[Federal Register Volume 64, Number 90 (Tuesday, May 11, 1999)]
[Proposed Rules]
[Pages 25223-25246]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-11471]


=======================================================================
-----------------------------------------------------------------------

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 a.m., 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 [email protected]. 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).

[[Page 25224]]

Application Filing Dates

    TLTIA Sec. 103 adds Secs. 1(a)(4) and 1(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 Sec. 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 Sec. 1(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 Sec. 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 Sec. 2.56. The Office proposes to 
add Sec. 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 Sec. 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 Secs. 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 Sec. 1 of the Act, or an amendment to allege use or 
statement of use of a mark in an application under Sec. 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. TMEP Sec. 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, Secs. 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 
Sec. 103 amends Secs. 1(a) and 1(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.

H.R. Rep. No. 194, 105th Cong., 1st Sess. 12 (1997).
    Proposed Secs. 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 Sec. 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 Sec. 8 of the 
Act. Proposed Sec. 2.161(b) requires that a person properly authorized 
to sign on behalf of the owner sign the verification. Proposed 
Sec. 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 Sec. 8 affidavit. 
See sections 1(a)(1), 1(b)(1), 1(d)(1), 1(d)(2), and 8(b) of the Act.
    TLTIA Sec. 105 amends Sec. 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 Sec. 8(a) of the Act. The 
legislative history states:


[[Page 25225]]


    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 an application, 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 Secs. 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 
Sec. 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 Sec. 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 Sec. 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 Secs. 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 
Secs. 1105.05(f)(i)(A) and 1105.05(d). Sections 1(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 Secs. 103 and 104 amend Secs. 1(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 Sec. 2.66 for the 
requirements for filing a petition to revive.

Post Registration

Statutory Changes

    TLTIA Secs. 105 and 106 amend: (1) Sec. 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 (Sec. 8 affidavit) in the year before 
the end of every ten-year period after the date of registration; and 
(2) Sec. 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 Sec. 8 affidavit and a renewal application.
    The statutory filing periods for the ten-year Sec. 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 Secs. 8 and 9 will be 
the same as the requirements for renewal under current law.
    A Sec. 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 Secs. 105 and 106 amend Secs. 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 Secs. 105 and 106 also amend Secs. 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 Sec. 8 affidavits and for Sec. 15 
affidavits from $100 to $200 per class.
    The proposed surcharge for filing a Sec. 8 affidavit or Sec. 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 Sec. 8 
affidavit or a Sec. 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 Sec. 107 amends Sec. 10 of the Act to 
allow recordation of a document that is not an original or a true copy.

Assignment of Sec. 1(b) Applications

    TLTIA Sec. 107 amends Sec. 10 to permit an assignment after the 
applicant files an amendment to allege use under Sec. 1(c) of the Act. 
Currently, a Sec. 1(b) application cannot be assigned until after the 
filing of a statement of use under Sec. 1(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 Sec. 10 of the Act to 
permit an assignment of a Sec. 1(b) application to someone other than a 
successor to the applicant's business only after the filing of a 
statement of use under Sec. 1(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,

[[Page 25226]]

