Trademark Law Treaty Implementation Act Changes

SUMMARY: The Patent and Trademark Office (Office) is amending its rules

to implement the Trademark Law Treaty Implementation Act of 1998

(TLTIA), Pub. L. 105-330, 112 Stat. 3064 (15 U.S.C. 1051), and to

otherwise simplify and clarify procedures for registering trademarks,

and for maintaining and renewing trademark registrations. TLTIA

implements the Trademark Law Treaty (TLT). TLT is to make the

procedural requirements of the different national trademark offices

more consistent.

DATES:

Effective Date: October 30, 1999.

Applicability Dates: See SUPPLEMENTARY INFORMATION.

FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of Assistant

Commissioner for Trademarks, by telephone at (703) 308-8910, extension

137; by facsimile transmission addressed to her at (703) 308-9395; or

by mail marked to her attention and addressed to Assistant Commissioner

for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.

SUPPLEMENTARY INFORMATION:

Applicability Dates

Pending Applications for Registration: The TLTIA amendments to the

Act, and these rule changes, shall apply to any application for

registration of a trademark pending on, or filed on or after, October

30, 1999.

Informal Applications: Application papers filed before October 30,

1999, but not reviewed by the Office for compliance with minimum filing

requirements until after October 30, 1999, will be required to meet the

minimum filing requirements (Sec. 2.21) in effect as of the date of

filing. If the application fails to meet the minimum filing

requirements in effect on the date of filing, but meets the minimum

filing requirements in effect on the date the papers are reviewed, the

application will be assigned a filing date of October 30, 1999.

Petitions to Revive: Petitions to revive pending on October 30,

1999, will be reviewed under the unintentional delay standard. See the

discussion below of the changes to Sec. 2.66.

Post Registration: The revised provisions of sections 8 and 9 of

the Act, and these amendments to the rules, apply only to affidavits

and renewal applications filed on or after October 30, 1999. The old

law applies to affidavits and renewal applications filed before October

30, 1999, even if the sixth or tenth anniversary, or the expiration

date of the registration is on or after October 30, 1999. This is true

even for affidavits and renewal applications that are filed before, but

examined after, October 30, 1999.

The revised provisions of section 9 of the Act do not apply to

applications for renewal of registrations that expire before October

30, 1999, even if the applications are examined after October 30, 1999.

For example, if a registration expires on October 29, 1999, the

registrant may file a renewal application within the three-month grace

period provided under the old law. The new six-month grace period does

not apply to registrations with expiration dates prior to October 30,

1999.

Likewise, the new law does not apply to a section 8 affidavit due

before October 30, 1999, even if the affidavit is not examined until

after October 30, 1999. For example, if a registration issued on

October 29, 1993, the registrant must meet the statutory requirements

of section 8 of the Act on or before October 29, 1999. The registrant

cannot take advantage of the six-month grace period, or the deficiency

period, provided under the new law.

The revised provisions of section 8 of the Trademark Act, 15 U.S.C.

1058, and these rule changes, apply to the filing of an affidavit of

continued use or excusable nonuse under section 8 of the Act if: (1)

The sixth or tenth anniversary of registration, or the sixth

anniversary of publication under section 12(c) of the Act, is on or

after October 30, 1999; and (2) the affidavit is filed on or after

October 30, 1999. However, the provisions of section 8(a)(3) of the

Act, requiring the filing of a section 8 affidavit at the end of each

successive ten year period after registration, do not apply to a

registration issued or renewed for a twenty year term (i.e., a

registration issued or renewed before November 16, 1989) until a

renewal application is due.

A Notice of Proposed Rulemaking was published in the Federal

Register (64 FR 25223) on May 11, 1999, and in the Official Gazette of

the Patent and Trademark Office (1223 TMOG 41) on June 8, 1999. A

public hearing was held on June 10, 1999.

Written comments were submitted by two organizations, two law

firms, and five trademark attorneys. Three organizations and one

attorney testified at the oral hearing.

References below to ``the Act,'' ``the Trademark Act'' or ``the

statute'' refer to the Trademark Act of 1946, as amended, 15 U.S.C.

1051 et seq. ``TMEP'' is the Trademark Manual of Examining Procedure

(2nd ed., Rev. 1.1, August 1997).

Application Filing Dates

TLTIA section 103 adds sections 1(a)(4) and 1(b)(4) of the Act to

give the Office authority to establish and change filing date

requirements. The Office is amending Sec. 2.21 to require the following

elements for receipt of a filing date: (1) The name of the applicant;

(2) a name and address for correspondence; (3) a clear drawing of the

mark; (4) a list of the goods or services; and (5) the filing fee for

at least one class of goods or services.

Comment: One comment stated that the proposed requirement in

Sec. 2.21(a)(3) for a ``clear drawing of the mark'' was confusing, and

that it could impose a hardship on some applicants, e.g., where the

attorney's only copy of the drawing is a fax received from a foreign

client.

Response: The requirement for a ``clear drawing of the mark'' is

intended to be more lenient than the current requirement for a drawing

``substantially meeting all the requirements of Sec. 2.52.'' A clear

drawing of the mark is essential, so that the application can be

properly examined, and so that the public will have adequate notice of

the mark.

The following elements will no longer be required for receipt of a

filing date: a certified copy of the foreign registration in a section

44(e) application; an allegation of the applicant's use or bona fide

intention to use the mark in commerce; a specimen and date of first use

in commerce in a section 1(a) application; a stated filing basis; and a

signature. These elements will instead be required during examination.

Comment: One comment stated that while a filing date should not be

denied if the application does not include a filing basis, the basis

should be made of record as soon as possible.

Response: The Office expects that most applicants will state the

filing basis in the original application. If the application does not

include the filing basis, this information will be required in the

first Office action.

[[Page 48901]]

Bulky Specimens

Amended Sec. 2.56(d)(1) requires that specimens be flat and no

larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.)

long. This is consistent with current Sec. 2.56. Section 2.56(d)(2) is

added, stating that if an applicant submits a specimen that exceeds the

size requirement (a ``bulky specimen''), the Office will create a

facsimile of the specimen that meets the requirements of the rule

(i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by

11.69 inches (29.7 cm.) long), insert it in the application file

wrapper, and destroy the original bulky specimen.

Currently, when an applicant submits a specimen that does not meet

the requirements of Sec. 2.56 (i.e., is not flat, exceeds the size

limitation, etc.), the Office retains the specimen even though it is

impossible to attach it to the application file wrapper. This requires

substantial special handling because the Office must store and track

the specimens separately from the application file wrappers. Because

the number of newly filed applications has increased from approximately

83,000 to over 233,000 per year over the past ten years, and the number

of pending applications has increased from less than 100,000 to over

350,000 in the same period, it has become increasingly difficult to

ensure that the bulky specimens follow the application files. As the

number of applications has increased, bulky materials submitted as

specimens have also increased, requiring an increased use of limited

resources to handle the bulky materials. Further, because specimens of

this nature are often misplaced or lost during examination processing,

the Office must then require new specimens, slowing examination and

inconveniencing applicants.

Because the requirement for flat specimens can be easily satisfied

through the use of photographs, photocopies, or other means of

reproduction, the Office will no longer retain bulky materials

submitted as specimens. In very limited circumstances, the Office will

continue to accept specimens consisting of videotapes, audiotapes, CDs,

computer diskettes, and similar materials where there are no non-bulky

alternatives, and the submission is the only means available for

showing use of the mark.

Comment: One comment supported the proposed procedure for creating

facsimiles of bulky specimens. Another comment supported the proposed

procedure, provided that the Office makes copies of the front, back,

and all portions of the specimens.

Response: The Office will attempt to capture the mark as used on

the specimen, but may not copy all portions of the bulky specimens. If

an additional specimen is needed, the examining attorney will require a

substitute specimen that meets the size requirements of the rules.

Number of Specimens Required

The Office is amending Secs. 2.56(a), 2.76(b)(2), 2.86(b), and

2.88(b)(2) to require one rather than three specimens with an

application under section 1 of the Act, or an amendment to allege use

or statement of use of a mark in an application under section 1(b) of

the Act. The Office previously required three specimens so that an

interested party, such as a potential opposer, could permanently remove

a specimen from an application file, yet not leave the file without

specimens. TMEP Sec. 905.01. However, multiple copies of specimens are

no longer necessary because the public may make photocopies of a single

specimen.

Comment: Three comments opposed the proposed requirement for only

one specimen, stating that if only one specimen is required, and that

specimen is lost, the file will be left with no specimen; that multiple

specimens enable interested third parties to obtain an original without

having to contact the applicant directly; and that current photocopying

technology does not adequately reproduce color, small details, tones,

low-contrast images, or highly ornate/intricate or densely worded

specimens.

Response: The Office does not permit the removal of other documents

from application files and will no longer permit specimens to be

removed from files. Prohibiting the removal of specimens will ensure

that there is a complete record of the submissions made by the

applicant. Where removal is permitted, a third party could mistakenly

remove a unique specimen, thinking it is merely a duplicate. This would

leave the application file incomplete.

Currently, 10% of new applications for registration are filed

electronically, and the Office expects this number to increase

dramatically in the near future. Only one specimen is required with an

electronically filed application, and it is submitted as a digitized

image (Sec. 2.56(d)(4)). Considering the increasing number of

electronic filings and the move in the future to a paperless Office,

the Office believes that three specimens are unnecessary.

Comment: One comment stated that it generally supports the proposed

requirement for only one specimen, but noted that there will be a

greater urgency for the Office to ensure that the single specimen is

always available for public inspection.

Response: As noted above, the Office will no longer permit

specimens to be removed from files. The Office now microfilms all

incoming applications, so that a record of the specimen is available to

the public if it is lost. In the near future, the Office will be

scanning all incoming applications and allegations of use and will have

an electronic image of any specimen that is lost.

Comment: One comment asked whether more than one specimen may be

submitted.

Response: Yes, while only one specimen will be required, a party

may choose to file more than one specimen. Multiple specimens will be

retained in the file as long as they do not exceed the size limitations

of Sec. 2.56(d)(1).

Persons Who May Sign

Currently, sections 1(a)(1)(A) and 1(b)(1)(A) of the Act require

that an application by a juristic applicant be signed ``by a member of

the firm or an officer of the corporation or association applying.''

TLTIA section 103 amends sections 1(a) and 1(b) of the Act to eliminate

the specification of the appropriate person to sign on behalf of an

applicant.

The applicant or registrant, and the applicant's or registrant's

attorney, are best able to determine who should sign documents filed in

the Office. Therefore, the Office will no longer question the authority

of the person who signs a verification, or a renewal application,

unless there is an inconsistency in the record as to the signatory's

authority to sign.

Proposed Sec. 2.33(a) stated that a person properly authorized to

sign on behalf of the applicant ``includes a person with legal

authority to bind the applicant and/or a person with firsthand

knowledge and actual or implied authority to act on behalf of the

applicant.''

Comment: One comment suggested that Sec. 2.33(a) be amended to

state that a person who is properly authorized to sign on behalf of the

applicant includes: (1) A person with legal authority to bind the

applicant, (2) a person with firsthand knowledge of the facts asserted,

and actual or implied authority to act on behalf of the applicant, and

(3) an attorney as defined in Sec. 10.1(c) of this chapter who has an

actual or implied, written or verbal power of attorney from the

applicant, provided that the Office may require written confirmation of

[[Page 48902]]

such power of attorney subsequent to the filing of the verified

statement.

Response: The suggestion has been adopted, but modified slightly.

The Office will not require written confirmation of a power of

attorney, but will accept the attorney's word that he or she is

authorized to sign on behalf of the applicant.

Comment: One comment suggested that ``and/or'' be changed to

``or.''

Response: The suggestion has been adopted.

Comment: One comment suggested that ``implied authority'' be

changed to ``apparent authority.''

Response: The suggestion has not been adopted. The Office believes

that the ``implied authority'' standard is broad enough to cover most

circumstances and to allow applicants flexibility in determining who

can sign verifications.

Comment: Four comments requested clarification as to whether

attorneys can sign on behalf of clients, and whether any special power

of attorney is needed.

Response: Sections 2.33(a) and 2.161(b) have been amended to

provide for signature of verifications by attorneys. No special power

of attorney will be required.

Renewal applications may also be signed by attorneys. Verification

of renewal applications is no longer required. Section 2.183(a)

requires that the renewal application be executed by ``the registrant

or the registrant's representative.''

Filing by Owner

Although TLTIA amends the statute to eliminate the specification of

the proper party to sign on behalf of an applicant or registrant, the

statute still requires that the owner of the mark file an application

for registration, amendment to allege use, statement of use, request

for extension of time to file a statement of use, and section 8

affidavit. See sections 1(a)(1), 1(b)(1), 1(d)(1), 1(d)(2), and 8(b) of

the Act.

TLTIA section 105 amends section 8 of the Act to require that the

owner of the mark file an affidavit of continued use or excusable

nonuse within the time period set forth in section 8(a) of the Act. The

legislative history states:

Throughout the revised section 8, the term ``registrant'' has been

replaced by the term ``owner.'' The practice at the Patent and

Trademark Office has been to require that the current owner of the

registration file all the post-registration affidavits needed to

maintain a registration. The current owner of the registration must

aver to actual knowledge of the use of the mark in the subject

registration. However, the definition of ``registrant'' in section

45 of the Act states that the ``terms 'applicant' and 'registrant'

embrace the legal representatives, predecessors, successors and

assigns of each applicant and registrant.'' Therefore, use of the

term ``registrant'' in section 8 of the Act would imply that any

legal representative, predecessor, successor or assign of the

registrant could successfully file the affidavits required by

sections 8 and 9. To correct this situation, and to keep with the

general principal (sic), as set out in section 1, that the owner is

the proper person to prosecute an application, section 8 has been

amended to state that the owner must file the affidavits required by

the section.

H.R. Rep. No. 194, 105th Cong., 1st Sess. 18-19 (1997).

Therefore, the Office is amending Secs. 2.163(a) and 2.164(b) to

make it clear that filing by the owner is a minimum requirement that

cannot be cured after expiration of the filing period set forth in

section 8 of the Act.

Under sections 1(a) and 1(b) of the Act, an application for

registration of a mark must also be filed by the owner. Therefore, new

Sec. 2.71(d) states that although a mistake in setting out the

applicant's name can be corrected, the application cannot be amended to

set forth a different entity as the applicant; and that an application

is void if it is filed in the name of an entity that did not own the

mark as of the filing date of the application. This codifies current

practice. TMEP Sec. 802.07. Huang v. Tzu Wei Chen Food Co. Ltd., 7

USPQ2d 1335 (Fed. Cir. 1988) (application filed in name of individual

two days after mark was acquired by newly formed corporation held

void); Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB

1996) (application filed in name of entity that did not yet exist not

void); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991)

(application filed by joint venturer void where mark owned by joint

venture); U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183

USPQ 613 (Comm'r Pats. 1974) (misidentification of applicant's name may

be corrected).

The Office is also amending Secs. 2.88(e)(3), 2.89(a)(3), and

2.89(b)(3) to state that if a statement of use or request for an

extension of time to file a statement of use is unsigned or signed by

the wrong party, a substitute verification must be submitted before the

expiration of the statutory period for filing the statement of use.

This is consistent with current practice. See TMEP

Secs. 1105.05(f)(i)(A) and 1105.05(d). Sections 1(d)(1) and (2) of the

Act require verification by the owner within the statutory period for

filing the statement of use. Therefore, the Office cannot extend or

waive the deadline for filing the verification. In re Kinsman, 33

USPQ2d 1057 (Comm'r Pats. 1993).

Material Alteration

The Federal Circuit held in In re ECCS, 94 F.3d 1578, 39 USPQ2d

2001 (Fed. Cir. 1996) that an applicant may amend an application based

on use to correct an ``internal inconsistency'' in the original

application. Id. at 1581, 39 USPQ2d at 2004. An application is

``internally inconsistent'' if the mark on the drawing does not agree

with the mark on the specimens filed with the application. Id. As a

result, the Office has been accepting all amendments to drawings in

use-based applications if there is an inconsistency in the initial

application.

