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Examination Guide 3--99

UNITED STATES DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

OFFICE OF ASSISTANT COMMISSIONER FOR TRADEMARKS

EXAMINATION GUIDE NO. 3-99

Effective Date: October 30, 1999

 Contents 


 


I. Introduction *

II. Application Filing Date *

III. Basis for Filing *

IV. Signature *

V. Specimens of Use *

VI. Method of Use or Intended Use of a Mark No Longer Required *

VII. Type of Commerce No Longer Required *

VIII. Drawings *

IX. Amendment of Marks: Material Alteration *

X. Ownership *

XI. Certification or Certified Copy of Foreign Registration *

XII. Request for Extension of Time to File Statement of Use *

XIII. Allegation of "Ownership" by Intent-to-Use Applicant *

XIV. Status of Registrations *

XV. Petitions to Revive Abandoned Applications *

XVI. Powers of Attorney *

XVII. Assignments *

 I. Introduction

This exam guide discusses the changes to examination of applications for registration of marks made by the Trademark Law Treaty Implementation Act of 1998 (TLTIA), Pub. L. No. 105-330, 112 Stat. 3064 (15 U.S.C. §1051), and the "Trademark Law Treaty Implementation Act Changes" to the Rules of Practice of Procedure, published in the Federal Register at 64 FR 48900 (Sept. 8, 1999) and in the Official Gazette at 1226 TMOG 103 (Sept. 28, 1999).

These changes apply to all applications pending on, or filed on or after, October 30, 1999.

 II. Application Filing Date

 A. Requirements for Receipt of a Filing Date On or After October 30, 1999

Applications filed on or after October 30, 1999 will receive a filing date if the application contains the following items:

(1) the name of the applicant;

(2) a name and address for correspondence;

(3) a clear drawing of the mark;

(4) a listing of the goods or services; and

(5) the filing fee for at least one class of goods or services.

37 C.F.R. §2.21.

1. Complete Application Preferred

Under the revised rule, an applicant is required to submit only minimal information to receive a filing date. However, the Office prefers applicants to submit complete applications. See 37 C.F.R. §2.32 for a list of the requirements for a complete application.

2. Clear Drawing of the Mark

If the application includes two or more drawings displaying different marks, the application will be denied a filing date. See TMEP §807. The revised rule requires submission of "a clear drawing of the mark." 37 C.F.R. §2.21(3). An application that includes two or more drawings displaying different marks does not meet this requirement. See §VIII of this exam guide for further information on drawings.

3. Listing of Goods and Services

The Office recommends that the goods and services be listed by international class in the body of the application. However, the application will receive a filing date if the goods and services appear on the drawing page or in the body of the application. See §VIII(B) of this exam guide for additional information.

The Office will continue to deny a filing date if the applicant fails to identify recognizable goods or services in an application. See TMEP §804.02.

B. Transition: Applications Filed Before October 30, 1999

If an application was filed before October 30, 1999, the application must meet the minimum filing date requirements that were in effect on the date of filing. See TMEP §704 for a list of these requirements.

Some applications filed before October 30, 1999 will not be reviewed for compliance with minimum filing requirements until on or after October 30, 1999. In these cases, if the applicant failed to meet the minimum requirements in effect on the date of filing, but did submit the minimum filing requirements in effect on October 30, 1999, the following procedures apply:

  • The application will be given a filing date of October 30, 1999.
  • The Pre-Examination Unit will issue a "Notice of Accordance of October 30, 1999 Filing Date," stating that: (1) the application did not meet the minimum filing requirements as of the date the application was received, specifying the reason; and (2) the application is given a filing date of October 30, 1999 because it met the filing date requirements in effect on that date.
  • If the applicant believes that it was entitled to a filing date before October 30, 1999, the applicant may file a petition to the Commissioner, within two months of the mailing date of the notice denying the filing date.

