyond those related to collective marks and
certification marks provide consistency with changes made regarding those
marks and streamline the rules, by consolidating text and incorporating
headings, for easier use.
To provide additional context for the ensuing discussion of the amended
and revised rules regarding collective marks and certification marks, the
following is a brief description of those types of marks.
There are two types of collective marks as defined by section 45 of the
Trademark Act of 1946, as amended ("the Act"): (1) collective trademarks or
collective service marks; and (2) collective membership marks.
15 U.S.C. 1127. A collective trademark or collective service mark is used
by members of a collective organization to identify and distinguish their
goods or services from those of nonmembers. TMEP section 1303. By contrast,
collective membership marks are used by members of a collective
organization to indicate membership in the collective membership
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organization. TMEP section 1304.02.
Certification marks are used by authorized users to indicate the
following: (1) goods or services have been certified as to quality,
materials, or mode of manufacture; (2) goods or services have been
certified to originate in a specific geographic region; and/or (3) the work
or labor on goods or for services was certified to have been performed by a
member of a union or other organization, or to certify that the performer
meets certain standards. TMEP section 1306.01. A certification mark is
similar to a collective trademark or collective service mark except that
the users are not members of a collective organization. See TMEP section
1306.09(a). That is, a collective trademark or collective service mark is
used by members of an organization who meet the collective organization's
standards of admission, while a certification mark is used by parties whose
products or services meet the certifying organization's established
standards.
Summary of Major Provisions: As stated above, the USPTO is revising the
rules in parts 2 and 7 of title 37 of the Code of Federal Regulations to
codify current USPTO practice in TMEP sections 1302, 1303 et seq., 1304,
and 1306, and to state clearly, and provide additional detail regarding,
the requirements for collective and certification mark applications, as
well as to harmonize registration maintenance requirements with application
requirements where appropriate. Further, the USPTO is revising additional
rules within these parts for consistency and clarity.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Proposed Rule and Request for Comments
The proposed rule was published in the Federal Register on February 20,
2014, at 79 FR 9678, and in the Official Gazette on April 8, 2014. The
USPTO received comments from two intellectual property organizations.
These comments are posted on the USPTO's website at
http://www.uspto.gov/trademarks/law/Fr_Notice_comments.jsp and are
addressed below.
The following rules are amended: §§ 2.2, 2.20, 2.22, 2.32-2.35,
2.41-2.42, 2.44-2.45, 2.56, 2.59, 2.71, 2.74, 2.76, 2.77, 2.86, 2.88-2.89,
2.146, 2.161, 2.167, 2.173, 2.175, 2.183, 2.193, 7.1, and 7.37.
PART 2: RULES OF PRACTICE IN TRADEMARK CASES
Rules Applicable to Trademark Cases
The USPTO is amending § 2.2, regarding definitions, and adding terms to
this section to enable the deletion of repetitious wording in the rules
wherever possible. Specifically, § 2.2(h) is amended to clarify that the
definition of "international application" is limited to an application
seeking an extension of protection of an international registration in an
initial designation. Also, § 2.2(i) through (n) is added to set forth the
following new definitions: subsequent designation; holder; use in commerce
or use of the mark in commerce; bona fide intention to use the mark in
commerce; bona fide intention, and is entitled, to exercise legitimate
control over the use of the mark in commerce; and verified statement,
verify, verified, or verification.
Declarations
The USPTO is revising § 2.20, regarding declarations in lieu of oaths,
as follows: in the introductory text, delete "verification" to correspond
with the definition of that term in § 2.2(n), and add the term
"declaration;" in the second paragraph delete "undersigned" and replace it
with "signatory" and delete "document" and replace it with "submission."
Application for Registration
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The USPTO is amending § 2.22(a)(8) to delete the language "and at
http://www.uspto.gov" to codify current USPTO practice that the
identification in a TEAS Plus application must be selected from the USPTO's
"U.S. Acceptable Identification of Goods and Services Manual" available in
the TEAS Plus application form.
The USPTO is amending the rule title of § 2.32 to "Requirements for a
complete trademark or service mark application." In addition, § 2.32(f) is
added to cross-reference § 2.44 for the requirements for collective mark
applications, and § 2.32(g) is added to cross-reference § 2.45 for the
requirements for certification mark applications.
The USPTO is revising § 2.33, regarding verified statements for
trademarks or service marks, to ensure the language corresponds with other
rules, including the definitions in § 2.2. Section 2.33 is also revised as
follows: amend the rule title to "Verified statement for a trademark or
service mark;" revise § 2.33(e)(1) to include language similar to the
current rule, "that the U.S. Congress can regulate on or in connection with
the goods or services specified in the international application/subsequent
designation;" revise § 2.33(e)(3), to correspond with § 2.33(e)(1), and to
amend "international application/registration" to "international
application/subsequent designation;" and add § 2.33(f) to set forth the
type of verified statement required for concurrent use applications under
§ 2.42. Further, in response to a comment submitted regarding
§ 2.34(a)(1)(i), the USPTO is amending § 2.33(c) slightly for purposes of
consistency with § 2.34(a)(1)(i), (a)(2), (a)(3)(i), and (a)(4)(ii);
§ 2.44(b); and § 2.45(b).
The USPTO is amending § 2.34, regarding filing bases for trademark or
service mark applications, to ensure the language corresponds with other
rules, including the new definitions in § 2.2; to delete the definition of
"commerce" in current § 2.34(c) as redundant of section 45 of the Act; and
to correct a typographical error. Further, the rule title is amended to
"Bases for filing a trademark or service mark application." Section
2.34(a)(1)(iv) is also amended to delete "actually" as a redundant term for
consistency with amendments to § 2.56(b)(2) and (c) regarding specimens,
§ 2.76(b)(2) regarding amendments to allege use, and § 2.88(b)(2)
regarding statements of use. Lastly,
Comment: One commenter noted that, in § 2.34(a)(1)(i) where the
verification is not filed with the initial application, that rule appeared
to require an applicant to aver that the mark "has been" in continuous use
as of the application filing date; that is, when subsequently filing the
verified statement, a declarant must affirm that the mark is in use as of
the initial application filing date and has been in continuous use from
that date until the date the verification is submitted. The commenter
suggested retaining the language in the current rule and using "was in use
in commerce as of the application filing date." The commenter similarly
noted that this comment applies to the subsections relating to applications
filed under section 1(b) or 44 of the Act.
Response: The commenter's suggestion is adopted. The language in the
current rule has always been interpreted as including a presumption that an
applicant's use or bona fide intent is continuous after filing an
application; thus, the current language is acceptable and sufficient to
incorporate that presumption. Thus, the USPTO will retain "was in use in
commerce" in § 2.34(a)(1)(i) and "had a bona fide intention" in
§ 2.34(a)(2), (a)(3)(i), and (a)(4)(ii). In addition, § 2.33(c), § 2.44(b),
and § 2.45(b) are revised to correspond with the changes made to these
subsections.
The USPTO is revising § 2.35, regarding adding, deleting, or
substituting bases, to include the requirements for collective marks and
certification marks for consistency with revisions made to § 2.44(c).
Specifically, § 2.35 is amended as follows: in § 2.35(b)(1), add
cross-references to § 2.44 and § 2.45 for requirements for a new basis in a
collective or certification mark application; in § 2.35(b)(6), add "or
collective membership organization" to indicate which goods, services, or
organization the added or substituted basis will apply; in § 2.35(b)(7),
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add "or collective membership organization" to indicate which goods,
services, or organization were covered by the deleted basis; and in
§ 2.35(b)(8), add text to clarify that an applicant may not amend an
application to seek both sections 1(b) and 1(a) of the Act for identical
goods or services or the same collective membership organization.
The USPTO is revising § 2.41, regarding proof of distinctiveness under
section 2(f) of the Act, to specify the type of proof required to establish
such a claim for trademarks, service marks, collective marks, and
certification marks, and to make other changes consistent with current
USPTO practice. Specifically, § 2.41 is revised as follows: in § 2.41(a),
add the title "For a trademark or service mark" and set forth in
§ 2.41(a)(1)-(3) most of the current text in existing § 2.41; and in
§ 2.41(b), add the title "For a collective trademark or collective service
mark" and set forth in § 2.41(b)(1)-(3) the requirements for collective
trademarks or collective service marks. The following is also added to
§ 2.41: in § 2.41(c), set forth the requirements for collective membership
marks; and in § 2.41(d), set forth the requirements for certification
marks. Further, additional revisions in § 2.41 are added to correspond with
the new definitions in § 2.2 and to include subsections with subheadings
that set forth the three types of proof that can be submitted to establish
distinctiveness under 15 U.S.C. 1052(f). In addition, § 2.41(a)(1), (c)(1),
and (d)(1) add the term "active" to clarify and codify current USPTO
practice, see TMEP section 1212.04(d), that evidence of distinctiveness
must be based on ownership of an active prior registration on the Principal
Register or under the Trademark Act of 1905. Further, § 2.41(a)(1) and
(d)(1) clarify that such registration must be for goods or services
sufficiently similar to those in the application, and § 2.41(c)(1) adds
that the nature of the collective membership organization must be
sufficiently similar to the collective membership organization in the
application, such that these requirements in § 2.41(a)(1), (d)(1), and
(c)(1) codify precedential case law and current USPTO practice. See
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807,
1812 (Fed. Cir. 2001), In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999), TMEP
sections 1212.04(c), 1212.09(a). Lastly, § 2.41(e) excludes from § 2.41(d)
geographic matter in certification marks certifying regional origin,
because 15 U.S.C. 1052(e)(2) does not apply to such terms.
See TMEP section 1306.02.
Comment: One commenter suggested that § 2.41(e) be revised to clarify
further that, although geographic indications are considered certification
marks, § 2.41(d) does not apply to geographic indications of origin. The
commenter suggested revising § 2.41(e) as follows: "Paragraph (d) does not
apply to geographical matter in a certification mark certifying regional
origin because section 2(e)(2) of the Act does not apply to certification
marks that are indications of regional origin."
Response: The USPTO agrees with this further clarification and adopts
the commenter's suggestion.
The USPTO is revising § 2.42, regarding concurrent use requirements, to
incorporate requirements for collective marks and certification marks, as
well as to make other changes consistent with current USPTO practice.
Specifically, the USPTO is adding § 2.42(a) to require an application for
registration for lawful concurrent use to assert use in commerce in
accordance with current USPTO practice, see TMEP section 1207.04(b), and
the USPTO's "Trademark Trial and Appeal Board Manual of Procedure" section
1101.01, and that such application be for a mark seeking registration on
the Principal Register under the Act, in accordance with current § 2.99(g),
and include all relevant application requirements, including § 2.44 for
collective marks or § 2.45 for certification marks, if applicable. In
addition, § 2.42(b) is added to enumerate the additional requirements for
concurrent use applications set forth in the existing second sentence of
current § 2.42 and to modify such text to incorporate the requirements for
collective marks and certification marks. Further, § 2.42(c) is added to
cross-reference current § 2.73, pertaining to amending an application to
recite concurrent use, and § 2.42(d) is added to cross-reference current
§ 2.99, pertaining to concurrent use proceedings at the Trademark Trial and
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Appeal Board.
The USPTO is revising § 2.44, regarding collective marks, to include all
requirements for a collective mark application in one rule. Specifically,
§ 2.44 is revised as follows: in § 2.44(a), enumerate the application
requirements for a collective mark, incorporating the relevant application
requirements from current § 2.32, regarding the requirements for a complete
trademark or service mark application, current § 2.44, and current USPTO
practice, see TMEP sections 1303.02 et seq. for collective trademarks and
collective service marks, and TMEP section 1304.08(c)-(f) for collective
membership marks; and in § 2.44(b), specify the requirements for a verified
statement that was not filed within a reasonable time after signing or was
omitted from the application to correspond primarily with § 2.33(c) and
§ 2.34(a)(1)(i), (a)(2), (a)(3)(i), and (a)(4)(ii). In addition, the
following is added to § 2.44: in § 2.44(c), specify the requirements for
claiming more than one filing basis in the application to correspond with
§ 2.34(b); in § 2.44(d), specify the requirements for the verification in
a concurrent use application to correspond with § 2.33(f); and in
§ 2.44(e), cross-reference the multiple-class application requirements rule
in § 2.86 for consistency with § 2.32(e). Further, § 2.44 is revised to
correspond with the new definitions in § 2.2. Also, the rule title is
amended to "Requirements for a complete collective mark application" for
consistency with the rule title of § 2.32 regarding trademark and service
mark application requirements. Further, § 2.44(a)(4)(v) is slightly
revised, to correspond with § 2.33(e)(1), to amend the language to include
"that the U.S. Congress can regulate on or in connection with the goods or
services specified in the international application/subsequent
designation." Additionally, in response to a comment submitted regarding
§ 2.34(a)(1)(i), the USPTO is further amending § 2.44(b) to correspond with
slight changes to § 2.33(c); § 2.34(a)(1)(i), (a)(2), (a)(3)(i), and
(a)(4)(ii); and § 2.45(b). Finally, § 2.44(c) is further revised to clarify
that an applicant may claim more than one filing basis in a collective
membership mark application.
