DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, 3 and 6
[Docket No. 990401084-9084-01]
RIN 0651-AB00
TRADEMARK LAW TREATY IMPLEMENTATION
ACT CHANGES
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking; Notice of hearing.
SUMMARY: The Patent and Trademark Office (Office) proposes to amend its
rules to implement the Trademark Law Treaty Implementation Act of 1998
(TLTIA), Pub. L. No. 105-330, 112 Stat. 3064 (15 U.S.C. 1051), and to
otherwise simplify and clarify procedures for registering trademarks,
and for maintaining and renewing trademark registrations.
DATES: Comments must be received by June 25, 1999, to ensure
consideration. A public hearing will be held at 10:00 am, June 10, 1999,
in the South Tower Building, 1st floor, 2900 Crystal Drive, Arlington,
Virginia 22202-3513. Submit requests to present oral testimony on or
before June 3, 1999.
ADDRESSES: Mail comments to the Assistant Commissioner for Trademarks,
2900 Crystal Drive, Arlington, Virginia 22202-3513, attention Mary
Hannon; fax comments to (703) 308-9395, attention Mary Hannon; or email
comments to tltia.comments@uspto.gov. Copies of all comments will be
available for public inspection in Suite 10B10, South Tower Building,
10th floor, 2900 Crystal Drive, Arlington, Virginia 22202-3513, from
8:30 a.m. until 5:00 p.m., Monday through Friday.
FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of Assistant
Commissioner for Trademarks, (703) 308-8910, ext. 37.
SUPPLEMENTARY INFORMATION:
TLTIA implements the Trademark Law Treaty (TLT). The purpose of TLT is
to make the procedural requirements of the different national trademark
offices more consistent.
TLTIA was enacted October 30, 1998. Title I of TLTIA, which contains the
provisions that implement the treaty, will become effective October 30,
1999.
References below to "the Act," "the Trademark Act" or "the statute"
refer to the Trademark Act of 1946, as amended, 15 U.S.C. 1051 et seq.
"TMEP" is the Trademark Manual of Examining Procedure (2nd ed., Rev.
1.1, August 1997).
Application Filing Dates
TLTIA 103 adds l(a)(4) and l(b)(4) of the Act to give the Office
authority to establish and change filing date requirements. The Office
proposes to eliminate several of the current minimum requirements
necessary to receive a filing date. The goal is to make it easier for
applicants to obtain filing dates, but also to ensure that the Office
has enough information to begin examination, and to provide third
parties who search Office records with accurate information about
pending applications.
The Office proposes the following minimum filing requirements for
granting a filing date: (1) the name of the applicant; (2) a name and
address for correspondence; (3) a clear drawing of the mark; (4) a list
of the goods or services; and (5) the filing fee for at least one class
of goods or services.
Section 44(e) of the Act, as amended, no longer requires that a
certified copy of the foreign registration accompany an application
based on 44(e). The Office proposes to require submission of the
foreign certificate before the mark is published for opposition or
approved for registration on the Supplemental Register.
The Office also proposes to eliminate the current filing date
requirements for an allegation of the applicant's use or bona fide
intention to use the mark in commerce; for a specimen, and date of first
use in commerce in a l(a) application; and for a signature. These
elements will be required before the mark is published for opposition or
approved for registration on the Supplemental Register.
Bulky Specimens
Proposed 2.56(d)(1) requires that specimens be flat and no larger than
8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. This is
consistent with current 2.56. The Office proposes to add 2.56(d)(2),
stating that 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 (i.e., is flat and
no larger than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.)
long), insert it in the application file wrapper, and destroy the
original bulky specimen.
Currently, when an applicant submits a specimen that does not conform to
the requirements of 2.56 (i.e., is not flat, exceeds the size
limitation, etc.), the Office retains the specimen even though it is
impossible to attach it to the application file wrapper. This requires
substantial special handling because the Office must store and track the
specimens separately from the application file wrappers. Because the
number of newly filed applications has increased from approximately
83,000 to over 233,000 per year over the past ten years, and the number
of pending applications has increased from less than 100,000 to over
350,000 in the same period, it has become increasingly difficult to
ensure that the bulky specimens follow the application files. As the
number of applications has increased, bulky materials submitted as
specimens have also increased, requiring an increased use of limited
resources to handle the bulky materials. Further, because specimens of
this nature are often misplaced or lost during examination processing,
the Office must then require new specimens, slowing examination and
inconveniencing applicants.
Because the requirement for flat specimens can be easily satisfied
through the use of photographs, photocopies, or other means of
reproduction, the Office will no longer retain bulky materials submitted
as specimens. In very limited circumstances, 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.
Number of Specimens Required
The Office proposes to amend 2.56(a), 2.76(b)(2), 2.86(b), and
2.88(b)(2) to require one rather than three specimens with an
application under 1 of the Act, or an amendment to allege use or
statement of use of a mark in an application under l(b) of the Act.
The Office previously required three specimens so that an interested
party, such as a potential opposer, could permanently remove a specimen
from an application file, yet not leave the file without specimens. TMEP
905.01. However, multiple copies of specimens are no longer necessary
because the public may make photocopies of a single specimen.
Person Who May Sign Verified Statement
Currently, 1(a)(1)(A) and 1(b)(1)(A) of the Act require that an
application by a juristic applicant be signed "by a member of the firm
or an officer of the corporation or association applying." TLTIA 103
amends 1(a) and l(b) of the Act to eliminate the specification of
the appropriate person to sign on behalf of an applicant. The
legislative history states:
Under the existing provision, the Patent and Trademark Office
has been limited to accepting, for example, only the signature of an
officer of a corporation on an application when another corporate
manager's signature would be appropriate because the corporate manager
has specific knowledge of the facts asserted in the application. The
unnecessary rigidity of the existing provision has worked a hardship on
applicants who have been denied filing dates because the person
verifying their application has not met the strict requirement of being
an officer of the corporate applicant. Additionally, the Patent and
Trademark Office has had difficulty applying the officer requirement to
foreign juristic entities whose managers are not clearly officers under
the United States corporate standards.
HR. Rep. No. 194, 105th Cong., 1st Sess. 12 (1997).
Proposed 2.33(a)(2), 2.76(b)(1), 2.88(b)(1), 2.89(a)(3), and
2.89(b)(3) require that a person properly authorized to sign on behalf
of the applicant sign the verification. Proposed 2.33(a)(2) states
that a person who is properly authorized to sign on behalf of the
applicant includes a person with legal authority to bind the applicant
and/or a person with firsthand knowledge and actual or implied authority
to act on behalf of the applicant.
The same principles apply to the verification of an affidavit or
declaration of continued use or excusable nonuse under 8 of the Act.
Proposed 2.161(b) requires that a person properly authorized to sign
on behalf of the owner sign the verification. Proposed 2.161(b)(2)
states that a person who is properly authorized to sign on behalf of the
owner includes a person with legal authority to bind the owner and/or a
person with firsthand knowledge and actual or implied authority to act
on behalf of the owner.
Filing by Owner
Although TLTIA amends the statute to eliminate the specification of the
proper party to sign on behalf of an applicant or registrant, the
statute still requires that the owner of the mark file an application
for registration, amendment to allege use, statement of use, request for
extension of time to file a statement of use, and 8 affidavit. See
sections l(a)(1), l(b)(l), l(d)(1), l(d)(2), and 8(b) of the Act.
TLTIA 105 amends 8 of the Act to require that the owner of the mark
file an affidavit of continued use or excusable nonuse within the time
period set forth in 8(a) of the Act. The legislative history states:
Throughout the revised section 8, the term "registrant" has
been replaced by the term "owner." The practice at the Patent and
Trademark Office has been to require that the current owner of the
registration file all the post-registration affidavits needed to
maintain a registration. The current owner of the registration must aver
to actual knowledge of the use of the mark in the subject registration.
However, the definition of "registrant" in section 45 of the Act states
that the "terms `applicant' and `registrant' embrace the legal
representatives, predecessors, successors and assigns of each applicant
and registrant." Therefore, use of the term "registrant" in section 8 of
the Act would imply that any legal representative, predecessor,
successor or assign of the registrant could successfully file the
affidavits required by sections 8 and 9. To correct this situation, and
to keep with the general principal [sic], as set out in section 1, that
the owner is the proper person to prosecute anapplication, section 8 has
been amended to state that the owner must file the affidavits required
by the section.
H.R. Rep. No. 194, 105th Cong., 1st Sess. 18-19 (1997).
Therefore, the Office proposes to amend 2.163(a) and 2.164(b) to
make it clear that filing by the owner is a minimum requirement that
cannot be cured after expiration of the filing period set forth in 8
of the Act.
Sections 1(a) and 1(b) of the Act require that an application for
registration of a mark be filed by the owner. Therefore, the Office also
proposes to add new 2.71(d), stating that 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
that an application is void if it is filed in the name of an entity that
did not own the mark as of the filing date of the application. This
codifies current practice. TMEP 802.07. Huang v. Tzu Wei Chen Food Co.
Ltd., 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).
The Office also proposes to amend 2.88(e)(3), 2.89(a)(3), and
2.89(b)(3) to state that if a statement of use or request for an
extension of time to file a statement of use is unsigned or signed by
the wrong party, a substitute verification must be submitted before the
expiration of the statutory period for filing the statement of use. This
is consistent with current practice. See TMEP 1105.05(f)(i)(A) and
1105.05(d). Sections l(d)(1) and (2) of the Act require verification by
the owner within the statutory period for filing the statement of use.
Therefore, the Office cannot extend or waive the deadline for filing the
verification. In re Kinsman, 33 USPQ2d 1057 (Comm'r Pats. 1993).
Revival of Abandoned Applications
TLTIA 103 and 104 amend l(d)(4) and 12(b) of the Act to permit
the revival of an abandoned application where the delay in responding to
an Office action or notice of allowance is "unintentional." Currently,
an abandoned application can be revived only if the delay was
"unavoidable," a much stricter standard. The "unavoidable delay"
standard has been removed from the statute. See the discussion below of
the proposed amendments to 2.66 for the requirements for filing a
petition to revive.
Post Registration
Statutory Changes
TLTIA 105 and 106 amend: (1) 8 of the Act, 15 U.S.C. 1058, to add
a requirement for filing an affidavit or declaration of continued use or
excusable nonuse ( 8 affidavit) in the year before the end of every
ten-year period after the date of registration; and (2) 9 of the Act,
15 U.S.C. 1059, to delete the requirement for a declaration of continued
use or excusable nonuse in a renewal application. Thus, every tenth
year, the owner of a registration must file both a 8 affidavit and a
renewal application.
The statutory filing periods for the ten-year 8 affidavits are the
same as the statutory filing periods for the renewal applications. The
Office will create a combined "Section 8 and 9" form to make it easy to
make both filings in a single document. In substance, the requirements
of the combined filing under amended 8 and 9 will be the same as the
requirements for renewal under current law.
A 8 affidavit between the fifth and sixth year after the date of
registration is also required. This is consistent with current law. No
renewal application will be required during the sixth year.
TLTIA 105 and 106 amend 8 and 9 of the Act to permit filing
within a six-month grace period after the end of the statutory filing
period, with an additional surcharge.
TLTIA 105 and 106 also amend 8 and 9 to allow for the correction
of deficient filings after the statutory filing period expires, with
payment of an additional surcharge. The amended Act does not define
deficiency or place any limits on the type of deficiency or omission
that can be cured after expiration of the statutory filing period. The
Commissioner has broad discretion to establish procedures and fees for
curing deficiencies or omissions.
Fee Changes
The Office proposes to decrease the renewal fee from $300 to $200 per
class.
As a result of increased administrative costs, the Office proposes to
increase the filing fees for 8 affidavits and for 15 affidavits from
$100 to $200 per class.
The proposed surcharge for filing a 8 affidavit or 9 renewal
application during the grace period is $100 per class. This is
consistent with the current renewal grace period fee.
The proposed surcharge for correcting a deficiency in a 8 affidavit or
a 9 renewal application is $100. Sections 8(c)(2) and 9(a) of the Act
require a surcharge for correcting deficiencies.
Recording Assignments and Changes of Name
Currently, the Office will record only an original document or a true
copy of an original. TLTIA 107 amends 10 of the Act to allow
recordation of a document that is not an original or a true copy.
Assignment of l(b) Applications
TLTIA 107 amends 10 to permit an assignment after the applicant
files an amendment to allege use under l(c) of the Act. Currently, a
l(b) application cannot be assigned until after the filing of a
statement of use under l(d) of the Act, except to a successor to the
applicant's business, or the portion of the business to which the mark
pertains. This amendment corrects an oversight in the Trademark Law
Revision Act of 1988 (Title 1 of Pub. Law. No. 100-667, 102 Stat. 3935
(15 U.S.C. 1051)), which amended 10 of the Act to permit an assignment
of a 1(b) application to someone other than a successor to the
applicant's business only after the filing of a statement of use under
l(d) of the Act. The substance of statements of use and amendments to
allege use are the same, and the only difference is the time of filing,
so there is no reason to treat them differently.
Discussion of Specific Rules Changed or Added
The Office proposes to amend rules 1.1, 1.4, 1.5, 1.6, 1.23, 2.1, 2.6,
2.17, 2.20, 2.21, 2.31, 2.32, 2.33, 2.34, 2.35, 2.37, 2.38, 2.39, 2.45,
2.51, 2.52, 2.56, 2.57, 2.58, 2.59, 2.66, 2.71, 2.72, 2.76, 2.86, 2.88,
2.89, 2.101, 2.111, 2.146, 2.151, 2.155, 2.156, 2.160, 2.161, 2.162,
2.163, 2.164, 2.165, 2.166, 2.167, 2.168, 2.173, 2.181, 2.182, 2.183,
2.184, 2.185, 2.186, 3.16, 324, 3.25, 3.28, 3.31, and 6.1.
The Office proposes to revise 1.1(a)(2) to set forth all the addresses
for filing trademark correspondence in one rule.
The Office proposes in 1.l(a)(2)(i) to exempt papers filed
electronically from the requirement that correspondence be mailed to the
street address of the Office.
The Office proposes to state in 1.1(a)(2)(v) that an applicant may
transmit an application for trademark registration electronically, but
only if the applicant uses the Office's electronic form.
The Office proposes to amend 1.4(a)(2) to correct a cross-reference.
The Office proposes to add a new 1.4(d)(1)(iii) to provide for
signature of electronically transmitted trademark filings, where
permitted.
The Office proposes to amend 1.5(c) to clarify the requirements for
identifying trademark applications and registrations.
The Office proposes to amend 1.6(a) to provide that the Office will
consider trademark-related correspondence transmitted electronically to
have been filed on the date of transmission, regardless of whether that
date is a Saturday, Sunday, or Federal holiday within the District of
Columbia. This is consistent with the treatment of correspondence filed
as Express Mail with the United States Postal Service under 1.10.
