[Federal Register: August 13, 2003 (Volume 68, Number 156)]
[Rules and Regulations]
[Page 48286-48293]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr13au03-10]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 2
[Docket No. 2003-T-024]
RIN 0651-AB68
Reorganization of Correspondence and Other General Provisions
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (``Office'') is
amending its rules to separate the provisions for patent matters and
trademark matters with respect to filing correspondence, requesting
copies of documents, payment of fees, and general information.
Specifically, the Office is amending its Rules of Practice in Patent
Cases to delete all references to trademark matters, and amending its
Rules of Practice in Trademark Cases to add new rules setting forth
provisions for corresponding with and paying fees to the Office in
trademark cases, and for requesting copies of trademark documents.
EFFECTIVE DATE: September 12, 2003.
FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of the
Commissioner for Trademarks, by telephone at (703) 308-8910, ext. 137;
by e-mail to mary.hannon@uspto.gov; by facsimile transmission addressed
to her at (703) 872-9280; or by mail marked to her attention and
addressed to Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3514.
SUPPLEMENTARY INFORMATION: The Office is amending its rules to separate
the provisions for patent and trademark matters with respect to
correspondence, requesting copies of documents, payment of fees, and
general information. Specifically, the Office is (1) amending 37 CFR
Part 1 to delete all references to trademarks, and (2) amending 37 CFR
Part 2 to add new rules setting forth provisions for corresponding with
and paying fees to the Office in trademark cases, and for requesting
copies of trademark documents.
Discussion of Specific Rules
The Office is amending rules 1.1, 1.4, 1.5, 1.6, 1.8, 1.10, 1.12,
1.13, 1.22, 1.26, 2.1, 2.2, 2.6, and 2.123; and adding new rules 2.190,
2.191, 2.192, 2.193, 2.194, 2.195, 2.196, 2.197, 2.198, 2.200, 2.201,
2.206, 2.207, 2.208, and 2.209.
The Office is removing Sec. 1.1(a)(2), amending Sec. 1.1(a) to
delete reference to Sec. 1.1(a)(2), amending Sec. 1.1(a)(4) to delete
reference to trademark-related documents, and revising the note
following Sec. 1.1(f) to delete the reference to ``trademark cases.''
The Office is removing and reserving Sec. 1.4(d)(1)(iii), amending
Sec. 1.4(d)(1)(ii) to change a semicolon to a period, and amending
Sec. Sec. 1.4(a)(1), (a)(2), (b) and (d)(1) to delete references to
trademark applications, trademark registrations, and trademark filings.
The Office is removing and reserving Sec. 1.5(c).
The Office is removing and reserving Sec. Sec. 1.6(a)(4), (d)(7)
and (d)(8), and revising Sec. Sec. 1.6(d), (d)(3), and (d)(4) to
delete all references to trademark matters.
The Office is removing and reserving Sec. 1.8(a)(2)(ii).
The Office is amending Sec. 1.10(a) to delete all references to
trademark correspondence.
The Office is amending Sec. 1.12(a) to delete all references to
trademark assignments.
The Office is amending Sec. 1.13 to delete all references to
copies of trademark documents.
The Office is amending Sec. 1.22 to delete all references to
trademark fees and trademark registration files.
The Office is amending Sec. 1.26(a) to delete the reference to
trademark filing.
The Office is removing and reserving Sec. 2.1, which provides that
Sec. Sec. 1.1 to 1.26 of this chapter apply to trademark cases.
The Office is amending Sec. 2.2 to add definitions of
``Director,'' ``Office,'' ``TEAS,'' and ``Federal holiday within the
District of Columbia.''
The Office is adding a new Sec. 2.6(b)(12), requiring a fee for
processing any payment refused or charged back by a financial
institution. This is consistent with current Sec. 1.21(m).
The Office is adding a new Sec. 2.6(b)(13), setting forth the fee
for establishing a deposit account, and a service charge for each month
when the balance at the end of the month is below $1,000. This is
consistent with current Sec. Sec. 1.21(b)(1) and (2).
The Office is amending Sec. 2.123(f)(2) to change a cross-
reference.
The Office is adding a new Sec. 2.190, setting forth the addresses
for trademark correspondence. This is consistent with current
Sec. Sec. 1.1(a)(2) and 1.1(a)(4).
The Office is adding a new Sec. 2.191, providing that business
with the Office must be transacted in writing, and that no attention
will be paid to any alleged oral promise, stipulation, or
understanding. This is consistent with current Sec. 1.2.
The Office is adding a new Sec. 2.192, providing that business
must be conducted with decorum and courtesy. This is consistent with
current Sec. 1.3.
The Office is adding a new Sec. 2.193, setting forth the
requirements for correspondence and signatures in trademark cases. This
is consistent with current Sec. 1.4.
The Office is adding a new Sec. 2.194, setting forth the
requirements for identifying correspondence relating to trademark
applications and registrations. This is consistent with current Sec.
1.5.
The Office is adding a new Sec. 2.195, setting forth the
procedures for according filing dates in trademark cases. This is
consistent with current Sec. 1.6.
