[Federal Register Volume 68, Number 60 (Friday, March 28, 2003)]
[Proposed Rules]
[Pages 15119-15138]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-7392]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. 2003-T-010]
RIN 0651-AB45


Rules of Practice for Trademark-Related Filings Under the Madrid 
Protocol Implementation Act

AGENCY: 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 existing regulations and add new regulations to the 
rules of practice to implement the Madrid Protocol Implementation Act 
of 2002 (MPIA). The MPIA provides that: the owner of a U.S. application 
or registration may seek protection of its mark in any of the 57 
countries party to the Protocol Relating to the Madrid Agreement 
Concerning the International Registration of Marks (Madrid Protocol) by 
submitting a single international application through the Office to the 
International Bureau of the World Intellectual Property Organization 
(IB); and the owner of an application or registration in a country 
party to the Madrid Protocol may obtain an international registration 
from the IB and request an extension of protection of its mark to the 
United States.

DATES: Comments must be received by May 27, 2003 to ensure 
consideration. A public hearing will be held at 10 a.m., Friday, May 
30, 2003, in the Patent Theater, 2121 Crystal Drive, Room 200, 
Arlington, Virginia. Submit requests to present oral testimony on or 
before May 20, 2003.

ADDRESSES: Submit comments by electronic mail (e-mail) to: 
[email protected]. Written comments may also be

[[Page 15120]]

submitted by mail or hand delivery to: Commissioner for Trademarks, 
2900 Crystal Drive, Arlington, VA 22202, attention Cheryl L. Black. 
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: Cheryl L. Black, Office of the 
Commissioner for Trademarks, by telephone at (703) 308-8910, extension 
153, by e-mail to [email protected], or by facsimile at (703) 872-
9292.

SUPPLEMENTARY INFORMATION: The Madrid Protocol Implementation Act of 
2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (MPIA) amends the 
Trademark Act of 1946 to implement the provisions of the Madrid 
Protocol in the United States. The Madrid Protocol provides a process 
of filing an international application with requests for extensions of 
protection to any of the 57 member countries of the Protocol. The MPIA 
was enacted on November 2, 2002, and becomes effective on November 2, 
2003.
    The Madrid Protocol and the Common Regulations Under the Madrid 
Agreement and the Protocol (Common Regulations) are available online at 
http://www.wipo.int/madrid/en/.
    References below to ``the Act,'' ``the Trademark Act,'' or ``the 
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., 
as amended by the MPIA.

Filings under Madrid Protocol

Background

    The Madrid Protocol provides a system for obtaining an 
international registration. The IB maintains the system in accordance 
with the guidelines set forth in the Common Regulations. To apply for 
an international registration under the Protocol, an applicant for an 
international application must be a national of, be domiciled in, or 
have a real and effective business or commercial establishment in one 
of the countries that are members of the Protocol (Contracting 
Parties). An international applicant can submit an international 
application only on the basis of a trademark application or 
registration in one of the Contracting Parties (basic application or 
basic registration). The international application must be for the same 
mark and include a list of goods and/or services identical to or 
narrower than the list of goods and/or services in the basic 
application or registration. The international application must 
designate one or more Contracting Parties in which an extension of 
protection of the international application is sought.
    The international application must be submitted through the 
trademark office of the Contracting Party in which the basic 
application or registration is held (office of origin). The office of 
origin must certify that the information in the international 
application corresponds with the information in the basic application 
or registration, and transmit the international application to the IB.
    The IB reviews the international application to determine whether 
the Madrid Protocol filing requirements have been met and the required 
fees have been paid. If an international application is unacceptable, 
the IB will notify both the applicant and the office of origin of the 
``irregularity.'' If the Madrid Protocol requirements have been met and 
the fees have been paid, the IB will immediately register the mark, 
publish the international registration in the WIPO Gazette of 
International Marks, send a certificate to the holder, and notify the 
offices of the designated Contracting Parties in which an extension of 
protection of the international registration is sought.
    The holder of an international registration may designate 
additional Contracting Parties in a subsequent designation. A 
subsequent designation is a request by the holder of an international 
registration for an extension of protection of its international 
registration to additional Contracting Parties. Each Contracting Party 
designated in an international application or in a subsequent 
designation will examine the request for extension of protection as a 
national application under its laws.

Discussion of Specific Rules Changed or Added

    The Office proposes to add new rules setting forth the requirements 
for submitting international applications and subsequent designations 
through the Office for forwarding to the IB. The Office also proposes 
to add new rules for processing requests for extension of protection of 
international registrations designating the United States.
    The Office proposes to add rules 7.1, 7.3, 7.4, 7.6, 7.7, 7.11, 
7.12, 7.13, 7.14, 7.21, 7.22, 7.23, 7.24, 7.25, 7.26, 7.27, 7.28, 7.29, 
7.30, 7.31, 7.36, 7.37, 7.38, 7.39, 7.40, and 7.41; and designate part 
7 of 37 CFR as the rules of practice in filings pursuant to the Madrid 
Protocol.
    Proposed Sec.  7.1 defines certain terms used in this part. Terms 
defined in the MPIA are not included in the list of definitions in 
Sec.  7.1.
    Proposed Sec.  7.3 requires that correspondence relating to 
international applications and registrations be in English.
    Proposed Sec.  7.4 states that correspondence submitted 
electronically will be accorded the date and time the complete 
transmission is received in the Office based on Eastern Time.

Fees

    The Office proposes to require fees for processing filings under 
the Madrid Protocol. Proposed Sec.  7.6 sets forth the fees payable to 
the Office for processing correspondence relating to international 
applications and registrations. These fees must be paid in U.S. dollars 
at the time of submission.
    The Office proposes to charge a fee: (1) For reviewing and 
certifying an international application; (2) for transmitting a 
subsequent designation; (3) for transmitting a request to record an 
assignment or restriction of a holder's right of disposal of an 
international registration; (4) for requesting a notice of replacement; 
and (5) for filing an affidavit of use in commerce or excusable nonuse 
for a mark in a registered extension of protection to the United 
States.
    In addition to the fees required by the Office, there are 
international fees for processing international applications and 
registrations. Proposed Sec.  7.7 sets forth the international fees 
payable to the IB in connection with international applications and 
registrations, and the requirements and procedures for submitting these 
fees through the Office. A schedule of the international fees is posted 
at http://www.wipo.int/madrid/en/. The international applicant or 
holder may pay the fees directly to the IB, or to the IB through the 
Office. Fees paid directly to the IB must be paid in Swiss francs, and 
fees paid through the Office must be paid in U.S. dollars. The fees 
that may be paid through the Office are listed in proposed Sec.  
7.7(b).
    Under proposed Sec.  7.7(c), international fees paid through the 
Office must be paid in U.S. dollars at the time of submission. To pay 
fees directly to the IB, the international applicant or holder must 
either: (1) Establish an account with the IB for debiting fees, and set 
forth the number of that account as proof of payment in its submission 
to the Office; or (2) pay the fees to the IB using any other method of 
payment, and include the IB receipt number for payment of the fees as 
proof of payment in its submission to the Office.

[[Page 15121]]

International Applications Originating from the United States

    The requirements for granting a date of receipt to an international 
application submitted through the Office are set forth in proposed 
Sec.  7.11(a). The Office proposes to require the submission of an 
international application through the Trademark Electronic Application 
System (TEAS). An international application must identify at least one 
basic application or registration. The international application may be 
based on more than one basic U.S. application and/or registration, 
provided that the owner and the mark are the same for each basic U.S. 
application or registration.
    Under section 61 of the Act, and proposed Sec.  7.11(a)(10), the 
international applicant must specify that applicant is a national of, 
is domiciled in, or has a real and effective industrial or commercial 
establishment in the United States.
    Proposed Sec.  7.11(a)(3) requires a reproduction of the mark in 
the international application that is identical to the mark in the 
basic application or registration and that meets the drawing 
requirements of Sec.  2.52. If the mark in the basic application or 
registration is depicted in black and white, the reproduction of the 
mark in the international application must be black and white. If the 
mark in the basic application or registration is in color, the mark in 
the international application must be in color. If a mark for which 
there is a claim of color is depicted in black and white in the basic 
application or registration, the international application must include 
both a black and white reproduction of the mark and a color 
reproduction of the mark.
    Under proposed Sec. Sec.  7.11(a)(4) and 7.12, if color is claimed 
as a feature of the mark, the same color claim must be made in the 
international application. If color is not claimed as a feature of the 
mark in the basic application or registration, the international 
application may not include a claim of color.
    Under proposed Sec.  7.11(a)(6), if the mark in the basic 
application or registration is a three-dimensional mark, sound mark, 
collective mark or certification mark, the international application 
must indicate the type of mark.
    Proposed Sec.  7.11(a)(7) requires a list of goods and/or services 
in the international application that is identical to or narrower than 
the list of goods and/or services in the basic application or 
registration, and is classified according to the Nice Agreement 
Concerning the International Classification of Goods and Services for 
the Purposes of the Registration of Marks. The applicant may omit goods 
and/or services from the international application as long as the 
omission does not broaden the scope of the goods or services identified 
in the basic application or registration.
    Under proposed Sec.  7.11(a)(8), an international applicant must 
designate at least one Contracting Party in which it seeks an extension 
of protection.
    Under proposed Sec.  7.11(a)(9), the international applicant must 
pay the U.S. certification fee and the fees required by the IB for all 
classes and all designated Contracting Parties at the time of 
submission.
    Proposed Sec.  7.13 sets forth the requirements for certifying and 
forwarding an international application to the IB. Under proposed Sec.  
7.13(a), if an international application meets the requirements of 
proposed Sec.  7.11(a), the Office will grant a date of receipt and 
certify that the information contained in the international application 
corresponds to the basic application or registration. The Office will 
forward the international application electronically to the IB.
    Proposed Sec.  7.13(b), states that if the Office cannot certify 
that the information contained in the international application 
corresponds with the information in the basic application or 
registration, the Office will notify the applicant that the 
international application cannot be certified. Any IB fees submitted 
through the Office will be refunded; however, the Office will not 
refund the certification fee.
Correcting Irregularities in International Application--Proposed Sec.  
7.14
    The IB will notify both the international applicant and the Office 
of any irregularities in the international application. The 
international applicant is responsible for correcting the 
irregularities before the end of the response period set forth in the 
IB's notice to avoid abandonment of the international application. 
Under rule 11 of the Common Regulations, there are some irregularities 
that must be corrected through the Office and some that must be 
corrected directly with the IB. Proposed Sec.  7.14 sets forth the 
types of irregularities that must be corrected through the Office and 
the procedures for responding to these irregularities through the 
Office.
    Under proposed Sec.  7.14(d), the Office would require that 
applicants use TEAS to correct irregularities through the Office. To 
assist the Office in its efforts to timely transmit the response or fee 
to the IB, applicants should submit their responses or fee as early as 
possible, at least one month prior to the end of the IB's response 
period.
Irregularities in Classification and Identification of Goods/Services
    Rules 12 and 13 of the Common Regulations provide that the IB will 
not consider a response to irregularities in classification and 
identification of goods and/or services that is not submitted through 
the office of origin. Proposed Sec.  7.14(b) provides that an 
international applicant must respond to irregularities in 
classification and identification of goods and/or services through the 
Office. The Office will forward an applicant's response to the IB; 
however, the Office will not review the response or respond to an 
irregularity on behalf of an applicant.
Additional Fees for Correcting Irregularities in an International 
Application
    The IB may require an international applicant to pay additional 
fees as a result of irregularities in the classification of goods or 
services, or because the international fees submitted with the 
application were insufficient. Under proposed Sec.  7.14(c), the 
applicant may pay the additional fees directly to the IB or through the 
Office. The international applicant must correct the fee irregularities 
before the end of the response period set forth in the IB's notice, or 
the international application will abandon at the IB. Under proposed 
Sec.  7.14(d), if the international applicant is paying the additional 
fees through the Office, the fees must be paid through TEAS and should 
be submitted at least one month before the end of the IB's response 
period.
Other Irregularities
    Under proposed Sec.  7.14(e), all other irregularities in the 
international application must be corrected directly at the IB. Failure 
to correct certain irregularities by the end of the IB's response 
period will result in the abandonment of the international application.

Subsequent Designations--Proposed Sec.  7.21

    Section 64 of the Act and proposed Sec.  7.21 permit the holder of 
an international registration to submit a subsequent designation 
through the Office, if the holder is a national of, is domiciled in, or 
has a real and effective industrial or commercial establishment in the 
United States. The holder also has

[[Page 15122]]

the option of filing the subsequent designation directly with the IB.
    Under proposed Sec.  7.21, if the subsequent designation is 
submitted through the Office, it must be submitted through TEAS and 
include the international registration number, the name and address of 
the holder of the international registration, one or more Contracting 
Parties in which an extension of protection is sought, and a list of 
goods and/or services that is identical to or narrower than the goods 
and/or services listed in the international registration. The holder 
can omit goods and/or services listed in the international registration 
as long as the omission does not broaden the scope of the goods or 
services identified in the international registration. The holder must 
include the transmittal fee and all subsequent designation fees 
required by the IB at the time of submission. The Office is not 
required to certify the subsequent designation.
    The IB will review the subsequent designation for completeness 
before forwarding the request for extension of protection to the 
designated Contracting Parties. If there are any irregularities in the 
subsequent designation, the IB will notify both the holder and the 
Office. The holder must file any responses to the notice directly with 
the IB. The Office will not forward any responses to irregularities in 
a subsequent designation to the IB, even if the subsequent designation 
was submitted through the Office.