The Office proposes to amend 1.23 to allow payments for electronic
applications and other electronic submissions authorized by the Office
by a credit card identified on the electronic form.
The Office proposes to revise 2.1 to update a cross-reference.
The Office proposes to amend 2.6(a)(5) to decrease the filing fee for
a renewal application from $300 to $200 per class.
The Office proposes to amend 2.6(a)(6) to delete reference to the
three-month renewal grace period. TLTIA changes the grace period to six
months.
The Office proposes to amend 2.6(a)(12) to increase the fee for filing
a 8 affidavit from $100 to $200 per class, due to increased
administrative costs.
The Office proposes to revise 2.6(a)(13) to increase the fee for
filing a 15 affidavit from $100 to $200 per class, due to increased
administrative costs.
The Office proposes to remove 2.6(a)(14) because it is unnecessary.
The cost of a combined affidavit or declaration under 88 and 15 of the
Act is the sum of the cost of the individual filings.
The Office proposes to add new 2.6(a)(14) requiring a $100 surcharge
per class for filing a 8 affidavit during the grace period.
The Office proposes to amend 2.6(a)(19) to increase the fee for filing
a request to divide an application from $100 to $300 per new application
created. The Office believes that a $300 fee reflects the extensive
amount of work required to process a request to divide.
The Office proposes to add new 2.6(a)(20), requiring a $100 surcharge
for correcting a deficiency in a 8 affidavit. Amended 8(c)(2) of the
Act requires a deficiency surcharge.
The Office proposes to add new 2.6(a)(21), requiring a $100 surcharge
for correcting a deficiency in a renewal application. Section 9(a) of
the Act, as amended, requires a deficiency surcharge.
The Office proposes to add new 2.17(c), stating that to be recognized
as a representative in a trademark case, an attorney as defined in
10.1(c) may file a power of attorney, appear in person, or sign a paper
on behalf of an applicant or registrant that is filed with the Office.
This codifies current practice.
The Office proposes to add new 2.17(d), stating that someone 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; and that someone relying on a power of attorney
concerning numerous applications or registrations 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.
The Office proposes to revise 2.20 to delete the requirement for a
declaration by a "member of the firm or an officer of the corporation or
association," because this requirement has been deleted from l(a)
and l(b) of the Act.
The Office proposes to revise 2.21, listing the minimum requirements
for receipt of an application filing date. The proposed minimum filing
requirements are: (1) the name of the applicant; (2) a name and address
for correspondence; (3) a clear drawing of the mark; (4) an
identification of goods or services; and (5) the filing fee for at least
one class of goods or services.
The Office proposes to delete the following minimum requirements for
receiving a filing date: a stated basis for filing; a verification or
declaration signed by the applicant; an allegation of use in commerce,
specimen, and date of first use in commerce in an application under
1(a) of the Act; an allegation of the applicant's bona fide intention to
use the mark in commerce in an application under l(b) or 44 of the
Act; a claim of priority in an application under 44(d) of the Act; and
a certified copy of a foreign registration in an application under
44(e) of the Act. A claim of priority under 44(d) must be filed before
the end of the priority period. All other elements must be provided
before the mark is published for opposition or approved for registration
on the Supplemental Register.
The Office proposes to require in 2.21(a)(3) a "clear drawing of the
mark" rather than the drawing "substantially meeting all the
requirements of 2.52" that is now required.
The Office proposes to state in 2.21(b) that the Office "may" rather
than "will" return the papers and fees to the applicant when an
application does not meet the minimum filing requirements. A new
procedure is being considered under which the Office would retain
applications that do not meet the minimum filing requirements.
Applicants would have an opportunity to supply the missing element and
receive a filing date as of the date the Office receives the missing
element. Until a new policy is announced, the Office will continue to
return the papers and fees to the applicant.
The Office proposes to delete the center heading "THE WRITTEN
APPLICATION" before 2.31 because it is unnecessary. The heading
"APPLICATION FOR REGISTRATION," immediately before 2.21, encompasses
the rules that now fall under the heading "THE WRITTEN APPLICATION."
The Office proposes to remove and reserve 2.31, and to move the
substance of the requirement that the application be in English to
2.32(a).
The Office proposes to change the heading of 2.32 to "Requirements for
written application," and to revise the rule. Proposed 2.32(a) lists
the requirements for the written application, now listed in 2.33(a)(1).
Proposed 2.32 does not require a statement of the applicant's method
or intended method of use of the mark, because l(a) and l(b) of the
Act, as amended, no longer require that applicants state the mode or
manner in which a mark is used.
The Office proposes to change the heading of 2.33 to "Verified
statement" and revise the rule.
The Office proposes to revise 2.33(a) to state that the application
must 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 applicant. The proposed rule further states
that a person who is properly authorized to sign on behalf of the
applicant includes a person with legal authority to bind the applicant
and/or a person with firsthand knowledge and actual or implied authority
to act on behalf of the applicant.
The Office proposes to move the substance of 2.32(b) to 2.33(c), and
revise it to state that the Office may require a substitute verification
of the applicant's continued use or bona fide intention to use the mark
when the applicant does not file the verified statement within a
reasonable time after the date it is signed. This codifies present
practice. Section 2.32(b) now states only that a verification of the
applicant's continued use of the mark is required where the application
is not filed within a reasonable time after it is signed. However, the
Office also requires verification of the applicant's continued bona fide
intention to use the mark in commerce when a verification under 1(b)
or 44 of the Act is not filed within a reasonable time after it is
signed. TMEP 803.04.
The Office proposes to add 2.33(d), stating that where an
electronically transmitted filing is permitted, the person who signs the
verified statement must either: (1) place a symbol comprised of numbers
and/or letters between two forward slash marks in the signature block on
the electronic document; and print, sign and date in permanent ink, and
maintain a paper copy of the electronic submission; or (2) use some
other form of electronic signature that the Commissioner may designate.
Proposed 2.33(d)(1) states that applicants who submit electronic
documents must sign and date in permanent ink, and maintain a verified
statement confirming that the signatory has adopted the symbol shown in
the signature block to verify the contents of the document, and that the
information in the electronic submission is identical to the information
in the paper copy of the submission.
The Office proposes to add new 2.34, "Bases for filing." Currently, an
applicant must establish a basis for filing to receive a filing date.
Under the proposed new rules, a stated filing basis will no longer be
included as one of the minimum requirements for receipt of a filing
date. If missing, it must be provided before the mark is published for
opposition or approved for registration on the Supplemental Register.
The Office proposes that the requirements for each of the four bases be
moved from 2.21(a)(5) to 2.34(a). Section 2.34(a)(1) will list the
requirements for an application under 1(a) of the Act, now listed in
2.21(a)(5)(i), 2.33(a)(1)(iv), 2.33(a)(1)(vii), 2.33(a)(2), and
2.33(b)(1). Section 2.34(a)(2) will list the requirements for an
application under 1(b) of the Act, now listed in 2.21(a)(5)(iv)
and 2.33(a)(1)(iv).
Section 2.34(a)(3) will list the requirements for an application under
44(e) of the Act, now listed in 2.21(a)(5)(ii) and 2.33(a)(1)(viii).
Section 2.34(a)(3)(ii) will require a certified copy of a foreign
registration. Currently, a 44(e) applicant must submit a foreign
certificate to receive a filing date. However, TLTIA 108 amends
44(e) of the Act to delete the requirement that the application be
"accompanied by" the foreign certificate. The Office proposes to require
that the applicant submit the certificate before the mark is published
for opposition or approved for registration on the Supplemental Register.
The Office proposes to add 2.34(a)(3)(iii), stating that if it appears
that the foreign registration will expire before the mark in the United
States application will register, the applicant must submit a
certification from the foreign country's trademark office, showing that
the registration has been renewed and will be in force at the time the
United States registration will issue. This codifies current practice.
TMEP 1004.03.
The Office proposes that 2.34(a)(4) will list the requirements for an
application under 44(d) of the Act, now listed in 2.21(a)(5)(iii),
2.33(a)(1)(ix), and 2.39. Proposed 2.34(a)(4)(i) requires that a
priority claim be filed within six months of the filing date of the
foreign application. This is consistent with Articles 4(C)(1) and
4(D)(1) of the Paris Convention for the Protection of Industrial
Property, as revised at Stockholm on July 14, 1967 (Paris Convention).
The Office proposes to state in 2.34(b)(1) that an applicant may claim
more than one basis, provided that the applicant meets the requirements
for all bases claimed. This codifies current practice. The Office also
proposes to state that the applicant may not claim both l(a) and
l(b) for the identical goods or services in one application. In
2.34(b)(2), the Office proposes to require that the applicant specify
which basis covers which goods or services when an applicant claims more
than one basis.
In 2.34(c), the Office proposes to set forth the definition of
"commerce" currently found in 2.33(a)(3).
The Office proposes to remove 2.37.
The Office proposes to redesignate 2.35 as 2.37.
The Office proposes to add new 2.35, "Adding, deleting, or
substituting bases."
The Office proposes to state in 2.35(a) that the applicant may add or
substitute a basis for registration before publication, and that the
applicant may delete a basis at any time.
The Office proposes to state in 2.35(b) that the applicant cannot
amend an application to add or substitute a basis after publication.
This changes practice. Prior to 1995, the Office did not accept
amendments adding or substituting a basis for registration after
publication. This policy was changed by In re Monte Dei Maschi Di Siena,
34 USPQ2d 1415 (Comm'r Pats. 1995). Currently, the Office will accept an
amendment to add or substitute a basis for registration after
publication if the applicant files a petition to the Commissioner;
republication is required. TMEP 1006.04.
After three years of experience, the Office does not believe that
accepting these amendments is in the public interest, because the
amendments reopen examination. This delays later-filed conflicting
applications, which must be suspended indefinitely until the
earlier-filed application is either registered or abandoned. Therefore,
the Office proposes to prohibit amendments that add or substitute a
basis after publication.
The Office proposes to state in 2.35(c) that when the applicant
substitutes a basis, the Office will presume that the original basis was
valid, unless there is contradictory evidence in the record, and the
application will retain the original filing date.
Under present practice, if the applicant changes the basis from 1(a)
or 1(b) to 44(e), or from 44(e) to either l(a) or l(b), the
applicant retains the original filing date. However, if an application
is filed solely under 44(d), and the applicant amends to substitute a
different basis after the expiration of the six-month priority period,
the effective filing date of the application becomes the date the
applicant perfects the amendment claiming the new basis. TMEP 1006.03.
The Office proposes to change this practice, to allow a 44(d)
applicant to retain the priority filing date when the applicant
substitutes a new basis after the expiration of the six-month priority
period.
The Office proposes to state in 2.35(d) that if an applicant properly
claims a 44(d) basis in addition to another basis, the applicant will
retain the priority filing date under 44(d) no matter which basis the
applicant perfects. This codifies current practice. TMEP 1006.01.
The Office proposes to state in 2.35(e) that the applicant may add or
substitute a 44(d) basis only within the six-month priority period
following the filing date of the foreign application. This is consistent
with current practice (TMEP 1006.05), and with Articles 4(C)(1) and
4(D)(1) of the Paris Convention.
In 2.35(f), the Office proposes to state that an applicant who adds a
basis must state which basis covers which goods or services.
The Office proposes to state in 2.35(g) that if an applicant deletes a
basis, the applicant must also delete any goods or services covered
solely by the deleted basis. This codifies current practice.
The Office proposes to state in 2.35(h) that once an applicant claims
a l(b) basis as to any or all of the goods or services, the applicant
may not amend the application to seek registration under 1(a) of the
Act for those goods or services unless the applicant files an allegation
of use under l(c) or l(d) of the Act.
The Office proposes to amend 2.38(a) to update a cross-reference.
The Office proposes to remove and reserve 2.39, and to move the
requirements for filing a priority claim under 44(d) of the Act to
2.34(a)(4), discussed above.
The Office proposes to revise 2.45(a) and (b) to: (1) delete the
requirement for a statement of the method or intended method of use in a
certification mark application; and (2) require a copy of the standards
that determine whether others may use the certification mark on their
goods and/or in connection with their services. Sections l(a) and l(b)
of the Act, as amended, no longer require a statement of the method or
intended method of use of a mark. The requirement for a copy of the
certification standards codifies current practice. TMEP 1306.06(g)(ii).
The Office proposes to remove 2.5 l(c) through (e), and move the
substance of those rules to 2.52.
The Office proposes to revise 2.52(a) to define the term "drawing," to
indicate that a drawing may only depict a single mark, and to define the
terms "typed drawing" and "special form drawing."
The Office proposes to add guidelines in 2.52(a) for drawings of
various types of unusual marks, such as marks that include color,
three-dimensional objects, motion, sound or scent; and to add guidelines
for showing placement of the mark on goods, packaging for goods, or in
advertising of services.
The Office proposes to indicate the recommended format for the drawing
of a mark in 2.52(b).
The Office proposes to revise 2.52(c) to state that for an
electronically filed application, if the mark cannot be shown as a
"typed drawing," the applicant must attach a digitized image of the mark
to the application.
The Office proposes to consolidate 2.56, 2.57 and 2.58 into 2.56,
and to remove and reserve 2.57 and 2.58.
The Office proposes to revise 2.56(a) to require one rather than three
specimens with an application under l(a) of the Act, or an allegation
of use under l(c) or l(d) of the Act in an application under 1(b)
of the Act. See the discussion above under "Supplementary
Information/Number of Specimens Required."
The Office proposes to add 2.56(b)(1), stating that a trademark
specimen is a label, tag, or container for the goods, or a display
associated with the goods; and that the Office may accept another
document related to the goods or the sale of the goods when it is not
possible to place the mark on the goods or packaging for the goods. This
is consistent with the current 2.56.
The Office proposes to add 2.56(b)(2), stating that a service mark
specimen must show the mark as actually used in the sale or advertising
of the services. This is consistent with the current 2.58(a).
The Office proposes to add 2.56(b)(3), stating that a collective
trademark or collective service mark specimen must show how a member
uses the mark on the member's goods or in the sale or advertising of the
member's services. This codifies current practice. TMEP 1303.02(b).
The Office proposes to add 2.56(b)(4), stating that a collective
membership mark specimen must show use by members to indicate membership
in the collective organization. This codifies current practice. TMEP
1304.09(c).
The Office proposes to add 2.56(b)(5), stating that a certification
mark specimen must show how a person other than the owner uses the mark
to certify regional or other origin, material, mode of manufacture,
quality, accuracy, or other characteristics of the person's goods or
services; or that members of a union or other organization performed the
work or labor on the goods or services. This codifies current practice.
TMEP 1306.06(c).
The Office proposes to add 2.56(c), stating that a photocopy or other
reproduction of a specimen is acceptable, but that a photocopy or
facsimile that merely reproduces the drawing is not a proper specimen.
