SUMMARY OF MISCELLANEOUS CHANGES TO TRADEMARK RULES
EFFECTIVE JANUARY 16, 2009
I. APPLICATIONS FOR REGISTRATION
A. Application Filing Date
B. Intent to Use
1. Applicants May Not Reinsert of Goods/Services Omitted From Paper Statements of Use
2. ITU Fee Deficiencies in Multiple-Class Applications
3. Amendments Between Issuance of NOA and Filing of SOU
4. Other Changes
C. Concurrent Use - Change In Practice
D. Amendments to Classification
1. Section 66(a) Applications - Classification Cannot be Amended
2. Changes to Nice Agreement - §1 and §44 Applications
E. Requests to Divide
1. May Be Filed Between Issuance of NOA and Filing of SOU
2. Outstanding Deadlines Apply to New Applications
3. Division of §66(a) Application After Partial Change of Ownership
4. Signature
F. Application Content
1. Translation and Transliteration
2. Names and Citizenship of Partners and Members of Joint Venture
3. Dates
of Use
4. Allegation that Applicant "Has Adopted" the Mark Not Required
G. Duplicate Registrations
H. Signature of Amendments to Applications and Responses to Office Actions
I. Supplemental Register
J. Drawings
K. TEAS Plus
L. Verification Submitted After Application Filing Date
M. Specimens
N. Other Changes
II. POST REGISTRATION
A. Section 7 Amendments and Corrections
1. Filing and Signature by Owner
2. Conforming Amendments May Be Required Where Registration Includes Disclaimer, Description of the Mark, or Miscellaneous Statement
3. Amendments to Classification
4. Correction of Errors in Registered Extension of Protection
B. Division of Registration After Partial Change of Ownership
1. Division of Registrations Resulting From Applications Based on §1 and §44
2. Division of Registered Extensions of Protection
C. Section 15 Affidavit Must be Filed by Owner
D. Signature of Responses to Office Actions
E. Cancellation for Failure to Respond to Office Action
F. Section 8 Specimens May be in PDF Format
G. Section 12(c) Affidavits
H. Request for New Certificate of Registration - Original Certificate not Required
III. MADRID PROTOCOL
IV. ASSIGNMENT COVER SHEET
V. DOCUMENTS CANNOT BE REMOVED FROM
OFFICIAL RECORD
VI. SIGNATURE OF PETITIONS TO DIRECTOR
VII. U.S. POSTAL SERVICE INTERRUPTION OR EMERGENCY
VIII. OTHER CHANGES
INDEX TO CHANGES IN PRACTICE
On November 17, 2008, the United States Patent and Trademark Office ("Office") published a final rule making miscellaneous changes to the Trademark Rules of Practice, 37 C.F.R. Parts 2, 3, 6 and 7. 73 FR 67759. The changes become effective January 16,
2009. The changes clarify certain
requirements for applications, intent to use documents, amendments to
classification, requests to divide, and Post Registration practice; modernize
the language of the rules; and make other miscellaneous changes. Except as noted below, the rule changes
merely codify and clarify existing practice, as set forth in the Trademark Manual of Examining Procedure("TMEP"). An index to the amendments that change current practice is
attached. Where appropriate, the form
paragraphs will be revised to reflect cites to the amended rules.
Rule 2.21(a) was amended to add a provision that a §1 or §44 application must be in the English language to receive a
filing date.
No Inquiry as to
Omitted Goods/Services. Rule
2.88(i)(2) was amended to remove the provision that if any goods/services
specified in the notice of allowance ("NOA") are omitted from the
identification of goods or services in the statement of use ("SOU"), the
examining attorney will question the discrepancy and permit the applicant to
reinsert any inadvertently omitted goods/services. Instead, if the applicant omits any goods or
services that were listed in the NOA, the Intent to Use ("ITU") Unit will
delete these goods/services from the application. The applicant may not thereafter reinsert
these goods/services. This is consistent
with current practice with respect to SOUs filed through TEAS, and requests for
extensions of time to file a statement of use ("extension requests"). TMEP §1109.13
will be changed accordingly.