Recording Changes to International Registration

    Most changes to international registrations can be recorded 
directly with the IB. Proposed Sec.  7.22(a) requires that all requests 
to record changes to an international registration be filed at the IB, 
except in the limited circumstances in which they must be submitted 
through the Office, as set forth in proposed Sec. Sec.  7.23 and 7.24.
    Proposed Sec.  7.22(b) provides that assignments or restrictions of 
a holder's rights of disposal of an international registration must be 
recorded by the IB, and that section 10 of the Act and part 3 of this 
chapter are not applicable to such assignments or restrictions.
    Proposed Sec.  7.22(c) provides that when the Office is notified by 
the IB of an assignment or restriction of a holder's right to dispose 
of an international registration with an extension of protection to the 
United States, the Office will take note of the assignment or 
restriction in its records. The Assignment Services Division of the 
Office will record only assignments and restrictions of extensions of 
protection to the United States that have been recorded at the IB.
    Proposed Sec.  7.23 sets forth the limited circumstances in which a 
request to record an assignment of an international registration may be 
submitted through the Office, and the requirements for submitting these 
requests. Under proposed Sec.  7.23, the Office will forward a request 
to record an assignment of an international registration to the IB only 
if: (1) The request is submitted by an assignee who is a national of, 
is domiciled in or has a real and effective commercial or industrial 
establishment in the U.S.; and (2) the assignee cannot obtain the 
assignor's signature for the request to record the assignment.
    Proposed Sec.  7.24 sets forth the limited circumstances in which a 
request to record a restriction of a holder's right to dispose of an 
international registration may be submitted through the Office, and the 
requirements for submitting these requests. Under proposed Sec.  7.24, 
the Office will forward a request to record a restriction of a holder's 
right of disposal of an international registration (usually a security 
interest) only if: (1) The restriction is the result of an agreement 
between the holder of the international registration and the party 
restricting the holder's right of disposal; (2) the party holding the 
restriction is a national of, is domiciled in or has a real and 
effective commercial or industrial establishment in the U.S.; and (3) 
the signature of the holder of the international registration cannot be 
obtained for the request to record the restriction. The Office proposes 
to charge a fee for transmitting a request to record an assignment or 
restriction to the IB.

Requests for Extension of Protection to the United States

    Under section 65 of the Act, the holder of an international 
registration may request an extension of protection of the 
international registration to the United States, provided the 
international registration is not based on a U.S. basic application or 
registration.
    The holder may make a request for extension of protection to the 
United States either in the international application or in a 
subsequent designation filed with the IB. Section 66(a) of the Act 
requires that a request for extension of protection to the United 
States include a declaration of bona fide intention to use the mark in 
commerce. The IB will certify that the request for extension of 
protection contains a declaration of bona fide intention to use the 
mark in commerce when it forwards the request to the Office. The 
declaration will remain as part of the international registration on 
file at the IB.
    The IB will forward the request for extension of protection to the 
Office electronically. The holder cannot file a request for extension 
of protection to the United States directly with the Office.
    Proposed Sec.  7.25 provides that for purposes of examination and 
opposition, a request for an extension of protection to the United 
States will be treated as an application for registration based on an 
extension of protection of an international registration under section 
66(a) of the Act; and that references to ``applications'' and 
``registrations'' in part 2 of this chapter include extensions of 
protection to the United States. With the exception of Sec. Sec.  
2.130-2.131, 2.160-2.166, 2.168 and 2.181-2.186, all the sections in 
part 2 apply to a request for extension of protection to the United 
States.
    Under proposed Sec.  7.26, the filing date of a request for 
extension of protection to the United States for purposes of 
examination in the Office is: (1) The international registration date, 
if the request for extension of protection to the United States was 
made in the international application, or (2) the date the IB recorded 
the subsequent designation, if the request for extension of protection 
to the United States was made in a subsequent designation. Under 
section 66(b) of the Act, the filing date of the extension of 
protection will be considered the date of constructive notice pursuant 
to section 7(c) of the Act.
    Under section 67 of the Act and proposed Sec.  7.27, the holder of 
an international registration may claim priority under Article 4 of the 
Paris Convention for the Protection of Industrial Property if: (1) the 
request for an extension of protection contains a claim of priority; 
and (2) the international registration date or the date of recordal of 
the subsequent designation requesting an extension of protection to the 
United States is no later than 6 months after the filing date of the 
application that formed the basis of the claim of priority.

Replacement

    Under section 74 of the Act and proposed Sec.  7.28(a), a 
registered extension of protection to the United States has the same 
rights as a previously issued U.S. registration if: (1) both 
registrations are owned by the same person and identify the same mark; 
and (2) the goods/services in the previously issued U.S. registration 
are covered by the registered extension of protection. Under proposed 
Sec.  7.28(b), the holder of a pending or registered

[[Page 15123]]

extension of protection may request that the Office note in its records 
replacement of the earlier U.S. registration by the extension of 
protection. The Office proposes to require a fee to note replacement.
    Under proposed Sec.  7.29, the replaced U.S. registration will 
remain in force, unless cancelled, expired or surrendered, as long as 
the owner files affidavits or declarations of use or excusable nonuse 
under section 8 of the Act and renews the registration under section 9 
of the Act.

Effect of Cancellation or Expiration of International Registration on 
Extension of Protection

    Under section 70 of the Act and proposed Sec.  7.30, the Office 
will cancel a pending or registered extension of protection to the 
United States if the IB notifies the Office of the cancellation or 
expiration of the corresponding international registration, in whole or 
in part.

Transformation

    Under section 70(c) of the Act and proposed Sec.  7.31(a), if an 
international registration is cancelled by the IB at the request of the 
office of origin under Article 6(4) of the Madrid Protocol (due to the 
cancellation or expiration of the basic application or registration), 
the holder of the international registration may file a request to 
transform the corresponding extension of protection to the United 
States into an application under section 1 or 44 of the Act. The 
requirements for transformation are set forth in proposed Sec.  
7.31(b).
    The holder of an international registration must file the request 
for transformation through TEAS within 3 months of the cancellation 
date of the international registration. The request must include an 
application filing fee for at least one class of goods and/or services.
    Under proposed Sec.  7.31(c), if a request for transformation 
contains all the elements in Sec.  7.31(b), the cancelled extension of 
protection to the United States will be transformed into an application 
under section 1 or 44 of the Act. The application will be accorded the 
same filing date and same priority (if any) as the cancelled extension 
of protection to the United States. The application resulting from the 
transformation will be examined as a new application under part 2 and, 
if approved for publication, published for opposition. The application 
must meet all the requirements of the Act and rules for an application 
under section 1 or section 44 of the Act.
    Under proposed Sec.  7.31(e), if the holder does not meet the 
requirements of Sec.  7.31(b), the Office will not process the request 
for transformation.

Maintaining an Extension of Protection to the United States

    Section 71 of the Act and proposed Sec.  7.36 require a holder of 
an international registration with a registered extension of protection 
to the United States to file an affidavit or declaration of use in 
commerce or excusable nonuse during the following time periods: (1) 
between the fifth and sixth year after registration; and (2) within the 
six-month period before the end of every ten-year period after the date 
of registration, or upon payment of a grace period surcharge, within 
the three-month grace period immediately following.
    Under proposed Sec.  7.41, renewal of an international registration 
must be made directly with the IB. A request for renewal of an 
international registration cannot be submitted through the Office. 
Renewal of international registrations is governed by Article 7 of the 
Madrid Protocol and Rules 29-31 of the Common Regulations. The term of 
an international registration is ten years, and it may be renewed for 
ten years upon payment of the renewal fee.

Amendment to Part 2 Rules

    If an international registration is not renewed, the registration 
will lapse, and the IB will notify the Office. Pursuant to section 
70(b) of the Act, the Office will cancel the extension of protection to 
the United States.
    There is no requirement in the MPIA that the holder of a registered 
extension of protection to the United States renew the extension of 
protection in the Office under section 9 of the Act.
    In addition to the new rules added as part 7 of 37 CFR, the Office 
proposes to amend rules and add new rules to part 2 of 37 CFR to bring 
the rules of practice in trademark cases into conformance with the MPIA 
and to set forth the requirements for examination of, registration of 
and proceedings before the Trademark Trial and Appeal Board relating to 
extensions of protection to the United States.
    The Office proposes to amend rules 2.2, 2.11, 2.17, 2.18, 2.19, 
2.21, 2.33, 2.34, 2.35, 2.37, 2.47, 2.51, 2.52, 2.65, 2.66, 2.72, 2.73, 
2.75, 2.84, 2.101, 2.102, 2.104, 2.105, 2.107, 2.111, 2.112, 2.113, 
2.118, 2.123, 2.127, 2.128, 2.130, 2.131, 2.142, 2.145, 2.146, 2.151, 
and 2.171; and to add rules 2.53, 2.54, and 2.126.
    The Office proposes to amend Sec.  2.2 to add definitions of 
``ESTTA'' (Electronic System for Trademark Trials and Appeals), 
``international application,'' and ``Office.''
    The Office proposes to revise Sec.  2.11 and its heading to 
indicate that representation before the Office is governed by Sec.  
10.14 of this chapter. It is redundant to have provisions governing 
representation before the Office in both parts 2 and 10.
    The Office proposes to reword Sec.  2.17(b) and to add a reference 
to Sec.  10.14(b).
    The Office proposes to amend Sec.  2.18 to clarify procedures for 
establishing a correspondence address in trademark cases. The proposed 
amendment does not change current practice.
    The Office proposes to amend Sec.  2.19(a) to clarify procedures 
for sending correspondence after a power of attorney is revoked, and to 
amend Sec.  2.19(b) to indicate that the procedures for permissive 
withdrawal of an attorney are governed by Sec.  10.40.
    The Office proposes to amend Sec.  2.21(a) to indicate that Sec.  
2.21 sets forth the minimum filing requirements only for applications 
under sections 1 and 44 of the Act. The filing date of an application 
under section 66(a) of the Act is governed by section 66(b) of the Act 
and proposed Sec.  7.26.
    The Office proposes to amend Sec.  2.33 by adding a new paragraph 
(e), stating that in an application under section 66(a) of the Act, the 
verified statement is part of the international registration on file at 
the IB.
    The Office proposes to remove Sec. Sec.  2.34(a)(1)(v), 
2.34(a)(2)(ii), 2.34(a)(3)(iv) and 2.34(a)(4)(iv), which state that an 
application may list more than one item of goods or more than one 
service, provided that the applicant has used or has a bona fide 
intention to use the mark in commerce on or in connection with all the 
specified goods or services. This is stated in Sec. Sec.  2.32(a)(6), 
2.33(b)(1) and 2.33(b)(2), and it is unnecessary to repeat it in Sec.  
2.34.
    The Office proposes to amend Sec.  2.34(a)(4)(i)(A) to require that 
an application based on section 44(d) of the Act specify the serial 
number of the foreign application. This incorporates a requirement of 
Article 4(D)(5) of the Paris Convention, and codifies current practice, 
as stated in Trademark Manual of Examining Procedure (TMEP) Sec.  1003.
    The Office proposes to add a new Sec.  2.34(a)(5), setting forth a 
request for extension of protection of an international registration 
under section 66(a) of the Act as a fifth basis for filing a trademark 
application.
    The Office proposes to revise Sec.  2.34(b) to provide that more 
than one basis can be claimed only in an application under