This is consistent with the current 2.57.
Proposed new 2.56(d)(1) states that a specimen must be flat and no
larger than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.)
long. This is consistent with the current 2.56.
The Office proposes to add 2.56(d)(2), stating that if the applicant
files a specimen that is too large (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. See the
discussion above under "Supplementary Information/Bulky Specimens."
The Office proposes to add 2.56(d)(4), stating that if the application
is filed electronically, the specimen must be submitted as a digitized
image.
The Office proposes to revise 2.59 to clarify and simplify the
language.
The Office proposes to rewrite 2.66 to set forth the requirements for
filing a petition to revive an abandoned application when the delay in
responding to an Office action or notice of allowance is
"unintentional." Currently, an applicant can revive an abandoned
application only if the delay was "unavoidable," a much stricter
standard. TLTIA 103 and 104 amend l(d)(4) and 12(b) of the Act
to permit an application to be revived if the delay is "unintentional."
The "unavoidable delay" standard has been removed from the statute,
effective October 30, 1999.
The Office proposes to add 2.66(a)(1) and (2), requiring that the
applicant file a petition to revive within (1) two months of the mailing
date of the notice of abandonment; or (2) two months of actual knowledge
of abandonment. Currently, the deadline for filing a petition to revive
is sixty days. TMEP 1112.05(a). The two-month deadline will make it
easier to calculate the due date for a petition because it will not be
necessary to count days.
The Office also proposes to state in 2.66(a)(2) that an applicant must
be diligent in checking the status of an application. This codifies
current practice. TMEP 413 and 1112.05(b)(ii). The Office now denies
petitions to revive when the applicant waits too long before checking
the status of an application. To be diligent, the applicant must check
the status of the application within one year of the last filing or
receipt of a notice from the Office. Applicants can check the status of
applications through the Trademark Status Line, or through the Office's
World Wide Web site at www.uspto.gov. This is consistent with proposed
2.146(i), discussed below.
The Office proposes to amend 2.66(b)(2) and (c)(2) to require "a
statement, signed by someone with firsthand knowledge of the facts, that
the delay ... was unintentional," rather than the "showing of the causes
of the delay" that these rules now require.
The Office proposes to delete the requirement that a petition to revive
include a statement that is verified or supported by a declaration under
2.20. This is unnecessary because 10.18(b), as amended effective
December 1, 1997, states that any party who presents a paper to the
Office is certifying that all statements are true and attesting to an
awareness of the penalty for perjury. This proposed amendment is
consistent with amendments to 1.8(b)(3), 1.10(d), 1.10(e), 1.
137(a)(3), and 1.137(b)(3), also effective December 1, 1997. 62 FR 53186
(Oct. 10, 1997).
The Office proposes to amend 2.66(b)(3) to state that if the applicant
did not receive the Office action, the applicant need not include a
proposed response to an Office action with a petition to revive. This
codifies current practice.
The Office proposes to amend 2.66(c)(3) and (4) to state that if the
applicant did not receive the notice of allowance, the petition to
revive need not include a statement of use or request for an extension
of time to file a statement of use, or the fees for the extension
requests that would have been due if the application had never been
abandoned. This codifies current practice.
The Office proposes to add 2.66(c)(5), stating that unless a statement
of use is filed with or before the petition to revive, or the petition
states that the applicant did not receive the notice of allowance, the
applicant must file any further requests for extensions of time to file
a statement of use under 2.89 that become due while the petition is
pending, or file a statement of use. This codifies current practice.
The Office proposes to add 2.66(f)(3), stating that if the
Commissioner denies the petition to revive, the applicant may request
reconsideration by: (1) filing the request within two months of the
mailing date of the decision denying the petition; and (2) paying a
second petition fee under 2.6. Currently, the rules do not
specifically provide for requests for reconsideration of petition
decisions, but the Commissioner has the discretion to consider these
requests under 2.146(a)(3). The Office believes that an additional fee
should be required to pay for the work done in processing the request
for reconsideration. This is consistent with proposed 2.1460).
The Office proposes to revise 2.71 (a) to state that the applicant may
amend the identification to clarify or limit, but not broaden, the
identification of goods and/or services. This simplifies the language of
the current 2.71(b).
Proposed 2.71(b)(1) states that if the declaration or verification of
an application under 2.33 is unsigned or signed by the wrong party,
the applicant may submit a substitute verification or declaration under
2.20. This changes current practice. Currently, the applicant must
submit a signed verification to receive an application filing date, and
if the verification is signed by the wrong party, the applicant cannot
file a substitute verification unless the party who originally signed
had "color of authority" (i.e., firsthand knowledge of the facts and
actual or implied authority to act on behalf of the applicant). TMEP
803. As discussed above, the Office proposes to delete the requirement
that the applicant submit a signed verification in order to receive a
filing date. If the verification is unsigned or signed by the wrong
party, the applicant must replace the declaration before the mark is
published for opposition or approved for registration on the
Supplemental Register.
The Office proposes to delete the requirement for a verification "by the
applicant, a member of the applicant firm, or an officer of the
applicant corporation or association" from 2.71(c). This is consistent
with the amendments to l(a) and l(b) of the Act.
The Office also proposes to delete the "color of authority" provisions
from 2.71 (c). Because the statute no longer specifies who has
"statutory" authority to sign, the "color of authority" provisions are
unnecessary.
The Office proposes to state in 2.71 (b)(2) that if the declaration or
verification of a statement of use under 2.88 or a request for
extension of time to file a statement of use under 2.89 is unsigned or
signed by the wrong party, the applicant must submit a substitute
verification before the expiration of the statutory deadline for filing
the statement of use. This is consistent with current practice and with
the proposed amendments to 2.88(e)(3), 2.89(a)(3), and 2.89(b)(3),
discussed below.
The Office proposes to add new 2.71(d), stating that a mistake in
setting out the applicant's name can be corrected, but the application
cannot be amended to set forth a different entity as the applicant; and
that an application filed in the name of an entity that did not own the
mark on the filing date of the application is void. This codifies
current practice. TMEP 802.07. See the discussion above under
"Supplementary Information/Filing by Owner."
The Office proposes to revise 2.72 to remove paragraph (a), and
redesignate paragraphs (b) through (d) as (a) through (c).
The Office proposes that new paragraphs (a) through (c) will each state
that an applicant may not amend the description or drawing of the mark
if the amendment materially alters the mark; and that the Office will
determine whether a proposed amendment materially alters a mark by
comparing the proposed amendment with the description or drawing of the
mark in the original application. These provisions are now stated in
paragraph (a).
Under the current 2.72, as interpreted by 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), an applicant may amend an application to correct an
"internal inconsistency." An application is "internally inconsistent" if
the mark on the drawing does 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.
Currently, because 2.72(b), (c) and (d) do not expressly prohibit an
amendment that materially alters the mark on the original drawing, the
Office accepts amendments that correct "internal inconsistencies,"
regardless of whether the amendment materially alters the mark on the
original drawing. TMEP 807.14(a).
The Office does not believe that it is in the public interest to accept
amendments that materially alter the mark on the original drawing. When
the Office receives a new application, the mark on the drawing is
promptly filed in the Trademark Search Library and entered into the
Office's electronic and administrative systems. Accepting an amendment
that materially alters the mark on the original drawing is unfair to
third parties who search Office records between the application filing
date and the date the amendment is entered, because they do not have
accurate information about earlier-filed applications. A third party may
innocently begin using a mark that conflicts with the amended mark, but
not with the original mark, relying on the search of Office records.
Also, an examining attorney may approve a later-filed application for
registration of a mark that conflicts with the amended mark, but not
with the original mark. Therefore, the Office proposes to amend 2.72
to prohibit amendments that materially alter the mark on the original
drawing.
The Office proposes to revise 2.76(b)(1) to state that a complete
amendment to allege use must include a statement that is verified or
supported by a declaration under 2.20 by a person properly authorized
to sign on behalf of the applicant.
The Office proposes to further revise 2.76(b)(1) to delete the
requirement for a statement of the method or manner of use of the mark
in an amendment to allege use, because this requirement has been removed
from 1(a) and 1(b) of the Act.
The Office proposes to revise 2.76(b)(2) to require one rather than
three specimens with an amendment to allege use. See the above
discussion under "Supplementary Information/Number of Specimens
Required."
The Office proposes to add new 2.76(i), stating that if an amendment
to allege use is not filed within a reasonable time after it is signed,
the Office may require a substitute verification or declaration under
82.20 that the mark is still in use in commerce. This codifies current
practice. TMEP 803.04.
The Office proposes to add new 2.76(j), noting that the requirements
for multi-class applications are stated in 2.86.
The Office proposes to change the heading of 2.86 to "Application may
include multiple classes." The Office proposes to remove current
2.86(a), which states that an applicant may recite more than one item of
goods, or more than one service, in a single class, if the applicant
either has used or has a bona fide intention to use the mark on all the
goods or services. The substance of this provision will be moved to
2.34(a)(1)(v), 2.34(a)(2)(ii), 2.34(a)(3)(iv) and 2.34(a)(4)(iv).
The Office proposes to revise 2.86(a) to include sections now found in
2.86(b), stating that the applicant may apply to register the same
mark for goods and/or services in multiple classes in a single
application, provided that the applicant specifically identifies the
goods and services in each class; submits a fee for each class; and
either includes dates of use and one specimen, or a statement of a bona
fide intention to use the mark in commerce, for each class. The Office
also proposes to add in 2.86(a)(3) a provision that the applicant may
not claim both use in commerce and a bona fide intention to use the mark
in commerce for the identical goods or services in one application.
The Office proposes to state in 2.86(b) that a statement of use or
amendment to allege use must include the required fee, dates of use, and
one specimen for each class. The requirement for only one specimen is
consistent with the proposed amendments to 2.56(a), 2.76(b)(2), and
2.88(b)(2).
The Office also proposes to add to 2.86(b) a provision that the
applicant may not file the statement of use or amendment to allege use
until the applicant has used the mark on all the goods or services,
unless the applicant files a request to divide. This is consistent with
the current 2.76(c) and 2.88(c).
The Office proposes to delete the current 2.86(c), which prohibits an
applicant from claiming both use in commerce and intent-to-use in a
single multi-class application. However, the Office proposes to state in
2.86(a)(3) that the applicant may not claim both use in commerce and
intent-to-use for the identical goods or services in one application.
The Office proposes to move the substance of the last sentence of the
current 2.86(b) to new 286(c).
The Office proposes to revise 2.88(b)(1) to state that a complete
statement of use must include a statement that is verified or supported
by a declaration under 2.20 by a person properly authorized to sign on
behalf of the applicant.
The Office proposes to revise 2.88(b)(1) to delete the requirement for
a statement of the method or manner of use in a statement of use. This
requirement has been removed from 1(d)(l) of the Act.
The Office proposes to revise 2.88(b)(2) to require one specimen with
a statement of use, rather than the three specimens now required. This
is consistent with the proposed amendment of 2.56(a).
The Office proposes to revise 2.88(e)(3) to state that if the
verification or declaration is unsigned or signed by the wrong party,
the applicant must submit a substitute verification or declaration on or
before the statutory deadline for filing the statement of use. This is
consistent with current practice. TMEP 1105.05(f)(i)(A). Section
l(d)(1)of the Act specifically requires verification by the applicant
within the statutory period for filing the statement of use.
The Office proposes to add 2.88(k), stating that if the statement of
use is not filed within a reasonable time after it is signed, the Office
may require a substitute verification or declaration under 2.20
stating that the mark is still in use in commerce. This codifies current
practice. TMEP 803.04.
The Office proposes to add 2.88(1), noting that the requirements for
multi-class applications are stated in 2.86.
The Office proposes to revise 2.89(a)(3) and (b)(3) to require that
a request for an extension of time to file a statement of use include a
statement that is verified or supported by a declaration under 2.20 by
a person properly authorized to sign on behalf of the applicant; and
that if the extension request is unsigned or signed by the wrong party,
the applicant must submit a substitute verification or declaration on or
before the statutory deadline for filing the statement of use. This is
consistent with current practice. TMEP 1105.05(d). Sections l(d)(1)
and (2) of the Act specifically require verification by the applicant
within the statutory filing period.
The Office proposes to revise 2.89(d) to remove paragraph (1), which
requires a statement that the applicant has not yet made use of the mark
in commerce on all the goods and services. The Commissioner has held
that an extension request that omits this allegation is substantially in
compliance with 2.89(d) if the request contains a statement that the
applicant has a continued bona fide intention to use the mark in
commerce. In re Schering-Plough Healthcare Products Inc., 24 USPQ2d 1709
(Comm'r Pats. 1992). Therefore, the requirement is unnecessary.
The Office proposes to add 2.89(h), stating that if the extension
request is not filed within a reasonable time after it is signed, the
Office may require a substitute verification or declaration under 2.20
that the applicant still has a bona fide intention to use the mark in
commerce. This codifies current practice. TMEP 803.04.
The Office proposes to revise 2.101(d)(1) to update a cross-reference.
The Office proposes to revise 2.111(c)(1) to update a cross-reference.
The Office proposes to revise 2.146(d) to delete "sixty days" and
substitute "two months" as the deadline for filing certain petitions.
This will make it easier to calculate the due date for a petition
because it will not be necessary to count days.
The Office proposes to add 2.146(i), stating that where a petitioner
seeks to reactivate an application or registration that was abandoned or
cancelled due to the loss or mishandling of papers mailed to or from the
Office, the petition will be denied if the petitioner was not diligent
in checking the status of the application or registration. This codifies
current practice. TMEP 413 and 1704. Even where a petitioner can
show that the Office actually received papers, or can swear that a
notice from the Office was never received by the petitioner, the Office
now denies the petition if the petitioner waited too long before
investigating the problem. This is because third parties may rely to
their detriment on the information in the records of the Office that an
application is abandoned or that a registration is expired. A third
party may have diligently searched Office records and begun using a mark
because the search showed no earlier-filed conflicting marks, or an
examining attorney may have searched Office records and approved an
earlier-filed application for a conflicting mark. This is consistent
with the proposed amendment of 2.66(a)(2), discussed above.
The Office proposes to add 2.146(j), stating that if the Commissioner
denies the petition, the petitioner may request reconsideration by: (1)
filing the request within two months of the mailing date of the decision
denying the petition; and (2) paying a second petition fee under 2.6.
Currently, the rules do not specifically provide for requests for
reconsideration of petition decisions, but the Commissioner has the
discretion to consider these requests under 2.146(a)(3). The Office
believes that an additional fee should be required to pay for the work
done in processing the request for reconsideration. This is consistent
with proposed 2.66(f)(3), discussed above.
The Office proposes to revise 2.151 to update a cross-reference and
simplify the language.
The Office proposes to revise 2.155 to update a cross-reference and
simplify the language.
