Contents
Changes in TMEP Fifth Edition
Foreword
CONTENTS
(By Chapters)
Introduction
Chapters
100 General Information
200 Application Filing
Date
300 Filing and Receipt
of Documents
400 Processing Documents
and Fees
500 Change of Ownership
600 Attorney or Representative
700 Procedure for Examining
Applications
800 Application Requirements
900 Use in Commerce
1000 Applications under
Section 44
1100 Intent-to-Use Applications
and Requests to Divide
1200 Substantive Examination
of Applications
1300 Examination of Different
Types of Marks
1400 Classification and
Identification of Goods and Services
1500 Post-Examination
Procedures
1600 Registration and
Post-Registration Procedures
1700 Matters Submitted
to Director
1800 Public Inquiries
About Applications and Registrations
1900 Madrid Protocol
Appendix A Examining
Attorneys' Appeal Briefs
Appendix B List
of Members of International Trademark Agreements
Appendix C Notes
of Other Statutes
Appendix D Foreign
Entities
Table of Decisions
Index
Contents
By Sections
Chapter 100 - General Information
101 Trademark Statute and Rules
102 United States Patent and Trademark Office World Wide Web Page
103 Trademark Forms
104 Trademark Searching
105 General Information Booklet Concerning Trademarks
106 The Official Gazette
107 Trademark Manuals
108 Status Inquiries
108.01 Internet Information
108.02 Personal Telephone Assistance
108.03 Due Diligence: Duty to Monitor Status
109 Access to Files
109.01 Electronic Image Files
109.02 Paper Files
109.03 Making Copies of Materials in Files
110 Decisions Available to the Public
111 Requests for Copies of Trademark Documents
112 Patent and Trademark Depository Libraries
Chapter 200 - Application Filing Date
201 What Constitutes Filing Date
201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue
201.02 Constructive Use Priority
202 Requirements for Receiving a Filing Date
202.01 Clear Drawing of the Mark
202.02 Listing of Recognizable Goods or Services
202.03 Filing Fee for At Least One Class of Goods or Services
202.03(a) Fee Payment Refused or Charged Back By Financial Institution
202.03(a)(i) Processing Fee for Payment Refused or Charged Back By Financial Institution
203 Review for Compliance With Minimum Requirements
204 Defective or Informal Applications
204.01 Filing Date Cancelled if Minimum Filing Requirements not Met
204.02 Resubmission of Defective Papers
204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
205 Filing Date Is Not Normally Changed
206 Effective Filing Date
206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use
206.02 Application Claiming Priority under §44(d) or §67
206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989
Chapter 300 - Filing and Receipt of Documents
301 Electronic Filing
302 Trademark Correspondence and Signature Requirements - In General
302.01 Original Documents Generally Not Required
302.02 Multiple Copies of Papers Should Not Be Filed
302.03 Identifying the Nature of Papers Filed
302.03(a) Correspondence Pertaining to Trademark Applications
302.03(b) Correspondence Pertaining to Trademark Registrations
303 Receipt of Documents by the Office
303.01 Date of Receipt
303.02 Acknowledgment of Receipt
303.02(a) TEAS “Success” Page
303.02(b) “Mail Room Date” Label Showing Receipt
303.02(c) Postcard Receipt
303.02(c)(i) Postage on Return Receipt Postcards
304 Electronic Mail
304.01 Communications Acceptable Via Electronic Mail
304.02 Communications Not Acceptable Via Electronic Mail
304.03 Authorization of Electronic Mail Communications From the USPTO
304.04 Filing Date of Electronic Mail
304.05 Certificate of Transmission by Electronic Mail
304.06 Outgoing Electronic Mail
304.07 Signature of Electronic Mail
304.08 E-Mail Addresses for Correspondence With the Office
304.09 Paper “Confirmation” Copies of E-Mail Communications Should Not Be Sent to the Office
305 Mailing Documents to the Office
305.01 Mailing Addresses
305.02 Certificate of Mailing Procedure
305.02(a) When Certificate of Mailing Procedure May Not Be Used
305.02(b) Mailing Requirements
305.02(c) Location and Form of Certificate
305.02(d) Wording of Certificate of Mailing
305.02(e) Effect of Certificate of Mailing
305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197 But Not Received by Office
305.02(g) Correspondence Deposited as First Class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
305.02(h) Certificate of Mailing Requirements Strictly Enforced
305.03 “Express Mail”
305.04 Interruptions in U.S. Postal Service
306 Facsimile Transmission (Fax)
306.01 Documents That May Not Be Filed by Facsimile Transmission
306.02 Fax Machines Designated to Accept Relevant Trademark Documents
306.03 Effect of Filing by Fax
306.04 Procedure for Filing by Fax
306.05 Certificate of Transmission Procedure
306.05(a) Location and Form of Certificate of Transmission
306.05(b) Wording of Certificate of Transmission
306.05(c) Effect of Certificate of Transmission
306.05(d) Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §2.197 But Not Received by Office
306.06 Requirements for Certificate of Transmission Strictly Enforced
307 Hand Delivery
308 Period Ending on Saturday, Sunday or Federal Holiday
309 Unscheduled Closings of the United States Patent and Trademark Office
310 Computing Period for Response to Office Action or Notice
Chapter 400 - Processing Documents and Fees
401 Processing New Applications
401.01 Filing Receipts
401.02 Serial Numbers and Series Codes
401.03 Data Entry
401.04 Creation of Application Files
402 Electronic Application and Registration Files
402.01 USPTO No Longer Creates Paper Copies of Certain Trademark-Related Documents
403 Correspondence Returned as Undeliverable
404 Documents Not Returnable
405 Fees
405.01 Credit Cards
405.02 Checks
405.02(a) Personal Checks
405.03 Deposit Accounts
405.04 Refunds
405.05 Electronic Funds Transfer
405.06 Payments Refused or Charged Back By Financial Institutions
Chapter 500 - Change of Ownership
501 Assignment of Marks
501.01 Assignability of Marks in Applications and Registrations
501.01(a) Assignability of Intent-to-Use Applications
501.01(b) Assignability of Extensions of Protection of International Registrations to the United States
501.02 Assignments Must Be in Writing
501.03 Effect of Failure to Record Assignment
501.04 Foreign Assignee May Designate Domestic Representative
501.05 Assignee Stands in Place of Applicant or Registrant
501.06 Partial Assignments
501.07 Assignment of Extension of Protection of International Registration to the United States
502 Establishing Ownership of Applications or Registrations
502.01 Establishing the Right to Take Action in Application or Registration
502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §1 and §44 of the Trademark Act
502.02(b) Applications Under §66(a) of the Trademark Act
502.02(c) Examining Attorney’s Action Regarding Assignment
502.03 Issuance of New Certificate to Assignee of Registrant
503 Recording in Assignment Services Branch
503.01 Effect of Recording a Document
503.02 Documents That the Office Will Record
503.03 Requirements for Recording
503.03(a) Formal Requirements for Documents
503.03(b) Supporting Documents
503.03(c) English Language Requirement
503.03(d) Fee for Recording
503.03(e) Cover Sheet
503.04 Address for Submitting Documents for Recording
503.05 Recording Procedure and Recordation Date
503.06 Correction of Errors in Cover Sheet or Recorded Document
503.06(a) Typographical Errors in Cover Sheet
503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect Title to Application or Registration
503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title to Application or Registration
503.06(b) Typographical Errors in Recorded Assignment Document
503.06(c) Assignment or Change of Name Improperly Filed and Recorded By Another Person Against Owner’s Application or Registration
503.06(d) Owner Must Notify Trademark Operation of Correction
503.06(e) Recorded Documents Not Removed From Assignment Records
503.06(f) Petitions to Correct or “Expunge” Assignment Records
503.07 “Indexing” Against Recorded Document Not Permitted
503.08 Accessibility of Assignment Records
503.08(a) Abstracts of Title
504 Automatic Updating Ownership of Trademark Applications and Registrations in Trademark Databases
504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated
504.02 Processing Time for Automatic Updating
504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title
504.04 Automatic Updating Does Not Apply to Requests for Recordation Filed Before November 2, 2003
504.05 Automatic Updating Does Not Apply to International Applications and Registrations Under the Madrid Protocol
505 Request to Update Ownership Information
Chapter 600 - Attorney or Representative
601 Applicant May Be Represented by Attorney at Law
601.01 USPTO Cannot Aid in Selection of Attorney
601.02 Communications With Applicant Who Is Represented By Attorney
602 Persons Who May Practice Before Office in Trademark Matters
602.01 Powers of Attorney
602.01(a) Power of Attorney Relating to More Than One Application or Registration
602.01(b) Associate Powers of Attorney
602.01(c) Powers of Attorney Filed After Registration
602.02 Standards of Conduct
602.03 Actions by Unauthorized Persons Not Permitted
602.04 Revocation of Power of Attorney
602.05 Withdrawal of Attorney of Record
602.06 Foreign Attorneys and Agents
602.06(a) Canadian Attorneys
602.06(b) Foreign Attorneys and Agents From Countries Other Than Canada
602.06(c) Papers Filed by Foreign Attorneys and Agents
602.06(d) Representatives of Holders of International Registrations
602.06(e) Identification of Foreign Attorney in Original Application
602.07 Change of Attorney
602.08 Individuals Excluded or Suspended From Practice Before the USPTO
603 Correspondence, With Whom Held
603.01 Establishing the Correspondence Address
603.01(a) Correspondence in §66(a) Applications
603.02 Changing the Correspondence Address
603.02(a) Changing the Correspondence Address Before Registration
603.02(b) Changing the Correspondence Address in Multiple Applications or Registrations
603.02(c) Changing the Correspondence Address After Registration
603.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address
603.04 Correspondence with Parties Not Domiciled in the United States
604 Designation of Domestic Representative by Parties Not Domiciled in the United States
605 Signature on Correspondence Filed in the United States Patent and Trademark Office
605.01 Signature and Certificate
605.02 Signatures By Authorized Parties Required
605.03 Signatures on Verifications and Cover Letters
605.04 Examples of Authorized and Potentially Unauthorized Signatories