Informal Applications Erroneously Referred to the Examining Attorney

Some applications filed before October 30, 1999, which do not meet the filing date requirements in effect on the date of filing but do meet the minimum filing requirements as of October 30, 1999, may have been erroneously given a filing date prior to October 30, 1999, and referred to the law office for examination.

In this situation, if the examining attorney discovers the error before issuing an action in the case, the examining attorney must return the application to the Office of Trademark Services to follow the procedure outlined above.

If the examining attorney discovers the error after issuing an action in the case, the examining attorney must take the file to the Office of Trademark Services to have the filing date changed to October 30,1999, and a corrected filing receipt issued. In such a case, the examining attorney must conduct a new search of the Office records for conflicting marks. The examining attorney must issue an Office action stating that the filing date has changed, explaining the reason.

 III. Basis for Filing

A. Applicant Must Establish At Least One Basis

An applicant is no longer required to specify the basis for filing in order to receive a filing date. If the application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit each of the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all of the elements required for a particular basis, the examining attorney will issue a final Office action, assuming the application is otherwise in condition for final action. See 37 C.F.R. §2.34 for a list of the requirements for each basis.

 1. Section 44(d): Priority Claim Must Be Filed Within Six Months of Foreign Filing

The applicant must file a claim of priority within six months of the filing date of the foreign application. 37 C.F.R. §§2.34(a)(4)(i) and 2.35(e).

2. Applications Filed Without a Verified Statement

If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date.

If the basis is §1(a), the applicant must submit a verified statement that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date . 37 C.F.R. §2.34(a)(1)(i).

If the basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date . 37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii).

 3. Intent to Use Applications on the Supplemental Register

The Office will no longer deny filing dates to intent-to-use applications that seek registration on the Supplemental Register. Rather, the examining attorney should refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. The refusal will be withdrawn if the applicant submits an acceptable amendment to allege use. 37 C.F.R. §2.47(c).

B. Multiple Bases

1. Procedure for Asserting More Than One Basis

The applicant may claim more than one basis, provided that the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b). The applicant must clearly indicate that more than one basis is claimed, and must separately list each basis, followed by the goods or services for that basis. 37 C.F.R. §§2.34(b)(2) and 2.35(f). The applicant may assert different bases for different classes, and may also assert different bases as to different goods or services within a class.

2. Applicant May File Under Both §1(a) and §1(b) in a Single Application

The revised rules permit an applicant to file under both §1(a) and §1(b) in a single application. The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in a single application, but the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services. This can occur in either a single or multi-class application. 37 C.F.R. §2.34.

3. Examination of Specimens of Use in a Multi-Basis Application

If the applicant claims use in commerce in addition to another basis but does not specify which goods or services are covered by which basis, the Office may defer examination of the specimens until the applicant identifies the goods or services for which use is claimed. A proper examination of specimens requires consideration of the particular goods or services on or in connection with which the specimens are used.

 4. Allegation of Bona Fide Intention to Use Mark in Commerce Required in §44 Application Even if Use is Asserted

Any application filed under §44(d) or §44(e) must include a verified statement that the applicant has a bona fide intention to use the mark in commerce even if use in commerce is asserted in the application. See In re Paul Wurth S.A. , 21 USPQ2d 1631 (Comm'r Pats. 1991).

  5. Application May be Based on More Than One Foreign Registration

An application may be based on more than one foreign registration. The applicant must meet all requirements of the Act and rules for each foreign registration, and must specify which goods or services are covered by which foreign registration. If the applicant amends an application to rely on a different foreign registration, this is considered a change in basis.

6. Abandonment of Multi-Basis Applications

If an applicant fails to respond to an Office action or notice of allowance pertaining to only one basis of a multi-basis application, the entire application will be abandoned, unless the applicant has filed a request to divide, under 37 C.F.R. §2.87. If the failure to respond was unintentional, the applicant may file a petition to revive.

C. Amendments to Add or Substitute a Basis

 1. When Basis Can be Changed

Before Publication: An applicant may add or substitute a basis before publication, if the applicant meets all requirements for the new basis. 37 C.F.R. §2.35(a).

