(157) Questions and Answers
I. New Trademark Application Filing Requirements
The Trademark Law Revision Act of 1988, which was implemented on Nov.
16, 1989, contains the most significant amendments to the Lanham Act
since its enactment in 1947. The Patent and Trademark Office has
significantly revised the Trademark Rules of Practice to reflect the
changes in the law. Additionally, the PTO has issued a supplement to
Revision 7 of the Trademark Manual of Examining Procedure that
reflects the changes in the law, rules, and Office policy and is
available from the Government Printing Office.
The PTO's Office of the Assistant Commissioner for Trademarks has
prepared a series of "Questions and Answers" about Office practice
under the new law and rules. This first in the series concerns the
requirements for the initial filing of an application. Subsequent
"Questions and Answers" will address various examination issues, the
statement of use, requests for extension of time to file the
statement of use, the amendment to allege use and notice of
allowance.
Q. What is an intent-to-use application?
A. The Trademark Law Revision Act of 1988 became effective on Nov.
16, 1989. It amended the Trademark Act to add a new basis for filing
an application for Federal trademark registration on the Principal
Register. A party with a bona fide intention to use a specific mark
in commerce in relation to specific goods or services may now file an
application. However, before the mark will be registered, the
applicant must use the mark in commerce in connection with the
specified goods or services and submit specimens evidencing use and a
verified allegation concerning that use.
First, an intent-to-use application will be examined in relation to
all substantive and procedural requirements, except use-related
issues, and, if acceptable, published for opposition. If there is no
opposition, or any opposition is resolved in the applicant's favor,
the applicant will receive a notice of allowance.
The applicant must submit a statement of use within six months of
that date, or request a six-month extension of time. The applicant
may then request up to four additional six-month extensions of time
in which to file the statement of use. The grant of such extensions
is predicated, in part, upon the applicant's showing of "good cause"
as to why the mark has not yet been used. Thus, an applicant may have
up to 36 months from the mailing of the notice of allowance within
which to file a statement of use. (See Trademark Rules 2.88 and 2.89
concerning the requirements for a statement of use and extension
requests.) Upon filing, the statement of use will be examined and, if
accepted, the mark will register.
Q. How does an intent-to-use application differ from an application
based upon use in commerce?
A. The primary difference between the two types of applications is
the basis for filing. Because of that difference, the filing
requirements and processing of the two types of applications differ.
A party may not file an application based upon use of a mark in
commerce until after that use has occured. Instead of asserting a
bona fide intent to use the mark in commerce, the use-based
application must include allegations concerning dates of use and
specimens evidencing use as a filing requirement. The use-based
application will be examined and, if acceptable, published for
opposition. If the mark is not opposed, or any opposition is resolved
in the applicant's favor, the mark will register. This procedure
differs from the application procedure for an intent-to-use
application, as noted above.
However, in all other respects the legal reasons for refusing
registration (such as descriptiveness, likelihood of confusion, etc.)
and the procedural requirements (such as specificity of
identifications of goods, signature by applicant, etc.) are exactly
the same for the two types of applications. Additionally, upon
registration, the filing date of any application on the Principal
Register is a constructive date of first use of the mark.
Q. What are the requirements for filing an intent-to-use application?
A. A complete intent-to-use application consists of a written
application, a drawing of the mark, and the required filing fee for
each class of goods. The requirements for a written intent-to-use
application are set forth in Trademark Rule 2.33. The application
must be made to the Commissioner of Patents and Trademarks, must
include a request for registration, and must be signed and verified
(sworn to) by the applicant.
The application must specify: the name and address of the applicant;
information about the applicant's legal entity; a claim that the
applicant has a bona fide intention to use the mark in commerce; the
particular goods or services on or in connection with which the
applicant has a bona fide intention to use the mark; the class of
goods or services according to the official classification, if known
to the applicant; and the intended mode, manner or method of
applying, affixing or otherwise using the mark on or in connection
with the goods or services specified.
The applicant must sign a verfication of the application which
includes, in part, averments that the applicant is believed to be
entitled to use the mark sought to be registered; that to the best of
the declarant's knowledge and belief no other entity 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 entity, to cause confusion, or to cause
mistake, or to deceive; and that the facts set forth in the
application are true.
