- Trademark Manual of Examining Procedure
- Change Summary

# Change Summary

#

### CHANGES: INDEX TO CHANGES IN TMEP July 2022

Attention is directed to the following changes in the July 2022 TMEP.

SECTION | CHANGE
--- | ---
TMEP | Incorporated changes in accordance with Sections 16A and 16B of the Trademark Act and final rules issued at 86 FR 55498 (International Trademark Classification Changes) and 86 FR 64300 (Changes to Implement Provisions of the Trademark Modernization Act of 2020). Incorporated relevant precedential decisions reported prior to December 1, 2022. Incorporated changes in accordance with Examination Guides 1-21 and 1-22. Changed “e-mail” to “email” throughout.
204.03 | Deleted references to omitting the six-month response clause.
301.02(b) | Revised to add mailing address for submission of specimens for a scent, flavor, or similar non-traditional mark.
303.01 | Miscellaneous text edits.
305.01 | Deleted rule text. Miscellaneous text edit. Added cross reference. Updated title of document services branch in mailing address.
308 | Added Juneteenth National Independence Day as a federal holiday.
401.02 | Updated to include series code added in 2021.
503.08(a) | Updated title of document services branch.
504.01 | Revised text to indicate that blackout period for when the Trademark database cannot be automatically updated to show a change of ownership is three weeks before the registration is scheduled to issue.
601.01(a) | Additional guidance incorporated regarding not requiring a §66(a) applicant to appoint a qualified U.S. attorney or provide an email address if the application is otherwise in condition for approval for publication upon first action.
601.01(b) | Updated examples of documents that can support a U.S. street address for a juristic entity.
601.01(b)(1) | Miscellaneous text edits.
601.01(d) | Updated to clarify that most TEAS forms allow an applicant or registrant to specify a separate domicile address that is hidden from public view.
602.03(a) | Miscellaneous text edits. Deleted reference to the USPTO’s internal computer network.
609.01(a) | Revised section title: Correspondence in Section 66(a) Applications and Registrations. Miscellaneous text edits. Additional guidance incorporated regarding not requiring a §66(a) applicant to appoint a qualified U.S. attorney or provide an email address if the application is otherwise in condition for approval for publication upon first action. Updated to reflect current procedure regarding updating the domicile address in §66(a) applications.
611.02(a) | Revised section title: TEAS Signature Radio Buttons. Miscellaneous text edits. Added rule citations.
705.05 | Clarified guidance regarding precedential decisions governing examination and where such decisions may be found. Miscellaneous text and stylistic edits. Clarified procedures for citing to precedential and non-precedential Board decisions. Added case citation and cross reference.
706.01 | Miscellaneous text edit.
708.02 | Updated example.
708.04 | Miscellaneous text edits.
709.05 | Added cross reference. Clarified that for any legal opinion about any trademark matter, a party must consult a private trademark attorney. Clarified that an informal communication does not extend the deadline for response and does not constitute a response to an outstanding Office action except as specified.
709.07 | New section: Decorum Required in Communications with the Office
710.01(a) | Clarified use of LexisNexis® database to show surname significance. Added cross references.
710.01(b) | Miscellaneous text and stylistic edits. Added case citations. Clarified that there is no requirement for examining attorneys to establish that Internet evidence has significant web traffic. Deleted case citations. Section reworded for clarity. Deleted reference to when a document found on the Internet is not the original publication.
710.01(c) | Added cross reference and case citations. Deleted case citations. Miscellaneous text and stylistic edits. Clarified when Board may take judicial notice of dictionary definitions from online dictionaries.
716.02(e) | Revised to indicate that the USPTO’s automated records are updated approximately 10 days after the grace period expires.
716.02(g) | Revised section title: Pending Receipt of a Correction, Limitation, Assignment, or other Change to the International Record from the International Bureau. Revised section to clarify guidance regarding suspension of a §66(a) application pending receipt of a filing with the IB.
716.02(i) | Revised section title: Pending Registry Agreement with ICANN for Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services. Miscellaneous text edits.
