			    DEPARTMENT OF COMMERCE 
			 Patent and Trademark Office 
				37 CFR Part 2 
			   [Docket No. 2003-T-023] 
				 RIN 0651-AB67

		Changes in the Requirements for Amendment and 
		     Correction of Trademark Registrations

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

SUMMARY: The United States Patent and
Trademark Office ("Office") is amending its rules to eliminate the
requirement that a request for amendment or correction of a
registration be accompanied by the original certificate of registration
or a certified copy thereof, and the requirement that an application to
surrender a registration for cancellation be accompanied by the
original certificate or a certified copy.

DATES: Effective September 20, 2004.

FOR FURTHER INFORMATION CONTACT: Cheryl Black,Office of the Commissioner 
for Trademarks, by telephone at (703) 308-8910, ext. 153; or by e-mail 
to cheryl.black@uspto.gov<mailto:cheryl.black@uspto.gov>.

SUPPLEMENTARY INFORMATION: A Notice of Proposed Rule Making was published 
in the Federal Register (68 FR 70482) on December 18, 2003. No public 
hearing was held. Two organizations, two law firms and two attorneys 
submitted written comments.

   The Office is amending its rules to eliminate the requirement that the 
original certificate of registration or a certified copy thereof accompany 
a request for amendment of a registration, a request for correction of a 
registration, or an application to surrender a registration for 
cancellation.

   References below to "the Act," "the Trademark Act," or "the statute" 
refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as amended.

Requirement for Submission of Original Certificate of Registration or 
Certified Copy

   The Office is eliminating the requirement under Secs. 2.173, 2.174, 
and 2.175(b) that a request for amendment or correction of a registration 
under section 7 of the Trademark Act be accompanied by the original 
certificate of registration or a certified copy	thereof. Under the current 
rules, the Office attaches an updated registration certificate showing the 
amendment or correction to the original certificate and returns it to the 
registrant. However, the Office believes that requiring the registrant to 
submit the original certificate or a certified copy for the purpose of 
physically attaching an updated registration certificate, only to return 
the original certificate (or certified copy thereof) to the owner of record 
is unnecessary and inefficient. Instead, the Office will send the updated
registration certificate showing the amendment or correction to the
registrant, and instruct the registrant to attach it to the certificate
of registration. The Office will update its own records to show the
amendment or correction and attach an updated registration certificate
to the printed copy of the registration on file in the Office.

   The Office is also eliminating the requirement under Sec. 2.172, that 
an application for surrender of a registration for cancellation under 
section 7 of the Trademark Act be accompanied by the original certificate, 
if not lost or destroyed. The requirement is unnecessary and inefficient. 
The Office will process a request for cancellation regardless of whether 
the original registration certificate accompanies the request. If the 
original certificate is submitted, the Office will destroy the certificate 
once the registration is cancelled.

One-Year Time Limit for Requests for Correction of Registrations 

   The proposed amendment to Secs. 2.174 and 2.175 required registrants to 
file all requests for correction of a registration within one year after 
the date of registration, even where a mistake in a registration resulted 
from an Office error. This change in practice was proposed because granting 
requests to correct errors in registrations years after the date of 
registration caused confusion to examining attorneys and third parties who 
might have previously searched Office records and relied on information 
about existing registrations. 

   Four comments stated that many of the mistakes go unnoticed for years 
after issuance and are not discovered until it is time to file an 
affidavit of use or excusable nonuse under Section 8 of the Trademark Act. 
In an example provided by one commenter, a registrant received an 
error-free registration certificate and years later after preparing an 
affidavit of use discovered an error on the registration in the Office's 
Trademark electronic database. Two comments stated that denying requests 
to correct errors in registrations after the one-year limit could result 
in the loss of substantive trademark rights and that maintaining a 
registration with inaccurate information could cause problems for 
registrants in establishing a complete chain of title, seeking foreign and 
international trademark rights, and protecting against trademark 
infringement. Accordingly, the Office has reconsidered this proposed change 
and at this time is not imposing a time limit for requests for corrections 
to registrations under Secs. 2.174 and 2.175. The benefits of providing 
accurate information about registrations in the records of the Office, 
protecting the rights of owners to seek correction of errors in 
registrations and avoiding possible loss of substantive trademark rights 
due to mistakes in the registration outweigh the concerns that would 
warrant a time limit on filing requests for corrections. 