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, 3.24, 3.25, 3.28, 3.31, and 6.1.
    The Office proposes to revise Sec. 1.1(a)(2) to set forth all the 
addresses for filing trademark correspondence in one rule.
    The Office proposes in Sec. 1.1(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 Sec. 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 Sec. 1.4(a)(2) to correct a cross-
reference.
    The Office proposes to add a new Sec. 1.4(d)(1)(iii) to provide for 
signature of electronically transmitted trademark filings, where 
permitted.
    The Office proposes to amend Sec. 1.5(c) to clarify the 
requirements for identifying trademark applications and registrations.
    The Office proposes to amend Sec. 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 Sec. 1.10.
    The Office proposes to amend Sec. 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 Sec. 2.1 to update a cross-reference.
    The Office proposes to amend Sec. 2.6(a)(5) to decrease the filing 
fee for a renewal application from $300 to $200 per class.
    The Office proposes to amend Sec. 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 Sec. 2.6(a)(12) to increase the fee 
for filing a Sec. 8 affidavit from $100 to $200 per class, due to 
increased administrative costs.
    The Office proposes to revise Sec. 2.6(a)(13) to increase the fee 
for filing a Sec. 15 affidavit from $100 to $200 per class, due to 
increased administrative costs.
    The Office proposes to remove Sec. 2.6(a)(14) because it is 
unnecessary. The cost of a combined affidavit or declaration under 
Secs. 8 and 15 of the Act is the sum of the cost of the individual 
filings.
    The Office proposes to add new Sec. 2.6(a)(14) requiring a $100 
surcharge per class for filing a Sec. 8 affidavit during the grace 
period.
    The Office proposes to amend Sec. 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 Sec. 2.6(a)(20), requiring a $100 
surcharge for correcting a deficiency in a Sec. 8 affidavit. Amended 
Sec. 8(c)(2) of the Act requires a deficiency surcharge.
    The Office proposes to add new Sec. 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 Sec. 2.17(c), stating that to be 
recognized as a representative in a trademark case, an attorney as 
defined in Sec. 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 Sec. 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 Sec. 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 Secs. 1(a) and 1(b) of the Act.
    The Office proposes to revise Sec. 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 Sec. 1(a) of the Act; an allegation of the applicant's bona fide 
intention to use the mark in commerce in an application under Sec. 1(b) 
or Sec. 44 of the Act; a claim of priority in an application under 
Sec. 44(d) of the Act; and a certified copy of a foreign registration 
in an application under Sec. 44(e) of the Act. A claim of priority 
under Sec. 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 Sec. 2.21(a)(3) a ``clear drawing 
of the mark'' rather than the drawing ``substantially meeting all the 
requirements of Sec. 2.52'' that is now required.
    The Office proposes to state in Sec. 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 Sec. 2.31 because it is unnecessary. The heading 
``APPLICATION FOR REGISTRATION,'' immediately before Sec. 2.21, 
encompasses the rules that now fall under the heading ``THE WRITTEN 
APPLICATION.''
    The Office proposes to remove and reserve Sec. 2.31, and to move 
the substance of the requirement that the application be in English to 
Sec. 2.32(a).
    The Office proposes to change the heading of Sec. 2.32 to 
``Requirements for

[[Page 25227]]

written application,'' and to revise the rule. Proposed Sec. 2.32(a) 
lists the requirements for the written application, now listed in 
Sec. 2.33(a)(1).
    Proposed Sec. 2.32 does not require a statement of the applicant's 
method or intended method of use of the mark, because Secs. 1(a) and 
1(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 Sec. 2.33 to 
``Verified statement'' and revise the rule.
    The Office proposes to revise Sec. 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 Sec. 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 Sec. 2.32(b) to 
Sec. 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 Sec. 1(b) or Sec. 44 of the Act is not filed 
within a reasonable time after it is signed. TMEP Sec. 803.04.
    The Office proposes to add Sec. 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 Sec. 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 Sec. 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 Sec. 2.21(a)(5) to Sec. 2.34(a). Section 2.34(a)(1) 
will list the requirements for an application under Sec. 1(a) of the 
Act, now listed in Secs. 2.21(a)(5)(i), 2.33(a)(1)(iv), 
2.33(a)(1)(vii), 2.33(a)(2), and Sec. 2.33(b)(1). Section 2.34(a)(2) 
will list the requirements for an application under Sec. 1(b) of the 
Act, now listed in Secs. 2.21(a)(5)(iv) and 2.33(a)(1)(iv).
    Section 2.34(a)(3) will list the requirements for an application 
under Sec. 44(e) of the Act, now listed in Secs. 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 Sec. 44(e) applicant must 
submit a foreign certificate to receive a filing date. However, TLTIA 
Sec. 108 amends Sec. 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 Sec. 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 Sec. 1004.03.
    The Office proposes that Sec. 2.34(a)(4) will list the requirements 
for an application under Sec. 44(d) of the Act, now listed in 
Secs. 2.21(a)(5)(iii), 2.33(a)(1)(ix), and 2.39. Proposed 
Sec. 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 Sec. 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 
Secs. 1(a) and 1(b) for the identical goods or services in one 
application.
    In Sec. 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 Sec. 2.34(c), the Office proposes to set forth the definition of 
``commerce'' currently found in Sec. 2.33(a)(3).
    The Office proposes to remove Sec. 2.37.
    The Office proposes to redesignate Sec. 2.35 as Sec. 2.37.
    The Office proposes to add new Sec. 2.35, ``Adding, deleting, or 
substituting bases.''
    The Office proposes to state in Sec. 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 Sec. 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 Sec. 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 Sec. 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.