716.02(j) | New section: Pending Disposition of Expungement or Reexamination Proceedings. Added procedures set out in Examination Guide 1-21 and incorporated additional guidance regarding suspension of applications pending disposition of expungement or reexamination proceedings.
718.03(b) | Deleted reference to omitting the six-month response clause.
801.01(b) | Revised cross reference.
803.01 | Added statutory citations. Miscellaneous stylistic edits.
803.03(b) | Clarified guidance regarding information required for general partners or active members that compose a domestic partnership or joint venture.
803.03(d) | Clarified procedures for when the application record for a §66(a) application includes incomplete joint applicant information.
803.03(e) | Clarified procedures for identifying the applicant in domestic and foreign trusts, conservatorships and estates. Added guidance regarding procedure for §66(a) applications.
803.05(b) | Reworded for clarity. Added cross references.
803.06 | Added rule citations and case citations. Added and moved cross reference. Miscellaneous text edits.
806.02(a) | Updated example.
807.11 | Miscellaneous stylistic edits. Added cross reference and case citation. Clarified guidance regarding mark descriptions for marks with motion.
807.12(a)(i) | Miscellaneous text edits.
807.12(a)(iii) | Added case citation.
807.12(d) | Miscellaneous text edits. Added case citations.
807.14 | Revised section in accordance with 37 C.F.R. §2.72. Added rule citations and case citations. Miscellaneous text and stylistic edits. Deleted cross reference.
807.14(b) | Added case citations and clarified guidance regarding when an amendment adding previously registered matter is unacceptable.
808.03 | Revised cross reference.
810 | Revised cross reference.
810.01 | Revised cross reference. Clarified procedure for cases involving insufficient fees.
814 | Added case citations and cross reference. Miscellaneous text and stylistic edits. Additional guidance incorporated regarding requirement for additional information.
819.01(b) | Miscellaneous text edits. Added example regarding not requiring a TEAS Plus processing fee if applicant’s domicile address is incorrectly identified as a post-office box or “care of” address.
819.01(n) | Revised cross reference.
819.02 | Updated example.
901.03 | Miscellaneous text edits.
904.01(b) | Revised cross reference.
904.03(i) | Miscellaneous text and stylistic edits. Added case citations and cross reference. Clarified guidance regarding what constitutes a display with a point-of-sale nature.
904.03(i)(C) | Added case citation. Deleted case citation. Miscellaneous text and stylistic edits.
904.03(l) | Miscellaneous text edits. Added case citation and rule citation. Clarified that the mark shown in the specimen for a motion mark must match the mark shown in the freeze frames comprising the drawing.
904.04(b) | Added case citation and cross reference. Miscellaneous text and stylistic edits.
904.07(b) | Miscellaneous stylistic edits. Added case citations. Deleted case citations.
907 | Added case citation. Deleted case citation. Miscellaneous text and stylistic edits. Clarified that USPTO presumes use in commerce is lawful unless the application record indicates a violation of federal law. Added definition of “hemp” under the Agriculture Improvement Act of 2018 and clarified guidance regarding hemp.
1008 | Moved cross reference and added cross reference.
1016 | Revised section title: International Registration As Basis for Section 44 Application. Miscellaneous stylistic edit and text additions for clarity.
1109.15 | Miscellaneous text additions for clarity.
1201 | Revised to change the wording "is entitled" to "has a bona fide intention." Added cross references. Miscellaneous text edits.
1201.01 | Added statutory citations. Miscellaneous text and stylistic edits.
1201.02(b) | Revised to change the wording "is entitled" to "has a bona fide intention." Section reworded for clarity. Added rule citations, statutory citation, case citations and cross references. Added internal headings. Deleted case citation.
1201.03 | Added case citation. Miscellaneous text and stylistic edits.
1201.03(a) | Revised to change the wording "entitled" to "has a bona fide intention."
1201.03(e) | Added case citations. Miscellaneous text and stylistic edits.