The Office is adding a new Sec. 2.196, providing that when the
last day for taking an action or paying a fee falls on a Saturday,
Sunday, or Federal holiday within the District of Columbia, the action
may be taken or fee may be paid on the next succeeding day that is not
a Saturday, Sunday, or Federal holiday within the District of Columbia.
This is consistent with current Sec. 1.7.
The Office is adding a new Sec. 2.197, setting forth the
requirements and procedures for filing a document under a certificate
of mailing or certificate of transmission. This is consistent with
current Sec. 1.8.
Section 2.197(b) requires that if correspondence is timely mailed
or transmitted, but not received in the Office, the party who filed the
correspondence must inform the Office of the timely mailing or
transmission within two months after becoming aware that the Office has
no evidence of receipt of the correspondence. This does not change
current practice. While current Sec. 1.8(b)(1) requires that the party
inform the Office of the timely mailing or transmission ``promptly,''
Sec. 2.146(d) requires that a petition for revival or reinstatement in
a trademark case be filed within two months of the date that the party
who filed the correspondence became aware that there was a problem with
the filing date of the correspondence, unless a different deadline is
specified elsewhere in the rules. Trademark Manual of Examining
Procedure Sec. Sec. 305.02(f), 306.05(d) and 1705.04.
[[Page 48287]]
The Office is adding a new Sec. 2.198, setting forth the
procedures and requirements for filing correspondence by Express Mail.
This is consistent with current Sec. 1.10. Section 2.198(a)(1)
provides that the Express Mail procedure cannot be used to file:
Trademark applications filed under section 1 or section 44 of the
Trademark Act; amendments to allege use under section 1(c) of the
Trademark Act; statements of use under section 1(d) of the Trademark
Act; requests for extension of time to file a statement of use under
section 1(d) of the Trademark Act; affidavits of continued use under
section 8 of the Trademark Act; renewal applications under section 9 of
the Trademark Act, 15 U.S.C. Sec. 1059; requests to change or correct
addresses; combined filings under sections 8 and 9 of the Trademark
Act; or combined affidavits or declarations under sections 8 and 15 of
the Trademark Act.
Sections 2.198(c)(1), (d)(1) and (e)(1) require that if
correspondence is sent by Express Mail under Sec. Sec. 2.198(a) and
(b) but not accorded a filing date as of the date of deposit with the
United States Postal Service (USPS), the party who filed the
correspondence may petition for a filing date as of the date of deposit
with the USPS, within two months after becoming aware that the Office
did not receive the correspondence, or that the Office accorded an
incorrect filing date to the correspondence. This does not change
current practice. While current Sec. 1.10(c)(1), (d)(1) and (e)(1)
require that the party inform the Office of the timely mailing or
transmission ``promptly,'' Sec. 2.146(d) requires that a petition for
revival or reinstatement in a trademark case be filed within two months
of the date that the party who filed the correspondence became aware
that there was a problem with the filing date of the correspondence,
unless a different deadline is specified elsewhere in the rules.
Trademark Manual of Examining Procedure Sec. Sec. 305.03 and 1705.04.
The Office is adding a new Sec. 2.200, setting forth the
procedures for requesting copies of trademark assignments. This is
consistent with current Sec. 1.12.
The Office is adding a new Sec. 2.201, setting forth the
procedures for requesting copies of trademark registrations. This is
consistent with current Sec. 1.13.
The Office is adding a new Sec. 2.206, providing that trademark
fees must be paid in advance and must be itemized. This is consistent
with current Sec. 1.22.
The Office is adding a new Sec. 2.207, setting forth the methods
for paying fees in trademark cases. This is consistent with current
Sec. 1.23.
The Office is adding a new Sec. 2.208, providing for the payment
of trademark fees from deposit accounts. This is consistent with
current Sec. 1.25.
The Office is adding a new Sec. 2.209, setting forth the
procedures for refunding trademark fees. This is consistent with
current Sec. 1.26.
Rule Making Requirements
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), an initial regulatory flexibility analysis under the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.) is not required. See 5 U.S.C.
603.
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined not to
be significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This rule contains no new information
collection or recordkeeping requirements under the Paperwork Reduction
Act of 1995 (44 U.S.C. 3501 et seq.). Notwithstanding any other
provision of law, no person is required to respond to nor shall a
person be subject to a penalty for failure to comply with a collection
of information subject to the requirements of the Paperwork Reduction
Act unless that collection of information displays a currently valid
OMB control number.
Administrative Procedure Act: This final rule merely renumbers
rules of agency practice and procedure. There are no substantive
changes to the rules. Therefore, this final rule may be adopted without
prior notice and opportunity for public comment under 5 U.S.C. 553(b)
and (c).
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Patents.
37 CFR Part 2
Administrative practice and procedure, Trademarks.
0
For the reasons given in the preamble and under the authority contained
in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office is amending
parts 1 and 2 of title 37 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Amend Sec. 1.1 by revising the section heading, removing and
reserving paragraph (a)(2), and revising paragraphs (a) introductory
text and (a)(4) and removing the note following paragraph (f) to read
as follows:
Sec. 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
(a) In general. Except as provided in paragraphs (a)(3)(i),
(a)(3)(ii) and (d)(1) of this section, all correspondence intended for
the United States Patent and Trademark Office must be addressed to
either ``Director of the United States Patent and Trademark Office,
P.O. Box 1450, Alexandria, Virginia 22313-1450'' or to specific areas
within the Office as set out in paragraphs (a)(1) and (a)(3)(iii) of
this section. When appropriate, correspondence should also be marked
for the attention of a particular office or individual.
