(New 09/08/2008)
Warning to USPTO Customers re Trademark Monitoring and Document Filing Companies:
You may receive unsolicited communications from companies requesting fees for trademark related services, such
as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies who offer these services are not affiliated or associated with the USPTO or any other federal agency. The USPTO does not provide trademark monitoring or any similar services.
Such companies typically charge a service fee in addition to applicable USPTO fees. In many instances, applicants and registrants have mistakenly believed that the USPTO has issued these communications or that these companies are affiliated with the USPTO. Complaints about such companies or communications may be made to the Federal Trade Commission, at https://www.ftcomplaintassistant.gov/.
You can file documents electronically directly with the USPTO using forms available through the Trademark Electronic Application System (TEAS). Only applicable fees required by law, and no service fees, are charged. You can monitor status directly at no cost through Trademark Application Registration Retrieval (TARR) [link to http://tarr.uspto.gov/]. For general information on filing and maintenance requirements for trademark applications and registrations, including required fees, please consult the USPTO website.
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(New 10/16/2008)
Preliminary Amendments for Section 66(a) applications:
On or about October 17, 2008, the USPTO will remove the edit that is currently blocking use of the Preliminary Amendment form for any application filed under the Madrid Protocol (Section 66(a)). However, practitioners are reminded that for a Section 66(a) application, a preliminary amendment may be submitted ONLY to propose the following changes:
1. Deletion of an existing class or modification of the listing of goods/services within an existing class. You may not propose any of the other changes listed at Question #1 of the form wizard, namely, changing a classification number; adding/modifying dates of use;adding/substituting a specimen; and/or submitting a foreign registration certificate. Nor may you add a class(es) (form wizard question #5).
2. Insertion of an additional statement, for example, a disclaimer, a translation into English, the consent to register an individual's name. Amendment to the Supplemental Register is not permitted, however, even though that option will appear in the Additional Statement section of the form.
3. Submission of a better quality image or submission of a drawing that complies with U.S. drawing requirements. You may not amend the mark, even in a non-material way.
4. Correction of applicant or entity information, e.g., to provide applicant's country of incorporation or organization. You may not change the applicant/holder or address thereof.
5. Payment of additional fee (although the need for this perhaps does not exist, since adding a class(es) is not permitted.
6. Submission of a signed declaration, if you believe the original MM18 form was not properly signed.
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(Updated 01/10/2009)
Substitute specimen problem in Request for Reconsideration form and Petition form :
On January 10, 2009, the USPTO resolved the problem encountered by an applicant attempting to submit a substitute specimen within either the Request for Reconsideration after Final Action form or the Petition for failure to submit a timely response to an Office action form. Specifically, the applicant had been stopped by an error message indicating that the form was not the proper form for alleging use of the mark, and directed the filer to the TEAS Allegation of Use form. These forms now properly recognize that an allegation of use was already filed and that what is now being submitted is a "substitute" specimen.
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(New 12/11/2008)
Substitute specimen problem in Request for Reconsideration form and Petition form :
The USPTO is aware of a problem when an applicant attempts to submit a substitute specimen within either the Request for Reconsideration after Final Action form or the Petition for failure to submit a timely response to an Office action form. Specifically, the applicant will encounter an error message indicating that the form is not the proper form for alleging use of the mark, and will direct the filer to the TEAS Allegation of Use form.
Unlike the regular Response to Office action form that properly recognizes that an allegation of use has already been filed and what is now being submitted is a "substitute" specimen, unfortunately neither of the other referenced forms were programmed in the same manner. This "bug" will be fixed in TEAS release 4.4., currently scheduled for January 10, 2009.
Until such time, any applicant who encounters this problem should e-mail TEAS@uspto.gov, and a TEAS Support Staff team member will identify the needed steps for a "workaround" until the programmatic fix is made.
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(New 01/07/2009)
ROA track changes feature:
In TEAS 4.4, scheduled for release January 10, 2009, the USPTO will introduce a "track change" feature
in the TEAS Response to Office action (ROA) form for when an identification of goods/services is modified
in any way. If the track changes feature works as anticipated and is deemed useful, the USPTO will expand
the functionality to other relevant forms.
When this feature is implemented, the input table and text form will highlight the specific changes. First
displayed will be the current description of goods/services appearing in the USPTO database prior to any
change. The form is automatically pre-populated with this data. This section will be followed by a
"tracked text description." Therein, any deletions and/or additions of text will be highlighted, as
follows:
-
Deletions: Deletions: Any text deleted will be shown within brackets and underlined. The system
relies on semi-colons or commas as a "delimiter" for this process, meaning that any deletion of
even a single word between two semi-colons or commas will result in a strike-through of the entire
entry, with the intended updated wording shown in red and underlined. See sample 1, below.
Where a single entry is simply deleted, then all that will appear is the bracketed/struck
through wording. See samples 2 and 3, below.
-
Additions: Any text added will be shown in red and underlined, as a new stand-alone
entry. However, where wording is added in the middle of an existing word string, then
the original wording is first shown as being deleted entirely, and then the new wording is presented
in its entirety. Cf. sample 4 and 5, below.
The third section will be headed "Final Description" and will show the changes fully integrated
into the listing as would ultimately appear in the Official Gazette; i.e., absent any of
the special "track change" features used in the previous section.
Sample 1: The wording "yellow pages" was deleted. Because it was part of a longer string wherein other words are
retained, the entire listing is first shown as deleted with a strike-through and in brackets, and
then the "remaining" wording is shown immediately thereafter. NOTE: In the future, we hope to
modify the approach so that only the wording being removed will be struck through (here, e.g., only "yellow pages" rather
than the entire phrase).
| GOODS AND/OR SERVICES SECTION (016)(current) |
| INTERNATIONAL CLASS
| 016 |
| DESCRIPTION |
| Printed material, namely, yellow pages directories; telephone directories |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(e) |
STANDARD
CHARACTERS
OR EQUIVALENT
|
NO
|
| GOODS AND/OR SERVICES SECTION (016)
(proposed) |
| INTERNATIONAL CLASS
| 016 |
|
TRACKED TEXT DESCRIPTION |
[Printed material, namely, yellow pages directories]; Printed material, namely, directories; telephone directories |
|
FINAL DESCRIPTION | Printed material,
namely, directories; telephone directories |
| FILING BASIS
| Section 1(b) |
| FILING BASIS
| Section 44(e) |
|
Sample 2: The wording "telephone directories" has been deleted entirely.
| GOODS AND/OR SERVICES SECTION (016)(current)
|
| INTERNATIONAL CLASS
| 016 |
| DESCRIPTION |
| Printed material, namely, yellow pages
directories; telephone directories |
| FILING BASIS
| Section 1(b) |
| FILING BASIS |
Section 44(e) |
STANDARD
CHARACTERS
OR EQUIVALENT
|
NO
|
| GOODS AND/OR SERVICES SECTION (016)
(proposed) |
|
INTERNATIONAL CLASS | 016 |
|
TRACKED TEXT DESCRIPTION |
Printed material, namely, yellow pages directories;
[telephone directories]; |
|
FINAL DESCRIPTION |
Printed material, namely, yellow pages directories; |
|
FILING BASIS | Section 1(b) |
|
FILING BASIS | Section 44(e) |
|
Sample 3: The wording "Skin emollients" has been deleted from the middle of a long recitation, making
it easy to identify what change has been made.