605.05 Processing Papers Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney
605.05(a) Notice of Incomplete Response When Authority of Person Signing Response is Unclear
605.05(b) Replying to a Notice of Incomplete Response
605.05(c) Unsatisfactory Response or Failure to Respond
Chapter 700 - Procedure for Examining Applications
701 Statutory Authority for Examination
702 Order of Work
702.01 Order of Examination
702.02 “Special” Applications
702.03 Related Applications
702.03(a) Companion Applications
702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks
702.03(a)(ii) Companion Applications Previously Assigned
702.03(a)(iii) Companion Registrations
702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition
702.03(b) Conflicting Applications
703 Office Does Not Issue Duplicate Registrations
704 Initial Examination
704.01 Initial Examination Must be Complete
704.02 Examining Attorney’s Search
704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney
705 The Examining Attorney’s Letter or Action
705.01 Language in Examining Attorney’s Letter
705.02 Examining Attorneys Should Not Volunteer Statements
705.03 Citation of Conflicting Marks
705.04 Reference to Matter in Printed or Online Publications
705.05 Citation of Decisions and Office Publications
705.06 Reviewing and Signing of Letters
705.07 Processing Outgoing Office Actions
705.08 Six-Month Response Clause
706 New Matter Raised by Examining Attorney After First Action
707 Examiner’s Amendment
707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney
707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney
707.03 Form of the Examiner’s Amendment
708 Priority Action
708.01 Priority Action Defined
708.02 Discussion of Issues and Agreements
708.03 Form of the Priority Action
708.04 Refusal of Registration in Priority Action
708.05 Combined Examiner’s Amendment/Priority Action
709 Interviews
709.01 Personal Interviews
709.02 Persons Who May Represent Applicant in an Interview
709.03 Making Substance of Interview of Record
709.04 Telephone Communications
709.05 Informal Submissions
709.06 Interviews Prior to Filing Application
710 Evidence
710.01 Evidence Supporting Refusal or Requirement
710.01(a) Evidence From Research Database
710.01(b) Internet Evidence
710.01(c) Record Must Be Complete Prior to Appeal
710.02 Evidence Indicating No Refusal or Requirement Necessary
710.03 Evidence of Third-Party Registrations
711 Deadline for Response to Office Action
711.01 Time May Run from Previous Action
711.02 Supplemental Office Action Resetting Response Period
712 Signature on Response to Office Action
712.01 Persons Who Can Sign Response
712.01(a) Guidelines on Who Should Sign Response to Office Action
712.01(a)(i) Signature By Joint Applicants
712.01(a)(ii) Signature By Partnership
712.01(a)(iii) Signature By Joint Venture
712.01(a)(iv) Signature By Corporation
712.01(a)(v) Signature By Foreign Companies and Corporations
712.01(a)(vi) Signature By Unincorporated Association
712.01(a)(vii) Signature By Limited Liability Company
712.01(a)(viii) Signature By Limited Liability Partnership
712.02 Unsigned Response
712.03 Response Signed by an Unauthorized Person
713 Examination of Amendments and Responses to Office Actions
713.01 Previous Action by Different Examining Attorney
713.02 Noting All Outstanding Requirements
713.03 Response to Applicant’s Arguments
714 Final Action
714.01 Not Permissible on First Action
714.02 Not Permissible on Suspension
714.03 When Final Action is Appropriate
714.04 Form of the Final Action
714.05 Delineating New Issues Requiring Issuance of Nonfinal Action
714.05(a) Unacceptable Amendment Proposed By Applicant
714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness
714.05(a)(ii) Amendment of Identification of Goods and Services
714.05(b) Section 2(d) Refusal Based on Prior-Filed Application That Has Matured Into Registration
714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal
714.06 Applicant’s Recourse When Final Action is Premature
715 Action After Issuance of Final Action
715.01 Proper Response to Final Action
715.02 Action After Final Action
715.03 Request for Reconsideration After Final Action
715.03(a) Examining Attorney’s Action When No New Issue is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(c) Time for Appeal Runs from Mailing Date of Final Action If No New Issue Is Presented and Requirement(s) or Refusal(s) Is Not Withdrawn
715.04 Request for Reconsideration Filed in Conjunction With Notice of Appeal
715.04(a) Examining Attorney's Action Denying Reconsideration of Final Action When Notice of Appeal Has Been Filed
715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
716 Suspension of Action by Office
716.01 Form of Suspension Notice
716.02 Circumstances Under Which Action May Be Suspended
716.02(a) Applicant’s Petition to Cancel Cited Registration
716.02(b) Submission of Copy of Foreign Registration in §44(d) Application
716.02(c) Conflicting Marks in Pending Applications
716.02(d) Inter Partes or Court Proceeding
716.02(e) Suspension Pending Cancellation or Expiration of Cited Registration
716.03 Applicant’s Request to Remove Application from Suspension
716.04 Suspended Docket Checked
716.05 Inquiry by Examining Attorney Regarding Suspended Application
716.06 Suspension After Final Action
717 Reissuing an Office Action
717.01 Returned Office Action
717.02 Non-Receipt of Office Action
718 Abandonment
718.01 Express Abandonment by Applicant or Applicant’s Attorney
718.02 Failure by Applicant to Take Required Action During Statutory Period
718.02(a) Partial Abandonment
718.03 Incomplete Response
718.03(a) Holding of Abandonment for Failure to Respond Completely
718.03(b) Granting Additional Time to Perfect Response
718.03(c) Reconsideration of Holding of Abandonment
718.04 Failure to File Statement of Use
718.05 Failure to Perfect Appeal
718.06 Notice of Abandonment for Failure to Respond
718.07 Ordering Abandoned Application Files
718.08 Revival or Reinstatement of Abandoned Application - New Search Required
719 Non-Responsive Communications
720 Fraud Upon the Office
Chapter 800 - Application Requirements
801 Types of Applications
801.01 Single or Combined Application
801.01(a) Single (Single-Class) Application
801.01(b) Combined (Multiple-Class) Application
801.02 Principal Register or Supplemental Register
801.02(a) Act of 1946, Principal Register
801.02(b) Act of 1946, Supplemental Register
802 Application Form
803 Applicant
803.01 Who May Apply
803.02 Name of Applicant
803.02(a) Individual
803.02(b) Partnership, Joint Venture, or Other “Firm”
803.02(c) Corporation and Association
803.03 Legal Entity of Applicant
803.03(a) Individual or Sole Proprietorship
803.03(b) Partnership, Joint Venture or Other “Firm”
803.03(c) Corporation and Association
803.03(d) Joint Applicants
803.03(e) Trusts, Conservatorships, and Estates
803.03(e)(i) Business Trusts
803.03(f) Governmental Bodies and Universities
803.03(g) Banking Institutions
803.03(h) Limited Liability Companies
803.03(i) Common Terms Designating Entity of Foreign Applicants
803.03(j) Federally Recognized Indian Tribe
803.03(k) Limited Liability Partnerships
803.04 Citizenship of Applicant
803.05 Address of Applicant
803.06 Applicant May Not Be Changed
804 Verification and Signature
804.01 Form and Wording of Verification in §1 or §44 Application
804.01(a) Verification with Oath
804.01(a)(i) Verification Made in Foreign Country
804.01(b) Declaration in Lieu of Oath
804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application
804.03 Time Between Execution and Filing of Papers - §1 or §44 Application
804.04 Persons Authorized to Sign Verification or Declaration
804.05 Signature on Documents
804.06 Verification of §66(a) Application
805 Identification and Classification of Goods and Services
806 Filing Basis
806.01 Requirements for Establishing a Basis
806.01(a) Use in Commerce - §1(a)
806.01(b) Intent-to-Use - §1(b)
806.01(c) Foreign Priority - §44(d)
806.01(d) Foreign Registration — §44(e)
806.01(e) Extension of Protection of International Registration - §66(a)
806.02 Multiple Bases
806.02(a) Procedure for Asserting More Than One Basis
806.02(b) Applicant May File Under Both §1(a) and §1(b) in a Single Application
806.02(c) Examination of Specimens of Use in a Multiple-Basis Application
806.02(d) Abandonment of Multiple-Basis Applications
806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application is Based on Both §44 and §1(a)
806.02(f) Section 44(d) Combined With Other Bases
806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application
806.03 Amendments to Add or Substitute a Basis
806.03(a) When Basis Can be Changed
806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period
806.03(c) Amendment From §1(a) to §1(b)
806.03(d) Amendment From §44 to §1(b)
806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a)
806.03(f) Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application
806.03(g) Amendment From §1(b) to §44
806.03(h) Effect of Substitution of Basis on Application Filing Date
806.03(i) Verification of Amendment Required
806.03(j) Petition to Amend Basis After Publication - §1 or §44 Application
806.03(j)(i) Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance
806.03(j)(ii) Amending the Basis of a §1(b) Application Between Issuance of Notice of Allowance and Filing of Statement of Use
806.03(k) Basis Cannot be Changed in §66(a) Application
806.04 Deleting a Basis
806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance
806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis
806.05 Review of Basis Prior to Publication or Issue
807 Drawing
807.01 Drawing Must Show Only One Mark
807.02 Drawing Must Be Limited to Mark
807.03 Standard Character Drawings
807.03(a) Requirements for Standard Character Drawings
807.03(b) List of Standard Characters
807.03(c) Drawings Containing Both a Standard Character Claim and Designs or Other Elements
807.03(d) Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration
807.03(e) Standard Character Drawing and Specimen of Use
807.03(f) Standard Character Drawing and Foreign Registration
807.03(g) Drawings in “Typed” Format With No Standard Character Claim
807.03(h) Drawings Where the Format Is Unclear
807.03(i) Typed Drawings
807.04 Special Form Drawings
807.04(a) Characteristics of Special Form Drawings
807.04(b) When Special Form Drawing is Required
807.05 Electronically Submitted Drawings
807.05(a) Standard Character Drawings Submitted Electronically
807.05(a)(i) Long Marks in Standard Character Drawings
807.05(b) Special Form Drawings Submitted Electronically
807.05(c) Requirements for Digitized Images
807.06 Paper Drawings
807.06(a) Type of Paper and Size of Mark