The USPTO is revising § 2.45, regarding certification marks, to include
all requirements for a certification mark application in one rule, and to
be consistent with the formatting of § 2.44 for collective mark application
requirements. Specifically, § 2.45 is revised as follows: in § 2.45(a),
enumerate the application requirements for a certification mark,
incorporating the relevant application requirements from current § 2.32,
regarding the requirements for a complete trademark or service mark
application, current § 2.45, and current USPTO practice, see TMEP sections
1306.06 et seq.; and in § 2.45(b), specify the requirements for a verified
statement that was not filed within a reasonable time after signing or was
omitted from the application to correspond primarily with § 2.33(c) and
§ 2.34(a)(1)(i), (a)(2), (a)(3)(i), and (a)(4)(ii) and § 2.44(b). In
addition, the following is added to § 2.45: in § 2.45(c), specify the
requirements for claiming more than one filing basis in the application to
correspond with § 2.34(b) and § 2.44(c); in § 2.45(d), specify the
requirements for the verification in a concurrent use application to
correspond with § 2.33(f) and § 2.44(d); in § 2.45(e), cross-reference the
multiple-class application requirements rule in § 2.86 for consistency with
§ 2.32(e) and § 2.44(e); and in § 2.45(f), prohibit a single application
from including both a certification mark and another type of mark, because
the USPTO's databases preclude capturing different legal requirements for
multiple types of marks in a single application, and also prohibit the
registration of the same mark for the same goods and/or services as both a
certification mark and another type of mark, in accordance with sections
4 and 14(5)(B) of the Act and current USPTO practice, see TMEP section
1306.05(a). Further, § 2.45 is revised to correspond with the new
definitions in § 2.2. Also, the rule title is amended to "Requirements for
a complete certification mark application; restriction on certification
mark application" for consistency with the rule title of § 2.32 regarding
trademark and service mark application requirements and § 2.44 regarding
collective mark application requirements. Additionally, § 2.45(a)(4)(v)(B)
is slightly revised, to correspond with § 2.33(e)(1), to amend the language
to include "that the U.S. Congress can regulate on or in connection with
the goods or services specified in the international application/subsequent
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designation." Finally, in response to a comment submitted regarding
§ 2.34(a)(1)(i), the USPTO is further amending § 2.45(b) to correspond with
slight changes to § 2.33(c); § 2.34(a)(1)(i), (a)(2), (a)(3)(i), and
(a)(4)(ii); and § 2.44(b).
Specimens
The USPTO is amending § 2.56(b)(2) and (c), regarding specimens, to
delete the term "actually" as a redundant term and for consistency with
similar amendments to § 2.34(a)(1)(iv), § 2.76(b)(2), § 2.88(b)(2), and
§ 2.161(g). Additionally, § 2.56(b)(5) is amended to delete "to certify"
and replace it with "to reflect certification of." Lastly, § 2.56(d)(3),
regarding bulky specimens, is revised as follows: "In the absence of non-
bulky alternatives, another appropriate medium may be designated as
acceptable by the Office."
Comment: One commenter suggested that § 2.56(d)(3), pertaining to bulky
specimens, be revised to omit references to specific forms of media because
of the rapid evolution of technology related to such media and to minimize
future amendments to this rule. The commenter suggested revising this rule
to "In the absence of non-bulky alternatives, the Office may accept a
specimen of use in any appropriate medium."
Response: The USPTO agrees that technology related to data storage media
is rapidly evolving and that listing specific types of media could require
amendment to this rule at a subsequent date. Thus, the USPTO is revising
§ 2.56(d)(3) to omit references to specific forms of media and to state
that, in the absence of non-bulky alternatives, another appropriate medium
may be designated as acceptable by the USPTO.
The USPTO is amending § 2.59, regarding substitute specimens, to change
existing text to "verified statement" to correspond with § 2.2(n).
Additionally, § 2.59(a) and (b) are amended to reference substitute
specimens for a collective membership mark.
Amendment of Application
The USPTO is amending § 2.71(a), regarding amendments to the
identification of goods and/or services, to reference amending the
description of the nature of a collective membership mark. In addition,
§ 2.71(b)-(d) is amended to change existing text to correspond with
§ 2.2(n). Further, § 2.71(e) is added to set forth that an amendment that
would materially alter a certification statement pursuant to § 2.45(a)(4)(i)(A)
and (a)(4)(ii)(A), is not permitted, which is consistent with § 2.173(f)
regarding such amendments after registration.
The USPTO is amending § 2.74(b), regarding the form and signature of an
amendment, to change existing text to cross-reference the definition of
"verification" in § 2.2(n).
The USPTO is amending § 2.77(a)(1), regarding permissible amendments
submitted between a notice of allowance and the filing of a statement of
use, to include deletion of the entire identification for a collective
membership mark.
The USPTO is amending § 2.76, regarding amendments to allege use, to
include the relevant requirements for collective marks and certification
marks, and to be consistent with § 2.88 for statements of use.
Specifically, § 2.76 is amended as follows: in § 2.76(a), add the title
"When to file an amendment to allege use;" in § 2.76(a)(1) and (a)(2),
include most of the text from current § 2.76(a) and (c), except amend the
language in the last sentence of current § 2.76(a)(1) regarding the USPTO
returning an untimely filed amendment to allege use to indicate that under
current practice the USPTO will not review such an amendment, see TMEP
section 1104.03(b)-(c), and the last sentence in current § 2.76(c), which
is slightly amended and moved to § 2.76(b)(1)(iii); in § 2.76(b), add the
title "A complete amendment to allege use" and include in § 2.76(b)(1)-(5)
the text from current § 2.76(b) and (c) and the requirements for collective
marks and certification marks, and in § 2.76(b)(6), require the title
"Amendment to Allege Use" at the top of the first page of the document for
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those documents not filed using the Trademark Electronic Application System
(TEAS); in § 2.76(c), add the title "Minimum filing requirements for a
timely filed amendment to allege use" and include the text from current
§ 2.76(e) and change existing text to "verified statement" to correspond
with § 2.2(n); in § 2.76(d), add the title "Deficiency notification" and
include the text from current § 2.76(g); in § 2.76(e), add the title
"Notification of refusals and requirements" and include most of the text
from current § 2.76(f), except the second to last sentence regarding the
USPTO providing notification of acceptance of an amendment to allege use
because current practice is that a notice of approval for publication
provides such notice, and the last sentence which is slightly amended
and moved to § 2.76(h); in § 2.76(f), add the title "Withdrawal" and
include the text from current § 2.76(h); in § 2.76(g), add the title
"Verification not filed within reasonable time," and include the text from
current § 2.76(i) and change existing text to "verified statement" to
correspond with § 2.2(n); in § 2.76(h), add the title "An amendment to
allege use is not a response but may include amendments," include slightly
revised text from the last sentence of current § 2.76(f), and clarify that
an amendment to allege use may include amendments in accordance with § 2.59
and § 2.71 through § 2.75; in § 2.76(i), specify the requirements for the
verification in a concurrent use application under § 2.42; and in
§ 2.76(j), add the title "Multiple-class application." Additionally, the
USPTO is further amending § 2.76(g) for consistency with revisions made in
response to a comment to § 2.34(a)(1)(i) regarding bases for filing a
trademark or service mark application and to include the relevant statement
for collective marks and certification marks. Finally, the USPTO is
further amending § 2.76(i) slightly for consistency with revisions made to
§ 2.88(i) for a statement of use after a notice of allowance.
Classification
The USPTO is amending § 2.86, regarding multiple-class application
requirements, to include the requirements for collective marks and
certification marks, and to make other changes consistent with current
USPTO practice. Specifically, § 2.86 is amended as follows: set forth the
rule title as "Multiple-class applications;" in § 2.86(a), set forth the
requirements for a single trademark, service mark, and/or collective mark
application for multiple classes, clarifying that such an application must
satisfy either the trademark or service mark application requirements in
§ 2.32 or the collective mark application requirements in § 2.44, in
addition to providing the applicable goods, services, or nature of the
collective membership organization in each appropriate international or
U.S. class, and providing a fee, dates of use, and a specimen for each
class based on use in commerce or a bona fide intent statement for each
class based on section 1(b), 44, or 66(a) of the Act; in § 2.86(b), set
forth the requirements for a single certification mark application for
goods and services, clarifying that such multiple-class application must
satisfy the certification mark application requirements in § 2.45, in
addition to identifying the applicable goods and services in each
appropriate U.S. class for applications filed under section 1 or 44 of the
Act or in the international classes assigned by the World Intellectual
Property Organization's International Bureau for applications filed under
section 66(a) of the Act, and providing a fee, dates of use, and a specimen
for each class based on use in commerce or a bona fide intent statement for
each class based on section 1(b), 44, or 66(a) of the Act; and in
§ 2.86(c), amend to include the text in the last sentence of current
§ 2.86(a)(3) regarding an applicant not claiming both section 1(a) and
1(b) of the Act for identical goods or services in a single application.
In addition, the following is added to § 2.86: in § 2.86(d), restrict a
single application based on section 1 or 44 of the Act from including goods
or services in U.S. Classes A and/or B and either goods or services in any
international class or with a collective membership organization in
U.S. Class 200, and restrict a single application based on section 66(a) of
the Act from including goods, services, or a collective membership
organization in any international class, for consistency with § 2.45(f);
in § 2.86(e), add the text from current § 2.86(b) regarding multiple-class
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requirements for amendments to allege use and statements of use; and in
§ 2.86(f), add the text in current § 2.86(c) regarding issuing a single
registration certificate for multiple-class applications.
Post Notice of Allowance
The USPTO is amending § 2.88, regarding statements of use, to include
the relevant requirements for collective marks and certification marks, and
to be consistent with § 2.76 for amendments to allege use. Specifically,
§ 2.88 is amended as follows: set forth the rule title as "Statement of use
after notice of allowance;" in § 2.88(a), add the title "When to file a
statement of use;" in § 2.88(a)(1), include most of the text from current
§ 2.88(a), except delete the language regarding the USPTO returning a
premature statement of use filed prior to issuance of a notice of allowance
because under current practice the USPTO will not return or review it, see
TMEP section 1109.04; in § 2.88(a)(2), include most of the text from
current § 2.88(c), except for the last sentence which is slightly amended
and moved to § 2.88(b)(1)(iii); in § 2.88(b), add the title "A complete
statement of use," include in § 2.88 (b)(1)-(3) the text from current
§ 2.88(b), in § 2.88(b)(1)(iii) additionally include most of the last
sentence from current § 2.88(c), in § 2.88(b)(1)(iv) additionally include
the text from current § 2.88(i)(1)-(2), in § 2.88 (b)(6) require the title
"Statement of Use" at the top of the first page of the document for those
documents not filed using the TEAS, and in § 2.88(b) incorporate the
requirements for collective marks and certification marks and change text
to "verified statement" to correspond with § 2.2(n); in § 2.88(c), add the
title "Minimum filing requirements for a timely filed statement of use,"
include the text in current § 2.88(e), and change text to "verified
statement" to correspond with § 2.2(n); in § 2.88(d), add the title
"Deficiency notification" and include the text from current § 2.88(g),
except for the last sentence; in § 2.88(e), add the title "Notification of
refusals and requirements" and include the text from current § 2.88(f),
except delete the language regarding the USPTO providing notification of
acceptance of a statement of use because the registration certificate
provides such notice; in § 2.88(f), add the title "Statement of use may not
be withdrawn" and include the text in the last sentence of current
§ 2.88(g); in § 2.88(g), add the title "Verification not filed within
reasonable time," include the text from current § 2.88(k), and change
existing text to "verified statement" to correspond with § 2.2(n); in
§ 2.88(h), add the title "Amending the application," include the text from
the second to last sentence of current § 2.88(f), and specify that
statements of use may include amendments in accordance with § 2.51, § 2.59,
and § 2.71 through § 2.75, as the TEAS on-line statement of use form will
now accept such amendments within the same form; in § 2.88(i), add the
requirements for the verification in a concurrent use amendment under
§ 2.42; in § 2.88(j), add the title "Multiple-class application" and
include the text from current § 2.88(l); and in § 2.88(k), add the title
"Abandonment" and include the text from current § 2.88(h). Finally, the
USPTO is further amending § 2.88(g) for consistency with revisions made in
response to a comment to § 2.34(a)(1)(i) regarding bases for filing a
trademark or service mark application and to include the relevant statement
for collective marks and certification marks.
Comment: One commenter requested clarification that § 2.88(i) would
apply only in the rare circumstances in which an applicant submitted a
proper amendment for concurrent use in a section 1(b) application and
satisfied the jurisdictional requirements for concurrent use under 15
U.S.C. 1052(d).
Response: Because an applicant must assert use in commerce prior to
seeking concurrent use, the USPTO clarifies that a proper amendment for
concurrent use submitted with an amendment to allege use under § 2.76 or
statement of use under § 2.88 would be rare. The USPTO further clarifies
that for such an amendment to be acceptable the amendment must satisfy both
the requirements of § 2.73 for amending an application to concurrent use
and the jurisdictional requirements under 15 U.S.C. 1052(d) for concurrent
use. In addition, the USPTO is amending § 2.76(i) and § 2.88(i) slightly to
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clarify that an allegation of use must include a modified verified
statement if the application is amended to concurrent use under § 2.73.
The USPTO is amending § 2.89, regarding submitting a request for an
extension of time to file a statement of use ("extension request"), to
include the relevant requirements for collective marks and certification
marks, as well as to make other changes consistent with current USPTO
practice. Section 2.89 is amended as follows: in § 2.89(a), add the title
"First extension request after issuance of notice of allowance;" in § 2.89
(a)(3), change text to "verified statement" to correspond with § 2.2(n),
and incorporate the requirements for collective marks and certification
marks; in § 2.89(b), add the title "Subsequent extension requests" and a
cross-reference in § 2.89(b)(2) to § 2.89(a)(2), as the fee requirements
are the same for first and subsequent extension requests; in § 2.89(c), add
the title "Four subsequent extension requests permitted;" in § 2.89(d), add
the title "Good cause," enumerate in § 2.89(d)(1)-(3) the requirements for
showing good cause for all marks, including collective marks and
certification marks, and include the text from current § 2.89(d) in (d)(1);
in § 2.89(e), add the title "Extension request filed in conjunction with or
after a statement of use" and amend the current text for clarity; in
§ 2.89(f), add the title "Goods or services" and incorporate the
requirements for collective marks and certification marks; in § 2.89(g),
add the title "Notice of grant or denial;" and in § 2.89(h), add the title
"Verification not filed within reasonable time," incorporate the
requirements for collective marks and certification marks, and change text
to "verified statement" to correspond with § 2.2(n). Further, the USPTO is
amending § 2.89(a)(3), (b)(3), and (h) for consistency with revisions made
in response to a comment to § 2.34(a)(1)(i) regarding bases for filing a
trademark or service mark application.