The Office proposes to revise 2.156 to update a cross-reference and
simplify the language.
The Office proposes to add 2.160, "Affidavit or declaration of
continued use or excusable nonuse required to avoid cancellation."
Proposed 2.160(a)(1) and (2) list the deadlines for filing the
affidavit or declaration, and proposed 2.160(a)(3) states that the
owner may file the affidavit or declaration within six months after
expiration of these deadlines, with an additional grace period
surcharge. Currently, there is no grace period for filing a 8
affidavit.
Proposed 2.160(b) advises that 2.161 lists the requirements for the
affidavit or declaration.
The Office proposes to change the heading of 2.161 to "Requirements
for a complete affidavit or declaration of continued use or excusable
nonuse," and to revise 2.161 to list the proposed requirements for the
affidavit or declaration.
The Office proposes to revise 2.161 (a) to state that the owner must
file the affidavit or declaration within the period set forth in 8 of
the Act.
The Office proposes to revise 2.161 (b) to state that the affidavit or
declaration must include a verified 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 8 of the Act. The Office also proposes to revise
2.161(b)(2) to state that a person properly authorized to sign on behalf
of the owner includes a person with legal authority to bind the owner
and/or a person with firsthand knowledge and actual or implied authority
to act on behalf of the owner.
The Office proposes to add 2.161(d)(2), requiring a surcharge for
filing an affidavit or declaration of continued use or excusable nonuse
during the grace period.
The Office proposes to add 2.161(d)(3), stating that if the fee
submitted is enough to pay for at least one class, but not enough to pay
for all the classes, and the particular class(es) covered by the
affidavit or declaration 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; that additional fee(s) may be submitted if the requirements of
2.164 are met; and that if additional fees 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.
Proposed 2.161 (e) requires that the affidavit or declaration list
both the goods or services on which the mark is in use in commerce and
the goods or services for which excusable nonuse is claimed. Currently,
a list of the goods or services is not required when excusable nonuse is
claimed. In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993).
However, TLTIA 105 amends 8(b)(2) of the Act to specifically require
"an affidavit setting forth those goods on or in connection with which
the mark is not in use."
The Office proposes to eliminate the requirement that the affidavit or
declaration specify the type of commerce in which the mark is used,
currently required by 2.162(e). Section 8 of the Act does not require
that the affidavit or declaration list the type of commerce. Because the
definition of "commerce" in 45 of the Act is "all commerce which may
lawfully be regulated by Congress," the Office will presume that a
registrant 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.
The Office proposes to move the substance of 2.162(f) to 2.161
(f)(2), and to revise it to add a requirement that the affidavit state
the date when use of the mark stopped and the approximate date when use
will resume. This codifies current practice. Office actions are often
issued requiring a statement as to when use of the mark stopped and when
use will resume, because this information is needed to determine whether
the nonuse is excusable, within the meaning of 8 of the Act.
The Office proposes to move the substance of 2.162(e) to 2.161(g),
and to revise it to state that the affidavit must include a specimen for
each class of goods or services; that the specimen should be no larger
than 8 1/2 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long; and
that if the applicant files a specimen that 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. See the discussion above under
"Supplementary Information/Bulky Specimens."
The Office proposes to add 2.161(h), requiring a designation of a
domestic representative if the registrant is not domiciled in the United
States. This reflects 8(f) of the Act, as amended, and is consistent
with current practice.
The Office proposes to move the substance of 2.163 to 2.162, and to
revise it to say that the only notice of the requirement for filing the
8 affidavit or declaration of continued use or excusable nonuse is sent
with the certificate of registration when it is originally issued. This
merely clarifies, and does not change, current practice.
The Office proposes to move the substance of current 2.164 to the
introductory text of new 2.163.
The Office proposes to state in 2.163(a) that if the owner of the
registration files the affidavit or declaration within the time periods
set forth in 8 of the Act, deficiencies may be corrected if the
requirements of 2.164 are met.
The Office proposes to add 2.163(b), stating that a response to an
examiner's Office action must be filed within six months of the mailing
date, or before the end of the filing period set forth in 8(a) or
8(b) of the Act, whichever is later, or the registration will be
cancelled.
The Office proposes to add 2.164, "Correcting deficiencies in
affidavit or declaration." This section changes current practice. There
are now some deficiencies that can be corrected after the statutory
deadline for filing the affidavit or declaration, such as supplying
evidence that the party who filed the affidavit or declaration was the
owner of the mark as of the filing date, or submitting an additional
fee. Other requirements must be satisfied before the expiration of the
statutory deadline to avoid cancellation of the registration. In re
Mother Tucker's Food Experience (Canada) Inc., 925 F.2d 1402, 17 USPQ2d
1795 (Fed. Cir. 1991) (allegation of use in commerce); In re Metrotech,
33 USPQ2d 1049 (Comm'r Pats. 1993) (specimen); In re Bonbons Barnier
S.A., 17 USPQ2d 1488 (Comm'r Pats. 1990) (listing of goods or services).
TLTIA 105 adds 8(c)(2) of the Act to allow correction of
deficiencies, with payment of a deficiency surcharge. The Act does not
define "deficiency," but instead gives the Office broad discretion to
set procedures and fees for correcting deficiencies.
Proposed 2.164(a)(1) states that if the owner files the affidavit or
declaration within the period set forth in 8(a) or 8(b) of the Act,
deficiencies can be corrected before the end of this period without
paying a deficiency surcharge; and deficiencies can be corrected after
the expiration of this period with payment of the deficiency surcharge.
The Office proposes to state in 2.164(a)(2) that if the owner files
the affidavit or declaration during the grace period, deficiencies can
be corrected before the expiration of the grace period without paying a
deficiency surcharge, and after the expiration of the grace period with
a deficiency surcharge.
The Office proposes to state in 2.164(b) that if the affidavit or
declaration is not filed within the time periods set forth in 8 of the
Act, or if it is filed within that period by someone other than the
owner, the registration will be cancelled. These deficiencies cannot be
cured.
Because 8(c)(2) of the Act specifically requires a deficiency
surcharge, the Office proposes to require the deficiency surcharge for
correcting any type of deficiency, even one that could be corrected for
no fee under current law.
The Office proposes to change the heading of 2.165 to "Petition to
Commissioner to review refusal"; to remove the last two sentences of the
current 2.165(a)(1); and to simplify the language of the rule.
The Office proposes to remove present 2.166 because it is unnecessary.
Proposed 2.163(b) and 2.165(b) set forth the times when a
registration will be cancelled.
The Office proposes to add 2.166, "Affidavit of continued use or
excusable nonuse combined with renewal application," stating that an
affidavit or declaration under 8 of the Act and a renewal application
under 9 of the Act may be combined in a single document.
The Office proposes to revise 2.167(c) to delete the requirement that
an affidavit or declaration under 15 of the Act ( 15 affidavit)
specify the type of commerce in which the mark is used.
The Office proposes to change the heading of 2.168 to "Affidavit or
declaration under 15 combined with affidavit or declaration under 8,
or with renewal application." The Office proposes to revise 2.168(a)
to state that a 15 affidavit may be combined with a 8 affidavit, if
the combined affidavit meets the requirements of both 9 and 15 of
the Act. The Office proposes to revise 2.168(b) to state that a 15
affidavit can be combined with a renewal application under 9 of the
Act, if the requirements of both 9 and 15 of the Act are met.
The Office proposes to revise 2.173(a) to simplify the language.
The Office proposes to revise 2.181 to indicate that renewal of a
registration is subject to the provisions of 8 of the Act. This is
consistent with the amendment to 9(a) of the Act.
The Office proposes to change the heading of 2.182 to "Time for filing
renewal application," and to revise it to state that the renewal
application must be filed within one year before the expiration date of
the registration, or within the six-month grace period after the
expiration date with an additional fee. This changes current practice.
Section 9 of the Act now requires filing within six months before the
expiration of the registration, or within a three-month grace period
thereafter with a late fee.
The Office proposes to change the heading of 2.183 to "Requirements
for a complete renewal application," and to revise it to delete the
present renewal requirements and substitute new ones based on amended
9 of the Act. In particular, the Office proposes to delete the
requirements for a specimen and declaration of use or excusable nonuse
on or in connection with the goods or services listed in the
registration, because these requirements have been removed from 9 of
the Act. The proposed requirements for renewal are: (1) a signed request
for renewal; (2) a renewal fee for each class; (3) a grace period
surcharge for each class if the renewal application is filed during the
grace period; (4) if the registrant is not domiciled in the United
States, a designation of a domestic representative; and (5) if the
renewal application covers less than all the goods or services, a list
of the particular goods or services to be renewed.
The Office proposes to state in 2.183(f) that if the fee submitted is
enough to pay for at least one class, but not enough to pay for all the
classes, and the class(es) covered by the renewal application 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; that additional fee(s) may
be submitted if the requirements of 2.185 are met; and that 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.
The Office proposes to revise and simplify the language of current
2.184 and to transfer some of its provisions to new 2.186. The revised
provisions state that the Office will issue a notice if the renewal
application is not acceptable; that a response to the refusal of renewal
must be filed within six months of the mailing date of the Office
action, or before the expiration date of the registration, whichever is
later; and that the registration will expire if the renewal application
is not filed within the time periods set forth in 9(a) of the Act.
The Office proposes to add 2.185, "Correcting deficiencies in renewal
application." This section changes current practice. There are now some
deficiencies that can be corrected after the statutory deadline for
filing the renewal application, such as supplying evidence that the
party who filed the application was the owner of the registration on the
filing date. Other requirements, such as the renewal fee, must be met
before the end of the statutory filing period, or the registration will
expire. In re Culligan International Co., 915 F.2d 680, 16 USPQ2d 1234
(Fed. Cir. 1990).
Under amended 9, the renewal application must be filed within the
renewal period or grace period specified in 9(a) of the Act, or the
registration will expire. However, if the renewal application is timely
filed, any deficiencies may be corrected after expiration of the
statutory filing period, with payment of a deficiency surcharge.
The Office proposes to state in 2.185(a)(1)that if the renewal
application is filed within one year before the registration expires,
deficiencies may be corrected before the registration expires without
paying a deficiency surcharge, or after the registration expires with
payment of the deficiency surcharge required by 9(a) of the Act.
The Office proposes to state in 2.185(a)(2) that if the renewal
application is filed during the grace period, deficiencies may be
corrected before the expiration of the grace period without paying a
deficiency surcharge, and after the expiration of the grace period with
payment of the deficiency surcharge required by 9(a) of the Act.
The Office proposes to state in 2.185(b) that if the renewal
application is not filed within the time periods set forth in 9(a) of
the Act, the registration will expire. This deficiency cannot be cured.
Because 9(a) of the Act specifically requires a deficiency surcharge,
the Office proposes to charge the deficiency surcharge for correcting
any type of deficiency, even one that could be corrected for no fee
under current law.
The Office proposes to add new 2.186, "Petition to Commissioner to
review refusal of renewal."
Proposed 2.186(a) states that a response to the examiner's initial
refusal is required before filing a petition to the Commissioner, unless
the examiner directs otherwise. This is consistent with the current
2.184(a).
Proposed 2.186(b) states that if the examiner maintains the refusal of
the renewal application, a petition to the Commissioner to review the
action may be filed within six months of the mailing date of the Office
action maintaining the refusal; and that if no petition is filed within
six months of the mailing date of the Office action, the registration
will expire. This is consistent with the current 2.184(b).
Proposed 2.186(c) states that a decision by the Commissioner is
necessary before filing an appeal or commencing a civil action in any
court. This is consistent with the current 2.184(d).
The Office proposes to amend 3.16 to state that an applicant may
assign an application based on 1(b) of the Act once the applicant
files an amendment to allege use under 1(c) of the Act.
The Office proposes to change the heading of 3.24 to "Requirements for
documents and cover sheets relating to patents and patent applications."
The Office proposes to list the recording requirements for patents in
3.24, and to add new 3.25 listing the recording requirements for
trademark applications and registrations.
Section 3.25 identifies the types of documents one can submit when
recording documents that affect some interest in trademark applications
or registrations. The section also identifies the Office's preferred
format for cover sheets and other documents.
The Office proposes to revise 3.28 to state a preference that separate
cover sheets be used for patents and trademarks.
The Office proposes to revise 3.3l(a)(4) to set forth the requirements
for identifying a trademark application where the application serial
number is not known.
The Office proposes to delete the requirement currently in 3.3 l(a)(9)
that a cover sheet contain a statement that the information on the cover
sheet is correct and that any copy of the document submitted is a true
copy.
The Office proposes to amend 3.3l(b) to state that a cover sheet
"should" not refer to both patents and trademarks and to put the public
on notice that if a cover sheet contains both patent and trademark
information, all information will become public after recordation.
The Office proposes to add 3.31(d) to state the Office's preference
that a trademark cover sheet include the serial number or registration
number of the trademark affected by the conveyance or transaction, an
identification of the mark, and a description of the mark.
The Office proposes to add 3.3l(e) to state the Office's preference
that the cover sheet include the total number of applications,
registrations, or patents identified on the cover sheet and the total
fee.
The Office proposes to revise 6.1 to incorporate classification
changes that became effective January 1, 1997, as listed in the
International Classification of Goods and Services for the Purposes of
the Registration of Marks (7th ed. 1996), published by the World
Intellectual Property Organization (WIPO).
Environmental, Energy, and Other Considerations
The Office has determined that the proposed rule changes have no
federalism implications affecting the relationship between the National
Government and the State as outlined in Executive Order 12612.
The Chief Counsel for Regulation of the Department of Commerce has
certified to the Chief Counsel for Advocacy of the Small Business
Administration, that the proposed rule changes will not have a
significant impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)). This rule implements the Trademark
Law Treaty Implementation Act and simplifies and clarifies procedures
for registering trademarks and maintaining and renewing trademark
registrations. The rule will not significantly impact any businesses.
The principal effect of the rule is to make it easier for applicants to
obtain a filing date. No additional requirements are added to maintain
registrations. Furthermore, this rule simplifies the procedures for
registering trademarks in proposed sections 2.21, 2.32, 2.34, 2.45,
2.76, 2.88, 2.161, 2.167 and 2.183 of the Trademark rules. As a result,
an initial regulatory flexibility analysis was not prepared.
The proposed rule changes are in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et
seq.). The proposed changes have been determined to be not significant
for purposes of Executive Order 12866.
Notwithstanding any other provision of law, no person is required to nor
shall a person be subject to a penalty for failure to comply with a
collection of information subject to the requirements of the PRA unless
that collection of information displays a currently valid OMB control
number.
This rule contains collections of information requirements subject to
the PRA. This rule discusses changes in the information required from
the public to obtain registrations for trademarks and service marks, to
submit affidavits or declarations of continued use or excusable nonuse,
statements of use, requests for extensions of time to file statements of
use, and to renew registrations. This rule proposes to delete
requirements to identify the method of use of a mark and the type of
commerce in which a mark is used.
