[Federal Register Volume 66, Number 169 (Thursday, August 30, 2001)]
[Proposed Rules]
[Pages 45792-45797]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-21878]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1 and 2

[Docket No. 010126026]
RIN 0651-AB31


Electronic Submission of Applications for Registration and Other 
Documents

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking; Notice of hearing.

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SUMMARY: The United States Patent and Trademark Office (Office) 
proposes to amend its rules to make electronic filing of trademark 
documents mandatory. Subject to certain exceptions for individuals 
either without access to the Trademark Electronic Application System 
(TEAS) or without the technical capability to use TEAS, and persons 
described in 15 U.S.C. 1126(b), all documents for which an electronic 
form is available in TEAS, will have to be filed through TEAS rather 
than through the mail or by hand delivery. In addition, the Office 
proposes to amend its rule concerning the use of U.S. Postal Service 
``Express Mail Post Office to Addressee'' service, (Express Mail), to 
eliminate the filing of any document by Express Mail for which an 
electronic form is currently available in TEAS.

DATES: Comments must be received by October 29, 2001 to ensure 
consideration. A public hearing will be held at 10 a.m., October 12, 
2001, in Room 911, Crystal Park 2, 2121 Crystal Drive, Arlington, VA. 
Submit requests to present oral testimony on or before October 5, 2001.

ADDRESSES: Mail comments to the Commissioner for Trademarks, 2900 
Crystal Drive, Arlington, Virginia 22202-3513, attention Craig Morris; 
fax comments to (703) 872-9279, attention Craig Morris; or e-mail 
comments to [email protected]. Copies of all comments will be 
available for public inspection in Suite 10B10, South Tower Building, 
10th floor, 2900 Crystal Drive, Arlington, Virginia 22202-3513, from 
8:30 a.m. until 5 p.m., Monday through Friday.

FOR FURTHER INFORMATION CONTACT: Craig Morris, Office of the 
Commissioner for Trademarks, (703) 308-8910, extension 136; or e-mail 
to [email protected].

SUPPLEMENTARY INFORMATION: The Office proposes to amend Secs. 1.4, 
1.10, 2.21, 2.56, 2.76, 2.88, 2.89, 2.161, 2.166, 2.167 and 2.168 to 
make electronic filing through the Trademark Electronic Application 
System (TEAS) mandatory. TEAS is a collection of electronic forms for 
commonly filed trademark documents. Each document can be easily 
completed by the trademark applicant or attorney and filed with the 
Office at the click of a button. The system is available at 
www.uspto.gov 24 hours a day, seven days a week, and can be used by 
anyone with NETSCAPE NAVIGATOR (version 3.0 or higher) or 
MICROSOFT INTERNET EXPLORER (Version 4.0 or higher). During 
the hours between 11:00 p.m. EST, Saturday and 6:00 a.m. EST, Sunday 
TEAS is available but credit card payments cannot be processed; 
therefore, no documents requiring fees can be filed during that time 
period. In addition, to file an initial application for a stylized or 
design mark, or if a specimen is being filed, the filer must be able to 
attach a black-and-white GIF or JPG image file.
    The Office proposes to require electronic filing of all documents 
for which forms are currently available in TEAS: applications for 
registration of marks; amendments to allege use; statements of use; 
requests for extensions of time to file a statement of use; affidavits 
of continued use or excusable nonuse under 15 U.S.C. 1058 (Sec. 8 
affidavits); affidavits of incontestability under 15 U.S.C. 1065 
(Sec. 15 affidavits); combined affidavits under 15 U.S.C. 1058 and 1065 
(Secs. 8 and 15 affidavits) and combined filings under 15 U.S.C. 1058 
and 1059 (combined Secs. 8 and 9 filings). In the future, after 
appropriate notice, the Office may require the filing of other 
trademark-related documents when the appropriate electronic form is 
available in TEAS. There will be two exceptions to the requirement that 
trademark documents be filed electronically: first, if the pro se 
applicant or registrant, or an attorney for applicant or registrant, 
verifies in an affidavit or declaration under Sec. 2.20 that he or she 
does not have access to TEAS or does not have the technical capability 
to use TEAS, the pro se applicant or registrant, or an attorney for 
applicant or registrant, will not be required to file its trademark 
documents using TEAS; and second, if the applicant or registrant is a 
person described in 15 U.S.C. 1126(b), then the applicant or registrant 
will not be required to file its trademark documents using TEAS.
    A person described in 15 U.S.C. 1126(b) is a person who has 
citizenship, domicile or a real and effective industrial or commercial 
establishment in a country other than the United States and whose 
country of origin is a party to any convention or treaty relating to 
trademarks, trade or commercial names, or the repression of unfair 
competition, to which the United States is also a party, or extends 
reciprocal rights to nationals of the United States by law.
    The number of trademark applications and other trademark documents 
filed in the Office has increased substantially in the last few years, 
and filings are expected to continue to increase dramatically in the 
next few years. The Office received over 295,000 trademark applications 
in fiscal year 1999 and over 375,000 applications in 2000--an increase 
each year of 27% over the prior year. In fiscal year 2001, filings are 
currently forecast to be 25% higher than 2000, which means the Office 
is likely to receive over 300,000 new applications and over 150,000 
application and registration-related

