[Federal Register Volume 73, Number 222 (Monday, November 17, 2008)]
[Rules and Regulations]
[Pages 67759-67776]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-27222]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2, 3, 6 and 7

[Docket No. PTO-T-2005-0018]
RIN 0651-AB89


Miscellaneous Changes to Trademark Rules of Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'') is 
amending the Trademark Rules of Practice to clarify certain 
requirements for applications, intent to use documents, amendments to 
classification, requests to divide, and Post Registration practice; to 
modernize the language of the rules; and to make other miscellaneous 
changes. For the most part, the rule changes are intended to codify 
existing practice, as set forth in the Trademark Manual of Examining 
Procedure (``TMEP'').

DATES: This rule is effective January 16, 2009.

FOR FURTHER INFORMATION: Contact Mary Hannon, Office of the 
Commissioner for Trademarks, by telephone at (571) 272-9569.

SUPPLEMENTARY INFORMATION: A proposed rule was published in the Federal 
Register on June 12, 2008 at 73 FR 33356, and in the Official Gazette 
on July 8, 2008. The Office received comments from one law firm and one 
organization. These comments are posted on the Office's Web site at 
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/tm_comments2008aug20/index.htm, and are addressed below.
    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. References to ``TMEP'' or ``Trademark Manual of Examining 
Procedure'' refer to the 5th edition, September 2007. References to the 
``TBMP'' or ``Trademark Trial and Appeal Board Manual of Procedure'' 
refer to the 2nd edition, Rev. 1, March 12, 2004.
    Where appropriate, the Office has reworded or reorganized the rules 
for clarity, and added headings to facilitate navigation through the 
rules.
    On August 14, 2008, the Office published a final rule that, inter 
alia, removed Sec. Sec.  10.14 and 10.18 of this chapter and replaced 
them with new Sec. Sec.  11.14 and 11.18; added a definition of 
``attorney'' to Sec.  11.1 of this chapter; and changed cross-
references in several of the rules in parts 2 and 7 of this chapter. 
The rule change was effective September 15, 2008. See notice at 73 FR 
47650 (Aug. 14, 2008). The cross-references in this notice have been 
changed accordingly.

Applications for Registration

    The Office is amending Sec.  2.21(a) to require that an application 
under section 1 or section 44 of the Trademark Act must be in the 
English language to receive a filing date.
    Comment: One comment requested clarification as to whether the rule 
applies to applications under section 66(a) of the Trademark Act.
    Response: The preamble of Sec.  2.21 explicitly states that the 
rule applies only to ``an application under section 1 or section 44 of 
the Act.'' In a section 66(a) application (i.e., a request for 
extension of protection of an international registration to the United 
States pursuant to the Madrid Protocol), the minimum filing 
requirements are set forth in section 66(b) of the Act, and compliance 
with these requirements is determined by the International Bureau of 
the World Intellectual Property Organization (``IB'') prior to sending 
to the Office the request for extension of protection to the United 
States. See TMEP section 1904.01(b) for further information about the 
filing date of a section 66(a) application.
    The Office is removing Sec.  2.21(c) because it is unnecessary. 
While it remains true that applicants who file on paper may resubmit 
the application documents and receive a new filing date as of the date 
of resubmission, it is unnecessary to say so in a rule.
    The Office is amending Sec.  2.23(a)(2), which requires that a TEAS 
Plus applicant continue to receive communications from the Office by 
electronic mail during the pendency of the application, to add a 
requirement that a TEAS Plus applicant maintain a valid e-mail 
correspondence address in order to maintain TEAS Plus status. If the e-
mail address changes, the applicant must notify the Office of the new 
e-mail address. If an applicant chooses to receive correspondence on 
paper, the applicant will have to pay the processing fee required by 
Sec. Sec.  2.6(a)(1)(iv) and 2.23(b).
    The Office is amending Sec.  2.32(a)(3)(iii) to indicate that the 
requirement for inclusion of the names and citizenship of the general 
partners in an application by a partnership applies only to domestic 
partnerships. Similarly, the Office is adding Sec.  2.32(a)(3)(iv) to 
provide that if the applicant is a domestic joint venture,

[[Page 67760]]

the application must include the names and citizenship of all active 
members of the joint venture. These requirements are consistent with 
TMEP section 803.03(b). Because the Office does not track the varying 
legal effects of partnership and joint venturer status in foreign 
countries, and the relevance of this additional information has not 
been established, this requirement does not apply to foreign 
partnerships or foreign joint ventures.
    Comment: Though noting that these requirements are consistent with 
the long-standing past practice of the Office, one commenter asserted 
that the requirements to set forth the names and citizenship of general 
partners and joint venturers impose an unfair burden of disclosure on 
domestic applicants because it does not apply to foreign partnerships.
    Response: The Office is considering whether current practice 
regarding the requirement for the names and citizenship of general 
partners and active members of joint venturers should be changed, and 
will issue a new proposed rule if necessary. However, the Office 
believes it appropriate to incorporate its long-standing practice into 
the rules at this time.
    The Office is amending Sec.  2.32(a)(6) to delete the word ``and.'' 
The Office is amending Sec.  2.32(a)(8) to change a period to a 
semicolon.
    New Sec.  2.32(a)(9) provides that if a mark includes non-English 
wording, the applicant must submit an English translation of that 
wording. New Sec.  2.32(a)(10) provides that if the mark includes non-
Latin characters, the applicant must submit a transliteration of those 
characters and either a translation of the corresponding non-English 
word(s) or a statement that the transliterated term has no meaning in 
English. This is consistent with the long-standing practice of the 
Office. TMEP section 809 et seq.
    Comment: One commenter noted ``inconsistent treatment requiring 
translations between non-English wording and non-Latin characters,'' 
and asked the Office to ``consider whether the rules should also 
require an applicant to state whether non-English wording has no direct 
English meaning (e.g., idiomatic expressions).''
    Response: Section 2.32(a)(9) as written requires applicants to set 
forth both the direct literal translation of foreign wording and the 
meaning of foreign idiomatic expressions, and thus there is no 
inconsistency on this point. The requirement for translation of ``non-
English wording'' encompasses only terms that have meaning in a foreign 
language, and does not apply to coined terms. In cases where a term has 
no meaning in a foreign language, it is often unnecessary to submit any 
statement regarding the significance of the term. However, in marks 
that include non-Latin characters, a transliteration is always 
necessary. Where a transliteration must be provided, the Office 
requires that the applicant also indicate whether the transliterated 
term has meaning in a foreign language.
    The Office is amending Sec.  2.33(b)(1) to remove the requirement 
that an application include a verified statement that the applicant 
``has adopted and is using the mark shown in the accompanying 
drawing.'' This language is not required by statute and is deemed 
unnecessary. The rule as amended requires an allegation that ``the mark 
is in use in commerce.''
    The Office is amending Sec. Sec.  2.34(a)(1)(i), (a)(2), (a)(3)(i), 
and (a)(4)(ii) to change ``must allege'' to ``must also allege.'' This 
clarifies that the requirement for an allegation of current use or bona 
fide intention to use the mark in commerce applies to verifications 
filed after the application filing date.
    The Office is adding Sec.  2.34(a)(1)(v) to provide that if more 
than one item of goods or services is specified in a section 1(a) 
application, the dates of use need be for only one of the items 
specified in each class, provided that the particular item to which the 
dates apply is designated. This requirement for section 1(a) 
applications previously appeared in Sec.  2.33(a)(2), but was 
inadvertently removed effective October 30, 1999, by the final rule 
published at 64 FR 48900 (Sept. 8, 1999). This requirement is 
consistent with the current requirements for allegations of use under 
Sec. Sec.  2.76(c) and 2.88(c).
    Comment: The Trademark Electronic Application System (``TEAS'') 
forms for filing applications and allegations of use do not provide for 
disclosure of the goods/services to which the date of first use 
applies, and should be updated accordingly.
    Response: It is possible to designate the goods or services to 
which the dates of use apply in the current TEAS forms. In a TEAS Plus 
application, or a regular TEAS application in which the applicant 
enters the goods/services using the Office's on-line Acceptable 
Identification of Goods and Services Manual (``USPTO ID Manual''), 
different dates of use can be provided for any particular item (after 
assigning a section 1(a) filing basis to the item and clicking on the 
``1(a)'' link for that item and entering the relevant information). If 
the applicant uses the free-text entry approach to identify the goods/
services in a regular TEAS application, the on-line instructions advise 
the applicant to parenthetically indicate the item to which the dates 
apply (e.g., ``pants, shirts (02/02/2000), shoes''). Alternatively, the 
applicant can use the Miscellaneous Statement field of the Additional 
Statement section of the application form to enter the information. In 
the Allegation of Use form, the applicant may enter the information in 
the existing free-text field for describing the submitted specimen 
(e.g., ``The specimen consists of a label. The stated dates of first 
use apply specifically to shirts.'').
    The Office is amending Sec. Sec.  2.44(b) and 2.45(b), which 
pertain to collective and certification marks, to add a reference to 
section 66(a) applications. This corrects an oversight.
    The Office is amending Sec.  2.47(a) to remove the requirement for 
a specific allegation that a mark has been in ``lawful'' use in 
commerce in an application for registration on the Supplemental 
Register. Because the definition of ``commerce'' in section 45 of the 
Trademark Act is ``all commerce which may lawfully be regulated by 
Congress,'' the Office presumes that an applicant who alleges that 
``the mark is in use in commerce'' is claiming lawful use. The Office 
generally questions the lawfulness of the alleged use in commerce only 
where the record shows a clear violation of law, such as the sale or 
transportation of a controlled substance. TMEP section 907.
    The Office is also removing the requirement in Sec.  2.47(a) that 
the applicant specify the type of commerce in which the mark is used. 
Because the definition of ``commerce'' in section 45 of the Act is 
``all commerce which may lawfully be regulated by Congress,'' the 
Office presumes that a registrant who alleges that the mark is in use 
in commerce is alleging that the mark is in use in a type of commerce 
that Congress may regulate. The Office amended the Trademark Rules of 
Practice to remove the requirement for a specification of the type of 
commerce in applications for registration under section 1(a) of the 
Act, allegations of use in applications under section 1(b) of the Act, 
and affidavits under sections 8 and 15 of the Act, effective October 
30, 1999 (see notice at 64 FR 48900 (Sept. 8, 1999)), but inadvertently 
overlooked Sec. Sec.  2.47(a) and 2.153.
    The Office is adding Sec.  2.48, providing that the Office does not 
issue duplicate registrations. If two applications on the same register 
would result in registrations that are exact duplicates, the Office 
will permit only one application to mature into registration,

[[Page 67761]]