Additionally, the rule removes the requirement that requests for
recordation of documents be accompanied by originals or true copies of
these documents. The rule proposes to allow for the filing of powers of
attorney that pertain to multiple registrations or applications for
registration, and proposes certain requirements for filing such powers
of attorney. Additionally, the rule proposes requirements for submitting
8 affidavits of continued use or excusable nonuse combined with 9
renewal applications, or 15 affidavits or declarations of
incontestability combined with either 8 affidavits or declarations or
with 9 renewal applications.
An information collection package supporting the changes to the above
information requirements, as discussed in this rule, has been submitted
to OMB for review and approval. The public reporting burden for this
collection of information is estimated to average as follows: seventeen
minutes for applications to obtain registrations based on an intent to
use the mark under 1(b) of the Act, if completed using paper forms;
fifteen minutes for applications to obtain registrations based on an
intent to use the mark under 1(b) of the Act, if completed using an
electronic form; twenty-three minutes for applications to obtain
registrations based on use of the mark under 1(a) of the Act, if
completed using paper forms; twenty-one minutes for applications to
obtain registrations based on use of the mark under 1(a) of the Act,
if completed using an electronic form; twenty minutes for applications
to obtain registrations based on an earlier-filed foreign application
under 44(d) of the Act, if completed using paper forms; nineteen
minutes for applications to obtain registrations based on an
earlier-filed foreign application under 44(d) of the Act, if completed
using an electronic form; twenty minutes for applications to obtain
registrations based on registration of a mark in a foreign applicant's
country of origin under 44(e) of the Act; thirteen minutes for
allegations of use of the mark under 2.76 and 2.88; ten minutes for
requests for extension of time to file statements of use under 2.89;
fourteen minutes for renewal applications under 9 of the Act combined
with affidavits or declarations of continued use or excusable nonuse
under 8 of the Act; fourteen minutes for combined
affidavits/declarations of use and incontestability under 8 and 15
of the Act; eleven minutes for an affidavit or declaration of continued
use or excusable nonuse under 8 of the Act; eleven minutes for a
renewal application under 9 of the Act; eleven minutes for a
declaration of incontestability under 15 of the Act; three minutes for
powers of attorney and designations of domestic representatives; and
thirty minutes for a trademark recordation form cover sheet. These time
estimates include the time for reviewing instructions, searching
existing data sources, gathering and maintaining the data needed, and
completing and reviewing the collection of information. Comments are
invited on: (1) whether the collection of information is necessary for
proper performance of the functions of the agency; (2) the accuracy of
the agency' s estimate of the burden; (3) ways to enhance the quality,
utility, and clarity of the information to be collected; and (4) ways to
minimize the burden of the collection of information to respondents.
This rule also involves information requirements associated with
amendments, oppositions, and petitions to cancel. The amendments and the
oppositions have been previously approved by OMB under control number
0651-0009. The petitions to cancel have been previously approved by OMB
under control number 0651-0040. These requirements are not being
resubmitted for review at this time. Send comments regarding this burden
estimate, or any other aspect of this data collection, including
suggestions for reducing the burden, to the Assistant Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513 (Attn: Ari
Leifman), and to the Office of Information and Regulatory Affairs, OMB,
725 17th Street, N.W., Washington, D.C. 20230 (Attn: PTO Desk Officer).
Proposed 2.21, 2.32, 2.34, 2.45, 2.76, 2.88, 2.161, 2.167, and 2.183
may lessen the public reporting burden.
An application to obtain a registration can only be accepted for review
if a respondent provides certain required minimum elements; otherwise,
the Office will return the application to the respondent. Proposed
2.21 lessens the number of these required minimum elements. Therefore,
the number of applications returned to respondents may decline, and this
may result in fewer multiple submissions of applications to obtain
registrations from single respondents.
An application to obtain registration must identify at least one legal
basis for filing the application. Currently, two of these bases, use of
the mark and a bona fide intention to use the mark, may not be
identified in a single application. Proposed 2.34 allows a respondent
to assert each of these bases with respect to different goods or
services in a single application. This may allow some applicants to
submit a single application rather than multiple applications.
Currently, applicants must describe the manner in which the mark is used
or intended to be used in applications for registration of trademarks
and service marks, in applications for registration of collective
membership marks, in applications for registration of certification
marks, in amendments to allege use of a mark, and in statements of use.
Proposed 2.32 removes this requirement with respect to applications
for registration of trademarks, service marks and collective membership
marks; proposed 2.45 removes this requirement with respect to
applications to register certification marks; proposed 2.76 removes
this requirement with respect to amendments to allege use; and proposed
2.88 removes this requirement with respect to statements of use. The
Office estimates that the removal of this requirement may reduce the
time needed to complete each of these submissions by two minutes.
Currently, the type of commerce in which a mark is used must be
specified in affidavits or declarations of continued use or excusable
nonuse, in applications for renewal, and in declarations of
incontestability. Proposed 2.161 eliminates this requirement with
respect to declarations of continued use; proposed 2.167 eliminates
this requirement with respect to declarations of incontestability; and
proposed 2.183 eliminates this requirement with respect to
applications for renewal. The Office estimates that the removal of this
requirement may reduce the time needed to complete each of these
submissions by one minute.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Patents.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
37 CFR Part 6
Trademarks.
For the reasons given in the preamble and under the authority contained
in 35 U.S.C. 6 and 15 U.S.C. 41, as amended, the Patent and Trademark
Office proposes to amend parts 1, 2, 3, and 6 of title 37 as follows:
PART I - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for part 1 continues to read as follows:
authority: 35 U.S.C. 6, unless otherwise noted.
1a. Amend 1.1 by revising paragraph (a)(2) to read as follows:
1.1 Addresses for correspondence with the Patent and Trademark Office.
(a) ***
(2) Trademark correspondence.
(i) Send all trademark filings and correspondence, except as specified
below or unless submitting electronically, to:
Assistant Commissioner for Trademarks
2900 Crystal Drive
Arlington, Virginia 22202-3513
(ii) Send trademark-related documents for the Assignment Division to
record to:
Commissioner of Patents and Trademarks
Box Assignment
Washington, D.C.20231
(iii) Send requests for certified or uncertified copies of trademark
applications and registrations, other than coupon orders for uncertified
copies of registrations, to:
Commissioner of Patents and Trademarks
Box 10
Washington, D.C.20231
(iv) Send requests for coupon orders for uncertified copies of
registrations to:
Commissioner of Patents and Trademarks
Box 9
Washington, D.C. 20231
(v) An applicant may transmit an application for trademark registration
electronically, but only if the applicant uses the Patent and Trademark
Office's electronic form.
*****
2. Amend 1.4 by revising the last sentence of paragraph (a)(2),
revising paragraphs (d)(1) and (d)(1)(ii), and adding a new paragraph
(d)(1)(iii) to read as follows:
1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) * * * See particularly the rules relating to the filing, processing,
or other proceedings of national applications in subpart B, 1.31 to
1.378; of internationalapplications in subpart C, 1.401 to 1.499; of
reexamination of patents in subpart D, 1.501 to 1.570; of
interferences in subpart E, 1.601 to 1.690; of extension of
patentterm in subpart F, 1.710 to 1.785; and of trademark
applications and registrations, 2.11 to 2.186.
*****
(d)(1) Each piece of correspondence, except as provided in paragraphs
(e) and (f) of this section, filed in a patent or trademark application,
reexamination proceeding, patent or trademark interference proceeding,
patent file or trademark registration file, trademark opposition
proceeding, trademark cancellation proceeding, or trademark concurrent
use proceeding, which requires a person's signature, must:
(i) ***
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission ( 1.6(d)), of an original. In the event that a copy of
the original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Office may
require submission of the original; or
(iii) Where an electronically transmitted trademark filing is permitted,
the person who signs the filing must either:
(A) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic submission;
and print, sign and date in permanent ink, and maintain a paper copy of
the electronic submission. Additionally, the person who signs the filing
must maintain a verified statement confirming that the signatory has
adopted the symbol shown in the signature block to verify the contents
of the filing, and that the information in the electronic submission is
identical to the information in the paper copy of the submission. This
verified statement should not be submitted; or
(B) Sign the verified statement using some other form of electronic
signature specified by the Commissioner.
*****
3. Amend 1.5 by revising paragraph (c) to read as follows:
1.5 Identification of application, patent or registration.
*****
(c)(1) A letter about a trademark application should identify the serial
number, the name of the applicant, and the mark.
(2) A letter about a registered trademark should identify the
registration number, the name of the registrant, and the mark.
*****
4. Amend 1.6 by revising paragraph (a)(1), and adding new paragraph
(a)(4), to read as follows:
1.6 Receipt of correspondence.
(a) ***
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile under paragraph (a)(3), or filed electronically under
paragraph (a)(4) of this section, no correspondence is received in the
Office on Saturdays, Sundays, or Federal holidays within the District of
Columbia.
*****
(4) Trademark-related correspondence transmitted electronically will be
stampedwith the date on which the Office receives the transmission.
*****
5. Revise 1.23 to read as follows:
1.23 Method of payment.
All payments of money required for Patent and Trademark Office fees,
including fees for the processing of international applications (
1.445), shall be made in U.S. dollars and in the form of cashier's
checks, Treasury notes, post office money orders, or by certified check.
If sent in any other form, the Office may delay or cancel the credit
until collection is made. Payments for USPTO electronic applications and
other electronic submissions authorized by the USPTO may be made by
credit card identified on the electronic form. Money orders and checks
must be made payable to the Commissioner of Patents and Trademarks.
Remittances from foreign countries must be payable and immediately
negotiable in the United States for the full amount of the fee required.
Money sent by mail to the Office will be at the risk of the sender;
letters containing currency should be registered.
PART 2 - RULES APPLICABLE TO TRADEMARK CASES
6. The authority citation for part 2 continues to read as follow:
authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
6a. Revise 2.1 to read as follows:
2.1 Sections of part 1 applicable.
Sections 1.1 to 1.26 of this chapter apply to trademark cases, except
those parts that specifically refer to patents, and except 1.22 to
the extent that it is inconsistent with 2.85(e), 2.101(d), 2.111(c),
2.164, or 2.185. Other sections of part 1 incorporated by reference in
part 2 also apply to trademark cases.
7. Section 2.6 is amended by revising the introductory text, paragraphs
(a)(5), (a)(6), (a)(12), (a)(13), (a)(14), (a)(19), (a)(20), and (a)(21)
to read as follows:
2.6 Trademark fees.
The Patent and Trademark Office requires the following fees and charges:
(a) ***
(5) For filing an application for renewal of a registration,
per class $200.00
(6) Additional fee for filing a renewal application during the grace
period, per class $100.00
(12) For filing an affidavit under section 8 of the Act, per
class $200.00
(13) For filing an affidavit under section 15 of the Act, per
class $200.00
(14) Additional fee for filing a section 8 affidavit during the
grace period, per class $100.00
*****
(19) For filing a request to divide an application, per new
application (file wrapper) created $300.00
(20) For correcting a deficiency in a
section 8 affidavit $100.00
(21) For correcting a deficiency in a renewal
application $100.00
8. Amend 2.17 by adding paragraphs (c) and (d) to read as follows:
2.17 Recognition for representation.
*****
(c) To be recognized as a representative, an attorney as defined in
10.1(c) of this chapter may file a power of attorney, appear in person,
or sign a paper on behalf of an applicant or registrant that is filed
with the Office in a trademark case.
(d) A party 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 of that party. A party relying on a power
of attorney concerning more than one application or registration must:
(1) Include a copy of the previously filed power of attorney; or
(2) Refer to the power of attorney, specifying the filing date of the
previously filed power of attorney; the application serial number (if
known), 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.
9. Revise 2.20 to read as follows:
2.20 Declarations in lieu of oaths.
Instead of an oath, affidavit, verification, or sworn statement, the
following language may be used:
I declare pursuant to the provisions of 18 U.S.C. 1001 and
under the penalty of perjury that all statements made of my own
knowledge are true and that all statements made on information and
belief are believed to be true. I understand that willful false
statements and the like are punishable by fine or imprisonment, or both,
and may jeopardize the validity of the application or document or any
registration resulting therefrom.
10. Revise 2.21 to read as follows:
2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application that contains
all of the following:
(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, required
by 2.6.
(b) If the applicant does not submit all the elements required in
paragraph (a), the Office may return the papers with an explanation of
why the filing date was denied.
(c) The applicant may correct and resubmit the application papers. If
the resubmitted papers and fee meet all the requirements of paragraph
(a) of this section, the Office will grant a filing date as of the date
the Office receives the corrected papers.
11. Remove and reserve 2.31.
12. Revise 2.32 to read as follows:
2.32 Requirements for written application.
(a) The application must be in English and include the following:
(1) A request for registration;
(2) The name of the applicant(s);
(3)(i) The citizenship of the applicant(s); or
(ii) If the applicant is a corporation, association, partnership or
other juristic person, the state or nation under the laws of which the
applicant is organized; and
(iii) If the applicant is a partnership, the names and citizenship of
the general partners;
(4) The address of the applicant;
(5) One or more bases, as required by 2.34(a);
(6) A list of the particular goods or services on or in connection with
which the applicant uses or intends to use the mark. In a United States
application filed undersection 44 of the Act, the scope of the goods or
services covered by the section 44 basis may not exceed the scope of the
goods or services in the foreign application or registration; and
(7) The international class of goods or services, if known. See 6.1 of
this chapter for a list of the international classes of goods and
services.
(b) The application must include a verified statement that meets the
requirements of 2.33.
(c) For the requirements for a multiple class application, see 2.86.
13. Revise 2.33 to read as follows:
2.33 Verified statement.
(a) The application must 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 applicant. A person who is
properly authorized to sign on behalf of the applicant includes a person
with legal authority to bind the applicant and/or a person with
firsthand knowledge and actual or implied authority to act on behalf of
the applicant.
(b)(1) In an application under section l(a) of the Act, the verified
statement must allege:
That the applicant has adopted and is using the mark shown in
the accompanying drawing; that the applicant believes it is the owner of
the mark; that the mark is in use in commerce, specifying the type of
commerce; that to the best of the declarant's knowledge and belief, no
other person has the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when applied
to the goods or services of the other person, to cause confusion or
mistake, or to deceive; that the specimen shows the mark as used on or
in connection with the goods or services; and that the facts set forth
in the application are true.
(2) In an application under section l(b) or section 44 of the
Act, the verified statement must allege:
That the applicant has a bona fide intention to use the mark
shown in the accompanying drawing in commerce on or in connection with
the specified goods or services; that the applicant believes it is
entitled to use the mark; that to the best of the declarant's knowledge
and belief, no other person has the right to use the mark in commerce,
either in the identical form or in such near resemblance as to be
likely, when applied to the goods or services of the other person, to
cause confusion or mistake, or to deceive; and that the facts set forth
in the application are true.