[[Page 45793]]

filings this year. Although the Office has made substantial changes in 
an attempt to keep up with the increased filings, the Office believes 
that it must make further changes in its business practices to ensure 
that every applicant and registrant receives a high level of customer 
service.
    Currently, parties may file paper documents via mail or hand 
delivery, or file electronically using TEAS. It is now possible to file 
essentially all trademark-related documents electronically over the 
Internet, at http://www.uspto.gov.
    The Office now maintains both paper files and electronic databases 
of critical application and registration data. Processing paper is 
extremely labor-intensive and subject to error and misfiling. A new 
application must undergo multiple steps before it is ready for 
examination, including fee processing, minimum filing requirement 
review, capture of data into automated databases, and paper file jacket 
assembly. In addition to processing new applications, the Office must 
sort through several thousand documents that are received on a daily 
basis. These documents must be delivered to the appropriate work unit, 
matched with the paper file, and entered into the file jacket and the 
automated systems.
    To expedite processing of trademark documents and to improve the 
quality of data capture, the Office proposes to require that all 
trademark documents available in TEAS be filed electronically. 
Mandatory electronic filing will increase efficiency, improve the 
accuracy of the information in the Office's automated systems, and 
eliminate delays caused by mailing, manual data capture and paper 
processing. It will also result in fewer lost and misdirected papers. 
Electronic forms contain standardized data that is tagged to permit 
transfer into the Office's databases.