* * * * *
(4) Office of Public Records correspondence. (i) Assignments. All
patent-related documents to be recorded by the Assignment Services
Division, except for documents filed together with a new application or
under Sec. 3.81 of this chapter, should be addressed to: Mail Stop
Assignment Recordation Services, Director of the United States Patent
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
See Sec. 3.27.
(ii) Documents. All requests for certified or uncertified copies of
patent documents should be addressed to: Mail Stop Document Services,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia 22313-1450.
* * * * *
0
3. Amend Sec. 1.4 by removing and reserving paragraph (d)(1)(iii), and
by revising paragraphs (a)(1), (a)(2), (b), (d)(1) introductory text,
and (d)(1)(ii) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
(a) * * *
(1) Correspondence relating to services and facilities of the
Office, such as general inquiries, requests for publications supplied
by the Office, orders for printed copies of patents, orders for copies
of records, transmission of assignments for recording, and the like,
and
(2) Correspondence in and relating to a particular application or
other proceeding in the Office. See particularly the rules relating to
the
[[Page 48288]]
filing, processing, or other proceedings of national applications in
subpart B, Sec. Sec. 1.31 to 1.378; of international applications in
subpart C, Sec. Sec. 1.401 to 1.499; of ex parte reexaminations of
patents in subpart D, Sec. Sec. 1.501 to 1.570; of interferences in
subpart E, Sec. Sec. 1.601 to 1.690; of extension of patent term in
subpart F, Sec. Sec. 1.710 to 1.785; and of inter partes
reexaminations of patents in subpart H, Sec. Sec. 1.902 to 1.997.
(b) Since each file must be complete in itself, a separate copy of
every paper to be filed in a patent application, patent file, or other
proceeding must be furnished for each file to which the paper pertains,
even though the contents of the papers filed in two or more files may
be identical. The filing of duplicate copies of correspondence in the
file of an application, patent, or other proceeding should be avoided,
except in situations in which the Office requires the filing of
duplicate copies. The Office may dispose of duplicate copies of
correspondence in the file of an application, patent, or other
proceeding.
* * * * *
(d)(1) Each piece of correspondence, except as provided in
paragraphs (e) and (f) of this section, filed in an application, patent
file, or other proceeding in the Office which requires a person's
signature, must:
* * * * *
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission (Sec. 1.6(d)), of an original. In the event that a copy
of the original is filed, the original should be retained as evidence
of authenticity. If a question of authenticity arises, the Office may
require submission of the original.
* * * * *
0
4. Amend Sec. 1.5 by removing and reserving paragraph (c) and revising
the section heading to read as follows.
Sec. 1.5 Identification of patent, patent application, or patent-
related proceeding.
* * * * *
0
5. Amend Sec. 1.6 by removing and reserving paragraphs (a)(4), (d)(7)
and (d)(8), and revising paragraphs (d) introductory text, (d)(3), and
(d)(4) to read as follows:
Sec. 1.6 Receipt of correspondence.
* * * * *
(d) Facsimile transmission. Except in the cases enumerated below,
correspondence, including authorizations to charge a deposit account,
may be transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete transmission is
received in the United States Patent and Trademark Office, unless that
date is a Saturday, Sunday, or Federal holiday within the District of
Columbia. See Sec. 1.6(a)(3). To facilitate proper processing, each
transmission session should be limited to correspondence to be filed in
a single application or other proceeding before the United States
Patent and Trademark Office. The application number of a patent
application, the control number of a reexamination proceeding, the
interference number of an interference proceeding, or the patent number
of a patent should be entered as a part of the sender's identification
on a facsimile cover sheet. Facsimile transmissions are not permitted
and if submitted, will not be accorded a date of receipt, in the
following situations:
* * * * *
(3) Correspondence which cannot receive the benefit of the
certificate of mailing or transmission as specified in Sec.
1.8(a)(2)(i)(A) through (D) and (F), and Sec. 1.8(a)(2)(iii)(A),
except that a continued prosecution application under Sec. 1.53(d) may
be transmitted to the Office by facsimile;
(4) Drawings submitted under Sec. Sec. 1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, or 1.437;
* * * * *
Sec. 1.8 [Amended]
0
6. Amend Sec. 1.8 by removing and reserving paragraph (a)(2)(ii).
0
7. Amend Sec. 1.10 by revising paragraph (a)(1) to read as follows:
Sec. 1.10 Filing of correspondence by ``Express Mail.''
(a)(1) Any correspondence received by the U.S. Patent and Trademark
Office (USPTO) that was delivered by the ``Express Mail Post Office to
Addressee'' service of the United States Postal Service (USPS) will be
considered filed with the USPTO on the date of deposit with the USPS.
