[Federal Register Volume 64, Number 173 (Wednesday, September 8, 1999)]
[Rules and Regulations]
[Pages 48900-48928]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-22957]



[[Page 48899]]

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Part II





Department of Commerce





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Patent and Trademark Office



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37 CFR Part 1 et al.



Trademark Law Treaty Implementation Act Changes; Final Rule

  Federal Register / Vol. 64, No. 173 / Wednesday, September 8, 1999 / 
Rules and Regulations  

[[Page 48900]]



DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 2, 3 and 6

[Docket No. 980826226-9185-02]
RIN 0651-AB00


Trademark Law Treaty Implementation Act Changes

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (Office) is amending its rules 
to implement the Trademark Law Treaty Implementation Act of 1998 
(TLTIA), Pub. L. 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. TLTIA 
implements the Trademark Law Treaty (TLT). TLT is to make the 
procedural requirements of the different national trademark offices 
more consistent.

DATES:
    Effective Date: October 30, 1999.
    Applicability Dates: See SUPPLEMENTARY INFORMATION.

FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of Assistant 
Commissioner for Trademarks, by telephone at (703) 308-8910, extension 
137; by facsimile transmission addressed to her at (703) 308-9395; or 
by mail marked to her attention and addressed to Assistant Commissioner 
for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.

SUPPLEMENTARY INFORMATION:

Applicability Dates

    Pending Applications for Registration: The TLTIA amendments to the 
Act, and these rule changes, shall apply to any application for 
registration of a trademark pending on, or filed on or after, October 
30, 1999.
    Informal Applications: Application papers filed before October 30, 
1999, but not reviewed by the Office for compliance with minimum filing 
requirements until after October 30, 1999, will be required to meet the 
minimum filing requirements (Sec. 2.21) in effect as of the date of 
filing. If the application fails to meet the minimum filing 
requirements in effect on the date of filing, but meets the minimum 
filing requirements in effect on the date the papers are reviewed, the 
application will be assigned a filing date of October 30, 1999.
    Petitions to Revive: Petitions to revive pending on October 30, 
1999, will be reviewed under the unintentional delay standard. See the 
discussion below of the changes to Sec. 2.66.
    Post Registration: The revised provisions of sections 8 and 9 of 
the Act, and these amendments to the rules, apply only to affidavits 
and renewal applications filed on or after October 30, 1999. The old 
law applies to affidavits and renewal applications filed before October 
30, 1999, even if the sixth or tenth anniversary, or the expiration 
date of the registration is on or after October 30, 1999. This is true 
even for affidavits and renewal applications that are filed before, but 
examined after, October 30, 1999.
    The revised provisions of section 9 of the Act do not apply to 
applications for renewal of registrations that expire before October 
30, 1999, even if the applications are examined after October 30, 1999. 
For example, if a registration expires on October 29, 1999, the 
registrant may file a renewal application within the three-month grace 
period provided under the old law. The new six-month grace period does 
not apply to registrations with expiration dates prior to October 30, 
1999.
    Likewise, the new law does not apply to a section 8 affidavit due 
before October 30, 1999, even if the affidavit is not examined until 
after October 30, 1999. For example, if a registration issued on 
October 29, 1993, the registrant must meet the statutory requirements 
of section 8 of the Act on or before October 29, 1999. The registrant 
cannot take advantage of the six-month grace period, or the deficiency 
period, provided under the new law.
    The revised provisions of section 8 of the Trademark Act, 15 U.S.C. 
1058, and these rule changes, apply to the filing of an affidavit of 
continued use or excusable nonuse under section 8 of the Act if: (1) 
The sixth or tenth anniversary of registration, or the sixth 
anniversary of publication under section 12(c) of the Act, is on or 
after October 30, 1999; and (2) the affidavit is filed on or after 
October 30, 1999. However, the provisions of section 8(a)(3) of the 
Act, requiring the filing of a section 8 affidavit at the end of each 
successive ten year period after registration, do not apply to a 
registration issued or renewed for a twenty year term (i.e., a 
registration issued or renewed before November 16, 1989) until a 
renewal application is due.
    A Notice of Proposed Rulemaking was published in the Federal 
Register (64 FR 25223) on May 11, 1999, and in the Official Gazette of 
the Patent and Trademark Office (1223 TMOG 41) on June 8, 1999. A 
public hearing was held on June 10, 1999.
    Written comments were submitted by two organizations, two law 
firms, and five trademark attorneys. Three organizations and one 
attorney testified at the oral hearing.
    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).

Application Filing Dates

    TLTIA section 103 adds sections 1(a)(4) and 1(b)(4) of the Act to 
give the Office authority to establish and change filing date 
requirements. The Office is amending Sec. 2.21 to require the following 
elements for receipt of 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.
    Comment: One comment stated that the proposed requirement in 
Sec. 2.21(a)(3) for a ``clear drawing of the mark'' was confusing, and 
that it could impose a hardship on some applicants, e.g., where the 
attorney's only copy of the drawing is a fax received from a foreign 
client.
    Response: The requirement for a ``clear drawing of the mark'' is 
intended to be more lenient than the current requirement for a drawing 
``substantially meeting all the requirements of Sec. 2.52.'' A clear 
drawing of the mark is essential, so that the application can be 
properly examined, and so that the public will have adequate notice of 
the mark.
    The following elements will no longer be required for receipt of a 
filing date: a certified copy of the foreign registration in a section 
44(e) application; an allegation of the applicant's use or bona fide 
intention to use the mark in commerce; a specimen and date of first use 
in commerce in a section 1(a) application; a stated filing basis; and a 
signature. These elements will instead be required during examination.
    Comment: One comment stated that while a filing date should not be 
denied if the application does not include a filing basis, the basis 
should be made of record as soon as possible.
    Response: The Office expects that most applicants will state the 
filing basis in the original application. If the application does not 
include the filing basis, this information will be required in the 
first Office action.

[[Page 48901]]

Bulky Specimens

    Amended 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. Section 2.56(d)(2) is 
added, 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 meet 
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.
    Comment: One comment supported the proposed procedure for creating 
facsimiles of bulky specimens. Another comment supported the proposed 
procedure, provided that the Office makes copies of the front, back, 
and all portions of the specimens.
    Response: The Office will attempt to capture the mark as used on 
the specimen, but may not copy all portions of the bulky specimens. If 
an additional specimen is needed, the examining attorney will require a 
substitute specimen that meets the size requirements of the rules.

Number of Specimens Required

    The Office is amending 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 section 1 of the Act, or an amendment to allege use 
or statement of use of a mark in an application under section 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.
    Comment: Three comments opposed the proposed requirement for only 
one specimen, stating that if only one specimen is required, and that 
specimen is lost, the file will be left with no specimen; that multiple 
specimens enable interested third parties to obtain an original without 
having to contact the applicant directly; and that current photocopying 
technology does not adequately reproduce color, small details, tones, 
low-contrast images, or highly ornate/intricate or densely worded 
specimens.
    Response: The Office does not permit the removal of other documents 
from application files and will no longer permit specimens to be 
removed from files. Prohibiting the removal of specimens will ensure 
that there is a complete record of the submissions made by the 
applicant. Where removal is permitted, a third party could mistakenly 
remove a unique specimen, thinking it is merely a duplicate. This would 
leave the application file incomplete.
    Currently, 10% of new applications for registration are filed 
electronically, and the Office expects this number to increase 
dramatically in the near future. Only one specimen is required with an 
electronically filed application, and it is submitted as a digitized 
image (Sec. 2.56(d)(4)). Considering the increasing number of 
electronic filings and the move in the future to a paperless Office, 
the Office believes that three specimens are unnecessary.
    Comment: One comment stated that it generally supports the proposed 
requirement for only one specimen, but noted that there will be a 
greater urgency for the Office to ensure that the single specimen is 
always available for public inspection.
    Response: As noted above, the Office will no longer permit 
specimens to be removed from files. The Office now microfilms all 
incoming applications, so that a record of the specimen is available to 
the public if it is lost. In the near future, the Office will be 
scanning all incoming applications and allegations of use and will have 
an electronic image of any specimen that is lost.
    Comment: One comment asked whether more than one specimen may be 
submitted.
    Response: Yes, while only one specimen will be required, a party 
may choose to file more than one specimen. Multiple specimens will be 
retained in the file as long as they do not exceed the size limitations 
of Sec. 2.56(d)(1).

Persons Who May Sign

    Currently, sections 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 section 103 amends sections 1(a) and 1(b) of the Act to eliminate 
the specification of the appropriate person to sign on behalf of an 
applicant.
    The applicant or registrant, and the applicant's or registrant's 
attorney, are best able to determine who should sign documents filed in 
the Office. Therefore, the Office will no longer question the authority 
of the person who signs a verification, or a renewal application, 
unless there is an inconsistency in the record as to the signatory's 
authority to sign.
    Proposed Sec. 2.33(a) stated that a person 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.''
    Comment: One comment suggested that Sec. 2.33(a) be amended to 
state that a person who is properly authorized to sign on behalf of the 
applicant includes: (1) A person with legal authority to bind the 
applicant, (2) a person with firsthand knowledge of the facts asserted, 
and actual or implied authority to act on behalf of the applicant, and 
(3) an attorney as defined in Sec. 10.1(c) of this chapter who has an 
actual or implied, written or verbal power of attorney from the 
applicant, provided that the Office may require written confirmation of

[[Page 48902]]

such power of attorney subsequent to the filing of the verified 
statement.
    Response: The suggestion has been adopted, but modified slightly. 
The Office will not require written confirmation of a power of 
attorney, but will accept the attorney's word that he or she is 
authorized to sign on behalf of the applicant.
    Comment: One comment suggested that ``and/or'' be changed to 
``or.''
    Response: The suggestion has been adopted.
    Comment: One comment suggested that ``implied authority'' be 
changed to ``apparent authority.''
    Response: The suggestion has not been adopted. The Office believes 
that the ``implied authority'' standard is broad enough to cover most 
circumstances and to allow applicants flexibility in determining who 
can sign verifications.
    Comment: Four comments requested clarification as to whether 
attorneys can sign on behalf of clients, and whether any special power 
of attorney is needed.
    Response: Sections 2.33(a) and 2.161(b) have been amended to 
provide for signature of verifications by attorneys. No special power 
of attorney will be required.
    Renewal applications may also be signed by attorneys. Verification 
of renewal applications is no longer required. Section 2.183(a) 
requires that the renewal application be executed by ``the registrant 
or the registrant's representative.''