However, the Office does not believe that it is in the public

interest to accept amendments that materially alter the mark on the

original drawing. When the Office receives a new application, the mark

on the drawing is promptly filed in the Trademark Search Library and

entered into the Office's electronic and administrative systems.

Because the granting of a filing date to an application potentially

establishes a date of constructive use of the mark under section 7(c)

of the Act, timely and accurate public notification of the filing of

applications is important. Accepting an amendment that materially

alters the mark on the original drawing is unfair to third parties who

search Office records between the application filing date and the date

of the amendment, because they do not have accurate information about

earlier-filed applications. Relying on the search of Office records, a

third party may innocently begin using a mark that conflicts with the

amended mark, but not with the original mark. Also, an examining

attorney may approve a later-filed application for registration of a

mark that conflicts with the amended mark, but not with the original

mark. Therefore, the Office is amending Sec. 2.72 to prohibit

amendments that materially alter the mark on the original drawing.

Comments: One law firm opposed any amendment of Sec. 2.72, stating

that the decisions in ECCS and In re Dekra, 44 USPQ2d 1693 (TTAB 1997)

established a fair compromise between the rights of the applicant and

the rights of third parties. One organization stated that minor changes

like the change permitted in ECCS should be allowed, but that it ``does

not endorse the type of substantial change to a drawing permitted in

Dekra,'' and expressed concern that the amendment to Sec. 2.72 could

lead to a more stringent standard for determining material alteration

than the standard set forth in ECCS. The

[[Page 48903]]

comment further noted that the standard for determining whether the

mark in the drawing agrees with the mark in the foreign registration in

a section 44 application is stricter than the standard used to

determine whether specimens support use of a mark in an application

under section 1 of the Trademark Act, and suggested that if a uniform

standard for determining material alteration is adopted, the more

liberal standard applied to section 1(a) or section 1(b) applications

should be used.

Response: ECCS held that under current Sec. 2.72(b), the specimens

filed with the original application in a use-based application must be

considered in determining what mark the applicant seeks to register.

However, the court specifically noted that seven decisions cited in the

ECCS decision were not affected: ``We have carefully examined all * * *

(seven) cases and find that none has any bearing on the situation

before us in which an original application is internally inconsistent

as to what the mark is, the specimen displaying one mark and the

drawing a slightly different mark .* * *'' Id. at 1581, 39 USPQ2d at

2004 (emphasis added). ECCS specifically cited In re Abolio y Rubio

S.A.C.I. y G., 24 USPQ2d 1152 (TTAB 1992) and In re Meditech Int'l

Corp., 25 USPQ2d 1159 (TTAB 1990). ECCS at 1581, 39 USPQ2d at 2004.

Abolio y Rubio involved an application based on a foreign registration

(15 U.S.C. 1026(e)) in which the drawing omitted the design shown in

the foreign registration submitted with the application. Meditech

concerned a use-based application in which the drawing contained the

typed words ``DESIGN OF A BLUE STAR'' while the specimens showed a

design of twenty blue stars without the words shown in the drawing. In

both of these cases, the applicants were not permitted to amend their

drawings. Subsequently, the Federal Circuit in In re Hacot-Colombier,

affirmed the Board's refusal to permit an applicant to amend its

drawing in an application based on a foreign-filed application, 15

U.S.C. 1126(d). 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). Citing

Abolio y Rubio with approval, the Court gave deference to the agency's

interpretation that Sec. 2.72 includes both a prohibition against

material alterations and a requirement that any alteration conform to

the mark in the foreign registration. Id. at 619, 41 USPQ2d at 1526.

The present amendment to Sec. 2.72 is not intended to change the

standard for determining what constitutes a material alteration as

discussed in the Board cases cited in ECCS, or in Hacot-Colombier.

Color Drawings

Section 2.52 is amended to delete the color lining chart currently

in Sec. 2.52(e).

Comment: One comment asked whether the Office would accept drawings

in actual color.

Response: The Office will no longer deny an application a filing

date if the mark is depicted in color. However, the Office does not yet

have the technology to scan marks in color, and the marks will be

uploaded into the Office's automated systems in black and white.

Comment: One comment asked whether marks would be published in the

Official Gazette and issued in color.

Response: The Office will not publish and issue marks in color on

October 30, 1999. However, the Office anticipates publishing and

issuing marks in color in the future.

Comment: Two comments requested that color photocopiers be made

available to the public.

Response: Color photocopiers are very expensive and will not be

available to the public on October 30, 1999. The Office is looking into

purchasing a color copier for use by the public, for a fee, and will

make it available as soon as possible.

Comment: One comment suggested that the Office should permit the

use of lining or stippling to indicate color on a drawing, at least

until an alternative method of indicating color gains wide acceptance.

Response: There will be a transition period in which the Office

will continue to publish and register marks that contain the color

linings currently in Sec. 2.52(e). An Official Gazette notice will

advise when color lining is no longer acceptable.

Comment: One comment noted that proposed Sec. 2.52(a)(2)(i)

referred to color lining, while the color lining chart was deleted from

Sec. 2.52(e).

Response: The reference to color lining has been deleted from

Sec. 2.52(a)(2)(i).

Comment: One comment suggested that the Office clarify what is a

sufficient description and location of color applied to a mark.

Response: The application must include a clear and specific

description of the mark, identifying the mark as consisting of the

particular color as applied to the goods or services. If the color is

applied only to a portion of the goods, the description must indicate

the specific portion. Similarly, if the mark includes gradations of

color, the description should so indicate. The Office will issue an

examination guide giving further guidance as to how it will process

color drawings.

Comment: One comment suggested that the Office accept color

photographs to describe the color claimed in a mark.

Response: In addition to a written description of a mark, the

Office will accept color photographs for the record to describe the

color claimed in a mark.

Comment: Two comments suggested that applicants should have the

option to identify color using a generally accepted color

identification system.

Response: The Office does not endorse any one commercial color

identification system. However, in addition to a written description of

the color contained in a mark, an applicant may refer to a commercial

color identification system to describe color.

Revival of Abandoned Applications

Effective October 30, 1999, sections 1(d)(4) and 12(b) of the Act,

and section 2.66 permit the revival of an abandoned application where

the delay in responding to an Office action or notice of allowance is

``unintentional.'' A showing of ``unavoidable'' delay is no longer

required. All petitions to revive pending on or filed on or after

October 30, 1999, will be reviewed under the unintentional delay

standard.

Under Sec. 2.66(a), the applicant must file a petition to revive

(1) within two months of the mailing date of the notice of abandonment;

or (2) within two months of actual knowledge of the abandonment, if the

applicant did not receive the notice of abandonment, and the applicant

was diligent in checking the status of the application. These deadlines

will be strictly enforced.

The written statement that the delay was unintentional must be

signed by someone with firsthand knowledge of the facts, but it need

not be verified or supported by a declaration under Sec. 2.20.

It is not necessary to explain the circumstances that caused the

unintentional delay. The Office will generally not question the

applicant's assertion that the delay in responding to an Office action

or notice of allowance was unintentional, and will grant the petition,

unless there is information in the record indicating that the delay was

in fact intentional.

See the discussion below of the amendments to Sec. 2.66 for further

information on the requirements for filing a petition to revive.

Comment: One comment suggested that Sec. 2.66(a) (1) and (2) be

amended to provide for filing a petition to revive within two months of

``the mailing date of an adverse decision on a Request For

Reinstatement,'' so as to avoid a disincentive for filing requests for

reinstatement.

[[Page 48904]]

Response: The suggestion has not been adopted because it is

unnecessary. When the Office denies a request for reinstatement, the

Office routinely gives the applicant an opportunity to pay the petition

fee and convert the request for reinstatement into a petition to

revive.

Comment: One comment suggested that Sec. 2.66(a) be amended to

provide for the filing of a petition to revive where the applicant did

not timely respond to ``a decision on the petition (other than a

petition to revive under this rule),'' because ``(t)here may be

instances where a decision on petition is misdirected by the U.S.

Postal Service and results in the abandonment of the application. For

example, consider a petition for an extension of time to commence

judicial review under 37 CFR 2.145(e).''

Response: The suggestion has not been adopted. Sections 1(d)(1) and

12(b) of the Act, 15 U.S.C. 1051(d)(1) and 1062(b), provide for revival

of an abandoned application based on a showing of unintentional delay

only where there is a delay in responding to an Office action or filing

a statement of use or request for an extension of time to file a

statement of use. In the example provided, the remedy is found in

Sec. 2.145(e)(2), which provides that the Commissioner may extend the

time for filing an appeal or commencing a civil action ``upon written

request after the expiration of the period for filing an appeal or

commencing a civil action upon a showing that the failure to act was

the result of excusable neglect.'' In other situations, the remedy is

to file a petition to the Commissioner under Sec. 2.146(a)(5), under

which the Commissioner may waive any provision of the rules that is not

a provision of the statute, where an extraordinary situation exists,

justice requires, and no other party is injured thereby.

Due Diligence

Sections 2.66(a)(2) and 2.146(i) are amended to indicate that where

a petitioner seeks to reactivate an application or registration that

was abandoned or cancelled due to the alleged loss or mishandling of

papers mailed to or from the Office, the petition will be denied if the

petitioner was not diligent in checking the status of the application

or registration. This codifies the long-standing past practice of the

Office. TMEP sections 413, 1112.05(b)(ii), and 1704. To be considered

diligent, the petitioner must check the status of the application or

registration that is the subject of the petition within one year of the

last filing or receipt of a notice from the Office for which further

action by the Office is expected.

The Office now denies petitions when the petitioner waits too long

before checking the status of an application or registration. The

rationale is that granting the petition would be unfair to third

parties who may have searched Office records and relied to their

detriment on information that an application was abandoned or that a

registration had expired or been cancelled. A third party may have

diligently searched Office records and begun using a mark because the

search showed no earlier-filed conflicting marks, or an examining

attorney may have searched Office records and approved a later-filed

application for a conflicting mark.

A party can check the status through the Trademark Status Line

((703) 305-8747) or through the Trademark Applications and

Registrations Retrieval (TARR) database on the Office's World Wide Web

site at http://www.uspto.gov/go/tarr/. Written status inquiries are

discouraged.

Comment: One comment suggested that the one-year due diligence

standard be expressly incorporated into Secs. 2.66(a)(2) and 2.146(i).

Response: The suggestion has been adopted.

Comment: One comment requested guidance as to how one proves that

he or she has been diligent in monitoring the status of a pending

matter.

Response: A party may call the Status Line, or access status

information through the World Wide Web, and make a notation in the

party's own file noting the date of the status inquiry, and the

substance of the information learned. If it is ever necessary to

petition for corrective action, the dates and substance of the status

inquiries should be summarized in the petition. No further

documentation is necessary.

Comment: One comment objected to the requirement that petitioners

be diligent in monitoring the status of pending matters, noting that

docketing a one-year status check every time a paper is filed or

received results in a maze of confusing entries in docketing systems

that makes it difficult to tell which dates have been superseded.

Response: To protect the interests of third parties and to maintain

the integrity of the register, the Office believes that requests to

reactivate abandoned applications or cancelled registrations must be

made within a reasonable time; the Office does not believe that

requiring a status check once per year is unreasonable. Therefore, the

Office will continue its long-standing practice of denying petitions to

revive under Sec. 2.66 and petitions to the Commissioner under

Sec. 2.146 if the petitioner has waited too long before investigating

the problem.

Amendment of Basis After Publication

Proposed Sec. 2.35(b) prohibited an amendment to add or substitute

a basis after publication.

Comments: Four comments opposed the proposed prohibition against

amending the basis after publication, and one comment supported the

proposal.

Response: Because of the arguments submitted by the opponents of

the proposed rule prohibiting amendment of the basis after publication,

the Office is withdrawing the proposal. Section 2.35(b) is instead

amended to incorporate current practice, i.e., to state that an

application that is not the subject of an inter partes proceeding

before the Trademark Trial and Appeal Board may be amended to add or

substitute a basis after publication, if the applicant files a petition

to the Commissioner; and that republication will always be required.

TMEP Sec. 1006.04. An application that is the subject of an inter

partes proceeding before the Trademark Trial and Appeal Board is

governed by Sec. 2.133(a).

Specification of Type of Commerce No Longer Required

The Office will no longer require a specification of the type of

commerce in which a mark is used in an application for registration

based on use in commerce under section 1(a) of the Act, allegation of

use in an application based on section 1(b) of the Act, affidavit of

continued use under section 8 of the Act (section 8 affidavit), or

affidavit of incontestability under section 15 of the Act (section 15

affidavit).

The Office proposed to eliminate the requirements that sections 8

and 15 affidavits specify the type of commerce in which the mark is

used, currently required by Secs. 2.162(e) and 2.167(c). Sections 8 and

15 of the Act do not require that the affidavits list the type of

commerce. Because the definition of ``commerce'' in section 45 of the

Act is ``all commerce which may lawfully be regulated by Congress,''

the Office will presume that a registrant who states that the mark is

in use in commerce is stating that the mark is in use in a type of

commerce that Congress can regulate.

Comment: No comments opposed the proposed deletion of the

requirement that section 8 and section 15 affidavits specify the type

of commerce. One comment suggested that Secs. 2.33(b)(1),

2.34(a)(1)(iii), 2.76(b)(1)(ii), and 2.88(b)(1)(ii) be amended to

require an allegation that the mark is in ``use in

[[Page 48905]]

commerce that can be regulated by the Congress of the United States of

America,'' rather than a specification of the type of commerce in which

the mark is used, in an application for registration or allegation of

use.

Response: The suggestion has been adopted, but modified slightly.

Sections 1(a), 1(c), and 1(d) of the Act do not require that an

applicant specify the type of commerce in which the mark is used in an

application or allegation of use. Sections 2.33(b)(1), 2.34(a)(1)(iii),

2.76(b)(1)(ii), and 2.88(b)(1)(ii) are amended to delete the

requirement that the applicant specify the type of commerce in which

the mark is used. The Office will not require that the applicant

specifically state that the mark is in use in commerce that the United

States Congress can regulate. Instead, the Office will presume that an

applicant who states that the mark is in use in commerce is stating

that the mark is in use in a type of commerce that Congress can

regulate.

Statement of Method of Use or Intended Use of Marks No Longer

Required

The rules no longer require a statement of the applicant's method

or intended method of use of a mark, because sections 1(a), 1(b), and

1(d) of the Act have been amended to omit these requirements.

Post Registration

TLTIA sections 105 and 106 amend: (1) section 8 of the Act, 15

U.S.C. 1058, to add a requirement for filing an affidavit or

declaration of continued use or excusable nonuse in the year before the

end of every ten-year period after the date of registration; and (2)

section 9 of the Act, 15 U.S.C. 1059, to delete the requirement for a

declaration of continued use or excusable nonuse in a renewal

application. Thus, every tenth year, the owner of a registration must

file both a section 8 affidavit and a renewal application.

The statutory filing periods for the ten year section 8 affidavits

are the same as the statutory filing periods for renewal applications.

The Office will create a combined ``Sections 8 and 9'' form to make it

easy to make both filings in a single document. In substance, the

requirements of the combined filing under amended sections 8 and 9 of

the Act will be the same as the requirements for renewal under current

law.

A section 8 affidavit between the fifth and sixth year after the

date of registration is also required. This is consistent with current

law. No renewal application is required during the sixth year.

TLTIA sections 105 and 106 amend sections 8 and 9 of the Act to

permit filing within a six-month grace period after the deadline set

forth in the statute, with an additional surcharge. The surcharge for

filing a section 8 affidavit or section 9 renewal application during

the grace period is $100 per class. If a combined filing under sections

8 and 9 of the Act is filed during the grace period, two grace period

surcharges must be included for each class, one for the section 8

affidavit and another for the section 9 renewal application.

