TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP)
UNITED STATES PATENT AND TRADEMARK OFFICE
Sixth Edition, Rev. 1, October 2009
October 2009
Foreword to the Sixth Edition, Rev. 1
The Trademark Manual of Examining Procedure (TMEP) may be downloaded free of charge from the United States Patent and Trademark Office (USPTO) website at http://www.uspto.gov/.
The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants, with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.
Trademark Examining Attorneys will be governed by the applicable statutes, the Trademark Rules of Practice, decisions, and Orders and Notices issued by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Commissioners, or Deputy Commissioners. Policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of Office policy, to the extent that there is any conflict.
Suggestions for improving the form and content of the Manual are always welcome. They should be e-mailed to tmtmep@uspto.gov, or addressed to:
Commissioner for Trademarks Attention: Editor, Trademark Manual of Examining Procedure P.O. Box 1451 Alexandria, Virginia 22313-1451
Mary E. Hannon Editor
Lynne G. Beresford Commissioner for Trademarks
Contents
Changes: Index to Changes in TMEP Sixth Edition Changes: Index to Changes in TMEP Sixth Edition, Rev. 1 Foreword Contents Introduction Chapter 100 General Information
200 Application Filing Date 300 Filing and Receipt of Documents 400 Processing Documents and Fees 500 Change of Ownership 600 Attorney, Representative, and Signature 700 Procedure for Examining Applications 800 Application Requirements 900 Use in Commerce 1000 Applications Under Section 44 1100 Intent-to-Use Applications and Requests to Divide 1200 Substantive Examination of Applications 1300 Service Marks, Collective Marks, and Certification Marks 1400 Classification and Identification of Goods and Services 1500 Post-Examination Procedures 1600 Registration and Post Registration Procedures 1700 Petitions, Requests for Reinstatement, and Other Matters
Submitted to Director 1800 Public Inquiries About Applications and Registrations 1900 Madrid Protocol
Appendix A Examining Attorneys’ Appeal Briefs Appendix B Members of International Trademark Agreements Appendix C Notes of Other Statutes Appendix D Foreign Entity Appendix Appendix E Countries That Have Standard Character Marks or the
Equivalent Index
October 2009
TMEP Contents
(By Sections)
Chapter 100 - General Information
101 Trademark Statute and Rules 102 United States Patent and Trademark Office World
Wide Website 103 Trademark Forms 104 Trademark Searching 105 General Information Booklet Concerning Trademarks 106 The Official Gazette 107 Trademark Manuals 108 Status Inquiries 108.01 Internet Information 108.02 Personal Telephone Assistance 108.03 Due Diligence: Duty to Monitor Status 109 Access to Records 109.01 Electronic Image Records 109.02 Paper Files 109.03 Making Copies of Materials in Records 110 Decisions Available to the Public 111 Requests for Copies of Trademark Documents 112 Patent and Trademark Depository Libraries
Chapter 200 - Application Filing Date
201 What Constitutes Filing Date 201.01 Effective Filing Date Controls for Purposes of
Determining Priority for Publication or Issue 201.02 Constructive Use Priority 202 Requirements for Receiving a Filing Date 202.01 Clear Drawing of the Mark 202.02 Listing of Recognizable Goods or Services 202.03 Filing Fee for At Least One Class of Goods or Services 202.03(a) Fee Payment Refused or Charged Back By Financial
Institution 202.03(a)(i) Processing Fee for Payment Refused or Charged Back
By Financial Institution 203 Review for Compliance With Minimum Requirements 204 Defective or Informal Applications 204.01 Filing Date Cancelled if Minimum Filing Requirements not
Met 204.02 Resubmission of Applications
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204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
205 Filing Date Is Not Normally Changed 206 Effective Filing Date 206.01 Amendment of §1(b) Application from Principal Register
to Supplemental Register upon Filing of Allegation of Use 206.02 Application Claiming Priority under §44(d) or §67 206.03 Applications Filed Before November 16, 1989, That Are
Amended to the Supplemental Register on or After November 16, 1989
206.04 Examining Attorney’s Action After Conducting New Search
Chapter 300 - Filing and Receipt of Documents
301 Electronic Filing 302 Trademark Correspondence and Signature
Requirements - In General 302.01 Original Documents Generally Not Required 302.02 Multiple Copies of Documents Should Not Be Filed 302.03 Identifying the Nature of Documents Filed 302.03(a) Correspondence Pertaining to Trademark Applications 302.03(b) Correspondence Pertaining to Trademark Registrations 303 Receipt of Documents by the Office 303.01 Date of Receipt 303.02 Acknowledgment of Receipt 303.02(a) TEAS “Success” Page 303.02(b) “Mail Room Date” Label Showing Receipt 303.02(c) Postcard Receipt 303.02(c)(i) Postage on Return Receipt Postcards 304 Electronic Mail 304.01 Communications Acceptable Via Electronic Mail 304.02 Communications Not Acceptable Via Electronic Mail 304.03 Authorization of Electronic Mail Communications From
the USPTO 304.04 Date of Receipt of Electronic Mail 304.05 Certificate of Transmission by Electronic Mail 304.06 Outgoing Electronic Mail 304.07 Signature of Electronic Mail 304.08 E-Mail Addresses for Correspondence With the Office 304.09 “Confirmation” Copies of E-Mail Communications Should
Not Be Sent to the Office 305 Mailing Documents to the Office 305.01 Mailing Addresses 305.02 Certificate of Mailing Procedure 305.02(a) When Certificate of Mailing Procedure May Not Be Used
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305.02(b) Mailing Requirements 305.02(c) Location and Form of Certificate 305.02(d) Wording of Certificate of Mailing 305.02(e) Effect of Certificate of Mailing 305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197
But Not Received by Office 305.02(g) Correspondence Deposited as First Class Mail Pursuant
to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
305.02(h) Certificate of Mailing Requirements Strictly Enforced 305.03 “Express Mail” 305.04 Interruptions in U.S. Postal Service 306 Facsimile Transmission (Fax) 306.01 Documents That May Not Be Filed by Facsimile
Transmission 306.02 Fax Machines Designated to Accept Relevant Trademark
Documents 306.03 Effect of Filing by Fax 306.04 Procedure for Filing by Fax 306.05 Certificate of Transmission Procedure 306.05(a) Location and Form of Certificate of Transmission 306.05(b) Wording of Certificate of Transmission 306.05(c) Effect of Certificate of Transmission 306.05(d) Correspondence Transmitted by Fax Pursuant to 37
C.F.R. §2.197 But Not Received by Office 306.06 Requirements for Certificate of Transmission Strictly
Enforced 307 Hand Delivery 308 Period Ending on Saturday, Sunday, or Federal
Holiday 309 Unscheduled Closings of the United States Patent
and Trademark Office 310 Computing Period for Response to Office Action or
Notice
Chapter 400 - Processing Documents and Fees
401 Processing New Applications 401.01 Filing Receipts 401.02 Serial Numbers and Series Codes 401.03 Data Entry 401.04 Creation of Application Records 402 Electronic Application and Registration Records 402.01 USPTO No Longer Creates Paper Copies of Certain
Trademark-Related Documents 403 Correspondence Returned as Undeliverable
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404 Documents Not Returnable 405 Fees 405.01 Credit Cards 405.02 Checks 405.02(a) Personal Checks 405.03 Deposit Accounts 405.04 Refunds 405.05 Electronic Funds Transfer 405.06 Payments Refused or Charged Back By Financial
Institutions
Chapter 500 - Change of Ownership
501 Assignment of Marks 501.01 Assignability of Marks in Applications and Registrations 501.01(a) Assignability of Intent-to-Use Applications 501.01(b) Assignability of Extensions of Protection of International
Registrations to the United States 501.02 Assignments Must Be in Writing 501.03 Effect of Failure to Record Assignment 501.04 Foreign Assignee May Designate Domestic
Representative 501.05 Assignee Stands in Place of Applicant or Registrant 501.06 Partial Assignments 501.07 Assignment of Extension of Protection of International
Registration to the United States 502 Establishing Ownership of Applications or
Registrations 502.01 Establishing the Right to Take Action in Application or
Registration 502.02 Pending Applications - Issuance of Registration
Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §§1 and 44 of the Trademark Act 502.02(b) Applications Under §66(a) of the Trademark Act 502.02(c) Examining Attorney’s Action Regarding Assignment 502.03 Issuance of New Certificate to Assignee of Registrant 503 Recording With Assignment Services Branch 503.01 Effect of Recording a Document 503.01(a) Recording May Not Update Ownership Information 503.01(b) Recording Does Not Update Correspondence Address in
Trademark Database 503.01(c) Recording is Not a Determination of Validity 503.01(d) Recording Does Not Constitute Response to Office
Action 503.01(e) Conditional Assignment
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503.02 Documents That the Office Will Record 503.03 Requirements for Recording 503.03(a) Formal Requirements for Documents 503.03(b) Supporting Documents 503.03(c) English Language Requirement 503.03(d) Fee for Recording 503.03(e) Cover Sheet 503.04 Address for Submitting Documents for Recording 503.05 Recording Procedure and Recordation Date 503.06 Correction of Errors in Cover Sheet or Recorded
Document 503.06(a) Typographical Errors in Cover Sheet 503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect
Title to Application or Registration 503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title
to Application or Registration 503.06(b) Typographical Errors in Recorded Assignment Document 503.06(c) Assignment or Change of Name Improperly Filed and
Recorded By Another Person Against Owner’s Application or Registration
503.06(d) Owner Must Notify Trademark Operation of Correction 503.06(e) Recorded Documents Not Removed From Assignment
Records 503.06(f) Petitions to Correct or “Expunge” Assignment Records 503.07 “Indexing” Against Recorded Document Not Permitted 503.08 Accessibility of Assignment Records 503.08(a) Abstracts of Title 504 Automatic Updating of Ownership of Trademark
Applications and Registrations in Trademark Database
504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated
504.02 Processing Time for Automatic Updating 504.03 Correction to Automatic Update - Last Recorded Owner
Does Not Have Clear Chain of Title 504.04 Automatic Updating Does Not Apply to Requests for
Recordation Filed Before November 2, 2003 504.05 Automatic Updating Does Not Apply to §66(a)
Applications and Registered Extensions of Protection 505 Notifying Trademark Operation of Recordation of a
Document and Request to Update Ownership Information
505.01 Request to Update Ownership Information in Pending Application
505.02 Request to Update Ownership Information After Registration
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Chapter 600 - Attorney, Representative, and Signature
601 Owner of Mark May Be Represented by an Attorney at Law
601.01 USPTO Cannot Aid in Selection of an Attorney 601.02 Communications With Applicant or Registrant Who Is
Represented by an Attorney 602 Persons Authorized to Practice Before USPTO in
Trademark Matters 602.01 Attorneys Licensed to Practice in the United States 602.02 Non-Attorneys 602.03 Foreign Attorneys and Agents 602.03(a) Canadian Attorneys and Agents 602.03(b) Foreign Attorneys and Agents From Countries Other
Than Canada 602.03(c) Documents Filed by Foreign Attorneys and Agents 602.03(d) Representatives of Holders of International Registrations 602.03(e) Identification of Foreign Attorney in Original Application 603 Standards of Conduct 604 Recognition as a Representative 604.01 Three Ways to Be Recognized 604.02 Duration of Recognition 604.03 Change of Attorney 605 Powers of Attorney 605.01 Requirements for Power of Attorney 605.02 Power of Attorney Relating to More Than One Application
or Registration 605.03 Associate Powers of Attorney 605.04 Powers of Attorney Filed After Registration 606 Revocation of Power of Attorney 607 Withdrawal of Attorney of Record 608 Unauthorized Practice 608.01 Actions by Unauthorized Persons Not Permitted 608.02 Individuals Excluded, Suspended, or Unauthorized to
Practice Before the USPTO 609 Correspondence, With Whom Held 609.01 Establishing the Correspondence Address 609.01(a) Correspondence in §66(a) Applications 609.02 Changing the Correspondence Address 609.02(a) Request to Change Correspondence Address Presumed 609.02(b) Requirements for Request to Change Correspondence
Address 609.02(c) Processing Requests to Change the Correspondence
Address Before Registration 609.02(d) Changing the Correspondence Address in Multiple
Applications or Registrations
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609.02(e) Changing the Correspondence Address After Registration
609.02(f) Correspondence After Recordation of Change of Ownership
609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address
609.04 Correspondence with Parties Not Domiciled in the United States
610 Designation of Domestic Representative by Parties Not Domiciled in the United States
611 Signature on Correspondence Filed in the United States Patent and Trademark Office
611.01 Signature and Certificate 611.01(a) Signature as Certificate 611.01(b) Requirements for Signature 611.01(c) Signature of Documents Filed Electronically 611.02 Signatures by Authorized Parties Required 611.02(a) TEAS Checkoff Boxes 611.03 Proper Person to Sign 611.03(a) Verification 611.03(b) Responses, Amendments to Applications, Requests for
Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide
611.03(c) Powers of Attorney and Revocations of Powers of Attorney
611.03(d) Petitions to Revive 611.03(e) Petitions to the Director 611.03(f) Amendment, Correction, or Surrender of Registration 611.03(g) Renewal Applications 611.03(h) Designations and Revocations of Domestic
Representative 611.03(i) Requests to Change Correspondence Address in an
Application or Registration 611.04 Examples of Authorized and Potentially Unauthorized
Signatories 611.05 Processing Documents Signed by Someone Other Than
the Applicant or the Applicant’s Designated Attorney 611.05(a) Notice of Incomplete Response When Authority of
Person Signing Response is Unclear 611.05(b) Replying to a Notice of Incomplete Response 611.05(c) Unsatisfactory Response or Failure to Respond 611.06 Guidelines on Persons With Legal Authority to Bind
Certain Juristic Entities 611.06(a) Joint Owners 611.06(b) Signature by Partnership 611.06(c) Signature by Joint Venture
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611.06(d) Signature by Corporation 611.06(e) Signature by Foreign Companies and Corporations 611.06(f) Signature by Unincorporated Association 611.06(g) Signature by Limited Liability Company 611.06(h) Signature by Limited Liability Partnership
Chapter 700 - Procedure for Examining Applications
701 Statutory Authority for Examination 702 Order of Work 702.01 Order of Examination 702.02 “Special” Applications 702.03 Related Applications 702.03(a) Companion Applications 702.03(a)(i) Companion Applications Not Previously Assigned for the
Same or Similar Marks 702.03(a)(ii) Companion Applications Previously Assigned 702.03(a)(iii) Companion Registrations 702.03(a)(iv) Classification and Identification in Companion
Applications That Have Registered or Been Published for Opposition
702.03(b) Conflicting Applications 703 USPTO Does Not Issue Duplicate Registrations 704 Initial Examination 704.01 Initial Examination Must be Complete 704.02 Examining Attorney’s Search 704.03 Supervisory Examining Attorney May Indicate Action for
Non-Signatory Examining Attorney 705 The Examining Attorney’s Letter or Action 705.01 Language in Examining Attorney’s Letter 705.02 Examining Attorneys Should Not Volunteer Statements 705.03 Citation of Conflicting Marks 705.04 Reference to Matter in Printed or Online Publications 705.05 Citation of Decisions and USPTO Publications 705.06 Reviewing and Signing of Letters 705.07 Processing Outgoing Office Actions 705.08 Six-Month Response Clause 706 New Matter Raised by Examining Attorney After First
Action 706.01 “Clear Error” 707 Examiner’s Amendment 707.01 Approval of Examiner’s Amendment by Applicant or
Applicant’s Attorney 707.02 Examiner’s Amendment Without Prior Authorization by
Applicant or Applicant’s Attorney 707.03 Form of the Examiner’s Amendment
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708 Priority Action 708.01 Priority Action Defined 708.02 Discussion of Issues and Agreements 708.03 Form of the Priority Action 708.04 Refusal of Registration in Priority Action 708.05 Combined Examiner’s Amendment/Priority Action 709 Interviews 709.01 Personal Interviews 709.02 Persons Who May Represent Applicant in an Interview 709.03 Making Substance of Interview of Record 709.04 Telephone and E-Mail Communications 709.05 Informal Communications 709.06 Interviews Prior to Filing Application 710 Evidence 710.01 Evidence Supporting Refusal or Requirement 710.01(a) Evidence From Research Database 710.01(b) Internet Evidence 710.01(c) Record Must Be Complete Prior to Appeal 710.02 Search for Evidence Indicating No Refusal or
Requirement Necessary 710.03 Evidence of Third-Party Registrations 711 Deadline for Response to Office Action 711.01 Time May Run from Previous Action 711.02 Supplemental Office Action Resetting Response Period 712 Signature on Response to Office Action 712.01 Persons Who May Sign Response 712.02 Unsigned Response 712.03 Response Signed by an Unauthorized Person 713 Examination of Amendments and Responses to
Office Actions 713.01 Previous Action by Different Examining Attorney 713.02 Noting All Outstanding Refusals or Requirements 713.03 Response to Applicant’s Arguments 714 Final Action 714.01 Not Permissible on First Action 714.02 Not Permissible on Suspension 714.03 When Final Action is Appropriate 714.04 Form of the Final Action 714.05 Delineating New Issues Requiring Issuance of Nonfinal
Action 714.05(a) Unacceptable Amendment Proposed By Applicant 714.05(a)(i) Amendment to Supplemental Register or Submission of
Claim of Acquired Distinctiveness 714.05(a)(ii) Amendment of Identification of Goods/Services 714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application
That Has Matured Into Registration
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714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal
714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce
714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
714.06 Applicant’s Recourse When Final Action is Premature 715 Action After Issuance of Final Action 715.01 Proper Response to Final Action 715.02 Action After Final Action 715.03 Request for Reconsideration After Final Action 715.03(a) Examining Attorney’s Action When No New Issue is
Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(c) Time for Appeal Runs from Issuance Date of Final Action 715.04 Request for Reconsideration Filed in Conjunction With
Notice of Appeal 715.04(a) Examining Attorney's Action When No New Issue is
Presented in Request for Reconsideration and Notice of Appeal Has Been Filed
715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
716 Suspension of Action by USPTO 716.01 Form of Suspension Notice 716.02 Circumstances Under Which Action May Be Suspended 716.02(a) Applicant’s Petition to Cancel Cited Registration 716.02(b) Submission of Copy of Foreign Registration in §44(d)
Application 716.02(c) Conflicting Marks in Pending Applications 716.02(d) Inter Partes or Court Proceeding 716.02(e) Suspension Pending Cancellation or Expiration of Cited
Registration 716.03 Applicant’s Request to Remove Application from
Suspension 716.04 Suspended Docket Checked 716.05 Inquiry by Examining Attorney Regarding Suspended
Application 716.06 Suspension After Final Action
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717 Reissuing an Office Action 717.01 Returned Office Action 717.02 Non-Receipt of Office Action 718 Abandonment 718.01 Express Abandonment by Applicant or Applicant’s
Attorney 718.02 Failure by Applicant to Take Required Action During
Statutory Period 718.02(a) Partial Abandonment 718.03 Incomplete Response 718.03(a) Holding of Abandonment for Failure to Respond
Completely 718.03(b) Granting Additional Time to Perfect Response 718.03(c) Reconsideration of Holding of Abandonment 718.04 Failure to File Statement of Use 718.05 Failure to Perfect Appeal 718.06 Notice of Abandonment for Failure to Respond 718.07 Revival or Reinstatement of Abandoned Application -
New Search Required 719 Non-Responsive Communications 720 Fraud Upon the USPTO
Chapter 800 - Application Requirements
801 Types of Applications 801.01 Single or Combined Application 801.01(a) Single (Single-Class) Application 801.01(b) Combined (Multiple-Class) Application 801.02 Principal Register or Supplemental Register 801.02(a) Act of 1946, Principal Register 801.02(b) Act of 1946, Supplemental Register 802 Application Form 803 Applicant 803.01 Who May Apply 803.02 Name of Applicant 803.02(a) Individual 803.02(b) Partnership, Joint Venture, or Other “Firm” 803.02(c) Corporation and Association 803.03 Legal Entity of Applicant 803.03(a) Individual or Sole Proprietorship 803.03(b) Partnership, Joint Venture, or Other “Firm” 803.03(c) Corporation, Association, Organization, and Company 803.03(d) Joint Applicants 803.03(e) Trusts, Conservatorships, and Estates 803.03(e)(i) Business Trusts 803.03(f) Governmental Bodies and Universities
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803.03(g) Banking Institutions 803.03(h) Limited Liability Companies 803.03(i) Common Terms Designating Entity of Foreign Applicants 803.03(j) Federally Recognized Indian Tribe 803.03(k) Limited Liability Partnerships 803.04 Citizenship of Applicant 803.05 Address of Applicant 803.06 Applicant May Not Be Changed 804 Verification and Signature 804.01 Form and Wording of Verification in §1 or §44 Application 804.01(a) Verification with Oath 804.01(a)(i) Verification Made in Foreign Country 804.01(b) Declaration in Lieu of Oath 804.02 Averments Required in Verification of Application for
Registration - §1 or §44 Application 804.03 Time Between Execution and Filing of Documents - §1 or
§44 Application 804.04 Persons Authorized to Sign Verification or Declaration 804.05 Verification of §66(a) Application 805 Identification and Classification of Goods and
Services 806 Filing Basis 806.01 Requirements for Establishing a Basis 806.01(a) Use in Commerce - §1(a) 806.01(b) Intent-to-Use - §1(b) 806.01(c) Foreign Priority - §44(d) 806.01(d) Foreign Registration — §44(e) 806.01(e) Extension of Protection of International Registration -
§66(a) 806.02 Multiple Bases 806.02(a) Procedure for Asserting More Than One Basis 806.02(b) Applicant May File Under Both §1(a) and §1(b) in the
Same Application 806.02(c) Examination of Specimens of Use in a Multiple-Basis
Application 806.02(d) Abandonment of Multiple-Basis Applications 806.02(e) Allegation of Bona Fide Intention to Use Mark in
Commerce Required Even if Application is Based on Both §44 and §1(a)
806.02(f) Section 44(d) Combined With Other Bases 806.02(g) Not Necessary to Repeat Allegation of Bona Fide
Intention to Use Mark in Commerce in Multiple-Basis Application
806.03 Amendments to Add or Substitute a Basis 806.03(a) When Basis Can be Changed
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806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period
806.03(c) Amendment From §1(a) to §1(b) 806.03(d) Amendment From §44 to §1(b) 806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a) 806.03(f) Use in Commerce as of Application Filing Date Required
to Add or Substitute §1(a) as a Basis in §44 Application 806.03(g) Amendment From §1(b) to §44 806.03(h) Effect of Substitution of Basis on Application Filing Date 806.03(i) Verification of Amendment Required 806.03(j) Petition to Amend Basis After Publication - §1 or §44
Application 806.03(j)(i) Amending the Basis of a §1(b) Application After
Publication But Before Issuance of Notice of Allowance 806.03(j)(ii) Amending the Basis of a §1(b) Application Between
Issuance of Notice of Allowance and Filing of Statement of Use
806.03(j)(iii) Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration
806.03(k) Basis Cannot be Changed in §66(a) Application 806.03(l) §66(a) Basis Cannot be Added to §1 or §44 Application 806.04 Deleting a Basis 806.04(a) Deletion of §1(b) Basis After Publication or Issuance of
the Notice of Allowance 806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting
§44(e) Basis 806.05 Review of Basis Prior to Publication or Issue 807 Drawing 807.01 Drawing Must Show Only One Mark 807.02 Drawing Must Be Limited to Mark 807.03 Standard Character Drawings 807.03(a) Requirements for Standard Character Drawings 807.03(b) List of Standard Characters 807.03(c) Drawings Containing Both a Standard Character Claim
and Designs or Other Elements 807.03(d) Changing From Special Form Elements to Standard
Characters, or the Reverse, May be a Material Alteration 807.03(e) Standard Character Drawing and Specimen of Use 807.03(f) Standard Character Drawing and Foreign Registration 807.03(g) Drawings in “Typed” Format With No Standard Character
Claim 807.03(h) Drawings Where the Format Is Unclear 807.03(i) Typed Drawings 807.04 Special Form Drawings 807.04(a) Characteristics of Special Form Drawings 807.04(b) When Special Form Drawing is Required
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807.05 Electronically Submitted Drawings 807.05(a) Standard Character Drawings Submitted Electronically 807.05(a)(i) Long Marks in Standard Character Drawings 807.05(b) Special Form Drawings Submitted Electronically 807.05(c) Requirements for Digitized Images 807.06 Paper Drawings 807.06(a) Type of Paper and Size of Mark 807.06(b) Long Marks in Standard Character Drawings 807.06(c) Separate Drawing Page Preferred 807.07 Color in the Mark 807.07(a) Requirements for Color Drawings 807.07(a)(i) Color Must Be Claimed as a Feature of the Mark 807.07(a)(ii) Applicant Must Specify the Location of the Colors
Claimed 807.07(b) Color Drawings Filed Without a Color Claim 807.07(c) Color Drawings Filed With an Incorrect Color Claim 807.07(d) Color Drawings that Contain Black, White, or Gray 807.07(d)(i) Applications Under §1 807.07(d)(ii) Applications Under §44 807.07(d)(iii) Applications Under §66(a) 807.07(e) Black-and-White Drawings and Color Claims 807.07(f) Black-and-White Drawings that Contain Gray or Black-
and-White Drawings with a Mark Description that Refers to Black, White, or Gray
807.07(f)(i) TEAS, TEAS Plus, and §66(a) Applications 807.07(f)(ii) Applications Filed on Paper 807.07(g) Drawings in Applications Filed Before November 2, 2003 807.08 Broken Lines to Show Placement 807.09 “Drawing” of Sound, Scent, or Non-Visual Mark 807.10 Three Dimensional Marks 807.11 Marks With Motion 807.12 Mark on Drawing Must Agree with Mark on Specimen or
Foreign Registration 807.12(a) Applications Under §1 of the Trademark Act 807.12(a)(i) Role of Punctuation in Determining Whether Mark on
Drawing Agrees with Mark on Specimen 807.12(a)(ii) Punctuation on the Drawing but not on the Specimen 807.12(a)(iii) Punctuation on the Specimen but not on the Drawing 807.12(b) Applications Under §44 of the Trademark Act 807.12(c) Applications Under §66(a) of the Trademark Act 807.12(d) Mutilation or Incomplete Representation of Mark 807.12(e) Compound Word Marks and Telescoped Marks 807.13 Amendment of Mark 807.13(a) Amendment of Mark in Applications Under §§1 and 44 807.13(b) Mark in §66(a) Application Cannot be Amended 807.14 Material Alteration of Mark
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807.14(a) Removal or Deletion of Matter from Drawing 807.14(b) Addition or Deletion of Previously Registered Matter 807.14(c) Addition or Deletion of Punctuation 807.14(d) Amendments to Correct “Internal Inconsistencies” 807.14(e) Amendments to Color Features of Marks 807.14(e)(i) Black-and-White Drawings 807.14(e)(ii) Marks that Include Color and Other Elements 807.14(e)(iii) Color Marks 807.14(f) Material Alteration: Case References 807.15 Substitute Drawings 807.16 Amendment of Drawings by the USPTO 807.17 Procedures for Processing Unacceptable Amendments to
Drawings 807.18 Mark Drawing Code 808 Description of Mark 808.01 Guidelines for Requiring Description 808.01(a) Meaning of Term in Mark 808.01(b) Lining and Stippling Statements for Drawings 808.02 Description Must Be Accurate and Concise 808.03 Examination Procedure for Descriptions 808.03(a) Accurate and Complete Descriptions 808.03(b) No Description in Application 808.03(c) Accurate But Incomplete Description in Application or
Amendment 808.03(c)(i) Accurate But Incomplete Descriptions in Cases Where a
Description is Needed to Clarify the Mark and Should be Printed
808.03(c)(ii) Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed
808.03(d) Inaccurate Description in Application or Amendment 808.03(e) Amending Descriptions 808.03(f) Updating Design Coding 809 Translation and Transliteration of Non-English
Wording in Mark 809.01 Examining Applications for Marks Comprising Non
English Wording that Do Not Include an Accurate Translation or Transliteration
809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language
809.01(b) Limited Exceptions to Rules for Translations 809.01(b)(i) Foreign Terms Appearing in English Dictionary 809.01(b)(ii) Foreign Articles or Prepositions Combined with English
Terms 809.01(b)(iii) Words From Dead or Obscure Languages 809.02 Equivalency in Translation 809.03 Printing of Translations and Transliterations
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810 Filing Fee 810.01 Collection of Fees for Multiple Classes 810.02 Refunds 811 Designation of Domestic Representative 812 Identification of Prior Registrations of Applicant 812.01 Proving Ownership of Prior Registrations 813 Consent to Register by Particular Living Individual
Whose Name or Likeness Appears in the Mark 813.01 Statement Printed in Official Gazette and on Registration
Certificate 813.01(a) Name or Likeness is That of a Living Individual 813.01(b) Name or Likeness is Not That of a Living Individual 813.01(c) Updating TRAM Database 814 Requesting Additional Information 815 Application Filed on Supplemental Register 815.01 Marks Eligible for Principal Register Not Registrable on
Supplemental Register 815.02 Elements Required 815.03 Filing on Supplemental Register is Not an Admission
That the Mark Has Not Acquired Distinctiveness 815.04 Basis for Refusal of Registration of Matter That is
Incapable 816 Amending Application to Supplemental Register 816.01 How to Amend 816.02 Effective Filing Date 816.03 Amendment to Different Register 816.04 Amendment After Refusal 816.05 Amendment After Decision on Appeal 817 Preparation of Application for Publication or
Registration 818 Application Checklist 819 TEAS Plus 819.01 TEAS Plus Filing Requirements 819.01(a) Type of Mark 819.01(b) Applicant’s Name and Address 819.01(c) Applicant’s Legal Entity and Citizenship 819.01(d) Name and Address for Paper Correspondence 819.01(e) E-mail Address and Authorization for the USPTO to Send
Correspondence By E-Mail 819.01(f) Basis or Bases for Filing 819.01(f)(i) Section 1(a) - Use in Commerce 819.01(f)(ii) Section 1(b) - Intent to Use 819.01(f)(iii) Section 44(e) - Foreign Registration 819.01(f)(iv) Section 44(d) 819.01(g) Identification and Classification of Goods/Services 819.01(h) Filing Fee
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819.01(i) Drawing 819.01(j) Color Claim 819.01(k) Description of the Mark 819.01(l) Verification 819.01(m) Translation and/or Transliteration 819.01(n) Multiple-Class Applications 819.01(o) Consent to Registration of Name or Portrait 819.01(p) Prior Registration of the Same Mark 819.01(q) Concurrent Use Applications 819.02 Additional Requirements for a TEAS Plus Application 819.02(a) Receipt of Communications by E-Mail 819.02(b) Additional Documents That Must be Filed Through TEAS 819.03 Adding a Class During Examination 819.04 Procedures for Payment of TEAS Plus Processing Fee
Per Class
Chapter 900 - Use in Commerce
901 Use in Commerce 901.01 Definitions 901.02 Bona Fide Use in the Ordinary Course of Trade 901.03 Commerce That May Be Lawfully Regulated By
Congress 901.04 Inquiry Regarding Use in Commerce 901.05 Use Only by Related Company 902 Allegations of Use for §1(b) Applications 903 Dates of Use 903.01 Date of First Use Anywhere 903.02 Date of First Use in Commerce 903.03 Relation Between the Two Dates of Use 903.04 Amending Dates of Use 903.05 First Use by Predecessor or Related Company 903.06 Indefinite Dates of Use 903.06(a) Apparent Discrepancies Between Dates of Use and Date
of Execution 903.07 Dates of Use in Another Form 903.08 More than One Item of Goods or Services 904 Specimens 904.01 Number of Specimens 904.01(a) More than One Item Specified in a Class 904.01(b) In Combined or Multiple-Class Applications 904.02 Physical Form of Specimens 904.02(a) Electronically Filed Specimens 904.02(b) Paper-Filed Specimens 904.02(c) Additional Requirements 904.02(c)(i) Other Materials Required for Examination
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904.02(c)(ii) Specimens for Marks Comprising Color 904.02(c)(iii) Specimens for Marks Used on Publications 904.03 Material Appropriate as Specimens for Trademarks 904.03(a) Labels and Tags 904.03(b) Stampings 904.03(c) Commercial Packaging 904.03(d) Electronic and Digital Media Attachments to Paper Filings 904.03(e) Specimens for Trademarks Identifying Computer
Programs, Movies, or Video Tapes 904.03(f) Specimens for Sound Marks 904.03(g) Displays Associated with Goods 904.03(h) Catalogs 904.03(i) Electronic Displays 904.03(j) Manuals 904.03(k) Specimens for Marks that are Impracticable to Place on
Goods, Packaging, or Displays 904.03(l) Specimens for Motion Marks 904.03(m) Specimens for Scent and Flavor Marks 904.04 Material Not Appropriate as Specimens for Trademarks 904.04(a) Drawing or “Picture” of the Mark 904.04(b) Advertising Material 904.04(c) Package Inserts 904.05 Affidavit Supporting Substitute Specimens 904.06 Translation of Matter on Specimens 904.07 Requirements for Substitute Specimens and Statutory
Refusals 904.07(a) Whether the Specimen Shows the Mark Used in
Commerce 904.07(b) Whether the Specimen Shows the Applied-for Mark
Functioning as a Mark 905 Method of Use 906 Federal Registration Notice 906.01 Foreign Countries That Use Registration Symbol ® 906.02 Improper Use of Registration Symbol 906.03 Informing Applicant of Apparent Improper Use 906.04 Fraud 907 Compliance with Other Statutes
Chapter 1000 - Applications Under Section 44
1001 Section 44 Applications - General 1002 Eligible Applicants Under §44 1002.01 Eligible Applicants Under §44(e) 1002.02 Eligible Applicants Under §44(d) 1002.03 Establishing Entitlement Under a Treaty 1002.04 Establishing Country of Origin
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1002.05 United States Applicants 1003 Section 44(d) - Priority Filing Date Based on a
Foreign Application 1003.01 The “First-Filed” Requirement 1003.02 Priority Claim Must Be Filed Within Six Months of Foreign
Filing 1003.03 Basis for Registration Required 1003.04 Suspension Awaiting a Foreign Registration 1003.04(a) Applications Based Solely on Section 44 1003.04(b) Multiple-Basis Applications 1003.04(c) Periodic Inquiries Issued as to Status of Foreign
Application 1003.05 Section 44(d) and Priority for Publication 1003.06 Applicants May File Under Both §§44(d) and 44(e) 1003.07 Application May be Based on More Than One Foreign
Application 1003.08 Abandonment of the Foreign Application 1004 Applications Based on Foreign Registrations under
§44(e) 1004.01 Copy of Foreign Registration Required 1004.01(a) Status of the Foreign Registration 1004.01(b) Translation of the Foreign Registration 1004.02 Application May be Based on More Than One Foreign
Registration 1005 Ownership of the Foreign Application or Registration 1006 Assignment of §44 Applications 1007 Standards for Registration Under Section 44 1008 Bona Fide Intention to Use the Mark in Commerce 1009 Allegation of Use and Specimen of Use Not Required
Prior to Registration 1010 Proof of Acquired Distinctiveness in §44 Applications 1011 Drawings 1011.01 Substantially Exact Representation of Mark in Foreign
Registration 1011.02 One Mark Per Application 1011.03 Amendment of Drawing 1011.04 Drawings and Descriptions of Three-Dimensional and
Non-Visual Marks 1012 Identification of Goods and Services 1013 Designation of Domestic Representative by
Applicants Not Domiciled in the United States 1014 Section 44 Applications for the Supplemental
Register 1015 Section 44 Registration Independent of Underlying
Foreign Registration
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1016 International Registration As Basis for §44 Application
Chapter 1100 — Intent-to-Use Applications and Requests to Divide
1101 Bona Fide Intention To Use the Mark In Commerce 1102 Initial Examination of Intent-to-Use Applications 1102.01 Substantive Refusals 1102.02 Drawings 1102.03 Intent-to-Use Applications and the Supplemental Register 1102.04 Claims of Acquired Distinctiveness under §2(f) 1103 Allegations of Use 1104 Amendment to Allege Use Under §1(c) of the Act 1104.01 Minimum Filing Requirements for an Amendment to
Allege Use 1104.01(a) Review by Legal Instruments Examiner for Compliance
with Minimum Filing Requirements 1104.01(b) Processing an Amendment to Allege Use That Does Not
Meet Minimum Filing Requirements 1104.01(c) Processing Defective Amendment to Allege Use Filed
With Other Amendments 1104.02 Form of Amendment to Allege Use 1104.03 Time for Filing Amendment to Allege Use 1104.03(a) Use on All Goods/Services Required Before Filing 1104.03(b) The “Blackout Period” 1104.03(c) Processing Amendment to Allege Use Filed During the
Blackout Period 1104.04 Processing Timely Amendment to Allege Use Located
After Publication 1104.05 Amendment to Allege Use Filed in Conjunction With
Application 1104.06 Processing Amendment to Allege Use Received Before
Application is Assigned to an Examining Attorney 1104.07 Amendments to Allege Use and Ex Parte Appeals 1104.08 Requirements for a Complete Amendment to Allege Use 1104.09 Examination of Amendment to Allege Use by Examining
Attorney 1104.09(a) Ownership 1104.09(b) Verification and Date of Execution 1104.09(c) Identification of Goods/Services 1104.09(d) Use in Commerce and Dates of Use 1104.09(e) Specimen 1104.09(f) Drawing 1104.09(g) Fees 1104.09(h) Issuance of Actions by Examining Attorney Related to the
Amendment to Allege Use
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1104.10 Amendment and Withdrawal of Amendment to Allege Use
1104.11 Approval of Amendment to Allege Use After Examination 1105 Publication of Intent-to-Use Applications for
Opposition 1106 Notice of Allowance 1106.01 Issuance of the Notice of Allowance 1106.02 Action by Examining Attorney After Issuance of the
Notice of Allowance 1106.03 Cancellation of Notice of Allowance 1106.04 Correction of Errors in Notice of Allowance 1107 Amendment After Issuance of the Notice of
Allowance and Before Filing of the Statement of Use 1107.01 Examination of Amendment Filed After the Notice of
Allowance Issues But Before a Statement of Use is Filed 1108 Requests for Extensions of Time to File the
Statement of Use 1108.01 Time for Filing Requests for Extensions of Time to File
the Statement of Use 1108.02 Requirements for Request for an Extension of Time to
File a Statement of Use 1108.02(a) Ownership 1108.02(b) Verification 1108.02(c) Filing Fees 1108.02(d) Identification of Goods/Services 1108.02(e) Bona Fide Intention to Use the Mark in Commerce 1108.02(f) Good Cause Required for Extensions Beyond the First
Six-Month Extension 1108.03 Only One Extension Request May Be Filed With or After
a Statement of Use 1108.03(a) Processing Extension Request Filed After Statement of
Use Has Been Referred to Examining Attorney 1108.04 Recourse After Denial of Extension Request 1108.05 Petitions From Denial of Request For An Extension of
Time to File a Statement of Use 1109 Statement of Use Under §1(d) of the Trademark Act 1109.01 Minimum Filing Requirements for a Statement of Use 1109.02 Review for Compliance with Minimum Filing
Requirements 1109.02(a) Petition to Review Refusal Based on Noncompliance with
Minimum Filing Requirements 1109.03 Use on All Goods/Services Required Before Filing 1109.04 Time for Filing Statement of Use 1109.05 Form of Statement of Use 1109.06 Requirements For a Complete Statement of Use 1109.07 Examination of the Statement of Use — In General
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1109.08 Examination of the Statement of Use – New Requirements and Refusals
1109.09 Use in Commerce 1109.09(a) Dates of Use 1109.09(b) Specimens 1109.10 Ownership 1109.11 Verification and Execution 1109.11(a) Authority of Signatory 1109.11(b) Verification of Essential Elements 1109.11(c) Date of Execution 1109.11(d) Signature of Electronically Transmitted Statement of Use 1109.12 Drawing 1109.13 Identification of Goods/Services in Statement of Use 1109.14 Classification 1109.15 Filing Fees 1109.15(a) Processing Deficient Fees 1109.16 Correcting Defects in Statement of Use 1109.16(a) Statutory Requirements That Must Be Met Within
Statutory Filing Period 1109.16(b) Issuance of Examining Attorney’s Office Action Holding
that a Statement of Use Does Not Meet the Requirements
1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements
1109.16(d) Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use
1109.16(e) Applicant’s Recourse After Refusal of Registration 1109.17 Withdrawal of the Statement of Use Prohibited 1109.18 Approval of the Statement of Use 1110 Request to Divide an Application 1110.01 Application May be Divided 1110.02 Fees for Filing Request to Divide 1110.03 Time for Filing Request to Divide 1110.04 Form and Processing of Request to Divide 1110.05 Outstanding Time Periods Apply to Newly Created
Applications 1110.06 Signature of Request to Divide 1110.07 Dividing an Application When Statement of Use is Due 1110.08 Dividing an Application When Response to Office Action
is Due 1110.09 Dividing an Application Subject to a Proceeding at
Trademark Trial and Appeal Board 1110.10 Dividing a §44 Application 1110.11 Dividing a §66(a) Application
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1110.11(a) Dividing a §66(a) Application After Change of Ownership With Respect to Some But Not All of the Goods/Services
1110.12 Division of Registrations
Chapter 1200 - Substantive Examination of Applications
1201 Ownership of Mark 1201.01 Claim of Ownership May Be Based on Use By Related
Companies 1201.02 Identifying the Applicant in the Application 1201.02(a) Identifying the Applicant Properly 1201.02(b) Application Void if Wrong Party Identified as the
Applicant 1201.02(c) Correcting Errors in How the Applicant Is Identified 1201.02(d) Operating Divisions 1201.02(e) Changes in Ownership After Application Is Filed 1201.03 Use by Related Companies 1201.03(a) Use Solely by Related Company Must be Disclosed 1201.03(b) No Explanation of Applicant’s Control Over Use of Mark
by Related Companies Required 1201.03(c) Wholly Owned Related Companies 1201.03(d) Common Stockholders, Directors, or Officers 1201.03(e) Sister Corporations 1201.03(f) License and Franchise Situations 1201.04 Inquiry Regarding Parties Named on Specimens or
Elsewhere in Record 1201.05 Acceptable Claim of Ownership Based on Applicant’s
Own Use 1201.06 Special Situations Pertaining to Ownership 1201.06(a) Applicant Is Merely Distributor or Importer 1201.06(b) Goods Manufactured in a Country Other than Where
Applicant Is Located 1201.07 Related Companies and Likelihood of Confusion 1201.07(a) “Single Source” – “Unity of Control” 1201.07(b) Appropriate Action with Respect to Assertion of Unity of
Control 1201.07(b)(i) When Either Applicant or Registrant Owns All of the
Other Entity 1201.07(b)(ii) When Either Applicant or Registrant Owns Substantially
All of the Other Entity 1201.07(b)(iii) When the Record Does Not Support a Presumption of
Unity of Control 1201.07(b)(iv) When the Record Contradicts an Assertion of Unity of
Control 1202 Use of Subject Matter as Trademark 1202.01 Refusal of Matter Used Solely as a Trade Name
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1202.02 Registration of Trade Dress 1202.02(a) Functionality 1202.02(a)(i) Statutory Basis for Functionality Refusal 1202.02(a)(ii) Purpose of Functionality Doctrine 1202.02(a)(iii) Background and Definitions 1202.02(a)(iii)(A) Functionality 1202.02(a)(iii)(B) “De Jure” and “De Facto” Functionality 1202.02(a)(iv) Burden of Proof in Functionality Determinations 1202.02(a)(v) Evidence and Considerations Regarding Functionality
Determinations 1202.02(a)(v)(A) Utility Patents and Design Patents 1202.02(a)(v)(B) Advertising, Promotional, or Explanatory Material in
Functionality Determinations 1202.02(a)(v)(C) Availability of Alternative Designs in Functionality
Determinations 1202.02(a)(v)(D) Ease or Economy of Manufacture in Functionality
Determinations 1202.02(a)(vi) Aesthetic Functionality 1202.02(a)(vii) Functionality and Service Marks 1202.02(a)(viii) Functionality and Non-Traditional Marks 1202.02(b) Distinctiveness of Trade Dress 1202.02(b)(i) Distinctiveness and Product Design Trade Dress 1202.02(b)(ii) Distinctiveness and Product Packaging Trade Dress for
Goods or Services 1202.02(c) Drawing and Description of Mark in Trade Dress
Applications 1202.02(c)(i) Drawings in Trade Dress Applications 1202.02(c)(ii) Description Required 1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress
Marks 1202.02(c)(iv) Three-Dimensional Marks 1202.02(d) Trade Dress in §1(b) Applications 1202.02(e) Trade Dress in §44 and §66(a) Applications 1202.03 Refusal on Basis of Ornamentation 1202.03(a) Commercial Impression 1202.03(b) Practices of the Trade 1202.03(c) “Secondary Source” 1202.03(d) Evidence of Distinctiveness 1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a)
Applications 1202.03(f) Ornamentation: Case References 1202.03(f)(i) Slogans or Words Used on the Goods 1202.03(f)(ii) Designs Used on the Goods 1202.03(f)(iii) Trade Dress on the Containers for the Goods 1202.03(g) Ornamentation Cases and Acquired Distinctiveness 1202.04 Informational Matter
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1202.05 Color as a Mark 1202.05(a) Color Marks Never Inherently Distinctive 1202.05(b) Functional Color Marks Not Registrable 1202.05(c) Color as a Separable Element 1202.05(d) Drawings of Color Marks Required 1202.05(d)(i) Drawings of Color Marks in Trademark Applications 1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications 1202.05(d)(iii) Amendment of Drawings of Color Marks 1202.05(d)(iv) Drawings for Marks Including Both Color and Words or
Design 1202.05(e) Written Explanation of a Color Mark 1202.05(f) Specimens for Color Marks 1202.05(g) Special Considerations for Service Mark Applications 1202.05(h) Applications for Color Marks Based on §1(b) 1202.05(i) Applications for Color Marks Based on §44 or §66(a) 1202.06 Goods in Trade 1202.06(a) Goods Must Have Utility to Others 1202.06(b) Registration Must Be Refused if Trademark Not Used on
Goods in Trade 1202.06(c) “Goods in Trade” in §1(b), §44, and §66(a) Applications 1202.07 Marks That Identify Columns or Sections of Publications 1202.07(a) Marks That Identify Columns or Sections of Printed
Publications 1202.07(a)(i) Syndicated Columns and Sections 1202.07(a)(ii) Non-Syndicated Columns and Sections 1202.07(a)(iii) Marks That Identify Columns and Sections of Printed
Publications in §1(b), §44, and §66(a) Applications 1202.07(b) Marks That Identify Columns and Sections of Online
Publications 1202.08 Title of a Single Creative Work 1202.08(a) What Constitutes a Single Creative Work 1202.08(b) What Does Not Constitute a Single Creative Work 1202.08(c) Complete Title of the Work – Evidence of a Series 1202.08(d) Portion of a Title of the Work 1202.08(d)(i) Mark Must Create a Separate Commercial Impression 1202.08(d)(ii) Establishing a Series When the Mark is a Portion of the
Title 1202.08(d)(iii) Evidence that the Portion of the Title is Promoted or
Recognized as a Mark 1202.08(e) Identification of Goods/Services 1202.08(f) Title of a Single Work in §1(b), §44, and §66(a)
Applications 1202.09 Names of Artists and Authors 1202.09(a) Names and Pseudonyms of Authors and Performing
Artists 1202.09(a)(i) Author or Performer’s Name – Evidence of a Series
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1202.09(a)(ii) Evidence that the Name is a Source Identifier 1202.09(a)(ii)(A) Promotion and Recognition of the Name 1202.09(a)(ii)(B) Control over the Nature and Quality of the Goods 1202.09(a)(iii) Names of Authors and Performing Artists in §1(b), §44,
and §66(a) Applications 1202.09(b) Names of Artists Used on Original Works of Art 1202.10 Names and Designs of Characters in Creative Works 1202.10(a) Names and Designs of Characters in Creative Works in
§1(b), §44, or §66(a) Applications 1202.11 Background Designs and Shapes 1202.12 Varietal and Cultivar Names (Examination of Applications
for Seeds and Plants) 1202.13 Scent, Fragrance, or Flavor 1202.14 Holograms 1202.15 Sound Marks 1202.16 Model or Grade Designations 1203 Refusal on Basis of Immoral or Scandalous Matter;
Deceptive Matter; Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.01 Immoral or Scandalous Matter 1203.02 Deceptive Matter 1203.02(a) Types of Deceptive Marks 1203.02(b) Elements of a §2(a) Deceptiveness Refusal 1203.02(c) Distinction between Marks Comprising Deceptive Matter
(§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1)) 1203.02(d) Determining Materiality 1203.02(d)(i) Objective Criteria 1203.02(d)(ii) Mere Personal Preference 1203.02(e) Procedures for Issuing §2(a) Deceptive Refusals 1203.02(e)(i) When the Mark is Clearly Misdescriptive 1203.02(e)(ii) When It is Not Clear Whether the Mark is Misdescriptive 1203.02(f) Responding to a §2(a) Deceptiveness Refusal 1203.02(f)(i) Amending the Identification of Goods or Services 1203.02(f)(ii) Other Arguments 1203.02(g) Deceptive Matter: Case References 1203.03 Matter which May Disparage, Falsely Suggest a
Connection, or Bring into Contempt or Disrepute 1203.03(a) “Persons” Defined 1203.03(b) “National Symbols” Defined 1203.03(c) Disparagement, Bringing into Contempt, and Bringing
into Disrepute 1203.03(d) Disparagement, Bringing into Contempt, and Bringing
into Disrepute: Case References 1203.03(e) False Suggestion of a Connection 1203.03(f) False Suggestion of a Connection: Case References
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1204 Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation
1204.01 Flags and Simulations of Flags 1204.01(a) Flags and Simulations of Flags are Refused 1204.01(b) Stylized Flag Designs are not Refused under §2(b) 1204.01(c) Caselaw Interpreting "Simulation of Flag" 1204.01(d) Description of the Mark 1204.01(e) Flags Not Presently Used as National Flags 1204.02 Government Insignia 1204.02(a) Designs that are Insignia Under §2(b) Must Be Refused 1204.02(b) Examples of Insignia That Should Be Refused 1204.02(c) Examples of Designs That Should Not Be Refused 1204.02(d) Caselaw Interpreting Insignia Under §2(b) 1204.03 Other Refusals May be Appropriate 1204.04 Responding to §2(b) Refusal 1204.04(a) Absolute Bar to Registration 1204.04(b) Deletion of §2(b) Matter 1204.04(b)(i) Examples of Matter That May and May Not Be Deleted 1204.05 Resources 1205 Refusal on Basis of Matter Protected by Statute or
Convention 1205.01 Statutory Protection 1205.01(a) Examination Procedures for Marks Comprising a Red
Crystal or Red Crescent on a White Background, or the Phrases “Red Crescent” or “Third Protocol Emblem”
1205.01(a)(i) First Use After December 8, 2005 1205.01(a)(ii) First Use On or Before December 8, 2005 – Grandfather
Clause 1205.01(a)(iii) Date of First Use Not Specified 1205.01(a)(iv) Nature of the Mark 1205.01(a)(v) Amendments to Disclaim, Delete, or Amend the
Unregistrable Symbol or Designation 1205.01(a)(vi) Parties Authorized to use the Red Crescent and Third
Protocol Emblem 1205.02 Article 6ter of the Paris Convention 1206 Refusal on Basis of Name, Portrait, or Signature of
Particular Living Individual or Deceased U.S. President Without Consent
1206.01 Name, Portrait, or Signature of Particular Living Individual 1206.02 Connection With Goods or Services 1206.03 When Inquiry is Required 1206.04 Consent of Individual or President’s Widow 1206.04(a) Consent Statement Must Be Written Consent to
Registration
-xxviii- October 2009
1206.04(b) Consent May Be Presumed From Signature of Application
1206.04(c) New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant
1206.04(d) Implicit Consent 1206.05 Names and Likenesses That Do Not Identify a Particular
Living Individual 1207 Refusal on Basis of Likelihood of Confusion,
Mistake, or Deception 1207.01 Likelihood of Confusion 1207.01(a) Relatedness of the Goods or Services 1207.01(a)(i) Goods or Services Need Not Be Identical 1207.01(a)(ii) Goods May Be Related to Services 1207.01(a)(ii)(A) Food and Beverage Products Versus Restaurant
Services 1207.01(a)(iii) Reliance on Identification of Goods/Services in
Registration and Application 1207.01(a)(iv) No “Per Se” Rule 1207.01(a)(v) Expansion of Trade Doctrine 1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services 1207.01(b) Similarity of the Marks 1207.01(b)(i) Word Marks 1207.01(b)(ii) Similarity In Appearance 1207.01(b)(iii) Comparing Marks That Contain Additional Matter 1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents 1207.01(b)(v) Similarity in Meaning 1207.01(b)(vi) Doctrine of Foreign Equivalents 1207.01(b)(vi)(A) Background 1207.01(b)(vi)(B) When an Ordinary American Purchaser Would “Stop and
Translate” 1207.01(b)(vi)(C) Likelihood of Confusion Factors Still Apply When
Assessing Whether Marks are Confusingly Similar 1207.01(b)(vii) Transposition of Terms 1207.01(b)(viii) Marks Consisting of Multiple Words 1207.01(b)(ix) Weak or Descriptive Marks 1207.01(b)(x) Parody Marks 1207.01(c) Design Marks 1207.01(c)(i) Legal Equivalents – Comparison of Words and Their
Equivalent Designs 1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs 1207.01(c)(iii) Comparison of Standard Character Marks and Special
Form Marks 1207.01(c)(iv) Matter Depicted in Broken Lines 1207.01(d) Miscellaneous Considerations 1207.01(d)(i) Doubt Resolved in Favor of Registrant 1207.01(d)(ii) Absence of Actual Confusion
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1207.01(d)(iii) Third-Party Registrations and Evidence of Third-Party Use
1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding
1207.01(d)(v) Classification of Goods/Services 1207.01(d)(vi) Prior Decisions of Examining Attorneys 1207.01(d)(vii) Sophisticated Purchasers 1207.01(d)(viii) Consent Agreements 1207.01(d)(ix) Fame of Mark 1207.01(d)(x) Conflicting Marks Owned by Different Parties 1207.01(d)(xi) Family of Marks 1207.02 Marks That Are Likely to Deceive 1207.03 Marks Previously Used in United States but Not
Registered 1207.04 Concurrent Use Registration 1207.04(a) Concurrent Use – In General 1207.04(b) Filing Basis of Application Seeking Concurrent Use 1207.04(c) Basis for Concurrent Use Registration 1207.04(d) Determining Eligibility for Concurrent Use 1207.04(d)(i) Requirements for All Concurrent Use Applications 1207.04(e) Applications Subject to Concurrent Use Proceeding
Before the Trademark Trial and Appeal Board 1207.04(e)(i) Preparing the Record for Publication 1207.04(f) Application for Concurrent Use Registration Pursuant to
Court Decree 1207.04(f)(i) Preparing the Record for Publication 1208 Conflicting Marks in Pending Applications 1208.01 Priority for Publication or Issue Based on Effective Filing
Date 1208.01(a) What Constitutes Conflict Between Pending Applications 1208.01(b) What Constitutes Effective Filing Date 1208.01(c) Change in Effective Filing Date During Examination 1208.01(d) Examination of Conflicting Marks After Reinstatement or
Revival 1208.02 Conflicting Applications Examination Procedure 1208.02(a) Examination of Application with Earliest Effective Filing
Date 1208.02(b) Action on Later-Filed Application: Giving Notice of the
Earlier Application or Applications 1208.02(c) Suspension of Later-Filed Application 1208.02(d) Action on Later-Filed Application upon Disposition of the
Earlier Application or Applications 1208.02(e) Applicant’s Argument on Issues of Conflict 1208.02(f) Conflicting Mark Mistakenly Published or Approved for
Issuance on the Supplemental Register 1208.03 Procedure Relating to Possibility of Interference
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1208.03(a) Procedures on Request for Interference 1208.03(b) Decision on Request for Interference 1208.03(c) Procedure When Interference Is to be Declared 1209 Refusal on Basis of Descriptiveness 1209.01 Distinctiveness/Descriptiveness Continuum 1209.01(a) Fanciful, Arbitrary, and Suggestive Marks 1209.01(b) Merely Descriptive Marks 1209.01(c) Generic Terms 1209.01(c)(i) Test 1209.01(c)(ii) Terminology 1209.01(c)(iii) Generic Matter: Case References 1209.02 Procedure for Descriptiveness and/or Genericness
Refusal 1209.02(a) Descriptive Marks – Advisory Statement That Mark
Appears to Be Generic 1209.02(a)(i) Amendment to Supplemental Register in Response to
Office Action 1209.02(a)(ii) Assertion of §2(f) in Response to Office Action 1209.02(b) Descriptive and Possibly Generic Marks – Assertion of
§2(f) in Application 1209.03 Considerations Relevant to Determination of
Descriptiveness 1209.03(a) Third-Party Registrations 1209.03(b) No Dictionary Listing 1209.03(c) First or Only User 1209.03(d) Combined Terms 1209.03(e) More Than One Meaning 1209.03(f) Picture or Illustration 1209.03(g) Foreign Equivalents 1209.03(h) Incongruity 1209.03(i) Intended Users 1209.03(j) Phonetic Equivalent 1209.03(k) Laudatory Terms 1209.03(l) Telephone Numbers 1209.03(m) Domain Names 1209.03(n) “America” or “American” 1209.03(o) “National,” “International,” “Global,” and “Worldwide” 1209.03(p) Function or Purpose 1209.03(q) Source or Provider of Goods or Services 1209.03(r) Retail Store and Distributorship Services 1209.03(s) Slogans 1209.03(t) Repetition of Descriptive Term 1209.03(u) Punctuation 1209.04 Deceptively Misdescriptive Marks 1210 Refusal on Basis of Geographic Significance 1210.01 Elements
-xxxi- October 2009
1210.01(a) Geographically Descriptive Marks – Test 1210.01(b) Geographically Deceptively Misdescriptive Marks – Test 1210.01(c) Geographically Deceptive Marks – Test 1210.02 Primarily Geographic Significance 1210.02(a) Geographic Locations 1210.02(b) Primary Significance 1210.02(b)(i) Other Meanings 1210.02(b)(i)(A) Surname Significance 1210.02(b)(ii) More Than One Geographic Location With Same Name 1210.02(b)(iii) Non-Geographic Characteristics of Goods or Services 1210.02(b)(iv) “America” or “American” and Similar Terms in Marks 1210.02(c) Geographic Terms Combined With Additional Matter 1210.02(c)(i) Two Geographic Terms Combined 1210.02(c)(ii) Geographic Terms Combined With Descriptive or
Generic Matter 1210.02(c)(iii) Arbitrary, Fanciful, or Suggestive Composites 1210.03 Geographic Origin of the Goods or Services 1210.04 Goods/Place or Services/Place Association 1210.04(a) Establishing Goods/Place Association 1210.04(b) Establishing Services/Place Association 1210.04(c) Obscure or Remote Geographic Marks 1210.04(d) Arbitrary Use of Geographic Terms 1210.05 Geographically Deceptive Marks 1210.05(a) Basis for Refusal 1210.05(b) Elements of a §2(e)(3) Refusal 1210.05(c) Determining Materiality 1210.05(c)(i) Materiality In Cases Involving Goods 1210.05(c)(ii) Materiality In Cases Involving Services 1210.05(d) Procedures for Issuing Geographically Deceptive
Refusals 1210.05(d)(i) Neither Applicant Nor Goods/Services Come from the
Place Named 1210.05(d)(ii) It is Not Clear Whether the Goods/Services Originate
From the Place Named 1210.05(e) Geographically Deceptive Matter: Case References 1210.06 Procedure for Examining Geographic Composite Marks 1210.06(a) Marks That Include Primarily Geographically Descriptive
Terms Combined With Additional Matter 1210.06(b) Marks That Include Primarily Geographically Deceptively
Misdescriptive and Deceptive Terms Combined With Additional Matter
1210.07 Supplemental Register and Section 2(f) 1210.07(a) Registrability of Geographic Terms on the Supplemental
Register 1210.07(b) Registrability of Geographic Terms Under Section 2(f) 1210.08 Geographical Indications Used on Wines and Spirits
-xxxii- October 2009
1210.08(a) Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place
1210.08(b) Geographical Indications Used on Wines and Spirits That Originate in the Named Place
1210.08(c) Geographical Indications That Are Generic for Wines and Spirits
1210.09 Geographic Certification Marks 1210.10 Doctrine of Foreign Equivalents 1211 Refusal on Basis of Surname 1211.01 “Primarily Merely a Surname” 1211.01(a) Non-Surname Significance 1211.01(a)(i) Ordinary Language Meaning 1211.01(a)(ii) Phonetic Equivalent of Term With Ordinary Language
Meaning 1211.01(a)(iii) Geographical Significance 1211.01(a)(iv) Historical Place or Person 1211.01(a)(v) Rare Surnames 1211.01(a)(vi) “Look And Feel” of a Surname 1211.01(a)(vii) Doctrine of Foreign Equivalents 1211.01(b) Surname Combined with Additional Matter 1211.01(b)(i) Double Surnames 1211.01(b)(ii) Stylization or Design Elements 1211.01(b)(iii) Surname Combined with Initials 1211.01(b)(iv) Surname Combined with Title 1211.01(b)(v) Surname in Plural or Possessive Form 1211.01(b)(vi) Surname Combined with Wording 1211.01(b)(vii) Surname Combined With Domain Name 1211.01(b)(viii) – Surname Combined With Legal or Familial Entity
Designation 1211.02 Evidence Relating to Surname Refusal 1211.02(a) Evidentiary Burden – Generally 1211.02(b) Evidentiary Considerations 1211.02(b)(i) Telephone Directory Listings 1211.02(b)(ii) LexisNexis® Research Database Evidence 1211.02(b)(iii) U.S. Census Database Evidence 1211.02(b)(iv) Surname of Person Associated with Applicant 1211.02(b)(v) Specimens Confirming Surname Significance of Term 1211.02(b)(vi) Negative Dictionary Evidence 1211.02(b)(vii) Evidence of Fame of a Mark 1212 Acquired Distinctiveness or Secondary Meaning 1212.01 General Evidentiary Matters 1212.02 General Procedural Matters 1212.02(a) Situations in which a Claim of Distinctiveness under §2(f)
Is Appropriate 1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a
Concession that Matter Is Not Inherently Distinctive
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1212.02(c) Claiming §2(f) Distinctiveness in the Alternative 1212.02(d) Unnecessary §2(f) Claims 1212.02(e) Disclaimers in Applications Claiming Distinctiveness
under §2(f) 1212.02(f) Section 2(f) Claim in Part 1212.02(f)(i) Section 2(f) Claim as to a Portion of the Mark 1212.02(f)(ii) Section 2(f) Claim Restricted to Particular
Goods/Services/Classes 1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or
Appropriate Kind/Amount of Evidence 1212.02(h) Nonfinal and Final Refusals 1212.02(i) Section 2(f) Claim with Respect to Incapable Matter 1212.03 Evidence of Distinctiveness Under §2(f) 1212.04 Prior Registrations as Proof of Distinctiveness 1212.04(a) Sufficiency of Claim vis-à-vis Nature of the Mark 1212.04(b) “Same Mark” 1212.04(c) Relatedness of Goods or Services 1212.04(d) Registration Must Be in Full Force and Effect and on
Principal Register or under Act of 1905 1212.04(e) Form of §2(f) Claim Based on Ownership of Prior
Registrations 1212.05 Five Years of Use as Proof of Distinctiveness 1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark 1212.05(b) “Substantially Exclusive and Continuous” 1212.05(c) Use “as a Mark” 1212.05(d) Form of the Proof of Five Years’ Use 1212.06 Establishing Distinctiveness by Actual Evidence 1212.06(a) Long Use of the Mark in Commerce 1212.06(b) Advertising Expenditures 1212.06(c) Affidavits or Declarations Asserting Recognition of Mark
as Source Indicator 1212.06(d) Survey Evidence, Market Research and Consumer
Reaction Studies 1212.06(e) Miscellaneous Considerations Regarding Evidence
Submitted to Establish Distinctiveness 1212.06(e)(i) First or Only User 1212.06(e)(ii) State Trademark Registrations 1212.06(e)(iii) Design Patent 1212.06(e)(iv) Acquiescence to Demands of Competitors 1212.07 Form of Application Asserting Distinctiveness 1212.08 Section 44 and §66(a) Applications and Distinctiveness 1212.09 Section 1(b) Applications and Distinctiveness 1212.09(a) Section 2(f) Claim Requires Prior Use 1212.09(b) Claim of §2(f) “in Part” in §1(b) Application 1212.10 Printing “§2(f)” Notations 1213 Disclaimer of Elements in Marks
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1213.01 History of Disclaimer Practice 1213.01(a) Discretion in Requiring Disclaimer 1213.01(b) Refusal to Register Because of Failure to Disclaim 1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable
Matter 1213.02 “Composite” Marks 1213.03 Disclaimer of Unregistrable Components of Marks 1213.03(a) “Unregistrable Components” in General 1213.03(b) Generic Matter and Matter Which Does Not Function as a
Mark 1213.03(c) Pictorial Representations of Descriptive Matter 1213.03(d) Entity Designations 1213.04 Trade Names 1213.05 “Unitary” Marks 1213.05(a) Compound Word Marks 1213.05(a)(i) Telescoped Words 1213.05(a)(ii) Compound Words Formed with Hyphen or Other
Punctuation 1213.05(b) Slogans 1213.05(c) “Double Entendre” 1213.05(d) Incongruity 1213.05(e) Sound Patterns 1213.05(f) Display of Mark 1213.06 Entire Mark May Not Be Disclaimed 1213.07 Removal Rather than Disclaimer 1213.08 Form of Disclaimers 1213.08(a) Wording of Disclaimer 1213.08(a)(i) Standardized Printing Format for Disclaimer 1213.08(a)(ii) Unacceptable Wording for Disclaimer 1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety 1213.08(c) Disclaimer of Misspelled Words 1213.08(d) Disclaimer of Non-English Words 1213.09 Mark of Another May Not Be Registered with Disclaimer 1213.10 Disclaimer in Relation to Likelihood of Confusion 1213.11 Acquiring Rights in Disclaimed Matter 1214 “Phantom” Elements in Marks 1214.01 Single Application May Seek Registration of Only One
Mark 1214.02 Agreement of Mark on Drawing With Mark on Specimens
or Foreign Registration 1214.03 “Phantom Marks” in §1(b) Applications 1214.04 “Phantom Marks” in §44 and §66(a) Applications 1215 Marks Composed, in Whole or in Part, of Domain
Names 1215.01 Background 1215.02 Use as a Mark
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1215.02(a) Use Applications 1215.02(b) Advertising One’s Own Products or Services on the
Internet is not a Service 1215.02(c) Agreement of Mark on Drawing with Mark on Specimens
of Use 1215.02(d) Marks Comprised Solely of TLDs for Domain Name
Registry Services 1215.02(e) Section 1(b) Applications 1215.02(f) Section 44 and §66(a) Applications 1215.03 Surnames 1215.04 Descriptiveness 1215.05 Generic Refusals 1215.06 Marks Containing Geographical Matter 1215.07 Disclaimers 1215.08 Material Alteration 1215.08(a) Adding or Deleting TLDs in Domain Name Marks 1215.08(b) Adding or Deleting TLDs in Other Marks 1215.09 Likelihood of Confusion 1215.10 Marks Containing the Phonetic Equivalent of a Top-Level
Domain 1216 Effect of Applicant’s Prior Registrations 1216.01 Decisions Involving Prior Registrations Not Controlling 1216.02 Effect of “Incontestability” in Ex Parte Examination 1217 Res Judicata, Collateral Estoppel, and Stare Decisis
Chapter 1300 - Service Marks, Collective Marks, and Certification Marks
1301 Service Marks 1301.01 What Is a Service? 1301.01(a) Criteria for Determining What Constitutes a Service 1301.01(a)(i) Performance of a Real Activity 1301.01(a)(ii) For the Benefit of Others 1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Provision of
Goods or Performance of Other Services 1301.01(b) Whether Particular Activities Constitute “Services” 1301.01(b)(i) Contests and Promotional Activities 1301.01(b)(ii) Warranty or Guarantee of Repair 1301.01(b)(iii) Publishing One’s Own Periodical 1301.01(b)(iv) Soliciting Investors 1301.01(b)(v) Informational Services Ancillary to the Sale of Goods 1301.02 What Is a Service Mark 1301.02(a) Matter That Does Not Function as a Service Mark 1301.02(b) Names of Characters or Personal Names as Service
Marks 1301.02(c) Three-Dimensional Service Marks 1301.02(d) Titles of Radio and Television Programs
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1301.02(e) Process, System, or Method 1301.02(f) Computer Software 1301.03 Use of Service Mark in Commerce 1301.03(a) Use of Service Mark in Advertising to Identify Services 1301.03(b) Rendering of Service in Commerce Regulable by
Congress 1301.04 Specimens of Use for Service Marks 1301.04(a) Specimens Must Show Use as a Service Mark 1301.04(b) Association Between Mark and Services 1301.04(c) Letterhead 1301.04(d) Specimens for Entertainment Services 1301.05 Identification and Classification of Services 1302 Collective Marks Generally 1302.01 History of Collective Marks 1303 Collective Trademarks and Collective Service Marks 1303.01 Use of Collective Trademark and Collective Service Mark
Is By Members 1303.02 Examination of Collective Trademark and Collective
Service Mark Applications 1303.02(a) Classification of Goods and Services in Collective
Trademark and Collective Service Mark Applications 1303.02(b) Specimens of Use for Collective Trademark and
Collective Service Mark Applications 1303.02(c) Special Elements of Collective Trademark and Collective
Service Mark Applications 1303.02(c)(i) Manner of Control 1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause 1304 Collective Membership Marks 1304.01 History of Membership Marks 1304.02 Purpose of Membership Mark 1304.03 Use of Membership Mark Is by Members 1304.04 Who May Apply to Register Membership Mark 1304.05 Who May Own Membership Mark 1304.06 Nature of the Collective Group 1304.07 Character of the Mark 1304.08 Examination of Collective Membership Mark 1304.08(a) Matter That Does Not Function as a Membership Mark 1304.08(a)(i) Degree or Title Designations Contrasted to Membership
Marks 1304.08(b) Likelihood of Confusion 1304.08(c) Classification in Membership Mark Applications 1304.08(d) Identifications in Membership Mark Applications 1304.08(e) Specimens of Use for Membership Marks 1304.08(f) Special Elements of Applications for Collective
Membership Marks 1304.08(f)(i) Exercise of Control
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1304.08(f)(ii) Manner of Control 1304.08(f)(iii) Use by Members Indicated in Dates-of-Use Clause 1305 Trademarks and Service Marks Used by Collective
Organizations 1306 Certification Marks 1306.01 Definition of Certification Mark 1306.01(a) Use Is by Person Other than Owner 1306.01(b) Purpose Is to Certify, Not to Indicate Source 1306.02 Certification Marks That Are Indications of Regional
Origin 1306.02(a) Indicating the Region 1306.02(b) Authority to Control a Geographical Term 1306.02(c) A Government Entity as Applicant for a Geographical
Certification Mark 1306.03 Certification Marks Certifying that Labor Was Performed
by Specific Group or Individual 1306.04 Ownership of Certification Marks 1306.05 Characteristics of Certification Marks 1306.05(a) Same Mark Not Registrable as Certification Mark and as
Any Other Type of Mark 1306.05(b) Cancellation of Applicant’s Prior Registration Required by
Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa
1306.06 Examination of Certification Mark Applications 1306.06(a) The Mark on the Drawing 1306.06(b) Specimens of Use for Certification Marks 1306.06(c) Relation Between Certification Mark and Trademark or
Service Mark on Specimens 1306.06(d) Classification of Goods and Services in Certification Mark
Applications 1306.06(e) Identification of Goods and Services in Certification Mark
Applications 1306.06(f) Special Elements of Certification Mark Applications 1306.06(f)(i) Statement of What the Mark Certifies 1306.06(f)(ii) Standards 1306.06(f)(iii) Exercise of Control 1306.06(f)(iv) Use by Others Indicated in Dates-of-Use Clause 1306.06(f)(v) Statement That Mark is Not Used by Applicant 1306.06(f)(vi) Amendment to Different Type of Mark 1306.07 Relationship of §14 (Cancellation) to Examination of
Certification Mark Applications 1306.08 Registration of Certification Mark on Basis of Foreign
Registration 1306.09 Uncertainty Regarding Type of Mark 1306.09(a) Distinction Between Certification Mark and Collective
Mark
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1306.09(b) Distinguishing Certification Mark Use from Related- Company Use of Trademark or Service Mark
1306.09(c) Patent Licenses 1307 Registration as Correct Type of Mark
Chapter 1400 — Classification and Identification of Goods and Services
1401 Classification 1401.01 Statutory Authority 1401.02 International Trademark Classification Adopted 1401.02(a) Headings of International Trademark Classes 1401.02(b) Short Titles for International Trademark Classes 1401.02(c) International Alphabetical List 1401.03 Designation of Class 1401.03(a) Designation of Class by Applicant Normally Initially
Accepted in Applications Under §§1 and 44 1401.03(b) Designation of Class by USPTO When Class Number Is
Not Designated or Is Inaccurate in Application Under §1 or §44
1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44
1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications
1401.04 Classification Determines Number of Fees 1401.04(a) Prior United States Classification System 1401.04(b) Limiting Goods and Services to the Number of Classes
for Which Filing Fees Are Paid 1401.05 Criteria on Which International Classification Is Based 1401.05(a) Identification and Classification of Kits and Gift Baskets 1401.05(b) Medical vs. Non-Medical Goods 1401.06 Specimen(s) as Related to Classification 1401.06(a) Specimen Discloses Special Characteristics 1401.07 Classification and Plurality of Uses 1401.08 Classification and the Identification of Goods and
Services 1401.09 Changes in Practice Based on the Restructuring of
International Class 42 in the 8th Edition of the Nice Agreement
1401.09(a) Elimination of “Miscellaneous Class Designation” 1401.10 General Summary of Major Changes in Practice Based
on the 9th Edition of the Nice Agreement 1401.10(a) Legal Services Transferred to International Class 45 1401.10(b) Goods Made of Precious Metal are Classified According
to Their Function 1401.10(c) Transfer of Aquaria and Related Items 1401.11 Implementation of Changes to the Nice Agreement
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1401.12 Effective Date of Changes to USPTO ID Manual 1402 Identification of Goods and Services 1402.01 Specifying the Goods and/or Services - in General 1402.01(a) General Guidelines for Acceptable Identifications of
Goods or Services 1402.01(b) Identification of Goods and Services in a §44 Application 1402.01(c) Identification of Goods and Services in a §66(a)
Application 1402.01(d) Location of “Identification of Goods and Services” 1402.01(e) Responsibilities of Examining Attorney as to Identification 1402.02 Entitlement to Filing Date With Respect to Identification
of Goods and Services 1402.03 Specificity of Terms Used in Identifying Goods and
Services 1402.03(a) Inclusive Terminology 1402.03(b) House Marks 1402.03(c) Marks for a “Full Line of …” 1402.03(d) Identifying Computer Programs with Specificity 1402.03(e) Identifying Publications with Specificity 1402.04 Acceptable Identification of Goods and Services Manual 1402.05 Accuracy of Identification 1402.05(a) Goods That Are Components or Ingredients 1402.05(b) Material Composition 1402.06 Amendments Permitted to Clarify or Limit Identification 1402.06(a) Limiting the Identification of Goods and Services 1402.06(b) Clarifying the Identification of Goods and Services 1402.07 Scope of Identification of Goods and Services for
Purposes of Amendment 1402.07(a) The “Ordinary-Meaning” Test 1402.07(b) Ambiguous Identifications 1402.07(c) Unambiguous Identifications 1402.07(d) Permissible Scope of Identification Not Affected by
Proposed Amendment That Is Unacceptable 1402.07(e) Permissible Scope of Identification Affected by Proposed
Amendment That Is Accepted 1402.08 Moving Goods and Services Between Companion
Applications 1402.09 Use of Registered Marks Inappropriate in Identifications 1402.10 Identification of Goods and Services in Documents Filed
in Connection with §1(b) Applications 1402.11 Identification of Services 1402.11(a) Computer Services 1402.11(b) Information Services 1402.11(c) Association Services and “Promoting the Interest of”
Services 1402.11(d) Charitable Services, Other than Monetary
-xl- October 2009
1402.11(e) Consulting Services 1402.11(f) Distribution of Videotapes, Audiotapes, Videodiscs, and
Similar Items 1402.11(g) Recorded Entertainment Services 1402.11(h) Identification of “Bonus Programs” 1402.11(i) Recognition of Industry Terms 1402.11(j) Issuing Awards 1402.12 Parentheses and Brackets Should Not be Used in
Identifications of Goods and Services 1402.13 Requirement For Amendment of Portion of Identification
of Goods/Services 1402.14 Identification of Goods/Services Must Conform to Rules
and Policies in Effect at the Time Registration is Sought 1402.15 Procedures for Processing Unacceptable Amendments to
Identifications 1403 Combined or Multiple-Class Application 1403.01 Requirements for Combined or Multiple-Class Application 1403.02 Amendment of Combined or Multiple-Class Application 1403.02(a) Deletion of Classes 1403.02(b) Correction of Classification 1403.02(c) Addition of Classes 1403.03 Dividing of Combined or Multiple-Class Application 1403.04 Combined or Multiple-Class Marks in Official Gazette 1403.05 Refusals and Oppositions as to Less Than All the
Classes in a Multiple Class Application 1403.06 Fees for Action After Filing, Multiple Classes 1403.07 Surrender or Amendment in Multiple-Class Registrations
Chapter 1500 - Post-Examination Procedures
1501 Appeal to Trademark Trial and Appeal Board 1501.01 Appealable Matter 1501.02 Appeal Briefs 1501.02(a) Applicant’s Appeal Brief 1501.02(b) Examining Attorney’s Appeal Brief 1501.02(c) Reply Briefs in Ex Parte Appeals 1501.03 Withdrawal of Refusal or Requirement After Appeal 1501.04 Fee for Appeal 1501.05 Amendment During Appeal 1501.06 Amendment After Decision on Appeal 1501.07 Examining Attorney’s Request for Reconsideration 1502 Publication in Trademark Official Gazette 1502.01 Notification of Clerical Errors in Trademark Official
Gazette 1503 Opposition 1503.01 Filing a Notice of Opposition
-xli- October 2009
1503.02 Joining Persons in an Opposition 1503.03 Time for Opposing 1503.04 Extension of Time to Oppose 1503.05 Opposition to §66(a) Applications 1504 Jurisdiction over Application 1504.01 Jurisdiction of Examining Attorney 1504.02 Jurisdiction of Trademark Trial and Appeal Board 1504.03 Action By Examining Attorney After Publication 1504.04 Restoration of Jurisdiction to Examining Attorney by
Director 1504.04(a) Request for Jurisdiction 1504.05 Remand to Examining Attorney by Trademark Trial and
Appeal Board 1504.05(a) Request for Remand 1505 Amendments Filed by Applicants After Publication 1505.01 Procedures for Processing Amendments Filed by the
Applicant After Publication 1505.01(a) Form and Timing of Amendments 1505.01(b) Processing Amendments to §§1(a), 44, and 66(a)
Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued
1505.01(b)(i) Acceptable Amendments 1505.01(b)(ii) Unacceptable Amendments 1505.01(c) Processing Amendments to §1(b) Applications In Cases
Where No Opposition Has Been Filed and No Notice of Allowance Has Issued
1505.01(c)(i) Acceptable Amendments 1505.01(c)(ii) Unacceptable Amendments 1505.01(d) Processing Amendments Filed Between Issuance of the
Notice of Allowance and Filing of Statement of Use 1505.01(e) Processing Amendments in Cases Where a Request for
Extension of Time to Oppose Has Been Filed or Granted 1505.01(f) Processing Amendments in Cases Where an Opposition
Has Been Filed 1505.02 Types of Amendments After Publication 1505.02(a) Amendments to the Identification of Goods or Services 1505.02(b) Amendments to Classification 1505.02(c) Amendments to Marks 1505.02(d) Amendments to the Dates of Use 1505.02(e) Amendments Adding or Deleting Disclaimers 1505.02(f) Amendment of the Basis 1505.02(g) Amendments to the Applicant’s Name, Citizenship, or
Entity Type 1505.03 Republication for Opposition 1505.03(a) When Republication is Required 1505.03(b) When Republication is Not Required
-xlii- October 2009
1506 Concurrent Use Registration Proceeding 1507 Interference
Chapter 1600 - Registration and Post Registration Procedures
1601 Types of Registrations 1601.01 Registrations Now Being Issued 1601.01(a) Certificate of Registration 1601.01(b) Duplicate Certificate of Registration 1601.01(c) Registered Extension of Protection of International
Registration to the United States 1601.02 Repeal of Prior Acts 1601.03 Additional Registration under Act of 1946 1601.04 1881 and 1905 Act Registrations 1601.05 1920 Act Registrations 1601.06 Registrations Issued Under Prior Classification Systems 1601.07 Form of Copies of Registrations 1602 Duration and Maintenance of Registrations 1602.01 Act of 1946 1602.02 Acts of 1881 and 1905 1602.03 Act of 1920 1602.04 Trademark Law Treaty Implementation Act Changes 1603 Bringing Prior Act Registrations Under 1946 Act,
§12(c) 1603.01 Notification and Printing of Mark in Official Gazette 1603.02 Cancellation and Incontestability 1603.03 Affidavits of Use in Commerce Required 1604 Affidavit of Use or Excusable Nonuse of Mark in
Commerce under §8 1604.01 Registrations to Which §8 Affidavit Pertains 1604.02 Notice of When Affidavit Is Due 1604.03 Form for Filing §8 Affidavit 1604.04 Time for Filing §8 Affidavit 1604.04(a) Premature Filing of §8 Affidavit 1604.04(b) Registrations in Twenty-Year Terms 1604.05 Requirements for §8 Affidavit or Declaration of Use or
Excusable Nonuse 1604.06 Fees for §8 Affidavit 1604.06(a) Filing Fee for Affidavit or Declaration 1604.06(b) Grace Period Surcharge and Deficiency Surcharge 1604.06(c) Processing Affidavit or Declaration Filed With Insufficient
Fees 1604.07 Ownership, and Who May File §8 Affidavit 1604.07(a) Affidavit or Declaration Must be Filed by Owner 1604.07(b) Establishing Ownership 1604.07(c) Acceptance Notice Issued in Name of Owner of Record
-xliii- October 2009
1604.07(d) Changes of Legal Entity 1604.07(e) Changes of Name 1604.07(f) Correction of Mistake in Setting Forth the Name of the
Owner 1604.08 Execution of Affidavit or Declaration 1604.08(a) Persons Who May Sign Affidavit or Declaration 1604.08(b) Date of Execution of Affidavit or Declaration 1604.08(c) Signature of Electronically Transmitted Affidavit or
Declaration 1604.08(d) Form and Wording of Verification 1604.09 Goods and/or Services Set Forth in §8 Affidavit or
Declaration 1604.09(a) Goods and/or Services Must be Specified or Expressly
Incorporated by Reference 1604.09(b) Deletion of Goods and/or Services 1604.09(c) Failure to List All Goods and/or Services Recited in
Registration 1604.09(d) New Goods and/or Services Cannot be Added 1604.10 Use in Commerce 1604.11 “Excusable Nonuse” of Mark 1604.12 Specimen Showing Current Use of Mark in Commerce 1604.12(a) Specimen for Each Class Required 1604.12(b) Specimens in Electronically Filed Affidavits 1604.12(c) Substitute Specimens 1604.13 Differences in the Mark as Used on the Specimen and
the Mark as Registered 1604.13(a) Possible Amendment of Mark in Registration 1604.14 Designation of Domestic Representative by Foreign
Owner 1604.15 Office Actions and Notices Regarding Affidavit 1604.16 Response to Office Action 1604.17 Correction of Deficiencies in §8 Affidavit 1604.17(a) Correcting Deficiencies in Affidavits or Declarations
Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act
1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period
1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period
1604.18 Petition Under 37 C.F.R. §2.146 1604.18(a) Response to Examiner’s Refusal Required Before
Petition 1604.18(b) Decision on Petition is Final Action of the USPTO 1604.18(c) Request for Reconsideration of Denial of Petition 1604.18(d) Appeal to Federal Court
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1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application
1605 Affidavit of Incontestability Under §15 1605.01 Registrations to Which §15 Affidavit Pertains 1605.02 Form for Filing Affidavit of Incontestability 1605.03 Time for Filing Affidavit of Incontestability 1605.04 Requirements for Affidavit or Declaration of
Incontestability 1605.05 Combining §15 Affidavit with §8 Affidavit 1605.06 Section 14 Limitation is Independent of §15 Affidavit 1606 Renewal of Registration Under Trademark Act §9 1606.01 Which Registrations Must be Renewed Under §9 1606.01(a) Registrations Based on Applications Under §1 or §44
Must Be Renewed Under §9 1606.01(b) Section 9 Does Not Apply to Extensions of Protection of
International Registrations to the United States 1606.01(c) Renewal of Registrations Issued Under Prior U.S.