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 section 8 
affidavit. See sections 1(a)(1), 1(b)(1), 1(d)(1), 1(d)(2), and 8(b) of 
the Act.
    TLTIA section 105 amends section 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 section 8(a) of the Act. The 
legislative history states:

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 is amending 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 
section 8 of the Act.
    Under sections 1(a) and 1(b) of the Act, an application for 
registration of a mark must also be filed by the owner. Therefore, new 
Sec. 2.71(d) states 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 is also amending 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).

Material Alteration

    The Federal Circuit held in In re ECCS, 94 F.3d 1578, 39 USPQ2d 
2001 (Fed. Cir. 1996) that an applicant may amend an application based 
on use to correct an ``internal inconsistency'' in the original 
application. Id. at 1581, 39 USPQ2d at 2004. An application is 
``internally inconsistent'' if the mark on the drawing does not agree 
with the mark on the specimens filed with the application. Id. As a 
result, the Office has been accepting all amendments to drawings in 
use-based applications if there is an inconsistency in the initial 
application.
    However, 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. 
Because the granting of a filing date to an application potentially 
establishes a date of constructive use of the mark under section 7(c) 
of the Act, timely and accurate public notification of the filing of 
applications is important. 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 
of the amendment, because they do not have accurate information about 
earlier-filed applications. Relying on the search of Office records, a 
third party may innocently begin using a mark that conflicts with the 
amended mark, but not with the original mark. 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 is amending Sec. 2.72 to prohibit 
amendments that materially alter the mark on the original drawing.
    Comments: One law firm opposed any amendment of Sec. 2.72, stating 
that the decisions in ECCS and In re Dekra, 44 USPQ2d 1693 (TTAB 1997) 
established a fair compromise between the rights of the applicant and 
the rights of third parties. One organization stated that minor changes 
like the change permitted in ECCS should be allowed, but that it ``does 
not endorse the type of substantial change to a drawing permitted in 
Dekra,'' and expressed concern that the amendment to Sec. 2.72 could 
lead to a more stringent standard for determining material alteration 
than the standard set forth in ECCS. The

[[Page 48903]]

comment further noted that the standard for determining whether the 
mark in the drawing agrees with the mark in the foreign registration in 
a section 44 application is stricter than the standard used to 
determine whether specimens support use of a mark in an application 
under section 1 of the Trademark Act, and suggested that if a uniform 
standard for determining material alteration is adopted, the more 
liberal standard applied to section 1(a) or section 1(b) applications 
should be used.
    Response: ECCS held that under current Sec. 2.72(b), the specimens 
filed with the original application in a use-based application must be 
considered in determining what mark the applicant seeks to register. 
However, the court specifically noted that seven decisions cited in the 
ECCS decision were not affected: ``We have carefully examined all * * * 
(seven) cases and find that none has any bearing on the situation 
before us in which an original application is internally inconsistent 
as to what the mark is, the specimen displaying one mark and the 
drawing a slightly different mark .* * *'' Id. at 1581, 39 USPQ2d at 
2004 (emphasis added). ECCS specifically cited In re Abolio y Rubio 
S.A.C.I. y G., 24 USPQ2d 1152 (TTAB 1992) and In re Meditech Int'l 
Corp., 25 USPQ2d 1159 (TTAB 1990). ECCS at 1581, 39 USPQ2d at 2004. 
Abolio y Rubio involved an application based on a foreign registration 
(15 U.S.C. 1026(e)) in which the drawing omitted the design shown in 
the foreign registration submitted with the application. Meditech 
concerned a use-based application in which the drawing contained the 
typed words ``DESIGN OF A BLUE STAR'' while the specimens showed a 
design of twenty blue stars without the words shown in the drawing. In 
both of these cases, the applicants were not permitted to amend their 
drawings. Subsequently, the Federal Circuit in In re Hacot-Colombier, 
affirmed the Board's refusal to permit an applicant to amend its 
drawing in an application based on a foreign-filed application, 15 
U.S.C. 1126(d). 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). Citing 
Abolio y Rubio with approval, the Court gave deference to the agency's 
interpretation that Sec. 2.72 includes both a prohibition against 
material alterations and a requirement that any alteration conform to 
the mark in the foreign registration. Id. at 619, 41 USPQ2d at 1526. 
The present amendment to Sec. 2.72 is not intended to change the 
standard for determining what constitutes a material alteration as 
discussed in the Board cases cited in ECCS, or in Hacot-Colombier.

Color Drawings

    Section 2.52 is amended to delete the color lining chart currently 
in Sec. 2.52(e).
    Comment: One comment asked whether the Office would accept drawings 
in actual color.
    Response: The Office will no longer deny an application a filing 
date if the mark is depicted in color. However, the Office does not yet 
have the technology to scan marks in color, and the marks will be 
uploaded into the Office's automated systems in black and white.
    Comment: One comment asked whether marks would be published in the 
Official Gazette and issued in color.
    Response: The Office will not publish and issue marks in color on 
October 30, 1999. However, the Office anticipates publishing and 
issuing marks in color in the future.
    Comment: Two comments requested that color photocopiers be made 
available to the public.
    Response: Color photocopiers are very expensive and will not be 
available to the public on October 30, 1999. The Office is looking into 
purchasing a color copier for use by the public, for a fee, and will 
make it available as soon as possible.
    Comment: One comment suggested that the Office should permit the 
use of lining or stippling to indicate color on a drawing, at least 
until an alternative method of indicating color gains wide acceptance.
    Response: There will be a transition period in which the Office 
will continue to publish and register marks that contain the color 
linings currently in Sec. 2.52(e). An Official Gazette notice will 
advise when color lining is no longer acceptable.
    Comment: One comment noted that proposed Sec. 2.52(a)(2)(i) 
referred to color lining, while the color lining chart was deleted from 
Sec. 2.52(e).
    Response: The reference to color lining has been deleted from 
Sec. 2.52(a)(2)(i).
    Comment: One comment suggested that the Office clarify what is a 
sufficient description and location of color applied to a mark.
    Response: The application must include a clear and specific 
description of the mark, identifying the mark as consisting of the 
particular color as applied to the goods or services. If the color is 
applied only to a portion of the goods, the description must indicate 
the specific portion. Similarly, if the mark includes gradations of 
color, the description should so indicate. The Office will issue an 
examination guide giving further guidance as to how it will process 
color drawings.
    Comment: One comment suggested that the Office accept color 
photographs to describe the color claimed in a mark.
    Response: In addition to a written description of a mark, the 
Office will accept color photographs for the record to describe the 
color claimed in a mark.
    Comment: Two comments suggested that applicants should have the 
option to identify color using a generally accepted color 
identification system.
    Response: The Office does not endorse any one commercial color 
identification system. However, in addition to a written description of 
the color contained in a mark, an applicant may refer to a commercial 
color identification system to describe color.

Revival of Abandoned Applications

    Effective October 30, 1999, sections 1(d)(4) and 12(b) of the Act, 
and section 2.66 permit the revival of an abandoned application where 
the delay in responding to an Office action or notice of allowance is 
``unintentional.'' A showing of ``unavoidable'' delay is no longer 
required. All petitions to revive pending on or filed on or after 
October 30, 1999, will be reviewed under the unintentional delay 
standard.
    Under Sec. 2.66(a), the applicant must file a petition to revive 
(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. These deadlines 
will be strictly enforced.
    The written statement that the delay was unintentional must be 
signed by someone with firsthand knowledge of the facts, but it need 
not be verified or supported by a declaration under Sec. 2.20.
    It is not necessary to explain the circumstances that caused the 
unintentional delay. The Office will generally not question the 
applicant's assertion that the delay in responding to an Office action 
or notice of allowance was unintentional, and will grant the petition, 
unless there is information in the record indicating that the delay was 
in fact intentional.
    See the discussion below of the amendments to Sec. 2.66 for further 
information on the requirements for filing a petition to revive.
    Comment: One comment suggested that Sec. 2.66(a) (1) and (2) be 
amended to provide for filing a petition to revive within two months of 
``the mailing date of an adverse decision on a Request For 
Reinstatement,'' so as to avoid a disincentive for filing requests for 
reinstatement.

[[Page 48904]]

    Response: The suggestion has not been adopted because it is 
unnecessary. When the Office denies a request for reinstatement, the 
Office routinely gives the applicant an opportunity to pay the petition 
fee and convert the request for reinstatement into a petition to 
revive.
    Comment: One comment suggested that Sec. 2.66(a) be amended to 
provide for the filing of a petition to revive where the applicant did 
not timely respond to ``a decision on the petition (other than a 
petition to revive under this rule),'' because ``(t)here may be 
instances where a decision on petition is misdirected by the U.S. 
Postal Service and results in the abandonment of the application. For 
example, consider a petition for an extension of time to commence 
judicial review under 37 CFR 2.145(e).''
    Response: The suggestion has not been adopted. Sections 1(d)(1) and 
12(b) of the Act, 15 U.S.C. 1051(d)(1) and 1062(b), provide for revival 
of an abandoned application based on a showing of unintentional delay 
only where there is a delay in responding to an Office action or filing 
a statement of use or request for an extension of time to file a 
statement of use. In the example provided, the remedy is found in 
Sec. 2.145(e)(2), which provides that the Commissioner may extend the 
time for filing an appeal or commencing a civil action ``upon written 
request after the expiration of the period for filing an appeal or 
commencing a civil action upon a showing that the failure to act was 
the result of excusable neglect.'' In other situations, the remedy is 
to file a petition to the Commissioner under Sec. 2.146(a)(5), under 
which the Commissioner may waive any provision of the rules that is not 
a provision of the statute, where an extraordinary situation exists, 
justice requires, and no other party is injured thereby.