Petitions and Action by the Director
The USPTO is amending § 2.146(c), regarding petitions to the Director,
to change existing text to "verified statements" to correspond with
§ 2.2(n). Additionally, § 2.146(d) is amended to specify that a petition
regarding a cancelled or expired registration must be submitted to the
USPTO within two months of the date when USPTO records are updated to show
the registration as cancelled or expired, to ensure that all interested
parties will be able to accurately determine the deadline for filing a
petition under these circumstances.
Cancellation for Failure to File Affidavit or Declaration
The USPTO is amending § 2.161, regarding affidavits or declarations of
use in commerce or excusable nonuse under section 8 of the Act, to include
the relevant requirements for collective marks and certification marks, to
change text to correspond with § 2.2, and to make other changes consistent
with current USPTO practice. Section 2.161(g) is revised to cross-reference
current § 2.56 regarding specimens and delete § 2.161(g)(1)-(3), as similar
language appears in current § 2.56. Section 2.161(h) is revised to
incorporate the language from current § 2.161(h)(1) into § 2.161(h) and to
delete current § 2.161(h)(2)-(3), because the sunset provision in
§ 2.161(h)(2)-(3), in which § 2.161(h)(2) will no longer be applied after
June 21, 2014 to affidavits or declarations filed under section 8 of the
Act, has expired. Section 2.161(i) and (j) are added, as follows, to
include requirements for collective marks and certification marks to
harmonize the USPTO's post registration practice with current examination
practice, and to be consistent with § 7.37(i)-(j), regarding affidavits or
declarations of use in commerce or excusable nonuse under section 71 of the
Act: in § 2.161(i), add the title "Additional requirements for a collective
mark" and the additional requirements for such marks, see TMEP sections
1303.01, 1303.02(c)(i), 1304.08(f)(i)-(ii); in § 2.161(j), add the title
"Additional requirements for a certification mark" and the additional
requirements for such marks, see TMEP section 1306.06(f)(i)-(iii), (f)(v).
Section 2.161(k) is added to cross-reference to § 7.37 regarding the
requirements for a complete affidavit or declaration of use in commerce or
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excusable nonuse for a registration with an underlying application based on
section 66(a) of the Act.
Affidavit or Declaration Under Section 15 of the Act
The USPTO is amending § 2.167, regarding an affidavit or declaration of
incontestability under section 15 of the Act, to include the relevant
requirements for collective marks and certification marks, to change text
to "verified" to correspond with § 2.2(n), and to make other changes
consistent with current USPTO practice. Specifically, § 2.167(f) is
amended to delete the last sentence of the current rule because, under
current USPTO practice, notification acknowledging receipt of the affidavit
or declaration only issues if the requirements of § 2.167(a) through (g)
have been satisfied, consistent with § 2.167(i). See TMEP section 1605.
Also § 2.167(h), (i), (j), and (k) are added, as follows, to clarify
current USPTO practice: in § 2.167(h), clarify that notification will be
provided to an owner if an affidavit or declaration cannot be acknowledged
when the affidavit or declaration fails to satisfy any requirements in
paragraphs § 2.167(a) through (g), and that the affidavit or declaration
will be abandoned if a response is not received in the time specified in
the notification; in § 2.167(i), clarify that a notice of acknowledgement
will only issue if an affidavit or declaration satisfies § 2.167(a) through
(g); in § 2.167(j), clarify that an affidavit or declaration may be
abandoned by petitioning the Director under § 2.146 either before or after
a notice of acknowledgement issues; and in § 2.167(k), clarify that a new
affidavit or declaration with a new fee may be filed if an affidavit or
declaration is abandoned. See TMEP section 1605.
Correction, Disclaimer, Surrender, Etc.
The USPTO is amending § 2.173, regarding an amendment to a registration,
to include the relevant requirements for collective marks and certification
marks, to change text to correspond with § 2.2, and to make other changes
consistent with current USPTO practice. Section 2.173 is amended as
follows: in § 2.173(b)(2), cross-reference § 2.193(e)(6), regarding
trademark signature requirements, and delete the language in this
subsection that is similar to wording in current § 2.193(e)(6); in
§ 2.173(d), clarify that an amendment that would materially alter the mark
will not be permitted in accordance with section 7(e) of the Act; in
§ 2.173(e), amend the title to "Amendment of identification of goods,
services, or collective membership organization," and the text to add a
reference to a description of the nature of the collective membership
organization; and in § 2.173(f), amend the title to "Amendment of
certification statement for certification marks" and set forth the
prohibition regarding amending a certification statement, as specified in
§ 2.45(a)(4)(i)(A) and (a)(4)(ii)(A), in accordance with section 7(e) of
the Act and for consistency with § 2.71(e). Section 2.173(f) is
redesignated as§ 2.173(g), and § 2.173(g) is redesignated as § 2.173(h).
Section 2.173(i) is added with the heading "No amendment to add or delete
a section 2(f) claim of acquired distinctiveness," clarifying that the
USPTO will not permit an amendment seeking the addition or elimination of
a claim of acquired distinctiveness, just as an owner cannot amend a
registration from the Supplemental to the Principal Register. See TMEP
section 1609.09.
The USPTO is amending § 2.175(b)(2), regarding correcting an owner's
mistake, to change text to "verified" to correspond with § 2.2(n).
Term and Renewal
The USPTO is amending § 2.183(d), regarding requirements for a renewal
application, to specify that a renewal application may cover less than all
the classes in a registration, in addition to covering less than all the
goods or services in a registration.
General Information and Correspondence in Trademark Cases
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The USPTO is amending § 2.193, regarding trademark correspondence and
signature requirements, to correct a typographical error in § 2.193(c)(2),
to change current text in § 2.193(e)(1) to correspond with § 2.2(n), and to
revise the final sentence of § 2.193(f) to delete reference to § 10.23(c)
(15) and instead refer to § 11.804, as part 10 of this chapter has been
removed and reserved and the content in current § 11.804 corresponds with
content previously set out in § 10.23.
PART 7: RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO
THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
Subpart A - General Information
The USPTO is amending § 7.1, regarding definitions, to add § 7.1(f),
which incorporates by reference the definitions in § 2.2(k) and (n), to
apply to filings pursuant to the Protocol relating to the Madrid Agreement
concerning the international registration of marks.
Subpart F - Affidavit Under Section 71 of the Act for Extension of
Protection to the United States
The USPTO is amending § 7.37, regarding affidavits or declarations of
use in commerce or excusable nonuse under section 71 of the Act, to include
the relevant requirements for collective marks and certification marks and
to change text to correspond with § 2.2. Specifically, § 7.37(h) is revised
to incorporate the language from current § 7.37(h)(1) into § 7.37(h) and to
delete current § 7.37(h)(2)-(3), because the sunset provision in
§ 7.37(h)(2)-(3), in which § 7.37(h)(2) will no longer be applied after
June 21, 2014 to affidavits or declarations filed under section 71 of the
Act, has expired. Section 7.37(i) and (j) are added, as follows, to include
requirements for collective marks and certification marks so as to
harmonize the USPTO's post registration practice with current examination
practice, and to be consistent with § 2.161(i)-(j), regarding affidavits or
declarations of use in commerce or excusable nonuse under section 8 of the
Act: in § 7.37(i), add the title "Additional requirements for a collective
mark" and the additional requirements for such marks, see TMEP sections
1303.01, 1303.02(c)(i), 1304.08(f)(i)-(ii), 1904.02(d); in § 7.37(j), add
the title "Additional requirements for a certification mark" and additional
requirements for such marks, see TMEP sections 1306.06(f)(i)-(iii), (f)(v),
1904.02(d).
Rulemaking Requirements
Administrative Procedure Act: The changes in this rulemaking involve
rules of agency practice and procedure, and/or interpretive rules. See
Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015) (interpretive
rules "advise the public of the agency's construction of the statutes and
rules which it administers") (citation and internal quotation marks
omitted); Nat'l Org. of Veterans' Advocates v. Sec'y of Veterans Affairs,
260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of
a statute is interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for reviewing
claims).
Accordingly, prior notice and opportunity for public comment for the
changes in this rulemaking are not required pursuant to 5 U.S.C. 553(b) or
(c), or any other law. See Perez, 135 S. Ct. at 1206 (notice-and-comment
procedures are required neither when an agency "issue[s] an initial
interpretive rule" nor "when it amends or repeals that interpretive rule");
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require
notice and comment rulemaking for "interpretative rules, general statements
of policy, or rules of agency organization, procedure, or practice,"
quoting 5 U.S.C. 553(b)(A)). The USPTO, however, chose to seek public
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comment before implementing the rule as the USPTO seeks the benefit of the
public's views regarding collective and certification marks.
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 or any other law,
neither a Regulatory Flexibility Act analysis, nor a certification under
the Regulatory Flexibility Act (5 U.S.C. 601, et seq.), is required. See
5 U.S.C. 603.
In addition, for the reasons set forth herein, the Deputy General
Counsel for General Law of the USPTO has certified to the Chief Counsel for
Advocacy of the Small Business Administration that rule changes in this
document will not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b).
To the extent the rule changes in this document primarily codify current
USPTO practice set forth in the TMEP and precedential case law regarding
collective marks and certification marks, those rule changes impose no new
burdens on applicants and registration owners/holders. Some rule changes
harmonize registration maintenance requirements with current application
requirements. The USPTO is also changing current practice regarding
maintenance requirements regarding certification marks to require filers of
the first affidavit of use after registration in registrations based on
sections 44 and 66(a) of the Act to submit certification standards, and to
require that all filers of such affidavits submit updated standards if the
standards have changed or a statement indicating they have not. The USPTO
does not collect or maintain statistics in trademark cases on small versus
large entity applicants, and this information would be required in order to
precisely calculate the number of small entities that would be affected.
However, these rule changes will have no impact on the vast majority of
trademark owners/holders, and only a slight effect on the very small subset
of certification mark registrations, where standards previously have not
been provided, or change post registration. Certification marks account for
approximately 0.2% of the total number of registered marks in the USPTO
database (approximately 4,000 registrations out of a total of approximately
2,000,000 registrations). For fiscal year 2014, affidavits of use for all
filers have totaled approximately 248,000 of which approximately 0.2%, or
496 affidavits, were submitted for certification mark registrations. Of
those 496 affidavits, only a small subset will be required to include
certification standards or revised standards. Even in the event that
standards must be submitted, the burden is quite minimal, as it merely
involves attaching an already existing document to a filing that must
otherwise be made to maintain the registration. For these reasons, the
rule changes will not have a significant economic impact on a substantial
number of small entities.
Executive Order 12866 (Regulatory Planning and Review): This rulemaking
has been determined to be not significant for purposes of Executive Order
12866 (Sept. 30, 1993).
Executive Order 13563 (Improving Regulation and Regulatory Review): The
USPTO has complied with Executive Order 13563 (Jan. 18, 2011).
Specifically, the USPTO has, to the extent feasible and applicable: (1)
made a reasoned determination that the benefits justify the costs of the
rule changes; (2) tailored the rules to impose the least burden on society
consistent with obtaining the regulatory objectives; (3) selected a
regulatory approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
provided the public with a meaningful opportunity to participate in the
regulatory process, including soliciting the views of those likely affected
prior to issuing a notice of proposed rulemaking, and provided on-line
access to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across government agencies and identified
goals designed to promote innovation; (8) considered approaches that reduce
burdens and maintain flexibility and freedom of choice for the public; and
(9) ensured the objectivity of scientific and technological information and
processes, to the extent applicable.
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Executive Order 13132 (Federalism): This rulemaking does not contain
policies with federalism implications sufficient to warrant preparation of
a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Congressional Review Act: Under the Congressional Review Act provisions
of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C.
801 et seq.), prior to issuing this final rule, the USPTO has submitted the
required report containing the final rule and other required information to
the U.S. Senate, the U.S. House of Representatives, and the Comptroller
General of the Government Accountability Office. The changes in this
document are not expected to result in an annual effect on the economy of
100 million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based enterprises
to compete with foreign-based enterprises in domestic and export markets.
Therefore, this document is not expected to result in a ''major rule'' as
defined in 5 U.S.C. 804(2).
Unfunded Mandates Reform Act of 1995: The changes set forth in this
rulemaking do not involve a Federal intergovernmental mandate that will
result in the expenditure by State, local, and tribal governments, in the
aggregate, of 100 million dollars (as adjusted) or more in any one year, or
a Federal private sector mandate that will result in the expenditure by the
private sector of 100 million dollars (as adjusted) or more in any one
year, and will not significantly or uniquely affect small governments.
Therefore, no actions are necessary under the provisions of the Unfunded
Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
Paperwork Reduction Act: This rulemaking involves information collection
requirements which are subject to review by the U.S. Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.). The USPTO has determined that there would be no new information
collection requirements or impacts to existing information collection
requirements associated with this rulemaking. The collections of
information involved in this rulemaking have been reviewed and previously
approved by OMB under control numbers 0651-0009, 0651-0050, 0651-0051,
0651-0054, 0651-0055, 0651-0056, and 0651-0061.
Notwithstanding any other provision of law, no person is required to
respond to, nor shall a person be subject to a penalty for failure to
comply with, a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks, International
Registration.