* * * * *
0
8. Amend Sec. 1.12 by revising paragraph (a) to read as follows:
Sec. 1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the United
States Patent and Trademark Office for patents and trademarks. The
assignment records, relating to original or reissue patents, including
digests and indexes (for assignments recorded on or after May 1, 1957),
and published patent applications, are open to public inspection at the
United States Patent and Trademark Office, and copies of patent
assignment records may be obtained upon request and payment of the fee
set forth in Sec. 1.19 of this chapter. See Sec. 2.200 of this
chapter regarding trademark assignment records.
(2) All records of assignments of patents recorded before May 1,
1957, are maintained by the National Archives and Records
Administration (NARA). The records are open to public inspection.
Certified and uncertified copies of those assignment records are
provided by NARA upon request and payment of the fees required by NARA.
* * * * *
0
9. Revise Sec. 1.13 to read as follows:
Sec. 1.13 Copies and certified copies.
(a) Non-certified copies of patents, and patent application
publications and of any records, books, papers, or drawings within the
jurisdiction of the United States Patent and Trademark Office and open
to the public, will be furnished by the United States Patent and
Trademark Office to any person, and copies of other records or papers
will be furnished to persons entitled thereto, upon payment of the
appropriate fee. See Sec. 2.201 of this chapter regarding copies of
trademark records.
(b) Certified copies of patents, patent application publications,
and of any records, books, papers, or drawings within the jurisdiction
of the United States Patent and Trademark Office and open to the public
or persons entitled thereto will be authenticated by the seal of the
United States Patent and Trademark Office and certified by the
Director, or in his or her name attested by an officer of the United
States Patent and Trademark Office authorized by the Director, upon
payment of the fee for the certified copy.
0
10. Revise Sec. 1.22 to read as follows:
Sec. 1.22 Fees payable in advance.
(a) Patent fees and charges payable to the United States Patent and
Trademark Office are required to be paid in advance; that is, at the
time of requesting any action by the Office for which a fee or charge
is payable, with the exception that under Sec. 1.53 applications for
patent may be assigned a filing date without payment of the basic
filing fee.
(b) All fees paid to the United States Patent and Trademark Office
must be itemized in each individual application, patent, or other
proceeding in such a manner that it is clear for which purpose the fees
are paid. The Office may return fees that are not itemized as required
by this paragraph. The provisions of Sec. 1.5(a) do not apply to the
[[Page 48289]]
resubmission of fees returned pursuant to this paragraph.
0
11. Amend Sec. 1.26 by revising paragraph (a) to read as follows:
Sec. 1.26 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of
that required. A change of purpose after the payment of a fee, such as
when a party desires to withdraw a patent filing for which the fee was
paid, including an application, an appeal, or a request for an oral
hearing, will not entitle a party to a refund of such fee. The Office
will not refund amounts of twenty-five dollars or less unless a refund
is specifically requested, and will not notify the payor of such
amounts. If a party paying a fee or requesting a refund does not
provide the banking information necessary for making refunds by
electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or
instruct the Office that refunds are to be credited to a deposit
account, the Director may require such information, or use the banking
information on the payment instrument to make a refund. Any refund of a
fee paid by credit card will be by a credit to the credit card account
to which the fee was charged.
* * * * *
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
0
12. The authority citation for 37 CFR Part 2 is revised to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted.
Sec. 2.1 [Removed and Reserved]
0
13. Remove and reserve Sec. 2.1.
0
14. Amend Sec. 2.2 to add new paragraphs (c) through (f).
Sec. 2.2 Definitions.
* * * * *
(c) Director as used in this chapter, except for part 10, means the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
(d) Federal holiday within the District of Columbia means any day,
except Saturdays and Sundays, when the United States Patent and
Trademark Office is officially closed for business for the entire day.
(e) The term Office means the United States Patent and Trademark
Office.
(f) The acronym TEAS means the Trademark Electronic Application
System, available online at http://www.uspto.gov.
0
15. Amend Sec. 2.6 by adding new paragraphs (b)(12) and (b)(13), to
read as follows:
Sec. 2.6 Trademark fees.
* * * * *
(b) * * *
(12) For processing each payment refused (including a check
returned ``unpaid'') or charged back by a financial institution--$50.00
(13) Deposit accounts:
(i) For establishing a deposit account--$10.00
(ii) Service charge for each month when the balance at the end of
the month is below $1,000-$25.00
0
16. Revise Sec. 2.123(f)(2) to read as follows:
Sec. 2.123 Trial testimony in inter partes cases.
* * * * *
(f) * * *
(2) If any of the foregoing requirements in paragraph (f)(1) of
this section are waived, the certificate shall so state. The officer
shall sign the certificate and affix thereto his seal of office, if he
has such a seal. Unless waived on the record by an agreement, he shall
then securely seal in an envelope all the evidence, notices, and paper
exhibits, inscribe upon the envelope a certificate giving the number
and title of the case, the name of each witness, and the date of
sealing. The officer or the party taking the deposition, or its
attorney or other authorized representative, shall then promptly
forward the package to the address set out in Sec. 2.190. If the
weight or bulk of an exhibit shall exclude it from the envelope, it
shall, unless waived on the record by agreement of all parties, be
authenticated by the officer and transmitted by the officer or the
party taking the deposition, or its attorney or other authorized
representative, in a separate package marked and addressed as provided
in this section.