Trademark Acts Must Be Renewed Under §9 1606.02 Requirements for Renewal Under §9 1606.03 Time for Filing §9 Renewal Application 1606.03(a) Premature Filing of §9 Renewal Application 1606.04 Form for Filing §9 Renewal Application 1606.05 Fees for §9 Renewal Applications 1606.05(a) Fee for Filing Application for Renewal Under §9 1606.05(b) Grace Period Surcharge and Deficiency Surcharge 1606.05(c) Processing §9 Renewal Application Filed with Insufficient
Fees 1606.06 Ownership, and Who May File §9 Renewal Application 1606.07 Execution of §9 Renewal Application 1606.08 Goods and/or Services Set Forth in §9 Renewal
Application 1606.08(a) Listing of Goods and/or Services Required Only for
Partial Renewal 1606.08(b) No Goods or Services Listed 1606.08(c) Some Goods and/or Services Listed 1606.08(d) Goods and/or Services Not Listed in Registration May
Not Be Listed in Renewal Application 1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not
Required 1606.10 Designation of Domestic Representative by Foreign
Applicant for Renewal Under §9 1606.11 Office Actions and Notices Regarding §9 Renewal
Application 1606.12 Response to Office Action 1606.13 Correction of Deficiencies in §9 Renewal Applications
-xlv- October 2009
1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration
1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period
1606.13(c) Late Filing Cannot be Cured 1606.14 Petition Under 37 C.F.R. §2.146 1606.14(a) Response to Examiner’s Refusal Required Before
Petition 1606.14(b) Decision on Petition is Final Action of the USPTO 1606.14(c) Request for Reconsideration of Denial of Petition 1606.14(d) Appeal to Federal Court 1606.15 Section 9 Renewal Application Combined with Affidavit or
Declaration of Use or Excusable Nonuse 1607 Cancellation of Registrations Under §§14 and 37 of
the Trademark Act 1608 Surrender of Registration for Cancellation 1609 Amendment and Correction of Registrations 1609.01 Amendment of Registration - In General 1609.01(a) Limited Amendments to Registered Extension of
Protection 1609.01(b) Amendment of Registration Resulting From §1 or §44
Application 1609.02 Amendment of Mark 1609.02(a) Determining What Constitutes Material Alteration of Mark 1609.02(b) New Drawing Required 1609.02(c) Supporting Specimen and Declaration 1609.02(d) Conforming Amendments 1609.02(e) Amendment of Black-and-White Drawing of Mark for
Which Color is Claimed to Substitute Color Drawing 1609.02(f) Amendment of Black-and-White Drawing to Color
Drawing 1609.02(g) Amendment to Special Form Drawing Containing Black,
White, and/or Gray 1609.03 Amendment of Identification of Goods or Services 1609.04 Amendment of Classification 1609.05 Disclaimer of Mark 1609.06 Territorial Restrictions 1609.07 Dates of Use 1609.08 Effect of Amendment of Registration on Limitation of
Grounds for Cancellation of a Registration 1609.09 Amendment from Supplemental to Principal Register Not
Permitted 1609.10 Correction of Mistake in Registration 1609.10(a) Correction of USPTO Error 1609.10(b) Correction of Owner’s Error
-xlvi- October 2009
1609.11 Change of Owner’s Address Can Be Filed Through TEAS 1610 Court Orders Concerning Registrations 1611 Updating Automated Records to Show the Status of
Registrations 1612 Powers of Attorney and Designations of Domestic
Representative Filed After Registration 1613 Affidavit of Use in Commerce or Excusable Nonuse
Under §71 of the Trademark Act 1614 Renewal of Registered Extension of Protection 1615 Division of Registrations 1615.01 Division of Registration Based on Application Under §1 or
§44 of the Trademark Act 1615.02 Division of Registered Extension of Protection 1616 Replacement
Chapter 1700 - Petitions, Requests for Reinstatement, and Other Matters Submitted to Director
1701 Statutory Authority of Director 1702 Petitions to the Director Under 37 C.F.R. §2.146 - In
General 1703 Specific Types of Petitions 1704 Petitionable Subject Matter 1705 Petition Procedure 1705.01 Standing 1705.02 Petition Fee 1705.03 Evidence and Proof of Facts 1705.04 Timeliness 1705.05 Due Diligence 1705.06 Stay or Suspension of Pending Matters 1705.07 Signature of Petition 1705.08 Request for Reconsideration of Denial of Petition 1705.09 Appeal to Federal Court 1706 Standard of Review on Petition 1707 Director’s Supervisory Authority Under 37 C.F.R.
§2.146(a)(3) 1708 Waiver of Rules 1709 Matters Delegated by Director 1710 Petition to Make Special 1710.01 Basis for Granting or Denying Petition 1710.02 Processing Petition 1710.03 Submitting Petition 1711 Review of Denial of Filing Dates 1712 Reinstatement of Applications and Registrations 1712.01 Reinstatement of Applications Abandoned Due to Office
Error
-xlvii- October 2009
1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error
1712.02(a) Request for Reinstatement 1712.02(b) Formal Petition 1713 Petition to Reverse Holding of Abandonment for
Incomplete Response 1713.01 Standard of Review 1713.02 Nonreceipt of Action Granting Additional Time to Perfect
Response 1714 Petition to Revive Abandoned Application 1714.01 Procedural Requirements for Filing Petition to Revive 1714.01(a) Failure to Timely Respond to an Examining Attorney’s
Office Action 1714.01(a)(i) Response to Nonfinal Office Action 1714.01(a)(ii) Response to Final Office Action 1714.01(b) Failure to File a Statement of Use or Extension Request -
Notice of Allowance Received 1714.01(b)(i) Applicant Must File Statement of Use or Further
Extension Requests During Pendency of a Petition 1714.01(c) Notice of Allowance Not Received 1714.01(d) Timeliness and Diligence 1714.01(e) Signed Statement That Delay Was Unintentional 1714.01(f) Applicability of Unintentional Delay Standard 1714.01(f)(i) Situations Where the Unintentional Delay Standard
Applies 1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does
Not Apply 1714.01(g) Request for Reconsideration of Denial of Petition to
Revive 1715 Letters of Protest in Pending Applications 1715.01 Appropriate and Inappropriate Subjects to be Raised in
Letter of Protest 1715.01(a) Issues Appropriate as Subject of Letter of Protest 1715.01(b) Issues Inappropriate as Subject of Letter of Protest 1715.02 Letter of Protest Filed Before Publication 1715.02(a) Standard of Review for Letter of Protest Filed Before
Publication 1715.02(b) Action by Examining Attorney Before Publication 1715.03 Letters of Protest Filed After Publication 1715.03(a) Standard of Review for Letters of Protest Filed After
Publication 1715.03(b) Timely Filing of Letter of Protest 1715.03(c) Jurisdiction of Application When a Letter of Protest Is
Granted After Publication 1715.03(d) Action by Examining Attorney After Publication
-xlviii- October 2009
1715.03(e) Letter of Protest Does Not Stay or Extend Opposition Period
1715.04 Information for Parties Filing Letter of Protest 1715.04(a) Submitting Letter of Protest 1715.04(b) Tracking of Letters of Protest by the Protestor 1715.05 Requests for Copies of Letters of Protest 1715.06 Recourse After Denial of Letter of Protest
Chapter 1800 — Public Inquiries About Applications and Registrations
1801 Office Personnel May Not Express Opinion on Validity of Registered Trademark
1801.01 Office Personnel Cannot Testify 1802 Congressional Inquiries 1803 Freedom of Information Act Requests 1804 Inquiries from Members of the Press 1805 General Inquiries from the Public 1806 Contacts With Third Parties Regarding Ex Parte
Matters 1807 United States Patent and Trademark Office World
Wide Web Page
Chapter 1900 - Madrid Protocol
1901 Overview of the Madrid System of International Registration
1902 International Application Originating From the United States
1902.01 Who Can File 1902.02 Minimum Requirements for Date of Receipt of
International Application in USPTO 1902.02(a) Form of International Application 1902.02(b) Basic Application or Registration Number 1902.02(c) Name and Address of Applicant 1902.02(d) Reproduction (Drawing) of Mark 1902.02(e) Color Claim 1902.02(f) Identification of Goods/Services 1902.02(g) Classification in International Applications 1902.02(g)(i) Reclassifying Goods/Services 1902.02(g)(ii) United States Classes A, B and 200 1902.02(g)(iii) Kits and Gift Baskets 1902.02(h) List of Contracting Parties 1902.02(i) Fees 1902.02(j) Statement of Entitlement 1902.02(k) Description of Mark 1902.02(l) Indication of Type of Mark
-xlix- October 2009
1902.02(m) E-Mail Address 1902.03 Certification of International Application by USPTO 1902.03(a) Petition to Review Refusal to Certify 1902.04 Date of International Registration 1902.05 IB Requirements for Complete International Application 1902.06 Examination of Application by IB 1902.07 Irregularities in International Application 1902.07(a) Irregularities that Must Be Remedied by the USPTO 1902.07(b) Irregularities that Must Be Remedied by the Applicant –
Applicant Must Respond Directly to the IB 1902.07(b)(i) Fee Irregularities 1902.07(c) Irregularities that Must Be Remedied by the Applicant –
Applicant Must Respond Through the USPTO 1902.07(c)(i) Classification of Goods/Services 1902.07(c)(ii) Identification of Goods/Services 1902.07(d) Other Irregularities that Must Be Remedied By Applicant
– Applicant May Respond Directly to the IB or Through the USPTO
1902.07(e) Filing Response Directly With the IB 1902.07(f) Responding to Notice of Irregularity Through the USPTO 1902.08 Subsequent Designation - Request for Extension of
Protection Subsequent to International Registration 1902.08(a) USPTO Requirements 1902.08(b) Form for Filing Subsequent Designation Through the
USPTO 1902.08(c) Fees for Subsequent Designation 1902.08(d) IB Requirements for Subsequent Designation 1902.08(e) Irregularities in Subsequent Designation 1902.09 Dependence and “Central Attack”: Restriction,
Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years
1902.10 Transformation When the USPTO is the Office of Origin 1902.11 Representative 1902.12 USPTO Must Notify IB of Division or Merger of Basic
Application or Registration 1903 Payment of Fees 1903.01 Payment of USPTO Fees 1903.02 Payment of International Fees 1904 Request for Extension of Protection of International
Registration to the United States 1904.01 Filing Request for Extension of Protection to United
States 1904.01(a) Section 66(a) Basis 1904.01(b) Filing Date 1904.01(c) Declaration of Intent to Use Required 1904.01(d) Use Not Required
-l- October 2009
1904.01(e) Priority 1904.01(f) Filing Fee 1904.01(g) Constructive Use 1904.01(h) Cannot be Based on USPTO Basic Application or
Registration 1904.02 Examination of Request for Extension of Protection to the
United States 1904.02(a) Examined as Regular Application 1904.02(b) Examination of Classification of Goods/Services in §66(a)
Applications 1904.02(c) Examination of Identification of Goods/Services in §66(a)
Applications 1904.02(c)(i) Acceptable Identifications of Goods/Services 1904.02(c)(ii) Indefinite Identification of Goods/Services with
Acceptable Options Within the Scope of the Class 1904.02(c)(iii) Indefinite Identification of Goods/Services that Does not
Include any Goods/Services Within the Class 1904.02(c)(iv) Examination of Proposed Amendments and Issuance of
Final Requirements For an Acceptable Identification 1904.02(c)(v) Effect of Indicated Classes – No Precedential Value on
Later-Filed Applications 1904.02(d) Certification and Collective Marks 1904.02(e) Corrections and Limitations to the International
Registration 1904.02(e)(i) Corrections 1904.02(e)(ii) Limitations 1904.02(e)(iii) Limitations vs. Amendments 1904.02(f) Mark Must Be Registrable on Principal Register 1904.02(g) Refusal Must Be Made Within 18 Months 1904.02(h) Issuing Office Actions 1904.02(i) Correspondence Address 1904.02(j) Mark Cannot Be Amended 1904.02(k) Drawings and Descriptions of the Mark 1904.02(l) Jurisdiction 1904.03 Notice of Refusal 1904.03(a) Notice Must be Sent Within 18 Months 1904.03(b) Requirements for Notice of Refusal 1904.03(c) §66(a) Applicant Must Respond to Notification of Refusal 1904.03(d) Refusal Pertaining to Less Than All the Goods/Services 1904.03(e) Confirmation or Withdrawal of Provisional Refusal 1904.03(f) Notification of Correction in the International Register
with Respect to a Pending Request for Extension of Protection
1904.03(g) Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection
-li- October 2009
1904.04 Opposition 1904.05 Certificate of Extension of Protection 1904.06 Assignment of Extension of Protection to the United
States 1904.07 Invalidation of Protection in United States 1904.08 Cancellation of International Registration By IB 1904.09 Transformation to Application Under §1 or §44 1904.09(a) Requirements for Transformation 1904.09(b) Examination of Transformed Application 1904.10 Affidavits of Use or Excusable Nonuse Required 1904.11 Incontestability 1904.12 Replacement 1904.13 Amendment and Correction of Registered Extension of
Protection to the United States 1904.13(a) Limited Amendments to Registered Extension of
Protection 1904.13(b) Corrections to Registered Extensions of Protection 1904.14 Notification of Correction in the International Register
with Respect to Registered Extension of Protection 1904.15 Notification of Limitation of the List of Goods/Services
with Respect to Registered Extension of Protection 1905 Renewal of International Registrations 1906 Communications With International Bureau
Regarding International Registrations 1906.01 Recording Changes in International Register 1906.01(a) Change in Ownership of International Registration 1906.01(a)(i) Requirements for Submitting Changes in Ownership of
International Registration Through the USPTO 1906.01(a)(ii) International Fees for Recording Changes of Ownership
of International Registration 1906.01(a)(iii) Effect of Change of Ownership of International
Registration 1906.01(a)(iv) Dividing an International Registration After Change of
Ownership With Respect to Some But Not All of the Goods/Services
1906.01(b) Restriction of Holder’s Rights of Disposal 1906.01(c) Change of the Holder’s Name or Address 1906.01(d) Change of Name or Address of Representative 1906.01(e) Limitation, Renunciation, or Cancellation of International
Registration 1906.01(f) Correction of Errors in International Registration 1906.01(g) Merger of International Registrations 1906.01(h) License 1906.01(i) Changes That Cannot Be Made to International
Registration
-lii- October 2009
-liii- October 2009
Appendix A Examining Attorneys’ Appeal Briefs Appendix B Members of International Trademark Agreements Appendix C Notes of Other Statutes Appendix D Foreign Entity Appendix Appendix E Countries That Have Standard Character Marks or the
Equivalent Index
Introduction
Constitutional Basis
The authority of Congress to provide for the registration of marks which are used in commerce stems from the power of Congress under the commerce clause of the Constitution of the United States to regulate commerce.
Statutes
Under its authority to regulate commerce, Congress has over the years passed a number of statutes providing for the registration of marks in the USPTO. The provisions of statutes cannot be changed or waived by the USPTO. The statute now in effect is Public Law 489, 79th Congress, approved July 5, 1946, 60 Stat. 427, commonly referred to as the Trademark Act of 1946 or the Lanham Act. The Trademark Act of 1946 (as amended) forms Chapter 22 of Title 15 of the United States Code. In referring to a particular section of the Trademark Act, this Manual often gives the citation of the United States Code, e.g., 15 U.S.C. §1051. The text of the current statutes can be downloaded from the USPTO website at http://www.uspto.gov.
Rules of Practice
Section 2 of Title 35 of the United States Code authorizes the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office to establish regulations, not inconsistent with law, for the conduct of proceedings in the USPTO. The rules which govern the practices and procedures in the USPTO as they relate to the registration of marks are set forth in Title 37 of the Code of Federal Regulations.
The trademark rules are a part of the Code of Federal Regulations, which is a codification of Federal regulations under the provisions of The Federal Register Act of 1937 and The Administrative Procedure Act of 1946 and which is published pursuant to 44 U.S.C. §1510. Rules relating to patents, trademarks and copyrights are codified in Title 37 of the Code of Federal Regulations. The trademark rules constitute Part 2, the rules relating to assignments constitute Part 3, the classification of goods and services constitutes Part 6, the rules relating to filings under the Madrid Protocol constitute Part 7, and the rules relating to the representation of others before the USPTO constitute Parts 10 and 11. The text of the current rules is also available on the USPTO website at http://www.uspto.gov.
In creating numbers for rules, the number of the appropriate Part in Title 37 of the Code of Federal Regulations is placed first, followed by a decimal point and then the number of the rule, so that, for example, Trademark Rule 2.56 is
Rule 56 in Part 2 of Title 37 of the Code of Federal Regulations. In the Code of Federal Regulations itself, and in material published in the Federal Register, the rules are identified by the term "sections." Thus, section 2.56 in 37 C.F.R. (37 CFR §2.56) is Trademark Rule 2.56.
Notices of proposed and final rulemaking are published in the Federal Register and in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov/.
The primary function of the rules of practice is to advise the public of the regulations that have been established in accordance with the statutes, which must be followed before the USPTO.
Director's Orders and Notices
From time to time the Director of the United States Patent and Trademark Office issues Orders and Notices relating to various specific situations that have arisen in operating the USPTO. Notices, circulars of information or instructions and examination guides have also been issued by other USPTO officials under authority of the Director. These Orders and Notices are published in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov. See notice at 72 Fed. Reg. 72999 (Dec. 26, 2007).
Decisions
In addition to the statutory regulations, the actions taken by the examining attorneys in the examination of applications to register marks are to a great extent governed by decisions on prior cases. Applicants dissatisfied with an examining attorney's action may have it reviewed. In general, procedural matters may be reviewed by petition to the Director (see TMEP §1702) and substantive matters may be reviewed by appeal to the Trademark Trial and Appeal Board (see TMEP §1501).
Trademark Manual of Examining Procedure
The Trademark Manual of Examining Procedure sets forth the guidelines and procedures followed by the examining attorneys at the USPTO. The manual may be downloaded free of charge from the USPTO website at http://www.uspto.gov/. See notice at 67 Fed. Reg. 18176 (April 15, 2002) regarding the dissemination of the manual in electronic format.
First Edition, January 1974 Revision 1, January 1976 Revision 2, January 1977 Revision 3, January 1978 Revision 4, January 1979 Revision 5, December 1982
Intro-2 October 2009
Intro-3 October 2009
Revision 6, December 1983 (Incorporating Exam Guide Nos. 1-83 to 31-83) Revision 7, January 1986 (Incorporating Office practice and relevant caselaw prior to
January 1986; drawing rules amendment effective Sept. 22, 1986; letter of protest procedures effective April 23, 1986; Exam Guide Nos. 1-83 to 2-86)
Second Edition, May 1993 (Incorporating Office practice and relevant caselaw reported prior to April 1993)
Revision 1, April 1997 (Incorporating Office practice and relevant caselaw reported prior to March 31, 1997)
Revision 1.1, August 1997 (Corrected errors in Rev. 1) Third Edition, January 2002, issued March 18, 2002 (Incorporating Office practice
and relevant caselaw reported prior to Jan. 24, 2002) Revision 1, June 2002, issued June 24, 2002 (Incorporating Office practice and
relevant caselaw reported prior to June 24, 2002) Revision 2, May 2003, issued May 1, 2003 (Incorporating Office practice and
relevant caselaw reported prior to April 21, 2003) Fourth Edition, April 2005, issued April 29, 2005 (Incorporating Office practice and
relevant caselaw reported prior to March 25, 2005) Fifth Edition, September 2007, issued Sept. 30, 2007 (Incorporating Office practice
and relevant caselaw reported prior to August 11, 2007) Sixth Edition, September 2009, issued Oct. 12, 2009 (Incorporating Office practice
and relevant caselaw reported prior to Sept. 1, 2009) Revision 1, October 2009, issued October 27, 2009 (Revising §§1202.02(c)(iii),
1206.03, and 1402.15)
Trademark Trial and Appeal Board Manual of Procedure
References in this Manual to the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) refer to the Second Edition, 1st Revision, March 12, 2004, currently available on the USPTO website at http://www.uspto.gov. The TBMP sets forth guidelines and practices followed in proceedings held before the Trademark Trial and Appeal Board.
CHANGES: INDEX TO CHANGES IN TMEP SIXTH EDITION
Attention is directed to the following changes in the 6th edition of the TMEP.
SECTION CHANGE
106 Updated information about publication of Official Gazette. 108.01 Updated information about Trademark Applications and
Registrations Retrieval (“TARR”) database. 108.02 Updated information about Trademark Assistance Center
(“TAC”). 109 Changed heading. 201 Language change. 202 Incorporated change to Rule 2.21(a). Added case cite. 202.01 Revised to clarify how the Office determines what the mark is
in an application filed through the Trademark Electronic Application System (“TEAS”).
204.02 Changed heading. Revised to clarify procedure for resubmitting application after denial of filing date.
206.01 Revised to clarify effect of amendment from the Supplemental to the Principal Register on the effective filing date. Added case cite.
206.04 New section - Examining Attorney’s Action After Conducting New Search.
301 Added about new global form TEAS form. Deleted listing of specific forms available in TEAS. Language changes.
302.01 Language change. 302.03(a) Language change. 302.03(b) Language change. 303.02(c) Language change. 304.01 Changed heading. Deleted provision that e-mail can be used
to respond to an Office action or letter issued by the Post Registration Section, ITU/Divisional Unit, and Office of Petitions.
304.02 Language change. 304.06 Language change. 305.04 Incorporated change to Rule 2.195(e). 306.01 Added case cite. 307 Updated hours for hand delivery to TAC. 310 Language change. 401.01 Updated information about filing receipts sent to §66(a)
applicants. 404 Incorporated change to Rule 2.25. 405.06 Language change. 501.06 Parties who record partial assignment encouraged to file
request to divide.
Changes-1 September 2009
SECTION CHANGE
502.01 Language changes. 502.02(a) Language changes. 502.02(b) Language changes. 502.02(c) Language change. 502.03 Updated to clarify proper signatory for request for new
registration certificate. 503.01 Separated into sections 503.01(a)-(e). 503.01(a) New section - Recording May Not Update Ownership
Information. Incorporated content from former 503.01. 503.01(b) New section - Recording Does Not Update Correspondence
Address in Trademark Database. 503.01(c) New section - Recording is Not a Determination of Validity.
Incorporated content from former 503.01. 503.01(d) New section - Recording Does Not Constitute Response to
Office Action. Incorporated content from former 503.01. 503.01(e) New section - Conditional Assignment. Incorporated content
from former 503.01. 503.03(e) Incorporated change to Rule 3.31 regarding requirements for
assignment cover sheet. 503.06(d) Language changes. 504-504.01 Revised to clarify procedure regarding requests to record
multiple assignments with the same execution date that are filed on the same date.
505 Changed heading. Revised to clarify requirements for requests to update ownership information in the Trademark Database. Moved some content to new 505.01 and 505.02.
505.01 New section - Request to Update Ownership Information in Pending Application. Incorporated content from former 505.
505.02 New section - Request to Update Ownership Information After Registration. Incorporated and revised content from former 505.
600 Changed chapter heading. Language changes. Incorporated changes to 37 C.F.R. Parts 10 and 11.
601 Changed heading. Language changes. 601.01 Language changes. 601.02 Changed heading. Language changes. 602 Changed heading. Revised to clarify individuals who may
practice before the United States Patent and Trademark Office (“USPTO”). Moved some content to 602.01, 602.02, and 602.03.
602.01 Renumbered as 605. Moved some content to 604.01, 604.02, and 605.01. Deleted reference to suspended and excluded practitioners. Incorporated content from former 602.
602.01(a) Renumbered as 605.02.
Changes-2 September 2009
SECTION CHANGE
602.01(b) Renumbered as 605.03. 602.01(c) Renumbered as 605.04. 602.02 Renumbered as 603. New 602.02 incorporates content from
former 602. 602.03 Renumbered as 608.01. New 602.03 et seq. incorporates
content from former 602.06 et seq. Language changes. Revised to clarify procedure for attorneys seeking reciprocal recognition.
602.03(a) Incorporated content from former 602.06. Revised to clarify the procedure for Canadian attorneys or agents seeking recognition, and the internal procedure for verifying that a Canadian attorney or agent is recognized.
602.03(b) Incorporated content from former 602.06(b). Revised to clarify procedures for handling requests for recognition filed by foreign attorneys or agents from countries other than Canada.
602.03(d) Incorporated content from former 602.06(d). 602.03(e) Language changes. 602.04 Renumbered as 606. 602.05 Renumbered as 607. 602.06 Renumbered as 602.03. 602.06(a) Renumbered as 602.03(a). 602.06(b) Renumbered as 602.03(b). 602.06(c) Renumbered as 602.03(c). 602.06(d) Renumbered as 602.03(d). 602.06(e) Renumbered as 602.03(e). 602.07 Renumbered as 604.03. 602.08 Renumbered as 608.02. 603 Renumbered as 609. 603.01 Renumbered as 609.01. 603.01(a) Renumbered as 609.01(a). 603.02 Renumbered as 609.02. 603.02(a) Renumbered as 609.02(c). Some content moved to new
609.02 (a), (b), and (f). 603.02(b) Renumbered as 609.02(d). 603.02(c) Renumbered as 609.02(e). 603.03 Renumbered as 609.03. 603.04 Renumbered as 609.04. 604 Former 604 renumbered as 610. New 604 et seq. includes
discussion of recognition as representative. 604.01 New section - Three Ways to Be Recognized. Clarifies
procedure for recognition of practitioners under Rule 2.17. Incorporated content from former 602.01.
604.02 New section - Duration of Recognition. Incorporated content from former 602.01, 602.01(c), 602.04, and 602.07.
Changes-3 September 2009
SECTION CHANGE
604.03 Content incorporated content from former 602.07. 605 Former 605 renumbered as 611. New 605 incorporates
content from former 602.01. 605.01 Former 605.01 renumbered as 611.01(a). New section -
Requirements for Power of Attorney. Incorporated content from former 602.01. Revised to clarify requirements for a power of attorney.
605.02 Renumbered as 611.02. Some content moved to new 611.02(a). Incorporated content from former 602.01(a).
605.03 Former 605.03 deleted and content moved to new 611.03 et seq. New 605.03 incorporates content from former 602.01(b) into new 605.03. Revised to clarify situation when practitioner who signed an associate power withdraws.
605.04 Renumbered as 611.04. New 605.04 incorporates content from former 602.01(c).
605.05 Renumbered as 611.05. 605.05(a) Renumbered as 611.05(a). 605.05(b) Renumbered as 611.05(b). 605.05(c) Renumbered as 611.05(c). 606 Incorporated content from former 602.04. Revised to clarify
requirements for and procedures for processing revocations of powers of attorney.
607 Incorporated content from former 602.06. Revised to clarify requirements for and procedures for processing requests to withdraw as practitioner of record.
608 New section heading - Unauthorized Practice. 608.01 Incorporated content from former 602.03 and excerpt of Rule
11.5(b)(2). Incorporated amendment to Rule 11.5(b)(2). 608.02 Incorporated content from former 602.08. Revised to clarify
procedures for handling situation where person appears to be engaged in unauthorized practice.
609 Incorporated content from former 603. 609.01 Incorporated content from former 603.01. Revised to clarify
guidelines for establishing and entering the correspondence address.
609.01(a) Incorporated content from former 603.01(a). Language changes.
609.02 Incorporated content from former 603.02. Language changes. 609.02(a) New section - Request to Change Correspondence Address
Presumed. Incorporated content from former 603.02(a). Revised to clarify documents that will be construed as request to change correspondence address.
609.02(b) New section - Requirements for Request to Change Correspondence Address. Incorporated content from former
Changes-4 September 2009
SECTION CHANGE
603.02. Revised to clarify requirements for request. 609.02(c) Incorporated content from former 603.02(a). 609.02(d) Incorporated content from former 603.02(b). 609.02(e) Incorporated content from former 603.02(c). Revised to clarify
procedures for changing the correspondence address after registration.
609.02(f) New section - Correspondence After Recordation of Change of Ownership. Incorporated content from former 603.02(a).
609.03 Incorporated content from former 603.03. 609.04 Incorporated content from former 603.04. 610 Incorporated content from former 604. Revised to clarify
requirements for signature of designations of domestic representative, and standards for duration, revocation, and withdrawal of domestic representative.
611 Incorporated content from former 605. 611.01(a) New section - Signature as Certificate. Incorporated content
from former 605.01. 611.01(b) New section - Requirements for Signature. Incorporated
content from former 605.02. Revised to clarify requirements for signature of documents. Added statement that name of the signatory should be set forth in printed or typed form.
611.01(c) New section - Signature of Documents Filed Electronically. Incorporated content from former 804.05.
611.02 Incorporated content from former 605.02. Revised to clarify that requirements apply to both in-house and outside counsel.
611.02(a) New section - TEAS Checkoff Boxes. Incorporated content from former 605.02. Added new examples of situations in which an examiner must inquire into the signatory’s authority.
611.03 New section - Proper Person to Sign. 611.03(a) New section - Verification. 611.03(b) New section - Responses, Amendments to Applications,
Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide.
611.03(c) New section - Powers of Attorney and Revocations of Powers of Attorney.
611.03(d) New section - Petitions to Revive. 611.03(e) New section - Petitions to the Director. 611.03(f) New section - Amendment, Correction, or Surrender of
Registration. 611.03(g) New section - Renewal Applications. 611.03(h) New section - Designations and Revocations of Domestic
Representative. 611.03(i) New section - Requests to Change Correspondence Address
in an Application or Registration.
Changes-5 September 2009
SECTION CHANGE
611.04 Incorporated content from former 605.04. Added example of authorized signatory.
611.05 Incorporated content from former 605.05. Language changes. 611.05(a) Incorporated content from former 605.05(a). Language
changes. 611.05(b) Incorporated content from former 605.05(b). Language
changes. 611.05(c) Incorporated content from former 605.06(c). Language
changes. 611.06 et seq. New section - Guidelines on Persons With Legal Authority to
Bind Certain Juristic Entities. Incorporated content from former 712.01(a) et seq.
611.06(d) Incorporated content from former 712.01(a)(iv). Revised to clarify proper signatories for corporations.
702.02 Revised to clarify procedures for requests for special handling. 703 Incorporated change to Rule 2.48. Revised to clarify policy
and procedures regarding duplicate applications and what constitutes a duplicate application.
704.01 Language change. 705 Language change. 705.03 Revised to the clarify circumstances in which the USPTO will
reissue an Office action and provide the applicant with a new response period.
705.05 Revised to update guidance for citing decisions published by research services and unpublished decisions.
705.07 Deleted reference to paper copies of Office actions and evidence. Revised to update form and processing of outgoing Office actions when the applicant has authorized e-mail communication.
706.01 New section - “Clear Error.” Clarifies standards for issuing refusals or requirements that could have been raised in a previous action, and Office’s authority to correct errors.
707.01 Revised to clarify parties authorized to approve examiner’s amendment.
707.02 Updated list of amendments that can be entered by examiner’s amendment without prior approval by the applicant.
708.01 Language changes. 708.02 Revised to clarify parties who may discuss issues raised in an
Office action and authorize issuance of priority actions. 709.04 Changed heading. Revised to clarify policy and procedures for
telephone and e-mail communications. 709.05 Changed heading. Added examples of informal
communications. Revised to clarify policy and procedures for informal communications.
Changes-6 September 2009
SECTION CHANGE
710.01 Revised to include requirement for proper citation to evidence in examining attorneys’ Office actions.
710.01(b) Added case cite. Revised to clarify policy regarding Wikipedia® evidence.
710.01(c) Added case cite. 710.02 Changed heading. Language changes. 710.03 Added case cites. Language change. 711 Language changes. Revised to clarify deadline for filing
response in a §66(a) application. 712.01 Revised to clarify signature requirements Incorporated change
to Rule 2.62(b). 712.01(a) Deleted. Moved content to new 712.01. 712.01(a)(i)- 712.01(a)(viii)
Renumbered as 611.06(a)-611.06(h).
713.02 Changed heading. Revised to clarify policy regarding issuing a final action.
714 Incorporated change to Rule 2.64. 714.05(e) New section - Submission of Substitute Specimen in Response
to Refusal for Failure to Show Use of the Mark in Commerce. 714.05(f) New section - Submission of Substitute Specimen in Response
to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
715.02 Language change. 715.03 Language change. 715.03(a) Language changes. 715.03(b) Language changes. 715.03(c) Language changes. 715.04(a) Changed heading. 715.04(b) Language changes. 716.02(b) Deleted requirement to issue Office action regarding intent to
retain dual bases in a §44(d) application when there are no other issues and examining attorney is unable to reach applicant by phone.
716.02(c) Language change. 716.02(e) Revised to clarify procedure for updating USPTO records after
expiration of grace period for filing §8 affidavit or renewal application, and policy regarding issuing a denial of a request for reconsideration when the grace period has not passed.
716.05 Revised to add recommendation that a response to a suspension inquiry be filed through TEAS.
718.01 Revised to clarify procedures for processing and requirements for express abandonments. Incorporated change to Rule 2.68.
718.02 Revised to clarify statutory date of abandonment when applicant fails to timely respond to action granting additional
Changes-7 September 2009
SECTION CHANGE
time to perfect an incomplete response. 718.02(a) Revised to clarify policy regarding partial abandonment when a
partial refusal or requirement is upheld on appeal, or when applicant withdraws or fails to prosecute an appeal of a partial refusal, and use of partial abandonment advisory in Office actions.
718.03 Revised to clarify procedures for TEAS responses that consist only of a signature, and proper method of abandonment when an applicant fails to respond or submits an unsatisfactory response to a notice of incomplete response.
718.07 Deleted. 718.08 Renumbered as 718.07. 802 Revised to clarify policy regarding applications downloaded
from TEAS or TEAS Plus, printed, and mailed to the USPTO. 803.03(a) Revised to clarify meaning of a “sole proprietorship,” and
interpretation of individual applicant entity and citizenship information in §66(a) applications.
803.03(b) Revised to update suggested format for identifying entity of partnership or joint venture.
803.03(c) Changed heading. Added discussion of use of terms “association,” “company,” and “organization” as entity designation.
803.03(d) Revised to clarify policy and procedures for identifying the entity of joint applicants.
803.03(i) Revised to clarify procedures for identifying entity organized under the laws of a foreign province or geographical region.
803.04 Revised to clarify requirements for identifying citizenship of domestic joint ventures, entity organized under the laws of a foreign province or geographical region, and interpretation of individual applicant entity and citizenship information in §66(a) applications. Incorporated changes to Rules 2.32(a)(3)(iii) and (iv).
804.04 Deleted reference to designations of domestic representative. 804.05 Moved content to 611.01(c). Incorporated former 804.06. 804.06 Section number deleted. Incorporated content into new
804.05. 806 Added case cite. 806.02(f) Revised to clarify procedures for handling applications based
on §44(d) in addition to another basis. 806.03(h) Added case cite. 806.03(j)(ii) Revised to clarify policies for handling amendments to add or
substitute a §44 basis between issuance of a notice of allowance (“NOA”) and filing of a statement of use (“SOU”).
806.03(j)(iii) New section - Amending the Basis of a §1(b) Application After
Changes-8 September 2009
SECTION CHANGE
Filing of Statement of Use But Before Approval for Registration.
806.03(l) New section - §66(a) Basis Cannot be Added to §1 or §44 Application.
807.01 Revised to clarify how the Office determines what the mark is in a TEAS application and policy regarding refusal on the ground that spatially separate elements constitute more than one mark.
807.03(c) Incorporated content from Exam Guide 2-08. 807.03(f) Updated to clarify procedures for determining when the mark in
a foreign registration is in standard characters or the equivalent. Added reference to new Appendix E.
807.03(h) Revised to clarify procedure for determining when to require deletion of a standard character claim in a §66(a) application.
807.03(i) Revised to clarify that a “typed” mark is the legal equivalent of a standard character mark.
807.04(b) Added case cite. 807.07 Added discussion of mark descriptions that refer to black,
white, and/or gray. 807.07(a)(ii) Revised to add policy regarding amendment of the color
description without prior approval by the applicant or the applicant’s attorney. Changed sample color location statement.
807.12(a) Revised to clarify the procedure for determining whether the mark on the drawing is a substantially exact representation of the specimen.
807.12(a)(i) New section - Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen.
807.12(a)(ii) New section - Punctuation on the Drawing but not on the Specimen. Incorporates content from former 807.12(a).
807.12(a)(iii) New section - Punctuation on the Specimen but not on the Drawing. Incorporates content from former 807.12(a).
807.12(c) Revised to clarify procedures for handling a notification of correction issued by the International Bureau of the World Intellectual Property Organization (“IB”).
807.12(d) Added case cites. 807.12(e) Added case cite. Language change. 807.13(b) Revised to clarify policy regarding amendment of a §66(a)
application to add a standard character claim. 807.14(c) Former 807.14(c) renumbered as 807.14(d). New section -
Addition or Deletion of Punctuation. 807.14(d) et seq. Former 807.14(d) et seq. renumbered as 807.14(e) et seq.
Incorporated content from former 807.14(c). 807.14(e) Former 807.14(e) renumbered as 807.14(f). Incorporated
Changes-9 September 2009
SECTION CHANGE
content from former 807.14(d). 807.14(f) Incorporated content from former 807.14(e). Added case cites. 807.17 Revised to clarify procedure for handling unacceptable
amendments to drawings. 807.19 Deleted. 808.01 Incorporated change to Rule 2.37 and content from Exam
Guide 2-08. 808.01(a) Deleted former 808.01(a). Incorporated section heading and
content from former 808.01(c). 808.01(b) Deleted former 808.01(b). Incorporated section heading and
content from former 808.01(d). 808.01(c) Renumbered as 808.01(a). 808.01(d) Renumbered as 808.01(b). 808.02 Incorporated change to Rule 2.37 and content from Exam
Guide 2-08. 808.03 Deleted former 808.03. New section - Examination Procedure
for Descriptions. Incorporated content from Exam Guide 2-08. 808.03(a) New section - Accurate and Complete Descriptions.
Incorporated content from Exam Guide 2-08. 808.03(b) New section - No Description in Application. Incorporated
content from Exam Guide 2-08. Added procedure for handling §66(a) applications in which applicant has completed the “Textual Elements of Mark” field.
808.03(c) New section - Accurate But Incomplete Description in Application or Amendment. Incorporated content from Exam Guide 2-08.
808.03(c)(i) New section - Accurate But Incomplete Descriptions in Cases Where a Description is Needed to Clarify the Mark and Should be Printed. Incorporated content from Exam Guide 2-08.
808.03(c)(ii) New section - Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed. Incorporated content from Exam Guide 2-08.
808.03(d) New section - Inaccurate Description in Application or Amendment. Incorporated content from Exam Guide 2-08.
808.03(e) New section - Amending Descriptions. Incorporated content from Exam Guide 2-08.
808.03(f) New section - Updating Design Coding. Incorporated content from Exam Guide 2-08.
809 Incorporated change to Rules 2.32(a)(9) and (10). Moved some content to new 809.01(b)(i) - (b)(iii).
809.01 Former 809.01 renumbered as 809.02. New section - Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration. Revised to clarify guidelines for determining
Changes-10 September 2009
SECTION CHANGE
the translation and transliteration of non-English wording in marks.
809.01(a) New section - Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language.
809.01(b) New section - Limited Exceptions to Rules for Translations. 809.01(b)(i) New section - Foreign Terms Appearing in English Dictionary.
Incorporated content from former 809. 809.01(b)(ii) New section - Foreign Articles or Prepositions Combined with
English Terms. Incorporated content from former 809. 809.01(b)(iii) New section - Words From Dead or Obscure Languages.
Incorporated content from former 809. 809.02 Former 809.02 renumbered as 809.03. Incorporated content
from former 809.01. 809.03 Incorporated content from former 809.02. Revised to clarify
procedure for handling verbose or vague translations, and revised sample translation/transliteration statements.
810 Revised to clarify policy regarding applications downloaded from TEAS or TEAS Plus, printed, and mailed to the Office.
812.01 Revised to clarify procedures for proving ownership of pending applications cited as a potential bar to registration.
813 Consolidated with 1206 et seq. Moved content about when consent is required and when inquiries should be issued to 1206 et seq. Sections 813 et seq. limited to information about statements printed in Official Gazette and on registration certificate. Added discussion of consent to registration of pseudonym, stage name, or nickname.
813.01 New section - Statement Printed in Official Gazette and on Registration Certificate.
813.01(a) New section - Name or Likeness is That of a Living Individual. Provides new examples of acceptable statements indicating that the name or likeness shown in a mark is that of a living individual whose consent is of record, and indicates that such statements will always be printed, even if the name that appears in the mark is that of the applicant.
813.01(b) New section - Name or Likeness is Not That of a Living Individual.
813.01(c) New section - Updating TRAM Database. Incorporated content from former 813.
814 Added case cite. Deleted statement that “material may be shown to the examining attorney without formal filing.”
816.02 Revised to clarify policy regarding effective filing date in §1(b) application after amendment to Supplemental Register. Added case cite.
819.01(o) Language changes. Revised to clarify when an additional fee
Changes-11 September 2009
SECTION CHANGE
is required in TEAS Plus application for failure to indicate whether a name or likeness in a mark is that of a living individual.
819.02(a) Incorporated change to Rule 2.23(a)(2). 901 Language changes. 901.03 Incorporated content from former 903.03. Added case cite. 901.04 Incorporated content from former 903.03. Revised to clarify
when examining attorney should inquire as to whether a mark is in use in commerce.
903.03 Deleted former 903.03. Incorporated content into new 901.03 and 901.04.
903.04 Former 903.04 renumbered as 903.03. New 903.04 incorporates content from former 903.05. Language changes.
903.05 Renumbered as 903.04. 903.06 Renumbered as 903.05. 903.06(a) Incorporated content from former 903.07(a). 903.07 Renumbered as 903.06. 903.08 Renumbered as 903.07. 903.09 Renumbered as 903.08. 904 Incorporated content from former 904.01. 904.01 Moved content to new 904. 904.03(a) Revised discussion of “temporary” specimens. Added case
cite. 904.03(g) Revised to clarify appropriate evidence of point-of-sale
presentations. 904.03(i) Revised to clarify policy regarding the determination of whether
a website page constitutes a “display associated with the goods.”
904.03(l) New section - Specimens for Motion Marks. 904.03(m) New section - Specimens for Scent and Flavor Marks. 904.04(a) Added case cite. 904.07(a) Revised to clarify procedures followed when the mark on a
substitute specimen does not agree with the mark on the drawing.
904.07(b) Added case cites. Revised to clarify procedures followed when the mark on a substitute specimen does not agree with the mark on the drawing.
906.02 Added case cite. 1003.04 Moved content to new 1003.04(a) and (c). 1003.04(a) New section - Applications Based Solely on Section 44.
Incorporated content from former 1003.04. 1003.04(b) New section - Multiple-Basis Applications. 1003.04(c) New section - Periodic Inquiries Issued as to Status of Foreign
Application. Incorporated content from former 1003.04.
Changes-12 September 2009
SECTION CHANGE
1004.01(a) Revised to clarify policy regarding photocopies of foreign intellectual property office’s publications or website printouts.
1005 Language change to clarify §44 ownership requirement (deleted reference to “sole basis”).
1102.03 Revised to clarify procedures followed after change of effective filing date due to amendment of §1(b) application to Supplemental Register. Added case cite.
1104.01(a) Revised to clarify review procedures regarding determination of whether an amendment to allege use (“AAU”) was filed by the owner.
1104.06 Revised to clarify procedures for processing AAU received before application is assigned to examining attorney.
1104.09(a) Revised to clarify policy and procedures for handling AAU filed by someone other than the owner of record.
1104.11 Revised to correct an inconsistency with 1104.09(a). 1106.01 Language changes. 1106.02 Added case cites. Revised to clarify Office’s authority to
correct errors after issuance of NOA. 1106.03 Revised to clarify policy regarding refund of fees after
cancellation of NOA, and to add internal procedures for requesting cancellation of NOA.
1108.02(a) Revised to clarify policy and procedures for handling extension request filed by someone other than the owner of record.
1108.02(c) Incorporated change to Rules 2.89(a)(2) and (b)(2). 1108.02(d) Language changes. 1108.02(f) Language changes. 1108.03 Language changes. 1108.03(a) Language changes. 1109.02 Revised to incorporate new procedures for processing SOU
filed by someone other than the owner of record. 1109.05 Incorporated amendment to Rule 2.88(d). 1109.08 Changed heading. Moved discussion of “clear error” to new
706.01. Revised to clarify procedure for issuing new refusals or requirements during examination of an SOU.
1109.09(a) Incorporated amendment of Rule 2.88(b)(1)(ii). 1109.10 Revised to incorporate new procedures for processing SOU
filed by someone other than the owner of record. 1109.13 Incorporated amendment to Rule 2.88(i)(2) regarding omission
of goods/services from SOU. 1109.15 Incorporated change to Rule 2.88(b)(3). Revised to clarify
procedures for handling fee deficiencies in multiple-class applications.
1109.16(a) Language changes. 1109.18 Revised to clarify internal procedure for approving SOU.
Changes-13 September 2009
SECTION CHANGE
1110 et seq. Reorganized and rewritten to incorporate changes to Rule 2.87.
1110 Moved content to new 1110.01 1110.01 Renumbered as 1110.03. Incorporated changes to Rule 2.87. 1110.02 Incorporated changes to Rule 2.87. 1110.03 Renumbered as 1110.04. Incorporated changes to Rule 2.87. 1110.04 Former 1110.04 renumbered as 1110.07. New section - Form
and processing of Request to Divide. 1110.05 Former 1110.05 renumbered as 1110.08. New section -
Outstanding Time Periods Apply to Newly Created Applications.
1110.06 Former 1110.06 renumbered as 1110.09. New section - Signature of Request to Divide.
1110.07 Renumbered as 1110.10. 1110.08 Renumbered as 1110.11. 1110.09 Renumbered as 1110.12. 1201.02(c) Revised to clarify “minor clerical error” in an applicant’s name. 1201.03(f) Added case cite. 1202 Revised to clarify policy regarding failure to function refusal
absent a specimen. Added case cite. 1202.01 Added case cite. 1202.02 Revised to incorporate former 1202.02(c), and to clarify
requirements for consideration of sufficiency of §2(f) evidence. Added case cite.
1202.02(a)(iv) Added case cites. 1202.02(a)(v) Added case cite. 1202.02(a)(v)(A) Added case cite. 1202.02(a)(v)(B) Added case cite. 1202.02(a)(v)(C) Added case cite. 1202.02(a)(v)(D) Added case cite. 1202.02(a)(viii) Added case cites. 1202.02(b)(i) Added case cite. 1202.02(b)(ii) Revised to clarify policy regarding issuance of
nondistinctiveness refusal absent a specimen. Added case cite.
1202.02(c) Former 1202.02(c) deleted. Incorporated content from former 1202.02(d) and separated into sections 1202(c)(i) - (c)(vi).
1202.02(c)(i) New section - Drawings in Trade Dress Applications. 1202.02(c)(ii) New section - Description Required. 1202.02(c)(iii) New section - Disclaimers of Unregistrable Elements of Trade
Dress Marks. 1202.02(c)(iv) New section - Three-Dimensional Marks. 1202.02(d) Former 1202.02(d) renumbered as 1202.02(c). New
1202.02(d) incorporates content from former 1202.02(e).
Changes-14 September 2009
SECTION CHANGE
1202.02(e) Former 1202.02(e) renumbered as 1202.02(d). New 1202.02(e) incorporates content from former 1202.02(f). Revised to clarify policy regarding issuance of nondistinctiveness refusal absent a specimen. Added case cite.
1202.02(f) Deleted section number. Moved content to new 1202.02(e). 1202.03(c) Language change. 1202.03(e) Revised to clarify policy regarding issuance of ornamentation
refusal absent a specimen. 1202.05(a) Revised to clarify standard for establishing acquired
distinctiveness. 1202.05(b) Added case cite. 1202.05(d)(iii) Former 1202.05(d)(iii) incorporated into 1202.05(d)(iv). New
section - Amendment of Drawings of Color Marks. 1202.05(d)(iv) Incorporated content from former 1202.05(d)(iii). 1202.06 Added case cite. 1202.06(a) Added case cite and explanation. 1202.06(c) Revised to clarify policy regarding issuance of a “goods in
trade” refusal absent a specimen. 1202.07(a) Revised to clarify policy regarding syndication statement. 1202.07(a)(iii) Revised to clarify policy regarding issuance of a
column/section refusal absent a specimen. 1202.08(a) Added case cite. 1202.08(b) Revised to clarify standard for what constitutes a new work. 1202.08(f) Changed heading. Revised to clarify policy regarding issuance
of a title-of-a-single-work refusal absent a specimen. 1202.09(a)(iii) Revised to clarify policy regarding issuance of an
author/performing artist name refusal absent a specimen. 1202.10(a) New section - Names and Designs of Characters in Creative
Works in §1(b), §44, or §66(a) Applications. Incorporated content from former 1202.10. Revised to clarify policy regarding issuance of a character name/design refusal absent a specimen.
1202.13 Revised to clarify field for setting forth description of non-visual mark in a TEAS application.
1202.15 Added case cites. Revised to clarify standard for distinctiveness and procedures for submitting reproductions and specimens in sound mark applications.
1203.01 Added case cite. 1203.02 Moved some content to new 1203.02(a), (b), and (f)(ii). 1203.02(a) Former 1203.02(a) renumbered as 1203.02(c), with some
content moved to new 1203.02(d). New section - Types of Deceptive Marks. Incorporated content from Exam Guide 01- 09 and former 1203.02.
Changes-15 September 2009
SECTION CHANGE
1203.02(b) Former 1203.02(b) renumbered as 1203.02(g). New section - Elements of a §2(a) Deceptiveness Refusal. Incorporated content from Exam Guide 01-09 and former 1203.02.
1203.02(c) Incorporated former 1203.02(a). 1203.02(d) New section - Determining Materiality. Incorporated content
from Exam Guide 01-09 and former 1203.02(a). 1203.02(d)(i) New section - Objective Criteria. Incorporated content from
Exam Guide 01-09. 1203.02(d)(ii) New section - Mere Personal Preference. Incorporated content
from Exam Guide 01-09. 1203.02(e) New section - Procedures for Issuing §2(a) Deceptive
Refusals. Incorporated content from Exam Guide 01-09. 1203.02(e)(i) New section - When the Mark is Clearly Misdescriptive.
Incorporated content from Exam Guide 01-09. 1203.02(e)(ii) New section - When It is Not Clear Whether the Mark is
Misdescriptive. Incorporated content from Exam Guide 01-09. 1203.02(f) New section heading - Responding to a §2(a) Deceptiveness
Refusal. 1203.02(f)(i) New section - Amending the Identification of Goods or
Services. Incorporated content from Exam Guide 01-09. 1203.02(f)(ii) New section - Other Arguments. Incorporated content from
Exam Guide 01-09. 1203.02(g) New section number. Incorporated content from former
1203.02(b). 1203.03 Added case cite. 1203.03(a) Added case cites. 1203.03(d) Added case cites. 1203.03(e) Added case cites. Revised to clarify the requirement that the
proposed mark be recognized as pointing uniquely and unmistakably to a person or institution, and the treatment of marks comprising the name of a deceased natural person.
1203.03(f) Added case cites. 1204 Revised to incorporate Exam Guide 2-07. 1204.01 New section - Flags and Simulations of Flags. 1204.01(a) New section - Flags and Simulations of Flags are Refused. 1204.01(b) New section - Stylized Flag Designs are not Refused under
§2(b). 1204.01(c) New section - Caselaw Interpreting "Simulation of Flag.” 1204.01(d) New section - Description of the Mark. 1204.01(e) New section - Flags Not Presently Used as National Flags. 1204.02 New section - Government Insignia. 1204.02(a) New section - Designs that are Insignia Under §2(b) Must Be
Refused. 1204.02(b) New section - Examples of Insignia That Should Be Refused.
Changes-16 September 2009
SECTION CHANGE
1204.02(c) New section - Examples of Designs That Should Not Be Refused.
1204.02(d) New section - Caselaw Interpreting Insignia Under §2(b). 1204.03 New section - Other Refusals May be Appropriate. 1204.04 New section - Responding to §2(b) Refusal. 1204.04(a) New section - Absolute Bar to Registration. 1204.04(b) New section - Deletion of §2(b) Matter. 1204.04(b)(i) New section - Examples of Matter That May and May Not Be
Deleted. 1206 Consolidated with new 813. Revised to clarify when consent is
required and when inquiries should be issued 1206.01 Revised to clarify circumstances in which §2(c) applies. 1206.02 New section - Connection With Goods or Services.
Incorporates content from former 1206.02. Other content moved to new 1206.01 and 1206.05.
1206.03 Former 1206.03 renumbered as 1206.04. New section - When Inquiry is Required.
1206.03(a) Renumbered as 1206.04(a). Deleted section number. 1206.03(b) Incorporated former 1206.03(b) into new 1206.04(b)-(d).
Section number deleted. 1206.04 New section number - incorporated content from former
1206.03. 1206.04(a) New section number - incorporated content from former
1206.03(a). Revised to clarify procedure for minors. 1206.04(b) New section - Consent May Be Presumed From Signature of
Application. Incorporated content from former 1206.03(b). 1206.04(c) New section - New Consent Not Required if Consent is of
Record in Valid Registration Owned by Applicant. Incorporated content from former 1206.03(b).
1206.04(d) New section number. Incorporated heading and content from former 1206.03(b).
1206.05 New section - Names and Likenesses That Do Not Identify a Particular Living Individual. Incorporated content moved from previously existing sections. Revised to clarify when statement should be printed.
1207.01(a)(i) Added case cites. 1207.01(a)(iii) Added case cite. 1207.01(a)(v) Added case cite. 1207.01(b)(iii) Added case cites. 1207.01(b)(vi) Revised to incorporate content from Exam Guide 1-08. 1207.01(b)(vi)(A) New section - Background. Incorporated content from Exam
Guide 1-08 and new case cite. 1207.01(b)(vi)(B) New section - When an Ordinary American Purchaser Would
“Stop and Translate.” Incorporated content from Exam Guide
Changes-17 September 2009
SECTION CHANGE
1-08. 1207.01(b)(vi)(C) New section - Likelihood of Confusion Factors Still Apply When
Assessing Whether Marks are Confusingly Similar. Incorporated content from Exam Guide 1-08.
1207.01(b)(ix) Added case cite. 1207.01(c)(iii) Added case cite. 1207.01(d)(viii) Revised to clarify proper person to sign consent agreement. 1207.01(d)(ix) Revised to clarify examining attorney’s role in cases involving
the issue of the fame of a mark. 1207.01(d)(xi) New section - Family of Marks. 1207.04(b) Revised to incorporate change to Rule 2.99(g), providing that
applications based solely on §44 or §66(a) are not subject to concurrent use registration proceedings.
1208.01(c) Revised to clarify procedure followed when the effective filing date changes.
1209.01(c) Revised to clarify policy regarding disclaimer as to marks comprised entirely of generic wording.
1209.01(c)(iii) Added case cites. 1209.02(a) New section - Descriptive Marks - Advisory Statement That
Mark Appears to Be Generic. Incorporated content from former 1209.02.
1209.02(a)(i) New section - Amendment to Supplemental Register in Response to Office Action. Incorporated content from former 1209.02.
1209.02(a)(ii) New section - Assertion of §2(f) in Response to Office Action. Incorporated content from former 1209.02. Revised to clarify procedure for examining §2(f) claims. Added case cite.
1209.02(b) New section - Descriptive and Possibly Generic Marks - Assertion of §2(f) in Application.
1209.03(d) Added case cites. 1209.03(g) Changed heading. Added case cites. Incorporated content
from former 1207.01(b)(vi)(A). 1209.03(j) Added case cites. 1209.03(m) Revised to clarify the nature and significance of top level
Internet domain names (“TLDs”). Added case cite. 1209.03(o) Changed title. Added discussion of descriptive significance of
“GLOBAL” and “WORLDWIDE.” 1209.04 Incorporated content from Exam Guide 01-09. 1210.01(b) Revised to update standard for materiality. Added case cite. 1210.01(c) Revised to update standard for materiality. Added case cite. 1210.02(a) Added case cite. 1210.02(b) Added case cite. 1210.02(c)(ii) Added case cite. 1210.03 Added case cites. Revised to clarify policy and procedures
Changes-18 September 2009
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regarding issuance of alternative refusals. 1210.04 Added case cite. 1210.04(a) Added case cite. 1210.05(b) Former 1210.05(b) renumbered as 1210.05(c). New section -
Elements of a §2(e)(3) Refusal. Incorporated content from Exam Guide 02-09.
1210.05(b)(i) Section number deleted. Moved content to new 1210.05(c)(i) and 1210.05(e).
1210.05(b)(ii) Section number deleted. Moved content to new 1210.05(c)(ii). 1210.05(c) New section - Determining Materiality. Incorporated former
1210.05(b). 1210.05(c)(i) New section - Materiality in Cases Involving Goods.
Incorporated former 1210.05(b)(i) and content from Exam Guide 02-09.
1210.05(c)(ii) New section - Materiality in Cases Involving Services. Incorporated former 1210.05(b)(ii) and content from Exam Guide 02-09.
1210.05(d) New section - Procedures for Issuing Geographically Deceptive Refusals. Incorporated content from Exam Guide 02-09.
1210.05(d)(i) New section - Neither Applicant Nor Goods/Services Come from the Place Named. Incorporated content from Exam Guide 02-09.
1210.05(d)(ii) New section - It is Not Clear Whether the Goods/Services Originate From the Place Named. Incorporated content from Exam Guide 02-09.
1210.05(e) New section - Geographically Deceptive Matter: Case References. Incorporated content from former 1210.05(b)(i) and added new case cites.
1210.06 Incorporated content from Exam Guide 02-09. 1210.06(a) Incorporated content from Exam Guide 02-09. 1210.06(b) Incorporated content from Exam Guide 02-09. 1210.07(a) Revised to clarify procedures for refusal of applications on
Supplemental Register claiming use prior to December 8, 1993.
1210.07(b) Revised to clarify procedures for refusal of applications asserting §2(f) and claiming use prior to December 8, 1993.
1210.10 New section - Doctrine of Foreign Equivalents. 1211.01 Revised to clarify policy and procedure for surname refusals.
Added case cite. 1211.01(a)(v) Added case cite. 1211.01(a)(vi) Revised to clarify “look and feel” standard for surnames.
Added case cite. 1211.01(a)(vii) Added case cite. 1211.01(b)(iii) Revised to update analysis regarding surnames combined with
Changes-19 September 2009
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initials. Added case cites. 1211.01(b)(vi) Added case cite. 1211.01(b)(vii) Language change. 1211.01(b)(viii) New section - Surname Combined With Legal or Familial Entity
Designation. 1211.02(b)(iii) Former 1211.02(b)(iii) renumbered as 1211.02(b)(iv). New
section -- U.S. Census Database Evidence. 1211.02(b)(iv) - (vii)
Former sections 1211.02(b)(iii) - (vi) renumbered as 1211.02(b)(iv) - (vii).
1212.02(c) Revised to clarify procedure for examining claims of §2(f) in the alternative.
1212.02(d) Revised to clarify procedures for handling unnecessary §2(f) claim.
1212.02(f) Changed heading. Moved content to new 1212.02(f)(i). 1212.02(f)(i) New section - Section 2(f) Claim as to a Portion of the Mark.
Incorporated content from former 1212.02(f). 1212.02(f)(ii) New section - Section 2(f) Claim Restricted to Particular
Goods/Services/Classes. 1212.02(h) Language change. 1212.02(i) Revised to clarify procedure for examining claim of §2(f) in the
alternative. New caselaw incorporated. 1212.04(b) Revised to clarify procedure for examining claim of §2(f) in part
based on a previously registered mark. 1212.05(a) Added case cites. 1212.05(b) Added case cites. 1212.06 Added case cite. 1212.06(a) Changed heading. Revised to clarify nature of use required to
support a §2(f) claim. 1212.06(b) Added case cites. 1212.06(d) Added case cite. 1213.01(c) Revised to clarify procedures for handling unnecessary
disclaimers. Added case cite. 1213.03(c) Added sample disclaimer of design. 1213.03(d) Added case cite. Added discussion of disclaimer of familial
business structure of an entity. 1213.05 Added case cite. 1213.05(a) Revised to clarify proper form for disclaimer of compound
word. 1213.05(c) Added case cite. 1213.05(e) Added case cite. 1213.06 Added case cite. Revised to clarify policy regarding disclaimer
of phonetic equivalent of generic wording. 1213.08(a)(i) Revised to clarify the proper format for disclaimer of non-
adjacent components of a mark, or adjacent components that
Changes-20 September 2009
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do not form a unitary expression. 1213.08(c) Added case cite. Revised to clarify policy regarding disclaimer
of misspelled words. 1213.08(b) Revised to clarify propriety of separate disclaimer of adjacent
components of a mark. 1213.08(d) Revised to clarify the proper form for disclaimer of non-Latin
characters. 1214.01 Added case cite. Revised to clarify treatment of phantom
elements in mark. 1215.02(a) Added case cite. 1215.03 Language change. 1215.04 Language change. Added case cite. 1215.05 Language change. Added case cite. 1215.07 Language change. 1215.08 Added case cites. 1215.08(a) Revised to clarify treatment of source-identifying TLDs. 1215.09 Added case cite. 1215.10 Language change. 1217 Added case cites. Revised to clarify procedures for issuing
refusals based on res judicata, collateral estoppel, or stare decisis.
1300 Changed title. 1301.01(a)(iii) Language changes. 1301.01(b)(ii) Revised to clarify requirements for identification of warranty
services. Added case cite. 1301.02 Language change. 1301.02(f) Added case cite. 1301.03(a) Added case cite. 1301.04 Language change. 1301.04(a) Added case cites. 1301.04(b) Added case cite. 1304.08 Changed heading. Incorporated content from former 1304.09. 1304.08(a)(i) Incorporated content from former 1304.08(c). 1304.08(c) Incorporated content from former 1304.09(a). 1304.09 Deleted. Moved content to new 1304.08. 1304.09(a) Renumbered as 1304.08(c). 1304.09(b) Renumbered as 1304.08(d). 1304.09(c) Renumbered as 1304.08(e). 1304.09(d) Renumbered as 1304.08(f). 1304.09(d)(i) Renumbered as 1304.08(f)(i). 1304.09(d)(ii) Renumbered as 1304.08(f)(ii). 1304.09(d)(iii) Renumbered as 1304.08(f)(iii). 1306.02(c) Language changes.
Changes-21 September 2009
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1306.05(a) Revised to clarify policy and procedure for seeking registration of mark as both certification mark and as trademark or service mark for goods or services other than those to which the certification mark is applied.
1306.06(a) Deleted heading. Incorporated content in 1306.06. 1306.06(b) Renumbered as 1306.06(a). 1306.06(c) Renumbered as 1306.06(b). Deleted first and last paragraphs
of former section. 1306.06(d) Renumbered as 1306.06(c). 1306.06(e) Renumbered as 1306.06(d). 1306.06(f) Renumbered as 1306.06(e). Revised to clarify standard for
identifying goods/services in certification mark application. 1306.06(g) Renumbered as 1306.06(f). 1306.06(g)(i) Renumbered as 1306.06(f)(i). 1306.06(g)(ii) Renumbered as 1306.06(f)(ii). 1306.06(g)(iii) Renumbered as 1306.06(f)(iii). 1306.06(g)(iv) Renumbered as 1306.06(f)(iv). 1306.06(g)(v) Renumbered as 1306.06(f)(v). 1306.06(g)(vi) Renumbered as 1306.06(f)(vi). 1306.08 Added reference to Rule 2.61(b). 1401.03(b) Revised to clarify procedure followed when Pre-Examination
section designates an incorrect class number. 1401.03(d) Incorporated amendment to Rule 2.85(d). 1401.05(a) New section - Identification and Classification of Kits and Gift
Baskets. 1401.05(b) New section - Medical vs. Non-Medical Goods. 1401.10(b) Revised to clarify procedure for classifying items made of
precious metal. 1401.11 Incorporated amendment to Rule 2.85(e)(2). 1401.12 New section - Effective Date of Changes to USPTO ID Manual. 1402.01 Revised to clarify policy regarding wording that identifies items
in more than one class. Added case cite. 1402.01(a) Revised to clarify guidelines for acceptable identifications of
goods or services. 1402.01(b) Language change. 1402.01(d) Revised to clarify how Office determines which goods/services
are part of the identification. 1402.02 Revised to clarify how Office determines which goods/services
are part of the identification. Updated case cites. 1402.03 Added examples of indefinite terms. Added case cite. 1402.03(a) Revised to clarify definite terminology that can be used to
restrict an identification. 1402.05 Incorporated new caselaw. 1402.07(c) Revised to clarify policy regarding amendment of definite
Changes-22 September 2009
SECTION CHANGE
identifications comprising goods that are available in more than one medium.
1402.07(d) Revised to clarify procedures for further amendments to wording that has been acceptably amended.
1402.08 Revised to clarify procedures for moving goods/services between companion applications.
1402.11 Revised to clarify that activities set forth in identification of services must constitute registrable services.
1402.11(e) Revised to clarify and provide examples of acceptable identifications of consulting services.
1402.11(f) New section - Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Items.
1402.11(g) New section - Recorded Entertainment Services. 1402.11(h) New section - Identification of “Bonus Programs.” 1402.11(i) New section - Recognition of Industry Terms. 1402.11(j) New section - Issuing Awards. 1402.15 New section - Procedures for Processing Unacceptable
Amendments to Identifications. 1403.01 Revised to clarify procedure for multiple-class applications.
Added case cite. 1403.02(c) Revised to clarify applicable fee for adding classes. 1403.05 Changed heading. 1403.05(a) Renumbered as 1403.06. 1403.05(b) Renumbered as 1403.07. 1501 Moved some content to 1501.02(a). Incorporated content from
1501.02. 1501.02 Changed section heading. Moved content to new 1501.02(b). 1501.02(a) Old 1501.02(a) renumbered as 1501.02(c). New section -
Applicant’s Appeal Brief. Incorporated content from former 1501. Revised to clarify effect of filing of a request for reconsideration.
1501.02(b) New section - Examining Attorney’s Appeal Brief. Incorporated content from former 1501.02.
1501.04 Revised to clarify processing of deficient appeal fees. Incorporated changes to Rules 2.85 and 2.141.
1501.07 Revised to clarify deadline and procedure for filing examining attorneys’ request for reconsideration.
1502.01 Changed heading. 1504.01 Revised to clarify time period during which an examining
attorney cannot issue an Office action because mark cannot be withdrawn from its scheduled publication in the Official Gazette.
1504.04 Revised to clarify the standard for issuing new refusals or requirements after publication.
Changes-23 September 2009
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1505.02(e) Revised to clarify the procedures for amendments to disclaimers after publication.
1505.03 New section - Republication for Opposition. 1505.03(a) New section - When Republication is Required. 1505.03(b) New section - When Republication is Not Required. 1601.01(a) Updated information about appearance of registration
certificate. 1603 Deleted reference to type of commerce. Incorporated change
to Rule 2.153. 1604.09(c) Language changes. 1604.11 Added example of nonuse that is not excusable. 1604.14 Added discussion of proper party to sign designation of
domestic representative. 1604.16 Incorporated change to Rule 2.163(c). 1604.17(a) Incorporated change to Rule 2.163(c). 1605.04 Incorporated change to Rule 2.167(a). 1606.12 Incorporated change to Rule 2.184(b)(1). 1606.13(a) Incorporated change to Rule 2.184(b)(1). 1609.01(a) Changed heading. Revised to clarify policy on amendment of
registered extensions of protection under §7 of the Trademark Act.
1609.01(b) Incorporated change to Rule 2.173(b)(2). Revised to clarify proper person to sign request for §7 amendment.
1609.02(c) Incorporated change to Rule 2.173(b)(2). Revised to clarify proper person to sign requests for §7 amendment, and declarations supporting use of substitute specimen.
1609.02(d) Former 1609.02(d) renumbered as 1609.02(e). New section - Conforming Amendments. Incorporates change to Rule 2.173(f).
1609.02(e) Renumbered as 1609.02(f). 1609.02(f) Renumbered as 1609.02(g). 1609.03 Revised to clarify policy on amendment or correction of
registered extensions of protection under §7. 1609.04 Revised to incorporate change to Rule 2.85(e)(3) relating to
reclassification of goods or services from United States classes to international classes, and to indicate that holder of registered extension of protection may surrender class(es).
1609.05 Incorporated change to Rule 2.173(g). 1609.10(b) Incorporated change to Rule 2.175(b)(2). Revised to clarify
proper person to sign request for correction under §7, and policy on correction of registered extension of protection under §7.
1611 Revised to clarify procedure for updating USPTO’s automated records after expiration of the grace period, and proper
Changes-24 September 2009
SECTION CHANGE
signatory for requests for expedited cancellation or expiration. 1613 Revised to correct inconsistency in setting forth grace period
for filing a ten-year §71 affidavit. 1615.01 Incorporated change to Rule 2.171(b)(1). Revised to clarify
proper signatory for request to divide, and procedures for processing divided registration. Added statement encouraging request to divide when ownership of a registration has changed with respect to some goods/services.
1615.02 Incorporated changes to Rule 2.171(b)(2). Revised to clarify procedures for processing registered extension of protection after ownership of the international registration changes with respect to some but not all of the goods or services.
1702 Incorporated changes to Rule 2.146. 1705.04 Language changes. 1705.07 Incorporated change to Rule 2.146(c). Revised to clarify
proper person to sign petition to Director. 1706 Language change. 1707 Language change. 1709 Language change. Deleted list of petitions that have been
delegated. 1710 Revised to clarify proper party to file request to make
application “special.” 1710.03 New section - Submitting Petition. 1712.02 Replaced italicized headings with new subsections (a) and (b). 1712.02(a) New section number. 1712.02(b) New section number. Revised to clarify policy regarding
petition to accept premature affidavit or renewal application. 1713 Moved content to new 1713.01 and 1713.02. 1713.01 New section - Standard of Review. Incorporated content from
former 1713. 1713.02 New section - Nonreceipt of Action Granting Additional Time to
Perfect Response. Incorporated content from former 1713. 1714.01 Revised to clarify procedure for handling deficient petitions that
are automatically granted through the electronic system. 1714.01(a) Moved content to new subsections 1714.01(a)(i) and (ii). 1714.01(a)(i) New section - Response to Nonfinal Office Action.
Incorporated content from former 1714.01(a). 1714.01(a)(ii) New section - Response to Final Office Action. Incorporated
content from former 1714.01(a). Revised to clarify procedures for petitions to revive and requests for reconsideration after final action.
1714.01(b) Revised to clarify requirements and fees for petition to revive application abandoned for failure to respond to NOA. Incorporated change to Rule 2.87(e)(3).
Changes-25 September 2009
SECTION CHANGE
1714.01(b)(i) Revised to clarify procedures for filing a petition to revive, extension request, and SOU through TEAS.
1714.01(f)(ii) Revised to clarify situations where the unintentional delay standard does not apply, and to incorporate change to Rule 2.88(i)(2) regarding goods/services omitted from SOU.
1715 Rewritten and reorganized to incorporate Exam Guide 4-08, which changed standard of review for letter of protest filed before publication.
1715.01 Changed section heading. 1715.01(a) Revised to clarify policy regarding letters of protest requesting
suspension pending civil litigation, and proper subject matter for letters of protest.
1715.02 Moved content to new 1715.02(a) and (b). 1715.02(a) New section - Standard of Review for Letter of Protest Filed
Before Publication. Incorporated content from former 1715.02 and Exam Guide 4-08, and clarified standard of review for letter of protest filed before publication but reviewed after publication.
1715.02(b) New section - Action by Examining Attorney Before Publication. Incorporated content from former 1715.02 and Exam Guide 4-08, and clarified procedures for processing letters of protest filed before publication but reviewed after publication.
1715.03 Moved content to sections 1715.03(a) - (d) and incorporated content from Exam Guide 4-08.
1715.03(a) Former 1715.03(a) renumbered as 1715.03(b). New section - Standard of Review for Letters of Protest Filed After Publication. Incorporated content from former 1715.03 and Exam Guide 4-08.
1715.03(b) Renumbered as 1715.03(e). 1715.03(c) New section - Jurisdiction of Application When a Letter of
Protest Is Granted After Publication. Incorporated content from former 1715.03 and Exam Guide 4-08.
1715.03(d) New section - Action by Examining Attorney After Publication. Incorporated content from former 1715.03 and Exam Guide 4- 08.
1715.04 Former 1715.04 renumbered 1715.04(b). New section - Information for Parties Filing Letter of Protest. Incorporated content from Exam Guide 4-08.
1715.04(a) New section - Submitting Letters of Protest. Incorporated content from Exam Guide 4-08.
1715.04(b) Revised to clarify procedure for monitoring action taken regarding letter of protest and policy regarding filing of second letter of protest.
Changes-26 September 2009
SECTION CHANGE
1715.05 Former section deleted. 1715.07 Renumbered as 1715.05. 1902.02(a) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to the Madrid Processing Unit (“MPU”).
1902.02(c) Incorporated amendment to Rule 7.11(a)(2). 1902.02(g)(ii) Revised to clarify standard for reclassifying goods/services. 1902.02(i) Revised to incorporate changes in procedures for payment of
international fees to the IB. 1902.03(a) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to the MPU. 1902.07(c)(i) Revised to clarify procedure regarding response to IB notices
of irregularities in classification. 1902.07(c)(ii) Language change. 1902.07(d) Revised to clarify procedure regarding international applicant’s
failure to remedy irregularities within three months of the date of the IB notice of irregularity.
1902.07(f) Revised to clarify procedure regarding late response to IB notice of irregularity. Updated information about hours for hand delivery to TAC, and procedure for mailing documents to MPU.
1902.08(b) Updated information about hours for hand delivery to TAC, and procedure for mailing documents to MPU.
1902.08(c) Revised to incorporate changes in IB procedures for payment of international fees.
1902.10 Revised to clarify when transformation may be requested. 1903.02 Revised to incorporate changes in IB procedures for payment
of international fees. IB no longer accepts banker’s checks. 1904.01(a) Revised to clarify that §1 and §44 applications cannot be
amended to add or substitute §66(a) basis. 1904.02(b) Changed heading. Moved some content to new 1904.02(c).
Incorporated amendments to Rule 2.85(d). 1904.02(c) Former 1904.02(c) renumbered as 1904.02(f). New section -
Examination of Identification of Goods/Services in §66(a) Applications. Incorporated content from Exam Guide 3-08 and former 1904.02(b).
1904.02(c)(i) New section - Acceptable Identifications of Goods/Services. Incorporated content from Exam Guide 3-08.
1904.02(c)(ii) New section - Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class. Incorporated content from Exam Guide 3-08.
1904.02(c)(iii) New section - Indefinite Identification of Goods/Services that Does not Include any Goods/Services Within the Class. Incorporated content from Exam Guide 3-08.
Changes-27 September 2009
SECTION CHANGE
1904.02(c)(iv) New section - Examination of Proposed Amendments and Issuance of Final Requirements For an Acceptable Identification. Incorporated content from Exam Guide 3-08.
1904.02(c)(v) New section - Effect of Indicated Classes - No Precedential Value on Later-Filed Applications. Incorporated content from Exam Guide 3-08.
1904.02(d) Former 1904.02(d) renumbered as 1904.02(g). New section - Certification and Collective Marks.
1904.02(e) Former 1904.02(e) renumbered as 1904.02(h). New section - Corrections and Limitations to the International Registration. Incorporated content from Exam Guide 3-08.
1904.02(e)(i) New section - Corrections. Incorporated content from Exam Guide 3-08.
1904.02(e)(ii) New section - Limitations. Incorporated content from Exam Guide 3-08.
1904.02(e)(iii) New section - Limitations vs. Amendments. Incorporated content from Exam Guide 3-08.
1904.02(f) Renumbered as 1904.02(i). 1904.02(g) Renumbered as 1904.02(j). 1904.02(h) Renumbered as 1904.02(k). 1904.02(i) Renumbered as 1904.02(l). 1904.03(f) Revised to clarify procedure for examining IB notices of
correction. 1904.09 Language changes. 1904.09(a) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to MPU. 1904.09(b) Language change. Added requirement for verification of
transformed application. 1904.11 Revised to clarify the period of continuous use on which
affidavit of incontestability may be based registered extension of protection.
1904.13 Changed heading. Revised to clarify policy on amendment or correction of registered extensions of protection under §7.
1904.13(a) New section - Limited Amendments to Registered Extension of Protection. Clarifies policy on amendment of registered extensions of protection under §7.
1904.13(b) New section - Corrections to Registered Extensions of Protection. Clarifies policy on correction of registered extensions of protection under §7.
1906.01(a) Added information about IB form. 1906.01(a)(i) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to MPU. Revised to clarify the circumstance in which an assignee may petition the Director to waive Rules 7.23(a)(6)-(7).