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
003 |
| DESCRIPTION |
| Hair tonic; Hair tonics; Hand cream; Hand creams;
Hand lotions; Hand scrubs; Hand soaps; Lavender oil; Lip balm; Lip balm; Lip cream; Lip gloss; Lip gloss palatte; Lip
liner; Lip polisher; Lipstick; Lipstick cases; Lipstick holders; Lipsticks; Liquid bath soaps; Liquid perfumes; Liquid
soap; Liquid soaps; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Lotions for cellulite reduction;
Lotions for cosmetic purposes; Lotions for face and body care; Lotions for strengthening the nails; Make up foundations;
Make up removing preparations; Make-up; Make-up for the face and body; Make-up foundations; Make-up kits comprised of lipstick,
lip gloss, lip pencil; Make-up pencils; Make-up powder; Make-up preparations; Make-up remover; Make-up removing lotions;
Make-up removing milk, gel, lotions and creams; Make-up removing milks; Make-up removing preparations; Mascara; Mascaras;
Massage creams; Massage oil; Massage oils; Medicated soap; Medicated soaps; Mineral salt in the nature of bath salts not
for medical purposes; Moisturizing creams; Moisturizing milks; Nail buffing preparations; Nail care preparations; Nail care
preparations, namely, nail softeners; Nail cream; Nail enamel; Nail enamels; Nail glitter; Nail grooming products, namely,
tips, glue, lacquer and glitter; Nail hardeners; Nail polish; Nail polish base coat; Nail polish remover; Nail polish removers;
Nail polish top coat; Nail stencils; Nail strengtheners; Nail tips; Nail varnish; Nail varnish for cosmetic purposes; Nail
varnishes; Nail-polish removers; Natural essential oils; Natural mineral make-up; Night cream; Non-medicated acne treatment
preparations; Non-medicated bath preparations; Non-medicated bath salts; Non-medicated body soaks; Non-medicated douches;
Non-medicated lip care preparations; Non-medicated lip protector; Non-medicated ointments for the prevention and treatment
of sunburn; Non-medicated preparations all for the care of skin, hair and scalp; Non-medicated scalp treatment cream;
Non-medicated skin care preparations; Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners
and peels; Non-medicated skin creams; Non-medicated stimulating lotions for the skin; Non-medicated sun care preparations;
Non-medicated toiletries; Nutritional oils for cosmetic purposes; Oil baths for hair care; Oils for cleaning purposes; Oils
for cosmetic purposes; Oils for hair conditioning; Patches containing sun screen and sun block for use on the skin; Pencils
for cosmetic purposes; Perfume; Perfumed creams; Perfumed extracts for tissues and perfumes; Perfumed paste; Perfumed powder;
Perfumed powders; Perfumed soap; Perfumed soaps; Personal deodorants; Pot pourri; Potpourri; Pre-moistened cosmetic tissues;
Pre-moistened cosmetic towelettes; Pre-moistened cosmetic wipes; Pre-shave creams; Rouge; Rouges; SPF sunblock towelettes;
Sachet-like eye pillows containing fragrances; Sachets; Self-tanning preparations; Shampoo-conditioners; Shampoos; Shampoos
for babies; Shaving balm; Shaving cream; Shaving creams; Shaving foam; Shaving gel; Shaving gels; Shaving lotion; Shaving
lotions; Shaving mousse; Shaving preparations; Shaving soap; Shaving soaps; Shower and bath foam; Shower and bath gel; Shower
creams; Shower gel; Shower gels; Skin abrasive preparations; Skin and body topical lotions, creams and oils for cosmetic use;
Skin bronzer; Skin bronzing creams; Skin care preparation, namely, body polish; Skin care preparations, namely, chemical peels
for skin; Skin care preparations, namely, fruit acid peels for skin; Skin care preparations, namely, body balm; Skin care
products, namely, non-medicated skin serum; Skin clarifiers; Skin cleansers; Skin cleansing cream; Skin cleansing lotion; Skin
conditioners; Skin cream; Skin creams; Skin creams in liquid and in solid form; Skin creams in liquid and solid; Skin creams
in liquid and solid form; Skin emollients; Skin gels for accelerating, enhancing or extending tans; Skin lotion; Skin lotions;
Skin masks; Skin moisturizer; Skin moisturizer masks; Skin soap; Skin texturizers; Skin toners; Skin whitening creams; Skin
whitening preparations; Soaps; Soaps for body care; Soaps for personal use; Styling gels; Styling lotions; Styling mousse;
Sun block; Sun block preparations; Sun care lotions; Sun creams; Sun screen; Sun screen preparations; Sun tan gel; Sun tan
lotion; Sun tan oil; Sun-block lotions; Sun-tanning oils; Sun-tanning oils and lotions; Sun-tanning preparations; Sunscreen
cream; Sunscreen creams; Suntan creams; Suntanning preparations; Tanning and after-sun milks, gels and oils cosmetics;
Tanning creams; Tanning gels; Tanning milks; Tanning oils; Under-eye enhancers; Washing-up liquids; Waterless soap; Wrinkle
removing skin care preparations; Wrinkle resistant cream; After sun creams; After-shave; After-shave balms; After-shave
creams; After-shave emulsions; After-shave gel; After-shave lotions; After-sun gels; After-sun lotions; After-sun milks;
After-sun oils; Age retardant gel; Age retardant lotion; Age spot reducing creams; Anti-aging cream; Anti-aging creams;
Anti-perspirants; Anti-wrinkle cream; Anti-wrinkle creams; Antibacterial skin soaps; Antibacterial soap; Aromatherapy
body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap,
body polish, body and foot scrub and non-medicated foot cream; Aromatherapy creams; Aromatherapy inhaler sold filled
with aromatherapy essential oils; Aromatherapy lotions; Aromatherapy oils; Aromatherapy pillows comprising potpourri
in fabric containers; Aromatherapy pillows that may be used to freshen clothing or lay over the eyes; Aromatherapy
sprays; Baby hair conditioner; Baby lotion; Baby oil; Baby oils; Baby powder; Baby powders; Baby shampoo; Baby wipes;
Bar soap; Bath and shower gels and salts not for medical purposes; Bath beads; Bath crystals; Bath flakes; Bath foam;
Bath foams; Bath gel; Bath gels; Bath herbs; Bath lotion; Bath milks; Bath oil; Bath oils; Bath oils for cosmetic
purposes; Bath pearls; Bath powder; Bath salts; Bath salts; Bath soaps; Bath soaps in liquid, solid or gel form;
Bathing lotions; Bay rums; Beauty creams; Beauty creams for body care; Beauty gels; Beauty lotions; Beauty masks;
Beauty milks; Beauty serums; Blush; Blush pencils; Blusher; Body and beauty care cosmetics; Body cream; Body cream
soap; Body creams; Body deodorants; Body emulsions; Body lotion; Body lotions; Body mask cream; Body mask lotion;
Body mask powder; Body masks; Body milk; Body milks; Body oil; Body oils; Body scrub; Cologne; Cologne water;
Colognes, perfumes and cosmetics; Coloring preparations for cosmetic purposes; Combination cleaner and deodorizer
for litter boxes; Compacts containing make-up; Concealers; Conditioners; Cosmetic balls; Cosmetic creams; Cosmetic
creams for skin care; Cosmetic milks; Cosmetic oils; Cosmetic oils for the epidermis; Cosmetic olive oil for the
face and body; Cosmetic pads; Cosmetic pencils; Cosmetic preparations; Cosmetic preparations against sunburn;
Cosmetic preparations for body care; Cosmetic preparations for eye lashes; Cosmetic preparations for skin renewal;
Cosmetic preparations for slimming purposes; Cosmetic rouges; Cosmetic soaps; Cosmetic sun-protecting preparations;
Cosmetic sun-tanning preparations; Cosmetic suntan lotions; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics
and make-up; Cosmetics for animals; Cosmetics in general, including perfumes; Cosmetics, namely, lip primer; Cosmetics,
namely, compacts; Cosmetics, namely, lip repairers; Cotton balls for cosmetic purposes; Cotton buds for cosmetic
purposes; Cotton for cosmetic purposes; Cream soaps; Creams for cellulite reduction; Creamy foundation; Creamy rouges;
Deodorants and antiperspirants; Deodorants and antiperspirants for personal use; Eau de cologne; Eau de colognes; Eau