For the reasons given in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the USPTO is amending parts
2 and 7 of title 37 as follows:
PART 2-RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR part 2 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Amend § 2.2 by revising paragraphs (f) and (h) and adding paragraphs (i)
through (n) to read as follows:
§ 2.2 Definitions.
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* * * * *
(f) The acronym TEAS means the Trademark Electronic Application System,
available at http://www.uspto.gov.
* * * * *
(h) The term international application as used in this part means, in
addition to the definition in section 60 of the Act, an application seeking
an extension of protection of an international registration in an initial
designation filed under the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks.
(i) The term subsequent designation as used in this part means a request
for extension of protection of an international registration made after the
International Bureau registers the mark on the International Register.
(j) The term holder as used in this part means, in addition to the
definition of a "holder of an international registration" in section 60 of
the Act, the natural or juristic person in whose name an international
registration seeking an extension of protection to the United States is
recorded on the International Register.
(k) The term use in commerce or use of the mark in commerce as used in
this part means, in addition to the definition of "use in commerce" in
section 45 of the Act:
(1) For a trademark or service mark, use of the mark in commerce by an
applicant, owner, or holder on or in connection with the goods or services
specified in a U.S. application, amendment to allege use, statement of use,
or affidavit or declaration of use or excusable nonuse;
(2) For a collective trademark or collective service mark, use of the
mark in commerce by members on or in connection with the goods or services
specified in a U.S. application,
amendment to allege use, statement of use, or affidavit or declaration of
use or excusable nonuse;
(3) For a collective membership mark, use of the mark in commerce by
members to indicate membership in the collective organization as specified
in a U.S. application, amendment to allege use, statement of use, or
affidavit or declaration of use or excusable nonuse; and
(4) For a certification mark, use of the mark in commerce by authorized
users on or in connection with the goods or services specified in a U.S.
application, amendment to allege use, statement of use, or affidavit or
declaration of use or excusable nonuse.
(l) The term bona fide intention to use the mark in commerce as used in
this part means, for a trademark or service mark, that an applicant or
holder has a bona fide intention to use the mark in commerce on or in
connection with the goods or services specified in a U.S. application
or international application/subsequent designation.
(m) The term bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce as used in this
part means:
(1) For a collective trademark or collective service mark, that an
applicant or holder has a bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce by members on or in
connection with the goods or services specified in a U.S. application or
international application/subsequent designation;
(2) For a collective membership mark, that an applicant or holder has a
bona fide intention, and is entitled, to exercise legitimate control over
the use of the mark in commerce by members to indicate membership in the
collective organization as specified in a U.S. application or international
application/subsequent designation; and
(3) For a certification mark, that an applicant or holder has a bona
fide intention, and is entitled, to exercise legitimate control over the
use of the mark in commerce by authorized users on or in connection with
the goods or services specified in a U.S. application or international
application/subsequent designation.
(n) The term verified statement, and the terms verify, verified, or
verification as used in this part refers to a statement that is sworn to,
made under oath or in an affidavit, or supported by a declaration under
§ 2.20 or 28 U.S.C. 1746, and signed in accordance with the requirements
of § 2.193.
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3. Revise § 2.20 to read as follows:
§ 2.20 Declarations in lieu of oaths.
Instead of an oath, affidavit, or sworn statement, the language of
28 U.S.C. 1746, or the following declaration language, may be used:
The signatory being warned that willful false statements and the like
are punishable by fine or imprisonment, or both, under
18 U.S.C. 1001, and that such willful false statements and the like
may jeopardize the validity of the application or submission or any
registration resulting therefrom, declares that all statements made
of his/her own knowledge are true and all statements made on
information and belief are believed to be true.
4. Amend§ 2.22 by revising paragraph (a)(8) to read as follows:
§ 2.22 Filing requirements for a TEAS Plus application.
(a) * * *
(8) Correctly classified goods and/or services, with an identification
of goods and/or services from the Office's Acceptable Identification of
Goods and Services Manual, available through the TEAS Plus form. In an
application based on section 44 of the Act, the scope of the goods and/or
services covered by the section 44 basis may not exceed the scope of the
goods and/or services in the foreign application or registration;
* * * * *
5. Amend § 2.32 by revising the section heading and paragraphs (a)(3)(iii),
(a)(6), (c), and (e) and adding paragraphs (f) and (g) to read as follows:
§ 2.32 Requirements for a complete trademark or service mark application.
(a) * * *
(3) * * *
(iii) If the applicant is a domestic partnership, the names and
citizenship of the general partners; or
* * * * *
(6) A list of the particular goods or services on or in connection with
which the applicant uses or intends to use the mark. In a U.S. application
filed under section 44 of the Act, the scope of the goods or services
covered by the section 44 basis may not exceed the scope of the goods or
services in the foreign application or registration;
* * * * *
(c) The application must include a drawing that meets the requirements
of § 2.51 and § 2.52.
* * * * *
(e) For the requirements of a multiple-class application, see § 2.86.
(f) For the requirements of all collective mark applications, see
§ 2.44.
(g) For the requirements of a certification mark application, see
§ 2.45.
6. Revise § 2.33 to read as follows:
§ 2.33 Verified statement for a trademark or service mark.
(a) The application must include a verified statement.
(b)(1) In an application under section 1(a) of the Act, the verified
statement must allege:
That the applicant believes the applicant is the owner of the mark;
that the mark is in use in commerce; that to the best of the
signatory's knowledge and belief, no other person has the right to
use the mark in commerce, either in the identical form or in such
near resemblance as to be likely, when applied to the goods or
services of such other person, to cause confusion or mistake, or to
deceive; that the specimen shows the mark as used on or in connection
with the goods or services; and that the facts set forth in the
application are true.
(2) In an application under section 1(b) or 44 of the Act, the verified
statement must allege:
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That the applicant has a bona fide intention to use the mark in
commerce; that the applicant believes the applicant is entitled to
use the mark in commerce on or in connection with the goods or
services specified in the application; that to the best of the
signatory's knowledge and belief, no other person has the right to
use the mark in commerce, either in the identical form or in such
near resemblance as to be likely, when applied to the goods or
services of such other person, to cause confusion or mistake, or to
deceive; and that the facts set forth in the application are true.
(c) If the verified statement in paragraph (b)(1) or (2) of this section
is not filed within a reasonable time after it is signed, the Office may
require the applicant to submit a substitute verified statement attesting
that the mark was in use in commerce as of the application filing date, or
the applicant had a bona fide intention to use the mark in commerce as of
the application filing date.
(d) [Reserved]
(e) In an application under section 66(a) of the Act, the verified
statement, which is part of the international registration on file with the
International Bureau, must allege that:
(1) The applicant/holder has a bona fide intention to use the mark in
commerce that the U.S. Congress can regulate on or in connection with the
goods or services specified in the international application/subsequent
designation;
(2) The signatory is properly authorized to execute the declaration on
behalf of the applicant/holder;
(3) The signatory believes the applicant/holder to be entitled to use
the mark in commerce that the U.S. Congress can regulate on or in
connection with the goods or services specified in the international
application/subsequent designation; and
(4) To the best of his/her knowledge and belief, no other person, firm,
corporation, association, or other legal entity has the right to use the
mark in commerce that the U.S. Congress can regulate either in the
identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the goods or services of such
other person, firm, corporation, association, or other legal entity, to
cause confusion, or to cause mistake, or to deceive.
(f) In an application for concurrent use under § 2.42, the verified
statement in paragraph (b)(1) of this section must be modified to indicate
that no other person except as specified in the application has the right
to use the mark in commerce.
7. Amend § 2.34 by revising the section heading and paragraphs (a)
introductory text, (a)(1) introductory text, (a)(1)(i), (a)(1)(iii) through
(v), (a)(2), (a)(3) introductory text, (a)(3)(i) and (iii), (a)(4)
introductory text, (a)(4)(i)(B), (a)(4)(ii) and (iii), (a)(5), and (b) and
removing paragraph (c).
The revisions read as follows:
§ 2.34 Bases for filing a trademark or service mark application.
(a) An application for a trademark or service mark must include one or
more of the following five filing bases:
(1) Use in commerce under section 1(a) of the Act. The requirements for
an application under section 1(a) of the Act are:
(i) The applicant's verified statement that the mark is in use in
commerce. If the verified statement is not filed with the initial
application, the verified statement must also allege that the mark was in
use in commerce as of the application filing date;
* * * * *
(iii) The date of the applicant's first use of the mark in commerce;
(iv) One specimen showing how the applicant uses the mark in commerce;
and
(v) If the application specifies more than one item of goods or services
in a class, the dates of use in paragraphs (a)(1)(ii) and (iii) of this
section are required for only one item of goods or services specified in
that class.
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(2) Intent-to-use under section 1(b) of the Act. In an application under
section 1(b) of the Act, the applicant must verify that the applicant has
a bona fide intention to use the mark in commerce. If the verified
statement is not filed with the initial application, the verified statement
must also allege that the applicant had a bona fide intention to use the
mark in commerce as of the application filing date.
(3) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application under
section 44(e) of the Act are:
(i) The applicant's verified statement that the applicant has a bona
fide intention to use the mark in commerce. If the verified statement is
not filed with the initial application, the Office will require submission
of the verified statement, which must also allege that the applicant had a
bona fide intention to use the mark in commerce as of the application
filing date.
* * * * *
(iii) If the record indicates that the foreign registration will expire
before the U.S. registration will issue, the applicant must submit a true
copy, a photocopy, a certification, or a certified copy of a proof of
renewal from the applicant's country of origin to establish that the
foreign registration has been renewed and will be in full force and effect
at the time the U.S. registration will issue. If the proof of renewal is
not in the English language, the applicant must submit a translation.
(4) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application under
section 44(d) of the Act are:
(i) * * *
(B) State that the application is based upon a subsequent regularly
filed application in the same foreign country, and that any prior-filed
application has been withdrawn, abandoned, or otherwise disposed of,
without having been laid open to public inspection and without having any
rights outstanding, and has not served as a basis for claiming a right of
priority.
(ii) The applicant's verified statement that the applicant has a bona
fide intention to use the mark in commerce. If the verified statement is
not filed with the initial application, the Office will require submission
of the verified statement, which must also allege that the applicant had a
bona fide intention to use the mark in commerce as of the application
filing date.
(iii) Before the application can be approved for publication, or for
registration on the Supplemental Register, the applicant must establish a
basis under section 1 or 44 of the Act.
(5) Extension of protection of an international registration under
section 66(a) of the Act.In an application under section 66(a) of the Act,
the international application/subsequent designation must contain a signed
declaration that meets the requirements of § 2.33(a), (e).
(b) More than one basis. In an application under section 1 or 44 of the
Act, an applicant may claim more than one basis, provided the applicant
satisfies all requirements for the bases claimed. In such case, the
applicant must specify each basis and the goods or services to which that
basis applies. An applicant must specify the goods or services covered by
more than one basis. Section 1(a) and 1(b) of the Act may not both be
claimed for identical goods or services in the same application. A basis
under section 66(a) of the Act may not be combined with another basis.
8. Amend § 2.35 by revising paragraphs (b)(1) and (b)(6) through (8) to
read as follows:
§ 2.35 Adding, deleting, or substituting bases.
(b) * * *
(1) Before publication for opposition, an applicant may add or
substitute a basis, if the applicant meets all requirements for the new
basis, as stated in § 2.34, § 2.44, or § 2.45. The applicant may delete a
basis at any time.
* * * * *
(6) When the applicant adds or substitutes a basis, the applicant must
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list each basis and specify the goods, services, or collective membership
organization to which that basis applies.
(7) When the applicant deletes a basis, the applicant must also delete
any goods, services, or collective membership organization covered solely
by the deleted basis.
(8) Once an applicant claims a section 1(b) basis as to any or all of
the goods or services, or a collective membership organization, the
applicant may not amend the application to seek registration under section
1(a) of the Act for identical goods or services or the same collective
membership organization, unless the applicant files an allegation of use
under section 1(c) or section 1(d) of the Act.
9. Revise § 2.41 to read as follows:
§ 2.41 Proof of distinctiveness under section 2(f).
(a) For a trademark or service mark-(1) Ownership of prior
registration(s). In appropriate cases, ownership of one or more active
prior registrations on the Principal Register or under the Trademark Act of
1905 of the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently similar to the
goods or services in the application; however, further evidence may be
required.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a trademark or service mark is said to have become
distinctive of the applicant's goods or services by reason of the
applicant's substantially exclusive and continuous use of the mark in
commerce for the five years before the date on which the claim of
distinctiveness is made, a showing by way of verified statements in the
application may be accepted as prima facie evidence of distinctiveness;
however, further evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive in commerce of the applicant's goods or
services, the applicant may, in support of registrability, submit with the
application, or in response to a request for evidence or to a refusal to
register, verified statements, depositions, or other appropriate evidence
showing duration, extent, and nature of the use in commerce and advertising
expenditures in connection therewith (identifying types of media and
attaching typical advertisements), and verified statements, letters or
statements from the trade or public, or both, or other appropriate
evidence of distinctiveness.
(b) For a collective trademark or collective service mark-(1) Ownership
of prior registration(s). See the requirements of paragraph (a)(1) of this
section.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a collective trademark or collective service mark
is said to have become distinctive of the members' goods or services by
reason of the members' substantially exclusive and continuous use of the
mark in commerce for the five years before the date on which the claim of
distinctiveness is made, a showing by way of verified statements in the
application may be accepted as prima facie evidence of distinctiveness;
however, further evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive in commerce of the members' goods or
services, the applicant may, in support of registrability, submit with the
application, or in response to a request for evidence or to a refusal to
register, verified statements, depositions, or other appropriate evidence
showing duration, extent, and nature of the use in commerce, and
advertising expenditures in connection therewith (identifying types of
media and attaching typical advertisements), and verified statements,
letters or statements from the trade or public, or both, or other
appropriate evidence of distinctiveness.