Changes-28 September 2009
SECTION CHANGE
1906.01(a)(ii) Updated information about payment of international fees to IB. 1906.01(a)(iv) Incorporated changes to Rules 2.87(g) and 2.171(b)(2). 1906.01(b) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to MPU. 1906.01(c) Added information about IB form. 1906.01(d) Added information about IB form. Appendix B Updated information about renewal terms in foreign countries. Appendix D Added new entity types that may be accepted without question. Appendix E New appendix - Countries That Have Standard Character
Marks or the Equivalent. Decisions Deleted. Case names can be searched on the TMEP page at
www.uspto.gov.
Changes-29 September 2009
Chapter 100 General Information
101 Trademark Statute and Rules
102 United States Patent and Trademark Office World Wide Website
103 Trademark Forms
104 Trademark Searching
105 General Information Booklet Concerning Trademarks
106 The Official Gazette
107 Trademark Manuals
108 Status Inquiries
108.01 Internet Information
108.02 Personal Telephone Assistance
108.03 Due Diligence: Duty to Monitor Status
109 Access to Records
109.01 Electronic Image Records
109.02 Paper Files
109.03 Making Copies of Materials in Records
110 Decisions Available to the Public
111 Requests for Copies of Trademark Documents
112 Patent and Trademark Depository Libraries
101 Trademark Statute and Rules
The federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §§1051 et seq. (also known as the Lanham Act), and 37 C.F.R. Parts 2, 3, 6, 7, 10, and 11. The text of the Act and rules can be accessed and downloaded from the United States Patent and Trademark Office (“USPTO”) website at http://www.uspto.gov.
100-1 September 2009
102 United States Patent and Trademark Office World Wide Website
The USPTO website http://www.uspto.gov provides access to a wide variety of information about patents and trademarks, and offers electronic filing of trademark documents.
The Trademark Electronic Business Center on the USPTO website contains all the information needed for the entire registration process. A customer may search the trademark database for conflicting marks using the Trademark Electronic Search System (“TESS”), file applications and other trademark documents online using the Trademark Electronic Application System (“TEAS”), check the status of applications and registrations through the Trademark Applications and Registrations Retrieval (“TARR”) database, or view and print images of the contents of trademark application and registration records through the Trademark Document Retrieval (“TDR”) portal at http://www.uspto.gov. See TMEP §104 regarding TESS, TMEP §108.01 regarding TARR, TMEP §109.01 regarding electronic image records, and TMEP §301 for further information about electronic filing.
Trademark information available for downloading from the USPTO website includes the trademark statute and rules, Trademark Manual of Examining Procedure, Trademark Trial and Appeal Board Manual of Procedure, Acceptable Identification of Goods and Services Manual, Federal Register notices, Official Gazette notices, examination guides, and fee schedules.
Certified or uncertified copies of trademark documents can also be purchased over the Internet. See TMEP §111 for further information.
103 Trademark Forms
Trademark documents can be filed electronically through TEAS, on the USPTO website at http://www.uspto.gov/teas/index.html. See TMEP §301 regarding TEAS. Additional forms may be available online at http://www.uspto.gov, or through the Trademark Assistance Center (“TAC”) (see TMEP §108.02).
Requests for recordation of assignments and other documents affecting title to an application or registration can be filed through the Electronic Trademark Assignment System (“ETAS”) at http://etas.uspto.gov.
The Electronic System for Trademark Trials and Appeals (“ESTTA”), at http://estta.uspto.gov/, can be used to file requests for extensions of time to oppose, notices of opposition, petitions to cancel, appeals, motions, briefs, notices of change of address, and other documents in Trademark Trial and Appeal Board (“Board”) proceedings.
100-2 September 2009
104 Trademark Searching
X-Search, the USPTO's computerized search system, contains text and images of registered marks, and marks in pending and abandoned applications. X-Search is used by examining attorneys when searching for conflicting marks during examination.
The public may conduct searches free of charge using TESS, on the USPTO website at http://www.uspto.gov. Like X-Search, TESS provides access to text and images of registered marks and marks in pending and abandoned applications. Additional information, including current status, for pending trademark applications and registered trademarks can be obtained by entering the trademark serial number or registration number in the TARR database. See TMEP §108.01. TESS and TARR are available in Patent and Trademark Depository Libraries (“PTDLs”) (see TMEP §112). X-Search is also available for public use in some of the PTDLs.
The public may also use the X-Search system and the Trademark Reporting and Monitoring (“TRAM”) System without charge in the Public Search Facility, which is located on the first floor of the James Madison Building - East Wing, 600 Dulany Street, Alexandria, Virginia, and is open from 8:00 a.m. to 8:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. The Public Search Facility also contains copies of State emblems and official signs and hallmarks of member countries of the Paris Convention for the Protection of Industrial Property, which are protected under Article 6ter of the Convention (see TMEP §1205.02), and copies of the official insignia of state and federally recognized Native American tribes.
If a mark includes a design element, it can be searched by using a design code. To locate the proper design code(s), the public can use the Design Search Code Manual on the USPTO website at http://www.uspto.gov.
For some marks, the USPTO has added a pseudo mark to the search data to assist users in identifying relevant marks related to their search term. The “pseudo mark” field, which is not displayed, often contains spellings that are very similar or phonetically equivalent to the word mark. For example, if “4U” appears in the mark, the term "for you" would be added to the pseudo-mark field. This provides an additional search tool for locating marks that contain an alternative or intentionally corrupted spelling for a normal English word. Pseudo mark entries are not displayed or printed in the search results and are not part of the official application or registration.
USPTO personnel cannot conduct trademark searches for the public. Private trademark search firms will conduct searches for a fee. The USPTO cannot aid in the selection of a search firm or an attorney. 37 C.F.R. §2.11. Search firms are often listed in the yellow page section of telephone directories under the heading "Trademark Search Services" or "Patent and Trademark Search Services."
100-3 September 2009
The public can search the trademark assignment records of the Assignment Services Branch on the USPTO website at http://assignments.uspto.gov/assignments. Assignment records can also be searched in the Public Search Facility. See TMEP §503.08 for further information about the accessibility of assignment records.
105 General Information Booklet Concerning Trademarks
The booklet entitled Basic Facts About Trademarks contains information and instructions for registering a trademark or service mark. The booklet can be accessed or downloaded from the USPTO website at http://www.uspto.gov/, or may be obtained by calling TAC. See TMEP §108.02 regarding TAC.
106 The Official Gazette
The Official Gazette (“OG”), issued every Tuesday, is a publication of the USPTO, which is available free of charge on the USPTO website.
Trademark Official Gazette (“TMOG”). The TMOG, posted at http://www.uspto.gov/web/trademarks/tmog/, contains an illustration of each mark published for opposition on the Principal Register, marks registered on the Principal Register under 15 U.S.C. §1051(d), and marks registered on the Supplemental Register on the date of the particular issue in which the marks appear. Effective July 15, 2003, the USPTO publishes the TMOG only in electronic form. See notice at 68 Fed. Reg. 37803 (June 25, 2003).
USPTO Notices. The TMOG does not contain USPTO Notices. Such notices are posted separately in the general information section of the Official Gazette, at http://www.uspto.gov/web/offices/com/sol/og/index.html. This section includes such general information as notices of changes in rules or Office procedures for both patents and trademarks; notices to parties who cannot be reached by mail; and indices of trademark registrations issued, renewed, cancelled, amended, or corrected on the date of the particular issue in which the marks appear.
Effective January 1, 2008, the USPTO discontinued the separate weekly publication of USPTO notices in paper form. See notice at 72 Fed. Reg. 72999 (Dec. 26, 2007).
107 Trademark Manuals
The following manuals may be downloaded free of charge from the USPTO website at http://www.uspto.gov:
• Trademark Manual of Examining Procedure (“TMEP”)
• Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
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• Acceptable Identification of Goods and Services Manual
The TMEP may also be purchased from the Government Printing Office (“GPO”) at http://bookstore.gpo.gov/. GPO’s general information telephone numbers are (202) 512-1800 and (866) 512-1800.
108 Status Inquiries
108.01 Internet Information
The TARR database on the USPTO website at http://tarr.uspto.gov provides detailed information about the status and prosecution history of trademark applications and registrations. The TARR database is available 24 hours a day, 7 days a week.
The TARR database is normally updated daily from 1:00 to 2:00 p.m. Eastern Time and does not include any newly filed applications, nor amendments thereto, entered into the USPTO’s internal trademark database after the last TARR update. For example, the TARR database shows applications that registered after its last update as pending applications rather than registrations, and does not include edits made to individual records after its last update.
In addition, the TARR database may not reflect changes in ownership that have been recorded in the Assignment Services Branch. There are circumstances in which the Trademark Database (i.e., TRAM and TARR) will be updated automatically upon the recordation of a change of ownership. See TMEP §§504 and 504.01. In all other cases, the new owner must separately notify the Trademark Operation in writing of the recordation of a document, and request that the Trademark Database be updated manually. See TMEP §§503.01(a) and 505 et seq.
Information about documents recorded with the Assignment Services Branch can be obtained though ETAS, at http://etas.uspto.gov.
See also TMEP §109.01 regarding public access to electronic images of the contents of trademark application and registration and Board proceeding records.
108.02 Personal Telephone Assistance
If additional information regarding the status of an application or registration is required, callers may telephone TAC at (571) 272-9250 or (800) 786-9199 and request a status check. TAC also provides general information about the trademark registration process. Telephone assistance is available from 8:30 a.m. to 8:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. Walk-in service is available from 8:30
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a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
The Trademark Assistance Center will gladly answer questions about the application process. However, USPTO employees cannot:
• conduct trademark searches for the public (see TMEP §104);
• comment on the validity of registered marks (see TMEP §1801);
• answer questions as to whether a particular mark or type of mark is eligible for registration;
• offer legal advice or opinions about common-law trademark rights, state registrations, or trademark infringement claims; or
• aid in the selection of a private trademark attorney or search firm (37 C.F.R. §2.11).
See TMEP Chapter 1800 regarding public inquiries about applications and registrations.
108.03 Due Diligence: Duty to Monitor Status
Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:
(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and
(2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted.
Should the status inquiry reveal that a document is lost, that no action has been taken regarding correspondence that was submitted, or that some other problem exists, the applicant or registrant must promptly request corrective action. 37 C.F.R. §2.146(i). Failure to act diligently and follow up with appropriate action may result in denial of the requested relief. The USPTO may deny petitions to reactivate abandoned applications and cancelled registrations when a party fails to inquire about the status of a pending matter within a reasonable time. See TMEP §§1705.05 and 1714.01(d).
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Written status inquiries are discouraged, because they can delay processing. Whenever possible, status inquiries should be made through the TARR database. If additional information regarding the status of an application or registration is required, callers may telephone TAC at (571) 272-9250 or (800) 786-9199.
109 Access to Records
18 U.S.C. §2071. Concealment, removal, or mutilation generally. (a) Whoever willfully and unlawfully conceals, removes, mutilates,
obliterates, or destroys, or attempts to do so, or, with intent to do so takes and carries away any record, proceeding, map, book, paper, document, or other thing, filed or deposited with any clerk or officer of any court of the United States, or in any public office, or with any judicial or public officer of the United States, shall be fined under this title or imprisoned not more than three years, or both.
(b) Whoever, having the custody of any such record, proceeding, map, book, document, paper, or other thing, willfully and unlawfully conceals, removes, mutilates, obliterates, falsifies, or destroys the same, shall be fined under this title or imprisoned not more than three years, or both; and shall forfeit his office and be disqualified from holding any office under the United States. As used in this subsection, the term “office” does not include the office held by any person as a retired officer of the Armed Forces of the United States.
37 C.F.R. §2.27(b). Except as provided in paragraph (e) of this section, access to the file of a particular pending application will be permitted prior to publication under §2.80 upon written request.
37 C.F.R. §2.27(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 § 2.6.
37 C.F.R. §2.27(e). Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the Board shall be filed under seal.
In order to inspect the contents of a trademark application or registration record, it is not necessary to show good cause or to have a power to inspect from the applicant or registrant.
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109.01 Electronic Image Records
The public may view and print images of the contents of trademark application and registration records through the TDR portal on the USPTO website at http://www.uspto.gov. Electronic images of Board proceeding records are also available on the USPTO website at http://ttabvue.uspto.gov/ttabvue/. TDR and TTABVUE are available 24 hours a day, seven days a week, free of charge.
The public may also view and print images of the contents of trademark application and registration records through the Trademark Image Capture and Retrieval System (“TICRS”), available in the Public Search Facility on the USPTO premises. See TMEP §402.
109.02 Paper Files
Effective April 12, 2004, the USPTO no longer creates paper files for all trademark applications or paper copies of certain trademark-related documents that are submitted to the USPTO in electronic format. Furthermore, the USPTO does not generate paper copies of certain trademark documents that the USPTO creates, except for copies that are sent to recipients by mail. See New USPTO Policies Regarding (1) Generation of Paper Copies of Trademark-Related Documents and (2) Public Access to Existing Paper Copies of Trademark-Related Documents (TMOG Apr. 6, 2004), at http://www.uspto.gov/web/offices/com/sol/og/2004/week14/pattmcp.htm. All these documents can be viewed through TICRS and TDR.
Procedure for Requesting Paper Files. A member of the public must make a request for access to the file. The request must include the name and phone number of the person requesting the file. USPTO personnel must keep a record of all files being removed, and enter the new location of the file (e.g., charged to non-USPTO personnel) in the TRAM database. The public must inspect the file on the premises of the USPTO, and nothing may be removed from the file without written authorization from the Office of the Commissioner for Trademarks. Requests for files should be made at the following locations:
• Files Located Within the Trademark Operation or at the Board. A request for access to a paper file that is located within the Trademark Operation or at the Board should be directed to TAC, located in the James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, VA, between 8:30 a.m. and 5:00 p.m. This includes files located in the law offices, Pre-Examination Section, ITU Unit, and Post Registration Section. See Official Gazette noticed dated April 6, 2004, posted at http://www.uspto.gov/web/trademarks/notice_paperfiles.htm. The file will usually be available to the requester within a few days.
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• Files Located at the Warehouse. Requests for access to paper files located at the warehouse should be directed to the Public Search Facility, located on the first floor of the James Madison Building - East Wing, 600 Dulany Street, Alexandria, Virginia, between 8:30 a.m. and 5:00 p.m. This includes files for abandoned applications, cancelled and expired registrations, and terminated Trademark Trial and Appeal Board proceedings. The file will usually be available to the requester within a few days.
The public can check TRAM or TARR to determine where a file is located.
An unsent letter or draft is not part of the file. USPTO personnel should ensure that such material is removed before making the file available to a member of the public.
Paper files for abandoned applications and cancelled and expired registrations are stored in the warehouse for two years after the date of abandonment, cancellation, or expiration, and then destroyed. See notice at 980 TMOG 16, reprinted at 1232 TMOG 625 (March 21, 2000). See TBMP §120.03 regarding the retention schedule for the files of terminated Board proceedings.
No file or related document may be removed from the premises occupied by the USPTO, except as required by the issue process or other official process, unless specifically authorized by the Director. 18 U.S.C. §2071(b). If such authorization is given, the employee having custody will be responsible for complying with the requirements of law.
See TMEP §503.08 regarding the accessibility of assignment records.
109.03 Making Copies of Materials in Records
The public may print images of the contents of trademark application, registration, and Board proceeding records through TDR or TTABVUE on the USPTO website at http://www.uspto.gov. See TMEP §109.01. The public can also print electronic copies of records pertaining to applications or registrations through TESS (see TMEP §104), and prosecution histories through TARR (see TMEP §108.01) on the USPTO website. There is no charge for use of these databases.
The public may also print trademark documents from TICRS, TTABVUE, TARR, or X-Search in the Public Search Facility on the USPTO premises. There is a fee for printing images of documents in the Public Search Facility. See TMEP §104.
Photocopiers for making copies of paper files are available to the public on the premises of the USPTO for a fee.
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See TMEP §111 regarding requests that the USPTO provide copies of trademark documents.
110 Decisions Available to the Public
37 C.F.R. §2.27(c). Decisions of the Director and the Trademark Trial and Appeal Board in applications and proceedings relating thereto are published or available for inspection or publication.
Precedential decisions of the Director and the Board are noted as such and published in the United States Patents Quarterly (cited as USPQ or USPQ2d), which is a periodical reporting service of a non-governmental publishing company. The USPTO does not print these decisions in its own publications. Non-precedential decisions of the Director and the Board are not published.
Both precedential and non-precedential decisions are available for viewing, downloading, and printing via TTABVUE.
A weekly summary of final decisions issued by the Board appears on the USPTO website at http://www.uspto.gov and in each issue of the Official Gazette.
See TMEP §1803 regarding decisions that are available under the Freedom of Information Act.
111 Requests for Copies of Trademark Documents
The public may print images of the contents of trademark application, registration, and Board proceeding records through TDR or TTABVUE on the USPTO website at http://www.uspto.gov. See TMEP §109.01. The public can also print electronic copies of records pertaining to applications or registrations through TESS (see TMEP §104), and prosecution histories through TARR (see TMEP §108.01) on the USPTO website. There is no charge for use of these databases.
The public may purchase certified or uncertified copies of trademark documents (e.g., application or registration records, trademark title and status reports, etc.). Fee schedules are posted on the USPTO website. Requests for copies of trademark documents are handled by the Document Services Branch of the Public Records Division of the USPTO.
Copies of trademark documents can be ordered through the USPTO website at http://www.uspto.gov, for delivery by the United States Postal Service. The fee must be paid by credit card, EFT, or deposit account authorization. Requests for copies of trademark documents may also be e-mailed to
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dsd@uspto.gov, with an authorization to charge the fee to a credit card or deposit account.
Requests for certified or uncertified copies of trademark documents may be mailed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §2.190(d).
112 Patent and Trademark Depository Libraries
There is a network of PTDLs throughout the United States that provides access to many of the same products and services offered at the USPTO. A list of the PTDLs and their telephone numbers appears on the USPTO website at http://www.uspto.gov and in each issue of the Official Gazette.
Information available free of charge at the PTDLs includes the text of the trademark statute and rules (see TMEP §101); the Trademark Manual of Examining Procedure; Trademark Trial and Appeal Board Manual of Procedure; Acceptable Identification of Goods and Services Manual; and the Trademark Electronic Search System. Photocopiers are generally provided for a fee.
The scope of PTDL collections, hours of operation, services, and fees (where applicable) may vary from one library to another.
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Chapter 200 Application Filing Date
201 What Constitutes Filing Date
201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue
201.02 Constructive Use Priority
202 Requirements for Receiving a Filing Date
202.01 Clear Drawing of the Mark
202.02 Listing of Recognizable Goods or Services
202.03 Filing Fee for At Least One Class of Goods or Services
202.03(a) Fee Payment Refused or Charged Back By Financial Institution
202.03(a)(i) Processing Fee for Payment Refused or Charged Back By Financial Institution
203 Review for Compliance With Minimum Requirements
204 Defective or Informal Applications
204.01 Filing Date Cancelled if Minimum Filing Requirements not Met
204.02 Resubmission of Applications
204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
205 Filing Date Is Not Normally Changed
206 Effective Filing Date
206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use
206.02 Application Claiming Priority under §44(d) or §67
206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989
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206.04 Examining Attorney’s Action After Conducting New Search
201 What Constitutes Filing Date
In an application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, the filing date of an application is the date on which all the elements set forth in 37 C.F.R. §2.21(a) (see TMEP §202) are received in the United States Patent and Trademark Office (“USPTO”).
In a request for an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), the filing date is: (1) the international registration date, if the request for extension of protection to the United States is made in an international application; or (2) the date that the subsequent designation was recorded by the International Bureau of the World Intellectual Property Organization (“IB”), if the request for extension of protection to the United States is made in a subsequent designation. 15 U.S.C. §1141f(b); 37 C.F.R. §7.26. See TMEP §§1904 et seq. for further information about §66(a) applications.
Granting a filing date to an application does not necessarily mean that all requirements for registration have been satisfied. It is possible that registration could be refused on a substantive ground. See TMEP §818 for a list of potential grounds of refusal. If registration is not refused on any substantive basis (or if the applicant overcomes any substantive refusals), the applicant must comply with any procedural requirements issued by the examining attorney during examination, in accordance with applicable rules and statutes, in order to obtain a registration.
201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue
The filing date of an application (see TMEP §201) is also the effective filing date, except where: (1) the applicant is entitled to priority under 15 U.S.C. §1126(d) or §1141g (see TMEP §206.02); (2) the applicant amends an intent- to-use application filed under 15 U.S.C. §1051(b) to the Supplemental Register (see TMEP §206.01); or (3) the application was filed before November 16, 1989, the applicant had not used the mark in commerce for one year before the application filing date, and the applicant amends to the Supplemental Register on or after November 16, 1989 (see TMEP §206.03). The effective filing date is controlling for purposes of determining priority for publication or issue (see TMEP §1208.01) and constructive use priority (see TMEP §201.02).
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201.02 Constructive Use Priority
Under 15 U.S.C. §§1057(c) and 1141f(b), filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the mark, provided the application matures into a registration. Upon registration, filing affords the applicant nationwide priority over others, except: (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application under 15 U.S.C. §1126(d) or §1141g (see TMEP §206.02). See Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527 (D.C. Cir. 2008); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
202 Requirements for Receiving a Filing Date
Under 37 C.F.R. §2.21(a), the USPTO will grant a filing date to an application under §1 or §44 of the Trademark Act that is in the English language and contains all of the following:
(1) The name of the applicant;
(2) A name and address for correspondence;
(3) A clear drawing of the mark;
(4) A listing of the goods or services; and
(5) The filing fee for at least one class of goods or services.
The filing date requirements apply to both the Principal and the Supplemental Register. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (use in commerce is not required for receipt of a filing date for an application requesting registration on the Supplemental Register).
If an application does not satisfy all the above requirements, it will not be given a filing date. The USPTO will notify the applicant of the reason(s) why the application was not given a filing date, and refund the application filing fee.
The applicant must provide a physical address to which paper correspondence can be mailed in order to receive a filing date. An e-mail address and authorization to send communications by e-mail cannot be substituted for a physical address. A post office box is acceptable.
Applications that do not meet the minimum requirements for receipt of a filing date are referred to as “informal.” See TMEP §203 regarding review for compliance with minimum filing requirements, and TMEP §§204 et seq. for information about how the USPTO handles informal applications.
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In an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a) (i.e., a request for extension of protection of an international registration to the United States), compliance with the minimum filing requirements of §66(a) of the Act will be determined by the IB prior to sending the application to the USPTO. See TMEP §§1904 et seq. for further information about §66(a) applications.
202.01 Clear Drawing of the Mark
In a §66(a) application, the drawing must meet the requirements of the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement, which are available on the IB’s website at http://www.wipo.int/madrid/en/. The IB will determine whether the drawing meets these requirements before sending the application to the USPTO. See TMEP §§1904 et seq. for further information about §66(a) applications.
Under 37 C.F.R. §2.21(a)(3), a §1 or §44 applicant must submit “a clear drawing of the mark” to receive a filing date, except in applications for registration of sound, scent, and other non-visual marks. A separate drawing page (or digital image of a separate drawing page in an application filed through the Trademark Electronic Application System (“TEAS”)) is not mandatory, but is encouraged. See TMEP §807.09 regarding “drawings” in applications for registration of non-visual marks.
A "drawing" is simply a depiction of the mark for which registration is sought. 37 C.F.R. §2.52. A drawing that includes multiple elements that do not comprise an identifiable mark, or that consists of wording describing the mark, does not constitute a clear drawing of the mark.
An application that includes two or more drawings displaying materially different marks does not meet the requirement for a “clear drawing of the mark.” Therefore, an application is denied a filing date if it includes two or more drawings displaying materially different marks. See Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004).
However, if an applicant (1) submits a separate drawing page showing a mark in a paper application, (2) enters a standard character mark in the “Mark Information” field of an application filed through TEAS, or (3) attaches a .jpg file containing a mark to the “Mark Information” field of a TEAS application, and a different mark appears elsewhere in the application, the drawing page or mark shown in the “Mark Information” field on TEAS will control for purposes of determining the nature and elements of the mark. The USPTO will grant a filing date to the application, and disregard any other mark that appears elsewhere in the application. The applicant will not be permitted to amend the mark if the amendment is a material alteration of the mark on the drawing page in a paper application or the “Mark Information” field in a TEAS application. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir
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USPTO 2001). See 37 C.F.R. §2.72 and TMEP §§807.14 et seq. regarding material alteration of a mark.
A specimen showing the mark does not satisfy the requirement for a drawing. If the only depiction of the mark is on a specimen (e.g., an advertisement, a photograph of the goods, or the overall packaging), then there is no drawing, and the application will be denied a filing date.
See TMEP §§807 et seq. for additional information about the examination of drawings.
See also TMEP §204.03 regarding the examining attorney’s handling of applications that are erroneously granted a filing date.
202.02 Listing of Recognizable Goods or Services
The USPTO will deny a filing date to an application under §1 or §44 of the Trademark Act if the application does not identify recognizable goods or services. See TMEP §1402.02 for further information.
202.03 Filing Fee for At Least One Class of Goods or Services
In an application under §1 or §44 of the Trademark Act, the applicant must pay the filing fee for at least one class of goods or services before an application can be given a filing date. 37 C.F.R. §2.21(a)(5). The fee can be paid by credit card, check, money order, electronic funds transfer (“EFT”), or by an authorization to charge a deposit account. 37 C.F.R. §2.207. See TMEP §§405 et seq. for additional information about fees.
The amount of the trademark application filing fee varies depending on whether the application is filed through TEAS or on paper. An applicant has three choices. The applicant can file:
• A paper application at the highest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i);
• A regular TEAS application at a lower fee per class, set forth in 37 C.F.R. §2.6(a)(1)(ii); or
• A TEAS Plus application (see TMEP §§819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iii).
See TMEP §§819 et seq. regarding TEAS Plus. See also notices at 70 Fed. Reg. 2952 (Jan. 19, 2005) and 70 Fed. Reg. 38768 (July 6, 2005). The current fee schedule is available on the USPTO website at http://www.uspto.gov.
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The complete fee for at least a single class must be submitted with the application as filed. Partial or piecemeal fee payments are unacceptable and will be returned.
If an application does not include a filing fee for at least a single class, the USPTO will deny a filing date. In re Buckhead Marketing & Distribution, Inc., 71 USPQ2d 1620 (Dir USPTO 2004); In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995). If a filing date has been granted when the USPTO discovers that the applicant has not paid the filing fee for at least a single class, the filing date will be cancelled. See TMEP §204.01.
See TMEP §§202.03(a) and 405.06 regarding payments that are refused or charged back by financial institutions, and TMEP §405.03 regarding deposit accounts.
The filing fee for a §66(a) application will be sent to the USPTO by the IB, pursuant to Article 8 of the Madrid Protocol. Generally, the examining attorney should not require additional fees during examination, except where the application is divided due to a change in ownership with respect to some but not all of the goods/services. See TMEP §810 for further information about application filing fees, and TMEP §§1904 et seq. for further information about §66(a) applications.
202.03(a) Fee Payment Refused or Charged Back By Financial Institution
Where a check submitted as payment of an application filing fee is returned to the USPTO unpaid, or an EFT or credit card payment is refused or charged back by a financial institution, the application is treated as though the fee had never been paid.
If the original application was accompanied by an authorization to charge fee deficiencies to a deposit account (37 C.F.R. §2.208), then the application filing fee and the processing fee required by 37 C.F.R. §2.6(b)(12) (see TMEP §§202.03(a)(i) and 405.06) are charged to the deposit account, and the original filing date remains unchanged.
However, if the original application was not accompanied by an authorization to charge deficient fees to a deposit account that has sufficient funds to cover the fee, and the applicant has not paid the filing fee for at least one class of goods or services, the filing date is void and will be cancelled. In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995).
In some cases, the applicant will have resubmitted the fee before the USPTO discovers that the payment was refused. In these cases, the USPTO will change the filing date to the date when the fee for a single class of goods or services was resubmitted.
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In a multiple-class application, if the fee for at least a single class has been paid, but the payment of the filing fee for additional class(es) is refused, the filing date of the application is not affected. The applicant must: (1) resubmit the fee for the additional class(es), or delete the additional class(es); and (2) pay the processing fee required by 37 C.F.R. §2.6(b)(12). The applicant must pay the processing fee even if the applicant chooses to delete the additional class(es).
See TMEP §§202.03(a)(i) and 405.06 regarding payments refused by financial institutions, and TMEP §204.03 regarding the examining attorney’s handling of applications that are erroneously granted a filing date.
202.03(a)(i) Processing Fee for Payment Refused or Charged Back By Financial Institution
There is a fee for processing any payment refused (including a check returned unpaid) or charged back by a financial institution. 37 C.F.R. §2.6(b)(12). See TMEP §405.06. However, this is not a filing date requirement. If an applicant resubmits the filing fee without paying the processing fee, the USPTO will give the application a filing date as of the date of resubmission, and the examining attorney will require submission of the processing fee during examination.
203 Review for Compliance With Minimum Requirements
In applications under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), the IB will determine whether the application complies with §66(a) prior to sending the request for extension of protection of an international registration to the USPTO. See TMEP §§1904 et seq. for further information about §66(a) applications.
Applications under §1 or §44 of the Act are given a receipt date (see TMEP §303.01) and then reviewed for compliance with the minimum requirements for granting a filing date (see 37 C.F.R. §2.21(a) and TMEP §202 for a list of these requirements).
If the minimum requirements of 37 C.F.R. §2.21 have been met, the USPTO assigns a filing date as of the date of receipt in the USPTO. See TMEP §§401 et seq. regarding the processing of new applications that meet the minimum requirements for receipt of a filing date, and TMEP §§204 et seq. regarding the processing of applications that do not meet these minimum requirements.
The minimum requirements for receipt of a filing date under 37 C.F.R. §2.21(a) apply to all applications under §§1 and 44 of the Act, whether filed electronically or on paper. When an application is filed electronically, the TEAS system will not accept the transmission if the fields corresponding to the minimum filing requirements are not filled in. However, if the fields are
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filled in with incomplete or inappropriate information, the TEAS system will accept the transmission, but the USPTO will deny the application a filing date upon review for compliance with minimum filing requirements. For example, if the services were identified as “miscellaneous services,” TEAS would accept the transmission, but the USPTO would not give the application a filing date (see TMEP §§202.02 and 1402.02).
204 Defective or Informal Applications
If an application under §1 or §44 of the Trademark Act does not meet the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) (see TMEP §202), the application is void. These applications are also referred to as “incomplete” or “informal.”
204.01 Filing Date Cancelled if Minimum Filing Requirements not Met
Applications under §1 or §44 of the Trademark Act are initially assigned a filing date and serial number and then reviewed for compliance with the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a). If the minimum filing requirements have not been met, the USPTO cancels the filing date and serial number, refunds any filing fee submitted, and sends a notice to the applicant explaining why the application is defective.
See TMEP §1711 regarding the procedures for requesting review of the denial of a filing date by the Office of the Deputy Commissioner for Trademark Examination Policy.
204.02 Resubmission of Applications
The USPTO recommends that all applications be filed through TEAS. However, if the USPTO denies a filing date in a paper application, the applicant may resubmit the original papers or a copy of the original papers, together with the item(s) necessary to correct the defect(s), and a new filing fee. The applicant should cross off the cancelled serial number. A filing fee for at least a single class of goods or services must be included when the applicant resubmits an application, even if the applicant has not yet received a refund of the fee previously submitted.
The new filing date will be the date on which a complete application, including all elements required by 37 C.F.R. §2.21(a), is received in the USPTO. Note that applications claiming priority under §44(d) of the Trademark Act must meet all filing date requirements within six months of the filing date of the foreign application. 37 C.F.R. §2.34(a)(4)(i); TMEP §§806.01(c) and 1003.02.
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If an applicant believes that the USPTO committed an error in denying the application a filing date, the applicant may submit a request to restore the filing date. See TMEP §1711. The USPTO recommends that the applicant file a new application, including the required application filing fee, using TEAS, located at http://www.uspto.gov/teas/index.html. After the applicant receives a new serial number, the applicant should fax the request to restore the original filing date to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950. This request should: (1) be captioned as a “Request for Restoration of the Filing Date;” (2) state the reason(s) why the applicant believes the filing date was denied in error; (3) include the new serial number; and (4) include a copy of any Notice of Incomplete Trademark Application received from the USPTO. Although applicants have two (2) months from the issuance date of a Notice of Incomplete Trademark Application to file a request to restore the original filing date (37 C.F.R. §2.146(d)), it is recommended that the applicant file the request immediately upon receipt of the new serial number, to expedite processing.
204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
Sometimes an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R. §2.21 for receipt of a filing date is erroneously referred to an examining attorney for examination. In this situation, if the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal. The USPTO will cancel the filing date and serial number, refund any filing fee submitted, and send a notice to the applicant explaining why the application is defective. See TMEP §204.01.
If, however, an examining attorney discovers after issuing an action that the application as filed did not meet the minimum requirements for receipt of a filing date, then the examining attorney must issue a supplemental Office action, refusing registration on the ground that the application was not eligible to receive a filing date. Any outstanding refusals and requirements must be maintained and incorporated into the supplemental Office action. The applicant should be given six months to comply with all filing date requirements. If the applicant fails to qualify for a filing date within the response period, the application is void. If a filing fee was submitted with the original application, the examining attorney must have the filing fee refunded and update the USPTO’s automated records to indicate that the application is abandoned.
If the applicant complies with the filing date requirements within six months of the issuance of the examining attorney’s Office action, the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing date requirements. In such a case, the examining attorney
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must conduct a new search of Office records for conflicting marks, and issue another Office action if necessary.
205 Filing Date Is Not Normally Changed
After an application has been given a filing date, the USPTO will normally not vacate the filing date or physically alter the designation of the original filing date in the Trademark Reporting and Monitoring (“TRAM”) System, except where the application as originally filed was erroneously accorded a filing date (see TMEP §204.03) or where the Office grants restoration of a filing date (see TMEP §§204.02 and 1711).
In an application under §1 or §44 of the Trademark Act, if the application met the minimum requirements for receipt of a filing date (see TMEP §202) when originally filed, but during examination it is discovered that the applicant did not have a right to apply on the assigned filing date (e.g., because the applicant did not own the mark), the application is void, because a valid application was not created. See TMEP §§803.06 and 1201.02(b). The USPTO will not refund the filing fee in such a case. If, subsequent to the assigned filing date, the applicant became eligible to apply, the applicant may file a new application (including a filing fee).
206 Effective Filing Date
The filing date of an application (see TMEP §201) is also the effective filing date, except in the situations described in the subsections below. In these situations, the USPTO does not alter the original filing date in its automated records.
In the situations described below, because the effective filing date will likely be subsequent to the date on which the examining attorney searched USPTO records for conflicting marks, the examining attorney must conduct another search.
206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use
An applicant relying on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d). 37 C.F.R. §§2.47(d) and 2.75(b).
If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use and an acceptable amendment to the Supplemental Register, the USPTO will consider the filing
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date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b). The examining attorney must conduct a new search of USPTO records for conflicting marks. See TMEP §206.04 regarding examining attorney's action after conducting a new search.
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (filing date did not change when applicant who originally sought registration on the Supplemental Register without alleging use in commerce amended to seek registration on the Principal Register under §1(b)).
See TMEP §§816.02 and 1102.03 for additional information about examination of intent-to-use applications on the Supplemental Register.
206.02 Application Claiming Priority under §44(d) or §67
When an applicant is entitled to priority based on a foreign application, the effective filing date is the date on which the foreign application was first filed in the foreign country. The priority claim for the United States application must be filed within six months after the filing date of the foreign application. 15 U.S.C. §§1126(d)(1) and 1141g; 37 C.F.R. §§2.34(a)(4)(i) and 7.27(c); TMEP §§1003.02 and 1904.01(e).
In an application under §44(d) of the Trademark Act, the applicant can submit a priority claim after the filing date of the United States application if: (1) the applicant submits the priority claim within the six-month priority period (37 C.F.R. §2.35(b)(5)); and (2) the applicant was entitled to priority on the filing date of the United States application. If the priority claim is submitted after the examining attorney has conducted a search of USPTO records for conflicting marks, he or she must conduct a new search.
In an application under §66(a) of the Act, the priority claim must be set forth in the international application or subsequent designation filed with the IB. The priority claim will be part of the request for extension of protection sent to the USPTO by the IB. See TMEP §1904.01(e).
206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989
In an application filed before November 16, 1989, the date of the amendment to the Supplemental Register becomes the effective filing date of the application if: (1) the applicant had not used the mark in commerce for one year before the application filing date; and (2) the applicant amends to the Supplemental Register on or after November 16, 1989. See TMEP §816.02.
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206.04 Examining Attorney’s Action After Conducting New Search
When the effective filing date changes to a later date, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the search shows that because of the new, later effective filing date, there is a later-filed conflicting application that now has an earlier filing date, the examining attorney must suspend action of the subject application pending disposition of the other application, if the application is otherwise in condition for suspension. See TMEP §§1208 et seq. regarding the procedures for handling conflicting marks in pending applications. If the examining attorney is handling a later-filed application that has been suspended pending disposition of the subject application, the examining attorney must withdraw the application from suspension and either approve it for publication or take action on any other outstanding issues. If a later-filed conflicting application is being handled by a different examining attorney, the examining attorney should contact the other examining attorney to notify him or her of the change in the effective filing date of the subject application.
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Chapter 300 Filing and Receipt of Documents
301 Electronic Filing
302 Trademark Correspondence and Signature Requirements - In General
302.01 Original Documents Generally Not Required
302.02 Multiple Copies of Documents Should Not Be Filed
302.03 Identifying the Nature of Documents Filed
302.03(a) Correspondence Pertaining to Trademark Applications
302.03(b) Correspondence Pertaining to Trademark Registrations
303 Receipt of Documents by the Office
303.01 Date of Receipt
303.02 Acknowledgment of Receipt
303.02(a) TEAS “Success” Page
303.02(b) “Mail Room Date” Label Showing Receipt
303.02(c) Postcard Receipt
303.02(c)(i) Postage on Return Receipt Postcards
304 Electronic Mail
304.01 Communications Acceptable Via Electronic Mail
304.02 Communications Not Acceptable Via Electronic Mail
304.03 Authorization of Electronic Mail Communications From the USPTO
304.04 Date of Receipt of Electronic Mail
304.05 Certificate of Transmission by Electronic Mail
304.06 Outgoing Electronic Mail
304.07 Signature of Electronic Mail
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304.08 E-Mail Addresses for Correspondence With the Office
304.09 “Confirmation” Copies of E-Mail Communications Should Not Be Sent to the Office
305 Mailing Documents to the Office
305.01 Mailing Addresses
305.02 Certificate of Mailing Procedure
305.02(a) When Certificate of Mailing Procedure May Not Be Used
305.02(b) Mailing Requirements
305.02(c) Location and Form of Certificate
305.02(d) Wording of Certificate of Mailing
305.02(e) Effect of Certificate of Mailing
305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197 But Not Received by Office
305.02(g) Correspondence Deposited as First Class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
305.02(h) Certificate of Mailing Requirements Strictly Enforced
305.03 “Express Mail”
305.04 Interruptions in U.S. Postal Service
306 Facsimile Transmission (Fax)
306.01 Documents That May Not Be Filed by Facsimile Transmission
306.02 Fax Machines Designated to Accept Relevant Trademark Documents
306.03 Effect of Filing by Fax
306.04 Procedure for Filing by Fax
306.05 Certificate of Transmission Procedure
306.05(a) Location and Form of Certificate of Transmission
306.05(b) Wording of Certificate of Transmission
306.05(c) Effect of Certificate of Transmission
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306.05(d) Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §2.197 But Not Received by Office
306.06 Requirements for Certificate of Transmission Strictly Enforced
307 Hand Delivery
308 Period Ending on Saturday, Sunday, or Federal Holiday
309 Unscheduled Closings of the United States Patent and Trademark Office
310 Computing Period for Response to Office Action or Notice
301 Electronic Filing
The Trademark Electronic Application System (“TEAS”) makes electronic filing available on the United States Patent and Trademark Office (“USPTO”) website, at http://www.uspto.gov. TEAS can be used to file all forms related to a domestic application or registration, or for filings under the Madrid Protocol. TEAS offers a group of specific forms that require direct data entry in designated fields, and/or the attachment of a .jpg or .pdf image file. For documents for which a specific TEAS form has not yet been developed, TEAS also offers a “global form” approach. On the global form, the filer can indicate the type of filing through the use of a pull-down menu from one of four categories: Intent-to-Use matters; Post-Registration matters; Petitions and similar matters; and a miscellaneous category. The filer then uploads a .jpg or .pdf image file that contains the complete text for the actual filing.
When a document is filed electronically, either as a specific TEAS form or through the global form approach, the USPTO generally receives it within seconds after filing. TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the document, and may be printed or copied-and- pasted into an electronic record for storage. From the “Success” page, the filer can click on a link to a PDF receipt that includes a summary of the filed information and general processing information. TEAS also separately sends an e-mail acknowledgement of receipt that includes the same information. Electronic filing creates an automatic entry of receipt of this filing into the USPTO’s automated system, which helps to avoid improper abandonment or cancellation.
Under 37 C.F.R. §2.195(a)(2), correspondence transmitted electronically using TEAS is considered filed on the date the USPTO receives the transmission, in Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
See TMEP §611.01(c) regarding signature of documents filed electronically.
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See TMEP §§807.05 et seq. regarding drawings in electronically transmitted applications, and TMEP §904.02(a) regarding specimens in electronically transmitted applications.
Requests for recordation of assignments and other documents affecting title to an application or registration can be filed through the Electronic Trademark Assignment System (“ETAS”) on the USPTO website at http://etas.uspto.gov.
The Electronic System for Trademark Trials and Appeals (“ESTTA”), at http://estta.uspto.gov/, can be used to file requests for extensions of time to oppose, notices of opposition, petitions to cancel, appeals, motions, briefs, notices of change of address, and other documents in Board proceedings.
If a document transmitted through TEAS, ETAS, or ESTTA is due on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the document will be considered timely if the USPTO receives the transmission on or before the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia. 37 C.F.R. §2.196; TMEP §308.
See TMEP §§819 et seq. regarding TEAS Plus.
302 Trademark Correspondence and Signature Requirements - In General
37 C.F.R. §2.193. Trademark correspondence and signature requirements. (a) Since each file must be complete in itself, a separate copy of every
document to be filed in a trademark application, trademark registration file, or proceeding before the Trademark Trial and Appeal Board must be furnished for each file to which the document pertains, even though the contents of the documents filed in two or more files may be identical. Parties should not file duplicate copies of correspondence, unless the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence.
(b) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate document to avoid confusion and delay in answering correspondence dealing with different subjects.
(c)(1) Each piece of correspondence that requires a person’s signature, must:
(i) Be an original, that is, have an original signature personally signed in permanent ink by that person; or
(ii) Be a copy, such as a photocopy or facsimile transmission (§2.195(c)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original; or
(iii) Where an electronically transmitted trademark filing is permitted or required, the person who signs the filing must either:
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(A) Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission; or
(B) Sign the verified statement using some other form of electronic signature specified by the Director.
(2) The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by a party, whether a practitioner or non- practitioner, constitutes a certification under § 11.18(b) of this chapter. Violations of § 11.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this chapter. Any practitioner violating § 11.18(b) may also be subject to disciplinary action. See §§ 11.18(d) and 10.23(c)(15).
(d) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
The USPTO recommends filing through TEAS whenever possible. See TMEP §301. Trademark documents may also be sent through the United States Postal Service (“USPS”), delivered by a courier service, or hand carried to the USPTO. Except for documents listed in TMEP §306.01, correspondence may be transmitted by facsimile (“fax”). (Note that an application for registration of a mark may not be filed by fax, but can be filed through TEAS. 37 C.F.R. §§2.195(d)(1) and 2.197(a)(2)). Certain documents can be sent through e-mail (see TMEP §304).
See TMEP §§304 et seq. regarding e-mail, TMEP §§305 et seq. regarding mailing documents to the USPTO, TMEP §§306 et seq. regarding fax transmission, and TMEP §307 regarding hand delivery.
302.01 Original Documents Generally Not Required
When a party files a copy of a document related to an application or registration, the USPTO will normally not require the party to submit the original document. Copies (e.g., photocopies or fax transmissions) are acceptable unless a document is required by statute to be certified (e.g., a certified copy of a final court order pursuant to 15 U.S.C. §1119). However, the party who filed the copy should retain the original in case questions arise as to the authenticity of the signature on the photocopy or faxed correspondence. See 37 C.F.R. §2.193(c)(1)(ii).
Original certificates of registration are not required for requests for amendment or correction of a registration under §7 of the Trademark Act, and owners are strongly discouraged from submitting them. See TMEP §§1609.01(b) and 1609.10.
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302.02 Multiple Copies of Documents Should Not Be Filed
Extract from 37 C.F.R. §2.193(a). * * * Parties should not file duplicate copies of correspondence, unless the
Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence.
As a general rule, only one copy of each document should be filed, unless more than one copy is specifically required by statute or rule, or a USPTO employee specifically requests more than one copy.
When filing a document electronically or by fax, a party should not send a follow-up copy unless the USPTO specifically requests a follow-up copy. 37 C.F.R. §2.193(a). Submission of duplicate documents can delay processing.
302.03 Identifying the Nature of Documents Filed
302.03(a) Correspondence Pertaining to Trademark Applications
Documents filed through TEAS or ESTTA are automatically transmitted to the appropriate location and entered into the record of the appropriate application or Trademark Trial and Appeal Board (“Board”) proceeding.
For paper documents, to ensure the timely entry into the official record, every piece of correspondence filed in the USPTO pertaining to a trademark application should be identified at the beginning by a heading or caption and by the serial number of the application to which the document pertains. 37 C.F.R. §2.194(b)(1). Cover letters and transmittal letters should identify the material that they accompany.
To expedite processing, all incoming documents pertaining to an application should include the following identifying data:
(1) Serial number;
(2) Filing date;
(3) Mark;
(4) A title indicating the nature of the document;
(5) Law office (identified in the most recent Office action);
(6) Name of examining attorney identified on the most recent Office action;
(7) Issuance date of the Office action to which the document is in response, if applicable;
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(8) The name, address (including ZIP code), and telephone number of the applicant or the applicant’s attorney; and
(9) The applicant’s or attorney’s e-mail address.
To facilitate the matching of responses to Office actions with the correct records, examining attorneys’ Office actions issued on paper include peel-off response labels that reference the application serial number, the mark and the assigned law office. If filing a response on paper, the applicant is encouraged to affix this label to the upper right-hand corner of the response.
302.03(b) Correspondence Pertaining to Trademark Registrations
Documents filed through TEAS or ESTTA are automatically transmitted to the appropriate location and entered into the record of the appropriate registration or Board proceeding.
For paper filings, correspondence relating to a registered trademark should identify the registration by specifying the mark, the registrant’s name, and the registration number. 37 C.F.R. §2.194(b)(2).
Paper correspondence filed under 15 U.S.C. §§1057, 1058, 1059, and 1141k should be directed to the Post Registration Section of the Office.
Paper petitions to cancel a registered mark should be directed to the Board.
Court orders relating to registered trademarks should be sent to the Office of the Solicitor. See TMEP §1610.
303 Receipt of Documents by the Office
37 C.F.R. §2.195. Receipt of trademark correspondence. (a) Date of receipt and Express Mail date of deposit. Trademark
correspondence received in the Office is given a filing date as of the date of receipt except as follows:
(1) The Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted electronically under paragraph (a)(2) of this section or transmitted by facsimile under paragraph (a)(3) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Trademark-related correspondence transmitted electronically will be given a filing date as of the date on which the Office receives the transmission.
(3) Correspondence transmitted by facsimile will be given a filing date as of the date on which the complete transmission is received in the Office unless that date is a Saturday, Sunday, or Federal holiday within the District
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of Columbia, in which case the filing date will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence filed in accordance with §2.198 will be given a filing date as of the date of deposit as “Express Mail” with the United States Postal Service.
(b) Correspondence delivered by hand. Correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(c) Facsimile transmission. Except in the cases enumerated in paragraph (d) of this section, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See §2.196. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office. The application serial number, registration number, or proceeding number should be entered as a part of the sender’s identification on a facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks; (2) Drawings submitted under §2.51, §2.52, §2.72, or §2.173; (3) Correspondence to be filed with the Trademark Trial and Appeal
Board, except notices of ex parte appeal; (4) Requests for cancellation or amendment of a registration under section
7(e) of the Trademark Act; and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act; and
(5) Madrid-related correspondence submitted under §7.11, §7.21, §7.14, §7.23, §7.24, or §7.31.
(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
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correspondence or a true copy of the correspondence originally attempted to be deposited as Express Mail on the requested filing date.
(3) Paragraphs (e)(1) and (e)(2) of this section do not apply to correspondence that is excluded from the Express Mail procedure pursuant to § 2.198(a)(1).
303.01 Date of Receipt
Correspondence transmitted through TEAS is considered to have been filed on the date the USPTO receives the transmission, in Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(2).
For paper correspondence, the date of actual receipt in the USPTO is assigned as the filing date of all correspondence. 37 C.F.R. §2.195(a). However, under 37 C.F.R. §§2.195(a)(1) and (3), no paper correspondence is “received” in the USPTO on Saturdays, Sundays, or Federal holidays within the District of Columbia. See TMEP §308 regarding response periods that end on a Saturday, Sunday, or Federal holiday within the District of Columbia.
The filing date of an e-mail communication (see TMEP §§304 et seq.) or fax transmission (see TMEP §§306 et seq.) is the date the complete transmission is received in the USPTO, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date is the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §§2.195(a)(1) and (3). However, if the communication is properly filed using the “certificate of transmission” procedure under 37 C.F.R. §2.197, the USPTO looks to the date on the certificate to determine whether the filing is timely. TMEP §§304.05 and 306.05(c).
Similarly, if a document is mailed to the USPTO using the “certificate of mailing” procedure under 37 C.F.R. §2.197 (see TMEP §§305.02 et seq.), the filing date is the date of receipt in the USPTO, but the USPTO looks to the date on the certificate to determine whether the filing is timely. TMEP §305.02(e).
See TMEP §1904.01(b) regarding the filing date of a request for an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a).
303.02 Acknowledgment of Receipt
303.02(a) TEAS “Success” Page
When a document is filed electronically, the USPTO generally receives it within seconds after filing. TEAS almost immediately displays a “Success”
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page that confirms receipt. This page may be printed or copied-and-pasted into an electronic record for storage, and used as evidence of filing should any question arise as to the filing date of the document, and.
303.02(b) “Mail Room Date” Label Showing Receipt
The USPTO places a bar code label indicating the date of receipt on every application, part of an application, amendment, letter, or other document submitted to the USPTO on paper. The label is referred to as the “Mail Room Date” label, and it establishes the date of receipt (i.e., the filing date) of any document. Before 1998, the USPTO used a stamp, known as the “Office Date Stamp,” to indicate the date of receipt of incoming documents.
303.02(c) Postcard Receipt
For documents filed on paper, a party may obtain a receipt by enclosing a self-addressed, stamped postcard identifying the document. The USPTO will place a label indicating the receipt date on the card and return it to the party who filed the document.
The identifying data on the postcard should be complete and specific. The nature of the document being filed (e.g., application, affidavit, amendment, appeal, petition); the name of the applicant or registrant; the mark; the application filing date or registration date; and the application serial number, registration number, or proceeding number should be included if available. Each specific element of the filing should be listed on the postcard (e.g., written application, drawing page, fee, specimen) so that the postcard can be used as evidence that the element was submitted if it is lost or disassociated from the record.
The party submitting the postcard is responsible for placing proper postage on the self-addressed postcard, and for ensuring that the proper mailing address appears on the postcard. See TMEP §303.02(c)(i) regarding the use of postage meters.
If a postcard with proper postage accompanies application documents that are mailed to the USPTO, a bar code label indicating the serial number assigned to the application will be applied to the postcard.
If the postcard accompanies application documents that are hand delivered, the bar code label will not be applied to the postcard because the application has not yet been serialized. Therefore, if application documents are hand carried, the applicant may submit a second postcard with proper postage so that, upon serialization, the USPTO may send the additional card, with a bar code label indicating the serial number, to the applicant.
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When documents for more than one application or registration are filed under a single cover, a return postcard should be attached to each document for which a receipt is desired.
303.02(c)(i) Postage on Return Receipt Postcards
The party submitting a return receipt postcard (see TMEP §303.02(c)) is responsible for placing proper postage on the self-addressed postcard. Proper postage means that it has a stamp(s) in the correct amount or a meter stamp postmark that complies with USPS requirements.
The USPS provides in its Domestic Mail Manual that the date in a meter postmark must be the actual date of deposit, with limited exceptions, and that meter postmarks used to prepay reply postage must not show the date. The USPS will not accept for mailing a post card that contains a postage meter date more than ten days old. Thus, a return receipt postcard containing a dated meter postmark may not be delivered by the USPS, because the postcard will be mailed by the Office substantially after the date on which the meter postmark is printed on the card.
Therefore, to ensure the receipt of a confirmation post card, the party filing the postcard should: (1) affix postage stamps to their postcards, or purchase already-stamped post cards from the USPS; or (2) if a postage meter is used, ensure that the meter postmark does not show the date, and follow the instructions in the postage meter license agreement regarding prepay reply postage. See notice at 1246 TMOG 42 (May 8, 2001).
304 Electronic Mail
304.01 Communications Acceptable Via Electronic Mail
Applicants and registrants may use e-mail to conduct informal communications regarding a particular application or registration.
Attachments. The USPTO will accept legible attachments to e-mail in .jpg or .pdf format. The USPTO will not accept or open attachments in any other format.
Informal Communications. The USPTO accepts informal communications from applicants via e-mail, as an alternative to telephone communications. For example, an applicant may submit via e-mail:
• Questions regarding an outstanding Office action that do not constitute a response;
• Authorization to issue an examiner’s amendment or priority action (see TMEP §§707.01 and 708.01);
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• Objection to examiner’s amendment (see TMEP §§707 and 707.02);
• Notification of termination of a cancellation proceeding that is the basis for suspension (see TMEP §716.02(a)).
These are just examples and not an exhaustive list of informal communications.
The examining attorney must ensure that all relevant informal e-mail communications from applicants are entered into the electronic record. See TMEP §§709.04 and 709.05 for further information.
304.02 Communications Not Acceptable Via Electronic Mail
Internet e-mail may not be used to file applications for registration of marks, responses to examining attorneys’ Office actions, amendments to allege use under 15 U.S.C. §1051(c), statements of use under 15 U.S.C. §1051(d), requests for extensions of time to file statements of use under 15 U.S.C. §1051(d)(2), affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k, affidavits of incontestability under 15 U.S.C. §1065, combined affidavits under 15 U.S.C. §§1058 and 1065, or combined filings under 15 U.S.C. §§1058 and 1059. These documents may be filed electronically using TEAS.
Effective September 20, 2004, the USPTO does not accept responses to examining attorneys’ Office actions via e-mail. Applicants who want to file a response electronically must use TEAS. See Trademark Operation Will No Longer Accept Responses to Office Actions that are Transmitted by E-Mail (OG Apr. 6, 2004), posted at http://www.uspto.gov/web/trademarks/notice_emailresponses.htm.
The Board does not accept e-mail communications.
304.03 Authorization of Electronic Mail Communications From the USPTO
The USPTO will send communications concerning an application or registration by e-mail only if e-mail communication is authorized by the applicant or registrant, or the applicant’s or registrant’s attorney.
The applicant or registrant may authorize the USPTO to communicate by e-mail by so indicating in the initial application or in any official written communication. The authorization must include the e-mail address to which e-mail is to be sent. The USPTO will not send e-mail to more than one e-mail address.
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It is the responsibility of the applicant, registrant or attorney to notify the USPTO of any changes of e-mail address. See TMEP §609.03.
The Office considers any authorization for e-mail communications to end upon the date of registration of a mark.
See TMEP §304.06 regarding outgoing e-mail.
304.04 Date of Receipt of Electronic Mail
The date of receipt of an incoming e-mail communication is the date the communication is received in the USPTO. 37 C.F.R. §2.195(a)(1).
See TMEP §304.05 regarding certificates of transmission by e-mail.
304.05 Certificate of Transmission by Electronic Mail
Under 37 C.F.R. §2.197, e-mail correspondence will be considered to be timely filed, even if received after the due date, if the correspondence is: (1) transmitted to the USPTO by e-mail on or before the due date; and (2) accompanied by a certificate attesting to the date of transmission. See TMEP §§306.05 et seq. regarding the certificate of transmission procedure under 37 C.F.R. §2.197.
If e-mail correspondence is timely filed with a certificate of transmission, but is not received by or is lost within the USPTO, the correspondence will be considered timely based on the date of transmission set forth on the certificate of transmission, if the party who transmitted the correspondence: (1) informs the USPTO in writing of the previous e-mail transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of its receipt; (2) provides a copy of the previously transmitted correspondence, including the certificate of transmission; and (3) submits a statement attesting to the personal knowledge of transmission of the correspondence. 37 C.F.R. §2.197(b). The statement attesting to the personal knowledge of transmission does not have to be verified. See TMEP §306.05(d) for additional information about correspondence that is transmitted with a certificate of transmission but not received by or lost within the USPTO.
The following wording is suggested for the certificate of transmission:
CERTIFICATE OF TRANSMISSION
I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________
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(Signature) ___________________________________________ (Date)
See TMEP §304.07 regarding signature of electronic mail.
Responses to examining attorneys’ Office actions cannot be filed by e-mail. See TMEP §304.02. Therefore, the certificate of transmission by e-mail procedure cannot be used for such responses.
304.06 Outgoing Electronic Mail
The USPTO will not send formal e-mail notices or correspondence to an applicant or registrant unless the applicant or registrant authorizes the USPTO to do so. TMEP §304.03.
When authorized to communicate by e-mail, the USPTO may send notices regarding Office actions and other official correspondence to the e-mail address designated by the applicant or registrant. The USPTO will not send correspondence to more than one e-mail address. See TMEP §304.08 regarding addresses for e-mail correspondence directed to the USPTO.
If outgoing electronic mail is returned as undeliverable, the USPTO will mail a paper copy to the correspondence address of record.
The USPTO is not required to send Office actions and other official correspondence by e-mail whenever the applicant or registrant authorizes e-mail correspondence. The USPTO may send correspondence by e-mail, regular mail, fax, or other appropriate means.
304.07 Signature of Electronic Mail
An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes. See 37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii)(A) and TMEP §611.01(c).
In addition, the USPTO will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.
A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .pdf format.
Under 37 C.F.R. §11.18(b), the use of an electronic signature under 37 C.F.R. §2.193(c)(1)(iii)(A) or an “/s/” notation, will be understood to constitute a certification that:
(1) The correspondence has been read by the applicant, registrant, or attorney;
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(2) The filing of the correspondence is authorized;
(3) To the best of the signatory’s knowledge, information, and belief, there is good ground to support the correspondence; and
(4) The correspondence is not presented for purposes of delay.
The signatory must personally sign the communication. See TMEP §§611.02, 611.01(b), and 611.01(c).
304.08 E-Mail Addresses for Correspondence With the Office
Where an applicant or registrant is permitted to send communications to the USPTO by e-mail (see TMEP §304.01), the applicant or registrant should send e-mail to the address set forth on the correspondence sent by the USPTO. Applicants and registrants should not send e-mail to more than one address in the USPTO, and should not send courtesy copies of an e-mail message (e.g., “Cc” or “Bcc”) to additional e-mail addresses within the USPTO.
Responses to examining attorneys’ Office actions cannot be filed by e-mail. See TMEP §304.02.
304.09 “Confirmation” Copies of E-Mail Communications Should Not Be Sent to the Office
Applicants, registrants, and attorneys should not send “confirmation” copies of e-mail communications to the USPTO by fax, regular mail, or any other means, because this can delay processing.
305 Mailing Documents to the Office
305.01 Mailing Addresses
Documents filed through TEAS are automatically sent to the appropriate location.
For trademark-related documents filed on paper, except for documents sent to the Assignment Services Branch for recordation, requests for copies of trademark documents, and certain documents filed under the Madrid Protocol (listed below), all trademark-related correspondence that is mailed to the USPTO should be addressed to:
Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313-1451
The names of individual employees should not be placed on the envelopes in which official communications are sent to the USPTO. Envelopes may be
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marked “Attention: Trademark Examining Operation.” Responses to Office actions should include the name of the examining attorney in the heading.
Documents Filed Under the Madrid Protocol
International applications under 37 C.F.R. §7.11, subsequent designations under 37 C.F.R. §7.21, responses to irregularity notices under 37 C.F.R. §7.14, requests to record changes in the International Register under 37 C.F.R. §§7.23 and 7.24, requests for transformation under 37 C.F.R. §7.31, requests to note replacement under 37 C.F.R. §7.28, and petitions to the Director to review the actions of the USPTO’s Madrid Processing Unit, when filed by mail, must be mailed to:
Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b).
Documents to be Recorded in Assignment Services Branch
To expedite processing, the USPTO recommends filing requests to record documents through the USPTO website, at http://etas.uspto.gov. Documents filed electronically are recorded much faster than their paper counterparts. Paper documents and cover sheets to be recorded in the Assignment Services Branch should be sent to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §§2.190(c) and 3.27.
Requests for Copies of Trademark Documents
Copies of trademark documents can be ordered through the USPTO website at www.uspto.gov. Requests for copies of documents can also be faxed or e-mailed to the USPTO, with an authorization to charge the fee to a credit card or USPTO deposit account. See TMEP §111 for additional information.
All other requests for certified or uncertified copies of trademark documents should be sent to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §§2.190(d).
305.02 Certificate of Mailing Procedure
37 C.F.R. §2.197. Certificate of mailing or transmission. (a) Except in the cases enumerated in paragraph (a)(2) of this section,
correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this
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section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if: (i) The correspondence is mailed or transmitted prior to expiration of the
set period of time by being: (A) Addressed as set out in §2.190 and deposited with the U.S. Postal
Service with sufficient postage as first class mail; or (B) Transmitted by facsimile to the Office in accordance with §2.195(c);
and (ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person signing the certificate should have a reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to:
(i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and
(ii) Madrid-related correspondence filed under §7.11, §7.21, §7.14, §7.23, §7.24 or §7.31.
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.
(c) The Office may require additional evidence to determine whether the correspondence was timely filed.
In 37 C.F.R. §2.197, there is a “certificate of mailing or transmission” procedure to avoid lateness due to mail delay. This procedure may be used for all trademark correspondence except:
• Applications for registration of marks;
• International applications under 37 C.F.R. §7.11;
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• Subsequent designations under 37 C.F.R. §7.21;
• Responses to notices of irregularity under 37 C.F.R. §7.14;
• Requests to record changes of ownership under 37 C.F.R. §7.23;
• Requests to record restrictions of the holder’s right of disposal, or the release of such restrictions, under 37 C.F.R. §7.24; and
• Requests for transformation under 37 C.F.R. §7.31.
37 C.F.R. §§2.197(a)(2) and 7.4(e).
Under the certificate of mailing or transmission procedure, correspondence is considered to be timely even if received after the due date, if the correspondence was: (1) deposited with the United States Postal Service as first class mail or transmitted to the USPTO by facsimile transmission before the expiration of the filing period; and (2) accompanied by a certificate attesting to the date of deposit or transmission.
Filers must retain a copy of the correspondence, including the signed and dated certificate. In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995).
See TMEP §§305.02(a) et seq. regarding the certificate of mailing procedure, and TMEP §§306.05 et seq. regarding the certificate of facsimile transmission procedure.
305.02(a) When Certificate of Mailing Procedure May Not Be Used
The certificate of mailing procedure may be used for all trademark filings except:
• An application to register a mark;
• International applications under 37 C.F.R. §7.11;
• Subsequent designations under 37 C.F.R. §7.21;
• Responses to notices of irregularity under 37 C.F.R. §7.14;
• Requests to record changes of ownership under 37 C.F.R. §7.23;
• Requests to record restrictions of the holder’s right of disposal, or the release of such restrictions, under 37 C.F.R. §7.24; and
• Requests for transformation under 37 C.F.R. §7.31.
37 C.F.R. §§2.197(a)(2) and 7.4(e).
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305.02(b) Mailing Requirements
The correspondence must be deposited in the United States mail, properly addressed (see TMEP §305.01 for mailing addresses), and the envelope must have sufficient postage as first class mail. Since first class mail services of the USPS are not available in foreign countries, the certificate of mailing procedure may not be used for sending mail to the USPTO from a foreign country.
305.02(c) Location and Form of Certificate
The certificate of mailing must: (1) state the date of deposit in the mail, which must be a date within the set filing period (this includes the last day of the period, or the succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia when the last day of the period falls on a Saturday, Sunday, or Federal holiday within the District of Columbia); and (2) be signed by a person who has a reasonable basis to expect the correspondence to be deposited in the mail on the date indicated. The signature of the certificate must be separate from any signature for the correspondence being deposited.
The best location for the certificate of mailing is at the beginning of the correspondence to which it pertains, typed in its entirety.
The certificate of mailing should be separated from contents of the correspondence that are on the same page. Several blank lines between the contents and the certificate will suffice.
If the certificate of mailing does not fit on the correspondence to which it pertains, the certificate may be placed on a separate sheet of paper that is attached securely to the correspondence. The separate sheet must exhibit or bear a complete identification of the nature of the document or fee as well as an identification of the application, registration, and/or proceeding to which the document pertains (including serial number or registration number). The separate sheet may be a cover letter or transmittal letter, with the certificate placed at the bottom of the letter and signed separately from the letter. If there is any doubt concerning the correspondence to which a certificate of mailing on a separate sheet relates, the USPTO will not accept the certificate.
There must be a certificate of mailing for each piece of correspondence. When correspondence for more than one application or registration is mailed in a single envelope, each item of correspondence must have its own certificate of mailing. Similarly, when more than one type of correspondence is submitted in connection with the same application, each item of correspondence must have its own certificate of mailing.
It is suggested that the certificate be signed by the applicant or the party involved in the proceeding, or by the attorney for such person. If someone
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else signs, it should be a responsible person in a position to know that the mail will be deposited on the date specified.
The USPTO accepts the date of deposit stated in the certificate of mailing on the basis of the statement of personal knowledge. The USPTO does not normally inspect the postmark on the envelope.
305.02(d) Wording of Certificate of Mailing
The following wording is suggested for the certificate of mailing.
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on the date shown below:
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________ (Signature)
___________________________________________ (Date)
305.02(e) Effect of Certificate of Mailing
The filing date assigned to paper correspondence is the date of actual receipt in the USPTO. 37 C.F.R. §2.195(a). The USPTO does not retain the envelopes in which material is received or record the date of the postmark.
The date of deposit indicated on the certificate of mailing is used only to determine whether the correspondence was deposited with the USPS within the filing period. Therefore, if the correspondence is actually received in the USPTO within the filing period, the certificate of mailing is ignored. If, however, the USPTO receives the correspondence after the filing period has expired, the USPTO looks to see whether a certificate of mailing was included. If no certificate is found, the correspondence is untimely.
When a document received after the expiration of the filing period includes a signed certificate of mailing, and the date of deposit on the certificate is within the filing period, the USPTO considers the correspondence to be timely filed.
If the filing period ends on a Saturday, Sunday, or Federal holiday within the District of Columbia, the correspondence is considered timely if the date of deposit on the certificate of mailing is the next succeeding day that is not a
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Saturday, Sunday or Federal holiday within the District of Columbia (see 37 C.F.R. §2.196 and TMEP §308).
Whenever it is necessary to change the effective filing date of an application (e.g., when an application filed under §1(b) of the Trademark Act is amended to request registration on the Supplemental Register after submission of an allegation of use), the date of actual receipt rather than the date on the certificate is the new effective filing date. See TMEP §§206 et seq. as to changes in the effective filing date of an application.
305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197 But Not Received by Office
If correspondence filed with a certificate of mailing is not received by (or is lost within) the USPTO, the USPTO will consider the correspondence to be timely based on the date of deposit stated in the certificate of mailing if the party who filed the correspondence:
(1) informs the USPTO in writing of the previous mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence;
(2) supplies an additional copy of the previously mailed correspondence, including a copy of the signed and dated certificate of mailing (see In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995)); and
(3) includes a statement attesting to the previous timely mailing on the basis of the signer’s personal knowledge. This statement does not have to be verified.
37 C.F.R. §2.197(b).
A party must notify the USPTO of the mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence. 37 C.F.R. §§2.146(d) and 2.197(b)(1). Where no written action is generated that can be used as a starting point for measuring timeliness, the two-month deadline runs from the date that the party who filed the correspondence became aware that there was a problem with the filing date of the correspondence. See TMEP §1705.04.
The required evidence should be sent to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g., the law office, ITU/Divisional Unit, or Post Registration Section.
If all three criteria listed above cannot be met, the only remedy available is a petition to revive under 37 C.F.R. §2.66 (if appropriate) or a petition under 37 C.F.R. §2.146, which must include a petition fee, and a statement that attests on a personal knowledge basis to the previous timely mailing, along with any
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additional evidence. See 37 C.F.R. §§2.66 and 2.146; TMEP §§1702 through 1708 regarding petitions under 37 C.F.R. §2.146 and TMEP §§1714 et seq. regarding petitions to revive.
The above procedure does not apply to the filing of an application for registration of a mark, or to the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) and TMEP §305.02(a).
The USPTO may require additional evidence relating to the mailing or transmission of correspondence. 37 C.F.R. §2.197(c). See, e.g., In re Klein, 6 USPQ2d 1547 (Comm’r Pats. 1987), aff’d sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff’d, 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989), cert. denied, 490 U.S. 1091 (1989).
305.02(g) Correspondence Deposited as First Class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
The USPS requires that all domestic first class mail that weighs 16 ounces or more be presented to a retail clerk at a USPS office. All such mail that is not presented to a retail clerk at a USPS office (e.g., is placed in a mailbox) will be returned by the USPS. The USPS has posted notice of this requirement on mailboxes. The “Express Mail” service of the USPS is not affected.
Correspondence must be deposited with the USPS as first class mail in compliance with any and all applicable requirements of the USPS to be considered “[d]eposited with the U.S. Postal Service,” within the meaning of 37 C.F.R. §2.197(a)(1)(i)(A). Therefore, correspondence returned by the USPS as not mailed in compliance with USPS requirements concerning mail weighing sixteen ounces or more is not entitled to any benefit under 37 C.F.R. §2.197. See notice at 1192 TMOG 43 (Nov. 12, 1996).
305.02(h) Certificate of Mailing Requirements Strictly Enforced
The requirements of 37 C.F.R. §2.197 are strictly enforced, and the USPTO denies petitions to consider a document timely filed as of the date on the certificate if a party fails to comply with these requirements.
A party’s inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of a rule under 37 C.F.R. §2.146(a)(5) or §2.148. See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995), aff’d mem., 95 F.3d 1166 (Fed. Cir. 1996) (Commissioner did not abuse his discretion in refusing to waive requirements of 37 C.F.R. §1.10(c) and grant filing date to patent application, where applicant failed to produce “Express Mail” customer receipt or any other evidence that application was actually deposited with USPS as “Express Mail”); In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995) (failure to retain executed hard copy of certificate of mailing under
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37 C.F.R. §1.8 not extraordinary situation that would justify waiver of rule); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pats. 1985) (counsel’s unawareness of 37 C.F.R. §1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pats. 1978) (lateness due to mail delay not deemed to be extraordinary situation, because certificate of mailing procedure under 37 C.F.R. §1.8 was available to petitioner).
305.03 “Express Mail”
37 C.F.R. §2.198. Filing of correspondence by “Express Mail.” (a)(1) Except for documents listed in paragraphs (a)(1)(i) through (vii) of
this section, any correspondence received by the Office that was delivered by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) will be considered filed with the Office on the date of deposit with the USPS. The Express Mail procedure does not apply to:
(i) Applications for registration of marks; (i) Applications for registration of marks; (ii) Amendments to allege use under section 1(c) of the Act; (iii) Statements of use under section 1(d) of the Act; (iv) Requests for extension of time to file a statement of use under section
1(d) of the Act; (v) Affidavits of continued use under section 8 of the Act; (vi) Renewal requests under section 9 of the Act; and (vii) Requests to change or correct addresses. (2) The date of deposit with USPS is shown by the “date in” on the
“Express Mail” label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date.
(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the “Express Mail” mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
(c) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date-in” on the “Express Mail” mailing label or other official USPS notation, provided that:
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(1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing; and
(3) The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” and of any other official notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) prior to the original mailing; and
(3) The petition includes a showing that establishes, to the satisfaction of the Director, that the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup on the requested filing date. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or evidence that came into being within one business day after the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS.
(e) If correspondence is properly addressed to the Office pursuant to §2.190 and deposited with sufficient postage in the “Express Mail Post Office to Addressee” service of the USPS, but not received by the Office, the party who mailed the correspondence may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed within two months after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) prior to the original mailing;
(3) The petition includes a copy of the originally deposited paper(s) or fee(s) showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the correspondence was deposited in the “Express Mail Post
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Office to Addressee” service prior to the last scheduled pickup on the requested filing date; and
(4) The petition includes a statement that establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the “Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and official notation entered by the USPS.
(f) The Office may require additional evidence to determine whether the correspondence was deposited as “Express Mail” with the USPS on the date in question.
Documents Excluded From 37 C.F.R. §2.198
Trademark Rule 2.198, 37 C.F.R. §2.198, provides a procedure for obtaining a filing date as of the date that correspondence is deposited as “Express Mail” with the USPS. However, this procedure does not apply to the following trademark documents:
• Applications for registration of marks;
• Amendments to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c);
• Statements of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
• Requests for extension of time to file a statement of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
• Affidavits of continued use under §8 of the Trademark Act, 15 U.S.C. §1058;
• Renewal applications under §9 of the Trademark Act, 15 U.S.C. §1059;
• Requests to change or correct addresses;
• Combined filings under §§8 and 9 of the Trademark Act, 15 U.S.C. §§1058 and 1059;
• Combined affidavits or declarations under §§8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and 1065;
• Responses to notices of irregularity under 37 C.F.R. §7.14;
• Requests for transformation under 37 C.F.R. §7.31; and
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• Requests to note replacement under §7.28.
37 C.F.R. §§2.198(a)(1) and 7.4(b)(2). See notice at 67 Fed. Reg. 36099 (May 23, 2002), available at http://www.uspto.gov/web/offices/com/sol/notices/expmailrule2.pdf.
If the documents listed above are filed by “Express Mail,” they will receive a filing date as of the date of receipt in the USPTO and not the date of deposit with USPS. 37 C.F.R. §2.195(a). See TMEP §303.01.
Lost Documents
If one of the documents listed above is sent by “Express Mail” but is lost within the USPTO, and the applicant or registrant presents proof of actual receipt in the form of evidence that a USPTO employee signed for or acknowledged the “Express Mail” package (e.g., an “Express Mail” mailing label that bears an Office date stamp or label or the signature of a USPTO employee, or evidence from the USPS website showing that the document was actually received in the USPTO), the USPTO will grant the document a filing date as of the date of actual receipt in the USPTO. The applicant or registrant must submit a request to change the filing date that includes a true copy of the document(s), and an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the “Express Mail” package. See TMEP §1711 regarding restoration of application filing dates, TMEP §1712.01 regarding reinstatement of abandoned applications, and TMEP §§1712.02 et seq. regarding reinstatement of cancelled or expired registrations.
If a document is sent by “Express Mail” but is not received by or is lost within the USPTO, and the applicant does not have proof of actual receipt in the USPTO, the USPTO will not grant a filing date to the document.
Certificate of Mailing Under 37 C.F.R. §2.197 for Documents Sent by Express Mail
For documents other than applications for registration of marks and the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) (see TMEP §305.02(a)), the certificate of mailing procedure of 37 C.F.R. §2.197 may be used for documents sent by “Express Mail” as well as documents sent by first class mail. Under the certificate of mailing procedure, correspondence is considered to be timely filed even if received after the due date, if the correspondence is deposited with the USPS with sufficient postage as first class mail before the expiration of the filing period and accompanied by a certificate attesting to the date of deposit. Correspondence sent by “Express Mail” is deemed to meet the requirements of 37 C.F.R. §2.197(a)(1)(i)(A) for postage as first class mail, because the postage for “Express Mail” exceeds the postage required for first class mail. However, to use the certificate of mailing procedure for documents mailed by “Express Mail,” the filer must place a certificate attesting to the date of deposit and meeting the
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requirements of 37 CFR §2.197(a)(1)(ii) on the document prior to mailing. See TMEP §§305.02 et seq. for further information about the certificate of mailing procedure.
The following wording is suggested for a certificate of mailing when correspondence is sent by “Express Mail:”
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service as “Express Mail” in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on the date shown below:
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________ (Signature)
___________________________________________ (Date)
Documents Not Excluded From 37 C.F.R. §2.198
The procedures for filing documents by “Express Mail” under 37 C.F.R. §2.198 may be used for documents not expressly excluded by 37 C.F.R. §2.198(a), e.g., documents filed with the Board or the Assignment Services Branch of the Office. These documents are entitled to a filing date as of the date of deposit with USPS if the filer meets the requirements of 37 C.F.R. §2.198. The rule requires: (1) the document must be sent through the “Express Mail Post Office to Addressee” service of the USPS; (2) it must be deposited prior to the last scheduled pickup on the relevant date; (3) it must be properly addressed in accordance with the requirements of 37 C.F.R. §2.190; and (4) the number of the “Express Mail” mailing label must be placed on the document prior to mailing.
If a document not excluded by 37 C.F.R. §2.198(a) is filed in accordance with the requirements of 37 C.F.R. §2.198, but the document is not given a filing date as of the date of deposit as “Express Mail,” the filer may request the USPTO to change the filing date of the document, pursuant to 37 C.F.R. §2.198(c), (d) or (e). Rule 2.198(c) applies when there is a discrepancy between the filing date assigned by the USPTO and the “date-in” entered by the USPS on the “Express Mail” mailing label; Rule 2.198(d) applies when the “date-in” is incorrectly entered or omitted by the USPS; and Rule 2.198(e) applies when correspondence deposited with the USPS as “Express Mail” is not received by (or is lost within) the USPTO. A petition to change the filing date of a document pursuant to 37 C.F.R. §2.198 must:
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(1) be filed within two months of the issuance date of the action from which relief is requested, or, if there is no “issuance of an action,” within two months of the date that the party who filed the correspondence became aware that there was a problem with the USPTO’s receipt of the correspondence (37 C.F.R. §§2.146(d), 2.198(c)(1), 2.198(d)(1), and 2.198(e)(1); TMEP §1705.04);
(2) include a showing that the number of the “Express Mail” mailing label was placed on the correspondence prior to the original mailing (37 C.F.R. §§2.198(c)(2), 2.198(d)(2), and 2.198(e)(2));
(3) include a true copy of the “Express Mail” mailing label with the “date- in” clearly marked (37 C.F.R. §§2.198(c)(3), 2.198(d)(3), and 2.198(e)(3));
(4) if the filer contends that the “date-in” was entered incorrectly by the USPS, include: (a) a showing that the correspondence was deposited as “Express Mail” prior to the last scheduled pickup on the requested filing date; and (b) evidence from the USPS or evidence that came into being after deposit and within one business day of the deposit of the correspondence as “Express Mail” (37 C.F.R. §2.198(d)(3)); and
(5) if the correspondence is lost within or never received by the USPTO, include: (a) a true copy of the originally deposited correspondence showing the number of the “Express Mail” mailing label; and (b) a statement, signed by the person who deposited the documents as “Express Mail” with the USPS, setting forth the date and time of deposit, and stating that the copies of the correspondence and “Express Mail” mailing label accompanying the petition are true copies of those originally sent (37 C.F.R. §§2.198(e)(3) and 2.198(e)(4)).
When correspondence not excluded by 37 C.F.R. §2.198(a) is placed in an “Express Mail” drop box after the box has been cleared for the last time on a given day, it is considered to have been deposited as of the date of receipt indicated on the “Express Mail” mailing label by the USPS employee. See notice at 61 Fed. Reg. 56439 (Nov. 1, 1996) and 1192 TMOG 95 (Nov. 26, 1996).
305.04 Interruptions in U.S. Postal Service
37 C.F.R. §2.195(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
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due to the interruption or emergency may petition the Director to consider such correspondence as filed on a particular date in the Office.
(2) The petition must: (i) Be filed promptly after the ending of the designated interruption or
emergency; (ii) Include the original correspondence or a copy of the original
correspondence; and (iii) Include a statement that the correspondence would have been
deposited with the United States Postal Service on the requested filing date but for the designated interruption or emergency in ‘‘Express Mail’’ service; and that the correspondence attached to the petition is the original correspondence or a true copy of the correspondence originally attempted to be deposited as Express Mail on the requested filing date.
(3) Paragraphs (e)(1) and (e)(2) of this section do not apply to correspondence that is excluded from the Express Mail procedure pursuant to §2.198(a)(1).