TLTIA sections 105 and 106 also amend sections 8(c)(2) and 9(a) of

the Act to allow for the correction of most deficiencies after the

deadline set forth in the statute, with payment of an additional

surcharge. The surcharge for correcting a deficiency in a section 8

affidavit or a section 9 renewal application is $100. Only a single

deficiency surcharge will be required for correcting deficiencies in a

combined sections 8 and 9 filing, even if both the section 8 affidavit

and the renewal application are deficient.

Comment: One comment requested clarification as to how the

deficiency and grace period fees would be applied to section 8

affidavits and renewal applications pending before or around the date

of implementation.

Response: The new fees do not apply to section 8 affidavits and

renewal applications filed before October 30, 1999. The revised

provisions of sections 8 and 9 of the Act, and these amendments to the

rules, apply only to affidavits and renewal applications filed on or

after October 30, 1999. The old law, and the old fees, apply to

affidavits and renewal applications filed before October 30, 1999, even

if the sixth or tenth anniversary, or the expiration date, of the

registration is on or after October 30, 1999. This is true even for

affidavits and renewal applications that are filed before, but examined

after, October 30, 1999. See the discussion under the heading ``Dates/

Applicability Dates,'' supra, for further information about the

effective date of TLTIA and this final rule.

Comment: One comment suggested that it would be unfair to charge

the deficiency surcharge if large backlogs prevent examination in a

timely manner.

Response: Ultimately, it is the registrant who is responsible for

filing documents that meet the requirements of the Act and the rules.

The surcharges required by sections 8(c)(2) and 9(a) of the Act will be

charged regardless of whether there are backlogs in examination. Under

current law, statutory requirements must be met before the end of the

filing period set forth in the Act, or the registration will be

cancelled. The new law provides a benefit to registrants because it

permits correction of most statutory deficiencies after the expiration

of the statutory filing period, albeit for an additional fee. To avoid

deficiency fees, registrants are encouraged to file section 8

affidavits and renewal applications early in the statutory period.

Under both sections 8 and 9 of the Act, there is a one-year period in

which a section 8 affidavit or renewal application can be filed, plus

an additional six-month grace period. Section 8 affidavits are now

examined within six months of filing, and renewal applications are

examined less than two months after filing.

Comment: One comment stated that it would be unfair to charge a

deficiency surcharge if the information needed to cure defects is

within the control of the PTO, e.g., an assignment or change of name

waiting to be recorded.

Response: If the party who filed was the owner of the registration

at the time of filing, there will be no deficiency surcharge for

recording documents or submitting other evidence of ownership, before

or after the expiration of the filing periods set forth in the Act.

Comment: One comment asked why there was a surcharge for correcting

deficiencies in a section 8 affidavit, but not for a section 15

affidavit.

Response: Section 8(c)(2) of the Act requires a surcharge for

correcting deficiencies after expiration of the deadline set forth in

section 8 of the Act, while section 15 of the Act does not require a

deficiency surcharge. There is no statutory cutoff date for filing a

section 15 affidavit. Amendments or corrections to section 15

affidavits are not accepted, but substitute affidavits may be filed.

TMEP Sec. 1604.03.

Comment: The Office had proposed decreasing the renewal fee from

$300 to $200 per class, and increasing the filing fees for sections 8

and 15 affidavits from $100 to $200 per class. Two comments objected to

the proposed increase in filing fees for sections 8 and 15 affidavits.

Response: The Office is withdrawing these proposals at this time.

Comment: One comment suggested that the automated records of the

Office should specify which affidavits had been filed under section 8

of the Act, e.g., ``first section 8 affidavit,'' ``second section 8

affidavit,'' etc.

Response: The Office's automated records will identify a section 8

affidavit as ``Section 8 (6 year)'' or ``Section 8 (10 year). Further

information may be obtained from the Status Line at (703) 305-8747, or

from the Trademark

[[Page 48906]]

Applications and Registrations Retrieval (TARR) database on the

Office's World Wide Web site at http://www.uspto.gov/go/tarr/. The

prosecution history will show the number of section 8 affidavits that

have been filed.

Recording Assignments and Changes of Name

Currently, the Office will record only an original document or a

true copy of an original. TLTIA section 107 amends section 10 of the

Act to allow recordation of a document that is not an original or a

true copy.

Comment: One comment suggested that Sec. 3.25(a)(4) should be

amended to delete the requirement for signature by the assignee when an

assignment is supported by a statement explaining how the conveyance

affects title. The comment noted that assignments signed only by the

assignor have been routinely recorded for many years; that the rule as

written would be a major change in policy; that the assignment of

trademarks and the associated goodwill is regarded as a matter of state

law, and signature by the assignee is not required by the law of a

number of states; and that the proposed rule would seek to impose by

Federal law an additional requirement in a transaction that is clearly

covered by state law, and raises a question as to whether there is

Federal authority for doing so.

Response: The suggestion has not been adopted. Section 3.25(a) sets

forth a number of types of underlying documents one can submit to the

Office to support a request to record an assignment. Section 3.25(a)(4)

is not a requirement, but only one alternative available to a party

seeking to record an assignment. Traditionally, the only document that

the Office accepted to support a request to record an assignment was

the original assignment document or a true copy of the original

document. Amended Sec. 3.25(a) provides a wider range of supporting

documents. The Office will continue to accept an original assignment

document, or a true copy of an original, that is signed only by the

assignor.

Comment: One comment suggested that Sec. 3.25(b) should be amended

to continue the current requirement for an original or a true copy of

an original with a request to record a change of name. The comment

noted that it is generally easy to obtain a document reflecting a name

change, and would therefore not be a significant burden to parties

seeking to record assignments; and that the proposed rule requiring

only a legible cover sheet would result in a burden to members of the

public seeking to confirm the change in ownership.

Response: The suggestion has not been adopted. The deletion of the

requirement for an underlying document supporting a request to record a

change of name was made because section 10 of the Act no longer

requires an underlying document in a request to record a name change.

Assignment of Section 1(b) Applications

TLTIA section 107 amends section 10 of the Act to permit an

assignment after the applicant files an amendment to allege use under

section 1(c) of the Act. Currently, a section 1(b) application cannot

be assigned until after the filing of a statement of use under section

1(d) of the Act, except to a successor to the applicant's business, or

the portion of the business to which the mark pertains. This amendment

corrects an oversight in the Trademark Law Revision Act of 1988 (Title

1 of Pub. L. 100-667, 102 Stat. 3935 (15 U.S.C. 1051)), which amended

section 10 of the Act to permit an assignment of a section 1(b)

application to someone other than a successor to the applicant's

business only after the filing of a statement of use under section 1(d)

of the Act. The substance of statements of use and amendments to allege

use are the same, and the only difference is the time of filing, so

there is no reason to treat them differently.

Discussion of Specific Rules Changed or Added

The Office is amending rules 1.1, 1.4, 1.5, 1.6, 1.23, 2.1, 2.6,

2.17, 2.20, 2.21, 2.31, 2.32, 2.33, 2.34, 2.35, 2.37, 2.38, 2.39, 2.45,

2.51, 2.52, 2.56, 2.57, 2.58, 2.59, 2.66, 2.71, 2.72, 2.76, 2.86, 2.88,

2.89, 2.101, 2.111, 2.146, 2.151, 2.155, 2.156, 2.160, 2.161, 2.162,

2.163, 2.164, 2.165, 2.166, 2.167, 2.168, 2.173, 2.181, 2.182, 2.183,

2.184, 2.185, 2.186, 3.16, 3.24, 3.25, 3.28, 3.31, and 6.1.

Section 1.1(a)(2) is amended to set forth all the addresses for

filing trademark correspondence in one rule.

Section 1.1(a)(2)(i) is amended to exempt papers filed

electronically from the requirement that correspondence be mailed to

the street address of the Office.

Section 1.1(a)(2)(v) is amended to state that an applicant may

transmit an application for trademark registration electronically, but

only if the applicant uses the Office's electronic form.

Section 1.4(a)(2) is amended to correct a cross-reference.

Section 1.4(d)(1)(iii) is added to provide for signature of

electronically transmitted trademark filings, where permitted.

Section 1.5(c) is amended to clarify the requirements for

identifying trademark applications and registrations.

Section 1.6(a) is amended to provide that the Office will consider

trademark-related correspondence transmitted electronically to have

been filed on the date of transmission, regardless of whether that date

is a Saturday, Sunday, or Federal holiday within the District of

Columbia. This is consistent with the treatment of correspondence filed

as Express Mail with the United States Postal Service (USPS) under

Sec. 1.10.

Comment: One comment suggested that Sec. 1.6(a)(1) be amended to

state that Express Mail deposited on a Saturday, Sunday, or Federal

holiday will receive a filing date as of the date of deposit with the

USPS.

Response: The suggestion has not been adopted. Sections 1.6(a)(2)

and 1.10(a) already state that correspondence filed by Express Mail

will be considered filed as of the date of deposit with USPS, and these

sections do not limit the date of deposit as Express Mail to a day that

is not a weekend or Federal holiday. Therefore, it is not necessary to

repeat this information in Sec. 1.6(a)(1). The Office now stamps

correspondence filed by Express Mail under Sec. 1.10 with the USPS

``date in,'' regardless of whether that date is a Saturday, Sunday, or

Federal holiday within the District of Columbia. TMEP Sec. 702.02(f);

MPEP Sec. 513.

The current text of Sec. 1.23 is designated as paragraph (a), and

amended to clarify that payment must be made in U.S. dollars, and in

the form of a cashier's or certified check, Treasury note, or USPS

money order to be considered unconditional payment of a fee. As with

current practice, payment of a fee by other forms (e.g., by personal or

corporate check, or authorization to charge a credit card) is subject

to actual collection of the fee.

Section 1.23 is also amended to add a paragraph (b), providing that

payments of money for fees in electronically filed trademark

applications, or electronic submissions in trademark applications, may

also be made by credit card. The Office previously limited fee payment

by credit card to the fees required for information products, and will

continue to accept payment of information product fees by credit card.

Section 1.23(b) will also provide that payment of a fee by credit

card must specify the amount to be charged and such other information

as is necessary to process the charge, and is subject to collection of

the fee.

[[Page 48907]]

Section 1.23(b) will further provide that the Office will not

accept a general authorization to charge fees to a credit card. The

Office cannot accept an authorization to charge ``all required fees''

or ``the filing fee'' to a credit card, because the Office cannot

determine with certainty the amount of an unspecified fee (the amount

of the ``required fee'' or the applicable ``filing fee'') within the

time frame for reporting a charge to the credit card company. Also, the

Office cannot accept charges to credit cards that require the use of a

personal identification number (PIN) (e.g., certain debit cards or

check cards).

Section 1.23(b) also contains a warning that 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 is made public. The

Office currently provides an electronic form for use when paying a fee

in an electronically filed trademark application or electronic

submission in a trademark application. This form will not be included

in the records open to public inspection in the file of a trademark

matter. However, the inclusion of credit card information on forms or

documents other than the electronic form provided by the Office may

result in the release of credit card information.

Section 2.1 is amended to update a cross-reference.

Section 2.6(a)(6) is amended to delete reference to the three-month

renewal grace period. TLTIA changes the grace period to six months.

Section 2.6(a)(14) is removed because it is unnecessary. The cost

of a combined affidavit or declaration under sections 8 and 15 of the

Act is the sum of the cost of the individual filings.

Section 2.6(a)(14) is added, requiring a $100 surcharge per class

for filing a section 8 affidavit during the grace period.

Section 2.6(a)(20) is added, requiring a $100 surcharge for

correcting a deficiency in a section 8 affidavit.

Section 2.6(a)(21) is added, requiring a $100 surcharge for

correcting a deficiency in a renewal application.

Section 2.17(c) is added, stating that to be recognized as a

representative in a trademark case, an attorney as defined in

Sec. 10.1(c) may file a power of attorney, appear in person, or sign a

paper that is filed with the Office on behalf of an applicant or

registrant. This codifies current practice.

Section 2.17(d) is added, stating that someone may file a power of

attorney that relates to more than one trademark application or

registration, or to all existing and future applications and

registrations; and that someone relying on such a power of attorney

must: (1) Include a copy of the previously filed power of attorney; or

(2) refer to the previously filed power of attorney, specifying: The

filing date; the application serial number, registration number, or

inter partes proceeding number for which the original power of attorney

was filed; and the name of the party who signed the power of attorney;

or, if the application serial number is not known, submit a copy of the

application or a copy of the mark, and specify the filing date.

Comment: One comment requested clarification as to whether a

``global'' power of attorney will be effective for all registrations,

including those that have no immediate deadline.

Response: Yes, the power of attorney will be effective for

registrations that have no immediate deadline. When the attorney later

takes an action, such as filing an affidavit of continued use or a

renewal application, he or she must comply with the requirements of

Sec. 2.17(d) in order to rely on the power of attorney.

Comment: One comment asked whether a global power of attorney will

remain valid if the application for which the power was filed is

abandoned.

Response: Yes. The Office will maintain a record of the power of

attorney, and the power will remain valid even if the original power

was filed with an application that is later abandoned, or with a

registration that is later cancelled.

Comment: One comment suggested that the Office should require

attorneys to set forth the jurisdiction in which they are admitted and

their bar number in a power of attorney.

Response: The suggestion has not been adopted, because the Office

does not need this information to process applications and other

documents. The purpose of TLT is to minimize the number of formal

requirements for applications, powers of attorney and other documents,

and to make the procedural requirements of the different national

trademark offices more consistent. Instituting a new requirement that

an attorney include the jurisdiction in which he or she is admitted and

a bar number would not serve this purpose.

Section 2.20 is revised to delete the requirement for a declaration

by a ``member of the firm or an officer of the corporation or

association,'' because this requirement has been deleted from sections

1(a) and 1(b) of the Act.

Comment: One comment suggested that Sec. 2.20 be amended to permit

the use of the language of 28 U.S.C. 1746 in a declaration.

Response: The suggestion has been adopted. Section 2.20 is amended

to permit the filing of a verification under 28 U.S.C. 1746 in lieu of

either an affidavit or a declaration under Sec. 2.20. This reflects

current practice. TMEP Sec. 803.02.

Section 2.21 is revised to require the following minimum

requirements for receipt of an application filing date: (1) The name of

the applicant; (2) a name and address for correspondence; (3) a clear

drawing of the mark; (4) an identification of goods or services; and

(5) the filing fee for at least one class of goods or services. See the

discussion under the heading ``Supplementary Information/Application

Filing Dates,'' supra.

The following minimum requirements for receiving a filing date have

been deleted: A stated basis for filing; a verification or declaration

signed by the applicant; an allegation of use in commerce, specimen,

and date of first use in commerce in an application under section 1(a)

of the Act; an allegation of the applicant's bona fide intention to use

the mark in commerce in an application under section 1(b) or section 44

of the Act; a claim of priority in an application under section 44(d)

of the Act; and a certified copy of a foreign registration in an

application under section 44(e) of the Act. A claim of priority under

section 44(d) must be filed before the end of the priority period. All

other elements must be provided during examination.

Section 2.21(a)(3) is amended to require a ``clear drawing of the

mark'' rather than the drawing ``substantially meeting all the

requirements of Sec. 2.52'' that is now required.

Section 2.21(b) is amended to state that the Office ``may'' rather

than ``will'' return the papers and fees to the applicant when an

application does not meet the minimum filing requirements. A new

procedure is being considered under which the Office would retain

applications that do not meet the minimum filing requirements.

Applicants would have an opportunity to supply the missing element and

receive a filing date as of the date the Office receives the missing

element. Until a new policy is announced, the Office will continue to

return the papers and fees to the applicant.

Comment: One comment stated that it reserves judgment on the

possible future change in procedures for handling informal

applications.

[[Page 48908]]

Response: If the Office does decide to change procedures for

handling informal applications, it will seek input from the public

before instituting the changes.

