| Trademark Post-Registration |
Referenced Items (452, 453, 454) |
(454) Post Registration: Changes to Requirements for
Maintaining Trademark Registrations
Effective: October 30, 1999
This notice discusses changes to the requirements for maintaining
trademark registrations, effective October 30, 1999.
Contents
I. Summary of Trademark Law Treaty Implementation Act
Changes
A. Requirements Prior to October 30, 1999
B. Requirements on and After October 30, 1999
II. Effective Date and Transition
A. Effective Date
B. Transition
III. Affidavit of Continued Use or Excusable Nonuse of Mark
in Commerce under Section 8
A. Requirements for Affidavit or Declaration of Continued
Use or Excusable Nonuse
B. Time for Filing Affidavit
C. Fees
D. Ownership, and Who May File Affidavit
E. Execution of Affidavit or Declaration
F. Goods and/or Services Set Forth in Affidavit or Declaration
G. Use in Commerce
H. Specimen Showing Current Use of Mark in Commerce
I. Nonuse of Mark
J. Designation of Domestic Representative
K. Response to Office Action
L. Correction of Deficiencies
M. Petition to Commissioner
IV. Renewal of Registration
A. Requirements for Renewal
B. Time for Filing Application for Renewal
C. Fees
D. Ownership
E. Execution of Renewal Application
F. Designation of Domestic Representative
G. Goods and/or Services Set Forth in Application for
Renewal
H. Use in Commerce or Excusable Nonuse
I. Specimens
J. Notice of Renewal
K. Response to Office Action
L. Correction of Deficiencies
M. Petition to Commissioner
V. Affidavit or Declaration of Incontestability Under Section
15
A. Type of Commerce No Longer Required
B. Persons Who May Sign Affidavit or Declaration
VI. Combined Filings
A. Section 8 Affidavit Combined with Section 9 Renewal
Application
B. Combining Section 8 Affidavit With Section 15 Affidavit
VII. Signature of Requests to Amend, Correct, or Surrender a
Registration
VIII. Updating Automated Records to Show the Status of Regis
trations
I. SUMMARY OF TRADEMARK LAW TREATY IMPLEMENTATION ACT CHANGES
The Trademark Law Treaty Implementation Act of 1998 (TLTIA), Pub. L. No.
105-330, 112 Stat. 3064 (15 U.S.C. 1051), changed the requirements for
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filing affidavits or declarations of continued use or excusable nonuse
under 8 of the Act ( 8 affidavits), 15 U.S.C. 1058, and renewal
applications under 9 of the Act, 15 U.S.C. 1059, effective October
30, 1999.
A. Requirements Prior to October 30, 1999
Prior to October 30, 1999, 8 affidavits were required between the
fifth and sixth year after the date of registration or publication under
12(c) of the Act, 15 U.S.C. 1062(c). No further affidavits were
required under 8 of the Act. There was no grace period for filing a
8 affidavit, and there were certain requirements that had to be
satisfied before the expiration of the statutory deadline to avoid
cancellation of the registration. The registrant was required to specify
the type of commerce in which the mark was in use. Renewal applications
under 9 of the Act were required to be filed within six months before
the expiration date of a registration, or within a three-month grace
period thereafter upon payment of an additional fee. There were certain
requirements that had to be met before the end of the grace period, or
the registration would expire. Section 9 of the Act required that the
renewal application include an affidavit or declaration of use of the
mark in commerce or excusable nonuse, and a specimen of use for each
class of goods or services.
B. Requirements on and After October 30, 1999
TLTIA amended 8 of the Act to: (1) add a six-month grace period for
filing a 8 affidavit with a grace period surcharge; (2) require a 8
affidavit in the year before the end of every ten-year period after the
date of registration, or within the grace period; (3) clarify that the
current owner of the mark must file the 8 affidavit; and (4) provide
for a period in which a deficient 8 affidavit may be corrected, upon
payment of a deficiency surcharge. A 8 affidavit is still required
between the fifth and sixth year after the date of registration, or
within the six-month grace period. The Trademark Rules of Practice were
amended to delete the requirement to specify the type of commerce in
which the mark is in use.
TLTIA amended 9 of the Act to: (1) extend the three-month grace period
to six months; (2) extend the time for filing the renewal application
from six months to twelve months before expiration of the registration;
(3) remove the requirement for a declaration of continued use in
commerce or excusable nonuse, and for a specimen of use, in a renewal
application; and (4) provide for a period in which a deficient renewal
application may be corrected, upon payment of a deficiency surcharge. No
renewal application is required during the sixth year.
Accordingly, both a 8 affidavit and a 9 renewal application must be
filed within the year before the expiration date of the registration, or
within the six-month grace period. In substance, except as noted above,
the requirements of the combined filing under amended 8 and 9 of the
Act will be the same as the requirements for renewal applications filed
before October 30, 1999.
The statutory filing periods for the ten-year 8 affidavits are the
same as the statutory filing periods for renewal applications. A 8
affidavit and renewal application may be combined in a single document.
See VI(A) of this Notice. Most deficiencies can be cured after
expiration of the deadlines set forth in 8 and 9 of the Act, upon
payment of an additional deficiency surcharge. See III(L) and IV(L)
of this Notice for information about the procedures, deadlines, and fees
for correcting deficiencies.
TLTIA does not change the duration of a registration. See TMEP 1601
regarding the duration of a registration.
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II. EFFECTIVE DATE AND TRANSITION
The effective date of TLTIA and the changes to the Trademark Rules of
Practice is October 30, 1999.
A. Effective Date
1. Section 8 Affidavits
Under TLTIA 109(c), 112 Stat. 3069, the amended provisions of 8 of
the Act, 15 U.S.C. 1058, apply to "the filing of an affidavit if the
sixth or tenth anniversary of the registration, or the sixth anniversary
of publication of the registration under 12(c) of the Trademark Act of
1946 for which the affidavit is filed is on or after [October 30,
1999]." The new law does not apply to a 8 affidavit due before October
30, 1999, even if the affidavit is not examined until after October 30,
1999. For example, if a registration issued on October 29, 1993, the
registrant must meet the statutory requirements of 8 of the Act on or
before October 29, 1999. The registrant cannot take advantage of the
six-month grace period, or the deficiency period, provided under the new
law. The provisions of 8(a)(3) of the Act, requiring the filing of a
8 affidavit at the end of each successive ten-year period after
registration, do not apply to a registration issued or renewed for a
twenty-year term (i.e., a registration issued or renewed before November
16, 1989) until a renewal application is due. See II(B)(3) of this
Notice.
2. Renewal Applications
Under TLTIA 109(d), 112 Stat. 3069, the amended provisions of 9 of
the Act, 15 U.S.C. 1059, apply to "the filing of an application for
renewal of a registration if the expiration date of the registration for
which the renewal application is filed is on or after [October 30,
1999]."
The revised provisions of 9 of the Act do not apply to applications
for renewal of registrations that expire before October 30, 1999, even
if the applications are filed or examined after October 30, 1999. For
example, if a registration expires on October 29, 1999, the registrant
may file a renewal application within six months preceding that date, or
within the three-month grace period provided under the old law, i.e., up
through January 29, 2000. Neither the new six-month grace period, nor
the deficiency period, applies to registrations with expiration dates
prior to October 30, 1999.
B. Transition
1. Section 8 Affidavits Filed Before October 30, 1999, Where the Sixth
Year Expires After October 30, 1999
The revised provisions of 8 of the Trademark Act apply to the filing
of an affidavit of continued use or excusable nonuse under 8 of the
Act if: (1) the sixth or any tenth anniversary of registration, or the
sixth anniversary of publication under 12(c) of the Act, is on or
after October 30, 1999; and (2) the affidavit is filed on or after
October 30, 1999.
Because TLTIA 109(c), 112 Stat. 3069, states that the amended
provisions of 8 of the Act apply only to "the filing" of an affidavit
if the sixth (or any tenth) anniversary of the registration, or the
sixth anniversary of the date of publication under 12(c) of the Act,
is on or after October 30, 1999, the Office will apply the revised
provisions of 8 of the Act only to 8 affidavits filed on or after
October 30, 1999. The old law will apply to 8 affidavits filed before
October 30, 1999, even if the sixth anniversary is on or after October
30, 1999. This will assist in avoiding confusion and in providing
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assurance to registrants and attorneys who need to know which law will
apply before papers are prepared and filed.