Under 35 U.S.C. §21(a) and 37 C.F.R. §2.195(e), if there is an interruption or emergency in the United States Postal Service, the Director may consider correspondence to have been filed in the Office on a particular date if the correspondence or a copy thereof is: (1) filed promptly after the ending of the designated interruption or emergency; and (2) accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service. This procedure does not apply to correspondence that is excluded from the “Express Mail” procedure pursuant to §2.198(a)(1). 37 C.F.R. §2.195(e)(3). See TMEP §305.03 regarding “Express Mail.”
306 Facsimile Transmission (Fax)
Extract from 37 C.F.R. §2.195. Receipt of trademark correspondence. (a) * * * Trademark correspondence received in the Office is given a filing date as
of the date of receipt except as follows: * * * (3) Correspondence transmitted by facsimile will be given a filing date as
of the date on which the complete transmission is received in the Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
* * * * * (c) Facsimile transmission. Except in the cases enumerated in paragraph
(d) of this section, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal
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holiday within the District of Columbia. See §2.196. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office. The application serial number, registration number, or proceeding number should be entered as a part of the sender’s identification on a facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks; (2) Drawings submitted under §2.51, §2.52, §2.72, or §2.173; (3) Correspondence to be filed with the Trademark Trial and Appeal
Board, except notices of ex parte appeal; (4) Requests for cancellation or amendment of a registration under section
7(e) of the Trademark Act; and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act; and
(5) Madrid-related correspondence submitted under §7.11, §7.21, §7.14, §7.23, §7.24, or §7.31.
* * * * *
The USPTO permits the filing of certain correspondence by fax. See TMEP §306.03 regarding the date of receipt of correspondence that is filed by fax.
A certificate of transmission may be used to establish timely filing in the event that the correspondence is transmitted within the response period but is received in the Office after expiration of the response period, or is not received by or lost within the Office. See TMEP §§306.05 et seq. regarding the requirements for the certificate of transmission procedure.
306.01 Documents That May Not Be Filed by Facsimile Transmission
All trademark documents except the documents listed below may be filed by fax, and are eligible for the benefits of the certificate of transmission provided for in 37 C.F.R. §2.195.
The following types of trademark correspondence may not be filed by facsimile transmission and, if submitted by fax, will not be given a filing date:
(1) Trademark applications;
(2) Drawings submitted under 37 C.F.R. §§2.51, 2.52, 2.72, or 2.173;
(3) Requests for cancellation or amendment of a registration under 15 U.S.C. §1057(e);
(4) Certificates of registration;
(5) Correspondence to be filed with the Board, except a notice of ex parte appeal;
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(6) Madrid-related correspondence submitted under 37 C.F.R. §7.11, §7.14, §7.21,§7.23, §7.24, or §7.31; and
(7) Documents that are required by statute to be certified (e.g., certified copies of court orders).
37 C.F.R. §§2.195(d) and 7.4(d). Applications for registration of marks may be filed through TEAS.
When any trademark document specifically excluded from the fax transmission procedure is received in the USPTO by fax, the document will not be accepted. Vibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (faxed notice of opposition unacceptable and can be given no effect). As a courtesy, the USPTO will attempt to notify senders whenever correspondence that falls within one of these prohibitions is sent to the USPTO by fax.
306.02 Fax Machines Designated to Accept Relevant Trademark Documents
The fax machines that are designated to accept trademark documents are attended between the business hours of 8:30 a.m. and 5:00 p.m., Eastern Time, Monday through Friday, excluding Federal holidays within the District of Columbia.
Submissions by fax should be transmitted to the location for which they are intended. A USPTO Contacts List, which includes fax numbers, is available on the USPTO website at http://www.uspto.gov, and appears periodically in the Official Gazette. In addition, questions about fax numbers may be directed to the Trademark Assistance Center at (571) 272-9250 or (800) 786- 9199.
The USPTO does not formally acknowledge receipt of documents transmitted by fax, but USPTO fax machines will usually confirm to the sending unit that the transmission is complete.
Each fax machine location in the USPTO maintains a log comprising a collection of daily activity sheets recording all fax transmissions received. These logs can be used as evidence of receipt in the USPTO, and may be used to reinstate applications and registrations. The individual activity report that pertains to a particular transmission received in the USPTO is kept with the correspondence.
306.03 Effect of Filing by Fax
The filing date of correspondence received in the USPTO by fax, regardless of whether it contains a certificate of transmission, is the date that the complete transmission is received by a USPTO fax machine, unless the
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transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia. Correspondence for which transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia is given a filing date as of the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(3).
For example, a 20-minute fax transmission to the USPTO from California starting on a Friday at 8:45 p.m. Pacific Time would be completed at 9:05 p.m. Pacific Time. The complete transmission would be received in the USPTO at approximately 12:05 a.m. Eastern Time on Saturday. The filing date accorded to the correspondence is the date of the following business day, which in this case would be Monday (assuming that Monday is not a Federal holiday within the District of Columbia).
The phrase “complete transmission” means that the transmission was received in its entirety. For example, if page one of a ten-page fax transmission is received in the USPTO at 11:55 p.m. on a Tuesday and page ten of that transmission is received at 12:05 a.m. Wednesday, the filing date accorded to that correspondence will be the date of that Wednesday (assuming that Wednesday is not a Federal holiday within the District of Columbia).
If the sender wants the correspondence to be considered timely filed as of the date that the transmission began, the correspondence must include a certificate of transmission under 37 C.F.R. §2.197(a). See TMEP §306.05(c) regarding the effect of a certificate of transmission.
306.04 Procedure for Filing by Fax
Each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the Office. The application serial number or registration number should be entered as a part of the sender’s identification on a facsimile cover sheet. 37 C.F.R. §2.195(c). Applicants should wait until an application serial number is assigned before filing any document related to a new application by fax. See 37 C.F.R. §2.194(a).
It is recommended that each transmission include a cover sheet that, in addition to stating the application serial number or registration number, specifies the mark, the number of pages being transmitted, and the name, address, fax number, and telephone number of the transmitting party.
Each facsimile-transmitted document must be legible. The preferred size of the document being submitted is 8½ inches by 11 inches, letter size or A4 paper. Because equipment used by the Office cannot print a document larger than 8½ inches by 11 inches, correspondence should not be transmitted on larger paper.
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When correspondence is filed by facsimile transmission, it is recommended that the sending facsimile machine generate a report confirming transmission for each transmission session. This report should be retained by the applicant, along with the original correspondence, as evidence of content and date of transmission.
Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax. 37 C.F.R. §2.193(a). This can delay processing.
306.05 Certificate of Transmission Procedure
37 C.F.R. §2.197. Certificate of mailing or transmission. (a) Except in the cases enumerated in paragraph (a)(2) of this section,
correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if: (i) The correspondence is mailed or transmitted prior to expiration of the
set period of time by being: (A) Addressed as set out in §2.190 and deposited with the U.S. Postal
Service with sufficient postage as first class mail; or (B) Transmitted by facsimile to the Office in accordance with §2.195(c);
and (ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person signing the certificate should have a reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to:
(i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and
(ii) Madrid-related correspondence filed under §7.11, §7.21, §7.14, §7.23, §7.24 or §7.31.
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
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(3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.
(c) The Office may require additional evidence to determine whether the correspondence was timely filed.
Trademark Rule 2.197, 37 C.F.R. §2.197, provides a certificate of transmission procedure to avoid lateness when correspondence is faxed within the response period but is received in the USPTO after expiration of the response period, or not received, or lost within the USPTO. The certificate of transmission procedure can be used for any correspondence that can be filed by fax. See TMEP §306.01 regarding documents that can be filed by fax.
Under the certificate of transmission procedure, certain correspondence will be considered to be timely filed even if received after the end of the filing period, if the correspondence is transmitted by fax to the USPTO before the expiration of the filing period and accompanied by a certificate attesting to the date of transmission. The person signing the certificate certifies the expectation that the transmission would be initiated before midnight, local time, on the date specified.
Filers must retain a copy of the correspondence, including the signed and dated certificate. See In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995).
See TMEP §306.05(d) regarding the procedure for establishing the timely filing of correspondence that was faxed to the USPTO with a certificate of transmission under 37 C.F.R. §2.197, but was lost or misplaced.
See TMEP §304.05 regarding certificates of transmission by e-mail.
306.05(a) Location and Form of Certificate of Transmission
The certificate of transmission should be clearly labeled as such and should include a reference to the registration number or application serial number, the date of transmission, and the signature of the person attesting that the document is being transmitted on a certain date.
When possible, the certificate should appear on the document being transmitted, rather than on a separate sheet of paper. See notices at 58 Fed. Reg. 54494 (Oct. 22, 1993) and 1157 TMOG 87, 92-93 (Dec. 28, 1993).
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If the certificate of facsimile transmission is presented on a separate paper, it must identify the document, and the application or registration to which it relates.
306.05(b) Wording of Certificate of Transmission
The following wording is suggested for the certificate of transmission:
CERTIFICATE OF TRANSMISSION
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date shown below.
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________ (Signature)
___________________________________________ (Date)
306.05(c) Effect of Certificate of Transmission
As noted in TMEP §306.03, the filing date given to correspondence received by fax transmission is the date that the complete transmission is received by a USPTO fax machine, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date is the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
The date of transmission on the certificate is used only to determine whether the correspondence was transmitted to the USPTO within the filing period. Therefore, if the complete transmission is actually received in the USPTO within the filing period, the certificate of transmission is ignored. If the transmission is completed after the expiration of the filing period, the USPTO looks at the correspondence to see if a certificate of transmission was included. If no certificate is found, the correspondence is untimely.
If the correspondence includes a signed certificate of transmission, and the date of transmission on the certificate is within the filing period, the correspondence is considered to be timely.
For example, if a West Coast applicant transmitted correspondence by fax on the last day of the response period, beginning before 9:00 p.m. Pacific Time (midnight Eastern Time) but completed after 9:00 p.m. Pacific Time, the USPTO would give the correspondence a filing date as of the next business day, because that is the date on which the USPTO received the complete transmission. However, if the practitioner affixed a certificate of transmission
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to the faxed correspondence indicating that the correspondence was being transmitted on the last day of the response period, then the correspondence would be considered timely filed, even though the transmission completed after 9:00 p.m. Pacific Time (midnight Eastern Time) was received in the USPTO the day after the deadline for response.
If the filing period ends on a Saturday, Sunday or Federal holiday within the District of Columbia, the correspondence will be considered to be timely if the date of transmission on the certificate is the next succeeding day that is not a Saturday, Sunday or Federal holiday within the District of Columbia (see 37 C.F.R. §2.196 and TMEP §308).
Whenever it is necessary to change the effective filing date of an application (e.g., when an application filed under §1(b) of the Trademark Act is amended to request registration on the Supplemental rather than the Principal Register after submission of an allegation of use) and the correspondence included a certificate of transmission under 37 C.F.R. §2.197, the date of actual receipt (as stamped or labeled on the relevant correspondence) rather than the date on the certificate is used as the new effective filing date. See TMEP §§206 et seq. as to changes in the effective filing date of an application.
306.05(d) Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §2.197 But Not Received by Office
Rule 2.197(b) sets forth procedures for requesting that correspondence be considered timely when the correspondence is filed with a certificate of transmission, but is not received by or is lost within the USPTO. Such correspondence will be considered timely based on the date of transmission set forth on the certificate of transmission, if the party who transmitted the correspondence:
(1) informs the USPTO in writing of the previous fax transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence;
(2) supplies an additional copy of the previously transmitted correspondence, including a copy of the signed and dated certificate of transmission (see In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995)); and
(3) includes a statement attesting to the previous timely transmission on the basis of the signer’s personal knowledge. A copy of the sending unit’s report confirming transmission may be used to support this statement. The statement does not have to be verified.
The party who transmitted the correspondence must notify the USPTO of the transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence. 37 C.F.R.
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§§2.146(d) and 2.197(b)(1). Where no written action is generated that can be used as a starting point for measuring timeliness, the two-month deadline runs from the date that the party who filed the correspondence became aware that there was a problem with the filing date. See TMEP §1705.04.
The required evidence should be directed to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g., the law office, ITU/Divisional Unit, or Post Registration Section.
If all the above criteria cannot be met, the only remedy available is a petition to revive under 37 C.F.R. §2.66 (if appropriate), or a petition under 37 C.F.R. §2.146, which must include a petition fee, and a statement that attests on a personal knowledge basis to the previous timely transmission, along with any additional evidence. See 37 C.F.R. §§2.66 and 2.146; TMEP §§1702 through 1708 regarding petitions under 37 C.F.R. §2.146, and TMEP §§1714 et seq. regarding petitions to revive.
The above procedure does not apply to submissions that are excluded from the certificate of mailing or transmission procedures under 37 C.F.R. §2.195(d) or §2.197(a)(2). See TMEP §306.01.
The USPTO may require evidence relating to the transmission of correspondence under 37 C.F.R. §2.197(a), to establish an actual date of transmission. 37 C.F.R. §2.197(c). See, e.g., In re Klein, 6 USPQ2d 1547 (Comm’r Pats. 1987), aff’d sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff’d, 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989), cert. denied, 490 U.S. 1091 (1989).
306.06 Requirements for Certificate of Transmission Strictly Enforced
The requirements of 37 C.F.R. §2.197 are strictly enforced, and petitions to consider a document timely filed as of the date on the certificate are denied when a party fails to comply with these requirements. A party’s inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of the rule under 37 C.F.R. §2.146(a)(5) or §2.148. See TMEP §305.02(h) and cases cited therein.
307 Hand Delivery
Trademark Operation, Madrid Processing Unit, and Trademark Trial and Appeal Board. Correspondence may be hand-delivered between 8:30 a.m. and 5:00 p.m., Eastern Time, Monday through Friday, except Federal holidays within the District of Columbia, to the following location:
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Trademark Assistance Center James Madison Building - East Wing Concourse Level 600 Dulany Street Alexandria, VA
Trademark examining attorneys will not accept documents for filing (either with or without fees).
If the filer wants a receipt, he or she should provide a card, which will be date-labeled and handed back to the person delivering the document. When a card is used for receipt, it should include the applicant’s name, the application serial number or registration number, the mark, and the title or a description of the document being filed. The card should also specify the items submitted (e.g., drawing, specimen, fee). See TMEP §303.02(c).
Customer Service Window. The USPTO strongly encourages parties who are hand-delivering trademark correspondence to bring it directly to the Trademark Assistance Center at the address listed above. Use of any patent box for trademark-related correspondence is strongly discouraged, and may result in delayed processing. However, the USPTO will accept trademark correspondence delivered to the Customer Service Window located in the Randolph Building, 401 Dulany Street, Alexandria, Virginia. The USPTO will stamp postcard-type receipts to acknowledge the receipt of correspondence filed at the Customer Service Window. The Customer Service Window is open from 8:30 a.m. until 12:00 midnight, Monday through Friday, except Federal holidays within the District of Columbia.
See TMEP §309 regarding unscheduled closings of the USPTO.
308 Period Ending on Saturday, Sunday, or Federal Holiday
35 U.S.C. §21(b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day. 37 C.F.R. §2.196. Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by regulation under this part for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day that is not a Saturday, Sunday, or a Federal holiday.
(See also 37 C.F.R. §2.145 for time for appeal to court and civil action.)
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Any action or fee that is due on a date falling on a Saturday, Sunday, or a Federal holiday within the District of Columbia is considered timely if the action is received, or the fee paid, on the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia. This applies to all documents, whether filed through TEAS or on paper.
The following days are Federal holidays in the District of Columbia, under 5 U.S.C. §6103:
• New Year’s Day, January 1.
• Birthday of Martin Luther King, Jr., the third Monday in January.
• Washington’s Birthday, the third Monday in February.
• Memorial Day, the last Monday in May.
• Independence Day, July 4.
• Labor Day, the first Monday in September.
• Columbus Day, the second Monday in October.
• Veterans Day, November 11.
• Thanksgiving Day, the fourth Thursday in November.
• Christmas Day, December 25.
• Inauguration Day (January 20 of each fourth year after 1965), except when it falls on a Saturday (see Note below).
As to the observance of holidays that fall on Saturday, 5 U.S.C. §6103 also provides:
(b)(1) Instead of a holiday that occurs on a Saturday, the Friday immediately before is a legal public holiday....
NOTE: If Inauguration Day (January 20 of each fourth year after 1965) falls on a Saturday, the preceding Friday is not a legal public holiday for purposes of 35 U.S.C. §21. When Inauguration Day falls on Sunday, the next succeeding day selected for the public observance of the inauguration of the President is a legal public holiday. 5 U.S.C. §6103(c).
309 Unscheduled Closings of the United States Patent and Trademark Office
When the USPTO is officially closed by executive order of the President or by the Office of Personnel Management for an entire day because of some unscheduled event, such as adverse weather conditions, the USPTO will
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consider that day to be a “Federal holiday within the District of Columbia” under 35 U.S.C. §21. 37 C.F.R. §2.2(d). Any action or fee due that day is considered timely if the action is taken, or the fee paid, on the next succeeding business day that the USPTO is open.
However, when the USPTO is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., documents are due on that day even though the USPTO may be officially closed for some period of time during the business day because of an unscheduled event. TEAS, or the procedures of 37 C.F.R. §2.197, may be used, as appropriate, for the filing of documents during unscheduled closings of the USPTO.
310 Computing Period for Response to Office Action or Notice
The deadline for responding to an Office action, notice of allowance, or other notice issued by the USPTO is computed from the date of issuance of the action or notice to the date the response is received in the USPTO. See TMEP §303.01 regarding the date of receipt in the USPTO.
For example, a response to an examining attorney’s Office action dated August 31 is due on the following February 28 (or 29 if it is a leap year); a response to an Office action dated February 28 is due on August 28 and not on the last day of August. Ex parte Messick, 7 USPQ 57 (Comm’r Pats. 1930).
Under 37 C.F.R. §2.197, correspondence is considered to be timely filed even if it is received after the expiration of the filing period, if the correspondence was deposited with the USPS as first class mail or transmitted to the USPTO by facsimile transmission before the expiration of the filing period and accompanied by a certificate attesting to the date of mailing or transmission. See TMEP §§305.02 et seq. regarding the certificate of mailing procedure, and TMEP §§306.05 et seq. regarding the certificate of transmission procedure.
If a document or fee is due on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the document or fee is considered timely if it is received on or before the following day that is not a Saturday, Sunday or a Federal holiday within the District of Columbia. 35 U.S.C. §21(b); 37 C.F.R. §2.196; TMEP §308.
See TMEP §309 regarding unscheduled closings of the USPTO.
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Chapter 400 Processing Documents and Fees
401 Processing New Applications
401.01 Filing Receipts
401.02 Serial Numbers and Series Codes
401.03 Data Entry
401.04 Creation of Application Records
402 Electronic Application and Registration Records
402.01 USPTO No Longer Creates Paper Copies of Certain Trademark-Related Documents
403 Correspondence Returned as Undeliverable
404 Documents Not Returnable
405 Fees
405.01 Credit Cards
405.02 Checks
405.02(a) Personal Checks
405.03 Deposit Accounts
405.04 Refunds
405.05 Electronic Funds Transfer
405.06 Payments Refused or Charged Back By Financial Institutions
401 Processing New Applications
Upon receipt in the USPTO, trademark applications filed under §1 or §44 of the Trademark Act are given a date of receipt and reviewed for compliance with the minimum requirements for receipt of a filing date (see TMEP §202). See TMEP §§201 and 1904.01(b) regarding the filing date of applications under §66(a) of the Trademark Act.
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If an application meets the minimum filing date requirements of 37 C.F.R. §2.21, it is given a filing date and serial number.
See TMEP §§204 et seq. regarding the processing of applications that are not entitled to a filing date.
401.01 Filing Receipts
TEAS Applications
When an application is filed electronically, the USPTO generally receives it within seconds after filing, and TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the application filing date, and may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information and general processing information. No paper filing receipt is sent by the United States Patent and Trademark Office (“USPTO”) to the applicant.
The applicant should immediately review the summary of the filed information for accuracy. If the information in the summary is inconsistent with the information transmitted by applicant, the applicant or attorney should notify the USPTO by sending an e-mail message to TEAS@uspto.gov.
Section 66(a)Applications
For §66(a) applications (i.e., requests for extensions of protection of international registrations to the United States), the USPTO sends an acknowledgment of receipt of the application to the International Bureau of the World Intellectual Property Organization (“IB”), and the IB sends the acknowledgment to the applicant. The USPTO also separately sends a filing receipt to the correspondence address of record, for informational purposes only. See TMEP §§1904.02(i) regarding the correspondence address in §66(a) applications.
Paper Applications Under §1 or §44
For paper applications under §1 or §44 of the Trademark Act, after an application has been given a filing date, the Trademark Reporting and Monitoring (“TRAM”) System generates a filing receipt, which is sent to the applicant. The filing receipt identifies the following: (1) the mark; (2) the application serial number, filing date, and register; (3) the type of mark (e.g., trademark or service mark); (4) the statutory basis or bases for filing, if provided at the time of filing; (5) the identification of goods and/or services, and international classes; (6) information about the applicant (and the applicant’s attorney, if provided); and (7) the address to be used for
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correspondence. See TMEP §201 for further information about what constitutes the filing date.
The applicant or attorney should review the information on the filing receipt for accuracy and notify the USPTO in writing of any discrepancy. A request for correction of a filing receipt should be directed to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451, or sent via e-mail to TMfilingreceipt@uspto.gov.
An applicant should send a request for correction of a filing receipt only if the information on the filing receipt is inconsistent with the information in the application as filed. If the applicant made an error in the application, the applicant should file an amendment rather than a request for correction of the filing receipt. An electronic form for filing preliminary amendments is available through TEAS. Note: The mere filing of a preliminary amendment does not guarantee that the amendment will be accepted. For example, the examining attorney will not accept a preliminary amendment that materially alters the mark shown on the original drawing, or that expands the scope of the goods and/or services in the original application. See TMEP §807.14 regarding material alteration of a mark, and TMEP §1402.07 regarding the scope of the identification of goods and services for purposes of amendment.
401.02 Serial Numbers and Series Codes
Each application for registration is assigned a six-digit serial number, preceded by a two-digit series code.
As a general rule, the serial numbers of applications filed prior to the 1905 - 1920 Acts are preceded by the series code “70.”
Applications filed under the 1905 - 1920 Acts (i.e., applications filed through July 4, 1947) were preceded by the series code “71.” The last serial number was 526,346.
As of July 5, 1947, applications were filed under the 1946 Act, beginning with number 526,500 and running through number 700,943 (preceded by the series code “71”).
On January 3, 1956, a new series of serial numbers preceded by the series code “72” was started, after a change in record-keeping methods. This series ran through number 467,233, issued on August 31, 1973.
A new series of serial numbers preceded by the series code “73” began with applications filed on September 4, 1973, which was the first day of receipt of mail after the adoption of the international classification of goods and services as of September 1, 1973 (see TMEP §1401.02).
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A new series of serial numbers preceded by the series code “74” began with applications filed on November 16, 1989, the date on which the Trademark Law Revision Act of 1988 took effect.
A new series of serial numbers preceded by the series code “75” began with applications filed on October 1, 1995.
A new series of serial numbers preceded by the series code “76” began with applications filed on March 20, 2000.
A series of serial numbers preceded by the series code “77” began September 14, 2006 for applications filed through TEAS on or after that date.
A series of serial numbers preceded by the series code “78” was used for TEAS applications filed prior to September 14, 2006.
Effective November 2, 2003, a series of serial numbers preceded by the series code “79” is used for requests for extension of protection of international registrations to the United States under §66(a) of the Trademark Act.
A range of serial numbers, beginning with number 975,000, is used for applications that are created through the “dividing” of an application (see TMEP §§1110 et seq.).
See TMEP §1205.02 regarding series code “89.”
401.03 Data Entry
For applications filed through TEAS, the data provided by the applicant is loaded directly into the USPTO’s automated TRAM System.
For applications filed on paper, the application documents are scanned into the Trademark Image Capture and Retrieval System (“TICRS”), and the data is manually entered into TRAM. TRAM may be used by USPTO employees to obtain information about the location and status, prosecution history, ownership, and correspondence address for applications and registrations. This information is available to the public through the Trademark Applications and Registrations Retrieval (“TARR”) database, available on the USPTO’s website at http://tarr.uspto.gov.
401.04 Creation of Application Records
For TEAS applications, the USPTO maintains an electronic record containing all incoming and outgoing documents. See TMEP §402.
For paper applications, the USPTO scans all incoming documents and creates an electronic record. The USPTO also creates a paper file jacket and places all incoming documents into the file jacket. The examining attorney
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works from the electronic record, and outgoing communications are put into the electronic record only.
All applications are electronically routed to the law offices.
402 Electronic Application and Registration Records
The USPTO maintains TICRS, which includes images of the contents of trademark application and registration records.
TICRS is available in the Public Search Facility, free of charge, to all members of the public who visit the USPTO. Members of the public can print images of documents from TICRS for a fee.
The public may also view and print images of the contents of trademark application and registration records through the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov/. Electronic images of Trademark Trial and Appeal Board proceeding records are also available on the USPTO website at http://ttabvue.uspto.gov/ttabvue/. TDR and TTABVUE are available 24 hours a day, seven days a week, free of charge.
402.01 USPTO No Longer Creates Paper Copies of Certain Trademark-Related Documents
Effective April 12, 2004, the USPTO no longer creates paper file copies of certain trademark-related documents that are submitted to the USPTO in electronic format. Furthermore, the USPTO does not generate paper copies of certain trademark documents that the USPTO creates, except for copies that are sent to recipients by mail. See New USPTO Policies Regarding (1) Generation of Paper Copies of Trademark-Related Documents and (2) Public Access to Existing Paper Copies of Trademark-Related Documents (TMOG Apr. 6, 2004), at http://www.uspto.gov/web/offices/com/sol/og/2004/week14/pattmcp.htm.
All these documents can be viewed through TICRS and TDR.
The USPTO still provides certified paper copies of all trademark documents, upon request and payment of the appropriate fee. See TMEP §111.
403 Correspondence Returned as Undeliverable
If a paper Office action or notice (e.g., a notice of allowance) is returned to the USPTO because the United States Postal Service has not been able to deliver it, the time for response will not be extended unless the USPTO sent the Office action to the wrong address due to a USPTO error.
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If the USPTO sent the Office action or notice to the wrong address due to a USPTO error, the USPTO will reissue the Office action or notice and provide the applicant/registrant with a new response period. A “USPTO error in sending the Office action to the wrong address” means that the USPTO either entered the correspondence address incorrectly or failed to properly enter a notice of change of address filed before the date on which the action was issued. The transmittal of a response on letterhead bearing a new address is not a proper notice of change of address. The applicant or attorney must specifically request that the correspondence address be changed. See TMEP §§609.02 and 609.02(a).
If the Office action or notice was sent to the correspondence address of record (see TMEP §§609 et seq. regarding the correspondence address), but was returned as undeliverable, the USPTO will try to obtain the correct address and forward the Office action or notice. However, the time for response will not be extended.
The USPTO scans the returned action and envelope into TICRS.
If outgoing e-mail is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record. See TMEP §§304 et seq. regarding e-mail.
See TMEP §§717 et seq. regarding the reissuing of examining attorney’s Office actions.
404 Documents Not Returnable
37 C.F.R. §2.25 Documents not returnable. Except as provided in §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.
Documents filed in the USPTO by the applicant or registrant become part of the official record and will not be returned or removed. 37 C.F.R. §2.25. However, documents ordered to be filed under seal pursuant to a protective order issued by a court or by the TTAB, pursuant to 37 C.F.R. §2.27(e), are not made part of the official record.
The USPTO will furnish copies of the contents of trademark application, registration, and TTAB proceeding records upon request and payment of the required fee. See TMEP §111.
405 Fees
37 C.F.R. §2.207. Methods of payment. (a) All payments of money required in trademark cases, including fees for
the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a
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cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
(b) Payments of money required for trademark fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
See 37 C.F.R. §2.6(a)(i) and TMEP §§810 et seq. regarding the fee for filing an application for registration.
See TMEP §1903.02 regarding payment of fees to the IB through the USPTO.
405.01 Credit Cards
Under 37 C.F.R. §2.207, the USPTO accepts payment of fees by credit card, subject to actual collection of the fee.
Any payment of a fee by credit card must be in writing. 37 C.F.R. §2.191. A form for authorizing charges to a credit card can be accessed through TEAS for all filings for which a filing fee is required. Parties who file on paper can download a Credit Card Payment Form (PTO-2038) from the USPTO’s website at http://www.uspto.gov/. The USPTO does not put the Credit Card Payment Form in application or registration records.
A party is not required to use the USPTO’s Credit Card Payment Form when paying a fee by credit card. However, if a party provides a credit card charge authorization in another form or document (e.g., in the body of an application, cover letter, response to an Office action, or other correspondence relating to a trademark application or registration), the credit card information becomes part of the public record. 37 C.F.R. §2.207(b).
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All credit card authorizations must include: (1) a valid credit card number; (2) a valid expiration date; (3) the name of the cardholder with the cardholder’s signature and the date; (4) a billing address, including zip code; (5) a description and purpose of the payment; and (6) a specific payment amount. See TMEP §§611.01 et seq. regarding signature of documents.
If a Credit Card Payment Form or other document authorizing the USPTO to charge a fee to a credit card does not contain the information necessary to charge the fee to the credit card, the form will be returned and the fee will not be processed. USPTO employees will not accept oral instructions to complete the Credit Card Payment Form or otherwise charge a fee to a credit card.
The USPTO will only accept an authorization to charge a fee in a specific dollar amount to a credit card.
The USPTO currently accepts charges to the following credit cards: AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.
Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. 37 C.F.R. §2.209(a).
See notice at 65 Fed. Reg. 33452 (May 24, 2000) and 1235 TMOG 38 (June 13, 2000).
See TMEP §405.06 regarding credit card authorizations that are refused or charged back by a financial institution.
405.02 Checks
Trademark Rule 2.207(a), 37 C.F.R. §2.207(a), provides that:
All payments of money required in trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made….
405.02(a) Personal Checks
It is the practice of the USPTO to accept, as “conditional” payment of a fee, a signed uncertified check (e.g., a personal check). If an uncertified check clears, then the USPTO considers the fee paid as of the date it received the check.
However, if such a check is returned unpaid, then the fee remains unpaid, and the document that included the returned check is processed as though
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the fee had been omitted. See In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995). See TMEP §405.06 for further information about processing checks that are returned unpaid.
Under 37 C.F.R. §2.6(b)(12), there is a processing fee for any check returned to the USPTO unpaid.
405.03 Deposit Accounts
37 C.F.R. §2.208. (a) For the convenience of attorneys, and the general public in paying any
fees due, in ordering copies of records, or services offered by the Office, deposit accounts may be established in the Office upon payment of the fee for establishing a deposit account (§2.6(b)(13)). A minimum deposit of $1,000 is required for paying any fees due or in ordering any services offered by the Office. The Office will issue a deposit account statement at the end of each month. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit. An amount sufficient to cover all fees, copies, or services requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§2.6(b)(13)) will be assessed for each month that the balance at the end of the month is below $1,000.
(b) A general authorization to charge all fees, or only certain fees to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular document filed. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
(c) A deposit account holder may replenish the deposit account by submitting a payment to the Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
(1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
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(iv) The deposit account holder’s company name and deposit account number.
(2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet Web site (http://www.uspto.gov).
(3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
A party cannot charge a fee to a deposit account unless he or she has prior authorization to do so. The Office of Finance maintains a list of persons authorized to request transactions by deposit account. The USPTO will not charge a fee to a deposit account unless the person requesting the charge appears on the authorized list or files a proper request to have his or her name added to the authorized list.
An authorization to charge a fee to a deposit account must be made in a written document signed and submitted by an authorized person. It cannot be entered by examiner’s amendment unless the record contains a written authorization signed and submitted by an authorized person. If there is no written authorization already in the record, the applicant may fax or e-mail the authorization to the examining attorney.
If an applicant submits an authorization to charge a filing fee to a deposit account that has insufficient funds to cover the fee, the applicant has not paid the fee.
If a deposit account has insufficient funds to cover an authorization to charge the initial filing fee for an application for registration, the USPTO will not grant a filing date to the application. 37 C.F.R. §2.21(a)(5). See TMEP §204.01.
When a deposit account contains insufficient funds to cover a fee that has been authorized, the USPTO notifies the party who filed the authorization of the fee deficiency. If the fee in question is statutory (e.g., the filing fee for a notice of appeal, statement of use, or request for extension of time to file a statement of use), the fee deficiency must be cured before the expiration of the statutory filing period. If the deadline for filing the fee is not set by statute, the party who filed the authorization may cure the fee deficiency within the set period for response to the Office action.
A showing that the deposit account contained sufficient funds on the date on which the authorization was first filed, as opposed to the date on which USPTO personnel attempted to charge the fee, will not cure the fee deficiency. Trademark Rule 2.208 clearly requires that sufficient funds to cover all outstanding charge authorizations be on deposit at all times. The
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funds must be available in the account at the time the authorization is presented for debiting.
See TMEP §1104.09(g) regarding fee deficiencies in amendments to allege use, TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use, TMEP §1109.15(a) regarding fee deficiencies in statements of use, TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, and TMEP §1606.05(c) regarding fee deficiencies in renewal applications.
405.04 Refunds
37 C.F.R. §2.209. (a) The Director may refund any fee paid by mistake or in excess of that
required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a trademark application, appeal or other trademark filing for which a fee was paid, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§2.208(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
Under 35 U.S.C. §42(d) and 37 C.F.R. §2.209, only money paid by mistake or in excess (when a fee is not required by statute or rule, or is not required in the amount paid) may be refunded. A mere change of purpose after the payment of money does not entitle a party to a refund. For example, if a party deletes a class from an application, or withdraws an application or appeal, the party is not entitled to a refund.
If an examining attorney or other USPTO employee erroneously requires a fee, the USPTO will refund the fee submitted in response to the erroneous requirement.
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The USPTO will refund the filing fee for an application that is denied a filing date, or a filing fee that is untimely (e.g., the fee for a statement of use or request for an extension of time to file a statement of use filed after expiration of the statutory filing period). However, after the USPTO has processed an application or other document, the USPTO normally will not refund the filing fee. The USPTO will not refund an application filing fee when registration is refused, nor will it refund a fee when a timely filed document (such as a statement of use under 15 U.S.C. §1051(d) or affidavit of use or excusable nonuse under 15 U.S.C. §1058) is rejected for failure to meet the requirements of the statute and rules.
Refunds are processed at the Customer Service Window located in the Trademark Assistance Center, James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia. When a USPTO employee determines that a refund is appropriate, the employee should complete a form with the information necessary for processing the refund, and send it to the Fee Processing Office.
405.05 Electronic Funds Transfer
The Electronic Funds Transfer (“EFT”) payment method allows customers to send a payment over the Internet as easily as writing a check. In general, the Automated Clearing House performs EFT transactions through the Federal Reserve system. The customer must establish a User ID and Password. For further information, see http://www.uspto.gov/teas/payment.htm.
405.06 Payments Refused or Charged Back By Financial Institutions
If a check is returned unpaid, or an EFT or credit card is refused or charged back by a financial institution, the document that accompanied the payment is processed as though the fee had been omitted. See In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995). If the document included an authorization to charge deficient fees to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, the USPTO charges the fee in question, together with a fee for processing the payment that was refused, to the deposit account.
If the document was not accompanied by an authorization to charge fees to a deposit account, the USPTO notifies the party who filed the document of the fee deficiency in a written action. If the deadline for filing the fee is not set by statute, the fee may be resubmitted within the period set for response to the Office action. If the fee in question is statutory (e.g., a filing fee for an appeal, statement of use, or request for extension of time to file a statement of use), the fee must be resubmitted before the expiration of the statutory filing period.
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Under 37 C.F.R. §2.6(b)(12), there is a fee for processing any payment that is refused or charged back by a financial institution. This fee covers the work done by USPTO personnel in processing the payment that is refused or charged back. The requirement for submission of the processing fee is strictly enforced. The USPTO will not approve a pending application for publication or registration, or take any other requested action in an application or registration, until all outstanding fees, including the processing fee, have been paid. Any request for waiver of this processing fee should be referred to the Office of the Deputy Commissioner for Trademark Examination Policy.
See TMEP §§202.03(a) and 202.03(a)(i) regarding the processing of an application in which the application filing fee payment is refused or charged back by a financial institution, TMEP §1104.09(g) regarding fee deficiencies in amendments to allege use, TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use, TMEP §1109.15(a) regarding fee deficiencies in statements of use, TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, and TMEP §1606.05(c) regarding fee deficiencies in renewal applications.
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Chapter 500 Change of Ownership
501 Assignment of Marks
501.01 Assignability of Marks in Applications and Registrations
501.01(a) Assignability of Intent-to-Use Applications
501.01(b) Assignability of Extensions of Protection of International Registrations to the United States
501.02 Assignments Must Be in Writing
501.03 Effect of Failure to Record Assignment
501.04 Foreign Assignee May Designate Domestic Representative
501.05 Assignee Stands in Place of Applicant or Registrant
501.06 Partial Assignments
501.07 Assignment of Extension of Protection of International Registration to the United States
502 Establishing Ownership of Applications or Registrations
502.01 Establishing the Right to Take Action in Application or Registration
502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §§1 and 44 of the Trademark Act
502.02(b) Applications Under §66(a) of the Trademark Act
502.02(c) Examining Attorney’s Action Regarding Assignment
502.03 Issuance of New Certificate to Assignee of Registrant
503 Recording With Assignment Services Branch
503.01 Effect of Recording a Document
503.01(a) Recording May Not Update Ownership Information
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503.01(b) Recording Does Not Update Correspondence Address in Trademark Database
503.01(c) Recording is Not a Determination of Validity
503.01(d) Recording Does Not Constitute Response to Office Action
503.01(e) Conditional Assignment
503.02 Documents That the Office Will Record
503.03 Requirements for Recording
503.03(a) Formal Requirements for Documents
503.03(b) Supporting Documents
503.03(c) English Language Requirement
503.03(d) Fee for Recording
503.03(e) Cover Sheet
503.04 Address for Submitting Documents for Recording
503.05 Recording Procedure and Recordation Date
503.06 Correction of Errors in Cover Sheet or Recorded Document
503.06(a) Typographical Errors in Cover Sheet
503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect Title to Application or Registration
503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title to Application or Registration
503.06(b) Typographical Errors in Recorded Assignment Document
503.06(c) Assignment or Change of Name Improperly Filed and Recorded By Another Person Against Owner’s Application or Registration
503.06(d) Owner Must Notify Trademark Operation of Correction
503.06(e) Recorded Documents Not Removed From Assignment Records
503.06(f) Petitions to Correct or “Expunge” Assignment Records
503.07 “Indexing” Against Recorded Document Not Permitted
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503.08 Accessibility of Assignment Records
503.08(a) Abstracts of Title
504 Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database
504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated
504.02 Processing Time for Automatic Updating
504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title
504.04 Automatic Updating Does Not Apply to Requests for Recordation Filed Before November 2, 2003
504.05 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection
505 Notifying Trademark Operation of Recordation of a Document and Request to Update Ownership Information
505.01 Request to Update Ownership Information in Pending Application
505.02 Request to Update Ownership Information After Registration
501 Assignment of Marks
501.01 Assignability of Marks in Applications and Registrations
15 U.S.C. §1060(a). (1) A registered mark or a mark for which an application to register has
been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Notwithstanding the preceding sentence, no application to register a mark under section 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.
(2) In any assignment authorized by this section, it shall not be necessary to include the good will of the business connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted.
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(3) Assignments shall be by instruments in writing duly executed…
Extract from 37 C.F.R. §3.1. *** Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.
501.01(a) Assignability of Intent-to-Use Applications
In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. Section 10 of the Trademark Act, 15 U.S.C. §1060; 37 C.F.R. §3.16.
The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or goodwill, and to prevent “trafficking” in marks.
As a general rule, the United States Patent and Trademark Office (“USPTO”) does not investigate or evaluate the validity of assignments. Therefore, the examining attorney should issue an inquiry concerning the compliance of an assignment with the cited provisions of §10 only if:
(1) The application itself includes a statement indicating that the assignee is not a successor to the original applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or
(2) All of the following conditions are present:
(a) The assignment is executed before the filing of an allegation of use;
(b) The applicant submits the assignment document for inclusion in the application record; and
(c) The assignment document fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.
The examining attorney should not require the submission of assignment documents to determine compliance.
If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the cited provision of §10 is sufficient to
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resolve the issue. This statement may be entered through an examiner’s amendment.
The assignment of an intent-to-use application to someone who is not the successor to the applicant’s business before filing an allegation of use renders the application and any resulting registration void. Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996).
501.01(b) Assignability of Extensions of Protection of International Registrations to the United States
Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol). See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection to the United States, and TMEP Chapter 1900 for further information about the Madrid Protocol.
501.02 Assignments Must Be in Writing
Extract from 15 U.S.C. §1060(a)(3). Assignments shall be by instruments in writing duly executed. ***
501.03 Effect of Failure to Record Assignment
Extract from 15 U.S.C. §1060(a).
(3)* * *Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office, the record shall be prima facie evidence of execution.
(4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.
See TMEP §§503 et seq. regarding the recordation of assignments in the Assignment Services Branch of the USPTO.
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501.04 Foreign Assignee May Designate Domestic Representative
15 U.S.C. §1060(b). An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the assignee does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served upon the Director.
37 C.F.R. §3.61. If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
An assignee not domiciled in the United States may designate, by a document filed with the USPTO, the name and address of a domestic representative. 15 U.S.C. §§1051(e), 1058(f), 1059(c), and 1060; 37 C.F.R. §3.61; TMEP §610. The USPTO encourages assignees who do not reside in the United States to designate domestic representatives.
When an assignee designates a domestic representative, the designation should be in a document separate from the assignment document. One copy of the designation of domestic representative should be sent to the Assignment Services Branch with the document to be recorded. In addition, the assignee should send a separate copy of the designation to the Trademark Branch of the USPTO (“Trademark Operation”) for each registration or application to which an assignment pertains, so that a copy of the designation can be entered in each official record that is identified in the assignment document. 37 C.F.R. §2.193(b).
501.05 Assignee Stands in Place of Applicant or Registrant
Extract from 15 U.S.C. §1127. The terms “applicant” and “registrant” embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
37 C.F.R. §3.71(d). Trademarks. The assignee of a trademark application
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or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee's trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
An assignee, like an applicant, must be a natural or juristic person. See 15 U.S.C. §1127 and TMEP §803.
501.06 Partial Assignments
A trademark may be owned by two or more persons (see TMEP §803.03(d)), and a co-owner may assign his or her interest in a mark. Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of his or her interest in the mark to another party.
A trademark owner may also assign a separate portion of a business, together with the good will and trademarks associated with that portion of the business, but retain rights in the mark for uses pertaining to another part of the business. See VISA, U.S.A., Inc. v. Birmingham Trust National Bank, 696 F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982), cert. denied, 464 U.S. 826, 220 USPQ 385 (1983). Accordingly, one or more trademarks of a company can be validly assigned if the assignor transfers the good will associated with only some of the goods/services on which that mark appears. After a registration has been assigned with respect to only some of the goods/services, both owners must file the necessary renewal applications and affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k to maintain the registration. If only one party files, only those goods/services in the registration for which that party owns the mark are continued or renewed. See TMEP §§1604 et seq. and 1613 regarding affidavits of continued use or excusable nonuse, and TMEP §§1606 et seq. and 1614 regarding renewal.
A trademark owner may not use an assignment to impose geographic restrictions on a registration. This must be done by way of a concurrent use proceeding before the Trademark Trial and Appeal Board, or pursuant to a final determination by a federal court. 15 U.S.C. §1052(d). See TMEP §§1207.04 et seq. and Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) Chapter 1100 regarding concurrent use registration. However, the Assignment Services Branch of the USPTO will record an assignment purporting to transfer rights in an unrestricted registration for less than the entire United States, because it is a transfer that may affect title to the registration. As noted in TMEP §503.01(c), the Assignment Services Branch does not examine the substance of documents submitted for recording. The act of recording the document is not a determination of the validity or effect of the purported assignment and does not create a concurrent use registration.
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A trademark owner who files a partial assignment is strongly encouraged to file a separate request to divide so that the USPTO can more effectively track and administer applications and post registration filings, and ensure that USPTO records will accurately reflect current ownership information. See TMEP §§1615 et seq. regarding requests to divide registrations in which ownership has changed with respect to some but not all of the goods/services, and TMEP §§1110 et seq. regarding request to divide pending applications.
501.07 Assignment of Extension of Protection of International Registration to the United States
15 U.S.C. §1141l. Assignment of an Extension of Protection: An extension of protection may be assigned, together with the goodwill
associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that is a Contracting Party.
Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection of an international registration to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is a party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).
Because the extension of protection remains part of the international registration, assignments of extensions of protection to the United States must be recorded at the International Bureau of the World Intellectual Property Organization (“IB”). The IB will notify the USPTO of any changes in ownership recorded in the International Register. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the automated records of the Trademark Operation (i.e., the Trademark Reporting and Monitoring (“TRAM”) System and the Trademark Applications and Registrations Retrieval (“TARR”) database to reflect these changes.
See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of international registrations or extensions of protection to the United States. 37 C.F.R. §7.22.
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See TMEP §§1110.11 and 1615.02 regarding division of an extension of protection to the United States after ownership of an international registration has changed with respect to some, but not all, of the goods/services.
502 Establishing Ownership of Applications or Registrations
Extract from 37 C.F.R. §3.73(a). * * * The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
Section 1 or §44 Applications. In an application or registration based on §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, an assignee is not required to record the assignment in order to take an action with respect to an application or registration. 37 C.F.R. §3.73(b); TMEP §502.01. However, the assignee must record the assignment (or other document affecting title) with the Assignment Services Branch of the USPTO to obtain a certificate of registration in the name of the assignee. 37 C.F.R. §3.85; TMEP §§502.02(a) and 502.03. Moreover, it is advisable for an applicant or registrant to record the assignment to ensure that it is valid, under §10(a)(4) of the Trademark Act, against subsequent purchasers for valuable consideration without notice. See TMEP §501.03.
Section 66(a) Applications. In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration, or to obtain a certificate of registration in the name of a new owner. TMEP §§502.01, 502.02(b), and 502.03. See TMEP §501.07 regarding the assignment of extensions of protection of international registrations, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
502.01 Establishing the Right to Take Action in Application or Registration
37 C.F.R. §3.73(b). (1) In order to request or take action in a patent or trademark matter, the
assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to §3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before
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the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to §3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
Applications and Registrations Based on §§1 and 44 of the Trademark Act. In an application or registration based on §1 or §44 of the Trademark Act, when a party other than the owner of record attempts to take an action with respect to an application or registration (e.g., filing a response to an Office action, allegation of use under 15 U.S.C. §1051(c) or §1051(d), request for an extension of time to file a statement of use under 15 U.S.C. §1051(d)(2), affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavit”), or renewal application under 15 U.S.C. §1059 (“§9 renewal application”)), the party must establish ownership of the application or registration. To establish ownership, the new owner must either: (1) record the assignment (or other document affecting title) with the Assignment Services Branch of the USPTO, and notify the Trademark Operation that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1). The document(s) must show a clear chain of title from the original owner to the party who is taking the action.
See 37 C.F.R. §3.85 and TMEP §§502.02(a) and 502.03 regarding issuance of a certificate of registration in the name of a new owner.
Section 66(a) Applications and Registered Extensions of Protection. In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration. The new owner does not have the option of submitting documentary evidence of ownership, pursuant to 37 C.F.R. §3.73(b).
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The IB will notify the USPTO of any changes in ownership recorded in the International Register. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. See TMEP §501.07 for further information about assignment of extensions of protection of international registrations, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB. The document(s) must show a clear chain of title from the original owner to the party who is taking the action.
Part 3 of 37 C.F.R. does not apply to §66(a) applications and registered extensions of protection. 37 C.F.R. §7.22.
502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §§1 and 44 of the Trademark Act
37 C.F.R. §3.85. Issue of registration to assignee. The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.
Document Must Be Recorded With Assignment Services Branch. In an application under §1 or §44 of the Trademark Act, a new owner must record the assignment, change of name, or other document affecting title with the Assignment Services Branch of the USPTO to obtain a certificate of registration in the name of the new owner (or in applicant’s new name). 37 C.F.R. §3.85. However, the registration will not issue in the name of the new owner, unless the ownership field in the Trademark Database (i.e., TRAM and TARR) is updated to reflect the recorded assignment prior to approval of the mark for publication or registration on the Supplemental Register in an application based on §1(a) or §44, 15 U.S.C. §1051(a) or 1126, or prior to acceptance of the statement of use in an intent-to-use application based on §1(b).
Under 37 C.F.R. §3.85, a new owner bears the burden of recording and notifying appropriate USPTO personnel of assignments or changes of name to ensure that the registration issues in the name of the new owner, as necessary. However, for some documents recorded on or after November 2, 2003, recording a document with the Assignment Services Branch will automatically update ownership in TRAM and TARR, even if the new owner
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does not notify the Trademark Operation that the document has been recorded. See TMEP §§504 and 504.01 regarding the circumstances in which the Trademark Database will be automatically updated. Thus, if the recorded document does not meet the criteria for automatic updating set forth in TMEP §§504 and 504.01, or if there is insufficient time for the Assignment Services Branch to process a recently recorded document for automatic updating (see TMEP §504.02), the new owner must file a written request that the certificate issue in the name of the new owner. The new owner can search the Assignment Services Branch’s database, i.e., the Electronic Trademark Assignment System (“ETAS”), on the USPTO website at http://assignments.uspto.gov/assignments to determine whether the assignment has been recorded, and can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated to reflect the change of ownership. A request that a registration issue in a new name should be directed to the examining attorney, and should state that the appropriate document has been recorded (or filed for recordation) and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request should specify the assignee’s address and set forth the assignee’s citizenship or state of incorporation or organization (for United States assignees), or country of incorporation or organization (for foreign assignees). If the assignee is a domestic partnership or domestic joint venture, the request should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members. See TMEP §502.02(c) regarding an examining attorney’s handling of an application in which the mark has been assigned.
If the applicant states that a request to record a change of ownership has been filed with the Assignment Services Branch but is not yet recorded, and the application is in condition to be approved for publication or registration on the Supplemental Register, the examining attorney should suspend action pending recordation of the document and entry of the information into the Trademark Database. See TMEP §§716 et seq. regarding suspension.
Clear Chain of Title Required. A new owner’s request that a registration issue in a new name will not be granted unless documents recorded in the Assignment Services Branch show a clear chain of title from the original applicant to the party requesting the change. The examining attorney should check the Assignment Services Branch’s Database (“Assignment Database”) on the USPTO website at http://assignments.uspto.gov/assignments to ensure that there is a clear chain of title. If the Assignment Database shows a clear chain of title, the examining attorney should ensure that TRAM is updated, if necessary. If the Assignment Database does not show a clear chain of title, the examining attorney should issue an Office action advising applicant that it must record the necessary documents if it wants the registration to issue in the name of the new owner. If the applicant does not
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record the necessary documents, the registration will issue in the name of the party who has a clear chain of title according to the Assignment Database.
Time for Recordation and Filing of Request for Issuance in Name of New Owner. To ensure that the registration issues in the name of the new owner, the new owner should record the assignment before the mark is approved for publication or registration on the Supplemental Register in an application based on §1(a) or §44, or prior to acceptance of a statement of use in an application based on §1(b). The USPTO cannot ensure that a request to issue the certificate in a new name filed after the mark has been approved for publication or registration will be processed in time for the registration to issue in the name of the new owner.
If, before a mark is approved for publication or registration, an applicant has recorded the appropriate document and filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction. See 15 U.S.C. §1057(g), 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error, and TMEP §502.03 regarding issuance of a new certificate of registration to the new owner of a registered mark.
502.02(b) Applications Under §66(a) of the Trademark Act
In an application under §66(a) of the Trademark Act, a new owner must record any assignment, change of name, or other document affecting title with the IB. The document(s) must show a clear chain of title from the original owner to the party who is taking the action. See TMEP §501.07 regarding assignment of §66(a) applications, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes with the IB. The IB will notify the USPTO when the change of ownership is recorded in the International Register. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the “Ownership” field in the Trademark Database (i.e., TRAM and TARR). A new owner can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated to reflect a change in ownership that has been recorded with the IB.
If the Trademark Database has not been updated, before the mark is approved for publication the new owner should file a written request that the registration issue in the name of the new owner. The request that a registration issue in the name of the new owner should be directed to the examining attorney, and should state that the appropriate document has been recorded (or filed for recordation) with the IB, and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request should specify the assignee’s address, and set forth the assignee’s citizenship or state of incorporation or organization (for United
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States assignees), or country of incorporation or organization (for foreign assignees). If the assignee is a domestic partnership or domestic joint venture, the request should set forth the names, legal entities, and national citizenship (or state or country of organization) of all general partners or active members. See TMEP §502.02(c) regarding an examining attorney’s handling of an application after a mark has been assigned.
If the applicant states that a request to record a change of ownership has been filed with the IB but is not yet recorded, and the application is in condition to be approved for publication, the examining attorney should suspend action pending recordation of the document and entry of the information into the Trademark Database. See TMEP §§716 et seq. regarding suspension.
If, before a mark is approved for publication, an applicant has recorded the appropriate document with the IB and filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction. See 15 U.S.C. §1057(g), 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error.
502.02(c) Examining Attorney’s Action Regarding Assignment
If, prior to approval for publication for opposition or registration on the Supplemental Register, or prior to acceptance of a statement of use in an application under §1(b), the applicant advises the examining attorney, or the examining attorney learns through some other source, that an assignment has been recorded, the examining attorney should check the Assignment Database at http://assignments.uspto.gov/assignments to ensure that there is a clear chain of title, and should ensure that the TRAM database is updated before approving the mark for publication or registration.
In general, the examining attorney should only issue an Office action questioning whether an assignment has occurred if an entity attempts to take action with respect to the application and USPTO records show ownership in another party. In this situation, the assignee must establish entitlement to take the action, either by recordation of an assignment or submission of proof of the assignment. 37 C.F.R. §3.73(b); TMEP §502.01.
During initial examination, the examining attorney should not suspend action or delay issuance of a final action to await recordation of a document. However, if the applicant submits a request indicating that the relevant document has been submitted for recordation and the application is in condition to be approved for publication for opposition or registration on the Supplemental Register, the examining attorney should suspend the application until the document has been recorded and the information
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regarding the assignment or the change of name has been entered into TRAM.
Similarly, during examination of the statement of use in an application under §1(b), the examining attorney should withhold final approval for registration until the relevant document has been recorded and the information regarding the assignment or the applicant’s new name has been entered in TRAM. If the application is in condition to be approved for publication or registration, the examining attorney should suspend action pending the recordation of the document and the entry of the information into TRAM. See TMEP §§716 et seq. regarding suspension.
502.03 Issuance of New Certificate to Assignee of Registrant
Registrations Under §§1 and 44 of the Trademark Act. In registrations that issued based on applications under §1 or §44 of the Trademark Act, the USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner (or in the registrant’s new name), if the new owner/registrant: (1) records the appropriate document (e.g., assignment document, change of name) with the Assignment Services Branch; (2) files a written request that a certificate of registration be issued in the new owner’s name; and (3) pays the required fee (37 C.F.R. §§2.6(a)(8) and 3.41). The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under 37 C.F.R. §11.14 (“qualified practitioner”) must sign the request for a new certificate. 15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85. The recorded document(s) must show a clear chain of title from the original registrant to the party requesting issuance of a new certificate. See TMEP §§503.03 et seq. regarding the requirements for recording.
Upon request and payment of the appropriate fee (see TMEP §111), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment Database. The certified copy will not show any transfer of ownership that has not been recorded with the Assignment Services Branch.
See TMEP §1604.07(c) regarding the issuance of a notification of acceptance of a §8 affidavit in the name of the new owner of a registration, and TMEP §1606.06 regarding renewal in the name of the new owner.
Registered Extensions of Protection of International Registrations to the United States. In a registered extension of protection, the new owner must record the assignment, change of name, or other document affecting title with the IB. See TMEP §501.07 regarding assignment of registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes in the International Register. The IB will notify the USPTO when the change of ownership is recorded in the International Register, and
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the USPTO will record the change in the Assignment Database and update the “Ownership” field in TRAM and TARR. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. The recorded document(s) must show a clear chain of title from the original owner to the party requesting issuance of a new certificate.
The USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner, if the new owner: (1) records the appropriate document (e.g., assignment document, change of name certificate) with the IB; (2) files a written request with the Assignment Services Branch that a certificate of registration be issued in the new owner’s name; and (3) pays the required fee (37 C.F.R. §2.6(a)(8)). The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner must sign the request for a new certificate. 15 U.S.C. §1057(d); 37 C.F.R. §2.171(a).
Upon request and payment of the appropriate fee (see TMEP §111), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment Database. The certified copy will not show any transfer of ownership that has not been recorded with the IB.
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. §7.22.
503 Recording With Assignment Services Branch
503.01 Effect of Recording a Document
37 C.F.R. §3.54. Effect of recording. The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.
503.01(a) Recording May Not Update Ownership Information
Recording a document with the Assignment Services Branch does not necessarily change or update the ownership of record shown in the Trademark Database (i.e., TRAM and TARR). There are circumstances in which the Trademark Database will be updated automatically upon the recordation of an assignment, change of name, or other document transferring title. See TMEP §§504 and 504.01. In all other cases, the new owner must separately notify the Trademark Operation in writing of the
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recordation of a document, and request that the Trademark Database be updated manually. See TMEP §505. See also TMEP §§502.02 et seq. and 502.03 regarding issuance of a certificate of registration in the name of a new owner.
503.01(b) Recording Does Not Update Correspondence Address in Trademark Database
The USPTO will only communicate with the applicant or the applicant’s attorney at the correspondence address listed in the Trademark Database (i.e., TRAM and TARR). If an assignment document is recorded with the Assignment Services Branch and it includes a new correspondence address, the USPTO will not enter the change of correspondence address or update the Trademark Database. The mere inclusion of the new correspondence address on documents filed with the Assignment Services Branch does not effect a change in the correspondence address in the Trademark Database, even if the ownership information is automatically updated. The USPTO will not change the correspondence address unless a separate written request is made to explicitly change the correspondence address. See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership, and TMEP §§504 et seq. regarding automatic updating of ownership information in the Trademark Database after recordation of a document with the Assignment Services Branch.
503.01(c) Recording is Not a Determination of Validity
The Assignment Services Branch does not examine the substance of documents submitted for recording. The act of recording a document is a ministerial act, and not a determination of the document’s validity or of its effect on title to an application or registration. The USPTO will determine the effect of a document only when an assignee attempts to take an action in connection with an application or registration (e.g., when an assignee files a statement of use under 15 U.S.C. §1051(d)(1) or a §8 affidavit). 37 C.F.R. §3.54.
503.01(d) Recording Does Not Constitute Response to Office Action
Recording a document with the Assignment Services Branch does not constitute a response to an outstanding Office action.
503.01(e) Conditional Assignment
If an assignment is conditional on a given act or event at the time of its execution, the USPTO will view the submission of the assignment for
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recordation as an indication that the act or event has occurred. See 37 C.F.R. §3.56.
503.02 Documents That the Office Will Record
37 C.F.R. §3.11 Documents which will be recorded. (a) Assignments of applications, patents, and registrations, accompanied by
completed cover sheets as specified in §§3.28 and 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in §§3.28 and 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943- 1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government- controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
The USPTO records assignments of trademark applications and registrations, accompanied by completed cover sheets. The USPTO also records documents that affect title to a trademark application or registration, such as certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses. Although a mere change of name does not constitute a change of legal entity, it is a proper link in the chain of title. Documents of merger are also proper links in the chain of title.
Some instruments that relate to registered marks or to marks in pending applications may be recorded, even though they do not constitute a transfer or change of title to the mark or do not convey the entire title or interest in the business in which the mark is used. Typically, these instruments are license agreements, security agreements, and agreements between parties limiting future extension of use of a mark with regard to the goods/services or other circumstances of use. These instruments are recorded to give third parties notification of equitable interests or other matters relevant to the ownership of a mark.
The USPTO may also record a partial assignment of an interest in a mark. See TMEP §501.06.
In an application under §66 of the Trademark Act or a registered extension of protection, the new owner must record any change of ownership with the IB, who will record the change in the International Register and notify the USPTO
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accordingly. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB. Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of §66(a) applications and registered extensions of protection. 37 C.F.R. §7.22. See TMEP §501.07.
503.03 Requirements for Recording
503.03(a) Formal Requirements for Documents
Applications and Registrations Based on §§1 and 44 of the Trademark Act. All documents submitted for recording must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31. See TMEP §503.03(e).
To expedite recordation, new owners are encouraged to file requests for recordation electronically through ETAS, on the USPTO website at http://etas.uspto.gov. Documents filed electronically are recorded much faster than paper documents. Using ETAS, a party can create and submit a Trademark Assignment Recordation Coversheet by completing an online form, and attach the supporting legal documentation as an image in tagged image file format (“TIFF”) for submission via the Internet.
See TMEP §§503.03(b) et seq. regarding the requirements for recordation.
Section 66(a) Applications and Registered Extensions of Protection. In a §66(a) application or a registered extension of protection, the new owner must record the change of ownership with the IB, who will record the change in the International Register and notify the USPTO accordingly. See TMEP §501.07. The IB does not require supporting documents. See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
503.03(b) Supporting Documents
To record an assignment document or other document affecting title to a trademark application or registration, a legible cover sheet and one of the following must be submitted:
(1) A copy of the document;
(2) A copy of an extract from the document evidencing the effect on title; or
(3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.
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37 C.F.R. §3.25(a).
To record a name change, only a legible cover sheet is required. 37 C.F.R. §3.25(b).
Documents filed through ETAS must be in TIFF format. When printed to a paper size of either 21.6 by 27.9 cm (8½ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides. 37 C.F.R. §3.25(c)(1).
All paper documents submitted for recordation must be submitted on white and non-shiny paper that is either 8½ by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case. Only one side of each page may be used. Original documents should not be submitted, because the USPTO does not return recorded documents. 37 C.F.R. §3.25(c)(2).
Documents that do not meet these requirements will not be recorded. 37 C.F.R. §3.51. See TMEP §503.05.
503.03(c) English Language Requirement
The USPTO will not record a document that is not in the English language, unless it is accompanied by an English translation that is signed by the translator. 37 C.F.R. §3.26.
503.03(d) Fee for Recording
All requests to record documents with the Assignment Services Branch must be accompanied by the appropriate fee. A fee is required for each application and registration against which a document is recorded, as identified in the cover sheet. 37 C.F.R. §§2.6 and 3.41. The fee does not depend on the length of the document.
If the Assignment Services Branch determines that materials submitted for recording do not meet the recording requirements, the fee is not refunded.
503.03(e) Cover Sheet
Each document submitted for recording in the Assignment Services Branch must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31. Only one set of documents and cover sheets to be recorded should be filed. 37 C.F.R. §3.28.
To expedite recordation, new owners are encouraged to file requests for recordation through the USPTO website, at http://etas.uspto.gov. Documents filed electronically are recorded much faster than paper documents. Using ETAS, a new owner can create a Trademark Assignment Recordation
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Coversheet by completing an online form, and attach the supporting legal documentation as a TIFF image for submission via the Internet.
If the new owner files the assignment or name change on paper, the cover sheet must be legible. 37 C.F.R. §3.25(a). The USPTO has a trademark cover sheet form that can be downloaded from the USPTO website at http://www.uspto.gov/web/forms/pto1594.pdf. Questions regarding cover sheets should be directed to the Assignment Services Branch. Contact information is provided on the USPTO website at http://etas.uspto.gov/. See notice at 1140 TMOG 65, 69 (July 28, 1992). Use of the USPTO’s form is preferred, but is not mandatory.
Under 37 C.F.R. §3.31, a trademark cover sheet must contain the following:
• The name of the party conveying the interest;
• The name and address of the party receiving the interest;
• The entity (e.g., individual, corporation, partnership, etc.) and citizenship of the party receiving the interest (e.g., the citizenship of an individual, the state or country of incorporation or organization of a corporation, etc.). If the party receiving the interest is a domestic partnership or domestic joint venture, the names, entity, and citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture;
• A description of the interest conveyed or transaction to be recorded (e.g., assignment, license, change of name, merger, security agreement);
• Each application serial number or registration number against which the document is to be recorded, if known. If the application serial number is not known, the party seeking to record the document must submit a copy of the application and/or a reproduction of the mark and an estimate of the date that the USPTO received the application;
• The name and address of the party to whom correspondence concerning the request to record the document should be sent;
• The date the document was executed; and
• The signature of the party submitting the document. For a document filed electronically, the person who signs the cover sheet must either: (1) place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g., “/Thomas O’Malley/”) in the signature block on the electronic submission; or (2) sign the cover sheet using some other form of electronic signature specified by the Director.
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The cover sheet should also include:
• The entity and citizenship of the conveying party (e.g., the citizenship of an individual, state or country of incorporation or organization of a corporation, or names and citizenship of the general partners of a domestic partnership);
• The number of applications and/or registrations identified in the cover sheet;
• The total fee; and
• An identification or description of the mark.
In addition, if the receiving party has designated a domestic representative (see TMEP §§501.04 and 610), the cover sheet should include an indication to this effect.
Documents that are not accompanied by a completed cover sheet will not be recorded. 37 C.F.R. §3.51.
Separate patent and trademark cover sheets should be submitted for documents that include interests in, or transactions involving, both patents and trademarks. If a cover sheet contains both patent and trademark information, any information contained therein about pending patent applications will become public record upon recordation. 37 C.F.R. §§3.28 and 3.31(b).
503.04 Address for Submitting Documents for Recording
To expedite recordation, new owners are encouraged to file requests to record documents with the Assignment Services Branch through the USPTO website, at http://etas.uspto.gov. Paper documents and cover sheets to be recorded in the Assignment Services Branch should be sent to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §§2.190(c) and 3.27.
503.05 Recording Procedure and Recordation Date
Applications and Registrations Under §§1 and 44 of the Trademark Act. The recording of documents in the Assignment Services Branch of the USPTO is governed by 37 C.F.R. Part 3.
To expedite recordation, new owners are encouraged to file requests for recordation through the USPTO website, at http://etas.uspto.gov. Using ETAS, a new owner can create and submit a Trademark Assignment Recordation Coversheet by completing an online form, and attach the
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supporting legal documentation as a TIFF image for submission via the Internet. Documents filed electronically are recorded much faster than paper documents.
The date of recordation is the date that the USPTO receives a cover sheet that meets the requirements of 37 C.F.R. §3.31 and a document affecting title that meets the requirements of 37 C.F.R. §3.25. See 37 C.F.R. §3.51.
The party recording the document should carefully review the document and cover sheet for accuracy and completeness. The USPTO merely examines the materials submitted for form, to determine whether the requirements for recording (see TMEP §§503.03 et seq.) have been met.
If the materials submitted meet the requirements for recordation, the Assignment Services Branch will record the document and cover sheet. Only the data specified on the cover sheet will be entered in the Assignment Database. After recording the document and cover sheet, the USPTO will issue a notice of recordation that reflects the data as recorded in the Assignment Database. The party recording the document should carefully review the notice of recordation. See TMEP §§503.06 et seq. regarding correction of errors in a cover sheet or recorded document.
Under 37 C.F.R. §3.51, the USPTO will return documents that do not meet the requirements for recording (e.g., documents submitted without a completed cover sheet, the appropriate fee, or an English translation, where applicable) to the sender for correction. The returned documents, stamped with the original date of receipt in the USPTO, will be accompanied by a letter indicating that, if the returned documents are corrected and resubmitted to the USPTO within a specified period of time, the USPTO will assign the original filing date of the documents as the recordation date. The USPTO will not extend the time period specified in the letter. If the returned documents are corrected and resubmitted after the time specified in the letter, the recordation date is the date on which the USPTO receives corrected documents that meet the requirements for recording. The certificate of mailing and transmission procedures of 37 C.F.R. §2.197 and the “Express Mail” procedure of 37 C.F.R. §2.198 may be used for resubmitting the returned documents, to avoid lateness due to mail delay.
If documents submitted for recording are returned unrecorded by the Assignment Services Branch, and the submitter believes that the documents were returned in error, he or she may file a petition to the Director under 37 C.F.R. §2.146. See TMEP §§1702 through 1708 regarding petitions.
Applicants and registrants can search the Assignment Database on the USPTO website at http://assignments.uspto.gov/assignments/ to determine whether an assignment has been recorded.
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Section 66(a) Applications and Registered Extensions of Protection. In an application under §66(a) of the Trademark Act or a registered extension of protection, the IB will notify the USPTO of any changes in ownership recorded in the International Register, and of the date of recordation. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. §7.22.
503.06 Correction of Errors in Cover Sheet or Recorded Document
37 C.F.R. §3.34. Correction of cover sheet errors. (a) An error in a cover sheet recorded pursuant to §3.11 will be corrected
only if: (1) The error is apparent when the cover sheet is compared with the
recorded document to which it pertains, and (2) A corrected cover sheet is filed for recordation. (b) The corrected cover sheet must be accompanied by a copy of the
document originally submitted for recording and by the recording fee as set forth in §3.41.
Once a document is recorded with the Assignment Services Branch, the Assignment Services Branch will not remove the document from the record relating to that application or registration. See TMEP §503.06(e).
During the recording process, the Assignment Services Branch will check to see that a trademark cover sheet is complete and record the data exactly as it appears on the cover sheet. Once the document is recorded, the USPTO will issue a notice of recordation.
The party recording the document should carefully review the notice of recordation.
Typographical errors made by the USPTO will be corrected promptly and without charge upon written request directed to the Assignment Services Branch. For any other error, the party recording the document is responsible for filing the documents and paying the recordation fees necessary to correct the error, using the procedures set forth in TMEP §§503.06(a) through 503.06(d).
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In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB. Such a request cannot be sent to the IB through the USPTO. See TMEP §§1906.01 et seq. for information about requests to record changes in the International Register.
503.06(a) Typographical Errors in Cover Sheet
A party who wishes to correct a typographical error on a recorded cover sheet must submit the following to the Assignment Services Branch: (1) a copy of the originally recorded assignment document (or other document affecting title); (2) a corrected cover sheet; and (3) the required fee for each application or registration to be corrected (37 C.F.R. §§2.6 and 3.41). 37 C.F.R. §3.34. The party requesting correction should also submit a copy of the original cover sheet, to facilitate comparison of this cover sheet with the originally recorded document.
The party filing the corrected cover sheet should check the box titled “Other” in the area of the sheet requesting “Nature of Conveyance,” and indicate that the submission is to correct an error in a cover sheet previously recorded. The party should also identify the reel and frame numbers (if known), and the nature of the correction (e.g., “correction to the spelling of assignor’s name” or “correction of a serial number or registration number”).
The USPTO will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature. If the error is typographical in nature, the Assignment Services Branch will record the corrected cover sheet and correct the Assignment Database.
503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect Title to Application or Registration
If the original cover sheet contains a typographical error that does not affect title to the application or registration against which the original assignment or name change is recorded, the Assignment Services Branch will correct the Assignment Database and permit the recording party to keep the original date of recordation.
503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title to Application or Registration
If the original cover sheet contains a typographical error that affects title to the application or registration against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. See TMEP §503.05. Rather, the Assignment Services Branch
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will correct its automated records and change the date of recordation to the date on which the corrected cover sheet was received in the USPTO.
503.06(b) Typographical Errors in Recorded Assignment Document
If there is an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either draft and record a new document or make corrections to the original document and re-record it. If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit in which the assignee identifies the error and requests correction. The affidavit must be accompanied by a copy of the originally recorded documents, a cover sheet (see TMEP §503.03(e)), and the required fee for each application or registration to be corrected (37 C.F.R. §§2.6 and 3.41). See In re Abacab Int’l Computers Ltd., 21 USPQ2d 1078 (Comm’r Pats. 1987).
In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB. Such a request cannot be sent to the IB through the USPTO.
503.06(c) Assignment or Change of Name Improperly Filed and Recorded By Another Person Against Owner’s Application or Registration
When the owner of an application or registration discovers that another party has improperly recorded an assignment or name change against the owner’s application or registration, the owner must correct the error by having a corrected cover sheet filed with the Assignment Services Branch.
The owner should contact the party who recorded the documents with the erroneous information and have that party record corrective documents. However, if the party cannot be located or is unwilling to file corrective documents, then the true owner must record the necessary documents with the Assignment Services Branch to correct the error.
Specifically, the owner should submit the following to the Assignment Services Branch: (1) a completed cover sheet identifying the application or registration against which the assignment or change of name was improperly recorded; (2) an affidavit or declaration identifying itself as the correct owner, stating that the previously recorded document was submitted with erroneous information, and providing the reel and frame number of the previously recorded document; and (3) the recording fee (37 C.F.R. §§2.6 and 3.41) for each application or registration to be corrected.
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The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the registration or application identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or registrant or last correct assignee has been and continues to be the owner of the application or registration at issue.
On the corrected cover sheet, the owner should check the box titled “Other” in the area of the cover sheet requesting the “Nature of Conveyance,” and indicate that the submission is to correct an error made in a previously recorded document that erroneously affects the identified application(s) or registration(s). The party should also write the name of the correct owner in both the box requesting the name of the conveying party and the box requesting the name and address of the receiving party, to make it clear that ownership of the mark never changed and that any assignment or name change recorded against the application(s) or registration(s) was erroneous.
503.06(d) Owner Must Notify Trademark Operation of Correction
Recording a corrective document with the Assignment Services Branch generally does not change or update the information to be corrected in the Trademark Database (i.e., TRAM and TARR). The owner must also separately notify the Trademark Operation in writing that the corrective document has been recorded and identify what the corrected information is.
See TMEP §504.03 regarding correction of the Trademark Database where it has been automatically updated to show ownership of an application or registration in a party who does not have a clear chain of title as evidenced by the Assignment Database, and TMEP §§505 et seq. regarding requests to update ownership information.
503.06(e) Recorded Documents Not Removed From Assignment Records
Once an assignment or other document is recorded against an application or registration, the Assignment Services Branch will not remove the document from the records relating to that application or registration in the Assignment Database, even if the assignment or other document is subsequently found to be invalid.
The goal of the USPTO is to maintain a complete history of claimed interests in a mark. Since the act of recording a document is not a determination of the document's validity, maintaining a complete record of claimed interests does not preclude an owner from using a mark, or from establishing its ownership of the mark in a proper forum, such as a federal court. In re Ratny, 24 USPQ2d 1713 (Comm'r Pats. 1992).
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503.06(f) Petitions to Correct or “Expunge” Assignment Records
To correct an error in a recorded document, the owner of an application or registration should record corrective documents with the Assignment Services Branch, in accordance with the procedures outlined in TMEP §§503.06 through 503.06(d).
If the Assignment Services Branch denies the request to correct the error, the owner may file a petition to the Director under 37 C.F.R. §2.146. See TMEP Chapter 1700 regarding petitions.
However, petitions to correct, modify, or “expunge” assignment records are rarely granted. Such petitions are granted only if the petitioner can prove that: (1) the normal corrective procedures outlined in TMEP §§503.06 through 503.06(d) will not provide the petitioner with adequate relief; and (2) the integrity of the assignment records will not be affected by granting the petition.
Even if a petition to “expunge” a document is granted with respect to a particular application or registration, the images of the recorded document remain in the records of the Assignment Services Branch. The USPTO will delete the links to the application or registration that was the subject of the petition, so that no information about the recorded document will appear when someone searches for that application or registration number in the Assignment Database. However, the image of the document remains at the same reel and frame number, and it still will appear when someone views that reel and frame number.
503.07 “Indexing” Against Recorded Document Not Permitted
The USPTO does not process requests for “indexing” or “cross-referencing” additional trademark registration numbers or application serial numbers against a document previously recorded in the Assignment Services Branch.
Therefore, even when an assignment document (or other document affecting title) has already been recorded in the Assignment Services Branch in connection with a trademark application or registration, a party who wants to record that document against additional applications or registrations must submit the following:
(1) A copy of the originally recorded assignment document (or other document affecting title), a copy of an extract from the recorded document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title (this may comprise a copy of the previously recorded documents on which the Assignment Services Branch has stamped the reel and frame numbers at which they are recorded);
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(2) A completed cover sheet (see TMEP §503.03(e)) that includes the number of each additional registration and/or application against which recordation of the assignment document (or other document affecting title) is requested; and
(3) The appropriate recording fee (37 C.F.R. §§2.6 and 3.41).
The USPTO will assign a new date of recordation for the additional applications or registrations, update the Assignment Database, and create an electronic record of the cover sheet and assignment document (or other document affecting title), which will become part of the official record. See notice at 1157 TMOG 12 (Dec. 7, 1993).
503.08 Accessibility of Assignment Records
The Assignment Services Branch of the USPTO maintains separate records for patents and trademarks. 15 U.S.C. §1060(a)(5); 37 C.F.R. §2.200(a)(1).
The public can search the trademark assignment records of the Assignment Services Branch on the USPTO website at http://assignments.uspto.gov/assignments.
Assignments of trademark applications and registrations are open to public inspection upon recordation in the Assignment Services Branch. See 37 C.F.R. §3.31(b) and TMEP §503.03(e) regarding the submission of separate cover sheets for documents that include interests in, or transactions involving, both patents and trademarks.
Before 1955, documents were recorded in bound volumes. The location of documents in these volumes is designated by “liber and page,” that is, by the number of the book (liber) and the number of the page in the book. Since 1955, documents have been recorded on microfilm, and are available for immediate inspection in the Trademark Assignment Search Room. The location of these documents is designated by “reel and frame,” that is, by the number of the reel on which they are microfilmed and the number of the frame on the reel.
All assignment records related to pre-1955 trademark records were transferred to the National Archives and Records Administration (“NARA”) in 1990. The USPTO still maintains records of all trademark assignments recorded on or after January 1, 1955.
All trademark assignment records from 1837 to December 31, 1954 are maintained and available for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746. Assignments recorded before 1837 are maintained at the National Archives and Records Administration, 841 South Pickett Street, Alexandria, Virginia 22304.
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Copies of assignment records recorded on or after January 1, 1955 may be ordered from the USPTO upon payment of the fee required by 37 C.F.R. §2.6. An order for a copy of an assignment record should identify the reel and frame at which it is recorded in the Assignment Services Branch. If the correct reel and frame numbers are not identified (e.g., the order identifies the document only by the name of the registrant and the number of the registration, or by the name of the applicant and the serial number of the application), the USPTO will charge an additional fee for the time spent searching for the document.
Requests for copies of pre-1955 trademark assignment records should be directed to NARA. Payment of the fees required by NARA should accompany all requests for copies. 37 C.F.R. §2.200(a)(2).
503.08(a) Abstracts of Title
Members of the public may obtain abstracts of title to particular registrations or applications from the Document Services Branch of the Public Records Division of the USPTO, upon payment of the fee required by 37 C.F.R. §2.6. See notices at 1140 TMOG 65, 66 (July 28, 1992) and 1165 TMOG 13 (Aug. 2, 1994).
504 Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database
Prior to November 2, 2003, recording a document with the Assignment Services Branch of the USPTO did not automatically change the ownership record in the Trademark Database (i.e., TRAM and TARR). To change the ownership record in the Trademark Database, a new owner had to notify the Trademark Operation that ownership had changed. 37 C.F.R. §3.85.
Effective November 2, 2003, except in the limited circumstances set forth in TMEP §504.01, the USPTO will automatically update the ownership information in the Trademark Database of registrations and pending applications when one of the following documents is recorded with the Assignment Services Branch:
• Assignment of entire interest and goodwill;
• Nunc Pro Tunc Assignment of entire interest and goodwill;
• Merger; and
• Name Change.
In these situations, it is unnecessary for the new owner to notify the Trademark Operation of the change of ownership, or to file a request in a pending application that the certificate of registration issue in the name of the
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new owner. In all other situations, the new owner must separately notify the Trademark Operation in writing that ownership has changed in order to update the ownership information in TRAM and TARR.
To ensure that the Trademark Database is automatically updated, the party filing the assignment, merger, or name change should identify the “Nature of the Conveyance” by checking the “Assignment,” “Merger,” or “Name Change” box in the “Nature of Conveyance” field and should not check the “Other” box.
The Trademark Database will show only the last recorded owner, not the complete chain of title. The complete chain of title can be obtained from the Assignment Services Branch’s database on the USPTO website at http://assignments.uspto.gov/assignments. The “Ownership” field in the Trademark Database will be automatically updated regardless of whether or not the records of the Assignment Services Branch show a clear chain of title transferring ownership to the last recorded owner. The Trademark Database will include the reel and frame number and execution date of the recorded document, as well as a notation to “Check Assignments.” Examining attorneys must check assignment records to ensure that the owner of record in the Trademark Database has a clear chain of title.
Trademark owners can search the Assignment Database to determine whether an assignment has been recorded and can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated.
Note - Filing Multiple Assignments With Same Execution Date on the Same Date: When multiple assignments with the same execution date are filed on the same date, the ownership information in the Trademark Database will not be automatically updated. See the note in TMEP §504.01 for further information.