[[Page 15124]]

section 1 or 44 of the Act, and that a basis under section 66(a) of the 
Act cannot be combined with any other basis.
    The Office proposes to revise Sec.  2.35(a) to state that in an 
application under section 66(a) of the Act, the applicant may not add, 
substitute or delete a basis, unless the applicant meets the 
requirements for transformation under section 70(c) of the Act and 
proposed Sec.  7.31.
    The Office proposes to revise Sec.  2.35(b) to set forth the 
requirements for adding, substituting or deleting a basis in an 
application under section 1 or section 44 of the Act. This is 
consistent with current Sec. Sec.  2.35(a) and 2.35(b).
    The Office proposes to redesignate Sec. Sec.  2.35(c) through 
2.35(h) as Sec. Sec.  2.35(b)(3) through 2.35(b)(8).
    The Office proposes to add a new Sec.  2.37(b), requiring that if a 
mark has color, the applicant must identify the color(s) and describe 
where they appear on the mark. This is consistent with the requirements 
for international applications under the Madrid Protocol.
    The Office proposes to amend Sec.  2.47 to indicate that an 
application under section 66(a) of the Act is not eligible for 
registration on the Supplemental Register. Section 68(a)(4) of the Act 
provides that registration of an extension of protection of an 
international registration shall be refused to any mark not eligible 
for registration on the Principal Register.
    The Office proposes to reword Sec.  2.51(d) to simplify the rule 
and to add a provision that, in an application under section 66(a) of 
the Act, the drawing of the mark must be a substantially exact 
representation of the mark that appears in the international 
registration.
    The Office proposes to revise Sec.  2.52 to clarify the types of 
drawings and format for drawings. There are two types of drawings: (1) 
Standard character (typed) drawings; and (2) special form drawings. 
Currently the rules refer to a standard character drawing as a ``typed 
drawing.'' The Office proposes to use the term ``standard character'' 
because this is the term used for international applications under the 
Madrid Protocol. Proposed Sec.  2.52(a) sets forth the requirements for 
a standard character drawing, and proposed Sec.  2.52(b) sets forth the 
requirements for a special form drawing. Additional requirements for 
drawings filed through TEAS are set forth in proposed Sec.  2.53, and 
additional requirements for paper drawings are set forth in proposed 
Sec.  2.54.
    Proposed Sec.  2.52(b)(1) requires that if color is claimed as a 
feature of the mark or if the mark consists only of color, the drawing 
must show the mark in color. Currently, the Office does not accept 
color drawings. Under current rules, to show color in a mark, an 
applicant must submit a black and white drawing, with a statement 
identifying the color(s) and describing where they appear in the mark. 
Alternatively, an applicant may show color by using the lining chart 
set forth in TMEP Sec.  807.09(b).
    Effective November 2, 2003, the Office will accept color drawings, 
and will require that applicants whose marks comprise color submit a 
drawing that shows color. The Office will no longer accept black and 
white drawings with a color claim, or drawings that are ``lined for 
color.''
    Proposed Sec.  2.52(b)(1) requires that an applicant submit a black 
and white drawing if color is not claimed as a feature of the mark. 
This is consistent with the requirements for international applications 
under the Madrid Protocol.
    Proposed Sec.  2.52(b)(1) further requires that applicant name the 
color(s) and describe where they appear on the mark.
    The proposed rule does not prohibit the use of gray tones. The 
Office will process drawings with gray tones as black and white 
drawings unless the application includes a statement that applicant is 
claiming the color gray. Thus, an applicant must submit a color claim 
if applicant wants to show gray in the mark.
    The Office proposes to add Sec.  2.53, setting forth the 
requirements for a drawing filed through TEAS. Proposed Sec.  2.53(b) 
requires that applicant attach a digitized image of the mark to the 
electronic submission. The image must be no larger than 3.15 inches (8 
cm) high by 3.15 inches (8 cm) wide; must be in .jpg format; and must 
be scanned at no less than 250 and no more than 350 dots per inch. The 
image that is scanned must be made with a pen or by a process that will 
provide high definition when copied. These requirements are necessary 
to ensure that the Office database contains a clear and accurate 
reproduction of the mark. The 8 cm by 8 cm size requirement is 
consistent with the size requirement for an international application.
    The Office proposes to add Sec.  2.54, setting forth the 
requirements for a paper drawing. These requirements are necessary to 
ensure that the Office receives an image that can be scanned into its 
database without losing clarity.
    The Office proposes to amend Sec.  2.65 to add a new paragraph (d), 
stating that, if a refusal or requirement is expressly limited to only 
certain goods/services and the applicant fails to file a complete 
response to the refusal or requirement, the application shall be 
abandoned only as to those particular goods/services. This is a change 
in practice. Currently, failure to respond to a refusal that pertains 
to fewer than all the goods and services, or fewer than all the 
classes, in an application will result in abandonment of the entire 
application. See TMEP Sec.  1403.05. This change will result in fewer 
abandonments and comports with sections 68(c) and 69(a) of the Act, 
which provide that an application under section 66(a) of the Act is 
automatically protected with respect to any goods or services for which 
the Office has not timely notified the IB of a refusal.
    The Office proposes to amend Sec.  2.66(a) to require that a 
petition to revive an abandoned application based on unintentional 
delay be filed within two months of the mailing date of the notice of 
abandonment. The Office proposes to remove Sec.  2.66(a)(2), which 
provides that such a petition may be filed 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.
    Effective October 30, 1999, the standard for reviving abandoned 
applications was changed from ``unavoidable delay'' to ``unintentional 
delay.'' See notices at 64 FR 48900 (Sept. 8, 1999) and 1226 TMOG 103 
(Sept. 28, 1999). Since that time, there has been a substantial 
increase in the number of petitions to revive filed in the Office. 
Third parties may be harmed by the revival of a pending application 
many months after its abandonment and removal from the Office database. 
For example, a third party may have searched the Office database and 
commenced using a mark because the search showed no earlier-filed 
conflicting marks. Or an examining attorney may have searched the 
Office database and approved a later-filed application for a 
conflicting mark because the database indicated that the earlier-filed 
application was abandoned. To minimize this problem, the Office 
proposes to adopt a stricter time limit for filing petitions to revive 
under Sec.  2.66. Moreover, the strict time limits for issuing refusals 
to requests for extension of protection under section 66(a) of the Act 
requires greater accuracy of the Office database.
    The Office proposes to add a new Sec.  2.72(d), stating that in an 
application under section 66(a) of the Act, the applicant may amend the 
description or drawing of the mark only if the proposed amendment does 
not materially alter the mark, and that the Office will determine 
whether a proposed amendment materially alters a

[[Page 15125]]

mark by comparing the proposed amendment with the description or 
drawing of the mark in the international application on file at the IB.
    The Office proposes to amend Sec.  2.73(a) to add references to 
applications under sections 44 and 66(a) of the Act. Section 2.73 sets 
forth the requirements for amendment of an application to recite 
concurrent use under section 2(d) of the Act.
    The Office proposes to add a new Sec.  2.75(c), stating that in an 
application under section 66(a) of the Act, the applicant may not amend 
the application to the Supplemental Register. As noted above, section 
68(a)(4) of the Act provides that registration of an extension of 
protection of an international registration shall be refused to any 
mark not eligible for registration on the Principal Register.
    The Office proposes to revise Sec. Sec.  2.84(a) and (b) to add 
references to the new filing basis under section 66(a) of the Act. The 
provisions with respect to jurisdiction over published section 66(a) 
applications are the same as those in applications under sections 1(a) 
and 44 of the Act.
    The Office proposes to amend Sec. Sec.  2.101(a), 2.111(a), 2.118 
and 2.145(c)(4) to refer to the United States Patent and Trademark 
Office as Office.
    The Office proposes to amend Sec.  2.101(b) to substitute 
``person'' for ``entity'' to track the statutory language; to make the 
rule gender neutral; to clarify the definitions of ``attorney'' and 
``other authorized representative'' by reference to Sec. Sec.  10.1(c) 
and 10.14(b), respectively; to clarify that an opposition must be 
signed; and to indicate that electronic signatures are required for 
electronically filed oppositions.
    The Office proposes to add a new Sec.  2.101(b)(1) and a new Sec.  
2.101(b)(2) stating that an opposition to an application based on 
section 1 or 44 of the Act may be filed either on paper or 
electronically through ESTTA, but that an opposition to an application 
based on section 66(a) of the Act may be filed only through ESTTA.
    The Office proposes to revise Sec.  2.101(d)(1) through Sec.  
2.101(d)(3) and to add new Sec.  2.101(d)(3)(i) through Sec.  
2.101(d)(3)(iii) to indicate that the Office will not accept an 
opposition submitted through ESTTA that does not include fees to cover 
all named party opposers and all classes opposed; that the Office will 
not institute an opposition proceeding if an opposition submitted on 
paper does not include a fee sufficient to pay for one person to oppose 
the registration of a mark in at least one class; and that the Office 
will no longer correspond with an opposer in an opposition submitted on 
paper to permit submission of additional fees or designation of party 
opposers and/or classes where an opposition is submitted with 
insufficient fees to pay for opposition by all party opposers and/or in 
all classes. The revision explains how the Office will apply a fee 
accompanying a paper submission that is insufficient to cover all 
classes and/or to cover all party opposers.
    The Office proposes to amend Sec.  2.102(a) to make the rule gender 
neutral; to clarify the definitions of ``attorney'' and ``authorized 
representative'' by reference to Sec. Sec.  10.1(c) and 10.14(b), 
respectively; to clarify that a request to extend the time for filing 
an opposition must be signed; and to indicate that electronic 
signatures are required for electronically filed requests to extend the 
time for filing oppositions.
    The Office proposes to add a new Sec.  2.102(a)(1) and a new Sec.  
2.102(a)(2) stating that a written request to extend the time for 
filing an opposition to an application based on section 1 or 44 of the 
Act may be filed either on paper or electronically through ESTTA, but 
stating that a request to extend the time for filing an opposition to 
an application based on section 66(a) of the Act may be filed only 
through ESTTA.
    The Office proposes to revise Sec.  2.102(c) to set out the time 
frames for extensions of time to oppose and to indicate that the 
Trademark Trial and Appeal Board will no longer extend a potential 
opposer's time to file an opposition beyond 120 days from the date the 
mark is published for opposition. The Office proposes to add Sec. Sec.  
2.102(c)(1) and (2) to state the requirements concerning the filing of 
permitted requests to extend the time for filing an opposition.
    The Office proposes to remove Sec. 2.102(d), which requires 
submission of extension requests in triplicate.
    The Office proposes to revise Sec.  2.104(a) to remove the 
requirement that a duplicate copy of the opposition, including 
exhibits, be filed with an opposition.
    The Office proposes to reword the heading for Sec.  2.105 to 
specify that notification of opposition proceedings is to the parties.
    The Office proposes to revise Sec.  2.105 to clarify the 
definitions of ``attorney'' and ``authorized representative'' by 
reference to Sec. Sec.  10.1(c) and 10.14(b), respectively; and to 
indicate that, if no attorney or other authorized representative is 
appointed, notification will be sent to a party's domestic 
representative, or, if there is no domestic representative, 
notification will be sent to the party.
    The Office proposes to redesignate Sec.  2.107 as Sec.  2.107(a); 
to limit this paragraph to oppositions against an application filed 
under section 1 or 44 of the Act; and to state in the rule the Board 
practice which prohibits an opposer in a proceeding against an 
application filed under section 1 or 44 of the Act from adding to the 
goods or services in an opposition after the period for filing the 
opposition has closed.
    The Office proposes to add a new Sec.  2.107(b) to state that 
pleadings in an opposition proceeding against an application filed 
under section 66(a) of the Act may be amended in the same manner and to 
the same extent as in a civil action in a United States district court; 
except that, once filed, such opposition may not be amended to change 
or add to the grounds for opposition or to add to the goods or services 
opposed.
    The Office proposes to revise Sec.  2.111(b) to substitute 
``person'' for ``entity'' to track the statutory language; to make the 
rule gender neutral; to clarify the definitions of ``attorney'' and 
``authorized representative'' by reference to Sec. Sec.  10.1(c) and 
10.14(b), respectively; to clarify that an opposition must be signed; 
and to indicate that electronic signatures are required for 
electronically filed oppositions.
    The Office proposes to revise Sec.  2.111(c) to divide it into four 
paragraphs; to state that the Office will not accept a petition 
submitted through ESTTA that does not include fees to cover all named 
party petitioners and all classes; that the Office will not institute a 
cancellation proceeding if a petition submitted on paper does not 
include a fee sufficient to pay for one person for a cancellation in at 
least one class; and that the Office will no longer correspond with a 
petitioner in a cancellation submitted on paper to permit submission of 
additional fees or designation of party petitioners and/or classes 
where a cancellation is submitted with insufficient fees to pay for 
cancellation by all party petitioners and/or in all classes. The 
revision explains how the Office will apply a fee accompanying a paper 
submission that is insufficient to cover all classes and/or to cover 
all party petitioners.
    The Office proposes to amend Sec.  2.112(a) to substitute 
``person'' for ``entity'' to track the statutory language; to make the 
rule gender neutral; and to remove the requirement that a duplicate 
copy of the petition, including exhibits, be filed with the petition.

