TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP)
UNITED STATES PATENT AND TRADEMARK OFFICE
Sixth Edition, Rev. 1, October 2009
October 2009
Foreword to the Sixth Edition, Rev. 1
The Trademark Manual of Examining Procedure (TMEP) may be downloaded free of charge from the United States Patent and Trademark Office (USPTO) website at http://www.uspto.gov/.
The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants, with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO. The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.
Trademark Examining Attorneys will be governed by the applicable statutes, the Trademark Rules of Practice, decisions, and Orders and Notices issued by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Commissioners, or Deputy Commissioners. Policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of Office policy, to the extent that there is any conflict.
Suggestions for improving the form and content of the Manual are always welcome. They should be e-mailed to tmtmep@uspto.gov, or addressed to:
Commissioner for Trademarks Attention: Editor, Trademark Manual of Examining Procedure P.O. Box 1451 Alexandria, Virginia 22313-1451
Mary E. Hannon Editor
Lynne G. Beresford Commissioner for Trademarks
Contents
Changes: Index to Changes in TMEP Sixth Edition Changes: Index to Changes in TMEP Sixth Edition, Rev. 1 Foreword Contents Introduction Chapter 100 General Information
200 Application Filing Date 300 Filing and Receipt of Documents 400 Processing Documents and Fees 500 Change of Ownership 600 Attorney, Representative, and Signature 700 Procedure for Examining Applications 800 Application Requirements 900 Use in Commerce 1000 Applications Under Section 44 1100 Intent-to-Use Applications and Requests to Divide 1200 Substantive Examination of Applications 1300 Service Marks, Collective Marks, and Certification Marks 1400 Classification and Identification of Goods and Services 1500 Post-Examination Procedures 1600 Registration and Post Registration Procedures 1700 Petitions, Requests for Reinstatement, and Other Matters
Submitted to Director 1800 Public Inquiries About Applications and Registrations 1900 Madrid Protocol
Appendix A Examining Attorneys’ Appeal Briefs Appendix B Members of International Trademark Agreements Appendix C Notes of Other Statutes Appendix D Foreign Entity Appendix Appendix E Countries That Have Standard Character Marks or the
Equivalent Index
October 2009
TMEP Contents
(By Sections)
Chapter 100 - General Information
101 Trademark Statute and Rules 102 United States Patent and Trademark Office World
Wide Website 103 Trademark Forms 104 Trademark Searching 105 General Information Booklet Concerning Trademarks 106 The Official Gazette 107 Trademark Manuals 108 Status Inquiries 108.01 Internet Information 108.02 Personal Telephone Assistance 108.03 Due Diligence: Duty to Monitor Status 109 Access to Records 109.01 Electronic Image Records 109.02 Paper Files 109.03 Making Copies of Materials in Records 110 Decisions Available to the Public 111 Requests for Copies of Trademark Documents 112 Patent and Trademark Depository Libraries
Chapter 200 - Application Filing Date
201 What Constitutes Filing Date 201.01 Effective Filing Date Controls for Purposes of
Determining Priority for Publication or Issue 201.02 Constructive Use Priority 202 Requirements for Receiving a Filing Date 202.01 Clear Drawing of the Mark 202.02 Listing of Recognizable Goods or Services 202.03 Filing Fee for At Least One Class of Goods or Services 202.03(a) Fee Payment Refused or Charged Back By Financial
Institution 202.03(a)(i) Processing Fee for Payment Refused or Charged Back
By Financial Institution 203 Review for Compliance With Minimum Requirements 204 Defective or Informal Applications 204.01 Filing Date Cancelled if Minimum Filing Requirements not
Met 204.02 Resubmission of Applications
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204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
205 Filing Date Is Not Normally Changed 206 Effective Filing Date 206.01 Amendment of §1(b) Application from Principal Register
to Supplemental Register upon Filing of Allegation of Use 206.02 Application Claiming Priority under §44(d) or §67 206.03 Applications Filed Before November 16, 1989, That Are
Amended to the Supplemental Register on or After November 16, 1989
206.04 Examining Attorney’s Action After Conducting New Search
Chapter 300 - Filing and Receipt of Documents
301 Electronic Filing 302 Trademark Correspondence and Signature
Requirements - In General 302.01 Original Documents Generally Not Required 302.02 Multiple Copies of Documents Should Not Be Filed 302.03 Identifying the Nature of Documents Filed 302.03(a) Correspondence Pertaining to Trademark Applications 302.03(b) Correspondence Pertaining to Trademark Registrations 303 Receipt of Documents by the Office 303.01 Date of Receipt 303.02 Acknowledgment of Receipt 303.02(a) TEAS “Success” Page 303.02(b) “Mail Room Date” Label Showing Receipt 303.02(c) Postcard Receipt 303.02(c)(i) Postage on Return Receipt Postcards 304 Electronic Mail 304.01 Communications Acceptable Via Electronic Mail 304.02 Communications Not Acceptable Via Electronic Mail 304.03 Authorization of Electronic Mail Communications From
the USPTO 304.04 Date of Receipt of Electronic Mail 304.05 Certificate of Transmission by Electronic Mail 304.06 Outgoing Electronic Mail 304.07 Signature of Electronic Mail 304.08 E-Mail Addresses for Correspondence With the Office 304.09 “Confirmation” Copies of E-Mail Communications Should
Not Be Sent to the Office 305 Mailing Documents to the Office 305.01 Mailing Addresses 305.02 Certificate of Mailing Procedure 305.02(a) When Certificate of Mailing Procedure May Not Be Used
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305.02(b) Mailing Requirements 305.02(c) Location and Form of Certificate 305.02(d) Wording of Certificate of Mailing 305.02(e) Effect of Certificate of Mailing 305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197
But Not Received by Office 305.02(g) Correspondence Deposited as First Class Mail Pursuant
to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
305.02(h) Certificate of Mailing Requirements Strictly Enforced 305.03 “Express Mail” 305.04 Interruptions in U.S. Postal Service 306 Facsimile Transmission (Fax) 306.01 Documents That May Not Be Filed by Facsimile
Transmission 306.02 Fax Machines Designated to Accept Relevant Trademark
Documents 306.03 Effect of Filing by Fax 306.04 Procedure for Filing by Fax 306.05 Certificate of Transmission Procedure 306.05(a) Location and Form of Certificate of Transmission 306.05(b) Wording of Certificate of Transmission 306.05(c) Effect of Certificate of Transmission 306.05(d) Correspondence Transmitted by Fax Pursuant to 37
C.F.R. §2.197 But Not Received by Office 306.06 Requirements for Certificate of Transmission Strictly
Enforced 307 Hand Delivery 308 Period Ending on Saturday, Sunday, or Federal
Holiday 309 Unscheduled Closings of the United States Patent
and Trademark Office 310 Computing Period for Response to Office Action or
Notice
Chapter 400 - Processing Documents and Fees
401 Processing New Applications 401.01 Filing Receipts 401.02 Serial Numbers and Series Codes 401.03 Data Entry 401.04 Creation of Application Records 402 Electronic Application and Registration Records 402.01 USPTO No Longer Creates Paper Copies of Certain
Trademark-Related Documents 403 Correspondence Returned as Undeliverable
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404 Documents Not Returnable 405 Fees 405.01 Credit Cards 405.02 Checks 405.02(a) Personal Checks 405.03 Deposit Accounts 405.04 Refunds 405.05 Electronic Funds Transfer 405.06 Payments Refused or Charged Back By Financial
Institutions
Chapter 500 - Change of Ownership
501 Assignment of Marks 501.01 Assignability of Marks in Applications and Registrations 501.01(a) Assignability of Intent-to-Use Applications 501.01(b) Assignability of Extensions of Protection of International
Registrations to the United States 501.02 Assignments Must Be in Writing 501.03 Effect of Failure to Record Assignment 501.04 Foreign Assignee May Designate Domestic
Representative 501.05 Assignee Stands in Place of Applicant or Registrant 501.06 Partial Assignments 501.07 Assignment of Extension of Protection of International
Registration to the United States 502 Establishing Ownership of Applications or
Registrations 502.01 Establishing the Right to Take Action in Application or
Registration 502.02 Pending Applications - Issuance of Registration
Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §§1 and 44 of the Trademark Act 502.02(b) Applications Under §66(a) of the Trademark Act 502.02(c) Examining Attorney’s Action Regarding Assignment 502.03 Issuance of New Certificate to Assignee of Registrant 503 Recording With Assignment Services Branch 503.01 Effect of Recording a Document 503.01(a) Recording May Not Update Ownership Information 503.01(b) Recording Does Not Update Correspondence Address in
Trademark Database 503.01(c) Recording is Not a Determination of Validity 503.01(d) Recording Does Not Constitute Response to Office
Action 503.01(e) Conditional Assignment
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503.02 Documents That the Office Will Record 503.03 Requirements for Recording 503.03(a) Formal Requirements for Documents 503.03(b) Supporting Documents 503.03(c) English Language Requirement 503.03(d) Fee for Recording 503.03(e) Cover Sheet 503.04 Address for Submitting Documents for Recording 503.05 Recording Procedure and Recordation Date 503.06 Correction of Errors in Cover Sheet or Recorded
Document 503.06(a) Typographical Errors in Cover Sheet 503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect
Title to Application or Registration 503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title
to Application or Registration 503.06(b) Typographical Errors in Recorded Assignment Document 503.06(c) Assignment or Change of Name Improperly Filed and
Recorded By Another Person Against Owner’s Application or Registration
503.06(d) Owner Must Notify Trademark Operation of Correction 503.06(e) Recorded Documents Not Removed From Assignment
Records 503.06(f) Petitions to Correct or “Expunge” Assignment Records 503.07 “Indexing” Against Recorded Document Not Permitted 503.08 Accessibility of Assignment Records 503.08(a) Abstracts of Title 504 Automatic Updating of Ownership of Trademark
Applications and Registrations in Trademark Database
504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated
504.02 Processing Time for Automatic Updating 504.03 Correction to Automatic Update - Last Recorded Owner
Does Not Have Clear Chain of Title 504.04 Automatic Updating Does Not Apply to Requests for
Recordation Filed Before November 2, 2003 504.05 Automatic Updating Does Not Apply to §66(a)
Applications and Registered Extensions of Protection 505 Notifying Trademark Operation of Recordation of a
Document and Request to Update Ownership Information
505.01 Request to Update Ownership Information in Pending Application
505.02 Request to Update Ownership Information After Registration
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Chapter 600 - Attorney, Representative, and Signature
601 Owner of Mark May Be Represented by an Attorney at Law
601.01 USPTO Cannot Aid in Selection of an Attorney 601.02 Communications With Applicant or Registrant Who Is
Represented by an Attorney 602 Persons Authorized to Practice Before USPTO in
Trademark Matters 602.01 Attorneys Licensed to Practice in the United States 602.02 Non-Attorneys 602.03 Foreign Attorneys and Agents 602.03(a) Canadian Attorneys and Agents 602.03(b) Foreign Attorneys and Agents From Countries Other
Than Canada 602.03(c) Documents Filed by Foreign Attorneys and Agents 602.03(d) Representatives of Holders of International Registrations 602.03(e) Identification of Foreign Attorney in Original Application 603 Standards of Conduct 604 Recognition as a Representative 604.01 Three Ways to Be Recognized 604.02 Duration of Recognition 604.03 Change of Attorney 605 Powers of Attorney 605.01 Requirements for Power of Attorney 605.02 Power of Attorney Relating to More Than One Application
or Registration 605.03 Associate Powers of Attorney 605.04 Powers of Attorney Filed After Registration 606 Revocation of Power of Attorney 607 Withdrawal of Attorney of Record 608 Unauthorized Practice 608.01 Actions by Unauthorized Persons Not Permitted 608.02 Individuals Excluded, Suspended, or Unauthorized to
Practice Before the USPTO 609 Correspondence, With Whom Held 609.01 Establishing the Correspondence Address 609.01(a) Correspondence in §66(a) Applications 609.02 Changing the Correspondence Address 609.02(a) Request to Change Correspondence Address Presumed 609.02(b) Requirements for Request to Change Correspondence
Address 609.02(c) Processing Requests to Change the Correspondence
Address Before Registration 609.02(d) Changing the Correspondence Address in Multiple
Applications or Registrations
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609.02(e) Changing the Correspondence Address After Registration
609.02(f) Correspondence After Recordation of Change of Ownership
609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address
609.04 Correspondence with Parties Not Domiciled in the United States
610 Designation of Domestic Representative by Parties Not Domiciled in the United States
611 Signature on Correspondence Filed in the United States Patent and Trademark Office
611.01 Signature and Certificate 611.01(a) Signature as Certificate 611.01(b) Requirements for Signature 611.01(c) Signature of Documents Filed Electronically 611.02 Signatures by Authorized Parties Required 611.02(a) TEAS Checkoff Boxes 611.03 Proper Person to Sign 611.03(a) Verification 611.03(b) Responses, Amendments to Applications, Requests for
Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide
611.03(c) Powers of Attorney and Revocations of Powers of Attorney
611.03(d) Petitions to Revive 611.03(e) Petitions to the Director 611.03(f) Amendment, Correction, or Surrender of Registration 611.03(g) Renewal Applications 611.03(h) Designations and Revocations of Domestic
Representative 611.03(i) Requests to Change Correspondence Address in an
Application or Registration 611.04 Examples of Authorized and Potentially Unauthorized
Signatories 611.05 Processing Documents Signed by Someone Other Than
the Applicant or the Applicant’s Designated Attorney 611.05(a) Notice of Incomplete Response When Authority of
Person Signing Response is Unclear 611.05(b) Replying to a Notice of Incomplete Response 611.05(c) Unsatisfactory Response or Failure to Respond 611.06 Guidelines on Persons With Legal Authority to Bind
Certain Juristic Entities 611.06(a) Joint Owners 611.06(b) Signature by Partnership 611.06(c) Signature by Joint Venture
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611.06(d) Signature by Corporation 611.06(e) Signature by Foreign Companies and Corporations 611.06(f) Signature by Unincorporated Association 611.06(g) Signature by Limited Liability Company 611.06(h) Signature by Limited Liability Partnership
Chapter 700 - Procedure for Examining Applications
701 Statutory Authority for Examination 702 Order of Work 702.01 Order of Examination 702.02 “Special” Applications 702.03 Related Applications 702.03(a) Companion Applications 702.03(a)(i) Companion Applications Not Previously Assigned for the
Same or Similar Marks 702.03(a)(ii) Companion Applications Previously Assigned 702.03(a)(iii) Companion Registrations 702.03(a)(iv) Classification and Identification in Companion
Applications That Have Registered or Been Published for Opposition
702.03(b) Conflicting Applications 703 USPTO Does Not Issue Duplicate Registrations 704 Initial Examination 704.01 Initial Examination Must be Complete 704.02 Examining Attorney’s Search 704.03 Supervisory Examining Attorney May Indicate Action for
Non-Signatory Examining Attorney 705 The Examining Attorney’s Letter or Action 705.01 Language in Examining Attorney’s Letter 705.02 Examining Attorneys Should Not Volunteer Statements 705.03 Citation of Conflicting Marks 705.04 Reference to Matter in Printed or Online Publications 705.05 Citation of Decisions and USPTO Publications 705.06 Reviewing and Signing of Letters 705.07 Processing Outgoing Office Actions 705.08 Six-Month Response Clause 706 New Matter Raised by Examining Attorney After First
Action 706.01 “Clear Error” 707 Examiner’s Amendment 707.01 Approval of Examiner’s Amendment by Applicant or
Applicant’s Attorney 707.02 Examiner’s Amendment Without Prior Authorization by
Applicant or Applicant’s Attorney 707.03 Form of the Examiner’s Amendment
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708 Priority Action 708.01 Priority Action Defined 708.02 Discussion of Issues and Agreements 708.03 Form of the Priority Action 708.04 Refusal of Registration in Priority Action 708.05 Combined Examiner’s Amendment/Priority Action 709 Interviews 709.01 Personal Interviews 709.02 Persons Who May Represent Applicant in an Interview 709.03 Making Substance of Interview of Record 709.04 Telephone and E-Mail Communications 709.05 Informal Communications 709.06 Interviews Prior to Filing Application 710 Evidence 710.01 Evidence Supporting Refusal or Requirement 710.01(a) Evidence From Research Database 710.01(b) Internet Evidence 710.01(c) Record Must Be Complete Prior to Appeal 710.02 Search for Evidence Indicating No Refusal or
Requirement Necessary 710.03 Evidence of Third-Party Registrations 711 Deadline for Response to Office Action 711.01 Time May Run from Previous Action 711.02 Supplemental Office Action Resetting Response Period 712 Signature on Response to Office Action 712.01 Persons Who May Sign Response 712.02 Unsigned Response 712.03 Response Signed by an Unauthorized Person 713 Examination of Amendments and Responses to
Office Actions 713.01 Previous Action by Different Examining Attorney 713.02 Noting All Outstanding Refusals or Requirements 713.03 Response to Applicant’s Arguments 714 Final Action 714.01 Not Permissible on First Action 714.02 Not Permissible on Suspension 714.03 When Final Action is Appropriate 714.04 Form of the Final Action 714.05 Delineating New Issues Requiring Issuance of Nonfinal
Action 714.05(a) Unacceptable Amendment Proposed By Applicant 714.05(a)(i) Amendment to Supplemental Register or Submission of
Claim of Acquired Distinctiveness 714.05(a)(ii) Amendment of Identification of Goods/Services 714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application
That Has Matured Into Registration
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714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal
714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce
714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
714.06 Applicant’s Recourse When Final Action is Premature 715 Action After Issuance of Final Action 715.01 Proper Response to Final Action 715.02 Action After Final Action 715.03 Request for Reconsideration After Final Action 715.03(a) Examining Attorney’s Action When No New Issue is
Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(c) Time for Appeal Runs from Issuance Date of Final Action 715.04 Request for Reconsideration Filed in Conjunction With
Notice of Appeal 715.04(a) Examining Attorney's Action When No New Issue is
Presented in Request for Reconsideration and Notice of Appeal Has Been Filed
715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
716 Suspension of Action by USPTO 716.01 Form of Suspension Notice 716.02 Circumstances Under Which Action May Be Suspended 716.02(a) Applicant’s Petition to Cancel Cited Registration 716.02(b) Submission of Copy of Foreign Registration in §44(d)
Application 716.02(c) Conflicting Marks in Pending Applications 716.02(d) Inter Partes or Court Proceeding 716.02(e) Suspension Pending Cancellation or Expiration of Cited
Registration 716.03 Applicant’s Request to Remove Application from
Suspension 716.04 Suspended Docket Checked 716.05 Inquiry by Examining Attorney Regarding Suspended