Due Diligence

    Sections 2.66(a)(2) and 2.146(i) are amended to indicate that where 
a petitioner seeks to reactivate an application or registration that 
was abandoned or cancelled due to the alleged 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 the long-standing past practice of the 
Office. TMEP sections 413, 1112.05(b)(ii), and 1704. To be considered 
diligent, the petitioner must check the status of the application or 
registration that is the subject of the petition within one year of the 
last filing or receipt of a notice from the Office for which further 
action by the Office is expected.
    The Office now denies petitions when the petitioner waits too long 
before checking the status of an application or registration. The 
rationale is that granting the petition would be unfair to third 
parties who may have searched Office records and relied to their 
detriment on information that an application was abandoned or that a 
registration had expired or been cancelled. 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 a later-filed 
application for a conflicting mark.
    A party can check the status through the Trademark Status Line 
((703) 305-8747) or through the Trademark Applications and 
Registrations Retrieval (TARR) database on the Office's World Wide Web 
site at http://www.uspto.gov/go/tarr/. Written status inquiries are 
discouraged.
    Comment: One comment suggested that the one-year due diligence 
standard be expressly incorporated into Secs. 2.66(a)(2) and 2.146(i).
    Response: The suggestion has been adopted.
    Comment: One comment requested guidance as to how one proves that 
he or she has been diligent in monitoring the status of a pending 
matter.
    Response: A party may call the Status Line, or access status 
information through the World Wide Web, and make a notation in the 
party's own file noting the date of the status inquiry, and the 
substance of the information learned. If it is ever necessary to 
petition for corrective action, the dates and substance of the status 
inquiries should be summarized in the petition. No further 
documentation is necessary.
    Comment: One comment objected to the requirement that petitioners 
be diligent in monitoring the status of pending matters, noting that 
docketing a one-year status check every time a paper is filed or 
received results in a maze of confusing entries in docketing systems 
that makes it difficult to tell which dates have been superseded.
    Response: To protect the interests of third parties and to maintain 
the integrity of the register, the Office believes that requests to 
reactivate abandoned applications or cancelled registrations must be 
made within a reasonable time; the Office does not believe that 
requiring a status check once per year is unreasonable. Therefore, the 
Office will continue its long-standing practice of denying petitions to 
revive under Sec. 2.66 and petitions to the Commissioner under 
Sec. 2.146 if the petitioner has waited too long before investigating 
the problem.

Amendment of Basis After Publication

    Proposed Sec. 2.35(b) prohibited an amendment to add or substitute 
a basis after publication.
    Comments: Four comments opposed the proposed prohibition against 
amending the basis after publication, and one comment supported the 
proposal.
    Response: Because of the arguments submitted by the opponents of 
the proposed rule prohibiting amendment of the basis after publication, 
the Office is withdrawing the proposal. Section 2.35(b) is instead 
amended to incorporate current practice, i.e., to state that an 
application that is not the subject of an inter partes proceeding 
before the Trademark Trial and Appeal Board may be amended to add or 
substitute a basis after publication, if the applicant files a petition 
to the Commissioner; and that republication will always be required. 
TMEP Sec. 1006.04. An application that is the subject of an inter 
partes proceeding before the Trademark Trial and Appeal Board is 
governed by Sec. 2.133(a).

Specification of Type of Commerce No Longer Required

    The Office will no longer require a specification of the type of 
commerce in which a mark is used in an application for registration 
based on use in commerce under section 1(a) of the Act, allegation of 
use in an application based on section 1(b) of the Act, affidavit of 
continued use under section 8 of the Act (section 8 affidavit), or 
affidavit of incontestability under section 15 of the Act (section 15 
affidavit).
    The Office proposed to eliminate the requirements that sections 8 
and 15 affidavits specify the type of commerce in which the mark is 
used, currently required by Secs. 2.162(e) and 2.167(c). Sections 8 and 
15 of the Act do not require that the affidavits list the type of 
commerce. Because the definition of ``commerce'' in section 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.
    Comment: No comments opposed the proposed deletion of the 
requirement that section 8 and section 15 affidavits specify the type 
of commerce. One comment suggested that Secs. 2.33(b)(1), 
2.34(a)(1)(iii), 2.76(b)(1)(ii), and 2.88(b)(1)(ii) be amended to 
require an allegation that the mark is in ``use in

[[Page 48905]]

commerce that can be regulated by the Congress of the United States of 
America,'' rather than a specification of the type of commerce in which 
the mark is used, in an application for registration or allegation of 
use.
    Response: The suggestion has been adopted, but modified slightly. 
Sections 1(a), 1(c), and 1(d) of the Act do not require that an 
applicant specify the type of commerce in which the mark is used in an 
application or allegation of use. Sections 2.33(b)(1), 2.34(a)(1)(iii), 
2.76(b)(1)(ii), and 2.88(b)(1)(ii) are amended to delete the 
requirement that the applicant specify the type of commerce in which 
the mark is used. The Office will not require that the applicant 
specifically state that the mark is in use in commerce that the United 
States Congress can regulate. Instead, the Office will presume that an 
applicant 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.

Statement of Method of Use or Intended Use of Marks No Longer 
Required

    The rules no longer require a statement of the applicant's method 
or intended method of use of a mark, because sections 1(a), 1(b), and 
1(d) of the Act have been amended to omit these requirements.

Post Registration

    TLTIA sections 105 and 106 amend: (1) section 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 in the year before the 
end of every ten-year period after the date of registration; and (2) 
section 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 section 8 affidavit and a renewal application.
    The statutory filing periods for the ten year section 8 affidavits 
are the same as the statutory filing periods for renewal applications. 
The Office will create a combined ``Sections 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 sections 8 and 9 of 
the Act will be the same as the requirements for renewal under current 
law.
    A section 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 is required during the sixth year.
    TLTIA sections 105 and 106 amend sections 8 and 9 of the Act to 
permit filing within a six-month grace period after the deadline set 
forth in the statute, with an additional surcharge. The surcharge for 
filing a section 8 affidavit or section 9 renewal application during 
the grace period is $100 per class. If a combined filing under sections 
8 and 9 of the Act is filed during the grace period, two grace period 
surcharges must be included for each class, one for the section 8 
affidavit and another for the section 9 renewal application.
    TLTIA sections 105 and 106 also amend sections 8(c)(2) and 9(a) of 
the Act to allow for the correction of most deficiencies after the 
deadline set forth in the statute, with payment of an additional 
surcharge. The surcharge for correcting a deficiency in a section 8 
affidavit or a section 9 renewal application is $100. Only a single 
deficiency surcharge will be required for correcting deficiencies in a 
combined sections 8 and 9 filing, even if both the section 8 affidavit 
and the renewal application are deficient.
    Comment: One comment requested clarification as to how the 
deficiency and grace period fees would be applied to section 8 
affidavits and renewal applications pending before or around the date 
of implementation.
    Response: The new fees do not apply to section 8 affidavits and 
renewal applications filed before October 30, 1999. The revised 
provisions of sections 8 and 9 of the Act, and these amendments to the 
rules, apply only to affidavits and renewal applications filed on or 
after October 30, 1999. The old law, and the old fees, apply to 
affidavits and renewal applications filed before October 30, 1999, even 
if the sixth or tenth anniversary, or the expiration date, of the 
registration is on or after October 30, 1999. This is true even for 
affidavits and renewal applications that are filed before, but examined 
after, October 30, 1999. See the discussion under the heading ``Dates/
Applicability Dates,'' supra, for further information about the 
effective date of TLTIA and this final rule.
    Comment: One comment suggested that it would be unfair to charge 
the deficiency surcharge if large backlogs prevent examination in a 
timely manner.
    Response: Ultimately, it is the registrant who is responsible for 
filing documents that meet the requirements of the Act and the rules. 
The surcharges required by sections 8(c)(2) and 9(a) of the Act will be 
charged regardless of whether there are backlogs in examination. Under 
current law, statutory requirements must be met before the end of the 
filing period set forth in the Act, or the registration will be 
cancelled. The new law provides a benefit to registrants because it 
permits correction of most statutory deficiencies after the expiration 
of the statutory filing period, albeit for an additional fee. To avoid 
deficiency fees, registrants are encouraged to file section 8 
affidavits and renewal applications early in the statutory period. 
Under both sections 8 and 9 of the Act, there is a one-year period in 
which a section 8 affidavit or renewal application can be filed, plus 
an additional six-month grace period. Section 8 affidavits are now 
examined within six months of filing, and renewal applications are 
examined less than two months after filing.
    Comment: One comment stated that it would be unfair to charge a 
deficiency surcharge if the information needed to cure defects is 
within the control of the PTO, e.g., an assignment or change of name 
waiting to be recorded.
    Response: If the party who filed was the owner of the registration 
at the time of filing, there will be no deficiency surcharge for 
recording documents or submitting other evidence of ownership, before 
or after the expiration of the filing periods set forth in the Act.
    Comment: One comment asked why there was a surcharge for correcting 
deficiencies in a section 8 affidavit, but not for a section 15 
affidavit.
    Response: Section 8(c)(2) of the Act requires a surcharge for 
correcting deficiencies after expiration of the deadline set forth in 
section 8 of the Act, while section 15 of the Act does not require a 
deficiency surcharge. There is no statutory cutoff date for filing a 
section 15 affidavit. Amendments or corrections to section 15 
affidavits are not accepted, but substitute affidavits may be filed. 
TMEP Sec. 1604.03.
    Comment: The Office had proposed decreasing the renewal fee from 
$300 to $200 per class, and increasing the filing fees for sections 8 
and 15 affidavits from $100 to $200 per class. Two comments objected to 
the proposed increase in filing fees for sections 8 and 15 affidavits.
    Response: The Office is withdrawing these proposals at this time.
    Comment: One comment suggested that the automated records of the 
Office should specify which affidavits had been filed under section 8 
of the Act, e.g., ``first section 8 affidavit,'' ``second section 8 
affidavit,'' etc.
    Response: The Office's automated records will identify a section 8 
affidavit as ``Section 8 (6 year)'' or ``Section 8 (10 year). Further 
information may be obtained from the Status Line at (703) 305-8747, or 
from the Trademark

[[Page 48906]]

Applications and Registrations Retrieval (TARR) database on the 
Office's World Wide Web site at http://www.uspto.gov/go/tarr/. The 
prosecution history will show the number of section 8 affidavits that 
have been filed.

