[Federal Register Volume 73, Number 114 (Thursday, June 12, 2008)]
[Proposed Rules]
[Pages 33356-33372]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-12909]
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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.
ACTIONS: Proposed rule.
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SUMMARY: The United States Patent and Trademark Office (``Office'')
proposes to amend 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 proposed rule changes are intended to
codify existing practice, as set forth in the Trademark Manual of
Examining Procedure (``TMEP'').
DATES: Comments must be received by August 11, 2008 to ensure
consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to [email protected]. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Mary Hannon; or by electronic mail message via the Federal eRulemaking
Portal. See the Federal eRulemaking Portal Web site (http://www.regulations.gov) for additional instructions on providing
[[Page 33357]]
comments via the Federal eRulemaking Portal. The comments will be
available for public inspection on the Office's Web site at http://www.uspto.gov, and will also be available at the Office of the
Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany
Street, Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of the
Commissioner for Trademarks, by telephone at (571) 272-9569.
SUPPLEMENTARY INFORMATION: 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 Trademark Trial and Appeal Board
Manual of Procedure refer to the 2nd edition, Rev. 1, March 12, 2004.
Where appropriate, the Office proposes to reword or reorganize the
rules for clarity, and to add headings to make it easier to navigate
through the rules.
Applications for Registration
The Office proposes to amend Sec. 2.21(a) to require that an
application must be in the English language to receive a filing date.
The Office proposes to amend 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 applicant chooses to receive correspondence on
paper, applicant will have to pay the processing fee required by
Sec. Sec. 2.6(a)(1)(iv) and 2.23(b).
The Office proposes to amend 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. Because the Office does not track the varying
legal effects of partnership status in foreign countries, and the
relevance of this additional information has not been established, this
requirement does not apply to foreign partnerships. This is consistent
with TMEP section 803.03(b).
The Office proposes to add new Sec. 2.32(a)(3)(iv) to provide that
if the applicant is a domestic joint venture, the application must
include the names and citizenship of all active members of the joint
venture. This is consistent with TMEP section 803.03(b).
The Office proposes to amend Sec. Sec. 2.32(a)(7) and (a)(8) to
change periods to semi-colons.
The Office proposes to add new Sec. 2.32(a)(9), providing that if
a mark includes non-English wording, the applicant must submit an
English translation of that wording; and new Sec. 2.32(a)(10),
providing 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 sections
809 et seq.
The Office proposes to amend Sec. 2.33(b)(1) to remove the
requirement that an application include a verified statement that the
applicant ``has adopted'' the mark. This language is not required by
statute and is deemed unnecessary.
The Office proposes to amend 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 makes it clear 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 proposes to add new 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 requirements for allegations of use under
Sec. Sec. 2.76(c) and 2.88(c).
The Office proposes to amend 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 proposes to amend 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 proposes to add new Sec. 2.48 to provide 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, 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 the
earlier-filed application or surrendering the registration.
The Office proposes to amend 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 proposes to amend 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 proposes to amend Sec. 2.53(a) to remove the reference
to submission of a digitized image of a standard character mark as a
drawing in an application filed via the Trademark Electronic
Application System (``TEAS''). This is no longer an option. An
applicant who wants to apply for a standard character mark through TEAS
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.
TEAS generates the drawing. The Office also proposes to combine
Sec. Sec. 2.53(a)(1) and (2), because the requirements for standard
character drawings in TEAS and TEAS Plus applications are now the same.
The Office proposes to amend Sec. 2.56(b)(1) to add a reference to
``displays associated with the goods.'' This makes the rule consistent
with the definition of ``use in commerce'' in section 45 of the Act.
The Office proposes to amend Sec. 2.56(d)(2) to add a provision
that
[[Page 33358]]
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 will destroy the original
bulky specimen. This is consistent with current practice. TMEP section
904.02(b).
The Office proposes to amend 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 proposes to amend 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. 10.14 (``qualified
practitioner''). This is consistent with TMEP section 712.01.