Application 716.06 Suspension After Final Action
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717 Reissuing an Office Action 717.01 Returned Office Action 717.02 Non-Receipt of Office Action 718 Abandonment 718.01 Express Abandonment by Applicant or Applicant’s
Attorney 718.02 Failure by Applicant to Take Required Action During
Statutory Period 718.02(a) Partial Abandonment 718.03 Incomplete Response 718.03(a) Holding of Abandonment for Failure to Respond
Completely 718.03(b) Granting Additional Time to Perfect Response 718.03(c) Reconsideration of Holding of Abandonment 718.04 Failure to File Statement of Use 718.05 Failure to Perfect Appeal 718.06 Notice of Abandonment for Failure to Respond 718.07 Revival or Reinstatement of Abandoned Application -
New Search Required 719 Non-Responsive Communications 720 Fraud Upon the USPTO
Chapter 800 - Application Requirements
801 Types of Applications 801.01 Single or Combined Application 801.01(a) Single (Single-Class) Application 801.01(b) Combined (Multiple-Class) Application 801.02 Principal Register or Supplemental Register 801.02(a) Act of 1946, Principal Register 801.02(b) Act of 1946, Supplemental Register 802 Application Form 803 Applicant 803.01 Who May Apply 803.02 Name of Applicant 803.02(a) Individual 803.02(b) Partnership, Joint Venture, or Other “Firm” 803.02(c) Corporation and Association 803.03 Legal Entity of Applicant 803.03(a) Individual or Sole Proprietorship 803.03(b) Partnership, Joint Venture, or Other “Firm” 803.03(c) Corporation, Association, Organization, and Company 803.03(d) Joint Applicants 803.03(e) Trusts, Conservatorships, and Estates 803.03(e)(i) Business Trusts 803.03(f) Governmental Bodies and Universities
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803.03(g) Banking Institutions 803.03(h) Limited Liability Companies 803.03(i) Common Terms Designating Entity of Foreign Applicants 803.03(j) Federally Recognized Indian Tribe 803.03(k) Limited Liability Partnerships 803.04 Citizenship of Applicant 803.05 Address of Applicant 803.06 Applicant May Not Be Changed 804 Verification and Signature 804.01 Form and Wording of Verification in §1 or §44 Application 804.01(a) Verification with Oath 804.01(a)(i) Verification Made in Foreign Country 804.01(b) Declaration in Lieu of Oath 804.02 Averments Required in Verification of Application for
Registration - §1 or §44 Application 804.03 Time Between Execution and Filing of Documents - §1 or
§44 Application 804.04 Persons Authorized to Sign Verification or Declaration 804.05 Verification of §66(a) Application 805 Identification and Classification of Goods and
Services 806 Filing Basis 806.01 Requirements for Establishing a Basis 806.01(a) Use in Commerce - §1(a) 806.01(b) Intent-to-Use - §1(b) 806.01(c) Foreign Priority - §44(d) 806.01(d) Foreign Registration — §44(e) 806.01(e) Extension of Protection of International Registration -
§66(a) 806.02 Multiple Bases 806.02(a) Procedure for Asserting More Than One Basis 806.02(b) Applicant May File Under Both §1(a) and §1(b) in the
Same Application 806.02(c) Examination of Specimens of Use in a Multiple-Basis
Application 806.02(d) Abandonment of Multiple-Basis Applications 806.02(e) Allegation of Bona Fide Intention to Use Mark in
Commerce Required Even if Application is Based on Both §44 and §1(a)
806.02(f) Section 44(d) Combined With Other Bases 806.02(g) Not Necessary to Repeat Allegation of Bona Fide
Intention to Use Mark in Commerce in Multiple-Basis Application
806.03 Amendments to Add or Substitute a Basis 806.03(a) When Basis Can be Changed
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806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period
806.03(c) Amendment From §1(a) to §1(b) 806.03(d) Amendment From §44 to §1(b) 806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a) 806.03(f) Use in Commerce as of Application Filing Date Required
to Add or Substitute §1(a) as a Basis in §44 Application 806.03(g) Amendment From §1(b) to §44 806.03(h) Effect of Substitution of Basis on Application Filing Date 806.03(i) Verification of Amendment Required 806.03(j) Petition to Amend Basis After Publication - §1 or §44
Application 806.03(j)(i) Amending the Basis of a §1(b) Application After
Publication But Before Issuance of Notice of Allowance 806.03(j)(ii) Amending the Basis of a §1(b) Application Between
Issuance of Notice of Allowance and Filing of Statement of Use
806.03(j)(iii) Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration
806.03(k) Basis Cannot be Changed in §66(a) Application 806.03(l) §66(a) Basis Cannot be Added to §1 or §44 Application 806.04 Deleting a Basis 806.04(a) Deletion of §1(b) Basis After Publication or Issuance of
the Notice of Allowance 806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting
§44(e) Basis 806.05 Review of Basis Prior to Publication or Issue 807 Drawing 807.01 Drawing Must Show Only One Mark 807.02 Drawing Must Be Limited to Mark 807.03 Standard Character Drawings 807.03(a) Requirements for Standard Character Drawings 807.03(b) List of Standard Characters 807.03(c) Drawings Containing Both a Standard Character Claim
and Designs or Other Elements 807.03(d) Changing From Special Form Elements to Standard
Characters, or the Reverse, May be a Material Alteration 807.03(e) Standard Character Drawing and Specimen of Use 807.03(f) Standard Character Drawing and Foreign Registration 807.03(g) Drawings in “Typed” Format With No Standard Character
Claim 807.03(h) Drawings Where the Format Is Unclear 807.03(i) Typed Drawings 807.04 Special Form Drawings 807.04(a) Characteristics of Special Form Drawings 807.04(b) When Special Form Drawing is Required
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807.05 Electronically Submitted Drawings 807.05(a) Standard Character Drawings Submitted Electronically 807.05(a)(i) Long Marks in Standard Character Drawings 807.05(b) Special Form Drawings Submitted Electronically 807.05(c) Requirements for Digitized Images 807.06 Paper Drawings 807.06(a) Type of Paper and Size of Mark 807.06(b) Long Marks in Standard Character Drawings 807.06(c) Separate Drawing Page Preferred 807.07 Color in the Mark 807.07(a) Requirements for Color Drawings 807.07(a)(i) Color Must Be Claimed as a Feature of the Mark 807.07(a)(ii) Applicant Must Specify the Location of the Colors
Claimed 807.07(b) Color Drawings Filed Without a Color Claim 807.07(c) Color Drawings Filed With an Incorrect Color Claim 807.07(d) Color Drawings that Contain Black, White, or Gray 807.07(d)(i) Applications Under §1 807.07(d)(ii) Applications Under §44 807.07(d)(iii) Applications Under §66(a) 807.07(e) Black-and-White Drawings and Color Claims 807.07(f) Black-and-White Drawings that Contain Gray or Black-
and-White Drawings with a Mark Description that Refers to Black, White, or Gray
807.07(f)(i) TEAS, TEAS Plus, and §66(a) Applications 807.07(f)(ii) Applications Filed on Paper 807.07(g) Drawings in Applications Filed Before November 2, 2003 807.08 Broken Lines to Show Placement 807.09 “Drawing” of Sound, Scent, or Non-Visual Mark 807.10 Three Dimensional Marks 807.11 Marks With Motion 807.12 Mark on Drawing Must Agree with Mark on Specimen or
Foreign Registration 807.12(a) Applications Under §1 of the Trademark Act 807.12(a)(i) Role of Punctuation in Determining Whether Mark on
Drawing Agrees with Mark on Specimen 807.12(a)(ii) Punctuation on the Drawing but not on the Specimen 807.12(a)(iii) Punctuation on the Specimen but not on the Drawing 807.12(b) Applications Under §44 of the Trademark Act 807.12(c) Applications Under §66(a) of the Trademark Act 807.12(d) Mutilation or Incomplete Representation of Mark 807.12(e) Compound Word Marks and Telescoped Marks 807.13 Amendment of Mark 807.13(a) Amendment of Mark in Applications Under §§1 and 44 807.13(b) Mark in §66(a) Application Cannot be Amended 807.14 Material Alteration of Mark
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807.14(a) Removal or Deletion of Matter from Drawing 807.14(b) Addition or Deletion of Previously Registered Matter 807.14(c) Addition or Deletion of Punctuation 807.14(d) Amendments to Correct “Internal Inconsistencies” 807.14(e) Amendments to Color Features of Marks 807.14(e)(i) Black-and-White Drawings 807.14(e)(ii) Marks that Include Color and Other Elements 807.14(e)(iii) Color Marks 807.14(f) Material Alteration: Case References 807.15 Substitute Drawings 807.16 Amendment of Drawings by the USPTO 807.17 Procedures for Processing Unacceptable Amendments to
Drawings 807.18 Mark Drawing Code 808 Description of Mark 808.01 Guidelines for Requiring Description 808.01(a) Meaning of Term in Mark 808.01(b) Lining and Stippling Statements for Drawings 808.02 Description Must Be Accurate and Concise 808.03 Examination Procedure for Descriptions 808.03(a) Accurate and Complete Descriptions 808.03(b) No Description in Application 808.03(c) Accurate But Incomplete Description in Application or
Amendment 808.03(c)(i) Accurate But Incomplete Descriptions in Cases Where a
Description is Needed to Clarify the Mark and Should be Printed
808.03(c)(ii) Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed
808.03(d) Inaccurate Description in Application or Amendment 808.03(e) Amending Descriptions 808.03(f) Updating Design Coding 809 Translation and Transliteration of Non-English
Wording in Mark 809.01 Examining Applications for Marks Comprising Non
English Wording that Do Not Include an Accurate Translation or Transliteration
809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language
809.01(b) Limited Exceptions to Rules for Translations 809.01(b)(i) Foreign Terms Appearing in English Dictionary 809.01(b)(ii) Foreign Articles or Prepositions Combined with English
Terms 809.01(b)(iii) Words From Dead or Obscure Languages 809.02 Equivalency in Translation 809.03 Printing of Translations and Transliterations
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810 Filing Fee 810.01 Collection of Fees for Multiple Classes 810.02 Refunds 811 Designation of Domestic Representative 812 Identification of Prior Registrations of Applicant 812.01 Proving Ownership of Prior Registrations 813 Consent to Register by Particular Living Individual
Whose Name or Likeness Appears in the Mark 813.01 Statement Printed in Official Gazette and on Registration
Certificate 813.01(a) Name or Likeness is That of a Living Individual 813.01(b) Name or Likeness is Not That of a Living Individual 813.01(c) Updating TRAM Database 814 Requesting Additional Information 815 Application Filed on Supplemental Register 815.01 Marks Eligible for Principal Register Not Registrable on
Supplemental Register 815.02 Elements Required 815.03 Filing on Supplemental Register is Not an Admission
That the Mark Has Not Acquired Distinctiveness 815.04 Basis for Refusal of Registration of Matter That is
Incapable 816 Amending Application to Supplemental Register 816.01 How to Amend 816.02 Effective Filing Date 816.03 Amendment to Different Register 816.04 Amendment After Refusal 816.05 Amendment After Decision on Appeal 817 Preparation of Application for Publication or
Registration 818 Application Checklist 819 TEAS Plus 819.01 TEAS Plus Filing Requirements 819.01(a) Type of Mark 819.01(b) Applicant’s Name and Address 819.01(c) Applicant’s Legal Entity and Citizenship 819.01(d) Name and Address for Paper Correspondence 819.01(e) E-mail Address and Authorization for the USPTO to Send
Correspondence By E-Mail 819.01(f) Basis or Bases for Filing 819.01(f)(i) Section 1(a) - Use in Commerce 819.01(f)(ii) Section 1(b) - Intent to Use 819.01(f)(iii) Section 44(e) - Foreign Registration 819.01(f)(iv) Section 44(d) 819.01(g) Identification and Classification of Goods/Services 819.01(h) Filing Fee
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819.01(i) Drawing 819.01(j) Color Claim 819.01(k) Description of the Mark 819.01(l) Verification 819.01(m) Translation and/or Transliteration 819.01(n) Multiple-Class Applications 819.01(o) Consent to Registration of Name or Portrait 819.01(p) Prior Registration of the Same Mark 819.01(q) Concurrent Use Applications 819.02 Additional Requirements for a TEAS Plus Application 819.02(a) Receipt of Communications by E-Mail 819.02(b) Additional Documents That Must be Filed Through TEAS 819.03 Adding a Class During Examination 819.04 Procedures for Payment of TEAS Plus Processing Fee
Per Class
Chapter 900 - Use in Commerce
901 Use in Commerce 901.01 Definitions 901.02 Bona Fide Use in the Ordinary Course of Trade 901.03 Commerce That May Be Lawfully Regulated By
Congress 901.04 Inquiry Regarding Use in Commerce 901.05 Use Only by Related Company 902 Allegations of Use for §1(b) Applications 903 Dates of Use 903.01 Date of First Use Anywhere 903.02 Date of First Use in Commerce 903.03 Relation Between the Two Dates of Use 903.04 Amending Dates of Use 903.05 First Use by Predecessor or Related Company 903.06 Indefinite Dates of Use 903.06(a) Apparent Discrepancies Between Dates of Use and Date
of Execution 903.07 Dates of Use in Another Form 903.08 More than One Item of Goods or Services 904 Specimens 904.01 Number of Specimens 904.01(a) More than One Item Specified in a Class 904.01(b) In Combined or Multiple-Class Applications 904.02 Physical Form of Specimens 904.02(a) Electronically Filed Specimens 904.02(b) Paper-Filed Specimens 904.02(c) Additional Requirements 904.02(c)(i) Other Materials Required for Examination
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904.02(c)(ii) Specimens for Marks Comprising Color 904.02(c)(iii) Specimens for Marks Used on Publications 904.03 Material Appropriate as Specimens for Trademarks 904.03(a) Labels and Tags 904.03(b) Stampings 904.03(c) Commercial Packaging 904.03(d) Electronic and Digital Media Attachments to Paper Filings 904.03(e) Specimens for Trademarks Identifying Computer
Programs, Movies, or Video Tapes 904.03(f) Specimens for Sound Marks 904.03(g) Displays Associated with Goods 904.03(h) Catalogs 904.03(i) Electronic Displays 904.03(j) Manuals 904.03(k) Specimens for Marks that are Impracticable to Place on
Goods, Packaging, or Displays 904.03(l) Specimens for Motion Marks 904.03(m) Specimens for Scent and Flavor Marks 904.04 Material Not Appropriate as Specimens for Trademarks 904.04(a) Drawing or “Picture” of the Mark 904.04(b) Advertising Material 904.04(c) Package Inserts 904.05 Affidavit Supporting Substitute Specimens 904.06 Translation of Matter on Specimens 904.07 Requirements for Substitute Specimens and Statutory
Refusals 904.07(a) Whether the Specimen Shows the Mark Used in
Commerce 904.07(b) Whether the Specimen Shows the Applied-for Mark
Functioning as a Mark 905 Method of Use 906 Federal Registration Notice 906.01 Foreign Countries That Use Registration Symbol ® 906.02 Improper Use of Registration Symbol 906.03 Informing Applicant of Apparent Improper Use 906.04 Fraud 907 Compliance with Other Statutes
Chapter 1000 - Applications Under Section 44
1001 Section 44 Applications - General 1002 Eligible Applicants Under §44 1002.01 Eligible Applicants Under §44(e) 1002.02 Eligible Applicants Under §44(d) 1002.03 Establishing Entitlement Under a Treaty 1002.04 Establishing Country of Origin
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1002.05 United States Applicants 1003 Section 44(d) - Priority Filing Date Based on a
Foreign Application 1003.01 The “First-Filed” Requirement 1003.02 Priority Claim Must Be Filed Within Six Months of Foreign
Filing 1003.03 Basis for Registration Required 1003.04 Suspension Awaiting a Foreign Registration 1003.04(a) Applications Based Solely on Section 44 1003.04(b) Multiple-Basis Applications 1003.04(c) Periodic Inquiries Issued as to Status of Foreign
Application 1003.05 Section 44(d) and Priority for Publication 1003.06 Applicants May File Under Both §§44(d) and 44(e) 1003.07 Application May be Based on More Than One Foreign
Application 1003.08 Abandonment of the Foreign Application 1004 Applications Based on Foreign Registrations under
§44(e) 1004.01 Copy of Foreign Registration Required 1004.01(a) Status of the Foreign Registration 1004.01(b) Translation of the Foreign Registration 1004.02 Application May be Based on More Than One Foreign
Registration 1005 Ownership of the Foreign Application or Registration 1006 Assignment of §44 Applications 1007 Standards for Registration Under Section 44 1008 Bona Fide Intention to Use the Mark in Commerce 1009 Allegation of Use and Specimen of Use Not Required
Prior to Registration 1010 Proof of Acquired Distinctiveness in §44 Applications 1011 Drawings 1011.01 Substantially Exact Representation of Mark in Foreign
Registration 1011.02 One Mark Per Application 1011.03 Amendment of Drawing 1011.04 Drawings and Descriptions of Three-Dimensional and
Non-Visual Marks 1012 Identification of Goods and Services 1013 Designation of Domestic Representative by
Applicants Not Domiciled in the United States 1014 Section 44 Applications for the Supplemental
Register 1015 Section 44 Registration Independent of Underlying
Foreign Registration
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1016 International Registration As Basis for §44 Application
Chapter 1100 — Intent-to-Use Applications and Requests to Divide
1101 Bona Fide Intention To Use the Mark In Commerce 1102 Initial Examination of Intent-to-Use Applications 1102.01 Substantive Refusals 1102.02 Drawings 1102.03 Intent-to-Use Applications and the Supplemental Register 1102.04 Claims of Acquired Distinctiveness under §2(f) 1103 Allegations of Use 1104 Amendment to Allege Use Under §1(c) of the Act 1104.01 Minimum Filing Requirements for an Amendment to
Allege Use 1104.01(a) Review by Legal Instruments Examiner for Compliance
with Minimum Filing Requirements 1104.01(b) Processing an Amendment to Allege Use That Does Not
Meet Minimum Filing Requirements 1104.01(c) Processing Defective Amendment to Allege Use Filed
With Other Amendments 1104.02 Form of Amendment to Allege Use 1104.03 Time for Filing Amendment to Allege Use 1104.03(a) Use on All Goods/Services Required Before Filing 1104.03(b) The “Blackout Period” 1104.03(c) Processing Amendment to Allege Use Filed During the
Blackout Period 1104.04 Processing Timely Amendment to Allege Use Located
After Publication 1104.05 Amendment to Allege Use Filed in Conjunction With
Application 1104.06 Processing Amendment to Allege Use Received Before
Application is Assigned to an Examining Attorney 1104.07 Amendments to Allege Use and Ex Parte Appeals 1104.08 Requirements for a Complete Amendment to Allege Use 1104.09 Examination of Amendment to Allege Use by Examining
Attorney 1104.09(a) Ownership 1104.09(b) Verification and Date of Execution 1104.09(c) Identification of Goods/Services 1104.09(d) Use in Commerce and Dates of Use 1104.09(e) Specimen 1104.09(f) Drawing 1104.09(g) Fees 1104.09(h) Issuance of Actions by Examining Attorney Related to the
Amendment to Allege Use
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1104.10 Amendment and Withdrawal of Amendment to Allege Use
1104.11 Approval of Amendment to Allege Use After Examination 1105 Publication of Intent-to-Use Applications for
Opposition 1106 Notice of Allowance 1106.01 Issuance of the Notice of Allowance 1106.02 Action by Examining Attorney After Issuance of the
Notice of Allowance 1106.03 Cancellation of Notice of Allowance 1106.04 Correction of Errors in Notice of Allowance 1107 Amendment After Issuance of the Notice of
Allowance and Before Filing of the Statement of Use 1107.01 Examination of Amendment Filed After the Notice of
Allowance Issues But Before a Statement of Use is Filed 1108 Requests for Extensions of Time to File the
Statement of Use 1108.01 Time for Filing Requests for Extensions of Time to File
the Statement of Use 1108.02 Requirements for Request for an Extension of Time to
File a Statement of Use 1108.02(a) Ownership 1108.02(b) Verification 1108.02(c) Filing Fees 1108.02(d) Identification of Goods/Services 1108.02(e) Bona Fide Intention to Use the Mark in Commerce 1108.02(f) Good Cause Required for Extensions Beyond the First