Better Service for Customers

    Electronic filing benefits the public as well as the Office. TEAS 
is available for the filing of trademark documents 24 hours a day, 
seven days a week at 
http://www.uspto.gov. During the hours between 11:00 p.m. EST, Saturday 
and 6:00 a.m. EST, Sunday TEAS is available but credit card payments 
cannot be processed. Therefore, during that time period, documents that 
must be accompanied by a fee cannot be filed. When a document is filed 
electronically, the Office receives it within seconds after filing, and 
immediately issues a confirmation of filing via e-mail. This 
confirmation is evidence of filing should any question arise as to the 
filing date of the document. Under Sec. 1.6(a)(4), trademark-related 
correspondence filed via TEAS is considered to have been filed on the 
date the Office receives the transmission, regardless of whether that 
date is a Saturday, Sunday, or Federal holiday within the District of 
Columbia. Thus by using TEAS applicants, registrants and their 
attorneys can ensure a ``date certain'' for any filing made using TEAS. 
This benefit eliminates the need for the filing of applications by 
Express Mail.
    Electronically filed applications are processed much faster than 
their paper counterparts. Filing receipts for TEAS applications are 
sent via e-mail the same day of filing, while filing receipts for paper 
applications are mailed about 14 days after filing; critical data 
concerning TEAS applications (e.g., mark, goods and services, owner, 
etc.) are entered into the automated systems (and therefore made 
available to anyone searching Office records for conflicting marks) 
within 10 days, while data concerning paper applications are entered 
and made available to the public approximately 14-15 days after filing; 
and TEAS applications are received in the e-Commerce law offices and 
available for review in 20 days, while paper application files are 
assembled and delivered to law offices approximately 70 days after 
filing.
    Continued increases in trademark application filings dictate that 
the Office change its business approach for serving the Office's 
customers. Electronic filing and communication allows us to provide 
more customers with better quality, using fewer resources. Electronic 
filing improves the quality and accuracy of the information that is 
submitted to and processed by the Office. Customers have greater 
assurance that the content of the electronic application is complete, 
because the information provided by the customer is loaded directly 
into the Office's automated systems. By requiring that everyone, with 
few exceptions, file electronically, all of the Office's customers will 
receive better service, because electronic filing provides a level of 
consistency, accuracy, and predictability that a paper-based process 
cannot.
    The results of customer surveys clearly indicate that customers who 
file electronically are far more satisfied than customers who file 
paper applications. All of the Office's electronic customers stated 
that they were satisfied with the ease of access and use of the filing 
system and the time it took to receive a filing receipt, and 94 percent 
of the Office's electronic customers were satisfied with the accuracy 
of the filing receipt. Customers who filed paper applications were less 
satisfied: only 44 percent were satisfied with the accuracy of the 
filing receipt, and only 27 percent were satisfied with the time it 
took to receive it.
    In their first annual report to the President, the Secretary of 
Commerce, and the Judiciary Committees of the United States Senate and 
House of Representatives, the Trademark Public Advisory Committee 
(TPAC) endorsed mandatory electronic filing for trademark applications. 
The TPAC concluded that the Office should take immediate steps to 
maximize the use of technology in fulfilling its mission by mandating 
electronic filing, to the extent allowed by law, and by replacing 
paper-based processes and information with electronic processes.
    On December 17, 1999, the President issued a Memorandum, 
``Electronic Government,'' which called on Federal agencies to use 
information technology to ensure that the American people can easily 
access governmental services and information. The Government Paperwork 
Elimination Act (GPEA), Title XVII, Secs. 1701--1710, Pub. L. 105-277, 
112 Stat. 2681-749 (44 U.S.C. 3504), was signed into law on October 21, 
1998. GPEA requires Federal agencies, by October 21, 2003, to provide 
individuals or entities that deal with agencies the option to submit 
information or transact with the agency electronically, and to maintain 
records electronically, when practicable. GPEA is an important tool to 
improve customer service and governmental efficiency through the use of 
information technology. This improvement involves transacting business 
electronically with Federal agencies and widespread use of the Internet 
and the World Wide Web and thus furthers the goals of the GPEA.

Discussion of Specific Rules Changed or Added

    The Office proposes to add a new Sec. 1.4(h), providing that if any 
form required to be filed under any provision of this section is 
available for filing using TEAS, the form must be filed electronically, 
unless Sec. 2.22 applies.
    The Office proposes to amend Sec. 1.10(a) to prohibit the use of 
Express Mail for any correspondence for which an electronic form 
exists.
    The Office proposes to amend Sec. 2.21 to add a new subsection 
(a)(1), requiring that an application for registration of a mark be 
filed using TEAS to receive a filing date, unless Sec. 2.22 applies. 
Applications filed on paper will be returned and not given a filing 
date, unless filed with an affidavit or declaration under Sec. 2.20 
that meets the

[[Page 45794]]