de parfum; Eau de perfume; Eau de toilette; Eau-de-toilette; Eaux de cologne; Eaux de toilette; Ethereal oils;
Exfoliant creams; Exfoliants for skin, face; Eye cream; Eye gels; Eye liner; Eye lotions; Eye make-up; Eye make-up
remover; Eye pencils; Eye shadow; Eye shadows; Eye-shadow; Eyebrow colors; Eyebrow cosmetics; Eyebrow pencils;
Eyeliner; Eyeliner pencils; Eyeliners; Eyes make-up; Eyes pencils; Eyeshadow; Eyeshadows; Face and body beauty
creams; Face and body creams; Face and body glitter; Face and body lotions; Face and body milk; Face creams; Face
creams for cosmetic use; Face glitter; Face milk and lotions; Face painting kits; Face powder; Face powder paste;
Face-powder on paper; Facial beauty masks; Facial cleansers; Facial cleansing milk; Facial concealer; Facial cream;
Facial creams; Facial emulsions; Facial lotion; Facial make-up; Facial masks; Facial scrubs; Facial washes; Foam bath;
Foundation; Foundation make-up; Foundations; Gel eye masks |
|
FILING BASIS | Section 1(a) |
|
FIRST USE ANYWHERE DATE
|
At least as early as
07/19/2005 |
|
FIRST USE IN COMMERCE DATE
|
At least as early as
07/19/2005 |
|
FILING BASIS | Section 1(b) |
|
FILING BASIS | Section 44(e) |
STANDARD
CHARACTERS
OR EQUIVALENT
|
NO
|
|
GOODS AND/OR SERVICES SECTION (proposed) |
|
INTERNATIONAL CLASS | 003 |
| TRACKED TEXT DESCRIPTION |
Hair tonic; Hair tonics;
Hand cream; Hand creams;
Hand lotions; Hand scrubs;
Hand soaps; Lavender oil;
Lip balm; Lip balm;
Lip cream; Lip gloss;
Lip gloss palatte; Lip liner;
Lip polisher; Lipstick;
Lipstick cases; Lipstick holders;
Lipsticks; Liquid bath soaps;
Liquid perfumes; Liquid soap;
Liquid soaps; Liquid soaps for hands and face;
Liquid soaps for hands, face and body; Lotions for cellulite reduction;
Lotions for cosmetic purposes; Lotions for face and body care;
Lotions for strengthening the nails; Make up foundations;
Make up removing preparations; Make-up;
Make-up for the face and body; Make-up foundations;
Make-up kits comprised of lipstick, lip gloss, lip pencil; Make-up pencils;
Make-up powder; Make-up preparations; Make-up remover;
Make-up removing lotions; Make-up removing milk, gel, lotions and creams;
Make-up removing milks; Make-up removing preparations;
Mascara; Mascaras; Massage creams;
Massage oil; Massage oils; Medicated soap;
Medicated soaps; Mineral salt in the nature of bath salts not for medical purposes;
Moisturizing creams; Moisturizing milks;
Nail buffing preparations; Nail care preparations;
Nail care preparations, namely, nail softeners; Nail cream;
Nail enamel; Nail enamels; Nail glitter;
Nail grooming products, namely, tips, glue, lacquer and glitter;
Nail hardeners; Nail polish;
Nail polish base coat; Nail polish remover;
Nail polish removers; Nail polish top coat;
Nail stencils; Nail strengtheners;
Nail tips; Nail varnish;
Nail varnish for cosmetic purposes; Nail varnishes;
Nail-polish removers; Natural essential oils;
Natural mineral make-up; Night cream;
Non-medicated acne treatment preparations;
Non-medicated bath preparations;
Non-medicated bath salts; Non-medicated body soaks;
Non-medicated douches; Non-medicated lip care preparations;
Non-medicated lip protector; Non-medicated ointments for the prevention
and treatment of sunburn; Non-medicated preparations all for the care of skin, hair
and scalp; Non-medicated scalp treatment cream;
Non-medicated skin care preparations; Non-medicated skin care
preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated
skin creams; Non-medicated stimulating lotions for the skin;
Non-medicated sun care preparations; Non-medicated
toiletries; Nutritional oils for cosmetic purposes; Oil
baths for hair care; Oils for cleaning purposes; Oils
for cosmetic purposes; Oils for hair conditioning; Patches
containing sun screen and sun block for use on the skin; Pencils for cosmetic
purposes; Perfume; Perfumed creams;
Perfumed extracts for tissues and perfumes; Perfumed paste;
Perfumed powder; Perfumed powders; Perfumed
soap; Perfumed soaps;
Personal deodorants; Pot pourri;
Potpourri;
Pre-moistened cosmetic tissues; Pre-moistened cosmetic towelettes;
Pre-moistened cosmetic wipes; Pre-shave creams;
Rouge; Rouges;
SPF sunblock towelettes; Sachet-like eye pillows containing fragrances;
Sachets; Self-tanning preparations;
Shampoo-conditioners; Shampoos;
Shampoos for babies; Shaving balm;
Shaving cream; Shaving creams;
Shaving foam; Shaving gel;
Shaving gels; Shaving lotion;
Shaving lotions; Shaving mousse;
Shaving preparations; Shaving soap;
Shaving soaps; Shower and bath foam;
Shower and bath gel; Shower creams;
Shower gel; Shower gels;
Skin abrasive preparations; Skin and
body topical lotions, creams and oils for cosmetic use; Skin
bronzer; Skin bronzing creams; Skin
care preparation, namely, body polish; Skin care preparations,
namely, chemical peels for skin; Skin care preparations, namely,
fruit acid peels for skin; Skin care preparations, namely, body
balm; Skin care products, namely, non-medicated skin serum;
Skin clarifiers; Skin cleansers; Skin cleansing cream; Skin cleansing lotion;
Skin conditioners; Skin cream; Skin creams; Skin creams in liquid and in solid
form; Skin creams in liquid and solid; Skin
creams in liquid and solid form; [Skin
emollients]; Skin gels for accelerating, enhancing or extending
tans; Skin lotion; Skin lotions;
Skin masks; Skin moisturizer;
Skin moisturizer masks; Skin soap;
Skin texturizers; Skin toners;
Skin whitening creams; Skin whitening
preparations; Soaps; Soaps for
body care; Soaps for personal use;
Styling gels; Styling lotions;
Styling mousse; Sun block;
Sun block preparations; Sun care
lotions; Sun creams; Sun
screen; Sun screen preparations; Sun
tan gel; Sun tan lotion; Sun tan
oil; Sun-block lotions; Sun-tanning
oils; Sun-tanning oils and lotions;
Sun-tanning preparations; Sunscreen cream;
Sunscreen creams; Suntan creams;
Suntanning preparations;
Tanning and after-sun milks, gels and oils cosmetics; Tanning creams; Tanning gels; Tanning
milks; Tanning oils; Under-eye
enhancers; Washing-up liquids; Waterless
soap; Wrinkle removing skin care preparations;
Wrinkle resistant cream; After sun
creams; After-shave; After-shave
balms; After-shave creams; After-shave
emulsions; After-shave gel; After-shave
lotions; After-sun gels; After-sun
lotions; After-sun milks; After-sun
oils; Age retardant gel; Age retardant
lotion; Age spot reducing creams; Anti-aging
cream; Anti-aging creams; Anti-perspirants;
Anti-wrinkle cream; Anti-wrinkle creams;
Antibacterial skin soaps; Antibacterial soap;
Aromatherapy body care products, namely, body lotion, shower gel, cuticle cream,
shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated
foot cream; Aromatherapy creams; Aromatherapy
inhaler sold filled with aromatherapy essential oils; Aromatherapy
lotions; Aromatherapy oils; Aromatherapy
pillows comprising potpourri in fabric containers; Aromatherapy pillows
that may be used to freshen clothing or lay over the eyes; Aromatherapy
sprays; Baby hair conditioner; Baby lotion;
Baby oil; Baby oils; Baby
powder; Baby powders; Baby shampoo; Baby wipes; Bar soap; Bath and
shower gels and salts not for medical purposes; Bath beads; Bath crystals; Bath flakes; Bath
foam; Bath foams; Bath gel; Bath gels; Bath herbs; Bath
lotion; Bath milks; Bath oil; Bath oils; Bath oils for cosmetic purposes; Bath pearls; Bath powder; Bath
salts; Bath salts; Bath soaps; Bath soaps in liquid, solid or gel form; Bathing lotions;
Bay rums; Beauty creams; Beauty
creams for body care; Beauty gels; Beauty lotions;
Beauty masks; Beauty milks; Beauty
serums; Blush; Blush pencils;
Blusher; Body and beauty care cosmetics;
Body cream; Body cream soap; Body
creams; Body deodorants; Body emulsions;
Body lotion; Body lotions; Body