Six-Month Extension 1108.03 Only One Extension Request May Be Filed With or After
a Statement of Use 1108.03(a) Processing Extension Request Filed After Statement of
Use Has Been Referred to Examining Attorney 1108.04 Recourse After Denial of Extension Request 1108.05 Petitions From Denial of Request For An Extension of
Time to File a Statement of Use 1109 Statement of Use Under §1(d) of the Trademark Act 1109.01 Minimum Filing Requirements for a Statement of Use 1109.02 Review for Compliance with Minimum Filing
Requirements 1109.02(a) Petition to Review Refusal Based on Noncompliance with
Minimum Filing Requirements 1109.03 Use on All Goods/Services Required Before Filing 1109.04 Time for Filing Statement of Use 1109.05 Form of Statement of Use 1109.06 Requirements For a Complete Statement of Use 1109.07 Examination of the Statement of Use — In General
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1109.08 Examination of the Statement of Use – New Requirements and Refusals
1109.09 Use in Commerce 1109.09(a) Dates of Use 1109.09(b) Specimens 1109.10 Ownership 1109.11 Verification and Execution 1109.11(a) Authority of Signatory 1109.11(b) Verification of Essential Elements 1109.11(c) Date of Execution 1109.11(d) Signature of Electronically Transmitted Statement of Use 1109.12 Drawing 1109.13 Identification of Goods/Services in Statement of Use 1109.14 Classification 1109.15 Filing Fees 1109.15(a) Processing Deficient Fees 1109.16 Correcting Defects in Statement of Use 1109.16(a) Statutory Requirements That Must Be Met Within
Statutory Filing Period 1109.16(b) Issuance of Examining Attorney’s Office Action Holding
that a Statement of Use Does Not Meet the Requirements
1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements
1109.16(d) Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use
1109.16(e) Applicant’s Recourse After Refusal of Registration 1109.17 Withdrawal of the Statement of Use Prohibited 1109.18 Approval of the Statement of Use 1110 Request to Divide an Application 1110.01 Application May be Divided 1110.02 Fees for Filing Request to Divide 1110.03 Time for Filing Request to Divide 1110.04 Form and Processing of Request to Divide 1110.05 Outstanding Time Periods Apply to Newly Created
Applications 1110.06 Signature of Request to Divide 1110.07 Dividing an Application When Statement of Use is Due 1110.08 Dividing an Application When Response to Office Action
is Due 1110.09 Dividing an Application Subject to a Proceeding at
Trademark Trial and Appeal Board 1110.10 Dividing a §44 Application 1110.11 Dividing a §66(a) Application
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1110.11(a) Dividing a §66(a) Application After Change of Ownership With Respect to Some But Not All of the Goods/Services
1110.12 Division of Registrations
Chapter 1200 - Substantive Examination of Applications
1201 Ownership of Mark 1201.01 Claim of Ownership May Be Based on Use By Related
Companies 1201.02 Identifying the Applicant in the Application 1201.02(a) Identifying the Applicant Properly 1201.02(b) Application Void if Wrong Party Identified as the
Applicant 1201.02(c) Correcting Errors in How the Applicant Is Identified 1201.02(d) Operating Divisions 1201.02(e) Changes in Ownership After Application Is Filed 1201.03 Use by Related Companies 1201.03(a) Use Solely by Related Company Must be Disclosed 1201.03(b) No Explanation of Applicant’s Control Over Use of Mark
by Related Companies Required 1201.03(c) Wholly Owned Related Companies 1201.03(d) Common Stockholders, Directors, or Officers 1201.03(e) Sister Corporations 1201.03(f) License and Franchise Situations 1201.04 Inquiry Regarding Parties Named on Specimens or
Elsewhere in Record 1201.05 Acceptable Claim of Ownership Based on Applicant’s
Own Use 1201.06 Special Situations Pertaining to Ownership 1201.06(a) Applicant Is Merely Distributor or Importer 1201.06(b) Goods Manufactured in a Country Other than Where
Applicant Is Located 1201.07 Related Companies and Likelihood of Confusion 1201.07(a) “Single Source” – “Unity of Control” 1201.07(b) Appropriate Action with Respect to Assertion of Unity of
Control 1201.07(b)(i) When Either Applicant or Registrant Owns All of the
Other Entity 1201.07(b)(ii) When Either Applicant or Registrant Owns Substantially
All of the Other Entity 1201.07(b)(iii) When the Record Does Not Support a Presumption of
Unity of Control 1201.07(b)(iv) When the Record Contradicts an Assertion of Unity of
Control 1202 Use of Subject Matter as Trademark 1202.01 Refusal of Matter Used Solely as a Trade Name
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1202.02 Registration of Trade Dress 1202.02(a) Functionality 1202.02(a)(i) Statutory Basis for Functionality Refusal 1202.02(a)(ii) Purpose of Functionality Doctrine 1202.02(a)(iii) Background and Definitions 1202.02(a)(iii)(A) Functionality 1202.02(a)(iii)(B) “De Jure” and “De Facto” Functionality 1202.02(a)(iv) Burden of Proof in Functionality Determinations 1202.02(a)(v) Evidence and Considerations Regarding Functionality
Determinations 1202.02(a)(v)(A) Utility Patents and Design Patents 1202.02(a)(v)(B) Advertising, Promotional, or Explanatory Material in
Functionality Determinations 1202.02(a)(v)(C) Availability of Alternative Designs in Functionality
Determinations 1202.02(a)(v)(D) Ease or Economy of Manufacture in Functionality
Determinations 1202.02(a)(vi) Aesthetic Functionality 1202.02(a)(vii) Functionality and Service Marks 1202.02(a)(viii) Functionality and Non-Traditional Marks 1202.02(b) Distinctiveness of Trade Dress 1202.02(b)(i) Distinctiveness and Product Design Trade Dress 1202.02(b)(ii) Distinctiveness and Product Packaging Trade Dress for
Goods or Services 1202.02(c) Drawing and Description of Mark in Trade Dress
Applications 1202.02(c)(i) Drawings in Trade Dress Applications 1202.02(c)(ii) Description Required 1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress
Marks 1202.02(c)(iv) Three-Dimensional Marks 1202.02(d) Trade Dress in §1(b) Applications 1202.02(e) Trade Dress in §44 and §66(a) Applications 1202.03 Refusal on Basis of Ornamentation 1202.03(a) Commercial Impression 1202.03(b) Practices of the Trade 1202.03(c) “Secondary Source” 1202.03(d) Evidence of Distinctiveness 1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a)
Applications 1202.03(f) Ornamentation: Case References 1202.03(f)(i) Slogans or Words Used on the Goods 1202.03(f)(ii) Designs Used on the Goods 1202.03(f)(iii) Trade Dress on the Containers for the Goods 1202.03(g) Ornamentation Cases and Acquired Distinctiveness 1202.04 Informational Matter
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1202.05 Color as a Mark 1202.05(a) Color Marks Never Inherently Distinctive 1202.05(b) Functional Color Marks Not Registrable 1202.05(c) Color as a Separable Element 1202.05(d) Drawings of Color Marks Required 1202.05(d)(i) Drawings of Color Marks in Trademark Applications 1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications 1202.05(d)(iii) Amendment of Drawings of Color Marks 1202.05(d)(iv) Drawings for Marks Including Both Color and Words or
Design 1202.05(e) Written Explanation of a Color Mark 1202.05(f) Specimens for Color Marks 1202.05(g) Special Considerations for Service Mark Applications 1202.05(h) Applications for Color Marks Based on §1(b) 1202.05(i) Applications for Color Marks Based on §44 or §66(a) 1202.06 Goods in Trade 1202.06(a) Goods Must Have Utility to Others 1202.06(b) Registration Must Be Refused if Trademark Not Used on
Goods in Trade 1202.06(c) “Goods in Trade” in §1(b), §44, and §66(a) Applications 1202.07 Marks That Identify Columns or Sections of Publications 1202.07(a) Marks That Identify Columns or Sections of Printed
Publications 1202.07(a)(i) Syndicated Columns and Sections 1202.07(a)(ii) Non-Syndicated Columns and Sections 1202.07(a)(iii) Marks That Identify Columns and Sections of Printed
Publications in §1(b), §44, and §66(a) Applications 1202.07(b) Marks That Identify Columns and Sections of Online
Publications 1202.08 Title of a Single Creative Work 1202.08(a) What Constitutes a Single Creative Work 1202.08(b) What Does Not Constitute a Single Creative Work 1202.08(c) Complete Title of the Work – Evidence of a Series 1202.08(d) Portion of a Title of the Work 1202.08(d)(i) Mark Must Create a Separate Commercial Impression 1202.08(d)(ii) Establishing a Series When the Mark is a Portion of the
Title 1202.08(d)(iii) Evidence that the Portion of the Title is Promoted or
Recognized as a Mark 1202.08(e) Identification of Goods/Services 1202.08(f) Title of a Single Work in §1(b), §44, and §66(a)
Applications 1202.09 Names of Artists and Authors 1202.09(a) Names and Pseudonyms of Authors and Performing
Artists 1202.09(a)(i) Author or Performer’s Name – Evidence of a Series
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1202.09(a)(ii) Evidence that the Name is a Source Identifier 1202.09(a)(ii)(A) Promotion and Recognition of the Name 1202.09(a)(ii)(B) Control over the Nature and Quality of the Goods 1202.09(a)(iii) Names of Authors and Performing Artists in §1(b), §44,
and §66(a) Applications 1202.09(b) Names of Artists Used on Original Works of Art 1202.10 Names and Designs of Characters in Creative Works 1202.10(a) Names and Designs of Characters in Creative Works in
§1(b), §44, or §66(a) Applications 1202.11 Background Designs and Shapes 1202.12 Varietal and Cultivar Names (Examination of Applications
for Seeds and Plants) 1202.13 Scent, Fragrance, or Flavor 1202.14 Holograms 1202.15 Sound Marks 1202.16 Model or Grade Designations 1203 Refusal on Basis of Immoral or Scandalous Matter;
Deceptive Matter; Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.01 Immoral or Scandalous Matter 1203.02 Deceptive Matter 1203.02(a) Types of Deceptive Marks 1203.02(b) Elements of a §2(a) Deceptiveness Refusal 1203.02(c) Distinction between Marks Comprising Deceptive Matter
(§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1)) 1203.02(d) Determining Materiality 1203.02(d)(i) Objective Criteria 1203.02(d)(ii) Mere Personal Preference 1203.02(e) Procedures for Issuing §2(a) Deceptive Refusals 1203.02(e)(i) When the Mark is Clearly Misdescriptive 1203.02(e)(ii) When It is Not Clear Whether the Mark is Misdescriptive 1203.02(f) Responding to a §2(a) Deceptiveness Refusal 1203.02(f)(i) Amending the Identification of Goods or Services 1203.02(f)(ii) Other Arguments 1203.02(g) Deceptive Matter: Case References 1203.03 Matter which May Disparage, Falsely Suggest a
Connection, or Bring into Contempt or Disrepute 1203.03(a) “Persons” Defined 1203.03(b) “National Symbols” Defined 1203.03(c) Disparagement, Bringing into Contempt, and Bringing
into Disrepute 1203.03(d) Disparagement, Bringing into Contempt, and Bringing
into Disrepute: Case References 1203.03(e) False Suggestion of a Connection 1203.03(f) False Suggestion of a Connection: Case References
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1204 Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation
1204.01 Flags and Simulations of Flags 1204.01(a) Flags and Simulations of Flags are Refused 1204.01(b) Stylized Flag Designs are not Refused under §2(b) 1204.01(c) Caselaw Interpreting "Simulation of Flag" 1204.01(d) Description of the Mark 1204.01(e) Flags Not Presently Used as National Flags 1204.02 Government Insignia 1204.02(a) Designs that are Insignia Under §2(b) Must Be Refused 1204.02(b) Examples of Insignia That Should Be Refused 1204.02(c) Examples of Designs That Should Not Be Refused 1204.02(d) Caselaw Interpreting Insignia Under §2(b) 1204.03 Other Refusals May be Appropriate 1204.04 Responding to §2(b) Refusal 1204.04(a) Absolute Bar to Registration 1204.04(b) Deletion of §2(b) Matter 1204.04(b)(i) Examples of Matter That May and May Not Be Deleted 1204.05 Resources 1205 Refusal on Basis of Matter Protected by Statute or
Convention 1205.01 Statutory Protection 1205.01(a) Examination Procedures for Marks Comprising a Red
Crystal or Red Crescent on a White Background, or the Phrases “Red Crescent” or “Third Protocol Emblem”
1205.01(a)(i) First Use After December 8, 2005 1205.01(a)(ii) First Use On or Before December 8, 2005 – Grandfather
Clause 1205.01(a)(iii) Date of First Use Not Specified 1205.01(a)(iv) Nature of the Mark 1205.01(a)(v) Amendments to Disclaim, Delete, or Amend the
Unregistrable Symbol or Designation 1205.01(a)(vi) Parties Authorized to use the Red Crescent and Third
Protocol Emblem 1205.02 Article 6ter of the Paris Convention 1206 Refusal on Basis of Name, Portrait, or Signature of
Particular Living Individual or Deceased U.S. President Without Consent
1206.01 Name, Portrait, or Signature of Particular Living Individual 1206.02 Connection With Goods or Services 1206.03 When Inquiry is Required 1206.04 Consent of Individual or President’s Widow 1206.04(a) Consent Statement Must Be Written Consent to
Registration
-xxviii- October 2009
1206.04(b) Consent May Be Presumed From Signature of Application
1206.04(c) New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant
1206.04(d) Implicit Consent 1206.05 Names and Likenesses That Do Not Identify a Particular
Living Individual 1207 Refusal on Basis of Likelihood of Confusion,
Mistake, or Deception 1207.01 Likelihood of Confusion 1207.01(a) Relatedness of the Goods or Services 1207.01(a)(i) Goods or Services Need Not Be Identical 1207.01(a)(ii) Goods May Be Related to Services 1207.01(a)(ii)(A) Food and Beverage Products Versus Restaurant
Services 1207.01(a)(iii) Reliance on Identification of Goods/Services in
Registration and Application 1207.01(a)(iv) No “Per Se” Rule 1207.01(a)(v) Expansion of Trade Doctrine 1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services 1207.01(b) Similarity of the Marks 1207.01(b)(i) Word Marks 1207.01(b)(ii) Similarity In Appearance 1207.01(b)(iii) Comparing Marks That Contain Additional Matter 1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents 1207.01(b)(v) Similarity in Meaning 1207.01(b)(vi) Doctrine of Foreign Equivalents 1207.01(b)(vi)(A) Background 1207.01(b)(vi)(B) When an Ordinary American Purchaser Would “Stop and
Translate” 1207.01(b)(vi)(C) Likelihood of Confusion Factors Still Apply When
Assessing Whether Marks are Confusingly Similar 1207.01(b)(vii) Transposition of Terms 1207.01(b)(viii) Marks Consisting of Multiple Words 1207.01(b)(ix) Weak or Descriptive Marks 1207.01(b)(x) Parody Marks 1207.01(c) Design Marks 1207.01(c)(i) Legal Equivalents – Comparison of Words and Their
Equivalent Designs 1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs 1207.01(c)(iii) Comparison of Standard Character Marks and Special
Form Marks 1207.01(c)(iv) Matter Depicted in Broken Lines 1207.01(d) Miscellaneous Considerations 1207.01(d)(i) Doubt Resolved in Favor of Registrant 1207.01(d)(ii) Absence of Actual Confusion
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1207.01(d)(iii) Third-Party Registrations and Evidence of Third-Party Use
1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding
1207.01(d)(v) Classification of Goods/Services 1207.01(d)(vi) Prior Decisions of Examining Attorneys 1207.01(d)(vii) Sophisticated Purchasers 1207.01(d)(viii) Consent Agreements 1207.01(d)(ix) Fame of Mark 1207.01(d)(x) Conflicting Marks Owned by Different Parties 1207.01(d)(xi) Family of Marks 1207.02 Marks That Are Likely to Deceive 1207.03 Marks Previously Used in United States but Not
Registered 1207.04 Concurrent Use Registration 1207.04(a) Concurrent Use – In General 1207.04(b) Filing Basis of Application Seeking Concurrent Use 1207.04(c) Basis for Concurrent Use Registration 1207.04(d) Determining Eligibility for Concurrent Use 1207.04(d)(i) Requirements for All Concurrent Use Applications 1207.04(e) Applications Subject to Concurrent Use Proceeding
Before the Trademark Trial and Appeal Board 1207.04(e)(i) Preparing the Record for Publication 1207.04(f) Application for Concurrent Use Registration Pursuant to
Court Decree 1207.04(f)(i) Preparing the Record for Publication 1208 Conflicting Marks in Pending Applications 1208.01 Priority for Publication or Issue Based on Effective Filing
Date 1208.01(a) What Constitutes Conflict Between Pending Applications 1208.01(b) What Constitutes Effective Filing Date 1208.01(c) Change in Effective Filing Date During Examination 1208.01(d) Examination of Conflicting Marks After Reinstatement or
Revival 1208.02 Conflicting Applications Examination Procedure 1208.02(a) Examination of Application with Earliest Effective Filing
Date 1208.02(b) Action on Later-Filed Application: Giving Notice of the
Earlier Application or Applications 1208.02(c) Suspension of Later-Filed Application 1208.02(d) Action on Later-Filed Application upon Disposition of the
Earlier Application or Applications 1208.02(e) Applicant’s Argument on Issues of Conflict 1208.02(f) Conflicting Mark Mistakenly Published or Approved for
Issuance on the Supplemental Register 1208.03 Procedure Relating to Possibility of Interference
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1208.03(a) Procedures on Request for Interference 1208.03(b) Decision on Request for Interference 1208.03(c) Procedure When Interference Is to be Declared 1209 Refusal on Basis of Descriptiveness 1209.01 Distinctiveness/Descriptiveness Continuum 1209.01(a) Fanciful, Arbitrary, and Suggestive Marks 1209.01(b) Merely Descriptive Marks 1209.01(c) Generic Terms 1209.01(c)(i) Test 1209.01(c)(ii) Terminology 1209.01(c)(iii) Generic Matter: Case References 1209.02 Procedure for Descriptiveness and/or Genericness
Refusal 1209.02(a) Descriptive Marks – Advisory Statement That Mark
Appears to Be Generic 1209.02(a)(i) Amendment to Supplemental Register in Response to
Office Action 1209.02(a)(ii) Assertion of §2(f) in Response to Office Action 1209.02(b) Descriptive and Possibly Generic Marks – Assertion of
§2(f) in Application 1209.03 Considerations Relevant to Determination of
Descriptiveness 1209.03(a) Third-Party Registrations 1209.03(b) No Dictionary Listing 1209.03(c) First or Only User 1209.03(d) Combined Terms 1209.03(e) More Than One Meaning 1209.03(f) Picture or Illustration 1209.03(g) Foreign Equivalents 1209.03(h) Incongruity 1209.03(i) Intended Users 1209.03(j) Phonetic Equivalent 1209.03(k) Laudatory Terms 1209.03(l) Telephone Numbers 1209.03(m) Domain Names 1209.03(n) “America” or “American” 1209.03(o) “National,” “International,” “Global,” and “Worldwide” 1209.03(p) Function or Purpose 1209.03(q) Source or Provider of Goods or Services 1209.03(r) Retail Store and Distributorship Services 1209.03(s) Slogans 1209.03(t) Repetition of Descriptive Term 1209.03(u) Punctuation 1209.04 Deceptively Misdescriptive Marks 1210 Refusal on Basis of Geographic Significance 1210.01 Elements
-xxxi- October 2009
1210.01(a) Geographically Descriptive Marks – Test 1210.01(b) Geographically Deceptively Misdescriptive Marks – Test 1210.01(c) Geographically Deceptive Marks – Test 1210.02 Primarily Geographic Significance 1210.02(a) Geographic Locations 1210.02(b) Primary Significance 1210.02(b)(i) Other Meanings 1210.02(b)(i)(A) Surname Significance 1210.02(b)(ii) More Than One Geographic Location With Same Name 1210.02(b)(iii) Non-Geographic Characteristics of Goods or Services 1210.02(b)(iv) “America” or “American” and Similar Terms in Marks 1210.02(c) Geographic Terms Combined With Additional Matter 1210.02(c)(i) Two Geographic Terms Combined 1210.02(c)(ii) Geographic Terms Combined With Descriptive or
Generic Matter 1210.02(c)(iii) Arbitrary, Fanciful, or Suggestive Composites 1210.03 Geographic Origin of the Goods or Services 1210.04 Goods/Place or Services/Place Association 1210.04(a) Establishing Goods/Place Association 1210.04(b) Establishing Services/Place Association 1210.04(c) Obscure or Remote Geographic Marks 1210.04(d) Arbitrary Use of Geographic Terms 1210.05 Geographically Deceptive Marks 1210.05(a) Basis for Refusal 1210.05(b) Elements of a §2(e)(3) Refusal 1210.05(c) Determining Materiality 1210.05(c)(i) Materiality In Cases Involving Goods 1210.05(c)(ii) Materiality In Cases Involving Services 1210.05(d) Procedures for Issuing Geographically Deceptive
Refusals 1210.05(d)(i) Neither Applicant Nor Goods/Services Come from the