Please note that Rule 2.33 differs form section 1(b) of the Act
because the rule requires the above verification to include a
statement that "the applicant is the owner of the mark" rather than
that "the applicant believes it is entitled to use the mark." This
specific requirement of the rule should be disregarded to the extent
that it differs from the statute. The rule will be amended in due
course.
Q. What are the minimum requirements for receipt of a filing date
for an intent-to-use application?
A. Trademark Rule 2.21 sets forth the minimum requirements for
receipt of a filing date for intent-to-use applications, as well as
other types of applications. These minimum formal requirements do not
include all of the requirements which may ultimately be necessary to
obtain registration, but merely those which must be satisified to
receive a filing date.
An intent-to-use application must include the following elements in
order to receive a filing date: the name of the applicant, the name
and address to which communications can be directed, a drawing of the
mark substantially meeting all of the requirements of Trademark Rule
2.52, an identification of goods or services, a claim of a bona fide
intention to use the mark in commerce, a verification or declaration
under Trademark Rule 2.33(b) signed by the applicant, and the
required filing fee for at least one class of goods or services. If
an application lacks any one of these elements, it will be denied a
filing date and all papers will be returned to the applicant as
informal.
Q. Is there any change in the requirements for applications based
upon either use in commerce or Section 44 of the Trademark Act?
A. Yes. Effective Nov. 16, 1989, an application must be signed in
order to receive a filing date. Trademark Rule 2.21 has been amended
to require that an application include a verification or declaration
in accordance with Trademark Rule 2.33(b), signed by the applicant,
to receive a filing date. This requirement applies to all
applications filed after Nov. 16, 1989, regardless of the basis for
filing. Unsigned applications will be returned to the applicant as
informal. A verified assertion, signed by the applicant, of the basis
for filing, is believed to be essential because of the importance of
the filing date as a constructive date of first use of the mark for
registration of the Principal Register.
All other filing requirements for use-based applications remain
unchanged.
Concerning Section 44 which permits, under certain circumstances, the
filing of an application in the United States based upon an
application or registration in another country, there are two
additional changes. Effective Nov. 16, 1989, an application filed
under Section 44(d) or Section 44(e) of the Trademark Act must
include an allegation that the applicant has a bona fide intention to
use the mark in commerce. However, Section 44 applicants will still
be exempt from any use requirement as a condition to registration. In
other words, Section 44 applicants are not required to file specimens
evidencing use of the mark or an allegation of use in order to obtain
registration.
As a requirement for obtaining a filing date, an application filed
pursuant to Section 44(d) must include in the heading of the drawing
the date of the foreign filing which forms the basis of its priority
claim.
Q. Who can sign an application?
A. There are two issues that may arise with respect to the signature
on an application: (1) whether the signature is sufficient for
receipt of a filing date, and (2) whether the signature is that of
the applicant.
The following persons can properly sign an application for an
applicant: an individual applicant, a general partner of a
partnership, or an officer of a corporation or association.
If an application is signed by an improper party, but the improper
party had "color of authority" to act for applicant, the Office will
require re-execution of the application, but will not invalidate the
filing date. (See Trademark Rule 2.71(c) concerning "color of
authority.") The Examining Attorney will determine whether the
signatory had color of authority to sign the application for the
applicant. A person has such color of authority if he or she has
firsthand knowledge of the relevant facts and implied or actual
authority to act on behalf of the applicant. A general manager may
qualify under this standard. The applicant's attorney will not
ordinarily be regarded as possessing color of authority to sign on
behalf of a client. Attorneys, who are not employees of a corporate
applicant, do not usually have firsthand knowledge of a client's
business or the authority to act on behalf of a client, other than as
legal representative.
If the signature is acceptable for the purpose of receiving a filing
date (i.e., if the signatory had color of authority), but is not the
signature of the applicant, a substitute verification by the
applicant of the facts in the application will be required. If the
person who signed did not have even color of authority, the Examining
Attorney will refuse registration because the applicant did not meet
the minimum requirements of Rule 2.21 for receipt of a filing date.
An application signed by a party without color of authority is void
ab initio and cannot be corrected by submission of a substitute
declaration.