mask cream; Body mask lotion; Body mask powder;
Body masks; Body milk; Body
milks; Body oil; Body oils;
Body scrub; Cologne; Cologne
water; Colognes, perfumes and cosmetics; Coloring
preparations for cosmetic purposes; Combination cleaner and deodorizer for
litter boxes; Compacts containing make-up; Concealers;
Conditioners; Cosmetic balls; Cosmetic
creams; Cosmetic creams for skin care; Cosmetic milks;
Cosmetic oils; Cosmetic oils for the epidermis; Cosmetic olive oil for the face and body; Cosmetic pads; Cosmetic pencils; Cosmetic preparations; Cosmetic
preparations against sunburn; Cosmetic preparations for body care;
Cosmetic preparations for eye lashes; Cosmetic preparations
for skin renewal; Cosmetic preparations for slimming purposes;
Cosmetic rouges; Cosmetic soaps; Cosmetic
sun-protecting preparations; Cosmetic sun-tanning preparations;
Cosmetic suntan lotions; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and make-up;
Cosmetics for animals; Cosmetics in general, including
perfumes; Cosmetics, namely, lip primer; Cosmetics, namely,
compacts; Cosmetics, namely, lip repairers; Cotton balls for
cosmetic purposes; Cotton buds for cosmetic purposes; Cotton
for cosmetic purposes; Cream soaps; Creams for cellulite
reduction; Creamy foundation; Creamy rouges; Deodorants and antiperspirants; Deodorants and antiperspirants for
personal use; Eau de cologne; Eau de colognes;
Eau de parfum; Eau de perfume; Eau
de toilette; Eau-de-toilette; Eaux de cologne;
Eaux de toilette; Ethereal oils; Exfoliant
creams; Exfoliants for skin, face; Eye cream; Eye gels; Eye liner; Eye lotions; Eye make-up; Eye make-up remover; Eye pencils;
Eye shadow; Eye shadows; Eye-shadow;
Eyebrow colors; Eyebrow cosmetics;
Eyebrow pencils; Eyeliner;
Eyeliner pencils; Eyeliners;
Eyes make-up; Eyes pencils;
Eyeshadow; Eyeshadows;
Face and body beauty creams; Face and body creams;
Face and body glitter; Face and body lotions;
Face and body milk; Face creams;
Face creams for cosmetic use; Face glitter;
Face milk and lotions; Face painting kits;
Face powder; Face powder paste;
Face-powder on paper; Facial beauty masks;
Facial cleansers; Facial cleansing milk;
Facial concealer; Facial cream;
Facial creams; Facial emulsions;
Facial lotion; Facial make-up;
Facial masks; Facial scrubs;
Facial washes; Foam bath;
Foundation; Foundation make-up;
Foundations; Gel eye masks |
| FINAL DESCRIPTION |
| Hair tonic; Hair tonics;
Hand cream; Hand creams; Hand lotions; Hand scrubs; Hand soaps; Lavender oil; Lip balm; Lip balm;
Lip cream; Lip gloss; Lip gloss palatte; Lip liner; Lip polisher; Lipstick; Lipstick cases; Lipstick
holders; Lipsticks; Liquid bath soaps; Liquid perfumes; Liquid soap; Liquid soaps; Liquid soaps for
hands and face; Liquid soaps for hands, face and body; Lotions for cellulite reduction; Lotions for
cosmetic purposes; Lotions for face and body care; Lotions for strengthening the nails; Make up
foundations; Make up removing preparations; Make-up; Make-up for the face and body; Make-up foundations;
Make-up kits comprised of lipstick, lip gloss, lip pencil; Make-up pencils; Make-up powder; Make-up
preparations; Make-up remover; Make-up removing lotions; Make-up removing milk, gel, lotions and creams;
Make-up removing milks; Make-up removing preparations; Mascara; Mascaras; Massage creams; Massage oil;
Massage oils; Medicated soap; Medicated soaps; Mineral salt in the nature of bath salts not for medical
purposes; Moisturizing creams; Moisturizing milks; Nail buffing preparations; Nail care preparations;
Nail care preparations, namely, nail softeners; Nail cream; Nail enamel; Nail enamels; Nail glitter;
Nail grooming products, namely, tips, glue, lacquer and glitter; Nail hardeners; Nail polish; Nail
polish base coat; Nail polish remover; Nail polish removers; Nail polish top coat; Nail stencils;
Nail strengtheners; Nail tips; Nail varnish; Nail varnish for cosmetic purposes; Nail varnishes;
Nail-polish removers; Natural essential oils; Natural mineral make-up; Night cream; Non-medicated
acne treatment preparations; Non-medicated bath preparations; Non-medicated bath salts; Non-medicated
body soaks; Non-medicated douches; Non-medicated lip care preparations; Non-medicated lip protector;
Non-medicated ointments for the prevention and treatment of sunburn; Non-medicated preparations all
for the care of skin, hair and scalp; Non-medicated scalp treatment cream; Non-medicated skin care
preparations; Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners
and peels; Non-medicated skin creams; Non-medicated stimulating lotions for the skin; Non-medicated
sun care preparations; Non-medicated toiletries; Nutritional oils for cosmetic purposes; Oil baths
for hair care; Oils for cleaning purposes; Oils for cosmetic purposes; Oils for hair conditioning;
Patches containing sun screen and sun block for use on the skin; Pencils for cosmetic purposes;
Perfume; Perfumed creams; Perfumed extracts for tissues and perfumes; Perfumed paste; Perfumed
powder; Perfumed powders; Perfumed soap; Perfumed soaps; Personal deodorants; Pot pourri; Potpourri;
Pre-moistened cosmetic tissues; Pre-moistened cosmetic towelettes; Pre-moistened cosmetic wipes;
Pre-shave creams; Rouge; Rouges; SPF sunblock towelettes; Sachet-like eye pillows containing fragrances;
Sachets; Self-tanning preparations; Shampoo-conditioners; Shampoos; Shampoos for babies; Shaving balm;
Shaving cream; Shaving creams; Shaving foam; Shaving gel; Shaving gels; Shaving lotion; Shaving lotions;
Shaving mousse; Shaving preparations; Shaving soap; Shaving soaps; Shower and bath foam; Shower and bath gel;
Shower creams; Shower gel; Shower gels; Skin abrasive preparations; Skin and body topical lotions, creams
and oils for cosmetic use; Skin bronzer; Skin bronzing creams; Skin care preparation, namely, body polish;
Skin care preparations, namely, chemical peels for skin; Skin care preparations, namely, fruit acid peels
for skin; Skin care preparations, namely, body balm; Skin care products, namely, non-medicated skin serum;
Skin clarifiers; Skin cleansers; Skin cleansing cream; Skin cleansing lotion; Skin conditioners; Skin cream;
Skin creams; Skin creams in liquid and in solid form; Skin creams in liquid and solid; Skin creams in liquid
and solid form; Skin gels for accelerating, enhancing or extending tans; Skin lotion; Skin lotions; Skin masks;
Skin moisturizer; Skin moisturizer masks; Skin soap; Skin texturizers; Skin toners; Skin whitening creams; Skin
whitening preparations; Soaps; Soaps for body care; Soaps for personal use; Styling gels; Styling lotions;
Styling mousse; Sun block; Sun block preparations; Sun care lotions; Sun creams; Sun screen; Sun screen preparations;
Sun tan gel; Sun tan lotion; Sun tan oil; Sun-block lotions; Sun-tanning oils; Sun-tanning oils and lotions;
Sun-tanning preparations; Sunscreen cream; Sunscreen creams; Suntan creams; Suntanning preparations; Tanning
and after-sun milks, gels and oils cosmetics; Tanning creams; Tanning gels; Tanning milks; Tanning oils; Under-eye
enhancers; Washing-up liquids; Waterless soap; Wrinkle removing skin care preparations; Wrinkle resistant cream;
After sun creams; After-shave; After-shave balms; After-shave creams; After-shave emulsions; After-shave gel;
After-shave lotions; After-sun gels; After-sun lotions; After-sun milks; After-sun oils; Age retardant gel;
Age retardant lotion; Age spot reducing creams; Anti-aging cream; Anti-aging creams; Anti-perspirants;
Anti-wrinkle cream; Anti-wrinkle creams; Antibacterial skin soaps; Antibacterial soap; Aromatherapy body
care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip
balm, soap, body polish, body and foot scrub and non-medicated foot cream; Aromatherapy creams; Aromatherapy
inhaler sold filled with aromatherapy essential oils; Aromatherapy lotions; Aromatherapy oils; Aromatherapy