[[Page 25228]]

    Under present practice, if the applicant changes the basis from 
Sec. 1(a) or Sec. 1(b) to Sec. 44(e), or from Sec. 44(e) to either 
Sec. 1(a) or Sec. 1(b), the applicant retains the original filing date. 
However, if an application is filed solely under Sec. 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 Sec. 1006.03.
    The Office proposes to change this practice, to allow a Sec. 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 Sec. 2.35(d) that if an applicant 
properly claims a Sec. 44(d) basis in addition to another basis, the 
applicant will retain the priority filing date under Sec. 44(d) no 
matter which basis the applicant perfects. This codifies current 
practice. TMEP Sec. 1006.01.
    The Office proposes to state in Sec. 2.35(e) that the applicant may 
add or substitute a Sec. 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 Sec. 1006.05), and with Articles 
4(C)(1) and 4(D)(1) of the Paris Convention.
    In Sec. 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 Sec. 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 Sec. 2.35(h) that once an applicant 
claims a Sec. 1(b) basis as to any or all of the goods or services, the 
applicant may not amend the application to seek registration under 
Sec. 1(a) of the Act for those goods or services unless the applicant 
files an allegation of use under Sec. 1(c) or Sec. 1(d) of the Act.
    The Office proposes to amend Sec. 2.38(a) to update a cross-
reference.
    The Office proposes to remove and reserve Sec. 2.39, and to move 
the requirements for filing a priority claim under Sec. 44(d) of the 
Act to Sec. 2.34(a)(4), discussed above.
    The Office proposes to revise Secs. 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 1(a) 
and 1(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 
Sec. 1306.06(g)(ii).
    The Office proposes to remove Secs. 2.51(c) through (e), and move 
the substance of those rules to Sec. 2.52.
    The Office proposes to revise Sec. 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 Sec. 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 Sec. 2.52(b).
    The Office proposes to revise Sec. 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 Secs. 2.56, 2.57 and 2.58 into 
Sec. 2.56, and to remove and reserve Secs. 2.57 and 2.58.
    The Office proposes to revise Sec. 2.56(a) to require one rather 
than three specimens with an application under Sec. 1(a) of the Act, or 
an allegation of use under Sec. 1(c) or Sec. 1(d) of the Act in an 
application under Sec. 1(b) of the Act. See the discussion above under 
``Supplementary Information/Number of Specimens Required.''
    The Office proposes to add Sec. 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 Sec. 2.56.
    The Office proposes to add Sec. 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 
Sec. 2.58(a).
    The Office proposes to add Sec. 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 Sec. 1303.02(b).
    The Office proposes to add Sec. 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 Sec. 1304.09(c).
    The Office proposes to add Sec. 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 Sec. 1306.06(c).
    The Office proposes to add Sec. 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 Sec. 2.57.
    Proposed new Sec. 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 Sec. 2.56.
    The Office proposes to add Sec. 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 Sec. 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 Sec. 2.59 to clarify and simplify the 
language.
    The Office proposes to rewrite Sec. 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 Secs. 103 and 104 amend Secs. 1(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.

[[Page 25229]]

    The Office proposes to add Secs. 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 Sec. 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 Sec. 2.66(a)(2) that an 
applicant must be diligent in checking the status of an application. 
This codifies current practice. TMEP Secs. 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 Sec. 2.146(i), discussed below.
    The Office proposes to amend Secs. 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 Sec. 2.20. This is unnecessary because Sec. 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 Secs. 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 Sec. 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 Secs. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 
Sec. 2.146(j).
    The Office proposes to revise Sec. 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 Sec. 2.71(b).
    Proposed Sec. 2.71(b)(1) states that if the declaration or 
verification of an application under Sec. 2.33 is unsigned or signed by 
the wrong party, the applicant may submit a substitute verification or 
declaration under Sec. 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 Sec. 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 Sec. 2.71(c). This is 
consistent with the amendments to Secs. 1(a) and 1(b) of the Act.
    The Office also proposes to delete the ``color of authority'' 
provisions from Sec. 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 Sec. 2.71(b)(2) that if the 
declaration or verification of a statement of use under Sec. 2.88 or a 
request for extension of time to file a statement of use under 
Sec. 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 Secs. 2.88(e)(3), 
2.89(a)(3), and 2.89(b)(3), discussed below.
    The Office proposes to add new Sec. 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 Sec. 802.07. See the discussion 
above under ``Supplementary Information/Filing by Owner.''
    The Office proposes to revise Sec. 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 Sec. 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 Sec. 44 of the Act.
    Currently, because Secs. 2.72(b), (c) and (d) do not expressly 
prohibit an

[[Page 25230]]

