[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]
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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.
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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