pillows comprising potpourri in fabric containers; Aromatherapy pillows that may be used to freshen clothing
or lay over the eyes; Aromatherapy sprays; Baby hair conditioner; Baby lotion; Baby oil; Baby oils; Baby
powder; Baby powders; Baby shampoo; Baby wipes; Bar soap; Bath and shower gels and salts not for medical
purposes; Bath beads; Bath crystals; Bath flakes; Bath foam; Bath foams; Bath gel; Bath gels; Bath herbs;
Bath lotion; Bath milks; Bath oil; Bath oils; Bath oils for cosmetic purposes; Bath pearls; Bath powder;
Bath salts; Bath salts; Bath soaps; Bath soaps in liquid, solid or gel form; Bathing lotions; Bay rums;
Beauty creams; Beauty creams for body care; Beauty gels; Beauty lotions; Beauty masks; Beauty milks;
Beauty serums; Blush; Blush pencils; Blusher; Body and beauty care cosmetics; Body cream; Body cream
soap; Body creams; Body deodorants; Body emulsions; Body lotion; Body lotions; Body mask cream; Body
mask lotion; Body mask powder; Body masks; Body milk; Body milks; Body oil; Body oils; Body scrub;
Cologne; Cologne water; Colognes, perfumes and cosmetics; Coloring preparations for cosmetic purposes;
Combination cleaner and deodorizer for litter boxes; Compacts containing make-up; Concealers; Conditioners;
Cosmetic balls; Cosmetic creams; Cosmetic creams for skin care; Cosmetic milks; Cosmetic oils; Cosmetic oils
for the epidermis; Cosmetic olive oil for the face and body; Cosmetic pads; Cosmetic pencils; Cosmetic
preparations; Cosmetic preparations against sunburn; Cosmetic preparations for body care; Cosmetic
preparations for eye lashes; Cosmetic preparations for skin renewal; Cosmetic preparations for slimming
purposes; Cosmetic rouges; Cosmetic soaps; Cosmetic sun-protecting preparations; Cosmetic sun-tanning
preparations; Cosmetic suntan lotions; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and
make-up; Cosmetics for animals; Cosmetics in general, including perfumes; Cosmetics, namely, lip primer;
Cosmetics, namely, compacts; Cosmetics, namely, lip repairers; Cotton balls for cosmetic purposes; Cotton
buds for cosmetic purposes; Cotton for cosmetic purposes; Cream soaps; Creams for cellulite reduction;
Creamy foundation; Creamy rouges; Deodorants and antiperspirants; Deodorants and antiperspirants for
personal use; Eau de cologne; Eau de colognes; Eau de parfum; Eau de perfume; Eau de toilette; Eau-de-toilette;
Eaux de cologne; Eaux de toilette; Ethereal oils; Exfoliant creams; Exfoliants for skin, face; Eye cream;
Eye gels; Eye liner; Eye lotions; Eye make-up; Eye make-up remover; Eye pencils; Eye shadow; Eye shadows;
Eye-shadow; Eyebrow colors; Eyebrow cosmetics; Eyebrow pencils; Eyeliner; Eyeliner pencils; Eyeliners;
Eyes make-up; Eyes pencils; Eyeshadow; Eyeshadows; Face and body beauty creams; Face and body creams;
Face and body glitter; Face and body lotions; Face and body milk; Face creams; Face creams for cosmetic
use; Face glitter; Face milk and lotions; Face painting kits; Face powder; Face powder paste; Face-powder
on paper; Facial beauty masks; Facial cleansers; Facial cleansing milk; Facial concealer; Facial cream;
Facial creams; Facial emulsions; Facial lotion; Facial make-up; Facial masks; Facial scrubs; Facial washes;
Foam bath; Foundation; Foundation make-up; Foundations; Gel eye masks |
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FILING BASIS | Section 1(a) |
|
FIRST USE ANYWHERE DATE |
At least as early as
07/19/2005 |
|
FIRST USE IN COMMERCE DATE
|
At least as early as
07/19/2005 |
|
FILING BASIS | Section 1(b) |
|
FILING BASIS | Section 44(e) |
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Sample 4: The wording "white pages directories" has been added as a
totally separate entry, so it appears in red and underlined.
| GOODS AND/OR
SERVICES SECTION (016)(current) |
|
INTERNATIONAL CLASS | 016 |
| DESCRIPTION |
| Printed material,
namely, yellow pages directories; telephone directories |
|
FILING BASIS | Section 1(b) |
|
FILING BASIS | Section 44(e) |
STANDARD
CHARACTERS
OR EQUIVALENT
|
NO
|
|
GOODS AND/OR SERVICES SECTION (016)(proposed) |
| INTERNATIONAL CLASS
| 016 |
| TRACKED TEXT DESCRIPTION |
| Printed
material, namely, yellow pages directories; telephone directories; white pages directories |
| FINAL DESCRIPTION |
| Printed material, namely,
yellow pages directories; telephone directories; white pages directories |
| FILING BASIS |
Section 1(b) |
|
FILING BASIS |
Section 44(e) |
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Sample 5: For the first class, the wording ", financial statement preparation" was deleted, but because
that wording was in the middle of a clause containing commas, the wording on either side is also struck through
and then re-presented as new wording, i.e., underlined/red. NOTE: In the future, we hope to modify the approach
so that only the wording deleted will be struck through, without the need to re-present the other
wording as underlined/red. For the second class, the wording "and housing" was added. Unlike
Sample 4 where a new "stand alone entry" was added, here because the wording "and housing" was added
to an existing listing, that listing is struck through (but only up to the point where it hits the
comma "delimiter") and then re-presented. NOTE: In the future, we hope to modify the approach so
that only the wording being being added will be presented in red and underlined, rather than
having the retained wording struck through and then re-presented.
| GOODS AND/OR SERVICES SECTION (035)(current) |
|
INTERNATIONAL CLASS | 035 |
|
DESCRIPTION |
| Financial services
provided to travel agents, namely, financial records management, financial statement preparation and
financial analysis for businesses |
|
FILING BASIS |
Section 1(b) |
|
GOODS AND/OR SERVICES SECTION (035)(proposed) |
|
INTERNATIONAL CLASS | 035 |
|
TRACKED TEXT DESCRIPTION |
Financial services provided to travel agents,
namely, [
financial records management],
financial records management and financial analysis for businesses,
[financial statement preparation
and financial analysis for businesses] |
|
FINAL DESCRIPTION |
| Financial services
provided to travel agents, namely, financial records management and financial analysis
for businesses |
|
FILING BASIS | Section 1(b) |
|
GOODS AND/OR SERVICES SECTION (043)(current) |
|
INTERNATIONAL CLASS | 043 |
|
DESCRIPTION |
|
Online, integrated global distribution of reservations and bookings of temporary lodging |
|
FILING BASIS | Section 1(b) |
|
GOODS AND/OR SERVICES SECTION (043)(proposed) |
|
INTERNATIONAL CLASS | 043 |
|
TRACKED TEXT DESCRIPTION |
Online, [integrated global distribution of
reservations and bookings of temporary lodging], integrated
global distribution of reservations and bookings of temporary lodging and housing |
|
FINAL DESCRIPTION |
| Online, integrated global distribution of
reservations and bookings of temporary lodging and housing |
|
FILING BASIS | Section 1(b) |
|
|
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(New 08/20/2008)
State of bar membership:
Recent updates to the informational note beneath the Signatory's Position field within the signature section of the TEAS forms provides that if a form is
being signed by an attorney, the person should enter Attorney of record, [specify at least one state] bar member. This suggested format was offered as a means to clarify the authority of the signer. Due to recurring problems with unauthorized representation by individuals who may not represent others before the Office, the USPTO is requesting this information of attorneys meeting the definition set forth in 37 C.F.R. '10.1(c). Canadian practitioners meeting the requirements of 37 C.F. R. '10.14(c) are requested to indicate their position as OED Recognized Canadian Agent.
