APPLICATION FOR REGISTRATION
AND VERIFICATION
- The requirement in
§§1(a) and 1(b) of the Act that an application filed by a juristic
applicant be verified by "a member of the firm or an officer of the corporation
or association" is eliminated. The Commissioner may determine the appropriate
person with authority to sign a verified statement for a juristic applicant.
- The requirement in
§§1(a) and 1(b) for the applicant to state the mode or manner
in which the mark is used or intended to be used on or in connection with
the goods (the "method of use clause") is eliminated.
- The Commissioner
is given authority in §§1(a)(4) and 1(b)(4) of the Act to establish
filing date requirements.
- The requirement that
an application based on §44(e) of the Act be accompanied by a certificate
or certified copy of the foreign registration at the time of filing is eliminated;
the Commissioner is permitted to prescribe the time period for filing the
certificate or certified copy.
REVIVAL OF ABANDONED
APPLICATIONS
- The standard under
§12(b) of the Act for reviving an application abandoned due to untimely
response to an Office Action is changed from a showing of unavoidable delay
to a showing of unintentional delay.
- Section 1(d)(4) of
the Act is amended to add that an application abandoned for failure to timely
file a statement of use or an extension request for filing a statement of
use can be revived with a showing of unintentional delay, as long as the
period for filing the statement of use is not extended beyond the maximum
statutory period of 36 months.
POST REGISTRATION
- Section 8 of the
Act is amended to require that a registrant file an affidavit or declaration
of continued use or excusable nonuse (§8 affidavit) in the year preceding
the tenth anniversary of the registration and every ten years thereafter.
Section 9 of the Act is amended 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 §9 renewal application. A §8 affidavit between the fifth
and sixth year after the date of registration is still required as well.
- Sections 8 and 9,
as amended, establish a one year time period for filing and permit both
a §8 affidavit and the §9 renewal to be filed within a six-month
grace period after the end of the statutory filing period, with payment
of a "grace period fee."
- Sections 8 and 9
are amended to allow for the correction of deficient filings after the statutory
filing period expires, with payment of a "deficiency fee." 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.
- Sections 8 and 9
are amended to state that that a registrant not domiciled in the United
States must designate by written document the name and address of a United
States resident on whom may be served notices or process in proceedings
affecting the mark.
ASSIGNMENT OF MARK
- Section 10 of the
Act is amended to permit the assignment of an application to register a
mark following the submission of an amendment to allege use under §1(c)
of the Act. (Corrects an oversight in earlier legislation.)
- Section 10 is amended
to permit the Commissioner to prescribe what information must be submitted
to record an assignment. (Currently, a complete copy of the assignment document
is required.)
EFFECTIVE DATE
- Applications for
registration: TLTIA will apply to any application for the registration of
a trademark pending on, or filed on or after, October 30, 1999.
- Post Registration
filings: TLTIA will apply to a §8 affidavit if: (1) the due date of
the §8 affidavit (i.e., the sixth or ten year anniversary of the registration
or the sixth anniversary of publication of the registration under §12(c)
of the Act) is on or after October 30, 1999; and (2) the §8 affidavit
is filed in the Office on or after October 30, 1999. TLTIA will apply to
a §9 renewal application if: (1) the expiration date of the relevant
registration is on or after October 30, 1999; and (2) the §9 application
for renewal is filed in the Office on or after October 30, 1999.
- Assignments: TLTIA
will apply to all requests to record assignments filed in the Office on
or after October 30, 1999.
CHANGES
TO THE TRADEMARK RULES OF PRACTICE
In addition to amending
the Trademark Rules of Practice to meet the requirements of TLTIA, outlined
above, the Office is making some other changes to its rules. The proposed
rules package was published in the Federal Register on May 11, 1999 at 64
FR 25223. A public hearing on the proposals was held on June 10, 1999. The
final rules were published in the Federal Register on September 8, 1999 at
64 FR 48900. The effective date of the new rules is October 30, 1999.
APPLICATION REQUIREMENTS
Application filing
date requirements
The Office will 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
while also ensuring that the Office has enough information to begin examination
and to provide the public with critical application data. The new requirements
to receive a filing date will be:
(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.
The following current
minimum filing requirements will be eliminated:
(1) a stated basis
for filing
(2) dates of use and
a specimen of use in §1(a) applications
(3) a statement of
bona fide intent to use the mark in commerce in §1(b) and §44
applications
(4) a certified copy
of the foreign registration in §44(e) applications
(5) a claim of priority
in §44(d) applications
(6) a signed verified
statement
Person who may sign
verified statements
Currently, the Act requires
that an application by a juristic applicant be signed "by a member of the
firm or an officer of the corporation or association." TLTIA amends the Act
to eliminate the specification of the appropriate person to sign on behalf
of an applicant.