1201.04 | Revised to change the wording "entitled" to "has a bona fide intention."
1201.06(a) | Miscellaneous stylistic edit. Added case citation. Deleted case citation.
1202 | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations. Added statutory citations.
1202.02 | Miscellaneous text and stylistic edits.
1202.02(a) | Added case citation.
1202.02(a)(iii)(A) | Added case citation. Miscellaneous text and stylistic edits.
1202.02(a)(iv) | Miscellaneous text and stylistic edits. Deleted case citations. Added case citations.
1202.02(a)(v) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations. Added statutory citation. Updated cross reference.
1202.02(a)(v)(A) | Miscellaneous text and stylistic edits. Added case citations. Clarified guidance regarding issuing a request for information where functionality appears to be an issue.
1202.02(a)(v)(B) | Added case citations. Deleted case citations. Miscellaneous text and stylistic edits.
1202.02(a)(v)(C) | Miscellaneous text and stylistic edits. Clarified guidance regarding issuing a request for information regarding alternative designs. Added case citation.
1202.02(a)(v)(D) | Added case citations. Clarified guidance regarding issuing a request for information regarding the cost or ease of manufacture. Miscellaneous text edits.
1202.02(a)(vii) | Miscellaneous stylistic edits.
1202.02(b)(i) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations. Additional guidance incorporated regarding refusing a product design as generic. Added cross reference.
1202.02(b)(ii) | Miscellaneous text and stylistic edits. Added case citations. Additional guidance incorporated regarding refusing product packaging as generic. Added cross reference.
1202.02(c) | Miscellaneous text edits.
1202.02(c)(i) | Added case citation.
1202.04 | Section reworded for clarity. Added case citations. Deleted case citations. Updated cross reference.
1202.04(a) | Added case citations. Deleted case citations.
1202.04(b) | Section reworded for clarity. Added case citations. Deleted case citations.
1202.04(c) | Added case citation. Updated cross references.
1202.04(d) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citation.
1202.05 | Added case citation. Clarified that there is a limited exception where a multiple-color mark may be inherently distinctive when used on product packaging. Added cross reference.
1202.05(a) | Updated case citation. Clarified that there is a limited exception where a multiple-color mark may be inherently distinctive when used on product packaging. Added cross reference. Miscellaneous text edits.
1202.05(b) | Miscellaneous text and stylistic edits.
1202.05(h) | Updated case citation. Added cross reference. Miscellaneous text edit.
1202.05(i) | Updated case citation. Added cross reference. Miscellaneous text and stylistic edits.
1202.06 | Miscellaneous text and stylistic edits.
1202.06(a) | Miscellaneous text and stylistic edits.
1202.12 | Updated to reflect current procedure.
1202.16(c)(v)(A) | Added cross reference. Miscellaneous text edits.
1202.17 | Updated hyperlinks.
1202.17(b)(i) | Miscellaneous text and stylistic edits. Updated hyperlink.
1202.17(b)(ii) | Miscellaneous text edit.
1202.17(c) | Miscellaneous text edits. Added case citations. Deleted case citations.
1202.17(c)(i) | Miscellaneous text edits. Added case citation. Deleted case citations.
1202.17(c)(i)(A) | Added case citations. Added cross reference. Deleted case citation. Miscellaneous text edits. Updated hyperlink.
1202.17(c)(i)(B) | Miscellaneous text edits.
1202.17(c)(ii) | Miscellaneous text and stylistic edits. Deleted case citations. Deleted cross reference. Added case citations.
1202.17(c)(ii)(A) | Added cross reference. Deleted case citations.
1202.17(c)(ii)(B) | Miscellaneous text edits. Added case citations. Updated cross references. Deleted case citations. Added cross references.
1202.17(e)(i) | Updated hyperlink.
1202.17(e)(ii) | Updated hyperlink. Added case citation.
1202.17(e)(iii) | Updated hyperlink.
1202.17(e)(vi) | Updated hyperlink access date.