If a 8 affidavit is timely filed before October 30, 1999, for a
registration whose sixth anniversary is on or after October 30, 1999,
and found to be deficient, it is possible that no time will remain in
the statutory period during which defects could be cured under the old
law. In this situation, if there is time remaining in the new six-month
grace period, the owner of the registration must file a complete new
affidavit, with a specimen, filing fee, and grace period surcharge, in
order to obtain the benefits of the TLTIA provisions for curing
deficiencies.
If there is no time remaining in the new six-month grace period, the
registration will be cancelled.
Example: If the sixth year expires on November 5, 1999, and a 8
affidavit is filed October 15, 1999, without a specimen, the old law
will apply. Under the old law, the registration must be cancelled if no
specimen is filed before the end of the sixth year. TMEP 1603.08. To
gain the benefit of the TLTIA provisions for curing deficiencies, the
owner of the registration must file a complete new 8 affidavit within
six months after the expiration of the sixth year (i.e., on or before
May 5, 2000), with a specimen, a new filing fee, and grace period
surcharge.
2. Renewal Applications Filed Before October 30, 1999, for Registrations
That Expire After October 30, 1999
The revised provisions of 9 of the Trademark Act apply to the filing
of a renewal application if: (1) the registration expires on or after
October 30, 1999; and (2) the renewal application is filed on or after
October 30, 1999.
Because TLTIA 109(d), 112 Stat. 3069, states that the amended
provisions of 9 of the Act apply only to "the filing" of a renewal
application if the expiration date of the registration is on or after
October 30, 1999, the Office will apply the new law only to renewal
applications filed on or after October 30, 1999. The old law will apply
to renewal applications filed before October 30, 1999, even if the
registration expires on or after October 30, 1999.
If a renewal application is timely filed before October 30, 1999, for a
registration that expires on or after October 30, 1999, and found to be
deficient, it is possible that no time will remain in the three-month
grace period during which defects could be cured under the old law. In
this situation, if there is time remaining in the new six-month grace
period, in order to obtain the benefits of the TLTIA provisions for
curing deficiencies, the registrant must file: (1) a complete new 9
renewal application, with a filing fee, and grace period surcharge; and
(2) a complete 8 affidavit with a specimen, filing fee, and grace
period surcharge, within six months after the expiration of the
registration.
If there is no time remaining in the new six-month grace period, the
registration will expire.
Example: If the registration expires on November 5, 1999, and a
renewal application is filed October 15, 1999, without a specimen, the
old law will apply. Under the old law, the registration will expire if
the registrant does not file a specimen (together with a grace period
surcharge) before the end of the three-month grace period (i.e., on or
before February 5, 2000). TMEP 1605.06. To gain the benefit of the
TLTIA provisions for curing deficiencies, the owner of the registration
must submit: (1) a complete new 9 renewal application (with a filing
fee and grace period surcharge); and (2) a complete new 8 affidavit
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(with a specimen, filing fee, and grace period surcharge), within six
months after the expiration of the registration (i.e., on or before May
5, 2000).
3. Registrations in Twenty-Year Terms
The provisions of 8(a)(3) of the Act, requiring the filing of a 8
affidavit at the end of each successive ten-year period after
registration, do not apply to a registration issued or renewed for a
twenty-year term (i.e., a registration issued or renewed before November
16, 1989) until a renewal application is due.
Example: If a registration was issued or renewed on November 5, 1989,
no 8 affidavit is due between November 5, 1998 and November 5, 1999.
Section 8(a)(3) of the Act does not apply until the renewal application
is due, i.e., between November 5, 2008 and November 5, 2009.
Should the Office receive a 8 affidavit during the tenth year for a
registration in a twenty-year term, the Office will refund the filing
fee and notify the filer that the document will not be processed. The
document will not be returned.
III. AFFIDAVIT OF CONTINUED USE OR EXCUSABLE NONUSE OF MARK IN COMMERCE
UNDER SECTION 8
15 U.S.C. 1058. Duration.
(a) Each registration shall remain in force for 10 years, except that
the registration of any mark shall be canceled by the Commissioner for
failure to comply with the provisions of subsection (b) of this section,
upon the expiration of the following time periods, as applicable:
(1) For registrations issued pursuant to the provisions of this Act, at
the end of 6 years following the date of registration.
(2) For registrations published under the provisions of section 12(c),
at the end of 6 years following the date of publication under such
section.
(3) For all registrations, at the end of each successive 10-year period
following the date of registration.
(b) During the 1-year period immediately preceding the end of the
applicable time period set forth in subsection (a), the owner of the
registration shall pay the prescribed fee and file in the Patent and
Trademark Office-
(1) an affidavit setting forth those goods or services recited in the
registration on or in connection with which the mark is in use in
commerce and such number of specimens or facsimiles showing current use
of the mark as may be required by the Commissioner; or
(2) an affidavit setting forth those goods or services recited in the
registration on or in connection with which the mark is not in use in
commerce and showing that any such nonuse is due to special
circumstances which excuse such nonuse and is not due to any intention
to abandon the mark.
(c)(1) The owner of the registration may make the submissions required
under this section within a grace period of 6 months after the end of
the applicable time period set forth in subsection (a). Such submission
is required to be accompanied by a surcharge prescribed by the
Commissioner.
(2) If any submission filed under this section is deficient, the
deficiency may be corrected after the statutory time period and within
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the time prescribed after notification of the deficiency. Such
submission is required to be accompanied by a surcharge prescribed by
the Commissioner.
(d) Special notice of the requirement for affidavits under this section
shall be attached to each certificate of registration and notice of
publication under section 12(c).
(e) The Commissioner shall notify any owner who files 1 of the
affidavits required by this section of the Commissioner's acceptance or
refusal thereof and, in the case of a refusal, the reasons therefor.
(f) If the registrant is not domiciled in the United States, the
registrant shall designate by a written document filed in the Patent and
Trademark Office the name and address of some person resident in the
United States on whom may be served notices or process in proceedings
affecting the mark. Such notices or process may be served upon the
person so designated by leaving with that person or mailing to that
person a copy thereof at the address specified in the last designation
so filed. If the person so designated cannot be found at the address
given in the last designation, such notice or process may be served upon
the Commissioner.
Under 8 of the Trademark Act, 15 U.S.C. 1058, the owner of the
registration must file an affidavit or declaration of continued use or
excusable nonuse within the following time periods, or the registration
will be cancelled:
(1) between the fifth and sixth year after the date of registration
or date of publication under 12(c) of the Act; and
(2) within the year before the end of every ten-year period after the
date of registration.
Section 8(a)(3) of the Act, 15 U.S.C. 1058(a)(3), requires an
affidavit or declaration of continued use or excusable nonuse at the end
of each successive ten-year period following the date of registration
for all registrations, including registrations issued under the Acts of
1881, 1905 and 1920. However, this requirement does not apply to a
registration issued or renewed for a twenty-year term (i.e., a
registration issued or renewed before November 16, 1989) until a renewal
application is due. See II(B)(3) of this Notice.
A. Requirements for Affidavit or Declaration of Continued Use or
Excusable Nonuse
37 C.F.R. 2.161. Requirements for a complete affidavit or declaration
of continued use or excusable nonuse
A complete affidavit or declaration under section 8 of the Act must:
(a) Be filed by the owner within the period set forth in 2.160(a);
(b) Include a statement that is signed and verified (sworn to) or
supported by a declaration under 2.20 by a person properly authorized
to sign on behalf of the owner, attesting to the continued use or
excusable nonuse of the mark within the period set forth in section 8 of
the Act. The verified statement must be executed on or after the
beginning of the filing period specified in 2.160(a). A person who is
properly authorized to sign on behalf of the owner is:
(1) a person with legal authority to bind the owner; or
(2) a person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the owner; or
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(3) an attorney as defined in 10.1(c) of this chapter who has an
actual or implied written or verbal power of attorney from the owner.