Recording Assignments and Changes of Name

    Currently, the Office will record only an original document or a 
true copy of an original. TLTIA section 107 amends section 10 of the 
Act to allow recordation of a document that is not an original or a 
true copy.
    Comment: One comment suggested that Sec. 3.25(a)(4) should be 
amended to delete the requirement for signature by the assignee when an 
assignment is supported by a statement explaining how the conveyance 
affects title. The comment noted that assignments signed only by the 
assignor have been routinely recorded for many years; that the rule as 
written would be a major change in policy; that the assignment of 
trademarks and the associated goodwill is regarded as a matter of state 
law, and signature by the assignee is not required by the law of a 
number of states; and that the proposed rule would seek to impose by 
Federal law an additional requirement in a transaction that is clearly 
covered by state law, and raises a question as to whether there is 
Federal authority for doing so.
    Response: The suggestion has not been adopted. Section 3.25(a) sets 
forth a number of types of underlying documents one can submit to the 
Office to support a request to record an assignment. Section 3.25(a)(4) 
is not a requirement, but only one alternative available to a party 
seeking to record an assignment. Traditionally, the only document that 
the Office accepted to support a request to record an assignment was 
the original assignment document or a true copy of the original 
document. Amended Sec. 3.25(a) provides a wider range of supporting 
documents. The Office will continue to accept an original assignment 
document, or a true copy of an original, that is signed only by the 
assignor.
    Comment: One comment suggested that Sec. 3.25(b) should be amended 
to continue the current requirement for an original or a true copy of 
an original with a request to record a change of name. The comment 
noted that it is generally easy to obtain a document reflecting a name 
change, and would therefore not be a significant burden to parties 
seeking to record assignments; and that the proposed rule requiring 
only a legible cover sheet would result in a burden to members of the 
public seeking to confirm the change in ownership.
    Response: The suggestion has not been adopted. The deletion of the 
requirement for an underlying document supporting a request to record a 
change of name was made because section 10 of the Act no longer 
requires an underlying document in a request to record a name change.

Assignment of Section 1(b) Applications

    TLTIA section 107 amends section 10 of the Act to permit an 
assignment after the applicant files an amendment to allege use under 
section 1(c) of the Act. Currently, a section 1(b) application cannot 
be assigned until after the filing of a statement of use under section 
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. L. 100-667, 102 Stat. 3935 (15 U.S.C. 1051)), which amended 
section 10 of the Act to permit an assignment of a section 1(b) 
application to someone other than a successor to the applicant's 
business only after the filing of a statement of use under section 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 is amending rules 1.1, 1.4, 1.5, 1.6, 1.23, 2.1, 2.6, 
2.17, 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.
    Section 1.1(a)(2) is amended to set forth all the addresses for 
filing trademark correspondence in one rule.
    Section 1.1(a)(2)(i) is amended to exempt papers filed 
electronically from the requirement that correspondence be mailed to 
the street address of the Office.
    Section 1.1(a)(2)(v) is amended to state that an applicant may 
transmit an application for trademark registration electronically, but 
only if the applicant uses the Office's electronic form.
    Section 1.4(a)(2) is amended to correct a cross-reference.
    Section 1.4(d)(1)(iii) is added to provide for signature of 
electronically transmitted trademark filings, where permitted.
    Section 1.5(c) is amended to clarify the requirements for 
identifying trademark applications and registrations.
    Section 1.6(a) is amended 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 (USPS) under 
Sec. 1.10.
    Comment: One comment suggested that Sec. 1.6(a)(1) be amended to 
state that Express Mail deposited on a Saturday, Sunday, or Federal 
holiday will receive a filing date as of the date of deposit with the 
USPS.
    Response: The suggestion has not been adopted. Sections 1.6(a)(2) 
and 1.10(a) already state that correspondence filed by Express Mail 
will be considered filed as of the date of deposit with USPS, and these 
sections do not limit the date of deposit as Express Mail to a day that 
is not a weekend or Federal holiday. Therefore, it is not necessary to 
repeat this information in Sec. 1.6(a)(1). The Office now stamps 
correspondence filed by Express Mail under Sec. 1.10 with the USPS 
``date in,'' regardless of whether that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia. TMEP Sec. 702.02(f); 
MPEP Sec. 513.
    The current text of Sec. 1.23 is designated as paragraph (a), and 
amended to clarify that payment must be made in U.S. dollars, and in 
the form of a cashier's or certified check, Treasury note, or USPS 
money order to be considered unconditional payment of a fee. As with 
current practice, payment of a fee by other forms (e.g., by personal or 
corporate check, or authorization to charge a credit card) is subject 
to actual collection of the fee.
    Section 1.23 is also amended to add a paragraph (b), providing that 
payments of money for fees in electronically filed trademark 
applications, or electronic submissions in trademark applications, may 
also be made by credit card. The Office previously limited fee payment 
by credit card to the fees required for information products, and will 
continue to accept payment of information product fees by credit card.
    Section 1.23(b) will also provide that payment of a fee by credit 
card must specify the amount to be charged and such other information 
as is necessary to process the charge, and is subject to collection of 
the fee.

[[Page 48907]]

    Section 1.23(b) will further provide that the Office will not 
accept a general authorization to charge fees to a credit card. The 
Office cannot accept an authorization to charge ``all required fees'' 
or ``the filing fee'' to a credit card, because the Office cannot 
determine with certainty the amount of an unspecified fee (the amount 
of the ``required fee'' or the applicable ``filing fee'') within the 
time frame for reporting a charge to the credit card company. Also, the 
Office cannot accept charges to credit cards that require the use of a 
personal identification number (PIN) (e.g., certain debit cards or 
check cards).
    Section 1.23(b) also contains a warning that if credit card 
information is provided on a form or document other than a form 
provided by the Office for the payment of fees by credit card, the 
Office will not be liable if the credit card number is made public. The 
Office currently provides an electronic form for use when paying a fee 
in an electronically filed trademark application or electronic 
submission in a trademark application. This form will not be included 
in the records open to public inspection in the file of a trademark 
matter. However, the inclusion of credit card information on forms or 
documents other than the electronic form provided by the Office may 
result in the release of credit card information.
    Section 2.1 is amended to update a cross-reference.
    Section 2.6(a)(6) is amended to delete reference to the three-month 
renewal grace period. TLTIA changes the grace period to six months.
    Section 2.6(a)(14) is removed because it is unnecessary. The cost 
of a combined affidavit or declaration under sections 8 and 15 of the 
Act is the sum of the cost of the individual filings.
    Section 2.6(a)(14) is added, requiring a $100 surcharge per class 
for filing a section 8 affidavit during the grace period.
    Section 2.6(a)(20) is added, requiring a $100 surcharge for 
correcting a deficiency in a section 8 affidavit.
    Section 2.6(a)(21) is added, requiring a $100 surcharge for 
correcting a deficiency in a renewal application.
    Section 2.17(c) is added, 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 that is filed with the Office on behalf of an applicant or 
registrant. This codifies current practice.
    Section 2.17(d) is added, 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 such a power of attorney 
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.
    Comment: One comment requested clarification as to whether a 
``global'' power of attorney will be effective for all registrations, 
including those that have no immediate deadline.
    Response: Yes, the power of attorney will be effective for 
registrations that have no immediate deadline. When the attorney later 
takes an action, such as filing an affidavit of continued use or a 
renewal application, he or she must comply with the requirements of 
Sec. 2.17(d) in order to rely on the power of attorney.
    Comment: One comment asked whether a global power of attorney will 
remain valid if the application for which the power was filed is 
abandoned.
    Response: Yes. The Office will maintain a record of the power of 
attorney, and the power will remain valid even if the original power 
was filed with an application that is later abandoned, or with a 
registration that is later cancelled.
    Comment: One comment suggested that the Office should require 
attorneys to set forth the jurisdiction in which they are admitted and 
their bar number in a power of attorney.
    Response: The suggestion has not been adopted, because the Office 
does not need this information to process applications and other 
documents. The purpose of TLT is to minimize the number of formal 
requirements for applications, powers of attorney and other documents, 
and to make the procedural requirements of the different national 
trademark offices more consistent. Instituting a new requirement that 
an attorney include the jurisdiction in which he or she is admitted and 
a bar number would not serve this purpose.
    Section 2.20 is revised 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 sections 
1(a) and 1(b) of the Act.
    Comment: One comment suggested that Sec. 2.20 be amended to permit 
the use of the language of 28 U.S.C. 1746 in a declaration.
    Response: The suggestion has been adopted. Section 2.20 is amended 
to permit the filing of a verification under 28 U.S.C. 1746 in lieu of 
either an affidavit or a declaration under Sec. 2.20. This reflects 
current practice. TMEP Sec. 803.02.
    Section 2.21 is revised to require the following minimum 
requirements for receipt of an application filing date: (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. See the 
discussion under the heading ``Supplementary Information/Application 
Filing Dates,'' supra.
    The following minimum requirements for receiving a filing date have 
been deleted: 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 section 1(a) 
of the Act; an allegation of the applicant's bona fide intention to use 
the mark in commerce in an application under section 1(b) or section 44 
of the Act; a claim of priority in an application under section 44(d) 
of the Act; and a certified copy of a foreign registration in an 
application under section 44(e) of the Act. A claim of priority under 
section 44(d) must be filed before the end of the priority period. All 
other elements must be provided during examination.
    Section 2.21(a)(3) is amended to require a ``clear drawing of the 
mark'' rather than the drawing ``substantially meeting all the 
requirements of Sec. 2.52'' that is now required.
    Section 2.21(b) is amended to state 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.
    Comment: One comment stated that it reserves judgment on the 
possible future change in procedures for handling informal 
applications.