After Publication: After a mark has been published for opposition, the applicant may amend an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board (TTAB) to add or substitute a basis only if the applicant files a petition to the Commissioner. The mark must be republished. 37 C.F.R. §2.35(b); In re Monte Dei Maschi Di Siena , 34 USPQ2d 1415 (Comm'r Pats. 1995). Regarding the amendment of an application that is the subject of an inter partes proceeding before the TTAB, see 37 C.F.R. §2.133(a).

2. Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period

An applicant may add or substitute a §44(d) basis only within the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(e).

 3. Effect of Substitution of Basis on Application Filing Date

When the applicant substitutes one basis for another, the applicant will retain the original filing date, provided that the applicant has a continuing valid basis for registration. Unless there is contradictory evidence in the record, the Office will presume that there was a continuing valid basis for registration. 37 C.F.R. §2.35(c).

If the applicant properly asserts a §44(d) basis during the six-month priority period, the applicant will retain the priority filing date, no matter which basis for registration is established, provided that the applicant has a continuing valid basis for registration. 37 C.F.R. §2.35(c) and (d). This is a change in practice for applications that are initially based solely on §44(d).

If there is no continuing valid basis, the application is void, and registration will be refused. In this situation, the applicant cannot amend the filing date, and the Office will not refund the filing fee.    

4. Verification of Amendment Required

An applicant who adds or substitutes use in commerce under §1(a) as a basis must verify that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services covered by the §1(a) basis as of the filing date of the application.

An applicant who adds or substitutes §1(b), §44(d), or §44(e) as a basis must verify that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application, unless a verified statement of the applicant's bona fide intention to use the mark in commerce has already been filed with respect to all the goods or services covered by the new basis.  

5. Amendment From §1(a) to §1(b) Permitted

If a §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce as of the application filing date, the applicant may substitute §1(b) as a basis. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date.

6. Amendment From §44 to §1(b) Permitted

Amendment of the basis from §44 to §1(b) is also permitted. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date.

D. Deleting a Basis

If an applicant claims more than one basis, the applicant may delete a basis at any time, before or after publication. 37 C.F.R. §2.35(a). When the applicant deletes a basis, the applicant must also delete any goods or services covered solely by the deleted basis. 37 C.F.R. §2.35(g).

1. "Deletion" of §44(d) basis

If an application is based on §44(d) in addition to another basis, the applicant may elect not to perfect the §44(d) basis and still retain the priority filing date. The Office will not "delete" the §44(d) basis from the TRAM database merely because the applicant elects not to perfect the §44(d) basis; both the §44(d) filing basis and the other basis should remain in the TRAM database. Where the applicant "deletes" a §44(d) basis, the Office will presume that the applicant wants to retain the priority claim, unless the applicant specifically states that it wants to delete the claim of priority and instead rely on the actual filing date of the application at the PTO.

2. Deletion of §1(b) Basis After Publication

If the applicant wishes to delete a §1(b) basis after publication, the applicant must submit a written amendment requesting that the §1(b) basis be deleted. If a notice of allowance has issued, the amendment should be forwarded to the ITU Unit. The ITU Unit will enter the amendment, and take the necessary steps to delete the §1(b) basis and issue the registration, if appropriate. If the notice of allowance has not yet issued, the amendment should be forwarded to the Photocomposition Coordinators in the Publication and Issue Section of the Office. They will withdraw the notice of allowance, delete the §1(b) basis, and issue the registration, if appropriate.

 E. Review of Basis Prior to Publication

If an application claims more than one basis, the examining attorney must ensure that the file clearly and accurately shows which goods are covered by which basis before approving the application for publication. If there are any errors, the examining attorney must instruct the legal instruments examiner to correct the TRAM database.

 IV. Signature

A. Persons Who May Sign

The following persons may sign application papers on behalf of an applicant:

(1) a person with legal authority to bind the applicant; or

(2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; 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 applicant.