(c) For a collective membership mark-(1) Ownership of prior
registration(s). In appropriate cases, ownership of one or more active
prior registrations on the Principal Register or under the Act of 1905 of
the same mark may be accepted as prima facie evidence of distinctiveness if
the goods, services, or nature of the collective membership organization
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are sufficiently similar to the collective membership organization in the
application; however, further evidence may be required.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a collective membership mark is said to have
become distinctive of indicating membership in the applicant's collective
membership organization by reason of the members' substantially exclusive
and continuous use of the mark in commerce for the five years before the
date on which the claim of distinctiveness is made, a showing by way of
verified statements in the application may be accepted as prima facie
evidence of distinctiveness; however, further evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive in commerce of indicating membership in
the applicant's collective membership organization, the applicant may, in
support of registrability, submit with the application, or in response to a
request for evidence or to a refusal to register, verified statements,
depositions, or other appropriate evidence showing duration, extent, and
nature of the members' use in commerce, and advertising expenditures in
connection therewith (identifying types of media and attaching typical
advertisements), and verified statements, letters or statements from the
trade or public, or both, or other appropriate evidence of distinctiveness.
(d) For a certification mark-(1) Ownership of prior certification mark
registration(s). In appropriate cases, ownership of one or more active
prior certification mark registrations on the Principal Register or under
the Act of 1905 of the same mark may be accepted as prima facie evidence of
distinctiveness if the authorized users' goods or services are sufficiently
similar to the goods or services certified in the application, subject to
the limitations of the statement set forth in § 2.45(a)(4)(i)(C); however,
further evidence may be required.
(2) Five years substantially exclusive and continuous use in commerce.
In appropriate cases, if a certification mark is said to have become
distinctive of the certified goods or services by reason of the authorized
users' substantially exclusive and continuous use of the mark in commerce
for the five years before the date on which the claim of distinctiveness is
made, a showing by way of verified statements in the application may be
accepted as prima facie evidence of distinctiveness; however, further
evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive of the certified goods or services
program, the applicant may, in support of registrability, submit with the
application, or in response to a request for evidence or to a refusal to
register, verified statements, depositions, or other appropriate evidence
showing duration, extent, and nature of the authorized users' use in
commerce and advertising expenditures in connection therewith (identifying
types of media and attaching typical advertisements), and verified
statements, letters or statements from the trade or public, or both, or
other appropriate evidence of distinctiveness.
(e) Certification marks with geographical matter. Paragraph (d) of this
section does not apply to geographical matter in a certification mark
certifying regional origin because section 2(e)(2) of the Act does not
apply to certification marks that are indications of regional origin.
10. Revise § 2.42 to read as follows:
§ 2.42 Concurrent use.
(a) Prior to seeking concurrent use, an application for registration on
the Principal Register under the Act must assert use in commerce and
include all the application elements required by the preceding sections, in
addition to § 2.44 or § 2.45, if applicable.
(b) The applicant must also include a verified statement that indicates
the following, to the extent of the applicant's knowledge:
(1) For a trademark or service mark, the geographic area in which the
applicant is using the mark in commerce; for a collective mark or
certification mark, the geographic area in which the applicant's members or
authorized users are using the mark in commerce;
(2) For a trademark or service mark, the applicant's goods or services;
for a collective trademark, collective service mark, or certification mark,
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the applicant's members' or authorized users' goods or services; for a
collective membership mark, the nature of the applicant's collective
membership organization;
(3) The mode of use for which the applicant seeks registration;
(4) The concurrent users' names and addresses;
(5) The registrations issued to or applications filed by such concurrent
users, if any;
(6) For a trademark or service mark, the geographic areas in which the
concurrent user is using the mark in commerce; for a collective mark or
certification mark, the geographic areas in which the concurrent user's
members or authorized users are using the mark in commerce;
(7) For a trademark or service mark, the concurrent user's goods or
services; for a collective trademark, collective service mark, or
certification mark, the concurrent user's members' or authorized users'
goods or services; for a collective membership mark, the nature of the
concurrent user's collective membership organization;
(8) The mode of use by the concurrent users or the concurrent users'
members or authorized users; and
(9) The time periods of such use by the concurrent users or the
concurrent users' members or authorized users.
(c) For the requirements to amend an application to concurrent use, see
§ 2.73.
(d) For the requirements of a concurrent use proceeding, see § 2.99.
11. Revise § 2.44 to read as follows:
§ 2.44 Requirements for a complete collective mark application.
(a) A complete application to register a collective trademark,
collective service mark, or collective membership mark must include the
following:
(1) The requirements specified in § 2.32(a) introductory text through
(a)(4), (a)(8) through (10), (c), and (d);
(2)(i) For a collective trademark or collective service mark, a list of
the particular goods or services on or in connection with which the
applicant's members use or intend to use the mark; or
(ii) For a collective membership mark, a description of the nature of
the membership organization such as by type, purpose, or area of activity
of the members; and
(iii) In a U.S. application filed under section 44 of the Act, the scope
of the goods or services or the nature of the membership organization
covered by the section 44 basis may not exceed the scope of the goods or
services or nature of the membership organization in the foreign
application or registration.
(3)(i) For a collective trademark or collective service mark
application, the international class of goods or services, if known. See
§ 6.1 of this chapter for a list of the international classes of goods and
services; or
(ii) For a collective membership mark application filed under sections 1
or 44 of the Act, classification in U.S. Class 200; and for a collective
membership mark application filed under section 66(a) of the Act, the
international class(es) assigned by the International Bureau in the
corresponding international registration.
(4) One or more of the following five filing bases:
(i) Use in commerce under section 1(a) of the Act. The requirements for
an application under section 1(a) of the Act are:
(A) A statement specifying the nature of the applicant's control over
the use of the mark by the members;
(B) For a collective trademark or collective service mark, the date of
the applicant's member's first use of the mark anywhere on or in connection
with the goods or services and the date of the applicant's member's first
use of the mark in commerce; or for a collective membership mark, the date
of the applicant's member's first use anywhere to indicate membership in
the collective organization and the date of the applicant's member's first
use in commerce. If the application specifies more than one item of goods
or services in a class, the dates of use are required for only one item of
goods or services specified in that class;
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(C) One specimen showing how a member uses the mark in commerce; and
(D) A verified statement alleging:
That the applicant believes the applicant is the owner of the mark; that
the mark is in use in commerce; that the applicant is exercising
legitimate control over the use of the mark in commerce; that to the best
of the signatory's knowledge and belief, no other persons except members
have the right to use the mark in commerce, either in the identical form or
in such near resemblance as to be likely, when used on or in connection
with the goods, services, or collective membership organization of such
other persons to cause confusion or mistake, or to deceive; that the
specimen shows the mark as used in commerce by the applicant's members; and
that the facts set forth in the application are true.
(ii) Intent-to-use under section 1(b) of the Act. The requirement for an
application based on section 1(b) of the Act is a verified statement
alleging: That the applicant has a bona fide intention, and is entitled, to
exercise legitimate control over the use of the mark in commerce; that to
the best of the signatory's knowledge and belief, no other persons, except
members, have the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when used on or
in connection with the goods, services, or collective membership
organization of such other persons, to cause confusion or mistake, or to
deceive; and that the facts set forth in the application are true.
(iii) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application under
section 44(e) of the Act are:
(A) The requirements of § 2.34(a)(3)(ii) and (iii); and
(B) A verified statement in accordance with paragraph (a)(4)(ii) of this
section.
(iv) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application under
section 44(d) of the Act are:
(A) The requirements of § 2.34(a)(4)(i) and (iii); and
(B) A verified statement in accordance with paragraph (a)(4)(ii) of this
section.
(v) Extension of protection of an international registration under
section 66(a) of the Act.
The requirement for an application under section 66(a) of the Act is a
verified statement alleging that the applicant/holder has a bona fide
intention, and is entitled, to exercise legitimate control over the use of
the mark in commerce that the U.S. Congress can regulate on or in
connection with the goods or services specified in the international
application/subsequent designation; that the signatory is properly
authorized to execute the declaration on behalf of the applicant/holder;
and that to the best of his/her knowledge and belief, no other person,
firm, corporation, association, or other legal entity, except members, has
the right to use the mark in commerce that the U.S. Congress can regulate
either in the identical form thereof or in such near resemblance thereto as
to be likely, when used on or in connection with the goods, services, or
collective membership organization of such other person, firm, corporation,
association, or other legal entity, to cause confusion, or to cause
mistake, or to deceive.
(b) Verification not filed within reasonable time or omitted. (1) If the
verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B),
or (a)(4)(iv)(B) of this section is not filed within a reasonable time
after it is signed, the Office may require the applicant to submit a
substitute verified statement attesting that, as of the application filing
date, the mark was in use in commerce and the applicant was exercising
legitimate control over the use of the mark in commerce; or, as of the
application filing date, the applicant had a bona fide intention, and was
entitled, to exercise legitimate control over the use of the mark in
commerce; or
(2) If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii), (a)
(4)(iii)(B), (a)(4)(iv)(B), or (a)(4)(v) of this section is not filed with
the initial application, the verified statement must also allege that, as
of the application filing date, the mark was in use in commerce and the
applicant was exercising legitimate control over the use of the mark in
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commerce; or, as of the application filing date, the applicant had a bona
fide intention, and was entitled, to exercise legitimate control over the
use of the mark in commerce.
(c) More than one basis. In an application under section 1 or 44 of the
Act, an applicant may claim more than one basis, provided the applicant
satisfies all requirements for the bases claimed. In such case, the
applicant must specify each basis, followed by the goods, services, or
collective membership organization to which that basis applies. An
applicant must specify the goods, services, or collective membership
organization covered by more than one basis. Section 1(a) and 1(b) of the
Act may not both be claimed for identical goods, or services, or the same
collective membership organization in one application. A basis under
section 66(a) of the Act may not be combined with another basis.
(d) In an application for concurrent use under § 2.42, the verified
statement in paragraph (a)(4)(i)(D) of this section must be modified to
indicate that no other persons except members and the concurrent users as
specified in the application have the right to use the mark in commerce.
(e) Multiple-class applications. For the requirements of a multiple-
class application, see § 2.86.
12. Revise § 2.45 to read as follows:
§ 2.45 Requirements for a complete certification mark application;
restriction on certification mark application.
(a) A complete application to register a certification mark must include
the following:
(1) The requirements specified in § 2.32(a) introductory text through
(a)(4), (a)(8) through (10), (c), and (d);
(2) A list of the particular goods or services on or in connection with
which the applicant's authorized users use or intend to use the mark. In an
application filed under section 44 of the Act, the scope of the goods or
services covered by the section 44 basis may not exceed the scope of the
goods or services in the foreign application or registration;
(3) For applications filed under section 1 or 44 of the Act,
classification in U.S. Class A for an application certifying goods and U.S.
Class B for an application certifying services. For applications filed
under section 66(a) of the Act, the international class(es) of goods or
services assigned by the International Bureau in the corresponding
international registration;
(4) One or more of the following five filing bases:
(i) Use in commerce under section 1(a) of the Act. The requirements for
an application under section 1(a) of the Act are:
(A) A statement specifying what the applicant is certifying about the
goods or services in the application;
(B) A copy of the certification standards governing use of the
certification mark on or in connection with the goods or services specified
in the application;
(C) A statement that the applicant is not engaged in the production or
marketing of the goods or services to which the mark is applied, except to
advertise or promote recognition of the certification program or of the
goods or services that meet the certification standards of the
applicant;
(D) The date of the applicant's authorized user's first use of the mark
anywhere on or in connection with the goods or services and the date of the
applicant's authorized user's first use of the mark in commerce. If the
application specifies more than one item of goods or services in a class,
the dates of use are required for only one item of goods or services
specified in that class;
(E) One specimen showing how an authorized user uses the mark in
commerce; and
(F) A verified statement alleging:
That the applicant believes the applicant is the owner of the mark;
that the mark is in use in commerce; that the applicant is
exercising legitimate control over the use of the mark in commerce;
that to the best of the signatory's knowledge and belief, no other
persons except authorized users have the right to use the mark in
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commerce, either in the identical form or in such near resemblance
as to be likely, when used on or in connection with the goods or
services of such other persons, to cause confusion or mistake, or to
deceive; that the specimen shows the mark as used in commerce by the
applicant's authorized users; and that the facts set forth in the
application are true.
(ii) Intent-to-use under section 1(b) of the Act. The requirements for
an application based on section 1(b) of the Act are:
(A) A statement specifying what the applicant will be certifying about
the goods or services in the application;
(B) A statement that the applicant will not engage in the production or
marketing of the goods or services to which the mark is applied, except to
advertise or promote recognition of the certification program or of the
goods or services that meet the certification standards of the applicant;
and
(C) A verified statement alleging:
That the applicant has a bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce; that to the best of
the signatory's knowledge and belief, no other persons, except authorized
users, have the right to use the mark in commerce, either in the identical
form or in such near resemblance as to be likely, when used on or in
connection with the goods or services of such other persons, to cause
confusion or mistake, or to deceive; and that the facts set forth in the
application are true.
(iii) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application under
section 44(e) of the Act are:
(A) The requirements of § 2.34(a)(3)(ii) and (iii);
(B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this section;
and
(C) A verified statement in accordance with paragraph (a)(4)(ii)(C) of
this section.
(iv) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application under
section 44(d) of the Act are:
(A) The requirements of § 2.34(a)(4)(i) and (iii);
(B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this
section; and
(C) A verified statement in accordance with paragraph (a)(4)(ii)(C) of
this section.
(v) Extension of protection of an international registration under
section 66(a) of the Act.