Omission of All
Goods/Services May be Cured. If the
applicant fails to identify or incorporate by reference any goods or services, or if the applicant lists all the goods/services in the section of
a pre-printed form designated for the identification of goods that are not in
use, the Office will permit applicant to correct the mistake. The ITU Unit will issue a letter noting that
no goods or services were specified or incorporated by reference in the SOU,
and granting the applicant thirty days in which to submit a verified statement
clarifying the goods/services.
Paper AAU Practice
Unchanged. The examining attorney
will continue to inquire about goods/services that are omitted from paper
amendments to allege use ("AAUs"), and to permit the applicant to reinsert the
omitted goods/services, in accordance with TMEP §1104.09(c).
Rules 2.89(a)(2) and (b)(2) were amended to address
situations where an applicant submits an extension request with a fee
sufficient to pay for at least one class, but insufficient to cover all the
classes, and the applicant has not specified the class(es) to which the fee
applies. In these situations, the ITU
Unit will issue a notice granting the applicant thirty days in which to submit
the additional fees or specify the class(es) to be abandoned. If the applicant does neither within the set
time period, the Office will apply the fees paid, beginning with the lowest
numbered class(es), in ascending order, and will delete the remaining
classes. This is consistent with TMEP §1108.02(c). A similar amendment was made to Rule
2.88(b)(3) for SOUs. TMEP §1109.15 will be changed accordingly.
Rule 2.77(a) was amended to provide that amendments deleting
a basis in a multiple‑basis application, notices of change of attorney,
and notices of change of address may be entered in a §1(b) application during
the period between the issuance of the NOA and the submission of the SOU. This is consistent with TMEP §1107.
Filing AAU Does Not
Extend Deadline. Rule 2.64(c)(1) was
amended to state that filing an AAU does not extend the deadline for filing a
response to an outstanding Office action, an appeal to the Trademark Trial and
Appeal Board, or a petition to the Director. This is consistent with TMEP §1104.
SOU - Dates of Use
Must Pertain To Goods/Services Based on §1(b). Rule 2.88(b)(1)(ii) was amended to clarify
that the dates of use specified in an SOU must pertain to the goods or services
identified in the NOA, and that where an applicant claims §1(a) for some goods/services in a
class and §1(b) for other
goods/services in the same class, the SOU must include dates for the §1(b) goods/services. This merely clarifies current practice.
SOU and AAU Should be
Captioned as "Allegation of Use." Rules 2.76(d) and 2.88(d) were amended to provide that AAUs and SOUs
should be captioned as "Allegations of Use." The rules merely set forth the preferred title. The Office will still accept documents titled
"amendment to allege use" or "statement of use."
Rules 2.73 and 2.99(g) were amended to provide that
applications based solely on §44
or §66(a) are not subject to
concurrent use registration proceedings. Because §2(d) of the Trademark Act[1] requires
concurrent lawful use in commerce by the parties to a concurrent use
proceeding, the Office deems it inappropriate to allow an amendment to seek
concurrent use absent an allegation and evidence of use in commerce. TMEP §1207.04(b)
will be changed accordingly.
Rule 2.85, pertaining to classification, was reorganized and
rewritten to codify and clarify current practice.
In a §66(a) application, the classification cannot be
changed from the classification assigned by the International Bureau of the
World Intellectual Property Organization ("IB") Classes cannot be added, and goods or services cannot be transferred
from one class to another in a multiple-class application. Rule 2.85(d). The scope of the identification for purposes of permissible amendment is
limited by the class. Rule 2.85(f). Classes A, B, and 200 do not apply to §66(a) applications. Rules 2.85(c), 6.3, and 6.4. These changes are consistent with TMEP
§§1401.03(d) and 1904.02(b).
Applicability of
Changes to Nice Agreement. When
classification changes under the Nice Agreement, the new requirements apply
only to applications filed on or after the effective date of the change. Rule 2.85(e)(1).