and will refuse registration in the other application. This codifies 
the long-standing practice of the Office. TMEP section 703. The Office 
will normally refuse registration in the later-filed application. The 
applicant may overcome the refusal by abandoning one of the 
applications or surrendering the registration.
    The Office is amending Sec.  2.52(b) to provide that special form 
drawings of marks that do not include color ``should'' show the mark in 
black on a white background, rather than that the drawing ``must'' show 
the mark in black on a white background. This gives examining attorneys 
discretion to accept a drawing that shows the mark in white on a black 
background, if this will more accurately depict the mark.
    The Office is amending Sec.  2.52(b)(1) to change the heading 
``Color marks'' to ``Marks that include color.'' This corrects an 
error. ``Color marks'' are marks that consist solely of one or more 
colors used on particular objects, and Sec.  2.52(b)(1) applies to all 
marks that include color.
    The Office is amending Sec.  2.53(a) to remove the reference to 
submission of a digitized image of a standard character mark as a 
drawing in a TEAS application. This option no longer exists. An 
applicant who wants to apply for a standard character mark through TEAS 
must use the default setting within the form, namely, the selected 
button for ``Standard Characters,'' and type the characters comprising 
the mark in the appropriate field on the TEAS form. TEAS generates the 
drawing. The Office is combining Sec. Sec.  2.53(a)(1) and (2), because 
the requirements for standard character drawings in TEAS and TEAS Plus 
applications are now identical.
    The Office is amending Sec.  2.56(b)(1) to add a reference to 
``displays associated with the goods.'' This conforms the rule with the 
definition of ``use in commerce'' in section 45 of the Act.
    The Office is amending Sec.  2.56(d)(2) to add a provision that 
where an applicant files a paper specimen that exceeds the size 
requirements of paragraph (d)(1), and the Office creates a digital 
facsimile copy of the specimen, the Office may destroy the original 
bulky specimen. This is consistent with current practice. TMEP section 
904.02(b).
    The Office is amending Sec.  2.56(d)(4) to provide that specimens 
filed through TEAS may be in .pdf format. This provides TEAS filers 
with an additional option for filing specimens, and is consistent with 
current practice.
    The Office is amending Sec.  2.62 and its heading to add a 
requirement that a response to an Office action be signed by the 
applicant, someone with legal authority to bind the applicant (e.g., a 
corporate officer or general partner of a partnership), or a 
practitioner who meets the requirements of Sec.  11.14 (``qualified 
practitioner''). This is consistent with TMEP section 712.01.
    The Office is amending Sec.  2.64(c)(1) to state that the filing of 
an amendment to allege use does not extend the deadline for filing a 
response to an outstanding Office action, an appeal to the Trademark 
Trial and Appeal Board (``TTAB''), or a petition to the Director. This 
is consistent with current practice. TMEP section 1104.
    The Office is amending Sec.  2.65(a) to add a reference to a notice 
of appeal as a response that avoids abandonment of an application. This 
is consistent with section 12(b) of the Act.
    The Office is revising Sec.  2.73 to provide that only an 
application that includes section 1(a) of the Trademark Act as a filing 
basis, or for which an acceptable allegation of use under Sec.  2.76 or 
Sec.  2.88 has been filed, may be amended to seek concurrent use 
registration. The rule currently provides that applications under 
section 44 or section 66(a) of the Act may be amended to recite 
concurrent use. However, because section 2(d) of the Act requires 
concurrent lawful use in commerce by the parties to a concurrent use 
proceeding, the Office deems it inappropriate to allow amendment to 
seek concurrent use absent allegations and evidence of use in commerce. 
The Office is also adding a statement to Sec.  2.99(g) that 
applications based solely on section 44 or section 66(a) are not 
subject to concurrent use registration proceedings.
    The Office is revising Sec.  2.74 to modernize the language and to 
add a provision that an amendment to an application must be signed by 
the applicant, someone with legal authority to bind the applicant 
(e.g., a corporate officer or general partner of a partnership), or a 
qualified practitioner. This is consistent with TMEP section 605.02.

Intent To Use

    The Office is amending Sec.  2.76(d) to provide that an amendment 
to allege use (``AAU'') should be captioned ``Allegation of Use'' 
rather than ``amendment to allege use.'' This is consistent with the 
language on the Office's TEAS form. The term ``allegation of use'' 
encompasses both AAUs under Sec.  2.76 and statements of use (``SOUs'') 
under Sec.  2.88. The principal difference between AAUs and SOUs is the 
time of filing, and the same TEAS form is used for both filings. The 
rule merely sets forth the preferred title; the Office will still 
accept documents titled ``amendment to allege use'' or ``statement of 
use.''
    The Office is amending Sec.  2.77 to add a provision that 
amendments deleting a basis in a multiple-basis application, notices of 
change of attorney, and notices of change of address may be entered in 
a section 1(b) application during the period between the issuance of 
the notice of allowance and the submission of a statement of use. This 
is consistent with current practice. TMEP section 1107.
    The Office is amending Sec.  2.88(b)(1)(ii) to clarify that the 
dates of use specified in a statement of use must pertain to the goods 
or services identified in the notice of allowance, and that where an 
applicant claims section 1(a) for some goods/services in a class and 
section 1(b) for other goods/services in the same class, the statement 
of use must include dates for the section 1(b) goods/services.
    The Office is amending Sec.  2.88(b)(3) to provide that the 
applicant must pay a filing fee sufficient to cover at least one class 
within the statutory time for filing the statement of use, or the 
application will be abandoned. If the applicant submits a fee 
insufficient to cover all the classes in a multiple-class application, 
the applicant must specify the class(es) to be abandoned. If the 
applicant submits a fee sufficient to pay for at least one class, but 
insufficient to cover all the classes, and the applicant has not 
specified the class(es) to which the fee applies, the Office will issue 
a notice granting the applicant additional time to submit the fee(s) 
for the remaining class(es), or specify the class(es) to be abandoned. 
If the applicant does not submit the required fee(s) or specify the 
class(es) to be abandoned within the set time period, the Office will 
apply the fees paid, beginning with the lowest numbered class(es), in 
ascending order. The Office will delete the goods/services in the 
remaining class(es) not covered by the fees submitted. This is 
consistent with current practice.
    The Office is amending Sec.  2.88(d) to provide that an SOU should 
be captioned ``Allegation of Use'' rather than ``statement of use.'' 
This is consistent with the amendment to Sec.  2.76(d), discussed 
above.
    The Office is amending Sec.  2.88(i)(2) to remove the provision 
that if any goods or services specified in the notice of allowance are 
omitted from the identification of goods or services in the SOU, the 
examining attorney will question the discrepancy and permit the 
applicant to reinsert the omitted goods/services, and substitute a 
provision that the Office will delete the omitted goods/services from 
the application and will

[[Page 67762]]

not permit the applicant to reinsert them. Currently, if the applicant 
omits goods/services identified in the notice of allowance from a paper 
SOU, but the applicant has not indicated an intention to delete those 
goods/services from the application or filed a request to divide the 
application, the examining attorney will contact the applicant to 
confirm that the applicant intends to delete the omitted goods/
services, and will permit the applicant to amend the SOU to claim use 
on or in connection with the omitted goods/services. However, when an 
SOU is filed electronically, the TEAS form requires the applicant to 
expressly indicate an intention to delete any omitted goods/services/
class(es), or include them within a separately filed request to divide. 
Therefore, if any of the goods/services identified in the notice of 
allowance do not appear in the identification of goods/services in a 
TEAS SOU, the examining attorney does not question the discrepancy and 
the applicant may not reinsert the omitted goods/services. TMEP section 
1109.13. These inquiries concerning paper SOUs have sometimes caused 
unnecessary delay in applications after the applicant intentionally 
omitted goods/services. Therefore, the Office is changing its practice 
and will discontinue questioning goods/services that are omitted from 
paper SOUs. Under the new rule, the practice with paper SOUs would 
conform with the current practice for electronically filed SOUs. 
Applicants must set forth (or incorporate by reference) the goods/
services on or in connection with which the mark is in use. This is 
consistent with the Office's long-standing practice with respect to 
requests for extensions of time to file a statement of use, set forth 
in Sec.  2.89(f).
    The Office is revising Sec. Sec.  2.89(a)(2) and (b)(2) to add a 
provision that if an applicant timely submits a fee sufficient to pay 
for at least one class, but insufficient to cover all the classes, and 
the applicant has not specified the class(es) to which the fee applies, 
the Office will issue a notice granting the applicant additional time 
to submit the fee(s) for the remaining class(es), or specify the 
class(es) to be abandoned. If the applicant does not submit the 
required fee(s) or specify the class(es) to be abandoned within the set 
time period, the Office will apply the fees paid, beginning with the 
lowest numbered class(es), in ascending order. The Office will delete 
the remaining goods/services not covered by the fees submitted. This is 
consistent with current practice. TMEP section 1108.02(c).
    Comment: Additional time is ``undefined.'' No time period is set 
forth in the rule or TMEP.
    Response: The Office will amend TMEP section 1108.02(c) to indicate 
that the applicant will be given thirty days in which to cure the fee 
deficiency in an extension request that includes a fee sufficient to 
pay for at least one class, but insufficient to cover all the classes.

Amendments to Classification

    The Office is amending Sec.  2.85(a) to add a reference to 
amendments to adopt international classification.
    The Office is combining Sec. Sec.  2.85(b) and (c), pertaining to 
the old United States classification system, and adding a reference to 
amendments to adopt international classification.
    The Office is redesignating Sec.  2.85(f), pertaining to 
certification marks and collective membership marks, as Sec.  2.85(c), 
and adding a statement that the classes set forth in Sec. Sec.  6.3 and 
6.4 do not apply to applications based on section 66(a) of the 
Trademark Act and registered extensions of protection. This is 
consistent with current practice. TMEP section 1904.02(b). Classes A, 
B, and 200 are from the old United States classification system that 
the United States still uses to classify certification and collective 
membership marks, but are not included in the international classes 
under the Nice Agreement Concerning the International Classification of 
Goods and Services for the Purposes of the Registration of Marks 
(``Nice Agreement''). Therefore, these classes do not apply to section 
66(a) applications and registered extensions of protection, in which 
the IB determines classification. The Office is similarly amending 
Sec. Sec.  6.3 and 6.4, indicating that these sections apply only to 
applications based on sections 1 and 44 of the Trademark Act and 
registrations resulting from such applications.
    Current Sec.  2.85(d), which now provides that renewals filed on 
registrations issued under a prior classification system are processed 
on the basis of that system, is redesignated as Sec.  2.183(f), and 
amended to add an exception for registrations that have been amended to 
adopt international classification pursuant to Sec.  2.85(e)(3).
    New Sec.  2.85(d) provides that in an application under section 
66(a) of the Act or registered extension of protection, the 
classification cannot be changed from the classification that the IB 
has assigned, classes cannot be added, and goods or services cannot be 
transferred from one class to another in a multiple-class application. 
This is consistent with current practice. TMEP sections 1401.03(d) and 
1904.02(b).
    Comment: One comment requests that the Office clarify and/or 
reconsider this change. The commenter notes that in some instances 
``the applicant is seeking to identify a good/service that was not the 
subject of classification by the IB.'' For example, if the 
international registration covered ``nutritional aids'' in Class 30, 
the applicant could not amend to ``nutritional supplements,'' because 
the United States classifies nutritional supplements in Class 5. This 
``works a complete forfeiture of rights'' as to the goods or services 
that must be deleted from Class 30 in the section 66(a) application.
    Response: Under Article 3(2) of the Madrid Protocol, the IB 
controls classification in an international registration. Under section 
70(a) of the Trademark Act and Articles 6(3) and 6(4) of the Protocol, 
a section 66(a) application and any resulting registration remains part 
of and dependent upon the international registration. Since the 
international registration is limited to those classes that the IB has 
assigned, no legal basis exists for registration of the mark as to 
goods/services that fall outside these classes under U.S. standards. 
Upon notification of the final grant of protection, the IB would 
ultimately refuse any change in classification made during examination 
of a section 66(a) application. Therefore, the international 
classification of goods/services in a section 66(a) application cannot 
be changed from the classification that the IB has assigned.
    While the IB controls classification, the same standards of 
specificity used in examining applications under sections 1 and 44 of 
the Act govern the propriety of the identification of goods/services in 
a section 66 (a) application. Section 68(a) of the Act; Madrid Protocol 
Article 5(1). Accordingly, if the initial identification of goods/
services in a section 66(a) application is definite but misclassified 
under U.S. standards, the Office will accept the identification in the 
IB-assigned class. However, if the initial identification of goods/
services is not definite, the classification cannot be changed and the 
scope of the identification for purposes of permissible amendment is 
limited by the classification that the IB has assigned. See TMEP 
section 1904.02(b) and Examination Guide 3-08, Examination Procedures 
for Identifications of Goods and Services in Applications under 
Trademark Act Section 66(a) pursuant to the Madrid Protocol (July 2, 
2008), available on the Office's Web site at http://