The Office proposes to amend 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, appeal to the
Trademark Trial and Appeal Board, or petition to the Director. This is
consistent with current practice. TMEP section 1104.
The Office proposes to amend 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 proposes to revise 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 also proposes to add 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 proposes to revise 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 proposes to amend 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
proposed rule merely sets forth the preferred title. The Office will
still accept documents titled ``amendment to allege use'' or
``statement of use.''
The Office proposes to amend 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 can 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 proposes to amend Sec. 2.88(b)(1)(ii) to make it
clearer that the dates of use specified in a statement of use must
pertain to the goods or services identified in the notice of allowance.
The Office proposes to amend 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 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 paid to the lowest numbered class(es) in ascending
order, and will delete the goods/services in the higher class(es) from
the application. This is consistent with current practice.
The Office proposes to amend 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 proposed amendment to Sec. 2.76(d),
discussed above.
The Office proposes to amend 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 inquire about 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 not permit the applicant to
reinsert them. Currently, if goods/services identified in the
application are omitted 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 a class, or to delete goods/services within a class.
Therefore, if any of the goods/services identified in the application
do not appear in the identification of goods/services in a TEAS SOU,
the examining attorney does not inquire about the discrepancy and the
applicant may not reinsert the omitted goods/services. TMEP section
1109.13. There have been cases in which these inquiries concerning
paper SOUs caused unnecessary delay in applications after the applicant
intentionally omitted goods/services. Therefore, the Office is changing
its practice with paper SOUs, and will discontinue issuing inquiries
about omitted goods/services. Under the proposed rule, the practice
with paper SOUs would be consistent with the current practice for
electronically filed SOUs. Applicants are responsible for setting forth
(or incorporating 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 proposes to revise 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
[[Page 33359]]
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 to the lowest numbered class(es) in ascending
order, and will delete the goods/services in the higher class(es) from
the application. This is consistent with current practice. TMEP section
1108.02(c).
Amendments to Classification
The Office proposes to amend Sec. 2.85(a) to add a reference to
amendments to adopt international classification.
The Office proposes to combine Sec. Sec. 2.85(b) and (c),
pertaining to the United States classification, and to add a reference
to amendments to adopt international classification.
The Office proposes to redesignate Sec. 2.85(f), pertaining to
certification marks and collective membership marks, as Sec. 2.85(c),
and to add 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, & 200 are classes from the old United States classification system
that are still used in the United States 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, they do not
apply to section 66(a) applications and registered extensions of
protection, in which classification is determined by the International
Bureau of the World Intellectual Property Organization (``IB''). The
Office proposes to make conforming amendments to 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.
The Office proposes to redesignate Sec. 2.85(d), which now
provides that renewals filed on registrations issued under a prior
classification system will be processed on the basis of that system, as
Sec. 2.183(f), and amend it to add an exception for registrations that
have been amended to adopt international classification pursuant to
Sec. 2.85(e)(3).
Proposed 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 assigned by
the IB; 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). Under Article 3(2) of the Madrid Protocol, the IB controls
classification. A section 66(a) application and any resulting
registration remains part of the international registration, and a
change of classification in the United States would have no effect on
the international registration.
The Office proposes to remove Sec. 2.85(e), which now pertains to
appeal and renewal fee deficiencies in multiple-class applications and
registrations, and move the provisions on appeal fees to Sec.
2.141(b). Procedures for processing renewal fee deficiencies in
multiple-class registrations are already covered in Sec. 2.183(e).
Proposed Sec. 2.85(e) provides for changes in classification
pursuant to the Nice Agreement. The international classification
changes periodically, and 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. The Nice Agreement edition currently in effect
is the 9th edition, 2006, which became effective January 1, 2007.
Proposed Sec. 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.
Proposed Sec. 2.85(e)(2) provides 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.
Proposed Sec. 2.85(e)(3) sets forth the requirements for amendment of
a pending application, and proposed Sec. 2.85(e)(4) sets forth the
requirements for amendment of a registration to reclassify the goods or
services in accordance with the current edition of the Nice Agreement.