Discussion of Specific Rules

   The Office is amending Secs. 2.172, 2.173, 2.174, 2.175, and 2.176.

   The Office is amending Sec. 2.172 to eliminate the requirement that an 
application to surrender a trademark registration for cancellation be 
accompanied by the original certificate of registration.

   The Office is amending Sec. 2.173 to eliminate the requirement that the 
original certificate of registration or a certified copy thereof accompany 
a request for amendment of a trademark registration. 

   The Office is amending Sec. 2.174 to eliminate the requirement that the 
original certificate of registration or a certified copy thereof accompany 
a request for correction of a mistake by the Office in a trademark 
registration pursuant to section 7(g) of the Trademark Act.

   The Office is amending Sec. 2.175 to eliminate the requirement that the 
original certificate of registration or a certified copy thereof accompany 
a request for correction of a mistake by a registrant in a trademark 
registration pursuant to section 7(g) of the Trademark Act.

   The Office is amending Sec. 2.176 to change "Examiner of Trademarks" 
to "Post Registration Examiners." 

Rule Making Requirements 

Regulatory Flexibility Act 

   The changes in this final rule relate solely to the procedure to be 
followed in requesting an amendment or correction of a registration. 
Therefore, these rule changes involve interpretive rules, or rules of 
agency practice and procedure under 5 U.S.C. 553(b)(A), and prior notice 
and an opportunity for public comment were not required pursuant to 5 
U.S.C. 553(b)(A) (or any other law). See Bachow	Communications Inc. v. FCC, 
237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application process 
are "rules of agency organization, procedure, or practice" and exempt from 
the Administrative Procedure Act's notice and comment requirement); Merck 
& Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed. 
Cir. 1996) (the rules of practice promulgated under the authority of former 
35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not substantive rules (to 
which the notice and comment requirements of the Administrative Procedure 
Act apply)); Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) ("it 
is doubtful whether any of the rules formulated to govern patent and 
trademark practice are other than `interpretative rules, general statements 
of policy, * * * procedure, or practice"' (quoting C.W. Ooms, The United 
States Patent Office and the Administrative Procedure Act, 38 Trademark 
Rep. 149, 153 (1948)). 

   Nevertheless, the Office published a notice of proposed
rule making in the Federal Register, 68 FR 70482 (Dec. 18, 2003), and
in the Official Gazette of the United States Patent Office on January
13, 2004, in order to solicit public participation with regard to this
rule package. Pursuant to the notice of proposed rule making, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office certified to the Chief Counsel for Advocacy of the
Small Business Administration under the provisions of section 605(b) of
the Regulatory Flexibility Act that the proposed rule would not have a
significant economic impact on a substantial number of small entities.
No comments were received which referenced any impact the proposed
rules would have on small entities.

   This final rule package does not impose any new fees on members of the 
public. In fact, because this final rule eliminates the requirement that 
registrants must submit the original certificate of registration or a 
certified copy thereof with a request for amendment, correction, or 
surrender of a registration, this final rule will lessen the financial 
burden on many registrants. In situations where a registrant does not have 
a certified copy of his or her own registration, the registrant, whether a 
large or small entity, will no longer be required to pay fees to the USPTO 
to obtain a certified copy of his or her own registration.

   Accordingly, the Deputy General Counsel for General Law of the United 
States Patent and Trademark Office has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that the rule changes will 
not have a significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)).