(c) Include the registration number;
(d)(1) Include the fee required by 2.6 for each class of goods or
services that the affidavit or declaration covers;
(2) If the affidavit or declaration is filed during the grace period
under section 8(c)(1) of the Act, include the late fee per class
required by 2.6;
(3) If at least one fee is submitted for a multi-class registration,
but 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 2.164 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;
(e)(1) Specify the goods or services for which the mark is in use in
commerce, and/or the goods or services for which excusable nonuse is
claimed under 2.161(f)(2);(2) If the affidavit or declaration covers
less than all the goods or services, or less than all the classes in the
registration, specify the goods or services being deleted from the
registration;
(f)(1) State that the registered mark is in use in commerce on or in
connection with the goods or services in the registration; or
(2) If the registered mark is not in use in commerce on or in
connection with all the goods or services in the registration, set forth
the date when use of the mark in commerce stopped and the approximate
date when use is expected to resume; and recite facts to show that nonuse
as to those goods or services is due to special circumstances that excuse
the nonuse and is not due to an intention to abandon the mark.
(g) Include a specimen showing current use of the mark for each class
of goods or services, unless excusable nonuse is claimed under
2.161(f)(2). The specimen must:
(1) Show the mark as actually used on or in connection with the goods
or in the sale or advertising of the services. A photocopy or other
reproduction of the specimen showing the mark as actually used is
acceptable. However, a photocopy that merely reproduces the registration
certificate is not a proper specimen;
(2) Be flat and no larger than 8 1/2 inches (21.6 cm.) wide by 11.69
inches (29.7 cm.) long. If a specimen exceeds these size requirements (a
"bulky specimen"), the Office will create a facsimile of the specimen
that meets the requirements of the rule (i.e., is flat and no larger
than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and
put it in the file wrapper;
(h) If the registrant is not domiciled in the United States, the
registrant must list the name and address of a United States resident
upon whom notices or process in proceedings affecting the registration
may be served.
B. Time for Filing Affidavit
Under 8(a) of the Trademark Act, 15 U.S.C. 1058(a), the owner of the
registration must file the affidavit or declaration of continued use or
excusable nonuse: (1) at the end of six years after the date of
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registration or date of publication under 12(c) of the Act; and (2) at
the end of every ten-year period after the date of registration. See
Trademark Rule 2.160(a), 37 C.F.R. 2.160(a).
Section 8(b) of the Act, 15 U.S.C. 1058(b), provides that the owner
may file the affidavit or declaration during the one year immediately
preceding the deadline set forth in 8(a) of the Act.
Under 8(c)(1) of the Act, 15 U.S.C. 1058(c)(1), the affidavit or
declaration may be filed within a grace period of six months after the
expiration of the deadline set forth in 8(a) of the Act, upon payment
of an additional grace period surcharge.
If the owner of the registration does not file an affidavit or
declaration of continued use or excusable nonuse before the end of the
grace period, the registration will be cancelled. 37 C.F.R. 2.160(a)
and 2.164(b).
The affidavit cannot be filed before the period specified in 8(a)
and (b) of the Act. The purpose of the affidavit is to show that the
mark is still in use in commerce within the relevant period, which
cannot be done by an affidavit filed prior to that period. In re Holland
American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). If an
affidavit is filed before the period specified in 8(a) and (b) of
the Act, the Office will issue a notice advising the registrant that the
affidavit is premature; of the appropriate time for filing the 8
affidavit; that the fee(s) submitted will be held; and that the
registrant may file a new affidavit at the appropriate time or may
request a refund at any time. There is no deficiency surcharge. The
prematurely filed affidavit will be placed in the file. If a newly
executed affidavit or declaration is not filed before the end of the
grace period, the registration will be cancelled and the fees refunded.
C. Fees
1. Filing Fee for Affidavit or Declaration
Under 8(b) of the Trademark Act, 15 U.S.C. 1058(b), and Trademark
Rule 2.161(d)(1), 37 C.F.R. 2.161(d)(1), an affidavit or declaration
of continued use or excusable nonuse must include the fee required by
2.6 for each class of goods or services that the affidavit or
declaration covers.
2. Grace Period Surcharge
If the affidavit or declaration is filed during the grace period under
8(c)(1) of the Act, it must include the grace period surcharge per class
required by 2.6. 37 C.F.R. 2.161(d)(2).
The grace period surcharge applies only where no filing was made between
the fifth and sixth year after the date of registration or date of
publication under 12(c) of the Act, or within the year before the end
of any ten-year period after the date of registration. Someone who files
within these periods, but corrects a deficiency after these periods have
expired, will be subject to the deficiency surcharge only. On the other
hand, someone who files during the grace period and cures deficiencies
after expiration of the grace period will be subject to both the grace
period surcharge (for the ability to file the affidavit during the grace
period) and the deficiency surcharge (for the ability to correct a
deficiency after the end of the grace period).
Currently, the grace period surcharge is $100 per class.
3. Deficiency Surcharge
Section 8(c)(2) of the Trademark Act, 15 U.S.C. 1058(c)(2), requires a
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"deficiency surcharge" for correcting deficiencies after expiration of
the deadlines specified in 8. See Trademark Rule 2.164, 37 C.F.R.
2.164, and III(L) of this Notice regarding the deadlines and fees for
correcting deficiencies.
Only a single deficiency surcharge is required for correcting
deficienc(ies) in a multi-class registration. Similarly, only a single
deficiency surcharge is required to correct several deficiencies within
one document. Currently, the deficiency surcharge is $100.
4. Processing Affidavit or Declaration Filed With Insufficient Fees
An affidavit or declaration that does not include sufficient fees to
cover the filing fee for all the classes to which the affidavit pertains
(and the grace period surcharge, where applicable) is deficient.
Deficiencies may be cured before expiration of the deadlines set forth
in 8 of the Act for no fee, or after expiration of the deadlines set
forth in 8 of the Act upon payment of the deficiency surcharge
required by 8(c)(2) of the Act. See Trademark Rule 2.164, 37 C.F.R.
2.164, and III(L) of this Notice for information about the procedures,
deadlines, and fees for correcting deficiencies.
If the affidavit or declaration is accompanied by insufficient fees to
cover all the classes to which the affidavit pertains, and the affidavit
or declaration included an authorization to charge deficient fees to a
deposit account, the filing fee (and grace period surcharge, where
applicable) will be charged to the deposit account. If the deposit
account authorization is included with the affidavit or declaration as
filed, and the deposit account has sufficient funds to cover the fee(s)
in question, there is no fee deficiency and no deficiency surcharge is
required.
An authorization to charge fees to a deposit account with insufficient
funds to cover the fee is regarded as a deficiency.
If a check submitted as payment of a filing fee for an affidavit of
continued use or excusable nonuse is returned to the Office unpaid, this
is also regarded as a deficiency. In addition to the deficiency
surcharge (where applicable), there is a $50 fee for processing the
returned check. 37 C.F.R. 1.21(m).
If at least one fee is submitted for a multi-class registration, but the
class(es) to which the fee(s) should be applied are not specified, the
Post Registration paralegal 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. 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. 37 C.F.R. 2.161(d)(3).
D. Ownership, and Who May File Affidavit
1. Affidavit or Declaration Must be Filed by Owner
The 8 affidavit must be filed by the owner of the registration. Filing
by the owner is a minimum requirement that must be met before the
expiration of the deadline set forth in 8(a) of the Act (i.e., before
the end of the sixth year after the date of registration or publication
under 12(c) of the Trademark Act, or before the end of every ten-year
period after the date of registration), or within the six-month grace
period under 8(c)(1) of the Act. Trademark Rule 2.164(b), 37 C.F.R.
2.164(b).
If the affidavit or declaration was filed in the name of the wrong
party, and there is time remaining in the filing period or grace period,
the true owner must file a complete new affidavit or declaration,
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together with the filing fee per class required by 2.6, and a specimen
of use for each class. If the substitute affidavit or declaration is
filed during the grace period, the grace period surcharge per class must
also be included with the substitute affidavit.
If the affidavit or declaration was filed in the name of the wrong
party, and there is no time remaining in the grace period, a substitute
affidavit by the true owner cannot be accepted, even upon payment of a
deficiency surcharge. The registration will be cancelled.
The filing fee for an affidavit filed in the name of the wrong party
will not be refunded.