This is consistent with current practice, set forth in TMEP sections
1401.11 and 1609.04.
The Office proposes to redesignate Sec. 2.85(g), which provides
that classification schedules shall not limit or extend the applicant's
rights, as Sec. 2.85(f), and amend 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 assigned by the IB cannot be changed.
This is consistent with TMEP section 1402.07(a).
Requests To Divide
The Office proposes to break the current Sec. 2.87(c) into
subsections 2.87(c)(1) and (c)(2).
The Office proposes to add new Sec. 2.87(c)(3) to provide that an
applicant may file a request to divide out one or more bases of a
multiple-basis application 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.
The Office proposes to add 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 be applicable to each new
separate application created by the division. 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). The Office proposes to add
certain specified exceptions, consistent with current practice, as set
forth in TMEP sections 1110.04 and 1110.05.
The Office proposes to add new Sec. 2.87(f) to add a requirement
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 proposes to add new 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 proposes to add 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.
Post Registration
The Office proposes to amend Sec. 2.153 to remove the requirement
for specification of the type of commerce in
[[Page 33360]]
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. 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 can 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. 2.153.
The Office proposes to amend the center heading immediately after
Sec. 2.158 to delete the wording ``DURING SIXTH YEAR.'' This corrects
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 proposes to amend Sec. 2.161(g)(3) 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 proposes to amend Sec. 2.163(b) to provide that a
registration will be cancelled for failure to respond to an Office
action issued in connection with a section 8 affidavit only if there is
no time remaining in the grace period under section 8(c)(1) of the Act.
This corrects an oversight in the current rule. It would be
inappropriate to cancel a registration under section 8 before
expiration of the grace period. If there is time remaining in the grace
period, the owner may file a complete new affidavit.
The Office proposes to amend Sec. 2.167 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)). This is consistent
with TMEP section 1605.04.
The Office proposes to amend 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. 29,
2004), removing the requirement that the original certificate be
included with a section 7 request.
The Office further proposes to add a statement to Sec. 2.171(a)
that in a registered extension of protection, the assignment must be
recorded with the IB before it can be recorded in the Office. This is
consistent with current Sec. 7.22.
The Office proposes to redesignate Sec. 2.171(b) as (b)(1), and
amend it to indicate that it applies only to registrations resulting
from applications based on section 1 or 44 of the Act.
The Office proposes to add 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 proposes to reorganize Sec. 2.173, pertaining to
amendment of registrations. The current paragraph (a) is broken into
proposed paragraphs (a) through (d).
Proposed Sec. 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 Trademark Trial and
Appeal Board (``TTAB''), the request must be filed by appropriate
motion to the Board. This is consistent with the current Sec. 2.173(a)
and TMEP section 1609.01(b).
The current paragraph (b) is broken into proposed paragraphs (e)
and (g).
Proposed Sec. 2.173(b) sets forth the requirements for the request
for amendment.
Proposed Sec. 2.173(b)(2) requires that the request be filed by
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 would be 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.
Proposed Sec. 2.173(b)(3) provides 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).
Proposed Sec. 2.173(c) provides that the registration must still
contain registrable matter, and proposed Sec. 2.173(d) provides that
the amendment may not materially alter the mark. This is consistent
with current Sec. 2.173(a).
Proposed Sec. 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 proposes to add new 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 an amendment is filed that does not include all necessary conforming
amendments, the examiner will issue an Office action requiring the
amendments.
Proposed Sec. 2.173(g) provides that an amendment seeking the
elimination of a disclaimer will not be permitted, unless deletion of
the disclaimed portion of the mark is also sought. The proposed rule
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 proposes to amend Sec. 2.175(b)(2) to require that a
request to correct the owner's error in a registration be filed by the
owner and signed by the owner, someone with
[[Page 33361]]
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 proposed Sec. 2.173(b)(2), discussed above.
The Office proposes to redesignate Sec. 2.184(b) as Sec.