37 C.F.R. §2.33(a).

The revised rule applies to all applications for registration, amendments to allege use, statements of use, requests for extensions of time to file statements of use, and designations of domestic representatives pending on or after October 30, 1999.

Generally, the Office will no longer question 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 Office will presume that papers are properly signed. This applies to juristic persons as well as natural persons. In view of the broad definition of a "person properly authorized to sign on behalf of an applicant" in 37 C.F.R. §2.33(a), the fact that an application is signed by an entity other than the entity listed as applicant is not considered an inconsistency that would warrant an inquiry as to whether the verification was properly signed.

Example : If an application is filed by "ABC Company, Inc.," and the verification is signed by an officer of "XYZ Company, Inc.," the Office will presume that XYZ Company, Inc. is a related company properly authorized to sign on behalf of ABC Company, Inc.

If an attorney signs a verification on behalf of an applicant, the Office will not require a power of attorney or other documentation stating that the attorney is authorized to sign.

Someone who had "color of authority" to sign under prior law now has full authority to sign. Therefore, the "color of authority" provisions have been deleted from 37 C.F.R. §2.71.

B. Verification Must Be Filed Within a Reasonable Time After Date of Signing

If the verification for an application, an amendment to allege use, statement of use, or request for an extension of time to file a statement of use is not filed in the Office within a reasonable time after the date it is signed, the examining attorney must require a substitute verification. 37 C.F.R. §§2.33(c), 2.76(i), 2.88(k), and 2.89(h). See TMEP §803.04.

C. Verification of Statement of Use or Extension Request is Minimum Filing Requirement That Must be Met Before Deadline for Filing Statement of Use

Verification of a statement of use or request for an extension of time to file a statement of use is a minimum filing requirement that must be met before the expiration of the deadline for filing a statement of use. If the statement of use or extension request is unsigned, and the applicant does not file a substitute signed verification before the expiration of the deadline for filing the statement of use, the application will be abandoned. 37 C.F.R. §§2.88(e)(3), 2.89(a)(3), and 2.89(b)(3).

D. Examiner's Amendments and Priority Actions

The current practice is unchanged. If the applicant has an attorney, the examining attorney must speak to the applicant's attorney. If the applicant is pro se the examining attorney must speak to the applicant, e.g., an officer of the corporation. 37 C.F.R. §10.14(e).

 V. Specimens of Use

 A. Only One Specimen Required for Each Class

The revised rules only require one specimen of use for each class in an application or allegation of use. 37 C.F.R. §§2.56, 2.76(b)(2) and 2.88(b)(2). The Office no longer permits specimens to be removed from files. The public may make photocopies of the specimen.

This applies to all applications pending on or after October 30, 1999. Therefore, the examining attorney should withdraw any outstanding requirements for multiple specimens of use for each class.

 B. Bulky Specimens

A specimen of use must be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. 37 C.F.R. §2.56(d)(1). If an applicant submits a specimen that exceeds the size requirement (a "bulky specimen"), the Office will create a facsimile of the specimen that meets the requirements of the rule, insert it in the application file wrapper, and destroy the original bulky specimen. 37 C.F.R. §2.56(d)(2).

If the copy of the specimen created by the Office does not adequately depict the mark, the examining attorney will require a substitute specimen that meets the size requirements of the rule, together with an affidavit or declaration verifying the use of the substitute specimen. See 37 C.F.R. §2.59 and TMEP §905.10 regarding affidavits supporting substitute specimens.

In the absence of non-bulky alternatives, the Office will continue to accept specimens consisting of videotapes, audiotapes, CDs, computer diskettes, and similar materials where there are no non-bulky alternatives, and the submission is the only means available for showing use of the mark. 37 C.F.R. §2.56(d)(3).