[[Page 15126]]

    The Office proposes to reword the heading for Sec.  2.113 to 
specify that notification of cancellation proceedings is to the 
parties.
    The Office proposes to revise Sec.  2.113 to divide it into 
paragraphs (a), (b), (c) and (d) for clarity; to clarify the 
definitions of ``attorney'' and ``authorized representative'' by 
reference to Sec. Sec.  10.1(c) and 10.14(b), respectively; and to 
indicate that, if no attorney or other authorized representative is 
appointed by a party, notification will be sent to that party's 
domestic representative, or, if there is no domestic representative for 
that party, notification will be sent to the party.
    The Office proposes to amend Sec.  2.118 to delete reference to a 
party residing abroad and his representative in the United States in 
order to clarify that when any notice sent by the Office to a 
registrant is returned to the Office, notice may be given by 
publication in the Official Gazette, regardless of whether that 
registrant resides in the United States or elsewhere.
    The Office proposes to amend Sec.  2.123(g)(1) to require that 
depositions be in written form, but to delete reference to specific 
requirements that may vary depending upon the media used for 
submission. Requirements for submissions are specified in proposed 
Sec.  2.126.
    The Office proposes to add new Sec.  2.126, entitled ``Form of 
submissions to the Trademark Trial and Appeal Board,'' which includes 
paragraphs (a) through (d). Paragraphs (a) through (c) provide that 
submissions may be made to the Board on paper, CD-ROM, or 
electronically, as permitted by the rules contained in this part or 
Board practice; and specify the requirements for each type of 
submission. Paragraph (d) specifies the requirements for making a 
submission to the Board that is confidential in whole or in part.
    The Office proposes to amend Sec.  2.127(a) to delete the 
specifications for filing on paper a brief in support of, or response 
to, a motion, referring, instead to Sec.  2.126.
    The Office proposes to amend Sec.  2.128(b) to require that briefs 
be in written form; and to delete the specifications for filing a brief 
on paper, referring, instead to Sec.  2.126.
    The Office proposes to amend both the heading and the body of Sec.  
2.130 to change ``Examiner of Trademarks'' to ``trademark examining 
attorney.'' The Office proposes to revise Sec.  2.130 to provide that, 
during an inter partes proceeding, only applications under section 1 or 
section 44 of the Act may be remanded, at the request of the trademark 
examining attorney, for consideration of facts which appear to render 
the mark unregistrable.
    The Office proposes to amend Sec.  2.131 to change the term 
``examiner'' to ``trademark examining attorney''; and to limit the 
applicability of this section to inter partes proceedings involving 
applications under sections 1 and 44 of the Act.
    The Office proposes to revise Sec.  2.142(a) and (b)(2) to state 
that notices of appeal and briefs must be filed in written form, as 
prescribed in Sec.  2.126, and to delete the specifications for filing 
a brief on paper.
    The Office proposes to amend Sec.  2.145(b)(3) to indicate that 
notices of appeal to the U.S. Court of Appeals for the Federal Circuit 
be sent to the Office of the General Counsel, with a duplicate copy 
addressed to the Board.
    The Office proposes to amend Sec.  2.145(c)(3) to indicate that any 
adverse party to an appeal taken to the U.S. Court of Appeals for the 
Federal Circuit by a defeated party in an inter partes proceeding who 
files a notice with the Office as provided in section 21(b) of the Act, 
must address that notice to the Office of the General Counsel.
    The Office proposes to amend Sec.  2.145(c)(4) to indicate that, in 
order to avoid premature termination of a proceeding, a party who 
commences a civil action, pursuant to section 21(b) of the Act, must 
file written notice thereof at the Trademark Trial and Appeal Board.
    The Office proposes to amend Sec.  2.146(c) to delete reference to 
a petition to revive as an example of a situation where an affidavit or 
declaration is required in support of a petition. This is a technical 
correction to the rule. Effective October 30, 1999, Sec.  2.66 was 
amended to delete the requirement for an affidavit or declaration in a 
petition to revive based on unintentional delay. An unverified 
statement is sufficient. See notices at 64 FR 48900 (Sept. 8, 1999) and 
1226 TMOG 103 (Sept. 28, 1999). However, Sec.  2.146(c) still requires 
a verified statement in other situations where facts are to be proven 
on petition. For example, if the petition arises from the loss or 
misplacement of a document submitted to the Office, it should be 
accompanied by the affidavit or declaration of the person who mailed 
the document, attesting to the date of submission and identifying the 
document filed with the petition as a true copy of the document 
previously filed. TMEP Sec.  1705.03.
    The Office proposes to amend Sec.  2.146(i) to change the standard 
for a showing of due diligence for petitions in which the petitioner 
seeks to reactivate an application or registration that was abandoned, 
cancelled or expired due to the loss or mishandling of papers. 
Currently, the rule requires that to be considered diligent, 
petitioners must check the status of pending matters 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 proposes to 
shorten the time period from one year to six months. A showing of due 
diligence would require that a petitioner check the status of a pending 
application every six months between the filing date of the application 
and issuance of a registration; check the status of a registration 
every six months after filing an affidavit of use or excusable nonuse 
under section 8 or 71 of the Act or a renewal application under section 
9 of the Act until the petitioner receives notice that the affidavit or 
renewal application has been accepted; and request corrective action 
where necessary.
    Third parties are harmed by the removal and later reinsertion of an 
application or registration in the Office database. To minimize this 
problem, the Office proposes to adopt stricter time limits for the 
filing of petitions to revive or reinstate abandoned applications and 
cancelled or expired registrations.
    The Office proposes to revise Sec.  2.151 to add a reference to 
section 71 of the Act, which requires periodic affidavits of use or 
excusable nonuse to maintain a registration based on an extension of 
protection of an international registration.
    The Office proposes to add a new Sec.  2.171(b), stating that when 
ownership of a registration has changed with respect to some but not 
all of the goods and/or services, the registrant(s) may file a request 
that the registration be physically divided into two or more separate 
registrations, upon payment of the required fee for each new separate 
registration created by the division.

Rule Making Requirements

    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined not to 
be significant for purposes of Executive Order 12866.
    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law of the United States Patent and Trademark Office has certified to 
the Chief Counsel for Advocacy of the Small Business

[[Page 15127]]

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 main purpose of the 
proposed rules is to implement legislation that provides an additional 
means for filing trademark applications. Additionally, the rules 
provide for some technical and other changes that will simplify the 
trademark application process. Hence, the rules merely provide all 
applicants for trademark registration, including small businesses, with 
additional benefits.
    Paperwork Reduction Act: The proposed rules are in conformity with 
the requirements of the Paperwork Reduction Act of 1995 (PRA) (44 
U.S.C. 3501 et seq.). 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 proposed rule contains collections of information requirements 
subject to the PRA. This rule adds provisions allowing parties to (1) 
file applications for international trademark registration with the IB 
through the Office; (2) file subsequent designations with the IB 
through the Office; (3) file responses to notices of irregularities in 
international applications issued by the IB through the Office; (4) 
request the Office to note in its records that a registered extension 
of protection of an international registration to the United States 
replaces a previously issued U.S. registration; (5) file requests to 
record assignments or restrictions of a holder's right to dispose of an 
international registration with the IB through the Office; and (6) file 
a request that the Office transform an extension of protection that was 
cancelled by the IB into an application for registration in the United 
States under section 1 or section 44 of the Act. Additionally, the 
proposed rule sets forth requirements for submitting an affidavit of 
continued use or excusable nonuse under section 71 of the Act and 
discusses changes in the information required from the public to file 
notices of opposition, petitions to cancel, and requests for extensions 
of time to oppose.
    An information collection package supporting the changes to the 
above information requirements, as set forth in this rule, has been 
submitted to the Office of Management and Budget for review and 
approval. Previously, a separate information package was submitted in 
support of oppositions, requests for extensions of time to file 
oppositions, and petitions to cancel. The public reporting burden for 
this collection of information is estimated to average as follows: 
fifteen minutes for international trademark applications; three minutes 
for subsequent designations; ten minutes to respond to notices of 
irregularities issued by the IB in connection with international 
applications; two minutes to request that the Office replace a United 
States registration with a subsequently registered extension of 
protection to the United States; five minutes for a request to record 
an assignment or restriction of a holder's right to dispose of an 
international registration; five minutes for a request that the Office 
transform a cancelled extension of protection into an application for 
registration under section 1 or 44 of the Act; fourteen minutes for an 
affidavit of continued use or excusable nonuse under section 71 of the 
Act; ten minutes to forty-five minutes for notices of opposition and 
petitions to cancel, depending on the particular circumstances; and ten 
minutes for requests for extensions of time to oppose. 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.
    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 20230 
(Attn: PTO Desk Officer).

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, Trademarks.

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

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

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

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

    2. Amend Sec.  2.2 to add new paragraphs (c) through (e), to read 
as follows:


Sec.  2.2  Definitions.

* * * * *
    (c) The acronym ESTTA means the Electronic System for Trademark 
Trials and Appeals, available at http://www.uspto.gov.
    (d) The term international application as used in this part means 
an application for international registration that is filed under the 
Madrid Protocol.
    (e) The term Office means the United States Patent and Trademark 
Office.
    3. Revise Sec.  2.11 and its heading to read as follows:


Sec.  2.11  Representation before the Office.

    Representation before the Office is governed by Sec.  10.14 of this 
chapter. The Office cannot aid in the selection of an attorney.
    4. Amend Sec.  2.17 by revising paragraph (b) to read as follows:


Sec.  2.17  Recognition for representation.

* * * * *
    (b) Before any authorized representative, as specified in Sec.  
10.14(b) of this chapter, will be allowed to take action of any kind 
with respect to an application, registration or proceeding, a written 
authorization from the applicant, registrant, party to the proceeding, 
or other person entitled to prosecute such application or proceeding 
must be filed.
* * * * *
    5. Revise Sec.  2.18 to read as follows:


Sec.  2.18  Correspondence, with whom held.

    (a) If documents are transmitted by an attorney, or a written power 
of attorney is filed, the Office will send correspondence to the 
attorney transmitting the documents, or to the attorney designated in 
the power of attorney, provided that the attorney is an attorney as 
defined in Sec.  10.1(c) of this chapter.
    (b) The Office will not undertake double correspondence. If more 
than one attorney appears or signs a document, the Office's reply will 
be sent to the address already established in the record until the 
applicant, registrant or party, or its duly appointed attorney, 
requests in writing that correspondence be sent to another address.

[[Page 15128]]

    (c) If an application, registration or proceeding is not being 
prosecuted by an attorney but a domestic representative has been 
appointed, the Office will send correspondence to the domestic 
representative, unless the applicant, registrant or party designates in 
writing another correspondence address.
    (d) If the application, registration or proceeding is not being 
prosecuted by an attorney and no domestic representative has been 
appointed, the Office will send correspondence directly to the 
applicant, registrant or party, unless the applicant, registrant or 
party designates in writing another correspondence address.
    6. Revise Sec.  2.19 and its heading to read as follows:


Sec.  2.19  Revocation of power of attorney; withdrawal.

    (a) Authority to represent an applicant, registrant or a party to a 
proceeding may be revoked at any stage in the proceedings of a case 
upon notification to the Director; and when it is revoked, the Office 
will communicate directly with the applicant, registrant or party to 
the proceeding, or with the new attorney or domestic representative if 
one has been appointed. The Office will notify the person affected of 
the revocation of his or her authorization.
    (b) If the requirements of Sec.  10.40 of this chapter are met, an 
attorney authorized under Sec.  10.14 of this chapter to represent an 
applicant, registrant or party in a trademark case may withdraw upon 
application to and approval by the Director.
    7. Amend Sec.  2.21 by revising paragraph (a) introductory text to 
read as follows:


Sec.  2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application under 
section 1 or section 44 of the Act that contains all of the following:
* * * * *
    8. Amend Sec.  2.33 by adding a new paragraph (e) to read as 
follows:


Sec.  2.33  Verified statement.

* * * * *
    (e) In an application under section 66(a) of the Act, the verified 
statement is part of the international registration on file at the 
International Bureau.
    9. Amend Sec.  2.34 by removing paragraphs (a)(1)(v), (a)(3)(iv) 
and (a)(4)(iv), revising paragraphs (a) introductory text, (a)(2), 
(a)(4)(i)(A), and (b), and adding a new paragraph (a)(5), to read as 
follows:


Sec.  2.34  Bases for filing.

    (a) The application must include one or more of the following five 
filing bases:
    (1) * * *
    (2) Intent-to-use under section 1(b) of the Act. In an application 
under section 1(b) of the Act, the applicant 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.
    (3) * * *
    (4) * * *
    (i) * * *
    (A) Specify the filing date, serial number and country of the first 
regularly filed foreign application; or
* * * * *
    (5) Extension of protection of an international registration under 
section 66(a) of the Act. In an application under section 66(a) of the 
Act, the international application or subsequent designation requesting 
an extension of protection to the United States must contain a verified 
statement that the applicant has a bona fide intention to use the mark 
in commerce on or in connection with the goods or services listed in 
the application.
    (b)(1) In an application under section 1 or section 44 of the Act, 
an applicant may claim more than one basis, provided 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) In an application under section 1 or section 44 of the Act, if 
an 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.
    (3) A basis under section 66(a) of the Act cannot be combined with 
any other basis.
* * * * *
    10. Revise Sec.  2.35 to read as follows:


Sec.  2.35  Adding, deleting, or substituting bases.

    (a) In an application under section 66(a) of the Act, an applicant 
may not add, substitute or delete a basis, unless the applicant meets 
the requirements for transformation under section 70(c) of the Act and 
Sec.  7.31 of this chapter.
    (b) In an application under section 1 or section 44 of the Act:
    (1) Before publication for opposition, an 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.
    (2) After publication, an applicant may add or substitute a basis 
in an application that is not the subject of an inter partes proceeding 
before the Trademark Trial and Appeal Board, but only with the express 
permission of the Director, 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).
    (3) When an 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.
    (4) 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.
    (5) 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.
    (6) 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.
    (7) When the applicant deletes a basis, the applicant must also 
delete any goods or services covered solely by the deleted basis.
    (8) 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.
    11. Revise Sec.  2.37 to read as follows:


Sec.  2.37  Description of mark.

    (a) A description of the mark, which must be acceptable to the 
trademark examining attorney, may be included in the application, and 
must be included if required by the examining attorney.
    (b) If a mark is displayed in color or a color combination, the 
applicant must name the color(s), and describe where the color(s) 
appear on the mark.
    12. Amend Sec.  2.47 by redesignating paragraphs (c) and (d) as (d) 
and (e) and

[[Page 15129]]

adding a new paragraph (c) to read as follows:


Sec.  2.47  Supplemental Register.

* * * * *
    (c) An application under section 66(a) of the Act is not eligible 
for registration on the Supplemental Register.
* * * * *
    13. Revise Sec.  2.51 to read as follows:


Sec.  2.51  Drawing required.