Amendment of Class. In a §1 or §44 application filed before the
effective date of a change in the Nice classification, the applicant may
reclassify the goods or services in accordance with the current edition, upon
payment of the required fees. In such
situations, the applicant must comply with the current edition for all goods or
services identified in the application, and must pay the fees for any added
class(es). Rule 2.85(e)(2).
These changes are consistent with TMEP §1401.11.
See §II.A.3 below regarding amendments to
the classification in a registration resulting from a §1 or §44 application.
Rule 2.87 was reorganized to codify and clarify the
requirements for requests to divide.
In a multiple-basis application, the applicant may file a
request to divide out goods or services having a particular basis during the
period between the issuance of the NOA and the filing of an SOU. Rule 2.87(c)(3). This is consistent with TMEP §1107.
Rule 2.87(e) provides that any outstanding deadline for
action by the applicant in the original application will apply to each new
separate application that the division creates, except as follows:
- If an
Office action pertaining to less than all the classes in a multiple-class
application is outstanding, and the applicant files a request to divide
out the goods/services/class(es) to which the Office action does not
pertain before the response deadline, a response to the Office action is
not due in the new (child) application(s). Rule 2.87(e)(1).
- If an
Office action pertaining to less than all the bases in a multiple-basis
application is outstanding, and the applicant files a request to divide
out the goods/services having the basis or bases to which the Office
action does not pertain before the response deadline, a response to the
Office action is not due in the new (child) application(s). Rule 2.87(e)(2).
- In a
multiple-basis application in which a NOA has issued, if the applicant
files a request to divide out the goods/services that are not based on §1(b) before the deadline for
filing the SOU, the new (child) application(s) created by the division are
not affected by the NOA. Rule
2.87(e)(3).
This is consistent with TMEP §§1110.04 and 1110.05. See §II.A.3 below regarding amendments to
classification after registration.
Rule 2.87(g) sets forth the procedures for division of a
§66(a) application after a change in ownership with respect to some, but not
all, of the goods or services:
- When
the IB notifies the Office that an international registration has been
divided as the result of a change of ownership with respect to some but
not all of the goods or services, the Office will construe the IB’s notice
as a request to divide. The Office
will record the partial change of ownership in the Assignment Services
Branch, and divide out the assigned goods/services from the original
(parent) application. The
Office will create a new (child) application serial number, and enter the
information about the new application in its automated records. Rule 2.87(g)(1).
- To
obtain a certificate of registration in the name of the new owner for the
goods/services that have been divided out, the new owner must pay the
fee(s) for the request to divide, as required by Rules 2.6 and 2.87(b). The examining attorney will issue an
Office action in the child application requiring the new owner to pay the
required fee(s). If the owner of
the child application fails to respond, the child application will be
abandoned. It is not necessary for
the new owner to file a separate request to divide. Rule 2.87(g)(2).
- The
Office will not divide a §66(a) application based upon a change of
ownership unless the IB notifies the Office that the international
registration has been divided. Rule
2.87(g)(2).
These changes are consistent with TMEP §1110.08. See §II.B below regarding requests
to divide a registration after a
partial change of ownership.
A request to divide must be signed by the applicant, someone
with legal authority to bind the applicant (e.g.,
a corporate officer or general partner of a partnership), or a practitioner
qualified to practice under § 11.14 ("qualified practitioner"). Rule 2.87(f); TMEP §1110.
If a mark includes non‑English wording, the applicant
must submit an English translation of that wording. Rule 2.32(a)(9). If the mark includes non-Latin characters,
the applicant must submit a transliteration of those characters and either a
translation of the corresponding non‑English word(s) or a statement that
the transliterated term has no meaning in English. Rule 2.32(a)(10). This is consistent with TMEP §809.
