| Trademark Post-Registration |
Referenced Items (449, 450, 451) |
(450) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 2
[Docket No.: 2003-T-023]
RIN 0651-AB67
Proposed Rule -
Changes in the Requirements for
Amendment and Correction of
Trademark Registrations
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Proposed rule.
SUMMARY: The United States Patent and Trademark Office
("Office") proposes to amend its rules to eliminate the requirement
that a request for amendment or correction of a registration be
accompanied by the original certificate of registration or a certified
copy thereof, and the requirement that an application to surrender a
registration for cancellation be accompanied by the original
certificate or a certified copy; and add a requirement that a request
for correction of a mistake in a registration be filed within one year
of the date of registration.
DATES: To be ensured of consideration, written
comments must be received on or before February 2, 2004. No public
hearing will be held.
ADDRESSES: The Office prefers that all comments be
sent by electronic mail to TMSection7Comments@uspto.gov
<mailto:TMSection7Comments@uspto.gov>. Written comments may also be
submitted by mail or hand delivery to: Commissioner for Trademarks,
2900 Crystal Drive, Arlington, VA 22202-3514, attention Mary Hannon.
Copies of all comments will be available for public inspection in Suite
10B10, South Tower Building, 10th floor, 2900 Crystal Drive, Arlington,
Virginia 22202-3514, from 8:30 a.m. until 5 p.m., Monday through
Friday.
FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office
of the Commissioner for Trademarks, by telephone at (703) 308-8910,
ext. 137; or by e-mail to mary.hannon@uspto.gov
<mailto:mary.hannon@uspto.gov>.
SUPPLEMENTARY INFORMATION: The Office proposes to
amend its rules to (1) eliminate the requirement that a request for
amendment or correction of a registration be accompanied by the
original certificate of registration or a certified copy thereof, and
the requirement that an application to surrender a registration for
cancellation be accompanied by the original certificate or a certified
copy; and (2) add a requirement that a request for correction of a
mistake in a registration be filed within one year of the date of
registration.
Referenc below to "the Act", "the Trademark Act," or "the
statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq.,
as amended.
One Year Time Limit for Requests for Correction of Registrations
Currently, there is no time limit set forth in Secs. 2.174 and
2.175 for filing a request for correction of a mistake in a
registration under section 7(g) or 7(h) of the Trademark Act. Some
registrants have filed requests to correct an error in a mark years
after the date of registration. Granting these requests is harmful to
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examining attorneys and third parties who search Office records,
because they do not have accurate information about existing
registrations. Therefore, the Office proposes to amend Secs. 2.174 and
2.175 to require that all requests for correction of a registration be
filed within one year after the date of registration, even where a
mistake in a registration resulted from an Office error.
Applicants and registrants are advised to carefully review notices of
publication, notices of allowance, and certificates of registration to
ensure that the data is correct, so that any necessary requests for
correction can be filed within one year of the date of registration.
Requirement For Submission of Original Certificate of Registration
or Certified Copy
Currently, Sec. 2.172 requires that an application for surrender
of a registration for cancellation under section 7 of the Trademark Act
be accompanied by the original certificate, if not lost or destroyed.
If the original certificate is submitted, the Office will destroy the
certificate once the registration is cancelled. If the original
certificate does not accompany the request, the Office assumes that the
certificate is lost or destroyed, and processes the request for
cancellation.
Sections 2.173, 2.174, and 2.175(b) currently require that a request
for amendment or correction of a registration under section 7 of the
Trademark Act be accompanied by the original certificate of
registration or a certified copy thereof. The Office amends or corrects
the registration by attaching an updated registration certificate,
showing the amendment or correction, to the original certificate of
registration and to the printed copies of the registration in the
Office. See 37 CFR 2.173(c), 2.174 and 2.175(c). The Office returns the
original registration certificate, or certified copy thereof, with the
updated registration certificate attached, to the owner of record. TMEP
Secs. 1609.01 and 1609.09.
The Office believes that requiring the registrant to submit the
original certificate or a certified copy is unnecessary and
inefficient. The Office proposes to eliminate this requirement. When
amending or correcting a registration, the Office will send the updated
registration certificate showing the amendment or correction to the
registrant, and instruct the registrant to attach it to the certificate
of registration. The Office will also update its own records to show
the amendment or correction. The Office will send an updated
registration certificate to the owner of record.
Discussion of Specific Rules
The Office proposes to amend Secs. 2.172, 2.173, 2.174, 2.175, and 2.176.
The Office proposes to amend Sec. 2.172 to eliminate the requirement
that an application to surrender a trademark registration for cancellation
be accompanied by the original certificate of registration.
The Office proposes to amend Sec. 2.173 to eliminate the requirement
that a request for amendment of a trademark registration be accompanied by
the original certificate of registration or a certified copy thereof.