[[Page 67763]]

www.uspto.gov/web/offices/tac/notices/examguide3-08.htm.
    Thus, in the commenter's example above, if the international 
registration covered ``nutritional aids'' in Class 30, the applicant 
could not amend to ``nutritional supplements,'' because ``nutritional 
aids'' is an indefinite identification that can only be amended within 
the scope of the IB-designated Class 30. However, if the international 
registration covered ``nutritional supplements'' in Class 30, the 
Office would permit registration in Class 30, even though the Office 
classifies these goods in Class 5. No rights would be forfeited. Thus, 
international applicants who plan to seek an extension of protection to 
the United States can avoid forfeiting rights in a particular item by 
reviewing the USPTO ID Manual before filing the request for extension 
of protection of an international registration to the United States. 
The applicant can then include language in the international 
application, or by entry of a limitation of the goods or services 
extended to the United States, that will be acceptable in the United 
States. Alternatively, the applicant can seek registration in the 
United States under a different basis, such as section 1(b) or section 
44. Regarding limitations, see TMEP sections 1904.03(g) and 1904.15, 
and Examination Guide 3-08, sections IV et seq.
    Comment: The Office should consider implementing a pseudo-
classification system so that the Office's automated search system 
would show the classes that the Office considers to be ``correct'' in 
cases where the classification designated by the IB differs from that 
of the Office. This would permit all Madrid applicants to amend the 
classification of goods/services in the same way non-Madrid filers 
presently do, and retain the full scope of protection afforded by 
registration. This would also ensure that a product or service that is 
``misclassified'' by the IB is discovered in a search of Office 
records.
    Response: The Office is developing such a system, to ensure that 
relevant marks in section 66(a) applications will be found in a search 
of Office records, even if the IB and USPTO classifications differ. 
However, that does not change the fact that no legal basis exists for 
registration of the mark in the United States as to goods/services that 
do not fall within the class(es) that the IB has assigned. Thus, even 
if a pseudo-classification system is implemented for search purposes, 
amendment of the classification in a section 66(a) application will 
still be prohibited.
    Comment: Since there are already situations where the 
classification in section 66(a) applications and registered extensions 
of protection is ``wrong,'' due to the Office's practice of accepting 
definite identifications that are misclassified under U.S. standards, 
the Office should also permit amendment of indefinite identifications 
within the class assigned by the IB, even if that class is incorrect 
under U.S. standards.
    Response: When a particular product or service identified in an 
international application could be classified in more than one class, 
but only one of the applicable classes has been indicated, the IB 
assumes ``that the reference is only to the product or service falling 
in the identified class.'' Guide to the International Registration of 
Marks under the Madrid Agreement and Protocol, Para. B.II.23.02 (Jan. 
2008), available on the IB Web site at http://www.wipo.int/madrid/en/guide/index.html. Therefore, the Office believes that the scope of 
permissible amendment of an indefinite identification must be limited 
by the IB-assigned class. Furthermore, the practice of accepting 
identifications that are misclassified under U.S. standards must be 
limited to the extent possible.
    The Office is removing Sec.  2.85(e), which now pertains to appeal 
and renewal fee deficiencies in multiple-class applications and 
registrations, and moving the provisions on appeal fees to Sec.  
2.141(b). Section 2.183(e) already covers procedures for processing 
renewal fee deficiencies in multiple-class registrations.
    Section 2.85(e) provides for changes in classification pursuant to 
the Nice Agreement. The international classification changes 
periodically, and the International Classification of Goods and 
Services for the Purposes of the Registration of Marks, which is 
published by the World Intellectual Property Organization, lists these 
changes. The current edition of the Nice Agreement is the 9th edition, 
2006, which became effective January 1, 2007.
    Section 2.85(e)(1) provides that when international classification 
changes, the new requirements apply only to applications filed on or 
after the effective date of the change.
    Section 2.85(e)(2) and (3) provide that in section 1 and 44 
applications filed before the effective date of a change in 
classification, and registrations resulting from such applications, the 
applicant or registrant may reclassify the goods or services in 
accordance with the current edition, upon payment of the required fees. 
This is consistent with current practice, set forth in TMEP sections 
1401.11 and 1609.04.
    The Office is redesignating Sec.  2.85(g), which provides that 
classification schedules shall not limit or extend the applicant's 
rights, as Sec.  2.85(f), and amending it to note an exception that in 
section 66(a) applications, the scope of the identification of goods or 
services for purposes of permissible amendments is limited by the 
class, because the classification that the IB has assigned may not be 
changed. This is consistent with TMEP section 1402.07(a). See 
discussion, above, of the scope of permissible amendment of an 
indefinite identification in a section 66(a) application, in the 
responses to comments on Sec.  2.85(d).

Requests To Divide

    The Office is separating the current Sec.  2.87(c) into subsections 
2.87(c)(1) and (c)(2).
    The Office is adding Sec.  2.87(c)(3) to provide that in a multiple 
basis application, a request to divide out goods or services having a 
particular basis may be filed during the period between the issuance of 
the notice of allowance under section 13(b)(2) of the Act and the 
filing of a statement of use under Sec.  2.88. This is consistent with 
current practice. TMEP section 1107.
    The Office is adding Sec.  2.87(e) to provide that any outstanding 
time period for action by the applicant in the original application at 
the time of the division will apply to each new separate application 
that the division creates. This provision appeared in Sec.  2.87(a) 
when the rule was first enacted in 1989, but was inadvertently removed 
when the rules were amended to adjust application filing fees on 
January 19, 2005. See notices at 54 FR 37562 (Sept. 11, 1989) and 70 FR 
2952 (Jan. 19, 2005). Subsections (e)(1) through (e)(3) set forth 
certain specified exceptions, consistent with current practice, as set 
forth in TMEP sections 1110.04 and 1110.05.
    The Office is adding Sec.  2.87(f), requiring that a request to 
divide be signed by the applicant, someone with legal authority to bind 
the applicant (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. This is consistent with TMEP 
section 1110.
    The Office is adding Sec.  2.87(g), setting forth the procedures 
for division of a section 66(a) application after a change in ownership 
with respect to some, but not all, of the goods or services. This 
incorporates existing practice, set forth in TMEP section 1110.08.
    The Office is adding Sec.  2.171(b)(2), to provide for division of 
registered extensions of protection upon notification by the IB that 
ownership of

[[Page 67764]]

an international registration has changed with respect to some, but not 
all, of the goods or services. This reflects current practice. TMEP 
section 1615.02.

Post Registration

    The Office is amending Sec.  2.153 to change ``registrant'' to 
``owner,'' to make it clear that an affidavit or declaration under 
section 12(c) of the Act must be filed by the owner of the 
registration, and to add a requirement that the affidavit or 
declaration be signed by a person properly authorized to sign on behalf 
of the owner. This is consistent with current practice, set forth in 
TMEP section 1603, and with the requirements of Sec.  2.161 for 
affidavits or declarations under section 8 of the Act.
    The Office is further amending Sec.  2.153 to remove the 
requirement for specification of the type of commerce in an affidavit 
claiming the benefits of section 12(c) of the Trademark Act of 1946 for 
a registration issued under the Trademark Acts of 1881 or 1905. This is 
consistent with the amendment of Sec.  2.47(a), discussed above.
    The Office is amending the center heading immediately after Sec.  
2.158 to delete the wording ``DURING SIXTH YEAR,'' to correct an 
oversight. The heading covers rules pertaining to affidavits or 
declarations under section 8 of the Act (``section 8 affidavits''). 
Effective October 30, 1999, such affidavits must be filed every tenth 
year after registration as well as during the sixth year.
    The Office is amending Sec.  2.161(g)(3) to provide that specimens 
filed through TEAS may be in .pdf format. This offers TEAS filers an 
additional option for filing specimens, and is consistent with current 
practice.
    The Office is separating the current Sec.  2.163(b) into new 
Sec. Sec.  (b) and (c). Section 2.163(b) is amended to require that a 
response to an Office action issued in connection with a section 8 
affidavit be signed by the owner, someone with legal authority to bind 
the owner, or a qualified practitioner. This is consistent with TMEP 
section 1604.16.
    The last sentence of the current Sec.  2.163(b) is moved to new 
Sec.  (c), and revised to indicate that a registration will be 
cancelled for failure to respond to an Office action issued in 
connection with a section 8 affidavit only if no time remains in the 
grace period under section 8(c)(1) of the Act. This corrects an 
oversight in the current rule. Cancelling a registration under section 
8 before expiration of the grace period would be inappropriate. If time 
remains in the grace period, the owner may file a complete new 
affidavit.
    The Office is amending Sec.  2.167(a) to provide that an affidavit 
or declaration of incontestability under section 15 of the Trademark 
Act must be filed in the name of the owner of the registration, and 
verified by the owner or a person properly authorized to sign on behalf 
of the owner (Sec.  2.161(b)). The Office is amending Sec.  2.167(d) to 
substitute ``owner'' for ``registrant,'' to make it clear that the 
affidavit or declaration must be filed by the owner of the 
registration. These changes are consistent with TMEP section 1605.04.
    The Office is amending Sec.  2.167(f) for clarity.
    The Office is amending Sec.  2.171(a) to remove the requirement 
that a request for a new certificate of registration upon change of 
ownership include the original certificate of registration. This is 
consistent with current practice, and with Office practice in 
connection with requests to amend or correct registrations under 
section 7 of the Trademark Act. See notice at 69 FR 51362 (Aug. 19, 
2004), removing the requirement that a section 7 request include the 
original certificate.
    The Office is amending Sec.  2.171(a) to add a statement that in a 
registered extension of protection, the assignment must be recorded 
with the IB before recordation in the Office. This is consistent with 
current Sec.  7.22.
    The Office is redesignating Sec.  2.171(b) as (b)(1), and amending 
the section to indicate applicability only to registrations resulting 
from applications based on section 1 or 44 of the Act.
    The Office is adding Sec.  2.171(b)(2), providing for division of 
registered extensions of protection upon notification by the IB that 
ownership of an international registration has changed with respect to 
some, but not all, of the goods or services. This reflects current 
practice. TMEP section 1615.02.
    The Office is reorganizing Sec.  2.173, pertaining to amendment of 
registrations. The current paragraph (a) is separated into new 
paragraphs (a) through (d).
    Section 2.173(a) provides that the owner of a registration may file 
a written request to amend a registration or to disclaim part of the 
mark in the registration; and that if the registration is involved in 
an inter partes proceeding before the TTAB, the request must be filed 
by appropriate motion to the TTAB. This is consistent with current 
Sec.  2.173(a) and TMEP section 1609.01(b).
    The current paragraph (b) is separated into new paragraphs (e) and 
(g).
    New Sec.  2.173(b) sets forth the requirements for the request for 
amendment.
    Section 2.173(b)(2) requires that the request be filed in the name 
of the owner and signed by the owner, someone with legal authority to 
bind the owner (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. The requirement for filing 
in the name of the owner is consistent with current practice. However, 
the requirement for signature by someone with legal authority to bind 
the owner or by a qualified practitioner changes current practice 
slightly. TMEP section 1609.01(b) now permits signature by a person 
with firsthand knowledge of the facts and actual or implied authority 
to act on behalf of the owner, which could include someone without 
legal authority to bind the owner. The Office believes that the better 
practice is to require that a request to amend a registration be signed 
by someone with legal authority to bind the owner or by a qualified 
practitioner.
    Section 2.173(b)(3) requires that an amendment to change the mark 
include a specimen showing the mark as used on or in connection with 
the goods or services, an affidavit or a declaration under Sec.  2.20 
stating that the specimen was in use in commerce at least as early as 
the filing date of the amendment, and a new drawing of the amended 
mark. This is consistent with current Sec.  2.173(a) and TMEP section 
1609.02(c).
    Section 2.173(c) provides that the registration must still contain 
registrable matter, and Sec.  2.173(d) provides that the amendment may 
not materially alter the mark. This is consistent with current Sec.  
2.173(a).
    Section 2.173(e) provides that no amendment to the identification 
of goods or services in a registration will be permitted, except to 
restrict the identification or change it in ways that would not require 
republication of the mark. This is consistent with current Sec.  
2.173(b).
    The Office is adding Sec.  2.173(f) to provide that if the 
registration includes a disclaimer, description of the mark, or 
miscellaneous statement, any amendment must include a request to make 
any necessary conforming amendments to the disclaimer, description, or 
other miscellaneous statements. For example, if the mark is XYZ INC., 
with a disclaimer of the entity designator ``INC.,'' and the owner of 
the registration proposes to amend the mark to remove ``INC.,'' the 
proposed amendment should also request that the disclaimer be deleted. 
If a proposed amendment does not include all necessary conforming 
amendment(s), the examiner will issue

[[Page 67765]]

an Office action requiring the amendment(s).
    New Sec.  2.173(g) provides that an amendment seeking the 
elimination of a disclaimer will be permitted only if deletion of the 
disclaimed portion of the mark is also sought. This provides an 
exception to the general prohibition against amendments to delete 
disclaimers, currently set forth in Sec.  2.173(b), in the limited 
situation where the mark is amended to delete the disclaimer.
    The Office is amending Sec.  2.175(b)(2) to require that a request 
to correct the owner's error in a registration be filed in the name of 
the owner and signed by the owner, someone with legal authority to bind 
the owner (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. This is consistent with the 
amendment of Sec.  2.173(b)(2), discussed above. The Office is also 
amending the heading and paragraph (a) of Sec.  2.175 to substitute 
``owner'' for ``registrant,'' for consistency.
    The Office is adding Sec.  2.183(f) to provide that applications 
for renewal of registrations issued under a prior classification system 
will be processed on the basis of that system, except where the 
registration has been amended to adopt international classification. 
The provision that applications for renewal of registrations issued 
under a prior classification system are processed on the basis of that 
system is currently set forth in Sec.  2.85(d). The reference to 
amendment of classification is consistent with Sec.  2.85(e)(3), 
discussed above.
    Section 2.184(b) is redesignated as Sec.  2.184(b)(1), and amended 
to provide that a registration will expire for failure to respond to an 
Office action issued in connection with a renewal application only if 
no time remains in the grace period under section 9(a) of the Act. This 
corrects an oversight in the current rule. It would be inappropriate to 
cancel a registration for failure to renew before the renewal grace 
period has expired. If time remains in the grace period, the registrant 
may file a complete new renewal application.
    The Office is adding Sec.  2.184(b)(2) to require that a response 
to an Office action issued in connection with a renewal application be 
signed by the registrant, someone with legal authority to bind the 
registrant (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. This is consistent with TMEP 
section 1606.12.