The center heading ``THE WRITTEN APPLICATION'' before Sec. 2.31 is

deleted because it is unnecessary. The heading ``APPLICATION FOR

REGISTRATION,'' immediately before Sec. 2.21, encompasses the rules

that now fall under the heading ``THE WRITTEN APPLICATION.''

Section 2.31 is removed and reserved. The substance of the

requirement that the application be in English has been moved to

revised Sec. 2.32(a).

The heading of Sec. 2.32 is changed to ``Requirements for a

complete application.'' Revised Sec. 2.32(a) lists the requirements for

the written application, now listed in Sec. 2.33(a)(1).

Proposed Sec. 2.32(a)(3)(ii) required that a juristic applicant set

forth the state or nation under the laws of which the applicant is

organized. This is consistent with current Sec. 2.33(a)(1)(ii).

Comment: One comment suggested that ``state or nation'' in

Sec. 2.32(a)(3)(ii) be changed to ``jurisdiction (usually state or

nation),'' because juristic persons such as corporations may be

incorporated under the law of a jurisdiction that is not a state or

nation.

Response: The suggestion has been adopted.

Section 2.32(a)(6) requires a list of the goods or services on or

in connection with which the applicant uses or intends to use the mark,

and states that in an application filed under section 44 of the Act,

the scope of the goods or services covered by the section 44 basis may

not exceed the scope of the goods or services in the foreign

application or registration.

Comment: One comment suggested that Sec. 2.32(a)(6) be amended to

state than an application may be filed under multiple bases, with some

of the goods/services supported by only one of the bases.

Response: The suggestion has not been adopted because it is

unnecessary. Section 2.34(b)(1) clearly states that an applicant may

claim more than one basis in a single application, and Sec. 2.34(b)(2)

indicates that the goods/services in such an application may be covered

by different bases.

The heading of Sec. 2.33 is changed to ``Verified statement.''

Section 2.33(a) is amended to state that the application must

include a statement that is signed and verified by a person properly

authorized to sign on behalf of the applicant. Section 2.33(a) further

states that a person who is properly authorized to sign on behalf of

the applicant is: (1) A person with legal authority to bind the

applicant; or (2) a person with firsthand knowledge of the facts and

actual or implied authority to act on behalf of the applicant; or (3)

an attorney as defined in Sec. 10.1(c) of this chapter who has an

actual or implied written or verbal power of attorney from the

applicant. See the discussion under the heading ``Supplementary

Information/Persons Who May Sign,'' supra.

The substance of current Sec. 2.32(b) is moved to Sec. 2.33(c).

Revised Sec. 2.33 states that the Office may require a substitute

verification of the applicant's continued use or bona fide intention to

use the mark when the applicant does not file the verified statement

within a reasonable time after the date it is signed. This codifies

present practice. Section 2.32(b) now states only that a verification

of the applicant's continued use of the mark is required where the

application is not filed within a reasonable time after it is signed.

However, the Office also requires verification of the applicant's

continued bona fide intention to use the mark in commerce when a

verification under section 1(b) or section 44 of the Act is not filed

within a reasonable time after it is signed. TMEP Sec. 803.04.

Section 2.33(b)(1) is amended to delete the requirement that the

applicant specify the type of commerce in which the mark is used. See

the discussion under the heading ``Supplementary Information/

Specification of Type of Commerce No Longer Required,'' supra.

Section 2.33(d) is added, stating that where an electronically

transmitted filing is permitted, the person who signs the verified

statement must either: (1) Place a symbol comprised of numbers and/or

letters between two forward slash marks in the signature block on the

electronic document; and print, sign and date in permanent ink, and

maintain a paper copy of the electronic submission; or (2) use some

other form of electronic signature that the Commissioner may designate.

Section 2.34 is added, setting forth the requirements for the four

bases for filing. New Sec. 2.34(a)(1) lists the requirements for an

application under section 1(a) of the Act, now listed in section

Secs. 2.21(a)(5)(i), 2.33(a)(1)(iv), 2.33(a)(1)(vii), 2.33(a)(2), and

Sec. 2.33(b)(1). Section 2.34(a)(2) lists the requirements for an

application under section 1(b) of the Act, now listed in

Secs. 2.21(a)(5)(iv) and 2.33(a)(1)(iv).

Section 2.34(a)(iii) is amended to delete the requirement that the

applicant specify the type of commerce in which the mark is used. See

the discussion under the heading ``Supplementary Information/

Specification of Type of Commerce No Longer Required,'' supra.

Comment: One comment suggested that Sec. 2.34(a)(1)(i), which

pertains to applications based on use in commerce under section 1(a) of

the Act, be amended to change ``application filing date'' to

``application filing date (in the case of an application claiming

priority under section 44(d), such use in commerce shall be required as

of the U.S. filing date not the filing date of the priority

application),'' to avoid any confusion, because in a section 44(d)

application that claims priority, the effective filing date is the

filing date of the foreign application.

Response: The suggestion has not been adopted, because it is

unnecessary, and could be confusing to domestic applicants who base

their applications solely on use in commerce and are unfamiliar with

the requirements of section 44(d). Under Sec. 1.6, correspondence is

stamped with the date of receipt in the Office, unless the

correspondence is filed under Sec. 1.10, which provides for the filing

of papers and fees by Express Mail. The term ``application filing

date'' is now commonly used to refer to the date the application is

received in the Patent and Trademark Office, and the priority date in a

section 44(d) application is referred to as the ``effective filing

date.'' TMEP Sec. 708.02. The Office knows of no instances in which a

party whose application was based on both sections 44(d) and 1(a)

mistakenly believed that the requirements for the section 1(a) basis

must be met as of the priority date.

Section 2.34(a)(3) lists the requirements for an application under

section 44(e) of the Act, now listed in Secs. 2.21(a)(5)(ii) and

2.33(a)(1)(viii). Section 2.34(a)(3)(ii) requires a certified copy of a

foreign registration. Currently, a section 44(e) applicant must submit

a foreign certificate to receive a filing date. However, TLTIA section

108 amends section 44(e) of the Act to delete the requirement that the

application be ``accompanied by'' the foreign certificate. The Office

will require that the applicant submit the certificate during

examination.

New Sec. 2.34(a)(3)(iii) is added, stating that if it appears that

the foreign registration will expire before the mark in the United

States application will register, the applicant must submit a

certification from the foreign country's trademark office, showing that

the registration has been renewed and will be in force at the time the

United States registration will issue. This codifies current practice.

TMEP Sec. 1004.03.

[[Page 48909]]

Comment: One comment suggested that the phrase ``before the United

States registration will issue,'' be changed to ``before the United

States registration is expected to issue assuming no unusual delays,''

because at the time of examination the exact date of issue is subject

to wide variance.

Response: The suggestion has not been adopted. Even if there is a

delay in issuance of a registration in an application under section

44(e) of the Act, due to an opposition or for other reasons, the United

States registration will not issue unless the foreign registration has

been renewed and is in force.

New Sec. 2.34(a)(4) lists the requirements for an application under

section 44(d) of the Act, now listed in Secs. 2.21(a)(5)(iii),

2.33(a)(1)(ix), and 2.39. Section 2.34(a)(4)(i) requires that a

priority claim be filed within six months of the filing date of the

foreign application. This is consistent with Articles 4(C)(1) and

4(D)(1) of the Paris Convention for the Protection of Industrial

Property, as revised at Stockholm on July 14, 1967 (Paris Convention).

New Sec. 2.34(b)(1) states that an applicant may claim more than

one basis, provided that the applicant meets the requirements for all

bases claimed. This codifies current practice. Section 2.34(b)(1) also

states that the applicant may not claim both sections 1(a) and 1(b) for

the identical goods or services in one application.

Revised Sec. 2.34(b)(2) requires that the applicant specify which

basis covers which goods or services when an applicant claims more than

one basis.

New Sec. 2.34(c) sets forth the definition of ``commerce,''

currently found in Sec. 2.33(a)(3).

Section 2.37 is removed.

Section 2.35 is redesignated as Sec. 2.37.

Section 2.35 is added: ``Adding, deleting, or substituting bases.''

New Sec. 2.35(a) states that the applicant may add or substitute a

basis for registration before publication, and that the applicant may

delete a basis at any time.

Section 2.35(b) is amended to state that an application may be

amended to add or substitute a basis after publication, if the

applicant files a petition to the Commissioner; and that republication

will always be required. This codifies current practice. TMEP

Sec. 1006.04. See the discussion under ``Supplementary Information/

Amendment of Basis After Publication,'' supra.

New Sec. 2.35(c) changes current practice to allow a section 44(d)

applicant to retain the priority filing date when the applicant

substitutes a new basis after the expiration of the six-month priority

period. Currently, if an application is filed solely under section

44(d), and the applicant amends to substitute a different basis after

the expiration of the six-month priority period, the effective filing

date of the application becomes the date the applicant perfects the

amendment claiming the new basis. TMEP Sec. 1006.03.

Comment: Proposed Sec. 2.35(c) stated that when the applicant

substitutes a basis, the Office will presume that the original basis

was valid, unless there is contradictory evidence in the record. One

comment questioned whether an application that was amended from section

1(a) to section 1(b) would be subject to attack on the ground that the

original basis was invalid because there was no use as a mark.

Response: A party who filed an application based on use in

commerce, but later discovered that what he or she thought was

appropriate trademark use was not in fact technical trademark use,

clearly had a bona fide intention to use the mark in commerce as of the

filing date. If the use basis is invalid, the applicant is entitled to

retain the original filing date because the applicant had a bona fide

intention to use the mark in commerce at all times. Section 2.35(c) is

therefore amended to delete the statement that the Office will presume

that the original basis was valid and substitute a statement that the

Office will presume that there was a continuing valid basis, unless

there is contradictory evidence in the record.

New Sec. 2.35(d) states that if an applicant properly claims a

section 44(d) basis in addition to another basis, the applicant will

retain the priority filing date under section 44(d) no matter which

basis the applicant perfects. This codifies current practice. TMEP

Sec. 1006.01.

New Sec. 2.35(e) states that the applicant may add or substitute a

section 44(d) basis only within the six-month priority period following

the filing date of the foreign application. This is consistent with

current practice (TMEP Sec. 1006.05), and with Articles 4(C)(1) and

4(D)(1) of the Paris Convention.

New Sec. 2.35(f) states that an applicant who adds a basis must

state which basis covers which goods or services.

New Sec. 2.35(g) states that if an applicant deletes a basis, the

applicant must also delete any goods or services covered solely by the

deleted basis. This codifies current practice.

New Sec. 2.35(h) states that once an applicant claims a section

1(b) basis as to any or all of the goods or services, the applicant may

not amend the application to seek registration under section 1(a) of

the Act for those goods or services unless the applicant files an

allegation of use under section 1(c) or section 1(d) of the Act.

Section 2.38(a) is amended to update a cross-reference.

Section 2.39 is removed and reserved. The requirements for filing a

priority claim under section 44(d) of the Act are moved to

Sec. 2.34(a)(4), discussed above.

Sections 2.45 (a) and (b) are revised to: (1) Delete the

requirement for a statement of the method or intended method of use in

a certification mark application; and (2) require a copy of the

standards that determine whether others may use the certification mark

on their goods and/or in connection with their services. Sections 1(a)

and 1(b) of the Act, as amended, no longer require a statement of the

method or intended method of use of a mark. The requirement for a copy

of the certification standards codifies current practice. TMEP

Sec. 1306.06(g)(ii).

Sections 2.51 (c) through (e) are removed. The substance of those

rules is moved to new Sec. 2.52.

Section 2.52(a) is revised to define the term ``drawing,'' to

indicate that a drawing may only depict a single mark, and to define

the terms ``typed drawing'' and ``special form drawing.''

Section 2.52(a) is revised to add guidelines for drawings of

various types of unusual marks, such as marks that include color,

three-dimensional objects, motion, sound or scent; and to add

guidelines for showing placement of the mark on goods, packaging for

goods, or in advertising of services.

Section 2.52(b) is revised to indicate the recommended format for

the drawing of a mark.

Section 2.52(c) is revised to state that for an electronically

filed application, if the mark cannot be shown as a ``typed drawing,''

the applicant must attach a digitized image of the mark to the

application.

Sections 2.56, 2.57, and 2.58 are consolidated into Sec. 2.56.

Sections 2.57 and 2.58 are removed and reserved.

Section 2.56(a) is revised to require one rather than three

specimens with an application under section 1(a) of the Act, or an

allegation of use under section 1(c) or section 1(d) of the Act in an

application under section 1(b) of the Act. See the discussion under

``Supplementary Information/Number of Specimens Required,'' supra.

Section 2.56(b)(1) is added, stating that a trademark specimen is a

label, tag, or container for the goods, or a display associated with

the goods; and that the Office may accept another document

[[Page 48910]]

related to the goods or the sale of the goods when it is not possible

to place the mark on the goods or packaging for the goods. This is

consistent with the current Sec. 2.56.

Comment: One comment suggested that the second sentence of

Sec. 2.56(b)(1) should be amended to substitute ``will'' for ``may,''

and that the following sentence be added at the end of the paragraph:

``The Office may accept a display associated with the goods when this

is the customary method of use of a trademark in the relevant trade or

industry.''

Response: The suggestion has not been adopted. The first sentence

of Sec. 2.56(b)(1) already states that a specimen may be a display

associated with the goods, so the suggested third sentence is

unnecessary. The word ``may'' is used in the second sentence of

Sec. 2.56(b)(1) because it is within the discretion of the examining

attorney to determine whether specimens are acceptable.

Section 2.56(b)(2) is added, stating that a service mark specimen

must show the mark as actually used in the sale or advertising of the

services. This is consistent with the current Sec. 2.58(a).

Section 2.56(b)(3) is added, stating that a collective trademark or

collective service mark specimen must show how a member uses the mark

on the member's goods or in the sale or advertising of the member's

services. This codifies current practice. TMEP Sec. 1303.02(b).

Section 2.56(b)(4) is added, stating that a collective membership

mark specimen must show use by members to indicate membership in the

collective organization. This codifies current practice. TMEP

Sec. 1304.09(c).

Section 2.56(b)(5) is added, stating that a certification mark

specimen must show how a person other than the owner uses the mark to

certify regional or other origin, material, mode of manufacture,

quality, accuracy, or other characteristics of the person's goods or

services; or that members of a union or other organization performed

the work or labor on the goods or services. This codifies current

practice. TMEP Sec. 1306.06(c).

Section 2.56(c) is added, stating that a photocopy or other

reproduction of a specimen is acceptable, but that a photocopy or

facsimile that merely reproduces the drawing is not a proper specimen.

This is consistent with the current Sec. 2.57.

New Sec. 2.56(d)(1) states that a specimen must be flat and no

larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.)

long. This is consistent with the current Sec. 2.56.

Section 2.56(d)(2) is added, stating that if the applicant files a

specimen that is too large (a ``bulky specimen''), the Office will

create a facsimile of the specimen that meets the requirements of the

rule (i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by

11.69 inches (29.7 cm.) long) and put it in the file wrapper. See the

discussion under ``Supplementary Information/Bulky Specimens,'' supra.

Section 2.56(d)(4) is added, stating that if the application is

filed electronically, the specimen must be submitted as a digitized

image.

Section 2.59, which governs the filing of substitute specimens, is

revised to clarify and simplify the language. Section 2.59(b)(1)

provides that when an applicant submits substitute specimens after

filing an amendment to allege use under Sec. 2.76, the applicant must

verify the substitute specimens were in use in commerce prior to filing

the amendment to allege use.

Comment: One comment suggested that Sec. 2.59(b)(1) be amended to

provide for the filing of substitute specimens that were in use ``prior

to filing the substitute specimen(s),'' even if the specimens were not

in use as of the filing date of the amendment to allege use. The

comment noted that under the current rule, if the substitute specimens

are not in use as of the filing date of the amendment to allege use,

then the applicant must cancel the first amendment to allege use and

substitute a new one, and stated that this serves no useful purpose.