[[Page 48908]]

    Response: If the Office does decide to change procedures for 
handling informal applications, it will seek input from the public 
before instituting the changes.
    The center heading ``THE WRITTEN APPLICATION'' before Sec. 2.31 is 
deleted 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.''
    Section 2.31 is removed and reserved. The substance of the 
requirement that the application be in English has been moved to 
revised Sec. 2.32(a).
    The heading of Sec. 2.32 is changed to ``Requirements for a 
complete application.'' Revised Sec. 2.32(a) lists the requirements for 
the written application, now listed in Sec. 2.33(a)(1).
    Proposed Sec. 2.32(a)(3)(ii) required that a juristic applicant set 
forth the state or nation under the laws of which the applicant is 
organized. This is consistent with current Sec. 2.33(a)(1)(ii).
    Comment: One comment suggested that ``state or nation'' in 
Sec. 2.32(a)(3)(ii) be changed to ``jurisdiction (usually state or 
nation),'' because juristic persons such as corporations may be 
incorporated under the law of a jurisdiction that is not a state or 
nation.
    Response: The suggestion has been adopted.
    Section 2.32(a)(6) requires a list of the goods or services on or 
in connection with which the applicant uses or intends to use the mark, 
and states that in an 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.
    Comment: One comment suggested that Sec. 2.32(a)(6) be amended to 
state than an application may be filed under multiple bases, with some 
of the goods/services supported by only one of the bases.
    Response: The suggestion has not been adopted because it is 
unnecessary. Section 2.34(b)(1) clearly states that an applicant may 
claim more than one basis in a single application, and Sec. 2.34(b)(2) 
indicates that the goods/services in such an application may be covered 
by different bases.
    The heading of Sec. 2.33 is changed to ``Verified statement.''
    Section 2.33(a) is amended to state that the application must 
include a statement that is signed and verified by a person properly 
authorized to sign on behalf of the applicant. Section 2.33(a) further 
states that a person who is properly authorized to sign on behalf of 
the applicant is: (1) A person with legal authority to bind the 
applicant; or (2) a person with firsthand knowledge of the facts and 
actual or implied authority to act on behalf of the applicant; or (3) 
an attorney as defined in Sec. 10.1(c) of this chapter who has an 
actual or implied written or verbal power of attorney from the 
applicant. See the discussion under the heading ``Supplementary 
Information/Persons Who May Sign,'' supra.
    The substance of current Sec. 2.32(b) is moved to Sec. 2.33(c). 
Revised Sec. 2.33 states 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 section 1(b) or section 44 of the Act is not filed 
within a reasonable time after it is signed. TMEP Sec. 803.04.
    Section 2.33(b)(1) is amended to delete the requirement that the 
applicant specify the type of commerce in which the mark is used. See 
the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
    Section 2.33(d) is added, 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.
    Section 2.34 is added, setting forth the requirements for the four 
bases for filing. New Sec. 2.34(a)(1) lists the requirements for an 
application under section 1(a) of the Act, now listed in section 
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) lists the requirements for an 
application under section 1(b) of the Act, now listed in 
Secs. 2.21(a)(5)(iv) and 2.33(a)(1)(iv).
    Section 2.34(a)(iii) is amended to delete the requirement that the 
applicant specify the type of commerce in which the mark is used. See 
the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
    Comment: One comment suggested that Sec. 2.34(a)(1)(i), which 
pertains to applications based on use in commerce under section 1(a) of 
the Act, be amended to change ``application filing date'' to 
``application filing date (in the case of an application claiming 
priority under section 44(d), such use in commerce shall be required as 
of the U.S. filing date not the filing date of the priority 
application),'' to avoid any confusion, because in a section 44(d) 
application that claims priority, the effective filing date is the 
filing date of the foreign application.
    Response: The suggestion has not been adopted, because it is 
unnecessary, and could be confusing to domestic applicants who base 
their applications solely on use in commerce and are unfamiliar with 
the requirements of section 44(d). Under Sec. 1.6, correspondence is 
stamped with the date of receipt in the Office, unless the 
correspondence is filed under Sec. 1.10, which provides for the filing 
of papers and fees by Express Mail. The term ``application filing 
date'' is now commonly used to refer to the date the application is 
received in the Patent and Trademark Office, and the priority date in a 
section 44(d) application is referred to as the ``effective filing 
date.'' TMEP Sec. 708.02. The Office knows of no instances in which a 
party whose application was based on both sections 44(d) and 1(a) 
mistakenly believed that the requirements for the section 1(a) basis 
must be met as of the priority date.
    Section 2.34(a)(3) lists the requirements for an application under 
section 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) requires a certified copy of a 
foreign registration. Currently, a section 44(e) applicant must submit 
a foreign certificate to receive a filing date. However, TLTIA section 
108 amends section 44(e) of the Act to delete the requirement that the 
application be ``accompanied by'' the foreign certificate. The Office 
will require that the applicant submit the certificate during 
examination.
    New Sec. 2.34(a)(3)(iii) is added, 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.

[[Page 48909]]

    Comment: One comment suggested that the phrase ``before the United 
States registration will issue,'' be changed to ``before the United 
States registration is expected to issue assuming no unusual delays,'' 
because at the time of examination the exact date of issue is subject 
to wide variance.
    Response: The suggestion has not been adopted. Even if there is a 
delay in issuance of a registration in an application under section 
44(e) of the Act, due to an opposition or for other reasons, the United 
States registration will not issue unless the foreign registration has 
been renewed and is in force.
    New Sec. 2.34(a)(4) lists the requirements for an application under 
section 44(d) of the Act, now listed in Secs. 2.21(a)(5)(iii), 
2.33(a)(1)(ix), and 2.39. Section 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).
    New Sec. 2.34(b)(1) states that an applicant may claim more than 
one basis, provided that the applicant meets the requirements for all 
bases claimed. This codifies current practice. Section 2.34(b)(1) also 
states that the applicant may not claim both sections 1(a) and 1(b) for 
the identical goods or services in one application.
    Revised Sec. 2.34(b)(2) requires that the applicant specify which 
basis covers which goods or services when an applicant claims more than 
one basis.
    New Sec. 2.34(c) sets forth the definition of ``commerce,'' 
currently found in Sec. 2.33(a)(3).
    Section 2.37 is removed.
    Section 2.35 is redesignated as Sec. 2.37.
    Section 2.35 is added: ``Adding, deleting, or substituting bases.''
    New Sec. 2.35(a) states that the applicant may add or substitute a 
basis for registration before publication, and that the applicant may 
delete a basis at any time.
    Section 2.35(b) is amended to state that an application may be 
amended to add or substitute a basis after publication, if the 
applicant files a petition to the Commissioner; and that republication 
will always be required. This codifies current practice. TMEP 
Sec. 1006.04. See the discussion under ``Supplementary Information/
Amendment of Basis After Publication,'' supra.
    New Sec. 2.35(c) changes current practice to allow a section 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. Currently, if an application is filed solely under section 
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.
    Comment: Proposed Sec. 2.35(c) stated 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. One 
comment questioned whether an application that was amended from section 
1(a) to section 1(b) would be subject to attack on the ground that the 
original basis was invalid because there was no use as a mark.
    Response: A party who filed an application based on use in 
commerce, but later discovered that what he or she thought was 
appropriate trademark use was not in fact technical trademark use, 
clearly had a bona fide intention to use the mark in commerce as of the 
filing date. If the use basis is invalid, the applicant is entitled to 
retain the original filing date because the applicant had a bona fide 
intention to use the mark in commerce at all times. Section 2.35(c) is 
therefore amended to delete the statement that the Office will presume 
that the original basis was valid and substitute a statement that the 
Office will presume that there was a continuing valid basis, unless 
there is contradictory evidence in the record.
    New Sec. 2.35(d) states that 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. This codifies current practice. TMEP 
Sec. 1006.01.
    New Sec. 2.35(e) states that 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. This is consistent with 
current practice (TMEP Sec. 1006.05), and with Articles 4(C)(1) and 
4(D)(1) of the Paris Convention.
    New Sec. 2.35(f) states that an applicant who adds a basis must 
state which basis covers which goods or services.
    New Sec. 2.35(g) states 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.
    New Sec. 2.35(h) states that 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.
    Section 2.38(a) is amended to update a cross-reference.
    Section 2.39 is removed and reserved. The requirements for filing a 
priority claim under section 44(d) of the Act are moved to 
Sec. 2.34(a)(4), discussed above.
    Sections 2.45 (a) and (b) are revised 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).
    Sections 2.51 (c) through (e) are removed. The substance of those 
rules is moved to new Sec. 2.52.
    Section 2.52(a) is revised 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.''
    Section 2.52(a) is revised to add guidelines 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.
    Section 2.52(b) is revised to indicate the recommended format for 
the drawing of a mark.
    Section 2.52(c) is revised 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.
    Sections 2.56, 2.57, and 2.58 are consolidated into Sec. 2.56.
    Sections 2.57 and 2.58 are removed and reserved.
    Section 2.56(a) is revised to require one rather than three 
specimens with an application under section 1(a) of the Act, or an 
allegation of use under section 1(c) or section 1(d) of the Act in an 
application under section 1(b) of the Act. See the discussion under 
``Supplementary Information/Number of Specimens Required,'' supra.
    Section 2.56(b)(1) is added, 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

[[Page 48910]]

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.
    Comment: One comment suggested that the second sentence of 
Sec. 2.56(b)(1) should be amended to substitute ``will'' for ``may,'' 
and that the following sentence be added at the end of the paragraph: 
``The Office may accept a display associated with the goods when this 
is the customary method of use of a trademark in the relevant trade or 
industry.''
    Response: The suggestion has not been adopted. The first sentence 
of Sec. 2.56(b)(1) already states that a specimen may be a display 
associated with the goods, so the suggested third sentence is 
unnecessary. The word ``may'' is used in the second sentence of 
Sec. 2.56(b)(1) because it is within the discretion of the examining 
attorney to determine whether specimens are acceptable.
    Section 2.56(b)(2) is added, 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).
    Section 2.56(b)(3) is added, 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).
    Section 2.56(b)(4) is added, 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).
    Section 2.56(b)(5) is added, 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).
    Section 2.56(c) is added, 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.
    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.
    Section 2.56(d)(2) is added, 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 under ``Supplementary Information/Bulky Specimens,'' supra.
    Section 2.56(d)(4) is added, stating that if the application is 
filed electronically, the specimen must be submitted as a digitized 
image.
    Section 2.59, which governs the filing of substitute specimens, is 
revised to clarify and simplify the language. Section 2.59(b)(1) 
provides that when an applicant submits substitute specimens after 
filing an amendment to allege use under Sec. 2.76, the applicant must 
verify the substitute specimens were in use in commerce prior to filing 
the amendment to allege use.
    Comment: One comment suggested that Sec. 2.59(b)(1) be amended to 
provide for the filing of substitute specimens that were in use ``prior 
to filing the substitute specimen(s),'' even if the specimens were not 
in use as of the filing date of the amendment to allege use. The 
comment noted that under the current rule, if the substitute specimens 
are not in use as of the filing date of the amendment to allege use, 
then the applicant must cancel the first amendment to allege use and 
substitute a new one, and stated that this serves no useful purpose.
    Response: The suggestion has not been adopted. Section 1(c) of the 
Act provides for the filing of an amendment to allege use only after 
the applicant ``has made use of the mark in commerce.'' Under 
Sec. 2.76(e)(2), a minimum filing requirement for an amendment to 
allege use is a specimen showing that the mark is in use in commerce on 
or in connection with the goods or services. If the applicant cannot 
show use in commerce as of the filing date of the amendment to allege 
use, then the amendment cannot be considered ``filed'' as of that date. 
The Office believes that its records should accurately show the date 
when an intent-to-use applicant files an acceptable amendment to allege 
use under section 1(c) of the Act, because this date can be 
significant. For example, under Sec. 2.75(b), if an intent-to-use 
applicant amends to the Supplemental Register, the effective filing 
date of the application becomes the date the amendment to allege use 
was perfected. It would be unfair to grant the intent-to-use applicant 
an effective filing date on the Supplemental Register before the mark 
was actually in use in commerce.
    Section 2.66 is revised 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.'' See the discussion under ``Supplementary 
Information/Revival of Abandoned Applications,'' supra.
    Sections 2.66(a) (1) and (2) are added, 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 from the mailing date of the notice of 
abandonment or the date of actual knowledge of abandonment. 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.
    Section 2.66(a)(2) states that an applicant must be diligent in 
checking the status of an application, and that 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 for which 
further action by the Office is expected. This codifies current 
practice. TMEP sections 413 and 1112.05(b)(ii). See the discussion 
under the heading ``Supplementary Information/Due Diligence,'' supra.
    Sections 2.66 (b)(2) and (c)(2) are amended to require ``a 
statement, signed by someone with firsthand knowledge of the facts, 
that the delay * * * was unintentional.'' This statement need not be 
verified.
    Section 2.66(b)(3) is amended 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.
    Sections 2.66(c) (3) and (4) are amended to state that if the 
applicant did not receive the notice of allowance and requests 
cancellation of 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.
    Section 2.66(c)(5) is added, stating that 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