The requirements for an application under section 66(a) of the Act are:
(A) The requirements of paragraphs (a)(4)(ii)(A) and (B) of this
section; and
(B) A verified statement alleging that the applicant/holder has a bona
fide intention, and is entitled, to exercise legitimate control over the
use of the mark in commerce that the U.S. Congress can regulate on or in
connection with the goods or services specified in the international
application/subsequent designation; that the signatory is properly
authorized to execute the declaration on behalf of the applicant/holder;
and that to the best of his/her knowledge and belief, no other person,
firm, corporation, association, or other legal entity, except authorized
users, has the right to use the mark in commerce that the U.S. Congress can
regulate either in the identical form thereof or in such near resemblance
thereto as to be likely, when used on or in connection with the goods or
services of such other person, firm, corporation, association, or other
legal entity, to cause confusion, or to cause mistake, or to deceive.
(b) Verification not filed within reasonable time or omitted. (1) If the
verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)
(C), or (a)(4)(iv)(C) of this section is not filed within a reasonable time
after it is signed, the Office may require the applicant to submit a
substitute verified statement attesting that, as of the application filing
date, the mark was in use in commerce and the applicant was exercising
legitimate control over the use of the mark in commerce; or, as of the
application filing date, the applicant had a bona fide intention, and was
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entitled, to exercise legitimate control over the use of the mark in
commerce; or
(2) If the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C),
(a)(4)(iii)(C), (a)(4)(iv)(C), or (a)(4)(v)(B) of this section is not filed
with the initial application, the verified statement must also allege that,
as of the application filing date, the mark was in use in commerce and the
applicant was exercising legitimate control over the use of the mark in
commerce; or, as of the application filing date, the applicant had a bona
fide intention, and was entitled, to exercise legitimate control over the
use of the mark in commerce.
(c) More than one basis. In an application under section 1 or 44 of the
Act, an applicant may claim more than one basis, provided the applicant
satisfies all requirements for the bases claimed. In such case, the
applicant must specify each basis, followed by the goods or services to
which that basis applies. An applicant must specify the goods or services
covered by more than one basis. Section 1(a) and 1(b) of the Act may not
both be claimed for identical goods or services in the same application. A
basis under section 66(a) of the Act may not be combined with another
basis.
(d) Concurrent use. In an application for concurrent use under § 2.42,
the verified statement in paragraph (a)(4)(i)(F) of this section must be
modified to indicate that no other persons except authorized users and
concurrent users as specified in the application have the right to use the
mark in commerce.
(e) Multiple-class applications. For the requirements of a multiple-
class application, see § 2.86.
(f) Restriction on certification mark application. A single application
may not include a certification mark and another type of mark. The same
mark for the same goods or services is not registrable as both a
certification mark and another type of mark. See sections 4 and 14(5)(B) of
the Act.
13. Amend § 2.56 by revising paragraphs (b)(2), (b)(5), (c), and (d)(3) to
read as follows:
§ 2.56 Specimens.
* * * * *
(b) * * *
(2) A service mark specimen must show the mark as used in the sale or
advertising of the services.
* * * * *
(5) A certification mark specimen must show how a person other than the
owner uses the mark to reflect certification of regional or other origin,
material, mode of manufacture, quality, accuracy, or other characteristics
of that person's goods or services; or that members of a union or other
organization performed the work or labor on the goods or services.
(c) A photocopy or other reproduction of a specimen of the mark as used
on or in connection with the goods, or in the sale or advertising of the
services, is acceptable. However, a photocopy of the drawing required by
§ 2.51 is not a proper specimen.
(d) * * *
(3) In the absence of non-bulky alternatives, a specimen of use in
another appropriate medium may be designated as acceptable by the Office.
* * * * *
14. Revise § 2.59 to read as follows:
§ 2.59 Filing substitute specimen(s).
(a) In an application under section 1(a) of the Act, the applicant may
submit substitute specimens of the mark as used on or in connection with
the goods or in the sale or advertising of the services, or as used to
indicate membership in the collective organization. The applicant must
submit a verified statement that the substitute specimen was in use in
commerce at least as early as the filing date of the application. The
verified statement is not required if the specimen is a duplicate or
facsimile of a specimen already of record in the application.
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(b) In an application under section 1(b) of the Act, after filing either
an amendment to allege use under § 2.76 or a statement of use under § 2.88,
the applicant may submit substitute specimens of the mark as used on or in
connection with the goods or in the sale or advertising of the services, or
as used to indicate membership in the collective organization. If the
applicant submits substitute specimen(s), the applicant must:
(1) For an amendment to allege use under § 2.76, submit a verified
statement that the substitute specimen(s) was in use in commerce prior to
filing the amendment to allege use.
(2) For a statement of use under § 2.88, submit a verified statement
that the substitute specimen(s) was in use in commerce either prior to
filing the statement of use or prior to the expiration of the deadline for
filing the statement of use.
15. Amend § 2.71 by revising paragraphs (a), (b), (c) introductory text,
and (d) and adding paragraph (e) to read as follows:
§ 2.71 Amendments to correct informalities.
* * * * *
(a) The applicant may amend the application to clarify or limit, but not
to broaden, the identification of goods and/or services or the description
of the nature of the collective membership organization.
(b)(1) If the verified statement in an application under § 2.33 is
unsigned or signed by the wrong party, the applicant may submit a
substitute verification.
(2) If the verified statement in a statement of use under § 2.88, or a
request for extension of time to file a statement of use under § 2.89, is
unsigned or signed by the wrong party, the applicant must submit a
substitute verification before the expiration of the statutory deadline for
filing the statement of use.
(c) The applicant may amend the dates of use, provided that the
amendment is verified, except that the following amendments are not
permitted:
* * * * *
(d) The applicant may amend the application to correct the name of the
applicant, if there is a mistake in the manner in which the name of the
applicant is set out in the application. The amendment must be verified.
However, the application cannot be amended to set forth a different entity
as the applicant. An application filed in the name of an entity that did
not own the mark as of the filing date of the application is void.
(e) An amendment that would materially alter the certification statement
specified in
§ 2.45(a)(4)(i)(A) or (a)(4)(ii)(A) will not be permitted.
16. Amend § 2.74 by revising paragraph (b) to read as follows:
§ 2.74 Form and signature of amendment.
* * * * *
(b) Signature. A request for amendment of an application must be signed
by the applicant, someone with legal authority to bind the applicant (e.g.,
a corporate officer or general partner of a partnership), or a practitioner
qualified to practice under § 11.14 of this chapter, in accordance with the
requirements of § 2.193(e)(2). If the amendment requires verification, see
§ 2.2(n).
17. Revise § 2.76 to read as follows:
§ 2.76 Amendment to allege use.
(a) When to file an amendment to allege use. (1) An application under
section 1(b) of the Act may be amended to allege use of the mark in
commerce under section 1(c) of the Act at any time between the filing of
the application and the date the examiner approves the mark for
publication. Thereafter, an allegation of use may be submitted only as a
statement of use under § 2.88 after the issuance of a notice of allowance
under section 13(b)(2) of the Act. An amendment to allege use filed outside
the time period specified in this paragraph will not be reviewed.
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(2)(i) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, an amendment to allege use may be
filed only when the mark has been in use in commerce on or in connection
with all the goods or services specified in the application for which the
applicant will seek registration. For a collective membership mark, an
amendment to allege use may be filed only when the mark has been in use in
commerce to indicate membership in the collective organization specified in
the application for which the applicant will seek registration.
(ii) An amendment to allege use may be accompanied by a request in
accordance with § 2.87 to divide out from the application the goods,
services, or classes not yet in use in commerce.
(b) A complete amendment to allege use. A complete amendment to allege
use must include the following:
(1) A verified statement alleging:
(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods or services, and/or to indicate membership in the collective
organization specified in the application, and the date of first use of the
mark in commerce. If the amendment to allege use specifies more than one
item of goods or services in a class, the dates of use are required for
only one item of goods or services specified in that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the application; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark.
(2) One specimen showing how the applicant, member, or authorized user
uses the mark in commerce. See § 2.56 for the requirements for specimens;
(3) The fee per class required by § 2.6;
(4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of § 2.45(a)(4)(i)(A)-
(C); and
(6) The title "Amendment to Allege Use" should appear at the top of the
first page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed amendment to allege
use. The Office will review a timely filed amendment to allege use to
determine whether it meets the following minimum requirements:
(1) The fee required by § 2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
(3) The verified statement in paragraph (b)(1)(ii) of this section.
(d) Deficiency notification. If the amendment to allege use is filed
within the permitted time period but does not meet the minimum requirements
specified in paragraph (c) of this section, the Office will notify the
applicant of the deficiency. The deficiency may be corrected provided the
mark has not been approved for publication. If an acceptable amendment to
correct the deficiency is not filed prior to approval of the mark for
publication, the amendment will not be examined, and the applicant must
instead file a statement of use after the notice of allowance issues.
(e) Notification of refusals and requirements. A timely filed amendment
to allege use that meets the minimum requirements specified in paragraph
(c) of this section will be examined in accordance with §§ 2.61 through
2.69. If, as a result of the examination of the amendment to allege use,
the applicant is found not entitled to registration for any reason not
previously stated, the applicant will be notified and advised of the
reasons and of any formal requirements or refusals. The notification shall
restate or incorporate by reference all unresolved refusals or requirements
previously stated. The amendment to allege use may be amended in accordance
with §§ 2.59 and 2.71 through 2.75.
(f) Withdrawal. An amendment to allege use may be withdrawn for any
reason prior to approval of a mark for publication.
(g) Verification not filed within reasonable time. If the verified
statements in paragraphs (b)(1)(ii) and, if applicable, (b)(1)(v) of this
section are not filed within a reasonable time after they are signed, the
Office may require the applicant to submit substitute verified statements
attesting that the mark is in use in commerce, and, if applicable, the
applicant is exercising legitimate control over the use of the mark in
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commerce.
(h) An amendment to allege use is not a response but may include
amendments. The filing of an amendment to allege use does not constitute a
response to any outstanding action by the examiner. See § 2.62. The
amendment to allege use may include amendments in accordance with §§ 2.59
and 2.71 through 2.75.
(i) If the application is amended to concurrent use under § 2.73, the
amendment to allege use must include a verified statement modified in
accordance with § 2.33(f), § 2.44(d), or § 2.45(d).
(j) Multiple-class application. For the requirements of a multiple-class
application, see § 2.86.
18. Amend § 2.77, by revising paragraphs (a) introductory text and (a)(1)
to read as follows:
§ 2.77 Amendments between notice of allowance and statement of use.
(a) The only amendments that may be entered in an application between
the issuance of the notice of allowance and the submission of a statement
of use are:
(1) The deletion of specified goods or services, or the entire
description of the nature of the collective membership organization, from
the identification;
* * * * *
19. Revise § 2.86 to read as follows:
§ 2.86 Multiple-class applications.
(a) In a single application for a trademark, service mark, and/or
collective mark, an applicant may apply to register the same mark for
goods, services, and/or a collective membership organization in multiple
classes. In a multiple-class application, the applicant must satisfy the
following, in addition to the application requirements of § 2.32 for a
trademark or service mark, and § 2.44 for collective marks:
(1) For an application filed under section 1 or 44 of the Act, identify
the goods or services in each international class and/or the nature of the
collective membership organization in U.S. Class 200; for applications
filed under section 66(a) of the Act, identify the goods, services, and/or
the nature of the collective membership organization in each international
class assigned by the International Bureau in the corresponding
international registration;
(2) Submit the application filing fee required by § 2.6 for each class;
and
(3) Include either dates of use and one specimen for each class based on
section 1(a) of the Act; or a statement that the applicant has a bona fide
intention to use the mark in commerce, for a trademark or service mark, or
a statement that the applicant has a bona fide intention, and is entitled,
to exercise legitimate control over the use of the mark in commerce, for
collective marks, for each class based on section 1(b), 44, or 66(a) of the
Act. When requested by the Office, additional specimens must be provided.
(b) In a single application for a certification mark, an applicant may
apply to register the same certification mark for goods and services. In
such case, the applicant must satisfy the following, in addition to the
application requirements of § 2.45:
(1) For an application filed under section 1 or 44 of the Act, identify
the goods in U.S. Class A and the services in U.S. Class B; for
applications filed under section 66(a) of the Act, identify the goods and
services in each international class assigned by the International Bureau
in the corresponding international registration;
(2) Submit the application filing fee required by § 2.6 for both
classes; and
(3) Include either dates of use and one specimen for each class based on
section 1(a) of the Act; or a statement that the applicant has a bona fide
intention, and is entitled, to exercise legitimate control over the use of
the mark in commerce for each class based on section 1(b), 44, or 66(a) of
the Act. When requested by the Office, additional specimens must be
provided.
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(c) In a single application, both section 1(a) and 1(b) of the Act may
not be claimed for identical goods or services.
(d) In a single application based on section 1 or 44 of the Act, goods
or services in U.S. Classes A and/or B may not be combined with either
goods or services in any international class or with a collective
membership organization in U.S. Class 200; and in a single application
based on section 66(a) of the Act, a certification mark application may not
be combined with goods, services, or a collective membership organization
in any international class. See § 2.45(f).
(e) An amendment to allege use under § 2.76 or a statement of use under
§ 2.88 for multiple classes must include, for each class, the required fee,
dates of use, and one specimen. When requested by the Office, additional
specimens must be provided. The applicant may not file an amendment to
allege use or a statement of use until the applicant has used the mark on
or in connection with all the goods, services, or classes, unless the
applicant also files a request to divide under § 2.87.
(f) The Office will issue a single certificate of registration for the
mark, unless the applicant files a request to divide under § 2.87.
20. Revise § 2.88 to read as follows:
§ 2.88 Statement of use after notice of allowance.