(c) If the verified statement is not filed within a reasonable
time after it is signed, the Office may require the applicant to submit
a substitute verification or declaration under 2.20 of the applicant's
continued use or bona fide intention to use the mark in commerce.
(d) Where an electronically transmitted filing is permitted, the person
who signs the verified statement must either:
(1) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic submission;
and print, sign and date in permanent ink, and maintain a paper copy of
the electronic submission. Additionally, the applicant must maintain a
verified statement confirming that the signatory has adopted the symbol
shown in the signature block to verify the contents of the document, and
that the information in the electronic submission is identical to the
information in the paper copy of the submission. The applicant should
not submit this verified statement; or
(2) Sign the verified statement using some other form of electronic
signature specified by the Commissioner.
14. Add 2.34 to read as follows:
2.34 Bases for filing.
(a) The application must include one or more of the following four
filing bases:
(1) Use in commerce under section l(a) of the Act. The requirements for
anapplication based on section l(a) of the Act are:
(i) The trademark owner's verified statement that the mark is in use in
commerce on or in connection with the goods or services listed in the
application. If the verification is not filed with the initial
application, the verified statement must allege that the mark was in use
in commerce on or in connection with the goods or services listed in the
application as of the application filing date;
(ii) The date of the applicant's first use of the mark anywhere on or in
connection with the goods or services;
(iii) The date of the applicant's first use of the mark in commerce as a
trademark or service mark, specifying the type of commerce; and
(iv) One specimen showing how the applicant actually uses the mark in
commerce.
(v) An application may list more than one item of goods, or more than
one service, provided the applicant has used the mark on or in
connection with all the specified goods or services. The dates of use
required by paragraphs (ii) and (iii) of this section may be for only
one of the items specified.
(2) Intent-to-use under section 1(b) of the Act.
(i) In an application under section l(b) of the Act, the trademark owner
must verify that it has a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the
application. If the verification is not filed with the initial
application, the verified statement must allege that the applicant had a
bona fide intention to use the mark in commerce as of the filing date of
the application.
(ii) The application may list more than one item of goods, or more than
one service, provided the applicant has a bona fide intention to use the
mark in commerce on or in connection with all the specified goods or
services.
(3) Registration of a mark in a foreign applicant's country of origin
under section 44(e) of the Act. The requirements for an application
under section 44(e) of the Act are:
(i) The trademark owner's verified statement that it has a bona fide
intention to use the mark in commerce on or in connection with the goods
or services listed in the application. If the verification is not filed
with the initial application, the verified statement must allege that
the applicant had a bona fide intention to use the mark in commerce as
of the filing date of the application.
(ii) A certification or certified copy of a registration in the
applicant's country of origin showing that the mark has been registered
in that country, and that the registration is in full force and effect.
The certification or certified copy must show the name of the owner, the
mark, and the goods or services for which the mark is registered. If the
certification or certified copy is not in the English language, the
applicant must submit a translation.
(iii) If the record indicates that the foreign registration will expire
before the United States registration will issue, the applicant must
submit a certification or certified copy from the country of origin to
establish that the registration has been renewed and will be in force at
the time the United States registration will issue. If the certification
or certified copy is not in the English language, the applicant must
submit a translation.
(iv) The application may list more than one item of goods, or more than
one service, provided the applicant has a bona fide intention to use the
mark in commerce on or in connection with all the specified goods or
services.
(4) Claim of priority, based upon an earlier-filed foreign application,
under section 44(d) of the Act. The requirements for an application
under section 44(d) of the Act are:
(i) A claim of priority, filed within six months of the filing date of
the foreign application. Before publication or registration on the
Supplemental Register, the applicant must either:
(A) Specify the filing date and country of the first regularly filed
foreign application; or
(B) State that the application is based upon a subsequent regularly
filed application in the same foreign country, and that any prior-filed
application has been withdrawn, abandoned or otherwise disposed of,
without having been laid open to public inspection and without having
any fights outstanding, and has not served as a basis for claiming a
fight of priority.
(ii) Include the trademark owner's verified statement that it has a bona
fide intention to use the mark in commerce on or in connection with the
goods or services listed in the application. If the verification is not
filed with the initial application, the verified statement must allege
that the applicant had a bona fide intention to use the mark in commerce
as of the filing date of the application.
(iii) Before the application can be approved for publication, or for
registration onthe Supplemental Register, the applicant must establish a
basis under section l(a), section l(b) or section 44(e) of the Act.
(iv) The application may list more than one item of goods, or more than
one service, provided the applicant has a bona fide intention to use the
mark in commerce on or in connection with all the specified goods or
services.
(b)(1) The applicant may claim more than one basis, provided that the
applicant satisfies all requirements for the bases claimed. However, the
applicant may not claim both sections l(a) and l(b) for the identical
goods or services in the same application.
(2) If the applicant claims more than one basis, the applicant must list
each basis, followed by the goods or services to which that basis
applies. If some or all of the goods or services are covered by more
than one basis, this must be stated.
(c) The word "commerce" means commerce that Congress may lawfully
regulate, as specified in section 45 of the Act.
15. Remove 2.37.
16. Redesignate 2.35 as 2.37.
17. Add new 2.35, to read as follows:
2.35 Adding, deleting, or substituting bases.
(a) Before publication, the applicant may add or substitute a basis, if
the applicant meets all requirements for the new basis, as stated in
2.34. The applicant may delete a basis at any time.
(b) An applicant may not amend an application to add or substitute a
basis after the mark has been published for opposition. The applicant
may delete a basis after publication.
(c) When the applicant substitutes a basis, the Office will presume that
the original basis was valid and the application will retain the
original filing date, unless there is contradictory evidence in the
record.
(d) If an applicant properly claims a section 44(d) basis in addition to
another basis, the applicant will retain the priority filing date under
section 44(d) no matter which basis the applicant perfects.
(e) The applicant may add or substitute a section 44(d) basis only
within the six-month priority period following the filing date of the
foreign application.
(f) When the applicant adds or substitutes a basis, the applicant must
list each basis, followed by the goods or services to which that basis
applies.
(g) When the applicant deletes a basis, the applicant must also delete
any goods or services covered solely by the deleted basis.
(h) Once an applicant claims a section l(b) basis as to any or all of
the goods or services, the applicant may not amend the application to
seek registration under section l(a) of the Act for those goods or
services unless the applicant files an allegation of use under section
l(c) or section l(d) of the Act.
18. Amend 2.38 by revising paragraph (a) to read as follows:
2.38 Use by predecessor or by related companies.
(a) If the first use of the mark was by a predecessor in title or by a
related company (sections 5 and 45 of the Act), and the use inures to
the benefit of the applicant, the dates of first use ( 2.34(a)(1)(ii)
and (iii)) may be asserted with a statement that first use was by the
predecessor in title or by the related company, as appropriate.
19. Remove and reserve 2.39.
20. Revise 2.45 to read as follows:
2.45 Certification mark.
(a) In an application to register a certification mark under section
1(a) of the Act, the application shall include all applicable elements
required by the preceding sections for trademarks. In addition, the
application must: specify the conditions under which the certification
mark is used; allege that the applicant exercises legitimate control
over the use of the mark; allege that the applicant is not engaged in
the production or marketing of the goods or services to which the mark
is applied; and include a copy of the standards that determine whether
others may use the certification mark on their goods and/or in
connection with their services.
(b) In an application to register a certification mark under section
l(b) or section 44 of the Act, the application shall include all
applicable elements required by the preceding sections for trademarks.
In addition, the application must: specify the conditions under which
the certification mark is intended to be used; allege that the applicant
intends to exercise legitimate control over the use of the mark; and
allege that the applicant will not engage in the production or marketing
of the goods or services to which the mark is applied. When the
applicant files an amendment to allege use undersection 1(c) of the Act,
or a statement of use under section 1(d) of the Act, the applicant must
submit a copy of the standards that determine whether others may use the
certification mark on their goods and/or in connection with their
services.
21. In 2.51, remove paragraphs (c), (d) and (e).
22. Revise 2.52 to read as follows:
2.52 Types of drawings and format for drawings.
(a) A drawing depicts the mark sought to be registered. The drawing must
show only one mark. The applicant must include a clear drawing of the
mark when the application is filed. There are two types of drawings:
(1) Typed drawing. The drawing may be typed if the mark consists only of
words, letters, numbers, common forms of punctuation, or any combination
of these elements. In a typed drawing, every word or letter must be
typed in uppercase type. If the applicant submits a typed drawing, the
application is not limited to the mark depicted in any special form or
lettering.
(2) Special form drawing. A special form drawing is required if the mark
has a two or three-dimensional design; or color; or words, letters, or
numbers in a particular style of lettering; or unusual forms of
punctuation.
(i) Special form drawings must be made with a pen or by a process that
will provide high definition when copied. A photolithographic, printer's
proof copy, or other high quality reproduction of the mark may be used.
Every line and letter, including color lining and lines used for
shading, must be black. All lines must be clean, sharp, and solid, and
must not be fine or crowded. Gray tones or tints may not be used for
surface shading or any other purpose.
(ii) If necessary to adequately depict the commercial impression of the
mark, the applicant may be required 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.
For any drawing using broken lines to indicate placement of the mark, or
matter not claimed as pan 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.
(iii) If the mark has three-dimensional features, the applicant must
submit a drawing that depicts a single rendition of the mark, and the
applicant must include a description of the mark indicating that the
mark is three-dimensional.
(iv) 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 four 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.
(v) If the mark has color, the applicant may claim that all or pan of
the mark consists of one or more colors. To claim color, the applicant
must submit a statement explaining where the color or colors appear in
the mark and the nature of the color(s).
(vi) If a drawing cannot adequately depict all significant features of
the mark, the applicant must also submit a written description of the
mark.
(3) 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.
(b) Recommended Format for special form drawings
(1) Type of paper and ink. The drawing should be on a piece of
non-shiny, white paper that is separate from the application. Black ink
should be used to depict the mark.
(2) Size of paper and size of mark. The drawing should be on paper that
is 8 to 8 1/2 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches
(27.9 to 29.7 cm.) long. One of the shorter sides of the sheet should be
regarded as its top edge. The drawing should be between 2.5 inches (6.1
cm.) and 4 inches (10.3 cm.) high and/or wide. There should be at least
a 1 inch (2.5 cm.) margin between the drawing and the edges of the
paper, and at least a 1 inch (2.5 cm.) margin between the drawing and
the heading.
(3) Heading. Across the top of the drawing, beginning one inch (2.5 cm.)
from the top edge, the applicant should type the following: applicant's
name; applicant's address; the goods or services recited in the
application, or a typical item of the goods or services if numerous
items are recited in the application; the date of first use of the mark
and first use of the mark in commerce in an application under section 1
(a) of the Act; the priority filing date of the relevant foreign
application in an application claiming the benefit of a prior foreign
application under section 44(d) of the Act. If the information in the
heading is lengthy, the heading may continue onto a second page,but the
mark should be depicted on the first page.
(c) Drawings in electronically transmitted applications. For an
electronically transmitted application, if the drawing is in special
form, the applicant must attach a digitized image of the mark to the
electronic submission.
23. Revise 2.56 to read as follows:
2.56 Specimens.
(a) An application under section l(a) of the Act, an amendment to allege
use under 2.76, and a statement of use under 2.88 must each include
one specimen showing themark as used on or in connection with the goods,
or in the sale or advertising of theservices in commerce.
(b)(1) A trademark specimen is a label, tag, or container for the goods,
or a display associated with the goods. The Office may accept another
document related to the goods or the sale of the goods when it is not
possible to place the mark on the goods or packaging for the goods.
(2) A service mark specimen must show the mark as actually used in the
sale or advertising of the services.
(3) A collective trademark or collective service mark specimen must show
how a member uses the mark on the member's goods or in the sale or
advertising of the member's services.
(4) A collective membership mark specimen must show use by members to
indicate membership in the collective organization.
(5) A certification mark specimen must show how a person other than the
owner uses the mark to certify regional or other origin, material, mode
of manufacture, quality, accuracy, or other characteristics of that
person's goods or services; or that members of a union or other
organization performed the work or labor on the goods or services.
(c) A photocopy or other reproduction of a specimen of the mark as
actually used on or in connection with the goods, or in the sale or
advertising of the services, is acceptable. However, a photocopy of the
drawing required by 2.51 is not a proper specimen.
(d)(1) The specimen should be flat, and not larger than 8 1/2 inches
(21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen of this
size is not available, the applicant may substitute a suitable
photograph or other facsimile.
(2) If the applicant files a specimen exceeding 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.
(3) In the absence of non-bulky alternatives, the Office may accept an
audio or video cassette tape recording, CD-ROM, or other appropriate
medium.
(4) For an electronically transmitted application, or other electronic
submission, the specimen must be submitted as a digitized image.
24. Remove and reserve 2.57.
25. Remove and reserve 2.58.
26. Revise 2.59 to read as follows:
2.59 Filing substitute specimen(s).
(a) In an application under section l(a) of the Act, the applicant may
submit substitute specimens of the mark as used on or in connection with
the goods, or in the sale or advertising of the services. The applicant
must verify by an affidavit or declaration under 2.20 that the
substitute specimens were in use in commerce at least as early as the
filing date of the application. Verification is not required if the
specimen is a duplicate or facsimile of a specimen already of record in
the application.
(b) In an application under section l(b) of the Act, after filing either
an amendment to allege use under 2.76 or a statement of use under
2.88, the applicant may submit substitute specimens of the mark as used
on or in connection with the goods, or in the sale or advertising of the
services. If the applicant submits substitute specimen(s), the applicant
must:
(1) For an amendment to allege use under 2.76, verify by affidavit or
declaration under 2.20 that the applicant used the substitute
specimen(s) in commerce prior to filing the amendment to allege use.
(2) For a statement of use under 2.88, verify by affidavit or
declaration under 2.20 that the applicant used the substitute
specimen(s) in commerce either prior to filing the statement of use or
prior to the expiration of the deadline for filing the statement of use.
27. Revise 2.66 to read as follows:
2.66 Revival of abandoned applications.
(a) The applicant may file a petition to revive an application abandoned
because the applicant did not timely respond to an Office action or
notice of allowance. The applicant must file the petition:
(1) Within two months of the mailing date of the notice of abandonment;
or
(2) Within two months of actual knowledge of the abandonment, if the
applicant did not receive the notice of abandonment, and the applicant
was diligent in checking the status of the application.
(b) The requirements for filing a petition to revive an application
abandoned because the applicant did not timely respond to an Office
action are:
(1) The petition fee required by 2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the response on or before the due date
was unintentional; and
(3) Unless the applicant alleges that it did not receive the Office
action, the proposed response.