[[Page 48911]]

unless: (1) A statement of use is filed with or before the petition to 
revive, or (2) the petition states that the applicant did not receive 
the notice of allowance and requests cancellation of the notice of 
allowance. This codifies current practice.
    Section 2.66(f)(3) is added, 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 new Sec. 2.146(j).
    Section 2.71(a) is revised 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).
    New 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 
person, 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 Section 803. As discussed above, the Office is 
deleting 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 during examination.
    The requirement for a verification ``by the applicant, a member of 
the applicant firm, or an officer of the applicant corporation or 
association'' has been removed from Sec. 2.71(c). This is consistent 
with the amendments to sections 1(a) and 1(b) of the Act. See the 
discussion under ``Supplementary Information/Persons Who May Sign,'' 
supra.
    The ``color of authority'' provisions have been deleted from 
Sec. 2.71(c). Because the statute no longer specifies who has 
``statutory'' authority to sign, the ``color of authority'' provisions 
are unnecessary.
    New Sec. 2.71(b)(2) states 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.
    Section 2.71(d) is added, 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 under ``Supplementary 
Information/Filing by Owner,'' supra.
    Section 2.72 is revised to remove paragraph (a), and redesignate 
paragraphs (b) through (d) as (a) through (c).
    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. See the discussion under the heading ``Supplementary 
Information/Material Alteration,'' supra.
    Comment: One comment suggested that Sec. 2.72(b) should be amended 
to provide that in an application based on section 1(b) of the Act, the 
applicant ``may amend the heading on the drawing to reflect a change in 
applicant's name, jurisdiction of citizenship or organization, and/or 
address at any time,'' to encourage the prompt amendment of 
applications to reflect changes in the applicant's name, address and/or 
jurisdiction.
    Response: The suggestion has not been adopted because it is 
unnecessary. Section 2.72(b) pertains only to amendment of the 
``description or drawing of the mark,'' not to amendment of the heading 
on a drawing. An applicant who submits a substitute drawing is free to 
amend the heading in the substitute drawing.
    Comment: One comment suggested that Sec. 2.72(c)(1) be amended to 
provide that in an application based on Sec. 44(d) of the Act, the 
applicant may amend the drawing of the mark if the amendment is 
supported by the foreign application, ``because there may never be a 
`foreign registration certificate' if the foreign priority application 
lapses.''
    Response: The suggestion has not been adopted. Section 44(d) is a 
basis for filing an application, not a basis for registration. If the 
applicant perfects the section 44(e) basis, the mark in the United 
States application must be a substantially exact representation of the 
mark in the home country registration. If the applicant elects not to 
perfect the section 44(e) basis, the mark in the United States 
application must be a substantially exact representation of the mark on 
the specimens filed with a section 1(a) application or with an 
allegation of use in a section 1(b) application. A mark would not be 
registrable if it were a substantially exact representation of the mark 
in the foreign application, but not a substantially exact 
representation of the mark in the foreign registration in a section 
44(e) application, or the specimens in a use-based application.
    Section 2.76(b)(1) is revised to state that a complete amendment to 
allege use must include a statement that is verified or supported by a 
declaration under section 2.20 by a person properly authorized to sign 
on behalf of the applicant.
    Section 2.76(b)(1) is further revised 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 section 
1(a) of the Act.
    Section 2.76(b)(1)(ii) is amended to delete the requirement that 
the applicant specify the type of commerce in which the mark is used. 
See the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
    Section 2.76(b)(2) is revised to require one rather than three 
specimens with an amendment to allege use.
    Section 2.76(i) is added, 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.
    Section 2.76(j) is added, noting that the requirements for multi-
class applications are stated in Sec. 2.86.
    The heading of Sec. 2.86 is changed to ``Application may include 
multiple classes.'' The 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, is 
removed. The

[[Page 48912]]

substance of this provision is moved to Secs. 2.34(a)(1)(v), 
2.34(a)(2)(ii), 2.34(a)(3)(iv), and 2.34(a)(4)(iv).
    Section 2.86(a) is revised 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.
    Section 2.86(a)(3) is amended to add 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.
    Section 2.86(b) is amended to state that a statement of use or 
amendment to allege use must include the required fee, dates of use, 
and one specimen for each class.
    Section 2.86(b) is amended to add 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).
    Section 2.86(c), which prohibits an applicant from claiming both 
use in commerce and intent-to-use in a single multi-class application, 
is deleted. However, new Sec. 2.86(a)(3) will state that the applicant 
may not claim both use in commerce and intent-to-use for the identical 
goods or services in one application.
    The substance of the last sentence of the current Sec. 2.86(b) is 
moved to new Sec. 2.86(c).
    Section 2.88(b)(1) is revised 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.
    Section 2.88(b)(1) is revised 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 section 1(d)(1) of the Act.
    Section 2.88(b)(1)(ii) is amended to delete the requirement that 
the applicant specify the type of commerce in which the mark is used. 
See the discussion under the heading ``Supplementary Information/
Specification of Type of Commerce No Longer Required,'' supra.
    Section 2.88(b)(2) is revised to require one specimen with a 
statement of use, rather than the three specimens now required.
    Section 2.88(e)(3) is revised 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.
    Section 2.88(k) is added, 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.
    Section 2.88(l) is added, noting that the requirements for multi-
class applications are stated in Sec. 2.86.
    Sections 2.89(a)(3) and (b)(3) are revised to require that the 
statement that the applicant has a bona fide intention to use the mark 
in commerce in a request for an extension of time to file a statement 
of use be 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.
    Section 2.89(d) is revised 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 USPQ2d 
1709 (Comm'r Pats. 1992). Therefore, the requirement is unnecessary.
    Section 2.89(g) is amended to change the time limit for filing a 
petition to the Commissioner from the denial of a request for an 
extension of time to file a statement of use from one month to two 
months. The two-month deadline is consistent with the deadline for 
filing a petition to revive an unintentionally abandoned application 
under Sec. 2.66, and with the amendment of the deadline for filing 
petitions under Sec. 2.146(d).
    Section 2.89(h) is added, 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.
    Section 2.101(d)(1) is revised to update a cross-reference.
    Section 2.111(c)(1) is revised to update a cross-reference.
    Section 2.146(d) is revised 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.
    Section 2.146(i) is added, 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; and 
that to be considered diligent, the applicant must check the status of 
the application or registration within one year of the last filing or 
receipt of a notice from the Office for which further action by the 
Office is expected. This codifies current practice. TMEP sections 413 
and 1704. See the discussion under the heading ``Supplementary 
Information/Due Diligence,'' supra. 
    Section 2.146(j) is added, 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 new Sec. 2.66(f)(3), discussed above.
    Section 2.151 is revised to update a cross-reference and simplify 
the language.
    Section 2.155 is revised to update a cross-reference and simplify 
the language.
    Section 2.156 is revised to update a cross-reference and simplify 
the language.

[[Page 48913]]