    (a) In an application under section 1(a) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as 
used on or in connection with the goods and/or services.
    (b) In an application under section 1(b) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as 
intended to be used on or in connection with the goods and/or services 
specified in the application, and once an amendment to allege use under 
Sec.  2.76 or a statement of use under Sec.  2.88 has been filed, the 
drawing of the mark must be a substantially exact representation of the 
mark as used on or in connection with the goods and/or services.
    (c) In an application under section 44 of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as it 
appears in the drawing in the registration certificate of a mark duly 
registered in the applicant's country of origin.
    (d) In an application under section 66(a) of the Act, the drawing 
of the mark must be a substantially exact representation of the mark as 
it appears in the international registration.
    14. Revise Sec.  2.52 to read as follows:


Sec.  2.52  Types of drawings and format for drawings.

    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:
    (a) Standard character (typed) drawing. Applicants who seek to 
register words, letters, numbers, or any combination thereof without 
claim to any particular font style must submit a standard character 
drawing. An applicant may submit a standard character drawing if:
    (1) The application includes a statement that the mark is in 
standard characters and no claim is made to any particular font style;
    (2) The mark does not include a design element;
    (3) All letters and words in the mark are depicted in Latin 
characters;
    (4) All numerals in the mark are depicted in Roman or Arabic 
numerals; and
    (5) The mark includes only common punctuation or diacritical marks.
    (b) Special form drawing. Applicants who seek to register a mark 
that includes a two or three-dimensional design; or color; or words, 
letters, or numbers in a particular style of lettering; or a mark that 
does not meet the requirements of paragraph (a) must submit a special 
form drawing.
    (1) Color marks. When color is claimed as a feature of the mark or 
if the mark consists only of color, the drawing must show the mark in 
color, and the applicant must name the color(s), and describe where the 
color(s) appear on the mark. If color is not claimed as a feature of 
the mark, the applicant must submit a black and white drawing.
    (2) Three dimensional marks. If the mark has three-dimensional 
features, the drawing must depict a single rendition of the mark, and 
the applicant must indicate that the mark is three-dimensional.
    (3) Motion mark. If the mark has motion, the drawing may depict a 
single point in the movement, or the drawing may depict up to five 
freeze frames showing various points in the movement, whichever best 
depicts the commercial impression of the mark. The applicant must also 
describe the mark.
    (4) 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 describe the mark and explain the purpose of 
the broken lines.
    (5) If a drawing cannot adequately depict all significant features 
of the mark, the applicant must also describe the mark.
    (c) A drawing filed through TEAS must meet the requirements of 
Sec.  2.53.
    (d) A paper drawing must meet the requirements of Sec.  2.54.
    (e) Sound, scent, and non-visual marks. An applicant is not 
required to submit a drawing if the 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 description of the mark.
    15. Add Sec.  2.53 to read as follows:


Sec.  2.53  Requirements for drawings filed through the Trademark 
Electronic Application System (TEAS).

    The drawing must meet the requirements of Sec.  2.52. In addition, 
in a TEAS application, the drawing must meet the following 
requirements:
    (a) Standard character drawings: If an applicant is filing a 
standard character drawing, the applicant must enter the mark in the 
appropriate box. The applicant must indicate that the mark is in 
standard characters and that no claim is made to any particular font 
style.
    (b) Special form drawings: If an applicant is filing a special form 
drawing, the applicant must attach a digitized image of the mark to the 
electronic submission.
    (c) Requirements for digitized images: The image must be no larger 
than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide; must be in 
.jpg format; and must be scanned at no less than 250 and no more than 
350 dots per inch. The image that is scanned 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. All lines must be clean, sharp 
and solid, and must not be fine or crowded.
    16. Add Sec.  2.54 to read as follows:


Sec.  2.54  Requirements for drawings submitted on paper.

    The drawing must meet the requirements of Sec.  2.52. In addition, 
in a paper application, the drawing should:
    (a) Be on non-shiny white paper that is separate from the 
application;
    (b) Be on paper that is 8 to 8.5 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 image must be no 
larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
    (c) Include the caption ``DRAWING PAGE'' at the top of the drawing 
beginning one inch (2.5 cm.) from the top edge; and
    (d) Depict the mark in black ink, or in color if color is claimed 
as a feature of the mark.
    (e) Drawings must be typed or 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. All lines must be clean, sharp and solid, and must not be 
fine or crowded.
    17. Amend Sec.  2.65 by revising paragraph (a) to read as follows:

[[Page 15130]]

Sec.  2.65  Abandonment.

    (a) If an applicant fails to respond, or to respond completely, 
within six months after the date an action is mailed, the application 
shall be deemed abandoned unless the refusal or requirement is 
expressly limited to only certain goods and/or services. If the refusal 
or requirement is expressly limited to only certain goods and/or 
services, the application will be abandoned only as to those particular 
goods/services. A timely petition to the Director pursuant to 
Sec. Sec.  2.63(b) and 2.146, if appropriate, is a response that avoids 
abandonment of an application.
* * * * *
    18. Amend Sec.  2.66 by revising paragraph (a) to read as follows:


Sec.  2.66  Revival of abandoned applications.

    (a) An applicant may file a petition to revive an application 
abandoned because applicant did not timely respond to an Office action 
or notice of allowance, if the delay was unintentional. The applicant 
must file the petition within two months of the mailing date of the 
notice of abandonment.
* * * * *
    19. Amend Sec.  2.72 to add a new paragraph (d) to read as follows:


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

* * * * *
    (d) In an application under section 66(a) of the Act, the applicant 
may amend the description or drawing of the mark only if 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 in the 
international registration.
    20. Amend Sec.  2.73 by revising paragraph (a) to read as follows:


Sec.  2.73  Amendment to recite concurrent use.

    (a) An application under section 1(a), section 44, or section 66(a) 
of the Act may be amended to an application for concurrent use 
registration, provided the application as amended satisfies the 
requirements of Sec.  2.42. The trademark examining attorney will 
determine whether the application, as amended, is acceptable.
* * * * *
    21. Amend Sec.  2.75 to add a new paragraph (c) to read as follows:


Sec.  2.75  Amendment to change application to different register.

* * * * *
    (c) In an application under section 66(a) of the Act, the applicant 
may not amend the application to the Supplemental Register.
    22. Revise Sec.  2.84 to read as follows:


Sec.  2.84  Jurisdiction over published applications.

    (a) The trademark examining attorney may exercise jurisdiction over 
an application up to the date the mark is published in the Official 
Gazette. After publication of an application under section 1(a), 44 or 
66(a) of the Act the trademark examining attorney may, with the 
permission of the Director, exercise jurisdiction over the application. 
After publication of an application under section 1(b) of the Act, the 
trademark examining attorney may exercise jurisdiction over the 
application after the issuance of the notice of allowance under section 
13(b)(2) of the Act. After publication, and prior to issuance of a 
notice of allowance in an application under section 1(b), the trademark 
examining attorney may, with the permission of the Director, exercise 
jurisdiction over the application.
    (b) After publication, but before the certificate of registration 
in an application under section 1(a), 44 or 66(a) of the Act is 
printed, or before the notice of allowance in an application under 
section 1(b) of the Act is printed, an application that is not the 
subject of an inter partes proceeding before the Trademark Trial and 
Appeal Board may be amended if the amendment does not necessitate 
republication of the mark or issuance of an Office action. Otherwise, 
an amendment to such an application may be submitted only upon petition 
to the Director to restore jurisdiction over the application to the 
trademark examining attorney for consideration of the amendment and 
further examination. The amendment of an application that is the 
subject of an inter partes proceeding before the Trademark Trial and 
Appeal Board is governed by Sec.  2.133.
    23. Revise Sec.  2.101 to read as follows:


Sec.  2.101  Filing an opposition.

    (a) An opposition proceeding is commenced by filing a timely 
opposition, together with the required fee, in the Office.
    (b) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file an 
opposition addressed to the Trademark Trial and Appeal Board. The 
opposition need not be verified, and must be signed by the opposer or 
the opposer's attorney, as specified in Sec.  10.1(c) of this chapter, 
or other authorized representative, as specified in Sec.  10.14(b) of 
this chapter. Electronic signatures pursuant to Sec.  1.4(d)(1)(iii) of 
this chapter are required for oppositions submitted electronically 
under paragraphs (b)(1) or (2) of this section.
    (1) An opposition to an application based on section 1 or 44 of the 
Act must be filed either on paper or through ESTTA.
    (2) An opposition to an application based on section 66(a) of the 
Act must be filed through ESTTA.
    (c) The opposition must be filed within thirty days after 
publication (Sec.  2.80) of the application being opposed or within an 
extension of time (Sec.  2.102) for 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).
    (2) A timely opposition submitted through ESTTA will not be 
accepted if it is accompanied by a fee that is insufficient to pay in 
full for each named party opposer to oppose the registration of a mark 
in each class specified in the opposition.
    (3) If a timely opposition is submitted on paper, the following is 
applicable if less than all required fees are submitted:
    (i) If the opposition is accompanied by no fee or a fee 
insufficient to pay for one person to oppose the registration of a mark 
in at least one class, the opposition will be refused.
    (ii) If the opposition is accompanied by fees sufficient to pay for 
one person to oppose registration in at least one class, but fees are 
insufficient to oppose registration in all the classes in the 
application, and the particular class or classes against which the 
opposition is filed are not specified, the opposition will be presumed 
to be against the class or classes in ascending numerical order, 
including only the number of classes in the application for which 
sufficient fees have been submitted.
    (iii) If persons are joined as party opposers, each must submit a 
fee for each class for which opposition is sought. If the fees 
submitted are sufficient to pay for one person to oppose registration 
in at least one class, but are insufficient for each named party 
opposer, the first-named party will be presumed to be the party 
opposer. Additional parties will be deemed to be party opposers only to 
the extent that the fees submitted are sufficient to pay the fee due 
for each party opposer. If persons are joined as party opposers against 
a multiple class application, the fees submitted are insufficient, and 
no specification of opposers and classes is

[[Page 15131]]

made at the time the party is joined, the fees submitted will be 
applied first on behalf of the first-named opposer against as many of 
the classes in the application as the submitted fees are sufficient to 
pay. Any excess will be applied on behalf of the second-named party to 
the opposition against the classes in the application in ascending 
numerical order.
    24. Revise Sec.  2.102 to read as follows:


Sec.  2.102  Extension of time for filing an opposition.

    (a) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file a written 
request to extend the time for filing an opposition. The written 
request must be signed by the potential opposer or by the potential 
opposer's attorney, as specified in Sec.  10.1(c) of this chapter, or 
authorized representative, as specified in Sec.  10.14(b) of this 
chapter. Electronic signatures pursuant to Sec.  1.4(d)(1)(iii) of this 
chapter are required for electronically filed extension requests.
    (1) A written request to extend the time for filing an opposition 
to an application filed under section 1 or 44 of the Act must be filed 
either on paper or through ESTTA.
    (2) A written request to extend the time for filing an opposition 
to an application filed under section 66(a) of the Act must be filed 
through ESTTA.
    (b) A written request to extend the time for filing an opposition 
must identify the potential opposer with reasonable certainty. Any 
opposition filed during an extension of time should be in the name of 
the person to whom the extension was granted. An opposition may be 
accepted if the person in whose name the extension was requested was 
misidentified through mistake or if the opposition is filed in the name 
of a person in privity with the person who requested and was granted 
the extension of time.
    (c) A person may file no more than two requests to extend the time 
for filing an opposition. The time for filing an opposition shall not 
be extended beyond 120 days from the date of publication. A request to 
extend the time for filing an opposition must be filed in the Office 
and addressed to the Trademark Trial and Appeal Board.
    (1) If two consecutive requests to extend the time for filing an 
opposition are filed:
    (i) A first request for an extension of time for thirty days must 
be filed before thirty days have expired from the date of publication, 
and will be granted upon request; and
    (ii) A second request for an extension of time for sixty days must 
be filed before the previously granted thirty-day extension of time has 
expired, and will be granted by the Board only for good cause shown. No 
further extensions of time to file an opposition will be granted under 
any circumstances.
    (2) Alternatively, a potential opposer may file a single request 
for an extension of time for 90 days for good cause shown. Such a 
request must be filed before thirty days have expired from the date of 
publication, and will be granted by the Board only for good cause 
shown. If a potential opposer does not show good cause, the Board will 
treat the request as a first request for extension of time for thirty 
days under Sec.  2.102(c)(1).
    25. Revise Sec.  2.104(a) to read as follows:


Sec.  2.104  Contents of opposition.

    (a) The opposition must set forth a short and plain statement 
showing why the opposer believes it would be damaged by the 
registration of the opposed mark and state the grounds for opposition.
* * * * *
    26. Revise Sec.  2.105 and its heading to read as follows:


Sec.  2.105  Notification to parties of opposition proceeding(s).

    When an opposition in proper form has been filed and the correct 
fee(s) has been submitted, the Trademark Trial and Appeal Board shall 
prepare a notification, which shall identify the title and number of 
the proceeding and the application involved and shall designate a time, 
not less than thirty days from the mailing date of the notification, 
within which an answer must be filed. A copy of the notification shall 
be forwarded to opposer's attorney, as defined in Sec.  10.1(c) of this 
chapter, or other authorized representative, as defined in Sec.  
10.14(b) of this chapter, if any, or to opposer's domestic 
representative, if any, or to opposer. The Board shall forward a copy 
of the opposition and any exhibits with a copy of the notification to 
applicant's attorney, other authorized representative, or domestic 
representative, if any, or to the applicant.
    27. Revise Sec.  2.107 to read as follows:


Sec.  2.107  Amendment of pleadings in an opposition proceeding.