Place Named 1210.05(d)(ii) It is Not Clear Whether the Goods/Services Originate
From the Place Named 1210.05(e) Geographically Deceptive Matter: Case References 1210.06 Procedure for Examining Geographic Composite Marks 1210.06(a) Marks That Include Primarily Geographically Descriptive
Terms Combined With Additional Matter 1210.06(b) Marks That Include Primarily Geographically Deceptively
Misdescriptive and Deceptive Terms Combined With Additional Matter
1210.07 Supplemental Register and Section 2(f) 1210.07(a) Registrability of Geographic Terms on the Supplemental
Register 1210.07(b) Registrability of Geographic Terms Under Section 2(f) 1210.08 Geographical Indications Used on Wines and Spirits
-xxxii- October 2009
1210.08(a) Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place
1210.08(b) Geographical Indications Used on Wines and Spirits That Originate in the Named Place
1210.08(c) Geographical Indications That Are Generic for Wines and Spirits
1210.09 Geographic Certification Marks 1210.10 Doctrine of Foreign Equivalents 1211 Refusal on Basis of Surname 1211.01 “Primarily Merely a Surname” 1211.01(a) Non-Surname Significance 1211.01(a)(i) Ordinary Language Meaning 1211.01(a)(ii) Phonetic Equivalent of Term With Ordinary Language
Meaning 1211.01(a)(iii) Geographical Significance 1211.01(a)(iv) Historical Place or Person 1211.01(a)(v) Rare Surnames 1211.01(a)(vi) “Look And Feel” of a Surname 1211.01(a)(vii) Doctrine of Foreign Equivalents 1211.01(b) Surname Combined with Additional Matter 1211.01(b)(i) Double Surnames 1211.01(b)(ii) Stylization or Design Elements 1211.01(b)(iii) Surname Combined with Initials 1211.01(b)(iv) Surname Combined with Title 1211.01(b)(v) Surname in Plural or Possessive Form 1211.01(b)(vi) Surname Combined with Wording 1211.01(b)(vii) Surname Combined With Domain Name 1211.01(b)(viii) – Surname Combined With Legal or Familial Entity
Designation 1211.02 Evidence Relating to Surname Refusal 1211.02(a) Evidentiary Burden – Generally 1211.02(b) Evidentiary Considerations 1211.02(b)(i) Telephone Directory Listings 1211.02(b)(ii) LexisNexis® Research Database Evidence 1211.02(b)(iii) U.S. Census Database Evidence 1211.02(b)(iv) Surname of Person Associated with Applicant 1211.02(b)(v) Specimens Confirming Surname Significance of Term 1211.02(b)(vi) Negative Dictionary Evidence 1211.02(b)(vii) Evidence of Fame of a Mark 1212 Acquired Distinctiveness or Secondary Meaning 1212.01 General Evidentiary Matters 1212.02 General Procedural Matters 1212.02(a) Situations in which a Claim of Distinctiveness under §2(f)
Is Appropriate 1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a
Concession that Matter Is Not Inherently Distinctive
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1212.02(c) Claiming §2(f) Distinctiveness in the Alternative 1212.02(d) Unnecessary §2(f) Claims 1212.02(e) Disclaimers in Applications Claiming Distinctiveness
under §2(f) 1212.02(f) Section 2(f) Claim in Part 1212.02(f)(i) Section 2(f) Claim as to a Portion of the Mark 1212.02(f)(ii) Section 2(f) Claim Restricted to Particular
Goods/Services/Classes 1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or
Appropriate Kind/Amount of Evidence 1212.02(h) Nonfinal and Final Refusals 1212.02(i) Section 2(f) Claim with Respect to Incapable Matter 1212.03 Evidence of Distinctiveness Under §2(f) 1212.04 Prior Registrations as Proof of Distinctiveness 1212.04(a) Sufficiency of Claim vis-à-vis Nature of the Mark 1212.04(b) “Same Mark” 1212.04(c) Relatedness of Goods or Services 1212.04(d) Registration Must Be in Full Force and Effect and on
Principal Register or under Act of 1905 1212.04(e) Form of §2(f) Claim Based on Ownership of Prior
Registrations 1212.05 Five Years of Use as Proof of Distinctiveness 1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark 1212.05(b) “Substantially Exclusive and Continuous” 1212.05(c) Use “as a Mark” 1212.05(d) Form of the Proof of Five Years’ Use 1212.06 Establishing Distinctiveness by Actual Evidence 1212.06(a) Long Use of the Mark in Commerce 1212.06(b) Advertising Expenditures 1212.06(c) Affidavits or Declarations Asserting Recognition of Mark
as Source Indicator 1212.06(d) Survey Evidence, Market Research and Consumer
Reaction Studies 1212.06(e) Miscellaneous Considerations Regarding Evidence
Submitted to Establish Distinctiveness 1212.06(e)(i) First or Only User 1212.06(e)(ii) State Trademark Registrations 1212.06(e)(iii) Design Patent 1212.06(e)(iv) Acquiescence to Demands of Competitors 1212.07 Form of Application Asserting Distinctiveness 1212.08 Section 44 and §66(a) Applications and Distinctiveness 1212.09 Section 1(b) Applications and Distinctiveness 1212.09(a) Section 2(f) Claim Requires Prior Use 1212.09(b) Claim of §2(f) “in Part” in §1(b) Application 1212.10 Printing “§2(f)” Notations 1213 Disclaimer of Elements in Marks
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1213.01 History of Disclaimer Practice 1213.01(a) Discretion in Requiring Disclaimer 1213.01(b) Refusal to Register Because of Failure to Disclaim 1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable
Matter 1213.02 “Composite” Marks 1213.03 Disclaimer of Unregistrable Components of Marks 1213.03(a) “Unregistrable Components” in General 1213.03(b) Generic Matter and Matter Which Does Not Function as a
Mark 1213.03(c) Pictorial Representations of Descriptive Matter 1213.03(d) Entity Designations 1213.04 Trade Names 1213.05 “Unitary” Marks 1213.05(a) Compound Word Marks 1213.05(a)(i) Telescoped Words 1213.05(a)(ii) Compound Words Formed with Hyphen or Other
Punctuation 1213.05(b) Slogans 1213.05(c) “Double Entendre” 1213.05(d) Incongruity 1213.05(e) Sound Patterns 1213.05(f) Display of Mark 1213.06 Entire Mark May Not Be Disclaimed 1213.07 Removal Rather than Disclaimer 1213.08 Form of Disclaimers 1213.08(a) Wording of Disclaimer 1213.08(a)(i) Standardized Printing Format for Disclaimer 1213.08(a)(ii) Unacceptable Wording for Disclaimer 1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety 1213.08(c) Disclaimer of Misspelled Words 1213.08(d) Disclaimer of Non-English Words 1213.09 Mark of Another May Not Be Registered with Disclaimer 1213.10 Disclaimer in Relation to Likelihood of Confusion 1213.11 Acquiring Rights in Disclaimed Matter 1214 “Phantom” Elements in Marks 1214.01 Single Application May Seek Registration of Only One
Mark 1214.02 Agreement of Mark on Drawing With Mark on Specimens
or Foreign Registration 1214.03 “Phantom Marks” in §1(b) Applications 1214.04 “Phantom Marks” in §44 and §66(a) Applications 1215 Marks Composed, in Whole or in Part, of Domain
Names 1215.01 Background 1215.02 Use as a Mark
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1215.02(a) Use Applications 1215.02(b) Advertising One’s Own Products or Services on the
Internet is not a Service 1215.02(c) Agreement of Mark on Drawing with Mark on Specimens
of Use 1215.02(d) Marks Comprised Solely of TLDs for Domain Name
Registry Services 1215.02(e) Section 1(b) Applications 1215.02(f) Section 44 and §66(a) Applications 1215.03 Surnames 1215.04 Descriptiveness 1215.05 Generic Refusals 1215.06 Marks Containing Geographical Matter 1215.07 Disclaimers 1215.08 Material Alteration 1215.08(a) Adding or Deleting TLDs in Domain Name Marks 1215.08(b) Adding or Deleting TLDs in Other Marks 1215.09 Likelihood of Confusion 1215.10 Marks Containing the Phonetic Equivalent of a Top-Level
Domain 1216 Effect of Applicant’s Prior Registrations 1216.01 Decisions Involving Prior Registrations Not Controlling 1216.02 Effect of “Incontestability” in Ex Parte Examination 1217 Res Judicata, Collateral Estoppel, and Stare Decisis
Chapter 1300 - Service Marks, Collective Marks, and Certification Marks
1301 Service Marks 1301.01 What Is a Service? 1301.01(a) Criteria for Determining What Constitutes a Service 1301.01(a)(i) Performance of a Real Activity 1301.01(a)(ii) For the Benefit of Others 1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Provision of
Goods or Performance of Other Services 1301.01(b) Whether Particular Activities Constitute “Services” 1301.01(b)(i) Contests and Promotional Activities 1301.01(b)(ii) Warranty or Guarantee of Repair 1301.01(b)(iii) Publishing One’s Own Periodical 1301.01(b)(iv) Soliciting Investors 1301.01(b)(v) Informational Services Ancillary to the Sale of Goods 1301.02 What Is a Service Mark 1301.02(a) Matter That Does Not Function as a Service Mark 1301.02(b) Names of Characters or Personal Names as Service
Marks 1301.02(c) Three-Dimensional Service Marks 1301.02(d) Titles of Radio and Television Programs
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1301.02(e) Process, System, or Method 1301.02(f) Computer Software 1301.03 Use of Service Mark in Commerce 1301.03(a) Use of Service Mark in Advertising to Identify Services 1301.03(b) Rendering of Service in Commerce Regulable by
Congress 1301.04 Specimens of Use for Service Marks 1301.04(a) Specimens Must Show Use as a Service Mark 1301.04(b) Association Between Mark and Services 1301.04(c) Letterhead 1301.04(d) Specimens for Entertainment Services 1301.05 Identification and Classification of Services 1302 Collective Marks Generally 1302.01 History of Collective Marks 1303 Collective Trademarks and Collective Service Marks 1303.01 Use of Collective Trademark and Collective Service Mark
Is By Members 1303.02 Examination of Collective Trademark and Collective
Service Mark Applications 1303.02(a) Classification of Goods and Services in Collective
Trademark and Collective Service Mark Applications 1303.02(b) Specimens of Use for Collective Trademark and
Collective Service Mark Applications 1303.02(c) Special Elements of Collective Trademark and Collective
Service Mark Applications 1303.02(c)(i) Manner of Control 1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause 1304 Collective Membership Marks 1304.01 History of Membership Marks 1304.02 Purpose of Membership Mark 1304.03 Use of Membership Mark Is by Members 1304.04 Who May Apply to Register Membership Mark 1304.05 Who May Own Membership Mark 1304.06 Nature of the Collective Group 1304.07 Character of the Mark 1304.08 Examination of Collective Membership Mark 1304.08(a) Matter That Does Not Function as a Membership Mark 1304.08(a)(i) Degree or Title Designations Contrasted to Membership
Marks 1304.08(b) Likelihood of Confusion 1304.08(c) Classification in Membership Mark Applications 1304.08(d) Identifications in Membership Mark Applications 1304.08(e) Specimens of Use for Membership Marks 1304.08(f) Special Elements of Applications for Collective
Membership Marks 1304.08(f)(i) Exercise of Control
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1304.08(f)(ii) Manner of Control 1304.08(f)(iii) Use by Members Indicated in Dates-of-Use Clause 1305 Trademarks and Service Marks Used by Collective
Organizations 1306 Certification Marks 1306.01 Definition of Certification Mark 1306.01(a) Use Is by Person Other than Owner 1306.01(b) Purpose Is to Certify, Not to Indicate Source 1306.02 Certification Marks That Are Indications of Regional
Origin 1306.02(a) Indicating the Region 1306.02(b) Authority to Control a Geographical Term 1306.02(c) A Government Entity as Applicant for a Geographical
Certification Mark 1306.03 Certification Marks Certifying that Labor Was Performed
by Specific Group or Individual 1306.04 Ownership of Certification Marks 1306.05 Characteristics of Certification Marks 1306.05(a) Same Mark Not Registrable as Certification Mark and as
Any Other Type of Mark 1306.05(b) Cancellation of Applicant’s Prior Registration Required by
Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa
1306.06 Examination of Certification Mark Applications 1306.06(a) The Mark on the Drawing 1306.06(b) Specimens of Use for Certification Marks 1306.06(c) Relation Between Certification Mark and Trademark or
Service Mark on Specimens 1306.06(d) Classification of Goods and Services in Certification Mark
Applications 1306.06(e) Identification of Goods and Services in Certification Mark
Applications 1306.06(f) Special Elements of Certification Mark Applications 1306.06(f)(i) Statement of What the Mark Certifies 1306.06(f)(ii) Standards 1306.06(f)(iii) Exercise of Control 1306.06(f)(iv) Use by Others Indicated in Dates-of-Use Clause 1306.06(f)(v) Statement That Mark is Not Used by Applicant 1306.06(f)(vi) Amendment to Different Type of Mark 1306.07 Relationship of §14 (Cancellation) to Examination of
Certification Mark Applications 1306.08 Registration of Certification Mark on Basis of Foreign
Registration 1306.09 Uncertainty Regarding Type of Mark 1306.09(a) Distinction Between Certification Mark and Collective
Mark
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1306.09(b) Distinguishing Certification Mark Use from Related- Company Use of Trademark or Service Mark
1306.09(c) Patent Licenses 1307 Registration as Correct Type of Mark
Chapter 1400 — Classification and Identification of Goods and Services
1401 Classification 1401.01 Statutory Authority 1401.02 International Trademark Classification Adopted 1401.02(a) Headings of International Trademark Classes 1401.02(b) Short Titles for International Trademark Classes 1401.02(c) International Alphabetical List 1401.03 Designation of Class 1401.03(a) Designation of Class by Applicant Normally Initially
Accepted in Applications Under §§1 and 44 1401.03(b) Designation of Class by USPTO When Class Number Is
Not Designated or Is Inaccurate in Application Under §1 or §44
1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44
1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications
1401.04 Classification Determines Number of Fees 1401.04(a) Prior United States Classification System 1401.04(b) Limiting Goods and Services to the Number of Classes
for Which Filing Fees Are Paid 1401.05 Criteria on Which International Classification Is Based 1401.05(a) Identification and Classification of Kits and Gift Baskets 1401.05(b) Medical vs. Non-Medical Goods 1401.06 Specimen(s) as Related to Classification 1401.06(a) Specimen Discloses Special Characteristics 1401.07 Classification and Plurality of Uses 1401.08 Classification and the Identification of Goods and
Services 1401.09 Changes in Practice Based on the Restructuring of
International Class 42 in the 8th Edition of the Nice Agreement
1401.09(a) Elimination of “Miscellaneous Class Designation” 1401.10 General Summary of Major Changes in Practice Based
on the 9th Edition of the Nice Agreement 1401.10(a) Legal Services Transferred to International Class 45 1401.10(b) Goods Made of Precious Metal are Classified According
to Their Function 1401.10(c) Transfer of Aquaria and Related Items 1401.11 Implementation of Changes to the Nice Agreement
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1401.12 Effective Date of Changes to USPTO ID Manual 1402 Identification of Goods and Services 1402.01 Specifying the Goods and/or Services - in General 1402.01(a) General Guidelines for Acceptable Identifications of
Goods or Services 1402.01(b) Identification of Goods and Services in a §44 Application 1402.01(c) Identification of Goods and Services in a §66(a)
Application 1402.01(d) Location of “Identification of Goods and Services” 1402.01(e) Responsibilities of Examining Attorney as to Identification 1402.02 Entitlement to Filing Date With Respect to Identification
of Goods and Services 1402.03 Specificity of Terms Used in Identifying Goods and
Services 1402.03(a) Inclusive Terminology 1402.03(b) House Marks 1402.03(c) Marks for a “Full Line of …” 1402.03(d) Identifying Computer Programs with Specificity 1402.03(e) Identifying Publications with Specificity 1402.04 Acceptable Identification of Goods and Services Manual 1402.05 Accuracy of Identification 1402.05(a) Goods That Are Components or Ingredients 1402.05(b) Material Composition 1402.06 Amendments Permitted to Clarify or Limit Identification 1402.06(a) Limiting the Identification of Goods and Services 1402.06(b) Clarifying the Identification of Goods and Services 1402.07 Scope of Identification of Goods and Services for
Purposes of Amendment 1402.07(a) The “Ordinary-Meaning” Test 1402.07(b) Ambiguous Identifications 1402.07(c) Unambiguous Identifications 1402.07(d) Permissible Scope of Identification Not Affected by
Proposed Amendment That Is Unacceptable 1402.07(e) Permissible Scope of Identification Affected by Proposed
Amendment That Is Accepted 1402.08 Moving Goods and Services Between Companion
Applications 1402.09 Use of Registered Marks Inappropriate in Identifications 1402.10 Identification of Goods and Services in Documents Filed
in Connection with §1(b) Applications 1402.11 Identification of Services 1402.11(a) Computer Services 1402.11(b) Information Services 1402.11(c) Association Services and “Promoting the Interest of”
Services 1402.11(d) Charitable Services, Other than Monetary
-xl- October 2009
1402.11(e) Consulting Services 1402.11(f) Distribution of Videotapes, Audiotapes, Videodiscs, and
Similar Items 1402.11(g) Recorded Entertainment Services 1402.11(h) Identification of “Bonus Programs” 1402.11(i) Recognition of Industry Terms 1402.11(j) Issuing Awards 1402.12 Parentheses and Brackets Should Not be Used in
Identifications of Goods and Services 1402.13 Requirement For Amendment of Portion of Identification
of Goods/Services 1402.14 Identification of Goods/Services Must Conform to Rules
and Policies in Effect at the Time Registration is Sought 1402.15 Procedures for Processing Unacceptable Amendments to
Identifications 1403 Combined or Multiple-Class Application 1403.01 Requirements for Combined or Multiple-Class Application 1403.02 Amendment of Combined or Multiple-Class Application 1403.02(a) Deletion of Classes 1403.02(b) Correction of Classification 1403.02(c) Addition of Classes 1403.03 Dividing of Combined or Multiple-Class Application 1403.04 Combined or Multiple-Class Marks in Official Gazette 1403.05 Refusals and Oppositions as to Less Than All the
Classes in a Multiple Class Application 1403.06 Fees for Action After Filing, Multiple Classes 1403.07 Surrender or Amendment in Multiple-Class Registrations
Chapter 1500 - Post-Examination Procedures
1501 Appeal to Trademark Trial and Appeal Board 1501.01 Appealable Matter 1501.02 Appeal Briefs 1501.02(a) Applicant’s Appeal Brief 1501.02(b) Examining Attorney’s Appeal Brief 1501.02(c) Reply Briefs in Ex Parte Appeals 1501.03 Withdrawal of Refusal or Requirement After Appeal 1501.04 Fee for Appeal 1501.05 Amendment During Appeal 1501.06 Amendment After Decision on Appeal 1501.07 Examining Attorney’s Request for Reconsideration 1502 Publication in Trademark Official Gazette 1502.01 Notification of Clerical Errors in Trademark Official
Gazette 1503 Opposition 1503.01 Filing a Notice of Opposition
-xli- October 2009
1503.02 Joining Persons in an Opposition 1503.03 Time for Opposing 1503.04 Extension of Time to Oppose 1503.05 Opposition to §66(a) Applications 1504 Jurisdiction over Application 1504.01 Jurisdiction of Examining Attorney 1504.02 Jurisdiction of Trademark Trial and Appeal Board 1504.03 Action By Examining Attorney After Publication 1504.04 Restoration of Jurisdiction to Examining Attorney by
Director 1504.04(a) Request for Jurisdiction 1504.05 Remand to Examining Attorney by Trademark Trial and
Appeal Board 1504.05(a) Request for Remand 1505 Amendments Filed by Applicants After Publication 1505.01 Procedures for Processing Amendments Filed by the
Applicant After Publication 1505.01(a) Form and Timing of Amendments 1505.01(b) Processing Amendments to §§1(a), 44, and 66(a)
Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued
1505.01(b)(i) Acceptable Amendments 1505.01(b)(ii) Unacceptable Amendments 1505.01(c) Processing Amendments to §1(b) Applications In Cases
Where No Opposition Has Been Filed and No Notice of Allowance Has Issued
1505.01(c)(i) Acceptable Amendments 1505.01(c)(ii) Unacceptable Amendments 1505.01(d) Processing Amendments Filed Between Issuance of the
Notice of Allowance and Filing of Statement of Use 1505.01(e) Processing Amendments in Cases Where a Request for