Rule 2.32(a)(3)(iii) was amended to require that an
application by a domestic partnership include the names and citizenship of the
general partners. Rule 2.32(a)(3)(iv)
was added to require that an application by a domestic joint venture include
the names and citizenship of the active members of the joint venture. These requirements are consistent with TMEP
§803.03(b).
Rule 2.34(a)(1)(v) was added to require that if more than
one item of goods or services is specified in a §1(a) application, the dates of
use need be for only one of the items specified in each class, provided that
the particular item to which the dates apply is designated. This is consistent with TMEP §903.09.
Rule 2.33(b)(1) was amended to remove the requirement that
an application include a verified statement that the applicant "has adopted ...
the mark shown in the accompanying drawing." The rule as amended requires an allegation that "the mark is in use in commerce."
Rule 2.48 was added to provide that the Office does not
issue duplicate registrations. If two
applications on the same register would result in registrations that are exact
duplicates, the Office will permit only one application to mature into
registration, and will refuse registration in the other application. This
codifies the longstanding practice stated in TMEP §703. The applicant may overcome the refusal by
abandoning one of the applications (or surrendering the registration if one of
the marks is registered).
Rules 2.62 and 2.74 were amended to require that amendments
to applications and responses to Office actions be signed by the applicant,
someone with legal authority to bind the applicant, or a qualified
practitioner. This is consistent with
TMEP §§605.02 and 712.01.
Lawful Use in Commerce
and Type of Commerce. Rule 2.47(a),
which provides for registration on the Supplemental Register, was amended to
remove the requirements for: (1) a
specific allegation that the mark is in "lawful" use in commerce; and
(2) a specification of the type of commerce. Because the definition of "commerce" in §45
of the Trademark Act is "all commerce which may lawfully be regulated by
Congress," the Office presumes, absent evidence to the contrary, that an
applicant who alleges that "the mark is in use in commerce" is claiming lawful
use in a type of commerce that Congress may regulate. This is consistent with current requirements
for §1(a) applications on the Principal Register and allegations of use in
§1(b) applications.
Special Form Drawings. Rule 2.52(b) was amended to provide that
special form drawings of marks that do not include color "should" -- rather
than "must" -- show the mark in black on a white background. This gives examining attorneys discretion to
accept a drawing that shows the mark in white on a black background, if this
will more accurately depict the mark.
TEAS Drawings. Rule 2.53(a) was amended to remove the
reference to submission of a digitized image of a standard character mark as a
drawing in a TEAS application. This
option no longer exists. An applicant
who wants to apply for registration of a standard character mark through TEAS
must type the characters comprising the mark in the appropriate field on the
TEAS form. The old Rules 2.53(a)(1) and
(a)(2) were removed, because the requirements for standard character drawings
in TEAS and TEAS Plus applications are now identical.
Rule 2.23(a)(2), which requires that an applicant continue
to receive communications from the Office by e-mail in order to maintain TEAS
Plus status, was amended to add a requirement that a TEAS Plus applicant
maintain a valid e-mail correspondence address. This means that if the e‑mail address changes, the applicant must
notify the Office of the change.
Allegations of Use and
Intent to Use Must Relate Back to Application Filing Date. Rules 2.34(a)(1)(i), (a)(2), (a)(3)(i), and
(a)(4)(ii) were amended to change "must allege" to "must also allege." This merely clarifies that a verification
filed after the application filing date must allege both (1) current use or bona fide intention to use the mark in
commerce, and (2) use or bona fide intention to use the mark in commerce as of
the application filing date.
Displays Associated
With the Goods. Rule 2.56(b)(1) was
amended to add a reference to "displays associated with the goods," to conform
the rule with the definition of "use in commerce" in §45 of the Act.
Bulky Specimens. Rule 2.56(d)(2) was amended to add a
provision that where an applicant files a paper specimen that exceeds the size
requirements of Rule 2.56(d)(1) (a bulky specimen), and the Office creates a
digital facsimile copy of the specimen, the Office may destroy the original
bulky specimen. This is consistent with
TMEP §904.02(b).