* * * * *
0
17. Immediately after Sec. 2.186, add the following new center heading
to read as follows:
General Information and Correspondence in Trademark Cases
0
18. Add Sec. Sec. 2.188 through 2.198 to read as follows:
Sec. 2.188 [Reserved]
Sec. 2.189 [Reserved]
Sec. 2.190 Addresses for trademark correspondence with the United
States Patent and Trademark Office.
(a) Trademark correspondence--in general. All trademark-related
documents filed on paper, except documents sent to the Assignment
Services Division for recordation and requests for copies of trademark
documents, should be addressed to: Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3514.
(b) Electronic trademark documents. An applicant may transmit a
trademark document through TEAS, at http://www.uspto.gov.
(c) Trademark assignments. Requests to record documents in the
Assignment Services Division may be filed through the Office's web
site, at http://www.uspto.gov. Paper documents and cover sheets to be
recorded in the Assignment Services Division should be addressed to:
Mail Stop Assignment Recordation Services, Director of the United
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia
22313-1450. See Sec. 3.27 of this chapter.
(d) Requests for copies of trademark documents. Copies of trademark
documents can be ordered through the Office's web site at
www.uspto.gov. Paper requests for certified or uncertified copies of
trademark documents should be addressed to: Mail Stop Document
Services, Director of the United States Patent and Trademark Office,
P.O. Box 1450, Alexandria, Virginia 22313-1450.
Sec. 2.191 Business to be transacted in writing.
All business with the Office should be transacted in writing. The
personal appearance of applicants or their representatives at the
Office is unnecessary. The action of the Office will be based
exclusively on the written record. No attention will be paid to any
alleged oral promise, stipulation, or understanding in relation to
which there is disagreement or doubt. The Office encourages parties to
file documents through TEAS wherever possible.
Sec. 2.192 Business to be conducted with decorum and courtesy.
Trademark applicants, registrants, and parties to proceedings
before the Trademark Trial and Appeal Board and their attorneys or
agents are required to conduct their business with decorum and
courtesy. Documents presented in violation of this requirement will be
submitted to the Director and will be returned by the Director's direct
order. Complaints against trademark examining attorneys and other
employees must be made in correspondence separate from other documents.
Sec. 2.193 Trademark correspondence and signature requirements.
(a) Since each file must be complete in itself, a separate copy of
every
[[Page 48290]]
document to be filed in a trademark application, trademark registration
file, or proceeding before the Trademark Trial and Appeal Board must be
furnished for each file to which the document pertains, even though the
contents of the documents filed in two or more files may be identical.
Parties should not file duplicate copies of correspondence, unless the
Office requires the filing of duplicate copies. The Office may dispose
of duplicate copies of correspondence.
(b) Since different matters may be considered by different branches
or sections of the Office, each distinct subject, inquiry or order must
be contained in a separate document to avoid confusion and delay in
answering correspondence dealing with different subjects.
(c)(1) Each piece of correspondence that requires a person's
signature, must:
(i) Be an original, that is, have an original signature personally
signed in permanent ink by that person; or
(ii) Be a copy, such as a photocopy or facsimile transmission
(Sec. 2.195(c)), of an original. In the event that a copy of the
original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Office may
require submission of the original; or
(iii) Where an electronically transmitted trademark filing is
permitted or required, the person who signs the filing must either:
(A) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic
submission; or
(B) Sign the verified statement using some other form of electronic
signature specified by the Director.
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any document by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Sec. 10.18(b) of this chapter. Violations of Sec. 10.18(b)(2) of this
chapter by a party, whether a practitioner or non-practitioner, may
result in the imposition of sanctions under Sec. 10.18(c) of this
chapter. Any practitioner violating Sec. 10.18(b) may also be subject
to disciplinary action. See Sec. Sec. 10.18(d) and 10.23(c)(15).
(d) When a document that is required by statute to be certified
must be filed, a copy, including a photocopy or facsimile transmission,
of the certification is not acceptable.
Sec. 2.194 Identification of trademark application or registration.
(a) No correspondence relating to a trademark application should be
filed prior to receipt of the application serial number.
(b) (1) A letter about a trademark application should identify the
serial number, the name of the applicant, and the mark.
(2) A letter about a registered trademark should identify the
registration number, the name of the registrant, and the mark.
Sec. 2.195 Receipt of trademark correspondence.
(a) Date of receipt and Express Mail date of deposit. Trademark
correspondence received in the Office is given a filing date as of the
date of receipt except as follows:
(1) The Office is not open for the filing of correspondence on any
day that is a Saturday, Sunday, or Federal holiday within the District
of Columbia. Except for correspondence transmitted electronically under
paragraph (a)(2) of this section or transmitted by facsimile under
paragraph (a)(3) of this section, no correspondence is received in the
Office on Saturdays, Sundays, or Federal holidays within the District
of Columbia.
(2) Trademark-related correspondence transmitted electronically
will be given a filing date as of the date on which the Office receives
the transmission.