807.06(b) Long Marks in Standard Character Drawings
807.06(c) Separate Drawing Page Preferred
807.07 Color in the Mark
807.07(a) Requirements for Color Drawings
807.07(a)(i) Color Must Be Claimed as a Feature of the Mark
807.07(a)(ii) Applicant Must Specify the Location of the Colors Claimed
807.07(b) Color Drawings Filed Without a Color Claim
807.07(c) Color Drawings Filed With an Incorrect Color Claim
807.07(d) Color Drawings that Contain Black, White, or Gray
807.07(d)(i) Applications Under §1
807.07(d)(ii) Applications Under §44
807.07(d)(iii) Applications Under §66(a)
807.07(e) Black-and-White Drawings and Color Claims
807.07(f) Black-and-White Drawings that Contain Gray or Black-and-White Drawings with a Mark Description that Refers to Black, White, or Gray
807.07(f)(i) TEAS, TEAS Plus, and §66(a) Applications
807.07(f)(ii) Applications Filed on Paper
807.07(g) Drawings in Applications Filed Before November 2, 2003
807.08 Broken Lines to Show Placement
807.09 “Drawing” of Sound, Scent, or Non-Visual Mark
807.10 Three Dimensional Marks
807.11 Marks With Motion
807.12 Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration
807.12(a) Applications Under §1 of the Trademark Act
807.12(b) Applications Under §44 of the Trademark Act
807.12(c) Applications Under §66(a) of the Trademark Act
807.12(d) Mutilation or Incomplete Representation of Mark
807.12(e) Compound Word Marks and Telescoped Marks
807.13 Amendment of Mark
807.13(a) Amendment of Mark in Applications Under §§1 and 44
807.13(b) Mark in §66(a) Application Cannot be Amended
807.14 Material Alteration of Mark
807.14(a) Removal or Deletion of Matter from Drawing
807.14(b) Addition or Deletion of Previously Registered Matter
807.14(c) Amendments to Correct “Internal Inconsistencies”
807.14(d) Amendments to Color Features of Marks
807.14(d)(i) Black-and-White Drawings
807.14(d)(ii) Marks that Include Color and Other Elements
807.14(d)(iii) Color Marks
807.14(e) Material Alteration: Case References
807.15 Substitute Drawings
807.16 Amendment of Drawings by the Office
807.17 Procedures for Processing Unacceptable Amendments to Drawings
807.18 Mark Drawing Code
807.19 Use of Old Drawing in New Application
808 Description of Mark
808.01 Guidelines for Requiring Description
808.01(a) Letters and Numerals
808.01(b) Designs or Figurative Elements
808.01(c) Meaning of Term in Mark
808.01(d) Lining and Stippling Statements for Drawings
808.02 Description Must Be Accurate and Concise
808.03 Printing Description of Mark
809 Translation and Transliteration of Non-English Wording in Mark
809.01 Equivalency in Translation
809.02 Printing of Translations and Transliterations
810 Filing Fee
810.01 Collection of Fees for Multiple Classes
810.02 Refunds
811 Designation of Domestic Representative
812 Identification of Prior Registrations of Applicant
812.01 Proving Ownership of Prior Registrations
813 Consent to Register by Living Individual Depicted in Mark
814 Requesting Additional Information
815 Supplemental Register, Application Filed on
815.01 Marks Eligible for Principal Register Not Registrable on Supplemental Register
815.02 Elements Required
815.03 Filing on Supplemental Register is Not an Admission That the Mark Has Not Acquired Distinctiveness
815.04 Basis for Refusal of Registration of Matter That is Incapable
816 Supplemental Register, Amending Application to
816.01 How to Amend
816.02 Effective Filing Date
816.03 Amendment to Different Register
816.04 Amendment After Refusal
816.05 Amendment After Decision on Appeal
817 Preparation of Case for Publication or Registration
818 Application Checklist
819 TEAS Plus
819.01 TEAS Plus Filing Requirements
819.01(a) Type of Mark
819.01(b) Applicant’s Name and Address
819.01(c) Applicant’s Legal Entity and Citizenship
819.01(d) Name and Address for Paper Correspondence
819.01(e) E-mail Address and Authorization for the Office to Send Correspondence By E-Mail
819.01(f) Basis or Bases for Filing
819.01(f)(i) Section 1(a) - Use in Commerce
819.01(f)(ii) Section 1(b) - Intent to Use
819.01(f)(iii) Section 44(e) - Foreign Registration
819.01(f)(iv) Section 44(d)
819.01(g) Identification and Classification of Goods/Services
819.01(h) Filing Fee
819.01(i) Drawing
819.01(j) Color Claim
819.01(k) Description of the Mark
819.01(l) Verification
819.01(m) Translation and/or Transliteration
819.01(n) Multiple Class Applications
819.01(o) Consent to Registration of Name or Portrait
819.01(p) Prior Registration of the Same Mark
819.01(q) Concurrent Use Applications
819.02 Additional Requirements for a TEAS Plus Application
819.02(a) Receipt of Communications by E-Mail
819.02(b) Additional Documents That Must be Filed Through TEAS
819.03 Adding a Class During Examination
819.04 Procedures for Payment of TEAS Plus Processing Fee Per Class
Chapter 900 - Use in Commerce
901 Use in Commerce
901.01 Definitions
901.02 Bona Fide Use in the Ordinary Course of Trade
901.03 Commerce That May Be Lawfully Regulated By Congress
901.04 Inquiry Regarding Use in Commerce
901.05 Use Only by Related Company
902 Allegations of Use for §1(b) Applications
903 Dates of Use
903.01 Date of First Use Anywhere
903.02 Date of First Use in Commerce
903.03 Type of Commerce
903.04 Relation Between the Two Dates of Use
903.05 Amending Dates of Use
903.06 First Use by Predecessor or Related Company
903.07 Indefinite Dates of Use
903.07(a) Apparent Discrepancies Between Dates of Use and Date of Execution
903.08 Dates of Use in Another Form
903.09 More than One Item of Goods or Services
904 Specimens
904.01 Number of Specimens
904.01(a) More than One Item Specified in a Class
904.01(b) In Combined or Multiple-Class Applications
904.02 Physical Form of Specimens
904.02(a) Electronically Filed Specimens
904.02(b) Paper-Filed Specimens
904.02(c) Additional Requirements
904.02(c)(i) Other Materials Required for Examination
904.02(c)(ii) Specimens for Marks Comprising Color
904.02(c)(iii) Specimens for Marks Used on Publications
904.03 Material Appropriate as Specimens for Trademarks
904.03(a) Labels and Tags
904.03(b) Stampings
904.03(c) Commercial Packaging
904.03(d) Electronic and Digital Media Attachments to Paper Filings
904.03(e) Specimens for Trademarks Identifying Computer Programs, Movies, or Video Tapes
904.03(f) Specimens for Sound Marks
904.03(g) Displays Associated with Goods
904.03(h) Catalogs
904.03(i) Electronic Displays
904.03(j) Manuals
904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays
904.04 Material Not Appropriate as Specimens for Trademarks
904.04(a) Drawing or “Picture” of the Mark
904.04(b) Advertising Material
904.04(c) Package Inserts
904.05 Affidavit Supporting Substitute Specimens
904.06 Translation of Matter on Specimens
904.07 Requirements for Substitute Specimens and Statutory Refusals
904.07(a) Whether the Specimen Shows the Mark Used in Commerce
904.07(b) Whether the Specimen Shows the Applied-for Mark Functioning as a Mark
905 Method of Use
906 Federal Registration Notice
906.01 Foreign Countries That Use Registration Symbol ®
906.02 Improper Use of Registration Symbol
906.03 Informing Applicant of Apparent Improper Use
906.04 Fraud
907 Compliance with Other Statutes
Chapter 1000 - Applications Under Section 44
1001 Section 44 Applications - General
1002 Eligible Applicants Under §44
1002.01 Eligible Applicants Under §44(e)
1002.02 Eligible Applicants Under §44(d)
1002.03 Establishing Entitlement Under a Treaty
1002.04 Establishing Country of Origin
1002.05 United States Applicants
1003 Section 44(d) - Priority Filing Date Based on a Foreign Application
1003.01 The “First-Filed” Requirement
1003.02 Priority Claim Must Be Filed Within Six Months of Foreign Filing
1003.03 Basis for Registration Required
1003.04 Suspension Awaiting a Foreign Registration
1003.05 Section 44(d) and Priority for Publication
1003.06 Applicants May File Under Both §44(d) and §44(e)
1003.07 Application May be Based on More Than One Foreign Application
1003.08 Abandonment of the Foreign Application
1004 Applications Based on Foreign Registrations under §44(e)
1004.01 Copy of Foreign Registration Required
1004.01(a) Status of the Foreign Registration
1004.01(b) Translation of the Foreign Registration
1004.02 Application May be Based on More Than One Foreign Registration
1005 Ownership of the Foreign Application or Registration
1006 Assignment of §44 Applications
1007 Standards for Registration Under Section 44
1008 Bona Fide Intention to Use the Mark in Commerce
1009 Allegation of Use and Specimen of Use Not Required Prior to Registration
1010 Proof of Acquired Distinctiveness in §44 Applications
1011 Drawings
1011.01 Substantially Exact Representation of Mark in Foreign Registration
1011.02 One Mark Per Application
1011.03 Amendment of Drawing
1011.04 Drawings and Descriptions of Three-Dimensional and Non-Visual Marks
1012 Identification of Goods and Services
1013 Designation of Domestic Representative by Applicants Not Domiciled in the United States
1014 Section 44 Applications for the Supplemental Register
1015 Section 44 Registration Independent of Underlying Foreign Registration
1016 International Registration As Basis for §44 Application
Chapter 1100 — Intent-to-Use Applications and Requests to Divide
1101 Bona Fide Intention To Use the Mark In Commerce
1102 Initial Examination of Intent-to-Use Applications
1102.01 Substantive Refusals
1102.02 Drawings
1102.03 Intent-to-Use Applications and the Supplemental Register
1102.04 Claims of Acquired Distinctiveness under §2(f)
1103 Allegations of Use
1104 Amendment to Allege Use Under §1(c) of the Act
1104.01 Minimum Requirements for Filing an Amendment to Allege Use
1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements
1104.01(b) Processing an Amendment to Allege Use That Does Not Meet Minimum Filing Requirements
1104.01(c) Processing Defective Amendment to Allege Use Filed With Other Amendments
1104.02 Form of Amendment to Allege Use
1104.03 Time for Filing Amendment to Allege Use
1104.03(a) Use on All Goods Required Before Filing
1104.03(b) The “Blackout Period”
1104.03(c) Processing Amendments to Allege Use Filed During the Blackout Period
1104.04 Processing Timely Amendments to Allege Use Located After Publication
1104.05 Amendments to Allege Use Filed in Conjunction With Application
1104.06 Processing Amendments to Allege Use Received Before Application is Assigned to an Examining Attorney
1104.07 Amendments to Allege Use and Ex Parte Appeals
1104.08 Necessary Elements in a Complete Amendment to Allege Use
1104.09 Examination of Amendment to Allege Use by Examining Attorney
1104.09(a) Ownership
1104.09(b) Verification and Date of Execution
1104.09(c) Identification of Goods or Services