For more information related to foreign attorneys and non-attorneys, see Examination Guide No. 3-06, "Representing an Applicant/Registrant Before the USPTO."
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(New 08/20/2008)
Checkbox for no declaration: In the most recent TEAS release, a feature of the Response to Office action form was inadvertently removed, namely, the checkbox to indicate that no declaration was being submitted because one was not believed to be required by the Trademark rules of practice. This checkbox will be restored in a release currently scheduled for August 29.
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(New 08/20/2008)
DBA/AKA/TA/Formerly: In the most recent TEAS release, radio buttons were added for the choices of DBA, AKA, TA, and Formerly. Inadvertently, DBA was "locked in" as a default setting. However, unless an actual textual entry is made, the choice of DBA will not be carried over to the USPTO databases (and, for any filings made prior to an implemented temporary fix, the DBA wording was being stripped out programmatically before upload to the databases). In a release currently scheduled for August 29, the radio buttons will be replaced with checkboxes, and DBA will not be pre-selected.
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(Updated 05/13/2008) Change of Correspondence Address form update:
Because of problems that arose after its original deployment, the TEAS Change of Correspondence Address (CCA) form was modified so that the correspondent name is now a read-only field. This modification was necessary because too many filers continued to misuse the CCA form by changing the correspondent to a new attorney, rather than submitting a proper revocation/appointment. The current version of the CCA form makes clear that you are only changing an address, but not the listed attorney.
The USPTO considers an applicant to be "pro se" if 1) the applicant never had an attorney; or 2) an extension of protection to the United States under the Madrid Protocol exists, wherein the USPTO views all applicants as being "unrepresented" until a U.S. attorney is appointed or a U.S. attorney appears.
Furthermore, at registration, the USPTO considers that any appointment ceases effect, and the registrant is considered to be "pro se" until there is either an actual appointment made, or there is a post registration submission made (i.e., the filing of an affidavit under Section 8 or a combined affidavit of use and application for renewal under Sections 8 and 9.)
In light of the above, after the deployment of the modified CCA form, the USPTO received comments that the filing of a revocation/appointment form is burdensome and unnecessary, particularly for (1) registered files wherein the Office has always maintained that any "appointment" ceases to have effect at the time of registration (the argument being that, as such, an authorized filer should be able to change the name of the attorney through the CCA form); and (2) extensions of protection under the Madrid Protocol, where no U.S. attorney was ever appointed.
Again, while noting these comments, the USPTO has determined that because of the overall misuse of the form, on balance, it is more critical to ensure that, where truly necessary, a proper appointment is being made, which the new version of the CCA form dictates.
With respect to foreign applicants under the Madrid Protocol and other pro se applicants, attorneys may submit new correspondence information, including the new correspondent's name, within any Response to Office Action (ROA) form (the current TEAS ROA form permits this). For attorneys merely to add new correspondence information without submitting an official response, attorneys may: 1) submit a CCA form, signed by the authorized attorney, and then e-mail TEAS@uspto.gov to request a manual update of the USPTO's database to reflect the new attorney's name; or (2) use the Revocation/Appointment form as a workaround.
The USPTO highlights here that the Revocation/Appointment form allows update of the attorney's name and correspondence address, and if signed after registration by a newly appearing attorney, the USPTO will accept it, even if signed by the attorney (rather than the registrant), because the prior power expired.
Language on the Revocation/Appointment form previously warned that the new attorney should not sign the form. To eliminate any suggestion that use of the existing Revocation/Appointment form when an applicant or registrant is unrepresented is improper, the USPTO modified the NOTE on form, so that is now reads as follows:
"Unless the applicant/registrant is in a pro se status at the time of the attorney's appearance, the attorney CANNOT sign a new power of attorney or revocation of a previous power of attorney on behalf of the applicant or registrant". [Wherein the underlined wording links to help that explains that as of the date of registration, any existing appointment ceases effect. The registrant is considered to be pro se (unrepresented) until either an actual appointment is made or a post registration filing is made. In regards to the latter, the USPTO considers the filing of any post registration form, where filed by an attorney, to be an indication that the filer has been authorized by the registrant. The filing of any TEAS Post Registration maintenance form automatically updates the "Attorney of Record" and the "Correspondence Address" data fields in the USPTO's TARR database.]
As to the CCA form, because of concerns raised by practitioners, the USPTO plans to modify the form, as follows: currently, the CCA form pre-populates (and displays in a "read only," non-editable format) the name that appears as the first line of the correspondence address in the USPTO's database (which may, in fact, be a name other than that of a U.S. attorney; e.g., a name of a non-U.S. firm). The USPTO's intent was only to prevent changing of a U.S. appointed attorney through the CCA form. Where there is no attorney (pro se specifically because either no attorney had been appointed, or it is an extension of protection, but not because the mark is registered (see below)), the USPTO will modify the CCA form so no name pre-populates into the first "Name" field. The form will specifically look at whether there is an attorney of record. If the answer is "yes", the form will function as in the current design. On the other hand, if the answer is "no," the modified version of the form will present a field that will permit actual entry of new name information, i.e., replicating the old design of the CCA form.
As to registered marks, while the USPTO has always said that at the point of registration any existing appointment ceases, which would suggest the same pro se status outlined above, there remains the possibility that someone else has filed a post registration form, meaning that party is now "appointed".
This introduces too many variables relative to programming issues, and at this time, the USPTO wishes to first focus on resolving problems related to the extensions of protection/pro se scenarios. At a later point, the USPTO will investigate ways possibly to modify the form also to permit the entrance of name information for certain registered files, i.e., those registered but wherein no post-registration filing by another party has been made.
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(New 09/18/2007) Response to Office Action and Request for Reconsideration forms: The USPTO recently introduced a new electronic form for filing a Request for Reconsideration (RFR). Unfortunately, the form was programmed "too narrowly"--- it is looking for a "final action mailed (or e-mailed)" anywhere in the prosecution history, and if it finds such an entry, then is directing the user to the RFR form. Of course, after the issuance of a final action, there may be a new "non-final action" issued, for which a "regular" response to Office action filing would be appropriate. Currently,
an attempt to uses the TEAS Response to Office Action (ROA) form is producing an error message, indicating that the RFR must be used. And in some instances, the attempt to then use the RFR is producing an error message indicating that the form can not be used, because more than six (6) months has passed from the issuance date of the final action (which may occur when, for example, a subsequent non-final action has issued). The USPTO is aware of these problems, and plans to remove the existing edits in
a release scheduled for October 12. We apologize for the inconveniences. In the interim, a reminder that as a "workaround," the Preliminary Amendment (PA) form may be used. While obviously this is not a true
Preliminary Amendment, that form does not have any edits, so it can be used to submit any data to the USPTO. Please note, however, that the PA form does not, unlike the ROA and RFR forms, contain is a specific section for entering arguments. If that is what is needed, a "shoehorn" approach within the Miscellaneous Statement section of the Additional Statements section of the form is recommended.
Also, please note that the Preliminary Amendment form "workaround" approach will NOT work where the original filing basis was Section 66(a). No preliminary amendment is permitted for an application under the Madrid Protocol (either on paper or through TEAS). Therefore, if a problem is encountered with the ROA or RFR form, and the application is in the 79 series (i.e., with a Section 66(a) basis), then the only option for submitting the response or the request for reconsideration will be on paper.
Please also not that actual edits now prevent use of the ROA form for filing after a mark is published and/or registered. This is simply a "technical" enforcement of the directive that has always appeared at the beginning of the form: "Also, do not use this form to respond to
any actions mailed after the mark is published and/or registered, as the Intent-to-Use (ITU) or Post-Registration units issue them. Forms for that purpose will be available in the future. Until then, you must submit responses to those types of actions via regular mail." Responses to actions issued by the Post Registration division must be filed via "regular" mail until such time as a specific TEAS form is
developed for that purpose. The procedures for submitting amendments/corrections to trademark applications AFTER publication is explained in the "Important Notices" section of the front page of the TEAS site, as shown below. The USPTO plans to introduce a TEAS form for this purpose in January/February 2008:
Procedures for Submitting Amendments/Corrections to Trademark Applications AFTER Publication:The USPTO has established a new trademark procedure for filing amendments and requests for corrections after publication, to improve tracking and disposition. "Publication" refers either to (1) when an examining attorney has "approved" an application for publication; or (2) the actual publication of the mark in the Official Gazette.