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 Sec. 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 Sec. 2.72 to prohibit amendments that materially alter the mark 
on the original drawing.
    The Office proposes to revise Sec. 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 Sec. 2.20 by a person 
properly authorized to sign on behalf of the applicant.
    The Office proposes to further revise Sec. 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 Secs. 1(a) and 1(b) of the Act.
    The Office proposes to revise Sec. 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 Sec. 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 Sec. 2.20 that the mark is still in use in commerce. 
This codifies current practice. TMEP Sec. 803.04.
    The Office proposes to add new Sec. 2.76(j), noting that the 
requirements for multi-class applications are stated in Sec. 2.86.
    The Office proposes to change the heading of Sec. 2.86 to 
``Application may include multiple classes.'' The Office proposes to 
remove current Sec. 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 Secs. 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 Sec. 2.86(a) to include sections now 
found in Sec. 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 Sec. 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 Sec. 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 Secs. 2.56(a), 
2.76(b)(2), and 2.88(b)(2).
    The Office also proposes to add to Sec. 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 Secs. 2.76(c) and 2.88(c).
    The Office proposes to delete the current Sec. 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 Sec. 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 Sec. 2.86(b) to new Sec. 2.86(c).
    The Office proposes to revise Sec. 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 Sec. 2.20 by a person properly 
authorized to sign on behalf of the applicant.
    The Office proposes to revise Sec. 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 Sec. 1(d)(1) 
of the Act.
    The Office proposes to revise Sec. 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 
Sec. 2.56(a).
    The Office proposes to revise Sec. 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 Sec. 1105.05(f)(i)(A). 
Section 1(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 Sec. 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 Sec. 2.20 stating that the mark is still in use in commerce. This 
codifies current practice. TMEP Sec. 803.04.
    The Office proposes to add Sec. 2.88(l), noting that the 
requirements for multi-class applications are stated in Sec. 2.86.
    The Office proposes to revise Secs. 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 Sec. 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 
Sec. 1105.05(d). Sections 1(d) (1) and (2) of the Act specifically 
require verification by the applicant within the statutory filing 
period.
    The Office proposes to revise Sec. 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 Sec. 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

[[Page 25231]]

USPQ2d 1709 (Comm'r Pats. 1992). Therefore, the requirement is 
unnecessary.
    The Office proposes to add Sec. 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 Sec. 2.20 that the applicant still has a bona fide intention to 
use the mark in commerce. This codifies current practice. TMEP 
Sec. 803.04.
    The Office proposes to revise Sec. 2.101(d)(1) to update a cross-
reference.
    The Office proposes to revise Sec. 2.111(c)(1) to update a cross-
reference.
    The Office proposes to revise Sec. 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 Sec. 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 Secs. 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 
Sec. 2.66(a)(2), discussed above.
    The Office proposes to add Sec. 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 Sec. 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 Sec. 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 
Sec. 2.66(f)(3), discussed above.
    The Office proposes to revise Sec. 2.151 to update a cross-
reference and simplify the language.
    The Office proposes to revise Sec. 2.155 to update a cross-
reference and simplify the language.
    The Office proposes to revise Sec. 2.156 to update a cross-
reference and simplify the language.
    The Office proposes to add Sec. 2.160, ``Affidavit or declaration 
of continued use or excusable nonuse required to avoid cancellation.'' 
Proposed Secs. 2.160(a) (1) and (2) list the deadlines for filing the 
affidavit or declaration, and proposed Sec. 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 Sec. 8 
affidavit.
    Proposed Sec. 2.160(b) advises that Sec. 2.161 lists the 
requirements for the affidavit or declaration.
    The Office proposes to change the heading of Sec. 2.161 to 
``Requirements for a complete affidavit or declaration of continued use 
or excusable nonuse,'' and to revise Sec. 2.161 to list the proposed 
requirements for the affidavit or declaration.
    The Office proposes to revise Sec. 2.161(a) to state that the owner 
must file the affidavit or declaration within the period set forth in 
Sec. 8 of the Act.
    The Office proposes to revise Sec. 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 
Sec. 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 Sec. 8 of the Act. The Office also 
proposes to revise Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 105 amends Sec. 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 Sec. 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 Sec. 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 Sec. 2.162(f) to 
Sec. 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 Sec. 8 of the Act.
    The Office proposes to move the substance of Sec. 2.162(e) to 
Sec. 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

[[Page 25232]]