Extension of Time to Oppose Has Been Filed or Granted 1505.01(f) Processing Amendments in Cases Where an Opposition
Has Been Filed 1505.02 Types of Amendments After Publication 1505.02(a) Amendments to the Identification of Goods or Services 1505.02(b) Amendments to Classification 1505.02(c) Amendments to Marks 1505.02(d) Amendments to the Dates of Use 1505.02(e) Amendments Adding or Deleting Disclaimers 1505.02(f) Amendment of the Basis 1505.02(g) Amendments to the Applicant’s Name, Citizenship, or
Entity Type 1505.03 Republication for Opposition 1505.03(a) When Republication is Required 1505.03(b) When Republication is Not Required
-xlii- October 2009
1506 Concurrent Use Registration Proceeding 1507 Interference
Chapter 1600 - Registration and Post Registration Procedures
1601 Types of Registrations 1601.01 Registrations Now Being Issued 1601.01(a) Certificate of Registration 1601.01(b) Duplicate Certificate of Registration 1601.01(c) Registered Extension of Protection of International
Registration to the United States 1601.02 Repeal of Prior Acts 1601.03 Additional Registration under Act of 1946 1601.04 1881 and 1905 Act Registrations 1601.05 1920 Act Registrations 1601.06 Registrations Issued Under Prior Classification Systems 1601.07 Form of Copies of Registrations 1602 Duration and Maintenance of Registrations 1602.01 Act of 1946 1602.02 Acts of 1881 and 1905 1602.03 Act of 1920 1602.04 Trademark Law Treaty Implementation Act Changes 1603 Bringing Prior Act Registrations Under 1946 Act,
§12(c) 1603.01 Notification and Printing of Mark in Official Gazette 1603.02 Cancellation and Incontestability 1603.03 Affidavits of Use in Commerce Required 1604 Affidavit of Use or Excusable Nonuse of Mark in
Commerce under §8 1604.01 Registrations to Which §8 Affidavit Pertains 1604.02 Notice of When Affidavit Is Due 1604.03 Form for Filing §8 Affidavit 1604.04 Time for Filing §8 Affidavit 1604.04(a) Premature Filing of §8 Affidavit 1604.04(b) Registrations in Twenty-Year Terms 1604.05 Requirements for §8 Affidavit or Declaration of Use or
Excusable Nonuse 1604.06 Fees for §8 Affidavit 1604.06(a) Filing Fee for Affidavit or Declaration 1604.06(b) Grace Period Surcharge and Deficiency Surcharge 1604.06(c) Processing Affidavit or Declaration Filed With Insufficient
Fees 1604.07 Ownership, and Who May File §8 Affidavit 1604.07(a) Affidavit or Declaration Must be Filed by Owner 1604.07(b) Establishing Ownership 1604.07(c) Acceptance Notice Issued in Name of Owner of Record
-xliii- October 2009
1604.07(d) Changes of Legal Entity 1604.07(e) Changes of Name 1604.07(f) Correction of Mistake in Setting Forth the Name of the
Owner 1604.08 Execution of Affidavit or Declaration 1604.08(a) Persons Who May Sign Affidavit or Declaration 1604.08(b) Date of Execution of Affidavit or Declaration 1604.08(c) Signature of Electronically Transmitted Affidavit or
Declaration 1604.08(d) Form and Wording of Verification 1604.09 Goods and/or Services Set Forth in §8 Affidavit or
Declaration 1604.09(a) Goods and/or Services Must be Specified or Expressly
Incorporated by Reference 1604.09(b) Deletion of Goods and/or Services 1604.09(c) Failure to List All Goods and/or Services Recited in
Registration 1604.09(d) New Goods and/or Services Cannot be Added 1604.10 Use in Commerce 1604.11 “Excusable Nonuse” of Mark 1604.12 Specimen Showing Current Use of Mark in Commerce 1604.12(a) Specimen for Each Class Required 1604.12(b) Specimens in Electronically Filed Affidavits 1604.12(c) Substitute Specimens 1604.13 Differences in the Mark as Used on the Specimen and
the Mark as Registered 1604.13(a) Possible Amendment of Mark in Registration 1604.14 Designation of Domestic Representative by Foreign
Owner 1604.15 Office Actions and Notices Regarding Affidavit 1604.16 Response to Office Action 1604.17 Correction of Deficiencies in §8 Affidavit 1604.17(a) Correcting Deficiencies in Affidavits or Declarations
Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act
1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period
1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period
1604.18 Petition Under 37 C.F.R. §2.146 1604.18(a) Response to Examiner’s Refusal Required Before
Petition 1604.18(b) Decision on Petition is Final Action of the USPTO 1604.18(c) Request for Reconsideration of Denial of Petition 1604.18(d) Appeal to Federal Court
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1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application
1605 Affidavit of Incontestability Under §15 1605.01 Registrations to Which §15 Affidavit Pertains 1605.02 Form for Filing Affidavit of Incontestability 1605.03 Time for Filing Affidavit of Incontestability 1605.04 Requirements for Affidavit or Declaration of
Incontestability 1605.05 Combining §15 Affidavit with §8 Affidavit 1605.06 Section 14 Limitation is Independent of §15 Affidavit 1606 Renewal of Registration Under Trademark Act §9 1606.01 Which Registrations Must be Renewed Under §9 1606.01(a) Registrations Based on Applications Under §1 or §44
Must Be Renewed Under §9 1606.01(b) Section 9 Does Not Apply to Extensions of Protection of
International Registrations to the United States 1606.01(c) Renewal of Registrations Issued Under Prior U.S.
Trademark Acts Must Be Renewed Under §9 1606.02 Requirements for Renewal Under §9 1606.03 Time for Filing §9 Renewal Application 1606.03(a) Premature Filing of §9 Renewal Application 1606.04 Form for Filing §9 Renewal Application 1606.05 Fees for §9 Renewal Applications 1606.05(a) Fee for Filing Application for Renewal Under §9 1606.05(b) Grace Period Surcharge and Deficiency Surcharge 1606.05(c) Processing §9 Renewal Application Filed with Insufficient
Fees 1606.06 Ownership, and Who May File §9 Renewal Application 1606.07 Execution of §9 Renewal Application 1606.08 Goods and/or Services Set Forth in §9 Renewal
Application 1606.08(a) Listing of Goods and/or Services Required Only for
Partial Renewal 1606.08(b) No Goods or Services Listed 1606.08(c) Some Goods and/or Services Listed 1606.08(d) Goods and/or Services Not Listed in Registration May
Not Be Listed in Renewal Application 1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not
Required 1606.10 Designation of Domestic Representative by Foreign
Applicant for Renewal Under §9 1606.11 Office Actions and Notices Regarding §9 Renewal
Application 1606.12 Response to Office Action 1606.13 Correction of Deficiencies in §9 Renewal Applications
-xlv- October 2009
1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration
1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period
1606.13(c) Late Filing Cannot be Cured 1606.14 Petition Under 37 C.F.R. §2.146 1606.14(a) Response to Examiner’s Refusal Required Before
Petition 1606.14(b) Decision on Petition is Final Action of the USPTO 1606.14(c) Request for Reconsideration of Denial of Petition 1606.14(d) Appeal to Federal Court 1606.15 Section 9 Renewal Application Combined with Affidavit or
Declaration of Use or Excusable Nonuse 1607 Cancellation of Registrations Under §§14 and 37 of
the Trademark Act 1608 Surrender of Registration for Cancellation 1609 Amendment and Correction of Registrations 1609.01 Amendment of Registration - In General 1609.01(a) Limited Amendments to Registered Extension of
Protection 1609.01(b) Amendment of Registration Resulting From §1 or §44
Application 1609.02 Amendment of Mark 1609.02(a) Determining What Constitutes Material Alteration of Mark 1609.02(b) New Drawing Required 1609.02(c) Supporting Specimen and Declaration 1609.02(d) Conforming Amendments 1609.02(e) Amendment of Black-and-White Drawing of Mark for
Which Color is Claimed to Substitute Color Drawing 1609.02(f) Amendment of Black-and-White Drawing to Color
Drawing 1609.02(g) Amendment to Special Form Drawing Containing Black,
White, and/or Gray 1609.03 Amendment of Identification of Goods or Services 1609.04 Amendment of Classification 1609.05 Disclaimer of Mark 1609.06 Territorial Restrictions 1609.07 Dates of Use 1609.08 Effect of Amendment of Registration on Limitation of
Grounds for Cancellation of a Registration 1609.09 Amendment from Supplemental to Principal Register Not
Permitted 1609.10 Correction of Mistake in Registration 1609.10(a) Correction of USPTO Error 1609.10(b) Correction of Owner’s Error
-xlvi- October 2009
1609.11 Change of Owner’s Address Can Be Filed Through TEAS 1610 Court Orders Concerning Registrations 1611 Updating Automated Records to Show the Status of
Registrations 1612 Powers of Attorney and Designations of Domestic
Representative Filed After Registration 1613 Affidavit of Use in Commerce or Excusable Nonuse
Under §71 of the Trademark Act 1614 Renewal of Registered Extension of Protection 1615 Division of Registrations 1615.01 Division of Registration Based on Application Under §1 or
§44 of the Trademark Act 1615.02 Division of Registered Extension of Protection 1616 Replacement
Chapter 1700 - Petitions, Requests for Reinstatement, and Other Matters Submitted to Director
1701 Statutory Authority of Director 1702 Petitions to the Director Under 37 C.F.R. §2.146 - In
General 1703 Specific Types of Petitions 1704 Petitionable Subject Matter 1705 Petition Procedure 1705.01 Standing 1705.02 Petition Fee 1705.03 Evidence and Proof of Facts 1705.04 Timeliness 1705.05 Due Diligence 1705.06 Stay or Suspension of Pending Matters 1705.07 Signature of Petition 1705.08 Request for Reconsideration of Denial of Petition 1705.09 Appeal to Federal Court 1706 Standard of Review on Petition 1707 Director’s Supervisory Authority Under 37 C.F.R.
§2.146(a)(3) 1708 Waiver of Rules 1709 Matters Delegated by Director 1710 Petition to Make Special 1710.01 Basis for Granting or Denying Petition 1710.02 Processing Petition 1710.03 Submitting Petition 1711 Review of Denial of Filing Dates 1712 Reinstatement of Applications and Registrations 1712.01 Reinstatement of Applications Abandoned Due to Office
Error
-xlvii- October 2009
1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error
1712.02(a) Request for Reinstatement 1712.02(b) Formal Petition 1713 Petition to Reverse Holding of Abandonment for
Incomplete Response 1713.01 Standard of Review 1713.02 Nonreceipt of Action Granting Additional Time to Perfect
Response 1714 Petition to Revive Abandoned Application 1714.01 Procedural Requirements for Filing Petition to Revive 1714.01(a) Failure to Timely Respond to an Examining Attorney’s
Office Action 1714.01(a)(i) Response to Nonfinal Office Action 1714.01(a)(ii) Response to Final Office Action 1714.01(b) Failure to File a Statement of Use or Extension Request -
Notice of Allowance Received 1714.01(b)(i) Applicant Must File Statement of Use or Further
Extension Requests During Pendency of a Petition 1714.01(c) Notice of Allowance Not Received 1714.01(d) Timeliness and Diligence 1714.01(e) Signed Statement That Delay Was Unintentional 1714.01(f) Applicability of Unintentional Delay Standard 1714.01(f)(i) Situations Where the Unintentional Delay Standard
Applies 1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does
Not Apply 1714.01(g) Request for Reconsideration of Denial of Petition to
Revive 1715 Letters of Protest in Pending Applications 1715.01 Appropriate and Inappropriate Subjects to be Raised in
Letter of Protest 1715.01(a) Issues Appropriate as Subject of Letter of Protest 1715.01(b) Issues Inappropriate as Subject of Letter of Protest 1715.02 Letter of Protest Filed Before Publication 1715.02(a) Standard of Review for Letter of Protest Filed Before
Publication 1715.02(b) Action by Examining Attorney Before Publication 1715.03 Letters of Protest Filed After Publication 1715.03(a) Standard of Review for Letters of Protest Filed After
Publication 1715.03(b) Timely Filing of Letter of Protest 1715.03(c) Jurisdiction of Application When a Letter of Protest Is
Granted After Publication 1715.03(d) Action by Examining Attorney After Publication
-xlviii- October 2009
1715.03(e) Letter of Protest Does Not Stay or Extend Opposition Period
1715.04 Information for Parties Filing Letter of Protest 1715.04(a) Submitting Letter of Protest 1715.04(b) Tracking of Letters of Protest by the Protestor 1715.05 Requests for Copies of Letters of Protest 1715.06 Recourse After Denial of Letter of Protest
Chapter 1800 — Public Inquiries About Applications and Registrations
1801 Office Personnel May Not Express Opinion on Validity of Registered Trademark
1801.01 Office Personnel Cannot Testify 1802 Congressional Inquiries 1803 Freedom of Information Act Requests 1804 Inquiries from Members of the Press 1805 General Inquiries from the Public 1806 Contacts With Third Parties Regarding Ex Parte
Matters 1807 United States Patent and Trademark Office World
Wide Web Page
Chapter 1900 - Madrid Protocol
1901 Overview of the Madrid System of International Registration
1902 International Application Originating From the United States
1902.01 Who Can File 1902.02 Minimum Requirements for Date of Receipt of
International Application in USPTO 1902.02(a) Form of International Application 1902.02(b) Basic Application or Registration Number 1902.02(c) Name and Address of Applicant 1902.02(d) Reproduction (Drawing) of Mark 1902.02(e) Color Claim 1902.02(f) Identification of Goods/Services 1902.02(g) Classification in International Applications 1902.02(g)(i) Reclassifying Goods/Services 1902.02(g)(ii) United States Classes A, B and 200 1902.02(g)(iii) Kits and Gift Baskets 1902.02(h) List of Contracting Parties 1902.02(i) Fees 1902.02(j) Statement of Entitlement 1902.02(k) Description of Mark 1902.02(l) Indication of Type of Mark
-xlix- October 2009
1902.02(m) E-Mail Address 1902.03 Certification of International Application by USPTO 1902.03(a) Petition to Review Refusal to Certify 1902.04 Date of International Registration 1902.05 IB Requirements for Complete International Application 1902.06 Examination of Application by IB 1902.07 Irregularities in International Application 1902.07(a) Irregularities that Must Be Remedied by the USPTO 1902.07(b) Irregularities that Must Be Remedied by the Applicant –
Applicant Must Respond Directly to the IB 1902.07(b)(i) Fee Irregularities 1902.07(c) Irregularities that Must Be Remedied by the Applicant –
Applicant Must Respond Through the USPTO 1902.07(c)(i) Classification of Goods/Services 1902.07(c)(ii) Identification of Goods/Services 1902.07(d) Other Irregularities that Must Be Remedied By Applicant
– Applicant May Respond Directly to the IB or Through the USPTO
1902.07(e) Filing Response Directly With the IB 1902.07(f) Responding to Notice of Irregularity Through the USPTO 1902.08 Subsequent Designation - Request for Extension of
Protection Subsequent to International Registration 1902.08(a) USPTO Requirements 1902.08(b) Form for Filing Subsequent Designation Through the
USPTO 1902.08(c) Fees for Subsequent Designation 1902.08(d) IB Requirements for Subsequent Designation 1902.08(e) Irregularities in Subsequent Designation 1902.09 Dependence and “Central Attack”: Restriction,
Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years
1902.10 Transformation When the USPTO is the Office of Origin 1902.11 Representative 1902.12 USPTO Must Notify IB of Division or Merger of Basic
Application or Registration 1903 Payment of Fees 1903.01 Payment of USPTO Fees 1903.02 Payment of International Fees 1904 Request for Extension of Protection of International
Registration to the United States 1904.01 Filing Request for Extension of Protection to United
States 1904.01(a) Section 66(a) Basis 1904.01(b) Filing Date 1904.01(c) Declaration of Intent to Use Required 1904.01(d) Use Not Required
-l- October 2009
1904.01(e) Priority 1904.01(f) Filing Fee 1904.01(g) Constructive Use 1904.01(h) Cannot be Based on USPTO Basic Application or
Registration 1904.02 Examination of Request for Extension of Protection to the
United States 1904.02(a) Examined as Regular Application 1904.02(b) Examination of Classification of Goods/Services in §66(a)
Applications 1904.02(c) Examination of Identification of Goods/Services in §66(a)
Applications 1904.02(c)(i) Acceptable Identifications of Goods/Services 1904.02(c)(ii) Indefinite Identification of Goods/Services with
Acceptable Options Within the Scope of the Class 1904.02(c)(iii) Indefinite Identification of Goods/Services that Does not
Include any Goods/Services Within the Class 1904.02(c)(iv) Examination of Proposed Amendments and Issuance of
Final Requirements For an Acceptable Identification 1904.02(c)(v) Effect of Indicated Classes – No Precedential Value on
Later-Filed Applications 1904.02(d) Certification and Collective Marks 1904.02(e) Corrections and Limitations to the International
Registration 1904.02(e)(i) Corrections 1904.02(e)(ii) Limitations 1904.02(e)(iii) Limitations vs. Amendments 1904.02(f) Mark Must Be Registrable on Principal Register 1904.02(g) Refusal Must Be Made Within 18 Months 1904.02(h) Issuing Office Actions 1904.02(i) Correspondence Address 1904.02(j) Mark Cannot Be Amended 1904.02(k) Drawings and Descriptions of the Mark 1904.02(l) Jurisdiction 1904.03 Notice of Refusal 1904.03(a) Notice Must be Sent Within 18 Months 1904.03(b) Requirements for Notice of Refusal 1904.03(c) §66(a) Applicant Must Respond to Notification of Refusal 1904.03(d) Refusal Pertaining to Less Than All the Goods/Services 1904.03(e) Confirmation or Withdrawal of Provisional Refusal 1904.03(f) Notification of Correction in the International Register
with Respect to a Pending Request for Extension of Protection
1904.03(g) Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection
-li- October 2009
1904.04 Opposition 1904.05 Certificate of Extension of Protection 1904.06 Assignment of Extension of Protection to the United
States 1904.07 Invalidation of Protection in United States 1904.08 Cancellation of International Registration By IB 1904.09 Transformation to Application Under §1 or §44 1904.09(a) Requirements for Transformation 1904.09(b) Examination of Transformed Application 1904.10 Affidavits of Use or Excusable Nonuse Required 1904.11 Incontestability 1904.12 Replacement 1904.13 Amendment and Correction of Registered Extension of
Protection to the United States 1904.13(a) Limited Amendments to Registered Extension of
Protection 1904.13(b) Corrections to Registered Extensions of Protection 1904.14 Notification of Correction in the International Register
with Respect to Registered Extension of Protection 1904.15 Notification of Limitation of the List of Goods/Services
with Respect to Registered Extension of Protection 1905 Renewal of International Registrations 1906 Communications With International Bureau
Regarding International Registrations 1906.01 Recording Changes in International Register 1906.01(a) Change in Ownership of International Registration 1906.01(a)(i) Requirements for Submitting Changes in Ownership of
International Registration Through the USPTO 1906.01(a)(ii) International Fees for Recording Changes of Ownership
of International Registration 1906.01(a)(iii) Effect of Change of Ownership of International
Registration 1906.01(a)(iv) Dividing an International Registration After Change of
Ownership With Respect to Some But Not All of the Goods/Services
1906.01(b) Restriction of Holder’s Rights of Disposal 1906.01(c) Change of the Holder’s Name or Address 1906.01(d) Change of Name or Address of Representative 1906.01(e) Limitation, Renunciation, or Cancellation of International
Registration 1906.01(f) Correction of Errors in International Registration 1906.01(g) Merger of International Registrations 1906.01(h) License 1906.01(i) Changes That Cannot Be Made to International
Registration
-lii- October 2009
-liii- October 2009
Appendix A Examining Attorneys’ Appeal Briefs Appendix B Members of International Trademark Agreements Appendix C Notes of Other Statutes Appendix D Foreign Entity Appendix Appendix E Countries That Have Standard Character Marks or the
Equivalent Index
Introduction
Constitutional Basis
The authority of Congress to provide for the registration of marks which are used in commerce stems from the power of Congress under the commerce clause of the Constitution of the United States to regulate commerce.