requirement of Sec. 2.22. The Office further proposes to redesignate 
Secs. 2.21(a)(1) through (a)(5) as Secs. 2.21(a)(2)(i) through 
(a)(2)(v).
    The Office proposes to add new Sec. 2.22 to provide two exceptions 
to the requirement that trademark documents be filed electronically: 
first, if the pro se applicant or registrant, or an attorney for 
applicant or registrant, verifies in an affidavit or declaration under 
Sec. 2.20 that it does not have access to TEAS or does not have the 
technical capability to use TEAS, the pro se applicant or registrant, 
or an attorney for applicant or registrant, will not be required to 
file his or her trademark documents using TEAS; and second, if the 
applicant or registrant is a person described in 15 U.S.C. 1126(b), 
then the applicant or registrant will not be required to file its 
trademark documents using TEAS.
    The Office proposes to revise Sec. 2.76(b) to require that an 
amendment to allege use be filed using TEAS, unless Sec. 2.22 applies.
    The Office proposes to remove Sec. 2.76(d), which now provides that 
the title ``Amendment to allege use under Sec. 2.76'' should appear at 
the top of the first page of an amendment to allege use. This 
requirement is no longer necessary.
    The Office proposes to redesignate Sec. 2.76(e) as Sec. 2.76(d), 
and to add a new Sec. 2.76 (d)(1) to state that filing electronically 
is a minimum requirement that must be met before an amendment to allege 
use can be referred to an examining attorney for examination, unless 
Sec. 2.22 applies.
    The Office proposes to redesignate Secs. 2.76(f) and (g) as 
Secs. 2.76(e) and (f), and to revise them to update cross-references. 
The Office proposes to redesignate Secs. 2.76(h) through (j) as 
Secs. 2.76(g) through (i).
    The Office proposes to revise Sec. 2.88(b) to require that a 
statement of use be filed using TEAS, unless Sec. 2.22 applies.
    The Office proposes to remove Sec. 2.88(d), which now provides that 
the title ``Statement of use under Sec. 2.88'' should appear at the top 
of the first page of a statement of use. This requirement is no longer 
necessary.
    The Office proposes to redesignate Sec. 2.88(e) as Sec. 2.88(d), 
and to add a new Sec. 2.88(d)(1) to state that filing electronically is 
a minimum requirement that must be met before a statement of use can be 
referred to an examining attorney for examination, unless Sec. 2.22 
applies.
    The Office proposes to redesignate Secs. 2.88(f) and (g) as 
Secs. 2.88(e) and (f), and to revise them to update cross-references. 
The Office proposes to redesignate Secs. 2.88(h) through (l) as 
Secs. 2.88(g) through (k).
    The Office proposes to amend Secs. 2.89(a) and (b) to require that 
a request for an extension of time to file a statement of use be filed 
using TEAS, unless Sec. 2.22 applies.
    The Office proposes to amend Sec. 2.161 by redesignating paragraphs 
(a) through (h) as (b) through (i), adding a new paragraph (a) to 
require Sec. 8 affidavits be filed using TEAS, unless Sec. 2.22 
applies, and to revise the redesignated Sec. 2.161(f)(1) to update a 
cross-reference.
    The Office proposes to amend Sec. 2.166 to require that combined 
Secs. 8 and 9 filings be filed using TEAS unless Sec. 2.22 applies.
    The Office proposes to redesignate Secs. 2.167(a) through (g) as 
Secs. 2.167(b) through (h), and to add a new Sec. 2.167(a) to require 
that Sec. 15 affidavits be filed using TEAS, unless Sec. 2.22 applies.
    The Office proposes to amend Sec. 2.168(a) to require that Secs. 8 
and 15 affidavits be filed using TEAS, unless Sec. 2.22 applies.

Rulemaking Requirements

    The Office has determined that the proposed rule changes have no 
federalism implications affecting the relationship between the National 
Government and the State as outlined in Executive Order 12612.
    The Chief Counsel for Regulation of the Department of Commerce has 
certified to the Chief Counsel for Advocacy of the Small Business 
Administration, that the proposed rule changes will not have a 
significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The rule will not 
significantly impact any businesses. As a result, an initial regulatory 
flexibility analysis was not prepared.
    The proposed rule changes are in conformity with the requirements 
of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive 
Order 12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 
3501 et seq.). The proposed changes have been determined to be 
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 rule contains collections of information 
requirements that have 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 15 U.S.C. 1051(b), if completed using paper forms; fifteen 
minutes for applications based on 15 U.S.C. 1051(b), if completed using 
electronic forms; twenty-three minutes for applications to obtain 
registrations based on use of the mark in commerce under 15 U.S.C. 
1051(a), if completed using paper forms; twenty-one minutes for 
applications to obtain registrations based on 15 U.S.C. 1051(a), if 
completed using electronic forms; twenty minutes for applications to 
obtain registrations based on an earlier-filed foreign application 
under 15 U.S.C. 1126(d), if completed using paper forms; nineteen 
minutes for applications to obtain registrations based on 15 U.S.C. 
1126(d), if completed using electronic forms; twenty minutes for 
applications to obtain registrations based on registration of a mark in 
a foreign applicant's country of origin under 15 U.S.C. 1126(e), if 
completed using paper forms; eighteen minutes for applications to 
obtain registrations based on 15 U.S.C. 1126(e), if completed using 
electronic forms; thirteen minutes for allegations of use of the mark 
under Secs. 2.76 and 2.88 if completed using paper forms; twelve 
minutes for allegations of use under Secs. 2.76 and 2.88 if completed 
using electronic forms; ten minutes for requests for extensions of time 
to file statements of use under Sec. 2.89 if completed using paper 
forms; nine minutes for requests for extensions of time to file 
statements of use if completed using electronic forms; eleven minutes 
for Sec. 8 affidavits if completed using paper forms; ten minutes for 
Sec. 8 affidavits if completed using electronic forms; fourteen minutes 
for combined Secs. 8 and 9 filings if completed using paper forms; 
thirteen minutes for combined Secs. 8 and 9 filings if completed using 
electronic forms; fourteen minutes for combined Secs. 8 and 15 
affidavits if completed using paper forms; thirteen minutes for 
combined Secs. 8 and 15 affidavits if completed using electronic forms; 
eleven minutes for Sec. 15 affidavits if completed using paper forms; 
and ten minutes for Sec. 15 affidavits if completed using electronic 
forms. 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