Response: The suggestion has not been adopted. Section 1(c) of the

Act provides for the filing of an amendment to allege use only after

the applicant ``has made use of the mark in commerce.'' Under

Sec. 2.76(e)(2), a minimum filing requirement for an amendment to

allege use is a specimen showing that the mark is in use in commerce on

or in connection with the goods or services. If the applicant cannot

show use in commerce as of the filing date of the amendment to allege

use, then the amendment cannot be considered ``filed'' as of that date.

The Office believes that its records should accurately show the date

when an intent-to-use applicant files an acceptable amendment to allege

use under section 1(c) of the Act, because this date can be

significant. For example, under Sec. 2.75(b), if an intent-to-use

applicant amends to the Supplemental Register, the effective filing

date of the application becomes the date the amendment to allege use

was perfected. It would be unfair to grant the intent-to-use applicant

an effective filing date on the Supplemental Register before the mark

was actually in use in commerce.

Section 2.66 is revised to set forth the requirements for filing a

petition to revive an abandoned application when the delay in

responding to an Office action or notice of allowance is

``unintentional.'' See the discussion under ``Supplementary

Information/Revival of Abandoned Applications,'' supra.

Sections 2.66(a) (1) and (2) are added, requiring that the

applicant file a petition to revive within (1) two months of the

mailing date of the notice of abandonment; or (2) two months of actual

knowledge of abandonment. Currently, the deadline for filing a petition

to revive is sixty days from the mailing date of the notice of

abandonment or the date of actual knowledge of abandonment. TMEP

Sec. 1112.05(a). The two-month deadline will make it easier to

calculate the due date for a petition because it will not be necessary

to count days.

Section 2.66(a)(2) states that an applicant must be diligent in

checking the status of an application, and that to be diligent, the

applicant must check the status of the application within one year of

the last filing or receipt of a notice from the Office for which

further action by the Office is expected. This codifies current

practice. TMEP sections 413 and 1112.05(b)(ii). See the discussion

under the heading ``Supplementary Information/Due Diligence,'' supra.

Sections 2.66 (b)(2) and (c)(2) are amended to require ``a

statement, signed by someone with firsthand knowledge of the facts,

that the delay * * * was unintentional.'' This statement need not be

verified.

Section 2.66(b)(3) is amended to state that if the applicant did

not receive the Office action, the applicant need not include a

proposed response to an Office action with a petition to revive. This

codifies current practice.

Sections 2.66(c) (3) and (4) are amended to state that if the

applicant did not receive the notice of allowance and requests

cancellation of the notice of allowance, the petition to revive need

not include a statement of use or request for an extension of time to

file a statement of use, or the fees for the extension requests that

would have been due if the application had never been abandoned. This

codifies current practice.

Section 2.66(c)(5) is added, stating that the applicant must file

any further requests for extensions of time to file a statement of use

under Sec. 2.89 that become due while the petition is pending, or file

a statement of use

[[Page 48911]]

unless: (1) A statement of use is filed with or before the petition to

revive, or (2) the petition states that the applicant did not receive

the notice of allowance and requests cancellation of the notice of

allowance. This codifies current practice.

Section 2.66(f)(3) is added, stating that if the Commissioner

denies the petition to revive, the applicant may request

reconsideration by: (1) Filing the request within two months of the

mailing date of the decision denying the petition; and (2) paying a

second petition fee under Sec. 2.6. Currently, the rules do not

specifically provide for requests for reconsideration of petition

decisions, but the Commissioner has the discretion to consider these

requests under Sec. 2.146(a)(3). The Office believes that an additional

fee should be required to pay for the work done in processing the

request for reconsideration. This is consistent with new Sec. 2.146(j).

Section 2.71(a) is revised to state that the applicant may amend

the identification to clarify or limit, but not broaden, the

identification of goods and/or services. This simplifies the language

of the current Sec. 2.71(b).

New Sec. 2.71(b)(1) states that if the declaration or verification

of an application under Sec. 2.33 is unsigned or signed by the wrong

person, the applicant may submit a substitute verification or

declaration under Sec. 2.20. This changes current practice. Currently,

the applicant must submit a signed verification to receive an

application filing date, and if the verification is signed by the wrong

party, the applicant cannot file a substitute verification unless the

party who originally signed had ``color of authority'' (i.e., firsthand

knowledge of the facts and actual or implied authority to act on behalf

of the applicant). TMEP Section 803. As discussed above, the Office is

deleting the requirement that the applicant submit a signed

verification in order to receive a filing date. If the verification is

unsigned or signed by the wrong party, the applicant must replace the

declaration during examination.

The requirement for a verification ``by the applicant, a member of

the applicant firm, or an officer of the applicant corporation or

association'' has been removed from Sec. 2.71(c). This is consistent

with the amendments to sections 1(a) and 1(b) of the Act. See the

discussion under ``Supplementary Information/Persons Who May Sign,''

supra.

The ``color of authority'' provisions have been deleted from

Sec. 2.71(c). Because the statute no longer specifies who has

``statutory'' authority to sign, the ``color of authority'' provisions

are unnecessary.

New Sec. 2.71(b)(2) states that if the declaration or verification

of a statement of use under Sec. 2.88 or a request for extension of

time to file a statement of use under Sec. 2.89 is unsigned or signed

by the wrong party, the applicant must submit a substitute verification

before the expiration of the statutory deadline for filing the

statement of use.

Section 2.71(d) is added, stating that a mistake in setting out the

applicant's name can be corrected, but the application cannot be

amended to set forth a different entity as the applicant; and that an

application filed in the name of an entity that did not own the mark on

the filing date of the application is void. This codifies current

practice. TMEP Sec. 802.07. See the discussion under ``Supplementary

Information/Filing by Owner,'' supra.

Section 2.72 is revised to remove paragraph (a), and redesignate

paragraphs (b) through (d) as (a) through (c).

New paragraphs (a) through (c) will each state that an applicant

may not amend the description or drawing of the mark if the amendment

materially alters the mark; and that the Office will determine whether

a proposed amendment materially alters a mark by comparing the proposed

amendment with the description or drawing of the mark in the original

application. See the discussion under the heading ``Supplementary

Information/Material Alteration,'' supra.

Comment: One comment suggested that Sec. 2.72(b) should be amended

to provide that in an application based on section 1(b) of the Act, the

applicant ``may amend the heading on the drawing to reflect a change in

applicant's name, jurisdiction of citizenship or organization, and/or

address at any time,'' to encourage the prompt amendment of

applications to reflect changes in the applicant's name, address and/or

jurisdiction.

Response: The suggestion has not been adopted because it is

unnecessary. Section 2.72(b) pertains only to amendment of the

``description or drawing of the mark,'' not to amendment of the heading

on a drawing. An applicant who submits a substitute drawing is free to

amend the heading in the substitute drawing.

Comment: One comment suggested that Sec. 2.72(c)(1) be amended to

provide that in an application based on Sec. 44(d) of the Act, the

applicant may amend the drawing of the mark if the amendment is

supported by the foreign application, ``because there may never be a

`foreign registration certificate' if the foreign priority application

lapses.''

Response: The suggestion has not been adopted. Section 44(d) is a

basis for filing an application, not a basis for registration. If the

applicant perfects the section 44(e) basis, the mark in the United

States application must be a substantially exact representation of the

mark in the home country registration. If the applicant elects not to

perfect the section 44(e) basis, the mark in the United States

application must be a substantially exact representation of the mark on

the specimens filed with a section 1(a) application or with an

allegation of use in a section 1(b) application. A mark would not be

registrable if it were a substantially exact representation of the mark

in the foreign application, but not a substantially exact

representation of the mark in the foreign registration in a section

44(e) application, or the specimens in a use-based application.

Section 2.76(b)(1) is revised to state that a complete amendment to

allege use must include a statement that is verified or supported by a

declaration under section 2.20 by a person properly authorized to sign

on behalf of the applicant.

Section 2.76(b)(1) is further revised to delete the requirement for

a statement of the method or manner of use of the mark in an amendment

to allege use, because this requirement has been removed from section

1(a) of the Act.

Section 2.76(b)(1)(ii) is amended to delete the requirement that

the applicant specify the type of commerce in which the mark is used.

See the discussion under the heading ``Supplementary Information/

Specification of Type of Commerce No Longer Required,'' supra.

Section 2.76(b)(2) is revised to require one rather than three

specimens with an amendment to allege use.

Section 2.76(i) is added, stating that if an amendment to allege

use is not filed within a reasonable time after it is signed, the

Office may require a substitute verification or declaration under

Sec. 2.20 that the mark is still in use in commerce. This codifies

current practice. TMEP Sec. 803.04.

Section 2.76(j) is added, noting that the requirements for multi-

class applications are stated in Sec. 2.86.

The heading of Sec. 2.86 is changed to ``Application may include

multiple classes.'' The current Sec. 2.86(a), which states that an

applicant may recite more than one item of goods, or more than one

service, in a single class, if the applicant either has used or has a

bona fide intention to use the mark on all the goods or services, is

removed. The

[[Page 48912]]

substance of this provision is moved to Secs. 2.34(a)(1)(v),

2.34(a)(2)(ii), 2.34(a)(3)(iv), and 2.34(a)(4)(iv).

Section 2.86(a) is revised to include sections now found in

Sec. 2.86(b), stating that the applicant may apply to register the same

mark for goods and/or services in multiple classes in a single

application, provided that the applicant specifically identifies the

goods and services in each class; submits a fee for each class; and

either includes dates of use and one specimen, or a statement of a bona

fide intention to use the mark in commerce, for each class.

Section 2.86(a)(3) is amended to add a provision that the applicant

may not claim both use in commerce and a bona fide intention to use the

mark in commerce for the identical goods or services in one

application.

Section 2.86(b) is amended to state that a statement of use or

amendment to allege use must include the required fee, dates of use,

and one specimen for each class.

Section 2.86(b) is amended to add a provision that the applicant

may not file the statement of use or amendment to allege use until the

applicant has used the mark on all the goods or services, unless the

applicant files a request to divide. This is consistent with the

current Secs. 2.76(c) and 2.88(c).

Section 2.86(c), which prohibits an applicant from claiming both

use in commerce and intent-to-use in a single multi-class application,

is deleted. However, new Sec. 2.86(a)(3) will state that the applicant

may not claim both use in commerce and intent-to-use for the identical

goods or services in one application.

The substance of the last sentence of the current Sec. 2.86(b) is

moved to new Sec. 2.86(c).

Section 2.88(b)(1) is revised to state that a complete statement of

use must include a statement that is verified or supported by a

declaration under Sec. 2.20 by a person properly authorized to sign on

behalf of the applicant.

Section 2.88(b)(1) is revised to delete the requirement for a

statement of the method or manner of use in a statement of use. This

requirement has been removed from section 1(d)(1) of the Act.

Section 2.88(b)(1)(ii) is amended to delete the requirement that

the applicant specify the type of commerce in which the mark is used.

See the discussion under the heading ``Supplementary Information/

Specification of Type of Commerce No Longer Required,'' supra.

Section 2.88(b)(2) is revised to require one specimen with a

statement of use, rather than the three specimens now required.

Section 2.88(e)(3) is revised to state that if the verification or

declaration is unsigned or signed by the wrong party, the applicant

must submit a substitute verification or declaration on or before the

statutory deadline for filing the statement of use. This is consistent

with current practice. TMEP Sec. 1105.05(f)(i)(A). Section 1(d)(1) of

the Act specifically requires verification by the applicant within the

statutory period for filing the statement of use.

Section 2.88(k) is added, stating that if the statement of use is

not filed within a reasonable time after it is signed, the Office may

require a substitute verification or declaration under Sec. 2.20

stating that the mark is still in use in commerce. This codifies

current practice. TMEP Sec. 803.04.

Section 2.88(l) is added, noting that the requirements for multi-

class applications are stated in Sec. 2.86.

Sections 2.89(a)(3) and (b)(3) are revised to require that the

statement that the applicant has a bona fide intention to use the mark

in commerce in a request for an extension of time to file a statement

of use be verified or supported by a declaration under Sec. 2.20 by a

person properly authorized to sign on behalf of the applicant; and that

if the extension request is unsigned or signed by the wrong party, the

applicant must submit a substitute verification or declaration on or

before the statutory deadline for filing the statement of use. This is

consistent with current practice. TMEP Sec. 1105.05(d). Sections

1(d)(1) and (2) of the Act specifically require verification by the

applicant within the statutory filing period.

Section 2.89(d) is revised to remove paragraph (1), which requires

a statement that the applicant has not yet made use of the mark in

commerce on all the goods and services. The Commissioner has held that

an extension request that omits this allegation is substantially in

compliance with Sec. 2.89(d) if the request contains a statement that

the applicant has a continued bona fide intention to use the mark in

commerce. In re Schering-Plough Healthcare Products Inc., 24 USPQ2d

1709 (Comm'r Pats. 1992). Therefore, the requirement is unnecessary.

Section 2.89(g) is amended to change the time limit for filing a

petition to the Commissioner from the denial of a request for an

extension of time to file a statement of use from one month to two

months. The two-month deadline is consistent with the deadline for

filing a petition to revive an unintentionally abandoned application

under Sec. 2.66, and with the amendment of the deadline for filing

petitions under Sec. 2.146(d).

Section 2.89(h) is added, stating that if the extension request is

not filed within a reasonable time after it is signed, the Office may

require a substitute verification or declaration under Sec. 2.20 that

the applicant still has a bona fide intention to use the mark in

commerce. This codifies current practice. TMEP Sec. 803.04.

Section 2.101(d)(1) is revised to update a cross-reference.

Section 2.111(c)(1) is revised to update a cross-reference.

Section 2.146(d) is revised to delete ``sixty days'' and substitute

``two months'' as the deadline for filing certain petitions. This will

make it easier to calculate the due date for a petition, because it

will not be necessary to count days.

Section 2.146(i) is added, stating that where a petitioner seeks to

reactivate an application or registration that was abandoned or

cancelled due to the loss or mishandling of papers mailed to or from

the Office, the petition will be denied if the petitioner was not

diligent in checking the status of the application or registration; and

that to be considered diligent, the applicant must check the status of

the application or registration within one year of the last filing or

receipt of a notice from the Office for which further action by the

Office is expected. This codifies current practice. TMEP sections 413

and 1704. See the discussion under the heading ``Supplementary

Information/Due Diligence,'' supra.

Section 2.146(j) is added, stating that if the Commissioner denies

the petition, the petitioner may request reconsideration by: (1) Filing

the request within two months of the mailing date of the decision

denying the petition; and (2) paying a second petition fee under

Sec. 2.6. Currently, the rules do not specifically provide for requests

for reconsideration of petition decisions, but the Commissioner has the

discretion to consider these requests under Sec. 2.146(a)(3). The

Office believes that an additional fee should be required to pay for

the work done in processing the request for reconsideration. This is

consistent with new Sec. 2.66(f)(3), discussed above.

Section 2.151 is revised to update a cross-reference and simplify

the language.

Section 2.155 is revised to update a cross-reference and simplify

the language.

Section 2.156 is revised to update a cross-reference and simplify

the language.

[[Page 48913]]

Section 2.160 is added, ``Affidavit or declaration of continued use

or excusable nonuse required to avoid cancellation.'' New

Secs. 2.160(a) (1) and (2) list the deadlines for filing the affidavit

or declaration, and new Sec. 2.160(a)(3) states that the owner may file

the affidavit or declaration within six months after expiration of

these deadlines, with an additional grace period surcharge. Currently,

there is no grace period for filing a section 8 affidavit.

Comment: Since many registrations are still in twenty-year

registration terms, one comment suggested that Sec. 2.160(a)(2) be

amended to require filing of an affidavit or declaration of continued

use or excusable nonuse ``within the year before the end of every ten-

year period after the date of registration or renewal.''