Madrid Protocol

    The Office is amending Sec.  7.11(a)(2) to provide that the 
applicant's entity in an application for international registration 
must be identical to the entity listed as owner of the basic 
application or registration. This is consistent with current practice. 
TMEP section 1902.02(c). Under section 61(a) of the Trademark Act, only 
the owner of the basic application or registration may file an 
international application.
    The Office is amending the last sentence of Sec.  7.14(e) to change 
``submitted to'' to ``received in,'' for clarity.
    The Office is amending Sec.  7.25(a) to remove Sec. Sec.  2.175 and 
2.197 from the list of rules in part 2 that do not apply to an 
extension of protection of an international registration to the United 
States. Section 2.175 pertains to correction of mistakes by a 
registrant. Generally, all requests to record changes to an 
international registration must be filed at the IB, because an 
extension of protection of an international registration remains part 
of the international registration even after registration in the United 
States. However, in the limited circumstance where the holder of an 
international registration makes a mistake in a document filed during 
prosecution in the Office that affects only the extension of protection 
to the United States, the registrant may request correction of the 
error pursuant to Sec.  2.175. For example, if there was a minor 
typographical error in an amendment to the identification of goods in a 
section 66(a) application, and the mark registered, the owner of the 
registration could request correction under Sec.  2.175. If the Office 
grants the request, the Office will notify the IB of the change to the 
extension of protection to the United States.
    Section Sec.  2.197 provides a ``certificate of mailing or 
transmission'' procedure to avoid lateness due to mail delay. Section 
66(a) applicants may currently use this procedure during prosecution of 
applications. Owners of registered extensions of protection who file 
affidavits of use or excusable nonuse under section 71 of the Trademark 
Act may also use this procedure. Therefore, its inclusion in Sec.  
7.25(a) was an error. Under Sec. Sec.  2.197(a)(2)(ii) and 7.4(e), the 
certificate of mailing or transmission procedure remains inapplicable 
to international applications under Sec.  7.11, responses to notices of 
irregularity under Sec.  7.14, subsequent designations under Sec.  
7.21, requests to record changes of ownership under Sec.  7.23, 
requests to record restrictions of the holder's right of disposal (or 
the release of such restrictions) under Sec.  7.24, and requests for 
transformation under Sec.  7.31.

    Note: On February 29, 2008, the Office published a proposed rule 
that would prohibit the use of certificates of mailing or 
transmission for certain specified documents for which an electronic 
form is available in TEAS. See notice at 73 FR 11079. The Office is 
still reviewing the comments received in response to this proposal.

    See the discussion of amendments to classification in section 66(a) 
applications in connection with new Sec.  2.85(d), above.

Assignment Cover Sheet

    The Office is amending Sec.  3.31 to add a new paragraph (a)(8) 
requiring that a cover sheet submitted with a request to record a 
change of ownership of a trademark application or registration must 
include the citizenship or state or country of organization of the 
party receiving the interest; and that if the party receiving the 
interest is a domestic partnership or domestic joint venture, the cover 
sheet must include the names, legal entities, and national citizenship 
(or state or country of organization) of all general partners or active 
members that compose the partnership or joint venture. Currently, Sec.  
3.31(f) provides that the cover sheet ``should'' include this 
information, but the new rule makes it mandatory, to allow for more 
efficient processing of trademark applications and registrations.
    The applicant's entity and citizenship or state or country of 
organization are required in an application for registration under 
Sec.  2.32(a)(3)(iii) and must be submitted before the Office can issue 
a registration certificate in the name of the new owner. This 
information is also required when the new owner of a registration wants 
to change ownership in the trademark database and/or obtain a new 
certificate of registration in the name of the new owner. Requiring the 
information whenever a change of ownership is recorded will eliminate 
the need for the examining attorney or Post Registration examiner to 
issue an Office action requiring submission, which can cause 
substantial delay. Furthermore, in many cases, having complete 
information about the receiving party will ensure that the trademark 
database is automatically updated at the time of recordation or shortly 
thereafter. See TMEP sections 504 et seq. regarding automatic updating 
of the trademark database upon recordation of a change of ownership 
(automatic updating should ensure that the original certificate of 
registration issues in the name of the new owner).

[[Page 67766]]

References to ``Paper''

    The Office is amending Sec. Sec.  2.6(b)(6), 2.21(b), 2.21(c), 
2.27(d), 2.87(d), 2.146(e)(1), 2.146(e)(2), and 2.146(i) to delete 
references to ``papers'' and substitute ``documents'' where 
appropriate, in order to encompass documents filed or issued 
electronically.
    The Office is amending Sec. Sec.  2.6(a)(19), 2.6(b)(3), and 
2.56(d)(2) to delete references to ``file wrapper'' and substitute 
``record'' or ``official record.'' The Office now maintains electronic 
records of applications and registrations.
    The Office is amending Sec. Sec.  2.62, 2.65(a), 2.66(a)(1), 
2.66(d), 2.66(f)(1), 2.81(b), 2.89(a), 2.89(a)(3), 2.89(g), 2.93, 
2.99(d)(2), 2.146(d), 2.146(e)(1), 2.146(e)(2), 2.146(j)(1), 2.163(b), 
2.165(b), 2.176, 2.184(b), 2.186(b), 7.39(b), and 7.40(b) to change 
references to ``mailing'' to ``issuance,'' to encompass Office actions 
and communications issued electronically.
    Comment: One commenter asserts that ``issuance'' is ambiguous 
because it ``could refer to either the date an Office Action is written 
or is mailed.'' The commenter notes that the Trademark Applications and 
Registrations Retrieval (``TARR'') database currently lists either 
``Non-Final Action Mailed'' or ``Non-Final Action E-Mailed.'' The 
commenter suggests that the rules be amended to change ``mailing'' to 
``mailing and e-mailing,'' or, alternatively, that TARR be changed to 
list an ``issuance'' date where it formerly listed ``Mailed'' or ``E-
Mailed.''
    Response: The Office has reviewed the context in which the term 
``issuance'' is used in these rules, and believes the term clearly does 
not refer to the date on which an Office action is written, as opposed 
to the date on which it is mailed or e-mailed. ``Issuance'' is defined 
as ``[t]he provision of something by issuing it.'' The verb ``issue'' 
can be defined as ``[t]o send out officially, as in to issue an order'' 
(Law); ``[p]repare and issue for public distribution or sale;'' 
``[c]irculate or distribute;'' or ``[b]ring out [as] an official 
document. * * *'' Webster's Online Dictionary, search of ``issuance'' 
and ``issue,'' http://www.websters-online-dictionary.org/definition/issue (Aug. 14, 2008). Therefore, the Office deems it unnecessary to 
change the rule or the information in TARR. The information in TARR 
indicates specifically whether the notice was mailed or e-mailed, which 
could be useful information.
    The Office is amending Sec.  2.81(b) to remove the sentence stating 
that ``The mailing date that appears on the notice of allowance will be 
the issue date of the notice of allowance,'' because it is unnecessary. 
The rule already states that the notice of allowance will include the 
issue date.
    The Office is amending Sec. Sec.  2.84(b), 2.173, 2.174, and 2.175 
to delete references to ``printed,'' and substitute ``issued'' where 
appropriate, to encompass documents issued electronically.
    The Office is amending Sec. Sec.  2.87(d), 2.146(e)(i), and 
2.146(i) to delete references to ``paper'' and to substitute 
``document,'' to encompass documents filed through TEAS.
    Sections 2.173(c), 2.174, and 2.175(c) are amended to remove the 
statements that printed copies of amendments and corrections under 
section 7 of the Act are attached to printed copies of the 
registration.
    Comment: One commenter asked for clarification of how amendments 
and corrections would be communicated when certified copies of the 
registration are printed.
    Response: The Office previously attached an updated registration 
certificate showing an amendment or correction to the original 
certificate and returned it to the owner of the registration, but this 
practice was changed in 2004. See notice at 69 FR 51362 (Aug. 19, 2004) 
(removing the requirement that the owner of a registration send the 
original certificate of registration or a certified copy thereof with a 
request for amendment or correction under section 7 of the Act). 
Currently, when a request for amendment or correction is granted, the 
Office sends an updated registration certificate showing the amendment 
or correction to the owner of record, and updates Office records 
accordingly. TMEP sections 1609.01(b) and 1609.10. A certified copy of 
the updated registration certificate may be obtained from the Document 
Services Branch of the Public Records Division for a fee.

Appeal Fees

    The Office is reorganizing Sec.  2.141 to move the provisions 
pertaining to appeal fees, some of which were previously set forth in 
Sec.  2.85(e), to Sec.  2.141(b). This is consistent with current 
practice, set forth in TBMP section 1202.04.

Other Changes

    The Office is amending Sec.  2.6(a)(13) to replace a section symbol 
with the word ``section.'' This is consistent with references to the 
statute in other rules, and with the format recommended in the Federal 
Register Document Drafting Handbook, National Archives and Records 
Administration, Office of the Federal Register (Oct. 1998). Section 
symbols are used in rules and Federal Register notices only to refer to 
other sections of the CFR.
    The Office is amending Sec.  2.6(a)(8) to delete ``assignee'' and 
substitute ``registrant.'' This clarifies that any registrant may 
request a new certificate of registration, upon payment of the required 
fee.
    The Office is revising Sec.  2.25 to provide that documents filed 
by an applicant or registrant become part of the official record and 
will not be returned or removed. The rule currently provides only for 
applications, but the new rule encompasses all documents filed in 
connection with an application or registration. This is consistent with 
current practice. See TMEP section 404. There is an exception for 
documents ordered to be filed under seal pursuant to a protective order 
issued by a court or by the TTAB.
    The Office is removing Sec.  2.26, which provides that a drawing 
from an abandoned application may be transferred to and used in a new 
application, if the file has not been destroyed. This rule is no longer 
in use and is deemed unnecessary.
    The Office is amending Sec.  2.32(a)(6) to delete the word ``and'' 
after the semicolon, and is amending Sec.  2.32(a)(7) to change a 
period to a semicolon.
    The Office is amending Sec.  2.41 to add a reference to 
``services'' at the end of the last sentence. This corrects an 
oversight.
    The Office is amending Sec.  2.86(a)(2) to delete the period and 
substitute a semicolon, followed by the word ``and'' (``; and'').
    The Office is amending Sec.  2.146(c) to add a provision that a 
petition to the Director be signed by the petitioner, someone with 
legal authority to bind the petitioner (e.g., a corporate officer or 
general partner of a partnership), or a qualified practitioner. The 
rule further provides that when facts are to be proved on petition, the 
petitioner must submit proof in the form of affidavits or declarations 
in accordance with Sec.  2.20, signed by someone with firsthand 
knowledge of the facts to be proved. This is consistent with TMEP 
sections 1705.03 and 1705.07.
    The Office is amending Sec.  2.195(b) to delete the phrase ``In 
addition to being mailed,'' because it is unnecessary.
    The Office is amending Sec.  2.195(e) to clarify the procedures for 
filing a petition to the Director to consider correspondence filed on 
the date of attempted filing by Express Mail during a postal service 
interruption or

[[Page 67767]]

emergency within the meaning of 35 U.S.C. 21(a). New Sec.  2.195(e)(1) 
provides that a person who attempted to file correspondence by Express 
Mail, but was unable to deposit the correspondence with the United 
States Postal Service due to the interruption or emergency, may 
petition the Director to consider the correspondence to have been filed 
on the date of attempted filing. New Sec.  2.195(e)(2) sets forth the 
requirements for the petition. New Sec.  2.195(e)(3) notes that this 
procedure does not apply to correspondence that is excluded from the 
Express Mail procedure pursuant to Sec.  2.198(a)(1). This is 
consistent with current practice.
    The Office is amending Sec.  2.208(c)(3) and removing Sec.  
2.208(c)(4), to update the mailing address for payments to replenish 
deposit accounts. This is consistent with Sec.  1.25(c)(4) of this 
chapter.