[[Page 45795]]

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. 
Send comments regarding this burden estimate, or any other aspect of 
this data collection, including suggestions for reducing the burden, to 
the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 
22202-3513 (Attn: Ari Leifman), and to the Office of Information and 
Regulatory Affairs, OMB, 725 17th Street, NW., Washington, DC 20503 
(Attn: PTO Desk Officer).

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Trademarks.

37 CFR Part 2

    Administrative practice and procedure, Trademarks.
    For the reasons given in the preamble and under the authority 
contained in 35 U.S.C. 2 and 15 U.S.C. 41, as amended, the Office 
proposes to amend parts 1 and 2 of title 37 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for part 1 continues to read as follows:

    Authority: 35 U.S.C. 2, unless otherwise noted.
    2. Amend Sec. 1.4 to add a new paragraph (h), to read as follows:


Sec. 1.4  Nature of correspondence and signature requirements.

* * * * *
    (h) If any form required to be filed under any provision of this 
section is available for filing using the Trademark Electronic 
Application System (TEAS, available at http://www.uspto.gov), the form 
must be filed using TEAS, unless Sec. 2.22 of this chapter applies.
    3. Revise Sec. 1.10(a) to read as follows:


Sec. 1.10  Filing of correspondence by ``Express Mail.''

    (a) Any correspondence received by the Patent and Trademark Office 
(Office), except for correspondence available for filing using the 
Trademark Electronic Application System (TEAS, available at http://www.uspto.gov), that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed in the Office on the date of deposit with the USPS.
* * * * *

PART 2--RULES APPLICABLE TO TRADEMARK CASES

    4. The authority citation for part 2 continues to read as follow:

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

    5. Revise Sec. 2.21(a) to read as follows:


Sec. 2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application if:
    (1) The application is filed using the Trademark Electronic 
Application System (TEAS, available at http://www.uspto.gov), unless 
Sec. 2.22 applies; and
    (2) The application contains all of the following:
    (i) The name of the applicant;
    (ii) A name and address for correspondence;
    (iii) A clear drawing of the mark;
    (iv) A listing of the goods or services; and
    (v) The filing fee for at least one class of goods or services, 
required by Sec. 2.6.
* * * * *
    6. Add Sec. 2.22 to read as follows:


Sec. 2.22  Exceptions to mandatory electronic filing.

    Notwithstanding any other provision of this section, filing through 
the Trademark Electronic Application System (TEAS, available at http://www.uspto.gov) is not required in the following two cases:
    (a) The pro se applicant or registrant, or an attorney for 
applicant or registrant, who verifies in an affidavit or declaration 
under Sec. 2.20 that he or she does not have access to TEAS or does not 
have the technical capability to use TEAS, will not be required to file 
its trademark documents using TEAS. Such affidavit or declaration must 
accompany the relevant document.
    (b) The applicant or registrant who is a person described in 15 
U.S.C. 1126(b) will not be required to file its trademark documents 
using TEAS.
    7. Amend Sec. 2.76 by removing paragraph (d), revising paragraph 
(b) introductory text, redesignating paragraphs (e) through (j) as (d) 
through (i) and revising them to read as follows:


Sec. 2.76  Amendment to allege use.