(c) The requirements for filing a petition to revive an application
abandoned because the applicant did not timely respond to a notice of
allowance are:
(1) The petition fee required by 2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the statement of use (or request for
extension of time to file a statement of use) on or before the due date
was unintentional;
(3) Unless the applicant alleges that it did not receive the notice of
allowance and requests cancellation of the notice of allowance, the
required fees for the number of requests for extensions of time to file
a statement of use that the applicant should have filed under 2.89 if
the application had never been abandoned;
(4) Unless the applicant alleges that it did not receive the notice of
allowance and requests cancellation of the notice of allowance, either a
statement of use under 2.88 or a request for an extension of time to
file a statement of use under 2.89; and
(5) Unless a statement of use is filed with or before the petition, or
the applicant alleges that it did not receive the notice of allowance
and requests cancellation of the notice of allowance, the applicant must
file any further requests for extensions of time to file a statement of
use under 2.89 that become due while the petition is pending, or file
a statement of use under 2.88.
(d) In an application under section l(b) of the Act, the Commissioner
will not grant the petition if this would permit the filing of a
statement of use more than 36 months after the mailing date of the
notice of allowance under section 13(b)(2) of the Act.
(e) The Commissioner will grant the petition to revive if the applicant
complies with the requirements listed above and establishes that the
delay in responding was unintentional.
(f) If the Commissioner denies a petition, the applicant may request
reconsideration if the applicant:
(1) Files the request within two months of the mailing date of the
decision denying the petition; and
(2) Pays a second petition fee under 2.6.
28. Revise 2.71 to read as follows:
2.71 Amendments to correct informalities.
The applicant may amend the application during the course of
examination, when required by the Office or for other reasons.
(a) The applicant may amend the application to clarify or limit, but not
to broaden, the identification of goods and/or services.
(b)(1) If the declaration or verification of an application under 2.33
is unsigned or signed by the wrong party, the applicant may submit a
substitute verification or declaration under 2.20.
(2) If the declaration or verification of a statement of use under
2.88, or a request for extension of time to file a statement of use
under 2.89, is unsigned or signed by the wrong party, the applicant
must submit a substitute verification before the expiration of the
statutory deadline for filing the statement of use.
(c) The applicant may amend the dates of use, provided that the
applicant supports the amendment with an affidavit or declaration under
2.20, except that the following amendments are not permitted:
(1) In an application under section 1(a) of the Act, the applicant may
not amend the application to specify a date of use that is subsequent to
the filing date of the application;
(2) In an application under section l(b) of the Act, after filing a
statement of use under 2.88, the applicant may not amend the statement
of use to specify a date of use that is subsequent to the expiration of
the deadline for filing the statement of use.
(d) The applicant may amend the application to correct the name of the
applicant, if there is a mistake in the manner in which the name of the
applicant is set out in the application. The amendment must be supported
by an affidavit or declaration under 2.20, signed by the applicant.
However, the application cannot be amended to set forth a different
entity as the applicant. An application filed in the name of an entity
that did not own the mark as of the filing date of the application is
void.
29. Revise 2.72 to read as follows:
2.72 Amendments to description or drawing of the mark.
(a) In an application based on use in commerce under section l(a) of the
Act, the applicant may amend the description or drawing of the mark only
if:
(1) The specimens originally filed, or substitute specimens filed under
2.59(a), support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
(b) In an application based on a bona fide intention to use a mark in
commerce under section l(b) of the Act, the applicant may amend the
description or drawing of the mark only if:
(1) The specimens filed with an amendment to allege use or statement of
use, or substitute specimens filed under 2.59(b), support the proposed
amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
(c) In an application based on a claim of priority under section 44(d)
of the Act, or on a mark duly registered in the country of origin of the
foreign applicant under section 44(e) of the Act, the applicant may
amend the description or drawing of the mark only if:
(1) The description or drawing of the mark in the foreign registration
certificate supports the amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
30. Amend 2.76 by revising paragraphs (b), (e)(2), and (e)(3), and
adding paragraphs (i) and (j) to read as follows:
2.76 Amendment to allege use.
*****
(b) A complete amendment to allege use must include:
(1) 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 applicant (see 2.33(a)(2)) that:
(i) The applicant believes it is the owner of the mark; and
(ii) The mark is in use in commerce, specifying the date of the
applicant's first use of the mark and first use of the mark in commerce,
the type of commerce, and those goods or services specified in the
application on or in connection with which the applicant uses the mark
in commerce.
(2) One specimen of the mark as actually used in commerce. See 2.56
for the requirements for specimens; and
(3) The fee per class required by 2.6.
*****
(e) ***
(2) One specimen or facsimile of the mark as used in commerce; and
(3) 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 applicant that the mark is in use in commerce.
*****
(i) If the applicant does not file the amendment to allege use within a
reasonable time aeter it is signed, the Office may require a substitute
verification or declaration under 2.20 stating that the mark is still
in use in commerce.
(j) For the requirements for a multiple class application, see 2.86.
31. Revise 2.86 to read as follows:
2.86 Application may include multiple classes.
(a) In a single application, an applicant may apply to register the same
mark for goods and/or services in multiple classes. The applicant must:
(1) Specifically identify the goods or services in each class;
(2) Submit an application filing fee for each class; and
(3) Include either dates of use (see 2.34(a)(1)(ii) and (iii)) and
one specimen for each class, or a statement of a bona fide intention to
use the mark in commerce on or inconnection with all the goods or
services specified in each class. The applicant may not claim both use
in commerce and a bona fide intention to use the mark in commerce for
the identical goods or services in one application.
(b) An amendment to allege use under 2.76 or a statement of use under
2.88 must include, for each class, the required fee, dates of use, and
one specimen. The applicant may not file the amendment to allege use or
statement of use until the applicant has used the mark on all the goods
or services, unless the applicant files a request to divide. See 2.87
for information regarding requests to divide.
(c) The Office will issue a single certificate of registration for the
mark, unless the applicant files a request to divide. See 2.87 for
information regarding requests to divide.
32. Amend 2.88 by revising paragraphs (b) and (e) and by adding
paragraphs (k) and (l) to read as follows:
2.88 Filing statement of use after notice of allowance.
*****
(b) A complete statement of use must include:
(1) 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 applicant (see 2.33(a)(2)) that:
(i) The applicant believes it is the owner of the mark; and
(ii) The mark is in use in commerce, specifying the date of the
applicant's first use of the mark and first use of the mark in commerce,
the type of commerce, and those goods or services specified in the
notice of allowance on or in connection with which the applicant uses
the mark in commerce;
(2) One specimen of the mark as actually used in commerce. See 2.56
for the requirements for specimens; and
(3) The fee per class required by 2.6.
*****
(e) The Office will review a timely filed statement of use to determine
whether it meets the following minimum requirements:
(1) The fee for at least a single class, required by 2.6;
(2) One specimen of the mark as used in commerce;
(3) 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 applicant that the mark is in use in commerce. If the
verification or declaration is unsigned or signed by the wrong party,
the applicant must submit a substitute verification on or before the
statutory deadline for filing the statement of use.
*****
(k) If the statement of use is not filed within a reasonable time after
the date it is signed, the Office may require a substitute verification
or declaration under 2.20 stating that the mark is still in use in
commerce.
(l) For the requirements for a multiple class application, see 2.86.
33. Amend 2.89 by revising paragraphs (a), (b), and (d) and by adding
paragraph (h) to read as follows:
2.89 Extensions of time for filing a statement of use.
(a) The applicant may request a six-month extension of time to file the
statement of use required by 2.88. The extension request must be filed
within six months of the mailing date of the notice of allowance under
section 13(b)(2) of the Act and must include the following:
(1) A written request for an extension of time to file the statement of
use;
(2) The fee per class required by 2.6; and
(3) 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 applicant (see 2.33(a)(2)) that the applicant still has
a bona fide intention to use the mark in commerce, specifying the
relevant goods or services. If the verification is unsigned or signed by
the wrong party, the applicant must submit a substitute verification
within six months of the mailing date of the notice of allowance.
(b) Before the expiration of the previously granted extension of time,
the applicant may request further six-month extensions of time to file
the statement of use by submitting the following:
(1) A written request for an extension of time to file the statement of
use;
(2) The fee per class required by 2.6;
(3) 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 applicant (see 2.33(a)(2)) that the applicant still has
a bona fide intention to use the mark in commerce, specifying the
relevant goods or services. If the verification is unsigned or signed by
the wrong party, the applicant must submit a substitute verification
before the expiration of the previously granted extension; and
(4) A showing of good cause, as specified in paragraph (d) of this
section.
*****
(d) The showing of good cause must include a statement of the
applicant's on going efforts to make use of the mark in commerce on or
in connection with each of the relevant goods or services. Those efforts
may include product or service research or development, market research,
manufacturing activities, promotional activities, steps to acquire
distributors, steps to obtain governmental approval, or other similar
activities. In the alternative, the applicant must submit a satisfactory
explanation for the failure to make efforts to use the mark in commerce.
*****
(h) If the extension request is not filed within a reasonable time after
it is signed, the Office may require a substitute verification or
declaration under 2.20 stating that the applicant still has a bona
fide intention to use the mark in commerce.
34. Amend 2.101 by revising paragraph (d)(1) to read as follows:
2.101 Filing an opposition.
*****
(d)(1) The opposition must be accompanied by the required fee for each
party joined as opposer for each class in the application for which
registration is opposed (see 2.6). If no fee, or a fee insufficient to
pay for one person to oppose the registration of a mark in at least one
class, is submitted within thirty days after publication of the mark to
be opposed or within an extension of time for filing an opposition, the
opposition will not be refused if the required fee(s) is submitted to
the Patent and Trademark Office within the time limit set in the
notification of this defect by the Office.
*****
35. Amend 2.111 by revising paragraph (c)(1) to read as follows:
2.111 Filing petition for cancellation.
*****
(c)(1) The petition must be accompanied by the required fee for each
class in the registration for which cancellation is sought (see 2.6).
If the fee submitted is insufficient for a cancellation against all of
the classes in the registration, and the particular class or classes
against which the cancellation is filed are not specified, the Office
will issue a written notice allowing petitioner a set time in which to
submit the required fees(s) (provided that the five-year period, if
applicable, has not expired) or to specify the class or classes sought
to be cancelled. If the required fee(s) is not submitted, or the
specification made, within the time set in the notice, the cancellation
will be presumed to be against the class or classes in ascending order,
beginning with the lowest numbered class, and including the number of
classes in the registration for which the fees submitted are sufficient
to pay the fee due for each class.
*****
36. Amend 2.146 by revising paragraph (d) and by adding paragraphs (i)
and (j) to read as follows:
2.146 Petitions to the Commissioner.
*****
(d) A petition must be filed within two months of the mailing date of
the action from which relief is requested, unless a different deadline
is specified elsewhere in this chapter.
*****
(i) Where a petitioner seeks to revive or reinstate an application or
registration that was abandoned or cancelled because papers were lost or
mishandled by the Office, the Commissioner may deny the petition if the
petitioner was not diligent in checking the status of the application or
registration.
(j) If the Commissioner denies a petition, the petitioner may request
reconsideration, if the petitioner:
(1) Files the request within two months of the mailing date of the
decision denying the petition; and
(2) Pays a second petition fee under 2.6.
37. Revise 2.151 to read as follows:
2.151 Certificate.
When the Office determines that a mark is registrable, a certificate
will be issued stating that the applicant is entitled to registration on
the Principal Register or on the Supplemental Register. The certificate
will state the date on which the application for registration was filed
in the Office, the act under which the mark is registered, the date of
issue, and the number of the registration. A reproduction of the mark
and pertinent data from the application will be sent with the
certificate. A notice of the requirements of section 8 of the Act will
accompany the certificate.
38. Revise 2.155 to read as follows:
2.155 Notice of publication.
The Office will send the registrant a notice of publication of the mark
and of the requirement for filing the affidavit or declaration required
by section 8 of the Act.
39. Revise 2.156 to read as follows:
2.156 Not subject to opposition; subject to cancellation.
The published mark is not subject to opposition, but is subject to
petitions to cancel as specified in 2.111 and to cancellation for
failure to file the affidavit or declaration required by section 8 of
the Act.
40. Add 2.160 to read as follows:
2.160 Affidavit or declaration of continued use or excusable nonuse
required to avoid cancellation of registration.
(a) During the following time periods, the owner of the registration
must file an affidavit or declaration of continued use or excusable
nonuse, or the registration will be cancelled:
(1)(i) For registrations issued under the Trademark Act of 1946, between
the fifth and the sixth year after the date of registration; or
(ii) For registrations issued under prior Acts, between the fifth and
the sixth year after the date of publication under section 12(c) of the
Act; and
(2) For all registrations, within the year before the end of every
ten-year period after the date of registration.
(3) The affidavit or declaration may be filed within a grace period of
six months after the end of the deadline set forth in paragraphs (a)(1)
and (a)(2), with payment of the grace period surcharge required by
section 8(c)(1) of the Act and 2.6.
(b) For the requirements for the affidavit or declaration, see 2.161.
41. Revise 2.161 to read as follows:
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 section 8 of
the Act;
(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. A person who is properly authorized to sign on behalf ofthe
owner includes a person with legal authority to bind the owner and/or a
person with firsthand knowledge and actual or implied authority to act
on behalf of 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. If the facts recited
are found insufficient, further evidence or explanation may be
submitted, if the requirements of 2.164 are met;
(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.
42. Revise 2.162 to read as follows:
2.162 Notice to registrant.
When a certificate of registration is originally issued, the Office
includes a notice of the requirement for filing the affidavit or
declaration of use or excusable nonuse under section 8 of the Act.
However the affidavit or declaration must be filed within the time
period required by section 8 of the Act even if this notice is not
received.
43. Revise 2.163 to read as follows:
2.163 Acknowledgment of receipt of affidavit or declaration.
The Office will issue a notice as to whether an affidavit or declaration
is acceptable, or the reasons for refusal.
(a) If the owner of the registration filed the affidavit or declaration
within the time periods set forth in section 8 of the Act, deficiencies
may be corrected if the requirements of 2.164 are met.
(b) A response to the refusal must be filed within six months of the
mailing date of the Office action, or before the end of the filing
period set forth in section 8(a) orsection 8(b) of the Act, whichever is
later. If no response is filed within this time period, the registration
will be cancelled.
44. Add 2.164 to read as follows:
2.164 Correcting deficiencies in affidavit or declaration.
(a) If the owner of the registration files an affidavit or declaration
within the time periods set forth in section 8 of the Act, deficiencies
may be corrected, as follows:
(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 timely files the affidavit or declaration within the relevant
filing period set forth in section 8(a) or section 8(b) of the Act,
deficiencies may be corrected before the end of this filing period
without paying a deficiency surcharge. Deficiencies may be corrected
after the end of this filing period with payment of the deficiency
surcharge required by section 8(c)(2) of the Act and 2.6.