(3) Correspondence transmitted by facsimile will be given a filing
date as of the date on which the complete transmission is received in
the Office unless that date is a Saturday, Sunday, or Federal holiday
within the District of Columbia, in which case the filing date will be
the next succeeding day that is not a Saturday, Sunday, or Federal
holiday within the District of Columbia.
(4) Correspondence filed in accordance with Sec. 2.198 will be
given a filing date as of the date of deposit as ``Express Mail'' with
the United States Postal Service.
(b) Correspondence delivered by hand. In addition to being mailed,
correspondence may be delivered by hand during hours the Office is open
to receive correspondence.
(c) Facsimile transmission. Except in the cases enumerated in
paragraph (d) of this section, correspondence, including authorizations
to charge a deposit account, may be transmitted by facsimile. The
receipt date accorded to the correspondence will be the date on which
the complete transmission is received in the Office, unless that date
is a Saturday, Sunday, or Federal holiday within the District of
Columbia. See Sec. 2.196. To facilitate proper processing, each
transmission session should be limited to correspondence to be filed in
a single application, registration or proceeding before the Office. The
application serial number, registration number, or proceeding number
should be entered as a part of the sender's identification on a
facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted,
will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks;
(2) Drawings submitted under Sec. 2.51, Sec. 2.52, Sec. 2.72, or
Sec. 2.173;
(3) Correspondence to be filed with the Trademark Trial and Appeal
Board, except notices of ex parte appeal; and
(4) Requests for cancellation or amendment of a registration under
section 7(e) of the Trademark Act; and certificates of registration
surrendered for cancellation or amendment under section 7(e) of the
Trademark Act.
(e) Interruptions in U.S. Postal Service. If interruptions or
emergencies in the United States Postal Service which have been so
designated by the Director occur, the Office will consider as filed on
a particular date in the Office any correspondence which is:
(1) Promptly filed after the ending of the designated interruption
or emergency; and
(2) Accompanied by a statement indicating that such correspondence
would have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal
Service.
Sec. 2.196 Times for taking action: Expiration on Saturday, Sunday or
Federal holiday.
Whenever periods of time are specified in this part in days,
calendar days are intended. When the day, or the last day fixed by
statute or by regulation under this part for taking any action or
paying any fee in the Office falls on a Saturday, Sunday, or Federal
holiday within the District of Columbia, the action may be taken, or
the fee paid, on the next succeeding day that is not a Saturday,
Sunday, or a Federal holiday.
Sec. 2.197 Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of this
section, correspondence required to be filed in the Office within a set
period of time will be considered as being timely filed if the
procedure described in this section is followed. The actual date of
receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration
of the set period of time by being:
[[Page 48291]]
(A) Addressed as set out in Sec. 2.190 and deposited with the U.S.
Postal Service with sufficient postage as first class mail; or
(B) Transmitted by facsimile to the Office in accordance with Sec.
2.195(c); and
(ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person
signing the certificate should have a reasonable basis to expect that
the correspondence would be mailed or transmitted on or before the date
indicated.
(2) The procedure described in paragraph (a)(1) of this section
does not apply to the filing of a trademark application.
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the Office, and an application is
abandoned, a registration is cancelled or expired, or a proceeding is
dismissed, terminated, or decided with prejudice, the correspondence
will be considered timely if the party who forwarded such
correspondence:
(1) Informs the Office of the previous mailing or transmission of
the correspondence within two months after becoming aware that the
Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or
transmitted correspondence and certificate; and
(3) Includes a statement that attests on a personal knowledge basis
or to the satisfaction of the Director to the previous timely mailing
or transmission. If the correspondence was sent by facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.
(c) The Office may require additional evidence to determine whether
the correspondence was timely filed.
Sec. 2.198 Filing of correspondence by ``Express Mail.''
(a)(1) Except for documents listed in paragraphs (a)(1)(i) and (ii)
of this section, any correspondence received by the Office that was
delivered by the ``Express Mail Post Office to Addressee'' service of
the United States Postal Service (USPS) will be considered filed with
the Office on the date of deposit with the USPS. The Express Mail
procedure does not apply to:
(i) Applications for registration of marks;
(ii) Amendments to allege use under section 1(c) of the Act;
(iii) Statements of use under section 1(d) of the Act;
(iv) Requests for extension of time to file a statement of use
under section 1(d) of the Act;
(v) Affidavits of continued use under section 8 of the Act;
(vi) Renewal requests under section 9 of the Act; and
(vii) Requests to change or correct addresses.
(2) The date of deposit with USPS is shown by the ``date in'' on
the ``Express Mail'' label or other official USPS notation. If the USPS
deposit date cannot be determined, the correspondence will be accorded
the date of receipt in the Office as the filing date.
(b) Correspondence should be deposited directly with an employee of
the USPS to ensure that the person depositing the correspondence
receives a legible copy of the ``Express Mail'' mailing label with the
``date-in'' clearly marked. Persons dealing indirectly with the
employees of the USPS (such as by deposit in an ``Express Mail'' drop
box) do so at the risk of not receiving a copy of the ``Express Mail''
mailing label with the desired ``date-in'' clearly marked. The paper(s)
or fee(s) that constitute the correspondence should also include the
``Express Mail'' mailing label number thereon. See paragraphs (c), (d)
and (e) of this section.