    (a) * * *
    (b) The amendment to allege use must be filed using the Trademark 
Electronic Application System (TEAS, available at http://www.uspto.gov), unless Sec. 2.22 applies. A complete amendment to 
allege use must include:
* * * * *
    (d) The Office will review a timely filed amendment to allege use 
to determine whether it meets the following minimum requirements:
    (1) Is filed using TEAS, unless Sec. 2.22 applies;
    (2) Includes the fee for at least a single class, required by 
Sec. 2.6;
    (3) Includes one specimen of the mark as used in commerce; and
    (4) Includes 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.
    (e) A timely filed amendment to allege use that meets the minimum 
requirements specified in paragraph (d) of this section will be 
examined in accordance with Secs. 2.61 through 2.69. If, as a result of 
the examination of the amendment to allege use, applicant is found not 
entitled to registration for any reason not previously stated, 
applicant will be so notified and advised of the reasons and of any 
formal requirements or refusals. The notification shall restate or 
incorporate by reference all unresolved refusals or requirements 
previously stated. The amendment to allege use may be amended in 
accordance with Secs. 2.59 and 2.71 through 2.75. If the amendment to 
allege use is acceptable in all respects, the applicant will be 
notified of its acceptance. The filing of such an amendment shall not 
constitute a response to any outstanding action by the Trademark 
Examining Attorney.
    (f) If the amendment to allege use is filed within the permitted 
time period but does not meet the minimum requirements specified in 
paragraph (d) of this section, applicant will be notified of the 
deficiency. The deficiency may be corrected if the mark has not been 
approved for publication. If an acceptable amendment to correct the 
deficiency is not filed prior to approval of the mark for publication, 
the amendment to allege use will not be examined on the merits.
    (g) An amendment to allege use may be withdrawn for any reason 
prior to approval of a mark for publication.
    (h) 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.
    (i) For the requirements for a multiple class application, see 
Sec. 2.86.
    8. Amend Sec. 2.88 by removing paragraph (d), revising paragraph 
(b) introductory text, redesignating paragraphs (e) through (l) as (d) 
through (k) and revising them to read as follows.

[[Page 45796]]

Sec. 2.88  Filing statement of use after notice of allowance.

    (a) * * *
    (b) The statement of use must be filed using the Trademark 
Electronic Application System (TEAS, available at http://www.uspto.gov), unless Sec. 2.22 applies. A complete statement of use 
must include:
* * * * *
    (d) The Office will review a timely filed statement of use to 
determine whether it meets the following minimum requirements:
    (1) Is filed using TEAS, unless Sec. 2.22 applies;
    (2) Includes the fee for at least a single class, required by 
Sec. 2.6;
    (3) Includes one specimen of the mark as used in commerce;
    (4) Includes 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.
    (e) A timely filed statement of use that meets the minimum 
requirements specified in paragraph (d) of this section will be 
examined in accordance with Secs. 2.61 through 2.69. If, as a result of 
the examination of the statement of use, applicant is found not 
entitled to registration, applicant will be notified and advised of the 
reasons and of any formal requirements or refusals. The statement of 
use may be amended in accordance with Secs. 2.59 and 2.71 through 2.75. 
If the statement of use is acceptable in all respects, the applicant 
will be notified of its acceptance.
    (f) If the statement of use does not meet the minimum requirements 
specified in paragraph (d) of this section, applicant will be notified 
of the deficiency. If the time permitted for applicant to file a 
statement of use has not expired, applicant may correct the deficiency. 
After the filing of a statement of use during a permitted time period 
for such filing, the applicant may not withdraw the statement to return 
to the previous status of awaiting submission of a statement of use, 
regardless of whether it complies with paragraph (d) of this section.
    (g) The failure to timely file a statement of use that meets the 
minimum requirements specified in paragraph (d) of this section shall 
result in the abandonment of the application.
    (h)(1) The goods or services specified in a statement of use must 
conform to those goods or services identified in the notice of 
allowance. An applicant may specify the goods or services by choosing 
the statement that ``The applicant is using the mark in commerce on or 
in connection with all goods and/or services listed in the application 
or Notice of Allowance;'' or, if appropriate, choosing the statement 
that ``The applicant is using the mark in commerce on or in connection 
with all goods and/or services listed in the application or Notice of 
Allowance, except the goods and/or services listed below,'' and listing 
in the space provided the goods or services to be deleted.
    (2) If any goods or services specified in the notice of allowance 
are omitted from the identification of goods or services in the 
statement of use, the Trademark Examining Attorney shall inquire about 
the discrepancy and permit the applicant to amend the statement of use 
to include any omitted goods or services, provided that the amendment 
is supported by a verification that the mark was in use in commerce, on 
or in connection with each of the goods or services sought to be 
included, prior to the expiration of the time allowed to applicant for 
filing a statement of use.
    (3) The statement of use may be accompanied by a separate request 
to amend the identification of goods or services in the application, as 
stated in the notice of allowance, in accordance with Sec. 2.71(b).
    (i) The statement of use may be accompanied by a separate request 
to amend the drawing in the application, in accordance with Secs. 2.51 
and 2.72.
    (j) 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.
    (k) For the requirements for a multiple class application, see 
Sec. 2.86.
    9. Amend Sec. 2.89 by revising paragraphs (a) introductory text, 
(a)(1), (b) introductory text, and (b)(1) 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 be filed using 
the Trademark Electronic Application System (TEAS, available at http://www.uspto.gov), unless Sec. 2.22 applies. The extension request must 
include the following:
    (1) A request for an extension of time to file the statement of 
use;
* * * * *
    (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. The extension request must be filed using 
TEAS unless Sec. 2.22 applies, and must include the following:
    (1) A request for an extension of time to file the statement of 
use;
* * * * *
    10. 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 using the Trademark Electronic Application System 
(TEAS, available at http://www.uspto.gov), unless Sec. 2.22 applies;
    (b) Be filed by the owner within the period set forth in 
Sec. 2.160(a);
    (c) 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.
    (d) Include the registration number;
    (e)(1) Include the fee required by Sec. 2.6 for each class of goods 
or services that the affidavit or declaration covers;
    (2) If the affidavit or declaration is filed during the grace 
period under section 8(c)(1) of the Act, include the late fee per class 
required by Sec. 2.6;
    (3) If at least one fee is submitted for a multi-class 
registration, but the class(es) to which the fee(s) should be applied 
are not specified, the Office will issue a notice requiring either the 
submission of additional fee(s) or an indication of the class(es) to 
which the original fee(s) should be applied. Additional fee(s) may be 
submitted if the requirements of Sec. 2.164 are met. If the required 
fee(s) are not submitted and