2.184(b)(1), and amend it to provide that a registration will expire
for failure to respond to an Office action issued in connection with a
renewal application only if there is no time remaining 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 prior to expiration of the renewal grace period. If
there is time remaining in the grace period, the registrant may file a
complete new renewal application.
The Office proposes to add new 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
proposed Sec. 2.85(e)(3), discussed above.
The Office proposes to add Sec. 2.184(b)(2), requiring 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 proposes to amend 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 can file an
international application.
The Office proposes to amend the last sentence of Sec. 7.14(e) to
change ``submitted to'' to ``received in,'' for clarity.
The Office proposes to amend 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 were 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. This
procedure may currently be used by section 66(a) applicants during
prosecution of applications. The procedure may also be available to
owners of registered extensions of protection who file affidavits of
use or excusable nonuse under section 71 of the Trademark Act.
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 notice
of proposed rulemaking that would prohibit the use of certificates of
mailing or transmission for certain specified documents for which an
electronic form is available in the Trademark Electronic Application
System (``TEAS''). See notice at 73 FR 11079. The Office is currently
reviewing the comments received in response to this proposal.
Assignment Cover Sheet
The Office proposes to amend 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 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
Office proposes to make it mandatory. This will allow for more
efficient processing of trademark applications and registrations.
The applicant's entity and citizenship is 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. It 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 the Post
Registration examiner to issue an Office action requiring that it be
submitted, 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. This will often ensure that the original
certificate of registration issues in the name of the new owner.
References to ``Paper''
The Office proposes to amend 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 proposes to amend 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 proposes to amend 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
[[Page 33362]]
communications that are issued electronically.
The Office proposes to amend 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 proposes to amend Sec. Sec. 2.84(b), 2.173, 2.174, and
2.175 to delete references to ``printed,'' and substitute ``issued''
where appropriate, in order to encompass documents issued
electronically.
The Office proposes to amend 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.
The Office proposes to remove the references in Sec. 2.173(c),
2.174, and 2.175(c) to printed copies of amendments and corrections
under section 7 of the Act.
Appeal Fees
The Office proposes to reorganize 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). The proposed rule is
consistent with current practice, set forth in Trademark Trial and
Appeal Board Manual of Procedure section 1202.04.
Other Changes
The Office proposes to amend Sec. Sec. 2.6(a)(12) and (13),
2.38(b), 2.41(a), 2.44(a) and (b), 2.46, 2.47, 2.61(a), 2.64(c)(1),
2.65(c), 2.75(a) and (b), 2.81(a) and (b), 2.85(b), 2.88(a), 2.99(g),
2.146(b), and 2.167, to replace section symbols 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 proposes to amend Sec. 2.6(a)(8) to delete ``assignee''
and substitute ``registrant.'' This makes it clear that any registrant
can request a new certificate of registration, upon payment of the
required fee.
The Office proposes to revise Sec. 2.25 to provide that documents
filed in the Office by the applicant or registrant become part of the
official record and will not be returned or removed. The rule currently
provides only for applications, and the Office proposes to revise it to
encompass all documents filed in connection with an application or
registration. This is consistent with current practice. See TMEP
section 404. The Office proposes to make 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 proposes to remove 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 proposes to amend Sec. 2.32(a)(6) to delete the word
``and'' after the semicolon, and to amend Sec. 2.32(a)(7) to change a
period to a semicolon.
The Office proposes to amend Sec. 2.86(a)(2) to delete the period
and substitute a semicolon, followed by the word ``and'' (``; and'').
The Office proposes to amend 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
proposed 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 proposes to amend Sec. 2.195(b) to delete the phrase,
``In addition to being mailed,'' because it is unnecessary.
The Office proposes to amend 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 emergency within the meaning of
35 U.S.C. 21(a). Proposed 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.
Proposed Sec. 2.195(e)(2) sets forth the requirements for the
petition. Proposed 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.