Statutes
Under its authority to regulate commerce, Congress has over the years passed a number of statutes providing for the registration of marks in the USPTO. The provisions of statutes cannot be changed or waived by the USPTO. The statute now in effect is Public Law 489, 79th Congress, approved July 5, 1946, 60 Stat. 427, commonly referred to as the Trademark Act of 1946 or the Lanham Act. The Trademark Act of 1946 (as amended) forms Chapter 22 of Title 15 of the United States Code. In referring to a particular section of the Trademark Act, this Manual often gives the citation of the United States Code, e.g., 15 U.S.C. §1051. The text of the current statutes can be downloaded from the USPTO website at http://www.uspto.gov.
Rules of Practice
Section 2 of Title 35 of the United States Code authorizes the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office to establish regulations, not inconsistent with law, for the conduct of proceedings in the USPTO. The rules which govern the practices and procedures in the USPTO as they relate to the registration of marks are set forth in Title 37 of the Code of Federal Regulations.
The trademark rules are a part of the Code of Federal Regulations, which is a codification of Federal regulations under the provisions of The Federal Register Act of 1937 and The Administrative Procedure Act of 1946 and which is published pursuant to 44 U.S.C. §1510. Rules relating to patents, trademarks and copyrights are codified in Title 37 of the Code of Federal Regulations. The trademark rules constitute Part 2, the rules relating to assignments constitute Part 3, the classification of goods and services constitutes Part 6, the rules relating to filings under the Madrid Protocol constitute Part 7, and the rules relating to the representation of others before the USPTO constitute Parts 10 and 11. The text of the current rules is also available on the USPTO website at http://www.uspto.gov.
In creating numbers for rules, the number of the appropriate Part in Title 37 of the Code of Federal Regulations is placed first, followed by a decimal point and then the number of the rule, so that, for example, Trademark Rule 2.56 is
Rule 56 in Part 2 of Title 37 of the Code of Federal Regulations. In the Code of Federal Regulations itself, and in material published in the Federal Register, the rules are identified by the term "sections." Thus, section 2.56 in 37 C.F.R. (37 CFR §2.56) is Trademark Rule 2.56.
Notices of proposed and final rulemaking are published in the Federal Register and in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov/.
The primary function of the rules of practice is to advise the public of the regulations that have been established in accordance with the statutes, which must be followed before the USPTO.
Director's Orders and Notices
From time to time the Director of the United States Patent and Trademark Office issues Orders and Notices relating to various specific situations that have arisen in operating the USPTO. Notices, circulars of information or instructions and examination guides have also been issued by other USPTO officials under authority of the Director. These Orders and Notices are published in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov. See notice at 72 Fed. Reg. 72999 (Dec. 26, 2007).
Decisions
In addition to the statutory regulations, the actions taken by the examining attorneys in the examination of applications to register marks are to a great extent governed by decisions on prior cases. Applicants dissatisfied with an examining attorney's action may have it reviewed. In general, procedural matters may be reviewed by petition to the Director (see TMEP §1702) and substantive matters may be reviewed by appeal to the Trademark Trial and Appeal Board (see TMEP §1501).
Trademark Manual of Examining Procedure
The Trademark Manual of Examining Procedure sets forth the guidelines and procedures followed by the examining attorneys at the USPTO. The manual may be downloaded free of charge from the USPTO website at http://www.uspto.gov/. See notice at 67 Fed. Reg. 18176 (April 15, 2002) regarding the dissemination of the manual in electronic format.
First Edition, January 1974 Revision 1, January 1976 Revision 2, January 1977 Revision 3, January 1978 Revision 4, January 1979 Revision 5, December 1982
Intro-2 October 2009
Intro-3 October 2009
Revision 6, December 1983 (Incorporating Exam Guide Nos. 1-83 to 31-83) Revision 7, January 1986 (Incorporating Office practice and relevant caselaw prior to
January 1986; drawing rules amendment effective Sept. 22, 1986; letter of protest procedures effective April 23, 1986; Exam Guide Nos. 1-83 to 2-86)
Second Edition, May 1993 (Incorporating Office practice and relevant caselaw reported prior to April 1993)
Revision 1, April 1997 (Incorporating Office practice and relevant caselaw reported prior to March 31, 1997)
Revision 1.1, August 1997 (Corrected errors in Rev. 1) Third Edition, January 2002, issued March 18, 2002 (Incorporating Office practice
and relevant caselaw reported prior to Jan. 24, 2002) Revision 1, June 2002, issued June 24, 2002 (Incorporating Office practice and
relevant caselaw reported prior to June 24, 2002) Revision 2, May 2003, issued May 1, 2003 (Incorporating Office practice and
relevant caselaw reported prior to April 21, 2003) Fourth Edition, April 2005, issued April 29, 2005 (Incorporating Office practice and
relevant caselaw reported prior to March 25, 2005) Fifth Edition, September 2007, issued Sept. 30, 2007 (Incorporating Office practice
and relevant caselaw reported prior to August 11, 2007) Sixth Edition, September 2009, issued Oct. 12, 2009 (Incorporating Office practice
and relevant caselaw reported prior to Sept. 1, 2009) Revision 1, October 2009, issued October 27, 2009 (Revising §§1202.02(c)(iii),
1206.03, and 1402.15)
Trademark Trial and Appeal Board Manual of Procedure
References in this Manual to the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) refer to the Second Edition, 1st Revision, March 12, 2004, currently available on the USPTO website at http://www.uspto.gov. The TBMP sets forth guidelines and practices followed in proceedings held before the Trademark Trial and Appeal Board.
CHANGES: INDEX TO CHANGES IN TMEP SIXTH EDITION
Attention is directed to the following changes in the 6th edition of the TMEP.
SECTION CHANGE
106 Updated information about publication of Official Gazette. 108.01 Updated information about Trademark Applications and
Registrations Retrieval (“TARR”) database. 108.02 Updated information about Trademark Assistance Center
(“TAC”). 109 Changed heading. 201 Language change. 202 Incorporated change to Rule 2.21(a). Added case cite. 202.01 Revised to clarify how the Office determines what the mark is
in an application filed through the Trademark Electronic Application System (“TEAS”).
204.02 Changed heading. Revised to clarify procedure for resubmitting application after denial of filing date.
206.01 Revised to clarify effect of amendment from the Supplemental to the Principal Register on the effective filing date. Added case cite.
206.04 New section - Examining Attorney’s Action After Conducting New Search.
301 Added about new global form TEAS form. Deleted listing of specific forms available in TEAS. Language changes.
302.01 Language change. 302.03(a) Language change. 302.03(b) Language change. 303.02(c) Language change. 304.01 Changed heading. Deleted provision that e-mail can be used
to respond to an Office action or letter issued by the Post Registration Section, ITU/Divisional Unit, and Office of Petitions.
304.02 Language change. 304.06 Language change. 305.04 Incorporated change to Rule 2.195(e). 306.01 Added case cite. 307 Updated hours for hand delivery to TAC. 310 Language change. 401.01 Updated information about filing receipts sent to §66(a)
applicants. 404 Incorporated change to Rule 2.25. 405.06 Language change. 501.06 Parties who record partial assignment encouraged to file
request to divide.
Changes-1 September 2009
SECTION CHANGE
502.01 Language changes. 502.02(a) Language changes. 502.02(b) Language changes. 502.02(c) Language change. 502.03 Updated to clarify proper signatory for request for new
registration certificate. 503.01 Separated into sections 503.01(a)-(e). 503.01(a) New section - Recording May Not Update Ownership
Information. Incorporated content from former 503.01. 503.01(b) New section - Recording Does Not Update Correspondence
Address in Trademark Database. 503.01(c) New section - Recording is Not a Determination of Validity.
Incorporated content from former 503.01. 503.01(d) New section - Recording Does Not Constitute Response to
Office Action. Incorporated content from former 503.01. 503.01(e) New section - Conditional Assignment. Incorporated content
from former 503.01. 503.03(e) Incorporated change to Rule 3.31 regarding requirements for
assignment cover sheet. 503.06(d) Language changes. 504-504.01 Revised to clarify procedure regarding requests to record
multiple assignments with the same execution date that are filed on the same date.
505 Changed heading. Revised to clarify requirements for requests to update ownership information in the Trademark Database. Moved some content to new 505.01 and 505.02.
505.01 New section - Request to Update Ownership Information in Pending Application. Incorporated content from former 505.
505.02 New section - Request to Update Ownership Information After Registration. Incorporated and revised content from former 505.
600 Changed chapter heading. Language changes. Incorporated changes to 37 C.F.R. Parts 10 and 11.
601 Changed heading. Language changes. 601.01 Language changes. 601.02 Changed heading. Language changes. 602 Changed heading. Revised to clarify individuals who may
practice before the United States Patent and Trademark Office (“USPTO”). Moved some content to 602.01, 602.02, and 602.03.
602.01 Renumbered as 605. Moved some content to 604.01, 604.02, and 605.01. Deleted reference to suspended and excluded practitioners. Incorporated content from former 602.
602.01(a) Renumbered as 605.02.
Changes-2 September 2009
SECTION CHANGE
602.01(b) Renumbered as 605.03. 602.01(c) Renumbered as 605.04. 602.02 Renumbered as 603. New 602.02 incorporates content from
former 602. 602.03 Renumbered as 608.01. New 602.03 et seq. incorporates
content from former 602.06 et seq. Language changes. Revised to clarify procedure for attorneys seeking reciprocal recognition.
602.03(a) Incorporated content from former 602.06. Revised to clarify the procedure for Canadian attorneys or agents seeking recognition, and the internal procedure for verifying that a Canadian attorney or agent is recognized.
602.03(b) Incorporated content from former 602.06(b). Revised to clarify procedures for handling requests for recognition filed by foreign attorneys or agents from countries other than Canada.
602.03(d) Incorporated content from former 602.06(d). 602.03(e) Language changes. 602.04 Renumbered as 606. 602.05 Renumbered as 607. 602.06 Renumbered as 602.03. 602.06(a) Renumbered as 602.03(a). 602.06(b) Renumbered as 602.03(b). 602.06(c) Renumbered as 602.03(c). 602.06(d) Renumbered as 602.03(d). 602.06(e) Renumbered as 602.03(e). 602.07 Renumbered as 604.03. 602.08 Renumbered as 608.02. 603 Renumbered as 609. 603.01 Renumbered as 609.01. 603.01(a) Renumbered as 609.01(a). 603.02 Renumbered as 609.02. 603.02(a) Renumbered as 609.02(c). Some content moved to new
609.02 (a), (b), and (f). 603.02(b) Renumbered as 609.02(d). 603.02(c) Renumbered as 609.02(e). 603.03 Renumbered as 609.03. 603.04 Renumbered as 609.04. 604 Former 604 renumbered as 610. New 604 et seq. includes
discussion of recognition as representative. 604.01 New section - Three Ways to Be Recognized. Clarifies
procedure for recognition of practitioners under Rule 2.17. Incorporated content from former 602.01.
604.02 New section - Duration of Recognition. Incorporated content from former 602.01, 602.01(c), 602.04, and 602.07.
Changes-3 September 2009
SECTION CHANGE
604.03 Content incorporated content from former 602.07. 605 Former 605 renumbered as 611. New 605 incorporates
content from former 602.01. 605.01 Former 605.01 renumbered as 611.01(a). New section -
Requirements for Power of Attorney. Incorporated content from former 602.01. Revised to clarify requirements for a power of attorney.
605.02 Renumbered as 611.02. Some content moved to new 611.02(a). Incorporated content from former 602.01(a).
605.03 Former 605.03 deleted and content moved to new 611.03 et seq. New 605.03 incorporates content from former 602.01(b) into new 605.03. Revised to clarify situation when practitioner who signed an associate power withdraws.
605.04 Renumbered as 611.04. New 605.04 incorporates content from former 602.01(c).
605.05 Renumbered as 611.05. 605.05(a) Renumbered as 611.05(a). 605.05(b) Renumbered as 611.05(b). 605.05(c) Renumbered as 611.05(c). 606 Incorporated content from former 602.04. Revised to clarify
requirements for and procedures for processing revocations of powers of attorney.
607 Incorporated content from former 602.06. Revised to clarify requirements for and procedures for processing requests to withdraw as practitioner of record.
608 New section heading - Unauthorized Practice. 608.01 Incorporated content from former 602.03 and excerpt of Rule
11.5(b)(2). Incorporated amendment to Rule 11.5(b)(2). 608.02 Incorporated content from former 602.08. Revised to clarify
procedures for handling situation where person appears to be engaged in unauthorized practice.
609 Incorporated content from former 603. 609.01 Incorporated content from former 603.01. Revised to clarify
guidelines for establishing and entering the correspondence address.
609.01(a) Incorporated content from former 603.01(a). Language changes.
609.02 Incorporated content from former 603.02. Language changes. 609.02(a) New section - Request to Change Correspondence Address
Presumed. Incorporated content from former 603.02(a). Revised to clarify documents that will be construed as request to change correspondence address.
609.02(b) New section - Requirements for Request to Change Correspondence Address. Incorporated content from former
Changes-4 September 2009
SECTION CHANGE
603.02. Revised to clarify requirements for request. 609.02(c) Incorporated content from former 603.02(a). 609.02(d) Incorporated content from former 603.02(b). 609.02(e) Incorporated content from former 603.02(c). Revised to clarify
procedures for changing the correspondence address after registration.
609.02(f) New section - Correspondence After Recordation of Change of Ownership. Incorporated content from former 603.02(a).
609.03 Incorporated content from former 603.03. 609.04 Incorporated content from former 603.04. 610 Incorporated content from former 604. Revised to clarify
requirements for signature of designations of domestic representative, and standards for duration, revocation, and withdrawal of domestic representative.
611 Incorporated content from former 605. 611.01(a) New section - Signature as Certificate. Incorporated content
from former 605.01. 611.01(b) New section - Requirements for Signature. Incorporated
content from former 605.02. Revised to clarify requirements for signature of documents. Added statement that name of the signatory should be set forth in printed or typed form.
611.01(c) New section - Signature of Documents Filed Electronically. Incorporated content from former 804.05.
611.02 Incorporated content from former 605.02. Revised to clarify that requirements apply to both in-house and outside counsel.