2. Establishing Ownership
If the owner set forth in the affidavit is not the owner of record
according to the records of the Assignment Division of the Office,
continuity of title from the original registrant to the present owner
must be shown. See TMEP 1603.05(a) regarding the procedures for
establishing ownership.
Evidence of ownership may be furnished even after expiration of the
deadline set forth in 8 of the Act. If the party who filed the
affidavit was the owner of the registration at the time of filing, there
is no deficiency, and no deficiency surcharge is required.
The procedures for establishing ownership also apply to changes of name
and other changes of legal entity.
The notification of acceptance of a 8 affidavit is issued in the name
of the owner of record, as reflected in the records of the Assignment
Division of the Office. TMEP 1603.05(c).
3. Correction of Mistake in Setting Forth the Name of the Owner
If the affidavit or declaration was filed in the name of an existing
entity that did not own the mark as of the filing date, a substitute
affidavit or declaration cannot be filed in the name of the true owner
unless there is time remaining in the grace period set forth in 8 of
the Act. See III(D)(1) of this Notice. However, if there is no change
of name or entity, but a mistake is made in setting out the name of the
owner of the registration in the affidavit, the mistake can be
corrected. In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm'r Pats.
1990).
No deficiency surcharge will be required for correcting a clerical error
in setting forth the name of the owner of the registration.
E. Execution of Affidavit or Declaration
1. Persons Who May Sign Affidavit or Declaration
Trademark Rule 2.161(b), 37 C.F.R. 2.161(b), requires that the 8
affidavit or declaration include a statement that is signed and verified
(sworn to) or supported by a declaration under 2.20 by a person
properly authorized to sign on behalf of the owner. A "person who is
properly authorized to sign on behalf of the owner" is: (1) a person
with legal authority to bind the owner; or (2) a person with firsthand
knowledge of the facts and actual or implied authority to act on behalf
of the owner; or (3) an attorney as defined in 37 C.F.R. 10.1(c) who
has an actual or implied written or verbal power of attorney from the
owner.
Generally, the Office no longer questions the authority of the person
who signs a verification, unless there is an inconsistency in the record
as to the signatory's authority to sign. The owner of the registration
and/or the owner's attorney are in the best position to determine who
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has the knowledge and authority to sign a verification.
2. Date of Execution of Affidavit or Declaration
Under Trademark Rule 2.161(b), the verified statement must be executed
on or after the beginning of the filing period specified in 37 C.F.R.
2.160(a), i.e., on or after the fifth anniversary of the date of
registration or publication under 12(c), or on or after the beginning
of each ten-year period after the date of registration. Because the
purpose of the affidavit is to attest to the continued use or excusable
nonuse of the mark within the time periods specified in 8 of the Act,
the affidavit cannot be executed before these time periods begin.
An affidavit filed within the period specified in 8 of the Act, but
executed before that period, is deficient. The owner of the registration
will be required to submit a substitute or supplemental affidavit or
declaration attesting to use in commerce (or excusable nonuse) on or in
connection with the goods or services within the relevant period
specified in 8 of the Act.
If the 8 affidavit was filed during the relevant period specified in
8(a) and 8(b) of the Act (i.e., between the fifth and sixth year after
the date of registration or publication under 12(c) of the Trademark
Act, or within one year before the end of any ten-year period after the
date of registration), the substitute affidavit may be filed before
expiration of the relevant period for no fee, or after expiration of the
relevant period upon payment of the deficiency surcharge required under
8(c)(2) of the Act. If the 8 affidavit was filed during the grace
period, the substitute affidavit may be filed before expiration of the
grace period for no fee, or after expiration of the grace period upon
payment of the deficiency surcharge. See Trademark Rule 2.160(a), 37
C.F.R. 2.160(a), and III(B) of this Notice regarding the deadlines
for filing 8 affidavits. See also Trademark Rule 2.164, 37 C.F.R.
2.164, and III(L) of this Notice for information about the procedures,
deadlines, and fees for correcting deficiencies.
F. Goods and/or Services Set Forth in Affidavit or Declaration
1. Goods and/or Services Must be Specified or Expressly Incorporated by
Reference
Sections 8(b)(1) and (2) of the Trademark Act, 15 U.S.C. 1058(b)(1)
and (2), and Trademark Rule 2.161(e)(1), 37 C.F.R. 2.161(e)(1),
require that the affidavit or declaration specify the goods or services
recited in the registration on or in connection with which the mark is
in use in commerce, and/or the goods or services for which nonuse is
claimed. The affidavit or declaration may incorporate by reference the
identification set forth in the registration certificate. Incorporation
by reference is recommended.
2. No Goods or Services Listed
An affidavit or declaration that fails to list or incorporate by
reference the goods or services in the registration is deficient. The
owner must file a substitute or supplemental affidavit or declaration
listing the goods or services, and stating that the mark was in use in
commerce on or in connection with the goods or services during the
relevant filing period specified in 8 of the Act. If the 8 affidavit
was filed during the relevant period specified in 8(a) and 8(b) of
the Act (i.e., between the fifth and sixth year after the date of
registration or publication under 12(c) of the Trademark Act, or
within one year before the end of any ten-year period after the date of
registration), the substitute affidavit may be filed before expiration
of the relevant period for no fee, or after expiration of the relevant
period upon payment of the deficiency surcharge required under 8(c)(2)
of the Act. If the 8 affidavit was filed during the grace period, the
substitute affidavit may be filed before expiration of the grace period
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for no fee, or after expiration of the grace period upon payment of the
deficiency surcharge. See Trademark Rule 2.160(a), 37 C.F.R. 2.160(a),
and III(B) of this Notice regarding the deadlines for filing 8
affidavits. See also Trademark Rule 2.164, 37 C.F.R. 2.164, and
III(L) of this Notice for information about the procedures, deadlines,
and fees for correcting deficiencies.
3. Failure to List All Goods or Services Recited in Registration
An affidavit or declaration that fails to list or incorporate by
reference all the goods or services to which the affidavit pertains is
deficient.
If the affidavit or declaration covers less than all the goods or
services listed in the registration, and the owner does not expressly
indicate an intention to delete the goods or services, the Post
Registration Section of the Office should confirm that the owner intends
to delete the goods or services. If the owner did not intend to delete
the goods, the owner may file a substitute or supplemental affidavit or
declaration adding the omitted goods or services, provided that the
owner verifies that the mark was in use in commerce on or in connection
with the goods or services during the relevant filing period specified
in 8 of the Act. This substitute affidavit may be filed before
expiration of the relevant deadline set forth in 8 of the Act for no
fee, or after expiration of the deadline set forth in 8 of the Act
upon payment of the deficiency surcharge required by 8(c)(2) of the
Act. See Trademark Rule 2.164, 37 C.F.R. 2.164, and III(L) of this
Notice for information about the procedures, deadlines, and fees for
correcting deficiencies.
If the owner does not file a substitute or supplemental affidavit or
declaration that the mark was in use in commerce on or in connection
with the omitted goods or services during the relevant filing period
specified in 8 of the Act, the omitted goods or services will be
deleted from the registration, and the registration will be deemed
cancelled as to those items.
4. Deletion of Goods
If the owner of the registration intends to delete goods from the
registration, this should be expressly stated in the affidavit or
declaration. Trademark Rule 2.161(e)(2), 37 C.F.R. 2.161(e)(2). This
will avoid an unnecessary inquiry by the paralegal as to whether the
owner intends to delete the goods or services from the registration.
5. New Goods or Services Cannot be Added
Goods or services that are not listed in the registration should not be
set forth in the 8 affidavit. If goods or services not listed in the
registration are set forth in the affidavit, the Post Registration
Section of the Office will notify the registrant that these items may
not be added.
G. Use in Commerce
The 8 affidavit must state that the mark is in use in commerce on or
in connection with the goods or services listed in the registration,
unless excusable nonuse is claimed. 37 C.F.R. 2.161(f)(1). The 8
affidavit need not specify the type of commerce (e.g., interstate) in
which the mark is used.