504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated
In the circumstances discussed below, the USPTO will not automatically update the Trademark Database (i.e., TRAM and TARR) to show the change in ownership, even if the appropriate document is recorded in the Assignment Services Branch on or after November 2, 2003. In these situations, the applicant must separately notify the Trademark Operation in writing that the assignment or other title document has been recorded, and request that the Trademark Database be updated to show title in the new owner. 37 C.F.R. §3.85; TMEP §§502.02 et seq. and 502.03. See TMEP §§505 et seq. regarding requests to update ownership information.
(1) Execution Date Conflicts With Previously Recorded Document. If a previously recorded assignment, merger, change of name, security interest document, or any other recorded document for the same
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application or registration has an execution date that is the same as or later than the execution date of the subsequently recorded document, the Trademark Database will not be automatically updated. Office personnel will have to review the assignment records and update the database manually.
Note - Filing Multiple Assignments With Same Execution Date on the Same Date: When requests to record multiple assignments (or other documents transferring title) with the same execution date are filed on the same date, the ownership information in the Trademark Database will not be automatically updated. Office personnel must manually update the ownership information to identify the proper owner based on the proper order of transfers specified by the new owner. Therefore, in this situation, the new owner must separately notify the Trademark Operation in writing that multiple documents have been recorded, specify the order of recordation of each document, and request that the Trademark Database be updated to show title in the new owner. See TMEP §505.01 regarding requests to update ownership information in pending applications and TMEP §505.02 regarding requests to update ownership information after registration.
(2) Blackout Period: Ownership of Pending Applications Cannot be Updated During Certain Time Periods. The Trademark Database will not be automatically updated to show a change of ownership during the following stages of the registration process:
(a) For §§1(a) and 44 applications:
• Between approval for publication and issuance of registration.
(b) For §1(b) applications:
• Between approval for publication and issuance of notice of allowance; and
• Between approval for registration and issuance of registration.
(3) Maximum Number of Ownership Changes. The Trademark Database will not be automatically updated if the maximum number of ownership changes permitted for the following time periods has been reached:
• Prior to publication - up to nine changes of ownership.
• Between publication and registration - up to nine additional changes of ownership.
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In the above situations, new owners must file a written request with the Trademark Operation to update the Trademark Database. See TMEP §505.01 regarding requests to update the Trademark Database prior to registration, and TMEP §505.02 regarding requests to update the Trademark Database after registration.
504.02 Processing Time for Automatic Updating
The process for automatically updating the Trademark Database (i.e., TRAM and TARR) requires that the Assignment Services Branch: (1) record the document transferring title in the Assignment Database; and (2) extract the trademark assignment information from the Assignment Database and send it electronically to the Trademark Operation for automatic updating. The Assignment Services Branch will extract trademark assignment information from the Assignment Database and transmit it to the Trademark Operation once a week.
To expedite recordation with the Assignment Services Branch, new owners are encouraged to file requests for recordation through the USPTO website, at http://etas.uspto.gov.
If a trademark owner wants the Trademark Database updated within a certain time frame, and there is insufficient time for the Assignment Services Branch to process a recently recorded title document for automatic updating, the owner should notify the Trademark Operation in writing of the change of ownership. 37 C.F.R. §3.85; TMEP §§502.02 et seq. and 502.03. Trademark owners can search the Assignment Services Branch’s database on the USPTO website at http://assignments.uspto.gov/assignments to determine whether an assignment has been recorded, and can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated.
504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title
In the situations set forth in TMEP §504, the Trademark Database (i.e., TRAM and TARR) will be automatically updated to show the last recorded owner regardless of whether the Assignment Database shows that the last recorded owner has a clear chain of title. If the Trademark Database is automatically updated to show ownership of an application or registration in a party who does not have a clear chain of title as evidenced by the Assignment Database, the true owner of the application or registration may file a written request to have the “Ownership” field in the Trademark Database corrected. The USPTO will grant a request for correction of the “Ownership” field if:
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(1) The Trademark Database was automatically updated to show ownership in a party who does not have a clear chain of title according to the Assignment Database; and
(2) At the time the Trademark Database was automatically updated in the name of the incorrect party, the Assignment Database showed a clear chain of title in the party requesting correction of the “Ownership” field in the Trademark Database.
The correction of the Trademark Database will not be automatically reflected in the Assignment Database. To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06 et seq. for correcting errors in the Assignment Database.
Example: ABC Corporation owns Application No. 1. An assignment of the entire interest and goodwill is filed for recordation, transferring ownership of Application 1 from ZED Corporation to XYZ Corporation. The Assignment Services Branch records the assignment and transmits the trademark assignment information to the Trademark Operation. The Trademark Database is automatically updated to show XYZ Corporation as the new owner of Application 1. The Trademark Operation will correct its database, upon ABC Corporation’s request, because the Assignment Database does not show a clear chain of title from ABC Corporation to XYZ Corporation, and the Assignment Database shows a clear chain of title in ABC Corporation.
In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06 et seq. That is, the party must first file corrective documents with the Assignment Services Branch and pay the recordal fees necessary to correct the error, and then notify the Trademark Operation in writing that the corrective documents have been recorded.
Prior to registration, a request for correction of the “Ownership” field in the Trademark Database should be made in an amendment directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01 et seq. In a §1(b) application, if a request for correction of the “Ownership” field is filed between the issuance of the notice of allowance and the submission of a statement of use, the USPTO will place the request in the file for consideration at the time of examination of the statement of use. 37 C.F.R. §2.77; TMEP §1107.
After registration, a request for correction of the “Ownership” field should be submitted in writing to the Post Registration Section and made in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R.
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§2.174. See TMEP §505.02 regarding proper procedures for requests to update ownership information for registrations.
504.04 Automatic Updating Does Not Apply to Requests for Recordation Filed Before November 2, 2003
The automatic updating procedures discussed in §§504.01 through 504.03 apply to all assignments, mergers, and name changes recorded in the Assignment Services Branch on or after November 2, 2003, even if the request for recordation was filed before November 2, 2003.
These procedures do not apply to assignments, mergers, or name changes that were recorded in the Assignment Services Branch prior to November 2, 2003. For documents recorded prior to November 2, 2003, the new owner must notify the Trademark Operation in writing of the change of ownership and request that the Trademark Database (i.e., TRAM and TARR) be updated manually. 37 C.F.R. §3.85.
504.05 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection
The procedures discussed in §§504.01 through 504.04 do not apply to §66(a) applications and registered extensions of protection of international registrations to the United States. Changes of ownership of international registrations and requests for extensions of protection of international registrations to the United States must be recorded with the IB. The USPTO will record only those assignments (or other documents of title) that have been recorded in the International Register. The Trademark Database (i.e., TRAM and TARR) will be automatically updated to reflect any change of ownership that is recorded in the International Register. See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
505 Notifying Trademark Operation of Recordation of a Document and Request to Update Ownership Information
As noted in TMEP §504.01, if the recordation of a document with the Assignment Services Branch does not automatically update the ownership information in the Trademark Database (i.e., TRAM and TARR), the new owner must separately notify the Trademark Operation in writing that ownership has changed, so that the ownership information is updated in the Trademark Database. See TMEP §505.01 regarding the procedures for requesting that ownership information be updated in pending applications,
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and TMEP §505.02 regarding the procedures for requesting that ownership information be updated after registration.
505.01 Request to Update Ownership Information in Pending Application
Prior to registration, a request to update the ownership information in the Trademark Database (i.e., TRAM and TARR) should be made in writing and directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01 et seq. In a §1(b) application, if such a request is filed between the issuance of the notice of allowance and the filing of a statement of use, the USPTO will place the request in the file for consideration at the time of examination of the statement of use. 37 C.F.R. §2.77; TMEP §1107.
See TMEP §§502.02(a) and (b) regarding issuance of a certificate of registration in the name of the new owner.
505.02 Request to Update Ownership Information After Registration
For registrations, even if the new owner records the appropriate document with the Assignment Services Branch and notifies the Trademark Operation that ownership has changed, the Post Registration Section will not update the Trademark Database (i.e., TRAM and TARR) with new owner information, unless either: (1) the owner of the registration files a written request to amend the registration pursuant to §7(d) of the Trademark Act, 15 U.S.C. §1057(d); or (2) the owner takes an action, such as filing a §8 affidavit or §9 renewal application.
Thus, if the owner of the registration is not taking an action such as filing a §8 affidavit, the owner must:
(1) Record the appropriate document (e.g., assignment, change of name) with the Assignment Services Branch;
(2) File a written request that the Trademark Database be updated under §7(d), signed by the new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner; and
(3) Pay the required fee (37 C.F.R. §§2.6(a)(8) and 3.41).
15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85. Office records must show a clear chain of title from the original registrant to the new owner. See TMEP §502.03.
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The owner must file a §7 request to amend the registration even if the registrant does not want a new registration certificate but only wishes the Trademark Database to be updated. See TMEP §502.03 regarding issuance of a new certificate in the name of the new owner.
To expedite processing, new owners are encouraged to use the Trademark Electronic Application System (“TEAS”) form entitled “Section 7 Request for Amendment or Correction of Registration Certificate,” available on the USPTO website at http://www.uspto.gov, to file the request to update the ownership information in the Trademark Database.
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Chapter 600 Attorney, Representative, and
Signature
601 Owner of Mark May Be Represented by an Attorney at Law
601.01 USPTO Cannot Aid in Selection of an Attorney
601.02 Communications With Applicant or Registrant Who Is Represented by an Attorney
602 Persons Authorized to Practice Before USPTO in Trademark Matters
602.01 Attorneys Licensed to Practice in the United States
602.02 Non-Attorneys
602.03 Foreign Attorneys and Agents
602.03(a) Canadian Attorneys and Agents
602.03(b) Foreign Attorneys and Agents From Countries Other Than Canada
602.03(c) Documents Filed by Foreign Attorneys and Agents
602.03(d) Representatives of Holders of International Registrations
602.03(e) Identification of Foreign Attorney in Original Application
603 Standards of Conduct
604 Recognition as a Representative
604.01 Three Ways to Be Recognized
604.02 Duration of Recognition
604.03 Change of Attorney
605 Powers of Attorney
605.01 Requirements for Power of Attorney
605.02 Power of Attorney Relating to More Than One Application or Registration
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605.03 Associate Powers of Attorney
605.04 Powers of Attorney Filed After Registration
606 Revocation of Power of Attorney
607 Withdrawal of Attorney of Record
608 Unauthorized Practice
608.01 Actions by Unauthorized Persons Not Permitted
608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO
609 Correspondence, With Whom Held
609.01 Establishing the Correspondence Address
609.01(a) Correspondence in §66(a) Applications
609.02 Changing the Correspondence Address
609.02(a) Request to Change Correspondence Address Presumed
609.02(b) Requirements for Request to Change Correspondence Address
609.02(c) Processing Requests to Change the Correspondence Address Before Registration
609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations
609.02(e) Changing the Correspondence Address After Registration
609.02(f) Correspondence After Recordation of Change of Ownership
609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address
609.04 Correspondence with Parties Not Domiciled in the United States
610 Designation of Domestic Representative by Parties Not Domiciled in the United States
611 Signature on Correspondence Filed in the United States Patent and Trademark Office
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611.01 Signature and Certificate
611.01(a) Signature as Certificate
611.01(b) Requirements for Signature
611.01(c) Signature of Documents Filed Electronically
611.02 Signatures by Authorized Parties Required
611.02(a) TEAS Checkoff Boxes
611.03 Proper Person to Sign
611.03(a) Verification
611.03(b) Responses, Amendments to Applications, Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide
611.03(c) Powers of Attorney and Revocations of Powers of Attorney
611.03(d) Petitions to Revive
611.03(e) Petitions to the Director
611.03(f) Amendment, Correction, or Surrender of Registration
611.03(g) Renewal Applications
611.03(h) Designations and Revocations of Domestic Representative
611.03(i) Requests to Change Correspondence Address in an Application or Registration
611.04 Examples of Authorized and Potentially Unauthorized Signatories
611.05 Processing Documents Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney
611.05(a) Notice of Incomplete Response When Authority of Person Signing Response is Unclear
611.05(b) Replying to a Notice of Incomplete Response
611.05(c) Unsatisfactory Response or Failure to Respond
611.06 Guidelines on Persons With Legal Authority to Bind Certain Juristic Entities
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611.06(a) Joint Owners
611.06(b) Signature by Partnership
611.06(c) Signature by Joint Venture
611.06(d) Signature by Corporation
611.06(e) Signature by Foreign Companies and Corporations
611.06(f) Signature by Unincorporated Association
611.06(g) Signature by Limited Liability Company
611.06(h) Signature by Limited Liability Partnership
NOTE: This chapter sets forth the procedures for recognition of representatives, signature of documents, and establishing and maintaining the correspondence address in pending applications for registration, and documents filed with the Post Registration Section of the Office. For a statement of practice concerning representation of others, signature of documents, and establishing and maintaining the correspondence address in proceedings before the Trademark Trial and Appeal Board (“Board”), parties should refer to the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”), Chapter 100, available on the United States Patent and Trademark Office (“USPTO”) website at http://www.uspto.gov, or contact the Board at (571) 272-8500.
601 Owner of Mark May Be Represented by an Attorney at Law
The owner of a mark may represent himself or herself in prosecuting an application or maintaining a registration, or may be represented by a practitioner authorized under 37 C.F.R. §11.14 to practice in trademark cases (“qualified practitioner”). 37 C.F.R. §2.11. See TMEP §§602 et seq. regarding persons authorized to practice before the USPTO in trademark cases.
601.01 USPTO Cannot Aid in Selection of an Attorney
The USPTO cannot aid in the selection of a qualified practitioner. 37 C.F.R. §2.11.
If it is apparent that an applicant or registrant is unfamiliar with the procedures for prosecuting an application or maintaining a registration and needs more detailed or technical assistance than the USPTO staff is permitted to give, the USPTO staff may suggest that it may be desirable to employ an attorney who
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is familiar with trademark matters. The following is an example of language that may be used in the Office action:
The applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The United States Patent and Trademark Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
601.02 Communications With Applicant or Registrant Who Is Represented by an Attorney
If an applicant or registrant is represented by a qualified practitioner, the USPTO will conduct business only with the practitioner, unless that representation is terminated. If the applicant or registrant contacts the USPTO regarding the application or registration, he or she will be advised that the USPTO will only conduct business with the qualified practitioner. USPTO employees may answer general questions about the application or registration record and the procedures for obtaining and maintaining a registration, and are encouraged to refer the applicant or registrant to publicly available information on the USPTO’s website. See TMEP §1805 regarding general inquiries from the public.
An applicant or registrant may not authorize an examiner’s amendment or change of correspondence address, and the USPTO will not accept responses or amendments signed by the applicant or registrant if there is a qualified practitioner of record. See TMEP §§611 et seq. regarding signature of documents filed in the USPTO.
If the applicant or registrant wishes to revoke the power of attorney, the applicant or registrant should be encouraged to file the revocation through the Trademark Electronic Application System (“TEAS”). See TMEP §606 regarding revocation.
See TMEP §604.03 regarding changes of attorney, TMEP §604.02 regarding the duration of recognition as a representative, and TBMP §§114 et seq. regarding representation of parties to proceedings before the Board.
602 Persons Authorized to Practice Before USPTO in Trademark Matters
37 C.F.R. §11.14. Individuals who may practice before the Office in trademark and other non-patent matters.
(a) Attorneys. Any individual who is an attorney as defined in §11.1 may represent others before the Office in trademark and other non-patent matters. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent matters. Registration as a patent practitioner does not itself entitle an individual to practice before the
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Office in trademark matters. (b) Non-lawyers. Individuals who are not attorneys are not recognized to
practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark matters on behalf of a client. Any individual may appear in a trademark or other non- patent matter in his or her own behalf. Any individual may appear in a trademark matter for:
(1) A firm of which he or she is a member, (2) A partnership of which he or she is a partner, or (3) A corporation or association of which he or she is an officer and which
he or she is authorized to represent, if such firm, partnership, corporation, or association is a party to a trademark proceeding pending before the Office.
(f) Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by §1.21(a)(1)(i) of this subchapter.
Under 37 C.F.R. §11.14, only the following individuals may represent an applicant or registrant in a trademark case:
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• An attorney as defined in 37 C.F.R. §11.1, i.e., an attorney who is a member in good standing of the bar of the highest court of a state in the United States;
• A Canadian patent agent who is registered with the USPTO’s Office of Enrollment and Discipline (“OED”) and in good standing as a patent agent under 37 C.F.R. §11.6(c) for the limited purpose of representing parties located in Canada;
• A Canadian attorney or agent who has been granted recognition by the Director of Enrollment and Discipline (“OED Director”) for the limited purpose of representing parties located in Canada, pursuant to 37 C.F.R. §11.14(f); or
• An individual who is not an attorney but was recognized to practice before the USPTO in trademark cases prior to January 1, 1957.
See TMEP §602.03(a) regarding Canadian attorneys and agents, and TBMP §§114 et seq. regarding representation of parties to Board proceedings.
602.01 Attorneys Licensed to Practice in the United States
An attorney who is a member in good standing of the bar of the highest court of any State may practice before the USPTO in trademark matters. 37 C.F.R. §§11.1 (definition of attorney) and 11.14(a). No application for recognition to practice before the USPTO is necessary. The USPTO does not give an examination for eligibility or maintain a register of United States attorneys entitled to practice in trademark cases. An attorney meeting the requirements of 37 C.F.R. §11.14 who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant. 37 C.F.R. §2.17(c). A telephone call from an attorney does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(c).
Only individuals, not law firms, are entitled to be recognized to represent others. Generally, attorneys who have not specifically been mentioned in a power of attorney may discuss but not conclude business with the USPTO over the telephone. However, if an attorney from the same United States firm as the attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application or registration, the USPTO will permit the attorney to conclude business, and will note this fact in any resulting examiner’s amendment, priority action, or Office action.
602.02 Non-Attorneys
37 C.F.R. §11.14(b). Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice
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before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
Non-attorneys are not permitted to practice except under the limited circumstances specified in 37 C.F.R. §11.14(b), set forth above. 5 U.S.C. §§500(b) and (d); 37 C.F.R. §11.14(e).
See TMEP §608.01 regarding unauthorized practice and TMEP §§611 et seq. regarding signature of documents filed in the USPTO.
602.03 Foreign Attorneys and Agents
37 C.F.R. §11.14(c). Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
37 C.F.R. §11.14 (f). Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by §1.21(a)(1)(i) of this subchapter.
Generally, only an attorney as defined in 37 C.F.R. §11.1 may represent an applicant or registrant before the USPTO. 5 U.S.C. §§500(b) and (d); 37 C.F.R. §§11.14(c) and (e). In very limited circumstances, Canadian agents or attorneys registered or in good standing before the Canadian Intellectual Property Office may file an application for reciprocal recognition to represent parties located in Canada.
A foreign attorney or agent may be recognized to represent parties located in the country in which the foreign attorney resides and practices, only if:
(1) He or she applies in writing for reciprocal recognition and pays the fee required by 37 C.F.R. §1.21(a)(1)(i);
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(2) He or she proves to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation; and
(3) The patent or trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the USPTO.
37 C.F.R. §§11.14(c) and (f). The application for reciprocal recognition must be filed prior to practicing before the USPTO in trademark matters. A foreign attorney or agent may not practice before the USPTO in trademark matters prior to being recognized by the OED Director. Practice before the USPTO in trademark matters includes preparing and prosecuting applications for trademark registration and otherwise representing a party before the USPTO. See 37 C.F.R. §11.5(b)(2). The OED Director grants recognition only in the form of a written communication. A foreign attorney or agent not recognized to practice before the USPTO in trademark cases should allow adequate time to file and obtain recognition before representing a party before the USPTO.
Currently, a Canadian attorney or agent who is registered or in good standing with the Canadian Intellectual Property Office is the only foreign attorney or agent who may be recognized as meeting the above criteria. See TMEP §602.03(a) regarding Canadian attorneys and agents.
602.03(a) Canadian Attorneys and Agents
Written Application and Fee Required. A Canadian attorney or agent may represent parties located in Canada only if:
(1) He or she is registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c); or
(2) He or she files an application for and is granted recognition by the OED Director under 37 C.F.R. §11.14(c). To be recognized under 37 C.F.R. §11.14(c), an individual must file a written application and pay the fee required by 37 C.F.R. §1.21(a)(1)(i) prior to representing a party before the USPTO. The application must include proof that the individual meets the requirements of 37 C.F.R. §11.14(c), and must be addressed to the OED Director, Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. 37 C.F.R. §11.14(f).
May Only Represent Parties Located in Canada. Once recognized by OED, a Canadian attorney or agent can only represent parties located in Canada. Thus, even if the attorney or agent is on the OED list, he or she cannot represent a party located in the United States or in another foreign country before the USPTO. For example, he or she cannot represent a Canadian
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national who resides in California and has access to a mailing address in Canada.
Lists of Canadian Attorneys and Agents Who Have Been Recognized by OED. OED maintains two separate lists of attorneys and agents who have been recognized as qualified to represent parties located in Canada:
(1) The names of Canadian patent agents who are registered with the USPTO under 37 C.F.R. §11.6(c) are listed with other registered patent practitioners on the USPTO website at https://oedci.uspto.gov/OEDCI/GeoRegion.jsp. Registered practitioners located in Canada, including United States attorneys and agents in Canada, may be identified by selecting Canada under “country.” Alternatively, to ascertain whether a particular agent is registered, type in the agent’s surname, and a list of registered practitioners having the same surname will appear. Upon matching the surname and first name, additional information may be obtained via the link in the surname;
(2) OED maintains a separate list of attorneys and agents who are not registered as patent agents but have been recognized under 37 C.F.R. §§11.14(c) and (f) as qualified to represent parties located in Canada. This list is available only on the USPTO’s internal computer network.
If a Canadian attorney or agent is designated or acts as a representative of a party in a trademark matter, the USPTO staff must verify that the attorney or agent is recognized by OED by checking these lists. USPTO staff must check these lists even if the individual files a document through TEAS and checks a box indicating that he or she is an authorized Canadian attorney or agent who has been granted recognition by OED. See TMEP §611.02(a) regarding TEAS checkoff boxes.
If the individual appears on one of the lists, the USPTO staff should make an appropriate note in the “Notes-to-the-File” section of the record. If the individual does not appear on either list, the USPTO will treat any document filed by that individual as a document filed by an unauthorized person. See TMEP §§611.05 et seq. for information about processing these documents.
602.03(b) Foreign Attorneys and Agents From Countries Other Than Canada
A foreign attorney or agent who resides and practices in a foreign country other than Canada and who is not a member in good standing of the bar of the highest court of a state in the United States may not practice before the USPTO unless he or she establishes that he or she meets the requirements of 37 C.F.R. §11.14. 5 U.S.C. §§500(b) and (d). Any such attorney or agent who attempts to represent a party in a trademark matter should be advised
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that he or she must file a written application for reciprocal recognition with OED and pay the fee required by 37 C.F.R. §1.21(a)(1)(i); that the application must be filed and granted prior to representing a party before the USPTO; and that the application must include proof that the attorney or agent is in good standing with the foreign patent or trademark office in the country in which the attorney or agent resides, that the attorney or agent is possessed of good moral character and reputation, and that the USPTO Director has recognized that the foreign patent or trademark office provides substantially reciprocal rights to United States attorneys. 37 C.F.R. §§11.14(c) and (f).
602.03(c) Documents Filed by Foreign Attorneys and Agents
A foreign attorney or agent who is not authorized to practice before the USPTO under 37 C.F.R. §11.14 may receive correspondence from the USPTO and transmit it to the applicant or registrant. However, a foreign attorney or agent cannot prepare an application, response, or other document to be filed in the USPTO, sign responses to Office actions, or authorize issuance of examiner’s amendments and priority actions. Preparing a document, authorizing an amendment to an application, and submitting legal arguments in response to a requirement or refusal all constitute examples of representation of a party in a trademark matter. See 37 C.F.R. §11.5(b)(2); TMEP §608.01.
If a foreign attorney or agent who does not meet the requirements of 37 C.F.R. §11.14(c) is designated or acts as a representative of a party in a trademark matter, the USPTO will treat any document submitted by the attorney or agent as a document filed by an unauthorized party and follow the procedures in TMEP §§611.05 et seq.
602.03(d) Representatives of Holders of International Registrations
In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141f(a), or a registered extension of protection, the applicant’s appointed representative as communicated from the International Bureau of the World Intellectual Property Organization (“IB”) is considered the correspondence address of record only. If a person with an address outside the United States is identified, the person will not be recognized by the USPTO as a representative without further clarification of his or her qualifications under 37 C.F.R. §11.14. See TMEP §609.01(a) regarding correspondence in §66(a) applications, and TMEP §§611 et seq. regarding signature on correspondence filed in the USPTO.
602.03(e) Identification of Foreign Attorney in Original Application
If a new application identifies an attorney or agent with an address outside the United States (e.g., if a foreign address is set forth in the “attorney” section of a TEAS form), the examining attorney must advise in an Office action that
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unless the person meets the requirements of 37 C.F.R. §11.14, he or she is not authorized to practice before the USPTO in trademark matters and may not represent the applicant in the particular trademark application, and that any power of attorney to the person is void ab initio. The Office action should be sent to the correspondence address of record as established in the original application. If the identified person can establish that he or she is a qualified attorney, e.g., a member in good standing of the bar of the highest court of a U.S. state, who has an address abroad, then he or she is a qualified practitioner under 37 C.F.R. §§11.1 and 11.14(a).
If an Office action is not necessary (i.e., if the application is otherwise eligible for approval for publication or registration on the Supplemental Register), the USPTO staff must ensure that the USPTO database does not include the identified person in the “Attorney” field. The correspondence address should remain unchanged.
See TMEP §609.04 regarding correspondence with parties not domiciled in the United States.
603 Standards of Conduct
37 C.F.R. §11.15. Any practitioner authorized to appear before the Office may be suspended, excluded, or reprimanded in accordance with the provisions of this Part. Any practitioner who is suspended or excluded under this Part shall not be entitled to practice before the Office in patent, trademark, or other non-patent matters while suspended or excluded.
37 C.F.R. §10.20. Canons and Disciplinary Rules. (a) Canons are set out in §§10.21, 10.30, 10.46, 10.56, 10.61, 10.76, 10.83,
10.100, and 10.110. Canons are statements of axiomatic norms, expressing in general terms the standards of professional conduct expected of practitioners in their relationships with the public, with the legal system, and with the legal profession.
(b) Disciplinary Rules are set out in §§10.22 -10.24, 10.31 -10.40, 10.47 -10.57, 10.62 -10.68, 10.77, 10.78, 10.84, 10.85, 10.87 -10.89, 10.92, 10.93, 10.101 -10.103, 10.111, and 10.112. Disciplinary Rules are mandatory in character and state the minimum level of conduct below which no practitioner can fall without being subjected to disciplinary action.
Parts 10 and 11 of Title 37 of the Code of Federal Regulations pertain to representation of others before the USPTO. Part 11 identifies and defines individuals entitled to practice before the USPTO, and sets forth a procedure for investigations and disciplinary proceedings. Part 10 establishes a mandatory Code of Professional Responsibility.
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604 Recognition as a Representative
604.01 Three Ways to Be Recognized
To be recognized as a representative, a qualified practitioner may:
• File a power of attorney signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership);
• Sign a document on behalf of an applicant or registrant who is not already represented by a qualified practitioner from a different firm; or
• Appear in person on behalf of an applicant or registrant who is not already represented by a qualified practitioner from a different firm.
37 C.F.R. §§2.17(a) and (c). A foreign attorney or agent who has not been recognized by the OED Director pursuant to 37 C.F.R. §11.14(c) or registered as a patent agent pursuant to 37 C.F.R. §11.6(c) may not be recognized as a representative.
Generally, as long as no other qualified practitioner from a different firm has been previously appointed, it is not necessary for a qualified practitioner to file a power of attorney or any other special authorization in a trademark case. A qualified practitioner who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant. A telephone call from a qualified practitioner does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(c). Such a practitioner will not be recognized as a representative, and he or she may not authorize amendments to an application by telephone.
Once the USPTO has recognized a qualified practitioner as the representative of an applicant or registrant, the USPTO will communicate and conduct business only with that practitioner or with another qualified practitioner from the same United States firm. The USPTO will not conduct business directly with the applicant or registrant, or with a qualified practitioner from a different firm, unless the applicant or registrant files a new power of attorney or revokes the previous power, or the previously recognized practitioner files a request to withdraw. See TMEP §604.02 regarding duration of recognition, and TMEP §606 regarding revocation of power of attorney.
See TMEP §§609.01 and 609.02 et seq. regarding the correspondence address, and TBMP §§114 et seq. regarding representation of parties to Board proceedings.
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604.02 Duration of Recognition
Pending Applications. For purposes of recognition as a representative, the USPTO considers a power of attorney filed while an application is pending to end when the mark is registered, when ownership changes, or when the application is abandoned.
Post Registration. For purposes of recognition as a representative by the Post Registration Section of the Office, the USPTO considers a power of attorney filed in connection with an affidavit under 15 U.S.C. §1058, §1062(c), §1065, or §1141k (“affidavit under §8, §12(c), §15, or §71”), a renewal application under 15 U.S.C. §1059 (“§9 renewal application”), or a request for amendment or correction under 15 U.S.C. §1057 (“§7 request”) to end upon acceptance or final rejection of the filing. Due to the length of time that may elapse between the filing of these documents (which could be 10 years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of a previous power.
Example 1: A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit. If another qualified practitioner from a different firm (Attorney B) wants to respond to the Office action, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the response or correspond with Attorney B.
Example 2: A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO accepts the affidavit. If another qualified practitioner from a different firm (Attorney B) later files a §7 request, the USPTO will recognize and correspond with Attorney B regardless of whether a new power of attorney or revocation of the previous power is filed.
Example 3: A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO issues an action in connection with the affidavit. If another qualified practitioner from a different firm (Attorney B) wants to file a §7 request before the USPTO accepts or issues a final rejection of the §8 affidavit, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the §7 request or correspond with Attorney B.
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The USPTO also considers a power of attorney filed after registration to end when the registration is cancelled or expired. Therefore, the USPTO will not enter a request to withdraw as attorney or revocation of a power of attorney filed in connection with a cancelled or expired registration, unless it is accompanied by a petition to reinstate the registration. See TMEP §605.04 regarding powers of attorney filed after registration.
Change of Ownership. For purposes of recognition as a representative, the USPTO considers a power of attorney filed in connection with an application or registration to end when ownership changes. After a change in ownership has been recorded, if a new qualified practitioner appears on behalf of the new owner, the USPTO will communicate and conduct business with that practitioner even absent a new power of attorney or revocation of the previous power. If the previously recognized practitioner appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that practitioner. The previously recognized practitioner does not have to file a new power of attorney signed by the new owner. See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership.
Effect on Attorney and Correspondence Information in USPTO Records. In the situations discussed above, when the USPTO deems a power of attorney to end for purposes of recognition as a representative, the USPTO does not automatically change the attorney and correspondence address in its automated records (i.e., the Trademark Reporting and Monitoring (“TRAM”) System and Trademark Applications and Registrations Retrieval (“TARR”) database), because it is possible that the previously recognized practitioner still represents the applicant or registrant and wants to continue receiving correspondence. The USPTO will continue to recognize the previously recognized practitioner if he or she appears or signs a document on behalf of the applicant or registrant. However, if a new qualified practitioner appears in person or signs a document, the Office will recognize the new qualified practitioner pursuant to 37 C.F.R. §2.17(c), without requiring a new power of attorney or revocation of the previous power. See TMEP §§609.02 et seq. regarding changes of correspondence address.
These practices also apply where a qualified practitioner is recognized by appearing in person or filing a document on behalf of the party whom he or she represents. See 37 C.F.R. §2.17(c); TMEP §604.01.
Board Proceedings. See TBMP §§114 et seq. regarding representation of parties to Board proceedings, and TBMP §§117 et seq. regarding correspondence in Board proceedings.
604.03 Change of Attorney
Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, a new qualified practitioner from a different firm is
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not permitted to represent the applicant or registrant until: (1) the applicant or registrant revokes the previous power of attorney; (2) the applicant or registrant submits a new power of attorney naming the new qualified practitioner; or (3) the previously recognized practitioner files a request to withdraw. Until such action is taken, the new qualified practitioner cannot sign responses to Office actions, authorize issuance of examiner’s amendments or priority actions, expressly abandon an application, authorize a change of correspondence address, or otherwise represent the applicant or registrant.
If an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner from a different firm wishes to take action with respect to the application or registration, the new practitioner must file a revocation of the previous power of attorney or new power of attorney naming the new qualified practitioner, signed by the individual applicant or registrant or a person with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will accept filings by or correspond with the new practitioner. The new practitioner may not sign the revocation of the previous power him or herself. See TMEP §605.01 regarding requirements for power of attorney, and TMEP §606 regarding revocation of power of attorney.
Absent a revocation or new power, if the new qualified practitioner signs a response, amendment, or request to change the correspondence address, the USPTO will treat this as a document filed by an unauthorized party and follow the procedures in TMEP §§611.05 et seq.
For purposes of recognition as a representative of an applicant or registrant, the USPTO considers a power of attorney filed while an application is pending to end with respect to a particular application when the mark is registered or abandoned, or when ownership changes. The USPTO considers a power of attorney filed after registration to end when the registration is cancelled or expired, or when ownership changes. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02. In these situations, it is unnecessary to file a new power of attorney or revocation of the previous power before a new qualified practitioner takes an action. See TMEP §605.04 regarding the processing of powers of attorney filed after registration.
See TBMP §§114 et seq. regarding representation of parties to Board proceedings, and TBMP §§117 et seq. regarding correspondence in Board proceedings.
605 Powers of Attorney
37 C.F.R. §2.17(c). To be recognized as a representative, an attorney as defined in §11.1 of this chapter may file a power of attorney, appear in person,
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or sign a document on behalf of an applicant or registrant that is filed with the Office in a trademark case.
37 C.F.R. §2.17(d). A party may file a power of attorney that relates to more than one trademark application or registration, or to all existing and future applications and registrations of that party. A party relying on such a power of attorney must:
(1) Include a copy of the previously filed power of attorney; or (2) Refer to the power of attorney, specifying the filing date of the previously
filed power of attorney; the application serial number (if known), registration number, or inter partes proceeding number for which the original power of attorney was filed; and the name of the party who signed the power of attorney; or, if the application serial number is not known, submit a copy of the application or a copy of the mark, and specify the filing date.
605.01 Requirements for Power of Attorney
A power of attorney must: (1) designate by name at least one individual qualified practitioner; and (2) be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or partner of a partnership). In the case of joint applicants or registrants, all should sign. See TMEP §611.01(c) regarding signature of documents transmitted electronically.
If a power specifies only the name of a law firm, the USPTO will treat it as a correspondence address rather than an authorization to conduct business. See TMEP §§609 et seq. regarding the correspondence address.
A qualified practitioner cannot sign an original power of attorney on behalf of his or her client. An original power of attorney, other than one associating an additional attorney with an already recognized attorney (see TMEP §605.03), must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant.
However, the filing of a power of attorney is not mandatory in a trademark case. Thus, if a power of attorney is signed by an improper person (e.g., by the named attorney) and no other qualified practitioner has been previously appointed, the USPTO generally does not require a properly signed power. If the improperly signed power is accompanied by a document that is signed by a qualified practitioner or includes the name and address of a qualified practitioner, the USPTO may recognize that qualified practitioner under 37 C.F.R. §2.17(c), separate and apart from the improperly signed power. See TMEP §604.01 regarding the three ways that a qualified practitioner can be recognized as a representative, TMEP §609.01 regarding establishment of the correspondence address in a new application, and TMEP §609.02(a) regarding the limited situations in which the USPTO will change the
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correspondence address to that of a qualified practitioner absent a written request to change the correspondence address.
Example: If the original application contains the name and address of a qualified practitioner (e.g., if the “Attorney” section of a TEAS application contains the name and address of an attorney from a United States firm or a Canadian attorney or agent who has been recognized by the OED Director), and the application includes a power of attorney signed by the named practitioner, the USPTO will disregard the improperly signed power. However, the USPTO will recognize and correspond with the named qualified practitioner, pursuant to 37 C.F.R. §2.17(c).
However, if an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner wishes to take action with respect to the application or registration, the new qualified practitioner must file a new power of attorney or revocation of the previous power, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant, before the USPTO will accept filings by or correspond with the new qualified practitioner. See TMEP §604.03 regarding change of attorney, and TMEP §606 regarding revocation of power of attorney.
If two or more qualified practitioners are named in a power of attorney, any of the named practitioners can sign and submit a notice of change of correspondence address setting forth a new address, even if the new address is at a new firm. It is not necessary to submit a new power signed by the applicant or registrant when a named practitioner(s) changes firms. See TMEP §§609.02 et seq. regarding changes of address.
To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov/teas/index.html. When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records.
605.02 Power of Attorney Relating to More Than One Application or Registration
Using TEAS, at www.uspto.gov/teas/index.html, an applicant or registrant may appoint a qualified practitioner for up to 20 existing applications or registrations that have the identical owner and qualified practitioner. A power of attorney relating to future applications cannot be filed through TEAS.
An applicant or registrant may file a power of attorney on paper that relates to more than one trademark application or registration, or to all existing and future applications and registrations. Someone relying on such a power of attorney must: (1) include a copy of the previously filed power of attorney; or (2) refer to the previously filed power of attorney, specifying: the filing date of
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the power; the application serial number (if known), registration number, or inter partes proceeding number for which the original power of attorney was filed; and the name of the party who signed the power of attorney; or, if the application serial number is not known, submit a copy of the application or a copy of the mark, and specify the filing date. 37 C.F.R. §2.17(d). If the applicant or registrant meets these requirements, the USPTO will accept the power of attorney.
605.03 Associate Powers of Attorney
Once the applicant or registrant has designated a qualified practitioner, the practitioner may sign an associate power of attorney, appointing another qualified practitioner -- including one from a different law firm -- as an additional person authorized to represent the applicant or registrant.
If the applicant or registrant revokes the original power of attorney, the revocation also discharges any associate power signed by the practitioner whose power has been revoked.
If the practitioner who signed an associate power withdraws, the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the USPTO.
605.04 Powers of Attorney Filed After Registration
To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov/teas/index.html. When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records (i.e., TRAM and TARR).
When a new power of attorney is filed on paper after registration, the USPTO scans an image of the document into the Trademark Image Capture and Retrieval System (“TICRS”) and Trademark Document Retrieval (“TDR”) portal, but does not change the attorney information in the USPTO’s automated records unless the registrant concurrently takes a separate action, such as filing an affidavit under §8.
For purposes of recognition as a representative, the USPTO considers a power of attorney to end with registration. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02.
See also TMEP §1612 regarding powers of attorney filed after registration, and TMEP §609.02 et seq. regarding changing the correspondence address after registration.
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606 Revocation of Power of Attorney
37 C.F.R. §2.19(a). Authority to represent an applicant, registrant or a party to a proceeding may be revoked at any stage in the proceedings of a case upon written notification to the Director; and when it is revoked, the Office will communicate directly with the applicant, registrant or party to the proceeding, or with the new attorney or domestic representative if one has been appointed. The Office will notify the person affected of the revocation of his or her authorization.
Once a qualified practitioner has been recognized as the representative of an applicant or registrant, the applicant or registrant may revoke the power by filing a written revocation. To expedite processing, the USPTO recommends that revocations of powers of attorney be filed through TEAS, at http://www.uspto.gov/teas/index.html.
Signature. The revocation must be personally signed by the individual applicant or registrant, or by someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or partner of a partnership). In the case of joint applicants or registrants, all should sign.
A new qualified practitioner cannot sign a revocation of the previous power. A new qualified practitioner may submit a revocation and new appointment of power of attorney through TEAS by e-mailing the text form to the applicant or registrant for electronic signature from within TEAS, or by attaching a .jpg or .pdf image of a handwritten pen-and-ink revocation/appointment signed by the applicant or registrant. See TMEP §611.01(c) regarding electronic signature. A new qualified practitioner should not directly sign the TEAS revocation form.
Effect on Correspondence Address. If the applicant or registrant files a new power of attorney with the revocation, the address contained in the new power of attorney becomes the correspondence address of record. If the applicant or registrant files a revocation of the previous power of attorney without a new power of attorney, correspondence will be sent either: (1) directly to the applicant or registrant or to the correspondence address designated by the applicant or registrant; or (2) if the revocation is transmitted by a qualified practitioner, to the qualified practitioner who signed the cover letter or action accompanying the revocation. See TMEP §§609.02 and 609.02(a).
New Power Treated as Revocation. If the applicant or registrant files a new power of attorney naming a new qualified practitioner as its representative, this will be treated as a revocation of any previous power of attorney, even if the applicant or registrant does not specifically revoke the previous power.
Request to Change Correspondence Address Does Not Revoke Power of Attorney. A written request to change the correspondence address does not
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revoke a power of attorney. See TMEP §604.03 regarding changes of attorney, and TMEP §§609.02 et seq. regarding changes of address.
Processing Revocations Filed After Registration. For purposes of recognition as a representative, the USPTO considers a power of attorney to end with registration. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02.
After registration, if the registrant files a paper request to revoke a power of attorney appointed before registration, the USPTO scans an image of the revocation into TICRS and TDR but does not update the attorney information in its automated records (i.e., TRAM and TARR) unless the registrant concurrently takes an action such as filing an affidavit under §8. See TMEP §1612. When a request to revoke a power of attorney is filed through TEAS after registration, the data from the form is inputted directly into the automated records of the USPTO.
Board Proceedings. See TBMP §116.01 regarding revocation of authority to represent parties to Board proceedings.
607 Withdrawal of Attorney of Record
37 C.F.R. §2.19(b). If the requirements of §10.40 of this chapter are met, an attorney authorized under §11.14 to represent an applicant, registrant or party in a trademark case may withdraw upon application to and approval by the Director.
May Not Prejudice Applicant or Registrant. A qualified practitioner may withdraw from representing an applicant or registrant, but may not withdraw in a way that would prejudice the applicant or registrant. 37 C.F.R. §10.40(a). In re Legendary, Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992) (attorney’s request to withdraw denied where the request was filed on the last day of the period for response to an Office action and attorney stated neither that the applicant was given due notice of the attorney’s withdrawal from employment nor that the attorney had delivered all documents and property in his file concerning the prosecution of the application to the applicant). See 37 C.F.R. §§10.40(b) and (c) regarding mandatory and permissive withdrawal from employment by an attorney.
Form. To expedite processing, the USPTO recommends that all requests to withdraw be filed through TEAS, at http://www.uspto.gov/teas/index.html. The TEAS form can be used to request withdrawal on any application or registration that is currently active. For registrations, the form requires entry of the original application serial number rather than the registration number. If
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filed on paper, the request should be titled “Request for Permission to Withdraw as Attorney of Record.”
Requirements for Request. A request to withdraw must include the following:
(1) A statement of the reason(s) for the request to withdraw;
(2) The application serial number or registration number; and
(3) Either of the following;
• A statement that the practitioner has given due notice to the client that the practitioner is withdrawing from employment and will be filing the necessary documents with the USPTO; that the client was given notice of the withdrawal at least two months before the expiration of the response period, if applicable; that the practitioner has delivered to the client all documents and property in the practitioner’s file concerning the application or registration to which the client is entitled; and that the practitioner has notified the client of any responses or other filings that may be due, and of the deadline (37 C.F.R. §10.40(a)). See In re Slack, 54 USPQ2d 1504 (Comm’r Pats. 2000); or
• If there is more than one qualified practitioner of record, a statement that representation by co-counsel is ongoing.
The request should also include the present mailing address of the practitioner who is withdrawing and the present mailing address of the applicant or registrant.
The requirement for a statement that the client was given notice of the withdrawal at least two months before the expiration of any outstanding response period does not apply where the practitioner states that his or her representation was terminated by the applicant/registrant when less than two months remained in the response period.
The request should be filed soon after the practitioner notifies the applicant or registrant of his or her intent to withdraw.
These requirements apply to all requests to withdraw, whether withdrawal is mandatory or permissive. They also apply where a qualified practitioner was recognized by appearing in person or by filing a document on behalf of the party whom he or she represents (see TMEP §604.01).
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Processing TEAS Requests. Requests to withdraw filed through TEAS are processed electronically, and are automatically granted if they meet the requirements listed above.
Processing Paper Requests. For paper filings, a request for permission to withdraw filed before registration will be handled by the appropriate managing attorney, or, if a notice of allowance has issued and the application is awaiting the filing of a statement of use, by the Supervisor of the ITU/Divisional Unit. After registration, a paper request for permission to withdraw will be handled by the Supervisor of the Post Registration Section.
The managing attorney or supervisor will approve or deny the paper request, notify the applicant or registrant and the practitioner of the approval or denial of the request, and place a copy of this notification in the record. If the request is approved, the managing attorney or supervisor should ensure that the correspondence address is changed in the USPTO’s automated records. It is the responsibility of the managing attorneys or supervisors to establish procedures that permit withdrawal requests to be given priority and acted on promptly.
For paper filings, if the practitioner who seeks to withdraw is also the domestic representative, the managing attorney or supervisor should inquire as to whether the practitioner intends to withdraw as domestic representative. This inquiry should be made by phone or e-mail, if possible. If the practitioner withdraws as domestic representative, the managing attorney or supervisor must ensure that the “Domestic Representative” field in the USPTO’s automated records is updated.
Requests Filed After Registration. For purposes of recognition as a representative, the USPTO considers a power of attorney to end with registration. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02.
After registration, if a practitioner appointed before registration files a paper request to withdraw, the USPTO scans an image of the request into TICRS and TDR but does not update the attorney information in its automated records (i.e., TRAM and TARR) unless the registrant concurrently takes an action such as filing an affidavit under §8. When a proper request to withdraw is filed through TEAS after registration, the request is automatically granted, and the data from the form is inputted directly into the automated records of the USPTO. See TMEP §§605.04 and 1612.
Requests Filed in Abandoned Application. The USPTO will not process a request for permission to withdraw in an abandoned application. When a qualified practitioner files a request to withdraw in an abandoned application, the USPTO scans an image of the request into TICRS and TDR but does not
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update the attorney information in its automated records. See TMEP §1612 regarding withdrawal after registration.
Board Proceedings. See TBMP §§116.02-116.05 regarding withdrawal as the representative of a party to a Board proceeding.
608 Unauthorized Practice
608.01 Actions by Unauthorized Persons Not Permitted
37 C.F.R. §11.5(b)(2). Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an application for trademark registration; preparing an amendment which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.
An individual who is not authorized under 37 C.F.R. §11.14 to practice before the USPTO in trademark cases (see TMEP §§602 et seq.) is not permitted to represent a party in the prosecution of a trademark application, in the maintenance of a registration, or in a proceeding before the USPTO. 5 U.S.C. §§500(b) and (d); 37 C.F.R. §11.14(e).
An individual who does not meet the requirements of 37 C.F.R. §11.14 cannot: prepare an application, response, or other document to be filed in the USPTO; sign amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146, requests to change the correspondence address, or letters of express abandonment; authorize issuance of examiner’s amendments and priority actions; or otherwise represent an applicant, registrant, or party to a proceeding in the USPTO. Presenting an amendment to an application and submitting legal arguments in response to a refusal are examples of representation of the applicant or registrant. 37 C.F.R. §11.5(b)(2).
Exception: A paralegal, legal assistant, or other employee of a qualified practitioner may prepare documents for review and signature by the practitioner.
When an applicant or registrant is represented by a qualified practitioner, the USPTO encourages the practice of direct communication with the appointed practitioner(s). Although paralegals and legal assistants may relay information between the examining attorney and the appointed practitioner(s), they are not authorized to conduct business before the USPTO. For example, paralegals and legal assistants cannot authorize issuance of examiner’s amendments or priority actions, even if only conveying the
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appointed practitioner’s approval by indicating that the appointed practitioner has approved the amendment or action.
Once the USPTO recognizes a qualified practitioner(s) as representing an applicant or registrant, a new qualified practitioner from a different firm is not permitted to represent the applicant or registrant until the applicant or registrant revokes the power of attorney of the previously recognized representative, or the previously recognized representative withdraws. See TMEP §604.03.
An individual who is not authorized under 37 C.F.R. §11.14 may transmit and receive correspondence. Such an individual may also sign a verification on behalf of an applicant or registrant, if he or she meets the requirements of 37 C.F.R. §2.33(a), e.g., has firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or registrant (see TMEP §§611.03(a) and 804.04).
Any person, whether a practitioner or non-practitioner, who presents a document to the USPTO (whether by signing, filing, submitting, or later advocating the document) is subject to 37 C.F.R. §11.18(b). See TMEP §611.01(a).
If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §11.14 is engaging in widespread unauthorized practice by representing applicants or registrants, he or she should bring the matter to the attention of the Administrator for Trademark Policy and Procedure in the Office of the Deputy Commissioner for Trademark Examination Policy (“Administrator”).
See TMEP §§611 et seq. regarding signature on correspondence filed in the USPTO.
608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO
Occasionally, the Director of the USPTO suspends or excludes a particular individual from practice before the USPTO. Notice of the suspension or exclusion is published in the Official Gazette and the decision is posted in the FOIA Reading Room http://des.uspto.gov/Foia/OEDReadingRoom.jsp. A suspended or excluded individual is not a qualified practitioner.
Also, the USPTO sometimes learns that a person who does not meet the requirements of 37 C.F.R. §11.14 is engaged in the widespread unauthorized practice of representing applicants and registrants before the USPTO.
In these cases, the Administrator will notify the USPTO staff accordingly, and the USPTO will send a written notice to the affected applicant or registrant, indicating that:
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(1) The individual is not entitled to practice before the USPTO in trademark matters, and, therefore, may not represent the applicant or registrant;
(2) Any power of attorney is void ab initio;
(3) The individual may not sign responses to Office actions, conduct interviews with USPTO employees or otherwise represent an applicant, registrant, or party before the Office; and
(4) All correspondence concerning the application or registration will be sent to the domestic representative if appropriate, or, alternatively, to the applicant or registrant at its address of record.
The USPTO will change the correspondence address to that of the applicant, registrant, or domestic representative, as appropriate.
If an Office action is outstanding and no response has been received, the examining attorney or Post Registration staff must issue a supplemental action, addressed to the applicant or registrant, that restates any outstanding refusals and/or requirements, includes a new six-month response period, and states that a response signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (see TMEP §§611.06 et seq.), or a qualified practitioner (see TMEP §§602 et seq.) must be submitted within the response period. See TMEP §711.02 regarding supplemental Office actions.
If the examining attorney or Post Registration staff receives a response to an Office action signed by an excluded or suspended practitioner, or a person who appears to be engaged in deliberate or widespread unauthorized practice of law, he or she must prepare a notice of incomplete response, granting the applicant or registrant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b). See TMEP §§611.05 et seq., 712.03, and 718.03(b) for further information.
USPTO employees must also notify the Administrator of the receipt of a document signed by such a person.
609 Correspondence, With Whom Held
37 C.F.R. §2.18 Correspondence, with whom held. (a) If an attorney transmits documents documents, or a written power of
attorney is filed, the Office will send correspondence to the attorney transmitting the documents, or to the attorney designated in the power of attorney, provided that the attorney is an attorney as defined in §11.1 of this chapter.
(b) The Office will not undertake double correspondence. If two or more attorneys appear or sign a document, the Office’s reply will be sent to the
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address already established in the record until the applicant, registrant or party, or its duly appointed attorney, requests in writing that correspondence be sent to another address.
(c) If an application, registration or proceeding is not being prosecuted by an attorney but a domestic representative has been appointed, the Office will send correspondence to the domestic representative, unless the applicant, registrant or party designates in writing another correspondence address.
(d) If the application, registration or proceeding is not being prosecuted by an attorney and no domestic representative has been appointed, the Office will send correspondence directly to the applicant, registrant or party, unless the applicant, registrant or party designates in writing another correspondence address.
See TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.01 Establishing the Correspondence Address
When a trademark application is filed, the USPTO enters into its automated records an address (consisting of a name, street address or post office box, city, state and postal code, foreign country (if applicable), and an e-mail address if provided) where correspondence from the USPTO will be sent. This often differs from the applicant’s address.
The USPTO may send official communications concerning an application by e-mail only if the applicant or the applicant’s qualified practitioner authorizes e-mail communications. See TMEP §304.03.
The USPTO uses the following guidelines in entering the correspondence address in a new application:
• If the application is transmitted by a qualified practitioner, includes a power of attorney designating a qualified practitioner, or includes the name and address of a qualified practitioner, the USPTO will send correspondence to the practitioner;
• If an application is not being prosecuted by a qualified practitioner, but the applicant designates in writing a correspondence address other than its own address, the USPTO will send correspondence to that address if appropriate;
• If an application is not being prosecuted by a qualified practitioner and the applicant has not designated a correspondence address, but a domestic representative has been appointed, the USPTO will send correspondence to the domestic representative if appropriate; or
• If the application is not being prosecuted by a qualified practitioner, no
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domestic representative has been appointed, and the applicant has not designated a different address for correspondence, the USPTO will send correspondence directly to the applicant at its address of record.
37 C.F.R. §2.18.
The USPTO uses these same guidelines to reestablish the correspondence address when a registrant files an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request. The USPTO will update its automated records to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request. Due to the length of time that may elapse between the filing of these documents (which could be ten years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of the previous power. See TMEP §604.02 regarding the duration of recognition as a representative.
The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner. 37 C.F.R. §2.18(b).
If an application or other document is signed by a qualified practitioner, but the submission does not contain a separate address for that practitioner, the USPTO will correspond with the qualified practitioner in care of the correspondence address of record and direct such correspondence to the practitioner’s attention. If an Office action is required, the USPTO will require the practitioner to either specify his or her address for correspondence or affirmatively state that the USPTO should continue to address correspondence to his or her attention in care of the previously submitted correspondence address.
See TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States, TMEP §609.01(a) regarding correspondence in §66(a) applications, TMEP §§609.02 et seq. for information about changing the correspondence address, and TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.01(a) Correspondence in §66(a) Applications
The USPTO will send the first Office action in an application under §66(a) of the Trademark Act to the IB. The IB will send it to the applicant. The USPTO will send subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to any correspondence address provided in a properly signed request to change the correspondence address. See TMEP §1904.02(h) for further information about Office actions in §66(a) applications.
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The USPTO will accept a properly signed notice of change of the correspondence address in a §66(a) application or a registered extension of protection of an international registration to the United States, and will send correspondence to the new address. However, this will not change the representative designated in the international registration, to which the IB sends correspondence. A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. Forms for changing the name or address of the designated representative are available on the IB website at http://www.wipo.int/madrid/en/forms.
See TMEP §§1906.01 et seq. regarding requests to record changes with the IB, and TMEP §§602.03 et seq. regarding foreign attorneys.
609.02 Changing the Correspondence Address
Once the correspondence address is established, the USPTO will generally send correspondence to that address until a written request to change the address is submitted, signed by the practitioner whom the USPTO has recognized, or, if the applicant or registrant is not represented by a qualified practitioner, by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). 37 C.F.R. §2.18(b).
The mere transmittal of a response to an Office action bearing a new address does not effect a change in a correspondence address, except when a new owner takes an action in an application or registration (e.g., files a response to an Office action or statement of use) after recordation of a change of ownership, as discussed in TMEP §609.02(f).
The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner. 37 C.F.R. §2.18(b).
A written request to change the correspondence address does not revoke a power of attorney. See TMEP §606 regarding revocation.
See also TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.02(a) Request to Change Correspondence Address Presumed
The USPTO will construe the following as a written request to change the correspondence address:
(1) If a qualified practitioner transmits documents on behalf of an applicant or registrant who is not already represented by another qualified practitioner from a different firm, the USPTO will construe
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this as including a request to change the correspondence address to that of the practitioner (however, the filing of an “associate power of attorney” or similar document does not change the correspondence address); or
(2) If an applicant or registrant files a properly signed power of attorney (see TMEP §605.01) designating a qualified practitioner, the USPTO will change the correspondence address to that of the practitioner named in the power, even if the applicant or registrant does not file a separate request to change the address.
In these two situations, the USPTO will change the correspondence address to the address of the new qualified practitioner. In all other situations, a written request to change the correspondence address, signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or the qualified practitioner of record, is required. See TMEP §609.02(b) regarding the requirements for a written request to change the correspondence address.
See also TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.02(b) Requirements for Request to Change Correspondence Address
A request to change the correspondence address must be in writing. Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, only that practitioner or another qualified practitioner from the same United States firm may sign a request to change the address, unless the applicant or registrant files a revocation of the previous power and/or a new power of attorney, or the previously recognized practitioner files a request to withdraw. 37 C.F.R. §11.18(a).
If the applicant or registrant is not represented by a qualified practitioner, the request must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or registrants, all should sign. See 37 C.F.R. §11.14(e); TMEP §611.02.
A request to change the correspondence address cannot be entered by examiner’s amendment.
To expedite processing, notices of change of correspondence address (including changes of e-mail correspondence address) should be filed through TEAS, at www.uspto.gov/teas/index.html. The TEAS form can be used to change the correspondence address on any application or registration that is
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currently active. When a notice is filed through TEAS, the data from the form is inputted directly into the automated records of the USPTO.
If two or more qualified practitioners are named in a power, any of the named practitioners can sign and submit a notice of change of correspondence address setting forth a new address, even if the new address is at a new firm. It is not necessary to submit a new power signed by the applicant or registrant when a named practitioner(s) changes firms.
See TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.02(c) Processing Requests to Change the Correspondence Address Before Registration
Once the correspondence address is established for a particular application, the USPTO will generally not change it unless there is a written request to do so, signed by the applicant or the qualified practitioner of record. The mere transmittal of a response to an Office action bearing a new address for an applicant or an applicant’s qualified practitioner does not effect a change in a correspondence address. See TMEP §609.02(b) for further information about the requirements for a written request to change the correspondence address, and TMEP §609.02(a) for discussion of situations in which a request to change the correspondence address is presumed.
When the request is filed through TEAS, the data from the form is inputted directly into the automated records of the USPTO. When a request to change the correspondence address is filed on paper, the USPTO manually enters the new correspondence address into its automated records and places the request in the application record, but does not send a confirmation or other acknowledgment of the request to change the correspondence address. The applicant may check the TARR database at http://tarr.uspto.gov to determine whether the change of address has been entered into the USPTO’s automated records.
The USPTO will not process a request to change the correspondence address in an abandoned application, unless submitted in conjunction with a petition to revive or request for reinstatement. When an applicant files a request to change the correspondence address in an abandoned application, the USPTO simply places the request in the record.
609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations
The TEAS change of correspondence address form can be used to change the correspondence address for more than one application or registration. An applicant or registrant may submit up to twenty (20) application serial numbers at one time. For registered marks, the TEAS form requires entry of
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the original application serial number rather than the registration number. Requests to change the address for more than twenty applications/registrations cannot be submitted in a single TEAS form.
Global address updates, i.e. requests to change an address in every application or registration in which it appears, will not be accepted.
609.02(e) Changing the Correspondence Address After Registration
As noted in TMEP §609.01, the USPTO reestablishes the correspondence address upon the examination of an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request, even if there is no new power of attorney or request to change the correspondence address. The USPTO will update its automated records to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request, and update the correspondence address to that of the qualified practitioner. If the registrant is not represented by a qualified practitioner, the USPTO will update its automated records to indicate the registrant’s address as shown in the affidavit, renewal application, or §7 request as the correspondence address of record. See TMEP §604.02 regarding the duration of recognition as a representative.
Once the USPTO establishes a correspondence address upon examination of an affidavit, renewal application, or §7 request, a written request to change the address is required to effect a change of address during the pendency of that filing. TMEP §604.02. See TMEP §609.02(b) regarding the requirements for a written request to change the correspondence address.
Owners of registrations are encouraged to promptly notify the USPTO of any changes of address. To expedite processing, the USPTO recommends that the notice of change of address be filed through TEAS, at www.uspto.gov/teas/index.html. The TEAS form can be used to change the correspondence address on any registration that is currently active, but requires submission of the original application serial number rather than the registration number. When the notice is filed through TEAS, the data from the form is inputted directly into the USPTO’s automated records.
The USPTO will not process a request to change the correspondence address in a cancelled or expired registration, unless submitted in conjunction with a petition or request for reinstatement of the registration. When a registrant files a request to change the correspondence address in a cancelled or expired registration, the USPTO simply places the request in the record.
See TMEP §604.03 regarding change of attorney, and TBMP §§117 et seq. for information about correspondence in Board proceedings.
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609.02(f) Correspondence After Recordation of Change of Ownership
For purposes of recognition as a representative, the USPTO considers a power of attorney to end when ownership changes. TMEP §604.02.
Recordation of an assignment (or other document changing title) with the Assignment Services Branch does not automatically update the correspondence address in the automated records of the Trademark Operation (i.e., TRAM and TARR). See TMEP §503.01(b). To ensure that the automated records of the Trademark Operation are updated to reflect the correct correspondence address, new owners should file a separate written request with the Trademark Operation to change the address, preferably through TEAS.
If the new owner does not file a separate written request with the Trademark Operation to change the correspondence address, but instead takes an action in connection with an application or registration by filing a properly signed communication (e.g., a response to an Office action or statement of use) bearing a new correspondence address, the USPTO may update its automated records to reflect the address of the new owner or the new owner’s qualified practitioner even if the new owner does not specifically request a change of the correspondence address. In this situation, the USPTO will reestablish the correspondence address, using the guidelines set forth in TMEP §609.01. If the new owner is not represented by a qualified practitioner, the correspondence address will be changed to reflect the address of the applicant or registrant, as set forth in the written communication.
If a new qualified practitioner appears in person or signs a document on behalf of the new owner, the USPTO will recognize the new practitioner even absent a new power of attorney or revocation of the previous power, pursuant to 37 C.F.R. §2.17(c). See TMEP §604.02. However, if the previously recognized qualified practitioner appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that practitioner. The previously recognized practitioner does not have to file a new power of attorney signed by the new owner.
See also TMEP §§505 et seq. regarding requests to update ownership information after recordation of a change of ownership, and TBMP §§117 et seq. regarding correspondence in Board proceedings.
609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address
The owner of an application or registration has a duty to maintain a current and accurate correspondence address. If the correspondence address changes, the USPTO must be promptly notified in writing, preferably through
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TEAS. See 37 C.F.R. §2.18. This also applies to e-mail addresses, if the applicant or registrant has authorized the USPTO to send correspondence by e-mail (see TMEP §304.03).
609.04 Correspondence with Parties Not Domiciled in the United States
If an applicant or registrant has not clearly stated a preferred correspondence address, the USPTO will process correspondence as follows:
• If an applicant or registrant has appointed a qualified practitioner (see TMEP §§602 et seq.), the USPTO will send correspondence to that practitioner.
• If the applicant or registrant is not represented by a qualified practitioner, and the applicant or registrant has appointed a domestic representative, the USPTO will send correspondence to the domestic representative if appropriate, unless the applicant or registrant designates in writing another correspondence address. However, the domestic representative is not authorized to prosecute an application or represent a party in a proceeding before the USPTO, unless the domestic representative is a qualified practitioner who has been recognized by the USPTO as the representative of the applicant or registrant. See TMEP §610 regarding domestic representatives.
• If the applicant or registrant is not represented by a qualified practitioner, and the applicant or registrant does not designate a domestic representative, the USPTO will send correspondence directly to the applicant or registrant at its foreign address, unless the applicant or registrant designates in writing another correspondence address.
See TMEP §609.01(a) regarding correspondence in §66(a) applications.
610 Designation of Domestic Representative by Parties Not Domiciled in the United States
Designation of Domestic Representative Encouraged. An applicant, registrant, or party to a proceeding before the USPTO who is not domiciled in the United States may file a document designating the name and address of a domestic representative on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §§1051(e), 1058(f), 1059(c), 1060(b), and 1141h(d). The USPTO encourages parties who do not reside in the United States to designate domestic representatives, but it is not mandatory. If the applicant, registrant, or party does not designate a domestic representative, the USPTO will not require a designation.
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May be Natural or Juristic Person. The person designated as a domestic representative may be a natural person or a juristic person as defined in 15 U.S.C. §1127.
Not the Same as Power of Attorney. The designation is not the same as a power of attorney. The designation serves a different purpose, namely, to provide a contact and address for service of process. The designation of a domestic representative does not authorize the person designated to practice before the USPTO, e.g., to prepare or prosecute the application, or represent a party in a proceeding before the USPTO. 37 C.F.R. §§2.24 and 11.5(b)(2). Similarly, a power of attorney does not serve as a designation of a domestic representative, unless the power of attorney specifically states that the attorney is also the domestic representative on whom may be served notices or process in proceedings affecting the mark.
Requirements. A designation of domestic representative must include the name and address of the person designated and a clear statement that the party intends to designate this person as a domestic representative upon whom notices or process affecting the mark may be served.
Signature. The designation must be in writing. If set forth in the initial application, a designation of domestic representative may be signed by a person properly authorized to sign the application on behalf of applicant. A person who is properly authorized to sign an application is:
(1) A person with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or party; or
(3) An attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant or party.
37 C.F.R. §2.33(a); TMEP §804.04.
If filed apart from the initial application, the designation should be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
Duration. An appointment of domestic representative remains in effect unless specifically revoked or supplanted by appointment of a new domestic representative.
Revocation. An applicant or registrant may revoke a designation of domestic representative. A revocation should be signed by the individual applicant or
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registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
Withdrawal. A domestic representative may withdraw, in a written document signed by an individual domestic representative, or by someone legally authorized to bind a juristic domestic representative.
Form. To expedite processing, the USPTO recommends that designations and revocations of domestic representative be filed through TEAS, at http://www.uspto.gov/teas/index.html.
See TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States.
611 Signature on Correspondence Filed in the United States Patent and Trademark Office
611.01 Signature and Certificate
611.01(a) Signature as Certificate
37 C.F.R. §11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and other non- patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed by such practitioner, in compliance with §1.4(d)(1) of this subchapter.
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after
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an inquiry reasonable under the circumstances, (i) The paper is not being presented for any improper purpose, such as to
harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of--
(1) Striking the offending paper; (2) Referring a practitioner’s conduct to the Director of Enrollment and
Discipline for appropriate action; (3) Precluding a party or practitioner from submitting a paper, or presenting
or contesting an issue; (4) Affecting the weight given to the offending paper; or (5) Terminating the proceedings in the Office. (d) Any practitioner violating the provisions of this section may also be
subject to disciplinary action.
611.01(b) Requirements for Signature
All correspondence that requires a signature must bear either a handwritten signature personally signed in permanent ink by the person named as the signatory, or an “electronic signature” that meets the requirements of 37 C.F.R. §2.193(c)(1)(iii), personally entered by the signatory. The USPTO will accept a signature that meets the requirements of 37 C.F.R. §2.193(c)(1)(iii) on all correspondence, whether filed on paper, by fax, or through TEAS or the Electronic System for Trademark Trials and Appeals (“ESTTA”). See TMEP §611.01(c) regarding the signature of documents filed electronically.
All documents must be personally signed. Another person (e.g., paralegal, legal assistant, secretary) may not sign the name of an attorney or other
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authorized signatory. See In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990).
The name of the person who signs a document should be set forth in printed or typed form immediately below or adjacent to the signature, or identified elsewhere in the filing (e.g., in a cover letter or other document that accompanies the filing). If the signatory’s name is not set forth in a document, the USPTO may require that it be stated for the record. This information can be entered through a note in the “Notes-to-the-File” section of the record.
Documents must be signed by a proper party. See TMEP §§611.02 and 611.03 et seq. for further information.
See TBMP §106.02 regarding signature of documents filed in Board proceedings, and TBMP §106.03 regarding the form of submissions in Board proceedings.
611.01(c) Signature of Documents Filed Electronically
In a document filed through TEAS or ESTTA, the party filing the document does not apply a conventional signature. Instead, the filer does one of the following:
(1) The filer enters any combination of letters, numbers, spaces, and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (“/”) symbols. 37 C.F.R. §2.193(c)(1)(iii). Examples of acceptable signatures include /john doe/, /drl/, and /544- 4925/. The signatory’s name should be set forth beneath the signature;
(2) The document is filled out online, printed in text form, and mailed or faxed to the signatory. The signatory signs the printed document in the traditional pen-and-ink manner. The signature portion, along with a declaration, if required, is scanned to create a .jpg or .pdf image file and attached to the document for electronic submission;
(3) The document is completed online, and e-mailed to the signatory for electronic signature from within TEAS. The signatory signs the document and it is automatically returned via TEAS to the party who requested the signature.
The USPTO will also accept a signature that meets the requirements of paragraph (1) above on documents that are filed on paper.
All documents must be personally signed. The person(s) identified as the signatory must manually enter the elements of the electronic signature. Another person (e.g., paralegal, legal assistant, or secretary) may not sign the name of a qualified practitioner or other authorized signatory. Just as signing
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the name of another person on paper does not serve as the signature of the person whose name is written, typing the electronic signature of another person is not a valid signature by that person.
The Trademark Trial and Appeal Board has held that an electronic signature on an electronic transmission through ESTTA pertains to all the attachments to the transmission. PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005).
See TBMP §106.02 regarding signature of documents filed in Board proceedings, and TBMP §106.03 regarding the form of submissions in Board proceedings.
611.02 Signatures by Authorized Parties Required
All documents filed in the USPTO must be properly signed. The USPTO staff must review the application or registration record to determine whether the applicant or registrant is represented by a qualified practitioner, and must ensure that all documents are properly signed.
Verifications of facts on behalf of an applicant or registrant must be personally signed by someone meeting the requirements of 37 C.F.R. §2.33(a) or §2.161(b). See TMEP §§611.03(a) and 804.04.
Other documents must be personally signed by the applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or by a qualified practitioner. This includes amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146, letters of express abandonment, requests to divide, and requests to change the correspondence address. Generally, if the applicant or registrant is represented by a qualified practitioner, the practitioner must sign. 37 C.F.R. §11.18(a). This applies to both in-house and outside counsel. If the applicant or registrant is not represented by a qualified practitioner, the document must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
See TMEP §§611.03 et seq. for guidelines as to the proper person to sign specific documents, TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of legal entities, and TMEP §611.04 for examples of authorized and potentially unauthorized parties.
611.02(a) TEAS Checkoff Boxes
On some of the TEAS forms, the person signing the response must confirm that he or she is authorized to sign the document by clicking one of three
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buttons indicating that he or she is: (1) an unrepresented applicant or registrant who has not previously been represented in this matter, or was previously represented by a qualified practitioner who has withdrawn or whose power has been revoked; (2) an attorney who is a member in good standing of the bar of the highest court of a U.S. state, and that if the applicant or registrant was previously represented by a different qualified practitioner, the previous power has been revoked, or the previously appointed practitioner has withdrawn; or (3) an authorized Canadian attorney or agent who has been granted recognition by OED, and if the applicant or registrant was previously represented by a different qualified practitioner, the previous power has been revoked, or the previously appointed practitioner has withdrawn. The USPTO will accept these statements unless there is conflicting information in the record or the USPTO is otherwise made aware of conflicting information.
Example: If an attorney lists a foreign address and checks the box indicating that he or she is a member in good standing of the bar of the highest court of a U.S. state, the USPTO will accept this statement, as long as there is no conflicting information in the record.
Example: If an attorney indicates that the applicant was previously unrepresented, or that the applicant was previously represented by another attorney who has withdrawn or whose power has been revoked, when, in fact, there is another attorney of record whose power has not been revoked, the USPTO must inquire into the signatory’s authority to sign, because there is inconsistent information in the record.
Example: If the signatory identifies himself or herself as an “attorney,” but does not check the box confirming that he or she is a member in good standing of the bar of the highest court of a U.S. state, the USPTO will inquire into the signatory’s authority to sign, because there is inconsistent information in the record.
Example: If the signatory checks the box indicating that he or she is a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), but sets forth a title that the USPTO would not normally accept (e.g., accountant, paralegal, or trademark administrator), the USPTO will inquire into the signatory’s authority to sign, because there is inconsistent information in the record.
Exception: If the signatory indicates that he or she is a Canadian attorney or agent who has been granted recognition by OED, the USPTO staff must still check the OED list to verify this information. See TMEP §602.03(a) for further information about Canadian attorneys and agents.
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611.03 Proper Person to Sign
This section provides guidelines as to the proper person to sign various documents. Unless otherwise specified by law, the following guidelines should be followed.
611.03(a) Verification
A verification must be sworn to or supported by a declaration signed by the owner of the application or registration or a person properly authorized to verify facts on behalf of the owner. A person who is properly authorized to verify facts on behalf of an owner is:
• A person with legal authority to bind the owner;
• A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
• A qualified practitioner who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
See 37 C.F.R. §§2.33(a), 2.153, 2.161(b), 2.167(a). Generally, the Office does not question the authority of the person who signs an affidavit or declaration verifying facts, unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §804.04.
The broad definition of a “person properly authorized to sign on behalf of an owner” in 37 C.F.R. §§2.33(a) and 2.161(b) applies only to verifications of facts, such as applications for trademark registration, affidavits under §8 or §71 of the Trademark Act, amendments to allege use under 37 C.F.R. §2.76, statements of use under 37 C.F.R. §2.88, and declarations in support of substitute specimens or claims of acquired distinctiveness. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, amendments to applications, letters of express abandonment, petitions to the Director under 37 C.F.R. §2.146, consent agreements, or changes of correspondence address. For example, the “Trademark Administrator” of the applicant, who has firsthand knowledge of the facts alleged in the application, may sign the verified statement in support of the application, but unless he or she has legal authority to bind the applicant (e.g., is a corporate officer or general partner of a partnership), or is a qualified practitioner, he or she may not sign responses to Office actions or agree to examiner’s amendments.
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611.03(b) Responses, Amendments to Applications, Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide
These documents must be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner, in accordance with the following guidelines:
• If the applicant or registrant is represented by a qualified practitioner, the practitioner must sign, except where the owner is required to sign the correspondence; or
• If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant must sign. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
See 37 C.F.R. §§2.62, 2.68, 2.74, 2.87(f), 2.163(b), 2.171(b)(1), 2.184(b)(2), 11.14(e), and 11.18(a).
See TMEP §712.01 for further guidance as to who may sign a response to an examining attorney’s Office action.
611.03(c) Powers of Attorney and Revocations of Powers of Attorney
Powers of attorney and revocations of powers of attorney must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant. In the case of joint applicants or registrants, all should sign. Once the applicant or registrant has designated a qualified practitioner(s), the named practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to prosecute the application or registration. See TMEP §§605.01, 605.03, and 606.
611.03(d) Petitions to Revive
A petition to revive under 37 C.F.R. §2.66 must be signed by someone with firsthand knowledge of the facts regarding unintentional delay. 37 C.F.R. §§2.66(b)(2) and (c)(2); TMEP §1714.01(e). Any response to an Office action accompanying the petition must be signed by a qualified practitioner, or by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) if the applicant is not represented by an authorized practitioner (see TMEP §611.03(b)).
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611.03(e) Petitions to the Director
A petition to the Director under 37 C.F.R. §2.146 must be signed by the petitioner, someone with legal authority to bind the petitioner, or a qualified practitioner, in accordance with the following guidelines:
• If the petitioner is represented by a qualified practitioner, the practitioner must sign; or
• If the petitioner is not represented by a qualified practitioner, the individual petitioner or someone with legal authority to bind a juristic petitioner must sign. In the case of joint petitioners, all should sign.
37 C.F.R. §§2.146(c), 11.14(e), and 11.18(a); TMEP §1705.07.
611.03(f) Amendment, Correction, or Surrender of Registration
A request for correction or amendment of a registration or a surrender of a registration must be signed by the individual owner of the registration, someone with legal authority to bind a juristic owner, or a qualified practitioner. 37 C.F.R. §§2.173(a), 2.173(b)(2), and 2.175(b)(2). In the case of joint owners who are not represented by a qualified practitioner, all should sign.
611.03(g) Renewal Applications
A renewal application must be signed by the registrant or the registrant’s representative. 37 C.F.R. §2.183(a). See TMEP §§1606.06 and 1606.07 regarding filing and execution of renewal applications.
611.03(h) Designations and Revocations of Domestic Representative
Designation. An applicant or registrant may designate a domestic representative by either:
• Setting forth the name and address of the domestic representative in the initial application for registration; or
• Filing a separate designation setting forth the name and address of the domestic representative, signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner. In the case of joint applicants or registrants, all should sign.
Revocation. A revocation of domestic representative should be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner.
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See TMEP §610.
611.03(i) Requests to Change Correspondence Address in an Application or Registration
A request to change the correspondence address in an application or registration must be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner, in accordance with the following guidelines:
• If the applicant or registrant is represented by a qualified practitioner, the practitioner must sign; or
• If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant must sign. In the case of joint applicants or joint registrants, all should sign.
See 37 C.F.R. §§11.14(e) and 11.18(a); TMEP §609.02(b).
611.04 Examples of Authorized and Potentially Unauthorized Signatories
Set forth below is a list of examples of parties who are authorized and potentially unauthorized to sign responses, petitions to the Director under 37 C.F.R. §2.146, amendments, letters of express abandonment, and other documents on behalf of an applicant or registrant. This list is not exhaustive.
Authorized Parties. In the following situations, a signatory is presumed to be authorized to represent an applicant or registrant:
• Person identifies him/herself as an officer of a pro se applicant or registrant (e.g., “President,” “Vice President,” “Treasurer,” “Secretary”) of a domestic corporation or the equivalent for another type of business entity (e.g., “Partner” for a partnership, “Member” or “Principal” for a Limited Liability Company).
• Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney in good standing of the bar of the highest court of any state in the United States who is practicing abroad (e.g., Mary Smith, member of New York State Bar, with offices in Nassau, Bahamas).
• Person signing for a foreign corporation identifies him/herself as “general counsel” or “in-house counsel” AND a “corporate officer” or another corporate officer position (e.g., “Secretary,” “Treasurer,” or “Vice President”).
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• Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney with a United States law firm or as “general counsel” or “in-house counsel” of a United States applicant.
• Person signing is a different attorney from the same United States- based firm as the current attorney of record.
• Person signing on behalf of a Canadian applicant or registrant is a Canadian trademark attorney or agent whom OED has recognized as qualified to represent parties located in Canada (see TMEP §602.03(a)).
• Person signing identifies him/herself as an “officer” of a pro se corporate applicant.
Potentially Unauthorized Parties. In the following situations, a signatory is presumed to be unauthorized to represent an applicant or registrant:
• Person signing provides no title or position (e.g., applicant is Jack Smith, an individual citizen of the United States, and Mary Jones signs the response; or applicant is ABC Corporation, and Bill Miller, President, signs the original application, but Dave Wilson, with no listed title or position, signs the response).
• Person signing appears to be a foreign attorney (e.g., “solicitor” or “barrister” for a foreign entity), or is a foreign law consultant with a law firm in the United States.
• Person signing identifies him/herself as a non-attorney representing applicant or registrant in some other capacity (e.g., accountant, paralegal, trademark administrator, business manager, personal assistant, or legal secretary).
• Person signing provides the address of a foreign firm.
• Person signing in an application or registration owned by a foreign entity identifies him/herself as “attorney for applicant,” “attorney at law,” or similar language, but does not specify an address or firm.
• Person signing identifies him/herself as “attorney-in-fact.”
• Person signing in an application or registration owned by a foreign entity identifies him/herself as “in house counsel” or “general counsel,” with no other indication of officer status or recognition to practice in the United States or before the USPTO per 37 C.F.R. §§11.14(a) or (c).
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• Person signing identifies him/herself as “representative of,” “agent for,” or “representing” applicant or registrant, with no other explanation.
• Person signing identifies him/herself as an “authorized signatory” but provides no other indication of the nature of the signer’s relationship to applicant or registrant.
• Person signing is a new attorney from a different firm, when the applicant or registrant had previously appointed a qualified practitioner and no new power of attorney or revocation of the previously appointed power has been made of record.
611.05 Processing Documents Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney
When examining a document filed in connection with a trademark application or registration, the USPTO staff must ensure that all documents are signed by a proper party. See TMEP §611.02.
When it appears that a response to an Office action is signed by an improper party, the USPTO staff must treat the response as incomplete. See TMEP §611.05(a).
When it appears that a document other than a response to an Office action (e.g., a proposed amendment to an application that is not responsive to an Office action, a petition to the Director under 37 C.F.R. §2.146, or an express abandonment) is signed by an improper party, the USPTO will notify the applicant or registrant that no action will be taken on the document, unless the applicant or registrant either: (1) establishes the signatory’s authority; or (2) submits a properly signed document.
See TBMP §106.02 for information about signature of documents filed in Board proceedings.
611.05(a) Notice of Incomplete Response When Authority of Person Signing Response is Unclear
If it appears that a response to an examining attorney’s Office action is signed by an improper party, the examining attorney must treat the response as an incomplete response, and grant the applicant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b). The applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. These same principles and procedures apply to responses to Office actions issued by other USPTO employees (e.g., staff in the Post Registration Section, ITU/Divisional Unit, Madrid Processing Unit, or Office of Petitions).
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See also TMEP §712.03.