    (a) Pleadings in an opposition proceeding against an application 
filed under sections 1 or 44 of the Act may be amended in the same 
manner and to the same extent as in a civil action in a United States 
district court, except that, after the close of the time period for 
filing an opposition including any extension of time for filing an 
opposition, an opposition may not be amended to add to the goods or 
services opposed.
    (b) Pleadings in an opposition proceeding against an application 
filed under section 66(a) of the Act, may be amended in the same manner 
and to the same extent as in a civil action in a United States district 
court, except that, once filed, the opposition may not be amended to 
change or add to the grounds for opposition or to add to the goods or 
services opposed.
    28. Revise Sec.  2.111 to read as follows:


Sec.  2.111  Filing petition for cancellation.

    (a) A cancellation proceeding is commenced by the filing of a 
timely petition for cancellation, together with the required fee, in 
the Office.
    (b) Any person who believes that he, she or it is or will be 
damaged by a registration may file a petition, addressed to the 
Trademark Trial and Appeal Board, to cancel the registration in whole 
or in part. The petition need not be verified, and must be signed by 
the petitioner or the petitioner's attorney, as specified in Sec.  
10.1(c) of this chapter, or other authorized representative, as 
specified in Sec.  10.14(b) of this chapter. Electronic signatures 
pursuant to Sec.  1.4(d)(1)(iii) of this chapter are required for 
petitions submitted electronically. * * *
    (c)(1) The petition must be accompanied by the required fee for 
each party joined as petitioner for each class in the registration for 
which cancellation is sought (see Sec.  2.6).
    (2) A petition submitted through ESTTA will not be accepted if it 
is accompanied by a fee that is insufficient to pay in full for each 
named party petitioner and for each class specified in the petition.
    (3) If the petition is submitted on paper, the following is 
applicable if less than all required fees are submitted:
    (i) If the petition is accompanied by no fee or a fee insufficient 
to pay for one person for a cancellation in at least one class, the 
cancellation will be refused.
    (ii) If the petition is accompanied by fees sufficient to pay for 
one person for a cancellation in at least one class, but fees are 
insufficient for a cancellation against all the classes in the 
registration, and the particular class or classes against which the 
cancellation is filed are not specified, the cancellation will be 
presumed to be against the class or classes in ascending numerical 
order, including only the number of classes in

[[Page 15132]]

the registration for which sufficient fees have been submitted.
    (iii) If persons are joined as party petitioners, each must submit 
a fee for each class for which cancellation is sought. If the fees 
submitted are sufficient to pay for one person to oppose registration 
in at least one class but are insufficient for each named party 
petitioner, the first-named party will be presumed to be the party 
petitioner. Additional parties will be deemed to be party petitioners 
only to the extent that the fees submitted are sufficient to pay the 
fee due for each party petitioner. If persons are joined as party 
petitioners against a multiple class registration, the fees submitted 
are insufficient, and no specification of parties and classes is made 
at the time the party is joined, the fees submitted will be applied 
first on behalf of the first-named petitioner against as many of the 
classes in the registration as the submitted fees are sufficient to 
pay. Any excess will be applied on behalf of the second-named party to 
the cancellation against the classes in the application in ascending 
numerical order.
    (4) The filing date of the petition is the date of receipt in the 
Office of the petition together with the required fee.
    29. Revise Sec.  2.112 to read as follows:


Sec.  2.112  Contents of petition for cancellation.

    (a) The petition must set forth a short and plain statement showing 
why the petitioner believes he, she or it is or will be damaged by the 
registration, state the grounds for cancellation, and indicate, to the 
best of petitioner's knowledge, the name and address of the current 
owner of the registration.
    (b) When appropriate, petitions to cancel different registrations 
owned by the same party may be joined in a consolidated petition. The 
required fee must be included for each party joined as a petitioner for 
each class sought to be cancelled in each registration against which 
the petition to cancel is filed.
    30. Revise Sec.  2.113 and its heading to read as follows:


Sec.  2.113  Notification to parties of cancellation proceeding.

    (a) When a petition for cancellation has been filed in proper form 
(see Sec. Sec.  2.111 and 2.112), the Trademark Trial and Appeal Board 
shall prepare a notification which shall identify the title and number 
of the proceeding and the registration(s) involved and shall designate 
a time, not less than thirty days from the mailing date of the 
notification, within which an answer must be filed. A copy of the 
notification shall be forwarded to petitioner's attorney, as defined in 
Sec.  10.1(c) of this chapter, or other authorized representative, as 
defined in Sec.  10.14(b) of this chapter, if any, or to petitioner's 
domestic representative, if any, or to the petitioner. The Board shall 
forward a copy of the petition to cancel and any exhibits with a copy 
of the notification to the respondent (see Sec.  2.118).
    (b) The respondent shall be the party shown by the records of the 
Office to be the current owner of the registration(s) sought to be 
cancelled, except that the Board, in its discretion, may join or 
substitute as respondent a party who makes a showing of a current 
ownership interest in such registration(s).
    (c) When the party identified by the petitioner, pursuant to Sec.  
2.112(a), as the current owner of the registration(s) is not the record 
owner, a courtesy copy of the petition for cancellation shall be 
forwarded with a copy of the notification to the alleged current owner. 
The alleged current owner may file a motion to be joined or substituted 
as respondent.
    (d) If the petition is found to be defective as to form, the party 
filing the petition shall be advised and allowed reasonable time for 
correcting the informality.
    31. Revise Sec.  2.118 to read as follows:


Sec.  2.118  Undelivered Office notices.

    When a notice sent by the Office to any registrant is returned to 
the Office undelivered, additional notice may be given by publication 
in the Official Gazette for the period of time prescribed by the 
Director.
    32. Amend Sec.  2.123 by revising paragraph (g)(1) to read as 
follows:


Sec.  2.123  Trial testimony in inter partes cases.

* * * * *
    (g) Form of deposition. (1) The pages of each deposition must be 
numbered consecutively, and the name of the witness plainly and 
conspicuously written at the top of each page. A deposition must be in 
written form. The questions propounded to each witness must be 
consecutively numbered unless the pages have numbered lines. Each 
question must be followed by its answer.
* * * * *
    33. Add new Sec.  2.126 to read as follows:


Sec.  2.126  Form of submissions to the Trademark Trial and Appeal 
Board.

    (a) Submissions may be made to the Trademark Trial and Appeal Board 
on paper where the rules in this part or Board practice permit. A paper 
submission, including exhibits and depositions, must meet the following 
requirements:
    (1) A paper submission must be printed in at least 11-point type 
and double-spaced, with text on one side only of each sheet;
    (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) 
wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no 
tabs or other such devices extending beyond the edges of the paper;
    (3) If a paper submission contains dividers, the dividers must not 
have any extruding tabs or other devices, and must be on the same size 
and weight paper as the submission;
    (4) A paper submission must not be stapled or bound;
    (5) All pages of a paper submission must be numbered and exhibits 
shall be identified in the manner prescribed in Sec.  2.123(g)(2);
    (6) Exhibits pertaining to a paper submission must be filed on 
paper or CD-ROM concurrently therewith, and comply with the 
requirements for a paper or CD-ROM submission.
    (b) Submissions may be made to the Trademark Trial and Appeal Board 
on CD-ROM where the rules in this part or Board practice permit. A CD-
ROM submission must identify the parties and case number and contain a 
list that clearly identifies the documents and exhibits contained 
thereon. This information must appear in the data contained in the CD-
ROM itself, on a label affixed to the CD-ROM, and on the packaging for 
the CD-ROM. Text in a CD-ROM submission must be in at least 11-point 
type and double-spaced. A brief filed on CD-ROM must be accompanied by 
a single paper copy of the brief. A CD-ROM submission must be 
accompanied by a transmittal letter on paper that identifies the 
parties, the case number and the contents of the CD-ROM.
    (c) Submissions may be made to the Trademark Trial and Appeal Board 
electronically via the Internet where the rules in this part or Board 
practice permit, according to the parameters established by the Board 
and published at http://www.uspto.gov. Text in an electronic submission 
must be in at least 11-point type and double-spaced. Exhibits 
pertaining to an electronic submission must be made electronically as 
an attachment to the submission.
    (d) To be handled as confidential, submissions to the Trademark 
Trial and Appeal Board that are confidential in whole or part pursuant 
to Sec.  2.125(e), must be submitted under a separate cover. Both the 
submission and its cover must be marked confidential and identify the 
case number and the

[[Page 15133]]

parties. A copy of the submission with the confidential portions 
redacted must be submitted.
    34. Revise Sec.  2.127(a) to read as follows:


Sec.  2.127  Motions.

    (a) Every motion shall be submitted in written form and must meet 
the requirements prescribed in Sec.  2.126. It shall contain a full 
statement of the grounds, and shall embody or be accompanied by a 
brief. Except as provided in paragraph (e)(1) of this section, a brief 
in response to a motion shall be filed within fifteen days from the 
date of service of the motion unless another time is specified by the 
Trademark Trial and Appeal Board, or the time is extended by 
stipulation of the parties approved by the Board, or upon motion 
granted by the Board, or upon order of the Board. If a motion for an 
extension is denied, the time for responding to the motion remains as 
specified under this section, unless otherwise ordered. The Board may, 
in its discretion, consider a reply brief. Except as provided in 
paragraph (e)(1) of this section, a reply brief, if filed, shall be 
filed within fifteen days from the date of service of the brief in 
response to the motion. The time for filing a reply brief will not be 
extended. No further papers in support of or in opposition to a motion 
will be considered by the Board. The brief in support of a motion and 
the brief in response to the motion shall not exceed twenty-five pages 
in length, and a reply brief shall not exceed ten pages in length. 
Exhibits submitted in support of or in opposition to a motion shall not 
be deemed to be part of the brief for purposes of determining the 
length of the brief. When a party fails to file a brief in response to 
a motion, the Board may treat the motion as conceded. An oral hearing 
will not be held on a motion except on order by the Board.
* * * * *
    35. Amend Sec.  2.128 by revising paragraph (b) to read as follows:


Sec.  2.128  Briefs at final hearing.

* * * * *
    (b) Briefs must be submitted in written form and must meet the 
requirements prescribed in Sec.  2.126. Each brief shall contain an 
alphabetical index of cited cases. Without prior leave of the Trademark 
Trial and Appeal Board, a main brief on the case shall not exceed 
fifty-five pages in length in its entirety, including the table of 
contents, index of cases, description of the record, statement of the 
issues, recitation of the facts, argument, and summary; and a reply 
brief shall not exceed twenty-five pages in its entirety.
    36. Revise Sec.  2.130 and its heading to read as follows:


Sec.  2.130  New matter suggested by the trademark examining attorney.

    If, while an inter partes proceeding involving an application under 
section 1 or 44 of the Act is pending, facts appear which, in the 
opinion of the trademark examining attorney, render the mark in the 
application unregistrable, the facts should be called to the attention 
of the Trademark Trial and Appeal Board. The Board may suspend the 
proceeding and refer the application to the trademark examining 
attorney for an ex parte determination of the question of 
registrability. A copy of the trademark examining attorney's final 
action will be furnished to the parties to the inter partes proceeding 
following the final determination of registrability by the trademark 
examining attorney or the Board on appeal. The Board will consider the 
application for such further inter partes action as may be appropriate.
    37. Revise Sec.  2.131 to read as follows:


Sec.  2.131  Remand after decision in inter partes proceeding.

    If, during an inter partes proceeding involving an application 
under section 1 or 44 of the Act, facts are disclosed which appear to 
render the mark unregistrable, but such matter has not been tried under 
the pleadings as filed by the parties or as they might be deemed to be 
amended under Rule 15(b) of the Federal Rules of Civil Procedure to 
conform to the evidence, the Trademark Trial and Appeal Board, in lieu 
of determining the matter in the decision on the proceeding, may remand 
the application to the trademark examining attorney for reexamination 
in the event the applicant ultimately prevails in the inter partes 
proceeding. Upon remand, the trademark examining attorney shall 
reexamine the application in light of the reference by the Board. If, 
upon reexamination, the trademark examining attorney finally refuses 
registration to the applicant, an appeal may be taken as provided by 
Sec. Sec.  2.141 and 2.142.
    38. Amend Sec.  2.142 by revising paragraphs (a) and (b)(2) to read 
as follows:


Sec.  2.142  Time and manner of ex parte appeals.

    (a) Any appeal filed under the provisions of Sec.  2.141 must be 
filed within six months from the date of the final refusal or the date 
of the action from which the appeal is taken. An appeal is taken by 
filing a notice of appeal in written form, as prescribed in Sec.  
2.126, and paying the appeal fee.
    (b) * * *
    (2) Briefs must be submitted in written form and must meet the 
requirements prescribed in Sec.  2.126. Each brief shall contain an 
alphabetical index of cited cases. Without prior leave of the Trademark 
Trial and Appeal Board, a brief shall not exceed twenty-five pages in 
length in its entirety, including the table of contents, index of 
cases, description of the record, statement of the issues, recitation 
of the facts, argument, and summary.
* * * * *
    39. Amend Sec.  2.145 by revising paragraphs (b)(3), (c)(3) and 
(c)(4) to read as follows:


Sec.  2.145  Appeal to court and civil action.