A 8 affidavit that does not state that the mark is in use in commerce
is deficient. The owner must submit a substitute affidavit or
declaration stating that the mark was in use in commerce on or in
connection with the goods or services listed in the registration during
the relevant period specified in 8 of the Act, as follows:
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(1) If the 8 affidavit was filed between the fifth and sixth year
after the date of registration or publication under 12(c) of the Act,
the substitute affidavit must state that the mark was in use in commerce
on or in connection with the goods or services before the expiration of
the sixth year after the date of registration or publication under
12(c); or
(2) If the 8 affidavit was filed within one year before the end of
any ten-year period after the date of registration, the substitute
affidavit must state that the mark was in use in commerce on or in
connection with the goods or services within one year before the end of
the ten-year period after the date of registration; or
(3) If the 8 affidavit was filed during the grace period, the
substitute affidavit must state that the mark was in use in commerce on
or in connection with the goods or services before the expiration of the
grace period.
If the 8 affidavit was filed during the relevant period specified in
8(a) and 8(b) of the Act (i.e., between the fifth and sixth year after
the date of registration or publication under 12(c) of the Trademark
Act, or within one year before the end of any ten-year period after the
date of registration), the substitute affidavit may be filed before
expiration of the relevant period for no fee, or after expiration of the
relevant period upon payment of the deficiency surcharge required under
8(c)(2) of the Act. If the 8 affidavit was filed during the grace
period, the substitute affidavit may be filed before expiration of the
grace period for no fee, or after expiration of the grace period upon
payment of the deficiency surcharge. See Trademark Rule 2.160(a), 37
C.F.R. 2.160(a), and III(B) of this Notice regarding the deadlines
for filing 8 affidavits. See also Trademark Rule 2.164, 37 C.F.R.
2.164, and III(L) of this Notice for information about the procedures,
deadlines, and fees for correcting deficiencies.
If the substitute affidavit does not state that the mark was in use in
commerce on or in connection with the goods or services within the
period specified in 8 of the Act, the 8 affidavit will not be
accepted, and the registration will be cancelled. While a substitute
affidavit may be filed after the expiration of the period specified in
8 of the Act, 8 clearly requires that the substitute affidavit attest
to use within the time period specified in 8 of the Act.
H. Specimen Showing Current Use of Mark in Commerce
1. Specimen for Each Class Required
An affidavit or declaration of continued use must include a specimen or
facsimile showing current use of the mark for each class of goods or
services, unless excusable nonuse is claimed. Sections 8(b)(1) and (2)
of the Trademark Act, 15 U.S.C. 1058(b)(1) and (2); Trademark Rule
2.161(g), 37 C.F.R. 2.161(g).
The specimen must show use of essentially the same mark as the mark
shown in the registration on or in connection with the goods or services
listed in the registration. See TMEP 1603.08 and 1603.10.
An affidavit or declaration that does not include an acceptable specimen
for each class of goods or services to which the affidavit pertains is
deficient. The owner must file substitute specimen(s), together with an
affidavit or declaration that the substitute specimen(s) was in use in
commerce on or in connection with the goods or services during the
relevant period specified in 8 of the Act. See III(H)(2) below
regarding the filing of substitute specimen(s).
Under Trademark Rule 2.161(g)(2), 37 C.F.R. 2.161(g)(2), the specimen
must be flat and no larger than 8 1/2 inches (21.6 cm.) wide by 11.69
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inches (29.7 cm.) long. If a specimen exceeds these size requirements,
the Office will create a facsimile of the specimen that meets the
requirements of the rule (i.e., is flat and no larger than 8 1/2 inches
wide by 11.69 inches long) and put it in the file wrapper.
2. Substitute Specimen(s)
If a specimen for any class is omitted or is deficient, the owner must
file substitute specimen(s), together with an affidavit or declaration
that the substitute specimen(s) was in use in commerce on or in
connection with the goods or services during the relevant period
specified in 8 of the Act, as follows:
(1) If the 8 affidavit was filed between the fifth and sixth year
after the date of registration or publication under 12(c) of the Act,
the affidavit supporting use of the substitute specimens must state that
the substitute specimen(s) was in use in commerce before the expiration
of the sixth year after the date of registration or publication under
12(c), if accurate; or
(2) If the 8 affidavit was filed within one year before the end of
any ten-year period after the date of registration, the affidavit
supporting use of the substitute specimens must state that the substitute
specimen(s) was in use in commerce within one year before the end of the
ten-year period after the date of registration, if accurate; or
(3) If the 8 affidavit was filed during the grace period, the
affidavit supporting use of the substitute specimens must state that the
substitute specimen(s) was in use in commerce before the expiration of
the grace period, if accurate.
If the 8 affidavit was filed during the relevant period specified in
8(a) and 8(b) of the Act (i.e., between the fifth and sixth year after
the date of registration or publication under 12(c) of the Trademark
Act, or within one year before the end of any ten-year period after the
date of registration), the substitute specimen(s) may be filed before
expiration of the relevant period for no fee, or after expiration of the
relevant period upon payment of the deficiency surcharge required under
8(c)(2) of the Act. If the 8 affidavit was filed during the grace
period, the substitute specimen(s) may be filed before expiration of the
grace period for no fee, or after expiration of the grace period upon
payment of the deficiency surcharge. See Trademark Rule 2.160(a), 37
C.F.R. 2.160(a), and III(B) of this Notice regarding the deadlines
for filing 8 affidavits. See also Trademark Rule 2.164, 37 C.F.R.
2.164, and III(L) of this Notice for information about the procedures,
deadlines, and fees for correcting deficiencies.
If the affidavit supporting the substitute specimen(s) does not state
that the specimen(s) was in use in commerce prior to the end of the
period specified in 8 of the Act, the 8 affidavit will not be
accepted, and the registration will be cancelled as to any class for
which a proper specimen was not provided. While a substitute specimen
and supporting affidavit may be filed after the expiration of the period
specified in 8 of the Act, 8 clearly requires that the substitute
affidavit attest to use of the specimen within the time period specified
in 8 of the Act.
I. Nonuse of Mark
Under Trademark Rule 2.161(f)(2), 37 C.F.R. 2.161(f)(2), an affidavit
or declaration claiming excusable nonuse must recite facts and
circumstances that clearly demonstrate that nonuse is due to special
circumstances beyond the owner's control that excuse the nonuse, and is
not due to any intention to abandon the mark. See TMEP 1603.09 and
cases cited therein for further information about affidavits claiming
excusable nonuse.
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The affidavit or declaration must state when use in commerce stopped and
give the approximate date when use is expected to resume. It must also
specify the reason for nonuse, the steps being taken to put the mark
back in use in commerce, and any other pertinent facts.
The determination of whether the nonuse is excusable is made by the Post
Registration paralegal. If the paralegal holds that the facts set forth
do not show excusable nonuse, the owner may file supplementary evidence
or explanation. If the affidavit included a showing of nonuse when
filed, no deficiency surcharge will be required for supplementing this
showing.
J. Designation of Domestic Representative
Under 8(f) of the Trademark Act, 15 U.S.C. 1058(f), and Trademark
Rule 2.161(h), 37 C.F.R. 2.161(h), if the owner of the registration is
not domiciled in the United States, the affidavit or declaration must
include the name and address of a United States resident upon whom
notices or process in proceedings affecting the registration may be
served. See TMEP 604.
An affidavit or declaration that does not designate a domestic
representative is deficient. This deficiency can be cured before
expiration of the relevant deadline set forth in 8 of the Act for no
fee, or after expiration of the relevant deadline upon payment of the
deficiency surcharge required by 8(c)(2) of the Act. See Trademark
Rule 2.164, 37 C.F.R. 2.164, and III(L) of this Notice for
information about the procedures, deadlines, and fees for correcting
deficiencies.
K. Response to Office Action
Upon examination, the Office will issue a notice as to whether an
affidavit or declaration is acceptable, or of the reasons for refusal.
Under Trademark Rule 2.163(b), 37 C.F.R. 2.163(b), a response to a
refusal must be filed within six months of the mailing date of the
Office Action, or before the end of the relevant filing period set forth
in 8 of the Act, whichever is later. If no response is received within
that time, the registration will be cancelled.