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 Sec. 2.161(h), requiring a designation 
of a domestic representative if the registrant is not domiciled in the 
United States. This reflects Sec. 8(f) of the Act, as amended, and is 
consistent with current practice.
    The Office proposes to move the substance of Sec. 2.163 to 
Sec. 2.162, and to revise it to say that the only notice of the 
requirement for filing the Sec. 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 Sec. 2.164 to 
the introductory text of new Sec. 2.163.
    The Office proposes to state in Sec. 2.163(a) that if the owner of 
the registration files the affidavit or declaration within the time 
periods set forth in Sec. 8 of the Act, deficiencies may be corrected 
if the requirements of Sec. 2.164 are met.
    The Office proposes to add Sec. 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 
Sec. 8(a) or Sec. 8(b) of the Act, whichever is later, or the 
registration will be cancelled.
    The Office proposes to add Sec. 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 Sec. 105 adds Sec. 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 Sec. 2.164(a)(1) states that if the owner files the 
affidavit or declaration within the period set forth in Sec. 8(a) or 
Sec. 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 Sec. 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 Sec. 2.164(b) that if the affidavit 
or declaration is not filed within the time periods set forth in Sec. 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 Sec. 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 Sec. 2.165 to 
``Petition to Commissioner to review refusal''; to remove the last two 
sentences of the current Sec. 2.165(a)(1); and to simplify the language 
of the rule.
    The Office proposes to remove present Sec. 2.166 because it is 
unnecessary. Proposed Secs. 2.163(b) and 2.165(b) set forth the times 
when a registration will be cancelled.
    The Office proposes to add Sec. 2.166, ``Affidavit of continued use 
or excusable nonuse combined with renewal application,'' stating that 
an affidavit or declaration under Sec. 8 of the Act and a renewal 
application under Sec. 9 of the Act may be combined in a single 
document.
    The Office proposes to revise Sec. 2.167(c) to delete the 
requirement that an affidavit or declaration under Sec. 15 of the Act 
(Sec. 15 affidavit) specify the type of commerce in which the mark is 
used.
    The Office proposes to change the heading of Sec. 2.168 to 
``Affidavit or declaration under Sec. 15 combined with affidavit or 
declaration under Sec. 8, or with renewal application.'' The Office 
proposes to revise Sec. 2.168(a) to state that a Sec. 15 affidavit may 
be combined with a Sec. 8 affidavit, if the combined affidavit meets 
the requirements of both Secs. 8 and 15 of the Act. The Office proposes 
to revise Sec. 2.168(b) to state that a Sec. 15 affidavit can be 
combined with a renewal application under Sec. 9 of the Act, if the 
requirements of both Secs. 9 and 15 of the Act are met.
    The Office proposes to revise Sec. 2.173(a) to simplify the 
language.
    The Office proposes to revise Sec. 2.181 to indicate that renewal 
of a registration is subject to the provisions of Sec. 8 of the Act. 
This is consistent with the amendment to Sec. 9(a) of the Act.
    The Office proposes to change the heading of Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 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 
Sec. 2.184 and to transfer some of its provisions to new Sec. 2.186. 
The revised provisions state that the Office will issue a notice if the 
renewal application is not

[[Page 25233]]

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 Sec. 9(a) of the Act.
    The Office proposes to add Sec. 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 Sec. 9, the renewal application must be filed within 
the renewal period or grace period specified in Sec. 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 Sec. 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 Sec. 9(a) 
of the Act.
    The Office proposes to state in Sec. 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 Sec. 9(a) of the Act.
    The Office proposes to state in Sec. 2.185(b) that if the renewal 
application is not filed within the time periods set forth in Sec. 9(a) 
of the Act, the registration will expire. This deficiency cannot be 
cured.
    Because Sec. 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 Sec. 2.186, ``Petition to 
Commissioner to review refusal of renewal.''
    Proposed Sec. 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 Sec. 2.184(a).
    Proposed Sec. 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 
Sec. 2.184(b).
    Proposed Sec. 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 Sec. 2.184(d).
    The Office proposes to amend Sec. 3.16 to state that an applicant 
may assign an application based on Sec. 1(b) of the Act once the 
applicant files an amendment to allege use under Sec. 1(c) of the Act.
    The Office proposes to change the heading of Sec. 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 Sec. 3.24, and to add new Sec. 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 Sec. 3.28 to state a preference that 
separate cover sheets be used for patents and trademarks.
    The Office proposes to revise Sec. 3.31(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 
Sec. 3.31(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 Sec. 3.31(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 Sec. 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 Sec. 3.31(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 Sec. 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

[[Page 25234]]