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: 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 proposed 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 proposed rule changes are intended to
codify existing practice. Although the proposed rules may affect any
trademark applicant or registrant, because they would merely codify the
existing practice of the Office, or concern relatively minor procedural
matters, the changes proposed in this notice 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 would 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 proposed rule involves information
collection requirements which are subject to review by the Office of
Management and Budget under the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The collections of information in this proposed
rule have been reviewed and previously approved
[[Page 33363]]
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 proposed rule would 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 purposes,
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.
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
proposes to amend parts 2, 3, 6, and 7 of title 37 as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Revise Sec. Sec. 2.6(a)(8), (12), (13) and (19), and Sec. 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.
* * * * *
(12) For filing an affidavit under section 8 of the Act, per
class--$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.
* * * * *
3. Revise paragraphs 2.21(a) introductory text, (b), and (c) to
read as follows:
Sec. 2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application under
section 1 or section 44 of the Act that 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.
(c) If the application was filed on paper, the applicant may
correct and resubmit the application and fee. If the resubmitted papers
and fee meet all the requirements of paragraph (a) of this section, the
Office will grant a filing date as of the date the Office receives the
corrected document.
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.
* * * * *
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.
6. Remove Sec. 2.26.
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.
* * * * *
8. Revise Sec. Sec. 2.32(a)(3)(iii), (a)(6), (a)(7), and (a)(8),
and add new Sec. Sec. 2.32(a)(3)(iv), 2.32(a)(9), and (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) The international class of goods or services, if known. See
Sec. 6.1 of this chapter for a list of the international classes of
goods and services;
(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.
* * * * *
[[Page 33364]]
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 is using the mark shown in the accompanying
drawing; that the applicant believes it is the owner of the mark; that
the mark is in use in commerce; that to the best of the declarant's
knowledge and belief, no other person has the right to use the mark in
commerce, either in the identical form or in such near resemblance as
to be likely, when applied to the goods or services of the other
person, to cause confusion or mistake, or to deceive; that the specimen
shows the mark as used on or in connection with the goods or services;
and that the facts set forth in the application are true.
* * * * *
10. Revise Sec. Sec. 2.34(a)(1)(i), (a)(2), (a)(3)(i) and
(a)(4)(ii), and add new Sec. (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 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 as of the filing date of the application.
* * * * *
11. Revise Sec. 2.38(b) to read as follows:
Sec. 2.38 Use by predecessor or by related companies.
* * * * *
(b) If the mark is not being used by the applicant but is being
used by one or more related companies whose use inures to the benefit
of the applicant under section 5 of the Act, this must be indicated in
the application.
* * * * *
12. Amend Sec. 2.41 by revising the heading and 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, letters or
statements from the trade or public, or both, or other appropriate
evidence tending to show that the mark distinguishes such goods.
* * * * *
13. Revise Sec. 2.44 to read as follows:
Sec. 2.44 Collective mark.
(a) In an application to register a collective mark under section
1(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 entitled to use the mark,
indicating their relationship to the applicant, and the nature of the
applicant's control over the use of the mark.
(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.
14. 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.
15. Revise Sec. 2.46 to read as follows:
Sec. 2.46 Principal Register.
All applications will be treated as seeking registration on the
Principal Register unless otherwise stated in the application. Service
marks, collective marks, and certification marks are registered on the
Principal Register, if they are registrable in accordance with the
applicable provisions of section 2 of the Act.
16. Revise Sec. Sec. 2.47(a), (b), (d) and (e) 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
[[Page 33365]]
indicate and shall specify that the mark has been in use in commerce,
specifying the nature of such commerce, by the applicant.
(b) In an application to register on the Supplemental Register
under section 44 of the Act, the application shall so indicate. The
statement of use in commerce may be omitted.
* * * * *
(d) A mark in an application to register on the Principal Register
under section 1(b) of the Act is eligible for registration on the
Supplemental Register only after the applicant files an acceptable
allegation of use under Sec. 2.76 or Sec. 2.88.
(e) An application for registration on the Supplemental Register
must conform to the requirements for registration on the Principal
Register under section 1(a) of the Act, so far as applicable.
17. 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.
18. Revise Sec. Sec. 2.52(b) 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.
* * * * *
19. 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.