 VI. Method of Use or Intended Use of a Mark No Longer Required

The applicant is no longer required to specify the method or manner of use of the mark, in applications based on §§1(a) or 1(b) of the Act, or allegations of use filed under §§1(c) and 1(d) of the Act. This applies to all applications pending on or after October 30, 1999. Therefore, the examining attorney may withdraw any outstanding requirements related to the applicant's method or intended method of use of a mark. However, the examining attorney has the discretion under 37 C.F.R. §2.61(b) to inquire as to the method or intended method of use of the mark, if this information is needed to properly examine the application. See In re Page , 51 USPQ2d 1660, 1665 (TTAB 1999).

 VII. Type of Commerce No Longer Required

The applicant is no longer required to specify the type of commerce in which the mark is used, or intended to be used, in applications based on §1(a) or §1(b) of the Act, or allegations of use filed under §§1(c) and 1(d) of the Act.

This applies to all applications pending on or after October 30, 1999. Therefore, the examining attorney should withdraw any outstanding requirement that the applicant specify the type of commerce in which a mark is used.

The Office will presume that an applicant who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that Congress can regulate, unless there is contradictory evidence in the record.

If the applicant states that the mark is in use a type of commerce that cannot be regulated by Congress (e.g., "intrastate commerce"), the examining attorney must advise the applicant that this is not an acceptable type of commerce, and require that the applicant either submit a verified statement that "the mark is in use in commerce that can be regulated by Congress," or amend the basis of the application to a bona fide intention to use the mark in commerce under §1(b) of the Act.

 VIII. Drawings

 A. Separate Drawing Page No Longer Required

The Office recommends that the applicant submit a drawing of the mark on a separate page from the written application. See guidelines in 37 C.F.R. §2.52. However, a separate drawing page is no longer mandatory.

Instead of a drawing page, an applicant may include a drawing of the mark embedded in the application. The drawing might appear either in the heading of the application or in the body of the application. However, marks depicted on the specimens or in the foreign registration certificate will not be considered a drawing. If there is no separate drawing page, the examining attorney must review the application to determine what the mark is. If an embedded drawing meets the requirements of 37 C.F.R. §§ 2.51 and 2.52, the examining attorney should accept it and not require a substitute drawing.

 B. Drawing No Longer Considered Separate Element

Prior to October 30, 1999, an applicant was required to submit a separate drawing page in order to receive a filing date, and the drawing page was considered a separate element that was not part of the written application. TMEP §801. The Office would look to the drawing to determine what constituted the mark. In re Tetrafluor Inc. , 17 USPQ2d 1160 (Comm'r Pats. 1990). The written application controlled for all other purposes. The applicant was required to set forth the identification of goods/services and basis for filing within the four corners of the written application in order to receive a filing date. TMEP §804.02.

To determine the scope of the identification of goods or services for purposes of permissible amendments, the Office would consider only the identification of goods or services set forth in the written application. TMEP §804.02. If the written application included an identification of goods or services, and additional goods or services were listed on the drawing page, the goods or services listed only on the drawing page were not considered part of the identification of goods/services. The applicant could not amend the application to add the goods or services listed on the drawing if the amendment would broaden the scope of the goods or services listed in the written application.

Effective October 30, 1999, a separate drawing page is encouraged, but no longer required. See §VIII(A) of this exam guide. Therefore, for applications filed on or after October 30, 1999, if the applicant submits a separate drawing page, this page will be considered part of the written application, not a separate element. The application will receive a filing date if the identification of goods or services appears only on the drawing page. If the written application includes an identification of goods or services, and additional goods or services are listed on the drawing page, the additional goods/services listed on the drawing page will be considered part of the identification of goods/services in the written application. However, goods or services referenced on the specimens or on the foreign registration certificate will not be considered part of the identification of goods/services.

For applications filed before October 30, 1999, the drawing page will still be considered a separate element. The Office will continue to look only to the drawing to determine what constitutes the mark, and only to the written application to determine the scope of the identification for purposes of permissible amendments.

C. Color Drawings

 1. Black and White Drawing Required

The Office will no longer deny a filing date if the drawing of the mark is in color. However, the Office will not publish marks or issue registrations in color. The applicant must submit a black and white drawing before the mark can be approved for publication, or for issuance on the Supplemental Register. 37 C.F.R. §2.52(a)(2)(i).