* * * * *
    (b) * * *
    (3) The notice, if mailed to the Office, shall be addressed as 
follows: Office of the General Counsel, P.O. Box 15667, Arlington, 
Virginia 22215, and should include a duplicate copy addressed to the 
Trademark Trial and Appeal Board.
    (c) * * *
    (3) Any adverse party to an appeal taken to the U.S. Court of 
Appeals for the Federal Circuit by a defeated party in an inter partes 
proceeding may file a notice with the Office, addressed to the Office 
of the General Counsel, within twenty days after the filing of the 
defeated party's notice of appeal to the court (paragraph (b) of this 
section), electing to have all further proceedings conducted as 
provided in section 21(b) of the Act. The notice of election must be 
served as provided in Sec.  2.119.
    (4) In order to avoid premature termination of a proceeding, a 
party who commences a civil action, pursuant to section 21(b) of the 
Act, must file written notice thereof at the Trademark Trial and Appeal 
Board.
* * * * *
    40. Amend Sec.  2.146 by revising paragraphs (c) and (i) to read as 
follows:


Sec.  2.146  Petitions to the Director.

* * * * *
    (c) Every petition to the Director shall include a statement of the 
facts relevant to the petition, the points to be reviewed, the action 
or relief that is requested, and the fee required by Sec.  2.6. Any 
brief in support of the petition shall be embodied in or accompany the 
petition. When facts are to be proved in ex parte cases, proof in the 
form of affidavits or declarations in accordance with Sec.  2.20, and 
any exhibits, shall accompany the petition.
* * * * *

[[Page 15134]]

    (i) Where a petitioner seeks to reactivate an application or 
registration that was abandoned, cancelled or expired because papers 
were lost or mishandled, the Director may deny the petition if the 
petitioner was not diligent in checking the status of the application 
or registration. To be considered diligent, a petitioner must:
    (1) During the pendency of an application, check the status of the 
application every six months between the filing date of the application 
and issuance of a registration;
    (2) After filing an affidavit of use or excusable nonuse under 
section 8 or 71 of the Act, or a renewal application under section 9 of 
the Act, check the status of the registration every six months until 
the petitioner receives notice that the affidavit or renewal 
application has been accepted; and
    (3) If the status check reveals that the Office has not received a 
paper filed by the petitioner, or that the Office has issued an action 
or notice that the petitioner has not received, the petitioner must 
request corrective action.
* * * * *
    41. Revise Sec.  2.151 to read as follows:


Sec.  2.151  Certificate.

    When the Office determines that a mark is registrable, the Office 
will issue a certificate stating that the applicant is entitled to 
registration on the Principal Register or on the Supplemental Register. 
The certificate will state the application filing date, 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 sections 8 and 71 of the Act will accompany the 
certificate.
    42. Revise Sec.  2.171 to read as follows:


Sec.  2.171  New certificate on change of ownership.

    (a) If the ownership of a registered mark changes, the assignee may 
request that a new certificate of registration be issued in the name of 
the assignee for the unexpired part of the original period. The 
assignment must be recorded in the Office, and the request for the new 
certificate must be signed by the assignee and accompanied by the fee 
required by Sec.  2.6(a)(8). If available, the original certificate of 
registration must be submitted.
    (b) When ownership of a registration has changed with respect to 
some, but not all, of the goods and/or services, the registrant(s) may 
file a request that the registration be physically divided into two or 
more separate registrations. The fee required by Sec.  2.6(a)(8) must 
be paid for each new separate registration created by the division, and 
the change of ownership must be recorded in the Office.
    43. Add a new part 7, to read as follows:

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE MADRID 
PROTOCOL

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

Subpart A--General Information


Sec.  7.1  Definitions of terms as used in this part.

    (a) The Act means the Trademark Act of 1946, 60 Stat. 427, as 
amended, codified in 15 U.S.C. 1051 et seq.
    (b) Subsequent designation means a request for extension of 
protection of an international registration to a Contracting Party made 
after international registration.
    (c) The acronym TEAS means the Trademark Electronic Application 
System available online through the Office's web site at: 
www.uspto.gov.
    (d) The term Office means the United States Patent and Trademark 
Office.


Sec.  7.3  Correspondence must be in English.

    All correspondence relating to international applications and 
registrations and requests for extension of protection filed in the 
Office must be in English. The Office will not process correspondence 
that is in a language other than English.


Sec.  7.4  Receipt of correspondence.

    Correspondence relating to international applications and 
registrations and requests for extension of protection transmitted 
electronically will be accorded the date and time on which the complete 
transmission is received in the Office based on Eastern Time. Eastern 
Time means eastern standard time or eastern daylight time, as 
appropriate.


Sec.  7.6  Schedule of U.S. process fees.

    (a) The Office requires the following process fees:
    (1) For certifying an international application based on a single 
basic application or registration, per class--$100.00
    (2) For certifying an international application based on more than 
one basic application or registration, per class--$150.00
    (3) For transmitting a request to record an assignment or 
restriction under Sec.  7.23 or Sec.  7.24+$100.00
    (4) For filing a notice of replacement, per class--$100.00
    (5) For filing an affidavit under section 71 of the Act, per 
class--$100.00
    (6) Surcharge for filing an affidavit under section 71 of the Act 
during the grace period, per class--$100.00
    (7) For transmitting a subsequent designation--$100.00
    (b) The fees required in paragraph (a) of this section must be paid 
in U.S. dollars at the time of filing. See Sec.  1.23 of this chapter 
for acceptable forms of payment and Sec.  1.24 of this chapter for 
payments using a deposit account established in the Office.


Sec.  7.7  Payments of fees to International Bureau.

    (a) The schedule of fees required by the International Bureau and 
fee calculator may be viewed online at: http://www.wipo.int/madrid.
    (b) The following fees required by the International Bureau may be 
paid either directly to the International Bureau or through the Office:
    (1) International application fee;
    (2) Fee for correcting irregularities in an international 
application;
    (3) Subsequent designation fee; and
    (4) Recording fee for an assignment of or restriction to an 
international registration under Sec.  7.23 or Sec.  7.24.
    (c) The fees required in paragraph (b) of this section may be paid 
as follows:
    (1)(i) Directly to the International Bureau by debit to a current 
account with the International Bureau. As proof of payment in this 
case, an applicant or holder's submission to the Office must include 
the International Bureau account number; or
    (ii) Directly to the International Bureau using any other method of 
payment. As proof of payment in this case, an applicant or holder's 
submission to the Office must include the International Bureau receipt 
number for payment of the fees; or
    (2) Through the Office. Fees paid through the Office must be paid 
in U.S. dollars at the time of submission. See Sec.  1.23 of this 
chapter for acceptable forms of payment and Sec.  1.24 of this chapter 
for payments using a deposit account established in the Office.

Subpart B--International Application Originating From the United 
States


Sec.  7.11  Requirements for international application originating from 
the United States.

    (a) The Office will grant a date of receipt to an international 
application that is submitted through TEAS and contains all of the 
following:
    (1) The filing date and serial number of the basic application and/
or the

[[Page 15135]]

registration date and registration number of the basic registration;
    (2) The name and address of the international applicant that are 
identical to the name and address of the applicant or registrant as 
they appear in the basic application or basic registration;
    (3) A reproduction of the mark that is identical to the mark in the 
basic application and/or registration and meets the requirements of 
Sec.  2.52 of this chapter. If the mark in the basic application and/or 
registration is depicted in black and white, the mark in the 
international application must be black and white. If the mark in the 
basic application and/or registration is depicted in color, the mark in 
the international application must be in color;
    (4) A color claim as set out in Sec.  7.12, if appropriate;
    (5) A description of the mark that is identical to the description 
of the mark in the basic application or registration, as appropriate;
    (6) An indication of the type of mark if the mark in the basic 
application and/or registration is a three-dimensional mark, a sound 
mark, a collective mark or a certification mark;
    (7) A list of the goods and/or services that is identical to or 
narrower than the list of goods and/or services in each claimed basic 
application or registration and classified according to the Nice 
Agreement Concerning the International Classification of Goods and 
Services for the Purposes of the Registration of Marks;
    (8) A list of the Contracting Parties designated for an extension 
of protection. If the goods and/or services in the international 
application are not the same for all Contracting Parties, the 
application must include a list of the goods and/or services in the 
international application that pertain to each designated Contracting 
Party;
    (9) The certification fee required by Sec.  7.6, and the 
international application fees for all classes and designated 
Contracting Parties identified in the international application (see 
Sec.  7.7);
    (10) A statement that the applicant is entitled to file an 
international application in the Office, specifying that applicant: is 
a national of the United States; has a domicile in the United States; 
or has a real and effective industrial or commercial establishment in 
the United States. Where an applicant's address is not in the United 
States, the applicant must provide the address of its U.S. domicile or 
establishment; and
    (11) An e-mail address for receipt of correspondence from the 
Office.
    (b) For requirements for certification, see Sec.  7.13.


Sec.  7.12  Claim of color.

    (a) If color is claimed as a feature of the mark in the basic 
application and/or registration, the international applicant must 
include a statement that color is claimed as a feature of the mark and 
set forth the same name(s) of the color(s) claimed in the basic 
application and/or registration. If the basic application and/or 
registration claim color as a feature of the mark, but the mark is 
depicted in black and white, the international application must include 
both a black and white reproduction of the mark and a color 
reproduction of the mark that meet the requirements of Sec.  2.52 of 
this chapter.
    (b) If color is not claimed as a feature of the mark in the basic 
application and/or registration, color may not be claimed as a feature 
of the mark in the international application.


Sec.  7.13  Certification of international application.

    (a) Where an international application contains all the elements 
set forth in Sec.  7.11(a), the Office will certify to the 
International Bureau that the information contained in the 
international application corresponds to the information contained in 
the basic application(s) and/or basic registration(s) at the time of 
certification, and will forward the international application to the 
International Bureau.
    (b) Where an international application does not meet the 
requirements of Sec.  7.11(a), the Office will not certify or forward 
the international application. If the international applicant paid the 
international application fees required by Sec.  7.7 through the 
Office, the Office will refund the international fees. The Office will 
not refund the certification fee.


Sec.  7.14  Correcting irregularities in international application.

    (a) Upon receipt of a notice of irregularities in an international 
application from the International Bureau, the applicant must respond 
to the International Bureau within the period set forth in the notice. 
Failure to file a timely response to a notice of irregularities may 
result in the abandonment of the international application by the 
International Bureau.
    (b) Classification and identification of goods and services. 
Responses to International Bureau notices of irregularities in the 
classification or identification of goods or services in an 
international application must be submitted through the Office for 
forwarding to the International Bureau. The Office will not review the 
response or respond to the irregularities on behalf of the 
international applicant.
    (c) Fees. If the International Bureau notifies an international 
applicant that the fees filed in connection with the international 
application are insufficient or that irregularities in the 
classification of goods or services require additional fees, the 
international applicant must pay the additional fees directly to the 
International Bureau or through the Office for forwarding to the 
International Bureau.
    (d) An international applicant submitting a response or paying 
additional fees to the International Bureau through the Office must use 
TEAS. The International Bureau must receive the response or fees before 
the end of the response period set forth in the International Bureau 
notice, even if the response or payment of fees is sent through the 
Office. To assist the Office in its efforts to timely transmit the 
response or fees to the International Bureau, the response or fees 
should be submitted as soon as possible, at least one month before the 
end of the response period in the International Bureau's notice.
    (e) Other Irregularities. Except for irregularities mentioned in 
paragraphs (b) and (c) of this section, responses to irregularities 
must be filed directly at the International Bureau.

Subpart C--Subsequent Designation Submitted Through the Office


Sec.  7.21  Subsequent designation.

    (a) A subsequent designation may be filed either directly with the 
International Bureau or submitted through the Office.
    (b) The date of receipt in the Office of a subsequent designation 
is the date that the subsequent designation is submitted through TEAS 
and contains all of the following:
    (1) The international registration number;
    (2) The name and address of the holder of the international 
registration;
    (3) A statement that the holder is entitled to file a subsequent 
designation in the Office, specifying that holder: is a national of the 
United States; has a domicile in the United States; or has a real and 
effective industrial or commercial establishment in the United States. 
Where a holder's address is not in the United States, the holder must 
provide the address of its U.S. domicile or establishment;
    (4) A list of goods and/or services that is identical to or 
narrower than the list

[[Page 15136]]

of goods and/or services in the international registration;
    (5) A list of the Contracting Parties designated for an extension 
of protection. If the goods and/or services in the subsequent 
designation are not the same for all the Contracting Parties 
designated, the holder must include a list of the goods and/or services 
covered by the subsequent designation that pertain to each designated 
Contracting Party;
    (6) The U.S. transmittal fee required by Sec.  7.6 and the 
subsequent designation fees required by the International Bureau (Sec.  
7.7); and
    (7) An e-mail address for receipt of correspondence from the 
Office.
    (c) If the subsequent designation is accorded a date of receipt, 
the Office will forward the subsequent designation to the International 
Bureau.
    (d) Correspondence to correct any irregularities in a subsequent 
designation must be made directly with the International Bureau, even 
if the subsequent designation is submitted through the Office. If such 
correspondence is sent to the Office, the Office will not process the 
correspondence.

Subpart D--Recording Changes to International Registration


Sec.  7.22  Recording changes to international registration.