611.02(a) New section - TEAS Checkoff Boxes. Incorporated content from former 605.02. Added new examples of situations in which an examiner must inquire into the signatory’s authority.
611.03 New section - Proper Person to Sign. 611.03(a) New section - Verification. 611.03(b) New section - Responses, Amendments to Applications,
Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide.
611.03(c) New section - Powers of Attorney and Revocations of Powers of Attorney.
611.03(d) New section - Petitions to Revive. 611.03(e) New section - Petitions to the Director. 611.03(f) New section - Amendment, Correction, or Surrender of
Registration. 611.03(g) New section - Renewal Applications. 611.03(h) New section - Designations and Revocations of Domestic
Representative. 611.03(i) New section - Requests to Change Correspondence Address
in an Application or Registration.
Changes-5 September 2009
SECTION CHANGE
611.04 Incorporated content from former 605.04. Added example of authorized signatory.
611.05 Incorporated content from former 605.05. Language changes. 611.05(a) Incorporated content from former 605.05(a). Language
changes. 611.05(b) Incorporated content from former 605.05(b). Language
changes. 611.05(c) Incorporated content from former 605.06(c). Language
changes. 611.06 et seq. New section - Guidelines on Persons With Legal Authority to
Bind Certain Juristic Entities. Incorporated content from former 712.01(a) et seq.
611.06(d) Incorporated content from former 712.01(a)(iv). Revised to clarify proper signatories for corporations.
702.02 Revised to clarify procedures for requests for special handling. 703 Incorporated change to Rule 2.48. Revised to clarify policy
and procedures regarding duplicate applications and what constitutes a duplicate application.
704.01 Language change. 705 Language change. 705.03 Revised to the clarify circumstances in which the USPTO will
reissue an Office action and provide the applicant with a new response period.
705.05 Revised to update guidance for citing decisions published by research services and unpublished decisions.
705.07 Deleted reference to paper copies of Office actions and evidence. Revised to update form and processing of outgoing Office actions when the applicant has authorized e-mail communication.
706.01 New section - “Clear Error.” Clarifies standards for issuing refusals or requirements that could have been raised in a previous action, and Office’s authority to correct errors.
707.01 Revised to clarify parties authorized to approve examiner’s amendment.
707.02 Updated list of amendments that can be entered by examiner’s amendment without prior approval by the applicant.
708.01 Language changes. 708.02 Revised to clarify parties who may discuss issues raised in an
Office action and authorize issuance of priority actions. 709.04 Changed heading. Revised to clarify policy and procedures for
telephone and e-mail communications. 709.05 Changed heading. Added examples of informal
communications. Revised to clarify policy and procedures for informal communications.
Changes-6 September 2009
SECTION CHANGE
710.01 Revised to include requirement for proper citation to evidence in examining attorneys’ Office actions.
710.01(b) Added case cite. Revised to clarify policy regarding Wikipedia® evidence.
710.01(c) Added case cite. 710.02 Changed heading. Language changes. 710.03 Added case cites. Language change. 711 Language changes. Revised to clarify deadline for filing
response in a §66(a) application. 712.01 Revised to clarify signature requirements Incorporated change
to Rule 2.62(b). 712.01(a) Deleted. Moved content to new 712.01. 712.01(a)(i)- 712.01(a)(viii)
Renumbered as 611.06(a)-611.06(h).
713.02 Changed heading. Revised to clarify policy regarding issuing a final action.
714 Incorporated change to Rule 2.64. 714.05(e) New section - Submission of Substitute Specimen in Response
to Refusal for Failure to Show Use of the Mark in Commerce. 714.05(f) New section - Submission of Substitute Specimen in Response
to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
715.02 Language change. 715.03 Language change. 715.03(a) Language changes. 715.03(b) Language changes. 715.03(c) Language changes. 715.04(a) Changed heading. 715.04(b) Language changes. 716.02(b) Deleted requirement to issue Office action regarding intent to
retain dual bases in a §44(d) application when there are no other issues and examining attorney is unable to reach applicant by phone.
716.02(c) Language change. 716.02(e) Revised to clarify procedure for updating USPTO records after
expiration of grace period for filing §8 affidavit or renewal application, and policy regarding issuing a denial of a request for reconsideration when the grace period has not passed.
716.05 Revised to add recommendation that a response to a suspension inquiry be filed through TEAS.
718.01 Revised to clarify procedures for processing and requirements for express abandonments. Incorporated change to Rule 2.68.
718.02 Revised to clarify statutory date of abandonment when applicant fails to timely respond to action granting additional
Changes-7 September 2009
SECTION CHANGE
time to perfect an incomplete response. 718.02(a) Revised to clarify policy regarding partial abandonment when a
partial refusal or requirement is upheld on appeal, or when applicant withdraws or fails to prosecute an appeal of a partial refusal, and use of partial abandonment advisory in Office actions.
718.03 Revised to clarify procedures for TEAS responses that consist only of a signature, and proper method of abandonment when an applicant fails to respond or submits an unsatisfactory response to a notice of incomplete response.
718.07 Deleted. 718.08 Renumbered as 718.07. 802 Revised to clarify policy regarding applications downloaded
from TEAS or TEAS Plus, printed, and mailed to the USPTO. 803.03(a) Revised to clarify meaning of a “sole proprietorship,” and
interpretation of individual applicant entity and citizenship information in §66(a) applications.
803.03(b) Revised to update suggested format for identifying entity of partnership or joint venture.
803.03(c) Changed heading. Added discussion of use of terms “association,” “company,” and “organization” as entity designation.
803.03(d) Revised to clarify policy and procedures for identifying the entity of joint applicants.
803.03(i) Revised to clarify procedures for identifying entity organized under the laws of a foreign province or geographical region.
803.04 Revised to clarify requirements for identifying citizenship of domestic joint ventures, entity organized under the laws of a foreign province or geographical region, and interpretation of individual applicant entity and citizenship information in §66(a) applications. Incorporated changes to Rules 2.32(a)(3)(iii) and (iv).
804.04 Deleted reference to designations of domestic representative. 804.05 Moved content to 611.01(c). Incorporated former 804.06. 804.06 Section number deleted. Incorporated content into new
804.05. 806 Added case cite. 806.02(f) Revised to clarify procedures for handling applications based
on §44(d) in addition to another basis. 806.03(h) Added case cite. 806.03(j)(ii) Revised to clarify policies for handling amendments to add or
substitute a §44 basis between issuance of a notice of allowance (“NOA”) and filing of a statement of use (“SOU”).
806.03(j)(iii) New section - Amending the Basis of a §1(b) Application After
Changes-8 September 2009
SECTION CHANGE
Filing of Statement of Use But Before Approval for Registration.
806.03(l) New section - §66(a) Basis Cannot be Added to §1 or §44 Application.
807.01 Revised to clarify how the Office determines what the mark is in a TEAS application and policy regarding refusal on the ground that spatially separate elements constitute more than one mark.
807.03(c) Incorporated content from Exam Guide 2-08. 807.03(f) Updated to clarify procedures for determining when the mark in
a foreign registration is in standard characters or the equivalent. Added reference to new Appendix E.
807.03(h) Revised to clarify procedure for determining when to require deletion of a standard character claim in a §66(a) application.
807.03(i) Revised to clarify that a “typed” mark is the legal equivalent of a standard character mark.
807.04(b) Added case cite. 807.07 Added discussion of mark descriptions that refer to black,
white, and/or gray. 807.07(a)(ii) Revised to add policy regarding amendment of the color
description without prior approval by the applicant or the applicant’s attorney. Changed sample color location statement.
807.12(a) Revised to clarify the procedure for determining whether the mark on the drawing is a substantially exact representation of the specimen.
807.12(a)(i) New section - Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen.
807.12(a)(ii) New section - Punctuation on the Drawing but not on the Specimen. Incorporates content from former 807.12(a).
807.12(a)(iii) New section - Punctuation on the Specimen but not on the Drawing. Incorporates content from former 807.12(a).
807.12(c) Revised to clarify procedures for handling a notification of correction issued by the International Bureau of the World Intellectual Property Organization (“IB”).
807.12(d) Added case cites. 807.12(e) Added case cite. Language change. 807.13(b) Revised to clarify policy regarding amendment of a §66(a)
application to add a standard character claim. 807.14(c) Former 807.14(c) renumbered as 807.14(d). New section -
Addition or Deletion of Punctuation. 807.14(d) et seq. Former 807.14(d) et seq. renumbered as 807.14(e) et seq.
Incorporated content from former 807.14(c). 807.14(e) Former 807.14(e) renumbered as 807.14(f). Incorporated
Changes-9 September 2009
SECTION CHANGE
content from former 807.14(d). 807.14(f) Incorporated content from former 807.14(e). Added case cites. 807.17 Revised to clarify procedure for handling unacceptable
amendments to drawings. 807.19 Deleted. 808.01 Incorporated change to Rule 2.37 and content from Exam
Guide 2-08. 808.01(a) Deleted former 808.01(a). Incorporated section heading and
content from former 808.01(c). 808.01(b) Deleted former 808.01(b). Incorporated section heading and
content from former 808.01(d). 808.01(c) Renumbered as 808.01(a). 808.01(d) Renumbered as 808.01(b). 808.02 Incorporated change to Rule 2.37 and content from Exam
Guide 2-08. 808.03 Deleted former 808.03. New section - Examination Procedure
for Descriptions. Incorporated content from Exam Guide 2-08. 808.03(a) New section - Accurate and Complete Descriptions.
Incorporated content from Exam Guide 2-08. 808.03(b) New section - No Description in Application. Incorporated
content from Exam Guide 2-08. Added procedure for handling §66(a) applications in which applicant has completed the “Textual Elements of Mark” field.
808.03(c) New section - Accurate But Incomplete Description in Application or Amendment. Incorporated content from Exam Guide 2-08.
808.03(c)(i) New section - Accurate But Incomplete Descriptions in Cases Where a Description is Needed to Clarify the Mark and Should be Printed. Incorporated content from Exam Guide 2-08.
808.03(c)(ii) New section - Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed. Incorporated content from Exam Guide 2-08.
808.03(d) New section - Inaccurate Description in Application or Amendment. Incorporated content from Exam Guide 2-08.
808.03(e) New section - Amending Descriptions. Incorporated content from Exam Guide 2-08.
808.03(f) New section - Updating Design Coding. Incorporated content from Exam Guide 2-08.
809 Incorporated change to Rules 2.32(a)(9) and (10). Moved some content to new 809.01(b)(i) - (b)(iii).
809.01 Former 809.01 renumbered as 809.02. New section - Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration. Revised to clarify guidelines for determining
Changes-10 September 2009
SECTION CHANGE
the translation and transliteration of non-English wording in marks.
809.01(a) New section - Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language.
809.01(b) New section - Limited Exceptions to Rules for Translations. 809.01(b)(i) New section - Foreign Terms Appearing in English Dictionary.
Incorporated content from former 809. 809.01(b)(ii) New section - Foreign Articles or Prepositions Combined with
English Terms. Incorporated content from former 809. 809.01(b)(iii) New section - Words From Dead or Obscure Languages.
Incorporated content from former 809. 809.02 Former 809.02 renumbered as 809.03. Incorporated content
from former 809.01. 809.03 Incorporated content from former 809.02. Revised to clarify
procedure for handling verbose or vague translations, and revised sample translation/transliteration statements.
810 Revised to clarify policy regarding applications downloaded from TEAS or TEAS Plus, printed, and mailed to the Office.
812.01 Revised to clarify procedures for proving ownership of pending applications cited as a potential bar to registration.
813 Consolidated with 1206 et seq. Moved content about when consent is required and when inquiries should be issued to 1206 et seq. Sections 813 et seq. limited to information about statements printed in Official Gazette and on registration certificate. Added discussion of consent to registration of pseudonym, stage name, or nickname.
813.01 New section - Statement Printed in Official Gazette and on Registration Certificate.
813.01(a) New section - Name or Likeness is That of a Living Individual. Provides new examples of acceptable statements indicating that the name or likeness shown in a mark is that of a living individual whose consent is of record, and indicates that such statements will always be printed, even if the name that appears in the mark is that of the applicant.
813.01(b) New section - Name or Likeness is Not That of a Living Individual.
813.01(c) New section - Updating TRAM Database. Incorporated content from former 813.
814 Added case cite. Deleted statement that “material may be shown to the examining attorney without formal filing.”
816.02 Revised to clarify policy regarding effective filing date in §1(b) application after amendment to Supplemental Register. Added case cite.
819.01(o) Language changes. Revised to clarify when an additional fee
Changes-11 September 2009
SECTION CHANGE
is required in TEAS Plus application for failure to indicate whether a name or likeness in a mark is that of a living individual.
819.02(a) Incorporated change to Rule 2.23(a)(2). 901 Language changes. 901.03 Incorporated content from former 903.03. Added case cite. 901.04 Incorporated content from former 903.03. Revised to clarify
when examining attorney should inquire as to whether a mark is in use in commerce.
903.03 Deleted former 903.03. Incorporated content into new 901.03 and 901.04.
903.04 Former 903.04 renumbered as 903.03. New 903.04 incorporates content from former 903.05. Language changes.
903.05 Renumbered as 903.04. 903.06 Renumbered as 903.05. 903.06(a) Incorporated content from former 903.07(a). 903.07 Renumbered as 903.06. 903.08 Renumbered as 903.07. 903.09 Renumbered as 903.08. 904 Incorporated content from former 904.01. 904.01 Moved content to new 904. 904.03(a) Revised discussion of “temporary” specimens. Added case
cite. 904.03(g) Revised to clarify appropriate evidence of point-of-sale
presentations. 904.03(i) Revised to clarify policy regarding the determination of whether
a website page constitutes a “display associated with the goods.”
904.03(l) New section - Specimens for Motion Marks. 904.03(m) New section - Specimens for Scent and Flavor Marks. 904.04(a) Added case cite. 904.07(a) Revised to clarify procedures followed when the mark on a
substitute specimen does not agree with the mark on the drawing.
904.07(b) Added case cites. Revised to clarify procedures followed when the mark on a substitute specimen does not agree with the mark on the drawing.
906.02 Added case cite. 1003.04 Moved content to new 1003.04(a) and (c). 1003.04(a) New section - Applications Based Solely on Section 44.
Incorporated content from former 1003.04. 1003.04(b) New section - Multiple-Basis Applications. 1003.04(c) New section - Periodic Inquiries Issued as to Status of Foreign
Application. Incorporated content from former 1003.04.
Changes-12 September 2009
SECTION CHANGE
1004.01(a) Revised to clarify policy regarding photocopies of foreign intellectual property office’s publications or website printouts.
1005 Language change to clarify §44 ownership requirement (deleted reference to “sole basis”).
1102.03 Revised to clarify procedures followed after change of effective filing date due to amendment of §1(b) application to Supplemental Register. Added case cite.
1104.01(a) Revised to clarify review procedures regarding determination of whether an amendment to allege use (“AAU”) was filed by the owner.
1104.06 Revised to clarify procedures for processing AAU received before application is assigned to examining attorney.
1104.09(a) Revised to clarify policy and procedures for handling AAU filed by someone other than the owner of record.
1104.11 Revised to correct an inconsistency with 1104.09(a). 1106.01 Language changes. 1106.02 Added case cites. Revised to clarify Office’s authority to
correct errors after issuance of NOA. 1106.03 Revised to clarify policy regarding refund of fees after
cancellation of NOA, and to add internal procedures for requesting cancellation of NOA.
1108.02(a) Revised to clarify policy and procedures for handling extension request filed by someone other than the owner of record.
1108.02(c) Incorporated change to Rules 2.89(a)(2) and (b)(2). 1108.02(d) Language changes. 1108.02(f) Language changes. 1108.03 Language changes. 1108.03(a) Language changes. 1109.02 Revised to incorporate new procedures for processing SOU
filed by someone other than the owner of record. 1109.05 Incorporated amendment to Rule 2.88(d). 1109.08 Changed heading. Moved discussion of “clear error” to new
706.01. Revised to clarify procedure for issuing new refusals or requirements during examination of an SOU.
1109.09(a) Incorporated amendment of Rule 2.88(b)(1)(ii). 1109.10 Revised to incorporate new procedures for processing SOU
filed by someone other than the owner of record. 1109.13 Incorporated amendment to Rule 2.88(i)(2) regarding omission
of goods/services from SOU. 1109.15 Incorporated change to Rule 2.88(b)(3). Revised to clarify
procedures for handling fee deficiencies in multiple-class applications.
1109.16(a) Language changes. 1109.18 Revised to clarify internal procedure for approving SOU.
Changes-13 September 2009
SECTION CHANGE
1110 et seq. Reorganized and rewritten to incorporate changes to Rule 2.87.
1110 Moved content to new 1110.01 1110.01 Renumbered as 1110.03. Incorporated changes to Rule 2.87. 1110.02 Incorporated changes to Rule 2.87. 1110.03 Renumbered as 1110.04. Incorporated changes to Rule 2.87. 1110.04 Former 1110.04 renumbered as 1110.07. New section - Form
and processing of Request to Divide. 1110.05 Former 1110.05 renumbered as 1110.08. New section -
Outstanding Time Periods Apply to Newly Created Applications.
1110.06 Former 1110.06 renumbered as 1110.09. New section - Signature of Request to Divide.
1110.07 Renumbered as 1110.10. 1110.08 Renumbered as 1110.11. 1110.09 Renumbered as 1110.12. 1201.02(c) Revised to clarify “minor clerical error” in an applicant’s name. 1201.03(f) Added case cite. 1202 Revised to clarify policy regarding failure to function refusal
absent a specimen. Added case cite. 1202.01 Added case cite. 1202.02 Revised to incorporate former 1202.02(c), and to clarify
requirements for consideration of sufficiency of §2(f) evidence. Added case cite.
1202.02(a)(iv) Added case cites. 1202.02(a)(v) Added case cite. 1202.02(a)(v)(A) Added case cite. 1202.02(a)(v)(B) Added case cite. 1202.02(a)(v)(C) Added case cite. 1202.02(a)(v)(D) Added case cite. 1202.02(a)(viii) Added case cites. 1202.02(b)(i) Added case cite. 1202.02(b)(ii) Revised to clarify policy regarding issuance of
nondistinctiveness refusal absent a specimen. Added case cite.
1202.02(c) Former 1202.02(c) deleted. Incorporated content from former 1202.02(d) and separated into sections 1202(c)(i) - (c)(vi).
1202.02(c)(i) New section - Drawings in Trade Dress Applications. 1202.02(c)(ii) New section - Description Required. 1202.02(c)(iii) New section - Disclaimers of Unregistrable Elements of Trade
Dress Marks. 1202.02(c)(iv) New section - Three-Dimensional Marks. 1202.02(d) Former 1202.02(d) renumbered as 1202.02(c). New
1202.02(d) incorporates content from former 1202.02(e).
Changes-14 September 2009
SECTION CHANGE
1202.02(e) Former 1202.02(e) renumbered as 1202.02(d). New 1202.02(e) incorporates content from former 1202.02(f). Revised to clarify policy regarding issuance of nondistinctiveness refusal absent a specimen. Added case cite.