    Section 2.160 is added, ``Affidavit or declaration of continued use 
or excusable nonuse required to avoid cancellation.'' New 
Secs. 2.160(a) (1) and (2) list the deadlines for filing the affidavit 
or declaration, and new 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 section 8 affidavit.
    Comment: Since many registrations are still in twenty-year 
registration terms, one comment suggested that Sec. 2.160(a)(2) be 
amended to require filing of an affidavit or declaration of continued 
use or excusable nonuse ``within the year before the end of every ten-
year period after the date of registration or renewal.''
    Response: The suggestion has not been adopted. The language of new 
Sec. 2.160(a)(2) tracks the language of Sec. 8(a)(3) of the Act. 
However, the provisions of section (a)(3) of the Act, requiring the 
filing of a section 8 affidavit at the end of each successive ten year 
period after registration, do not apply to a twenty-year registration 
until a renewal application is due. See the discussion under the 
heading ``Dates/Applicability Dates,'' supra. 
    Comment: One comment suggested that Sec. 2.160(a)(1)(i) should be 
amended to require filing ``after the fifth anniversary of the date of 
registration and no later than the sixth anniversary of the date of 
registration,'' rather than ``between the fifth and sixth year after 
the date of registration,'' because the phrase ``between the fifth and 
the sixth year'' could be interpreted to be a single day.
    Response: The suggestion has been adopted, but modified slightly.
    Section 2.160(a)(1)(i) is amended to state that an affidavit of 
continued use or excusable nonuse must be filed ``on or after the fifth 
anniversary and no later than the sixth anniversary after the date of 
registration.'' This makes it clear that the affidavit may be filed on 
the fifth anniversary of the registration. A similar amendment is made 
to Sec. 2.160(a)(1)(ii).
    Comment: One comment suggested that Sec. 2.160(a)(2) be amended to 
require filing ``after the ninth anniversary of either the date of 
registration or the most recent renewal, and no later than the tenth 
anniversary of the date of registration or the date of the most recent 
renewal, respectively,'' rather than ``within the year before the end 
of every ten-year period after the date of registration,'' because the 
``rule as proposed appears to allow the filing of a renewal application 
(sic) on the ninth anniversary of the date of registration, which may 
not be allowed by the statute.''
    Response: The suggestion has not been adopted. The Office will 
accept section 8 affidavits filed on either the ninth or the tenth 
anniversary after the date of registration. This is consistent with 
current practice, which permits the filing of a section 8 affidavit on 
either the fifth or the sixth anniversary after the date of 
registration. TMEP Sec. 1603.03.
    New Sec. 2.160(b) advises that Sec. 2.161 lists the requirements 
for the affidavit or declaration.
    The heading of Sec. 2.161 is changed to ``Requirements for a 
complete affidavit or declaration of continued use or excusable 
nonuse.'' Section 2.161 is revised to list the requirements for the 
affidavit or declaration.
    Section 2.161(a) is revised to state that the owner must file the 
affidavit or declaration within the period set forth in section 8 of 
the Act.
    Comment: One comment suggested that Sec. 2.161(a) be amended to 
require that the affidavit ``be filed within the time period set forth 
in Sec. 2.160 by the owner, provided that if the owner is an assignee 
or other transferee, then such assignment or transfer shall be recorded 
with the Office on or before the filing of a section 8 (affidavit), or 
within six months after an official action requiring such recordal.''
    Response: The suggestion has not been adopted. An assignee is not 
required to record the assignment in order to file a section 8 
affidavit. Under Sec. 3.73(b), the assignee also has the option of 
submitting other proof of the change of ownership (i.e., material 
showing the transfer of title). TMEP section 502 and Sec. 1603.05(a).
    Section 2.161(b) is revised 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 section 8 of the Act. Section 2.161(b) further states that a 
person properly authorized to sign on behalf of the owner is: (1) A 
person with legal authority to bind the owner; or (2) a person with 
firsthand knowledge of the facts and actual or implied authority to act 
on behalf of the owner; or (3) an attorney as defined in Sec. 10.1(c) 
of this chapter who has an actual or implied written or verbal power of 
attorney from the owner. See the discussion under the heading 
``Supplementary Information/Persons Who May Sign,'' supra. 
    Section 2.161(b) also states that the verified statement must be 
executed on or after the beginning of the filing period specified in 
Sec. 2.160(a).
    Section 2.161(d)(2) is added, requiring a surcharge for filing an 
affidavit or declaration of continued use or excusable nonuse during 
the grace period.
    Section 2.161(d)(3) is added, 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.
    New 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 section 105 amends section 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.''
    Comment: One comment stated that if the goods for which excusable 
nonuse is claimed are not listed in a section 8 affidavit, registrants 
should be given the opportunity to correct the oversight.
    Response: If the goods or services for which excusable nonuse is 
claimed are not listed in an affidavit, the registrant will be given an 
opportunity to correct the deficiency. However, because section 8(b)(2) 
of the Act specifically requires that the affidavit set forth the goods 
or services on or in connection with which the mark is not in use in 
commerce, a deficiency surcharge will be required if the deficiency is 
corrected after the deadline specified in section 8 of the Act.
    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), is removed. See the discussion under the heading 
``Supplementary Information/Specification of Type of Commerce No Longer 
Required,'' supra. 

[[Page 48914]]

    The substance of Sec. 2.162(f) is moved to Sec. 2.161(f)(2). New 
Sec. 2.161(f)(2) is revised 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 
section 8 of the Act.
    The substance of Sec. 2.162(e) is moved to Sec. 2.161(g). New 
Sec. 2.161(g) is revised 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 inches (29.7 cm.) long) and put it in the file wrapper. See the 
discussion under ``Supplementary Information/Bulky Specimens,'' supra.
    Section 2.161(h) is added, requiring a designation of a domestic 
representative if the registrant is not domiciled in the United States. 
This reflects section 8(f) of the Act, as amended, and is consistent 
with current practice.
    The substance of Sec. 2.163 is moved to Sec. 2.162. New Sec. 2.162 
is revised to state that the only notice of the requirement for filing 
the section 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 substance of current Sec. 2.164 is moved to the introductory 
text of new Sec. 2.163.
    New Sec. 2.163(a) states that if the owner of the registration 
files 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.
    Section 2.163(b) is added, 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 section 8(a) or 
section 8(b) of the Act, whichever is later, or the registration will 
be cancelled.
    Section 2.164 is added, ``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, while other requirements must 
be satisfied before the expiration of the statutory deadline to avoid 
cancellation of the registration.
    TLTIA section 105 adds section 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.
    New Sec. 2.164(a)(1) states that if the owner files the affidavit 
or declaration within the period set forth in section 8(a) or section 
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.
    New Sec. 2.164(a)(2) states 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.
    New Sec. 2.164(b) states that 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.
    See the discussion under the heading ``Supplementary Information/
Post Registration,'' supra, for additional information about curing 
deficiencies in section 8 affidavits.
    The heading of Sec. 2.165 is changed to ``Petition to Commissioner 
to review refusal.'' The last two sentences of the current 
Sec. 2.165(a)(1) are removed.
    Old Sec. 2.166 is removed because it is unnecessary. New 
Secs. 2.163(b) and 2.165(b) set forth the times when a registration 
will be cancelled.
    New Sec. 2.166 is added, ``Affidavit of continued use or excusable 
nonuse combined with renewal application,'' stating that an affidavit 
or declaration under section 8 of the Act and a renewal application 
under section 9 of the Act may be combined in a single document.
    Section 2.167(c) is revised to delete the requirement that an 
affidavit or declaration under section 15 of the Act specify the type 
of commerce in which the mark is used.
    The heading of Sec. 2.168 is changed to ``Affidavit or declaration 
under section 15 combined with affidavit or declaration under section 
8, or with renewal application.'' Section 2.168(a) is revised to state 
that a section 15 affidavit may be combined with a section 8 affidavit, 
if the combined affidavit meets the requirements of both sections 8 and 
15 of the Act. Section 2.168(b) is revised to state that a section 15 
affidavit can be combined with a renewal application under section 9 of 
the Act, if the requirements of both sections 9 and 15 of the Act are 
met.
    Section 2.173(a) is revised to simplify the language.
    Sections 2.181(a)(1) and (2) are revised to indicate that renewal 
of a registration is subject to the provisions of section 8 of the Act. 
This is consistent with the amendment to section 9(a) of the Act.
    Comment: One comment suggested that Sec. 2.181(a)(1) should be 
amended to provide that registrations remain in force ``from their date 
of issue or the date of expiration of their preceding term,'' rather 
than ``from their date of issue or expiration,'' because an expired 
registration cannot be renewed.
    Response: The suggestion has been adopted and modified slightly to 
simplify the language. Section 2.181(a)(1) is amended to state that 
registrations issued prior to November 16, 1989, remain in force for 
twenty years ``from their date of issue or the date of renewal.'' A 
similar amendment is made to Sec. 2.181(a)(2).
    The heading of Sec. 2.182 is changed to ``Time for filing renewal 
application.'' The section is revised 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.
    The heading of Sec. 2.183 is changed to ``Requirements for a 
complete renewal application.'' This section is revised to delete the 
present renewal requirements and substitute new ones based on amended 
section 9 of the Act. 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 are removed, because these 
requirements have been removed from section 9 of the Act. The new 
requirements for renewal are: (1) A request for renewal, signed by the 
registrant or the registrant's representative; (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.
    New Sec. 2.183(f) states that if the fee submitted is enough to pay 
for at least

[[Page 48915]]

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.
    Section 2.184 is revised to simplify the language and to transfer 
some of its provisions to new Sec. 2.186. Section 2.184 states that the 
Office will issue a notice if the renewal application is not 
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 section 9(a) of the Act.
    Section 2.185 is added, ``Correcting deficiencies in renewal 
application.''
    Under amended section 9, the renewal application must be filed 
within the renewal period or grace period specified in section 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.
    New Sec. 2.185(a)(1) states 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 section 9(a) of the Act.
    New Sec. 2.185(a)(2) states 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 section 9(a) of the Act.
    New Sec. 2.185(b) states that 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.
    Comment: One comment noted that Sec. 2.184(c) appears to be a 
duplicate of Sec. 2.185(b) and suggested that one be deleted.
    Response: The suggestion has not been adopted. Sections 2.184 and 
2.185 are not duplicates, and both are necessary for the following 
reason. Section 2.184(c) states the general rule that a registration 
will expire if the renewal application is not filed during the proper 
time period. Section 2.185(b) specifically addresses whether the 
failure to file a renewal application in the proper time period will be 
considered a deficiency that can be cured during a six-month deficiency 
period. The rule states that ``[t]his deficiency cannot be cured'' 
(emphasis added).
    Section 2.186 is added, ``Petition to Commissioner to review 
refusal of renewal.''
    New 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).
    New 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).
    New 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).
    Section 3.16 is amended to state that an applicant may assign an 
application based on section 1(b) of the Act once the applicant files 
an amendment to allege use under section 1(c) of the Act.
    The heading of Sec. 3.24 is changed to ``Requirements for documents 
and cover sheets relating to patents and patent applications.'' The 
recording requirements for patents are listed in Sec. 3.24. New 
Sec. 3.25 is added to list 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 sets forth the Office's preferred 
format for cover sheets and other documents.
    Section 3.28 is revised to state that separate cover sheets should 
be used for patents and trademarks.
    Section 3.31(a)(4) is revised to set forth the requirements for 
identifying a trademark application when the application serial number 
is not known.
    Section 3.31(a)(7) requires that a cover sheet state that the 
assignee of a trademark application or registration who is not 
domiciled in the United States has designated a domestic 
representative. This is consistent with current Sec. 3.31(a)(8).
    Comment: One comment suggested that Sec. 3.31(a)(7) be amended to 
require that the domestic representative ``either sign the cover sheet 
or countersign the indication,'' in order to prevent a foreign assignee 
from designating a domestic representative who is unaware of the 
designation.
    Response: The suggestion has not been adopted. The Office has never 
required a domestic representative to countersign a designation or a 
cover sheet, and knows of no instances where an assignee or applicant 
designated a domestic representative who is not aware of the fact that 
he or she has been designated. Instituting a new requirement that a 
domestic representative sign each cover sheet could be burdensome to 
assignees and is contrary to the goal of minimizing formal requirements 
and making the procedural requirements of the different national 
trademark offices more consistent.
    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 is deleted.
    Section 3.31(b) is amended 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.
    Section 3.31(d) is added, stating that a trademark cover sheet 
should 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.
    Section 3.31(e) is added, stating that the cover sheet should 
include the total number of applications, registrations, or patents 
identified on the cover sheet and the total fee.
    Section 6.1 is revised 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).