(a) When to file a statement of use. (1) In an application under section
1(b) of the Act, a statement of use, required under section 1(d) of the
Act, must be filed within six months after issuance of a notice of
allowance under section 13(b)(2) of the Act, or within an extension of time
granted under § 2.89. A statement of use filed prior to issuance of a
notice of allowance is premature and will not be reviewed.
(2)(i) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, a statement of use may be filed only
when the mark has been in use in commerce on or in connection with all the
goods or services specified in the notice of allowance for which the
applicant will seek registration in that application. For a collective
membership mark, a statement of use may be filed only when the mark has
been in use in commerce to indicate membership in the collective membership
organization specified in the notice of allowance for which the applicant
will seek registration in that application.
(ii) A statement of use may be accompanied by a request in accordance
with § 2.87 to divide out from the application the goods, services, or
classes not yet in use in commerce.
(b) A complete statement of use. A complete statement of use must
include the following:
(1) A verified statement alleging:
(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods, services, and/or to indicate membership in the collective
organization specified in the application, and the date of first use of the
mark in commerce. If the statement of use specifies more than one item of
goods or services in a class, the dates of use are required for only one
item of goods or services specified in that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the notice of allowance. The goods or services
specified in a statement of use must conform to those goods or services
specified in the notice of allowance for trademark, service mark,
collective trademark, collective service mark, or certification mark
applications. Any goods or services specified in the notice of allowance
that are omitted from the identification of goods or services in the
statement of use will be presumed to be deleted and the deleted goods or
services may not be reinserted in the application. For collective
membership mark applications, the description of the nature of the
collective membership organization in the statement of use must conform to
that specified in the notice of allowance; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark;
(2) One specimen showing how the applicant, member, or authorized user
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uses the mark in commerce. See § 2.56 for the requirements for specimens;
(3) Fee(s). The fee required by § 2.6 per class. The applicant must pay
a filing fee sufficient to cover at least one class within the statutory
time for filing the statement of use, or the application will be abandoned.
If the applicant submits a fee insufficient to cover all the classes in a
multiple-class application, the applicant should specify the classes to be
abandoned. If the applicant timely submits a fee sufficient to pay for at
least one class, but insufficient to cover all the classes, and the
applicant has not specified the class(es) to be abandoned, the Office will
issue a notice granting the applicant additional time to submit the fee(s)
for the remaining class(es) or to specify the class(es) to be abandoned. If
the applicant does not submit the required fee(s) or specify the class(es)
to be abandoned within the set time period, the Office will apply the fees
paid, beginning with the lowest numbered class, in ascending order. The
Office will delete the class(es) not covered by the fees submitted;
(4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of § 2.45(a)(4)(i)(A)
through (C); and
(6) The title "Statement of Use" should appear at the top of the first
page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed statement of use. The
Office will review a timely filed statement of use to determine whether it
meets the following minimum requirements:
(1) The fee required by § 2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
(3) The verified statement in paragraph (b)(1)(ii) of this section. If
this verified statement is unsigned or signed by the wrong party, the
applicant must submit a substitute verified statement on or before the
statutory deadline for filing the statement of use.
(d) Deficiency notification. If the statement of use is filed within the
permitted time period but does not meet the minimum requirements specified
in paragraph (c) of this section, the Office will notify the applicant of
the deficiency. If the time permitted for the applicant to file a statement
of use has not expired, the applicant may correct the deficiency.
(e) Notification of refusals and requirements. A timely filed statement
of use that meets the minimum requirements specified in paragraph (c) of
this section will be examined in accordance with §§ 2.61 through 2.69. If,
as a result of the examination of the statement of use, the applicant is
found not entitled to registration, the applicant will be notified and
advised of the reasons and of any formal requirements or refusals. The
statement of use may be amended in accordance with §§ 2.59 and 2.71 through
2.75.
(f) Statement of use may not be withdrawn. The applicant may not
withdraw a timely filed statement of use to return to the previous status
of awaiting submission of a statement of use, regardless of whether it is
in compliance with paragraph (c) of this section.
(g) Verification not filed within reasonable time. If the verified
statements in paragraphs (b)(1)(ii) and, if applicable, (b)(1)(v) of this
section are not filed within a reasonable time after they are signed, the
Office may require the applicant to submit substitute verified statements
attesting that the mark is in use in commerce, and, if applicable, the
applicant is exercising legitimate control over the use of the mark in
commerce.
(h) Amending the application. The statement of use may include
amendments in accordance with §§ 2.51, 2.59, and 2.71 through 2.75.
(i) Concurrent use. If the application is amended to concurrent use
under § 2.73, the statement of use must include a verified statement
modified in accordance with § 2.33(f), § 2.44(d), or § 2.45(d).
(j) Multiple-class application. For the requirements of a multiple-class
application, see § 2.86.
(k) Abandonment. The failure to timely file a statement of use which
meets the minimum requirements specified in paragraph (c) of this section
shall result in the abandonment of the application.
21. Revise § 2.89 to read as follows:
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§ 2.89 Extensions of time for filing a statement of use.
(a) First extension request after issuance of notice of allowance. The
applicant may request a six-month extension of time to file the statement
of use required by § 2.88. The extension request must be filed within six
months of the date of issuance of the notice of allowance under section 13
(b)(2) of the Act and must include the following:
(1) A written request for an extension of time to file the statement of
use;
(2) The fee required by § 2.6 per class. The applicant must pay a filing
fee sufficient to cover at least one class within the statutory time for
filing the extension request, or the request will be denied. If the
applicant submits a fee insufficient to cover all the classes in a
multiple-class application, the applicant should specify the classes to be
abandoned. If the applicant timely submits a fee sufficient to pay for at
least one class, but insufficient to cover all the classes, and the
applicant has not specified the class(es) to be abandoned, the Office will
issue a notice granting the applicant additional time to submit the fee(s)
for the remaining classes, or specify the class(es) to be abandoned. If the
applicant does not submit the required fee(s) or specify the class(es) to
be abandoned within the set time period, the Office will apply the fees
paid, beginning with the lowest numbered class, in ascending order. The
Office will delete the class(es) not covered by the fees submitted; and
(3) A verified statement that the applicant has a continued bona fide
intention to use the mark in commerce, specifying the relevant goods or
services, for trademarks or service marks; or that the applicant has a
continued bona fide intention, and is entitled, to exercise legitimate
control over the use of the mark in commerce, specifying the relevant
goods, services, or collective membership organization, for collective
marks or certification marks. If this verified statement is unsigned or
signed by the wrong party, the applicant must submit a substitute verified
statement within six months of the date of issuance of the notice of
allowance.
(b) Subsequent extension requests. Before the expiration of the
previously granted extension of time, the applicant may request further
six-month extensions of time to file the statement of use by submitting the
following:
(1) A written request for an extension of time to file the statement of
use;
(2) The requirements of paragraph (a)(2) of this section for a fee;
(3) A verified statement that the applicant has a continued bona fide
intention to use the mark in commerce, specifying the relevant goods or
services, for trademarks or service marks; or that the applicant has a
continued bona fide intention, and is entitled, to exercise legitimate
control over the use of the mark in commerce, specifying the relevant
goods, services, or collective membership organization, for collective
marks or certification marks. If this verified statement is unsigned or
signed by the wrong party, the applicant must submit a substitute verified
statement before the expiration of the previously granted extension; and
(4) A showing of good cause, as specified in paragraph (d) of this
section.
(c) Four subsequent extension requests permitted. Extension requests
specified in paragraph (b) of this section will be granted only in six-
month increments and may not aggregate more than 24 months total.
(d) Good cause. A showing of good cause must include:
(1) For a trademark or service mark, a statement of the applicant's
ongoing efforts to make use of the mark in commerce on or in connection
with each of the relevant goods or services. Those efforts may include
product or service research or development, market research, manufacturing
activities, promotional activities, steps to acquire distributors, steps to
obtain governmental approval, or other similar activities. In the
alternative, the applicant must submit a satisfactory explanation for the
failure to make efforts to use the mark in commerce.
(2) For a collective mark, a statement of ongoing efforts to make use of
the mark in commerce by members on or in connection with each of the
relevant goods or services or in connection with the applicant's collective
membership organization. Those efforts may include the development of
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standards, the steps taken to acquire members such as marketing and
promotional activities targeted to potential members, training members
regarding the standards, or other similar activities. In the alternative,
the applicant must submit a satisfactory explanation for the failure to
make efforts for applicant's members to use the mark in commerce.
(3) For a certification mark, a statement of ongoing efforts to make use
of the mark in commerce by authorized users on or in connection with each
of the relevant goods or services. Those efforts may include the
development of certification standards, steps taken to obtain governmental
approval or acquire authorized users, marketing and promoting the
recognition of the certification program or of the goods or services that
meet the certification standards of the applicant, training authorized
users regarding the standards, or other similar activities. In the
alternative, the applicant must submit a satisfactory explanation for the
failure to make efforts for applicant's authorized users to use the mark in
commerce.
(e) Extension request filed in conjunction with or after a statement of
use. (1) An applicant may file one request for a six-month extension of
time for filing a statement of use when filing a statement of use or after
filing a statement of use if time remains in the existing six-month period
in which the statement of use was filed, provided that the time requested
would not extend beyond 36 months from the date of issuance of the notice
of allowance. Thereafter, applicant may not request any further extensions
of time.
(2) A request for an extension of time that is filed under paragraph (e)
(1) of this section, must comply with all the requirements of paragraph (a)
of this section, if it is an applicant's first extension request, or
paragraph (b) of this section, if it is a second or subsequent extension
request. However, in a request under paragraph (b) of this section, an
applicant may satisfy the requirement for a showing of good cause by
asserting the applicant believes the applicant has made valid use of the
mark in commerce, as evidenced by the submitted statement of use, but that
if the statement of use is found by the Office to be fatally defective, the
applicant will need additional time in which to file a new statement of
use.
(f) Goods or services. For trademark, service mark, collective
trademark, collective service mark, or certification mark applications, the
goods or services specified in a request for an extension of time for
filing a statement of use must conform to those goods or services specified
in the notice of allowance. Any goods or services specified in the notice
of allowance that are omitted from the identification of goods or services
in the request for extension of time will be presumed to be deleted and the
deleted goods or services may not thereafter be reinserted in the
application. For collective membership mark applications, the description
of the nature of the collective membership organization in the request for
extension of time must conform to that set forth in the notice of
allowance.
(g) Notice of grant or denial. The applicant will be notified of the
grant or denial of a request for an extension of time, and of the reasons
for a denial. Failure to notify the applicant of the grant or denial of the
request prior to the expiration of the existing period or requested
extension does not relieve the applicant of the responsibility of timely
filing a statement of use under § 2.88. If, after denial of an extension
request, there is time remaining in the existing six-month period for
filing a statement of use, applicant may submit a substitute request for
extension of time to correct the defects of the prior request. Otherwise,
the only recourse available after denial of a request for an extension of
time is to file a petition to the Director in accordance with § 2.66 or
§ 2.146. A petition from the denial of an extension request must be filed
within two months of the date of issuance of the denial of the request. If
the petition is granted, the term of the requested six-month extension that
was the subject of the petition will run from the date of expiration of the
previously existing six-month period for filing a statement of use.
(h) Verification not filed within reasonable time. If the verified
statement in paragraph (a)(3) or (b)(3) of this section is not filed within
a reasonable time after it is signed, the Office may require the applicant
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to submit a substitute verified statement attesting that the applicant has
a continued bona fide intention to use the mark in commerce, for trademarks
or service marks; or that the applicant has a continued bona fide
intention, and is entitled, to exercise legitimate control over the use of
the mark in commerce, for collective marks or certification marks.
22. Amend § 2.146 by revising paragraphs (c) and (d) to read as follows:
§ 2.146 Petitions to the Director.
* * * * *
(c) Every petition to the Director shall include a statement of the
facts relevant to the petition, the points to be reviewed, the action or
relief requested, and the fee required by § 2.6. Any brief in support of
the petition shall be embodied in or accompany the petition. The petition
must be signed by the petitioner, someone with legal authority to bind the
petitioner (e.g., a corporate officer or general partner of a partnership),
or a practitioner qualified to practice under § 11.14 of this chapter, in
accordance with the requirements of § 2.193(e)(5). When facts are to be
proved on petition, the petitioner must submit proof in the form of
verified statements signed by someone with firsthand knowledge of the facts
to be proved, and any exhibits.
(d) A petition must be filed within two months of the date of issuance
of the action from which relief is requested, unless a different deadline
is specified elsewhere in this chapter, and no later than two months from
the date when Office records are updated to show that the
registration has been cancelled or has expired.
* * * * *
23. Amend § 2.161 by revising paragraphs (b), (c), (d)(1) and (3), and (e)
through (h) and adding paragraphs (i) through (k) to read as follows:
§ 2.161 Requirements for a complete affidavit or declaration of continued
use or excusable nonuse.