611.05(b) Replying to a Notice of Incomplete Response
If the person who signed the response is an authorized signer, the person may simply telephone or send an e-mail message to clarify the record, and the USPTO staff will make an appropriate note in the “Notes-to-the-File” section of the record, review the previously submitted response, and take the appropriate action.
A proper reply to a notice of incomplete response should state the nature of the relationship of the signer to the applicant or registrant. If the signer has legal authority to bind the applicant or registrant, the person should so state, and should set forth his or her title or position. If the signer is an attorney who may practice before the USPTO pursuant to 37 C.F.R. §11.14(a), the attorney should identify himself or herself as an attorney and indicate the bar of the U.S. state of which he or she is a member in good standing. If the signer meets the requirements of either 37 C.F.R. §§11.14(b) or (c), the person should explain how he or she meets these requirements. For example, a Canadian attorney or agent recognized to practice before the USPTO in trademark cases by OED (see TMEP §602.03(a)) may simply state he or she has received recognition by OED as a Canadian practitioner under §§11.14(c) and (f).
In a pending application, if the person who signed the response is not an authorized signer, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) may telephone the examining attorney to authorize such an amendment. Otherwise, when the person who signed the response is not an authorized signer, the applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant, or a qualified practitioner. See TMEP §§611.03(b), 611.06 et seq., and 712.01 regarding the proper party to sign a response to an Office action.
See TMEP §604.03 regarding changes of attorney.
611.05(c) Unsatisfactory Response or Failure to Respond
Pending Applications. In a pending application, if an unsatisfactory response or no response is received to the notice of incomplete response, the USPTO will abandon the application for incomplete response. See TMEP §718.03(a) for procedures for holding an application abandoned for failure to respond completely.
Post Registration. If there is an inadequate response or no response to a notice of incomplete response issued in connection with an affidavit of use or
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excusable nonuse under §8 or §71, or a §9 renewal application, the USPTO will notify the registrant that the affidavit or renewal application remains unacceptable, and that the registration will be cancelled in due course. In the case of a §7 request, the USPTO will notify the registrant that the request for amendment or correction is abandoned.
611.06 Guidelines on Persons With Legal Authority to Bind Certain Juristic Entities
611.06(a) Joint Owners
Joint owners are individual parties and not a single entity. Where a document must be signed by someone with legal authority to bind joint owners, the document should be signed by all the owners.
611.06(b) Signature by Partnership
Where a document must be signed by someone with legal authority to bind a partnership, a general partner must sign. Signature by all the general partners is not necessary. If the partnership is comprised of general partners who are juristic entities (e.g., the general partners are corporations), someone with legal authority to bind that type of juristic entity must sign.
In appropriate cases, a document filed by a partnership may be signed by an official other than a general partner, if the record contains an explanation or documentation indicating that the person signing the document has legal authority to bind the partnership.
611.06(c) Signature by Joint Venture
Where a document must be signed by someone with legal authority to bind a joint venture, each party to the venture must sign. Although a joint venture has many attributes of a partnership, it is a special partnership, which is very limited in nature and scope. Generally, signature by each party to the joint venture is necessary.
In appropriate cases, a document filed by a joint venture may be signed by a general manager or other official rather than by each of the joint venturers, if the applicant or registrant states that the person who signed has legal authority to bind the joint venture under relevant state law.
611.06(d) Signature by Corporation
Where a document must be signed by someone with legal authority to bind a corporation, a corporate officer must sign. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws.
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The usual titles for officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer. In some organizations, the Treasurer is called a Comptroller or Controller, and these terms are acceptable. In Maine and Massachusetts the term “Clerk” identifies an officer of a corporation.
Modifications of these basic titles are acceptable if they include the officer title. Titles such as Vice-President for Sales, Executive Vice-President, Assistant Treasurer, Executive Secretary, and Administrative Secretary are acceptable.
The signature of the “Chairman” or “Chairman of the Board of Directors” is also acceptable, but not the signature of an individual director (e.g., the Vice- Chairman of the Board). The terms “Executive Secretary” and “Administrative Secretary” are acceptable because they include the officer-title “Secretary.”
Some titles are generally not accepted because they usually do not identify officers. For instance, a General Manager, or any other type of manager, is usually merely an employee, not an officer.
If the applicant or registrant states that the person who signed the response is authorized to bind the applicant or registrant under the articles of incorporation or bylaws, the USPTO will accept the signature.
A corporation cannot delegate authority to sign to someone who is not a corporate officer. In re Textron, Inc., 183 USPQ 301 (Comm'r Pats. 1974). Therefore, documents purporting to authorize representation, even if signed by officers, will not be accepted as establishing authority of a person who does not have authority to legally bind the corporation under its bylaws or articles of incorporation.
When the applicant or registrant is a corporation, a statement that the signatory is an “officer” or “duly authorized officer” of the corporation is acceptable. However, it is unacceptable to state that the person who signed the verification is an “authorized signatory.”
611.06(e) Signature by Foreign Companies and Corporations
There are significant differences between the legal entities established under the laws of the United States and legal entities established and recognized under the laws of foreign countries, and the titles and duties of officers of foreign corporations and companies often differ from those in the United States. In the case of foreign entities that are in the nature of corporations, the USPTO will accept the signature of a person considered to be equivalent to an officer under the law of the foreign country. Indication of a title identifying the signer as a type of officer – such as “Legal Officer” or “Information Officer” – is also sufficient.
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In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer or the equivalent of an officer.
The term “Procurist” is used in a number of countries to indicate an officer. For British companies, the terms “Registrar” and “Confidential Clerk” are the equivalent of officers.
If the applicant or registrant states that the person who signed the response holds a position that is the equivalent of an officer of a United States corporation, the USPTO will accept the signature.
Simply stating that a person has been granted authority to act on behalf of the applicant or registrant is insufficient. Documents purporting to authorize representation, even if signed by officers, will not be accepted as establishing the authority of a person who is not the equivalent of an officer. The applicant or registrant must state that the signatory has authority to legally bind the applicant or registrant under its bylaws or articles of incorporation.
611.06(f) Signature by Unincorporated Association
For organizations that are less formally organized than corporations (e.g., fraternal societies, unions, unincorporated associations, and governmental bodies), the titles for officers are less standardized. These organizations frequently use more individualistic terms for titles than the terms customarily used by corporations, and the officer positions themselves may not be as clearly or as formally provided for as is the case with corporations. Regardless of how unfamiliar the title is or how informal the position seems to be, the USPTO will accept the signature if the applicant or registrant states on the record that the signer has, within the framework of the particular organization, authority equivalent to that of an officer to act on behalf of the organization, i.e., has authority to legally bind the applicant or registrant under its bylaws or articles of formation. Some titles that have been accepted are Director, National Director, National Commander, Permanent Chairman, International Sponsor, Supreme Ruler, Royal Impresario, and Chairman of the Steering Committee.
611.06(g) Signature by Limited Liability Company
A limited liability company (“LLC”) has attributes of both a corporation and a partnership. See TMEP §803.03(h). Laws vary to some extent as to the authority conferred on various individuals associated with the limited liability company. Generally, a “manager” has authority equivalent to an officer in a corporation. Therefore, anyone identified as a manager, or equivalent, may sign. In addition, anyone with a corporate-officer-type title may sign. In some states, the members, who are the owners, also have authority to act on behalf of the limited liability company.
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611.06(h) Signature by Limited Liability Partnership
A limited liability partnership (“LLP”) has attributes of both a partnership and a corporation. See TMEP §803.03(k). Laws vary to some extent as to the authority conferred on various partners associated with the limited liability partnership. Generally, all partners are recognized as having general agency authority to bind the partnership in the ordinary course of business. Therefore, anyone identified as a partner may sign.
Many states provide for the filing of a Statement of Partnership Authority which specifically names partners having authority and/or limits the authority of certain individuals. If an individual who is not a named partner of the LLP has been recognized as having authority to bind the LLP, that person may sign, and should indicate his or her position as an individual designated in the LLP’s Statement of Partnership Authority.
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Chapter 700 Procedure for Examining Applications
701 Statutory Authority for Examination
702 Order of Work
702.01 Order of Examination
702.02 “Special” Applications
702.03 Related Applications
702.03(a) Companion Applications
702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks
702.03(a)(ii) Companion Applications Previously Assigned
702.03(a)(iii) Companion Registrations
702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition
702.03(b) Conflicting Applications
703 USPTO Does Not Issue Duplicate Registrations
704 Initial Examination
704.01 Initial Examination Must be Complete
704.02 Examining Attorney’s Search
704.03 Supervisory Examining Attorney May Indicate Action for Non- Signatory Examining Attorney
705 The Examining Attorney’s Letter or Action
705.01 Language in Examining Attorney’s Letter
705.02 Examining Attorneys Should Not Volunteer Statements
705.03 Citation of Conflicting Marks
705.04 Reference to Matter in Printed or Online Publications
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705.05 Citation of Decisions and USPTO Publications
705.06 Reviewing and Signing of Letters
705.07 Processing Outgoing Office Actions
705.08 Six-Month Response Clause
706 New Matter Raised by Examining Attorney After First Action
706.01 “Clear Error”
707 Examiner’s Amendment
707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney
707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney
707.03 Form of the Examiner’s Amendment
708 Priority Action
708.01 Priority Action Defined
708.02 Discussion of Issues and Agreements
708.03 Form of the Priority Action
708.04 Refusal of Registration in Priority Action
708.05 Combined Examiner’s Amendment/Priority Action
709 Interviews
709.01 Personal Interviews
709.02 Persons Who May Represent Applicant in an Interview
709.03 Making Substance of Interview of Record
709.04 Telephone and E-Mail Communications
709.05 Informal Communications
709.06 Interviews Prior to Filing Application
710 Evidence
710.01 Evidence Supporting Refusal or Requirement
710.01(a) Evidence From Research Database
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710.01(b) Internet Evidence
710.01(c) Record Must Be Complete Prior to Appeal
710.02 Search for Evidence Indicating No Refusal or Requirement Necessary
710.03 Evidence of Third-Party Registrations
711 Deadline for Response to Office Action
711.01 Time May Run from Previous Action
711.02 Supplemental Office Action Resetting Response Period
712 Signature on Response to Office Action
712.01 Persons Who May Sign Response
712.02 Unsigned Response
712.03 Response Signed by an Unauthorized Person
713 Examination of Amendments and Responses to Office Actions
713.01 Previous Action by Different Examining Attorney
713.02 Noting All Outstanding Refusals or Requirements
713.03 Response to Applicant’s Arguments
714 Final Action
714.01 Not Permissible on First Action
714.02 Not Permissible on Suspension
714.03 When Final Action is Appropriate
714.04 Form of the Final Action
714.05 Delineating New Issues Requiring Issuance of Nonfinal Action
714.05(a) Unacceptable Amendment Proposed By Applicant
714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness
714.05(a)(ii) Amendment of Identification of Goods/Services
714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application That Has Matured Into Registration
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714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal
714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce
714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
714.06 Applicant’s Recourse When Final Action is Premature
715 Action After Issuance of Final Action
715.01 Proper Response to Final Action
715.02 Action After Final Action
715.03 Request for Reconsideration After Final Action
715.03(a) Examining Attorney’s Action When No New Issue is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(c) Time for Appeal Runs from Issuance Date of Final Action
715.04 Request for Reconsideration Filed in Conjunction With Notice of Appeal
715.04(a) Examining Attorney's Action When No New Issue is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed
715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
716 Suspension of Action by USPTO
716.01 Form of Suspension Notice
716.02 Circumstances Under Which Action May Be Suspended
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716.02(a) Applicant’s Petition to Cancel Cited Registration
716.02(b) Submission of Copy of Foreign Registration in §44(d) Application
716.02(c) Conflicting Marks in Pending Applications
716.02(d) Inter Partes or Court Proceeding
716.02(e) Suspension Pending Cancellation or Expiration of Cited Registration
716.03 Applicant’s Request to Remove Application from Suspension
716.04 Suspended Docket Checked
716.05 Inquiry by Examining Attorney Regarding Suspended Application
716.06 Suspension After Final Action
717 Reissuing an Office Action
717.01 Returned Office Action
717.02 Non-Receipt of Office Action
718 Abandonment
718.01 Express Abandonment by Applicant or Applicant’s Attorney
718.02 Failure by Applicant to Take Required Action During Statutory Period
718.02(a) Partial Abandonment
718.03 Incomplete Response
718.03(a) Holding of Abandonment for Failure to Respond Completely
718.03(b) Granting Additional Time to Perfect Response
718.03(c) Reconsideration of Holding of Abandonment
718.04 Failure to File Statement of Use
718.05 Failure to Perfect Appeal
718.06 Notice of Abandonment for Failure to Respond
718.07 Revival or Reinstatement of Abandoned Application - New Search Required
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719 Non-Responsive Communications
720 Fraud Upon the USPTO
701 Statutory Authority for Examination
15 U.S.C. §1062. Publication. (a) Upon the filing of an application for registration and payment of the
prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made....
(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.
702 Order of Work
702.01 Order of Examination
In general, examining attorneys should examine applications in the order in which they are received in the United States Patent and Trademark Office (“USPTO”), unless the application is made “special.” See TMEP §702.02 regarding “special” applications.
Generally, amended applications (i.e., applications that contain a response from the applicant), remands from the Trademark Trial and Appeal Board (“Board”), and statements of use are also reviewed in the order in which they are received in the USPTO.
Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension. See TMEP §§716 et seq. regarding suspension.
Examining attorneys should immediately act on inquiries regarding applications approved for publication or issue that are returned to the examining attorney to take action or provide information.
Where appropriate, the managing attorney may direct that a particular case be given special handling.
When an examining attorney resigns, the examining attorney should spend any remaining time in the Office getting his or her amended cases (including
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statements of use under 15 U.S.C. §1051(d) and appeal briefs), especially those with involved records, ready for final disposition.
702.02 “Special” Applications
While the USPTO normally processes applications in the order in which they are received, there is a procedure whereby an application can be made “special,” so that initial examination will be expedited. Initial examination can be expedited in the following circumstances:
(1) Petition to Make Special Granted. Applications made “special” as a result of a petition to the Director under 37 C.F.R. §2.146 (see TMEP §§1710 et seq.); and
(2) Registration Inadvertently Cancelled Under 15 U.S.C. §1058, §1059, or §1141k. A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired under 15 U.S.C. §1058, §1059, or §1141k will be made “special” upon the applicant’s request. No petition fee is required in this situation. However, the mark in the new application must be identical to the mark in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration.
Requests for “special” handling are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy. In order to ensure their proper routing and processing, requests for “special” handling should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number: 571-273-0032. It is recommended that the applicant first file the application using the Trademark Electronic Application System (“TEAS”). Then, the applicant should fax the request for “special” handling including the newly assigned serial number.
Alternatively, if the request for “special” handling is submitted by mail, the request should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy, to ensure proper routing and processing.
The examining attorney should promptly examine any application that has been made “special.”
702.03 Related Applications
702.03(a) Companion Applications
The term “companion applications” refers to pending applications filed by the same applicant. An application is pending until it registers or abandons.
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Pending applications include applications that have been approved for publication or for registration on the Supplemental Register, applications in the Intent-to-Use (“ITU”)/Divisional Unit, and revived or reinstated applications.
702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks
If an applicant has multiple pending applications, the issues in the applications are likely to be similar. When assigned a new application, an examining attorney will be assigned the companion applications filed within three months of the filing date of the first assigned application. If an applicant files more than ten applications within a three-month period, only the first ten will be assigned to one examining attorney. Examining attorneys are encouraged to assign all unassigned companion applications for the same or similar marks to themselves, even if the applications were filed outside the three-month period.
The assignment of companion applications is done electronically, based upon the owner’s name as set forth in the application. Therefore, the owner’s name should be set forth consistently in all applications.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(ii) Companion Applications Previously Assigned
If TRAM indicates that a companion application has been assigned to a different examining attorney, the examining attorney should not transfer his or her application to the other examining attorney. However, the examining attorney must review the electronic record of the earlier companion application before taking action in a later companion case, and should act consistently, unless it would be clear error (see TMEP §706.01) to do so. If the examining attorney believes that acting consistently with the prior action(s) would be erroneous, he or she should bring the issue to the attention of the managing attorney or senior attorney.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(iii) Companion Registrations
If the applicant previously filed a companion application that has matured into a registration, the examining attorney should not transfer his or her application to the prior examining attorney. Generally, in the later application, the examining attorney should act consistently with the registration, unless it would be clear error (see TMEP §706.01) to act consistently. However, the
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USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records. Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought. See TMEP §1216.01 and cases cited therein.
See TMEP §702.03(a)(iv) regarding classification and identification in companion registrations.
702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition
If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable, unless the identification or classification is clearly wrong. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion application or registration, the examining attorney must note the companion application serial number or registration number in the “Notes to the File” section of the record.
Sometimes, the classification and identification of goods and/or services in the prior companion application or registration is clearly wrong. For example, identifications and class assignments that were acceptable in the past may no longer be in accord with the current Nice Agreement classification system (see TMEP §§1401.02 et seq.) or with USPTO policy on acceptable identifications, which change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration. See TMEP §§1402.14 and 1904.02(c)(v).
702.03(b) Conflicting Applications
The term “conflicting applications” refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), due to a likelihood of confusion between the marks. When assigned a new application, the examining attorney must search the USPTO’s automated records to determine whether there are any conflicting applications. If there are conflicting applications, the examining attorney should not transfer the conflicting application to the examining attorney who acted on the first conflicting application. Instead, the examining attorney should examine the assigned application and issue an Office action that includes a notice to the applicant that there is a prior-filed application to register a mark that may be likely to cause confusion with the applicant’s mark. See TMEP §§1208 et
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seq. The examining attorney handling the later-filed application should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error (see TMEP §706.01) to act consistently. If necessary, the examining attorney should review the electronic record of the earlier-filed application before taking an action in the later-filed conflicting application.
703 USPTO Does Not Issue Duplicate Registrations
The USPTO will not issue two or more identical registrations on the same register. If two applications on the same register would result in registrations that are exact duplicates, the USPTO will permit only one application to mature into registration, and will refuse registration in the other application. 37 C.F.R. §2.48. For instance, if two identical applications are filed by an applicant, and the USPTO has not taken action in either application, then the USPTO will refuse registration in both applications. However, if the USPTO has already taken action in one of the applications but not the other, then the USPTO will refuse registration in the second application.
The applicant may overcome the refusal(s) by abandoning one of the applications. If practicable, the USPTO will permit the applicant to choose which application should mature into registration. If one of the applications has matured into registration, the applicant may choose to either surrender the registration and allow the application to proceed to registration, or retain the registration and abandon the application.
Basis. Applications filed under §1 of the Trademark Act are considered identical if the only difference between them is that one is based on use in commerce under §1(a) and the other is based on intent-to-use under §1(b). However, an application filed under §1 and an application filed under §44 that are otherwise identical are not regarded as duplicate registrations, nor is an application under §66(a) of the Trademark Act regarded as a duplicate of an application filed under §1 or §44.
Classification Change. Where the international classification of goods/services has changed, a new application for registration of the same mark for the same goods/services in a different class will not be considered a duplicate. For example, if applicant owns a registration of a mark for legal services in Class 42, and files a new application after January 1, 2007, for registration of the same mark for legal services in Class 45, this is not a duplicate.
Standard Character/Typed Drawing. An application for registration of a mark depicted in standard characters is considered a duplicate of an application for registration of the same mark in “typed” format (see TMEP §807.03(g)) for the same goods/services.
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Standard Character/Special Form. A standard character drawing and a special form drawing of the same mark are not considered identical.
Overlapping Goods/Services. Applications/registrations with identifications that include some of the same goods/services, but also different goods/services, are not identical.
Color. A drawing on which the entire mark is lined for color (see TMEP §808.01(b)), is considered a duplicate of a color drawing of the mark, if the colors are identical. See TMEP §§807.07 et seq. regarding color drawings.
If the applicant claims different shades of a color (e.g., purple in one and lavender in the other), the marks are not duplicates.
Where one application/registration is not completely lined for color (i.e., if the mark on the drawing includes color(s) in addition to unclaimed or unexplained black, white, and/or gray), this is not considered a duplicate of an application seeking registration that includes a claim of the same color(s) in addition to a claim of color for, or an explanation of the presence of, the black/white/gray in the drawing. See TMEP §§807.07(d) et seq. regarding drawings that include black/white/gray.
Principal/Supplemental Register. An application for registration of a mark on the Principal Register is not considered a duplicate of an application for registration of the same mark on the Supplemental Register.
Registrations Issued Under Prior Acts. If eligible, marks registered under the Acts of 1881, 1905, and 1920 may also be registered under the Act of 1946 (see §46(b) of the Trademark Act of 1946). Even if the mark and the goods/services in a registration issued under the 1946 Act are identical to the mark and goods/services in a registration issued under a prior Act, the registrations are not considered duplicates. See TMEP §§1601.04, 1601.05, 1602.02 and 1602.03 regarding registrations issued under prior Acts.
Section 66(a) Application Based on Different Int’l Registration. A §66(a) application is not a duplicate of another §66(a) application or registered extension of protection based on a different international registration.
When an application is a duplicate of a registration owned by the applicant, and USPTO records show that the registration is still active, the examining attorney must refuse registration. If the registration is subject to cancellation for failure to file an affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k, or due to expire for failure to file a renewal application under 15 U.S.C. §1059 (i.e., because the grace period has passed and no affidavit or renewal application has been filed), and the application is otherwise in condition for approval or final refusal, the examining attorney must suspend the application until the TRAM system is updated to show that the registration is cancelled or expired. See TMEP §1611 for information
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about how a registrant who has not timely filed a §8 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.
704 Initial Examination
704.01 Initial Examination Must be Complete
37 C.F.R. §2.61(a). Applications for registration, including amendments to allege use under §1(c) of the Act, and statements of use under §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.
The initial examination of an application by the examining attorney must be a complete examination. A complete examination includes a search for conflicting marks and an examination of the written application, any preliminary amendment(s) or other documents filed by applicant before an initial Office action is issued, the drawing, and any specimen(s) or foreign registration(s), to determine whether the mark is eligible for the type of registration requested, whether amendment is necessary, and whether all required fees have been paid.
If, on initial examination, the examining attorney finds the mark in an application for registration on the Principal Register to be in condition for publication for opposition, the examining attorney will approve the application for publication. Similarly, if the examining attorney finds the mark in an application for registration on the Supplemental Register to be in condition for registration, the examining attorney will approve the application for registration. The USPTO will send a notice of publication or certificate of registration to the applicant in due course.
If the application is not in condition to be approved for publication or issue, the examining attorney will write, telephone, or e-mail the applicant, as appropriate, informing the applicant of the reason(s) why the mark may not be registered and of the defect(s) that can be corrected or amended to make the application acceptable.
The examining attorney’s first Office action must be complete, so the applicant will be advised of all requirements for amendment and all grounds for refusal, with the exception of use-related issues that are considered for the first time in the examination of an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) in an intent-to-use application. See TMEP §§1102.01 and 1202 et seq. regarding use-related issues that are considered for the first time in the examination of an amendment to allege use or a statement of use. Every effort should be made to avoid piecemeal prosecution, because it prolongs the time needed to
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dispose of an application. See also TMEP §706 regarding new issues raised by the examining attorney after the first Office action.
Examining attorneys must also clearly explain all refusals and requirements. For example, if the identification of goods/services is indefinite, the examining attorney should explain why the identification is not acceptable and, if possible, suggest an acceptable identification. See TMEP §§705 et seq. for further information about examining attorneys’ Office actions.
704.02 Examining Attorney’s Search
If the examining attorney finds no conflicting marks, but must write to the applicant about other matters, the examining attorney must inform the applicant that no conflicting marks have been found. This is commonly called the “search clause.”
In an application filed under §1 or §44 of the Trademark Act, if the examining attorney cannot make a proper search or cannot examine the application properly due to lack of adequate information, the examining attorney should specifically indicate what information is needed, request that it be furnished, and state that further action on the matter will be taken as soon as the information is received. See 37 C.F.R. §2.61(b) and TMEP §814 regarding requirements for additional information.
If some but not all of the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search in part. The examining attorney must specifically indicate the good/services for which a search has been conducted by listing the goods/services for which no conflicting marks have been found, and, if relevant, issuing a §2(d) refusal that is specifically limited to certain goods/services. See TMEP §718.02(a) regarding partial refusals.
If all the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search. The examining attorney must issue a full refusal, require the necessary amendments to the goods/services, and state that further action on the merits with respect to likelihood of confusion will be considered as soon as a sufficiently definite identification of goods/services is received.
Before issuing a letter deferring action, the examining attorney should consult with the managing attorney or senior attorney.
704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney
When a non-signatory examining attorney examines an application, a supervisory examining attorney must thoroughly review the action. The usual
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procedure is for the non-signatory examining attorney to explain relevant information to the supervisory examining attorney, discussing any potential refusals or requirements. The supervisory examining attorney may indicate the action to be taken.
705 The Examining Attorney’s Letter or Action
If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by e-mail or telephone communication, which is typically followed by a written action. This constitutes the examining attorney’s official action.
Written Office actions may be of a variety of styles, including: (1) an “examiner’s amendment” (see TMEP §§707 et seq.), in which the examining attorney formally makes amendments to the application; (2) a “priority action (see TMEP §§708 et seq.),” setting forth and explaining the requirements discussed by telephone with the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or with a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 (“qualified practitioner”) designated by the applicant; (3) a letter explaining the bases for refusal(s) or requirement(s); (4) an examiner’s amendment combined with a priority action (see TMEP §708.05); or (5) a suspension notice (see TMEP §§716 et seq.). Office actions may be prepared through the use of standardized form paragraphs, in combination with language written to address the particular facts relevant to the refusal(s) or requirement(s). The examining attorney may send the Office action by regular mail or e-mail (if applicant has authorized e-mail communications). See TMEP §§304 et seq. regarding e-mail.
The USPTO encourages the use of examiner’s amendments and priority actions whenever appropriate.
705.01 Language in Examining Attorney’s Letter
The examining attorney must indicate the status of the application at the beginning of each letter.
In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as “Upon examination of this application....” The examining attorney must acknowledge any document received before the first action by identifying the document and the date of its receipt.
In subsequent actions, examining attorneys should begin letters with a sentence such as, “This Office action is in response to applicant’s communication filed on [date].” Other documents received, such as
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supplemental amendments, affidavits, and new drawings, should also be acknowledged.
Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act. For example, registration of a trademark should not be refused “because it is a surname,” but “because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act.”
Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested. However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.
The words “capable” and “incapable” should be reserved for addressing an amendment to the Supplemental Register.
Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions. However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.
705.02 Examining Attorneys Should Not Volunteer Statements
In Office actions, and e-mail and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in applications. The examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re American Physical Fitness Research Institute Inc., 181 USPQ 127 (TTAB 1974). See also TMEP §1801.
705.03 Citation of Conflicting Marks
When refusing registration under 15 U.S.C. §1052(d) based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and attach to the Office action a copy of each cited registration, which will become part of the record. The examining attorney should explain the reasons that the mark in each cited registration is a basis for refusal under §2(d).
If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, or that the USPTO attached a registration but did not cite the
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registration as a bar to registration in the Office action, the USPTO will reissue the Office action citing and attaching the relevant registration(s) and provide the applicant with a new response period.
705.04 Reference to Matter in Printed or Online Publications
When the examining attorney refers to matter in a printed publication, the examining attorney should provide the citation for the publication, and include the relevant material with the Office action. It is not necessary to attach a published legal decision to an Office action. A citation is sufficient. See TMEP §705.05 regarding citation of decisions.
When the examining attorney refers to an online publication, such as an article downloaded from the Internet, the examining attorney should provide any information that would aid a party in locating the document, including the complete URL address of the website, the time and date the search was conducted, and the terms searched. See TMEP §710.01(b) for a discussion of the weight accorded to Internet evidence. See also TMEP §710.01(a) regarding evidence from a research database.
705.05 Citation of Decisions and USPTO Publications
When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given. If possible, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d), or Federal Supplement (F. Supp. or F. Supp.2d) should also be given. The court or tribunal (2d Cir., C.C.P.A., Fed. Cir., TTAB, etc.) and the date of the decision should always be given.
When citing to a decision that is published and reported only in LexisNexis® and/or Westlaw®, for which there are no official print versions, the citing party should provide the name of the research service, case name, proceeding name and docket number, database identifier, court name, date, and screen, page, or paragraph numbers, if assigned. When citing to an unpublished decision of the Board, the examining attorney must either provide the Board’s TTABVUE website address and explain how the applicant may locate and view the decision, or append the decision to the Office action.
Non-Precedential Decisions. Prior to December 27, 2006, it was the policy of the Trademark Trial and Appeal Board that Board opinions not designated as precedential should not be cited and, if cited, were to be disregarded. General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992). The Board has changed that policy. In announcing the change, the Board stated that:
[T]he Board will henceforth permit citation to any TTAB disposition as follows:
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• The TTAB will continue its current practice of designating all final decisions as either precedential or not precedential. Unless specifically designated as precedential, an order on a motion should be considered not precedential.
• The TTAB will continue its practice of considering precedential decisions as binding upon the TTAB.
• A decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.
• Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database. If a non-precedential decision does not appear in the United States Patent Quarterly or the USPTO's public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited.
• Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.
See Citation of Opinions to the Trademark Trial and Appeal Board (OG Jan. 23, 2007).
The examining attorney may cite sections of the Trademark Manual of Examining Procedure (“TMEP”) or Trademark Trial and Appeal Board Manual of Procedure (“TBMP”). The abbreviations “TMEP” and “TBMP” are usually sufficient; however, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney should identify the Manuals by their full names in the first citation to the Manuals. It is not necessary to provide a copy of the relevant section(s) of the Manuals.
When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Official Gazette in which it may be found.
705.06 Reviewing and Signing of Letters
Examining attorneys must review and sign every Office action using an electronic signature. The signature block should include the name, law office, and telephone number of the examining attorney. The signature block should be set forth as follows:
/Examining attorney’s full name/ Trademark Examining Attorney
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Law Office xxx (571) 272-xxxx
If an examining attorney does not have signatory authority, he or she should sign the action and refer it to an authorized signatory examining attorney, who will review and approve the action. Review by a reviewer should ordinarily be done within two working days after receipt from the non-signatory examining attorney.
705.07 Processing Outgoing Office Actions
A date is placed on all copies of paper Office actions when they are issued. For outgoing e-mail communications, including electronically issued Office actions, the date is applied automatically when the communication is released to the USPTO's electronic mail system.
One copy of the action signed by the examining attorney, along with any supporting evidence and/or copies of registered marks or pending applications cited as a bar to registration, is sent to the Trademark Image Capture and Retrieval System (“TICRS”) and is available for review by the public through the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov.
An applicant who authorizes e-mail communication will not receive the actual Office action by e-mail. Instead, upon issuance of the Office action, the USPTO will e-mail a notice to the applicant with a link or web address to access the Office action using TDR. The Office action will not be attached to the e-mail notice. Upon receipt of the e-mail notice, the applicant may use the link or web address to view and print the actual Office action and any evidentiary attachments.
705.08 Six-Month Response Clause
Generally, the examining attorney’s letter or Office action should include a “six-month response clause” notifying the applicant that the applicant must respond to the action within six months of the issuance date to avoid abandonment under 15 U.S.C. §1062(b). See TMEP §§711 et seq. regarding the deadline for response to an Office action.
The examining attorney should not include a six-month response clause in an examiner’s amendment (see TMEP §§707 et seq.) or suspension notice (see TMEP §§716 et seq.), or in a situation where the time for response runs from the issuance date of a previous Office action (see TMEP §§711.01 and 715.03(c)).
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706 New Matter Raised by Examining Attorney After First Action
If in the first Office action an examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to correct the inadvertent error in a subsequent action. Examining attorneys should exercise great care to avoid these situations, and should take this step only when the failure to do so would result in clear error (see TMEP §706.01). After the first action, supervisors (e.g., supervisors reviewing the quality of the examining attorney’s work) should not introduce any new reason for refusal that is not clearly justified under the Act or rules.
Since it is unusual to make a new refusal or requirement that could have been raised in the first action, an examining attorney who does make a new refusal or requirement must clearly explain why the refusal or requirement is necessary, and apologize for the delay in raising the issue, if appropriate. See TMEP §711.02 regarding supplemental Office actions.
Sometimes, the examining attorney must issue a new refusal or requirement because the applicant submits information that raises a new issue.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the International Bureau of the World Intellectual Property Organization (“IB”) forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
706.01 “Clear Error”
The term “clear error” refers to an administrative internal guideline used by the USPTO to determine whether an examining attorney should issue a refusal or requirement that could or should have been raised in a previous action.
It is the policy of the USPTO to do a complete examination upon initial review of an application by an examining attorney, and to issue all possible refusals and requirements in the first Office action. TMEP §704.01. The USPTO will not issue a new refusal or requirement that could or should have been made in an earlier Office action unless it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act or applicable rules. See, e.g., TMEP §706. For example, the Director will not restore jurisdiction to an examining attorney to issue a new refusal of registration unless the failure to issue the refusal would result in the issuance of a registration that would violate the Trademark Act or applicable rules. See TMEP §1504.04. See also TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use that could or should have been issued during initial examination of the application.
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The internal “clear error” standard is merely an administrative guideline. It does not confer on an applicant any entitlement to a showing of clear error, nor does it impose a higher standard of proof on the examining attorney than is otherwise required to establish a prima facie case for the refusal or requirement.
There is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal. The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees. See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) (“[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors.”); see also BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner to withdraw a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee, and notification of the issue date, and with publication of the drawing and claim in the Official Gazette). Thus, if the USPTO discovers that a mistake made during examination would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been previously raised.
The question of whether a refusal or requirement was procedurally proper is reviewable on petition under 37 C.F.R. §2.146. However, “[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions....” 37 C.F.R. §2.146(b). Thus, the Director cannot consider on petition whether the issuance of or failure to issue a substantive refusal was a “clear error.” See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review on petition.
On appeal, the Trademark Trial and Appeal Board will review only the correctness of the underlying substantive refusal of registration. See In re Jump Designs, LLC, 80 USPQ2d 1370 (TTAB 2006); In re Sambado & Son, Inc., 45 USPQ2d 1312 (TTAB 1997).
707 Examiner’s Amendment
An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application. An examiner’s amendment is a communication to the applicant in which the examining attorney states that the application has been amended in a specified way. Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual applicant, someone with legal authority to bind a juristic applicant
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(e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner. Cf. 37 C.F.R. §2.74(b). See TMEP §707.01 regarding the authorization of an examiner’s amendment. Authorization is usually given in a telephone conversation, e-mail communication, or interview between the examining attorney and the applicant or the applicant’s qualified practitioner. See TMEP §§304 et seq. regarding e-mail.
The examining attorney may issue an examiner’s amendment whenever the required amendment does not have to be verified by the applicant. For example, in appropriate circumstances, an examiner’s amendment may be used to amend the identification of goods/services, enter a disclaimer, add the state of incorporation, or amend from the Principal to the Supplemental Register.
The following are examples of amendments that may not be made by examiner’s amendment: the dates of use, if verification would be required (see TMEP §903.04); the mark on a special form drawing (see TMEP §807.04), if the changes would require the filing of a substitute special form drawing; and amendments that require the submission of substitute specimen(s) (see TMEP §904.05). An application cannot be expressly abandoned by examiner’s amendment (see TMEP §718.01).
An authorization to charge a fee to a deposit account cannot be entered by examiner’s amendment, unless the record already contains a written authorization, signed and submitted by someone authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.
Examiner’s amendments generally are not used when there are statutory refusals. However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner’s amendment. For example, in appropriate cases, the applicant may overcome a surname refusal of a mark that is in use in commerce by amending the application to the Supplemental Register. See TMEP §708.04 regarding priority actions involving statutory refusals.
An examining attorney without partial signatory authority must have proper authorization from the managing attorney, senior attorney, or a reviewing examining attorney before initiating an examiner’s amendment.
See TMEP §707.03 regarding the form of an examiner’s amendment.
An applicant should not file correspondence confirming an examiner’s amendment, because this will delay processing of the application. A written response to an examiner’s amendment is not required.
If an applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by telephone or e-mail), so that the objection can be considered before publication or issue. See TMEP §1402.07(e) regarding an applicant’s objection to an examiner’s amendment of the
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identification of goods/services on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.
Often an applicant will seek to respond to an outstanding Office action with an amendment or other response by telephone. The examining attorney is encouraged to enter an examiner’s amendment if this amendment will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See TMEP §§716 et seq. regarding suspension. However, an applicant does not have an unlimited right to the entry of an examiner’s amendment in response to an Office action. If the applicant does not agree to an amendment that the examining attorney believes will immediately place the application in condition for publication for opposition or issuance of a registration, the applicant must file a complete written response to the outstanding Office action.
See TMEP §708.05 regarding combined examiner’s amendment/priority actions.
NOTE: In a §66(a) application, an examiner’s amendment may not be issued on a first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.
707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney
Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual applicant, someone with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b). See TMEP §602 et seq. for guidelines on persons who may practice before the USPTO.
If the applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner. If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to conclude business, and will note this fact in the examiner’s amendment. Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified practitioner’s approval by indicating that the practitioner has approved the amendment.
If the applicant is pro se, the examining attorney must speak directly with the individual applicant or with someone with legal authority to bind a juristic
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applicant (e.g., a corporate officer or general partner of a partnership). Cf. 37 C.F.R. §11.14(e). For joint applicants who are not represented by a qualified practitioner, each joint applicant must authorize the examiner’s amendment. See TMEP §§611.06 et seq. for guidelines on persons who have legal authority to bind various types of applicants.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) is not entitled to authorize an examiner’s amendment, unless he or she has legal authority to bind the applicant. The broad definition of “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04) does not apply to examiner’s amendments.
The applicant or the applicant’s qualified practitioner must actually authorize the examiner’s amendment. The examining attorney may not leave an e-mail or voicemail message for the applicant or the qualified practitioner indicating that an amendment shall be entered if the applicant or practitioner does not respond to the message.
If an examining attorney contacts an applicant and reaches agreement to issue an examiner’s amendment, but later determines that an Office action must be issued instead to state a refusal or requirement, the examining attorney should telephone or e-mail the applicant immediately to advise the applicant of the change of position.
Examining attorneys without partial signatory authority must advise applicants that issuance of the examiner’s amendment is subject to review by a supervisory attorney.
707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney
Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified practitioner (sometimes referred to as a “no-call” examiner’s amendment) in the following situations:
(1) Changes to international classification, either before or after publication (see Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm’r Pats. 1999));
(2) Deletion of “TM,” “SM,” “©,” or “®” from the drawing;
(3) Addition of a description of the mark where an Office action or regular examiner’s amendment is otherwise unnecessary and one of the following conditions applies:
(a) The record already contains an informal indication of what the mark comprises (see TMEP §808.03(b));
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Example - The cover letter accompanying a paper application refers to the mark as a stylized golf ball design. If appropriate, the examining attorney could enter an amendment that “the mark consists of the stylized design of a golf ball.”
Example – The application refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but the color yellow is omitted from the formal description of the colors in the mark (see TMEP §807.07(a)(ii)). The examining attorney may enter an amendment of the formal color description to accurately reflect all colors in the mark;
(b) The mark consists only of wording in stylized font, with no color claim and with no design element (see TMEP §808.03(b)); or
(c) The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording (see TMEP §808.03(b)).
(4) If the examining attorney determines that a description of the mark will not be printed in the Official Gazette or on the registration certificate, and it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters, the examining attorney may enter an amendment to that effect. See TMEP §§808.03 et seq.;
(5) Amendment of the application to enter a standard character claim when the record clearly indicates that the drawing is intended to be in standard character form. See TMEP §807.03(g);
(6) Correction of an obvious misspelling(s), typographical error(s), redundanc(ies) in the identification of goods/services, or in an otherwise accurate and complete description of the mark. See TMEP §§808.03(a) and 1402.01(a);
Example - The goods are recited as “T-shurtz.” The examining attorney could amend to “T-shirts.” However, “shirtz” could not be amended to “shirts” without calling the applicant, because “shirtz” (without the “T-” prefix) might also be a misspelling of “shorts.”
(7) When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods, services, and/or class(es), the examining attorney may issue an examiner’s amendment deleting the goods/services/classes to which the refusal or requirement pertained. Similarly, when an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney may issue an examiner’s
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amendment deleting the unacceptable terminology from the identification. See TMEP §§718.02(a) and 1402.13;
(8) Deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual. Bracketed material sometimes appears in the Manual for informational purposes but should not be included in an identification of goods/services. If this material is entered in an identification, it will be automatically deleted in a TEAS Plus application. In a TEAS or paper application, the examining attorney may delete the bracketed material with a “no- call” examiner’s amendment;
(9) If, in response to a general or specific inquiry about translation and/or transliteration of non-English wording in the mark, the applicant does not directly state that the term has no meaning in a foreign language but instead responds to the effect that “the mark has only trademark significance,” the examining attorney may enter a statement that “the term has no meaning in a foreign language” into the record. See TMEP §809.01(a);
(10) When an applicant provides a translation statement that has the proper translation but is not suitable for printing, the examining attorney may “reformat” the statement, without changing the substance, into a simple, clear statement as to meaning. See TMEP §809.03.
If the examining attorney must contact the applicant or the applicant’s qualified practitioner about other matters, or if the record contains any ambiguity as to the applicant’s intent, the examining attorney should advise the applicant that the above changes have been made.
A copy of the examiner’s amendment will be sent to the applicant. Any applicant who disagrees with any of these changes should contact the examining attorney immediately after receipt of the examiner’s amendment, preferably by telephone or e-mail.
707.03 Form of the Examiner’s Amendment
An examiner’s amendment should include the following information: the name, law office, and telephone number of the examining attorney; the name of the person interviewed; the date of the interview; the actual amendment; and, if applicable, a statement to the effect that the amendment has been authorized by the applicant or the applicant’s qualified practitioner.
The examiner’s amendment should not include a six-month response clause, because a written response by the applicant is not required for an examiner’s amendment.
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The examiner’s amendment must include a search clause (see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.
The examining attorney should not state in the examiner’s amendment that the application is ready for publication or issue, because some unforeseen circumstance might require that further action be taken in the application.
The examiner’s amendment must indicate any refusals or requirements that are withdrawn and/or continued by the examining attorney.
708 Priority Action
708.01 Priority Action Defined
A “priority action” is an Office action that is issued following a telephone conversation, personal interview, or e-mail communication in which the examining attorney and the individual applicant, someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner discuss the various issues raised in an application. The use of priority actions is encouraged to expedite examination.
A priority action should be issued according to the following procedure: (1) the examining attorney telephones or e-mails the applicant or applicant’s qualified practitioner and requests that the applicant take some specific action, explaining the reasons; (2) the applicant or applicant’s qualified practitioner specifically discusses the merits of the application with the examining attorney; (3) the examining attorney prepares and signs a priority action that fully discusses all refusals or requirements, includes evidence to support the refusals and/or requirements, and specifically describes what action the applicant may take in order to put the application into condition for publication or registration; and (4) the USPTO sends a copy of the priority action to the applicant.
If the evidence of record supports a statutory refusal of registration, a priority action may be issued only if the examining attorney believes that an amendment or explanation will obviate the refusal. See TMEP §708.04.
See TMEP §708.03 regarding the form of a priority action.
708.02 Discussion of Issues and Agreements
The examining attorney must discuss the issues with the individual applicant, a person with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner. The broad definition of “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04) does not apply to priority actions.
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Only the applicant, someone with legal authority to bind the applicant, or a qualified practitioner can agree to a priority action. If the applicant has a qualified practitioner, the examining attorney must speak directly to the practitioner. See TMEP §602 et seq. for guidelines on persons who may practice before the USPTO.
If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the qualified practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to authorize issuance of the priority action, and will note this fact in the priority action.
Paralegals and legal assistants cannot authorize issuance of a priority action, even if only conveying the qualified practitioner’s approval by indicating that the practitioner has agreed to the priority action.
If the applicant is pro se, the examining attorney must speak directly to the individual applicant or to someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership). Cf. 37 C.F.R. §11.14(e). See TMEP §§611.06 et seq. for guidelines on persons who have legal authority to bind various types of applicants.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) may not authorize issuance of a priority action, unless he or she also has legal authority to bind the applicant.
During the telephone conversation, e-mail discussion, or other communication, the examining attorney must fully discuss all refusals and requirements relating to the application, and explain the reason for each refusal or requirement. Whenever possible, the examining attorney should suggest appropriate language for amendments.
A priority action is not appropriate when the examining attorney leaves a voicemail or e-mail message for the applicant or applicant’s qualified practitioner, but the applicant or practitioner does not call back or respond to the message. All the issues in the priority action must be discussed on the merits with the applicant or the applicant’s qualified practitioner in a good faith attempt to resolve any issues and place the application in condition for publication or registration, as appropriate.
An agreement as to precisely how all issues will be resolved is not necessary. For example, the priority action may state that “the applicant will submit an acceptable identification of goods that specifies the common commercial names of the ‘computer equipment.’” It is not necessary that there be an agreement that “the applicant will amend the identification of goods to read: computer keyboards, computer monitors and computer printers.”
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The priority action may state that the applicant will follow one of two alternative courses of action, for example, providing either an amended drawing or a new specimen.
708.03 Form of the Priority Action
The priority action should reference the date of the telephone call, e-mail message, or other communication, and the name and title (where appropriate) of the person who authorized the priority action. See TMEP §708.02 for information about who may authorize issuance of a priority action.
A priority action must include a six-month response clause (see TMEP §705.08) so that it is clear that the applicant must timely respond to the priority action to avoid abandonment of the application.
The priority action must include a search clause (see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.
The priority action must also: (1) fully discuss all refusals and/or requirements; (2) include sufficient evidence to support all refusals and/or requirements; and (3) specifically describe what action the applicant may take in order to put the application into condition for publication or registration. See TMEP §708.02 regarding discussion of issues on the merits.
The examining attorney should discuss each issue separately, stating the reason for the refusal and/or requirement and/or citing the relevant sections of the statute, rules, and/or TMEP. The essential nature of the refusal or requirement, and any pertinent advisories relating thereto, must be clearly stated in the priority action, and fully supported by appropriate evidence (if applicable), because the action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191.
A priority action may be used for a final or nonfinal refusal or requirement. See TMEP §708.04 regarding refusal of registration in a priority action, and TMEP §§714 et seq. regarding final actions.
708.04 Refusal of Registration in Priority Action
Priority actions are generally used when there are no statutory refusals. However, if there is sufficient evidence to support a statutory refusal, and the examining attorney believes that an amendment or explanation will obviate the refusal, the examining attorney may attempt to resolve the issues through a priority action. An example would be a surname refusal where it is evident that the mark has been used in commerce for more than five years, and thus the refusal could be overcome by the submission of a claim of acquired distinctiveness under §2(f) of the Trademark Act. See TMEP §§1212 et seq. regarding §2(f).
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In the priority action, the examining attorney must clearly state the basis for refusal, citing the relevant sections of the statute and rules, attaching evidence to support the refusal, and indicating the resolutions agreed upon.
If the priority action includes a final refusal, the priority action must clearly indicate that the refusal is FINAL, and should contain any additional supporting evidence necessary for a complete record on appeal. See TMEP §§714 et seq. regarding final actions.
708.05 Combined Examiner’s Amendment/Priority Action
An examining attorney may issue an Office action that combines an examiner’s amendment and priority action, if the requirements for both have been met. An examining attorney may not issue a “no-call” examiner’s amendment/priority action, because the issues in the priority action portion of the action have not been discussed with the applicant or applicant’s qualified practitioner.
The action must include a six-month response clause (see TMEP §705.08) so that it is clear that the applicant must timely respond to the issues raised in the priority action to avoid abandonment of the application. The action must also include the subheadings “Priority Action” and “Examiner’s Amendment” to facilitate processing. The action should be reported in the USPTO’s automated TRAM system as a priority action.
709 Interviews
A discussion between the applicant or applicant’s qualified practitioner and the examining attorney in which the applicant presents matters for the examining attorney’s consideration is considered an interview. An interview can be conducted in person, by telephone, or by e-mail. See TMEP §§304 et seq. regarding e-mail.
The application will not normally be processed out of turn as a result of the interview, and the interview does not extend the deadline for response to an outstanding Office action.
The examining attorney may not discuss inter partes questions with any of the interested parties. See TMEP §1801.
709.01 Personal Interviews
Personal interviews with examining attorneys concerning applications and other matters pending before the USPTO are permissible on any working day and must be in the office of the respective examining attorney, within office hours that the examining attorney may designate.
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Personal interviews should be arranged in advance, preferably by fax, e-mail, or telephone. This will ensure that the assigned examining attorney will be available for the interview at the scheduled time and will have an opportunity to review the application record. The unexpected appearance of a qualified practitioner or applicant requesting an interview without any previous notice to the examining attorney is not appropriate.
An interview should be conducted only when it could serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant. Interviews should not extend beyond a reasonable time.
The examining attorney should not hesitate to state that matter presented for consideration during the interview requires further research, if this is the case. Furthermore, the examining attorney may conclude an interview when it appears that no common ground can be reached.
During an interview with a pro se applicant who is not familiar with USPTO procedure, the examining attorney may in his or her discretion make suggestions that will advance the prosecution of the application, but these interviews should not be allowed to become unduly long.
When an agreement is reached during an interview but it is not possible to resolve all issues through an examiner’s amendment, the examining attorney should make a note in the “Notes-to-the-File” section of the record concerning the agreement, and request that the applicant incorporate the agreement in its response.
Sometimes, the examining attorney who conducted the interview is transferred, resigns, or retires, and examination of the application is taken over by another examining attorney. If there is an indication in the record that an interview was held, the new examining attorney should endeavor to ascertain whether any agreements were reached during the interview. The new examining attorney should take a position consistent with agreements previously reached, unless doing so would be a clear error (see TMEP §706.01).
Except in unusual situations, no interview on the merits is permitted after the brief on appeal is filed, or after an application has been forwarded for publication or issue.
709.02 Persons Who May Represent Applicant in an Interview
In general, interviews are not granted to persons who lack proper authority from the applicant. See TMEP §§602 et seq. regarding persons who may represent an applicant before the USPTO in a trademark matter, and TMEP §§611.06 et seq. for information as to persons who have authority to bind various types of juristic applicants.
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The examining attorney may request proof of a person’s authority if there is any reason to suspect that the person is not, in fact, a qualified practitioner who is authorized to represent the applicant. 37 C.F.R. §2.17(a).
For an interview with an examining attorney who does not have signatory authority, arrangements should be made for the presence of an examining attorney who does have such authority and who is familiar with the application, so that an authoritative agreement may be reached, if possible, at the time of the interview.
USPTO employees are forbidden to engage in oral or written communication with a disbarred, suspended, or excluded practitioner (see TMEP §608.02), unless the practitioner is the applicant.
Requests for interviews from third parties are inappropriate and should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy. See TMEP §1801.
709.03 Making Substance of Interview of Record
The substance of an interview must always be made of record in the application, since the action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191. This should be done promptly after the interview while the matters discussed are fresh in the minds of the parties.
If possible, agreements reached in the interview should be incorporated in an examiner’s amendment or priority action. Otherwise, to ensure that any agreements reached at an interview will be implemented, and to avoid subsequent misunderstanding, the examining attorney should include, in the “Notes-to-the-File” section of the record, a list of the issues discussed and indicate whether any agreement was reached. See TMEP §709.04 for further information about “Notes-to-the-File”.
The applicant or the applicant’s qualified practitioner may also make the substance of an interview part of the record by incorporating a summary of the interview in the applicant’s response to the Office action. If there is any disagreement between the examining attorney and the applicant as to the substance of the interview, the written record governs. 37 C.F.R. §2.191.
709.04 Telephone and E-Mail Communications
Use of the telephone and e-mail is encouraged. Examining attorneys should initiate telephone and e-mail communications whenever possible to expedite prosecution of an application. Similarly, applicants and qualified practitioners may telephone or e-mail examining attorneys, if they feel that a call or e-mail will advance prosecution of an application.
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All documents filed in connection with the application should include the telephone number of the applicant or the applicant’s qualified practitioner.
The examining attorney should return telephone calls and e-mail messages within a reasonable time, normally the same working day and never later than the next working day.
Generally, the examining attorney who prepared the action, and not the supervisory or reviewing examining attorney, should be the person contacted by telephone or e-mail. However, a non-signatory examining attorney must secure proper authorization from the managing attorney, senior attorney, or reviewing examining attorney before approving an amendment.
The action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191. Therefore, the examining attorney must use an examiner’s amendment (see TMEP §§707 et seq.), priority action (see TMEP §§708 et seq.), upload a relevant e-mail communication, or enter a note in the “Notes- to-the-File” section of the record to make the substance of the telephone call or the resolution of any issue part of the written record. See TMEP §709.03.
Notes in the “Notes-to-the-File” section must not summarize arguments or legal conclusions. Rather, the note-to-the-file must merely list the issues discussed and indicate any agreement that may have been reached. If no agreement was reached, that should be noted also.
If an examining attorney does not respond to a telephone or e-mail message within two business days, the applicant may telephone the law office manager or supervisor. Contact information is available on the USPTO website at http://www.uspto.gov/teas/contactUs.htm.
709.05 Informal Communications
An applicant may conduct informal communications with an examining attorney regarding a particular application by telephone, e-mail (see TMEP §§304 et seq.), or fax. Informal communications should be conducted only if they serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant. For example, an applicant may telephone or send an e-mail regarding:
• Questions about an outstanding Office action that do not constitute a response;
• Authorization to issue an examiner’s amendment or priority action (see TMEP §§707.01 and 708.01);
• Notification of termination of a cancellation proceeding that is the basis for suspension (see TMEP §716.02(a)).
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An informal communication does not constitute a response to an outstanding Office action and does not extend the deadline for response.
If it is unclear whether a written communication is an informal inquiry or a response to an Office action, the USPTO will process the communication as a response.
Informal communications must be made part of the record, because the USPTO uses them in decision making, and anything used in decision making must be made of record. 37 C.F.R. §2.191. That is, the examining attorney should make a note in the “Notes-to-the-File” section of the record that an applicant or qualified practitioner called to discuss a particular issue, or should upload a relevant e-mail communication. See TMEP §709.04 for further information about “Notes-to-the-File”.
The applicant should monitor the status of an application after an informal communication to avoid abandonment. This may be done through the Trademark Applications and Registrations Retrieval (“TARR”) database at http://tarr.uspto.gov/, or by calling the Trademark Assistance Center (“TAC”) at (571) 272-9250 or (800) 786-9199. See TMEP §§108.03 and 1705.05 regarding the duty to monitor the status of an application in cases where a notice or action from the USPTO is expected.
709.06 Interviews Prior to Filing Application
No interviews are permitted before the filing of an application. If a party has general questions about how to file an application, he or she can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. See TMEP §108.02.
USPTO employees cannot give advice on trademark law. It is inappropriate for USPTO personnel to give legal advice, to act as a counselor for individuals, or to recommend a qualified practitioner. 37 C.F.R. §2.11.
710 Evidence
710.01 Evidence Supporting Refusal or Requirement
In general, the examining attorney must always support his or her action with relevant evidence and ensure that proper citations to the evidence are made in the Office action.
All evidence that the examining attorney relies on in making a requirement or refusal must be placed in the record and copies must be sent to the applicant.
In appropriate cases, the examining attorney may also present evidence that may appear contrary to the USPTO’s position, with an appropriate explanation as to why this evidence was not considered controlling. In some
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cases, this may foreclose objections from an applicant and present a more complete picture if there is an appeal. Cf. In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).
710.01(a) Evidence From Research Database
If evidence is obtained from a research database, the record should include an indication of the specific search that was conducted. The record should indicate the libraries and/or files that were searched and the results. If the examining attorney does not review all of the documents located in a search, the record should indicate the number of documents that were reviewed. The search summary should be made a part of the record and will provide most of this information. Information not indicated on the search summary, such as the number of documents viewed, should be stated in narrative in the Office action. The Office action should include a citation to the research service, indicating the service, the library and the file searched, and the date of the search (e.g., “LEXIS®, News and Business, All News (Sept. 25, 2009)”).
When evidence is obtained from a research database, the examining attorney does not have to make all stories of record. It is sufficient to include only a portion of the search results, as long as that portion is a representative sample of what the entire search revealed. In re Vaughan Furniture Co. Inc., 24 USPQ2d 1068, 1069 n.2 (TTAB 1992). See also In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).
See TMEP §710.01(b) regarding evidence originating in foreign publications.
710.01(b) Internet Evidence
Articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. However, the weight given to this evidence must be carefully evaluated, because the source may be unknown. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-71 (TTAB 1998). When making Internet evidence part of the record, the examining attorney should provide complete information as to the source or context of the evidence. Any information that would aid a party in locating the relevant document should be included in the citation (e.g., the complete URL address of the website, the time and date the search was conducted, and the terms searched).
A list of Internet search results has little probative value, because such a list does not show the context in which the term is used on the listed web pages. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (GOOGLE® search results that provided very little context of the use of ASPIRINA deemed to be “of little value in assessing the consumer public perception of the ASPIRINA mark”); In re Tea and
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Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (truncated Google® search results entitled to little probative weight without additional evidence of how the searched term is used); In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board rejected an applicant’s attempt to show weakness of a term in a mark through citation to a large number of GOOGLE® “hits” because the “hits” lacked sufficient context); In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006); In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002); In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002). The examining attorney should attach copies of the website pages that show how the term is actually used.
As long as it is written in the English language, information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern United States consumer impression of a proposed mark. The probative value of such evidence will vary depending upon the context and manner in which the term is used. In Bayer, NEXIS® evidence that originated in foreign publications was deemed to be of “some probative value with respect to prospective consumer perception in the United States,” the Court noting “the growing availability and use of the internet as a resource for news, medical research results, and general medical information.” 488 F.3d at 969, 82 USPQ2d at 1835. In Remacle, the Board held evidence from a website in Great Britain admissible, noting that:
[I]t is reasonable to assume that professionals in medicine, engineering, computers, telecommunications and many other fields are likely to utilize all available resources, regardless of country of origin or medium. Further, the Internet is a resource that is widely available to these same professionals and to the general public in the United States. Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin.
66 USPQ2d at 1224 n.5. However, the weight given to such evidence may vary depending upon the context and manner in which the term is used. In King Koil, the Board gave only “limited probative value” to the contents of websites of commercial entities outside the United States showing use of the term “breathable” in relation to mattresses and bedding, stating that:
[C]onsumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser. That would appear especially likely in a case such as this, where the item in question, a mattress, is large and potentially more expensive to ship than a smaller item.
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Accordingly, while we do not discount entirely the impact of foreign web sites in this case, we find them of much more limited probative value than in the Remacle case.
79 USPQ2d at 1050. See also In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1797-98 (TTAB 2003) (relying on several NEXIS® items from foreign wire services to support a refusal and distinguishing earlier decisions that accorded such evidence little probative value given the sophisticated public and the widespread use of personal computers that increase access to such sources).
With respect to evidence taken from the online Wikipedia® encyclopedia, at www.wikipedia.org, the Board has noted that “[t]here are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries,” and has stated as follows:
[T]he Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information. Our consideration of Wikipedia evidence is with the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information)....
As a collaborative online encyclopedia, Wikipedia is a secondary source of information or a compilation based on other sources. As recommended by the editors of Wikipedia, the information in a particular article should be corroborated. The better practice with respect to Wikipedia evidence is to corroborate applicant’s Wikipedia evidence....
In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007).
Given its inherent limitations, any information obtained from Wikipedia® should be treated as having limited probative value. If the examining attorney relies upon Wikipedia® evidence and makes it of record, then additional supportive and corroborative evidence from other sources should also be made of record, especially when issuing final actions.
The examining attorney must check applicant’s own website for information about the goods/services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006), where the Board rejected applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent-to-use and no specimens were yet required. According to the Board, “The fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing
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evidence that it may have in its possession.” See also In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007).
When a document found on the Internet is not the original publication, the examining attorney or Trademark Law Library staff should try to obtain a copy of the originally published document, if practicable. Electronic-only documents are considered to be original publications, and scanned images are considered to be copies of original publications. See notice at 64 Fed. Reg. 33056, 33063 (June 21, 1999).
See also TBMP §1208.03.
710.01(c) Record Must Be Complete Prior to Appeal
The record in any application must be complete prior to appeal. 37 C.F.R. §2.142(d). Accordingly, if an examining attorney or applicant attempts to introduce new evidence at the time of the appeal, the new evidence will generally be excluded from the record. TBMP §§1207 et seq. See Rexall Drug Co. v. Manhattan Drug Co., 284 F.2d 391, 128 USPQ 114 (C.C.P.A. 1960); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999). However, the Board may consider evidence submitted after appeal, despite its untimeliness, if the non-offering party: (1) does not object to the evidence; and (2) discusses the evidence or otherwise treats it as being of record. See TBMP §1207.03 and cases cited therein. Therefore, examining attorneys and applicants should either consider or object to new evidence.
Whenever an examining attorney objects to evidence submitted by an applicant, the objection should be raised as soon as possible and continued in the examining attorney’s brief, or the Board may consider the objection to be waived. In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).
If the applicant or examining attorney wishes to introduce new evidence at the time of or during appeal, the party seeking to introduce the new evidence may request the Board to suspend the appeal and remand the case. See TMEP §§1504.05 et seq. and TBMP §1207.02 regarding requests for remand.
The Board may take judicial notice of definitions from printed dictionaries, even if they are not made of record by the applicant or examining attorney prior to appeal. In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008); In re Dodd Int’l, Inc., 222 USPQ 268 (TTAB 1983); In re Canron, Inc., 219 USPQ 820 (TTAB 1983); TBMP §1208.04. However, the better practice is to attach the relevant material to ensure that it is in the record. The examining attorney must include a copy of the title page of the dictionary. In re Gregory, 70 USPQ2d 1792 (TTAB 2004) (Board declined to take judicial notice of dictionary definitions submitted with examining attorney’s appeal brief, where neither the photocopied pages nor the examining attorney’s brief specified the dictionaries from which the copies were made).
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The Board will not take judicial notice of online dictionary definitions that are not available in printed form, unless the dictionary is readily available and verifiable, due to concerns about the reliability of such material. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (Board took judicial notice of the Encarta Dictionary, because it was a widely known reference that was readily available in specifically denoted editions via the Internet and CD-ROM, holding that it was “the electronic equivalent of a print publication and applicant may easily verify the excerpt”). However, it refused to take judicial notice of a definition excerpted from www.wordsmyth.net, where the source of the definition was not identified on the submitted website excerpt or by the examining attorney and thus could not be verified. See also In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (Board took judicial notice of online dictionary that was also available in printed form); In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) (Board refused to take judicial notice of online dictionary that did not exist in printed format, where the source was unknown and the Board was unsure whether the dictionary was readily available or reliable, stating that the evidence should have been made of record prior to appeal, so applicant would have the opportunity to check the reliability of the evidence and offer rebuttal evidence).
710.02 Search for Evidence Indicating No Refusal or Requirement Necessary
It is USPTO practice to indicate the results of a search for evidence when the examining attorney considers an issue and determines that no action will be taken on it. This information is helpful for internal review. The “Notes-to-the- File” section of the record should be used to reflect that a search for evidence was conducted in any case where the examining attorney determines that a search would be useful for review of the application, but that no further action is required. The examining attorney should simply note the parameters of the search conducted without stating any opinions or conclusions.
For instance, in the case of a search of telephone directories for surnames, the record should indicate only the directories investigated and the number of occurrences of the surname. Or, in the case of a search for the meaning of a term, the record should show the sources checked and whether the term was found. Examining attorneys should provide the same information indicated in TMEP §710.01(a) regarding searches of research databases in this type of case.
Examining attorneys should not provide any analysis, opinions, or conclusions regarding the evidence when the examining attorney determines that a refusal or requirement is not appropriate. The examining attorney should not place in the record copies of e-mail messages or other communications between the examining attorney and other USPTO personnel concerning the application. Also, the examining attorney should
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not refer to any registration or pending application that was considered in a §2(d) search, unless the examining attorney determines that there is a conflict and issues an Office action based on the application or registration. The examining attorney should not place copies of marks not cited under §2(d) in the record.
710.03 Evidence of Third-Party Registrations
The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). Furthermore, the submission of a copy of a commercial search report is not proper evidence of third-party registrations. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).
To make registrations of record, soft copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems (X-Search, TESS, TARR, or TRAM)) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992).
If the applicant submits improper evidence of third-party registrations, the examining attorney should object to the evidence in the next Office action, or the Board may consider the objection to be waived. See In re 1st USA Realty Professionals, supra (Board considered applicant’s own registration, provided for the first time on appeal, because it had been referred to during prosecution and the examining attorney addressed the issue without objection; Board also allowed evidence of a list of third-party registrations because the examining attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake); In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (objection to evidence waived where it was not interposed in response to applicant’s reliance on listing of third-party registrations in response to initial Office action). If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.
See TMEP §1207.01(d)(iii) regarding the relevance of third-party registrations to a determination of likelihood of confusion under 15 U.S.C. §1052(d).
711 Deadline for Response to Office Action
The statutory period for response to an examining attorney’s Office action is six months from the date of issuance. 15 U.S.C. §1062(b); 37 C.F.R.
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§2.62(a). The examining attorney has no discretion to shorten or extend this period. The applicant must file a response within six months of the issuance date of the Office action, unless the examining attorney has issued a supplemental action resetting the period for response. See TMEP §711.02 regarding supplemental Office actions.
In a §66(a) application, a response to an Office action is due within six months of the date on which the USPTO sends the action to the IB, not the date on which the refusal is processed by the IB. See §1904.02(h) for further information about issuing Office actions in §66(a) applications.
To expedite processing, the USPTO recommends that responses to Office actions be filed through TEAS, at http://www.uspto.gov/teas/index.html.
Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action, appeal to the Board, or petition to the Director. 37 C.F.R. §2.64(c)(1); TMEP §1104.
See TMEP §310 for information about computing the response period; TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness; and TMEP §§718.02 and 718.03 et seq. regarding abandonment for failure to respond or incomplete response to an Office action.
711.01 Time May Run from Previous Action
In most cases, the six-month statutory period to respond to an Office action runs from the issuance date of the Office action. In some situations, the examining attorney’s Office action does not re-start the beginning of a statutory response period. For example, a notice that an applicant’s response was incomplete (see TMEP §§718.03 et seq.), or a notice that an applicant’s request for reconsideration of a final action fails to overcome a refusal or satisfy an outstanding requirement (see TMEP §§715.03(a) and (c)), does not begin a new response period. In all cases where the statutory response period runs from the date of a previous Office action, the examining attorney must include a statement to that effect in the Office action, and must omit the six-month response clause.
711.02 Supplemental Office Action Resetting Response Period
Sometimes the examining attorney must issue a supplemental Office action that resets the six-month statutory period for response. If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response. See TMEP §706. The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a
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previous Office action (e.g., during examination of an amendment to allege use).
If the examining attorney issues a supplemental Office action, a new six- month response period will begin running from the issuance date of the supplemental action. 15 U.S.C. §1062(b). In a supplemental Office action, the examining attorney should: (1) indicate that the action is supplemental to and supersedes the previous action; (2) incorporate all outstanding issues by reference to the previous action; and (3) include the standard six-month response clause.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
See TMEP §§717 et seq. regarding reissuing of Office actions.
712 Signature on Response to Office Action
A response to an Office action must be personally signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §§2.62(b) and 11.18(a). The examining attorney must review the application record to determine whether the applicant is represented by a qualified practitioner, and must ensure that all responses and amendments are properly signed. See TMEP §§611.03(b) and 712.02 regarding the proper person to sign, and TMEP §§611.06 et seq. as to persons who have legal authority to bind various types of juristic entities.
The signatory must personally sign his or her name. In a document filed through TEAS, the person identified as the signer must manually enter the elements of the electronic signature. See TMEP §611.01(b).
The name of the person who signs the response should be set forth in printed or typed form immediately below or adjacent to the signature, or identified elsewhere in the filing (e.g., in a cover letter or other document that accompanies the filing). See TMEP §611.01(b).
See TMEP §611.01(c) regarding signature of electronically filed documents.
712.01 Persons Who May Sign Response
The examining attorney must ensure that the record establishes the authority of the persons who signs the response. Under 5 U.S.C. §500(d) and 37 C.F.R. §11.14(e), non-attorneys may not sign responses to Office actions or otherwise represent a party in a trademark proceeding before the USPTO. 37 C.F.R. §11.5(b)(2); TMEP §608.01. See TMEP §§602 et seq. regarding persons who are authorized to represent others before the USPTO, and
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TMEP §611.04 for examples of authorized and potentially unauthorized signatories.
If an applicant is represented by a qualified practitioner, the practitioner must personally sign the response. 37 C.F.R. §11.18(a). This applies to both in- house and outside counsel.
If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) must sign the response. 37 C.F.R. §2.62(b). In the case of joint applicants who are not represented by a qualified practitioner, all should sign the response. See TMEP §§611.06 et seq. for guidelines as to persons who have legal authority to bind various types of juristic entities. A person who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) is not entitled to sign responses to Office actions, unless he or she also has legal authority to bind the applicant or is a qualified practitioner.
Example: A corporate manager might have the firsthand knowledge and implied authority to act on behalf of the applicant required to verify facts under 37 C.F.R. §2.33(a)(2) and still not have legal authority to bind the applicant.
If the applicant is represented by a qualified practitioner, and the response consists only of a declaration (e.g., if the verification was omitted from the initial application and no other issues were raised in the Office action), the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a) (see TMEP §804.04), and no separate signature by the practitioner is required. However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the practitioner.
Similarly, if the applicant is pro se (i.e., is not represented by a qualified practitioner), and the response consists only of a declaration, the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a), and no separate signature by someone with legal authority to bind the applicant is required. However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant. 37 C.F.R. §§2.62(b) and 2.74(b).
If a response to an Office action appears to be signed by an unauthorized person (e.g., a foreign attorney who is not licensed to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must treat the response as incomplete and require the applicant to submit a properly signed response. The response cannot be ratified by an examiner’s amendment. See TMEP §§608.01, 611.05 et seq., and 712.03 for further information.
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These same principles apply to authorizations of examiner’s amendments and priority actions. See TMEP §§707.01 and 708.02.
712.02 Unsigned Response
The examining attorney should treat an unsigned response as an incomplete response, and should either call the applicant to obtain permission to enter an examiner’s amendment from an authorized party (if appropriate), or issue a notice of incomplete response granting the applicant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b). If the response does not require a verification that must be signed by the applicant (see TMEP §§804 et seq.), the applicant, a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner, may either request that the amendment(s) be entered through an examiner’s amendment, or submit a properly signed copy of the response. If the response requires a verification that must be signed by the applicant, the applicant must submit a signed verification. A duplicate of the original response can be submitted through TEAS (using the response to Office action form) or a properly signed copy of the original document can be submitted by fax (unless it is excluded by 37 C.F.R. §2.195(d)). The examining attorney must defer action on the merits of the response until the applicant files a properly signed response. In a TEAS Plus application, the applicant must file the response through TEAS, or the applicant will lose TEAS Plus status (see TMEP §819.02(b)).
The substitute response must be personally signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §§2.62(b) and 11.18(a). See TMEP §§611.03(b) and 712.02 for further information about the proper party to sign.
If an applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66. The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146. See TMEP §1713.01.
712.03 Response Signed by an Unauthorized Person
Notice of Incomplete Response. A response to an Office action must be personally signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner (see TMEP §§602 et seq.). 37 C.F.R. §§2.62(b) and 11.18; TMEP §§611.03(b) and 712.02. When it appears that a response to an Office action was signed by an improper party (e.g., a foreign
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attorney who is not licensed to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must treat the response as incomplete. The examining attorney must issue a notice of incomplete response granting the applicant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b) (see TMEP §718.03(b)), and send the notice to the correspondence address of record. See TMEP §611.05(a). The examining attorney should defer action on the merits of the response until a properly signed response is filed.
Applicant’s Reply to Notice of Incomplete Response. If the person who signed the response was authorized to sign, the applicant’s reply to the notice of incomplete response should state the nature of the relationship of the signer to the applicant. If the signer has legal authority to bind the applicant, the person should so state, and should set forth his or her title or position. If the signer is an attorney authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14(a), the attorney should identify him or herself as an attorney and indicate the United States state bar of which he or she is a member in good standing. If the signer meets the requirements of either 37 C.F.R. §11.14(b) or §11.14(c), the person should explain how he or she meets these requirements. See TMEP §611.05(b) for further information.
If the person who signed the response is not an authorized signer, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant may telephone the examining attorney to authorize such an amendment. Otherwise, the applicant must submit a response signed by the applicant or someone with legal authority to bind the applicant (see TMEP §§712.01 et seq.), or by a qualified practitioner. This should be done through TEAS (using the response to Office action form), or may be done by fax (unless it is excluded by 37 C.F.R. §2.195(d)). In a TEAS Plus application, the applicant must file the response through TEAS, or the applicant will lose TEAS Plus status (see TMEP §819.02(b)). See TMEP §611.01(c) regarding signature of documents submitted through TEAS. When a response is signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.
Unsatisfactory Response or No Response. If no acceptable response is received within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66. The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146. See TMEP §1713.01.
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713 Examination of Amendments and Responses to Office Actions
37 C.F.R. §2.63. Reexamination. (a) After response by the applicant, the application will be reexamined or
reconsidered. If registration is again refused or any formal requirement[s] is repeated, but the examiner’s action is not stated to be final, the applicant may respond again.
(b) After reexamination the applicant may respond by filing a timely petition to the Director for relief from a formal requirement if: (1) The requirement is repeated, but the examiner’s action is not made final, and the subject matter of the requirement is appropriate for petition to the Director (see §2.146(b)); or (2) the examiner’s action is made final and such action is limited to subject matter appropriate for petition to the Director. If the petition is denied, the applicant shall have until six months from the date of the Office action which repeated the requirement or made it final or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement. A formal requirement which is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board.
The examining attorney will consider the applicant’s response and will determine whether the mark may be approved for publication or registration. The examining attorney must carefully consider all arguments, comments, and amendments made or proposed by the applicant.
If the applicant’s response has put the application in condition for approval for publication for opposition or registration on the Supplemental Register, the examining attorney will approve the application for publication or registration, as appropriate.
If the applicant’s response has not put the application in condition for publication or registration, the examining attorney will issue an Office action, or telephone or e-mail the applicant, depending on the circumstances.
If the applicant’s response does not present any new issues, and the applicant has had an opportunity to reply to all points raised by the examining attorney, the examining attorney’s next action should be stated to be final. See TMEP §§714 et seq.
If the examining attorney has cited an earlier-filed conflicting application, and the applicant responds by arguing that there is no likelihood of confusion, the examining attorney should suspend the application pending disposition of the conflicting application, if applicant’s arguments are not persuasive. See TMEP §716.02(c) regarding suspension pending disposition of an earlier-filed conflicting application, TMEP §716.03 regarding the applicant’s request to
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remove an application from suspension, and TMEP §§1208 et seq. regarding conflicting marks in pending applications.
713.01 Previous Action by Different Examining Attorney
When assigned to act on an application that was previously handled by a different examining attorney, the examining attorney should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error (see TMEP §706.01) to act consistently.
713.02 Noting All Outstanding Refusals or Requirements
When acting on an amendment or response to an Office action, the examining attorney must note all outstanding refusals or requirements in every Office action. The examining attorney must indicate whether particular refusals or requirements are withdrawn or maintained, and whether the applicant’s response is acceptable, where appropriate.
To prevent any misunderstanding, every refusal or requirement in the prior action that is still outstanding must be referenced in any subsequent action. Even when suspending action on an application, the examining attorney must note all outstanding refusals or requirements. While this is done as a courtesy to prevent any misunderstanding, a refusal or requirement issued in a previous action remains in effect unless the examining attorney specifically indicates that it has been withdrawn. If an examining attorney issues an Office action that does not mention an outstanding refusal or requirement that was raised in a previous action, the refusal or requirement may be made final in a subsequent action, if the application is otherwise in condition to be made final.
713.03 Response to Applicant’s Arguments
When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments.
714 Final Action
37 C.F.R. §2.64. Final action. (a) On the first or any subsequent reexamination or reconsideration the
refusal of the registration or the insistence upon a requirement may be stated to be final, whereupon applicant’s response is limited to an appeal, or to a compliance with any requirement, or to a petition to the Director if permitted by §2.63(b).
(b) During the period between a final action and expiration of the time for filing an appeal, the applicant may request the examiner to reconsider the final
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action. The filing of a request for reconsideration will not extend the time for filing an appeal or petitioning the Director, but normally the examiner will reply to a request for reconsideration before the end of the six-month period if the request is filed within three months after the date of the final action. Amendments accompanying requests for reconsideration after final action will be entered if they comply with the rules of practice in trademark cases and the Act of 1946.
(c)(1) If an applicant in an application under section 1(b) of the Act files an amendment to allege use under §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.
(2) If the amendment to allege use under §2.76 is acceptable in all respects, the applicant will be notified of its acceptance.
(3) If, as a result of the examination of the amendment to allege use under §2.76, the applicant is found not entitled to registration for any reason not previously stated, applicant will be notified and advised of the reasons and of any formal requirements or refusals. The Trademark Examining Attorney shall withdraw the final action previously issued and shall incorporate all unresolved refusals or requirements previously stated in the new non-final action.
714.01 Not Permissible on First Action
A first action by an examining attorney may not be a final action. An applicant is entitled to at least one opportunity to reply to any issue raised by the examining attorney.
714.02 Not Permissible on Suspension
A letter of suspension cannot be made final. See TMEP §§716 et seq. regarding suspension.
714.03 When Final Action is Appropriate
Final action is appropriate when a clear issue has been developed between the examining attorney and the applicant, i.e., the examining attorney has previously raised all outstanding issues and the applicant has had an opportunity to respond to them.
For a second action to be made final, all requirements or refusals must have been made in the first action. No refusal or requirement may be made final, even if it is a repeated refusal or requirement, unless the entire action is made final. Thus, if the examining attorney makes a new refusal or requirement in a second or subsequent action, a repeated refusal or requirement may not be made final.
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In a §44(d) application, the examining attorney may not issue a final action until the applicant submits a copy of the foreign registration. When the application is otherwise in condition for final refusal, the examining attorney must suspend action on the application pending receipt of a copy of the foreign registration. The notice of suspension must indicate all outstanding refusals or requirements that will be made final upon receipt of the foreign registration if no new issues are raised. See TMEP §§716.02(b) and 1003.04(b).
Second actions should be final actions whenever possible. While an applicant is entitled to a full and fair hearing, it is in the interest of the public that prosecution be limited to as few actions as is consistent with proper examination. Neither the Act nor the rules of practice give an applicant the right to an extended prosecution.
See TMEP §§714.05 et seq. for further discussion of when an examining attorney should issue a nonfinal action rather than a final action, and TMEP §714.06 regarding final actions that are premature.
714.04 Form of the Final Action
When making an action final, the examining attorney must restate any requirements or refusals that remain outstanding, and must cite the rule(s) and/or statute(s) that provide the basis for these refusals or requirements. The examining attorney should place all evidence in support of his or her refusal in the record at the time the final action is issued.
The final action should include a clear and unequivocal statement that the refusal or requirement is final. When there is more than one ground set out as the basis for the final action, the action may conclude with a paragraph containing wording such as “This action is made FINAL” or “This is a FINAL action,” which covers all grounds.
The final action must also mention any refusals or requirements that have been withdrawn. See TMEP §713.02.
The examining attorney must include a statement that the only proper response to a final action is an appeal to the Board (or a petition to the Director, if permitted under 37 C.F.R. §2.63(b)), or compliance with the outstanding requirement(s). 37 C.F.R. §2.64(a).
A final action must include a six-month response clause (see TMEP §705.08) so that is it clear that the applicant must file a timely response to avoid abandonment of the application.
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714.05 Delineating New Issues Requiring Issuance of Nonfinal Action
It is sometimes difficult to determine what constitutes a new issue requiring a new nonfinal action, rather than a final action, after receipt of a response. See TMEP §§714.05(a) through 714.05(f) regarding the propriety of issuing a final action in specific situations, and TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after date on which the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
714.05(a) Unacceptable Amendment Proposed By Applicant
Generally, an unacceptable amendment raises a new issue requiring a new nonfinal action, unless the amendment is a direct response to a previous requirement.
If an amendment is not offered in direct response to a requirement, and the amendment is not acceptable, the examining attorney generally must issue a new nonfinal action with a six-month response clause, addressing the issues raised by the amendment and continuing all other refusals and requirements. The following are examples of amendments that would require a new nonfinal action:
(1) Amendments to the drawing, unless the examining attorney had previously required that the drawing be amended;
(2) Amendments to the Supplemental Register and amendments to assert acquired distinctiveness under 15 U.S.C. §1052(f), unless the amendment is irrelevant to an outstanding refusal (see TMEP §714.05(a)(i));
(3) Amendments to disclaim the entire mark (see TMEP §1213.06);
(4) Amendments to the drawing that materially alter the mark, if the examining attorney had required a new drawing because the original drawing was of poor quality that could not be reproduced, but had not previously raised the issue of material alteration. See TMEP §714.05(c) regarding advisory statements.
However, evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a nonfinal action. See In re GTE Education Services, 34 USPQ2d 1478 (Comm’r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens,
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where the substitute specimens submitted with the request were deficient for same reason as the original specimens). Generally, the examining attorney may issue a final action if the same refusal or requirement was made before.
714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness
If registration is refused under §2(e)(1), §2(e)(2), or §2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(1), §1052(e)(2), or §1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter (e.g., product or container configurations (see TMEP §§1202.02(b)(i) and (ii)), color marks (see TMEP §§1202.05 et seq.), or marks that comprise matter that is purely ornamental (see TMEP §§1202.03 et seq.)), an amendment to the Supplemental Register or to claim acquired distinctiveness under 15 U.S.C. §1052(f) presents a new issue. This is true even if the examining attorney previously issued an advisory statement indicating that the examining attorney believed the mark to be unregistrable on the Supplemental Register or under §2(f).
If the examining attorney determines that the amendment does not overcome the refusal, the examining attorney should issue a new nonfinal refusal of registration with a six-month response clause. See TMEP §816.04 regarding refusal of registration after an amendment to the Supplemental Register, and TMEP §1212.02(h) regarding refusal of registration after an applicant submits a claim of acquired distinctiveness under §2(f).
However, if the amendment is irrelevant to an outstanding refusal, the examining attorney may issue a final refusal or requirement. For example, if registration is refused under §2(a) (see TMEP §§1203 et seq.), §2(b) (see TMEP §1204), §2(d) (see TMEP §§1207 et seq.), §2(e)(3) (see TMEP §1210.01(b)), or §2(e)(5) (see TMEP §§1202.02(a) et seq.) of the Trademark Act, an amendment to the Supplemental Register or a claim of distinctiveness under §2(f) does not raise a new issue, and the examining attorney may issue a final refusal. See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (amendment to the Supplemental Register in response to a refusal of registration under §2(a) does not raise a new issue). Likewise, in a §66(a) application, an amendment to the Supplemental Register does not raise a new issue, because a mark in a §66(a) application is not eligible for registration on the Supplemental Register. Section 68(a)(4) of the Trademark Act, 15 U.S.C. §1141h(a)(4). Thus, an amendment to the Supplemental Register cannot overcome the refusal.
Exception: An amendment to the Supplemental Register in a §1(b) application for which no allegation of use has been filed does raise a new issue, because the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce.
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37 C.F.R. §2.75(b); TMEP §1102.03. In this situation, if the applicant files a proper amendment to allege use or statement of use, the examining attorney will consider the amendment to the Supplemental Register.
See TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.
714.05(a)(ii) Amendment of Identification of Goods/Services
If the applicant responds to a nonfinal Office action requiring an amendment to the identification of goods/services, and the examining attorney determines that the identification is still unacceptable, generally the examining attorney must issue a final requirement to amend the identification of goods/services. There are only two exceptions to this rule:
(1) If the amended identification is broader in scope than the original identification, and the prior Office action failed to advise the applicant that amendments broadening the identification are prohibited under 37 C.F.R. §2.71(a), the examining attorney cannot issue a final Office action.
(2) If the amended identification sets forth goods/services in multiple classes, but the applicant has not submitted all the requirements for a multiple-class application (e.g., specimens and fees for all classes), and the prior Office action failed to advise the applicant that the missing elements were required, the examining attorney cannot issue a final Office action. See TMEP §§1403 et seq. regarding multiple- class applications.
If the examining attorney issues a nonfinal action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite, but is otherwise unacceptable (e.g., because it includes a registered trademark or service mark (see TMEP §1402.09)), this is not considered a new issue, and the examining attorney must issue a final Office action requiring amendment of the identification.
However, if the examining attorney issues a final action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but is otherwise unacceptable (e.g., because it includes a registered mark), the examining attorney should treat the response as incomplete, and grant the applicant additional time to cure this deficiency, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b) for further information about granting an applicant additional time to perfect an incomplete response. Examining attorneys are encouraged to try to resolve these issues by examiner’s amendment.
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714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application That Has Matured Into Registration
The examining attorney must issue a new nonfinal action when first refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), even if the applicant had been advised of the existence of an earlier-filed application before it matured into the registration on which the refusal is based.
In a §66(a) application, a new nonfinal refusal under §2(d) of the Act may be issued more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO, provided that the USPTO had notified the IB of the conflicting application prior to expiration of the 18- month period.
714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
Except as provided in TMEP §714.05(a)(ii), an advisory statement in an Office action indicating that a refusal or requirement will be issued if specified circumstances arise cannot serve as the foundation for issuing a final requirement or refusal in the next action. To establish the foundation for issuing a final refusal or requirement in the next Office action, an initial requirement or refusal must relate to matter that is of record at the time of the action.
714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal
Consent Agreement. If an applicant files a consent agreement in response to a nonfinal refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney should issue a final refusal, assuming the application is otherwise in condition for final refusal.
If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney should issue a new final refusal, i.e., an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement.
Assertion of Unity of Control. If an applicant asserts unity of control (see TMEP §§1201.07 et seq.) in response to a nonfinal refusal under §2(d), and the examining attorney determines that unity of control has not been established, the examining attorney should issue a final refusal, assuming that the application is otherwise in condition for final refusal.
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If an applicant asserts unity of control in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established, the examining attorney should issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause.
714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce
If an applicant submits a substitute specimen in response to a nonfinal refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127 (for trademarks), or §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, and 1127 (for service marks), and the mark on the substitute specimen does not agree with the mark on the drawing, but the specimen would otherwise be acceptable to show use in connection with the goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. See TMEP §807.12. If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal, assuming the application is otherwise in condition for final refusal, because the substitute specimen does not present a new issue. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark in commerce, remains the same.
714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
If an applicant submits a substitute specimen in response to a nonfinal refusal under §§1 and 45 of the Trademark Act, and the mark on the substitute specimen does not agree with the mark on the drawing, but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. See TMEP §807.12. If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal, assuming the application is otherwise in condition for final refusal, because the substitute specimen does not present a new issue. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark as a trademark or service mark, remains the same.
714.06 Applicant’s Recourse When Final Action is Premature
If an applicant believes that a refusal to register or a requirement has been made final prematurely, the applicant must raise the issue while the
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application is still pending before the examining attorney. It is not a ground for appeal to the Trademark Trial and Appeal Board. TBMP §1201.02. The applicant may raise the matter by filing a request for reconsideration with the examining attorney, or by contacting the managing attorney or senior attorney in the examining attorney’s law office. If the examining attorney does not withdraw the finality, the applicant may file a petition to the Director under 37 C.F.R. §2.146. See TMEP Chapter 1700 regarding petitions.
If, on request for reconsideration, the examining attorney finds the final action to have been premature, the examining attorney should issue a new nonfinal action with a six-month response clause.
715 Action After Issuance of Final Action
715.01 Proper Response to Final Action
An applicant must respond to a final action within six months of the issuance date. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a).
In general, the only proper response to a final action is a notice of appeal to the Board, a petition to the Director if permitted under 37 C.F.R. §2.63(b)(2), or compliance with an outstanding requirement. 37 C.F.R. §2.64(a).
After a final refusal to register on the Principal Register, an amendment requesting registration on the Supplemental Register or registration on the Principal Register under §2(f) of the Trademark Act may be a proper response in some circumstances. See TMEP §§714.05(a)(i), 816.04 and 1212.02(h).
715.02 Action After Final Action
Once an action has been properly made final, the examining attorney normally should not change his or her position. However, this does not mean that an applicant’s amendment or argument will not be considered after final action. An amendment may be accepted and entered if it places the application in condition for publication or registration, or will put the application in better form for appeal (i.e., reduce the issues on appeal). For example, an amendment requesting registration on the Supplemental Register or on the Principal Register under §2(f) may be a proper response to a final refusal of registration on the Principal Register in some circumstances. See TMEP §§714.05(a)(i), 816.04, and 1212.02(h).
If the examining attorney believes that an examiner's amendment (see TMEP §§707 et seq.) will immediately put the application in condition for publication or registration, or reduce the issues on appeal, the examining attorney should issue an examiner's amendment.
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If the applicant files a response that complies with all outstanding requirements and overcomes all outstanding refusals, the examining attorney should approve the application for publication or registration, as appropriate.
The applicant may request reconsideration after final action, within six months of the issuance date of the final action. However, filing a request for reconsideration does not extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(b).
See TMEP §716.06 regarding suspension after final action.
715.03 Request for Reconsideration After Final Action
Under 37 C.F.R. §2.64(b), the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board.
However, filing a request for reconsideration does not extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b) (2). 37 C.F.R. §2.64(b); TMEP §715.03(c). The USPTO cannot extend the statutory deadline for filing an appeal. 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a). Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the six-month period for response to the final action, or the application will be abandoned. See TMEP §§715.04 et seq. for information about processing a request for reconsideration filed with a notice of appeal. If the request for reconsideration is unsuccessful, and the applicant has not timely filed a notice of appeal, the application will be abandoned for incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
The examining attorney should construe any document filed after final action that responds to the outstanding refusals or requirements as a request for reconsideration. If the request for reconsideration does not overcome or resolve all outstanding refusals and requirements, the examining attorney must issue a written action that advises the applicant of the status of the application. The Office action should discuss any new evidence submitted with a request for reconsideration.
Regardless of whether an applicant submits new evidence with a request for reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for which reconsideration is sought. TBMP §1207.04. See In re Davey Products Pty Ltd., ___ USPQ2d ___, Ser. No. 77029776 (TTAB Aug. 7, 2009); In re Giger, 78 USPQ2d 1405 (TTAB 2006). If the evidence is significantly different from the evidence currently of record, the examining attorney must issue a new final refusal, i.e., an “Examiner’s Subsequent Final Refusal,” with a six-month response clause.
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In determining the appropriate action to take upon receipt of a request for reconsideration, the examining attorney must determine whether: (1) the applicant has timely filed a notice of appeal; and (2) the request for reconsideration presents a new issue. See TMEP §§715.03(a), 715.03(b), and 715.04 et seq. for further information as to how examining attorneys should handle requests for reconsideration.
715.03(a) Examining Attorney’s Action When No New Issue is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
If an examining attorney is not persuaded by the request for reconsideration and no new issues have been raised, the examining attorney should deny the request. See TMEP §715.03(b) regarding requests for reconsideration that raise a new issue, and TMEP §§715.04 et seq. regarding requests for reconsideration filed in conjunction with a notice of appeal.
If there is time remaining in the response period, the examining attorney must issue an “Examiner’s Action Continuing a Final Refusal” that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied; (3) restates the final refusal; and (4) advises the applicant that the time for appeal runs from the issuance date of the final Office action. The examining attorney should advise the applicant that the applicant has the remainder of the response period to comply with any outstanding requirement and/or to file a notice of appeal to the Board. The Office action must not include a six-month response clause (see TMEP §705.08).
If the six-month period for response to the final action has expired, and the applicant has not timely filed a notice of appeal, the examining attorney must issue an Office action entitled “Abandoned – Due to Incomplete Response.” The action must indicate that the request for reconsideration is denied and the application is abandoned due to an incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
If the examining attorney denies the request for reconsideration and holds the application abandoned for incomplete response, the applicant may file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only if there is clear procedural error or abuse of discretion (see TMEP §706.01). In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994); In re Legendary Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992). See TMEP §1713.01. The unintentional delay standard of 37 C.F.R. §2.66 does not apply in this situation. See TMEP §1714.01(f)(ii).
If the request for reconsideration convinces the examining attorney that a refusal or requirement should be withdrawn, the examining attorney may
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withdraw the refusal or requirement and approve the application for publication or registration, if it is in condition for such action.
If the applicant has submitted a timely response, but there is no time remaining in the six-month response period, and the applicant has made a good faith but incomplete attempt to comply with all outstanding requirements and to overcome all outstanding refusals, the examining attorney has discretion under 37 C.F.R. §2.65(b) to issue an “Examiner’s Action Continuing a Final Refusal” that gives the applicant additional time to resolve the matters that remain outstanding. See TMEP §718.03(b). The Office action must not include a six-month response clause. This should be done only if the record indicates that the applicant can place the application in condition for approval by completing the response. If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. §2.65(b), the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate) is not extended. 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
If the examining attorney believes that an examiner's amendment (see TMEP §§707 et seq.) will immediately put the application in condition for publication or registration, the examining attorney should attempt to contact the applicant to obtain authorization to issue an examiner's amendment.
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new final action (i.e., an “Examiner’s Subsequent Final Refusal”) or a nonfinal action with a six-month response clause. For example, in the case of an amendment that asserts a claim of acquired distinctiveness under §2(f) for the first time, or an amendment to the Supplemental Register for the first time, but fails to place the application in condition for approval, the examining attorney should issue a nonfinal action. See TMEP §714.05(a)(i).
When the examining attorney issues a new nonfinal action after review of an applicant’s request for reconsideration, the Office action should explain that the applicant must respond to all requirements or refusals within six months of the issuance date of the action, but that the applicant should not file an appeal to the Board because an appeal would be premature under 15 U.S.C. §1070 and 37 C.F.R. §2.141(a).
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new final or nonfinal action. In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for
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reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for the same reason as original specimens).
If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney should issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. This provides applicant with the opportunity to respond before filing an appeal. Any response to the subsequent final refusal will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.03 et seq.
Example: If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an “Examiner’s Subsequent Final Refusal.” However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d).
Example: The examining attorney should issue an “Examiner’s Subsequent Final Refusal” if the applicant asserts unity of control (see TMEP §§1201.07 et seq.) in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established. See TMEP §714.05(d).
Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a subsequent final or nonfinal action. Generally, if the same refusal or requirement was made before, the examining attorney does not have to issue a subsequent final or nonfinal action.
See TMEP §§714.05 et seq. for further information about delineating new issues that require issuance of a nonfinal action.
When an application has been suspended after final action, and the grounds for refusal remain operative after the application is removed from suspension and no new issues have been raised, the examining attorney must issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. See TMEP §716.06.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
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715.03(c) Time for Appeal Runs from Issuance Date of Final Action
Filing a request for reconsideration does not stay the time for responding to a final refusal. 15 U.S.C. §1062(b); 37 C.F.R. §§2.64(b) and 2.142(a). If the examining attorney denies an applicant’s request for reconsideration, the deadline for filing a notice of appeal to the Board (or petition to the Director if permitted by 37 C.F.R. §2.63(b)(2)) runs from the issuance date of the final action. If this deadline has expired and the applicant has not filed a notice of appeal, the application will be abandoned due to an incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). The applicant may not file a petition to revive under 37 C.F.R. §2.66, based on unintentional delay. See TMEP §1714.01(f)(ii). The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. See TMEP §1713.01.
715.04 Request for Reconsideration Filed in Conjunction With Notice of Appeal
If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration. TBMP §1204. See TMEP §§1501 et seq. and TBMP Chapter 1200 for further information about ex parte appeals.
If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration. In this situation, the appeal is moot. If there are remaining unresolved refusals, the Board should be notified to resume the appeal.
715.04(a) Examining Attorney's Action When No New Issue is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed
If the examining attorney is not persuaded by the request for reconsideration, and no new issue is presented therein, the examining attorney should issue an “Examiner’s Action Denying Reconsideration of the Final Action” that acknowledges the request for reconsideration and indicates that it is denied, restates the final refusal(s), and advises the applicant that the Board will be notified to resume the appeal. An Office action denying reconsideration of the final action should not include a six-month response clause.
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715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new nonfinal Office action with a six-month response clause. For example, in the case of an amendment that asserts a claim of acquired distinctiveness under §2(f) for the first time, or an amendment to the Supplemental Register for the first time, but fails to place the application in condition for approval, a nonfinal action may be appropriate. See TMEP §714.05(a)(i).
If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney must issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. This provides applicant with the opportunity to respond before the appeal. For example, if an applicant files a consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an “Examiner’s Subsequent Final Refusal” that discusses applicant’s consent agreement. However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d). Any response to the subsequent final action will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.04 et seq.
When the examining attorney issues a new nonfinal or subsequent final action, the Office action should explain that the applicant must respond to all requirements or refusals within six months of the issuance date of the action and that the appeal will remain suspended while the application is on remand.
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new action. In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for the same reason as the original specimens).
Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a new action. Generally, if the same refusal or requirement was made before, the examining attorney may issue an Office action denying reconsideration of the final action.
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See TMEP §§714.05 et seq. for further information about delineating new issues that require issuance of a nonfinal action.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
716 Suspension of Action by USPTO
37 C.F.R. §2.67. Suspension of action by the Patent and Trademark Office.
Action by the Patent and Trademark Office may be suspended for a reasonable time for good and sufficient cause. The fact that a proceeding is pending before the Patent and Trademark Office or a court which is relevant to the issue of registrability of the applicant’s mark, or the fact that the basis for registration is, under the provisions of Section 44(e) of the Act, registration of the mark in a foreign country and the foreign application is still pending, will be considered prima facie good and sufficient cause. An applicant’s request for a suspension of action under this section filed within the 6-month response period (see §2.62) may be considered responsive to the previous Office action. The first suspension is within the discretion of the Examiner of Trademarks and any subsequent suspension must be approved by the Director.
The term “suspension of action” means suspending action by the examining attorney. It does not mean suspending or extending an applicant’s time to respond. The Trademark Act requires that an applicant respond within six months of an examining attorney’s Office action, and the examining attorney has no discretion to suspend or extend the time for the applicant’s response. 15 U.S.C. §1062(b).
The examining attorney should suspend an application only after all issues have been resolved or are in condition for final action, except the matter on which suspension is based.
716.01 Form of Suspension Notice
In a suspension notice, the examining attorney must specifically state that action is suspended and must omit any reference to a six-month response period. The examining attorney should also inform the applicant of the status of the application, i.e., that the mark appears to be otherwise entitled to be approved for publication or issue, or that the application is in condition for a final action.
If the application is in condition for a final action but for the matter necessitating suspension, the notice of suspension must clearly indicate which refusals or requirements will be made final when the application is removed from suspension. When the application is removed from
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suspension, the examining attorney must promptly issue a final action, assuming that no new issues have arisen.
716.02 Circumstances Under Which Action May Be Suspended
Under 37 C.F.R. §2.67, an examining attorney has the discretion to suspend an application “for good and sufficient cause.” The most common reasons for suspension of an application are discussed below.
As a general rule, the USPTO will not suspend an application to give an applicant time to secure a consent agreement.
Any request to stay a deadline for responding to an Office action pending disposition of a petition to the Director should be directed to the Deputy Commissioner for Trademark Examination Policy. If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Deputy Commissioner for Trademark Examination Policy. The examining attorney should not suspend action on an application pending a decision on petition to the Director. See 37 C.F.R. §2.146(g); TMEP §1705.06.
716.02(a) Applicant’s Petition to Cancel Cited Registration
If the examining attorney refuses registration under §2(d) of the Trademark Act in view of the mark in a prior registration, the applicant may file a petition to cancel the registration under 15 U.S.C. §1064 and, within a proper response period, inform the examining attorney that the petition to cancel has been filed. This will constitute a proper response to the §2(d) refusal, and may be done by telephone, if there are no other outstanding issues that require a written response. The examining attorney will then suspend further action until the termination of the cancellation proceeding, if the application is otherwise in condition for approval or final refusal. The applicant should provide the number of the cancellation proceeding, if available; however, if the applicant does not provide the cancellation number, the examining attorney may ascertain it from USPTO records.
The examining attorney should suspend further action only if the applicant states that the cancellation proceeding has already been filed or is being filed concurrently with the response to the Office action.
Although the examining attorney will determine the status of the cancellation proceeding through a routine status check (see TMEP §716.04), the applicant may call or e-mail to advise the examining attorney when the proceeding is terminated, in order to avoid any possible delay in removing the application from suspension.
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See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 or §71 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.
716.02(b) Submission of Copy of Foreign Registration in §44(d) Application
When an applicant who claims the benefit of a prior foreign application under §44(d) of the Act, 15 U.S.C. §1126(d), is required to submit a copy of a foreign registration, the applicant may respond to the requirement by stating that the foreign application is still pending. The examining attorney should then suspend further action pending receipt of a copy of the foreign registration, if the application is otherwise in condition for approval or final refusal. See TMEP §1003.04(a).
If an applicant asserts a claim of priority under §44(d) in addition to another basis, before suspending the application, the examining attorney must inquire whether the applicant wishes to retain §44(e) as a second basis for registration (based on the foreign registration that will issue from the foreign application on which the applicant relied for priority). See TMEP §1003.04(b) for further information.
If the applicant responds that it does want to assert a dual basis for registration and the application is otherwise in condition for publication or final refusal, the examining attorney should suspend further action pending receipt of a copy of the foreign registration.
During the suspension period, the examining attorney will issue an Office action approximately every six months after suspension to inquire as to the status of the foreign application. If the applicant does not respond to the inquiry, the application will be abandoned. See TMEP §716.05.
The examining attorney may suspend the application pending receipt of a copy of a foreign registration only in a §44(d) application. In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). TMEP §1004.01. However, the examining attorney may suspend a §44(e) application pending receipt of proof of renewal of the foreign registration. TMEP §1004.01(a).
716.02(c) Conflicting Marks in Pending Applications
When there are conflicting marks in pending applications, action on the application with the later effective filing date will be suspended (if the application appears to be otherwise in condition for publication or issue or for a final action) until the mark in the conflicting application with the earlier effective filing date is either registered or abandoned. 37 C.F.R. §2.83(c).
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See TMEP §§1208 et seq. for more information about conflicting marks in pending applications.
If the examining attorney has cited an earlier-filed pending application, the applicant may respond by arguing that there is no likelihood of confusion between the marks. If the examining attorney is not persuaded by the applicant’s arguments, the examining attorney should suspend the later-filed application pending disposition of the earlier-filed conflicting application. The suspension notice should include a statement that the applicant’s arguments were not persuasive. It is not necessary to address the merits of the applicant’s arguments prior to the initial suspension. See TMEP §716.03 regarding the applicant’s request to remove an application from suspension.
If the examining attorney discovers that an earlier-filed pending application was abandoned, but that a petition to revive is pending, the examining attorney should suspend the later-filed application pending disposition of the petition to revive. If the petition to revive is granted, the later-filed application will remain suspended until the mark in the earlier-filed application is registered or the earlier-filed application is again abandoned.
When an application is suspended pending the disposition of more than one earlier-filed conflicting application, and one of the conflicting applications matures into registration, the examining attorney will normally not issue a refusal of registration until all the remaining conflicting application(s) are registered or abandoned, in order to avoid issuing piecemeal refusals. However, if deemed appropriate, the examining attorney does have the discretion to issue a refusal of registration under §2(d) in this situation.
716.02(d) Inter Partes or Court Proceeding
When an examining attorney learns that a proceeding relevant to the registrability of an applicant’s mark is pending before the Trademark Trial and Appeal Board or a court, the examining attorney should call the proceeding to the applicant’s attention. If the applicant is not a party to the inter partes or court proceeding, the examining attorney must explain why the proceeding is relevant to the registrability of the applicant’s mark. If the examining attorney believes the proceeding may result in a decision that supports a refusal of registration of the applicant’s mark, the examining attorney must issue the refusal and give the applicant an opportunity to respond before suspending the application.
When an applicant requests suspension because a proceeding relevant to the registrability of the applicant’s mark is pending before the Board or a court, the applicant must submit a copy of the relevant pleadings, the docket number of the proceeding, and a written explanation of why the proceeding is relevant to the registrability of the mark. Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of
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a relevant application or registration. However, when resolution of the court action requires the court to consider questions of USPTO policy or procedure, the examining attorney should not assume that the court would prefer to decide such questions absent the USPTO’s decision in the consideration of an application. In these instances, action on an application should generally not be suspended. It is important to review the relevant pleadings, including the complaint and answer, before determining whether suspension is appropriate. The Office of the Solicitor may be consulted if there is a question as to whether suspension of the application is appropriate.
Before an application is suspended, the applicant must respond to all outstanding issues raised in the examining attorney’s Office action that are not related to the proceeding. The examining attorney should not suspend the application unless all matters not related to the proceeding are resolved or in condition for final action.
See TMEP §716.02(a) regarding suspension pending disposition of an applicant’s petition to cancel a cited registration under 15 U.S.C. §1064, and TMEP §716.03 regarding the applicant’s request to remove an application from suspension.
716.02(e) Suspension Pending Cancellation or Expiration of Cited Registration
When the applicant submits a timely affidavit or declaration of continued use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavit”) and/or an application for renewal under 15 U.S.C. §1059, the USPTO’s automated records are updated to indicate receipt of the document and the action taken on the document. The USPTO’s automated records are updated 30 days after the grace period expires to indicate that a registration is cancelled or expired if:
(1) No §8 affidavit has been filed before the end of the six-month grace period following the sixth year after the date of registration or publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c); or
(2) No §8 affidavit has been filed before the end of the six-month grace period following the end of any ten-year period after the date of registration; or
(3) No §9 renewal application has been filed before the end of the six- month grace period following the expiration of the previous term of registration.
See TMEP §§1602 et seq. regarding the duration of a registration, TMEP §1604.04 regarding the due dates for §8 affidavits, and TMEP §1606.03 regarding the due dates for §9 renewal applications.
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To avoid inadvertent cancellation or expiration of a registration due to a delay in entering a timely filed affidavit or renewal application into the records of the USPTO, the USPTO waits until 30 days after the expiration of the grace period for filing the §8 affidavit or §9 renewal application before updating its records to show that the registration is cancelled or expired.
The examining attorney must confirm the status of the cited registration to ensure that it is still active before issuing any refusal of registration under Trademark Act §2(d) or filing a brief on appeal of a §2(d) refusal.
If the examining attorney is ready to issue a nonfinal refusal of registration under §2(d), and TRAM shows that the registration is still active, the examining attorney must issue the refusal even if the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed and TRAM does not indicate that the registrant has filed a §8 affidavit and/or §9 renewal application. The examining attorney should not suspend the application, but should advise the applicant that the grace period for filing the §8 affidavit or §9 renewal application has passed and that it appears that the registration may be subject to cancellation under §8 and/or expiration under §9.
If the examining attorney is ready to issue a final refusal of registration under §2(d), and the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has not passed, the examining attorney must issue the final refusal. The examining attorney should not suspend action, because the cited registration is still active and the registrant has until the end of the grace period to submit the §8 affidavit and/or a §9 renewal application. Similarly, if the examining attorney is ready to issue a denial of a request for reconsideration of a final refusal of registration under §2(d), and the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has not passed, the examining attorney must issue the denial.
If the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, and the examining attorney is ready to issue a final refusal of registration under §2(d), or a denial of a request for reconsideration of a final refusal of registration under §2(d), the examining attorney should not issue the action until the USPTO’s automated records indicate that the registrant has filed the §8 affidavit or §9 renewal application, and the USPTO has accepted the §8 affidavit or granted renewal. Instead, the examining attorney should suspend action for six months pending final disposition of the cited registration.
If the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, and the examining attorney is ready to write an appeal brief, the examining attorney should request a remand so that the application can be suspended pending final disposition of the cited registration. The Board will issue an order suspending the appeal and
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remanding the case to the examining attorney. If the cited registration is cancelled or expires, the examining attorney should withdraw the §2(d) refusal and notify the applicant that it has been withdrawn. If an appropriate affidavit or renewal application is filed for the cited registration, the examining attorney should notify the Board; the Board will resume proceedings and reset the time for filing the examining attorney’s appeal brief. Similarly, if the cited registration is cancelled or expires, but the §2(d) refusal is only one of the issues on appeal, the examining attorney should notify the Board of the status of the cited registration. The Board will resume proceedings and reset the time for filing a brief. See TBMP §1213 regarding the suspension of an ex parte appeal pending cancellation of the cited registration under §8 or §9 of the Act.
The examining attorney cannot withdraw a refusal of registration under §2(d) until the TRAM system shows that the registration has actually been cancelled or expired.
See TMEP §1611 for information about how a registrant who has not timely filed a §8 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.
716.03 Applicant’s Request to Remove Application from Suspension
If an examining attorney suspends action on an application, and the applicant believes the suspension is improper, the applicant may file a request to remove the application from suspension. The applicant should state the reasons for the belief that the suspension is improper and attach any relevant evidence.
If persuaded by the request, the examining attorney should remove the application from suspension, resume examination of the application, and take appropriate action.
If not persuaded by the request, the examining attorney must issue a new suspension action that addresses the applicant’s arguments and explains the reasons why the request is not granted. The applicant’s recourse is to file a petition to the Director to review the examining attorney’s action continuing the suspension. The Director will reverse the examining attorney’s action only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. See TMEP Chapter 1700 for information about petitions.
716.04 Suspended Docket Checked
A legal instruments examiner (“LIE”) will review each case in the suspended docket at least every six months to determine whether continued suspension is appropriate. If the LIE determines that the application should remain suspended, he or she should perform the appropriate TRAM transaction to
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report the suspension check. If suspension is no longer necessary, the LIE will notify the examining attorney and the examining attorney will take the appropriate action.
716.05 Inquiry by Examining Attorney Regarding Suspended Application
In certain circumstances, if the application has been suspended for six months or more, the examining attorney will issue an Office action inquiring as to the status of the matter on which suspension was based, unless the information is available to the examining attorney in the USPTO’s databases. If the applicant does not respond to the Office action, the application will be abandoned for failure to respond. To expedite processing, the USPTO recommends that the applicant’s response to a suspension inquiry be filed through TEAS, at http://www.uspto.gov/teas/index.html, using the “Response to Suspension Inquiry or Letter of Suspension” form.
For example, if action is suspended pending the receipt of a copy of a foreign registration or proof of renewal of a foreign registration, the examining attorney will inquire every six months during the suspension period as to the status of the foreign application or registration. Similarly, for applications that are suspended pending the outcome of a civil action, the examining attorney will inquire every six months as to the status of the proceeding. If the foreign application or the civil action is still pending, a statement by the applicant to this effect is a proper response.
The examining attorney should not issue any inquiry about the status of a proceeding pending in the USPTO (e.g., an inter partes proceeding).
716.06 Suspension After Final Action
If the examining attorney determines that action on an application should be suspended after issuance of a final refusal, the examining attorney must issue a suspension notice. This may occur, for example, when the applicant files a petition to cancel a cited registration. See TMEP §716.02(a). The examining attorney should not “withdraw the finality” of the refusal in order to suspend; however, in the suspension notice, the examining attorney should inform the applicant that the refusal of registration is continued but that it is not necessary to respond to the final refusal until the application is removed from suspension.
If the application is eventually removed from suspension and the grounds for refusal remain operative, the examining attorney should issue an “Examiner’s Subsequent Final Refusal,” thereby reissuing the final refusal, and the applicant will have six months to respond. It is inappropriate to remove the case from suspension and immediately declare the application abandoned.
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717 Reissuing an Office Action
Sometimes, an Office action must be reissued because the action has been returned as undeliverable and/or because the applicant notifies the USPTO that the applicant did not receive the Office action. In these situations, the USPTO will not extend the deadline for response, unless the Office action was sent to the wrong address due to a USPTO error.
If there was a USPTO error, the USPTO will issue an Office action notifying the applicant that it may view and print the Office action via the TDR portal on the USPTO website at http://www.uspto.gov. The applicant will be given a new response period.
If there was no USPTO error, the USPTO will issue an Office action notifying the applicant that it may view and print the original Office action via the TDR portal on the USPTO website, but that the deadline for applicant’s response will not be extended.
A “USPTO error in sending the Office action to the wrong address” means that the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the date on which the action was issued. The transmittal of a response on letterhead bearing a new address is not a proper notice of change of address. The applicant must specifically instruct the USPTO to change the correspondence address. 37 C.F.R. §2.18. Applicants and attorneys have a duty to maintain a current and accurate correspondence address. This also applies to e-mail addresses, if the applicant has authorized the USPTO to send correspondence by e-mail. See TMEP §§609.02 et seq. regarding changes of address.
See TMEP §717.01 regarding Office actions returned as undeliverable, and TMEP §717.02 regarding non-receipt of Office actions.
717.01 Returned Office Action
If an Office action is returned to the USPTO because the United States Postal Service was not able to deliver it, or because an outgoing e-mail communication was undeliverable, USPTO personnel will review the record to determine whether the correspondence address was entered correctly and/or whether the applicant has filed a notice of change of address. See TMEP §717 regarding the reissuance of an Office action sent to the wrong address due to a USPTO error.
If the USPTO is ultimately unsuccessful in delivering or redelivering the Office action, the returned action and envelope should be scanned into the TICRS database. If no communication from the applicant is received within the period for response, the application will be abandoned.
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If outgoing e-mail is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record. See TMEP §§304 et seq. regarding e-mail.
See TMEP §403 for more information about returned correspondence.
717.02 Non-Receipt of Office Action
If an applicant notifies the USPTO that the applicant did not receive an action, either before or after the expiration of the response period, the examining attorney must check to determine whether the action was sent to the correspondence address of record. See TMEP §§609 et seq.
If the Office action was sent to the correspondence address of record, and there is time remaining in the response period, the examining attorney should direct the applicant to view the full record on the TDR portal on the USPTO website, and advise the applicant that the deadline for response runs from the original issuance date, and that a response must be received in the USPTO before this deadline to avoid abandonment. If the response period has expired, the examining attorney should advise the applicant that the application is abandoned, and that the applicant may file a petition to revive under 37 C.F.R. §2.66. See TMEP §§1714 et seq. regarding petitions to revive. In either situation, the examining attorney should make an appropriate note in the “Notes-to-the-File” section of the record.
If there is evidence in the record that the USPTO sent the Office action to the wrong address due to a USPTO error (see TMEP §717), the USPTO will reissue the action and provide the applicant with a new response period. The examining attorney should first ensure that the correspondence address has been corrected, and then e-mail the internal TM Clerical Support mailbox, stating that the action was sent to the wrong address, and requesting that the action be reissued with a new response period. The deadline for response will run from the new issuance date. If the application had been abandoned, it will be reinstated. See TMEP §1712.01 regarding reinstatement of applications that are abandoned due to USPTO error.
718 Abandonment
An abandoned application is an application for registration that is removed from the USPTO docket of pending applications because of express abandonment or because the applicant failed to take appropriate action within the specified response period.
718.01 Express Abandonment by Applicant or Applicant’s Attorney
37 C.F.R. §2.68. Express abandonment (withdrawal) of application. An
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application may be expressly abandoned by filing in the Patent and Trademark Office a written statement of abandonment or withdrawal of the application signed by the applicant, or the attorney or other person representing the applicant. Except as provided in §2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, affect any rights that the applicant may have in the mark which is the subject of the abandoned application.
37 C.F.R. § 2.135. Abandonment of application or mark. After the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant. The written consent of an adverse party may be signed by the adverse party or by the adverse party’s attorney or other authorized representative.
To expedite processing, the USPTO recommends that letters of express abandonment be filed through TEAS, at http://www.uspto.gov/teas/index.html. Generally, all express abandonments filed via TEAS are processed electronically and the TRAM database is automatically updated to indicate that the application has been expressly abandoned. TRAM generates a notice to the applicant that the application is abandoned. However, in the later stages after the application has been approved for publication, the TEAS system will not automatically process an incoming express abandonment, and the express abandonment must be reviewed manually. The Office is generally unable to withdraw a mark from publication or issue unless the express abandonment is received and processed at least twenty days before the scheduled publication date or registration issuance date.
Paper letters of express abandonment are reviewed by examining attorneys.
All letters of express abandonment must be signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.68; see TMEP §§608.01 and 611.02. The same principles that govern the signature of responses to Office actions (see TMEP §§712 and 712.01) apply to the signature of express abandonments. For express abandonments filed on paper, the examining attorney must ensure that the letter of express abandonment is signed by a proper party. If the applicant is represented by a qualified practitioner, the practitioner must personally sign the letter of express abandonment. 37 C.F.R. §11.18(a). If the applicant is pro se, the letter of express abandonment must be personally signed by the individual applicant or someone with legal authority to bind a juristic applicant. See TMEP §§611.06 et seq. for more information about persons who have legal authority to bind various types of juristic applicants, and TMEP §§611.05 et seq. and 712.03 regarding documents signed by unauthorized parties.
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An application cannot be expressly abandoned by examiner’s amendment.
When an applicant files a letter of express abandonment on paper that meets the requirements of 37 C.F.R. §2.68, the examining attorney should perform a TRAM transaction expressly abandoning the application, effective as of the filing date of the letter of express abandonment. TRAM will generate a letter notifying the applicant that the application is abandoned.
If it is unclear whether a document is a letter of abandonment, the examining attorney should contact the applicant to inquire about his or her intention before abandoning the application.
If an applicant files an express abandonment of an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, and wants to withdraw the abandonment to resume prosecution of the application, the applicant must petition the Director under 37 C.F.R. §2.146(a)(3) to request withdrawal of the express abandonment, within two months of the effective date of abandonment. 37 C.F.R. §2.146(d). However, such a petition will be granted only in an extraordinary situation. In re Glaxo Group Ltd., 33 USPQ2d 1535 (Comm’r Pats. 1993).
If the applicant files a written request to abandon the application after the commencement of an opposition proceeding, the request for abandonment must be filed with the Board, and must include the written consent of every adverse party to the proceeding. If the applicant files a request for abandonment without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant. 37 C.F.R. §2.135. If an applicant whose application is the subject of an opposition proceeding files an express abandonment of the application after the commencement of the opposition proceeding, but before receipt of the Board’s notice of the filing of the opposition, the Board will allow the applicant an opportunity to withdraw the abandonment because the abandonment, if not withdrawn, may result in entry of judgment against the applicant in the opposition. TBMP §602.01. It is not necessary to obtain consent of a potential opposer during an extension of time to oppose. TBMP §218.
In a §66(a) application, an applicant may file a letter of express abandonment either with the USPTO or with the IB.
718.02 Failure by Applicant to Take Required Action During Statutory Period
15 U.S.C. §1062(b). If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the
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application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.
Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a), an application becomes abandoned if the applicant fails to respond, or fails to respond completely, within the six-month statutory response period. See TMEP §§718.03 et seq. regarding incomplete responses. When an applicant is granted additional time to perfect its response under 37 C.F.R. §2.65(b) (TMEP §718.03(b)), but fails to respond or responds late, the date of abandonment is not affected. It remains the day after the date on which the six-month response period ends, since the grant of additional time to perfect a response does not extend the statutory six-month response period.
The examining attorney has no authority to accept a late response. If an applicant files a late response, the examining attorney must immediately send a notice to the applicant stating that the response was untimely; that the application is abandoned; and that the applicant may file a petition to revive under 37 C.F.R. §2.66 if the failure to timely respond was unintentional. See TMEP §§1714 et seq. regarding petitions to revive.
See TMEP §718.02(a) regarding partial abandonment.
718.02(a) Partial Abandonment
General Rule. Trademark Rule 2.65(a), 37 C.F.R. §2.65(a), provides that if a refusal or requirement is expressly limited to certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services. See notice at 68 Fed. Reg. 55748 (Sept. 26, 2003).
Office Action Must State That Refusal Applies Only to Certain Goods, Services or Classes. If the examining attorney issues a refusal or requirement that applies only to certain goods/services/class(es), this must be expressly stated in the Office action. Partial abandonment applies only where the Office action expressly states that a refusal or requirement is limited to only certain goods/services/class(es). Unless the action includes a clear and explicit statement that the refusal or requirement applies to only certain goods/services/class(es), the refusal or requirement will apply to all the goods/services/class(es), and failure to respond to the action will result in abandonment of the entire application.
Incomplete Response to Partial Refusal or Requirement. Partial abandonment may also occur when an applicant fails to file a complete response to a final refusal or final requirement that is expressly limited to only certain goods/services/class(es). If an applicant files an incomplete response to a nonfinal action that is limited to only certain goods/services/class(es), the
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examining attorney should generally issue an action making all outstanding requirements and refusals final rather than partially abandoning the application. See TMEP §§718.03 et seq. regarding incomplete responses. When an examining attorney holds an application abandoned for failure to file a complete response, the applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the holding. See TMEP §1713.01.
Failure to Respond to Partial Refusal or Requirement. When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods/services/class(es), the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained. The examiner’s amendment should clearly set forth the changes that will be made to the identification of goods/services in the application. No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation. TMEP §707.02. If the failure to respond to the partial refusal or requirement was unintentional, the applicant may file a petition to revive the deleted goods/services/classes under 37 C.F.R. §2.66, within two months of the issuance date of the examiner’s amendment. See TMEP §§1714 et seq. regarding petitions to revive.
Failure to Perfect Appeal of Partial Refusal or Requirement. Partial abandonment can also occur when a partial refusal or requirement is upheld on appeal, and the applicant fails to perfect an appeal to, or an appeal is dismissed by, the Court of Appeals for the Federal Circuit or civil court, or when an applicant withdraws or fails to prosecute an appeal of a partial refusal to the Board. In these situations, the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/class(es) to which the appeal pertained. No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation.
Use of Headings in Office Actions Encouraged. When issuing a partial refusal or requirement, the examining attorney is encouraged to use the heading “Partial Refusal” or “Partial Requirement,” so the record is clear that the refusal or requirement applies only to certain goods/services/class(es).
Use of Abandonment Advisory in Office Actions. When issuing a partial refusal or requirement, the examining attorney should advise the applicant that if the applicant does not respond to the Office action within the response period, certain goods/services/class(es) will be deleted from the application (abandoned) and the application will proceed forward with only the remaining goods/services/class(es).
Requirements for Amendment of Identification of Goods/Services. See TMEP §1402.13 regarding an examining attorney’s requirement for amendment of an identification of goods/services that includes some terminology that is
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indefinite and some terminology that is acceptable, and the processing of applications in which an applicant fails to respond to such a requirement.
Requirements for Fees to Cover All Classes in a Multiple Class Application. If the fees paid in a multiple-class application are sufficient to cover one class but insufficient to cover all the classes, the examining attorney will require that the applicant submit the additional fees or specify the classes to which the original fee(s) should be applied. If the applicant does not respond to the Office action, the entire application will be abandoned.
718.03 Incomplete Response
37 C.F.R. §2.65. (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 §§2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to §2.142, if appropriate, is a response that avoids abandonment of an application.
(b) When action by the applicant filed within the six-month response period is a bona fide attempt to advance the examination of the application and is substantially a complete response to the examiner’s action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of abandonment is considered.
Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a), an applicant must respond completely to each issue raised in the examining attorney’s Office action to avoid abandonment. A response is incomplete if it: (1) does not address one or more of the requirements or refusals made in the Office action; (2) is unsigned; or (3) is signed by an unauthorized person.
Unsigned Responses. If a response is unsigned, the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney should issue a notice of incomplete response, granting the applicant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b). The applicant must submit a properly signed copy of the response, or, if all issues raised are proper subject matter for an examiner’s amendment, the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s previously recognized qualified practitioner may authorize the examining attorney to enter an examiner’s
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amendment. If all issues raised are not proper subject matter for an examiner’s amendment, the applicant may not ratify the unsigned response through an examiner’s amendment. See TMEP §712.02. If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney should hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). Note: A new qualified practitioner may not authorize an examiner’s amendment, because a telephone call from a qualified practitioner does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(c). See TMEP §604.01.
Responses Signed by Unauthorized Persons. If a response is signed by an unauthorized party (e.g., a foreign attorney who is not a member in good standing of the bar of the highest court of a state in the United States or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney should issue a notice of incomplete response, granting the applicant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b), and send the notice to the correspondence address of record. The applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant (see TMEP §§611.06 et seq. and 712.01 et seq.), or by a qualified practitioner (see TMEP §§602 et seq.). 37 C.F.R. §2.62(b). Where a response was signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment. See TMEP §§611.05 et seq. and 712.03 for further information. If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney should hold the application abandoned for failure to file a complete response. See TMEP §718.03(a) regarding holdings of abandonment.
Properly Signed but Incomplete Responses to Nonfinal Actions. When an applicant files an incomplete response to a nonfinal action (i.e., does not address one or more of the requirements or refusals made in the Office action), the examining attorney should not hold the application abandoned. Instead, the examining attorney has the discretion to: (1) issue a final action, if the application is in condition for final action; or (2) issue a notice of incomplete response granting the applicant additional time to complete the response, if the response meets the requirements of 37 C.F.R. §2.65(b) (see TMEP §718.03(b)). If the application is not in condition for final action, and the response does not meet the requirements of 37 C.F.R. §2.65(b), the examining attorney should issue another nonfinal action, explaining why the response was incomplete, and continuing all outstanding refusals and requirements.
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A written disagreement with the examining attorney’s refusal or requirement may be a complete response to a nonfinal action with respect to that refusal or requirement.
Exception - TEAS Responses Consisting Only of a Signature. Occasionally, the USPTO receives a response to an Office action filed through TEAS which consists only of a signature. This is generally due to user error. If an examining attorney receives a TEAS response to a nonfinal action that consists only of a signature, the examining attorney should not issue a notice of incomplete response granting the applicant additional time to complete the response. Instead, the examining attorney must issue a final action, if the application is in condition for a final action. If the application is not in condition for final action (e.g., because an earlier-filed conflicting application has matured into a registration), the examining attorney should issue another nonfinal action, with a six-month response clause, explaining why the response was incomplete, continuing all outstanding refusals and requirements, and addressing any new issues.
Properly Signed but Incomplete Responses to Final Actions. When an applicant files an incomplete response to a final action, the examining attorney has the discretion to: (1) hold the application abandoned for failure to respond completely, if the time for responding to that action has expired (see TMEP §718.03(a)); or (2) issue a notice of incomplete response granting the applicant additional time to perfect the response, if the applicant meets the requirements of 37 C.F.R. §2.65(b) (see TMEP §718.03(b)). See TMEP §715.01 regarding a proper response to a final refusal, and TMEP §§715.03 et seq. regarding the examining attorney’s response to an applicant’s request for reconsideration of a final Office action.
Exception - TEAS Responses Consisting Only of a Signature. If an examining attorney receives a TEAS response to a final action (or a request for reconsideration) that consists only of a signature, the examining attorney should not hold the application abandoned for failure to respond completely. Instead, the examining attorney must issue a notice of incomplete response granting the applicant additional time to complete the response, with an appropriate explanation. If the applicant then fails to submit a complete response (or a request for reconsideration) that resolves all outstanding issues within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. Thus, after affording the applicant one opportunity to perfect, if the applicant fails to do so within the six-month period (or the additional 30 days) provided, the examining attorney must then follow the standard procedure regarding incomplete responses.
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Non-Responsive Communications. An inquiry, a request to extend the response period, or a communication on a matter unrelated to the preceding Office action should be treated as a non-responsive communication, not as an incomplete response. See TMEP §719 for further information.
Failure to Respond to Notice of Incomplete Response. If the examining attorney issues a notice of incomplete response, and the applicant fails to respond or submits an unsatisfactory response to the notice, the examining attorney will abandon the application for incomplete response. See TMEP 718.03(b).
See TMEP §717.02 regarding the procedure for handling an applicant’s claim that the applicant did not receive the Office action.
718.03(a) Holding of Abandonment for Failure to Respond Completely
Generally, the examining attorney should not hold an application abandoned when an applicant files an incomplete response to a nonfinal action. See TMEP §718.03. However, the examining attorney may hold an application abandoned if the applicant files an incomplete response to a final action, and the time for responding to that action has expired. In such cases, the examining attorney should issue an “Abandoned Due to Incomplete Response” action, without a six-month response clause (see TMEP §705.08), stating that the application is abandoned due to an incomplete response, and explaining why. See TMEP §718.03(c) regarding an applicant’s request for reconsideration of an examining attorney’s holding of abandonment for failure to file a complete response, and TMEP §1713.01 regarding a petition to the Director for review of the examining attorney’s holding of abandonment for failure to file a complete response.
If the examining attorney acts on an incomplete response to a final action before the response period has expired, the examining attorney cannot abandon the application. Instead, the examining attorney should issue an “Examiner’s Action Continuing a Final Refusal,” without a six-month response clause, explaining why the response is incomplete, and advising the applicant that to avoid abandonment, a proper response must be filed within the period for response to the previous Office action. If there are less than 30 days remaining in the response period, and the response meets the requirements of 37 C.F.R. §2.65(b), the examining attorney has discretion to issue an “Examiner’s Action Continuing a Final Refusal,” giving the applicant an additional 30 days to perfect the response. See TMEP §718.03(b).
718.03(b) Granting Additional Time to Perfect Response
Under 37 C.F.R. §2.65(b), the examining attorney has discretion to give an applicant additional time to perfect the response if:
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(1) the response was filed within the six-month period;
(2) the response was a bona fide attempt to advance the examination;
(3) the response was a substantially complete response to the examining attorney’s action; and
(4) consideration of some matter or compliance with some requirement was inadvertently omitted.
If the examining attorney decides that the response meets all four criteria, he or she should issue a notice of incomplete response explaining why the response is incomplete and granting the applicant 30 days, or to the end of the response period set forth in the action, whichever is longer, to complete the response. The examining attorney must not include a six-month response clause in the action.
If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. §2.65(b), the time for filing an appeal to the Trademark Trial and Appeal Board (or a petition to the Director under 37 C.F.R. §2.63(b)) is not extended. The applicant must file a notice of appeal (or petition) within six months of the issuance date of the final action. 15 U.S.C. §1062(b); 37 C.F.R. §§2.64(b) and 2.142(a).
If the applicant fails to complete the response within the time granted pursuant to 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive due to unintentional delay, pursuant to 37 C.F.R. §2.66. The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. The Director will reverse the examining attorney’s action on petition only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. See TMEP §1713.01.
If an applicant does not receive an action granting additional time to complete a response, or if the applicant is unable to respond to the action due to some other extraordinary circumstance, the applicant may file a petition to the Director to exercise supervisory authority under 37 C.F.R. §2.146. If the petition is granted, the USPTO will send a notice to the applicant directing the applicant to view the action on the TDR portal on the USPTO website at http://portal.uspto.gov/external/portal/tow. The applicant will receive a new 30-day period in which to perfect the response. This does not extend the time for filing a notice of appeal to the Board (or petition to the Director under 37 C.F.R. §2.63). 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
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718.03(c) Reconsideration of Holding of Abandonment
If an examining attorney holds an application abandoned for failure to file a complete response, the applicant may file a request for reconsideration of the examining attorney’s holding, arguing that the response was complete. While the examining attorney has no authority to act on an application when no response was filed within the statutory response period, the examining attorney does have the authority to reverse his or her holding as to whether or not a response received during the statutory period was a complete response. If the examining attorney reverses his or her holding of abandonment for failure to file a complete response, the TRAM System must be updated to withdraw the abandonment and show the correct status of the application.
The applicant may also contact the managing attorney or senior attorney and request review of the examining attorney’s action. If the managing attorney or senior attorney believes that the holding of abandonment was improper, he or she will direct the examining attorney to reverse the holding of abandonment.
If the examining attorney does not reverse the holding of abandonment, the applicant may petition the Director to reverse the holding. A petition to reverse a holding of abandonment is not the same as a petition to revive an abandoned application. The Director will reverse the examining attorney’s holding of abandonment only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. The “unintentional delay” standard does not apply. See TMEP §1713.01.
718.04 Failure to File Statement of Use
Under 15 U.S.C. §1051(d)(4), an application under §1(b) of the Act is abandoned if the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use. 37 C.F.R. §§2.65(c) and 2.88(h); TMEP §§1108.01 and 1109.04.
The ITU/Divisional Unit will abandon the application if the applicant fails to file a statement of use or request for an extension of time to file a statement of use within six months of the issuance date of the notice of allowance, or within a previously granted extension period. The USPTO will send a computer-generated notice of abandonment to the applicant.
If the failure to timely file the statement of use or extension request was unintentional, the applicant may file a petition to revive under 15 U.S.C. §1051(d)(4) and 37 C.F.R. §2.66. See TMEP §§1714 et seq.
718.05 Failure to Perfect Appeal
An application may become abandoned because of withdrawal of, or failure to prosecute, an appeal to the Trademark Trial and Appeal Board. 15 U.S.C. §1062(b); TBMP §1203.02(a); TMEP §1501.
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An application may also become abandoned because of failure to perfect an appeal, or dismissal of an appeal, to the Court of Appeals for the Federal Circuit or civil court.
See TMEP §718.02(a) regarding partial abandonment due to failure to perfect an appeal.
718.06 Notice of Abandonment for Failure to Respond
If no response is received by the USPTO within six months of the issuance date of an Office action, the application is sent to the examining attorney to be abandoned or partially abandoned, as appropriate. The examining attorney must check the record to ensure that there is no response and that the Office action was sent to the correspondence address of record. See TMEP §§717 et seq. regarding reissuing an Office action that was sent to the wrong address due to a USPTO error. The examining attorney must also check to see whether the Office action contained a partial refusal or requirement. See TMEP §718.02(a) regarding partial abandonment.
An application is considered to be abandoned as of the day after the date on which a response was due, even though the examining attorney performs the TRAM transaction that reports the abandonment at a later date. The USPTO sends a computer-generated notice of abandonment to the correspondence address listed in the application.
Applications that are abandoned after ex parte appeals or inter partes proceedings are considered abandoned as of the date of the action by the Board that caused the application to abandon (e.g., affirming the examining attorney’s refusal or sustaining an opposition). However, the TRAM transaction reporting the abandonment is not performed until a month after expiration of the period for appeal from the Board’s decision.
718.07 Revival or Reinstatement of Abandoned Application - New Search Required
When an abandoned application is revived or reinstated, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the search shows that the same examining attorney handled a later-filed conflicting application that has been approved for publication, the examining attorney should request jurisdiction (TMEP §1504.04(a)) and suspend the later-filed application pending disposition of the earlier-filed (revived) application. 37 C.F.R. §2.83(c); TMEP §1208.02(c).
If the new search shows that the same examining attorney handled a later- filed conflicting application that has been approved for registration, the examining attorney should withdraw the application from issue (if possible) and suspend it. However, if a later-filed conflicting application is already registered, the USPTO is without authority to cancel the registration. The
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examining attorney must refuse registration of the earlier-filed (revived) application under 15 U.S.C. §1052(d). In this situation, an applicant may file a petition to cancel the registration under Section 14 of the Trademark Act, 15 U.S.C. §1064.
If the later-filed conflicting application is being handled by a different examining attorney, the examining attorney handling the earlier-filed (revived) application should e-mail the other examining attorney to notify him or her of the revival or reinstatement. The examining attorney handling the later-filed application will follow the procedures set forth above.
See TMEP §§1714 et seq. regarding petitions to revive, TMEP §1712.01 regarding reinstatement of applications abandoned due to USPTO error, and TMEP §1713.01 regarding petitions to reverse an examining attorney’s holding of abandonment.
719 Non-Responsive Communications
An inquiry, a request to extend the response period, or a communication on a matter unrelated to the outstanding Office action should be treated as a “non- responsive communication,” not as an incomplete response to an outstanding Office action. If the applicant files a non-responsive communication while an Office action is outstanding, the examining attorney should send the applicant a letter acknowledging receipt of the communication, noting that the communication is non-responsive, and advising the applicant that a response to the outstanding Office action must be received within six months of the issuance date of the outstanding Office action to avoid abandonment. The examining attorney should perform the TRAM transaction indicating that an acknowledgment of receipt of a non-responsive communication has been sent to the applicant. If no response to the Office action is received within six months of the issuance date, the application must be abandoned for failure to respond.
720 Fraud Upon the USPTO
If an examining attorney suspects the possibility of fraud upon the USPTO in the ex parte examination of a trademark application, the following procedure must be followed.
(1) The examining attorney must bring the matter to the attention of the managing attorney.
(2) If the managing attorney concurs with the examining attorney as to the possibility of fraud upon the USPTO, the managing attorney will bring the matter to the attention of the Administrator for Trademark Policy and Procedure.
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(3) If the Administrator believes that the matter warrants further action, he or she will make an appropriate recommendation to the Commissioner for Trademarks.
Under no circumstances should any USPTO communication pertaining to fraud be made, either orally or in writing, by anyone in the Trademark Examining Operation, except as set forth in paragraphs 1 and 2 above.
These issues may ultimately be referred to the Office of Enrollment and Discipline.
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Chapter 800 Application Requirements
801 Types of Applications
801.01 Single or Combined Application
801.01(a) Single (Single-Class) Application
801.01(b) Combined (Multiple-Class) Application
801.02 Principal Register or Supplemental Register
801.02(a) Act of 1946, Principal Register
801.02(b) Act of 1946, Supplemental Register
802 Application Form
803 Applicant
803.01 Who May Apply
803.02 Name of Applicant
803.02(a) Individual
803.02(b) Partnership, Joint Venture, or Other “Firm”
803.02(c) Corporation and Association
803.03 Legal Entity of Applicant
803.03(a) Individual or Sole Proprietorship
803.03(b) Partnership, Joint Venture, or Other “Firm”
803.03(c) Corporation, Association, Organization, and Company
803.03(d) Joint Applicants
803.03(e) Trusts, Conservatorships, and Estates
803.03(e)(i) Business Trusts
803.03(f) Governmental Bodies and Universities
803.03(g) Banking Institutions
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803.03(h) Limited Liability Companies
803.03(i) Common Terms Designating Entity of Foreign Applicants
803.03(j) Federally Recognized Indian Tribe
803.03(k) Limited Liability Partnerships
803.04 Citizenship of Applicant
803.05 Address of Applicant
803.06 Applicant May Not Be Changed
804 Verification and Signature
804.01 Form and Wording of Verification in §1 or §44 Application
804.01(a) Verification with Oath
804.01(a)(i) Verification Made in Foreign Country
804.01(b) Declaration in Lieu of Oath
804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application
804.03 Time Between Execution and Filing of Documents - §1 or §44 Application
804.04 Persons Authorized to Sign Verification or Declaration
804.05 Verification of §66(a) Application
805 Identification and Classification of Goods and Services
806 Filing Basis
806.01 Requirements for Establishing a Basis
806.01(a) Use in Commerce - §1(a)
806.01(b) Intent-to-Use - §1(b)
806.01(c) Foreign Priority - §44(d)
806.01(d) Foreign Registration — §44(e)
806.01(e) Extension of Protection of International Registration - §66(a)
806.02 Multiple Bases
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806.02(a) Procedure for Asserting More Than One Basis
806.02(b) Applicant May File Under Both §1(a) and §1(b) in the Same Application
806.02(c) Examination of Specimens of Use in a Multiple-Basis Application
806.02(d) Abandonment of Multiple-Basis Applications
806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application is Based on Both §44 and §1(a)
806.02(f) Section 44(d) Combined With Other Bases
806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application
806.03 Amendments to Add or Substitute a Basis
806.03(a) When Basis Can be Changed
806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period
806.03(c) Amendment From §1(a) to §1(b)
806.03(d) Amendment From §44 to §1(b)
806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a)
806.03(f) Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application
806.03(g) Amendment From §1(b) to §44
806.03(h) Effect of Substitution of Basis on Application Filing Date
806.03(i) Verification of Amendment Required
806.03(j) Petition to Amend Basis After Publication - §1 or §44 Application
806.03(j)(i) Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance
806.03(j)(ii) Amending the Basis of a §1(b) Application Between Issuance of Notice of Allowance and Filing of Statement of Use
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806.03(j)(iii) Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration
806.03(k) Basis Cannot be Changed in §66(a) Application
806.03(l) §66(a) Basis Cannot be Added to §1 or §44 Application
806.04 Deleting a Basis
806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance
806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis
806.05 Review of Basis Prior to Publication or Issue
807 Drawing
807.01 Drawing Must Show Only One Mark
807.02 Drawing Must Be Limited to Mark
807.03 Standard Character Drawings
807.03(a) Requirements for Standard Character Drawings
807.03(b) List of Standard Characters
807.03(c) Drawings Containing Both a Standard Character Claim and Designs or Other Elements
807.03(d) Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration
807.03(e) Standard Character Drawing and Specimen of Use
807.03(f) Standard Character Drawing and Foreign Registration
807.03(g) Drawings in “Typed” Format With No Standard Character Claim
807.03(h) Drawings Where the Format Is Unclear
807.03(i) Typed Drawings
807.04 Special Form Drawings
807.04(a) Characteristics of Special Form Drawings
807.04(b) When Special Form Drawing is Required
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807.05 Electronically Submitted Drawings
807.05(a) Standard Character Drawings Submitted Electronically
807.05(a)(i) Long Marks in Standard Character Drawings
807.05(b) Special Form Drawings Submitted Electronically
807.05(c) Requirements for Digitized Images
807.06 Paper Drawings
807.06(a) Type of Paper and Size of Mark
807.06(b) Long Marks in Standard Character Drawings
807.06(c) Separate Drawing Page Preferred
807.07 Color in the Mark
807.07(a) Requirements for Color Drawings
807.07(a)(i) Color Must Be Claimed as a Feature of the Mark
807.07(a)(ii) Applicant Must Specify the Location of the Colors Claimed
807.07(b) Color Drawings Filed Without a Color Claim
807.07(c) Color Drawings Filed With an Incorrect Color Claim
807.07(d) Color Drawings that Contain Black, White, or Gray
807.07(d)(i) Applications Under §1
807.07(d)(ii) Applications Under §44
807.07(d)(iii) Applications Under §66(a)
807.07(e) Black-and-White Drawings and Color Claims
807.07(f) Black-and-White Drawings that Contain Gray or Black- and-White Drawings with a Mark Description that Refers to Black, White, or Gray
807.07(f)(i) TEAS, TEAS Plus, and §66(a) Applications
807.07(f)(ii) Applications Filed on Paper
807.07(g) Drawings in Applications Filed Before November 2, 2003
807.08 Broken Lines to Show Placement
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807.09 “Drawing” of Sound, Scent, or Non-Visual Mark
807.10 Three Dimensional Marks
807.11 Marks With Motion
807.12 Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration
807.12(a) Applications Under §1 of the Trademark Act
807.12(a)(i) Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen
807.12(a)(ii) Punctuation on the Drawing but not on the Specimen
807.12(a)(iii) Punctuation on the Specimen but not on the Drawing
807.12(b) Applications Under §44 of the Trademark Act
807.12(c) Applications Under §66(a) of the Trademark Act
807.12(d) Mutilation or Incomplete Representation of Mark
807.12(e) Compound Word Marks and Telescoped Marks
807.13 Amendment of Mark
807.13(a) Amendment of Mark in Applications Under §§1 and 44
807.13(b) Mark in §66(a) Application Cannot be Amended
807.14 Material Alteration of Mark
807.14(a) Removal or Deletion of Matter from Drawing
807.14(b) Addition or Deletion of Previously Registered Matter
807.14(c) Addition or Deletion of Punctuation
807.14(d) Amendments to Correct “Internal Inconsistencies”
807.14(e) Amendments to Color Features of Marks
807.14(e)(i) Black-and-White Drawings
807.14(e)(ii) Marks that Include Color and Other Elements
807.14(e)(iii) Color Marks
807.14(f) Material Alteration: Case References
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807.15 Substitute Drawings
807.16 Amendment of Drawings by the USPTO
807.17 Procedures for Processing Unacceptable Amendments to Drawings
807.18 Mark Drawing Code
808 Description of Mark
808.01 Guidelines for Requiring Description
808.01(a) Meaning of Term in Mark
808.01(b) Lining and Stippling Statements for Drawings
808.02 Description Must Be Accurate and Concise
808.03 Examination Procedure for Descriptions
808.03(a) Accurate and Complete Descriptions
808.03(b) No Description in Application
808.03(c) Accurate But Incomplete Description in Application or Amendment
808.03(c)(i) Accurate But Incomplete Descriptions in Cases Where a Description is Needed to Clarify the Mark and Should be Printed
808.03(c)(ii) Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed
808.03(d) Inaccurate Description in Application or Amendment
808.03(e) Amending Descriptions
808.03(f) Updating Design Coding
809 Translation and Transliteration of Non-English Wording in Mark
809.01 Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration
809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language
809.01(b) Limited Exceptions to Rules for Translations
809.01(b)(i) Foreign Terms Appearing in English Dictionary
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809.01(b)(ii) Foreign Articles or Prepositions Combined with English Terms
809.01(b)(iii) Words From Dead or Obscure Languages
809.02 Equivalency in Translation
809.03 Printing of Translations and Transliterations
810 Filing Fee
810.01 Collection of Fees for Multiple Classes
810.02 Refunds
811 Designation of Domestic Representative
812 Identification of Prior Registrations of Applicant
812.01 Proving Ownership of Prior Registrations
813 Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark
813.01 Statement Printed in Official Gazette and on Registration Certificate
813.01(a) Name or Likeness is That of a Living Individual
813.01(b) Name or Likeness is Not That of a Living Individual
813.01(c) Updating TRAM Database
814 Requesting Additional Information
815 Application Filed on Supplemental Register
815.01 Marks Eligible for Principal Register Not Registrable on Supplemental Register
815.02 Elements Required
815.03 Filing on Supplemental Register is Not an Admission That the Mark Has Not Acquired Distinctiveness
815.04 Basis for Refusal of Registration of Matter That is Incapable
816 Amending Application to Supplemental Register
816.01 How to Amend
816.02 Effective Filing Date
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816.03 Amendment to Different Register
816.04 Amendment After Refusal
816.05 Amendment After Decision on Appeal
817 Preparation of Application for Publication or Registration
818 Application Checklist
819 TEAS Plus
819.01 TEAS Plus Filing Requirements
819.01(a) Type of Mark
819.01(b) Applicant’s Name and Address
819.01(c) Applicant’s Legal Entity and Citizenship
819.01(d) Name and Address for Paper Correspondence
819.01(e) E-mail Address and Authorization for the USPTO to Send Correspondence By E-Mail
819.01(f) Basis or Bases for Filing
819.01(f)(i) Section 1(a) - Use in Commerce
819.01(f)(ii) Section 1(b) - Intent to Use
819.01(f)(iii) Section 44(e) - Foreign Registration
819.01(f)(iv) Section 44(d)
819.01(g) Identification and Classification of Goods/Services
819.01(h) Filing Fee
819.01(i) Drawing
819.01(j) Color Claim
819.01(k) Description of the Mark
819.01(l) Verification
819.01(m) Translation and/or Transliteration
819.01(n) Multiple-Class Applications
819.01(o) Consent to Registration of Name or Portrait
819.01(p) Prior Registration of the Same Mark
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819.01(q) Concurrent Use Applications
819.02 Additional Requirements for a TEAS Plus Application
819.02(a) Receipt of Communications by E-Mail
819.02(b) Additional Documents That Must be Filed Through TEAS
819.03 Adding a Class During Examination
819.04 Procedures for Payment of TEAS Plus Processing Fee Per Class
801 Types of Applications
The wording “type of application” refers to the kind of application by which registration is requested, e.g., whether the application is a single-class application or a multiple-class application, or whether registration is sought on the Principal Register or on the Supplemental Register.
See TMEP Chapter 700 regarding the examination of applications in general, and Chapter 1300 regarding the examination of applications for service marks, collective marks, and certification marks.
801.01 Single or Combined Application
801.01(a) Single (Single-Class) Application
A single-class application limits the goods or services for which registration is sought to goods or services in only one of the classes in the classification schedules. The application may recite more than one item, if the items recited are all classified in one class. See TMEP §§1401 et seq. for additional information about classification.
801.01(b) Combined (Multiple-Class) Application
A combined or multiple-class application is an application to register the mark for items classified in two or more classes. The applicant must pay a filing fee for each class. The class numbers and corresponding goods or services must be listed separately, from the lowest to the highest number.
See TMEP §§1403 et seq. for further information about combined applications.
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801.02 Principal Register or Supplemental Register
801.02(a) Act of 1946, Principal Register
The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register (15 U.S.C. §§1051 through 1072). When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Act. The advantages of owning a registration on the Principal Register include the following:
• Constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (15 U.S.C. §§1057(b) and 1115(a));
• A date of constructive use of the mark as of the filing date of the application (15 U.S.C. §1057(c); TMEP §201.02);
• The ability to bring an action concerning the mark in federal court (15 U.S.C. §1121);
• The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods (15 U.S.C. §1124);
• The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” subject to certain statutory defenses (15 U.S.C. §§1065 and 1115(b)); and
• The use of the United States registration as a basis to obtain registration in foreign countries.
If the applicant seeks registration on the Principal Register, the application should state that registration is requested on the Principal Register. However, if the applicant does not specify a register, the United States Patent and Trademark Office (“USPTO”) will presume that the applicant seeks registration on the Principal Register.
801.02(b) Act of 1946, Supplemental Register
Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register. Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091 through 1096, provide for registration on
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the Supplemental Register. This is a continuation of the register provided for in the Act of March 19, 1920. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946. The excluded sections are listed in §26 of the Act, 15 U.S.C. §1094.
If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the USPTO will presume that the applicant seeks registration on the Principal Register.
See TMEP §§815 and 816 et seq. regarding examination procedure relating to the Supplemental Register.
An applicant may not seek registration on both the Principal and the Supplemental Register in the same application. If an applicant requests registration on both the Principal and the Supplemental Register in the same application, the examining attorney must require that the applicant amend to specify only one register, or file a request to divide under 37 C.F.R. §2.87.
A mark in an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), based on a request for extension of protection of an international registration to the United States, cannot be registered on the Supplemental Register. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
802 Application Form
Applications under §66(a) of the Trademark Act are sent to the USPTO electronically by the International Bureau of the World Intellectual Property Organization (“IB”).
The USPTO prefers that applicants file applications under §1 or §44 of the Trademark Act through the Trademark Electronic Application System (“TEAS”), available at http://www.uspto.gov (using either a TEAS or TEAS Plus application form), or on the USPTO’s pre-printed scannable form. The applicant may obtain the USPTO’s pre-printed scannable form by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.
The amount of the trademark application filing fee varies, depending upon whether the application (or the amendment adding classes to an existing application) is filed through TEAS or on paper. See TMEP §810. An applicant has three choices. The applicant can file:
• A paper application at the higher fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i);
• A regular TEAS application at a lower fee per class, set forth in 37 C.F.R. §2.6(a)(1)(ii); or
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• A TEAS Plus application (see TMEP §§819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iii).
The current fee schedule is available on the USPTO website at http://www.uspto.gov.
Note: Applications that are downloaded from TEAS or TEAS Plus, printed, and mailed to the USPTO are considered paper applications and are subject to the paper application filing fee.
Trademark applications may not be filed by facsimile (“fax”) transmission. 37 C.F.R. §2.195(d)(1); TMEP §306.01.
The USPTO strongly discourages self-created forms, but will accept them if they meet the requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) (see TMEP §202). If a self-created form is used, the application should be on letter size (i.e., 8½ inches (21.6 cm.) by 11 inches (27.9 cm.)) paper, typewritten, double spaced, with margins of at least 1½ inches (3.8 cm.) at the left and top of the pages. The application should be written on only one side of the paper.
The application must be in the English language. 37 C.F.R. §§2.21(a) and 2.32(a).
The USPTO does not generally require the submission of original documents, so the applicant may file a copy of a signed application. 37 C.F.R. §2.193(c)(1)(ii); TMEP §302.01.
See TMEP §§819 et seq. regarding TEAS Plus applications.
803 Applicant
803.01 Who May Apply
An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application under 15 U.S.C. §1051(b), by the person who is entitled to use the mark in commerce. Normally the owner of a mark is the person who applies the mark to goods that he or she produces, or uses the mark in the sale or advertising of services that he or she performs. See TMEP §§1201 et seq. regarding ownership, and TMEP §§501 and 502 et seq. regarding assignment of marks and changes of ownership.
If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned. 37 C.F.R. §2.71(d). See TMEP §803.06 and cases cited therein.
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Applicants may be natural persons or juristic persons. Juristic persons include corporations, partnerships, joint ventures, unions, associations, and other organizations capable of suing and being sued in a court of law. 15 U.S.C. §1127. An operating division, or the like, that is merely an organizational unit of a company and not a legal entity that can sue and be sued, may not own or apply to register a mark. See TMEP §1201.02(d).
Nations, states, municipalities, and other related types of bodies operating with governmental authorization may apply to register marks that they own. See National Aeronautics & Space Admin. v. Record Chemical Co. Inc., 185 USPQ 563 (TTAB 1975); In re U.S. Department of the Interior, 142 USPQ 506 (TTAB 1964).
The question of whether an application can be filed in the name of a minor depends on state law. If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor. Otherwise, the application should be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is:
John Smith, United States citizen, (parent/legal guardian) of Mary Smith.
If the record indicates that the named applicant is a minor, the examining attorney must inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled. If the minor cannot enter into binding legal obligations, the examining attorney must require correction of the applicant-identifying information in the manner shown above, if necessary.
If a minor comes of age during the prosecution of an application in which his or her parent/legal guardian is identified as the applicant, the application may be amended to change the applicant’s name. No assignment is required in such cases. However, the minor must also state his or her citizenship. See also TMEP Chapter 500 regarding assignments, name changes, and issuance of a registration in the name of an assignee or in an applicant’s new name.
See also TMEP §§1002 et seq. regarding eligibility to file an application under §44 of the Trademark Act, 15 U.S.C. §1126, and TMEP §1901 regarding eligibility to file a request for an extension of protection of an international registration to the United States under §66(a) of the Act, 15 U.S.C. §1141f(a).
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803.02 Name of Applicant
The name of the applicant should be set out in its correct legal form. For example, a corporate applicant should be identified by the name set forth in the articles of incorporation.
If the applicant’s legal name includes the assumed name under which it does business, an assumed name designation should be used to connect the actual name with the assumed name. Assumed name designations include “d.b.a.” (doing business as), “a.k.a.” (also known as), and “t.a.” (trading as). The particular assumed name designation used is optional. Only the abbreviation of the assumed name designation will be printed in the Official Gazette and on the certificate of registration. If an applicant gives the assumed name designation in full, the abbreviation will automatically be used for printing purposes.
803.02(a) Individual
If the applicant is an individual person who is doing business under an assumed business name, the individual’s name should be set forth, followed by an assumed name designation (e.g., d.b.a., a.k.a., or t.a.) and by the assumed business name.
If an individual indicates that he or she is doing business under a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.), the USPTO will presume that relevant state law permits such a practice. The assumed name will be printed on the registration certificate.
If the application reflects an inconsistency between the owner name and the entity type as to whether a corporation or an individual owns the mark, the examining attorney must require the applicant to clarify the record regarding ownership (e.g., if the name of an individual appears as the applicant, but the entity is listed as a corporation, or if a business is named as the applicant but the entity is listed as an individual). However, in view of the broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04), the fact that the title of the person signing an application refers to a different entity is not in itself considered an inconsistency between owner and entity type that would warrant an inquiry as to who owns the mark.
See TMEP §803.03(a) for information about identifying an individual applicant’s entity, and TMEP §§803.06 and 1201.02(c) regarding USPTO policies regarding correction of an applicant’s name and entity.
803.02(b) Partnership, Joint Venture, or Other “Firm”
If a partnership, joint venture, or other “firm” has been organized under a particular business name, the application should be filed in that name. If the
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partnership or firm has not been organized under a business name, the names of the members should be listed as though they composed a company name. If a partnership or joint venture is doing business under an assumed name, this may be indicated, using an assumed name designation. See TMEP §803.02 regarding assumed name designations, and TMEP §803.03(b) for information about identifying a partnership or joint venture as a legal entity.
803.02(c) Corporation and Association
If the applicant is a corporation, the official corporate name must be set out as the applicant’s name. Listing an assumed business name is optional. The name of a division of the applicant should not be included in or along with the applicant’s name. If the applicant wishes to indicate in the application that actual use of the mark is being made by a division of the applicant, the applicant may provide a statement that “the applicant, through its division [specify name of division], is using the mark in commerce.” This statement should not appear in conjunction with the listing of the applicant’s name, and will not be printed on the registration certificate.
In unusual situations, one corporation may also be doing business under another name, even another corporate name. This sometimes happens, for example, when one corporation buys out another. In the unusual situation where a corporate applicant provides a DBA (“doing business as”) that includes a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.) in addition to its official corporate name, the USPTO will presume that relevant state law permits such a practice. The DBA will be printed on the registration certificate.
Associations should be identified by the full, official name of the association.
See TMEP §803.03(c) for information about identifying a corporation or association as a legal entity.
803.03 Legal Entity of Applicant
Immediately after the applicant’s name, the application should set out the applicant’s form of business, or legal entity, such as partnership, joint venture, corporation, or association. The words “company” and “firm” are indefinite for purposes of designating a domestic applicant’s legal entity, because those words do not identify a particular type of legal entity in the United States. (However, the word “company” is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See TMEP §803.03(i).)
Whether the USPTO will accept the identification of an applicant’s entity depends on whether that entity is recognized by the applicant’s state of domicile.
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If other material in the record indicates that the applicant is a different type of entity than is set out in the written application, the examining attorney must ask for an explanation, and require amendment if necessary. However, in view of the broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04), no explanation is usually required merely because the person signing a declaration has a title that refers to a different type of entity. See TMEP §§803.06 and 1201.02(c) regarding USPTO policies governing correction of an applicant’s name.
803.03(a) Individual or Sole Proprietorship
Individual. For an individual, it is not necessary to specify “individual,” but it is acceptable to do so. The applicant may state that he or she is doing business under a specified assumed company name. TMEP §803.02.
In an application for international registration, if the applicant is a natural person, he or she must indicate his or her name and may include the country of which he or she is a national. Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”), Rule 9(4)(b)(i) (2008). The international application does not require this information, but when the information is included, the IB will forward the nationality of the applicant to the USPTO. In a §66(a) application, if the “Nationality of Applicant” field appears in the Trademark Image Capture and Retrieval System (“TICRS”) (which is available to the public through the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov), this means that the applicant is an individual rather than a juristic entity, and that applicant’s citizenship is the country corresponding to the two letter code set forth in this field. However, a separate statement that applicant is an individual will not appear in TICRS, and the “Legal Nature” and Legal Nature: Place Incorporated” fields will state “Not Provided.”
If the “Nationality of Applicant” field appears in TICRS, the examining attorney may enter the relevant information into TRAM, or ask the LIE to enter it. No inquiry as to the applicant’s entity or citizenship is necessary. If the “Nationality of Applicant” field does not appear in TICRS, the examining attorney must require that the applicant indicate its entity and citizenship. Examining attorneys cannot rely on the “Entitlement Nationality,” “Entitlement Establishment,” or “Entitlement Domiciled” fields for the applicant’s citizenship because these fields merely indicate the basis for the applicant’s entitlement to file an application through the Madrid system, not the national citizenship of the individual applicant.
Sole Proprietorship. An applicant may identify itself as a sole proprietorship. If an applicant does so, the applicant must also indicate the state where the
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sole proprietorship is organized, in addition to the name and national citizenship of the sole proprietor.
If the application specifically identifies the applicant as a sole proprietorship and indicates the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor, the USPTO will accept the characterization of the entity. On the other hand, if the application refers to a sole proprietorship but lacks some of the necessary information or is ambiguous as to whether the applicant should be identified as a sole proprietorship or as an individual, the examining attorney must require appropriate clarification of the entity type.
A sole proprietorship generally means a business which has only one owner. Therefore, if an application identifies two persons or two different entities as a “sole proprietorship,” this is an ambiguity that requires clarification of the entity type.
803.03(b) Partnership, Joint Venture, or Other “Firm”
After setting forth the applicant’s name and entity, the application of a partnership or a joint venture should specify the state or country under whose laws the partnership or joint venture is organized. 37 C.F.R. §2.32(a)(3)(ii). In addition, domestic partnerships must set forth the names, legal entities, and national citizenship (for individuals), or state or country of organization (for businesses), of all general partners or active members that compose the partnership or joint venture. 37 C.F.R. §§2.32(a)(3)(iii) and (iv). These requirements apply to both general and limited partnerships. They also apply to a partnership that is a general partner in a larger partnership. Limited partners or silent or inactive partners need not be listed. The following format should be used:
“_____________________, a (partnership, joint venture) organized under the laws of _______________, composed of ______________ (name, entity, and citizenship or state of organization).”
In the case of a domestic partnership consisting of ten or more general partners, if the partnership agreement provides for the continuing existence of the partnership in the event of the addition or departure of specific partners, the USPTO will require that the applicant provide the names, legal entities, and national citizenship (or the state or country of organization) of the principal partners only. If there are more than ten principal partners, the applicant need list only the first ten principal partners. If there is no class of principal partners, the applicant may list any ten general partners.
Upon the death or dissolution of a partner or other change in the members that compose a domestic partnership, that legal entity ceases to exist and any subsequent arrangement constitutes a new entity, unless the partnership
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agreement provides for continuation of the partnership in the event of changes in partners. This same principle also applies to joint ventures. See TMEP Chapter 500 regarding changes of ownership.
The rule requiring names and citizenships of general partners seeks to provide relevant information in the record, given the legal effects of partnership status in the United States. Because the USPTO does not track the varying legal effects of partnership status in foreign countries, and the relevance of the additional information has not been established, the same requirement for additional information does not apply to foreign partnerships.
The term “firm” is not an acceptable designation of the applicant’s entity, because it does not have a universally understood meaning. The examining attorney must require a definite term such as “partnership” or “joint venture” when it is necessary to identify these entities.