Rulemaking Requirements

    The Office has determined that the rule changes have no federalism

[[Page 48916]]

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 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 new Secs. 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 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.). No comments were received regarding the certification under the 
Regulatory Flexibility Act. The 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 of the PRA 
unless that collection of information displays a currently valid OMB 
control number.
    This final 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 deletes 
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 allows the 
filing of powers of attorney that pertain to multiple registrations or 
applications for registration, and sets forth certain requirements for 
filing such powers of attorney. Additionally, the rule sets forth 
requirements for submitting section 8 affidavits of continued use or 
excusable nonuse combined with section 9 renewal applications, or 
section 15 affidavits or declarations of incontestability combined with 
either section 8 affidavits or declarations or with section 9 renewal 
applications.
    An information collection package supporting the changes to the 
above information requirements, as discussed in this final rule, was 
submitted to OMB for review and approval. This information collection 
has been approved by OMB under OMB Control Number 0651-0009. 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 section 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 section 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 section 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 section 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 
section 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 section 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 section 44(e) of the Act; thirteen minutes for 
allegations of use of the mark under sections 2.76 and 2.88; ten 
minutes for requests for extension of time to file statements of use 
under section 2.89; fourteen minutes for renewal applications under 
section 9 of the Act combined with affidavits or declarations of 
continued use or excusable nonuse under section 8 of the Act; fourteen 
minutes for combined affidavits/declarations of use and 
incontestability under sections 8 and 15 of the Act; eleven minutes for 
an affidavit or declaration of continued use or excusable nonuse under 
section 8 of the Act; eleven minutes for a renewal application under 
section 9 of the Act; eleven minutes for a declaration of 
incontestability under section 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 final 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, 
Office of Management and Budget, 725 17th Street, NW, Washington, DC 
20230 (Attn: PTO Desk Officer).

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Patents.

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 is amending parts 1, 2, 3, and 6 of title 37 as 
follows:

[[Page 48917]]

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.

    2. 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, DC 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, DC 20231.
    (iv) Send requests for coupon orders for uncertified copies of 
registrations to: Commissioner of Patents and Trademarks, Box 9, 
Washington, DC 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.
* * * * *
    3. Amend Sec. 1.4 by revising the last sentence of paragraph 
(a)(2), revising paragraphs (d)(1), introductory text, 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 an application, patent 
file, trademark registration file, or other proceeding in the Office 
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; or
    (B) Sign the verified statement using some other form of electronic 
signature specified by the Commissioner.
* * * * *
    4. 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.
* * * * *
    5. 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) of this section, 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.
* * * * *
    6. Revise Sec. 1.23 to read as follows:


Sec. 1.23  Method of payment.

    (a) 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 a 
cashier's or certified check, Treasury note, or United States Postal 
Service money order. If sent in any other form, the Office may delay or 
cancel the credit until collection is made. Checks and money orders 
must be made payable to the Commissioner of Patents and Trademarks. 
Payments 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, and letters containing money should be registered with the 
United States Postal Service.
    (b) Payments of money required for Patent and Trademark Office fees 
in an electronically filed trademark application or electronic 
submission in a trademark application may also be made by credit card. 
Payment of a fee by credit card must specify the amount to be charged 
to the credit card and such other information as is necessary to 
process the charge, and is subject to collection of the fee. The Office 
will not accept a general authorization to charge fees to a credit 
card. If credit card information is provided on a form or document 
other than a form provided by the Office for the payment of fees by 
credit card, the Office will not be liable if the credit card number 
becomes public knowledge.

PART 2--RULES APPLICABLE TO TRADEMARK CASES

    7. 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.

    8. Revise Sec. 2.1 to read as follows:


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.
    9. Section 2.6 is amended by revising the introductory text, 
paragraphs (a)(6) and (a)(14) and by adding paragraphs (a)(20) and 
(a)(21) to read as follows:

[[Page 48918]]

Sec. 2.6  Trademark fees.

The Patent and Trademark Office requires the following fees and 
charges:

    (a) * * *

(6)  Additional fee for filing a renewal application during the grace period, per class............      $100.00
 
                          *         *         *         *         *         *         *
(14)  Additional fee for filing a section 8 affidavit during the grace period, per class...........      $100.00
 
                          *         *         *         *         *         *         *
(20)  For correcting a deficiency in a section 8 affidavit.........................................      $100.00
(21)  For correcting a deficiency in a renewal application.........................................      $100.00
 

* * * * *
    10. 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 
such a power of attorney 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.
    11. 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 language of 28 U.S.C. 1746, or the following language, may be used:

The undersigned being warned that willful false statements and the 
like are punishable by fine or imprisonment, or both, under 18 
U.S.C. 1001, and that such willful false statements and the like may 
jeopardize the validity of the application or document or any 
registration resulting therefrom, declares that all statements made 
of his/her own knowledge are true; and all statements made on 
information and belief are believed to be true.

    12. 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) of this section, 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  [Removed and reserved]

    13. Remove and reserve Sec. 2.31.
    14. Revise Sec. 2.32 to read as follows:


Sec. 2.32  Requirements for a complete 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 jurisdiction (usually 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) The application must include a drawing that meets the 
requirements of Secs. 2.51 and 2.52.
    (d) The application must include fee required by Sec. 2.6 for each 
class of goods or services.
    (e) For the requirements for a multiple class application, see 
Sec. 2.86.
    15. 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 is:
    (1) A person with legal authority to bind the applicant; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the applicant; or
    (3) An attorney as defined in Sec. 10.1(c) of this chapter who has 
an actual or implied written or verbal power of attorney from 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; 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; that the specimen shows the mark

[[Page 48919]]

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; or
    (2) Sign the verified statement using some other form of electronic 
signature specified by the Commissioner.
    16. 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; 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 (a)(1) (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 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.

[[Page 48920]]

Sec. 2.37  [Removed]

    17. Remove Sec. 2.37.


Sec. 2.35  [Redesignated as Sec. 2.37]

    18. Redesignate Sec. 2.35 as Sec. 2.37.
    19. 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 amend an application that is not the subject 
of an inter partes proceeding before the Trademark Trial and Appeal 
Board to add or substitute a basis after the mark has been published 
for opposition, but only with the express permission of the 
Commissioner, after consideration on petition. Republication will be 
required. The amendment of an application that is the subject of an 
inter partes proceeding before the Board is governed by Sec. 2.133(a).
    (c) When the applicant substitutes one basis for another, the 
Office will presume that there was a continuing valid basis, unless 
there is contradictory evidence in the record, and the application will 
retain the original filing date, including a priority filing date under 
section 44(d), if appropriate.
    (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.
    20. 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 and reserved]

    21. Remove and reserve Sec. 2.39.
    22. 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]

    23. In Sec. 2.51, remove paragraphs (c), (d) and (e).
    24. 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 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 five 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 color, the 
applicant must submit a

[[Page 48921]]

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.
    25. 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 and reserved]

    26. Remove and reserve Sec. 2.57.


Sec. 2.58  [Removed and reserved]

    27. Remove and reserve Sec. 2.58.
    28. 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.
    29. 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, if the delay was unintentional. 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. 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 for 
which further action by the Office is expected.
    (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,

[[Page 48922]]

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.
    (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.
    30. 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.
    31. 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.
    32. 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, 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.
* * * * *

[[Page 48923]]

    (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 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.
    33. 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.
    34. 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, 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.
    35. Amend Sec. 2.89 by revising paragraphs (a), (b), and (d), 
amending the fifth sentence of paragraph (g), 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.
* * * * *
    (g) * * *A petition from the denial of a request for an extension 
of time to file a statement of use shall be filed within two months of 
the mailing date of the denial of the request. If the petition is 
granted, the term of the requested six month extension that was the 
subject of the petition will run from the date of the expiration of the 
previously existing six month period for filing a statement of use.
    (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

[[Page 48924]]

still has a bona fide intention to use the mark in commerce.
    36. 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 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.
* * * * *
    37. 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.
* * * * *
    38. 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 reactivate an application or 
registration that was abandoned or cancelled because papers were lost 
or mishandled, the Commissioner may deny the petition if the petitioner 
was not diligent in checking the status of the application or 
registration. To be considered diligent, the applicant must check the 
status of the application or registration within one year of the last 
filing or receipt of a notice from the Office for which further action 
by the Office is expected.
    (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.
    39. 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.
    40. 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.
    41. 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.
    42. 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, on 
or after the fifth anniversary and no later than the sixth anniversary 
after the date of registration; or
    (ii) For registrations issued under prior Acts, on or after the 
fifth anniversary and no later than the sixth anniversary 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) of this section, 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.
    43. 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 
Sec. 2.160(a);
    (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. The verified statement must be executed on or 
after the beginning of the filing period specified in Sec. 2.160(a). A 
person who is properly authorized to sign on behalf of the owner is:
    (1) A person with legal authority to bind the owner; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the owner; or
    (3) An attorney as defined in Sec. 10.1(c) of this chapter who has 
an actual or implied written or verbal power of attorney from 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

[[Page 48925]]

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 services is due to special 
circumstances that excuse the nonuse and is not due to an intention to 
abandon the mark;
    (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.
    44. 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.
    45. 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.
    46. Revise 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.
    47. 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.
    48. 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.
    49. 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;
* * * * *
    50. 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.

[[Page 48926]]

    51. 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 
materially alter the character of the mark.
* * * * *
    52. Amend Sec. 2.181 by revising paragraph (a) 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 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 the date of renewal, and 
may be further renewed for periods of ten years, unless previously 
cancelled or surrendered.
    (2) 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 on or after November 16, 1989, whether 
on the Principal Register or on the Supplemental Register, remain in 
force for ten years from their date of issue or the date of renewal, 
and may be further renewed for periods of ten years, unless previously 
cancelled or surrendered.
* * * * *
    53. 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.
    54. 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.
    55. 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.
    56. 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.
    57. 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

    58. 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.

    59. Revise Sec. 3.16 to read as follows:


Sec. 3.16  Assignability of trademarks prior to filing of an allegation 
of use.

    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

[[Page 48927]]

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.
    60. 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.

* * * * *
    61. 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 
to a trademark application or registration, 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.
    62. Revise Sec. 3.28 to read as follows:


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.
    63. 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, or an indication that the 
document is filed together with a patent application;
    (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 or 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

    64. 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.

    65. 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.

[[Page 48928]]

    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 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: August 30, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.
[FR Doc. 99-22957 Filed 9-7-99; 8:45 am]
BILLING CODE 3510-16-P