Rule Making Requirements

    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Administrative Procedure Act: This rule merely involves rules of 
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A). 
Therefore, this rule may be adopted without prior notice and 
opportunity for public comment under 5 U.S.C. 553(b) and (c), or 
thirty-day advance publication under 5 U.S.C. 553(d). However, the 
Office has chosen to seek public comment before implementing the rule.
    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law of the United States Patent and Trademark Office hereby certifies 
to the Chief Counsel for Advocacy of the Small Business Administration 
that this final rule, Miscellaneous Changes to Trademark Rules of 
Practice (RIN 0651-AB89), will not have a significant impact on a 
substantial number of small entities (Regulatory Flexibility Act, 5 
U.S.C. 605(b)).
    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), neither a 
regulatory flexibility analysis nor a certification under the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 
U.S.C. 603.
    The new rules clarify certain requirements for trademark 
applications and other trademark-related documents, modernize the 
language of the rules, and make some other miscellaneous procedural 
changes. In large part, the rule changes are intended to codify 
existing practice. Although the rules may affect any trademark 
applicant or registrant, because they codify the existing practice of 
the Office or concern relatively minor procedural matters, the changes 
will not have a significant economic impact on a substantial number of 
small entities.
    Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 
U.S.C. 1532, that agencies prepare an assessment of anticipated costs 
and benefits before issuing any rule that may result in expenditure by 
State, local, and tribal governments, in the aggregate, or by the 
private sector, of $100 million or more (adjusted annually for 
inflation) in any given year. This rule will have no such effect on 
State, local, and tribal governments or the private sector.
    Executive Order 13132: This rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Paperwork Reduction Act: This rule involves information collection 
requirements which are subject to review by the Office of Management 
and Budget (``OMB'') under the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.). The collection of information in this rule has 
been reviewed and previously approved by OMB under control numbers 
0651-0009, 0651-0050, 0651-0051, 0651-0054, 0651-0055, and 0651-0056.
    The United States Patent and Trademark Office is not resubmitting 
any information collection package to OMB for its review and approval 
because the changes in this rule will not affect the information 
collection requirements associated with the information collections 
under the OMB control numbers listed above. The changes in this notice 
are limited to amending the rules of practice to simplify and clarify 
the requirements for amendments to applications and registrations, 
reword and reorganize the rules for clarity, and codify current 
practices and procedures.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reduction of this 
burden to: (1) The Office of Information and Regulatory Affairs, Office 
of Management and Budget, New Executive Office Building, Room 10202, 
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for 
the Patent and Trademark Office; and (2) Commissioner for Trademarks, 
P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
    Notwithstanding any other provision of law, no person is required 
to respond 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 Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 3

    Administrative practice and procedure, Trademarks.

37 CFR Part 6

    Administrative practice and procedure, Trademarks, Classification.

37 CFR Part 7

    Administrative practice and procedure, Trademarks, International 
Registration.


0
For the reasons given in the preamble and under the authority contained 
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is amending 
parts 2, 3, 6, and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
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.


0
2. Revise Sec.  2.6(a)(8), (13), and (19), and Sec.  2.6(b)(3) and (6) 
to read as follows:


Sec.  2.6  Trademark fees.

* * * * *
    (a) * * *
    (8) For issuing a new certificate of registration upon request of 
registrant--$100.00
* * * * *
    (13) For filing an affidavit under section 15 of the Act, per 
class--$200.00
* * * * *
    (19) Dividing an application, per new application created--$100.00
* * * * *
    (b) * * *
    (3) Certified or uncertified copy of a trademark-related official 
record--$50.00
* * * * *
    (6) For recording each trademark assignment, agreement or other 
document relating to the property in a registration or application
* * * * *

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3. Amend Sec.  2.21 by revising paragraphs (a) introductory text and 
(b) to read as follows, and by removing paragraph (c):

[[Page 67768]]

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 is in the English language and 
contains all of the following:
* * * * *
    (b) If the applicant does not submit all the elements required in 
paragraph (a) of this section, the Office will deny a filing date and 
issue a notice explaining why the filing date was denied.

0
4. Revise Sec.  2.23(a)(2) to read as follows:


Sec.  2.23  Additional requirements for TEAS Plus application.

    (a) * * *
    (2) Maintain a valid e-mail correspondence address, and continue to 
receive communications from the Office by electronic mail.
* * * * *

0
5. Revise Sec.  2.25 to read as follows:


Sec.  2.25  Documents not returnable.

    Except as provided in Sec.  2.27(e), documents filed in the Office 
by the applicant or registrant become part of the official record and 
will not be returned or removed.

0
6. Remove Sec.  2.26.
0
7. Revise Sec.  2.27(d) to read as follows:


Sec.  2.27  Pending trademark application index; access to 
applications.

* * * * *
    (d) Except as provided in paragraph (e) of this section, the 
official records of applications and all proceedings relating thereto 
are available for public inspection and copies of the documents may be 
furnished upon payment of the fee required by Sec.  2.6.
* * * * *

0
8. Revise Sec.  2.32(a)(3)(iii), (a)(6), and (a)(8), and add new Sec.  
2.32(a)(3)(iv), (a)(9), and (a)(10) to read as follows:


Sec.  2.32  Requirements for a complete application.

    (a) * * *
    (3) * * *
    (iii) If the applicant is a domestic partnership, the names and 
citizenship of the general partners;
    (iv) If the applicant is a domestic joint venture, the names and 
citizenship of the active members of the joint venture;
* * * * *
    (6) A list of the particular goods or services on or in connection 
with which the applicant uses or intends to use the mark. In a United 
States application filed under section 44 of the Act, the scope of the 
goods and/or services covered by the section 44 basis may not exceed 
the scope of the goods and/or services in the foreign application or 
registration;
    (7) * * *
    (8) If the mark is not in standard characters, a description of the 
mark;
    (9) If the mark includes non-English wording, an English 
translation of that wording; and
    (10) If the mark includes non-Latin characters, a transliteration 
of those characters, and either a translation of the transliterated 
term in English, or a statement that the transliterated term has no 
meaning in English.
* * * * *

0
9. Revise Sec.  2.33(b)(1) to read as follows:


Sec.  2.33  Verified statement.

* * * * *
    (b)(1) In an application under section 1(a) of the Act, the 
verified statement must allege:
    That the applicant believes it is the owner of the mark; that the 
mark is in use in commerce; that to the best of the declarant's 
knowledge and belief, no other person has the right to use the mark in 
commerce, either in the identical form or in such near resemblance as 
to be likely, when applied to the goods or services of the other 
person, to cause confusion or mistake, or to deceive; that the specimen 
shows the mark as used on or in connection with the goods or services; 
and that the facts set forth in the application are true.
* * * * *

0
10. Revise Sec.  2.34(a)(1)(i), (a)(2), (a)(3)(i) and (a)(4)(ii), and 
add new paragraph (a)(1)(v) to read as follows:


Sec.  2.34  Bases for filing.

    (a) * * *
    (1) * * *
    (i) The trademark owner's verified statement that the mark is in 
use in commerce on or in connection with the goods or services listed 
in the application. If the verification is not filed with the initial 
application, the verified statement must also allege that the mark was 
in use in commerce on or in connection with the goods or services 
listed in the application as of the application filing date;
* * * * *
    (v) If more than one item of goods or services is specified in the 
application, the dates of use required in paragraphs (ii) and (iii) of 
this section need be for only one of the items specified in each class, 
provided that the particular item to which the dates apply is 
designated.
    (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 also allege that the applicant had a bona fide intention 
to use the mark in commerce on or in connection with the goods or 
services listed in the application as of the filing date of the 
application.
    (3) * * *
    (i) The applicant's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the 
goods or services listed in the application. If the verification is not 
filed with the initial application, the verified statement must also 
allege that the applicant had a bona fide intention to use the mark in 
commerce on or in connection with the goods or services listed in the 
application as of the filing date of the application.
* * * * *
    (4) * * *
    (i) * * *
    (ii) Include the applicant's verified statement that it has a bona 
fide intention to use the mark in commerce on or in connection with the 
goods or services listed in the application. If the verification is not 
filed with the initial application, the verified statement must also 
allege that the applicant had a bona fide intention to use the mark in 
commerce on or in connection with the goods or services listed in the 
application as of the filing date of the application.
* * * * *

0
11. Amend Sec.  2.41 by revising paragraph (a) to read as follows:


Sec.  2.41  Proof of distinctiveness under section 2(f).

    (a) When registration is sought of a mark which would be 
unregistrable by reason of section 2(e) of the Act but which is said by 
applicant to have become distinctive in commerce of the goods or 
services set forth in the application, applicant may, in support of 
registrability, submit with the application, or in response to a 
request for evidence or to a refusal to register, affidavits, or 
declarations in accordance with Sec.  2.20, depositions, or other 
appropriate evidence showing duration, extent and nature of use in 
commerce and advertising expenditures in connection therewith 
(identifying types of media and attaching typical advertisements), and 
affidavits, or declarations in accordance with Sec.  2.20,

[[Page 67769]]

letters or statements from the trade or public, or both, or other 
appropriate evidence tending to show that the mark distinguishes such 
goods or services.
* * * * *

0
12. Revise Sec.  2.44(b) to read as follows:


Sec.  2.44  Collective mark.

    (a) * * *
    (b) In an application to register a collective mark under section 
1(b), section 44 or section 66(a) of the Act, the application shall 
specify and contain all applicable elements required by the preceding 
sections for trademarks, but shall also specify the class of persons 
intended to be entitled to use the mark, indicating what their 
relationship to the applicant will be, and the nature of the control 
applicant intends to exercise over the use of the mark.

0
13. Revise Sec.  2.45(b) to read as follows:


Sec.  2.45  Certification mark.

    (a) * * *
    (b) In an application to register a certification mark under 
section 1(b), section 44 or section 66(a) of the Act, the application 
shall include all applicable elements required by the preceding 
sections for trademarks. In addition, the application must: specify the 
conditions under which the certification mark is intended to be used; 
allege that the applicant intends to exercise legitimate control over 
the use of the mark; and allege that the applicant will not engage in 
the production or marketing of the goods or services to which the mark 
is applied. When the applicant files an allegation of use under Sec.  
2.76 or Sec.  2.88, the applicant must submit a copy of the standards 
that determine whether others may use the certification mark on their 
goods and/or in connection with their services.

0
14. Revise Sec.  2.47(a) to read as follows:


Sec.  2.47  Supplemental Register.

    (a) In an application to register on the Supplemental Register 
under section 23 of the Act, the application shall so indicate and 
shall specify that the mark has been in use in commerce.
* * * * *

0
15. Add new Sec.  2.48, to read as follows:


Sec.  2.48  Office does not issue duplicate registrations.

    If two applications on the same register would result in 
registrations that are exact duplicates, the Office will permit only 
one application to mature into registration, and will refuse 
registration in the other application.

0
16. Revise Sec.  2.52(b) introductory text and (b)(1) to read as 
follows:


Sec.  2.52  Types of drawings and format for drawings.

* * * * *
    (b) Special form drawing. Applicants who seek to register a mark 
that includes a two or three-dimensional design; color; and/or words, 
letters, or numbers or the combination thereof in a particular font 
style or size must submit a special form drawing. The drawing should 
show the mark in black on a white background, unless the mark includes 
color.
    (1) Marks that include color. If the mark includes color, the 
drawing must show the mark in color, and the applicant must name the 
color(s), describe where the color(s) appear on the mark, and submit a 
claim that the color(s) is a feature of the mark.
* * * * *

0
17. Revise Sec.  2.53(a) to read as follows:


Sec.  2.53  Requirements for drawings filed through the TEAS.

* * * * *
    (a) Standard character drawings. If an applicant seeks registration 
of a standard character mark, the applicant must enter the mark in the 
appropriate field on the TEAS form, and check the box to claim that the 
mark consists of standard characters.
* * * * *

0
18. Revise Sec.  2.56(b)(1), (d)(2), and (d)(4) to read as follows:


Sec.  2.56  Specimens.

* * * * *
    (b)(1) A trademark specimen is a label, tag, or container for the 
goods, or a display associated with the goods. The Office may accept 
another document related to the goods or the sale of the goods when it 
is impracticable to place the mark on the goods, packaging for the 
goods, or displays associated with the goods.
* * * * *
    (d)(1) * * *
    (2) If the applicant files a specimen exceeding these size 
requirements (a ``bulky specimen''), the Office will create a digital 
facsimile of the specimen that meets the requirements of the rule 
(i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by 
11.69 inches (29.7 cm.) long) and put it in the record. The Office may 
destroy the original bulky specimen.
* * * * *
    (4) For a TEAS submission, the specimen must be a digitized image 
in .jpg or .pdf format.