Response: The suggestion has not been adopted. The language of new

Sec. 2.160(a)(2) tracks the language of Sec. 8(a)(3) of the Act.

However, the provisions of section (a)(3) of the Act, requiring the

filing of a section 8 affidavit at the end of each successive ten year

period after registration, do not apply to a twenty-year registration

until a renewal application is due. See the discussion under the

heading ``Dates/Applicability Dates,'' supra.

Comment: One comment suggested that Sec. 2.160(a)(1)(i) should be

amended to require filing ``after the fifth anniversary of the date of

registration and no later than the sixth anniversary of the date of

registration,'' rather than ``between the fifth and sixth year after

the date of registration,'' because the phrase ``between the fifth and

the sixth year'' could be interpreted to be a single day.

Response: The suggestion has been adopted, but modified slightly.

Section 2.160(a)(1)(i) is amended to state that an affidavit of

continued use or excusable nonuse must be filed ``on or after the fifth

anniversary and no later than the sixth anniversary after the date of

registration.'' This makes it clear that the affidavit may be filed on

the fifth anniversary of the registration. A similar amendment is made

to Sec. 2.160(a)(1)(ii).

Comment: One comment suggested that Sec. 2.160(a)(2) be amended to

require filing ``after the ninth anniversary of either the date of

registration or the most recent renewal, and no later than the tenth

anniversary of the date of registration or the date of the most recent

renewal, respectively,'' rather than ``within the year before the end

of every ten-year period after the date of registration,'' because the

``rule as proposed appears to allow the filing of a renewal application

(sic) on the ninth anniversary of the date of registration, which may

not be allowed by the statute.''

Response: The suggestion has not been adopted. The Office will

accept section 8 affidavits filed on either the ninth or the tenth

anniversary after the date of registration. This is consistent with

current practice, which permits the filing of a section 8 affidavit on

either the fifth or the sixth anniversary after the date of

registration. TMEP Sec. 1603.03.

New Sec. 2.160(b) advises that Sec. 2.161 lists the requirements

for the affidavit or declaration.

The heading of Sec. 2.161 is changed to ``Requirements for a

complete affidavit or declaration of continued use or excusable

nonuse.'' Section 2.161 is revised to list the requirements for the

affidavit or declaration.

Section 2.161(a) is revised to state that the owner must file the

affidavit or declaration within the period set forth in section 8 of

the Act.

Comment: One comment suggested that Sec. 2.161(a) be amended to

require that the affidavit ``be filed within the time period set forth

in Sec. 2.160 by the owner, provided that if the owner is an assignee

or other transferee, then such assignment or transfer shall be recorded

with the Office on or before the filing of a section 8 (affidavit), or

within six months after an official action requiring such recordal.''

Response: The suggestion has not been adopted. An assignee is not

required to record the assignment in order to file a section 8

affidavit. Under Sec. 3.73(b), the assignee also has the option of

submitting other proof of the change of ownership (i.e., material

showing the transfer of title). TMEP section 502 and Sec. 1603.05(a).

Section 2.161(b) is revised to state that the affidavit or

declaration must include a verified statement that is signed and

verified (sworn to) or supported by a declaration under Sec. 2.20 by a

person properly authorized to sign on behalf of the owner, attesting to

the continued use or excusable nonuse of the mark within the period set

forth in section 8 of the Act. Section 2.161(b) further states that a

person properly authorized to sign on behalf of the owner is: (1) A

person with legal authority to bind the owner; or (2) a person with

firsthand knowledge of the facts and actual or implied authority to act

on behalf of the owner; or (3) an attorney as defined in Sec. 10.1(c)

of this chapter who has an actual or implied written or verbal power of

attorney from the owner. See the discussion under the heading

``Supplementary Information/Persons Who May Sign,'' supra.

Section 2.161(b) also states that the verified statement must be

executed on or after the beginning of the filing period specified in

Sec. 2.160(a).

Section 2.161(d)(2) is added, requiring a surcharge for filing an

affidavit or declaration of continued use or excusable nonuse during

the grace period.

Section 2.161(d)(3) is added, stating that if the fee submitted is

enough to pay for at least one class, but not enough to pay for all the

classes, and the particular class(es) covered by the affidavit or

declaration are not specified, the Office will issue a notice requiring

either the submission of additional fee(s) or an indication of the

class(es) to which the original fee(s) should be applied; that

additional fee(s) may be submitted if the requirements of Sec. 2.164

are met; and that if additional fees are not submitted and the

class(es) to which the original fee(s) should be applied are not

specified, the Office will presume that the fee(s) cover the classes in

ascending order, beginning with the lowest numbered class.

New Sec. 2.161(e) requires that the affidavit or declaration list

both the goods or services on which the mark is in use in commerce and

the goods or services for which excusable nonuse is claimed. Currently,

a list of the goods or services is not required when excusable nonuse

is claimed. In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993).

However, TLTIA section 105 amends section 8(b)(2) of the Act to

specifically require ``an affidavit setting forth those goods on or in

connection with which the mark is not in use.''

Comment: One comment stated that if the goods for which excusable

nonuse is claimed are not listed in a section 8 affidavit, registrants

should be given the opportunity to correct the oversight.

Response: If the goods or services for which excusable nonuse is

claimed are not listed in an affidavit, the registrant will be given an

opportunity to correct the deficiency. However, because section 8(b)(2)

of the Act specifically requires that the affidavit set forth the goods

or services on or in connection with which the mark is not in use in

commerce, a deficiency surcharge will be required if the deficiency is

corrected after the deadline specified in section 8 of the Act.

The requirement that the affidavit or declaration specify the type

of commerce in which the mark is used, currently required by

Sec. 2.162(e), is removed. See the discussion under the heading

``Supplementary Information/Specification of Type of Commerce No Longer

Required,'' supra.

[[Page 48914]]

The substance of Sec. 2.162(f) is moved to Sec. 2.161(f)(2). New

Sec. 2.161(f)(2) is revised to add a requirement that the affidavit

state the date when use of the mark stopped and the approximate date

when use will resume. This codifies current practice. Office actions

are often issued requiring a statement as to when use of the mark

stopped and when use will resume, because this information is needed to

determine whether the nonuse is excusable, within the meaning of

section 8 of the Act.

The substance of Sec. 2.162(e) is moved to Sec. 2.161(g). New

Sec. 2.161(g) is revised to state that the affidavit must include a

specimen for each class of goods or services; that the specimen should

be no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7

cm.) long; and that if the applicant files a specimen that exceeds

these size requirements (a ``bulky specimen''), the Office will create

a facsimile of the specimen that meets the requirements of the rule

(i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by

11.69 inches (29.7 cm.) long) and put it in the file wrapper. See the

discussion under ``Supplementary Information/Bulky Specimens,'' supra.

Section 2.161(h) is added, requiring a designation of a domestic

representative if the registrant is not domiciled in the United States.

This reflects section 8(f) of the Act, as amended, and is consistent

with current practice.

The substance of Sec. 2.163 is moved to Sec. 2.162. New Sec. 2.162

is revised to state that the only notice of the requirement for filing

the section 8 affidavit or declaration of continued use or excusable

nonuse is sent with the certificate of registration when it is

originally issued. This merely clarifies, and does not change, current

practice.

The substance of current Sec. 2.164 is moved to the introductory

text of new Sec. 2.163.

New Sec. 2.163(a) states that if the owner of the registration

files the affidavit or declaration within the time periods set forth in

section 8 of the Act, deficiencies may be corrected if the requirements

of Sec. 2.164 are met.

Section 2.163(b) is added, stating that a response to an examiner's

Office action must be filed within six months of the mailing date, or

before the end of the filing period set forth in section 8(a) or

section 8(b) of the Act, whichever is later, or the registration will

be cancelled.

Section 2.164 is added, ``Correcting deficiencies in affidavit or

declaration.'' This section changes current practice. There are now

some deficiencies that can be corrected after the statutory deadline

for filing the affidavit or declaration, while other requirements must

be satisfied before the expiration of the statutory deadline to avoid

cancellation of the registration.

TLTIA section 105 adds section 8(c)(2) of the Act to allow

correction of deficiencies, with payment of a deficiency surcharge. The

Act does not define ``deficiency,'' but instead gives the Office broad

discretion to set procedures and fees for correcting deficiencies.

New Sec. 2.164(a)(1) states that if the owner files the affidavit

or declaration within the period set forth in section 8(a) or section

8(b) of the Act, deficiencies can be corrected before the end of this

period without paying a deficiency surcharge; and deficiencies can be

corrected after the expiration of this period with payment of the

deficiency surcharge.

New Sec. 2.164(a)(2) states that if the owner files the affidavit

or declaration during the grace period, deficiencies can be corrected

before the expiration of the grace period without paying a deficiency

surcharge, and after the expiration of the grace period with a

deficiency surcharge.

New Sec. 2.164(b) states that if the affidavit or declaration is

not filed within the time periods set forth in section 8 of the Act, or

if it is filed within that period by someone other than the owner, the

registration will be cancelled. These deficiencies cannot be cured.

See the discussion under the heading ``Supplementary Information/

Post Registration,'' supra, for additional information about curing

deficiencies in section 8 affidavits.

The heading of Sec. 2.165 is changed to ``Petition to Commissioner

to review refusal.'' The last two sentences of the current

Sec. 2.165(a)(1) are removed.

Old Sec. 2.166 is removed because it is unnecessary. New

Secs. 2.163(b) and 2.165(b) set forth the times when a registration

will be cancelled.

New Sec. 2.166 is added, ``Affidavit of continued use or excusable

nonuse combined with renewal application,'' stating that an affidavit

or declaration under section 8 of the Act and a renewal application

under section 9 of the Act may be combined in a single document.

Section 2.167(c) is revised to delete the requirement that an

affidavit or declaration under section 15 of the Act specify the type

of commerce in which the mark is used.

The heading of Sec. 2.168 is changed to ``Affidavit or declaration

under section 15 combined with affidavit or declaration under section

8, or with renewal application.'' Section 2.168(a) is revised to state

that a section 15 affidavit may be combined with a section 8 affidavit,

if the combined affidavit meets the requirements of both sections 8 and

15 of the Act. Section 2.168(b) is revised to state that a section 15

affidavit can be combined with a renewal application under section 9 of

the Act, if the requirements of both sections 9 and 15 of the Act are

met.

Section 2.173(a) is revised to simplify the language.

Sections 2.181(a)(1) and (2) are revised to indicate that renewal

of a registration is subject to the provisions of section 8 of the Act.

This is consistent with the amendment to section 9(a) of the Act.

Comment: One comment suggested that Sec. 2.181(a)(1) should be

amended to provide that registrations remain in force ``from their date

of issue or the date of expiration of their preceding term,'' rather

than ``from their date of issue or expiration,'' because an expired

registration cannot be renewed.

Response: The suggestion has been adopted and modified slightly to

simplify the language. Section 2.181(a)(1) is amended to state that

registrations issued prior to November 16, 1989, remain in force for

twenty years ``from their date of issue or the date of renewal.'' A

similar amendment is made to Sec. 2.181(a)(2).

The heading of Sec. 2.182 is changed to ``Time for filing renewal

application.'' The section is revised to state that the renewal

application must be filed within one year before the expiration date of

the registration, or within the six-month grace period after the

expiration date with an additional fee.

The heading of Sec. 2.183 is changed to ``Requirements for a

complete renewal application.'' This section is revised to delete the

present renewal requirements and substitute new ones based on amended

section 9 of the Act. The requirements for a specimen and declaration

of use or excusable nonuse on or in connection with the goods or

services listed in the registration are removed, because these

requirements have been removed from section 9 of the Act. The new

requirements for renewal are: (1) A request for renewal, signed by the

registrant or the registrant's representative; (2) a renewal fee for

each class; (3) a grace period surcharge for each class if the renewal

application is filed during the grace period; (4) if the registrant is

not domiciled in the United States, a designation of a domestic

representative; and (5) if the renewal application covers less than all

the goods or services, a list of the particular goods or services to be

renewed.

New Sec. 2.183(f) states that if the fee submitted is enough to pay

for at least

[[Page 48915]]

one class, but not enough to pay for all the classes, and the class(es)

covered by the renewal application are not specified, the Office will

issue a notice requiring either the submission of additional fee(s) or

an indication of the class(es) to which the original fee(s) should be

applied; that additional fee(s) may be submitted if the requirements of

Sec. 2.185 are met; and that if the required fee(s) are not submitted

and the class(es) to which the original fee(s) should be applied are

not specified, the Office will presume that the fee(s) cover the

classes in ascending order, beginning with the lowest numbered class.

Section 2.184 is revised to simplify the language and to transfer

some of its provisions to new Sec. 2.186. Section 2.184 states that the

Office will issue a notice if the renewal application is not

acceptable; that a response to the refusal of renewal must be filed

within six months of the mailing date of the Office action, or before

the expiration date of the registration, whichever is later; and that

the registration will expire if the renewal application is not filed

within the time periods set forth in section 9(a) of the Act.

Section 2.185 is added, ``Correcting deficiencies in renewal

application.''

Under amended section 9, the renewal application must be filed

within the renewal period or grace period specified in section 9(a) of

the Act, or the registration will expire. However, if the renewal

application is timely filed, any deficiencies may be corrected after

expiration of the statutory filing period, with payment of a deficiency

surcharge.

New Sec. 2.185(a)(1) states that if the renewal application is

filed within one year before the registration expires, deficiencies may

be corrected before the registration expires without paying a

deficiency surcharge, or after the registration expires with payment of

the deficiency surcharge required by section 9(a) of the Act.

New Sec. 2.185(a)(2) states that if the renewal application is

filed during the grace period, deficiencies may be corrected before the

expiration of the grace period without paying a deficiency surcharge,

and after the expiration of the grace period with payment of the

deficiency surcharge required by section 9(a) of the Act.

New Sec. 2.185(b) states that if the renewal application is not

filed within the time periods set forth in section 9(a) of the Act, the

registration will expire. This deficiency cannot be cured.

Comment: One comment noted that Sec. 2.184(c) appears to be a

duplicate of Sec. 2.185(b) and suggested that one be deleted.

Response: The suggestion has not been adopted. Sections 2.184 and

2.185 are not duplicates, and both are necessary for the following

reason. Section 2.184(c) states the general rule that a registration

will expire if the renewal application is not filed during the proper

time period. Section 2.185(b) specifically addresses whether the

failure to file a renewal application in the proper time period will be

considered a deficiency that can be cured during a six-month deficiency

period. The rule states that ``[t]his deficiency cannot be cured''

(emphasis added).

Section 2.186 is added, ``Petition to Commissioner to review

refusal of renewal.''

New Sec. 2.186(a) states that a response to the examiner's initial

refusal is required before filing a petition to the Commissioner,

unless the examiner directs otherwise. This is consistent with the

current Sec. 2.184(a).

New Sec. 2.186(b) states that if the examiner maintains the refusal

of the renewal application, a petition to the Commissioner to review

the action may be filed within six months of the mailing date of the

Office action maintaining the refusal; and that if no petition is filed

within six months of the mailing date of the Office action, the

registration will expire. This is consistent with the current

Sec. 2.184(b).

New Sec. 2.186(c) states that a decision by the Commissioner is

necessary before filing an appeal or commencing a civil action in any

court. This is consistent with the current Sec. 2.184(d).

Section 3.16 is amended to state that an applicant may assign an

application based on section 1(b) of the Act once the applicant files

an amendment to allege use under section 1(c) of the Act.

The heading of Sec. 3.24 is changed to ``Requirements for documents

and cover sheets relating to patents and patent applications.'' The

recording requirements for patents are listed in Sec. 3.24. New

Sec. 3.25 is added to list the recording requirements for trademark

applications and registrations.

Section 3.25 identifies the types of documents one can submit when

recording documents that affect some interest in trademark applications

or registrations. The section also sets forth the Office's preferred

format for cover sheets and other documents.