(c) Any person filing correspondence under this section that was
received by the Office and delivered by the ``Express Mail Post Office
to Addressee'' service of the USPS, who can show that there is a
discrepancy between the filing date accorded by the Office to the
correspondence and the date of deposit as shown by the ``date-in'' on
the ``Express Mail'' mailing label or other official USPS notation, may
petition the Director to accord the correspondence a filing date as of
the ``date-in'' on the ``Express Mail'' mailing label or other official
USPS notation, provided that:
(1) The petition is filed within two months after the person
becomes aware that the Office has accorded, or will accord, a filing
date other than the USPS deposit date;
(2) The number of the ``Express Mail'' mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
original mailing; and
(3) The petition includes a true copy of the ``Express Mail''
mailing label showing the ``date-in,'' and of any other official
notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was
received by the Office and delivered by the ``Express Mail Post Office
to Addressee'' service of the USPS, who can show that the ``date-in''
on the ``Express Mail'' mailing label or other official notation
entered by the USPS was incorrectly entered or omitted by the USPS, may
petition the Director to accord the correspondence a filing date as of
the date the correspondence is shown to have been deposited with the
USPS, provided that:
(1) The petition is filed within two months after the person
becomes aware that the Office has accorded, or will accord, a filing
date based upon an incorrect entry by the USPS;
(2) The number of the ``Express Mail'' mailing label was placed on
the paper(s) or fee(s) prior to the original mailing; and
(3) The petition includes a showing that establishes, to the
satisfaction of the Director, that the correspondence was deposited in
the ``Express Mail Post Office to Addressee'' service prior to the last
scheduled pickup on the requested filing date. Any showing pursuant to
this paragraph must be corroborated by evidence from the USPS or
evidence that came into being within one business day after the deposit
of the correspondence in the ``Express Mail Post Office to Addressee''
service of the USPS.
(e) If correspondence is properly addressed to the Office pursuant
to Sec. 2.190 and deposited with sufficient postage in the ``Express
Mail Post Office to Addressee'' service of the USPS, but not received
by the Office, the party who mailed the correspondence may petition the
Director to consider such correspondence filed in the Office on the
USPS deposit date, provided that:
(1) The petition is filed within two months after the person
becomes aware that the Office has no evidence of receipt of the
correspondence;
(2) The number of the ``Express Mail'' mailing label was placed on
the paper(s) or fee(s) prior to the original mailing;
(3) The petition includes a copy of the originally deposited
paper(s) or fee(s) showing the number of the ``Express Mail'' mailing
label thereon, a copy of any returned postcard receipt, a copy of the
``Express Mail'' mailing label showing the ``date-in,'' a copy of any
other official notation by the USPS relied upon to show the date of
deposit, and, if the requested filing date is a date other than the
``date-in'' on the ``Express Mail'' mailing label or other official
notation entered by the USPS, a showing pursuant to paragraph (d)(3) of
this section that the correspondence was deposited in the ``Express
Mail Post Office to Addressee'' service prior to the last scheduled
pickup on the requested filing date; and
[[Page 48292]]
(4) The petition includes a statement that establishes, to the
satisfaction of the Director, the original deposit of the
correspondence and that the copies of the correspondence, the copy of
the ``Express Mail'' mailing label, the copy of any returned postcard
receipt, and any official notation entered by the USPS are true copies
of the originally mailed correspondence, original ``Express Mail''
mailing label, returned postcard receipt, and official notation entered
by the USPS.
(f) The Office may require additional evidence to determine whether
the correspondence was deposited as ``Express Mail'' with the USPS on
the date in question.
0
19. Add a new center heading and Sec. Sec. 2.200 and 2.201 to read as
follows:
Trademark Records and Files of the Patent and Trademark Office
Sec. 2.200 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the Office for
patents and trademarks. The assignment records relating to trademark
applications and registrations (for assignments recorded on or after
January 1, 1955) are open to public inspection at the Office, and
copies of those assignment records may be obtained upon request and
payment of the fee set forth in Sec. 2.6 of this chapter.
(2) All records of trademark assignments recorded before January 1,
1955, are maintained by the National Archives and Records
Administration (NARA). The records are open to public inspection.
Certified and uncertified copies of those assignment records are
provided by NARA upon request and payment of the fees required by NARA.
(b) An order for a copy of an assignment or other document should
identify the reel and frame number where the assignment or document is
recorded. If a document is identified without specifying its correct
reel and frame, an extra charge as set forth in Sec. 2.6(b)(10) will
be made for the time consumed in making a search for such assignment.
Sec. 2.201 Copies and certified copies.
(a) Non-certified copies of trademark registrations and of any
trademark records or trademark documents within the jurisdiction of the
Office and open to the public, will be furnished by the Office to any
person entitled thereto, upon payment of the appropriate fee required
by Sec. 2.6.
(b) Certified copies of trademark registrations and of any
trademark records or trademark documents within the jurisdiction of the
Office and open to the public will be authenticated by the seal of the
Office and certified by the Director, or in his or her name attested by
an officer of the Office authorized by the Director, upon payment of
the fee required by Sec. 2.6.