* * * * *
20. Revise Sec. 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 will
destroy the original bulky specimen.
* * * * *
(4) For a TEAS submission, the specimen must be a digitized image
in .jpg or .pdf format.
21. Revise Sec. 2.61(a) to read as follows:
Sec. 2.61 Action by examiner.
(a) Applications for registration, including amendments to allege
use under section 1(c) of the Act and statements of use under section
1(d) of the Act, will be examined and, if the applicant is found not
entitled to registration for any reason, applicant will be notified and
advised of the reasons therefor and of any formal requirements or
objections.
* * * * *
22. 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.
10.14 of this chapter must sign the response.
23. 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.
* * * * *
24. Revise Sec. Sec. 2.65(a) and (c) 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 (Sec. 2.142), if appropriate, is a response that
avoids abandonment of an application.
* * * * *
(c) If an applicant in an application under section 1(b) of the Act
fails to timely file a statement of use under Sec. 2.88, the
application shall be deemed to be abandoned.
25. Revise Sec. 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) * * *
(1) Files the request within two months of the date of issuance of
the decision denying the petition; and
* * * * *
26. 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
[[Page 33366]]
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.
27. Revise Sec. 2.74 and its heading 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.
10.14 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)).
28. Revise Sec. Sec. 2.75(a) and (b) to read as follows:
Sec. 2.75 Amendment to change application to different register.
(a) An application for registration on the Principal Register under
section 1(a) or 44 of the Act may be changed to an application for
registration on the Supplemental Register and vice versa by amending
the application to comply with the rules relating to the appropriate
register.
(b) An application under section 1(b) of the Act may be amended to
change the application to the Supplemental Register only after the
applicant submits an acceptable allegation of use under Sec. 2.76 or
Sec. 2.88. When such an application is changed from the Principal
Register to the Supplemental Register, the effective filing date of the
application is the filing date of the allegation of use.
* * * * *
29. 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.
* * * * *
30. 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.
31. Revise Sec. 2.81 to read as follows:
Sec. 2.81 Post publication.
(a) Except 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
and no concurrent use proceeding is instituted, the application will be
prepared for issuance of the certificate of registration as provided in
Sec. 2.151.
(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.
32. 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.
33. 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 Trademark 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
[[Page 33367]]
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 an
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 an effective date of a 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 Trademark 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).
34. 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
* * * * *
35. Revise Sec. 2.87 to read as follows:
Sec. 2.87 Dividing an application.
(a) Application may be divided. An application may be physically
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) An applicant may file a request to divide
an application 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) An applicant may file a request to divide an application under
section 1(b) of the Act 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) An applicant may file a request to divide out one or more bases
of a multiple-basis application 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 be applicable 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, 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 only one basis in a multiple-
basis application is outstanding, and the applicant files a request to
divide out the basis 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 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 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.
10.14 must sign the request to divide.
(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.
36. Revise Sec. Sec. 2.88(a), (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) In an application under section 1(b) of the Act, a statement of
use under section 1(d) of the Act must be filed within six months after
issuance of a notice of allowance under section 13(b)(2) of the Act, or
within an extension of time granted under Sec. 2.89. A statement of
use that is filed prior to issuance of a notice of allowance is
premature.
[[Page 33368]]
(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 goods or services identified in the notice of
allowance as based on intent to use, and those goods or services
specified in the notice of allowance based on intent to use on or in
connection with which the applicant uses the mark in commerce;
* * * * *
(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 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 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 to the lowest
numbered class(es) in ascending order, and will delete the goods/
services in the higher class(es) from the application.
* * * * *
(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.
* * * * *
37. 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 to the lowest numbered class(es) in
ascending order, and will delete the goods/services in the higher
class(es) from the application; 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 (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 paid to the lowest
numbered class(es) in ascending order, and will delete the goods/
services in the higher class(es) from the application;
* * * * *
(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 the expiration of the
previously existing six-month period for filing a statement of use.
* * * * *
38. 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.