Q. Are "fax" copies of signatures acceptable?
A. The Trademark Operation does not have the equipment to accept
documents transmitted by "fax" for purposes of receiving a filing
date. However, the signature on a properly filed application may be a
photocopy or "fax" copy of the original signature. The subsequent
submission of the original document will be required by the Examining
Attorney.
Q. What is the significance of the filing date?
A. Section 7 of the Trademark Act has been amended to provide that
the filing date of an application of the Principal Register is a
constructive date of first use of the mark in commerce, provided the
application matures into a registration. Thus, filing affords the
applicant nationwide priority over others, with the exception of
parties who had used the mark before the applicant's filing date,
parties who had filed before the applicant, or parties who are
entitled to an earlier priority filing date based upon the filing of
a foreign application under Section 44(d) of the Trademark Act.
Q. Can an application be based upon both use and intent-to-use?
A. No. Section 1(a) of the Trademark provides for the filing of
applications based upon actual use in commerce, while Section 1(b)
provides for the filing of applications based upon intent-to-use.
Trademark Rule 2.33(d) states that an applicant may not file under
both Sections 1(a) and 1(b) of the Act in a single application, nor
may an applicant in an application under Section 1(a) of the Act
amend to seek registration under Section 1(b). Any application filed
under both Sections 1(a) and 1(b) of the Trademark Act will be denied
a filing date and returned to the applicant.
Q. Can an applicant assert both a Section 44 claim and an
intent-to-use or use claim in the same application?
A. Yes. Section 44(d) provides for applications based upon an
application for registration filed in an applicant's country of
origin, and section 44(e) provides for applications based upon a
registration in applicant's country of origin. An application may be
based upon both a foreign application or registration under Section
44 and either use in commerce under Section 1(a) or intent-to-use
under Section 1(b).
Q. Since a Section 44 application contains a statement of a bona fide
intent to use the mark in commerce, isn't this also an intent-to-use
application?
A. No. The statement of a bona fide intent to use a mark is one of
the statutory requirements for a Section 44 filing and the PTO will
not consider the mere inclusion of such a statement to constitute the
assertion of a basis for filing under Section 1(b) of the Act. In
other words, once the requirements for Section 44 are met and the
application successfully completes the opposition period, the mark
will register (rather than a notice of allowance issuing in the
application).
A Section 44 applicant may also assert an intent-to-use basis by
explicitly stating, after its statement of a bona fide intent to use
the mark in commerce, that it is also asserting a Section 1(b) basis
for filing.
Q. Can an intent-to-use application be filed on the Supplemental
Register?
A. No. An intent-to-use application initially filed on the
Supplemental Register will be denied a filing date and returned to
the applicant. No amendment of an intent-to-use application to the
Supplemental Register will be accepted until after use has commenced
and after the filing and acceptance of an amendment to allege use or
a statement of use. In such a case, the effective filing date of the
application will be changed to the date on which the applicant filed
the amendment to allege use under Section 1(c) of the Trademark Act
or the statement of use under Section 1(d) of the Act.
Q. Must an intent-to-use applicant begin using the mark before a
registration will issue?
A. Yes. An intent-to-use application may not mature into a
registration until use of the mark has begun. After use begins, the
applicant must verify such use in either (1) an amendment to allege
use or (2) a statement of use. In addition, applicant must submit
specimens evidencing use and a fee of $100 per class of goods or
services in the application.
Q. What is the difference between an amendment to allege use and a
statement of use?
A. The primary difference between the amendment to allege use and the
statement of use is the time of filing. The amendment to allege use
may be filed during initial examination of the application, i.e.,
after the filing date of the application and before the date on which
the Examining Attorney approves the mark for publication. If the
amendment to allege use is accepted, the application will then be
processed for publication and issuance in the same manner as a
use-based application.
If no amendment to allege use is filed before the Examining Attorney
approves the mark for publication, the mark will be published for
opposition. After the successful completion of the opposition period,
the PTO will issue a notice of allowance. The applicant will then
have six months from the date of the notice of allowance in which it
must file a statement of use, or file a written request for an
extension of time in which to file the statement of use. Successive
extensions of time, aggregating no more than 36 months from the
notice of allowance, may be obtained pursuant to Trademark Rule 2.89.
JEFFREY M. SAMUELS
Nov. 27, 1989 Assistant Commissioner
for Trademarks
[1110 TMOG 622]