You should always review your application data, by entering the application serial number in TARR, and later by checking the on-line Official Gazette If you must correct any information, you should determine the application status, as displayed in TARR. If now "after publication," you should fax an amendment/correction to "Post-Publication Amendments/ Corrections," at 571-270-9007, no later than 6 weeks after publication (to ensure that the amendment/correction becomes part of the record for the relevant application, and can be considered prior to the issuance of the notice of allowance or registration certificate). Do not submit any requests to the TM Photocomp mailbox, as it is no longer available for submission of amendments or requests for corrections after publication. Again, the procedure has been changed specifically to ensure that the requested amendment is matched with the proper application, uploaded into the database, and reviewed in a timely manner.
NOTE: You can e-mail requests to correct minor typographical errors, inquiries regarding the procedure for submitting a post-publication amendment, and/or questions regarding the status of a post-publication amendment to TMPostPubQuery@USPTO.GOV.
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(Updated 10/09/2007) Attorney of Record field: The USPTO resolved the problem of attorney information being deleted from the USPTO databases once an application registers as of August 27th. While the Office has always interpreted representation of the attorney as terminating upon registration, it was not the intent of the Office to remove the Attorney of Record field and associated data. Instead, the Office had only wanted to introduce a change wherein, at the point of registration, the "e-mail authorization" flag would be flipped to "no"---all data itself, including the e-mail address, was to remain in the record. Due to a misunderstanding with USPTO programmers, a broader change was unfortunately introduced, but has now been corrected. Also, as of Thursday, October 4th, the previously-deleted Attorney of Record data was restored to 27,293 records.
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(New 07/10/2008) Expanded PDF size: On or about August 29, 2008, the USPTO plans to enhance TEAS to (1) increase the size limitation of PDF attachments from 3 to 5 megabytes; and (2) accept other "non-Adobe flavors" of PDFs. Please note, however, that the number of pages within any PDF file may not exceed 100 pages, separate and apart from the 5 megabyte limit.
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(Updated 03/20/2008) Jumbled Classes ITU forms: The USPTO is aware that for multi-class applications, the displays of the classes within the TEAS Allegation of Use and Extension forms are no longer in the correct ascending class order (previously, the order had been displaying correctly, but a "bug" was unfortunately introduced into the forms at some recent point). This problem will be resolved within a release currently scheduled for May 23, 2008. The USPTO regrets the inconvenience caused by this temporary display problem.
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(Updated 08/01/2008) Post-Publication Amendments: A specific TEAS form for the filing of an amendment/correction to a trademark application AFTER publication has been developed, with deployment currently scheduled for on or about August 9, 2008. Until this form is in production, please continue to follow the filing procedure outlined below within the "Important Notices" section, at "Post-Publication Amendments." NOTE: "Publication" refers either to (1) when an examining attorney has "approved" an application for publication; or (2) the actual publication of the mark in the Official Gazette.
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(New 08/01/2008) Language updates ITU and Post-Registration forms: On or about August 9, 2008, the current ITU and Post-Registration forms will be updated to modify language associated with the 3 "radio buttons" in the Goods/Services section of the forms, based on feedback from outside practitioners. An applicant may, for example, enter into an agreement to not register a mark for certain goods, but that agreement allows for use. As such, the applicant should not have to "swear" (as in the current Extension form) that no bona fide intention to use the mark exists. The new form language will state, for example, simply that the filing does not cover this specific class, rather than indicating that "The applicant does not have a continued bona fide intention to use the mark in commerce.".
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(New 08/01/2008) ROA Character Conversions: On or about August 9, 2008, within the Response to Office action (ROA) form, some characters after submission of the form may be displayed in a manner not exactly identical to what was originally entered, because various USPTO systems cannot display/print certain characters. The USPTO will convert any problematic character(s) to the closest acceptable equivalent(s). For a complete table highlighting which characters will be converted, click here.
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(New 08/01/2008) Paper filing required:While the Trademark Electronic Application System (TEAS) does offer a significant number of filing options, not all possible Trademark submissions may currently be done electronically. To highlight for practitioners where a TEAS form does not exist, the USPTO recently added a link on the main page of TEAS (within the right column, where all of the various TEAS form are accessed), as follows:
Click below to access the correct form:
NOTE: To learn which forms currently require paper filing,
click here. New
[The referenced link will go to information that will spell out, within different categories, where no TEAS form exists, nor is an electronic filing alternative/workaround available. The forms listed therein must be made on paper at this time ].
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(Updated 02/28/2008) Fixes for Suspension Response form: Subsequent to its initial deployment, the USPTO enhanced the "Response to Suspension Inquiry or Letter of Suspension" form. Specifically, the following changes were made:
1) the addition of mechanisms within all sections of the form to enter/attach comments/remarks, so that a proper response can be supplied for any and all requirements (for example, the entrance of a disclaimer or modified listing of goods/services).
2) the foreign application section was modified to clarify that a proper response may be made within that specific section not only when the foreign application has not yet matured into a registration, but also where the registration has, in fact, issued, but the country of origin has not yet made the actual registration certificate available for submission to the USPTO;
3) the foreign registration section was modified to add a specific checkbox whereby the applicant can request that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration being submitted covers, if the Section 44(e) basis is accepted for those goods and/or services. Please note, however, in the event that multiple registration certificates must be submitted within the 44(e) section of the form, the data concerning the other registration(s) must be entered as free-form text within a separately attached file (in addition to the attached file for the issued foreign registration certificate itself), because the actual data fields within the form (for foreign registration date, number, etc.) can only accommodate one set of data elements corresponding to one registration. Unfortunately, even with enhancements to this form, this feature was not changed due to existing structures in the USPTO database, and the workaround provision outlined above will still be required for this scenario; and
4) the language concerning maintenance documents was modified, to indicate that the cited registration(s) has been or will be canceled under §8 or has expired or will expire under §9 (i.e., to highlight that the cancellation or expiration may, in fact, have already occurred.)
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(Updated 12/11/2007) Two New TEAS forms: In November 10, 2007, the USPTO plans to deploy two new TEAS forms: (1) Response to Suspension Inquiry or Letter of Suspension; and (2) Section 7 Request for Amendment or Correction of Registration Certificate.
The first will be listed under a new heading, namely, "File a Response Form," wherein three (3) different response options will be provided: the existing response to Office Action form and the Request for Reconsideration after Final Action form, and the new Response to Suspension Inquiry or Letter of Suspension form. The new Section 7 Request for Amendment or Correction of Registration Certificate form will be accessed from its own link on the front page of the TEAS site, after the existing heading of "File a POST-registration form or Renew an Existing Registered Mark."
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(Updated 01/10/2009) Filing requests to divide: On January 10, 2009, the USPTO introduced request to divide functionality as part of the existing TEAS Allegation of Use (Amendment to Allege Use/Statement of Use) form (i.e., the specific ability to indicate which goods/services were being divided out, and making the appropriate fee payment for the divisional request). The USPTO still also plans to develop a stand-alone request to divide form at a later point.
Now, if the applicant wants to file a TEAS Amendment to Allege Use (AAU) prior to publication, the AAU must include all of the goods/services in the application that are based on Section 1(b), intent to use, unless a request to divide is filed with the AAU. If the applicant is only using the mark on some of the goods/services in the application and wishes to "divide out" other goods/services, the applicant must answer YES to the new form wizard question concerning a request to divide. Then, in the goods/services section of the AAU form, the goods/services not in use or those being divided out must be listed (using button 3 in that portion of the form), followed by a listing of the goods/services currently in use. The goods/services in use will be placed in the child application and the goods/services that continue to be based on intent to use will remain in the parent application.