1104.09(d) Use in Commerce and Dates of Use
1104.09(e) Specimen
1104.09(f) Drawing
1104.09(g) Fees
1104.09(h) Issuance of Actions by Examining Attorney Related to the Amendment to Allege Use
1104.10 Amendment and Withdrawal of Amendment to Allege Use
1104.11 Approval of Amendment to Allege Use After Examination
1105 Publication of Intent-to-Use Applications for Opposition
1106 Notice of Allowance
1106.01 Issuance of the Notice of Allowance
1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance
1106.03 Cancellation of Notice of Allowance
1106.04 Correction of Errors in Notice of Allowance
1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use
1107.01 Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is Filed
1108 Requests for Extensions of Time to File the Statement of Use
1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use
1108.02 Requirements for Request for an Extension of Time to File a Statement of Use
1108.02(a) Ownership
1108.02(b) Verification
1108.02(c) Filing Fee
1108.02(d) Identification of Goods or Services
1108.02(e) Bona Fide Intention to Use the Mark in Commerce
1108.02(f) Good Cause Required for Extensions Beyond the First Six-Month Extension
1108.03 Only One Extension Request May Be Filed With or After a Statement of Use
1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney
1108.04 Recourse After Denial of Extension Request
1108.05 Petitions From Denial of Request For An Extension of Time to File Statement of Use
1109 Statement of Use Under §1(d) of the Trademark Act
1109.01 Minimum Filing Requirements for a Statement of Use
1109.02 Review for Compliance with Minimum Filing Requirements
1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements of 37 C.F.R. §2.88(e)
1109.03 Use on All Goods or Services Required Before Filing
1109.04 Time for Filing Statement of Use
1109.05 Form of Statement of Use
1109.05(a) Papers Prepared for Filing as an Amendment to Allege Use May Be Filed as a Statement of Use
1109.06 Necessary Elements in a Complete Statement of Use
1109.07 Examination of the Statement of Use — In General
1109.08 The “Clear Error” Standard in Examination of the Statement of Use
1109.09 Use in Commerce
1109.09(a) Dates of Use
1109.09(b) Specimens
1109.10 Ownership
1109.11 Verification and Execution
1109.11(a) Authority of Signatory
1109.11(b) Verification of Essential Elements
1109.11(c) Date of Execution
1109.11(d) Signature of Electronically Transmitted Statement of Use
1109.12 Drawing
1109.13 Identification of Goods and Services in Statement of Use
1109.14 Classification
1109.15 Filing Fees
1109.15(a) Processing Deficient Fees
1109.16 Correcting Defects in Statement of Use
1109.16(a) Statutory Requirements That Must Be Met Within Statutory Filing Period
1109.16(b) Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Minimum Filing Requirements
1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements
1109.16(d) Response to Office Action Required Within Six Months of Mailing Date Regardless of Expiration Date of Period for Filing the Statement of Use
1109.16(e) Applicant’s Recourse After Refusal of Registration
1109.17 Withdrawal of the Statement of Use Prohibited
1109.18 Approval of the Statement of Use
1110 Request to Divide an Application
1110.01 Time for Filing Request to Divide
1110.02 Fee for Filing Request to Divide
1110.03 Processing Request to Divide
1110.04 Dividing an Application When Statement of Use is Due
1110.05 Dividing an Application When Response to Office Action is Due
1110.06 Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board
1110.07 Dividing a §44 Application
1110.08 Dividing a §66(a) Application After Change of Ownership With Respect to Some But Not All of the Goods
1110.09 Division of Registrations
Chapter 1200 - Substantive Examination of Applications
1201 Ownership of Mark
1201.01 Claim of Ownership May Be Based on Use By Related Companies
1201.02 Identifying the Applicant in the Application
1201.02(a) Identifying the Applicant Properly
1201.02(b) Application Void if Wrong Party Identified as the Applicant
1201.02(c) Correcting Errors in How the Applicant Is Identified
1201.02(d) Operating Divisions
1201.02(e) Changes in Ownership After Application Is Filed
1201.03 Use by Related Companies
1201.03(a) Use Solely by Related Company Must be Disclosed
1201.03(b) No Explanation of Applicant’s Control Over Use of Mark by Related Companies Required
1201.03(c) Wholly Owned Related Companies
1201.03(d) Common Stockholders, Directors or Officers
1201.03(e) Sister Corporations
1201.03(f) License and Franchise Situations
1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record
1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use
1201.06 Special Situations Pertaining to Ownership
1201.06(a) Applicant Is Merely Distributor or Importer
1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located
1201.07 Related Companies and Likelihood of Confusion
1201.07(a) “Single Source” -- “Unity of Control”
1201.07(b) Appropriate Action with Respect to Assertion of Unity of Control
1201.07(b)(i) When Either Applicant or Registrant Owns All of the Other Entity
1201.07(b)(ii) When Either Applicant or Registrant Owns Substantially All of the Other Entity
1201.07(b)(iii) When the Record Does Not Support a Presumption of Unity of Control
1201.07(b)(iv) When the Record Contradicts an Assertion of Unity of Control
1202 Use of Subject Matter as Trademark
1202.01 Refusal of Matter Used Solely as a Trade Name
1202.02 Registration of Trade Dress
1202.02(a) Functionality
1202.02(a)(i) Statutory Basis for Functionality Refusal
1202.02(a)(ii) Purpose of Functionality Doctrine
1202.02(a)(iii) Background and Definitions
1202.02(a)(iii)(A) Functionality
1202.02(a)(iii)(B) “De Jure” and “De Facto” Functionality
1202.02(a)(iv) Burden of Proof in Functionality Determinations
1202.02(a)(v) Evidence and Considerations Regarding Functionality Determinations
1202.02(a)(v)(A) Utility Patents and Design Patents
1202.02(a)(v)(B) Advertising, Promotional or Explanatory Material in Functionality Determinations
1202.02(a)(v)(C) Availability of Alternative Designs in Functionality Determinations
1202.02(a)(v)(D) Ease or Economy of Manufacture in Functionality Determinations
1202.02(a)(vi) Aesthetic Functionality
1202.02(a)(vii) Functionality and Service Marks
1202.02(a)(viii) Functionality and Non-Traditional Marks
1202.02(b) Distinctiveness of Trade Dress
1202.02(b)(i) Distinctiveness and Product Design Trade Dress
1202.02(b)(ii) Distinctiveness and Product Packaging Trade Dress for Goods or Services
1202.02(c) Distinctiveness and Functionality are Separate Issues
1202.02(d) Drawing and Description of Mark in Trade Dress Applications
1202.02(e) Trade Dress in Intent-to-Use Applications
1202.02(f) Trade Dress in §44 and §66(a) Applications
1202.03 Refusal on Basis of Ornamentation
1202.03(a) Commercial Impression
1202.03(b) Practices of the Trade
1202.03(c) “Secondary Source”
1202.03(d) Evidence of Distinctiveness
1202.03(e) Ornamentation with Respect to Intent-to-Use Applications
1202.03(f) Ornamentation: Case References
1202.03(f)(i) Slogans or Words Used on the Goods
1202.03(f)(ii) Designs Used on the Goods
1202.03(f)(iii) Trade Dress on the Containers for the Goods
1202.03(g) Ornamentation Cases and Acquired Distinctiveness
1202.04 Informational Matter
1202.05 Color as a Mark
1202.05(a) Color Marks Never Inherently Distinctive
1202.05(b) Functional Color Marks Not Registrable
1202.05(c) Color as a Separable Element
1202.05(d) Drawings of Color Marks Required
1202.05(d)(i) Drawings of Color Marks in Trademark Applications
1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications
1202.05(d)(iii) Drawings for Marks Including Both Color and Words or Design
1202.05(e) Written Explanation of a Color Mark
1202.05(f) Specimens for Color Marks
1202.05(g) Special Considerations for Service Mark Applications
1202.05(h) Applications for Color Marks Based on Intent-to-Use
1202.05(i) Applications for Color Marks Based on §44 or §66(a)
1202.06 Goods in Trade
1202.06(a) Goods Must Have Utility to Others
1202.06(b) Registration Must Be Refused if Trademark Not Used on Goods in Trade
1202.06(c) “Goods in Trade” in Intent-to-Use Applications
1202.07 Marks That Identify Columns or Sections of Publications
1202.07(a) Marks That Identify Columns or Sections of Printed Publications
1202.07(a)(i) Syndicated Columns and Sections
1202.07(a)(ii) Non-Syndicated Columns and Sections
1202.07(a)(iii) Marks That Identify Columns and Sections of Printed Publications in Intent-to-Use Applications
1202.07(b) Marks That Identify Columns and Sections of Online Publications
1202.08 Title of a Single Creative Work
1202.08(a) What Constitutes a Single Creative Work
1202.08(b) What Does Not Constitute a Single Creative Work
1202.08(c) Complete Title of the Work – Evidence of a Series
1202.08(d) Portion of a Title of the Work
1202.08(d)(i) Mark Must Create a Separate Commercial Impression
1202.08(d)(ii) Establishing a Series When the Mark is a Portion of the Title
1202.08(d)(iii) Evidence that the Portion of the Title is Promoted or Recognized as a Mark
1202.08(e) Identification of Goods/Services
1202.08(f) Title of a Single Work in an Intent-to-Use Application
1202.09 Names of Artists and Authors
1202.09(a) Names And Pseudonyms of Authors and Performing Artists
1202.09(a)(i) Author or Performer’s Name - Evidence of a Series
1202.09(a)(ii) Evidence that the Name is a Source Identifier
1202.09(a)(ii)(A) Promotion and Recognition of the Name
1202.09(a)(ii)(B) Control over the Nature and Quality of the Goods
1202.09(a)(iii) Names of Authors and Performing Artists in Intent-to-Use Applications
1202.09(b) Names of Artists Used on Original Works of Art
1202.10 Names and Designs of Characters in Creative Works
1202.11 Background Designs and Shapes
1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants)
1202.13 Scent, Fragrance or Flavor
1202.14 Holograms
1202.15 Sound Marks
1202.16 Model or Grade Designations
1203 Refusal on Basis of Immoral or Scandalous Matter; Deceptive Matter; Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.01 Immoral or Scandalous Matter
1203.02 Deceptive Matter
1203.02(a) Distinction between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1))
1203.02(b) Deceptive Matter: Case References
1203.03 Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.03(a) “Persons” Defined
1203.03(b) “National Symbols” Defined
1203.03(c) Disparagement, Bringing into Contempt and Bringing into Disrepute
1203.03(d) Disparagement, Bringing into Contempt and Bringing into Disrepute: Case References
1203.03(e) False Suggestion of a Connection
1203.03(f) False Suggestion of a Connection: Case References