0
19. Revise Sec.  2.62 to read as follows:


Sec.  2.62  Procedure for filing response.

    (a) Deadline. The applicant's response to an Office action must be 
received within six months from the date of issuance.
    (b) Signature. The applicant, someone with legal authority to bind 
the applicant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner who meets the requirements of Sec.  
11.14 of this chapter must sign the response.

0
20. Revise Sec.  2.64(c)(1) to read as follows:


Sec.  2.64  Final action.

* * * * *
    (c)(1) If an applicant in an application under section 1(b) of the 
Act files an amendment to allege use under Sec.  2.76 during the six-
month response period after issuance of a final action, the examiner 
shall examine the amendment. The filing of an amendment to allege use 
does not extend the deadline for filing a response to an outstanding 
Office action, appeal to the Trademark Trial and Appeal Board, or 
petition to the Director.
* * * * *

0
21. Revise Sec.  2.65(a) to read as follows:


Sec.  2.65  Abandonment.

    (a) If an applicant fails to respond, or to respond completely, 
within six months after the date an action is issued, 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 and/or services. A timely petition to the Director pursuant to 
Sec. Sec.  2.63(b) and 2.146 or notice of appeal to the Trademark Trial 
and Appeal Board pursuant to Sec.  2.142, if appropriate, is a response 
that avoids abandonment of an application.
* * * * *

0
22. Revise Sec.  2.66(a)(1), (d), and (f)(1) to read as follows:


Sec.  2.66  Revival of abandoned applications.

    (a) * * *
    (1) Within two months of the date of issuance of the notice of 
abandonment; or
* * * * *
    (d) In an application under section 1(b) of the Act, the Director 
will not grant the petition if this would permit the filing of a 
statement of use more than 36 months after the date of issuance of the 
notice of allowance under section 13(b)(2) of the Act.
* * * * *
    (f) * * *

[[Page 67770]]

    (1) Files the request within two months of the date of issuance of 
the decision denying the petition; and
* * * * *

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23. Revise Sec.  2.73 to read as follows:


Sec.  2.73  Amendment to recite concurrent use.

    An application that includes section 1(a) of the Trademark Act as a 
filing basis, or for which an acceptable allegation of use under Sec.  
2.76 or Sec.  2.88 has been filed, may be amended to an application for 
concurrent use registration, provided that the application as amended 
meets the requirements of Sec.  2.42. The trademark examining attorney 
will determine whether the application, as amended, is acceptable.

0
24. Revise Sec.  2.74 to read as follows:


Sec.  2.74  Form and signature of amendment.

    (a) Form of Amendment. Amendments should be set forth clearly and 
completely. Applicant should either set forth the entire wording, 
including the proposed changes, or, if it would be more efficient, 
indicate which words should be added and which words should be deleted. 
The examining attorney may require the applicant to rewrite the entire 
amendment, if necessary for clarification of the record.
    (b) Signature. The applicant, someone with legal authority to bind 
the applicant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner who meets the requirements of Sec.  
11.14 must sign the request for amendment. If the amendment requires 
verification, the verification must be sworn to or supported by a 
declaration under Sec.  2.20 by a person properly authorized to sign on 
behalf of the applicant (Sec.  2.33(a)).

0
25. Revise Sec.  2.76(d) to read as follows:


Sec.  2.76  Amendment to allege use.

* * * * *
    (d) The title ``Allegation of Use'' should appear at the top of the 
document.
* * * * *

0
26. Revise Sec.  2.77 to read as follows:


Sec.  2.77  Amendments between notice of allowance and statement of 
use.

    (a) The only amendments that can be entered in an application 
between the issuance of the notice of allowance and the submission of a 
statement of use are:
    (1) The deletion of specified goods or services from the 
identification of goods/services;
    (2) The deletion of a basis in a multiple-basis application; and
    (3) A change of attorney or change of address.
    (b) Other amendments filed during this period will be placed in the 
application file and considered when the statement of use is examined.

0
27. Revise Sec.  2.81(b) to read as follows:


Sec.  2.81  Post publication.

    (a) * * *
    (b) In an application under section 1(b) of the Act for which no 
amendment to allege use under Sec.  2.76 has been submitted and 
accepted, if no opposition is filed within the time permitted or all 
oppositions filed are dismissed, and if no interference is declared, a 
notice of allowance will issue. The notice of allowance will state the 
serial number of the application, the name of the applicant, the 
correspondence address, the mark, the identification of goods and/or 
services, and the issue date of the notice of allowance. Thereafter, 
the applicant must submit a statement of use as provided in Sec.  2.88.

0
28. Revise Sec.  2.84(b) to read as follows:


Sec.  2.84  Jurisdiction over published applications.

* * * * *
    (b) After publication, but before the certificate of registration 
is issued in an application under section 1(a), 44, or 66(a) of the 
Act, or before the notice of allowance is issued in an application 
under section 1(b) of the Act, 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.

0
29. Revise Sec.  2.85 to read as follows:


Sec.  2.85  Classification schedules.

    (a) International classification system. Section 6.1 of this 
chapter sets forth the international system of classification for goods 
and services, which applies for all statutory purposes to:
    (1) Applications filed in the Office on or after September 1, 1973, 
and resulting registrations; and
    (2) Registrations resulting from applications filed on or before 
August 31, 1973, that have been amended to adopt international 
classification pursuant to Sec.  2.85(e)(3).
    (b) Prior United States classification system. Section 6.2 of this 
chapter sets forth the prior United States system of classification for 
goods and services, which applies for all statutory purposes to 
registrations resulting from applications filed on or before August 31, 
1973, unless:
    (1) The registration has been amended to adopt international 
classification pursuant to Sec.  2.85(e)(3); or
    (2) The registration was issued under a classification system prior 
to that set forth in Sec.  6.2.
    (c) Certification marks and collective membership marks. Sections 
6.3 and 6.4 specify the system of classification which applies to 
certification marks and collective membership marks in applications 
based on sections 1 and 44 of the Act, and to registrations resulting 
from applications based on sections 1 and 44. These sections do not 
apply to applications under section 66(a) or to registered extensions 
of protection.
    (d) Section 66(a) applications and registered extensions of 
protection. In an application under section 66(a) of the Act or 
registered extension of protection, the classification cannot be 
changed from the classification assigned by the International Bureau of 
the World Intellectual Property Organization, unless the International 
Bureau corrects the classification. Classes cannot be added, and goods 
or services cannot be transferred from one class to another in a 
multiple-class application.
    (e) Changes to Nice Agreement. The international classification 
system changes periodically, pursuant to the Nice Agreement Concerning 
the International Classification of Goods and Services for the Purposes 
of the Registration of Marks. These changes are listed in the 
International Classification of Goods and Services for the Purposes of 
the Registration of Marks, which is published by the World Intellectual 
Property Organization.
    (1) If international classification changes pursuant to the Nice 
Agreement, the new classification applies only to applications filed on 
or after the effective date of the change.
    (2) In a section 1 or section 44 application filed before the 
effective date of a change to the Nice Agreement, the applicant may 
amend the application to comply with the requirements of the current 
edition. The applicant must comply with the current edition for all 
goods or services identified in the application. The applicant must pay 
the fees for any added class(es).
    (3) In a registration resulting from a section 1 or section 44 
application that was filed before the effective date of a

[[Page 67771]]

change to the Nice Agreement, the owner may amend the registration to 
comply with the requirements of the current edition. The owner must 
reclassify all goods or services identified in the registration to the 
current edition. The owner must pay the fee required by Sec.  2.6 for 
amendments under section 7 of the Act. The owner may reclassify 
registrations from multiple United States classes (Sec.  2.85(b)) into 
a single international classification, where appropriate.
    (f) Classification schedules shall not limit or extend the 
applicant's rights, except that in a section 66(a) application, the 
scope of the identification of goods or services for purposes of 
permissible amendments (see Sec.  2.71(a)) is limited by the class, 
pursuant to Sec.  2.85(d).

0
30. Revise Sec.  2.86(a)(2) to read as follows:


Sec.  2.86  Application may include multiple classes.

    (a) * * *
    (2) Submit an application filing fee for each class, as set forth 
in Sec.  2.6(a)(1); and
* * * * *

0
31. Revise Sec.  2.87 to read as follows:


Sec.  2.87  Dividing an application.

    (a) Application may be divided. An application may be divided into 
two or more separate applications upon the payment of a fee for each 
new application created and submission by the applicant of a request in 
accordance with paragraph (d) of this section.
    (b) Fee. In the case of a request to divide out one or more entire 
classes from an application, only the fee for dividing an application 
as set forth in Sec.  2.6(a)(19) will be required. However, in the case 
of a request to divide out some, but not all, of the goods or services 
in a class, the applicant must submit the application filing fee as set 
forth in Sec.  2.6(a)(1) for each new separate application to be 
created by the division, in addition to the fee for dividing an 
application.
    (c) Time for filing. (1) A request to divide an application may be 
filed at any time between the application filing date and the date on 
which the trademark examining attorney approves the mark for 
publication; or during an opposition, concurrent use, or interference 
proceeding, upon motion granted by the Trademark Trial and Appeal 
Board.
    (2) In an application under section 1(b) of the Act, a request to 
divide may also be filed with a statement of use under Sec.  2.88 or at 
any time between the filing of a statement of use and the date on which 
the trademark examining attorney approves the mark for registration.
    (3) In a multiple-basis application, a request to divide out goods 
or services having a particular basis may also be filed during the 
period between the issuance of the notice of allowance under section 
13(b)(2) of the Act and the filing of a statement of use under Sec.  
2.88.
    (d) Form. A request to divide an application should be made in a 
separate document from any other amendment or response in the 
application. The title ``Request to Divide Application'' should appear 
at the top of the first page of the document.
    (e) Outstanding time periods apply to newly created applications. 
Any time period for action by the applicant which is outstanding in the 
original application at the time of the division will apply to each 
separate new application created by the division, except as follows:
    (1) If an Office action pertaining to less than all the classes in 
a multiple-class application is outstanding, and the applicant files a 
request to divide out the goods, services, and/or class(es) to which 
the Office action does not pertain before the response deadline, a 
response to the Office action is not due in the new (child) 
application(s) created by the division of the application;
    (2) If an Office action pertaining to less than all the bases in a 
multiple-basis application is outstanding, and the applicant files a 
request to divide out the goods/services having the basis or bases to 
which the Office action does not pertain before the response deadline, 
a response to the Office action is not due in the new (child) 
application(s) created by the division of the application; or
    (3) In a multiple-basis application in which a notice of allowance 
has issued, if the applicant files a request to divide out the goods/
services having the basis or bases to which the notice of allowance 
does not pertain before the deadline for filing the statement of use, 
the new (child) applications created by the division are not affected 
by the notice of allowance.
    (f) Signature. The request to divide must be signed by the 
applicant, someone with legal authority to bind the applicant (e.g., a 
corporate officer or general partner of a partnership), or a 
practitioner who meets the requirements of Sec.  11.14.
    (g) Section 66(a) applications--change of ownership with respect to 
some but not all of the goods or services. (1) When the International 
Bureau of the World Intellectual Property Organization notifies the 
Office that an international registration has been divided as the 
result of a change of ownership with respect to some but not all of the 
goods or services, the Office will construe the International Bureau's 
notice as a request to divide. The Office will record the partial 
change of ownership in the Assignment Services Branch, and divide out 
the assigned goods/services from the original (parent) application. The 
Office will create a new (child) application serial number, and enter 
the information about the new application in its automated records.
    (2) To obtain a certificate of registration in the name of the new 
owner for the goods/services that have been divided out, the new owner 
must pay the fee(s) for the request to divide, as required by Sec.  2.6 
and paragraph (b) of this section. The examining attorney will issue an 
Office action in the child application requiring the new owner to pay 
the required fee(s). If the owner of the child application fails to 
respond, the child application will be abandoned. It is not necessary 
for the new owner to file a separate request to divide.
    (3) The Office will not divide a section 66(a) application based 
upon a change of ownership unless the International Bureau notifies the 
Office that the international registration has been divided.

