(161)                  Trademark Rule 2.165 Requirement
                        Where A Section 8 Affidavit Or
                       Declaration Is Held Insufficient

   Several recent Petitions to the Commissioner have indicated a failure 
on the part of registrants and their attorneys to follow the requirements 
of Trademark Rule 2.165. Therefore, reviewing certain basic elements of 
this rule is considered timely so as to alert registrants and attorneys 
to technical errors which might lead to the cancellation of a valuable 
trademark registration.
   Part (a) of Rule 2.165 indicates that the examiner will notify the
registrant when an affidavit or declaration of use under Section 8 of
the Statute is insufficient and the reasons therefor. When the
registrant wishes the examiner to reconsider the affidavit or
declaration, or when the registrant has taken additional steps to
rectify the deficiencies and desires to have the examiner reconsider the
affidavit or declaration in light of those steps, the request for
reconsideration must be submitted within 6 months of the date of mailing
of the notice of insufficiency.
   Note, however, that a supplemental or substitute affidavit or
declaration required by Section 8 cannot be considered unless it is
received before the expiration of the six year anniversary of the
registration. Consequently, registrants should file their affidavits as
early as possible during the sixth year following registration.
   There are situations where correcting the deficiency in the affidavit
or declaration requires recording an assignment with the Assignment
Division of this Office. If the recording cannot be completed within 6
months, the registrant must at least respond to the examiner's notice of
insufficiency within that period. The response must indicate the steps
being taken to correct the deficiency. The examiner can then allow the
registrant additional time or suspend action depending on the
circumstances. Registrants must always observe the "six month response"
period whenever responding to the examiner from an adverse action.
   Part (b) of Rule 2.165 permits a registrant to request the
Commissioner to review the action of the examiner when he is
dissatisfied with that action. Review by the Commissioner should be
sought only where it is believed that the examiner has erred in his
action. In other words, the Commissioner's role is to review the
correctness of the examiner's action and not to serve as an alter ego of
the examiner before whom the registrant may seek to correct deficiencies.
   When review by the Commissioner has been sought, the decision on that
request constitutes the final action of the Patent and Trademark Office.
If no review by the Commissioner is sought and if no request for
reconsideration of an examiner's action is timely filed, the
Commissioner will notify the registrant of the deficiency in the
affidavit or declaration after the sixth year has expired. Such notice
is never mailed prior to the expiration of the sixth year following
registration nor until a reasonable time has elapsed following a six
month period from the last action mailed by this Office. This notice
constitutes the final action of the Patent and Trademark Office in those
cases where the Commissioner's review has not been sought. Once this
notice has been mailed, it is too late (under the Rules of Practice) to
request the Commissioner to review the action of the examiner. Review
would only be proper if an affiant could show circumstances sufficient
to suspend the finality element of Rule 2.165(b) pursuant to Rule 2.148.
   Registrants will be held to strict compliance with Rule 2.165 as it
has been briefed above. Therefore, parties are urged to respond fully as
soon as possible after an action is received from the examiner.

Dec. 12, 1977                                             BERNARD A. MEANY
                                                    Assistant Commissioner
                                                           for Trademarks.

                                 [966 TMOG 80]