1202.18 | Updated hyperlink. Added case citation. Deleted case citation. Miscellaneous text edits.
1203.01 | Miscellaneous stylistic edits. Updated case citations. Added statutory citation.
1203.02(c) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1203.03 | Miscellaneous text and stylistic edits. Added case citations. Deleted case citation.
1203.03(a)(i) | Updated case citation. Miscellaneous text and stylistic edits. Added case citations. Deleted case citation.
1203.03(a)(ii) | Added case citations. Miscellaneous text and stylistic edits.
1203.03(a)(iii) | Miscellaneous text and stylistic edits.
1203.03(b)(i) | Added case citations. Deleted case citation. Added internal headings. Section reworded for clarity. Clarified that it is not required to show fame or reputation of the name in the entire United States.
1203.03(b)(iii) | Miscellaneous text edits. Added case citations.
1204 | Miscellaneous text and stylistic edits. Added case citation.
1204.01(a) | Miscellaneous text and stylistic edits. Added case citation.
1204.01(b) | Added case citation.
1204.01(c) | Revised section title: Case Law Finding No Simulation of a Flag. Miscellaneous text edits.
1204.05 | Updated hyperlinks.
1205.01(d) | Updated hyperlinks. Miscellaneous text edits.
1205.01(d)(ii)(A) | Updated hyperlinks.
1206 | Miscellaneous text and stylistic edits. Added case citations. Deleted case citation.
1206.01 | Miscellaneous text edits. Added case citation. Deleted case citations.
1206.02 | Miscellaneous text edits. Added case citations. Clarified that celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods or services.
1206.03 | Miscellaneous text edit.
1206.04(c) | Miscellaneous text edit.
1207.01 | Miscellaneous text and stylistic edits. Deleted case citations. Added case citations.
1207.01(a) | Deleted case citations. Added case citations. Miscellaneous stylistic edits.
1207.01(a)(i) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1207.01(a)(ii) | Miscellaneous text and stylistic edits. Added case citation.
1207.01(a)(iii) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1207.01(a)(vi) | Miscellaneous stylistic edits. Added case citations.
1207.01(b) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1207.01(b)(iii) | Miscellaneous text and stylistic edits. Added case citation.
1207.01(b)(vi)(B) | Miscellaneous text and stylistic edits. Added example of evidence that would show that a foreign language is a common, modern language. Clarified guidance regarding the application of the doctrine of foreign equivalents to personal names.
1207.01(b)(viii) | Miscellaneous text and stylistic edits. Added case citations.
1207.01(b)(ix) | Miscellaneous text edits. Added case citations.
1207.01(b)(xi) | Miscellaneous text edits. Added case citation.
1207.01(c) | Added case citations.
1207.01(c)(ii) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1207.01(d)(ii) | Added case citation. Miscellaneous stylistic edits.
1207.01(d)(iii) | Added internal headings. Section reworded for clarity. Added case citations. Deleted case citations. Clarified guidance regarding the potential relevance of third-party uses.
1207.01(d)(v) | Miscellaneous stylistic edits.
1207.01(d)(vi) | Miscellaneous text and stylistic edits. Added case citation. Deleted case citations.
1207.01(d)(vii) | Miscellaneous stylistic edits. Added case citations. Deleted case citations.
1207.01(d)(viii) | Miscellaneous stylistic edits. Added case citations.
1207.04(c) | Added case citation.
1209.01 | Miscellaneous text and stylistic edits.
1209.01(a) | Added case citations. Miscellaneous stylistic edits.
1209.01(b) | Deleted case citations. Added case citations. Miscellaneous text and stylistic edits. Added cross references.
1209.01(c)(i) | Revised in accordance with Examination Guide 1-22. Added case citations. Deleted case citations. Miscellaneous text and stylistic edits. Clarified that competitor use is recognized as evidence of genericness. Added cross reference.
1209.01(c)(ii) | Miscellaneous stylistic edits. Added case citation.
1209.02(a) | Miscellaneous text and stylistic edits.