Section 3.28 is revised to state that separate cover sheets should

be used for patents and trademarks.

Section 3.31(a)(4) is revised to set forth the requirements for

identifying a trademark application when the application serial number

is not known.

Section 3.31(a)(7) requires that a cover sheet state that the

assignee of a trademark application or registration who is not

domiciled in the United States has designated a domestic

representative. This is consistent with current Sec. 3.31(a)(8).

Comment: One comment suggested that Sec. 3.31(a)(7) be amended to

require that the domestic representative ``either sign the cover sheet

or countersign the indication,'' in order to prevent a foreign assignee

from designating a domestic representative who is unaware of the

designation.

Response: The suggestion has not been adopted. The Office has never

required a domestic representative to countersign a designation or a

cover sheet, and knows of no instances where an assignee or applicant

designated a domestic representative who is not aware of the fact that

he or she has been designated. Instituting a new requirement that a

domestic representative sign each cover sheet could be burdensome to

assignees and is contrary to the goal of minimizing formal requirements

and making the procedural requirements of the different national

trademark offices more consistent.

The requirement currently in Sec. 3.31(a)(9) that a cover sheet

contain a statement that the information on the cover sheet is correct

and that any copy of the document submitted is a true copy is deleted.

Section 3.31(b) is amended to state that a cover sheet should not

refer to both patents and trademarks; and to put the public on notice

that if a cover sheet contains both patent and trademark information,

all information will become public after recordation.

Section 3.31(d) is added, stating that a trademark cover sheet

should include the serial number or registration number of the

trademark affected by the conveyance or transaction, an identification

of the mark, and a description of the mark.

Section 3.31(e) is added, stating that the cover sheet should

include the total number of applications, registrations, or patents

identified on the cover sheet and the total fee.

Section 6.1 is revised to incorporate classification changes that

became effective January 1, 1997, as listed in the International

Classification of Goods and Services for the Purposes of the

Registration of Marks (7th ed. 1996), published by the World

Intellectual Property Organization (WIPO).

Rulemaking Requirements

The Office has determined that the rule changes have no federalism

[[Page 48916]]

implications affecting the relationship between the National Government

and the State as outlined in Executive Order 12612.

The Chief Counsel for Regulation of the Department of Commerce has

certified to the Chief Counsel for Advocacy of the Small Business

Administration, that the rule changes will not have a significant

impact on a substantial number of small entities (Regulatory

Flexibility Act, 5 U.S.C. 605(b)). This rule implements the Trademark

Law Treaty Implementation Act and simplifies and clarifies procedures

for registering trademarks and maintaining and renewing trademark

registrations. The rule will not significantly impact any businesses.

The principal effect of the rule is to make it easier for applicants to

obtain a filing date. No additional requirements are added to maintain

registrations.

Furthermore, this rule simplifies the procedures for registering

trademarks in new Secs. 2.21, 2.32, 2.34, 2.45, 2.76, 2.88, 2.161,

2.167 and 2.183 of the Trademark rules. As a result, an initial

regulatory flexibility analysis was not prepared.

The rule changes are in conformity with the requirements of the

Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order

12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et

seq.). No comments were received regarding the certification under the

Regulatory Flexibility Act. The changes have been determined to be not

significant for purposes of Executive Order 12866.

Notwithstanding any other provision of law, no person is required

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 PRA

unless that collection of information displays a currently valid OMB

control number.

This final rule contains collections of information requirements

subject to the PRA. This rule discusses changes in the information

required from the public to obtain registrations for trademarks and

service marks, to submit affidavits or declarations of continued use or

excusable nonuse, statements of use, requests for extensions of time to

file statements of use, and to renew registrations. This rule deletes

requirements to identify the method of use of a mark and the type of

commerce in which a mark is used. Additionally, the rule removes the

requirement that requests for recordation of documents be accompanied

by originals or true copies of these documents. The rule allows the

filing of powers of attorney that pertain to multiple registrations or

applications for registration, and sets forth certain requirements for

filing such powers of attorney. Additionally, the rule sets forth

requirements for submitting section 8 affidavits of continued use or

excusable nonuse combined with section 9 renewal applications, or

section 15 affidavits or declarations of incontestability combined with

either section 8 affidavits or declarations or with section 9 renewal

applications.

An information collection package supporting the changes to the

above information requirements, as discussed in this final rule, was

submitted to OMB for review and approval. This information collection

has been approved by OMB under OMB Control Number 0651-0009. The public

reporting burden for this collection of information is estimated to

average as follows: Seventeen minutes for applications to obtain

registrations based on an intent to use the mark under section 1(b) of

the Act, if completed using paper forms; fifteen minutes for

applications to obtain registrations based on an intent to use the mark

under section 1(b) of the Act, if completed using an electronic form;

twenty-three minutes for applications to obtain registrations based on

use of the mark under section 1(a) of the Act, if completed using paper

forms; twenty-one minutes for applications to obtain registrations

based on use of the mark under section 1(a) of the Act, if completed

using an electronic form; twenty minutes for applications to obtain

registrations based on an earlier-filed foreign application under

section 44(d) of the Act, if completed using paper forms; nineteen

minutes for applications to obtain registrations based on an earlier-

filed foreign application under section 44(d) of the Act, if completed

using an electronic form; twenty minutes for applications to obtain

registrations based on registration of a mark in a foreign applicant's

country of origin under section 44(e) of the Act; thirteen minutes for

allegations of use of the mark under sections 2.76 and 2.88; ten

minutes for requests for extension of time to file statements of use

under section 2.89; fourteen minutes for renewal applications under

section 9 of the Act combined with affidavits or declarations of

continued use or excusable nonuse under section 8 of the Act; fourteen

minutes for combined affidavits/declarations of use and

incontestability under sections 8 and 15 of the Act; eleven minutes for

an affidavit or declaration of continued use or excusable nonuse under

section 8 of the Act; eleven minutes for a renewal application under

section 9 of the Act; eleven minutes for a declaration of

incontestability under section 15 of the Act; three minutes for powers

of attorney and designations of domestic representatives; and thirty

minutes for a trademark recordation form cover sheet. These time

estimates include the time for reviewing instructions, searching

existing data sources, gathering and maintaining the data needed, and

completing and reviewing the collection of information. Comments are

invited on: (1) Whether the collection of information is necessary for

proper performance of the functions of the agency; (2) the accuracy of

the agency's estimate of the burden; (3) ways to enhance the quality,

utility, and clarity of the information to be collected; and (4) ways

to minimize the burden of the collection of information to respondents.

This final rule also involves information requirements associated

with amendments, oppositions, and petitions to cancel. The amendments

and the oppositions have been previously approved by OMB under control

number 0651-0009. The petitions to cancel have been previously approved

by OMB under control number 0651-0040. These requirements are not being

resubmitted for review at this time. Send comments regarding this

burden estimate, or any other aspect of this data collection, including

suggestions for reducing the burden, to the Assistant Commissioner for

Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513 (Attn: Ari

Leifman), and to the Office of Information and Regulatory Affairs,

Office of Management and Budget, 725 17th Street, NW, Washington, DC

20230 (Attn: PTO Desk Officer).

List of Subjects

37 CFR Part 1

Administrative practice and procedure, Patents.

37 CFR Part 2

Administrative practice and procedure, Courts, Lawyers, Trademarks.

37 CFR Part 3

Administrative practice and procedure, Patents, Trademarks.

37 CFR Part 6

Trademarks.

For the reasons given in the preamble and under the authority

contained in 35 U.S.C. 6 and 15 U.S.C. 41, as amended, the Patent and

Trademark Office is amending parts 1, 2, 3, and 6 of title 37 as

follows:

[[Page 48917]]

PART 1--RULES OF PRACTICE IN PATENT CASES

1. The authority citation for part 1 continues to read as follows:

Authority: 35 U.S.C. 6, unless otherwise noted.

2. Amend Sec. 1.1 by revising paragraph (a)(2) to read as follows:

Sec. 1.1 Addresses for correspondence with the Patent and Trademark

Office.

(a) * * *

(2) Trademark correspondence. (i) Send all trademark filings and

correspondence, except as specified below or unless submitting

electronically, to: Assistant Commissioner for Trademarks, 2900 Crystal

Drive, Arlington, Virginia 22202-3513.

(ii) Send trademark-related documents for the Assignment Division

to record to: Commissioner of Patents and Trademarks, Box Assignment,

Washington, DC 20231.

(iii) Send requests for certified or uncertified copies of

trademark applications and registrations, other than coupon orders for

uncertified copies of registrations, to: Commissioner of Patents and

Trademarks, Box 10, Washington, DC 20231.

(iv) Send requests for coupon orders for uncertified copies of

registrations to: Commissioner of Patents and Trademarks, Box 9,

Washington, DC 20231.

(v) An applicant may transmit an application for trademark

registration electronically, but only if the applicant uses the Patent

and Trademark Office's electronic form.

* * * * *

3. Amend Sec. 1.4 by revising the last sentence of paragraph

(a)(2), revising paragraphs (d)(1), introductory text, and (d)(1)(ii),

and adding a new paragraph (d)(1)(iii) to read as follows:

Sec. 1.4 Nature of correspondence and signature requirements.

(a) * * *

(2) * * * See particularly the rules relating to the filing,

processing, or other proceedings of national applications in subpart B,

Secs. 1.31 to 1.378; of international applications in subpart C,

Secs. 1.401 to 1.499; of reexamination of patents in subpart D,

Secs. 1.501 to 1.570; of interferences in subpart E, Secs. 1.601 to

1.690; of extension of patent term in subpart F, Secs. 1.710 to 1.785;

and of trademark applications and registrations, Secs. 2.11 to 2.186.

* * * * *

(d)(1) Each piece of correspondence, except as provided in

paragraphs (e) and (f) of this section, filed in an application, patent

file, trademark registration file, or other proceeding in the Office

which requires a person's signature, must:

(i) * * *

(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; or

(iii) Where an electronically transmitted trademark filing is

permitted, 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; and print, sign and date in permanent ink, and maintain a

paper copy of the electronic submission; or

(B) Sign the verified statement using some other form of electronic

signature specified by the Commissioner.

* * * * *

4. Amend Sec. 1.5 by revising paragraph (c) to read as follows:

Sec. 1.5 Identification of application, patent or registration.

* * * * *

(c)(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.

* * * * *

5. Amend Sec. 1.6 by revising paragraph (a)(1), and adding new

paragraph (a)(4), to read as follows:

Sec. 1.6 Receipt of correspondence.

(a) * * *

(1) The Patent and Trademark 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 by facsimile under paragraph (a)(3) of this section, or

filed electronically under paragraph (a)(4) of this section, no

correspondence is received in the Office on Saturdays, Sundays, or

Federal holidays within the District of Columbia.

* * * * *

(4) Trademark-related correspondence transmitted electronically

will be stamped with the date on which the Office receives the

transmission.

* * * * *

6. Revise Sec. 1.23 to read as follows:

Sec. 1.23 Method of payment.

(a) All payments of money required for Patent and Trademark Office

fees, including fees for the processing of international applications

(Sec. 1.445), shall be made in U.S. dollars and in the form of a

cashier's or certified check, Treasury 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 Commissioner of Patents and Trademarks.

Payments from foreign countries must be payable and immediately

negotiable in the United States for the full amount of the fee

required. Money sent by mail to the Office 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 Patent and Trademark Office fees

in an electronically filed trademark application or electronic

submission in a trademark application 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.

PART 2--RULES APPLICABLE TO TRADEMARK CASES

7. The authority citation for part 2 continues to read as follow:

Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

8. Revise Sec. 2.1 to read as follows:

Sec. 2.1 Sections of part 1 applicable.

Sections 1.1 to 1.26 of this chapter apply to trademark cases,

except those parts that specifically refer to patents, and except

Sec. 1.22 to the extent that it is inconsistent with Secs. 2.85(e),

2.101(d), 2.111(c), 2.164, or 2.185. Other sections of part 1

incorporated by reference in part 2 also apply to trademark cases.

9. Section 2.6 is amended by revising the introductory text,

paragraphs (a)(6) and (a)(14) and by adding paragraphs (a)(20) and

(a)(21) to read as follows:

[[Page 48918]]

Sec. 2.6 Trademark fees.

The Patent and Trademark Office requires the following fees and

charges:

(a) * * *

(6) Additional fee for filing a renewal application during the grace period, per class............ $100.00

* * * * * * *

(14) Additional fee for filing a section 8 affidavit during the grace period, per class........... $100.00

* * * * * * *

(20) For correcting a deficiency in a section 8 affidavit......................................... $100.00

(21) For correcting a deficiency in a renewal application......................................... $100.00

* * * * *

10. Amend Sec. 2.17 by adding paragraphs (c) and (d) to read as

follows:

Sec. 2.17 Recognition for representation.

* * * * *

(c) To be recognized as a representative, an attorney as defined in

Sec. 10.1(c) of this chapter may file a power of attorney, appear in

person, or sign a paper on behalf of an applicant or registrant that is

filed with the Office in a trademark case.

(d) A party may file a power of attorney that relates to more than

one trademark application or registration, or to all existing and

future applications and registrations of that party. A party relying on

such a power of attorney must:

(1) Include a copy of the previously filed power of attorney; or

(2) Refer to the power of attorney, specifying the filing date of

the previously filed power of attorney; the application serial number

(if known), registration number, or inter partes proceeding number for

which the original power of attorney was filed; and the name of the

party who signed the power of attorney; or, if the application serial

number is not known, submit a copy of the application or a copy of the

mark, and specify the filing date.

11. Revise Sec. 2.20 to read as follows:

Sec. 2.20 Declarations in lieu of oaths.

Instead of an oath, affidavit, verification, or sworn statement,

the language of 28 U.S.C. 1746, or the following language, may be used:

The undersigned being warned that willful false statements and the

like are punishable by fine or imprisonment, or both, under 18

U.S.C. 1001, and that such willful false statements and the like may

jeopardize the validity of the application or document or any

registration resulting therefrom, declares that all statements made

of his/her own knowledge are true; and all statements made on

information and belief are believed to be true.

12. Revise Sec. 2.21 to read as follows:

Sec. 2.21 Requirements for receiving a filing date.

(a) The Office will grant a filing date to an application that

contains all of the following:

(1) The name of the applicant;

(2) A name and address for correspondence;

(3) A clear drawing of the mark;

(4) A listing of the goods or services; and

(5) The filing fee for at least one class of goods or services,

required by Sec. 2.6.

(b) If the applicant does not submit all the elements required in

paragraph (a) of this section, the Office may return the papers with an

explanation of why the filing date was denied.

(c) The applicant may correct and resubmit the application papers.

If the resubmitted papers and fee meet all the requirements of

paragraph (a) of this section, the Office will grant a filing date as

of the date the Office receives the corrected papers.

Sec. 2.31 [Removed and reserved]

13. Remove and reserve Sec. 2.31.

14. Revise Sec. 2.32 to read as follows:

Sec. 2.32 Requirements for a complete application.

(a) The application must be in English and include the following:

(1) A request for registration;

(2) The name of the applicant(s);

(3)(i) The citizenship of the applicant(s); or

(ii) If the applicant is a corporation, association, partnership or

other juristic person, the jurisdiction (usually state or nation) under

the laws of which the applicant is organized; and

(iii) If the applicant is a partnership, the names and citizenship

of the general partners;

(4) The address of the applicant;

(5) One or more bases, as required by Sec. 2.34(a);

(6) A list of the particular goods or services on or in connection

with which the applicant uses or intends to use the mark. In a United

States application filed under section 44 of the Act, the scope of the

goods or services covered by the section 44 basis may not exceed the

scope of the goods or services in the foreign application or

registration; and

(7) The international class of goods or services, if known. See

Sec. 6.1 of this chapter for a list of the international classes of

goods and services.

(b) The application must include a verified statement that meets

the requirements of Sec. 2.33.

(c) The application must include a drawing that meets the

requirements of Secs. 2.51 and 2.52.