* * * * *
(b) Include a verified statement attesting to the use in commerce or
excusable nonuse of the mark within the period set forth in section 8 of
the Act. This verified statement must be executed on or after the beginning
of the filing period specified in § 2.160(a);
(c) Include the U.S. registration number;
(d)(1) Include the fee required by § 2.6 for each class that the
affidavit or declaration covers;
* * * * *
(3) If at least one fee is submitted for a multiple-class registration,
but the fee is insufficient to cover all the classes, and the class(es) to
which the fee(s) should be applied are not specified, the Office will issue
a notice requiring either submission of the additional fee(s) or
specification of the class(es) to which the initial fee(s) should be
applied. Additional fee(s) may be submitted if the requirements of § 2.164
are met. If the additional fee(s) are not submitted within the time period
set out in the Office action and the class(es) to which the original fee(s)
should be applied are not specified, the Office will presume that the
fee(s) cover the classes in ascending order, beginning with the lowest
numbered class;
(e)(1) Specify the goods, services, or nature of the collective
membership organization for which the mark is in use in commerce, and/or
the goods, services, or nature of the collective membership organization
for which excusable nonuse is claimed under paragraph (f)(2) of this
section; and
(2) Specify the goods, services, or classes being deleted from the
registration, if the affidavit or declaration covers fewer than all the
goods, services, or classes in the registration;
(f)(1) State that the registered mark is in use in commerce; or
(2) If the registered mark is not in use in commerce on or in connection
with all the goods, services, or classes specified in the registration, set
forth the date when such use of the mark in commerce stopped and the
approximate date when such use is expected to resume; and recite facts to
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show that nonuse as to those goods, services, or classes is due to special
circumstances that excuse the nonuse and is not due to an intention to
abandon the mark; and
(g) Include one specimen showing how the mark is in use in commerce for
each class in the registration, unless excusable nonuse is claimed under
paragraph (f)(2) of this section. When requested by the Office, additional
specimens must be provided. The specimen must meet the requirements of
§ 2.56.
(h) The Office may require the owner to furnish such information,
exhibits, affidavits or declarations, and such additional specimens as may
be reasonably necessary to the proper examination of the affidavit or
declaration under section 8 of the Act.
(i) Additional requirements for a collective mark: In addition to the
above requirements, a complete affidavit or declaration pertaining to a
collective mark must:
(1) State that the owner is exercising legitimate control over the use
of the mark in commerce; and
(2) If the registration issued from an application based solely on
section 44 of the Act, state the nature of the owner's control over the use
of the mark by the members in the first affidavit or declaration filed
under paragraph (a) of this section.
(j) Additional requirements for a certification mark: In addition to the
above requirements, a complete affidavit or declaration pertaining to a
certification mark must:
(1) Include a copy of the certification standards specified in § 2.45(a)
(4)(i)(B);
(i) Submitting certification standards for the first time. If the
registration issued from an application based solely on section 44 of the
Act, include a copy of the certification standards in the first affidavit
or declaration filed under paragraph (a) of this section; or
(ii) Certification standards submitted in prior filing. If the
certification standards in use at the time of filing the affidavit or
declaration have not changed since the date they were previously submitted
to the Office, include a statement to that effect; if the certification
standards in use at the time of filing the affidavit or declaration have
changed since the date they were previously submitted to the Office,
include a copy of the revised certification standards;
(2) State that the owner is exercising legitimate control over the use
of the mark in commerce; and
(3) Satisfy the requirements of § 2.45(a)(4)(i)(A) and (C).
(k) For requirements of a complete affidavit or declaration of use in
commerce or excusable nonuse for a registration that issued from a section
66(a) basis application, see § 7.37.
24. Amend § 2.167 by revising the introductory text and paragraphs (a) and
(c) through (g) and adding paragraphs (h) through (k) to read as follows:
§ 2.167 Affidavit or declaration under section 15.
The affidavit or declaration in accordance with § 2.20 provided by
section 15 of the Act for acquiring incontestability for a mark registered
on the Principal Register or a mark registered under the Trademark Act of
1881 or 1905 and published under section 12(c) of the Act (see § 2.153)
must:
(a) Be verified;
* * * * *
(c) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, recite the goods or services stated
in the registration on or in connection with which the mark has been in
continuous use in commerce for a period of five years after the date of
registration or date of publication under section 12(c) of the Act, and is
still in use in commerce; for a collective membership mark, describe the
nature of the owner's collective membership organization specified in the
registration in connection with which the mark has been in continuous use
in commerce for a period of five years after the date of registration or
date of publication under section 12(c) of the Act, and is still in use in
commerce;
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(d) Specify that there has been no final decision adverse to the owner's
claim of ownership of such mark for such goods, services, or collective
membership organization, or to the owner's right to register the same or to
keep the same on the register;
(e) Specify that there is no proceeding involving said rights pending in
the Office or in a court and not finally disposed of;
(f) Be filed within one year after the expiration of any five-year
period of continuous use following registration or publication under
section 12(c) of the Act; and
(g) Include the fee required by § 2.6 for each class to which the
affidavit or declaration pertains in the registration. If no fee, or a fee
insufficient to cover at least one class, is filed at an appropriate time,
the affidavit or declaration will not be refused if the required fee(s)
(see § 2.6) is filed in the Office within the time limit set forth in the
notification of this defect by the Office. If the submitted fees are
insufficient to cover all classes in the registration, the particular class
or classes to which the affidavit or declaration pertains should be
specified.
(h) If the affidavit or declaration fails to satisfy any of the
requirements in paragraphs (a) through (g) of this section, the owner will
be notified in an Office action that the affidavit or declaration cannot be
acknowledged. If a response is not received within the time period provided
or does not satisfy the requirements of the Office action, the affidavit or
declaration will be abandoned.
(i) If the affidavit or declaration satisfies paragraphs (a) through (g)
of this section, the Office will issue a notice of acknowledgement.
(j) An affidavit or declaration may be abandoned by the owner upon
petition to the Director under § 2.146 either before or after the notice of
acknowledgement has issued.
(k) If an affidavit or declaration is abandoned, the owner may file a
new affidavit or declaration with a new filing fee.
25. Amend § 2.173 by revising paragraphs (b) through (g) and adding
paragraphs (h) and (i) to read as follows:
§ 2.173 Amendment of registration.
* * * * *
(b) Requirements for request. A request for amendment or disclaimer
must:
(1) Include the fee required by § 2.6;
(2) Be verified and signed in accordance with § 2.193(e)(6); and
(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,
services, or collective membership organization; a verified statement that
the specimen was in use in commerce at least as early as the filing date of
the amendment; and a new drawing of the amended mark. When requested by the
Office, additional specimens must be provided.
(4) The Office may require the owner to furnish such specimens,
information, exhibits, and affidavits or declarations as may be reasonably
necessary to the proper examination of the amendment.
(c) Registration must still contain registrable matter. The registration
as amended must still contain registrable matter, and the mark as amended
must be registrable as a whole.
(d) Amendment may not materially alter the mark. An amendment or
disclaimer that materially alters the character of the mark will not be
permitted, in accordance with section 7(e) of the Act.
(e) Amendment of identification of goods, services, or collective
membership organization. No amendment in the identification of goods or
services, or description of the nature of the collective membership
organization, in a registration will be permitted except to restrict the
identification or to change it in ways that would not require republication
of the mark.
(f) Amendment of certification statement for certification marks. An
amendment of the certification statement specified in § 2.45(a)(4)(i)(A) or
(a)(4)(ii)(A) that would materially alter the certification statement will
not be permitted, in accordance with section 7(e) of the Act.
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(g) Conforming amendments may be required. If the registration includes
a disclaimer, description of the mark, or other miscellaneous statement,
any request to amend the registration must include a request to make any
necessary conforming amendments to the disclaimer, description, or other
statement.
(h) Elimination of disclaimer. No amendment seeking the elimination of a
disclaimer will be permitted, unless deletion of the disclaimed portion of
the mark is also sought.
(i) No amendment to add or delete section 2(f) claim of acquired
distinctiveness. An amendment seeking the addition or deletion of a claim
of acquired distinctiveness will not be permitted.
26. Amend § 2.175 by revising paragraph (b)(2) to read as follows:
§ 2.175 Correction of mistake by owner.
* * * * *
(b) * * *
(2) Be verified; and
* * * * *
27. Amend § 2.183 by revising paragraphs (d) and (e) to read as follows:
§ 2.183 Requirements for a complete renewal application.
* * * * *
(d) If the renewal application covers less than all the goods, services,
or classes in the registration, then a list specifying the particular
goods, services, or classes to be renewed.
(e) If at least one fee is submitted for a multiple-class registration,
but the fee is insufficient to cover all the classes and the class(es) to
which the fee(s) should be applied are not specified, the Office will issue
a notice requiring either the submission of additional fee(s) or an
indication of the class(es) to which the original fee(s) should be applied.
Additional fee(s) may be submitted if the requirements of § 2.185 are met.
If the required fee(s) are not submitted and the class(es) to which the
original fee(s) should be applied are not specified, the Office will
presume that the fee(s) cover the classes in ascending order, beginning
with the lowest numbered class.
* * * * *
28. Amend § 2.193 by revising paragraphs (c)(2), (e) introductory text, (e)
(1), and (f) to read as follows:
§ 2.193 Trademark correspondence and signature requirements.
* * * * *
(c) * * *
(2) Sign the document using some other form of electronic signature
specified by the Director.
* * * * *
(e) Proper person to sign. Documents filed in connection with a
trademark application or registration must be signed by a proper person.
Unless otherwise specified by law, the following requirements apply:
(1) Verified statement of facts. A verified statement in support of an
application for registration, amendment to an application for registration,
allegation of use under § 2.76 or § 2.88, request for extension of time to
file a statement of use under § 2.89, or an affidavit under section 8,
12(c), 15, or 71 of the Act must satisfy the requirements of § 2.2(n), and
be signed by the owner or a person properly authorized to sign on behalf of
the owner. A person who is properly authorized to verify facts on behalf of
an owner is:
* * * * *
(f) Signature as certification. The presentation to the Office (whether
by signing, filing, submitting, or later advocating) of any document by any
person, whether a practitioner or non-practitioner, constitutes a
certification under § 11.18(b) of this chapter. Violations of § 11.18(b) of
this chapter may jeopardize the validity of the application or
registration, and may result in the imposition of sanctions under
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§ 11.18(c) of this chapter. Any practitioner violating § 11.18(b) of this
chapter may also be subject to disciplinary action. See § 11.18(d) and
§ 11.804 of this chapter.
* * * * *
PART 7-RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE
INTERNATIONAL REGISTRATION OF MARKS
29. The authority citation for part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
30. Amend § 7.1 by revising paragraph (c) and adding paragraph (f) to read
as follows:
§ 7.1 Definitions of terms as used in this part.
* * * * *
(c) The acronym TEAS means the Trademark Electronic Application System,
available at http://www.uspto.gov.
* * * * *
(f) The definitions specified in § 2.2(k) and (n) of this chapter apply
to this part.
31. Amend § 7.37 by revising paragraphs (b) introductory text, (b)(1), (d)
(1), (d)(3), (e), (f)(1), (g), and (h) and adding paragraphs (i) and (j) to
read as follows:
§ 7.37 Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse.
* * * * *
(b) Include a verified statement attesting to the use in commerce or
excusable nonuse of the mark within the period set forth in section 71 of
the Act. The verified statement must be executed on or after the beginning
of the filing period specified in § 7.36(b). A person who is properly
authorized to sign on behalf of the holder is:
(1) A person with legal authority to bind the holder;
* * * * *
(d)(1) Include the fee required by § 7.6 for each class that the
affidavit or declaration covers;
* * * * *
(3) If at least one fee is submitted for a multiple-class registration,
but the fee is insufficient to cover all the classes and the class(es) to
which the fee(s) should be applied are not specified, the Office will issue
a notice requiring either submission of the additional fee(s) or
specification of the class(es) to which the initial fee(s) should be
applied. Additional fees may be submitted if the requirements of § 7.39 are
met. If the additional fee(s) are not submitted within the time period set
out in the Office action and the class(es) to which the original fee(s)
should be applied are not specified, the Office will presume that the
fee(s) cover the classes in ascending order, beginning with the lowest
numbered class;
(e)(1) Specify the goods, services, or nature of the collective
membership organization for which the mark is in use in commerce, and/or
the goods, services, or nature of the collective membership organization
for which excusable nonuse is claimed under paragraph (f)(2) of this
section; and
(2) Specify the goods, services, or classes being deleted from the
registration, if the affidavit or declaration covers fewer than all the
goods, services, or classes in the registration;
(f)(1) State that the registered mark is in use in commerce; or
(2) If the registered mark is not in use in commerce on or in connection
with all the goods, services, or classes specified in the registration, set
forth the date when such use of the mark in commerce stopped and the
approximate date when such use is expected to resume; and recite facts to
show that nonuse as to those goods, services, or classes is due to special
circumstances that excuse the nonuse and is not due to an intention to
abandon the mark; and
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(g) Include one specimen showing how the mark is in use in commerce for
each class in the registration, unless excusable nonuse is claimed under
paragraph (f)(2) of this section. When requested by the Office, additional
specimens must be provided. The specimen must meet the requirements of
§ 2.56 of this chapter.
(h) The Office may require the holder to furnish such information,
exhibits, affidavits or declarations, and such additional specimens as may
be reasonably necessary to the proper examination of the affidavit or
declaration under section 71 of the Act.
(i) Additional requirements for a collective mark: In addition to the
above requirements, a complete affidavit or declaration pertaining to a
collective mark must:
(1) State that the holder is exercising legitimate control over the use
of the mark in commerce; and
(2) State the nature of the holder's control over the use of the mark by
the members in the first affidavit or declaration filed under paragraph (a)
of this section.
(j) Additional requirements for a certification mark: In addition to the
above requirements, a complete affidavit or declaration pertaining to a
certification mark must:
(1) Include a copy of the certification standards specified in § 2.45(a)
(4)(i)(B) of this chapter;
(i) Submitting certification standards for the first time. In the first
affidavit or declaration filed under paragraph (a) of this section, include
a copy of the certification standards; or
(ii) Certification standards submitted in prior filing. If the
certification standards in use at the time of filing the affidavit or
declaration have not changed since the date they were npreviously submitted
to the Office, include a statement to that effect; if the certification
standards in use at the time of filing the affidavit or declaration have
changed since the date they were previously submitted to the Office,
include a copy of the revised certification standards;
(2) State that the holder is exercising legitimate control over the use
of the mark in commerce; and
(3) Satisfy the requirements of § 2.45(a)(4)(i)(A) and (C) of this
chapter.
June 5, 2015 RUSSELL SLIFER
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office
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