1209.03(a) | Clarified that third-party registrations are not conclusive on the question of genericness. Added case citation. Deleted case citations.
1209.03(b) | Added case citations. Deleted case citation. Miscellaneous text edits.
1209.03(c) | Updated case citation. Added case citation. Miscellaneous stylistic edit.
1209.03(d) | Miscellaneous text and stylistic edits. Added case citations.
1209.03(e) | Added case citation. Miscellaneous stylistic edits.
1209.03(f) | Miscellaneous text and stylistic edits. Added case citation.
1209.03(g) | Miscellaneous text and stylistic edits. Added case citations.
1209.03(m) | Miscellaneous text and stylistic edits. Updated cross reference and case citations.
1209.03(q) | Miscellaneous text and stylistic edits.
1209.03(v) | Revised section title: Key Aspect or Subcategory of Goods or Services. Miscellaneous text and stylistic edits. Added case citation.
1209.03(y) | Miscellaneous text and stylistic edits. Updated to reflect current procedure.
1209.04 | Added internal headings. Miscellaneous text edits. Added case citations. Section reworded for clarity. Added cross references. Deleted case citations.
1210.01(a) | Miscellaneous text edits. Added statutory citation. Added case citations.
1210.01(b) | Added statutory citation. Deleted case citation. Added cross reference. Miscellaneous text and stylistic edits.
1210.01(c) | Added statutory citation. Added case citation. Added cross reference. Miscellaneous stylistic edits.
1210.02(a) | Miscellaneous text and stylistic edits. Added case citation.
1210.02(b)(i) | Miscellaneous text and stylistic edits. Added case citation. Deleted case citation.
1210.02(c)(i) | Miscellaneous text and stylistic edits.
1210.02(c)(ii) | Added case citation. Miscellaneous text and stylistic edits. Deleted case citation.
1210.02(c)(iii) | Added case citation. Miscellaneous text and stylistic edits.
1210.03 | Miscellaneous text and stylistic edits. Added case citation.
1211.01 | Added case citations. Deleted case citations. Miscellaneous text and stylistic edits.
1211.01(a) | Added case citation. Deleted case citation.
1211.01(a)(vi) | Miscellaneous text and stylistic edits. Added case citation.
1211.01(b)(iii) | Added case citation. Miscellaneous text and stylistic edits.
1211.02(a) | Added case citations. Deleted case citations. Miscellaneous text and stylistic edits.
1211.02(b)(i) | Added case citations. Miscellaneous text and stylistic edits. Deleted case citations. Added cross references.
1211.02(b)(ii) | Miscellaneous text edits. Added case citation. Added cross references. Deleted last paragraph.
1211.02(b)(iii) | Miscellaneous text edits. Added case citation and cross references.
1211.02(b)(iv) | Added case citation. Deleted case citations.
1211.02(b)(vi) | Added case citation. Miscellaneous text edits.
1212 | Miscellaneous stylistic edits. Added cross reference.
1212.01 | Added case citations. Deleted case citations. Added cross reference. Additional guidance incorporated regarding factors for considering evidence of acquired distinctiveness.
1212.02(b) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1212.03 | Revised section title: Three Types of Evidence of Distinctiveness under §2(f).
1212.04(a) | Miscellaneous text edit. Added case citations.
1212.04(c) | Miscellaneous text edit.
1212.04(d) | Added case citation.
1212.04(e) | Miscellaneous text edit.
1212.05 | Miscellaneous stylistic edits.
1212.05(a) | Miscellaneous text and stylistic edits. Deleted case citations. Added case citations.
1212.05(b) | Miscellaneous text edits. Added case citations.
1212.06 | Miscellaneous text and stylistic edits. Deleted fourth paragraph. Added cross reference.
1212.06(a) | Miscellaneous stylistic edits. Added case citations. Deleted case citation.
1212.06(b) | Miscellaneous stylistic edits. Added case citations.
1212.06(d) | Added case citations. Deleted case citations. Additional guidance incorporated regarding when a survey is probative. Miscellaneous text and stylistic edits.