1204 Refusal on Basis of Flag, Coat of Arms or Other Insignia of United States, State or Municipality, or Foreign Nation
1205 Refusal on Basis of Matter Protected by Statute or Convention
1205.01 Statutory Protection
1205.01(a) Examination Procedures for Marks Comprising a Red Crystal or Red Crescent on a White Background; or the Phrases “Red Crescent” or “Third Protocol Emblem”
1205.01(a)(i) First Use After December 8, 2005
1205.01(a)(ii) First Use On or Before December 8, 2005 – Grandfather Clause
1205.01(a)(iii) Date of First Use Not Specified
1205.01(a)(iv) Nature of the Mark
1205.01(a)(v) Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation
1205.01(a)(vi) Parties Authorized to use the Red Crescent and Third Protocol Emblem
1205.02 Article 6ter of the Paris Convention
1206 Refusal on Basis of Name, Portrait or Signature of Particular Living Individual or Deceased U.S. President Without Consent
1206.01 Name, Portrait or Signature
1206.02 Particular Living Individual or Deceased U.S. President
1206.03 Consent of Individual or President’s Widow Required
1206.03(a) Consent Must Be Written Consent to Registration
1206.03(b) Implicit Consent
1207 Refusal on Basis of Likelihood of Confusion, Mistake or Deception
1207.01 Likelihood of Confusion
1207.01(a) Relatedness of the Goods or Services
1207.01(a)(i) Goods or Services Need Not Be Identical
1207.01(a)(ii) Goods May Be Related to Services
1207.01(a)(ii)(A) Food and Beverage Products Versus Restaurant Services
1207.01(a)(iii) Reliance on Identification of Goods/Services in Registration and Application
1207.01(a)(iv) No “Per Se” Rule
1207.01(a)(v) Expansion of Trade Doctrine
1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services
1207.01(b) Similarity of the Marks
1207.01(b)(i) Word Marks
1207.01(b)(ii) Similarity In Appearance
1207.01(b)(iii) Comparing Marks That Contain Additional Matter
1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents
1207.01(b)(v) Similarity in Meaning
1207.01(b)(vi) Doctrine of Foreign Equivalents
1207.01(b)(vii) Transposition of Terms
1207.01(b)(viii) Marks Consisting of Multiple Words
1207.01(b)(ix) Weak or Descriptive Marks
1207.01(b)(x) Parody Marks
1207.01(c) Design Marks
1207.01(c)(i) Legal Equivalents - Comparison of Words and Their Equivalent Designs
1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs
1207.01(c)(iii) Comparison of Standard Character Marks and Special Form Marks
1207.01(c)(iv) Matter Depicted in Broken Lines
1207.01(d) Miscellaneous Considerations
1207.01(d)(i) Doubt Resolved in Favor of Registrant
1207.01(d)(ii) Absence of Actual Confusion
1207.01(d)(iii) Third-Party Registrations and Evidence of Third-Party Use
1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding
1207.01(d)(v) Classification of Goods/Services
1207.01(d)(vi) Prior Decisions of Examining Attorneys
1207.01(d)(vii) Sophisticated Purchasers
1207.01(d)(viii) Consent Agreements
1207.01(d)(ix) Fame of Mark
1207.01(d)(x) Conflicting Marks Owned by Different Parties
1207.02 Marks That Are Likely to Deceive
1207.03 Marks Previously Used in United States but Not Registered
1207.04 Concurrent Use Registration
1207.04(a) Concurrent Use – In General
1207.04(b) Filing Basis of Application Seeking Concurrent Use
1207.04(c) Basis for Concurrent Use Registration
1207.04(d) Determining Eligibility for Concurrent Use
1207.04(d)(i) Requirements for All Concurrent Use Applications
1207.04(e) Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board
1207.04(e)(i) Preparing the File for Publication
1207.04(f) Application for Concurrent Use Registration Pursuant to Court Decree
1207.04(f)(i) Preparing the File for Publication
1208 Conflicting Marks in Pending Applications
1208.01 Priority for Publication or Issue Based on Effective Filing Date
1208.01(a) What Constitutes Conflict Between Pending Applications
1208.01(b) What Constitutes Effective Filing Date
1208.01(c) Change in Effective Filing Date During Examination
1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival
1208.02 Conflicting Applications Examination Procedure
1208.02(a) Examination of Application with Earliest Effective Filing Date
1208.02(b) Action on Later-Filed Application: Giving Notice of the Earlier Application or Applications
1208.02(c) Suspension of Later-Filed Application
1208.02(d) Action on Later-Filed Application upon Disposition of the Earlier Application or Applications
1208.02(e) Applicant’s Argument on Issues of Conflict
1208.02(f) Conflicting Mark Mistakenly Published or Approved for Issuance on the Supplemental Register
1208.03 Procedure Relating to Possibility of Interference
1208.03(a) Procedures on Request for Interference
1208.03(b) Decision on Request for Interference
1208.03(c) Procedure When Interference Is to be Declared
1209 Refusal on Basis of Descriptiveness
1209.01 Distinctiveness/Descriptiveness Continuum
1209.01(a) Fanciful, Arbitrary and Suggestive Marks
1209.01(b) Merely Descriptive Marks
1209.01(c) Generic Terms
1209.01(c)(i) Test
1209.01(c)(ii) Terminology
1209.01(c)(iii) Generic Matter: Case References
1209.02 Procedure for Descriptiveness and/or Genericness Refusal
1209.03 Considerations Relevant to Determination of Descriptiveness
1209.03(a) Third-Party Registrations
1209.03(b) No Dictionary Listing
1209.03(c) First or Only User
1209.03(d) Combined Terms
1209.03(e) More Than One Meaning
1209.03(f) Picture or Illustration
1209.03(g) Foreign Equivalents/Dead or Obscure Languages
1209.03(h) Incongruity
1209.03(i) Intended Users
1209.03(j) Phonetic Equivalent
1209.03(k) Laudatory Terms
1209.03(l) Telephone Numbers
1209.03(m) Domain Names
1209.03(n) “America” or “American”
1209.03(o) “National” or “International”
1209.03(p) Function or Purpose
1209.03(q) Source or Provider of Goods or Services
1209.03(r) Retail Store and Distributorship Services
1209.03(s) Slogans
1209.03(t) Repetition of Descriptive Term
1209.03(u) Punctuation
1209.04 Deceptively Misdescriptive Marks
1210 Refusal on Basis of Geographic Significance
1210.01 Elements
1210.01(a) Geographically Descriptive Marks - Test
1210.01(b) Geographically Deceptively Misdescriptive Marks - Test
1210.01(c) Geographically Deceptive Marks - Test
1210.02 Primarily Geographic Significance
1210.02(a) Geographic Locations
1210.02(b) Primary Significance
1210.02(b)(i) Other Meanings
1210.02(b)(i)(A) Surname Significance
1210.02(b)(ii) More Than One Geographic Location With Same Name
1210.02(b)(iii) Non-Geographic Characteristics of Goods or Services
1210.02(b)(iv) “America” or “American” and Similar Terms in Marks
1210.02(c) Geographic Terms Combined With Additional Matter
1210.02(c)(i) Two Geographic Terms Combined
1210.02(c)(ii) Geographic Terms Combined With Descriptive or Generic Matter
1210.02(c)(iii) Arbitrary, Fanciful or Suggestive Composites
1210.03 Geographic Origin of the Goods or Services
1210.04 Goods/Place or Services/Place Association
1210.04(a) Establishing Goods/Place Association
1210.04(b) Establishing Services/Place Association
1210.04(c) Obscure or Remote Geographic Marks
1210.04(d) Arbitrary Use of Geographic Terms
1210.05 Geographically Deceptive Marks
1210.05(a) Basis for Refusal
1210.05(b) Materiality of Deception
1210.05(b)(i) Materiality of Deception In Cases Involving Goods
1210.05(b)(ii) Materiality of Deception In Cases Involving Services
1210.06 Procedure for Examining Geographic Composite Marks
1210.06(a) Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter
1210.06(b) Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter
1210.07 Supplemental Register and Section 2(f)
1210.07(a) Registrability of Geographic Terms on the Supplemental Register
1210.07(b) Registrability of Geographic Terms Under Section 2(f)
1210.08 Geographical Indications Used on Wines and Spirits
1210.08(a) Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place
1210.08(b) Geographical Indications Used on Wines and Spirits That Originate in the Named Place
1210.08(c) Geographical Indications That Are Generic for Wines and Spirits
1210.09 Geographic Certification Marks
1211 Refusal on Basis of Surname
1211.01 “Primarily Merely a Surname”
1211.01(a) Non-Surname Significance
1211.01(a)(i) Ordinary Language Meaning
1211.01(a)(ii) Phonetic Equivalent of Term With Ordinary Language Meaning
1211.01(a)(iii) Geographical Significance
1211.01(a)(iv) Historical Place or Person
1211.01(a)(v) Rare Surnames
1211.01(a)(vi) “Look And Feel” of a Surname
1211.01(a)(vii) Doctrine of Foreign Equivalents
1211.01(b) Surname Combined with Additional Matter
1211.01(b)(i) Double Surnames
1211.01(b)(ii) Stylization or Design Elements
1211.01(b)(iii) Surname Combined with Initials
1211.01(b)(iv) Surname Combined with Title
1211.01(b)(v) Surname in Plural or Possessive Form
1211.01(b)(vi) Surname Combined with Wording
1211.01(b)(vii) Surname Combined With Domain Name
1211.02 Evidence Relating to Surname Refusal
1211.02(a) Evidentiary Burden - Generally
1211.02(b) Evidentiary Considerations
1211.02(b)(i) Telephone Directory Listings
1211.02(b)(ii) LEXIS-NEXIS® Research Database Evidence
1211.02(b)(iii) Surname of Person Associated with Applicant
1211.02(b)(iv) Specimens Confirming Surname Significance of Term
1211.02(b)(v) Negative Dictionary Evidence
1211.02(b)(vi) Evidence of Fame of a Mark
1212 Acquired Distinctiveness or Secondary Meaning
1212.01 General Evidentiary Matters
1212.02 General Procedural Matters
1212.02(a) Situations in which a Claim of Distinctiveness under §2(f) Is Appropriate
1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive
1212.02(c) Claiming §2(f) Distinctiveness in the Alternative
1212.02(d) Unnecessary §2(f) Claims
1212.02(e) Disclaimers in Applications Claiming Distinctiveness under §2(f)
1212.02(f) Section 2(f) Claim in Part (as to a Portion of the Mark)
1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or Appropriate Kind/Amount of Evidence
1212.02(h) Non-Final and Final Refusals
1212.02(i) Section 2(f) Claim with Respect to Incapable Matter
1212.03 Evidence of Distinctiveness Under §2(f)
1212.04 Prior Registrations as Proof of Distinctiveness
1212.04(a) Sufficiency of Claim vis-à-vis Nature of the Mark
1212.04(b) “Same Mark”
1212.04(c) Relatedness of Goods or Services
1212.04(d) Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905
1212.04(e) Form of §2(f) Claim Based on Ownership of Prior Registrations
1212.05 Five Years of Use as Proof of Distinctiveness
1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark
1212.05(b) “Substantially Exclusive and Continuous”
1212.05(c) Use “as a Mark”
1212.05(d) Form of the Proof of Five Years’ Use
1212.06 Establishing Distinctiveness by Actual Evidence
1212.06(a) Long Use of the Mark
1212.06(b) Advertising Expenditures