(d) The application must include fee required by Sec. 2.6 for each

class of goods or services.

(e) For the requirements for a multiple class application, see

Sec. 2.86.

15. Revise Sec. 2.33 to read as follows:

Sec. 2.33 Verified statement.

(a) The application must include a statement that is signed and

verified (sworn to) or supported by a declaration under Sec. 2.20 by a

person properly authorized to sign on behalf of the applicant. A person

who is properly authorized to sign on behalf of the applicant is:

(1) A person with legal authority to bind the applicant; or

(2) A person with firsthand knowledge of the facts and actual or

implied authority to act on behalf of the applicant; or

(3) An attorney as defined in Sec. 10.1(c) of this chapter who has

an actual or implied written or verbal power of attorney from the

applicant.

(b)(1) In an application under section 1(a) of the Act, the

verified statement must allege:

That the applicant has adopted and is using the mark shown in the

accompanying drawing; that the applicant believes it is the owner of

the mark; that the mark is in use in commerce; that to the best of

the declarant's knowledge and belief, no other person has the right

to use the mark in commerce, either in the identical form or in such

near resemblance as to be likely, when applied to the goods or

services of the other person, to cause confusion or mistake, or to

deceive; that the specimen shows the mark

[[Page 48919]]

as used on or in connection with the goods or services; and that the

facts set forth in the application are true.

(2) In an application under section 1(b) or section 44 of the Act,

the verified statement must allege:

That the applicant has a bona fide intention to use the mark shown

in the accompanying drawing in commerce on or in connection with the

specified goods or services; that the applicant believes it is

entitled to use the mark; that to the best of the declarant's

knowledge and belief, no other person has the right to use the mark

in commerce, either in the identical form or in such near

resemblance as to be likely, when applied to the goods or services

of the other person, to cause confusion or mistake, or to deceive;

and that the facts set forth in the application are true.

(c) If the verified statement is not filed within a reasonable time

after it is signed, the Office may require the applicant to submit a

substitute verification or declaration under Sec. 2.20 of the

applicant's continued use or bona fide intention to use the mark in

commerce.

(d) Where an electronically transmitted filing is permitted, the

person who signs the verified statement must either:

(1) Place a symbol comprised of numbers and/or letters between two

forward slash marks in the signature block on the electronic

submission; and print, sign and date in permanent ink, and maintain a

paper copy of the electronic submission; or

(2) Sign the verified statement using some other form of electronic

signature specified by the Commissioner.

16. Add Sec. 2.34 to read as follows:

Sec. 2.34 Bases for filing.

(a) The application must include one or more of the following four

filing bases:

(1) Use in commerce under section 1(a) of the Act. The requirements

for an application based on section 1(a) of the Act are:

(i) The trademark owner's verified statement that the mark is in

use in commerce on or in connection with the goods or services listed

in the application. If the verification is not filed with the initial

application, the verified statement must allege that the mark was in

use in commerce on or in connection with the goods or services listed

in the application as of the application filing date;

(ii) The date of the applicant's first use of the mark anywhere on

or in connection with the goods or services;

(iii) The date of the applicant's first use of the mark in commerce

as a trademark or service mark; and

(iv) One specimen showing how the applicant actually uses the mark

in commerce.

(v) An application may list more than one item of goods, or more

than one service, provided the applicant has used the mark on or in

connection with all the specified goods or services. The dates of use

required by paragraphs (a)(1) (ii) and (iii) of this section may be for

only one of the items specified.

(2) Intent-to-use under section 1(b) of the Act. (i) In an

application under section 1(b) of the Act, the trademark owner must

verify that it has a bona fide intention to use the mark in commerce on

or in connection with the goods or services listed in the application.

If the verification is not filed with the initial application, the

verified statement must allege that the applicant had a bona fide

intention to use the mark in commerce as of the filing date of the

application.

(ii) The application may list more than one item of goods, or more

than one service, provided the applicant has a bona fide intention to

use the mark in commerce on or in connection with all the specified

goods or services.

(3) Registration of a mark in a foreign applicant's country of

origin under section 44(e) of the Act. The requirements for an

application under section 44(e) of the Act are:

(i) The trademark owner's verified statement that it has a bona

fide intention to use the mark in commerce on or in connection with the

goods or services listed in the application. If the verification is not

filed with the initial application, the verified statement must allege

that the applicant had a bona fide intention to use the mark in

commerce as of the filing date of the application.

(ii) A certification or certified copy of a registration in the

applicant's country of origin showing that the mark has been registered

in that country, and that the registration is in full force and effect.

The certification or certified copy must show the name of the owner,

the mark, and the goods or services for which the mark is registered.

If the certification or certified copy is not in the English language,

the applicant must submit a translation.

(iii) If the record indicates that the foreign registration will

expire before the United States registration will issue, the applicant

must submit a certification or certified copy from the country of

origin to establish that the registration has been renewed and will be

in force at the time the United States registration will issue. If the

certification or certified copy is not in the English language, the

applicant must submit a translation.

(iv) The application may list more than one item of goods, or more

than one service, provided the applicant has a bona fide intention to

use the mark in commerce on or in connection with all the specified

goods or services.

(4) Claim of priority, based upon an earlier-filed foreign

application, under section 44(d) of the Act. The requirements for an

application under section 44(d) of the Act are:

(i) A claim of priority, filed within six months of the filing date

of the foreign application. Before publication or registration on the

Supplemental Register, the applicant must either:

(A) Specify the filing date and country of the first regularly

filed foreign application; or

(B) State that the application is based upon a subsequent regularly

filed application in the same foreign country, and that any prior-filed

application has been withdrawn, abandoned or otherwise disposed of,

without having been laid open to public inspection and without having

any rights outstanding, and has not served as a basis for claiming a

right of priority.

(ii) Include the trademark owner's verified statement that it has a

bona fide intention to use the mark in commerce on or in connection

with the goods or services listed in the application. If the

verification is not filed with the initial application, the verified

statement must allege that the applicant had a bona fide intention to

use the mark in commerce as of the filing date of the application.

(iii) Before the application can be approved for publication, or

for registration on the Supplemental Register, the applicant must

establish a basis under section 1(a), section 1(b) or section 44(e) of

the Act.

(iv) The application may list more than one item of goods, or more

than one service, provided the applicant has a bona fide intention to

use the mark in commerce on or in connection with all the specified

goods or services.

(b)(1) The applicant may claim more than one basis, provided that

the applicant satisfies all requirements for the bases claimed.

However, the applicant may not claim both sections 1(a) and 1(b) for

the identical goods or services in the same application.

(2) If the applicant claims more than one basis, the applicant must

list each basis, followed by the goods or services to which that basis

applies. If some or all of the goods or services are covered by more

than one basis, this must be stated.

(c) The word ``commerce'' means commerce that Congress may lawfully

regulate, as specified in section 45 of the Act.

[[Page 48920]]

Sec. 2.37 [Removed]

17. Remove Sec. 2.37.

Sec. 2.35 [Redesignated as Sec. 2.37]

18. Redesignate Sec. 2.35 as Sec. 2.37.

19. Add new Sec. 2.35, to read as follows:

Sec. 2.35 Adding, deleting, or substituting bases.

(a) Before publication, the applicant may add or substitute a

basis, if the applicant meets all requirements for the new basis, as

stated in Sec. 2.34. The applicant may delete a basis at any time.

(b) An applicant may amend an application that is not the subject

of an inter partes proceeding before the Trademark Trial and Appeal

Board to add or substitute a basis after the mark has been published

for opposition, but only with the express permission of the

Commissioner, after consideration on petition. Republication will be

required. The amendment of an application that is the subject of an

inter partes proceeding before the Board is governed by Sec. 2.133(a).

(c) When the applicant substitutes one basis for another, the

Office will presume that there was a continuing valid basis, unless

there is contradictory evidence in the record, and the application will

retain the original filing date, including a priority filing date under

section 44(d), if appropriate.

(d) If an applicant properly claims a section 44(d) basis in

addition to another basis, the applicant will retain the priority

filing date under section 44(d) no matter which basis the applicant

perfects.

(e) The applicant may add or substitute a section 44(d) basis only

within the six-month priority period following the filing date of the

foreign application.

(f) When the applicant adds or substitutes a basis, the applicant

must list each basis, followed by the goods or services to which that

basis applies.

(g) When the applicant deletes a basis, the applicant must also

delete any goods or services covered solely by the deleted basis.

(h) Once an applicant claims a section 1(b) basis as to any or all

of the goods or services, the applicant may not amend the application

to seek registration under section 1(a) of the Act for those goods or

services unless the applicant files an allegation of use under section

1(c) or section 1(d) of the Act.

20. Amend Sec. 2.38 by revising paragraph (a) to read as follows:

Sec. 2.38 Use by predecessor or by related companies.

(a) If the first use of the mark was by a predecessor in title or

by a related company (sections 5 and 45 of the Act), and the use inures

to the benefit of the applicant, the dates of first use

(Secs. 2.34(a)(1) (ii) and (iii)) may be asserted with a statement that

first use was by the predecessor in title or by the related company, as

appropriate.

* * * * *

Sec. 2.39 [Removed and reserved]

21. Remove and reserve Sec. 2.39.

22. Revise Sec. 2.45 to read as follows:

Sec. 2.45 Certification mark.

(a) In an application to register a certification mark under

section 1(a) of the Act, the application shall include all applicable

elements required by the preceding sections for trademarks. In

addition, the application must: Specify the conditions under which the

certification mark is used; allege that the applicant exercises

legitimate control over the use of the mark; allege that the applicant

is not engaged in the production or marketing of the goods or services

to which the mark is applied; and include a copy of the standards that

determine whether others may use the certification mark on their goods

and/or in connection with their services.

(b) In an application to register a certification mark under

section 1(b) or section 44 of the Act, the application shall include

all applicable elements required by the preceding sections for

trademarks. In addition, the application must: specify the conditions

under which the certification mark is intended to be used; allege that

the applicant intends to exercise legitimate control over the use of

the mark; and allege that the applicant will not engage in the

production or marketing of the goods or services to which the mark is

applied. When the applicant files an amendment to allege use under

section 1(c) of the Act, or a statement of use under section 1(d) of

the Act, the applicant must submit a copy of the standards that

determine whether others may use the certification mark on their goods

and/or in connection with their services.

Sec. 2.51 [Amended]

23. In Sec. 2.51, remove paragraphs (c), (d) and (e).

24. Revise Sec. 2.52 to read as follows:

Sec. 2.52 Types of drawings and format for drawings.

(a) A drawing depicts the mark sought to be registered. The drawing

must show only one mark. The applicant must include a clear drawing of

the mark when the application is filed. There are two types of

drawings:

(1) Typed drawing. The drawing may be typed if the mark consists

only of words, letters, numbers, common forms of punctuation, or any

combination of these elements. In a typed drawing, every word or letter

must be typed in uppercase type. If the applicant submits a typed

drawing, the application is not limited to the mark depicted in any

special form or lettering.

(2) Special form drawing. A special form drawing is required if the

mark has a two or three-dimensional design; or color; or words,

letters, or numbers in a particular style of lettering; or unusual

forms of punctuation.

(i) Special form drawings must be made with a pen or by a process

that will provide high definition when copied. A photolithographic,

printer's proof copy, or other high quality reproduction of the mark

may be used. Every line and letter, including lines used for shading,

must be black. All lines must be clean, sharp, and solid, and must not

be fine or crowded. Gray tones or tints may not be used for surface

shading or any other purpose.

(ii) If necessary to adequately depict the commercial impression of

the mark, the applicant may be required to submit a drawing that shows

the placement of the mark by surrounding the mark with a

proportionately accurate broken-line representation of the particular

goods, packaging, or advertising on which the mark appears. The

applicant must also use broken lines to show any other matter not

claimed as part of the mark. For any drawing using broken lines to

indicate placement of the mark, or matter not claimed as part of the

mark, the applicant must include in the body of the application a

written description of the mark and explain the purpose of the broken

lines.

(iii) If the mark has three-dimensional features, the applicant

must submit a drawing that depicts a single rendition of the mark, and

the applicant must include a description of the mark indicating that

the mark is three-dimensional.

(iv) If the mark has motion, the applicant may submit a drawing

that depicts a single point in the movement, or the applicant may

submit a square drawing that contains up to five freeze frames showing

various points in the movement, whichever best depicts the commercial

impression of the mark. The applicant must also submit a written

description of the mark.

(v) If the mark has color, the applicant may claim that all or part

of the mark consists of one or more colors. To claim color, the

applicant must submit a

[[Page 48921]]

statement explaining where the color or colors appear in the mark and

the nature of the color(s).

(vi) If a drawing cannot adequately depict all significant features

of the mark, the applicant must also submit a written description of

the mark.

(3) Sound, scent, and non-visual marks. The applicant is not

required to submit a drawing if the applicant's mark consists only of a

sound, a scent, or other completely non-visual matter. For these types

of marks, the applicant must submit a detailed written description of

the mark.

(b) Recommended format for special form drawings--(1) Type of paper

and ink. The drawing should be on a piece of non-shiny, white paper

that is separate from the application. Black ink should be used to

depict the mark.

(2) Size of paper and size of mark. The drawing should be on paper

that is 8 to 8\1/2\ inches (20.3 to 21.6 cm.) wide and 11 to 11.69

inches (27.9 to 29.7 cm.) long. One of the shorter sides of the sheet

should be regarded as its top edge. The drawing should be between 2.5

inches (6.1 cm.) and 4 inches (10.3 cm.) high and/or wide. There should

be at least a 1 inch (2.5 cm.) margin between the drawing and the edges

of the paper, and at least a 1 inch (2.5 cm.) margin between the

drawing and the heading.

(3) Heading. Across the top of the drawing, beginning one inch (2.5

cm.) from the top edge, the applicant should type the following:

Applicant's name; applicant's address; the goods or services recited in

the application, or a typical item of the goods or services if numerous

items are recited in the application; the date of first use of the mark

and first use of the mark in commerce in an application under section

1(a) of the Act; the priority filing date of the relevant foreign

application in an application claiming the benefit of a prior foreign

application under section 44(d) of the Act. If the information in the

heading is lengthy, the heading may continue onto a second page, but

the mark should be depicted on the first page.

(c) Drawings in electronically transmitted applications. For an

electronically transmitted application, if the drawing is in special

form, the applicant must attach a digitized image of the mark to the

electronic submission.

25. Revise Sec. 2.56 to read as follows:

Sec. 2.56 Specimens.

(a) An application under section 1(a) of the Act, an amendment to

allege use under Sec. 2.76, and a statement of use under Sec. 2.88 must

each include one specimen showing the mark as used on or in connection

with the goods, or in the sale or advertising of the services in

commerce.

(b)(1) A trademark specimen is a label, tag, or container for the

goods, or a display associated with the goods. The Office may accept

another document related to the goods or the sale of the goods when it

is not possible to place the mark on the goods or packaging for the

goods.

(2) A service mark specimen must show the mark as actually used in

the sale or advertising of the services.

(3) A collective trademark or collective service mark specimen must

show how a member uses the mark on the member's goods or in the sale or

advertising of the member's services.

(4) A collective membership mark specimen must show use by members

to indicate membership in the collective organization.

(5) A certification mark specimen must show how a person other than

the owner uses the mark to certify regional or other origin, material,

mode of manufacture, quality, accuracy, or other characteristics of

that person's goods or services; or that members of a union or other

organization performed the work or labor on the goods or services.

(c) A photocopy or other reproduction of a specimen of the mark as

actually used on or in connection with the goods, or in the sale or

advertising of the services, is acceptable. However, a photocopy of the

drawing required by Sec. 2.51 is not a proper specimen.

(d)(1) The specimen should be flat, and not larger than 8\1/2\

inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen

of this size is not available, the applicant may substitute a suitable

photograph or other facsimile.

(2) If t

This text is long and has been trimmed here. Open the source document for the complete record.