1212.07 | Miscellaneous text edit.
1212.09(a) | Miscellaneous text edits.
1213.01(b) | Added case citation. Deleted case citations.
1213.05(b) | Miscellaneous text edits. Deleted dictionary citations.
1213.05(c) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citation.
1215.02 | Miscellaneous text and stylistic edits.
1215.02(c) | Miscellaneous text and stylistic edits.
1215.02(d) | Revised section title: Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services. Added internal headings. Miscellaneous text edits. Updated hyperlink. Added case citations. Clarified that stylization in a gTLD does not render it registrable unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself. Added cross references.
1215.02(d)(i) | Miscellaneous text edits.
1215.02(d)(ii) | Miscellaneous text edits.
1215.02(d)(iii) | Miscellaneous text edits.
1215.02(d)(iv) | Miscellaneous text edits.
1215.05 | Miscellaneous stylistic edit. Added case citation.
1215.05(e) | Added cross reference.
1215.08(c) | Revised section title: Adding or Deleting “.” in Marks for Domain Registry Operator or Domain Name Registrar Services. Miscellaneous text edits.
1215.09 | Miscellaneous stylistic edits. Added cross reference.
1217 | Miscellaneous text edits. Added case citations. Clarified that a losing party must demonstrate a material change in the relevant conditions or circumstances to avoid preclusion from an earlier decision.
1301.02 | Miscellaneous text and stylistic edits. Added case citations and cross reference.
1301.02(a) | Miscellaneous text and stylistic edits. Added case citations and cross references. Deleted case citations.
1301.02(b) | Miscellaneous text edits. Added cross reference.
1301.02(c) | Miscellaneous text and stylistic edits. Added case citation.
1301.02(f) | Miscellaneous text and stylistic edits. Added case citations.
1301.03(a) | Miscellaneous text edit.
1301.04(e) | Miscellaneous text edits. Added cross references and case citations. Deleted case citations. Deleted second and third paragraphs.
1301.04(f) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1301.04(f)(ii) | Miscellaneous text and stylistic edits. Added case citations. Deleted case citations.
1301.04(g)(ii) | Miscellaneous text and stylistic edits. Added statutory citations and guidance that the statutory basis for the failure-to-function refusal for marks seeking registration on the Supplemental Register is Trademark Act Sections 23 and 45. Added guidance regarding issuing a failure to function refusal for §1(b), §44, and §66(a) applications. Added cross references.
1301.04(h)(iii) | Miscellaneous text edits.
1301.04(h)(iv)(D) | Revised section title: Services Rendered by Means of Software Applications (Apps). Miscellaneous text edit.
1304.03(c) | Miscellaneous text and stylistic edits. Added case citation.
1306.02(a)(v) | Added title of Madrid Protocol. Updated citation to Madrid Common Regulations and guide.
1306.02(d) | Miscellaneous text and stylistic edits. Updated cross reference.
1306.04 | Reworded for clarity. Added case citations and cross references. Deleted case citation. Miscellaneous stylistic edits.
1306.05(b)(i) | Added case citation.
1306.05(c) | Added case citation. Revised in accordance with Examination Guide 1-22. Miscellaneous stylistic edits.
1306.05(g) | Miscellaneous stylistic edits. Added case citations.
1306.05(g)(ii) | Miscellaneous text and stylistic edits. Added case citation.
1401.02(a) | Updated guidance regarding when editions of the Nice Agreement are issued. Updated references to current version of Nice Agreement. Revised general remarks. Updated information regarding indications of goods or services appearing in the headings of Classes 7, 9, 11-12, 21, 25, 30, 32, 35, 37, 40, 43.
1401.03 | Added cross reference. Deleted second paragraph. Miscellaneous text edits.
1401.03(c) | Miscellaneous text edits.
1401.03(d) | Added title of Madrid Protocol. Revised to correct title of Madrid Common Regulations. Miscellaneous text and stylistic edits. Added cross references.
1401.04 | Added rule citation. Revised to correct title of Madrid Common Regulations.