1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator
1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies
1212.06(e) Miscellaneous Considerations Regarding Evidence Submitted to Establish Distinctiveness
1212.06(e)(i) First or Only User
1212.06(e)(ii) State Trademark Registrations
1212.06(e)(iii) Design Patent
1212.06(e)(iv) Acquiescence to Demands of Competitors
1212.07 Form of Application Asserting Distinctiveness
1212.08 Section 44 and §66(a) Applications and Distinctiveness
1212.09 Intent-to-Use Applications and Distinctiveness
1212.09(a) Section 2(f) Claim Requires Prior Use
1212.09(b) Claim of §2(f) “in Part” in §1(b) Application
1212.10 Printing “§2(f)” Notations
1213 Disclaimer of Elements in Marks
1213.01 History of Disclaimer Practice
1213.01(a) Discretion in Requiring Disclaimer
1213.01(b) Refusal to Register Because of Failure to Disclaim
1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter
1213.02 “Composite” Marks
1213.03 Disclaimer of Unregistrable Components of Marks
1213.03(a) “Unregistrable Components” in General
1213.03(b) Generic Matter and Matter Which Does Not Function as a Mark
1213.03(c) Pictorial Representations of Descriptive Matter
1213.03(d) Entity Designations
1213.04 Trade Names
1213.05 “Unitary” Marks
1213.05(a) Compound Word Marks
1213.05(a)(i) Telescoped Words
1213.05(a)(ii) Compound Words Formed with Hyphen or Other Punctuation
1213.05(b) Slogans
1213.05(c) “Double Entendre”
1213.05(d) Incongruity
1213.05(e) Sound Patterns
1213.05(f) Display of Mark
1213.06 Entire Mark May Not Be Disclaimed
1213.07 Removal Rather than Disclaimer
1213.08 Form of Disclaimers
1213.08(a) Wording of Disclaimer
1213.08(a)(i) Standardized Printing Format for Disclaimer
1213.08(a)(ii) Unacceptable Wording for Disclaimer
1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety
1213.08(c) Disclaimer of Misspelled Words
1213.08(d) Disclaimer of Non-English Words
1213.09 Mark of Another May Not Be Registered with Disclaimer
1213.10 Disclaimer in Relation to Likelihood of Confusion
1213.11 Acquiring Rights in Disclaimed Matter
1214 “Phantom” Elements in Marks
1214.01 Single Application May Seek Registration of Only One Mark
1214.02 Agreement of Mark on Drawing With Mark on Specimens or Foreign Registration
1214.03 “Phantom Marks” in Intent-to-Use Applications
1214.04 “Phantom Marks” in §44 and §66(a) Applications
1215 Marks Composed, in Whole or in Part, of Domain Names
1215.01 Background
1215.02 Use as a Mark
1215.02(a) Use Applications
1215.02(b) Advertising One’s Own Products or Services on the Internet is not a Service
1215.02(c) Agreement of Mark on Drawing with Mark on Specimens of Use
1215.02(d) Marks Comprised Solely of TLDs for Domain Name Registry Services
1215.02(e) Intent-to-Use Applications
1215.02(f) Section 44 and §66(a) Applications
1215.03 Surnames
1215.04 Descriptiveness
1215.05 Generic Refusals
1215.06 Marks Containing Geographical Matter
1215.07 Disclaimers
1215.08 Material Alteration
1215.08(a) Adding or Deleting TLDs in Domain Name Marks
1215.08(b) Adding or Deleting TLDs in Other Marks
1215.09 Likelihood of Confusion
1215.10 Marks Containing the Phonetic Equivalent of a Top-Level Domain
1216 Effect of Applicant’s Prior Registrations
1216.01 Decisions Involving Prior Registrations Not Controlling
1216.02 Effect of “Incontestability” in Ex Parte Examination
1217 Res Judicata, Collateral Estoppel and Stare Decisis
Chapter 1300 - Examination of Different Types of Marks
1301 Service Marks
1301.01 What Is a Service
1301.01(a) Criteria for Determining What Constitutes a Service
1301.01(a)(i) Performance of a Real Activity
1301.01(a)(ii) For the Benefit of Others
1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Sale of Goods or Performance of Other Services
1301.01(b) Whether Particular Activities Constitute “Services”
1301.01(b)(i) Contests and Promotional Activities
1301.01(b)(ii) Warranty or Guarantee of Repair
1301.01(b)(iii) Publishing One’s Own Periodical
1301.01(b)(iv) Soliciting Investors
1301.01(b)(v) Informational Services Ancillary to the Sale of Goods
1301.02 What Is a Service Mark
1301.02(a) Matter That Does Not Function as a Service Mark
1301.02(b) Names of Characters or Personal Names as Service Marks
1301.02(c) Three-Dimensional Service Marks
1301.02(d) Titles of Radio and Television Programs
1301.02(e) Process, System or Method
1301.02(f) Computer Software
1301.03 Use of Service Mark in Commerce
1301.03(a) Use of Service Mark in Advertising to Identify Services
1301.03(b) Rendering of Service in Commerce Regulable by Congress
1301.04 Specimens of Use for Service Marks
1301.04(a) Specimens Must Show Use as a Service Mark
1301.04(b) Association Between Mark and Services
1301.04(c) Letterhead
1301.04(d) Specimens for Entertainment Services
1301.05 Identification and Classification of Services
1302 Collective Marks Generally
1302.01 History of Collective Marks
1303 Collective Trademarks and Collective Service Marks
1303.01 Use of Collective Trademark and Collective Service Mark Is By Members
1303.02 Examination of Collective Trademark and Collective Service Mark Applications
1303.02(a) Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications
1303.02(b) Specimens of Use for Collective Trademark and Collective Service Mark Applications
1303.02(c) Special Elements of Collective Trademark and Collective Service Mark Applications
1303.02(c)(i) Manner of Control
1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause
1304 Collective Membership Marks
1304.01 History of Membership Marks
1304.02 Purpose of Membership Mark
1304.03 Use of Membership Mark Is by Members
1304.04 Who May Apply to Register Membership Mark
1304.05 Who May Own Membership Mark
1304.06 Nature of the Collective Group
1304.07 Character of the Mark
1304.08 Refusal to Register Membership Mark
1304.08(a) Matter That Does Not Function as a Membership Mark
1304.08(b) Likelihood of Confusion
1304.08(c) Degree or Title Designations Contrasted to Membership Marks
1304.09 Examination of Collective Membership Mark Applications
1304.09(a) Classification in Membership Mark Applications
1304.09(b) Identifications in Membership Mark Applications
1304.09(c) Specimens of Use for Membership Marks
1304.09(d) Special Elements of Applications for Collective Membership Marks
1304.09(d)(i) Exercise of Control
1304.09(d)(ii) Manner of Control
1304.09(d)(iii) Use by Members Indicated in Dates-of-Use Clause
1305 Trademarks and Service Marks Used by Collective Organizations
1306 Certification Marks
1306.01 Definition of Certification Mark
1306.01(a) Use Is by Person Other than Owner
1306.01(b) Purpose Is to Certify, Not to Indicate Source
1306.02 Certification Marks That Are Indications of Regional Origin
1306.02(a) Indicating the Region
1306.02(b) Authority to Control a Geographical Term
1306.02(c) The Government as Applicant for a Geographical Certification Mark
1306.03 Certification Marks Certifying that Labor Was Performed by Specific Group or Individual
1306.04 Ownership of Certification Marks
1306.05 Characteristics of Certification Marks
1306.05(a) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark
1306.05(b) Cancellation of Applicant’s Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa
1306.06 Examination of Certification Mark Applications
1306.06(a) Refusal to Register Certification Mark
1306.06(b) The Mark on the Drawing
1306.06(c) Specimens of Use for Certification Marks
1306.06(d) Relation Between Certification Mark and Trademark or Service Mark on Specimens
1306.06(e) Classification of Goods and Services in Certification Mark Applications
1306.06(f) Identification of Goods and Services in Certification Mark Applications
1306.06(g) Special Elements of Certification Mark Applications
1306.06(g)(i) Statement of What the Mark Certifies
1306.06(g)(ii) Standards
1306.06(g)(iii) Exercise of Control
1306.06(g)(iv) Use by Others Indicated in Dates-of-Use Clause
1306.06(g)(v) Statement That Mark is Not Used by Applicant
1306.06(g)(vi) Amendment to Different Type of Mark
1306.07 Relationship of §14 (Cancellation) to Examination of Certification Mark Applications
1306.08 Registration of Certification Mark on Basis of Foreign Registration
1306.09 Uncertainty Regarding Type of Mark
1306.09(a) Distinction Between Certification Mark and Collective Mark
1306.09(b) Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark
1306.09(c) Patent Licenses
1307 Registration as Correct Type of Mark
Chapter 1400 — Classification and Identification of Goods and Services
1401 Classification
1401.01 Statutory Authority
1401.02 International Trademark Classification Adopted
1401.02(a) Headings of International Trademark Classes
1401.02(b) Short Titles for International Trademark Classes
1401.02(c) International Alphabetical List
1401.03 Designation of Class
1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44
1401.03(b) Designation of Class by Office When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44
1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44
1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications
1401.04 Classification Determines Number of Fees
1401.04(a) Prior United States Classification System
1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid
1401.05 Criteria on Which International Classification Is Based
1401.06 Specimens as Related to Classification
1401.06(a) Specimen Discloses Special Characteristics
1401.07 Classification and Plurality of Uses
1401.08 Classification and the Identification of Goods and Services, In General
1401.09 Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement
1401.09(a) Elimination of “Miscellaneous Class Designation”
1401.10 General Summary of Major Changes in Practice Based on the 9th Edition of the Nice Agreement
1401.10(a) Legal Services Transferred to International Class 45
1401.10(b) Goods Made of Precious Metal are Classified According to Their Function
1401.10(c) Transfer of Aquaria and Related Items
1401.11 Implementation of Changes to the Nice Agreement
1402 Identification of Goods and Services
1402.01 Specifying the Goods and/or Services - in General
1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services
1402.01(b) Identification of Goods and Services in a §44 Application
1402.01(c) Identification of Goods and Services in a §66(a) Application
1402.01(d) Location of “Identification of Goods and Services”
1402.01(e) Responsibilities of Examining Attorney as to Identification
1402.02 Entitlement to Filing Date With Respect to Specification of Goods and Services
1402.03 Specificity of Terms Used in Identifying Goods and Services
1402.03(a) Inclusive Terminology
1402.03(b) House Marks
1402.03(c) Marks for a “Full Line of ...”