Collective and
Certification Marks. Rules 2.44(b)
and 2.45(b) were amended to add references to §66(a) applications. This
corrects an oversight.
Appeal Avoids
Abandonment. Rule 2.65(a) was
amended to add a reference to a notice of appeal as a response that avoids
abandonment of an application. This
merely clarifies current practice.
Rule 2.173 was rewritten and reorganized to clarify the
requirements for amendment of a registration.
Rules 2.173(a),
2.173(b)(2), and 2.175(b)(2) have been changed to require that a request for amendment or correction under §7 of the Act be filed by the owner and signed by
the owner, someone with legal authority to bind the owner, or a qualified
practitioner. The requirement for filing
in the name of the owner is consistent with current practice. However, the requirement for signature by
someone with legal authority to bind the owner or by a qualified practitioner
changes current practice slightly. TMEP
§§1609.01(b), 1609.02(c), and
1609.10(b) now permit signature by a person with firsthand knowledge of the
facts and actual or implied authority to act on behalf of the owner, which
could include someone without legal authority to bind the owner. The better practice is to require that a
request to amend a registration be signed by someone with legal authority to
bind the owner or by a qualified practitioner.
Rule 2.173(f)
provides that if a registration includes a disclaimer, description of the mark,
or miscellaneous statement, any request for amendment of the registration must
include a request to make any necessary conforming amendments to the
disclaimer, description, or miscellaneous statement. For example, if the mark is XYZ INC., with a
disclaimer of the entity designator "INC.," and the owner of the registration
proposes to amend the mark to remove "INC.," the proposed amendment should also
request that the disclaimer be deleted. If a proposed amendment does not include all necessary conforming
amendment(s), the Post Registration examiner will issue an Office action
requiring the amendment(s). This is a
change in practice.
Rule 2.173(g)
provides that an amendment seeking the elimination of a disclaimer will be
permitted only if deletion of the disclaimed portion of the mark is also
sought. This provides a narrow exception
to the general prohibition against amendments to delete disclaimers.
Changes to Nice Agreement. In a registration resulting from a §1 or §44 application that was filed before the effective date of a
change to the Nice Agreement, the owner may amend the registration to comply
with the requirements of the current edition of the Nice Agreement. The owner must reclassify all goods or
services identified in the registration to the current edition, and must pay
the fee for the §7
amendment. The owner may reclassify
registrations from multiple
United
States
classes into a single international
classification, where appropriate. Rule
2.85(e)(3).
Registered Extension
of Protection. Classification cannot
be changed in a registered extension of protection. Rule 2.85(d).
These changes are consistent with TMEP §1609.04.
Rule 7.25(a) was amended to remove Rule 2.175 from the list
of rules in part 2 that do not apply to a extension of protection of an
international registration to the
United States
. This will permit an owner to request
correction under Rule 2.175 in the limited circumstance where the owner makes a
mistake in a document filed during prosecution in the Office that affects only
the extension of protection to the
United States
. For example, if there was a minor
typographical error in an amendment to the identification of goods in a §66(a)
application, and the mark registered, the owner of the registration may request
correction under Rule 2.175. If the
Office grants the request, the Office will notify the IB of the change to the
extension of protection to the
United
States
. All other requests to correct errors in an international registration
must be filed at the IB.
Rule 2.171(b) was reorganized and expanded to set forth
procedures for division of registrations after a partial change of
ownership.
If ownership of a registration has changed with respect to
some but not all of the goods/services, the owner(s) may file a request that
the registration be divided into two or more separate registrations. The assignment or other document changing
title must be recorded in the Office. The request to divide must include the fee required by Rule 2.6(a)(8)
for issuing a certificate for each new registration created by the division,
and be signed by the owner of the registration, someone with legal authority to
bind the owner, or a qualified practitioner. Rule 2.171(b)(1). This is
consistent with TMEP §1615.01.