1401.04(b) | Updated cross reference.
1401.05(a) | Miscellaneous text edits. Updated cross reference. Additional guidance incorporated regarding identifying the primary components of kits for goods, gift baskets, and items sold as a unit, using definite terms that are clear, specific, and accurate.
1401.05(b) | Clarified guidance regarding Class 10 goods.
1401.05(d) | Updated section to delete reference to providing temporary use of non-downloadable game software in Class 41. Miscellaneous text edit.
1401.10 | Clarified that identifications for applications under §44(e) must comply with identification and classification policy in effect on the filing date of the application, rather than the date of foreign registration.
1401.12(c) | Miscellaneous text edits.
1401.13(b) | Added reference to “headsets for playing video games” being added to Class 9.
1401.13(d) | Miscellaneous text edits. Added guidance regarding identifications for “dietetic substances adapted for medical or veterinary use.”
1401.14(f) | Revised section title: Ivory, Bone, Whalebone, Horn, Tusks, or Other Items Prohibited under Federal Law. Updated section to incorporate guidance regarding “live coral,” “ambergris,” “whale oil and fat for food,” and “live soft-shelled turtles.” Miscellaneous text edits.
1402.01 | Miscellaneous text and stylistic edits. Added case citations and cross references. Deleted case citations. Additional guidance incorporated specifying that each good or service should be listed only once in the identification in an application based on a single filing basis and should be listed only once for each applicable basis in an application based on multiple filing bases.
1402.01(a) | Miscellaneous text edits.
1402.01(b) | Clarified that identifications for applications under §44(e) must comply with identification and classification policy in effect on the filing date of the application, rather than the date of foreign registration. Updated cross reference.
1402.02 | Added example of wording that does not meet the requirements for a filing date.
1402.03 | Miscellaneous text edit.
1402.03(a) | Added “in the nature of” as a preferred term for setting forth an identification that requires greater particularity. Miscellaneous text edits.
1402.03(d) | Deleted paragraph referencing software that serves a wide range of diverse purposes. Miscellaneous text edit.
1402.03(e) | Added second paragraph.
1402.03(g) | Updated examples of acronyms and their full names for additional countries and translations of certain names. Miscellaneous text edits.
1402.04 | Miscellaneous text edits.
1402.05(a) | Miscellaneous stylistic edits. Deleted case citation. Added case citation.
1402.07(c) | Miscellaneous text edit. Deleted last example.
1402.09 | Miscellaneous text edits.
1402.11 | Miscellaneous text edit. Additional guidance incorporated regarding the wording “sales” and identifications for manufacturing services.
1402.11(a)(i) | Miscellaneous text edit.
1402.11(a)(ii) | Miscellaneous text edit.
1402.11(a)(iv) | Miscellaneous text edits.
1402.11(a)(vi) | Revised to indicate that retail store, catalog, and ordering services were previously classified in Class 42. Miscellaneous text edits.
1402.11(a)(ix) | Miscellaneous text edit.
1402.11(a)(x) | Miscellaneous text edit.
1402.11(a)(xii) | Miscellaneous stylistic edits. Deleted last sentence of first paragraph. Added guidance regarding the wording “providing downloadable software.”
1402.11(c) | Revised section title: Association Services. Clarified guidance regarding classifying association services. Added cross reference. Deleted last paragraph.
1402.11(d) | Miscellaneous text edits.
1402.11(f) | Revised section title: Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Goods.
1402.12 | Miscellaneous text edits.
1403 | Corrected text of 37 C.F.R. §2.86.
1403.01 | Updated cross reference. Added cross reference.
1403.04 | Deleted previous section. Renumbered section 1403.05 as 1403.04.
1403.05 | Renumbered previous section 1403.06 as 1403.05.
1403.06 | Renumbered previous section 1403.07 as 1403.06.
1501.02(b) | Added cross reference and case citations. Miscellaneous text edits.
1601.01(a) | Updated to reflect transition to electronic registration certificates.