If the 8 affidavit was filed by the owner of the registration during
the relevant period specified in 8(a) and 8(b) of the Act (i.e.,
between the fifth and sixth year after the date of registration or
publication under 12(c) of the Trademark Act, or within one year
before the end of any ten-year period after the date of registration),
the owner may correct deficiencies before expiration of the relevant
deadline set forth in 8 of the Act for no fee, or after expiration of
the deadline set forth in 8 of the Act upon payment of the deficiency
surcharge required by 8(c)(2) of the Act. If the 8 affidavit was
filed during the grace period, the owner may correct deficiencies before
expiration of the grace period for no fee, or after expiration of the
grace period upon payment of the deficiency surcharge. See Trademark
Rule 2.164, 37 C.F.R. 2.164, and III(L) of this Notice for
information about the procedures, deadlines, and fees for correcting
deficiencies.
The registration will be cancelled if an affidavit or declaration of
continued use or excusable nonuse is not filed before expiration of the
grace period set forth in 8(c)(1) of the Act, or if the affidavit or
declaration is filed by someone other than the current owner of the
registration. These deficiencies cannot be cured. See 37 C.F.R.
2.164(b) and III(L)(3) of this Notice.
L. Correction of Deficiencies
Trademark Rule 2.164, 37 C.F.R. 2.164, provides for correction of
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deficiencies in an affidavit or declaration of continued use or
excusable nonuse.
1. Correcting Deficiencies in Affidavits or Declarations Timely Filed
Within the Periods Set Forth in Sections 8(a) and 8(b) of the Act
If the owner of the registration timely files the affidavit or
declaration during the periods set forth in 8(a) and 8(b) of the Act
(i.e., between the fifth and sixth year after the date of registration
or publication under 12(c) of the Trademark Act, or within one year
before the end of any ten-year period after the date of registration),
deficiencies may be corrected within the relevant period without paying
a deficiency surcharge. Deficiencies may be corrected after the
expiration of the relevant period, with payment of the deficiency
surcharge required by 8(c)(2) of the Act. Trademark Rule 2.164(a)(1),
37 C.F.R. 2.164(a)(1).
The deficienc(ies) must be cured within the set period for response to
the Office Action, i.e., within six months of the mailing date of the
action, or before the end of the relevant filing period set forth in 8
of the Act, whichever is later. Trademark Rule 2.163(b), 37 C.F.R.
2.163(b).
2. Correcting Deficiencies in Affidavits or Declarations Filed During
the Grace Period
If the owner of the registration files the affidavit or declaration
during the six-month grace period under 8(c)(1) of the Act,
deficiencies may be corrected before the expiration of the grace period
without paying a deficiency surcharge, or after the expiration of the
grace period upon payment of the deficiency surcharge required by
8(c)(2) of the Act. Trademark Rule 2.164(a)(2), 37 C.F.R. 2.164(a)(2).
The deficienc(ies) must be cured within six months of the mailing date
of the Office action. Trademark Rule 2.163(b), 37 C.F.R. 2.163(b).
3. Defects That Cannot be Cured After Expiration of Grace Period
The registration will be cancelled if an affidavit or declaration of
continued use or excusable nonuse is not filed before expiration of the
grace period set forth in 8(c)(1) of the Act, or if the affidavit or
declaration is filed by someone other than the current owner of the
registration. These defects cannot be cured unless there is time
remaining in the grace period. Trademark Rule 2.164(b), 37 C.F.R.
2.164(b).
M. Petition to Commissioner
The owner may petition the Commissioner to review the Post Registration
paralegal's action on a 8 affidavit under 37 C.F.R. 2.146(a)(2)
and 2.165(b). The petition must be filed within six months of the
mailing date of the action. A petition fee is required by 37 C.F.R.
2.6 and 2.146(c).
A response to the paralegal's initial refusal to accept an affidavit or
declaration is required before filing a petition to the Commissioner,
unless the paralegal directs otherwise. Trademark Rule 2.165(a), 37
C.F.R. 2.165(a).
Under Trademark Rule 2.146(j), 37 C.F.R. 2.146(j), if the Commissioner
denies a petition, the petitioner may file a request for reconsideration
within two months of the mailing date of the decision denying the
petition. A second petition fee must be paid with the request for
reconsideration.
IV. RENEWAL OF REGISTRATION
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15 U.S.C. 1059. Renewal.
(a) Subject to the provisions of section 8, each registration may be
renewed for periods of 10 years at the end of each successive 10-year
period following the date of registration upon payment of the prescribed
fee and the filing of a written application, in such form as may be
prescribed by the Commissioner. Such application may be made at any time
within 1 year before the end of each successive 10-year period for which
the registration was issued or renewed, or it may be made within a grace
period of 6 months after the end of each successive 10-year period, upon
payment of a fee and surcharge prescribed therefor. If any application
filed under this section is deficient, the deficiency may be corrected
within the time prescribed after notification of the deficiency, upon
payment of a surcharge prescribed therefor.
(b) If the Commissioner refuses to renew the registration, the
Commissioner shall notify the registrant of the Commissioner's refusal
and the reasons therefor.
(c) If the registrant is not domiciled in the United States, the
registrant shall designate by a written document filed in the Patent and
Trademark Office the name and address of some person resident in the
United States on whom may be served notices or process in proceedings
affecting the mark. Such notices or process may be served upon the
person so designated by leaving with that person or mailing to that
person a copy thereof at the address specified in the last designation
so filed. If the person so designated cannot be found at the address
given in the last designation, such notice or process may be served upon
the Commissioner.
A. Requirements for Renewal
37 C.F.R. 2.183 Requirements for a complete renewal application.
A complete renewal application must include:
(a) A request for renewal of the registration, signed by the registrant
or the registrant's representative;
(b) The fee required by 2.6 for each class;
(c) The additional fee required by 2.6 for each class if the renewal
application is filed during the six-month grace period set forth in
section 9(a) of the Act;
(d) If the registrant is not domiciled in the United States, the name
and address of a United States resident on whom notices or process in
proceedings affecting the registration may be served; and
(e) If the renewal application covers less than all the goods or
services in the registration, a list of the particular goods or services
to be renewed.
(f) If at least one fee is submitted for a multi-class registration,
but 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.
B. Time for Filing Application for Renewal
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The application for renewal may be filed within one year before the
expiration of the registration. There is a grace period of six months
after the expiration of a registration during which a renewal
application may be filed with payment of an additional grace period
surcharge. If no renewal application is filed before the end of the
grace period, the registration will expire. 15 U.S.C. 1059(a); 37
C.F.R. 2.182.
The renewal application may not be filed before the period specified in
9 of the Act. If an application for renewal is filed more than one year
before the expiration date of the registration, the Office will advise
the registrant that the renewal application is premature; of the
appropriate time period for filing a renewal application; that the fees
submitted will be held; and that the registrant may file a new
application at the appropriate time or may request a refund at any time.
The prematurely filed renewal application will be placed in the file. If
a timely renewal application is not filed before the end of the grace
period, the registration will be deemed expired and the fees refunded.
There is no deficiency surcharge for filing a timely substitute renewal
application.
C. Fees
1. Fee for Filing Application for Renewal
Under 9(a) of the Trademark Act, 15 U.S.C. 1059(a), and Trademark
Rule 2.183(b), 37 C.F.R. 2.183(b), a renewal application must include
the fee required by 2.6 for each class of goods or services for which
renewal is sought.
2. Grace Period Surcharge
Under 9(a) of the Trademark Act, 15 U.S.C. 1059(a), and Trademark
Rules 2.6 and 2.183(c), 37 C.F.R. 2.6 and 2.183(c), if the renewal
application is filed during the six-month grace period following
expiration of the registration, there is an additional grace period
surcharge for each class for which renewal is sought.
The grace period surcharge applies only if no filing was made within the
year before the expiration of the registration. Someone who files within
one year before the expiration of the registration, but corrects a
deficiency after expiration of the registration, will be subject to the
deficiency surcharge only. On the other hand, someone who files during
the grace period and cures a deficiency after expiration of the grace
period will be subject to both the grace period surcharge (for the
ability to file the renewal application during the grace period) and the
deficiency surcharge (for the ability to correct a deficiency after the
end of the grace period).
Currently, the grace period surcharge is $100 per class.