See TMEP §803.03(k) regarding limited liability partnerships.
803.03(c) Corporation, Association, Organization, and Company
Corporation. In the United States, the term “corporation” is proper for juristic entities incorporated under the laws of the various states or under special federal statutes. In addition to specifying that an applicant is a corporation, the application must specify the applicant’s state (for United States corporations) or country of incorporation (for foreign corporations). It is customary to follow the applicant’s name by the words “a corporation of the state (or country) of . . . .” This also applies to a nonprofit or tax-exempt corporation. If no state or country of incorporation, or the incorrect state or country of incorporation, is given for an applicant corporation, this defect may be corrected by amendment. The amendment does not have to be verified. If a corporation exists by virtue of a specific state or federal statute, this should be stated.
Association. “Association” and “nonprofit association” are acceptable terms to identify juristic entities organized under state laws or federal statutes that govern this form of organization. The application must specify the United States state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated. This also applies to a nonprofit or tax-exempt association. If an association exists by virtue of a specific state or federal statute, this should be stated. Verification is not required.
Company. The term “company” is indefinite for describing a United States entity because it does not identify a particular juristic entity, but is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See TMEP §803.03(i) and TMEP Appendix D regarding foreign companies.
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Organization. “Organization” and “nonprofit organization” are indefinite to identify juristic entities. If an applicant’s entity type is identified as a “nonprofit organization,” the examining attorney must require amendment of the entity, or proof that such a legal entity exists under the appropriate state statute or foreign country law.
803.03(d) Joint Applicants
An application may be filed in the names of joint applicants or joint owners. Ex parte Pacific Intermountain Express Co., 111 USPQ 187 (Comm’r Pats. 1956); Ex parte Edward Taylor and Isabelle Stone Taylor doing business as Baby’s Spray-Tray Co., 18 USPQ 292 (Comm’r Pats. 1933). The terms “joint applicant(s)" or “joint owner(s)” reflects the relationship of multiple applicants as to a particular mark, but does not identify a particular type of legal entity in the United States. Therefore, the application must name each of the joint applicants, and must set forth the citizenship (or the state or nation of organization for a juristic applicant) of each of the joint applicants. 37 C.F.R. §§2.32(a)(2) and (3); TMEP §§803.02 and 803.03. The application may also state the joint applicant relationship; however, where an application identifies two or more individuals or entities as the applicant, and separately sets forth the citizenship or state of organization of each, the USPTO will presume that the entity is that of joint applicants, if the record is not otherwise contradictory. If, however, the legal entity is set out as “joint applicant(s)” or “joint owner(s),” the examining attorney must require each applicant to clarify the nature of its legal entity as an individual or juristic person.
An application by joint applicants must be verified by all the applicants, since they are individual parties and not a single entity. However, if only one of the joint applicants signs the verification, the USPTO will presume that he or she is signing on behalf of all the joint applicants, and will not require an additional verification or declaration, unless there is evidence in the record indicating that the party who signed the application was not in fact authorized to sign on behalf of all the joint applicants under 37 C.F.R. §2.33(a). This does not apply to a response to an Office action submitted by joint applicants who are not represented by a practitioner authorized under 37 C.F.R. §11.14 to practice in trademark cases (“qualified practitioner”). Such a response should be signed personally by each of the joint applicants. TMEP §611.06(a). See TMEP §804.04 regarding persons authorized to sign a verification on behalf of an applicant.
Joint applicants are not the same as a joint venture. A joint venture is a single applicant, in the same way that a partnership is a single applicant. See TMEP §803.03(b) regarding joint ventures.
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803.03(e) Trusts, Conservatorships, and Estates
If a trust is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. Thus, the examining attorney should require that the trust’s application be captioned as follows:
The Trustees of the XYZ Trust, a California trust, the trustees comprising John Doe, a United States citizen, and the ABC Corporation, a Delaware corporation.
The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. Then the state under whose laws the trust exists must be set forth. Finally, the names and citizenship of the individual trustees must be listed.
The same format generally applies to conservatorships and estates as follows:
The Conservator of Mary Jones, a New York conservatorship, the conservator comprising James Abel, a United States citizen.
The Executors of the John Smith estate, a New York estate, the executors comprising Mary Smith and James Smith, United States citizens.
803.03(e)(i) Business Trusts
Most states recognize an entity commonly identified as a “business trust,” “Massachusetts trust,” or “common-law trust.” A business trust has attributes of both a corporation and a partnership. Many states have codified laws recognizing and regulating business trusts; other states apply common law. The USPTO will accept the entity designation “business trust,” or any appropriate variation provided for under relevant state law.
The business trust is created under the instructions of the instrument of trust. Generally, the “trustee” has authority equivalent to an officer in a corporation. Laws vary to some extent as to the authority conferred on various individuals associated with the business trust.
The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. The state under whose laws the trust exists, and the names and citizenship (or state of incorporation or organization) of the individual trustees, must also be set forth. Accordingly, the examining attorney should require that the business trust's application be captioned as follows:
The Trustees of the DDT Trust, a California business trust, the trustees comprising Sue Smith, a United States citizen, and the PDQ Corporation, a Delaware corporation.
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For the purpose of service of process, the business trust is essentially like a corporation. Therefore, it is not necessary to identify the beneficiaries or equitable owners of the business trust in identifying the entity.
803.03(f) Governmental Bodies and Universities
It is difficult to establish any rigid guidelines for designating the entity of a governmental body. Due to the variety in the form of these entities, the examining attorney must consider each case on an individual basis. The following are just a few examples of acceptable governmental entities:
Department of the Air Force, an agency of the United States.
Maryland State Lottery Agency, an agency of the State of Maryland.
City of Richmond, Virginia, a municipal corporation organized under the laws of the Commonwealth of Virginia.
These examples are not exhaustive of the entity designations that are acceptable.
The structure of educational institutions varies significantly. The following are examples of acceptable university entities:
Board of Regents, University of Texas System, a Texas governing body.
University of New Hampshire, a nonprofit corporation of New Hampshire.
Auburn University, State University, Alabama.
These examples are not exhaustive of the entity designations that are acceptable.
The designations “education institution” and “educational organization” are not acceptable. If the applicant uses either of these designations to identify the entity, the examining attorney must require the applicant to amend the entity designation to a legally recognized juristic entity.
803.03(g) Banking Institutions
The nature of banking institutions is strictly regulated and, thus, there are a limited number of types of banking entities. Some banking institutions are federally chartered while others are organized under state law. The following are examples of acceptable descriptions of banking institutions:
First American Bank of Virginia, a Virginia corporation.
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Pathway Financial, a federally chartered savings and loan association.
This is not an exhaustive listing of acceptable entity designations.
803.03(h) Limited Liability Companies
Most states recognize an entity commonly identified as a “limited liability company” or “LLC.” The entity has attributes of both a corporation and a partnership. Therefore, the USPTO must accept the entity designation “limited liability company.” The examining attorney may accept appropriate variations of this entity, with proof that the entity exists under the law of the relevant state.
If “LLC” appears in the applicant’s name, but the entity is listed as a corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation.
The applicant must indicate the state under whose laws the limited liability company is established. It is not necessary to list the “members” or owners of the limited liability company when identifying the entity.
See TMEP §611.06(g) regarding the proper party to sign a response to an Office action filed by a limited liability company that is not represented by an attorney.
Limited Liability Corporation. A business organization known as a “limited liability corporation” is currently not recognized. If an applicant’s entity type is identified as a limited liability corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation. If the applicant believes that it is a limited liability corporation, then the applicant must provide proof that such a legal entity exists under the appropriate state statute.
See TMEP §803.03(k) regarding limited liability partnerships.
803.03(i) Common Terms Designating Entity of Foreign Applicants
In designating the legal entity of foreign applicants, acceptable terminology is not always the same as for United States applicants. The word “corporation” as used in the United States is not necessarily equivalent to juristic entities of foreign countries; the word “company” is sometimes more accurate. If the applicant is from the United Kingdom or another commonwealth country (e.g., Canada or Australia) and the term “company” (or the abbreviation “co.”) is used, no inquiry is needed. “Limited company” is also acceptable in commonwealth countries. There is a list of commonwealth countries on the commonwealth website at
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http://www.thecommonwealth.org/Internal/142227/members/. In any other case, when the term “company” is used, the examining attorney must clarify what type of entity is applying.
“Limited corporation” is also an acceptable entity designation for a foreign applicant.
A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is sufficient. The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so.
Appendix D of this manual lists additional common terms and abbreviations used by various foreign countries to identify legal commercial entities. If a designation or its abbreviation appears in the appendix, the examining attorney may accept the entity designation without further inquiry. The applicant must specify the foreign country under whose laws it is organized, but no additional information is required, even if additional information would be required for a United States entity of the same name. For example, it is not necessary to set forth the names and citizenship of the partners of a foreign partnership. The rule requiring names and citizenships of general partners (37 C.F.R. §2.32(a)(3)(iii)) seeks to provide relevant information in the record, given the legal effects of partnership status in the United States. Because the USPTO does not track the varying legal effects of partnership status in foreign countries, and the relevance of the additional information has not been established, the same requirement for additional information does not apply to foreign partnerships.
If a foreign entity designation or abbreviation does not appear in Appendix D, the examining attorney must inquire further into the specific nature of the entity. The examining attorney may request a description of the nature of the foreign entity, if necessary.
Foreign entities may be organized under either national or provincial laws. However, the TEAS form requires an applicant to specify the state or foreign country under which it is legally organized, but does not permit an applicant to specify a foreign province or geographical region in this field. Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select as the entity type the choice of “Other,” which will allow entry within the free-text field provided at “Specify Entity Type” of both the type of entity and the foreign province or geographical region under which it is organized (e.g., “corporation of Ontario”). In the next section, “State or Country Where Legally Organized,” the country (e.g., “Canada”) should then be selected from the pull-down menu.
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803.03(j) Federally Recognized Indian Tribe
A federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant’s entity.
803.03(k) Limited Liability Partnerships
Most states recognize an entity commonly identified as a “limited liability partnership” (“LLP”). An LLP is separate and distinct from a limited partnership, and is more closely associated with a limited liability company in that it has attributes of both a corporation and a partnership. Therefore, the USPTO will accept the entity designation “limited liability partnership.” The examining attorney may accept appropriate variations of this entity (e.g., "limited liability limited partnership” or “LLLP”), with proof that the entity exists under the law of the relevant state.
The applicant must indicate the state under whose laws the limited liability partnership is established. It is not necessary to list the partners of the limited liability partnership when identifying the entity.
See TMEP §611.06(h) regarding the proper party to sign a response to an Office action filed by a limited liability partnership that is not represented by a qualified practitioner.
See also TMEP §803.03(h) regarding limited liability companies.
803.04 Citizenship of Applicant
An application for registration must specify the applicant’s citizenship or the state or nation under whose laws the applicant is organized. 37 C.F.R. §2.32(a)(3). If ambiguous terms such as “American” are used, the examining attorney must require the applicant to clarify the record by setting forth the required information with greater specificity (e.g., “United States”).
An individual applicant should set forth the country of which he or she is a citizen. Current citizenship information must be provided; a statement indicating that the applicant has applied for citizenship in any country is not relevant or acceptable. If an individual is not a citizen of any country, a statement to this effect is acceptable.
In an application for international registration, if the applicant is a natural person, he or she must indicate his or her name and may include the country of which he or she is a national. Common Regs, Rule 9(4)(b)(i). The international application does not require this information, but when the information is included, the IB will forward the nationality of the applicant to the USPTO. In a §66(a) application, if the “Nationality of Applicant” field appears in TICRS, this means that the applicant is an individual rather than a juristic entity, and that applicant’s citizenship is the country corresponding to
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the two letter code set forth in this field. However, a separate statement that applicant is an individual will not appear in TICRS, and the “Legal Nature” and Legal Nature: Place Incorporated” fields will state “Not Provided.”
If the “Nationality of Applicant” field appears in TICRS, the examining attorney may enter the relevant information into TRAM, or ask the LIE to enter it. No inquiry as to the applicant’s entity or citizenship is necessary. If the “Nationality of Applicant” field does not appear in TICRS, the examining attorney must require that the applicant indicate its entity and citizenship. Examining attorneys cannot rely on the “Entitlement Nationality,” “Entitlement Establishment,” or “Entitlement Domiciled” fields for the applicant’s citizenship because these fields merely indicate the basis for the applicant’s entitlement to file an application through the Madrid system, not the national citizenship of the individual applicant.
If an applicant asserts dual citizenship, the applicant must choose which citizenship will be printed in the Official Gazette and on the registration certificate. The USPTO will print only one country of citizenship for each person in the Official Gazette and on the registration certificate, and the automated records of the USPTO will indicate only one country of citizenship for each person.
For a corporation, the application must set forth the United States state or foreign country of incorporation. 37 C.F.R. §2.32(a)(3)(ii).
Foreign entities may be organized under either national or provincial laws. However, the TEAS form requires an applicant to specify the state or foreign country under which it is legally organized, but does not permit an applicant to specify a foreign province or geographical region in this field. Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select as the entity type the choice of “Other,” which will allow entry within the free-text field provided at “Specify Entity Type” of both the type of entity and the foreign province or geographical region under which it is organized (e.g., “corporation of Ontario”). In the next section, “State or Country Where Legally Organized,” the country (e.g., “Canada”) should then be selected from the pull-down menu.
For an association, the application must set forth the United States state or foreign country under whose laws the association is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii). See TMEP §803.03(c).
A partnership or other firm must set forth the United States state or foreign country under the laws of which the partnership is organized. Domestic partnerships must also provide citizenship information for each general partner in the partnership or active member in the firm. 37 C.F.R. §2.32(a)(3)(iii). This requirement also applies to a partnership that is a general partner in a larger partnership. See TMEP §803.03(b) for the proper format for identifying a partnership. Given the varying legal effects of
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partnership status in foreign countries, the relevance of the name and citizenship information for each partner has not been established. Therefore, for foreign partnerships, it is not necessary to provide the names and citizenship of the partners. See TMEP §803.03(i) for further information about foreign applicant entities.
For joint applicants or a joint venture, the application should set forth the citizenship or United States state or foreign country of organization of each party. Domestic joint ventures must also provide citizenship information for all active members of the joint venture. 37 C.F.R. §2.32(a)(3)(iv). See TMEP §803.03(b) for the proper format for identifying a joint venture.
803.05 Address of Applicant
The written application must specify the applicant’s mailing address. 37 C.F.R. §2.32(a)(4). Addresses should include the United States Postal Service ZIP code or its equivalent. The applicant’s address may consist of a post office box.
For an individual, the application must set forth either the business address or the residence address.
If the application sets out more than one address, the applicant should designate the address to be included on the registration certificate.
For a partnership or other firm, only the address of the business need be set forth -- not the addresses of the partners or members.
For a corporation or association, the business address should be set forth. If the corporation’s business address is not in its state of incorporation, the applicant should set out the address where the applicant is domiciled.
For joint applicants, the application should include addresses for each party.
The application must also include an address for correspondence concerning the application. See 37 C.F.R. §§2.18 and 2.21(a)(2). This is referred to as the correspondence address. See TMEP §§609 et seq.
803.06 Applicant May Not Be Changed
While an application can be amended to correct an inadvertent error in the manner in which an applicant’s name is set forth (see TMEP §1201.02(c)), an application cannot be amended to substitute another entity as the applicant. If the application was filed in the name of a party who had no basis for his or her assertion of ownership of (or entitlement to use) the mark as of the filing date, the application is void, and registration must be refused. 37 C.F.R. §2.71(d); TMEP §1201.02(b). Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great
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Seats, Inc., 84 USPQ2d 1235 (TTAB 2007); American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991); In re Lettmann, 183 USPQ 369 (TTAB 1974); Dunleavy v. Koeppel Steel Products, Inc., 114 USPQ 43 (Comm’r Pats. 1957), aff’d, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Richardson Corp. v. Richardson, 51 USPQ 144 (Comm’r Pats. 1941); Celanese Corp. of America v. Edwin Crutcher, 35 USPQ 98 (Comm’r Pats. 1937). The USPTO will not refund the application filing fee in such a case.
A void application cannot be cured by amendment or assignment. The true owner may file another application (with a new filing fee) in its name or, if the applicant who is refused later becomes the owner of the mark, he or she may file another application (with a new filing fee) at that time.
See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the applicant, TMEP §803.01 regarding minor applicants, and TMEP §1201.02(e) and TMEP Chapter 500 regarding the situation in which the true owner of a mark files an application and transfers ownership to another party after the filing date.
804 Verification and Signature
An application must include a statement that is verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. 15 U.S.C. §§1051(a)(3) and 1051(b)(3); 37 C.F.R. §§2.32(b) and 2.33(a).
In an application under §1 or §44 of the Trademark Act, a signed verification is not required for receipt of an application filing date under 37 C.F.R. §2.21(a). If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date. See TMEP §§804.01 et seq. regarding the form of the oath or declaration, TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.
In §66(a) applications, the verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). See TMEP §§804.05 and 1904.01(c).
804.01 Form and Wording of Verification in §1 or §44 Application
The format of the verification in an application under §1 or §44 of the Trademark Act may be: (1) the classical form for verifying, which includes an oath (jurat) (see TMEP §804.01(a)); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath (see TMEP §804.01(b)).
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804.01(a) Verification with Oath
The verification is placed at the end of the application. It should first set forth the venue; followed by the signer’s name (or the words “the undersigned”); then the necessary statements (TMEP §804.02); concluding with the signature. After the signature, there should be the jurat for the officer administering the oath, and an indication of the officer’s authority (such as notarial seal).
The form of the verification depends on the law of the jurisdiction where the document is executed, so variations of the above form are acceptable. If there is a question as to the validity of the verification, the examining attorney should ask the applicant if the verification complies with the laws of the applicant’s jurisdiction. See TMEP §804.01(a)(i) regarding verifications made in a foreign country.
If the verification is notarized but does not include the notarial seal, the examining attorney must require a substitute affidavit or declaration under 37 C.F.R. §2.20.
If the verification is notarized but has not been dated, the applicant must submit either a statement from the notary public attesting to the date of signature and notarization, or a substitute affidavit or declaration under 37 C.F.R. §2.20.
804.01(a)(i) Verification Made in Foreign Country
Verification (with oath) made in a foreign country may be made: (1) before any diplomatic or consular officer of the United States; or (2) before any official authorized to administer oaths in the foreign country. In those foreign countries that are members of The Hague Convention Abolishing the Requirement of Legislation for Foreign Public Documents, a document verified before a foreign official should bear or have appended to it an apostille (i.e., a certificate issued by an official of the member country).
Member countries, territories, and Departments in Europe participating in this Convention are: Anqulla, Antigua & Barbuda, Argentina, Armenia, Australia, Austria, Bahamas, Bailiwick of Guernsey, Barbados, Belarus, Belgium, Belize, Bermuda, Bosnia & Herzegovina, Botswana, British Antarctic, British Guiana (Guyana), British Soloman Islands, Cayman, Croatia, Cyprus, Dominica, El Salvador, Falkland Islands, Figi, Finland, France, French Guiana, Germany, Gibraltar, Gilbert & Ellice Islands (Kiribati), Greece, Grenada, Guadeloupe, Hong Kong, Hungary, Isle of Man, Jersey, Israel, Italy, Japan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malawi, Malta, Marshall Islands, Martinique, Mauritius, Mexico, Montserrat, Netherlands, New Hebrides (Vanuatu), Norway, Panama, Portugal, Reunion, Saint Christopher & Nevis, Saint Helena, Saint Lucia, Saint Vincent, San Marino, Seychelles, Slovenia, South Africa, Southern Rhodesia (Zimbabwe),
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Spain, Suriname, Swaziland, Switzerland, Tonga, Turkey, Turks & Caicos, United Kingdom & Northern Ireland, and the Virgin Islands.
An apostille must be square shaped with sides at least 9 centimeters long. The following is the prescribed form for an apostille:
APOSTILLE
(Convention de La Haye du Oct. 5, 1961)
1. Country: ________________________
This public document 2. has been signed by
________________ 3. acting in capacity of
_______________ 4. bears the seal/stamp of
____________
CERTIFIED
5. at ____________________________
6. the ___________________________
7. by ____________________________
8. No. ___________________________
9. Seal/stamp: _____________________
10. Signature: ______________________
See notice at 1013 TMOG 3 (December 1, 1981).
If a verification is made before a foreign official in a country that is not a member of the Hague Convention, the foreign official’s authority must be proved by a certificate of a diplomatic or consular officer of the United States. 15 U.S.C. §1061.
Declarations under 37 C.F.R. §2.20 and 28 U.S.C. §1746 by foreign persons do not have to be made before a United States diplomatic or consular officer,
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or before a foreign official authorized to administer oaths. A declaration under 28 U.S.C. §1746 that is executed outside the United States must allege that “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.” See TMEP §804.01(b).
See http://www.state.gov/www/authenticate/index.html for updated information about the Hague Convention.
804.01(b) Declaration in Lieu of Oath
Under 35 U.S.C. §25, the USPTO is authorized to accept a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath. These declarations can be used whenever the Act or rules require that a document be verified or under oath.
When the language of 37 C.F.R. §2.20 or 28 U.S.C. §1746 is used with a document, the document is said to have been subscribed to (signed) by a written declaration rather than verified by oath (jurat).
When a declaration is used in lieu of an oath, the party must include in place of the oath (jurat) the statement that “all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.” Preferably, this language is placed at the end of the document.
In addition, the declaration must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. §1001). 35 U.S.C. §25(b). Trademark Rule 2.20 requires that the warning contain the additional language that such statements may jeopardize the validity of the application (or document) or any registration resulting therefrom. A declaration under 37 C.F.R. §2.20 should read as follows:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
___________________________ (Signature)
___________________________ (Print or Type Name and Position)
___________________________ (Date)
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Instead of using the language of 37 C.F.R. §2.20, an applicant may use the language of 28 U.S.C. §1746, which provides as follows:
Wherever, under any law of the United States or under any rule, regulation, order, or requirement made pursuant to law, any matter is required or permitted to be supported, evidenced, established, or proved by the sworn declaration, verification, certificate, statement, oath, or affidavit, in writing of the person making the same (other than a deposition, or an oath of office, or an oath required to be taken before a specific official other than a notary public), such matter may, with like force and effect, be supported, evidenced, established, or proved by the unsworn declaration, certificate, verification, or statement, in writing of such person which is subscribed by him, as true under penalty of perjury, and dated, in substantially the following form:
(1) If executed outside the United States, its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date).
(Signature)”.
(2) If executed within the United States, its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date).
(Signature)”.
NOTE: Title 35 of the United States Code pertains specifically to the USPTO and, therefore, is preferred to 28 U.S.C. §1746, which is a statute of general application relating to verification on penalty of perjury.
A declaration that does not attest to an awareness of the penalty for perjury is unacceptable. 35 U.S.C. §25. In re Hoffmann-La Roche Inc., 25 USPQ2d 1539 (Comm’r Pats. 1992) (failure to include a statement attesting to an awareness of the penalty for perjury, which is the very essence of an oath, is not a “minor defect” that can be provisionally accepted under 35 U.S.C. §26), overruled on other grounds, In re Moisture Jamzz Inc., 47 USPQ2d 1762, 1764 (1997); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968 (TTAB 1986); In re Laboratories Goupil, S.A., 197 USPQ 689 (Comm’r Pats. 1977).
The signatory must personally sign his or her name. It is unacceptable for a person to sign another person’s name to a declaration pursuant to a general power of attorney. See In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990). In a TEAS
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submission, the person(s) identified as the signer(s) must manually enter the elements of the electronic signature. The rules do not provide authority for an attorney to sign another person's declaration. Dermahose, 82 USPQ2d at 1795. See TMEP §611.01(c) regarding signature of documents filed through TEAS.
If a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 is not dated, the examining attorney must require the applicant to state the date on which the declaration was signed. This statement does not have to be verified, and may be entered through a note in the “Notes-to-the-File” section of the record.
See TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark.
804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application
The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in §§1(a)(3), 1(b)(3), and 44 of the Trademark Act, 15 U.S.C. §§1051(a)(3), 1051(b)(3), and 1126, and 37 C.F.R. §§2.33 and 2.34. These allegations are required regardless of whether the verification is in the form of an oath (TMEP §804.01(a)) or a declaration (TMEP §804.01(b)). See TMEP §804.05 regarding the requirements for verification of a §66(a) application.
Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), the verification of an application for registration must include an allegation that “to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate.” 37 C.F.R. §§2.33(b)(1) and (2). The language in 37 C.F.R. §2.20 that “all statements made of [the verifier’s] own knowledge are true, and all statements made on information and belief are believed to be true” satisfies this requirement.
Use in Commerce. If the filing basis is §1(a), the applicant must submit a 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 original 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. 37 C.F.R. §2.34(a)(1)(i).
Bona Fide Intention to Use in Commerce. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), and 1126(e). If the verification is not filed with the original application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in
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connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i), and 2.34(a)(4)(ii).
Ownership or Entitlement to Use. In an application based on §1(a), the verified statement must allege that the verifier believes the applicant to be the owner of the mark and that no one else, to the best of his or her knowledge and belief, 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. 15 U.S.C. §1051(a)(3)(A); 37 C.F.R. §2.33(b)(1).
In an application based on §1(b) or §44, the verified statement must allege that the verifier believes the applicant to be entitled to use the mark in commerce and that no one else, to the best of his or her knowledge and belief, 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. See 15 U.S.C. §1051(b)(3)(A); 37 C.F.R. §2.33(b)(2).
While the correct language for an application filed under §1(b) or §44 is “entitled to use,” if a §1(b) or §44 applicant files a verification stating that the applicant is the owner of the mark, the USPTO will accept the verification, and will not require a substitute verification stating that the applicant is entitled to use the mark.
Concurrent Use. The verification for concurrent use should be modified to indicate an exception, i.e., that no one else except as specified in the application has the right to use the mark. 15 U.S.C. §1051(a)(3)(D). See TMEP §§1207.04 et seq. regarding concurrent use registration.
Related-company use does not require stating an exception, because the statement that no one else has the right to use the mark refers only to adverse users and not to licensed or permitted use. See TMEP §§1201.03 et seq. regarding use by related companies.
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Affirmative, Unequivocal Averments Based on Personal Knowledge Required. The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as “the undersigned [person signing the declaration] has been informed that the applicant is using [or has a bona fide intention to use] the mark in commerce...” are unacceptable.
Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.
804.03 Time Between Execution and Filing of Documents - §1 or §44 Application
Documents Must Be Filed Within a Reasonable Time After Execution
All applications and documents must be filed within a reasonable time after their execution. Under 37 C.F.R. §2.33(c), if the verified statement supporting an application for registration is not filed within a reasonable time after it is signed, the USPTO will require the applicant to submit a substitute affidavit or declaration under 37 C.F.R. §2.20 of the applicant’s continued use or bona fide intention to use the mark in commerce. Re-execution is also required where an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) or request for extensions of time to file a statement of use is not filed within a reasonable time after the date of execution. 37 C.F.R. §§2.76(i), 2.88(k), and 2.89(h); TMEP §§1104.09(b), 1108.02(b), and 1109.11(c).
The USPTO considers one year between execution and filing as reasonable for all applications and all documents. No new verification should be required if the document is filed within one year of execution. If an application, allegation of use, or request for extension of time to file a statement of use is filed more than one year after its execution, the examining attorney will require that the applicant submit re-executed documents, or a statement that is verified or includes a declaration under 37 C.F.R. §2.20, of the applicant’s continued use or bona fide intent to use the mark in commerce, as appropriate.
Documents Cannot Be Filed Before They Are Executed
If an applicant files an application that is signed and lists a date of execution that is subsequent to the application filing date, the examining attorney will inquire as to the actual date on which the application was signed. However, where an application is executed in a foreign country located across the international date line, the fact that an application shows a date of execution as of the day after the application filing date is not inconsistent with its having been executed before filing. No inquiry is required in this limited situation.
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804.04 Persons Authorized to Sign Verification or Declaration
37 C.F.R. §2.33(a). The application must include a statement that is signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly authorized to sign on behalf of the applicant. A person who is properly authorized to sign on behalf of the applicant is:
(1) A person with legal authority to bind the applicant; or
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or
(3) An attorney as defined in §11.1 of this chapter who has an actual or implied written or verbal power of attorney from the applicant.
The Trademark Act does not specify the appropriate person to verify facts on behalf of an applicant. The definition of a “person properly authorized to sign on behalf of the applicant” is set forth in 37 C.F.R. §2.33(a). This definition applies to applications for registration, amendments to allege use, statements of use, requests for extensions of time to file statements of use, affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, affidavits of incontestability under 15 U.S.C. §1065, and combined filings under 15 U.S.C. §§1058 and 1059. 37 C.F.R. §§2.76(b)(1), 2.88(b)(1), 2.89(b)(3), and 2.161(b). It also applies to declarations supporting amendments to dates of use, use of substitute specimens, claims of acquired distinctiveness under 15 U.S.C. §1052(f), amendments changing the basis for filing, and requests for amendment or correction of registrations under 15 U.S.C. §1057.
Generally, the USPTO does not question the authority of the person who signs a verification, unless there is an inconsistency in the record as to the signatory’s authority to sign. The USPTO presumes that the verification or declaration is properly signed. In view of the broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a), the fact that an application is signed by someone whose title refers to a different entity is not considered an inconsistency that warrants an inquiry as to whether the verification was properly signed.
Example: If an application is filed by “ABC Company, Inc.,” and the verification is signed by an officer of “XYZ Company, Inc.,” the USPTO will presume that XYZ Company, Inc. is a related company properly authorized to sign on behalf of ABC Company, Inc.
The signatory should set forth his or her name and title, or state the relationship between the applicant and the person who signed the verification.
If the person signing the verification is identified as a different person than the individual named as the applicant, or as representing a different legal entity
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than the juristic applicant, the USPTO generally will not question whether the proper party is listed as the applicant.
Example: If the applicant is identified as Mary Smith, an individual citizen of the U.S., and the application is signed by John Smith, the USPTO will not question whether the proper party is listed as applicant.
Example: If the applicant is John Smith, an individual citizen of the U.S., and the application is signed by John Smith, President, XYZ, Inc., the USPTO will not question whether the proper party is listed as applicant.
If a qualified practitioner signs a verification on behalf of an applicant, the USPTO will not require a power of attorney or other documentation stating that the practitioner is authorized to sign.
This policy applies to both individual applicants and juristic applicants.
The broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) applies only to verifications of facts by the applicant. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, letters of express abandonment, or changes to the correspondence address.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a) is not necessarily entitled to sign responses to Office actions, or to authorize examiner’s amendments and priority actions. Preparing a document, authorizing an amendment to an application, and submitting legal arguments in response to an examining attorney’s requirement or refusal of registration all constitute examples of representation of the applicant in a trademark matter. 37 C.F.R. §11.5(b)(2). Under 5 U.S.C. §500(d) and 37 C.F.R. §11.14(e), non-attorneys may not represent a party in a trademark proceeding before the USPTO. See TMEP §§611.03(b), 611.06 et seq., and 712 et seq. regarding signature on responses to Office actions.
The signatory must personally sign his or her name. It is unacceptable for a person to sign another person’s name to a verification pursuant to a general power of attorney. See In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990). In a TEAS submission, the person whose name is affixed to the verification must manually enter the elements of the electronic signature. The rules do not provide authority for an attorney to sign another person's declaration. Dermahose, 82 USPQ2d at 1795.
In applications under §66(a) of the Act, the verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB establishes that an international registration includes a signed declaration
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before it sends the request for extension of protection to the USPTO. Generally, the examining attorney should not issue any inquiry regarding the authority of the signatory to verify the application. If the applicant needs to file a request for correction of the declaration, the request should be filed with the IB. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration. See TMEP §804.05 regarding verification of §66(a) applications.
804.05 Verification of §66(a) Application
In applications under §66(a) of the Act, the request for extension of protection to the United States must include a declaration that the applicant has a bona fide intention to use the mark in commerce that can be controlled by the United States Congress. The declaration must include a statement that the person making the declaration believes applicant to be entitled to use the mark in commerce, and that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. §1141(5). The declaration must be signed by: (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) a qualified practitioner who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.
The verified statement in a §66(a) application is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. The examining attorney should generally not issue any inquiry regarding the verification of the application. If the applicant needs to file a request for correction of the declaration, the request should be filed with the IB. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration.
805 Identification and Classification of Goods and Services
An application must include a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. 37 C.F.R. §2.32(a)(6). See TMEP §§1402 et seq. for further information about identifying goods and services in an application.
The applicant should designate the international class number(s) that are appropriate for the identified goods or services, if this information is known.
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37 C.F.R. §2.32(a)(7). See TMEP §§1401 et seq. for more information about classification.
806 Filing Basis
A filing basis is the statutory basis for filing an application for registration of a mark in the United States. An applicant must specify and meet the requirements of one or more bases. 37 C.F.R. §2.32(a)(5). There are five filing bases: (1) use of a mark in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a); (2) bona fide intention to use a mark in commerce under §1(b) of the Act, 15 U.S.C. §1051(b); (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act, 15 U.S.C. §1126(d); (4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act, 15 U.S.C. §1126(e); and (5) extension of protection of an international registration to the United States, under §66(a) of the Act, 15 U.S.C. §1141f(a). 37 C.F.R. §2.34.
An applicant is not required to specify the basis for filing to receive a filing date. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009). If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.
In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.
See 37 C.F.R. §2.34 and TMEP §§806.01 et seq. for a list of the requirements for each basis.
806.01 Requirements for Establishing a Basis
The requirements for establishing a basis are set forth in TMEP §§806.01(a) through 806.01(e). If these requirements are not met in the original application, the examining attorney will require the applicant to comply with them in the first Office action.
806.01(a) Use in Commerce - §1(a)
Under 15 U.S.C. §1051(a) and 37 C.F.R. §2.34(a)(1), to establish a basis under §1(a) of the Trademark Act, the applicant must:
(1) Submit a verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application.
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15 U.S.C. §1051(a)(3)(C). If this verified statement 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 (37 C.F.R. §2.34(a)(1)(i));
(2) Specify the date of the applicant’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.34(a)(1)(ii); TMEP §903.01);
(3) Specify the date of the applicant’s first use of the mark in commerce as a trademark or service mark (37 C.F.R. §2.34(a)(1)(iii); TMEP §903.02); and
(4) Submit one specimen for each class, showing how the applicant actually uses the mark in commerce (37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §§904 et seq.).
The Trademark Act defines “commerce” as commerce which may lawfully be regulated by Congress, and “use in commerce” as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; 37 C.F.R. §2.34(c). See TMEP §§901 et seq.
An applicant may claim both use in commerce under §1(a) of the Act and intent-to-use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. 37 C.F.R. §2.34(a)(1)(i). Cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995).
If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed. TMEP §806.02(c).
806.01(b) Intent-to-Use - §1(b)
In an application based on 15 U.S.C. §1051(b), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1051(b)(3)(B). If the verified statement 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
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connection with the goods or services as of the filing date of the application. 37 C.F.R. §2.34(a)(2).
Prior to registration, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) that states that the applicant is using the mark in commerce on or in connection with the goods or services, includes dates of use and a filing fee for each class, and includes one specimen evidencing such use for each class. See 37 C.F.R. §2.76 and TMEP §§1104 et seq. regarding amendments to allege use, and 37 C.F.R. §2.88 and TMEP §§1109 et seq. regarding statements of use.
Once an applicant claims a §1(b) basis for any or all of the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act. 37 C.F.R. §2.35(b)(8).
See TMEP Chapter 1100 for additional information about intent-to-use applications.
806.01(c) Foreign Priority - §44(d)
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03. If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered. See TMEP §806.01(b) regarding the requirements for a §1(b) basis.
Under 15 U.S.C. §1126(d) and 37 C.F.R. §2.34(a)(4), the requirements for receipt of a priority filing date based on a previously filed foreign application are:
(1) The applicant must file a claim of priority within six months of the filing date of the foreign application. 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5);
(2) The applicant must: (a) specify the filing date, serial number, and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority. 37 C.F.R. §§2.34(a)(4)(i)(A) and (B). See also Paris Convention Article 4(D); and
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(3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application. 15 U.S.C. §1126(d)(2). This allegation is required even if use in commerce is asserted in the application. TMEP §806.02(e). If the verified statement 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. 37 C.F.R. §2.34(a)(4)(ii).
The scope of the goods/services covered by the §44 basis in the United States application cannot exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §§2.35(b)(3) and (4). See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis, and TMEP §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis.
See TMEP §§1003 et seq. for further information about §44(d) applications.
806.01(d) Foreign Registration — §44(e)
Under 15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:
(1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b);
(2) The application must 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 identified goods and/or services. 15 U.S.C. §1126(e). This allegation is required even if use in commerce is asserted in the application. TMEP §806.02(e). If the verified statement 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 application filing date. 37 C.F.R. §2.34(a)(3)(i); and
(3) The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002 et seq.
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If the applicant does not submit a certification or a certified copy of the registration from the country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin. A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.
The scope of the goods/services covered by the §44 basis in the United States application cannot exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is considered a change in basis. TMEP §1004.02. See TMEP §§806.03 et seq. regarding amendments to add or substitute a basis.
See TMEP §§1004 et seq. for further information about §44(e) applications.
806.01(e) Extension of Protection of International Registration - §66(a)
Section 66(a) of the Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.34(a)(5). The request must include a declaration of a bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration. The verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. Generally, the examining attorney need not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the initial verification of the application. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration. See TMEP §804.05.
A §66(a) applicant cannot change the basis or claim more than one basis. 37 C.F.R. §§2.34(b)(3) and 2.35(a). See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application can be transformed into an application under §1 or §44.
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. It cannot be added or substituted as a basis in an application originally filed under §1 or §44.
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Under 15 U.S.C. §1141g and Madrid Protocol Article 4(2), the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
(1) The request for extension of protection contains a claim of priority;
(2) The request for extension of protection specifies the filing date, serial number, and the country of the application that forms the basis for the claim of priority; and
(3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than six months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).
See Common Regs., Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2008) (“Guide to International Registration”), Para. B.II.13.02.
806.02 Multiple Bases
806.02(a) Procedure for Asserting More Than One Basis
In a §66(a) application, the applicant cannot claim more than one basis. 37 C.F.R. §2.34(b)(3).
In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b)(1). The applicant must clearly indicate that more than one basis is claimed, and must separately list each basis, followed by the goods or services to which that basis applies. If some or all of the goods or services are covered by more than one basis, this must be stated. 37 C.F.R. §§2.34(b)(2) and 2.35(b)(6).
Example: Based on use - SHIRTS AND COATS, in Class 25; Based on intent to use - DRESSES, in Class 25.
The applicant may assert different bases for different classes, and may also assert different bases as to different goods or services within a class.
When a single class has different bases for goods or services within the same class, the USPTO uses parentheses to indicate the specific basis for specific goods or services. When entering this information into the Trademark Reporting and Monitoring (“TRAM”) System, the examining attorney or legal instruments examiner (“LIE”) must refer to “use in commerce” or “intent to use” rather than referring to the statutory citation.
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Example: Class 025: (Based on Use in Commerce) PANTS; (Based on Intent to Use) SHIRTS.
The applicant may claim a §44 basis in addition to either a §1(a) or a §1(b) basis for the same goods or services. However, the applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services. 37 C.F.R. §2.34(b)(1).
806.02(b) Applicant May File Under Both §1(a) and §1(b) in the Same Application
An applicant may rely on both §1(a) and §1(b) in the same application. The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in the same application, but the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services. This can occur in either a single or multiple-class application. 37 C.F.R. §2.34(b)(1).
When the applicant asserts both §1(a) and §1(b) as bases for registration in the same application, the USPTO will publish the mark for opposition and will issue a notice of allowance (see TMEP §§1106 et seq.) if there is no successful opposition. The goods/services for which a §1(a) basis is asserted will remain in the application pending the filing and approval of a statement of use for the goods/services based on §1(b), unless the applicant files a request to divide. See TMEP §§1110 et seq. regarding requests to divide. If the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use. TMEP §806.02(d).
806.02(c) Examination of Specimens of Use in a Multiple-Basis Application
If the applicant claims use in commerce in addition to another basis, but does not specify which goods/services are covered by which basis, the USPTO may defer examination of the specimens until the applicant identifies the goods/services for which use is claimed. A proper examination of specimens requires consideration of the particular goods/services on or in connection with which the mark is used.
806.02(d) Abandonment of Multiple-Basis Applications
If an applicant fails to respond to an Office action or notice of allowance pertaining to only one basis of a multiple-basis application, the failure to respond will result in abandonment of the entire application, unless the applicant files a request to divide under 37 C.F.R. §2.87 and notifies the
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examining attorney that the request has been filed. See TMEP §§1110 et seq. regarding requests to divide. If the failure to respond was unintentional, the applicant may file a petition to revive. See TMEP §§1714 et seq. regarding petitions to revive.
806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application is Based on Both §44 and §1(a)
Any application filed under §44(d) or §44(e) must include a verified statement that the applicant has a bona fide intention to use the mark in commerce even if §1(a) (use in commerce) is asserted as an additional filing basis. Cf. In re Paul Wurth S.A., 21 USPQ2d 1631 (Comm’r Pats. 1991).
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce.
806.02(f) Section 44(d) Combined With Other Bases
If an applicant properly claims priority under §44(d), 15 U.S.C. §1126(d), in addition to a §1 basis, the applicant may elect not to perfect the §44(e) basis (based on the foreign registration that will issue from the application on which the applicant relies for priority) and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4).
The examining attorney must advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquire whether the applicant wishes to retain §44(e) as a second basis for registration. See TMEP §806.04(b) regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis, and TMEP §1003.04(b) regarding the procedures to follow when an applicant claims priority under §44(d) in addition to another basis.
806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce. Therefore, when an applicant adds or substitutes §1(b) or §44 as a filing basis, it is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if there is already one in the record with respect to the goods or services covered by the new basis.
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806.03 Amendments to Add or Substitute a Basis
806.03(a) When Basis Can be Changed
Section 1 or §44 Application - Before Publication. The applicant may add or substitute a basis before publication, provided that the applicant meets all requirements for the new basis. 37 C.F.R. §2.35(b)(1).
Section 1 or §44 Application - After Publication. In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must first petition the Director to allow the examining attorney to consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. §2.35(b)(2). See TMEP §§806.03(j) et seq. for further information.
Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a). See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §514.
Section 66(a) Application. In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a); TMEP §806.03(k).
806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period
An applicant may add or substitute a §44(d) basis only during the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.02(f) regarding §44(d) combined with another basis.
806.03(c) Amendment From §1(a) to §1(b)
In an application filed under §1(a), if the §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis. The USPTO will presume that the applicant had a continuing valid basis, in that the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3).
When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services, and that the applicant had a bona fide intention to use the mark in commerce on or in connection
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with the goods/services as of the application filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2).
Note, however, that in a §1(b) application, once an applicant has filed a statement of use, the applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17. Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed. See TMEP §1104.10 regarding withdrawing an amendment to allege use.
See TMEP §§806.03(j) et seq. regarding amendment of the basis after publication.
806.03(d) Amendment From §44 to §1(b)
An applicant may amend the basis from §44 to §1(b). The USPTO will presume that the applicant had a continuing valid basis, because the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3). Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006). It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).
Applicant must clearly indicate whether it wants to: (1) add the §1(b) basis and maintain the §44 basis; or (2) replace the §44 basis with the §1(b) basis.
In a §44(d) application, the applicant may substitute §1(b) as a basis and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4); TMEP §806.03(h). If the applicant chooses to add the §1(b) basis and maintain the §44 basis, the examining attorney cannot approve the mark for publication until the applicant files a copy of the foreign registration. See TMEP §806.02(f).
See TMEP §806.03(j) regarding amendment of the basis after publication.
806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a)
An applicant who claims a §1(b) basis for any or all of the goods or services may not amend the application to seek registration under §1(a) of the Act for those goods or services, unless the applicant files an allegation of use. 37 C.F.R. §2.35(b)(8). See TMEP §§1103, 1104 et seq., and 1109 et seq. regarding allegations of use.
806.03(f) Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application
An applicant can add or substitute a basis only if the applicant meets all the requirements for the new basis. 37 C.F.R. §2.35(b)(1). Therefore, an
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applicant may not amend a §44 application to claim a §1(a) basis unless the applicant: (1) verifies that the mark is in use in commerce on or in connection with the goods or services listed in the application, and 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; (2) provides a specimen, with a verified statement that the specimen was in use in commerce as of the application filing date; and (3) supplies the date of first use anywhere and the date of first use in commerce of the mark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1), 2.59(a), and 2.71(c)(1); TMEP §§806.01(a), 806.03(i), 903.01, 903.02, 903.04, and 904.05.
If an applicant began using the mark in commerce after the application filing date, the applicant cannot add or substitute §1(a) as a basis. However, the applicant may add or substitute §1(b) as a basis, and concurrently file an amendment to allege use. See TMEP §806.03(d) regarding amendment of the basis from §44 to §1(b), and TMEP §§1104 et seq. regarding amendments to allege use.
806.03(g) Amendment From §1(b) to §44
An applicant may amend the basis from §1(b) to §44, if the applicant meets the requirements of §44 as of the filing date of the amendment. It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).
When an applicant adds §44(e) as a basis, the applicant must submit a copy of the foreign registration (and a translation, if necessary) with the amendment. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b).
The applicant may add a claim of priority under §44(d) only within the six- month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.02(f) regarding §44(d) combined with another basis.
If the amendment is filed before publication, the applicant must clearly indicate whether it wants to: (1) add the §44 basis and maintain the §1(b) basis; or (2) replace the §1(b) basis with the §44 basis. If the applicant chooses to add §44 and maintain the §1(b) basis, the application will proceed to publication with a dual basis. See TMEP §§806.03(j) et seq. regarding amendment of the basis after publication.
806.03(h) Effect of Substitution of Basis on Application Filing Date
When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis. The applicant will retain the original filing date, provided that the applicant has had a continuing valid basis for
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registration since the application filing date. Unless there is contradictory evidence in the record, the USPTO will presume that there was a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3); Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009); Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).
If the applicant properly asserts a claim of priority under §44(d) during the six- month priority period, the applicant will retain the priority filing date, no matter which basis for registration is ultimately established, provided that the applicant has had a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3) and (4); TMEP §§806.02(f) and 1003.
If there is no continuing valid basis, the application is void, and registration will be refused. In this situation, the applicant cannot amend the filing date, and the USPTO will not refund the filing fee. See TMEP §205.
806.03(i) Verification of Amendment Required
An applicant who adds or substitutes use in commerce under §1(a) as a basis must verify that the mark is in use in commerce on or in connection with the goods/services covered by the §1(a) basis, and that the mark was in use in commerce on or in connection with these goods/services as of the filing date of the application. 37 C.F.R. §2.34(a)(1)(i).
An applicant who adds or substitutes §1(b), §44(d), or §44(e) as a basis must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services covered by the amendment, and that the applicant had a bona fide intention to use the mark in commerce on or in connection with these goods/services as of the filing date of the application, unless a verified statement of the applicant’s bona fide intention to use the mark in commerce has already been filed with respect to all the goods/services covered by the new basis. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i), and 2.34(a)(4)(ii).
Example: If a §44 application originally included a verified statement that the applicant had a bona fide intention to use the mark in commerce, it is not necessary to repeat this statement if the applicant later adds or substitutes a §1(b) basis for the goods/services covered by the §44 basis.
See TMEP §804.04 regarding persons who may sign a verification on behalf of an applicant under 37 C.F.R. §2.33(a).
806.03(j) Petition to Amend Basis After Publication - §1 or §44 Application
37 C.F.R. §2.35(b)(2). After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding
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before the Trademark Trial and Appeal Board, but only with the express permission of the Director, after consideration on petition. Republication will be required. The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by §2.133(a).
In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a) (see TBMP §514).
When granting a petition to amend the basis, the Director will restore jurisdiction to the examining attorney to consider the amendment, except in a §1(b) application in which the notice of allowance has issued. See TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.
If the examining attorney accepts the new basis, the mark must be republished. 37 C.F.R. §2.35(b)(2).
If the examining attorney does not accept the new basis, he or she will issue an Office action using standard examination procedures except in a §1(b) application in which a notice of allowance has issued and no statement of use has been filed. See TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.
Any petition to change the basis must be filed before issuance of the registration. To avoid the possible issuance of a registration without consideration of the petition, an applicant should submit the petition no later than six weeks after publication.
The Director will not grant a petition to amend the basis after publication if the amendment could substantially delay prosecution of the application. For example, the Director will deny petitions to amend the basis after publication in the following situations:
• Once the Director has granted a petition to amend the basis after publication, the Director will not thereafter grant a second petition to amend the basis with respect to the same application.
• If an applicant had previously deleted a §1(b) basis after a notice of allowance had issued, the Director will not grant a petition to re- assert §1(b) as a basis for registration. This would require issuance of a new notice of allowance and could result in filing of a statement of use more than 36 months after issuance of the first notice of
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allowance, which is not permitted under §1(d) of the Act, 15 U.S.C. §1051(d).
See TMEP §806.03(j)(i) regarding amendment of the basis in a §1(b) application between publication and issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.
Petitions to amend the basis after publication are processed by the Office of Petitions, which is part of the Office of the Deputy Commissioner for Trademark Examination Policy.
806.03(j)(i) Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance
An applicant who wants to add a §44(e) basis to a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j). The petition should indicate whether applicant wants to maintain the §1(b) basis. The applicant has three options:
(1) Applicant may delete the §1(b) basis and substitute §44(e). If the petition is granted, the Office of Petitions will delete the §1(b) basis from TRAM, and enter the foreign registration information. The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the examining attorney will approve the mark for republication. If registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant cannot later re-assert the §1(b) basis;
(2) Applicant may add §44(e) and retain the §1(b) basis. If the Director grants the petition and the examining attorney accepts the §44(e) basis, the application will be republished with a dual basis and, if registration of the mark is not opposed, a notice of allowance will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment and proceed under §1(b) as the sole basis; or
(3) Applicant may add §44(e) and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis. If the Director grants the petition and the examining attorney accepts the §44(e) basis, the examining attorney will: (a) ensure that the §1(b) basis is deleted from TRAM; and (b) approve the mark for
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republication. If the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment and proceed under §1(b) as the sole basis.
806.03(j)(ii) Amending the Basis of a §1(b) Application Between Issuance of Notice of Allowance and Filing of Statement of Use
Amendments Adding or Substituting a §44 Basis
An applicant who wants to add or substitute a §44(e) basis in a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment. If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j).
The petition should indicate whether applicant wants to maintain the §1(b) basis. The applicant has three options:
(1) The applicant may delete the §1(b) basis and substitute §44(e). If the petition is granted, Office of Petitions will delete the §1(b) basis from TRAM, and enter the foreign registration information. The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the mark will be republished and, if registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the new basis, the examining attorney will issue an Office action advising the applicant of the reasons. The applicant cannot re-assert the §1(b) basis;
(2) The applicant may add §44(e) and perfect the §1(b) basis by filing a statement of use with the petition. The Director will not grant a petition to add §44(e) and retain the §1(b) basis unless a statement of use is filed with the petition, because examination of the §44(e) basis could substantially delay prosecution of the application. If the examining attorney found the §44(e) basis unacceptable, the notice of allowance would have to be cancelled in order to issue an Office action. The USPTO will not cancel or reissue the notice of allowance in this situation, since this could result in the filing of a statement of use more than 36 months after issuance of the first notice of allowance, which is not permitted under §1(d) of the Act, 15 U.S.C. §1051(d). If the petition is granted, the examining attorney will examine the §44(e) basis during examination of the statement of use; or
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(3) As noted above, the applicant may not add §44(e) and maintain a dual basis, unless a statement of use is filed with the petition. However, the applicant may add a §44(e) basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis. If the Director grants the petition and the examining attorney accepts the §44(e) basis, the examining attorney will: (a) ensure that the §1(b) basis is deleted from TRAM; and (b) approve the mark for republication. If the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis, the §1(b) basis will be maintained. The examining attorney will notify the applicant by telephone or e-mail that the §44(e) basis is unacceptable and that an Office action will issue during examination of the statement of use, and make an appropriate note in the “Notes-to-the-File” section of the record. The application will then await the filing of the statement of use. The applicant may withdraw the request to amend the basis.
See also 37 C.F.R. §2.77 and TMEP §§1107 et seq.
Amendments That Apply to Less Than All the Goods/Services
The Director will not grant a petition to amend the basis if the amendment does not apply to all the goods/services covered by the §1(b) basis, unless the applicant concurrently files: (1) a request to divide out the goods/services to which the amendment applies; or (2) an amendment deleting the good/services not covered by the amendment. See 37 C.F.R. §2.87 and TMEP §§1110 et seq. regarding requests to divide.
806.03(j)(iii) Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration
A §1(b) applicant who wants to add or substitute a §44(e) basis after filing a statement of use must petition the Director to allow the examining attorney to consider the amendment. If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j).
While an applicant may not withdraw the statement of use (37 C.F.R. §2.88(g); TMEP §1109.17), the applicant may elect not to perfect the use basis and substitute §44(e). The statement of use, specimen(s), and any materials submitted with the statement of use will remain part of the record even if the §1(b) basis is deleted. See 37 C.F.R. §2.25.
The petition should indicate whether applicant wants to maintain the §1(b) basis. The applicant has three options:
(1) The applicant may delete the §1(b) basis and substitute §44(e). If the petition is granted, the Office of Petitions will delete the §1(b)
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basis from TRAM, and enter the foreign registration information. The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the examining attorney must e-mail the internal TMPHOTOCOMP mailbox to ensure that the mark is republished. If registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the new basis, the examining attorney will issue an Office action advising the applicant of the reasons. The applicant cannot re-assert the §1(b) basis;
(2) The applicant may add §44(e) and maintain the §1(b) basis. If the petition is granted, the examining attorney will be instructed to examine both the §1(b) and §44(e) bases, in accordance with standard examination procedures. If the §44(e) basis is unacceptable, the examining attorney must issue an Office action explaining the reasons. If an Office action is already outstanding, the examining attorney must issue a supplemental Office action, with a new six-month response period. The examining attorney must indicate that the action is supplemental to the previous action and must incorporate all outstanding issues by reference to the previous action.
If the §44(e) basis is acceptable, an Office action is outstanding, and deletion of the §1(b) basis would resolve all outstanding issues, the examining attorney should contact the applicant by telephone or e-mail to notify the applicant that the §44(e) basis is acceptable and inquire as to whether the applicant wants to delete the §1(b) basis. The §1(b) basis may be deleted by examiner’s amendment. If the applicant authorizes such an examiner’s amendment, the examining attorney must e-mail the internal TMPHOTOCOMP mailbox to ensure that: (a) the §1(b) basis is deleted from TRAM; (b) the dates of use are deleted from TRAM; (c) the foreign registration information is entered; and (d) the mark is republished. If the mark is not successfully opposed, a registration will issue.
If the applicant does not want to delete the §1(b) basis, the examining attorney must advise the applicant that a response to the Office action is due within six months of the date of issuance, and make an appropriate note in the “Notes-to-the-File” section of the record. The applicant must respond to the Office action within six months of the issuance date, or the application will be abandoned; or
(3) The applicant may add a §44(e) basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis. If the petition is granted, the examining attorney will be instructed to examine the §44(e) basis in addition to the statement of use.
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If the examining attorney accepts the §44(e) basis, the examining attorney must issue a “no-call” examiner’s amendment (see TMEP §707.02), and must e-mail the internal TMPHOTOCOMP mailbox to ensure that: (a) the §1(b) basis is deleted from TRAM; (b) the dates of use are deleted from TRAM; (c) the foreign registration information is entered; and (d) the mark is republished. If the mark is not successfully opposed, a registration will issue.
If the examining attorney does not accept the §44(e) basis, he or she will refuse the amendment to the basis and address any additional issue(s) that arise during examination of the statement of use in an Office action. If an Office action has already been issued, the examining attorney must issue a supplemental action, with a new six-month response period, notifying the applicant that the §44 basis is unacceptable. The examining attorney must indicate that the action is supplemental to the previous action and incorporate all outstanding issues by reference to the previous action. The applicant may choose to withdraw the request to amend the basis.
Filing a petition to add or substitute a new basis does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in an application. See TMEP §§711 et seq. regarding the deadline for response to an Office action. If the applicant has filed a petition to delete the §1(b) basis and substitute §44(e), but the petition has not yet been acted on, the applicant may respond to a refusal or requirement relating only to the §1(b) basis by informing the examining attorney that a petition has been filed to add §44(e) and delete the §1(b) basis. If the applicant has filed a petition to add a §44(e) basis and maintain the §1(b) basis, or a petition requesting that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis, but the petition has not yet been acted on, the applicant should state in the response that the petition has been filed, but must also respond to any outstanding issues regarding the statement of use.
806.03(k) Basis Cannot be Changed in §66(a) Application
In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a). See TMEP §§1904.09 et seq. regarding transformation.
806.03(l) §66(a) Basis Cannot be Added to §1 or §44 Application
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. It cannot be added or substituted as a basis in an application originally filed under §1 or §44.
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806.04 Deleting a Basis
If an applicant claims more than one basis, the applicant may delete a basis at any time, before or after publication. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a basis from a multiple-basis application after publication. When the applicant deletes a basis, the applicant must also delete any goods or services covered solely by that basis. 37 C.F.R. §2.35(b)(7).
To expedite processing, the USPTO recommends that a request to delete a §1(b) basis from a multiple-basis application be filed through TEAS, at http://www.uspto.gov/teas/index.html.
806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance
If an application is based on §1(b) in addition to another basis, the applicant may file a request to delete the §1(b) basis by amendment at any time, except as set forth below. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a §1(b) basis from a multiple-basis application after publication. To expedite processing, the USPTO recommends that any request to delete a §1(b) basis be filed through TEAS, at http://www.uspto.gov/teas/index.html, using the “Request to Delete §1(b) Basis” form.
If a notice of allowance has issued, the request must be filed: (1) within six months of the issuance date of the notice of allowance, or within a previously granted extension of time to file a statement of use; or (2) between the filing date of the statement of use and the date on which the examining attorney approves the mark for registration. If filed on paper, the request should be directed to the ITU Unit. The ITU Unit will cancel the notice of allowance, and take the necessary steps to delete the §1(b) basis and issue the registration.
If filed on paper before issuance of the notice of allowance, the request should be faxed to Post Publication Amendments/Corrections at 571-270- 9007. The request will be reviewed by paralegal specialists in the Office of Petitions, who will delete the §1(b) basis and schedule the mark for issuance of the registration.
806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis
If an applicant properly claims §44(d) in addition to another basis, the applicant may elect not to perfect a §44(e) basis and still retain the §44(d) priority filing date. 37 C.F.R. §§2.35(b)(3) and (4); TMEP §§806.01(c) and 806.02(f).
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When a §44(d) applicant elects not to proceed to registration under §44(e), the USPTO does not delete the §44(d) priority claim from the TRAM database. Both the §44(d) priority claim and the other basis will remain in the TRAM database.
Sometimes, a §44(d) applicant who elects not to perfect a §44(e) basis will file an amendment “deleting” the §44 basis. In this situation, the USPTO will presume that the applicant wants to retain the priority claim, unless the applicant specifically states that it wants to delete the priority claim and instead rely on the actual filing date of the application in the United States.
If the applicant is not entitled to priority (e.g., because the United States application was not filed within six months of the foreign filing), the examining attorney should ensure that the priority claim is deleted from the TRAM database, and should conduct a new search of USPTO records for conflicting marks.
806.05 Review of Basis Prior to Publication or Issue
If an application claims more than one basis, the examining attorney must ensure that the record clearly and accurately shows which goods are covered by which basis before approving the application for publication for opposition or registration on the Supplemental Register. If there are any errors, the examining attorney must ensure that the TRAM database is corrected.
When a single class has different bases for goods or services within the same class, the USPTO uses parentheses to indicate the specific basis for specific goods or services. When entering this information into the TRAM database, the examining attorney or LIE must refer to “use in commerce” or “intent to use” rather than referring to the statutory citation.
Example: Class 025: (Based on Use in Commerce) PANTS; (Based on Intent to Use) SHIRTS.
807 Drawing
The drawing shows the mark sought to be registered. 37 C.F.R. §2.52. An applicant must submit a clear drawing with the original application in order to receive a filing date in any application for registration of a mark, except in applications for registration of sound, scent, and other non-visual marks. See 37 C.F.R. §§2.21(a)(3) and 37 C.F.R. 2.52(e); see also TMEP §807.09 regarding “drawings” in applications for registration of non-visual marks. Submitting a specimen showing how the mark is or may be used (e.g., the overall packaging, a photograph of the goods, or an advertisement) does not satisfy the requirement for a clear drawing of the mark. See TMEP §202.01.
The drawing is used to reproduce the mark in the Trademark Official Gazette and on the registration certificate.
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The main purpose of the drawing is to provide notice of the nature of the mark sought to be registered. The drawing of a mark is promptly entered into the automated records of the USPTO and is available to the public through the Trademark Electronic Search System (“TESS”) and the Trademark Applications and Registrations Retrieval (“TARR”) database on the USPTO website at http://tarr.uspto.gov/. Timely public notification of the filing of applications is important, because granting a filing date to an application potentially establishes a date of constructive use of the mark (see TMEP §201.02). Therefore, an application must include a clear drawing of the mark to receive a filing date. 37 C.F.R. §2.21(a)(3); TMEP §202.01.
Examining attorneys must require applicants to comply promptly with the drawing rules. Requests to defer drawing corrections until the application is approved for publication or registration should be denied.
There are two forms of drawings: “special form drawings” and “standard character drawings.” See 37 C.F.R. 2.52(a) and (b); see also TMEP §§807.03 et seq. for information about standard character drawings, and TMEP §§807.04 et seq. for information about special form drawings. (Note: “Typed” drawings are acceptable for applications filed before November 2, 2003. See TMEP §807.03(i)).
The mark in the drawing must agree with the mark as used on the specimen in an application under §1 of the Trademark Act, 15 U.S.C. §1051; as applied for or registered in a foreign country in an application under §44, 15 U.S.C. §1126; or as it appears in the international registration in an application under §66(a), 15 U.S.C. §1141f(a). 37 C.F.R. §2.51; TMEP §§807.12 et seq. and 1011.01.
In a TEAS application, the drawing must be submitted electronically through TEAS, and must meet the requirements of 37 C.F.R. §§2.52 and 2.53 (see TMEP §§807.05 et seq.). In a paper application, the drawing must be submitted on paper and must meet the requirements of 37 C.F.R. §§2.52 and 2.54 (see TMEP §§807.06 et seq.).
807.01 Drawing Must Show Only One Mark
An application must be limited to only one mark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.52. See In re International Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999)
Under 37 C.F.R. §2.21(a)(3), an applicant must submit “a clear drawing of the mark” to receive a filing date. An application that includes two or more drawings displaying materially different marks does not meet this requirement. Two marks are considered to be materially different if the substitution of one for the other would be a material alteration of the mark, within the meaning of 37 C.F.R. §2.72 (see TMEP §§807.14 et seq.).
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Accordingly, if an applicant submits two or more drawing pages, the application is denied a filing date, because the applicant has not met the requirement for a clear drawing of the mark. See TMEP §202.01 for further information. See also Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004). However, if an applicant submits a separate drawing page in a paper application showing a mark, and a different mark appears in the written application, the application will receive a filing date, and the drawing page will control for purposes of determining what the mark is. The USPTO will disregard the mark in the written application. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001). Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the “Mark” field of a TEAS application, and a different mark appears in another field, the application will receive a filing date, and the mark entered in the “Mark” field will control for purposes of determining what the mark is.
The USPTO will not deny a filing date if the drawing shows spatially separate elements. If the applicant submits an application where the “drawing” is composed of multiple elements on a separate page, multiple elements on a single digitized image, or multiple elements in a separate area of the body of the application, the applicant has met the requirement of 37 C.F.R. §2.21(a)(3) for a clear drawing of the mark. The examining attorney must determine whether the matter presented for registration is a single mark projecting a unitary commercial impression. See TMEP §807.12(d) regarding “mutilation” or incomplete representation of the mark.
If the examining attorney determines that spatially separate elements constitute two or more different marks, the examining attorney should refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the applicant seeks registration of more than one mark. See In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974); In re Robertson Photo-Mechanix, Inc., 163 USPQ 298 (TTAB 1969). This refusal may apply in any application, regardless of the filing basis.
When registration is refused because the matter presented on the drawing does not constitute a single mark, the application filing fee will not be refunded. The applicant may amend the drawing if the amendment does not materially alter the mark, or may submit arguments that the matter on the drawing does in fact constitute a single mark. See TMEP §§807.14 et seq. regarding material alteration, and TMEP §807.14(a) regarding deletion of matter from the drawing.
Under 37 C.F.R. §2.52(b)(2), even if registration is sought for a three- dimensional mark, the applicant must submit a drawing depicting a single
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rendition of the mark. See TMEP §807.10. If the applicant submits a drawing that depicts a three-dimensional mark in multiple renditions, the examining attorney will require a substitute drawing depicting the mark in a single rendition. If the applicant believes that its mark cannot be adequately depicted in a single rendition, the applicant may file a petition under 37 C.F.R. §2.146 requesting that the rule be waived. See TMEP Chapter 1700 regarding petitions.
If the mark is duplicated in some form on the drawing (e.g., a typed word and a stylized display of the same word), this is generally not considered to be two materially different marks, and deletion of one of the marks is permitted.
See TMEP §§1214 et seq. regarding the refusal of registration of a mark with a “phantom” element on the ground that it includes more than one mark in a single application.
See also In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001) (hologram used on trading cards in varying shapes, sizes, contents, and positions constitutes more than one “device” as contemplated by §45 of the Trademark Act).
807.02 Drawing Must Be Limited to Mark
The drawing allows the USPTO to properly code and index the mark for search purposes, indicates what the mark is, and provides a means for reproducing the mark in the Official Gazette and on the certificate of registration. Therefore, matter that appears on the specimen that is not part of the mark should not be placed on the drawing. Purely informational matter such as net weight, contents, or business addresses are generally not considered part of the mark.
Quotation marks and hyphens should not be included in the mark on a drawing, unless they are a part of the mark. See TMEP §§807.12(a)(i) through (a)(iii) and 807.14(c) regarding the role of punctuation in determining whether the mark on the drawing agrees with the mark on the specimen. The drawing may not include extraneous matter such as the letters “TM,” “SM,” the copyright notice ©, or the federal registration notice ®. See TMEP §§906 et seq. regarding use of the federal registration notice.
See TMEP §807.14(a) regarding requirements for removal of matter from the drawing.
807.03 Standard Character Drawings
37 C.F.R. §2.52(a). Standard character (typed) drawing. Applicants who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color must submit a standard character drawing that shows the mark in black on a white background. An
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applicant may submit a standard character drawing if:
(1) The application includes a statement that the mark is in standard characters and no claim is made to any particular font style, size, or color;
(2) The mark does not include a design element;
(3) All letters and words in the mark are depicted in Latin characters;
(4) All numerals in the mark are depicted in Roman or Arabic numerals; and
(5) The mark includes only common punctuation or diacritical marks.
Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. Applicants who seek to register a mark without any claim as to the manner of display must submit a standard character drawing that complies with the requirements of 37 C.F.R. §2.52(a).
807.03(a) Requirements for Standard Character Drawings
A standard character drawing must show the mark in black on a white background. An applicant may submit a standard character drawing if:
• The mark does not include a design element;
• All letters and words in the mark are depicted in Latin characters;
• All numerals in the mark are depicted in Roman or Arabic numerals;
• The mark includes only common punctuation or diacritical marks; and
• No stylization of lettering and/or numbers is claimed in the mark.
37 C.F.R. §2.52(a).
In the drawing, the applicant may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters, or all lowercase letters, since no claim is made to any particular font style, size, or color. The applicant does not have to display the mark in all uppercase letters.
Superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set (see TMEP §807.03(b)) are not permitted in standard character drawings. In re AFG Industries Inc., 17 USPQ2d 1162 (TTAB 1990) (special form drawing required for raised numeral). The degree symbol is permitted.
Underlining is not permitted in a standard character drawing.
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Standard Character Claim Required. An applicant who submits a standard character drawing must also submit the following standard character claim:
The mark consists of standard characters without claim to any particular font style, size, or color.
This statement will appear in the Official Gazette and on the certificate of registration.
807.03(b) List of Standard Characters
The USPTO has created a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing. The standard character set is available on the USPTO website at http://teas.uspto.gov/standardCharacterSet.html. If the applicant has claimed standard character format and the drawing includes elements that are not in the set, then the examining attorney must treat the drawing as a special form drawing, ensure that the mark drawing code is changed, and require the applicant to delete the standard character claim. See TMEP §807.18 concerning mark drawing codes.
In a §66(a) application, if the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even if the international registration indicates that the mark is in standard characters. See the IB’s Guide to International Registration, Para. B.II.14.08.
807.03(c) Drawings Containing Both a Standard Character Claim and Designs or Other Elements
If the application contains a standard character claim, but the mark includes a design element, or color, or a claim of a particular style or size of lettering, or other elements such that the mark does not meet the requirements of 37 C.F.R. §2.52(a), then the examining attorney must: (1) treat the drawing as a special form drawing; (2) require that the applicant delete the standard character claim from the record; (3) ensure that the appropriate mark drawing code is entered into the TRAM database; and (4) if appropriate, add design search codes. See TMEP §807.18 concerning mark drawing codes, and TMEP §104 regarding design codes.
Similarly, a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons.
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807.03(d) Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration
A special form drawing containing a design element, color, a claim to a particular style or size of lettering, or other distinctive elements cannot be amended to a standard character drawing, unless the examining attorney determines that the amendment is not material. 37 C.F.R. §2.72.
Conversely, a standard character drawing cannot be amended to a special form drawing containing a design element, color, or a claim to a distinctive style or size of lettering, unless the examining attorney determines that the amendment is not material. 37 C.F.R. §2.72. See TMEP §§807.14 et seq. regarding material alteration.
807.03(e) Standard Character Drawing and Specimen of Use
When the applicant submits a standard character, the mark shown in the drawing does not necessarily have to appear in the same font style, size, or color as the mark shown on the specimen of use. However, the examining attorney must review the mark depicted on the specimen to determine whether a standard character claim is appropriate, or whether a special form drawing is required.
If the examining attorney determines that the standard characters are displayed in a distinctive manner that changes the meaning or overall commercial impression of the mark, the examining attorney must process the drawing as a special form drawing, and require the applicant to delete the standard character claim. As with all drawings, the mark on the drawing must be a substantially exact representation of the mark used on the specimen in an application under §1 of the Trademark Act. 37 C.F.R. §§2.51(a) and (b); TMEP §§807.12(a) et seq.
The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or the applicant’s qualified practitioner. When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed. See TMEP §807.18 concerning mark drawing codes.
See TMEP §807.04(b) for further information as to when a special form drawing is required.
807.03(f) Standard Character Drawing and Foreign Registration
In a §44 application, if the applicant claims standard characters, the examining attorney must ensure that the foreign registration also claims standard characters. See 37 C.F.R. §2.51(c); TMEP §807.12(b).
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If the foreign registration certificate does not indicate that the mark is in standard characters (or the equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent). The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the United States application. A statement that the foreign registration includes a claim that the mark is in standard characters may be entered through a note in the “Notes-to-the-File” section of the record, if there are no other outstanding issues.
Appendix E of this manual lists countries that register marks in standard characters or the equivalent. For countries on this list, if the drawing of the mark in the foreign registration is in block letters or other plain type font, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent. If the applicant has indicated that the mark is not in standard characters or the equivalent, but the foreign registration is from a country on the list and the mark appears in block letters or other plain type font, the examining attorney must inquire about the discrepancy. In response to the inquiry, the applicant must either amend the application to claim standard characters, or confirm that the mark is not in standard characters or the equivalent. If a particular country is not on this list, the examiner must inquire as to whether the mark in the foreign registration is for a mark in standard characters or the equivalent.
The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or applicant’s qualified practitioner. When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed. See TMEP §807.18 concerning mark drawing codes.
807.03(g) Drawings in “Typed” Format With No Standard Character Claim
Section 1 Applications. If the application does not include a standard character claim, but the mark is shown in a format that would have been considered “typed” prior to November 2, 2003 (i.e., the mark is shown in capital letters, or the mark is specified as “typed” in the body of the application, on a separate drawing page, or on a cover letter filed with the application), the drawing will initially be coded and entered into the automated records of the USPTO as a special form drawing. However, the examining attorney must treat the drawing of the mark as a standard character drawing, and ensure that a standard character claim is entered into the record.
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If the application is ready to be published for opposition, the examining attorney should enter the standard character claim by a no-call examiner’s amendment. In this situation, no prior authorization from the applicant is required to add a claim by an examiner’s amendment. See TMEP §707.02. If an Office action is necessary, it must include a requirement that the applicant submit a standard character claim.
Once the applicant submits a standard character statement, the examining attorney should ensure that the mark drawing code is changed to 4 (see TMEP §807.18).
Section 44 Applications. In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters. See TMEP §807.03(f).
Section 66(a) Applications. In a §66(a) application, the request for extension of protection forwarded by the IB normally indicates whether there is a standard character claim in the international registration. However, due to differences in requirements for standard character claims in different countries, there may be situations where the mark in the international registration meets the USPTO’s requirements for a standard character claim, but no standard character claim is set forth in the international registration. If the international registration does not indicate that the mark is in standard characters, and the applicant seeks to amend the §66(a) application to add a standard character claim, the examining attorney must contact the Supervisor of the Madrid Processing Unit (“MPU”) via e-mail for instructions on how to proceed. The applicant may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a) (see TMEP §§807.03(a) and (b)).
807.03(h) Drawings Where the Format Is Unclear
Section 1 Applications. When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification. For example, clarification is needed if the font style used in the mark on the drawing does not match the font style used on the specimen and there is no standard character claim in the application, or if the applicant files a paper application in which the mark is printed or written by hand. If the mark is intended to be in standard characters, then the examining attorney must require that the applicant amend the application to include the standard character claim. This may be done by examiner’s amendment. Once the applicant submits this statement, the examining attorney should ensure that the mark drawing code is changed to 4 (see TMEP §807.18).
Section 44 Applications. In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters. See TMEP §807.03(f).
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Section 66(a) Applications. In a §66(a) application, the request for extension of protection forwarded by the IB normally indicates whether there is a standard character claim in the international registration. However, due to differences in requirements for standard character claims in different countries, there may be situations where the mark in the international registration meets the USPTO’s requirements for a standard character claim, but no standard character claim is set forth in the international registration. If the international registration does not indicate the mark is in standard characters, and the applicant seeks to amend the §66(a) application to add a standard character claim, the examining attorney must contact the MPU Supervisor via e-mail for instructions on how to proceed. The applicant may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a) (see TMEP §§807.03(a) and (b)).
Alternatively, if the international registration indicates that the mark is in standard characters, but the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even if the international registration indicates that the mark is in standard characters. See the IB’s Guide to International Registration, Para. B.II.14.08.
The Guide to the International Registration provides that if an Office “considers that the mark is not in standard characters, it may issue a refusal, for example, on the ground that the international registration covers two marks (one in standard characters and one in special characters) or that it is simply not clear for what protection is sought.” Para. B.II.14.09. See TMEP §807.01 regarding multiple marks and §§1214 et seq. regarding phantom marks.
807.03(i) Typed Drawings
Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. The mark on a typed drawing had to be typed entirely in capital letters. A typed mark is the legal equivalent of a standard character mark.
807.04 Special Form Drawings
Extract from 37 C.F.R. §2.52(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.
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807.04(a) Characteristics of Special Form Drawings
A “special form drawing” is a drawing that presents a mark comprised, in whole or in part, of special characteristics such as elements of design or color, style(s) of lettering, or unusual form(s) of punctuation.
All special form drawings must be of a quality that will reproduce satisfactorily for scanning into the USPTO’s database. If the drawing is not of a quality that will reproduce satisfactorily for scanning and printing in the Official Gazette and on the certificate of registration, the examining attorney must require a new drawing. If there is any doubt as to whether the drawing is acceptable, the examining attorney should contact the Office of Trademark Quality Review.
Pasted material, taped material, and correction fluid is not acceptable because it does not reproduce satisfactorily.
See TMEP §807.18 concerning mark drawing codes.
807.04(b) When Special Form Drawing is Required
A special form drawing is required if words, letters, or numerals are presented in a distinctive form that changes the meaning or overall commercial impression of the mark. In re Morton Norwich Products, Inc., 221 USPQ 1023 (TTAB 1983); In re United Services Life Ins. Co., 181 USPQ 655 (TTAB 1973); In re Dartmouth Marketing Co., Inc., 154 USPQ 557 (TTAB 1967).
A special form drawing is required for marks that contain superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set. In re AFG Industries Inc., 17 USPQ2d 1162 (TTAB 1990) (special form drawing required for raised numeral). See TMEP §807.03(b) regarding the USPTO’s standard character set.
The USPTO encourages the use of standard character drawings. As a general rule, an applicant may submit a standard character drawing when a word, letter, numeral, or combination thereof creates a distinct commercial impression apart from any stylization or design element appearing on the specimen. If a mark remains the same in essence and is recognizable regardless of the form or manner of display that is presented, displaying the mark in standard character format affords a quick and efficient way of showing the essence of the mark. In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) (Board reversed refusal on the ground that the standard character mark on the drawing was not a substantially exact representation of the mark as actually used, finding that SPECTRAMET creates a distinct commercial impression apart from any stylization or design element appearing on the specimens, on which the letter “C” was displayed with an arrow design); In re Oroweat Baking Co., 171 USPQ 168 (TTAB 1971) (requirement for special form drawing to register OROWEAT displayed with wheat designs in the letter
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“O” held improper); In re Electronic Representatives Ass’n, 150 USPQ 476 (TTAB 1966) (special form drawing not required when acronym makes an impression apart from design).
When an application is for a mark in standard characters, the examining attorney should consider the manner in which the mark is used on the specimen, and decide whether the mark includes an essential element or feature that cannot be produced by the use of standard characters. For example, if the mark comprises the prescription symbol Rx, a claim of standard characters would be inappropriate. See TMEP §§807.12(a) et seq. regarding agreement between the mark on the drawing and the mark used on the specimen.
If the examining attorney determines that the mark in a standard character drawing should have been presented in special form, the applicant may submit a special form drawing if the amendment would not result in a material alteration of the mark. The applicant cannot substitute a special form drawing if the amendment would materially alter the mark. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. If a standard character drawing is amended to a special form drawing, the examining attorney must ensure that the mark drawing code is changed. See TMEP §807.18 concerning mark drawing codes.
807.05 Electronically Submitted Drawings
The drawing in a TEAS application must meet the requirements of 37 C.F.R. §§2.52 and 2.53.
The USPTO has waived the requirement of 37 C.F.R. §2.53(c) that drawings have a length and width of no less than 250 pixels and no more than 944 pixels. See notice at 69 Fed. Reg. 59809 (Oct. 6, 2004). However, applicants are encouraged to continue to submit drawings with a length and width of no less than 250 pixels and no more than 944 pixels.
807.05(a) Standard Character Drawings Submitted Electronically
If an applicant is filing a standard character drawing, the applicant must enter the mark in the appropriate data field. The applicant must also submit a standard character claim, which is automatically generated once the applicant selects the standard character option. 37 C.F.R. §2.52(a)(1).
When an application for a standard character mark is filed through TEAS, the characters entered in the appropriate data field in the TEAS application or TEAS response form are automatically checked against the USPTO’s standard character set. See TMEP §807.03(b) regarding the standard character set.
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If all the characters in the mark are in the standard character set, the USPTO will create a digitized image that meets the requirements of 37 C.F.R. §2.53(c), and automatically generate the standard character statement. The application record will indicate that standard characters have been claimed and that the USPTO has created the image. The examining attorney need not check the standard character mark against the standard character set during examination.
807.05(a)(i) Long Marks in Standard Character Drawings
As noted in TMEP §807.05(a), when an applicant files an application for a standard character mark through TEAS, the applicant must enter the mark in the appropriate data field.
A single line can consist of no more than 26 characters, including spaces. If the applicant enters a mark that exceeds 26 characters into the standard character word mark field, the USPTO’s automated system will break the mark, so that it fits into the Official Gazette. After 26 characters, the mark will automatically continue onto the next line. The online TEAS instructions provide further information about breaks in long standard character marks. If a standard character mark exceeds 26 characters, and the applicant has a preference as to where the mark will be broken, the applicant should use the special form option, and attach a digitized image that meets the requirements of 37 C.F.R. §2.53(c). See TMEP §807.05(c) regarding the requirements for digitized images. If the applicant selects the special form option, the applicant may not include a standard character claim.
807.05(b) Special Form Drawings Submitted Electronically
If the mark is in special form, the applicant must attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c) to the “Mark” field on the electronic application. See TMEP §807.05(c).
807.05(c) Requirements for Digitized Images
The mark image must be in .jpg format, and should be scanned at no less than 300 dots per inch and no more than 350 dots per inch, to produce the highest quality image. All lines must be clean, sharp, and solid, must not be fine or crowded, and must produce a high-quality i