Executive Order 13132

   This rule making does not contain policies with federalism implications 
sufficient to warrant preparation of a Federalism Assessment under 
Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

   This rule making has been determined not to be significant for purposes 
of Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act

   This rule contains no new information collection or recordkeeping 
requirements under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et 
seq.). Existing collections of information and recordkeeping requirements 
have been reviewed and approved by OMB under OMB Control Number 0651-0009, 
Trademark Processing. Notwithstanding any other provision of law, no person 
is required to respond 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 Paperwork Reduction Act unless that collection of 
information displays a currently valid OMB control number. 

List of Subjects in 37 CFR Part 2

   Administrative practice and procedure, Trademarks.

. For the reasons given in the preamble and under the authority contained 
in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office amends part 2 of 
title 37 as follows:

. 1. The authority citation for 37 CFR Part 2 continues to read as 
follows:

   Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

. 2. Revise Sec. 2.172 to read as follows:

Sec. 2.172 Surrender for cancellation.

   Upon application by the registrant, the Director may permit any 
registration to be surrendered for cancellation. An application for 
surrender must be signed by the registrant. When there is more than one 
class in a registration, one or more entire class(es) but less than the 
total number of classes may be surrendered. Deletion of less than all of 
the goods or services in a single class constitutes amendment of 
registration as to that class (see Sec. 2.173).

. 3. Amend Sec. 2.173 by revising paragraph (a) to read as follows:

Sec. 2.173 Amendment of registration.

   (a) A registrant may apply to amend a registration or to disclaim part 
of the mark in the registration. The registrant must submit a written 
request specifying the amendment or disclaimer. This request must be signed 
by the registrant and verified or supported by a declaration under Sec. 
2.20, and accompanied by the required fee. If the amendment involves a 
change in the mark, the registrant must submit 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. 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.

* * * * * 

. 4. Revise Sec. 2.174 to read as follows: 

Sec. 2.174 Correction of Office mistake.

   Whenever a material mistake in a registration, incurred through the 
fault of the United States Patent and Trademark Office, is clearly 
disclosed by the records of the Office, a certificate of correction 
stating the fact and nature of the mistake, signed by the Director or by 
an employee designated by the Director, shall be issued without charge and 
recorded. A printed copy of the certificate of correction shall be attached 
to each printed copy of the registration certificate. Thereafter, the 
corrected certificate shall have the same effect as if it had been 
originally issued in the corrected form. In the discretion of the Director, 
the Office may issue a new certificate of registration without charge.

. 5. Amend Sec. 2.175 by revising paragraphs (a) and (b) to read as 
follows:

Sec. 2.175 Correction of mistake by registrant.

    (a) Whenever a mistake has been made in a registration and a showing 
has been made that the mistake occurred in good faith through the fault 
of the registrant, the Director may issue a certificate of correction. 
In the discretion of the Director, the Office may issue a new certificate 
upon payment of the required fee, provided that the correction does not 
involve such changes in the registration as to require republication of 
the mark.

   (b) An application for such action must:

   (1) Include the following:

   (i) Specification of the mistake for which correction is sought;

   (ii) Description of the manner in which it arose; and

   (iii) A showing that it occurred in good faith;

   (2) Be signed by the registrant and verified or include a declaration 
in accordance with Sec. 2.20; and 

   (3) Be accompanied by the required fee.


* * * * * 

. 6. Revise Sec. 2.176 to read as follows:

Sec. 2.176 Consideration of above matters.

   The matters in Secs. 2.171 to 2.175 will be considered in the first 
instance by the Post Registration Examiners. If the action of the Examiner 
is adverse, registrant may petition the Director to review the action 
under Sec. 2.146. If the registrant does not respond to an adverse action 
of the Examiner within 6 months of the mailing date, the matter will be 
considered abandoned.

August 13, 2004					               JON W. DUDAS
				            Under Secretary of Commerce for
			          Intellectual Property and Director of the 
			          United States Patent and Trademark Office