0
32. Revise Sec.  2.88(b)(1)(ii), (b)(3), (d), and (i)(2) to read as 
follows:


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

    (a) * * *
    (b) * * *
    (1) * * *
    (ii) The mark is in use in commerce, specifying the date of the 
applicant's first use of the mark and first use of the mark in commerce 
on or in connection with the goods or services identified in the notice 
of allowance, and setting forth or incorporating by reference those 
goods/services identified in the notice of allowance on or in 
connection with which the mark is in use in commerce. Where an 
applicant claims section 1(a) of the Act for some goods/services in a 
class and section 1(b) of the Act for other goods/services in the same 
class, the statement of use must include dates for the section 1(b) of 
the Act goods/services;
* * * * *
    (3) The fee per class required by Sec.  2.6. The applicant must pay 
a filing fee sufficient to cover at least one class within the 
statutory time for filing the statement of use, or the application will 
be abandoned. If the applicant submits a fee insufficient to cover all 
the classes in a multiple-class application, the applicant must specify 
the classes to be abandoned. If the applicant submits a

[[Page 67772]]

fee sufficient to pay for at least one class, but insufficient to cover 
all the classes, and the applicant has not specified the class(es) to 
be abandoned, the Office will issue a notice granting the applicant 
additional time to submit the fee(s) for the remaining class(es), or 
specify the class(es) to be abandoned. If the applicant does not submit 
the required fee(s) or specify the class(es) to be abandoned within the 
set time period, the Office will apply the fees paid, beginning with 
the lowest numbered class(es), in ascending order. The Office will 
delete the goods/services in the remaining class(es) not covered by the 
fees submitted.
* * * * *
    (d) The title ``Allegation of Use'' should appear at the top of the 
first page of the document.
* * * * *
    (i) * * *
    (2) If any goods or services specified in the notice of allowance 
are omitted from the identification of goods or services in the 
statement of use, the Office will delete the omitted goods/services 
from the application. The applicant may not thereafter reinsert these 
goods/services.
* * * * *

0
33. Revise Sec.  2.89(a) introductory text, (a)(2), (a)(3), (b)(2), and 
(g) to read as follows:


Sec.  2.89  Extensions of time for filing a statement of use.

    (a) The applicant may request a six-month extension of time to file 
the statement of use required by Sec.  2.88. The extension request must 
be filed within six months of the date of issuance of the notice of 
allowance under section 13(b)(2) of the Act and must include the 
following:
    (1) * * *
    (2) The fee per class required by Sec.  2.6. The applicant must pay 
a filing fee sufficient to cover at least one class within the 
statutory time for filing the extension request, or the request will be 
denied. If the applicant timely submits a fee sufficient to pay for at 
least one class, but insufficient to cover all the classes, and the 
applicant has not specified the class(es) to which the fee applies, the 
Office will issue a notice granting the applicant additional time to 
submit the fee(s) for the remaining classes, or specify the class(es) 
to be abandoned. If the applicant does not submit the required fee(s) 
or specify the class(es) to be abandoned within the set time period, 
the Office will apply the fees paid, beginning with the lowest numbered 
class(es), in ascending order. The Office will delete the goods/
services in the remaining classes not covered by the fees submitted; 
and
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec.  2.20 by a person properly authorized to 
sign on behalf of the applicant (see Sec.  2.33(a)) that the applicant 
still has a bona fide intention to use the mark in commerce, specifying 
the relevant goods or services. If the verification is unsigned or 
signed by the wrong party, the applicant must submit a substitute 
verification within six months of the date of issuance of the notice of 
allowance.
    (b) * * *
    (2) The fee per class required by Sec.  2.6. The applicant must pay 
a filing fee sufficient to cover at least one class within the 
statutory time for filing the extension request, or the request will be 
denied. If the applicant submits a fee insufficient to cover all the 
classes in a multiple-class application, the applicant must specify the 
classes to be abandoned. If the applicant submits a fee sufficient to 
pay for at least one class, but insufficient to cover all the classes, 
and the applicant has not specified the class(es) to which the fee 
applies, the Office will issue a notice granting the applicant 
additional time to submit the fee(s) for the remaining classes, or 
specify the class(es) to be abandoned. If the applicant does not submit 
the required fee(s) or specify the class(es) to be abandoned within the 
set time period, the Office will apply the fees, beginning with the 
lowest numbered class(es), in ascending order. The Office will delete 
the remaining goods/services not covered by the fees submitted;
* * * * *
    (g) The applicant will be notified of the grant or denial of a 
request for an extension of time, and of the reasons for a denial. 
Failure to notify the applicant of the grant or denial of the request 
prior to the expiration of the existing period or requested extension 
does not relieve the applicant of the responsibility of timely filing a 
statement of use under Sec.  2.88. If, after denial of an extension 
request, there is time remaining in the existing six-month period for 
filing a statement of use, applicant may submit a substitute request 
for extension of time. Otherwise, the only recourse available after 
denial of a request for an extension of time is a petition to the 
Director in accordance with Sec.  2.66 or Sec.  2.146. A petition from 
the denial of an extension request must be filed within two months of 
the date of issuance of the denial of the request. If the petition is 
granted, the term of the requested six-month extension that was the 
subject of the petition will run from the date of expiration of the 
previously existing six-month period for filing a statement of use.
* * * * *

0
34. Revise Sec.  2.93 to read as follows:


Sec.  2.93  Institution of interference.

    An interference is instituted by the issuance of a notice of 
interference to the parties. The notice shall be sent to each 
applicant, in care of the applicant's attorney or other representative 
of record, if any, and if one of the parties is a registrant, the 
notice shall be sent to the registrant or the registrant's assignee of 
record. The notice shall give the name and address of every adverse 
party and of the adverse party's attorney or other authorized 
representative, if any, together with the serial number and date of 
filing and publication of each of the applications, or the registration 
number and date of issuance of each of the registrations, involved.

0
35. Revise Sec.  2.99(d)(2) and (g) to read as follows:


Sec.  2.99  Application to register as concurrent user.

* * * * *
    (d)(1) * * *
    (2) An answer to the notice is not required in the case of an 
applicant or registrant whose application or registration is specified 
as a concurrent user in the application, but a statement, if desired, 
may be filed within forty days after the issuance of the notice; in the 
case of any other party specified as a concurrent user in the 
application, an answer must be filed within forty days after the 
issuance of the notice.
* * * * *
    (g) Registrations and applications to register on the Supplemental 
Register and registrations under the Act of 1920 are not subject to 
concurrent use registration proceedings. Applications under section 
1(b) of the Act of 1946 are subject to concurrent use registration 
proceedings only after the applicant files an acceptable allegation of 
use under Sec.  2.76 or Sec.  2.88. Applications based solely on 
section 44 or section 66(a) of the Act are not subject to concurrent 
use registration proceedings.
* * * * *

0
36. Revise Sec.  2.141 to read as follows:


Sec.  2.141  Ex parte appeals from action of trademark examining 
attorney.

    (a) An applicant may, upon final refusal by the trademark examining 
attorney, appeal to the Trademark Trial and Appeal Board upon payment 
of the prescribed fee for each class in the application for which an 
appeal is

[[Page 67773]]

taken, within six months of the date of issuance of the final action. A 
second refusal on the same grounds may be considered as final by the 
applicant for purpose of appeal.
    (b) The applicant must pay an appeal fee for each class from which 
the appeal is taken. If the applicant does not pay an appeal fee for at 
least one class of goods or services before expiration of the six-month 
statutory filing period, the application will be abandoned. In a 
multiple-class application, if an appeal fee is submitted for fewer 
than all classes, the applicant must specify the class(es) in which the 
appeal is taken. If the applicant timely submits a fee sufficient to 
pay for an appeal in at least one class, but insufficient to cover all 
the classes, and the applicant has not specified the class(es) to which 
the fee applies, the Board will issue a written notice setting a time 
limit in which the applicant may either pay the additional fees or 
specify the class(es) being appealed. If the applicant does not submit 
the required fee or specify the class(es) being appealed within the set 
time period, the Board will apply the fee(s) to the class(es) in 
ascending order, beginning with the lowest numbered class.

0
37. Revise Sec.  2.146(c), (d), (e), (i) introductory text, and (j)(1) 
to read as follows:


Sec.  2.146  Petitions to the Director.

* * * * *
    (c) Every petition to the Director must include a statement of the 
facts relevant to the petition, the points to be reviewed, the action 
or relief requested, and the fee required by Sec.  2.6. Any brief in 
support of the petition should be embodied in or accompany the 
petition. The petitioner, someone with legal authority to bind the 
petitioner (e.g., a corporate officer or general partner of a 
partnership), or a practitioner who meets the requirements of Sec.  
11.14 of this chapter must sign the petition. When facts are to be 
proved on petition, the petitioner must submit proof in the form of 
affidavits or declarations in accordance with Sec.  2.20, signed by 
someone with firsthand knowledge of the facts to be proved, and any 
exhibits.
    (d) A petition must be filed within two months of the date of 
issuance of the action from which relief is requested, unless a 
different deadline is specified elsewhere in this chapter.
    (e)(1) A petition from the grant or denial of a request for an 
extension of time to file a notice of opposition must be filed within 
fifteen days from the date of issuance of the grant or denial of the 
request. A petition from the grant of a request must be served on the 
attorney or other authorized representative of the potential opposer, 
if any, or on the potential opposer. A petition from the denial of a 
request must be served on the attorney or other authorized 
representative of the applicant, if any, or on the applicant. Proof of 
service of the petition must be made as provided by Sec.  2.119. The 
potential opposer or the applicant, as the case may be, may file a 
response within fifteen days from the date of service of the petition 
and must serve a copy of the response on the petitioner, with proof of 
service as provided by Sec.  2.119. No further document relating to the 
petition may be filed.
    (2) A petition from an interlocutory order of the Trademark Trial 
and Appeal Board must be filed within thirty days after the date of 
issuance of the order from which relief is requested. Any brief in 
response to the petition must be filed, with any supporting exhibits, 
within fifteen days from the date of service of the petition. Petitions 
and responses to petitions, and any documents accompanying a petition 
or response under this subsection must be served on every adverse party 
pursuant to Sec.  2.119.
* * * * *
    (i) Where a petitioner seeks to reactivate an application or 
registration that was abandoned, cancelled or expired because documents 
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) * * *
* * * * *
    (j) * * *
    (1) Files the request within two months of the date of issuance of 
the decision denying the petition; and
* * * * *

0
38. Revise Sec.  2.153 to read as follows:


Sec.  2.153  Publication requirements.

    The owner of a mark registered under the provisions of the Acts of 
1881 or 1905 may at any time prior to the expiration of the period for 
which the registration was issued or renewed, upon the payment of the 
prescribed fee, file an affidavit or declaration in accordance with 
Sec.  2.20 setting forth those goods or services in the registration on 
or in connection with which said mark is in use in commerce, and 
stating that the owner claims the benefits of the Trademark Act of 
1946. The affidavit or declaration must be signed by a person properly 
authorized to sign on behalf of the owner (Sec.  2.161(b)).

0
39. Revise the undesignated center heading immediately preceding Sec.  
2.160 to read as follows:
Cancellation for Failure To File Affidavit or Declaration

0
40. Revise Sec.  2.161(g)(3) to read as follows:


Sec.  2.161  Requirements for a complete affidavit or declaration of 
continued use or excusable nonuse.

* * * * *
    (g) * * *
    (3) Be a digitized image in .jpg or .pdf format, if transmitted 
through TEAS.

0
41. Revise Sec.  2.163(b) and add a new paragraph (c) to read as 
follows:


Sec.  2.163  Acknowledgment of receipt of affidavit or declaration.

* * * * *
    (b) A response to the refusal must be filed within six months of 
the date of issuance of the Office action, or before the end of the 
filing period set forth in section 8(a) or section 8(b) of the Act, 
whichever is later. The response must be signed by the owner, someone 
with legal authority to bind the owner (e.g., a corporate officer or 
general partner of a partnership), or a practitioner qualified to 
practice under Sec.  11.14 of this chapter.
    (c) If no response is filed within this time period, the 
registration will be cancelled, unless time remains in the grace period 
under section 8(c)(1) of the Act. If time remains in the grace period, 
the owner may file a complete new affidavit.

0
42. Revise Sec.  2.165(b) to read as follows:


Sec.  2.165  Petition to Director to review refusal.

* * * * *
    (b) If the examiner maintains the refusal of the affidavit or 
declaration, the owner may file a petition to the Director to review 
the action. The petition must be filed within six months of the date of 
issuance of the action maintaining the refusal, or the Office will 
cancel the registration and issue a notice of the cancellation.
* * * * *

0
43. Revise Sec.  2.167(a), (d) and (f) to read as follows:


Sec.  2.167  Affidavit or declaration under section 15.