When the IB notifies the Office that an international
registration has been divided as the result of a change of ownership with
respect to some but not all of the goods or services, the Office will construe
the IB’s notice as a request to divide. The Office will record the partial change of ownership in the Assignment
Services Branch, divide out the assigned goods/services from the registered
extension of protection (parent registration), issue an updated certificate for
the parent registration, and publish notice of the parent registration in the Official
Gazette. Rule 2.171(b)(2)(i).
The Office will create a new registration number for the
child registration, and enter the information about the new registration in its
automated records. The Office will
notify the new owner that the new owner must pay the fee required by
Rule 2.6(a)(8) to obtain a new registration certificate for the child
registration. It is not necessary for
the new owner to file a separate request to divide. Rule 2.171(b)(2)(ii). If the new owner does not respond to the
notice, the child registration will remain active, as long as the owner files
the necessary maintenance documents, but the Office will not issue a
registration certificate.
The Office will not divide a registered extension of
protection unless the IB notifies the Office that the international
registration has been divided. Rule
2.171(b)(2)(iii).
This is consistent with TMEP §1615.02.
Rule 2.167(a)
was amended to require that an affidavit or declaration of incontestability
under §15 of the Trademark Act be filed in the name of the owner of the
registration, and verified by
the owner or a person properly authorized to sign on behalf of the owner. This is consistent with TMEP §1605.04.
A response to an Office action issued by a Post Registration Examiner in connection with a §8 affidavit must be signed by the owner, someone with legal authority to bind the owner, or a qualified practitioner. Rule 2.163(b). This is consistent with TMEP §1604.16.
A response to an Office action issued by a Post Registration Examiner in connection with a §9 renewal application must be signed by the registrant, someone with legal authority to bind the registrant, or a qualified practitioner. Rule 2.184(b)(2). This is consistent with TMEP §1606.12.
Rules 2.163(c) and 2.184(b)(1) provide that a registration
will be cancelled or expired for failure to respond to an Office action issued
in connection with a §8 affidavit or renewal application only if no time
remains in the grace period. If time
remains in the grace period, the owner may file a complete new affidavit or
renewal application, with a new fee. This corrects an oversight.
Specimens filed through TEAS may be in .pdf format. Rule 2.161(g)(3). This is consistent with current practice.
Must be Filed by Owner. Rule 2.153 was amended to provide than an
affidavit claiming the benefits of §12(c) of the Trademark Act of 1946 for a
mark registered under the Acts of 1881 or 1905 must be filed by the owner and
signed by a person properly authorized to sign on behalf of the owner. This is consistent with TMEP §1603.
Type of Commerce not
Required. Specification of the type
of commerce is not required in an affidavit under §12(c).
Rule
2.171(a) was amended to remove the requirement that a request for a new
certificate of registration upon change of ownership include the original certificate of
registration. This is consistent with current
practice, and with Office practice in connection with requests to amend or
correct registrations under §7 of the Trademark Act.
III.
MADRID PROTOCOL
International
Application - Applicant Name and Entity Must be Identical to Owner Name and
Entity in Basic Application or Registration. Rule 7.11(a)(2) was amended to require that
applicant’s entity in an application for international registration be
identical to the entity listed as owner of the basic application or
registration. This is consistent with
TMEP §1902.02(c).
Certificate of Mailing
or Transmission. Rule 7.25(a) was
amended to remove Rule 2.197 from the list of rules in part 2 that do not apply
to an extension of protection of an international registration to the
United States
. This permits §66(a) applicants and owners of registered extensions of
protection to use the certificate of mailing or transmission procedure to avoid
lateness due to mail delay, except as otherwise prohibited. Pursuant to Rules 2.197(a)(2)(ii) and 7.4(e),
the certificate of mailing or transmission procedure remains inapplicable to
international applications under Rule 7.11, responses to notices of
irregularity under Rule 7.14, subsequent designations under Rule 7.21, requests
to record changes of ownership under Rule 7.23, requests to record restrictions
of the holder’s right of disposal (or the release of such restrictions) under
Rule 7.24, and requests for transformation under Rule 7.31.