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 Sec. 8 affidavits of 
continued use or excusable nonuse combined with Sec. 9 renewal 
applications, or Sec. 15 affidavits or declarations of incontestability 
combined with either Sec. 8 affidavits or declarations or with Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 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 Sec. 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 
Sec. 44(e) of the Act; thirteen minutes for allegations of use of the 
mark under Secs. 2.76 and 2.88; ten minutes for requests for extension 
of time to file statements of use under Sec. 2.89; fourteen minutes for 
renewal applications under Sec. 9 of the Act combined with affidavits 
or declarations of continued use or excusable nonuse under Sec. 8 of 
the Act; fourteen minutes for combined affidavits/declarations of use 
and incontestability under Secs. 8 and 15 of the Act; eleven minutes 
for an affidavit or declaration of continued use or excusable nonuse 
under Sec. 8 of the Act; eleven minutes for a renewal application under 
Sec. 9 of the Act; eleven minutes for a declaration of incontestability 
under Sec. 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 Secs. 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 Sec. 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 Sec. 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 Sec. 2.32 removes this requirement with 
respect to applications for registration of trademarks, service marks 
and collective membership marks; proposed Sec. 2.45 removes this 
requirement with respect to applications to register certification 
marks; proposed Sec. 2.76 removes this requirement with respect to 
amendments to allege use; and proposed Sec. 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 Sec. 2.161 eliminates this requirement with 
respect to declarations of continued use; proposed Sec. 2.167 
eliminates this requirement with respect to declarations of 
incontestability; and proposed Sec. 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.

[[Page 25235]]

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 1--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 Sec. 1.1 by revising paragraph (a)(2) to read as follows:


Sec. 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 Sec. 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:


Sec. 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, 
Secs. 1.31 to 1.378; of international applications in subpart C, 
Secs. 1.401 to 1.499; of reexamination of patents in subpart D, 
Secs. 1.501 to 1.570; of interferences in subpart E, Secs. 1.601 to 
1.690; of extension of patent term in subpart F, Secs. 1.710 to 1.785; 
and of trademark applications and registrations, Secs. 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(Sec. 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 Sec. 1.5 by revising paragraph (c) to read as follows:


Sec. 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 Sec. 1.6 by revising paragraph (a)(1), and adding new 
paragraph (a)(4), to read as follows:


Sec. 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 stamped with the date on which the Office receives the 
transmission.
* * * * *
    5. Revise Sec. 1.23 to read as follows:


Sec. 1.23  Method of payment.

    All payments of money required for Patent and Trademark Office 
fees, including fees for the processing of international applications 
(Sec. 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 Sec. 2.1 to read as follows:

[[Page 25236]]

Sec. 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 
Sec. 1.22 to the extent that it is inconsistent with Secs. 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:


Sec. 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                   $200.00
 registration, per class...................................
(6) Additional fee for filing a renewal application during        100.00
 the grace period, per class...............................
 
   *          *          *          *          *          *          *
(12) For filing an affidavit under section 8 of the Act,          200.00
 per class.................................................
(13) For filing an affidavit under section 15 of the Act,         200.00
 per class.................................................
(14) Additional fee for filing a section 8 affidavit during       100.00
 the grace period, per class...............................
 
   *          *          *          *          *          *          *
(19) For filing a request to divide an application, per new       300.00
 application (file wrapper) created........................
(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 Sec. 2.17 by adding paragraphs (c) and (d) to read as 
follows:


Sec. 2.17  Recognition for representation.

* * * * *
    (c) To be recognized as a representative, an attorney as defined in 
Sec. 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 Sec. 2.20 to read as follows:


Sec. 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 Sec. 2.21 to read as follows:


Sec. 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 Sec. 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.


Sec. 2.31  [Reserved]

    11. Remove and reserve Sec. 2.31.
    12. Revise Sec. 2.32 to read as follows:


Sec. 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 Sec. 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 under section 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 
Sec. 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 Sec. 2.33.
    (c) For the requirements for a multiple class application, see 
Sec. 2.86.
    13. Revise Sec. 2.33 to read as follows:


Sec. 2.33  Verified statement.

    (a) The application must include a statement that is signed and 
verified (sworn to) or supported by a declaration under Sec. 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 1(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

[[Page 25237]]

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 1(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 Sec. 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 Sec. 2.34 to read as follows:


Sec. 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 1(a) of the Act. The requirements 
for an application based on section 1(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 1(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 rights outstanding, and has not served as a basis for claiming a 
right 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 on the Supplemental Register, the applicant must 
establish a basis under section 1(a), section 1(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

[[Page 25238]]

applicant may not claim both sections 1(a) and 1(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.