Thus, if the applicant submits a color drawing, the examining attorney must require submission of a black and white drawing. If the examining attorney believes that a photocopier can produce an acceptable black and white drawing, the examining attorney may ask the applicant for permission to make a photocopy of the drawing. The examining attorney should make an appropriate note to the file.

 2. Use of Color Lining No Longer Required

Prior to October 30, 1999, an applicant who wanted to show color in a mark was required to use the Office's color lining system. See prior 37 C.F.R. §2.52(e). These color linings have been deleted from the rules. However, until further notice, the Office will continue to accept drawings that show color by using the color linings. If a drawing contains lining, the applicant must still submit a statement explaining what colors are designated by the lining. TMEP §807.06(a).

 3. New Rule: Description of Color Required

If a mark includes color, unless the applicant uses color lining (see §VIII(C)(2) of this exam guide), the applicant must submit a black and white drawing of the mark accompanied by a statement explaining where the color or colors appear in the mark and the nature of the color(s). 37 C.F.R. §2.52(a)(2)(v). If the color is applied only to a portion of the mark, the description must indicate the specific portion. Similarly, if the mark includes gradations of color, this should be stated in the description of the mark.

In addition to the required written description of the color contained in a mark, an applicant may include additional information about the color in the written description by referring to a commercial color identification system to describe color. The Office will not endorse or recommend any one commercial color identification system.

 D. Broken Lines to Show Placement

If necessary to adequately depict the commercial impression of the mark, the examining attorney may require the applicant to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears. The applicant must also use broken lines to show any other matter not claimed as part of the mark. The revised rule requires that for any drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must include in the body of the application a written description of the mark and explain the purpose of the broken lines. 37 C.F.R. §2.52 (a)(2)(ii).

 E. Three Dimensional Marks

If the mark has three-dimensional features, the applicant must include a description of the mark indicating that the mark is three-dimensional, and the applicant must submit a drawing that depicts a single rendition of the mark. 37 C.F.R. §2.52(a)(2)(iii). If the applicant believes that its mark cannot be adequately depicted in a single rendition, the applicant may file a petition to the Commissioner requesting that the rule be waived.

 F. Marks With Motion

If the mark has motion, the applicant may submit a drawing that depicts a single point in the movement, or the applicant may submit a square drawing that contains up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also submit a written description of the mark. 37 C.F.R. §2.52(a)(2)(iv).

 G. Sound, Scent, and Non-Visual Marks

The applicant is not required to submit a drawing if the applicant's mark consists only of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant must submit a detailed written description of the mark. 37 C.F.R. §2.52(a)(3).

 H. Description of Mark Required if Drawing Cannot Adequately Depict all Significant Features of Mark

If a drawing cannot adequately depict all significant features of the mark, the applicant must also submit a written description of the mark. 37 C.F.R. §2.52(a)(2)(vi).

 IX. Amendment of Marks: Material Alteration

Amendments which materially alter the mark are prohibited. The Office will determine whether an amendment is a material alteration of a mark by comparing the proposed amendment with the drawing of the mark filed with the original application. 37 C.F.R. §2.72.

Previously, because §§2.72(b), (c) and (d) did not expressly prohibit an amendment that materially alters the mark on the original drawing, the Office accepted amendments to correct "internal inconsistencies," even if the amendment materially altered the mark on the original drawing. An application was considered "internally inconsistent" if the mark on the drawing did not agree with the mark on the specimens in an application based on use, or with the mark on the foreign registration in an application based on §44 of the Act. TMEP §807.14(a). See In re ECCS, Inc. , 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996) and In re Dekra e.V. , 44 USPQ2d 1693 (TTAB 1997).

The Office will no longer accept amendments to cure "internal inconsistencies" if these amendments materially alter the mark on the original drawing. This applies to all amendments examined on or after October 30, 1999, regardless of the filing date of the application. However, the Office will not re-examine pending applications with amendments that were previously accepted by the examining attorney, relying on ECCS or Dekra .