[[Page 45797]]

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;
    (f)(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 paragraph (g)(2) of this section;
    (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;
    (g)(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;
    (h) Include a specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
paragraph (g)(2) of this section. The specimen must:
    (1) Show the mark as actually used on or in connection with the 
goods or in the sale or advertising of these 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 not submitted electronically. 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;
    (i) 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.
    11. Revise Sec. 2.166 to read as follows:


Sec. 2.166  Affidavit of continued use or excusable nonuse combined 
with renewal application.

    An affidavit of 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. The combined document must be filed 
using the Trademark Electronic Application System (TEAS, available at 
http://www.uspto.gov), unless Sec. 2.22 applies.
    12. Revise Sec. 2.167 to read as follows:


Sec. 2.167  Affidavit or declaration under section 15.

    The affidavit or declaration in accordance with Sec. 2.20 provided 
by section 15 of the Act for acquiring incontestability for a mark 
registered on the Principal Register or a mark registered under the Act 
of 1881 or 1905 and published under section 12(c) of the Act 
(Sec. 2.153) must:
    (a) Be filed using the Trademark Electronic Application System 
(TEAS, available at http://www.uspto.gov), unless Sec. 2.22 applies;
    (b) Be signed by the registrant;
    (c) Identify the certificate of registration by the certificate 
number and date of registration;
    (d) 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;
    (e) Specify that there has been no final decision adverse to 
registrant's claim of ownership of such mark for such goods or 
services, or to registrant's right to register the same or to keep the 
same on the register;
    (f) Specify that there is no proceeding involving said rights 
pending in the Patent and Trademark Office or in a court and not 
finally disposed of;
    (g) Be filed within one year after the expiration of any five-year 
period of continuous use following registration or publication under 
section 12(c). The registrant will be notified of the receipt of the 
affidavit or declaration.
    (h) Include the required fee for each class to which the affidavit 
or declaration pertains in the registration. If no fee, or a fee 
insufficient to cover at least one class, is filed at an appropriate 
time, the affidavit or declaration will not be refused if the required 
fee(s) (See Sec. 2.6) are filed in the Patent and Trademark Office 
within the time limit set forth in the notification of this defect by 
the Office. If insufficient fees are included to cover all classes in 
the registration, the particular class or classes to which the 
affidavit or declaration pertains should be specified.
    13. Amend Sec. 2.168 by revising paragraph (a) 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. The document must be filed using the Trademark Electronic 
Application System (TEAS, available at http://www.uspto.gov), unless 
Sec. 2.22 applies.
* * * * *

    Dated: August 24, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 01-21878 Filed 8-29-01; 8:45 am]
BILLING CODE 3510-16-P