The Office proposes to amend Sec. 2.174 to: (1) Eliminate the
requirement that a request for correction of a mistake by the Office in a
trademark registration pursuant to section 7(g) of the Trademark Act be
accompanied by the original certificate of registration or a certified
copy thereof; and (2) add a requirement that a request for correction
of a mistake by the Office be filed within one year of the date of
registration.
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The Office proposes to amend Sec. 2.175 to: (1) Eliminate the
requirement that a request for correction of a mistake by a registrant in a
trademark registration pursuant to section 7(g) of the Trademark Act be
accompanied by the original certificate of registration or a certified
copy thereof; and (2) add a requirement that a request for correction
of a mistake by a registrant be filed within one year of the date of
registration.
The Office proposes to amend Sec. 2.176 to change "Examiner of
Trademarks" to "Post Registration Examiner."
Rule Making Requirements
Regulatory Flexibility Act
The Deputy General Counsel for General Law of the United States
Patent and Trademark Office has certified to the Chief Counsel for
Advocacy of the Small Business Administration that the proposed rule
changes will not have a significant impact on a substantial number of
small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).
Executive Order 13132
This rule making does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rule making has been determined not to be significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This rule contains no new information collection or
recordkeeping requirements under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). Existing collections of information and
recordkeeping requirements have been reviewed and approved by OMB under
OMB Control Number 0651-0009, Trademark Processing. Notwithstanding any
other provision of law, no person is required to respond to nor shall a
person be subject to a penalty for failure to comply with a collection
of information subject to the requirements of the Paperwork Reduction
Act unless that collection of information displays a currently valid
OMB control number.
List of Subjects in 37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority
contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office
proposes to amend part 2 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR part 2 continues to read
as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Revise Sec. 2.172 to read as follows:
Sec. 2.172 Surrender for cancellation.
Upon application by the registrant, the Director may permit any
registration to be surrendered for cancellation. Application for
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surrender must be signed by the registrant. When there is more than one
class in a registration, one or more entire class(es) but less than the
total number of classes may be surrendered. Deletion of less than all
of the goods or services in a single class constitutes amendment of
registration as to that class. (see Sec. 2.173).
3. Amend Sec. 2.173 by revising paragraph (a) to read as follows:
Sec. 2.173 Amendment of registration.
(a) A registrant may apply to amend a registration or to
disclaim part of the mark in the registration. The registrant must
submit a written request specifying the amendment or disclaimer. This
request must be signed by the registrant and verified or supported by a
declaration under Sec. 2.20, and accompanied by the required fee. If the
amendment involves a change in the mark, the registrant must submit a
new specimen showing the mark as used on or in connection with the
goods or services, and a new drawing of the amended mark. The
registration as amended must still contain registrable matter, and the
mark as amended must be registrable as a whole. An amendment or
disclaimer must not materially alter the character of the mark.
* * * * *
4. Revise Sec. 2.174 to read as follows:
Sec. 2.174 Correction of Office mistake.
(a) Whenever a material mistake in a registration, incurred
through the fault of the United States Patent and Trademark Office, is
clearly disclosed by the records of the Office, a certificate of
correction stating the fact and nature of the mistake, signed by the
Director or by an employee designated by the Director, shall be issued
without charge and recorded. A printed copy of the certificate of
correction shall be attached to each printed copy of the registration
certificate. Thereafter, the corrected certificate shall have the same
effect as if it had been originally issued in the corrected form. In
the discretion of the Director the Office may issue a new certificate
of registration without charge.
(b) A request for correction of an Office error in a registration must
be filed within one year after the date of registration.
5. Amend Sec. 2.175 by revising paragraphs (a) and (b) to read as
follows:
Sec. 2.175 Correction of mistake by registrant.
(a) Whenever a mistake has been made in a registration and a
showing has been made that the mistake occurred in good faith through
the fault of the registrant, the Director may issue a certificate of
correction. In the discretion of the Director, the Office may issue a
new certificate upon payment of the required fee, provided that the
correction does not involve such changes in the registration as to
require republication of the mark.
(b) Application for such action must:
(1) Be filed within one year after the date of registration;
(2) Include the following:
(i) Specification of the mistake for which correction is sought;
(ii) Description of the manner in which it arose; and
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(iii) A showing that it occurred in good faith;
(3) Be signed by the registrant and verified or include a declaration
in accordance with Sec. 2.20; and
(4) Be accompanied by the required fee.
* * * * *
6. Amend Sec. 2.176 to read as follows:
Sec. 2.176 Consideration of above matters.
The matters in Secs. 2.171 to 2.175 will be considered in the
first instance by the Post Registration Examiner. If the action of the
Examiner is adverse, registrant may request the Director to review the
action under Sec. 2.146. If the registrant does not respond to an adverse
action of the Examiner within six months of the mailing date, the
matter will be considered abandoned.
December 9, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
Patent and Trademark Office
[1278 TMOG 158]