39. Revise Sec. 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
[[Page 33369]]
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.
* * * * *
40. 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 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 classes in
ascending order, beginning with the lowest numbered class.
41. Revise Sec. 2.146(b), (c), (d), (e), (i) introductory text and
(j)(1) to read as follows:
Sec. 2.146 Petitions to the Director.
* * * * *
(b) Questions of substance arising during the ex parte prosecution
of applications, including but not limited to questions arising under
sections 2, 3, 4, 5, 6 and 23 of the Act, are not considered to be
appropriate subject matter for 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.
10.14 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
* * * * *
42. Revise Sec. 2.153 to read as follows:
Sec. 2.153 Publication requirements.
A registrant 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 stated in the registration on
which said mark is in use in commerce, and stating that the registrant
claims the benefits of the Trademark Act of 1946.
Sec. Sec. 2.260-2.166 [Amended]
43. Immediately preceding Sec. 2.160, revise the center heading to
read as follows:
Cancellation for Failure To File Affidavit or Declaration
44. 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.
45. Revise Sec. 2.163(b) 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. If no response is filed within this time period,
the registration will be cancelled, unless there is time remaining in
the grace period under section 8(c)(1) of the Act. If there is time
remaining in the grace period, the owner may file a complete new
affidavit.
46. 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, a petition to the Director to review the action may be
filed. The petition must
[[Page 33370]]
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.
* * * * *
47. Amend Sec. 2.167 by revising the heading, introductory text
and paragraphs (a) and (f) to read as follows:
Sec. 2.167 Affidavit or declaration under section 15.
The owner of a mark registered on the Principal Register or a mark
registered under the Act of 1881 or 1905 and published under Sec.
12(c) of the Act (Sec. 2.153) may file an affidavit or declaration of
incontestability under section 15 of the Act. The affidavit or
declaration must:
(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));
* * * * *
(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 notify the owner of the receipt of the
affidavit or declaration.
* * * * *
48. 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 assignee may request that a new certificate of
registration be issued in the name of the assignee for the unexpired
part of the original period. The assignment must be recorded in the
Office, and the request for the new certificate must be signed by the
assignee and accompanied by the fee required by Sec. 2.6(a)(8). 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
owner(s) must pay the fee required by Sec. 2.6(a)(8) for each new
registration created by the division, and the change of ownership must
be recorded in the Office.
(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, 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.
49. 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. 10.14 of this chapter, 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 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.
(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.
50. 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.
51. Revise Sec. 2.175(b)(2) to read as follows, and remove
paragraph (c):
Sec. 2.175 Correction of mistake by registrant.
* * * * *
(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. 10.14 of this chapter, and verified or include a declaration
in accordance with Sec. 2.20; and
* * * * *
52. Revise Sec. 2.176 to read as follows:
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
[[Page 33371]]
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, registrant may petition the Director to review the action
under Sec. 2.146. If the registrant does not respond to an adverse
action of the examiner within six months of the date of issuance, the
matter will be considered abandoned.
53. 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).
54. Revise Sec. 2.184(b) to read as follows:
Sec. 2.184 Refusal of renewal.
* * * * *
(b)(1) A response to the refusal of renewal must be filed 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
there is time remaining in the grace period under section 9(a) of the
Act. If there is time remaining 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.
10.14 must sign the response.
* * * * *
55. 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.
* * * * *
56. Revise Sec. 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 (2) of this section do not apply to
correspondence that is excluded from the Express Mail procedure
pursuant to Sec. 2.198(a)(1).
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
57. 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.
58. In Sec. 3.31, add paragraph (a)(8) and revise paragraph (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
59. 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.
60. 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
61. 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
62. 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.
63. Revise Sec. 7.11(a)(2) to read as follows:
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 applicant's current
address;
* * * * *
64. 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
[[Page 33372]]
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.
65. 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 part 2 and all sections
in part 10 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.
* * * * *
66. 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.
67. 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: June 4, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E8-12909 Filed 6-11-08; 8:45 am]
BILLING CODE 3510-16-P