Names and Citizenship
of New Owner Mandatory. Rule
3.31(a)(8) was added to require that an assignment cover sheet must include the
citizenship or state or country of organization of the party receiving the
interest; and that if the party receiving the interest is a domestic
partnership or domestic joint venture, the cover sheet must include the names,
legal entities, and national citizenship (or state or country of organization)
of all general partners or active members that compose the partnership or joint
venture. This will eliminate the need
for the examining attorney or Post Registration examiner to issue an Office
action requiring submission of this information. Previously, Rule 3.31(f) provided that the
cover sheet "should" include this information, but the new rule makes it
mandatory.
Rule 2.25 was amended to provide that documents filed by an
applicant or registrant become part of the official record and will not be
returned or removed. This is consistent
with TMEP §404. There is an exception for
documents ordered to be filed under seal pursuant to a protective order issued
by a court or by the TTAB.
Rule 2.146(c) was amended to add a provision that a petition
to the Director be signed by the petitioner, someone with legal authority to
bind the petitioner, or a qualified practitioner. The rule further provides that when facts are
to be proved on petition, the petitioner must submit proof in the form of
affidavits or declarations in accordance with Rule 2.20, signed by someone with
firsthand knowledge of the facts to be proved. This is consistent with TMEP §§1705.03 and
1705.07.
VII.
U.S.
POSTAL SERVICE INTERRUPTION OR EMERGENCY
Rule 2.195(e), which sets forth the procedure for filing a
petition to the Director to consider correspondence filed on the date of
attempted filing by Express Mail during a postal service interruption or
emergency within the meaning of 35 U.S.C. §21(a), was reorganized and expanded. Rule 2.195(e)(3) provides that the procedure
does not apply to correspondence that is excluded from the Express Mail
procedure pursuant to Rule 2.198(a)(1). This is consistent with current practice.
VIII. OTHER CHANGES
Appeal Fees - Rules
Renumbered. Provisions relating to
appeal fees are now in Rule 2.141(b).
Rule 2.26 Removed. Rule 2.26, which previously provided that a
drawing from an abandoned application may be transferred to and used in a new
application, was removed. This rule was
no longer in use and deemed unnecessary.
References to "Paper"
Eliminated. The rules were amended
to modernize the language. References to
"papers" were replaced with "documents" in order to encompass documents filed
or issued electronically. References to
"file wrapper" were replaced with "record" or "official record," and references
to "mailing" were replaced with "issuance."
The amendments that change Office practice are as follows:
- Application must be in English to receive a filing
date. Rule 2.21(a); Summary §I.A.
- Section 44 and §66(a) applications not subject to concurrent use. Rules 2.73 and 2.99(g); Summary §I.C.
- Applicants may not reinsert goods or services omitted
from a paper SOU. Rule 2.88(i)(2);
Summary §I.B.1.
- SOU Fee Deficiencies in Multiple-Class
Applications. Where an applicant
does not respond to a notice requiring fee(s) for unpaid class(es), the
Office will apply the fees paid in ascending order, beginning with the
lowest numbered class(es), and delete the remaining class(es). Rule 2.88(b)(3); Summary §I.B.2.
- TEAS Plus
applicant must maintain a valid e‑mail correspondence address in
order to retain TEAS Plus status. Rule 2.23(a)(2); Summary §I.K.
- Post Registration - Request for amendment or
correction under §7 of the
Trademark Act must be signed by the owner, someone with legal authority to
bind the owner, or a qualified practitioner. Rules 2.173(a), 2.173(b)(2) and
2.175(b)(2); Summary §II.A.1.
- Post Registration - Conforming amendments to
disclaimer, description of the mark, or miscellaneous statement may be
required when an owner files a request to amend a registration under §7. Rules 2.173(f) and (g); Summary §II.A.2.
[1] References to "the Act" or "the Trademark
Act" refer to the Trademark Act of 1946, 15 U.S.C. §§1051 et seq., as amended.
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