(2) Correcting deficiencies in affidavits or declarations filed during
the grace period. If the affidavit or declaration is filed during the
six-month grace period provided by section 8(c)(1) of the Act,
deficiencies may be corrected before the expiration of the grace period
without paying a deficiency surcharge. Deficiencies may be corrected
after the expiration of the grace period with payment of the deficiency
surcharge required by section 8(c)(2) of the Act and 2.6.
(b) If the affidavit or declaration is not filed within the time periods
set forth in section 8 of the Act, or if it is filed within that period
by someone other than the owner, the registration will be cancelled.
These deficiencies cannot be cured.
45. Revise 2.165 to read as follows:
2.165 Petition to Commissioner to review refusal.
(a) A response to the examiner's initial refusal to accept an affidavit
or declarationis required before filing a petition to the Commissioner,
unless the examiner directs otherwise. See 2.163(b) for the deadline
for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, a petition to the Commissioner to review the action may be
filed. The petition must be filed within six months of the mailing date
of the action maintaining the refusal, or the Office will cancel the
registration and issue a notice of the cancellation.
(c) A decision by the Commissioner is necessary before filing an appeal
or commencing a civil action in any court.
46. Revise 2.166 to read as follows:
2.166 Affidavit of continued use or excusable nonuse combined with
renewal application.
An affidavit or declaration under section 8 of the Act and a renewal
application under section 9 of the Act may be combined into a single
document, provided that the document meets the requirements of both
sections 8 and 9 of the Act.
47. Amend 2.167 by revising paragraph (c) to read as follows:
2.167 Affidavit or declaration under section 15.
*****
(c) Recite the goods or services stated in the registration on or in
connection with which the mark has been in continuous use in commerce
for a period of five years after the date of registration or date of
publication under section 12(c) of the Act, and is still in use in
commerce;
*****
48. Revise 2.168 to read as follows:
2.168 Affidavit or declaration under section 15 combined with
affidavit or declaration under section 8, or with renewal application.
(a) The affidavit or declaration filed under section 15 of the Act may
also be used as the affidavit or declaration required by section 8, if
the affidavit or declaration meets the requirements of both sections 8
and 15.
(b) The affidavit or declaration filed under section 15 of the Act may
be combined with an application for renewal of a registration under
section 9 of the Act, if the requirements of both sections 9 and 15 are
met.
49. Amend 2.173 by revising the heading and paragraph (a) to read as
follows:
2.173 Amendment of registration.
(a) The registrant may apply to amend the registration or to disclaim
part of the mark in the registration. A written request specifying the
amendment or disclaimer must be submitted. The request must be signed by
the registrant and verified or supported by a declaration under 2.20,
and accompanied by the required fee. If the amendment involves a change
in the mark, a new specimen showing the mark as used on or in connection
with the goods or services, and a new drawing of the amended mark, must
be submitted. The certificate of registration or, if the certificate is
lost or destroyed, a certified copy of the certificate, must also be
submitted. The registration as amended must still contain registrable
matter, and the mark as amended must be registrable as a whole. An
amendment or disclaimer must not materially alter the character of the
mark.
*****
50. Amend 2.181 by revising paragraph (a)(1) to read as follows:
2.181 Term of original registrations and renewals.
(a)(1) Subject to the provisions of section 8 of the Act requiring an
affidavit or declaration of continued use or excusable nonuse,
registrations issued or renewed under the Act, prior to November 16,
1989, whether on the Principal Register or on the Supplemental Register,
remain in force for twenty years from their date of issue or expiration,
and may be renewed for periods of ten years from the expiring period
unless previously cancelled or surrendered.
*****
51. Revise 2.182 to read as follows:
2.182 Time for filing renewal application.
An application for renewal must be filed within one year before the
expiration date of the registration, or within the six-month grace
period after the expiration date of the registration. If no renewal
application is filed within this period, the registration will expire.
52. Revise 2.183 to read as follows:
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.
53. Revise 2.184 to read as follows:
2.184 Refusal of renewal.
(a) If the renewal application is not acceptable, the Office will issue
a notice stating the reason(s) for refusal.
(b) A response to the refusal of renewal must be filed within six months
of the mailing date of the Office action, or before the expiration date
of the registration, whichever is later, or the registration will expire.
(c) If the renewal application is not filed within the time periods set
forth in 9(a) of the Act, the registration will expire.
54. Add 2.185 to read as follows:
2.185 Correcting deficiencies in renewal application.
(a) If the renewal application is filed within the time periods set
forth in section 9(a) of the Act, deficiencies may be corrected, as
follows:
(1) Correcting deficiencies in renewal applications filed within one 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
of the registration without paying a deficiency surcharge. Deficiencies
may be corrected after the expiration date of the registration with
payment of the deficiency surcharge required by section 9(a) of the Act
and 2.6.
(2) Correcting deficiencies in renewal applications filed during the
grace period. If the renewal application is filed during the six-month
grace period, deficiencies may be corrected before the expiration of the
grace period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of the
deficiency surcharge required by section 9(a) of the Act and 2.6.
(b) If the renewal application is not filed within the time periods set
forth in section 9(a) of the Act, the registration will expire. This
deficiency cannot be cured.
55. Add 2.186 to read as follows:
2.186 Petition to Commissioner to review refusal of renewal.
(a) A response to the examiner's initial refusal of the renewal
application is required before filing a petition to the Commissioner,
unless the examiner directs otherwise. See 2.184(b) for the deadline
for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the renewal application, a
petition to the Commissioner to review the refusal may be filed. The
petition must be filed within six months of the mailing date of the
Office action maintaining the refusal, or the renewal application will
be abandoned and the registration will expire.
(c) A decision by the Commissioner is necessary before filing an appeal
orcommencing a civil action in any court.
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
56. The authority citation for part 3 continues to read as follows:
authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
56a. Revise 3.16 to read as follows:
3.16 Assignability of trademarks prior to filing of an allegation of
use statement.
Before an allegation of use under either 15 U.S.C. 1051(c) or 15 U.S.C.
1051(d) is filed, an applicant may only assign an application to
register a mark under 15 U.S.C. 1051(b) to a successor to the
applicant's business, or portion of the business to which the mark
pertains, if that business is ongoing and existing.
57. Amend 3.24 by revising the heading to read as follows:
3.24 Requirements for documents and cover sheets relating to patents
and patent applications.
*****
58. Add 3.25 to read as follows:
3.25 Recording requirements for trademark applications and
registrations.
(a) Documents affecting title. To record documents affecting title, a
legible cover sheet (see 3.31) and one of the following must be
submitted:
(1) The original document;
(2) A copy of the document;
(3) A copy of an extract from the document evidencing the effect on
title; or
(4) A statement signed by both the party conveying the interest and the
party receiving the interest explaining how the conveyance affects title.
(b) Name changes. Only a legible cover sheet is required (See 3.31).
(c) All documents. All documents submitted to the Office should be on
white and non-shiny paper that is no larger than 8 1/2 x 14 inches (21.6
x 33.1 cm.) with a one-inch (2.5 cm) margin on all sides. Only one side
of each page should be used.
59. Revise 3.28 to read as follows:
3.28 Requests for recording.
Each document submitted to the Office for recording must include at
least one cover sheet as specified in 3.31 referring either to those
patent applications and patents, or to those trademark applications and
registrations, against which the document is to be recorded. If a
document to be recorded includes interests in, or transactions
involving, both patents and trademarks, separate patent and trademark
cover sheets should be submitted. Only one set of documents and cover
sheets to be recorded should be filed. If a document to be recorded is
not accompanied by a completed cover sheet, the document and the
incomplete cover sheet will be returned pursuant to 3.51 for proper
completion. The document and a completed cover sheet should be
resubmitted.
60. Amend 3.31 by revising paragraphs (a) and (b) and by adding
paragraphs (d) and (e) to read as follows:
3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by 3.28 must contain:
(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be recorded;
(4) Identification of the interests involved:
(i) For trademark assignments and trademark name changes: Each trademark
registration number and each trademark application number, if known,
against which the Office is to record the document. If the trademark
application number is not known, a copy of the application or a
reproduction of the trademark must be submitted, along with an estimate
of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or patent
application, registration or patent: Each trademark or patent
application number or each trademark registration number or patent
against which the document is to be recorded;
(5) The name and address of the party to whom correspondence concerning
the request to record the document should be mailed;
(6) The date the document was executed;
(7) An indication that the assignee of a trademark application or
registration who is not domiciled in the United States has designated a
domestic representative (see 3.61); and
(8) The signature of the party submitting the document.
(b) A cover sheet should not refer to both patents and trademarks, since
any information, including information about pending patent
applications, submitted with a request for recordation of a document
against a trademark application or trademark registration will become
public record upon recordation.
*****
(d) Each trademark cover sheet required by 3.28 seeking to record a
document against a trademark application or registration should include,
in addition to the serial number or registration number of the
trademark, identification of the trademark or a description of the
trademark, against which the Office is to record the document.
(e) Each patent and trademark cover sheet required by 3.28 should
contain the number of applications, patents or registrations identified
in the cover sheet and the total fee.
PART 6 - CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT
61. The authority citation for part 6 continues to read as follows:
authority: 15 U.S.C. 1112, 1123; 35 U.S.C. 6, unless otherwise noted.
62. Revise 6.1 to read as follows:
6.1 International schedule of classes of goods and services.
GOODS
1. Chemicals used in industry, science and photography, as well as in
agriculture, horticulture and forestry; unprocessed artificial resins;
unprocessed plastics; manures; fire extinguishing compositions;
tempering and soldering preparations; chemical substances for preserving
foodstuffs; tanning substances; adhesives used in industry.
2. Paints, varnishes, lacquers; preservatives against rust and against
deterioration of wood; colorants; mordants; raw natural resins; metals
in foil and powder form for painters, decorators, printers and mists.
3. Bleaching preparations and other substances for laundry use;
cleaning, polishing, scouring and abrasive preparations; soaps;
perfumery, essential oils, cosmetics, hair lotions; dentifrices.
4. Industrial oils and greases; lubricants; dust absorbing, wetting and
binding compositions; fuels (including motor spirit) and illuminants;
candles, wicks.
5. Pharmaceutical, veterinary, and sanitary preparations; dietetic
substances adapted for medical use, food for babies; plasters, materials
for dressings; material for stopping teeth, dental wax; disinfectants;
preparations for destroying vermin; fungicides, herbicides.
6. Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway tracks;
nonelectric cables and wires of common metal; ironmongery, small items
of metal hardware; pipes and tubes of metal; safes; goods of common
metal not included in other classes; ores.
7. Machines and machine tools; motors and engines (except for land
vehicles); machine coupling and transmission components (except for land
vehicles); agricultural implements other than hand-operated; incubators
for eggs.
8. Hand tools and implements (hand-operated); cutlery; side arms; razors.
9. Scientific, nautical, surveying, electric, photographic,
cinematographic, optical, weighing, measuring, signalling, checking
(supervision), life-saving and teaching apparatus and instruments;
apparatus for recording, transmission or reproduction of sound or
images; magnetic data carriers, recording discs; automatic vending
machines and mechanisms for coin operated apparatus; cash registers,
calculating machines, data processing equipment and computers; fire
extinguishing apparatus.
10. Surgical, medical, dental, and veterinary apparatus and instruments,
artificial limbs, eyes, and teeth; orthopedic articles; suture materials.
11. Apparatus for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply, and sanitary purposes.
12. Vehicles; apparatus for locomotion by land, air, or water.
13. Firearms; ammunition and projectiles; explosives; fireworks.
14. Precious metals and their alloys and goods in precious metals or
coated therewith, not included in other classes; jewelry, precious
stones; horological and chronometric instruments.
15. Musical instruments.
16. Paper, cardboard and goods made from these materials, not included
in other classes; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists'
materials; paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except apparatus);
plastic materials for packaging (not included in other classes); playing
cards; printers' type; printing blocks.
17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these
materials and not included in other classes; plastics in extruded form
for use in manufacture; packing, stopping and insulating materials;
flexible pipes, not of metal.
18. Leather and imitations of leather, and goods made of these materials
and not included in other classes; animal skins, hides; trunks and
travelling bags; umbrellas, parasols and walking sticks; whips, harness
and saddlery.
19. Building materials (non-metallic); nonmetallic rigid pipes for
building; asphalt, pitch and bitumen; nonmetallic transportable
buildings; monuments, not of metal.
20. Furniture, mirrors, picture frames; goods (not included in other
classes) of wood, cork, reed, cane, wicker, horn, bone, ivory,
whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes
for all these materials, or of plastics.
21. Household or kitchen utensils and containers (not of precious metal
or coated therewith); combs and sponges; brushes (except paint brushes);
brush-making materials; articles for cleaning purposes; steel-wool;
unworked or semi-worked glass (except glass used in building);
glassware, porcelain and earthenware not included in other classes.
22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and
bags (not included in other classes); padding and stuffing materials
(except of rubber or plastics); raw fibrous textile materials.
23. Yarns and threads, for textile use.
24. Textiles and textile goods, not included in other classes; beds and
table covers.
25. Clothing, footwear, headgear.
26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes,
pins and needles; artificial flowers.
27. Carpets, rugs, mats and matting, linoleum and other materials for
covering existing floors; wall hangings (non-textile).
28. Games and playthings; gymnastic and sporting articles not included
in other classes; decorations for Christmas trees.
29. Meat, fish, poultry and game; meat extracts; preserved, dried and
cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk
and milk products; edible oils and fats.
30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee;
flour and preparations made from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast, baking powder; salt,
mustard; vinegar, sauces (condiments); spices; ice.
31. Agricultural, horticultural and forestry products and grains not
included in other classes; live animals; fresh fruits and vegetables;
seeds, natural plants and flowers; foodstuffs for animals; malt.
32. Beers; mineral and aerated waters and other nonalcoholic drinks;
fruit drinks and fruit juices; syrups and other preparations for making
beverages.
33. Alcoholic beverages (except beers).
34. Tobacco; smokers' articles; matches.
SERVICES
35. Advertising; business management; business administration; office
functions.
36. Insurance; financial affairs; monetary affairs; real estate affairs.
37. Building construction; repair; installation services.
38. Telecommunications.
39. Transport; packaging and storage of goods; travel arrangement.
40. Treatment of materials.
41. Education; providing of training; entertainment; sporting and
cultural activities.
42. Providing of food and drink; temporary accommodation; medical,
hygienic and beautv care; veterinary and agricultural services; legal
services; scientific and industrial research; computer programming;
services that cannot be classified in other classes.
May 3, 1999 Q. TODD DICKINSON
Acting Assistant Secretary of Commerce and
Acting Commissioner of Patents and Trademarks