 X. Ownership

Although a mistake in setting out the applicant's name can be corrected, the application cannot be amended to set forth a different entity as the applicant; and the application is void if it is filed in the name of an entity that did not own, or was not entitled to use, the mark as of the filing date of the application. 37 C.F.R. §2.71(d). This is consistent with past practice. Huang v. Tzu Wei Chen Food Co. Ltd. , 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988) (application filed in name of individual two days after mark was acquired by newly formed corporation held void); Accu Personnel Inc. v. Accustaff Inc. , 38 USPQ2d 1443 (TTAB 1996) (application filed in name of entity that did not yet exist not void); In re Tong Yang Cement Corp. , 19 USPQ2d 1689 (TTAB 1991) (application filed by joint venturer void where mark owned by joint venture); U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc. , 183 USPQ 613 (Comm'r Pats. 1974) (misidentification of applicant's name may be corrected).

 XI. Certification or Certified Copy of Foreign Registration

A certification or certified copy of a foreign registration is no longer required to receive a filing date under §44(e) of the Act. If the certification or certified copy is not included with the application as filed, the examining attorney will require submission of a certification or certified copy of the foreign registration in the first Office action.

 XII. Request for Extension of Time to File Statement of   Use

 A. ITU Unit May Accept Showing of Good Cause After Expiration of Deadline for Filing Extension Request

An applicant is no longer required to file a petition to the Commissioner in order to submit a showing of good cause after the deadline for filing an extension request. If an extension request does not include a showing of good cause, the ITU paralegal will issue an Office action denying the extension request, but granting the applicant additional time to overcome the denial by submitting the showing of good cause. See TMEP §1105.05(d)(ii) regarding the requirements for a showing of good cause.

B. Allegation That Mark is Not in Use No Longer Required

The applicant is no longer required to allege that it has not yet made use of the mark in commerce on all the goods and services as part of the showing of good cause. 37 C.F.R. §2.89(d).

 C. Deadline for Filing Petition From Denial of Extension Request

The deadline for filing a petition if an extension request is denied has been changed from one month to two months from the mailing date of the Office action denying the extension request. 37 C.F.R. §2.89(g).

 XIII. Allegation of "Ownership" by Intent-to-Use Applicant

Under 15 U.S.C. §1(b)(3)(A), an application based on an applicant's bona fide intention to use the mark in commerce must include an allegation that the applicant is "entitled to use the mark in commerce." Prior to October 30, 1999, 37 C.F.R. §2.33(b)(2) erroneously required an averment that an intent-to-use applicant is the "owner" of the mark. In view of this error, the Office has accepted verifications of §1(b) applications that include either an averment of ownership or an averment that the applicant is entitled to use the mark in commerce. TMEP §806.01. Effective October 30, the rules have been amended to delete the requirement that a §1(b) applicant allege that it is the owner of the mark. However, the Office will continue to accept verifications of §1(b) applications that include either allegation.

 XIV. Status of Registrations

  A. TLTIA Changes to Requirements for Maintaining Registrations

TLTIA changes the due dates and grace periods for §8 affidavits and renewal applications. A registrant must file a §8 affidavit of continued use: (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. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.

A registrant must file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

 B. Updating Automated Records to Show the Status of Registrations

When the applicant submits a timely §8 affidavit and/or application for renewal, the Office's automated records will be updated to indicate receipt of the paper and the action taken on the paper. The Office's automated records will be updated to indicate that a registration is cancelled or expired if:

(1)  No §8 affidavit has been filed one year after the expiration of the previous term of registration; or

(2)  No §9 renewal application has been filed one year after the expiration of the previous term of registration; or

(3)  No §8 affidavit has been filed before the end of the seventh year after the date of registration or publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c).