3. Deficiency Surcharge
Under 9(a) of the Trademark Act, 15 U.S.C. 1059(a), a "deficiency
surcharge" is required for correcting a deficiency after expiration of
the relevant deadline specified in 9 of the Act. If the renewal
application is filed within one year before the expiration of the
registration, a deficiency surcharge is required for correcting
deficiencies after expiration of the registration. If the renewal
application is filed during the grace period, a deficiency surcharge is
required for correcting deficiencies after expiration of the grace
period. See Trademark Rule 2.185, 37 C.F.R. 2.185, and IV(L) of this
Notice for further information regarding the procedures, deadlines and
fees for correcting deficiencies.
Only a single deficiency surcharge is required for correcting
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deficienc(ies) in a multi-class registration. Similarly, only a single
deficiency surcharge is required to correct several deficiencies within
one document. Currently, the deficiency surcharge is $100.
4. Processing Renewal Application Filed With Insufficient Fees
A renewal application that does not include sufficient fees to cover the
filing fee for all the classes to which the application pertains (and
the grace period surcharge, where applicable) is deficient. If the
renewal application is filed within one year before the expiration of
the registration, the deficiency may be corrected before expiration of
the registration for no fee, or after expiration of the registration
upon payment of the deficiency surcharge required by 9(a) of the Act.
If the renewal application is filed during the grace period, the
deficiency may be corrected before expiration of the grace period for no
fee, or after expiration of the grace period upon payment of the
deficiency surcharge required by 9(a) of the Act. See Trademark Rule
2.185, 37 C.F.R. 2.185, and IV(L) of this Notice for information
about the procedures, deadlines and fees for correcting deficiencies.
If the renewal application is accompanied by insufficient fees to cover
all the classes to which the renewal application pertains, and the
renewal application includes an authorization to charge additional fees
to a deposit account, the filing fee (and grace period surcharge, where
applicable) will be charged to the deposit account. If the deposit
account authorization is included with the renewal application as filed,
and the deposit account has sufficient funds to cover the fee(s) in
question, there is no fee deficiency and no deficiency surcharge is
required.
An authorization to charge fees to a deposit account with insufficient
funds to cover the fee is regarded as a deficiency.
If a check submitted as payment of a filing fee for a renewal
application is returned to the Office unpaid, this is also regarded as a
deficiency. In addition to the deficiency surcharge (where applicable),
there is a $50 fee for processing the returned check. 37 C.F.R.
1.21(m).
If at least one fee is submitted for a multi-class registration, but the
class(es) to which the fee(s) should be applied are not specified, the
Post Registration paralegal 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. 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. 37 C.F.R. 2.183(f).
D. Ownership
Section 9 of the Trademark Act, 15 U.S.C. 1059, and the Trademark
Rules of Practice, no longer require that a renewal application be filed
by the owner of the registration.
Therefore, if the renewal applicant is not the owner of record, the
Office will no longer require that the renewal applicant show continuity
of title from the original registrant before granting renewal.
However, registrations will be renewed in the name of the party who is
the owner of record of the registration, according to the TRAM
(Trademark Reporting and Monitoring) System. The registration will be
renewed in the name of the new owner only if the owner: (1) records an
assignment or other document evidencing change of title with the
Assignment Division of the Office; and (2) notifies the Post
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Registration Section of the Office at the time the renewal application
is filed that the document has been recorded with the Assignment
Division.
E. Execution of Renewal Application
Trademark Rule 2.183(a), 37 C.F.R. 2.183(a), requires that a renewal
application be signed by "the registrant or the registrant's
representative." Verification is not required.
Generally, the Office no longer questions the authority of the person
who signs a renewal application, unless there is an inconsistency in the
record as to the signatory's authority to sign. The renewal applicant
and/or the renewal applicant's attorney are in the best position to
determine who is the proper party to sign a renewal application.
Section 9 of the Act, 15 U.S.C. 1059, and the Trademark Rules of
Practice, no longer require that a renewal application be executed
within any particular time period. Therefore, the Office will accept
undated renewal applications, and renewal applications with a "stale"
date of execution.
F. Designation of Domestic Representative
Under 9(c) of the Trademark Act, 15 U.S.C. 1059(c), and Trademark
Rule 2.183(d), 37 C.F.R. 2.183(d), a renewal applicant who is not
domiciled in the United States must set forth the name and address of a
United States resident upon whom notices or process in proceedings
affecting the registration may be served. See TMEP 604.
A renewal application that does not designate a domestic representative
is deficient. If the renewal application was filed within one year
before the expiration of the registration, the designation of domestic
representative can be filed before expiration of the registration for no
fee, or after expiration of the registration upon payment of the
deficiency surcharge required by 9(a) of the Act. If the renewal
application was filed during the grace period, the designation of
domestic representative can be filed before expiration of the grace
period for no fee, or after expiration of the grace period upon payment
of the deficiency surcharge required by 9(a) of the Act. See Trademark
Rule 2.185, 37 C.F.R. 2.185, and IV(L) of this Notice for
information about the procedures and fees for correcting deficiencies.
G. Goods and/or Services Set Forth in Application for Renewal
1. Listing of Goods and/or Services Required Only for Partial Renewal
Neither the Trademark Act nor the Trademark Rules of Practice require a
listing of the goods or services in the registration if the renewal
application covers all the goods and services in the registration. Under
Trademark Rule 2.183(e), 37 C.F.R. 2.183(e), the renewal application
must include a list of the goods or services only if the renewal
application covers less than all the goods or services in the
registration.
2. No Goods or Services Listed
If no goods or services are specified in the renewal application, it
will be presumed that renewal is sought for all the goods or services in
the registration.
3. Some Goods or Services Listed
If the renewal application lists only some of the goods or services set
forth in the registration, it will be presumed that renewal is sought
for only the goods or services listed, and the goods or services omitted
from the renewal application will be deleted from the registration. If
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it is unclear whether the renewal applicant intends to delete the goods
or services, the Post Registration Section of the Office should contact
the renewal applicant to confirm that the goods or services are intended
to be deleted. If the renewal applicant did not intend to delete the
omitted goods or services, the renewal applicant may file a substitute
renewal application or supplemental statement requesting renewal for
additional goods or services. No deficiency surcharge will be required.
4. Goods or Services Not Listed in Registration Should Not Be Listed in
Renewal Application
Goods or services that are not listed in the registration should not be
listed in the renewal application. If goods or services not listed in
the registration are set forth in the renewal application, the Post
Registration Section of the Office will notify the registrant that these
items may not be added.
H. Use in Commerce or Excusable Nonuse
Section 9 of the Trademark Act, 15 U.S.C. 1059, no longer requires
that a renewal application include an affidavit or declaration of use in
commerce, a specimen of use for each class of goods or services, or a
showing that any nonuse is due to special circumstances that excuse such
nonuse, and not due to any intention to abandon the mark.
I. Specimens
Section 9 of the Trademark Act, 15 U.S.C. 1059, and the Trademark
Rules of Practice do not require that a renewal applicant submit a
specimen showing use of the registered mark.
J. Notice of Renewal
Upon examination, if the renewal application is found acceptable, the
Office will send the registrant a notice that renewal has been granted.
No further confirmation will be sent. Effective October 30, 1999, the
Office will no longer issue an Updated Registration Certificate (URC)
for each renewed registration.
K. Response to Office Action
If the renewal application is not acceptable, the Office will notify the
renewal applicant of the reasons for refusal. 15 U.S.C. 1059(b); 37
C.F.R. 2.184(b). Under Trademark Rule 2.184(b), 37 C.F.R. 2.184(b),
a response to a refusal of renewal must be filed within six months of
the mailing date of the Post Registration paralegal's Office Action, or
before the expiration date of the registration, whichever is later, or
the registration will expire.
The renewal applicant may correct deficiencies if the requirements of
Trademark Rule 2.185, 37 C.F.R. 2.185, are met. See IV(L) of this
Notice for information about the procedures and fees for correcting
deficiencies.
L. Correction of Deficiencies
1. Correcting Deficiencies in Renewal Applications Filed Within the Year
Before the Expiration Date of the Registration
If the renewal application is filed within one year before the
expiration date of the registration, deficiencies may be corrected
before the expiration date without paying a deficiency surcharge, or
after the expiration date with payment of the deficiency surcharge
required by 9(a) of the Act. Trademark Rule 2.185(a)(1), 37 C.F.R.