If the applicant wants to file a post-Notice of Allowance request to divide, it must be submitted with a statement of use (SOU) and a request for an extension of time to file an SOU, if an extension if currently due. The applicant should check the box within the TEAS form to indicate that the applicant is submitting a request to divide with the SOU. Then, in the goods/services section of the SOU, the goods/services not in use must be listed (using button 3 in that portion of the form), following by a listing of the goods/services currently in use. The goods/services in use will be placed in the child application and the goods/services that continue to be based on intent to use will remain in the parent application. If an extension request is due, the applicant must also submit an extension request. The applicant should check the box indicating that a request to divide is being filed. The extension request may cover all goods/services listed in the notice of allowance, or only those goods/services that will remain based on intent to use. Please remember that the goods/services listed in the SOU will be placed in the child application and forwarded to the examining attorney for consideration.
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(Updated 08/08/2007) PDF files accepted: The USPTO now accepts both JPG and PDF files for specimens, evidence, foreign registration certificates, miscellaneous statements, consents, and handwritten pen-and-ink signatures within the following forms, as applicable: 1. all initial application forms (Principal Register, "regular" and TEAS Plus versions; Supplemental Register; Certification mark; Collective Membership mark; and Collective Trademark/Servicemark); 2. all Post Registration forms; and 3. Response to Office Action form. A reminder, however, that a mark image is only acceptable in the JPG format. The USPTO plans to continue to expand the functionality of all other forms to include the PDF option in the future.
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(Updated 04/19/2007) Post Registration forms: On March 3, 2007, the USPTO enhanced the functionality of all Post Registration forms, to display the heading of "U.S. Class" for registrations issued on the basis of applications filed on or before August 31, 1973 (currently, the forms improperly use the heading of "International Class," whereas what is actually being displayed is the U.S. Class number). Also, as of March 22, 2007 the filing of these forms will automatically change both the "Attorney of Record" and "Correspondence Address" data fields in the USPTO's TARR database. I.e., it is no longer be necessary to file a separate "Appointment of Attorney" form or "Change of Correspondence Address" form to update those specific fields.
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(Updated 03/19/2007) Confirming signatory authority: On March 3, 2007, the USPTO modified the TEAS response to Office action form and the petition to revive for failure to submit a timely response to Office action form to require filers to check one of three options, indicating the nature of the signatory's authority to sign and submit the response. When an unauthorized person signs and submits a response to an Office action, the USPTO does not accept or consider the substance of the response.
The USPTO intended these new options to help filers recognize where a proposed signatory lacks authority, so as to prevent situations where the USPTO cannot accept and consider the substance of the response. Examples of unauthorized persons include the following:
- non-attorneys who lack authority under Rule 10.14 to practice before the USPTO in trademark cases, except as an applicant representing himself/herself;
- foreign attorneys who are not members of the bar of any U.S. state and who do not qualify under the limited exception for reciprocally recognized Canadian attorneys/agents under Rule 10.14(c); and
- attorneys who attempt to replace another attorney of record without the appropriate filings for the substitution of counsel.
By requiring the confirmations directly within the new signature options, the USPTO seeks to ensure the legitimacy and propriety of the responses submitted. See Examination Guide NO. 3-06 Representing an Applicant/Registrant Before the USPTO (November 13, 2006).
The USPTO acknowledges that the changes introduced on March 3rd generated some confusion and concern. As an initial matter, the USPTO notes that the language for the new signature options had been posted in full under "Upcoming Enhancements" since January 3, 2007. The USPTO received no comments prior to the March 3rd deployment, and therefore was surprised by the outcry over the new options upon their implementation. Based on feedback received, the USPTO plans to modify the language for the three (3) buttons in the response signature section within an up-coming deployment, currently planned for March 24th, 2007 (see further information, below).
However, the USPTO maintains that, when the options as currently posted are considered in their entirety, including the bold heading that is part of each option, they comprehensively address the appropriate signatory situations. In particular, many commenters have expressed concern that no option seemed to apply to an authorized U.S. attorney who has represented the applicant since the filing of the application. The proper option is #2, which reads: "Attorney - No Other Attorney Has Previously Appeared: I hereby confirm that I am either (1) an attorney who is a member in good standing of the bar of the highest court of a U.S. state; or (2) a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO's Office of Enrollment and Discipline. I further confirm that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) I am the applicant’s attorney or an associate of that attorney."
In focusing solely on the confirmation that "the applicant has not previously been represented in this matter by an authorized attorney," the commenters seemed to overlook both that the statement for the second option is made under the heading "No Other Attorney Has Previously Appeared" (emphasis added), and that the only two choices that apply to attorneys are "New Attorney -- Change of Attorney Has Occurred" and "Attorney -- No Other Attorney Has Previously Appeared." In context, the selection of the second option, where no other attorney has previously appeared, is appropriate and truthful for an authorized U.S. attorney who has represented the applicant throughout.
In any event, in an effort to address the confusion and concern with the new options, the USPTO posted both on the "Important Notices" section of TEAS and on the "News and Notices" section of the USPTO website a Notice on March 8, 2007, namely, "Clarification of ROA Signature Options,"
which includes among its guidance the instruction that "If you are an authorized attorney, and either you or an associated attorney or firm have appeared in this matter (e.g., by filing the original application), and the applicant was not previously represented by any other authorized attorney or agent, you should select Option 2. Option 2 is also proper where another attorney who is a member of the firm is filing the response on behalf of the attorney of record." The USPTO also plans to publish clarifying information in a Notice in the Official Gazette, as some attorneys have expressed a desire that the clarification be memorialized more formally.
As part of a deployment currently planned for March 24, 2007, the USPTO will modify the language within the form as shown below. In the future, the USPTO plans to expand this approach to all other forms requiring a similar authorized signature.
O Unrepresented Applicant,: I hereby confirm that
- No authorized attorney or Canadian attorney/agent represents me in this matter, and that I am either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and
- If an authorized U.S. attorney or Canadian attorney/agent previously represented me in this matter, either I have filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of my prior representative to withdraw.
ADVISORY: You may click this first button only if you are the applicant or legally authorized to bind the applicant, e.g., an officer of the applicant corporation or association, or a general partner of the applicant partnership. See TMEP §§712.01.
O Authorized U.S. Attorney: I hereby confirm that
- I am an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and
- I am currently the applicant’s attorney or an associate thereof; and
- To the best of my knowledge, if prior to my appointment another U.S. attorney or a Canadian attorney/agent not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing me as an associate attorney in this matter.
O Authorized Canadian Attorney/Agent: I hereby confirm that
- I am a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO’s Office of Enrollment and Discipline to represent Canadian applicants before the USPTO; and
- I am currently the applicant’s Canadian attorney/agent, or an associate thereof; and
- To the best of my knowledge, if prior to my appointment another Canadian attorney/agent or a U.S. attorney not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing me as an associate attorney in this matter.
ADVISORY: Foreign attorneys (other than authorized Canadian attorneys/agents) cannot sign this response and are prohibited from representing an applicant before the USPTO in trademark matters.
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(Updated 03/05/2007) Order of Goods/Services: On March 3, 2007, the USPTO changed the functionality of the Goods/Services portion of the Trademark/Servicemark application, Principal Register (both for the "regular" and TEAS Plus versions). Previously, when identifications were taken directly from the IDManual, the final "list" of goods and/or services was automatically re-ordered to display all entries alphabetically within each class. Now, alphabetization has been discontinued, so that the presented list appears exactly in the same order as the original entries made when first searching the IDManual to "build" the overall goods/services list, per class.
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(Updated 03/05/2007) Withdrawal of Attorney form: On March 3 2007, the USPTO enhanced the functionality of the Withdrawal of Attorney form, to permit use with either a pending application or for a registered mark; however, the form still only accepts entrance of a serial number; i.e., for a registered mark, you must still enter the original corresponding serial number; if unknown, you must determine by entering the registration number in Trademark Applications and Registrations Retrieval. Also, the grant of the withdrawal request will be stated only in the e-mail confirmation of receipt of the filing. You will no longer receive any separate paper confirmation of this grant from the USPTO Law Office Managing/Senior Attorney. If necessary, you should retain a copy of the e-mail acknowledgement for your records.
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