C. Examining Attorneys Must Confirm Status of Cited Registration Before Refusing Registration Under §2(d)

Before issuing any refusal of registration under Trademark Act §2(d), 15 U.S.C. §1052(d), or filing a brief on appeal of a §2(d) refusal, the examining attorney must confirm the status of the cited registration, to ensure that it is still active. TMEP §1108.01(a).

If the examining attorney is ready to issue a final refusal of registration under §2(d), but the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, the examining attorney should not issue a final refusal until the Office's automated records indicate that the registrant has filed, and the Office has accepted, the §8 affidavit or granted renewal. Instead, the examining attorney should suspend action for six months pending final disposition of the cited registration(s).

If the examining attorney is ready to write an appeal brief, but the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, the examining attorney should request a remand so the application can be suspended pending final disposition of the cited registration(s). The Board will issue an order suspending the appeal and remanding the case to the examining attorney. If the cited registration is cancelled or expires, the examining attorney should withdraw the §2(d) refusal, and notify the Board that it has been withdrawn. If an appropriate affidavit or renewal application is in fact filed, the examining attorney should notify the Board; the Board will resume proceedings and reset the time for filing the examining attorney's appeal brief. Similarly, if the §2(d) refusal is only one of the issues on appeal, when the examining attorney notifies the Board of the status of the cited registration, the Board will resume proceedings and reset the time for filing a brief.

The examining attorney cannot withdraw a refusal of registration under §2(d) until the TRAM system shows that the registration has actually been cancelled.

 XV. Petitions to Revive Abandoned Applications

The applicant may revive an abandoned application where the delay in responding to an Office action or notice of allowance was unintentional. 15 U.S.C. §§1(d)(4) and 12(b); 37 C.F.R. §2.66. A showing of "unavoidable delay" is no longer required. All petitions to revive that are pending or filed on or after October 30, 1999, will be reviewed under the unintentional delay standard.

The revised law applies to the unintentional failure to respond to an Office action or notice of allowance, to the unintentional failure to meet minimum filing requirements for a statement of use or request for an extension of time to file a statement of use, and to the unintentional failure to include an appeal fee with a notice of appeal.

The revised law does not apply to the unintentional filing of an incomplete response to an examining attorney's Office action. Incomplete responses to examining attorneys' Office actions are provided for by 37 C.F.R. §2.65(b), which gives the examining attorney discretion to grant an applicant additional time to respond if the applicant's failure to file a complete response is inadvertent. If the examining attorney holds the application abandoned for failure to file a complete response to an Office action, the applicant may file a petition to the Commissioner to review the examining attorney's action. 37 C.F.R. §2.146.

 XVI. Powers of Attorney

An applicant now may file a power of attorney that relates to more than one trademark application or registration, or to all existing and future applications and registrations. Someone relying on such a power of attorney must: (1) include a copy of the previously filed power of attorney; or (2) refer to the previously filed power of attorney, specifying: the filing date; the application serial number, registration number, or inter partes proceeding number for which the original power of attorney was filed; and the name of the party who signed the power of attorney; or, if the application serial number is not known, submit a copy of the application or a copy of the mark, and specify the filing date. 37 C.F.R. §2.17(d).

If the applicant meets these requirements, the examining attorney should accept the power of attorney.

 XVII. Assignments

 A. Assignment of Intent-to-Use Applications

A §1(b) application may now be assigned as soon as the applicant files an amendment to allege use. 15 U.S.C. §1060; 37 C.F.R. §3.16. Previously, a §1(b) application could not be assigned until after the filing of a statement of use, except to a successor to the applicant's business, or the portion of the business to which the mark pertains. The change corrects an oversight in earlier legislation.

 B. Recording Assignments and Changes of Name

Previously, the Assignment Branch of the Office would record only an original document or a true copy of an original. The new law permits recordation of a document that is not an original or a true copy. Section 10 of the Trademark Act, 15 U.S.C. §1060. The revised recording requirements for trademark applications and registrations are listed in 37 C.F.R. §3.25.

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Last Modified: 11/4/2009 8:22:12 AM