Sec. 2.37  [Removed]

    15. Remove Sec. 2.37.


Sec. 2.35  [Redesignated as Sec. 2.37]

    16. Redesignate Sec. 2.35 as Sec. 2.37.
    17. Add new Sec. 2.35 to read as follows:


Sec. 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 Sec. 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 1(b) basis as to any or all 
of the goods or services, the applicant may not amend the application 
to seek registration under section 1(a) of the Act for those goods or 
services unless the applicant files an allegation of use under section 
1(c) or section 1(d) of the Act.
    18. Amend Sec. 2.38 by revising paragraph (a) to read as follows:


Sec. 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 
(Secs. 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.
* * * * *


Sec. 2.39  [Removed]

    19. Remove and reserve Sec. 2.39.
    20. Revise Sec. 2.45 to read as follows:


Sec. 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 1(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 under 
section 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.


Sec. 2.51  [Amended]

    21. In Sec. 2.51, remove paragraphs (c), (d) and (e).
    22. Revise Sec. 2.52 to read as follows:


Sec. 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 part 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 part 
of the mark consists of one or more colors. To claim

[[Page 25239]]

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 Sec. 2.56 to read as follows:


Sec. 2.56  Specimens.

    (a) An application under section 1(a) of the Act, an amendment to 
allege use under Sec. 2.76, and a statement of use under Sec. 2.88 must 
each include one specimen showing the mark as used on or in connection 
with the goods, or in the sale or advertising of the services 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 Sec. 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.


Sec. 2.57  [Removed]

    24. Remove and reserve Sec. 2.57.


Sec. 2.58  [Removed]

    25. Remove and reserve Sec. 2.58.
    26. Revise Sec. 2.59 to read as follows:


Sec. 2.59  Filing substitute specimen(s).

    (a) In an application under section 1(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 Sec. 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 1(b) of the Act, after filing 
either an amendment to allege use under Sec. 2.76 or a statement of use 
under Sec. 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 Sec. 2.76, verify by 
affidavit or declaration under Sec. 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 Sec. 2.88, verify by affidavit or 
declaration under Sec. 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 Sec. 2.66 to read as follows:


Sec. 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 Sec. 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.

[[Page 25240]]

    (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 Sec. 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 Sec. 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 Sec. 2.88 or a request for an extension 
of time to file a statement of use under Sec. 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 Sec. 2.89 that become due while the petition 
is pending, or file a statement of use under Sec. 2.88.
    (d) In an application under section 1(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 Sec. 2.6.
    28. Revise Sec. 2.71 to read as follows:


Sec. 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 
Sec. 2.33 is unsigned or signed by the wrong party, the applicant may 
submit a substitute verification or declaration under Sec. 2.20.
    (2) If the declaration or verification of a statement of use under 
Sec. 2.88, or a request for extension of time to file a statement of 
use under Sec. 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 
Sec. 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 1(b) of the Act, after filing a 
statement of use under Sec. 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 Sec. 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 Sec. 2.72 to read as follows:


Sec. 2.72  Amendments to description or drawing of the mark.

    (a) In an application based on use in commerce under section 1(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 Sec. 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 1(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 Sec. 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 Sec. 2.76 by revising paragraphs (b), (e)(2), and (e)(3), 
and adding paragraphs (i) and (j) to read as follows:


Sec. 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 Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 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 
Sec. 2.56 for the requirements for specimens; and
    (3) The fee per class required by Sec. 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 Sec. 2.20 by a person

[[Page 25241]]

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 after it is signed, the Office may require a 
substitute verification or declaration under Sec. 2.20 stating that the 
mark is still in use in commerce.
    (j) For the requirements for a multiple class application, see 
Sec. 2.86.
    31. Revise Sec. 2.86 to read as follows:


Sec. 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 Secs. 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 in connection 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 Sec. 2.76 or a statement of 
use under Sec. 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 Sec. 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 Sec. 2.87 
for information regarding requests to divide.
    32. Amend Sec. 2.88 by revising paragraphs (b) and (e) and by 
adding paragraphs (k) and (l) to read as follows:


Sec. 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 Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 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 
Sec. 2.56 for the requirements for specimens; and
    (3) The fee per class required by Sec. 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 Sec. 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 Sec. 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 Sec. 2.20 stating that the mark is 
still in use in commerce.
    (l) For the requirements for a multiple class application, see 
Sec. 2.86.
    33. Amend Sec. 2.89 by revising paragraphs (a), (b), and (d) and by 
adding paragraph (h) to read as follows:


Sec. 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 Sec. 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 Sec. 2.6; and
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 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 Sec. 2.6;
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec. 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 ongoing 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 Sec. 2.20 stating that the applicant still has a bona 
fide intention to use the mark in commerce.
    34. Amend Sec. 2.101 by revising paragraph (d)(1) to read as 
follows:


Sec. 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 Sec. 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

[[Page 25242]]

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 Sec. 2.111 by revising paragraph (c)(1) to read as 
follows:


Sec. 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 
Sec. 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 Sec. 2.146 by revising paragraph (d) and by adding 
paragraphs (i) and (j) to read as follows:


Sec. 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 Sec. 2.6.
    37. Revise Sec. 2.151 to read as follows:


Sec. 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 Sec. 2.155 to read as follows:


Sec. 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 Sec. 2.156 to read as follows:


Sec. 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 Sec. 2.111 and to cancellation for 
failure to file the affidavit or declaration required by section 8 of 
the Act.
    40. Add Sec. 2.160 to read as follows:


Sec. 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 Sec. 2.6.
    (b) For the requirements for the affidavit or declaration, see 
Sec. 2.161.
    41. Revise Sec. 2.161 to read as follows:


Sec. 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 Sec. 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 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.
    (c) Include the registration number;
    (d)(1) Include the fee required by Sec. 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 Sec. 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 Sec. 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 Sec. 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

[[Page 25243]]

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 Sec. 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 
Sec. 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 Sec. 2.162 to read as follows:


Sec. 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 Sec. 2.163 to read as follows:


Sec. 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 Sec. 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) or section 8(b) of the Act, whichever 
is later. If no response is filed within this time period, the 
registration will be cancelled.
    44. Add Sec. 2.164 to read as follows:


Sec. 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 Sec. 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 
Sec. 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 Sec. 2.165 to read as follows:


Sec. 2.165  Petition to Commissioner to review refusal.

    (a) A response to the examiner's initial refusal to accept an 
affidavit or declaration is required before filing a petition to the 
Commissioner, unless the examiner directs otherwise. See Sec. 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 Sec. 2.166 to read as follows:


Sec. 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 Sec. 2.167 by revising paragraph (c) to read as follows:


Sec. 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 Sec. 2.168 to read as follows:


Sec. 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 Sec. 2.173 by revising the heading and paragraph (a) to 
read as follows:


Sec. 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 Sec. 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

[[Page 25244]]

materially alter the character of the mark.
* * * * *
    50. Amend Sec. 2.181 by revising paragraph (a)(1) to read as 
follows:


Sec. 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 Sec. 2.182 to read as follows:


Sec. 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 Sec. 2.183 to read as follows:


Sec. 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 Sec. 2.6 for each class;
    (c) The additional fee required by Sec. 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 Sec. 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 Sec. 2.184 to read as follows:


Sec. 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 section 9(a) of the Act, the registration will expire.
    54. Add Sec. 2.185 to read as follows:


Sec. 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 Sec. 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 
Sec. 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 Sec. 2.186 to read as follows:


Sec. 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 Sec. 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 or commencing 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 Sec. 3.16 to read as follows:


Sec. 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 Sec. 3.24 by revising the heading to read as follows:


Sec. 3.24  Requirements for documents and cover sheets relating to 
patents and patent applications.

* * * * *
    58. Add Sec. 3.25 to read as follows:


Sec. 3.25  Recording requirements for trademark applications and 
registrations.

    (a) Documents affecting title. To record documents affecting title, 
a legible cover sheet (see Sec. 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 
Sec. 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 Sec. 3.28 to read as follows:

[[Page 25245]]

Sec. 3.28  Requests for recording.

    Each document submitted to the Office for recording must include at 
least one cover sheet as specified in Sec. 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 Sec. 3.51 for proper completion. The document and a completed cover 
sheet should be resubmitted.
    60. Amend Sec. 3.31 by revising paragraphs (a) and (b) and by 
adding paragraphs (d) and (e) to read as follows:


Sec. 3.31  Cover sheet content.

    (a) Each patent or trademark cover sheet required by Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 6.1 to read as follows:


Sec. 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 
artists.
    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

[[Page 25246]]

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 beauty care; veterinary and agricultural services; legal 
services; scientific and industrial research; computer programming; 
services that cannot be classified in other classes.

    Dated: May 3, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.
[FR Doc. 99-11471 Filed 5-10-99; 8:45 am]
BILLING CODE 3510-16-P