0
20. Add a new center heading and Sec. Sec. 2.206 through 2.209 to read
as follows:
Fees and Payment of Money in Trademark Cases
Sec. 2.206 Trademark fees payable in advance.
(a) Trademark fees and charges payable to the Office are required
to be paid in advance; that is, at the time of requesting any action by
the Office for which a fee or charge is payable.
(b) All fees paid to the Office must be itemized in each individual
trademark application or registration file, or trademark proceeding, so
that the purpose for which the fees are paid is clear. The Office may
return fees that are not itemized as required by this paragraph.
Sec. 2.207 Methods of payment.
(a) All payments of money required in trademark cases, including
fees for the processing of international trademark applications and
registrations that are paid through the Office, shall be made in U.S.
dollars and in the form of a cashier's or certified check, Treasury
note, national bank note, or United States Postal Service money order.
If sent in any other form, the Office may delay or cancel the credit
until collection is made. Checks and money orders must be made payable
to the Director of the United States Patent and Trademark Office.
(Checks made payable to the Commissioner of Patents and Trademarks will
continue to be accepted.) Payments from foreign countries must be
payable and immediately negotiable in the United States for the full
amount of the fee required. Money sent to the Office by mail will be at
the risk of the sender, and letters containing money should be
registered with the United States Postal Service.
(b) Payments of money required for trademark fees may also be made
by credit card. Payment of a fee by credit card must specify the amount
to be charged to the credit card and such other information as is
necessary to process the charge, and is subject to collection of the
fee. The Office will not accept a general authorization to charge fees
to a credit card. If credit card information is provided on a form or
document other than a form provided by the Office for the payment of
fees by credit card, the Office will not be liable if the credit card
number becomes public knowledge.
Sec. 2.208 Deposit accounts.
(a) For the convenience of attorneys, and the general public in
paying any fees due, in ordering copies of records, or services offered
by the Office, deposit accounts may be established in the Office upon
payment of the fee for establishing a deposit account (Sec.
2.6(b)(13)). A minimum deposit of $1,000 is required for paying any
fees due or in ordering any services offered by the Office. The Office
will issue a deposit account statement at the end of each month. A
remittance must be made promptly upon receipt of the statement to cover
the value of items or services charged to the account and thus restore
the account to its established normal deposit. An amount sufficient to
cover all fees, copies, or services requested must always be on
deposit. Charges to accounts with insufficient funds will not be
accepted. A service charge (Sec. 2.6(b)(13)) will be assessed for each
month that the balance at the end of the month is below $1,000.
(b) A general authorization to charge all fees, or only certain
fees to a deposit account containing sufficient funds may be filed in
an individual application, either for the entire pendency of the
application or with respect to a particular document filed. An
authorization to charge a fee to a deposit account will not be
considered payment of the fee on the date the authorization to charge
the fee is effective as to the particular fee to be charged unless
sufficient funds are present in the account to cover the fee.
(c) A deposit account holder may replenish the deposit account by
submitting a payment to the Office. A payment to replenish a deposit
account must be submitted by one of the methods set forth in paragraphs
(c)(1), (c)(2), (c)(3), or (c)(4) of this section.
(1) A payment to replenish a deposit account may be submitted by
electronic funds transfer through the Federal Reserve Fedwire System,
which requires that the following information be provided to the
deposit account holder's bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number with
the Department of the Treasury, which is 13100001; and
(iv) The deposit account holder's company name and deposit account
number.
[[Page 48293]]
(2) A payment to replenish a deposit account may be submitted by
credit card or electronic funds transfer over the Office's Internet Web
site (http://www.uspto.gov).
(3) A payment to replenish a deposit account may be submitted by
mail with the USPS to: Director of the United States Patent and
Trademark Office, P.O. Box 70541, Chicago, Illinois 60673.
(4) A payment to replenish a deposit account may be submitted by
mail with a private delivery service or hand-carrying the payment to:
Director of the United States Patent and Trademark Office, Deposit
Accounts, One Crystal Park, Suite 307, 2011 Crystal Drive, Arlington,
Virginia 22202.
Sec. 2.209 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of
that required. A change of purpose after the payment of a fee, such as
when a party desires to withdraw a trademark application, appeal or
other trademark filing for which a fee was paid, will not entitle a
party to a refund of such fee. The Office will not refund amounts of
twenty-five dollars or less unless a refund is specifically requested,
and will not notify the payor of such amounts. If a party paying a fee
or requesting a refund does not provide the banking information
necessary for making refunds by electronic funds transfer (31 U.S.C.
3332 and 31 CFR part 208), or instruct the Office that refunds are to
be credited to a deposit account, the Director may require such
information, or use the banking information on the payment instrument
to make a refund. Any refund of a fee paid by credit card will be by a
credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the
date the fee was paid, except as otherwise provided in this paragraph.
If the Office charges a deposit account by an amount other than an
amount specifically indicated in an authorization (Sec. 2.208(b)), any
request for refund based upon such charge must be filed within two
years from the date of the deposit account statement indicating such
charge, and include a copy of that deposit account statement. The time
periods set forth in this paragraph are not extendable.
Dated: August 5, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 03-20489 Filed 8-12-03; 8:45 am]
BILLING CODE 3510-16-P