Trademark Rule 2.33(a)
is amended to state that the application must include a statement that is
signed and verified by a person properly authorized to sign on behalf of the
applicant. The rule further states that a person who is properly authorized
to sign on behalf of the applicant is: (1) a person with legal authority to
bind the applicant; or (2) a person with firsthand knowledge of the facts
and actual or implied authority to act on behalf of the applicant; or (3)
an attorney as defined in 37 C.F.R. §10.1(c) who has an actual or implied
written or verbal power of attorney from the applicant.
The broader definition
of who may sign trademark filings will also apply to the filing of amendments
to allege use, statements of use, extensions of time to file statements of
use, and Post Registration filings.
Bulky specimens
The current rule requires
that a specimen of use be flat and no larger than 8½ inches by 11 inches.
However, for many years the Office has accepted and processed specimens that
exceed the size limitation ("bulky specimens"). This requires substantial
special handling because the Office must track and store the bulky specimens
separately from the file wrapper. The Office will change its practice to no
longer retain bulky materials submitted as specimens. Instead, if bulky materials
are submitted, the Office will create a facsimile of the specimen and destroy
the bulky material. The Office will continue to accept specimens consisting
of videotapes, audiotapes, CDs, or computer diskettes for marks that cannot
be used any other way.
Number of specimens
The Office will require
one rather than three specimens for an application under §1 of the Act,
or an amendment to allege use or statement of use of a mark in an application
under §1(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. However, multiple copies of specimens are no longer necessary,
because the public may make photocopies of a single specimen.
Multiple bases
The Office will permit
an applicant to claim both §§1(a) and 1(b) in the same application.
Adding or substituting
a basis
Before publication:
The Office will permit an applicant to add or substitute a basis for registration
before publication and retain the original filing date so long as the applicant
has a continuing valid basis for registration. This will permit an applicant
who files under §1(a) to substitute §1(b) as the basis. This will
also permit an applicant filing solely under §44(d ) to substitute a
different basis after the expiration of the priority period and still retain
the priority filing date.
After publication: The
Office will continue to permit an amendment to add or substitute a basis for
registration after publication, if the applicant files a petition to the Commissioner.
Republication will always be required.
Drawing of the mark
The Office will delete
the color lining system currently used to depict color, and instead require
the applicant to submit a written description of the color and where in the
mark the color appears. The revised drawing rule also will add guidelines
for various types of unusual marks, such as marks that include color, three-dimensional
objects, motion, sound or scent. Also, the proposed rule will recommend, but
no longer require, a separate drawing page.
Amendments to the
drawing of the mark
The rules are amended
to prohibit amendments that materially alter the mark on the original drawing
and to state 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. The current practice of permitting
amendments that materially alter the mark on the original drawing when the
mark on the original drawing does not agree with the mark on the specimens
in a §1(a) application, or with the mark on the foreign registration
in a §44(e) application, is unfair to third parties who may rely on a
search of Office records between the application filing date and the date
the amendment is entered.
Type of commerce
The Office will no longer
require the applicant to specify the type of commerce in which the mark is
used in a §1(a) application, or in an allegation of use in a §1(b)
application.
Electronic filing
The Office will amend
the rules to state that electronically-filed documents will be considered
filed on the date of transmission, regardless of whether that date is a Saturday,
Sunday or federal holiday.
PETITIONS TO REVIVE
ABANDONED APPLICATIONS
The Office will require
the petitioner to submit a fee, and a statement signed by someone with firsthand
knowledge of the facts that the delay was unintentional. The statement need
not be notarized or supported by a declaration under §2.20.
The Office will permit
a petitioner to file a request for reconsideration of a denial of a petition,
if the request is filed within two months of the mailing date of the decision
denying the petition and if a second petition fee is paid.
POST REGISTRATION
New fees:
Grace period fee for
§8 affidavit or §9 renewal: $100 per class
Deficiency fee for §8 affidavit or §9 renewal: $100
The Office will no longer
require the registrant to specify the type of commerce in which the mark is
used in a §8 affidavit of continued use or in a §15 affidavit of
incontestability. 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 will permit
the owner of a registration to correct deficiencies in a §8 affidavit
or §9 renewal before the end of the statutory period for filing those
documents, without paying a deficiency surcharge. If the §8 affidavit
or §9 renewal is filed during the grace period, the grace period surcharge
must be paid, but deficiencies can be corrected before the expiration of the
grace period without paying a deficiency surcharge.
POWERS OF ATTORNEY
The Office will permit
the filing of a power of attorney that relates to more than one trademark
application or registration, or to all existing and future applications and
registrations. Someone relying on a power of attorney concerning multiple
applications or registrations must either include a copy of the previously-filed
power of attorney or refer to the previously-filed power, specifying certain
information about the previous filing.
RECORDING ASSIGNMENTS
The Office will modify
the requirement that an original or true copy of an assignment accompany a
request to record the assignment. The Office will permit instead, a copy of
the assignment document; a copy of an extract from the document evidencing
the transfer of title; or a statement signed by both parties explaining how
the conveyance affects title.
=online
business system 
=fees 
=forms
=help 
=laws/regulations 