1402.03(d) Identifying Computer Programs with Specificity
1402.03(e) Identifying Publications with Specificity
1402.04 Acceptable Identification of Goods and Services Manual
1402.05 Accuracy of Identification
1402.05(a) Goods That Are Components or Ingredients
1402.05(b) Material Composition
1402.06 Amendments Permitted to Clarify or Limit Identification
1402.06(a) Limiting the Identification of Goods and Services
1402.06(b) Clarifying the Identification of Goods and Services
1402.07 Scope of Identification of Goods and Services for Purposes of Amendment
1402.07(a) The “Ordinary-Meaning” Test
1402.07(b) Ambiguous Identifications
1402.07(c) Unambiguous Identifications
1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable
1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Accepted
1402.08 Moving Goods and Services Between Companion Applications
1402.09 Use of Marks Inappropriate in Identifications
1402.10 Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications
1402.11 Identification of Services
1402.11(a) Computer Services
1402.11(b) Information Services
1402.11(c) Association Services and “Promoting the Interest of” Services
1402.11(d) Charitable Services, Other than Monetary
1402.11(e) Consulting Services
1402.12 Parentheses and Brackets Should Not be Used in Identifications of Goods and Services
1402.13 Requirement For Amendment of Portion of Identification of Goods/Services
1402.14 Identification of Goods/Services Must Conform to Rules and Policies in Effect at the Time Registration is Sought
1403 Combined or Multiple-Class Application
1403.01 Requirements for Combined or Multiple-Class Application
1403.02 Amendment of Combined or Multiple-Class Application
1403.02(a) Deletion of Classes
1403.02(b) Correction of Classification
1403.02(c) Addition of Classes
1403.03 Dividing of Combined or Multiple-Class Application
1403.04 Combined or Multiple-Class Marks in Official Gazette
1403.05 Action After Filing, Multiple Classes
1403.05(a) Fees for Action After Filing, Multiple Classes
1403.05(b) Surrender or Amendment in Multiple-Class Registrations
Chapter 1500 - Post-Examination Procedures
1501 Appeal to Trademark Trial and Appeal Board
1501.01 Appealable Matter
1501.02 Examining Attorney’s Appeal Brief
1501.02(a) Reply Briefs in Ex Parte Appeals
1501.03 Withdrawal of Refusal or Requirement After Appeal
1501.04 Fee for Appeal
1501.05 Amendment During Appeal
1501.06 Amendment After Decision on Appeal
1501.07 Examining Attorney’s Request for Reconsideration
1502 Publication in Trademark Official Gazette
1502.01 Notification of Errors in Trademark Official Gazette
1503 Opposition
1503.01 Filing a Notice of Opposition
1503.02 Joining Persons in an Opposition
1503.03 Time for Opposing
1503.04 Extension of Time to Oppose
1503.05 Opposition to §66(a) Applications
1504 Jurisdiction over Application
1504.01 Jurisdiction of Examining Attorney
1504.02 Jurisdiction of Trademark Trial and Appeal Board
1504.03 Action By Examining Attorney After Publication
1504.04 Restoration of Jurisdiction to Examining Attorney by Director
1504.04(a) Request for Jurisdiction
1504.05 Remand to Examining Attorney by Trademark Trial and Appeal Board
1504.05(a) Request for Remand
1505 Amendments Filed by Applicants After Publication
1505.01 Procedures for Processing Amendments Filed by the Applicant After Publication
1505.01(a) Form and Timing of Amendments
1505.01(b) Processing Amendments to §§1(a), 44 and 66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued
1505.01(b)(i) Acceptable Amendments
1505.01(b)(ii) Unacceptable Amendments
1505.01(c) Processing Amendments to §1(b) Applications In Cases Where No Opposition Has Been Filed and No Notice of Allowance Has Issued
1505.01(c)(i) Acceptable Amendments
1505.01(c)(ii) Unacceptable Amendments
1505.01(d) Processing Amendments Filed Between Issuance of the Notice of Allowance and Filing of Statement of Use
1505.01(e) Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted
1505.01(f) Processing Amendments in Cases Where an Opposition Has Been Filed
1505.02 Types of Amendments After Publication
1505.02(a) Amendments to the Identification of Goods or Services
1505.02(b) Amendments to Classification
1505.02(c) Amendments to Marks
1505.02(d) Amendments to the Dates of Use
1505.02(e) Amendments Adding or Deleting Disclaimers
1505.02(f) Amendment of the Basis
1505.02(g) Amendments to the Applicant’s Name, Citizenship, or Entity Type
1506 Concurrent Use Registration Proceeding
1507 Interference
Chapter 1600 - Registration and Post Registration Procedures
1601 Types of Registrations
1601.01 Registrations Now Being Issued
1601.01(a) Certificate of Registration
1601.01(b) Duplicate Certificate of Registration
1601.01(c) Registered Extension of Protection of International Registration to the United States
1601.02 Repeal of Prior Acts
1601.03 Additional Registration under Act of 1946
1601.04 1881 and 1905 Act Registrations
1601.05 1920 Act Registrations
1601.06 Registrations Issued Under Prior Classification Systems
1601.07 Form of Copies of Registrations
1602 Duration and Maintenance of Registrations
1602.01 Act of 1946
1602.02 Acts of 1881 and 1905
1602.03 Act of 1920
1602.04 Trademark Law Treaty Implementation Act Changes
1603 Bringing Prior Act Registrations Under 1946 Act, §12(c)
1603.01 Notification and Printing of Mark in Official Gazette
1603.02 Cancellation and Incontestability
1603.03 Affidavits of Use in Commerce Required
1604 Affidavit of Use or Excusable Nonuse of Mark in Commerce under §8
1604.01 Registrations to Which §8 Affidavit Pertains
1604.02 Notice of When Affidavit Is Due
1604.03 Form for Filing §8 Affidavit
1604.04 Time for Filing §8 Affidavit
1604.04(a) Premature Filing of §8 Affidavit
1604.04(b) Registrations in Twenty-Year Terms
1604.05 Requirements for §8 Affidavit or Declaration of Use or Excusable Nonuse
1604.06 Fees for §8 Affidavit
1604.06(a) Filing Fee for Affidavit or Declaration
1604.06(b) Grace Period Surcharge and Deficiency Surcharge
1604.06(c) Processing Affidavit or Declaration Filed With Insufficient Fees
1604.07 Ownership, and Who May File §8 Affidavit
1604.07(a) Affidavit or Declaration Must be Filed by Owner
1604.07(b) Establishing Ownership
1604.07(c) Acceptance Notice Issued in Name of Owner of Record
1604.07(d) Changes of Legal Entity
1604.07(e) Changes of Name
1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner
1604.08 Execution of Affidavit or Declaration
1604.08(a) Persons Who May Sign Affidavit or Declaration
1604.08(b) Date of Execution of Affidavit or Declaration
1604.08(c) Signature of Electronically Transmitted Affidavit or Declaration
1604.08(d) Form and Wording of Verification
1604.09 Goods and/or Services Set Forth in §8 Affidavit or Declaration
1604.09(a) Goods and/or Services Must be Specified or Expressly Incorporated by Reference
1604.09(b) Deletion of Goods and/or Services
1604.09(c) Failure to List All Goods and/or Services Recited in Registration
1604.09(d) New Goods and/or Services Cannot be Added
1604.10 Use in Commerce
1604.11 “Excusable Nonuse” of Mark
1604.12 Specimen Showing Current Use of Mark in Commerce
1604.12(a) Specimen for Each Class Required
1604.12(b) Specimens in Electronically Filed Affidavits
1604.12(c) Substitute Specimens
1604.13 Differences in the Mark as Used on the Specimen and the Mark as Registered
1604.13(a) Possible Amendment of Mark in Registration
1604.14 Designation of Domestic Representative by Foreign Owner
1604.15 Office Actions and Notices Regarding Affidavit
1604.16 Response to Office Action
1604.17 Correction of Deficiencies in §8 Affidavit
1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act
1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period
1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period
1604.18 Petition Under 37 C.F.R. §2.146
1604.18(a) Response to Examiner’s Refusal Required Before Petition
1604.18(b) Decision on Petition is Final Action of the Office
1604.18(c) Request for Reconsideration of Denial of Petition
1604.18(d) Appeal to Federal Court
1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application
1605 Affidavit of Incontestability Under §15
1605.01 Registrations to Which §15 Affidavit Pertains
1605.02 Form for Filing Affidavit of Incontestability
1605.03 Time for Filing Affidavit of Incontestability
1605.04 Requirements for Affidavit or Declaration of Incontestability
1605.05 Combining §15 Affidavit with §8 Affidavit
1605.06 Section 14 Limitation is Independent of §15 Affidavit
1606 Renewal of Registration Under Trademark Act §9
1606.01 Which Registrations Must be Renewed Under §9
1606.01(a) Registrations Based on Applications Under §1 or §44 Must Be Renewed Under §9
1606.01(b) Section 9 Does Not Apply to Extensions of Protection of International Registrations to the United States
1606.01(c) Renewal of Registrations Issued Under Prior U.S. Trademark Acts Must Be Renewed Under §9
1606.02 Requirements for Renewal Under §9
1606.03 Time for Filing §9 Renewal Application
1606.03(a) Premature Filing of §9 Renewal Application
1606.04 Form for Filing §9 Renewal Application
1606.05 Fees for §9 Renewal Applications
1606.05(a) Fee for Filing Application for Renewal Under §9
1606.05(b) Grace Period Surcharge and Deficiency Surcharge
1606.05(c) Processing §9 Renewal Application Filed with Insufficient Fees
1606.06 Ownership, and Who May File §9 Renewal Application
1606.07 Execution of §9 Renewal Application
1606.08 Goods and/or Services Set Forth in §9 Renewal Application
1606.08(a) Listing of Goods and/or Services Required Only for Partial Renewal
1606.08(b) No Goods or Services Listed
1606.08(c) Some Goods and/or Services Listed
1606.08(d) Goods and/or Services Not Listed in Registration May Not Be Listed in Renewal Application
1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required
1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal Under §9
1606.11 Office Actions and Notices Regarding §9 Renewal Application
1606.12 Response to Office Action
1606.13 Correction of Deficiencies in §9 Renewal Applications
1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration
1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period
1606.13(c) Late Filing Cannot be Cured
1606.14 Petition Under 37 C.F.R. §2.146
1606.14(a) Response to Examiner’s Refusal Required Before Petition
1606.14(b) Decision on Petition is Final Action of the Office
1606.14(c) Request for Reconsideration of Denial of Petition
1606.14(d) Appeal to Federal Court
1606.15 Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse
1607 Cancellation of Registrations Under §§14 and 37 of the Trademark Act
1608 Surrender of Registration for Cancellation
1609 Amendment and Correction of Registrations
1609.01 Amendment of Registration - In General