2.185(a)(1).
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The deficienc(ies) must be cured within the set period for response to
the Post Registration paralegal's Office Action, i.e., within six months
of the mailing date of the action, or before the expiration date of the
registration, whichever is later. Trademark Rule 2.184(b), 37 C.F.R.
2.184(b).
2. Correcting Deficiencies in Renewal Applications Filed During the
Grace Period.
If the renewal application is filed during the grace period,
deficiencies may be corrected before the end of the grace period without
paying a deficiency surcharge, or after the expiration of the grace
period with payment of the deficiency surcharge required by 9(a) of
the Act. Trademark Rule 2.185(a)(2), 37 C.F.R. 2.185(a)(2).
The deficienc(ies) must be cured within six months of the mailing date
of the Office Action. Trademark Rule 2.184(b), 37 C.F.R. 2.184(b).
3. Untimely Filing Cannot be Cured
If the renewal application is not filed before the end of the grace
period set forth in 9(a) of the Act, 15 U.S.C. 1059(a), the
registration will expire. The untimely filing of a renewal application
cannot be cured. 37 C.F.R. 2.182 and 2.185(b).
M. Petition to Commissioner
The registrant may petition the Commissioner to review the Office action
on a renewal application under Trademark Rules 2.146(a)(2) and 2.186(b),
37 C.F.R. 2.146(a)(2) and 2.186(b). The petition must be filed
within six months of the mailing date of the action. A petition fee is
required by 37 C.F.R. 2.6 and 2.146(c).
A response to the initial refusal to renew a registration is required
before filing a petition to the Commissioner, unless the Office action
directs otherwise. 37 C.F.R. 2.186(a).
Under Trademark Rule 2.146(j), 37 C.F.R. 2.146(j), if the Commissioner
denies a petition, the petitioner may file a request for reconsideration
within two months of the mailing date of the decision denying the
petition. A second petition fee must be paid with the request for
reconsideration.
V. AFFIDAVIT OR DECLARATION OF INCONTESTABILITY UNDER SECTION 15
A. Type of Commerce No Longer Required
The affidavit or declaration of incontestability under 15 of the
Trademark Act, 15 U.S.C. 1065 ( 15 affidavit), need not specify the
type of commerce (e.g. interstate) in which the mark is used.
B. Persons Who May Sign Affidavit or Declaration
The 15 affidavit must be signed and verified (sworn to) or supported
by a declaration under 2.20 by a person properly authorized to sign on
behalf of the owner of the registration. A "person who is properly
authorized to sign on behalf of the owner" is: (1) a person with legal
authority to bind the owner; or (2) a person with firsthand knowledge of
the facts and actual or implied authority to act on behalf of the owner;
or (3) an attorney as defined in 37 C.F.R. 10.1(c) who has an actual
or implied written or verbal power of attorney from the owner.
Generally, the Office no longer questions the authority of the person
who signs a 15 affidavit, unless there is an inconsistency in the
record as to the signatory's authority to sign.
VI. COMBINED FILINGS
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A. Section 8 Affidavit Combined with Section 9 Renewal Application
Under Trademark Rule 2.166, 37 C.F.R. 2.166, an affidavit or
declaration under 8 of the Act and a renewal application under 9 of
the Act may be combined into a single document, provided that the
document meets the requirements of both 8 and 9 of the Act.
The filing fee for the combined 8 and 9 filing is the sum of the
cost of the individual filings. For example, if the filing fee for the
8 affidavit is $100 per class, and the filing fee for the renewal
application is $300 per class, the filing fee for the combined 8 and 9
document is $400 per class.
If the combined 8 and 9 document is filed during the grace period,
the filing fees per class and the grace period surcharge per class must
be paid for both the 8 affidavit and the 9 renewal application.
Example: A registration expires on December 1, 1999. A combined 8
and 9 document is filed January 1, 2000, during the six-month grace
period. The proper fees are as follows: (1) filing fee for the 8
affidavit, per class, (2) grace period surcharge for the 8 affidavit,
per class, (3) filing fee for the 9 renewal application, per class,
and (4) grace period surcharge for the 9 renewal application, per
class.
Failure to include the proper fees is a deficiency that may require a
deficiency surcharge. See III(L) and IV(L) of this Notice for
information about the procedures, deadlines, and fees for correcting
deficiencies.
Only a single deficiency surcharge is required for curing deficienc(ies)
in a combined 8 and 9 filing, even if both the 8 affidavit and the
9 renewal application are deficient. Similarly, only a single
deficiency surcharge is required to correct several deficiencies within
one document.
The Office provides a form for a combined "Section 8 and 9" filing. The
form is available on the Office's home page at www.uspto.gov.
B. Combining Section 8 Affidavit With Section 15 Affidavit
Under Trademark Rule 2.168(a), 37 C.F.R. 2.168(a), the affidavit or
declaration filed under 15 of the Act may be combined with the
affidavit or declaration required by 8 of the Act, if the affidavit or
declaration meets the requirements of both 8 and 15.
The filing fee for the combined 8 and 15 affidavit or declaration is
the sum of the cost of the individual filings. For example, if the
filing fee for the 8 affidavit is $100 per class, and the filing fee
for the 15 affidavit is $100 per class, the filing fee for the
combined affidavit or declaration under 8 and 15 is $200 per class.
If the combined 8 and 15 affidavit is filed during the 8 grace
period, the grace period surcharge per class for the 8 affidavit must
be paid. There is no "grace period surcharge" for a 15 affidavit.
If a combined 8 and 15 affidavit is filed, and the 8 affidavit is
deficient, the deficiency may be corrected before expiration of the
relevant deadline set forth in 8 of the Act for no fee, or after
expiration of the relevant deadline upon payment of the deficiency
surcharge required by 8(c)(2) of the Act. See Trademark Rule 2.164, 37
C.F.R. 2.164, and III(L) of this Notice for information about the
procedures, deadlines, and fees for correcting deficiencies in a 8
affidavit. There is no "deficiency surcharge" for the 15 affidavit.
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The Office provides a form for a combined "Section 8 and 15" affidavit
or declaration. The form is available on the Office's home page at
www.uspto.gov.
VII. SIGNATURE OF REQUESTS TO AMEND, CORRECT, OR SURRENDER A REGISTRATION
A request for amendment or correction of a registration under 7 of the
Trademark Act, 15 U.S.C. 1057, must be signed and verified (sworn to)
or supported by a declaration under 2.20 by the registrant. 37 C.F.R.
2.173 and 2.175. An application to surrender a registration must be
signed by the registrant. 37 C.F.R. 2.172. The following persons are
authorized to sign on behalf of the registrant: (1) a person with legal
authority to bind the owner; or (2) a person with firsthand knowledge of
the facts and actual or implied authority to act on behalf of the owner;
or (3) an attorney as defined in 37 C.F.R. 10.1(c) who has an actual
or implied written or verbal power of attorney from the owner.
Generally, the Office no longer questions the authority of the person
who signs on behalf of the registrant, unless there is an inconsistency
in the record as to the signatory's authority to sign.
VIII. UPDATING AUTOMATED RECORDS TO SHOW THE STATUS OF REGISTRATIONS
The Office's automated records will be regularly updated to indicate the
status of registrations as follows:
(1) In the case of a registration for which an affidavit of use under
8 of the Act, 15 U.S.C. 1058, is due, if Office records show that
the registrant has not filed a 8 affidavit within one year after the
filing due date, the automated records will be updated to indicate that
the registration is cancelled. See III(B) of this Notice regarding the
due dates for 8 affidavits.
(2) In the case of a registration for which a renewal application under
9 of the Act, 15 U.S.C. 1059, is due, if Office records show that the
registrant has not submitted a renewal application one year after the
expiration of the previous term, the automated record will be updated to
indicate that the registration is expired.
(3) If the applicant has submitted a timely 8 affidavit and/or
application for renewal, the Office records will be updated to indicate
receipt of the paper and the action taken on the paper.
October 29, 1999 ROBERT M. ANDERSON
Acting Assistant Commissioner
for Trademarks
[1228 TMOG 187]