    (a) All requests to record changes to an international registration 
must be filed directly with the International Bureau, except for 
requests to record changes to an international registration under 
Sec. Sec.  7.23 and 7.24. If a request to record an assignment or 
restriction of a holder's right of disposal of an international 
registration meets the requirements of Sec.  7.23 or 7.24, the Office 
will forward the request to the International Bureau.
    (b) Assignments or restrictions of a holder's rights of disposal of 
an international registration must be recorded by the International 
Bureau. Section 10 of the Act and part 3 of this chapter are not 
applicable to such assignments or restrictions.
    (c) When the Office is notified by the International Bureau of an 
assignment or restriction of a holder's right of disposal of an 
international registration with an extension of protection to the 
United States, the Office will take note of the assignment or 
restriction in its records.


Sec.  7.23  Request to record assignment submitted through the Office.

    (a) In limited circumstances, a request to record an assignment of 
an international registration may be submitted through the Office for 
forwarding to the International Bureau. The following conditions must 
apply:
    (1) The assignee cannot obtain the assignor's signature on the 
request to record an assignment; and
    (2) The assignee is a national of the United States, has a domicile 
in the United States, or has a real and effective industrial or 
commercial establishment in the United States.
    (b) The assignee must submit a request to record an assignment 
under paragraph (a) of this section through the Office that includes 
all of the following:
    (1) The international registration number;
    (2) The name and address of the holder of the international 
registration;
    (3) The name and address of the assignee of the international 
registration;
    (4) A statement that the assignee: is a national of the United 
States; has a domicile in the United States; or has a real and 
effective industrial or commercial establishment in the United States. 
Where an assignee's address is not in the United States, the assignee 
must provide the address of its U.S. domicile or establishment;
    (5) A list of the designated Contracting Parties with respect to 
which the international registration has been assigned;
    (6) A list of the goods and/or services in the international 
registration that have been assigned and the designated Contracting 
Parties to which they pertain;
    (7) A description of the interest conveyed; and
    (8) The U.S. transmittal fee required by Sec.  7.6 and the fees 
required by the International Bureau to record the assignment (See 
Sec.  7.7).
    (c) If a request to record an assignment contains all the elements 
set forth in paragraph (b) of this section, the Office will forward the 
request to the International Bureau. Forwarding the request to the 
International Bureau is not a determination by the Office of the 
validity of the assignment or the effect that the assignment has on the 
title of the international registration.
    (d) If the request fails to contain all of the elements set forth 
in paragraph (b) of this section, the Office will not forward the 
request. The Office will notify the assignee(s) of the refusal and the 
reason(s) for the refusal.
    (e) Except for those assignments meeting the conditions set forth 
in paragraph (a) of this section, requests to record assignments may 
not be submitted through the Office.


Sec.  7.24  Request to record security interest or other restriction of 
holder's rights of disposal submitted through the Office.

    (a) In limited circumstances, a request to record a security 
interest or other restriction of a holder's right to dispose of an 
international registration may be submitted through the Office for 
forwarding to the International Bureau. The following conditions must 
apply:
    (1) The restriction is the result of an agreement between the 
holder of the international registration and the party restricting the 
holder's right of disposal and is not the result of a court order; and
    (2) The signature of the holder of the international registration 
cannot be obtained for the request to record the restriction.
    (b) The party who obtained a restriction of the holder's right of 
disposal must submit a request to record the restriction under 
paragraph (a) of this section through the Office that includes all the 
following:
    (1) The international registration number;
    (2) The name and address of the holder of the international 
registration;
    (3) The name and address of the party who holds the restriction;
    (4) A statement that the party who submitted the request: is a 
national of the United States; has a domicile in the United States; or 
has a real and effective industrial or commercial establishment in the 
United States. Where a party's address is not in the United States, the 
party must provide the address of its U.S. domicile or establishment;
    (5) A summary of the main facts concerning the restriction; and
    (6) A list of the Contracting Parties designated in the 
international registration to which the restriction applies.
    (c) If a request to record a restriction contains all of the 
elements set forth in paragraph (b) of this section, the Office will 
forward the request to the International Bureau. Forwarding the request 
to the International Bureau is not a determination by the Office of the 
validity of the restriction or the effect that the restriction has on 
the holder's right to dispose of the international registration.
    (d) If the request fails to contain all the elements set forth in 
paragraph (b) of this section, the Office will not forward the request. 
The Office will notify the party who submitted the request of the 
refusal and the reason(s) for the refusal.
    (e) Except for restrictions meeting the conditions set forth in 
paragraph (a) of this section, restrictions on a holder's right to 
dispose of an international

[[Page 15137]]

registration may not be submitted through the Office.

Subpart E--Extension of Protection to the United States


Sec.  7.25  Applicability of part 2 to extension of protection.

    (a) Except for Sec. Sec.  2.130, 2.131, 2.160 through 2.166, 2.168, 
and 2.181 through 2.186, all sections in part 2 of this chapter apply 
to a request for extension of protection of an international 
registration to the United States, including sections related to 
proceedings before the Trademark Trial and Appeal Board, unless stated 
otherwise.
    (b) For purposes of examination, a request for an extension of 
protection to the United States is referred to as an application under 
section 66(a) of the Act, and references to applications and 
registrations in part 2 of this chapter include extensions of 
protection to the United States.
    (c) Upon registration, an extension of protection to the United 
States is referred to as a registration or a registered extension of 
protection.


Sec.  7.26  Filing date of extension of protection for purposes of 
examination in the Office.

    (a) If a request for extension of protection of an international 
registration to the United States is made in an international 
application and the request includes a declaration of a bona fide 
intention to use the mark in commerce, the filing date of the extension 
of protection to the United States is the international registration 
date.
    (b) If a request for extension of protection of an international 
registration to the United States is made in a subsequent designation 
and the request includes a declaration of a bona fide intention to use 
the mark in commerce, the filing date of the extension of protection to 
the United States is the International Bureau date of recording of the 
subsequent designation.


Sec.  7.27  Priority claim of extension of protection for purposes of 
examination in the Office.

    An extension of protection of an international registration to the 
United States is entitled to a claim of priority under section 67 of 
the Act if:
    (a) The request for extension of protection contains a claim of 
priority;
    (b) The request for extension of protection specifies the filing 
date, serial number and the country of the application that form the 
basis for the claim of priority; and
    (c) The date of the international registration or the date of 
recording of the subsequent designation at the International Bureau of 
the request for extension of protection to the United States is not 
later than six months after the filing date of the application that 
forms the basis for the claim of priority.


Sec.  7.28  Replacement of U.S. registration by registered extension of 
protection.

    (a) A registered extension of protection shall have the same rights 
accrued to a previously issued U.S. registration if:
    (1) Both registrations are owned by the same person and identify 
the same mark; and
    (2) All of the goods and/or services listed in the U.S. 
registration are also listed in the registered extension of protection.
    (b) The holder of an international registration with an extension 
of protection to the United States may file a request to note 
replacement of the U.S. registration with the extension of protection. 
If the request contains all of the following, the Office will take note 
of the replacement in its automated records:
    (1) The serial number or registration number of the extension of 
protection;
    (2) The registration number of the replaced U.S. registration; and
    (3) The fee required by Sec.  7.6.
    (c) If the request to note replacement is denied, the Office will 
notify the holder of the reason(s) for refusal.


Sec.  7.29  Effect of replacement on U.S. registration.

    A U.S. registration that has been replaced by a registered 
extension of protection under section 74 of the Act and Sec.  7.28 will 
remain in force, unless cancelled, expired or surrendered, as long as:
    (a) The owner of the replaced U.S. registration continues to file 
affidavits or declarations of use in commerce or excusable nonuse under 
section 8 of the Act; and
    (b) The replaced U.S. registration is renewed under section 9 of 
the Act.


Sec.  7.30  Effect of cancellation or expiration of international 
registration.

    When the International Bureau notifies the Office of the 
cancellation or expiration of an international registration, in whole 
or in part, the Office shall cancel, in whole or in part, the 
corresponding pending or registered extension of protection to the 
United States. The date of cancellation of an extension of protection 
or relevant part shall be the date of cancellation or expiration of the 
corresponding international registration or relevant part.


Sec.  7.31  Requirements for transformation of an extension of 
protection to the United States into a U.S. application.

    (a) If the International Bureau cancels an international 
registration in whole or in part, under Article 6(4) of the Madrid 
Protocol, the holder of that international registration may file a 
request to transform the corresponding pending or registered extension 
of protection to the United States into an application under section 1 
or 44 of the Act.
    (b) The holder of the international registration must file a 
request for transformation through TEAS within three months of the date 
of cancellation of the international registration and include:
    (1) The serial number or registration number of the extension of 
protection to the United States;
    (2) The name and address of the holder of the international 
registration;
    (3) The application filing fee for at least one class of goods or 
services required by Sec.  2.6 of this chapter; and
    (4) An e-mail address for receipt of correspondence from the 
Office.
    (c) If the request for transformation contains all of the elements 
set forth in paragraph (b) of this section, the extension of protection 
shall be transformed into an application under section 1 or 44 of the 
Act and accorded the same filing date and the same priority that was 
accorded to the extension of protection.
    (d) The application under section 1 or 44 of the Act that results 
from a transformed extension of protection will be examined under part 
2 of this chapter.
    (e) A request for transformation that fails to contain all of the 
elements set forth in paragraph (b) of this section will not be 
processed.

Subpart F--Affidavit Under Section 71 of the Act for Extension of 
Protection to the United States


Sec.  7.36  Affidavit or declaration of use in commerce or excusable 
nonuse required to avoid cancellation of an extension of protection to 
the United States.

    (a) Subject to the provisions of section 71 of the Act, a 
registered extension of protection shall remain in force for the term 
of the international registration upon which it is based unless the 
international registration expires or is cancelled by the International 
Bureau.
    (b) During the following time periods, the holder of an 
international registration must file an affidavit or declaration of use 
or excusable nonuse,

[[Page 15138]]

or the registered extension of protection will be cancelled:
    (1) On or after the fifth anniversary and no later than the sixth 
anniversary after the date of registration; and
    (2) Within the six-month period preceding the end of each ten-year 
period after the date of registration, or the three-month grace period 
immediately following, with payment of the grace period surcharge 
required by section 71(a)(2)(B) of the Act and Sec.  7.6.


Sec.  7.37  Requirements for a complete affidavit or declaration of use 
in commerce or excusable nonuse.

    A complete affidavit or declaration under section 71 of the Act 
must:
    (a) Be filed by the holder of the international registration within 
the period set forth in Sec.  7.36(a);
    (b) Include a statement that is signed and verified (sworn to) or 
supported by a declaration under Sec.  2.20 of this chapter by a person 
properly authorized to sign on behalf of the holder, attesting to the 
use in commerce or excusable nonuse of the mark within the period set 
forth in section 71 of the Act. The verified statement must be executed 
on or after the beginning of the filing period specified in Sec.  
7.36(a). A person who is properly authorized to sign on behalf of the 
holder is:
    (1) A person with legal authority to bind the holder; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the holder; or
    (3) An attorney as defined in Sec.  10.1(c) of this chapter who has 
an actual written or verbal power of attorney or an implied power of 
attorney from the holder.
    (c) Include the U.S. registration number;
    (d)(1) Include the fee required by Sec.  7.6 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 71(a)(2)(B) of the Act, include the grace period 
surcharge per class required by Sec.  7.6;
    (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. If the required fee(s) are 
not submitted within the time period set out in the Office action 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.  7.37(f)(2);
    (2) Specify the goods or services being deleted from the 
registration, if the affidavit or declaration covers less than all the 
goods or services or less than all the classes in 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; and
    (g) Include a specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
Sec.  7.37(f)(2). The specimen must meet the requirements of Sec.  2.56 
of this chapter.


Sec.  7.38  Notice to holder of extension of protection.

    The registration certificate for an extension of protection to the 
United States includes a notice of the requirement for filing the 
affidavit or declaration of use or excusable nonuse under section 71 of 
the Act. However, the affidavit or declaration must be filed within the 
time period required by section 71 of the Act regardless of whether 
this notice is received.


Sec.  7.39  Acknowledgment of receipt of affidavit or declaration of 
use in commerce or excusable nonuse.

    (a) The Office will issue a notice that states whether an affidavit 
or declaration of use in commerce or excusable nonuse is acceptable, 
and if the affidavit or declaration is refused as unacceptable, the 
reasons for refusal.
    (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 71(a) of the Act, whichever is later. The 
Office will cancel the extension of protection if no response is filed 
within this time period.


Sec.  7.40  Petition to Director 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 
Director, unless the examiner directs otherwise. See Sec.  7.39(b) for 
the deadline for responding to an examiner's Office action.
    (b) If the examiner maintains the refusal of the affidavit or 
declaration, the holder may file a petition to the Director to review 
the examiner's action. 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.
    (c) A decision by the Director is necessary before filing an appeal 
or commencing a civil action in any court.

Subpart G--Renewal of International Registration and Extension of 
Protection


Sec.  7.41  Renewal of international registration and extension of 
protection.

    (a) Any request to renew an international registration and its 
extension of protection to the United States must be made at the 
International Bureau in accordance with Article 7 of the Madrid 
Protocol.
    (b) A request to renew an international registration or extension 
of protection to the United States submitted through the Office will 
not be processed.

    Dated: March 21, 2003.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 03-7392 Filed 3-27-03; 8:45 am]
BILLING CODE 3510-16-P