* * * * *
    (a) Be verified (sworn to) or supported by a declaration under 
Sec.  2.20, signed by the owner of the registration or a person 
properly authorized to sign on behalf of the owner (Sec.  2.161(b));
* * * * *

[[Page 67774]]

    (d) Specify that there has been no final decision adverse to the 
owner's claim of ownership of such mark for such goods or services, or 
to the owner's right to register the same or to keep the same on the 
register;
* * * * *
    (f) Be filed within one year after the expiration of any five-year 
period of continuous use following registration or publication under 
section 12(c). The Office will issue a notice acknowledging receipt of 
the affidavit or declaration.
* * * * *

0
44. Revise Sec.  2.171 to read as follows:


Sec.  2.171  New certificate on change of ownership.

    (a) Full change of ownership. If the ownership of a registered mark 
changes, the new owner may request that a new certificate of 
registration be issued in the name of the new owner. The assignment or 
other document changing title must be recorded in the Office. The 
request for the new certificate must include the fee required by Sec.  
2.6(a)(8) and be signed by the owner of the registration, someone with 
legal authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice 
under Sec.  11.14 of this chapter. In a registered extension of 
protection, the assignment must be recorded with the International 
Bureau of the World Intellectual Property Organization before it can be 
recorded in the Office (see Sec.  7.22).
    (b) Partial change of ownership. (1) In a registration resulting 
from an application based on section 1 or 44 of the Act, if ownership 
of a registration has changed with respect to some but not all of the 
goods and/or services, the owner(s) may file a request that the 
registration be divided into two or more separate registrations. The 
assignment or other document changing title must be recorded in the 
Office. The request to divide must include the fee required by Sec.  
2.6(a)(8) for each new registration created by the division, and be 
signed by the owner of the registration, someone with legal authority 
to bind the owner (e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under Sec.  11.14 
of this chapter.
    (2)(i) When the International Bureau of the World Intellectual 
Property Organization notifies the Office that an international 
registration has been divided as the result of a change of ownership 
with respect to some but not all of the goods or services, the Office 
will construe the International Bureau's notice as a request to divide. 
The Office will record the partial change of ownership in the 
Assignment Services Branch, and divide out the assigned goods/services 
from the registered extension of protection (parent registration), 
issue an updated certificate for the parent registration, and publish 
notice of the parent registration in the Official Gazette.
    (ii) The Office will create a new registration number for the child 
registration, and enter the information about the new registration in 
its automated records. The Office will notify the new owner that the 
new owner must pay the fee required by Sec.  2.6 to obtain a new 
registration certificate for the child registration. It is not 
necessary for the new owner to file a separate request to divide.
    (iii) The Office will not divide a registered extension of 
protection unless the International Bureau notifies the Office that the 
international registration has been divided.

0
45. Revise Sec.  2.173 to read as follows:


Sec.  2.173  Amendment of registration.

    (a) Form of amendment. The owner of a registration may apply to 
amend a registration or to disclaim part of the mark in the 
registration. The owner must submit a written request specifying the 
amendment or disclaimer. If the registration is involved in an inter 
partes proceeding before the Trademark Trial and Appeal Board, the 
request must be filed by appropriate motion to the Board.
    (b) Requirements for request. A request for amendment or disclaimer 
must:
    (1) Include the fee required by Sec.  2.6;
    (2) Be signed by the owner of the registration, someone with legal 
authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner who meets the requirements 
of Sec.  11.14, and verified or supported by a declaration under Sec.  
2.20; and
    (3) If the amendment involves a change in the mark: a new specimen 
showing the mark as used on or in connection with the goods or 
services; an affidavit or declaration under Sec.  2.20 stating that the 
specimen was in use in commerce at least as early as the filing date of 
the amendment; and a new drawing of the amended mark.
    (c) Registration must still contain registrable matter. The 
registration as amended must still contain registrable matter, and the 
mark as amended must be registrable as a whole.
    (d) Amendment may not materially alter the mark. An amendment or 
disclaimer must not materially alter the character of the mark.
    (e) Amendment of identification of goods. No amendment in the 
identification of goods or services in a registration will be permitted 
except to restrict the identification or to change it in ways that 
would not require republication of the mark.
    (f) Conforming amendments may be required. If the registration 
includes a disclaimer, description of the mark, or other miscellaneous 
statement, any request to amend the registration must include a request 
to make any necessary conforming amendments to the disclaimer, 
description, or other statement.
    (g) Elimination of disclaimer. No amendment seeking the elimination 
of a disclaimer will be permitted, unless deletion of the disclaimed 
portion of the mark is also sought.

0
46. Revise Sec.  2.174 to read as follows:


Sec.  2.174  Correction of Office mistake.

    Whenever Office records clearly disclose a material mistake in a 
registration, incurred through the fault of the Office, the Office will 
issue a certificate of correction stating the fact and nature of the 
mistake, signed by the Director or by an employee designated by the 
Director, without charge. Thereafter, the corrected certificate shall 
have the same effect as if it had been originally issued in the 
corrected form. In the discretion of the Director, the Office may issue 
a new certificate of registration without charge.

0
47. In Sec.  2.175 revise the section heading and paragraphs (a) and 
(b)(2) to read as follows, and remove paragraph (c):


Sec.  2.175  Correction of mistake by owner.

    (a) Whenever a mistake has been made in a registration and a 
showing has been made that the mistake occurred in good faith through 
the fault of the owner, the Director may issue a certificate of 
correction. In the discretion of the Director, the Office may issue a 
new certificate upon payment of the required fee, provided that the 
correction does not involve such changes in the registration as to 
require republication of the mark.
    (b) * * *
    (2) Be signed by the owner of the registration, someone with legal 
authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner who meets the requirements 
of Sec.  11.14 of this chapter, and verified or include a declaration 
in accordance with Sec.  2.20; and
* * * * *

0
48. Revise Sec.  2.176 to read as follows:

[[Page 67775]]

Sec.  2.176  Consideration of above matters.

    The matters in Sec. Sec.  2.171 to 2.175 will be considered in the 
first instance by the Post Registration examiners, except for requests 
to amend registrations involved in inter partes proceedings before the 
Trademark Trial and Appeal Board, as specified in Sec.  2.173(a), which 
shall be considered by the Board. If an action of the examiner is 
adverse, the owner of the registration may petition the Director to 
review the action under Sec.  2.146. If the owner does not respond to 
an adverse action of the examiner within six months of the date of 
issuance, the matter will be considered abandoned.

0
49. Amend Sec.  2.183 by adding a new paragraph (f), to read as 
follows:


Sec.  2.183  Requirements for a complete renewal application.

* * * * *
    (f) Renewals of registrations issued under a prior classification 
system will be processed on the basis of that system, unless the 
registration has been amended to adopt international classification 
pursuant to Sec.  2.85(e)(3).

0
50. Revise Sec.  2.184(b) to read as follows:


Sec.  2.184  Refusal of renewal.

* * * * *
    (b)(1) The registrant must file a response to the refusal of 
renewal within six months of the date of issuance of the Office action, 
or before the expiration date of the registration, whichever is later. 
If no response is filed within this time period, the registration will 
expire, unless time remains in the grace period under section 9(a) of 
the Act. If time remains in the grace period, the registrant may file a 
complete new renewal application.
    (2) The registrant, someone with legal authority to bind the 
registrant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner who meets the requirements of Sec.  
11.14 must sign the response.
* * * * *

0
51. Revise Sec.  2.186(b) to read as follows:


Sec.  2.186  Petition to Director to review refusal of renewal.

* * * * *
    (b) If the examiner maintains the refusal of the renewal 
application, a petition to the Director to review the refusal may be 
filed. The petition must be filed within six months of the date of 
issuance of the Office action maintaining the refusal, or the renewal 
application will be abandoned and the registration will expire.
* * * * *

0
52. Revise Sec.  2.195(b) and (e) to read as follows:


Sec.  2.195  Receipt of trademark correspondence.

* * * * *
    (b) Correspondence delivered by hand. Correspondence may be 
delivered by hand during hours the Office is open to receive 
correspondence.
* * * * *
    (e) Interruptions in U.S. Postal Service. (1) If the Director 
designates a postal service interruption or emergency within the 
meaning of 35 U.S.C. 21(a), any person attempting to file 
correspondence by ``Express Mail Post Office to Addressee'' service who 
was unable to deposit the correspondence with the United States Postal 
Service due to the interruption or emergency may petition the Director 
to consider such correspondence as filed on a particular date in the 
Office.
    (2) The petition must:
    (i) Be filed promptly after the ending of the designated 
interruption or emergency;
    (ii) Include the original correspondence or a copy of the original 
correspondence; and
    (iii) Include a statement that the correspondence would have been 
deposited with the United States Postal Service on the requested filing 
date but for the designated interruption or emergency in ''Express 
Mail'' service; and that the correspondence attached to the petition is 
the original correspondence or a true copy of the correspondence 
originally attempted to be deposited as Express Mail on the requested 
filing date.
    (3) Paragraphs (e)(1) and (e)(2) of this section do not apply to 
correspondence that is excluded from the Express Mail procedure 
pursuant to Sec.  2.198(a)(1).

0
53. Revise Sec.  2.208(c)(3) to read as follows, and remove paragraph 
(c)(4):


Sec.  2.208  Deposit accounts.

* * * * *
    (c) * * *
    (3) A payment to replenish a deposit account may be addressed to: 
Director of the United States Patent and Trademark Office, Attn: 
Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 
22314.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

0
54. The authority citation for part 3 continues to read as follows:

    Authority: 15 U.S.C. 1112, 1123; 35 U.S.C. 2, unless otherwise 
noted.

0
55. In Sec.  3.31, add paragraph (a)(8) and revise (f) to read as 
follows:


Sec.  3.31  Cover sheet content.

    (a) * * *
    (8) For trademark assignments, the entity and citizenship of the 
party receiving the interest. In addition, if the party receiving the 
interest is a domestic partnership or domestic joint venture, the cover 
sheet must set forth the names, legal entities, and national 
citizenship (or the state or country of organization) of all general 
partners or active members that compose the partnership or joint 
venture.
* * * * *
    (f) Each trademark cover sheet should include the citizenship of 
the party conveying the interest.
* * * * *

PART 6--CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK 
ACT

0
56. The authority citation for part 6 continues to read as follows:

    Authority: 15 U.S.C. 1112, 1123; 35 U.S.C. 2, unless otherwise 
noted.

0
57. Revise Sec.  6.3 to read as follows:


Sec.  6.3  Schedule for certification marks.

    In applications for registration of certification marks based on 
sections 1 and 44 of the Trademark Act and registrations resulting from 
such applications, goods and services are classified in two classes as 
follows:
    A. Goods.
    B. Services.

0
58. Revise Sec.  6.4 to read as follows:


Sec.  6.4  Schedule for collective membership marks.

    All collective membership marks in applications based on sections 1 
and 44 of the Trademark Act and registrations resulting from such 
applications are classified as follows:

------------------------------------------------------------------------
              Class                                Title
------------------------------------------------------------------------
200..............................  Collective Membership.
------------------------------------------------------------------------

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
59. The authority citation for 37 CFR part 7 continues to read as 
follows:

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

0
60. Revise Sec.  7.11(a)(2) to read as follows:

[[Page 67776]]

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

    (a) * * *
    (2) The name and entity of the international applicant that is 
identical to the name and entity of the applicant or registrant in the 
basic application or basic registration, and the applicant's current 
address;
* * * * *

0
61. Revise Sec.  7.14(e) to read as follows:


Sec.  7.14  Correcting irregularities in international application.

* * * * *
    (e) Procedure for response. To be considered timely, a response 
must be received by the International Bureau before the end of the 
response period set forth in the International Bureau's notice. Receipt 
in the Office does not fulfill this requirement. Any response submitted 
through the Office for forwarding to the International Bureau should be 
submitted as soon as possible, but at least one month before the end of 
the response period in the International Bureau's notice. The Office 
will not process any response received in the Office after the 
International Bureau's response deadline.

0
62. Revise Sec.  7.25(a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.22-2.23, 2.130-2.131, 2,160-2.166, 
2.168, 2.173, and 2.181-2.186, all sections in parts 2, 10, and 11 of 
this chapter shall apply to an extension of protection of an 
international registration to the United States, including sections 
related to proceedings before the Trademark Trial and Appeal Board, 
unless otherwise stated.
* * * * *

0
63. Revise Sec.  7.39(b) to read as follows:


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

* * * * *
    (b) A response to a refusal under paragraph (a) of this section 
must be filed within six months of the date of issuance 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.

0
64. Revise Sec.  7.40(b) to read as follows:


Sec.  7.40  Petition to Director to review refusal.

* * * * *
    (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 date of issuance of the action maintaining the refusal, or the 
Office will cancel the registration.
* * * * *

    Dated: November 10, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E8-27222 Filed 11-14-08; 8:45 am]
BILLING CODE 3510-16-P