1609.01(a) Registered Extension of Protection Cannot be Amended Under §7
1609.01(b) Amendment of Registration Resulting From §1 or §44 Application
1609.02 Amendment of Mark
1609.02(a) Determining What Constitutes Material Alteration of Mark
1609.02(b) New Drawing Required
1609.02(c) Supporting Specimen and Declaration
1609.02(d) Amendment of Black-and-White Drawing of Mark for Which Color is Claimed to Substitute Color Drawing
1609.02(e) Amendment of Black-and-White Drawing to Color Drawing
1609.02(f) Amendment to Special Form Drawing Containing Black, White, and/or Gray
1609.03 Amendment of Identification of Goods or Services
1609.04 Amendment of Classification
1609.05 Disclaimer of Mark
1609.06 Territorial Restrictions
1609.07 Dates of Use
1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration
1609.09 Amendment from Supplemental to Principal Register Not Permitted
1609.10 Correction of Mistake in Registration
1609.10(a) Correction of Office Error
1609.10(b) Correction of Registrant’s Error
1609.11 Change of Owner’s Address Can Be Filed Through TEAS
1610 Court Orders Concerning Registrations
1611 Updating Automated Records to Show the Status of Registrations
1612 Powers of Attorney and Designations of Domestic Representative Filed After Registration
1613 Affidavit of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act
1614 Renewal of Registered Extension of Protection
1615 Division of Registrations
1615.01 Division of Registration Based on Application Under §1 or §44 of the Trademark Act
1615.02 Division of Registered Extension of Protection
1616 Replacement
Chapter 1700 - Petitions, Requests for Reinstatement, and Other Matters Submitted to Director
1701 Statutory Authority of Director
1702 Petitions to the Director Under 37 C.F.R. §2.146 - In General
1703 Specific Types of Petitions
1704 Petitionable Matter
1705 Petition Procedure
1705.01 Standing
1705.02 Petition Fee
1705.03 Evidence and Proof of Facts
1705.04 Timeliness
1705.05 Due Diligence
1705.06 Stay or Suspension of Pending Matters
1705.07 Signature of Petition
1705.08 Request for Reconsideration of Denial of Petition
1705.09 Appeal to Federal Court
1706 Standard of Review on Petition
1707 Director’s Supervisory Authority Under 37 C.F.R. §2.146(a)(3)
1708 Waiver of Rules
1709 Matters Delegated by Director
1710 Petition to Make Special
1710.01 Basis for Granting or Denying Petition
1710.02 Processing Petition
1711 Review of Denial of Filing Dates
1712 Reinstatement of Applications and Registrations
1712.01 Reinstatement of Applications Abandoned Due to Office Error
1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error
1713 Petition to Reverse Holding of Abandonment for Failure to Respond Completely
1714 Petition to Revive Abandoned Application
1714.01 Procedural Requirements for Filing Petition to Revive
1714.01(a) Failure to Timely Respond to an Examining Attorney’s Office Action
1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received
1714.01(b)(i) Applicant Must File Statement of Use or Further Extension Requests During Pendency of a Petition
1714.01(c) Notice of Allowance Not Received
1714.01(d) Timeliness and Diligence
1714.01(e) Signed Statement That Delay Was Unintentional
1714.01(f) Applicability of Unintentional Delay Standard
1714.01(f)(i) Situations Where the Unintentional Delay Standard Applies
1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does Not Apply
1714.01(g) Request for Reconsideration of Denial of Petition to Revive
1715 Letters of Protest in Pending Applications
1715.01 Appropriate Subjects to be Raised in Letter of Protest
1715.01(a) Issues Appropriate as Subject of Letter of Protest
1715.01(b) Issues Inappropriate as Subject of Letter of Protest
1715.02 Letters of Protest Filed Before Publication
1715.03 Letters of Protest Filed After Publication
1715.03(a) Timely Filing of Letter of Protest
1715.03(b) Letter of Protest Does Not Stay or Extend Opposition Period
1715.04 Tracking of Letters of Protest by the Protestor
1715.05 Approval of Applications for Publication or Issue After Grant of a Letter of Protest
1715.06 Recourse After Denial of Letter of Protest
1715.07 Requests for Copies of Letters of Protest
Chapter 1800 — Public Inquiries About Applications and Registrations
1801 Office Personnel May Not Express Opinion on Validity of Registered Trademark
1801.01 Office Personnel Cannot Testify
1802 Congressional Inquiries
1803 Freedom of Information Act Requests
1804 Inquiries from Members of the Press
1805 General Inquiries from the Public
1806 Contacts With Third Parties Regarding Ex Parte Matters
1807 United States Patent and Trademark Office World Wide Web Page
Chapter 1900 - Madrid Protocol
1901 Overview of the Madrid System of International Registration
1902 International Application Originating From the United States
1902.01 Who Can File
1902.02 Minimum Requirements for Date of Receipt of International Application in USPTO
1902.02(a) Form of International Application
1902.02(b) Basic Application or Registration Number
1902.02(c) Name and Address of Applicant
1902.02(d) Reproduction (Drawing) of Mark
1902.02(e) Color Claim
1902.02(f) Identification of Goods/Services
1902.02(g) Classification in International Applications
1902.02(g)(i) Reclassifying Goods/Services
1902.02(g)(ii) United States Classes A, B & 200
1902.02(g)(iii) Kits, Gift Baskets
1902.02(h) List of Contracting Parties
1902.02(i) Fees
1902.02(j) Statement of Entitlement
1902.02(k) Description of Mark
1902.02(l) Indication of Type of Mark
1902.02(m) E-Mail Address
1902.03 Certification of International Application in USPTO
1902.03(a) Petition to Review Refusal to Certify
1902.04 Date of International Registration
1902.05 IB Requirements for Complete International Application
1902.06 Examination of Application by IB
1902.07 Irregularities in International Application
1902.07(a) Irregularities that Must Be Remedied by the USPTO
1902.07(b) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB
1902.07(b)(i) Fee Irregularities
1902.07(c) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO
1902.07(c)(i) Classification of Goods and Services
1902.07(c)(ii) Identification of Goods and Services
1902.07(d) Other Irregularities that Must Be Remedied By Applicant – Applicant May Respond Directly to the IB or Through the USPTO
1902.07(e) Filing Response Directly With the IB
1902.07(f) Responding to Notice of Irregularity Through the USPTO
1902.08 Subsequent Designation - Request for Extension of Protection Subsequent to International Registration
1902.08(a) USPTO Requirements
1902.08(b) Form for Filing Subsequent Designation Through the USPTO
1902.08(c) Fees for Subsequent Designation
1902.08(d) IB Requirements for Subsequent Designation
1902.08(e) Irregularities in Subsequent Designation
1902.09 Dependence & “Central Attack”: Restriction, Abandonment, Cancellation or Expiration of Basic Application or Registration During First 5 Years
1902.10 Transformation When the USPTO is the Office of Origin
1902.11 Representative
1902.12 USPTO Must Notify IB of Division or Merger of Basic Application or Registration
1903 Payment of Fees
1903.01 Payment of USPTO Fees
1903.02 Payment of International Fees
1904 Request for Extension of Protection of International Registration to the United States
1904.01 Filing Request for Extension of Protection to United States
1904.01(a) Section 66(a) Basis
1904.01(b) Filing Date
1904.01(c) Declaration of Intent to Use Required
1904.01(d) Use Not Required
1904.01(e) Priority
1904.01(f) Filing Fee
1904.01(g) Constructive Use
1904.01(h) Cannot be Based on USPTO Basic Application or Registration
1904.02 Examination of Request for Extension of Protection to the United States
1904.02(a) Examined as Regular Application
1904.02(b) Examination of Identification and Classification of Goods/Services in §66(a) Applications
1904.02(c) Mark Must Be Registrable on Principal Register
1904.02(d) Refusal Must Be Made Within 18 Months
1904.02(e) Issuing Office Actions
1904.02(f) Correspondence Address
1904.02(g) Mark Cannot Be Amended
1904.02(h) Drawings and Descriptions of the Mark
1904.02(i) Jurisdiction
1904.03 Notice of Refusal
1904.03(a) Notice Must be Sent Within 18 Months
1904.03(b) Requirements for Notice of Refusal
1904.03(c) §66(a) Applicant Must Respond to Notification of Refusal
1904.03(d) Refusal Pertaining to Less Than All the Goods/Services
1904.03(e) Confirmation or Withdrawal of Provisional Refusal
1904.03(f) Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection
1904.03(g) Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection
1904.04 Opposition
1904.05 Certificate of Extension of Protection
1904.06 Assignment of Extension of Protection to the United States
1904.07 Invalidation of Protection in United States
1904.08 Cancellation of International Registration By IB
1904.09 Transformation to Application Under §1 or §44
1904.09(a) Requirements for Transformation
1904.09(b) Examination of Transformed Application
1904.10 Affidavits of Use or Excusable Nonuse Required
1904.11 Incontestability
1904.12 Replacement
1904.13 Amendment of Registered Extension of Protection to the United States
1904.14 Notification of Correction in the International Register with Respect to Registered Extension of Protection
1904.15 Notification of Limitation of the List of Goods/Services with Respect to Registered Extension of Protection
1905 Renewal of International Registrations
1906 Communications With International Bureau Regarding International Registrations
1906.01 Recording Changes in International Register
1906.01(a) Change in Ownership of International Registration
1906.01(a)(i) Requirements for Submitting Changes in Ownership of International Registration Through the USPTO
1906.01(a)(ii) International Fees for Recording Changes of Ownership of International Registration
1906.01(a)(iii) Effect of Change of Ownership of International Registration
1906.01(a)(iv) Dividing an International Registration After Change of Ownership With Respect to Some But Not All of the Goods
1906.01(b) Restriction of Holder’s Rights of Disposal
1906.01(c) Change of the Holder’s Name or Address
1906.01(d) Change of Name or Address of Representative
1906.01(e) Limitation, Renunciation, Cancellation of International Registration
1906.01(f) Correction of Errors in International Registration
1906.01(g) Merger of International Registrations
1906.01(h) License
1906.01(i) Changes That Cannot Be Made to International Registration
Appendix A Examining Attorneys' Appeal Briefs
Appendix B List of Members of International Trademark Agreements
Appendix C Notes of Other Statutes
Appendix D Foreign Entity Designations
List of Decisions Cited
Index
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