1601.01(b) | Changed section title: Presentation Copy of Registration Certificate. Deleted first paragraph. Added information regarding presentation copies of registrations. Changed title of Document Services Branch to Patent and Trademark Copy Fulfillment Branch and made miscellaneous text edits to cross reference.
1604.11 | Miscellaneous stylistic edits. Added case citations. Deleted case citation.
1609.10 | Updated to reflect current procedure when a request for correction to a registration is granted.
1611 | Revised to indicate that the USPTO’s automated records are not updated to show that the registration is cancelled or expired until approximately 10 days after the expiration of the grace period. Revised contact information for requesting that the database be updated to show that the registration is cancelled or expired.
1613.07(b) | Updated hyperlink.
1616 | Revised section title: Replacement with a Section 66(a) Registration. Miscellaneous text edits. Updated to include collective membership organization.
1701 | Additional guidance incorporated regarding delegation of authority to impose sanctions.
1705.04 | Revised to change the wording "dismissed" to "denied."
1705.09 | Miscellaneous text edits.
1711 | Revised to change the wording "dismissed" to "denied."
1716-1716.04(h) | Incorporated changes in accordance with Sections 16A and 16B of the Trademark Act and enacted at 86 FR 64300. Incorporated procedures set out in Examination Guide 1-21.
1716 | New section: Petitions for Expungement or Reexamination
1716.01 | New section: Timing for Requesting and Instituting Expungement or Reexamination Proceedings
1716.02 | New section: Petitions to Request Expungement or Reexamination
1716.02(a) | New section: Basis for the Petition
1716.02(b) | New section: Requirements for a Complete Petition
1716.02(c) | New section: Reasonable Investigation Requirement
1716.02(c)(i) | New section: Definition of Reasonable Investigation
1716.02(c)(ii) | New section: Sources of Information and Evidence
1716.02(d) | New section: Notice of Petition for Expungement or Reexamination
1716.03 | New section: Instituting Expungement and Reexamination Proceedings
1716.03(a) | New section: Prima Facie Case of Nonuse
1716.03(b) | New section: Consolidating Proceedings
1716.04 | New section: Procedures for Expungement and Reexamination Proceedings
1716.04(a) | New section: Notice of Institution and Office Action
1716.04(b) | New section: Responding to the Initial Office Action
1716.04(c) | New section: Evidence of Use or Excusable Nonuse
1716.04(d) | New section: Deleting Goods and/or Services or Surrendering the Registration
1716.04(e) | New section: Final Action and Notice of Termination
1716.04(f) | New section: Requesting Reinstatement After Cancellation for Failure to Respond
1716.04(g) | New section: Estoppel
1716.04(h) | New section: Co-pending Proceedings
1902.02(f) | Miscellaneous text edits. Added guidance clarifying that periods or “full stops” are allowed at the end of the identification in an international application.
1902.02(f)(ii) | Miscellaneous text edits.
1904.02(c)(i) | Deleted last example.
1904.02(c)(ii) | Updated examples.
1904.02(d) | Added guidance that applicant may not amend a §66(a) application to indicate that it is a collective or certification mark if the application does not indicate that the mark is a “Collective, Certificate or Guarantee Mark,” and similarly that applicant may not amend a §66(a) application to indicate that the mark is a trademark or service mark if the application indicates that the mark is a “Collective, Certificate or Guarantee Mark.”
1904.02(h) | Miscellaneous text edits. Reworded for clarity. Added cross references.
1904.02(k) | Added internal headings. Reworded for clarity. Additional guidance incorporated regarding if the international registration contains a color claim, but there is a black-and-white drawing in the international registration.
1904.12 | Miscellaneous text and stylistic edits. Clarified guidance regarding when the goods/services/membership organization are the same for purposes of replacement. Updated guidance to indicate that the holder of a pending extension of protection may file a request to note replacement of the U.S. national registration and to clarify procedures regarding when the holder can file a request to note replacement of more than one U.S. national registration based on a single registered or pending extension of protection.

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