1202.02(f) Deleted section number. Moved content to new 1202.02(e). 1202.03(c) Language change. 1202.03(e) Revised to clarify policy regarding issuance of ornamentation
refusal absent a specimen. 1202.05(a) Revised to clarify standard for establishing acquired
distinctiveness. 1202.05(b) Added case cite. 1202.05(d)(iii) Former 1202.05(d)(iii) incorporated into 1202.05(d)(iv). New
section - Amendment of Drawings of Color Marks. 1202.05(d)(iv) Incorporated content from former 1202.05(d)(iii). 1202.06 Added case cite. 1202.06(a) Added case cite and explanation. 1202.06(c) Revised to clarify policy regarding issuance of a “goods in
trade” refusal absent a specimen. 1202.07(a) Revised to clarify policy regarding syndication statement. 1202.07(a)(iii) Revised to clarify policy regarding issuance of a
column/section refusal absent a specimen. 1202.08(a) Added case cite. 1202.08(b) Revised to clarify standard for what constitutes a new work. 1202.08(f) Changed heading. Revised to clarify policy regarding issuance
of a title-of-a-single-work refusal absent a specimen. 1202.09(a)(iii) Revised to clarify policy regarding issuance of an
author/performing artist name refusal absent a specimen. 1202.10(a) New section - Names and Designs of Characters in Creative
Works in §1(b), §44, or §66(a) Applications. Incorporated content from former 1202.10. Revised to clarify policy regarding issuance of a character name/design refusal absent a specimen.
1202.13 Revised to clarify field for setting forth description of non-visual mark in a TEAS application.
1202.15 Added case cites. Revised to clarify standard for distinctiveness and procedures for submitting reproductions and specimens in sound mark applications.
1203.01 Added case cite. 1203.02 Moved some content to new 1203.02(a), (b), and (f)(ii). 1203.02(a) Former 1203.02(a) renumbered as 1203.02(c), with some
content moved to new 1203.02(d). New section - Types of Deceptive Marks. Incorporated content from Exam Guide 01- 09 and former 1203.02.
Changes-15 September 2009
SECTION CHANGE
1203.02(b) Former 1203.02(b) renumbered as 1203.02(g). New section - Elements of a §2(a) Deceptiveness Refusal. Incorporated content from Exam Guide 01-09 and former 1203.02.
1203.02(c) Incorporated former 1203.02(a). 1203.02(d) New section - Determining Materiality. Incorporated content
from Exam Guide 01-09 and former 1203.02(a). 1203.02(d)(i) New section - Objective Criteria. Incorporated content from
Exam Guide 01-09. 1203.02(d)(ii) New section - Mere Personal Preference. Incorporated content
from Exam Guide 01-09. 1203.02(e) New section - Procedures for Issuing §2(a) Deceptive
Refusals. Incorporated content from Exam Guide 01-09. 1203.02(e)(i) New section - When the Mark is Clearly Misdescriptive.
Incorporated content from Exam Guide 01-09. 1203.02(e)(ii) New section - When It is Not Clear Whether the Mark is
Misdescriptive. Incorporated content from Exam Guide 01-09. 1203.02(f) New section heading - Responding to a §2(a) Deceptiveness
Refusal. 1203.02(f)(i) New section - Amending the Identification of Goods or
Services. Incorporated content from Exam Guide 01-09. 1203.02(f)(ii) New section - Other Arguments. Incorporated content from
Exam Guide 01-09. 1203.02(g) New section number. Incorporated content from former
1203.02(b). 1203.03 Added case cite. 1203.03(a) Added case cites. 1203.03(d) Added case cites. 1203.03(e) Added case cites. Revised to clarify the requirement that the
proposed mark be recognized as pointing uniquely and unmistakably to a person or institution, and the treatment of marks comprising the name of a deceased natural person.
1203.03(f) Added case cites. 1204 Revised to incorporate Exam Guide 2-07. 1204.01 New section - Flags and Simulations of Flags. 1204.01(a) New section - Flags and Simulations of Flags are Refused. 1204.01(b) New section - Stylized Flag Designs are not Refused under
§2(b). 1204.01(c) New section - Caselaw Interpreting "Simulation of Flag.” 1204.01(d) New section - Description of the Mark. 1204.01(e) New section - Flags Not Presently Used as National Flags. 1204.02 New section - Government Insignia. 1204.02(a) New section - Designs that are Insignia Under §2(b) Must Be
Refused. 1204.02(b) New section - Examples of Insignia That Should Be Refused.
Changes-16 September 2009
SECTION CHANGE
1204.02(c) New section - Examples of Designs That Should Not Be Refused.
1204.02(d) New section - Caselaw Interpreting Insignia Under §2(b). 1204.03 New section - Other Refusals May be Appropriate. 1204.04 New section - Responding to §2(b) Refusal. 1204.04(a) New section - Absolute Bar to Registration. 1204.04(b) New section - Deletion of §2(b) Matter. 1204.04(b)(i) New section - Examples of Matter That May and May Not Be
Deleted. 1206 Consolidated with new 813. Revised to clarify when consent is
required and when inquiries should be issued 1206.01 Revised to clarify circumstances in which §2(c) applies. 1206.02 New section - Connection With Goods or Services.
Incorporates content from former 1206.02. Other content moved to new 1206.01 and 1206.05.
1206.03 Former 1206.03 renumbered as 1206.04. New section - When Inquiry is Required.
1206.03(a) Renumbered as 1206.04(a). Deleted section number. 1206.03(b) Incorporated former 1206.03(b) into new 1206.04(b)-(d).
Section number deleted. 1206.04 New section number - incorporated content from former
1206.03. 1206.04(a) New section number - incorporated content from former
1206.03(a). Revised to clarify procedure for minors. 1206.04(b) New section - Consent May Be Presumed From Signature of
Application. Incorporated content from former 1206.03(b). 1206.04(c) New section - New Consent Not Required if Consent is of
Record in Valid Registration Owned by Applicant. Incorporated content from former 1206.03(b).
1206.04(d) New section number. Incorporated heading and content from former 1206.03(b).
1206.05 New section - Names and Likenesses That Do Not Identify a Particular Living Individual. Incorporated content moved from previously existing sections. Revised to clarify when statement should be printed.
1207.01(a)(i) Added case cites. 1207.01(a)(iii) Added case cite. 1207.01(a)(v) Added case cite. 1207.01(b)(iii) Added case cites. 1207.01(b)(vi) Revised to incorporate content from Exam Guide 1-08. 1207.01(b)(vi)(A) New section - Background. Incorporated content from Exam
Guide 1-08 and new case cite. 1207.01(b)(vi)(B) New section - When an Ordinary American Purchaser Would
“Stop and Translate.” Incorporated content from Exam Guide
Changes-17 September 2009
SECTION CHANGE
1-08. 1207.01(b)(vi)(C) New section - Likelihood of Confusion Factors Still Apply When
Assessing Whether Marks are Confusingly Similar. Incorporated content from Exam Guide 1-08.
1207.01(b)(ix) Added case cite. 1207.01(c)(iii) Added case cite. 1207.01(d)(viii) Revised to clarify proper person to sign consent agreement. 1207.01(d)(ix) Revised to clarify examining attorney’s role in cases involving
the issue of the fame of a mark. 1207.01(d)(xi) New section - Family of Marks. 1207.04(b) Revised to incorporate change to Rule 2.99(g), providing that
applications based solely on §44 or §66(a) are not subject to concurrent use registration proceedings.
1208.01(c) Revised to clarify procedure followed when the effective filing date changes.
1209.01(c) Revised to clarify policy regarding disclaimer as to marks comprised entirely of generic wording.
1209.01(c)(iii) Added case cites. 1209.02(a) New section - Descriptive Marks - Advisory Statement That
Mark Appears to Be Generic. Incorporated content from former 1209.02.
1209.02(a)(i) New section - Amendment to Supplemental Register in Response to Office Action. Incorporated content from former 1209.02.
1209.02(a)(ii) New section - Assertion of §2(f) in Response to Office Action. Incorporated content from former 1209.02. Revised to clarify procedure for examining §2(f) claims. Added case cite.
1209.02(b) New section - Descriptive and Possibly Generic Marks - Assertion of §2(f) in Application.
1209.03(d) Added case cites. 1209.03(g) Changed heading. Added case cites. Incorporated content
from former 1207.01(b)(vi)(A). 1209.03(j) Added case cites. 1209.03(m) Revised to clarify the nature and significance of top level
Internet domain names (“TLDs”). Added case cite. 1209.03(o) Changed title. Added discussion of descriptive significance of
“GLOBAL” and “WORLDWIDE.” 1209.04 Incorporated content from Exam Guide 01-09. 1210.01(b) Revised to update standard for materiality. Added case cite. 1210.01(c) Revised to update standard for materiality. Added case cite. 1210.02(a) Added case cite. 1210.02(b) Added case cite. 1210.02(c)(ii) Added case cite. 1210.03 Added case cites. Revised to clarify policy and procedures
Changes-18 September 2009
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regarding issuance of alternative refusals. 1210.04 Added case cite. 1210.04(a) Added case cite. 1210.05(b) Former 1210.05(b) renumbered as 1210.05(c). New section -
Elements of a §2(e)(3) Refusal. Incorporated content from Exam Guide 02-09.
1210.05(b)(i) Section number deleted. Moved content to new 1210.05(c)(i) and 1210.05(e).
1210.05(b)(ii) Section number deleted. Moved content to new 1210.05(c)(ii). 1210.05(c) New section - Determining Materiality. Incorporated former
1210.05(b). 1210.05(c)(i) New section - Materiality in Cases Involving Goods.
Incorporated former 1210.05(b)(i) and content from Exam Guide 02-09.
1210.05(c)(ii) New section - Materiality in Cases Involving Services. Incorporated former 1210.05(b)(ii) and content from Exam Guide 02-09.
1210.05(d) New section - Procedures for Issuing Geographically Deceptive Refusals. Incorporated content from Exam Guide 02-09.
1210.05(d)(i) New section - Neither Applicant Nor Goods/Services Come from the Place Named. Incorporated content from Exam Guide 02-09.
1210.05(d)(ii) New section - It is Not Clear Whether the Goods/Services Originate From the Place Named. Incorporated content from Exam Guide 02-09.
1210.05(e) New section - Geographically Deceptive Matter: Case References. Incorporated content from former 1210.05(b)(i) and added new case cites.
1210.06 Incorporated content from Exam Guide 02-09. 1210.06(a) Incorporated content from Exam Guide 02-09. 1210.06(b) Incorporated content from Exam Guide 02-09. 1210.07(a) Revised to clarify procedures for refusal of applications on
Supplemental Register claiming use prior to December 8, 1993.
1210.07(b) Revised to clarify procedures for refusal of applications asserting §2(f) and claiming use prior to December 8, 1993.
1210.10 New section - Doctrine of Foreign Equivalents. 1211.01 Revised to clarify policy and procedure for surname refusals.
Added case cite. 1211.01(a)(v) Added case cite. 1211.01(a)(vi) Revised to clarify “look and feel” standard for surnames.
Added case cite. 1211.01(a)(vii) Added case cite. 1211.01(b)(iii) Revised to update analysis regarding surnames combined with
Changes-19 September 2009
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initials. Added case cites. 1211.01(b)(vi) Added case cite. 1211.01(b)(vii) Language change. 1211.01(b)(viii) New section - Surname Combined With Legal or Familial Entity
Designation. 1211.02(b)(iii) Former 1211.02(b)(iii) renumbered as 1211.02(b)(iv). New
section -- U.S. Census Database Evidence. 1211.02(b)(iv) - (vii)
Former sections 1211.02(b)(iii) - (vi) renumbered as 1211.02(b)(iv) - (vii).
1212.02(c) Revised to clarify procedure for examining claims of §2(f) in the alternative.
1212.02(d) Revised to clarify procedures for handling unnecessary §2(f) claim.
1212.02(f) Changed heading. Moved content to new 1212.02(f)(i). 1212.02(f)(i) New section - Section 2(f) Claim as to a Portion of the Mark.
Incorporated content from former 1212.02(f). 1212.02(f)(ii) New section - Section 2(f) Claim Restricted to Particular
Goods/Services/Classes. 1212.02(h) Language change. 1212.02(i) Revised to clarify procedure for examining claim of §2(f) in the
alternative. New caselaw incorporated. 1212.04(b) Revised to clarify procedure for examining claim of §2(f) in part
based on a previously registered mark. 1212.05(a) Added case cites. 1212.05(b) Added case cites. 1212.06 Added case cite. 1212.06(a) Changed heading. Revised to clarify nature of use required to
support a §2(f) claim. 1212.06(b) Added case cites. 1212.06(d) Added case cite. 1213.01(c) Revised to clarify procedures for handling unnecessary
disclaimers. Added case cite. 1213.03(c) Added sample disclaimer of design. 1213.03(d) Added case cite. Added discussion of disclaimer of familial
business structure of an entity. 1213.05 Added case cite. 1213.05(a) Revised to clarify proper form for disclaimer of compound
word. 1213.05(c) Added case cite. 1213.05(e) Added case cite. 1213.06 Added case cite. Revised to clarify policy regarding disclaimer
of phonetic equivalent of generic wording. 1213.08(a)(i) Revised to clarify the proper format for disclaimer of non-
adjacent components of a mark, or adjacent components that
Changes-20 September 2009
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do not form a unitary expression. 1213.08(c) Added case cite. Revised to clarify policy regarding disclaimer
of misspelled words. 1213.08(b) Revised to clarify propriety of separate disclaimer of adjacent
components of a mark. 1213.08(d) Revised to clarify the proper form for disclaimer of non-Latin
characters. 1214.01 Added case cite. Revised to clarify treatment of phantom
elements in mark. 1215.02(a) Added case cite. 1215.03 Language change. 1215.04 Language change. Added case cite. 1215.05 Language change. Added case cite. 1215.07 Language change. 1215.08 Added case cites. 1215.08(a) Revised to clarify treatment of source-identifying TLDs. 1215.09 Added case cite. 1215.10 Language change. 1217 Added case cites. Revised to clarify procedures for issuing
refusals based on res judicata, collateral estoppel, or stare decisis.
1300 Changed title. 1301.01(a)(iii) Language changes. 1301.01(b)(ii) Revised to clarify requirements for identification of warranty
services. Added case cite. 1301.02 Language change. 1301.02(f) Added case cite. 1301.03(a) Added case cite. 1301.04 Language change. 1301.04(a) Added case cites. 1301.04(b) Added case cite. 1304.08 Changed heading. Incorporated content from former 1304.09. 1304.08(a)(i) Incorporated content from former 1304.08(c). 1304.08(c) Incorporated content from former 1304.09(a). 1304.09 Deleted. Moved content to new 1304.08. 1304.09(a) Renumbered as 1304.08(c). 1304.09(b) Renumbered as 1304.08(d). 1304.09(c) Renumbered as 1304.08(e). 1304.09(d) Renumbered as 1304.08(f). 1304.09(d)(i) Renumbered as 1304.08(f)(i). 1304.09(d)(ii) Renumbered as 1304.08(f)(ii). 1304.09(d)(iii) Renumbered as 1304.08(f)(iii). 1306.02(c) Language changes.
Changes-21 September 2009
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1306.05(a) Revised to clarify policy and procedure for seeking registration of mark as both certification mark and as trademark or service mark for goods or services other than those to which the certification mark is applied.
1306.06(a) Deleted heading. Incorporated content in 1306.06. 1306.06(b) Renumbered as 1306.06(a). 1306.06(c) Renumbered as 1306.06(b). Deleted first and last paragraphs
of former section. 1306.06(d) Renumbered as 1306.06(c). 1306.06(e) Renumbered as 1306.06(d). 1306.06(f) Renumbered as 1306.06(e). Revised to clarify standard for
identifying goods/services in certification mark application. 1306.06(g) Renumbered as 1306.06(f). 1306.06(g)(i) Renumbered as 1306.06(f)(i). 1306.06(g)(ii) Renumbered as 1306.06(f)(ii). 1306.06(g)(iii) Renumbered as 1306.06(f)(iii). 1306.06(g)(iv) Renumbered as 1306.06(f)(iv). 1306.06(g)(v) Renumbered as 1306.06(f)(v). 1306.06(g)(vi) Renumbered as 1306.06(f)(vi). 1306.08 Added reference to Rule 2.61(b). 1401.03(b) Revised to clarify procedure followed when Pre-Examination
section designates an incorrect class number. 1401.03(d) Incorporated amendment to Rule 2.85(d). 1401.05(a) New section - Identification and Classification of Kits and Gift
Baskets. 1401.05(b) New section - Medical vs. Non-Medical Goods. 1401.10(b) Revised to clarify procedure for classifying items made of
precious metal. 1401.11 Incorporated amendment to Rule 2.85(e)(2). 1401.12 New section - Effective Date of Changes to USPTO ID Manual. 1402.01 Revised to clarify policy regarding wording that identifies items
in more than one class. Added case cite. 1402.01(a) Revised to clarify guidelines for acceptable identifications of
goods or services. 1402.01(b) Language change. 1402.01(d) Revised to clarify how Office determines which goods/services
are part of the identification. 1402.02 Revised to clarify how Office determines which goods/services
are part of the identification. Updated case cites. 1402.03 Added examples of indefinite terms. Added case cite. 1402.03(a) Revised to clarify definite terminology that can be used to
restrict an identification. 1402.05 Incorporated new caselaw. 1402.07(c) Revised to clarify policy regarding amendment of definite
Changes-22 September 2009
SECTION CHANGE
identifications comprising goods that are available in more than one medium.
1402.07(d) Revised to clarify procedures for further amendments to wording that has been acceptably amended.
1402.08 Revised to clarify procedures for moving goods/services between companion applications.
1402.11 Revised to clarify that activities set forth in identification of services must constitute registrable services.
1402.11(e) Revised to clarify and provide examples of acceptable identifications of consulting services.
1402.11(f) New section - Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Items.
1402.11(g) New section - Recorded Entertainment Services. 1402.11(h) New section - Identification of “Bonus Programs.” 1402.11(i) New section - Recognition of Industry Terms. 1402.11(j) New section - Issuing Awards. 1402.15 New section - Procedures for Processing Unacceptable
Amendments to Identifications. 1403.01 Revised to clarify procedure for multiple-class applications.
Added case cite. 1403.02(c) Revised to clarify applicable fee for adding classes. 1403.05 Changed heading. 1403.05(a) Renumbered as 1403.06. 1403.05(b) Renumbered as 1403.07. 1501 Moved some content to 1501.02(a). Incorporated content from
1501.02. 1501.02 Changed section heading. Moved content to new 1501.02(b). 1501.02(a) Old 1501.02(a) renumbered as 1501.02(c). New section -
Applicant’s Appeal Brief. Incorporated content from former 1501. Revised to clarify effect of filing of a request for reconsideration.
1501.02(b) New section - Examining Attorney’s Appeal Brief. Incorporated content from former 1501.02.
1501.04 Revised to clarify processing of deficient appeal fees. Incorporated changes to Rules 2.85 and 2.141.
1501.07 Revised to clarify deadline and procedure for filing examining attorneys’ request for reconsideration.
1502.01 Changed heading. 1504.01 Revised to clarify time period during which an examining
attorney cannot issue an Office action because mark cannot be withdrawn from its scheduled publication in the Official Gazette.
1504.04 Revised to clarify the standard for issuing new refusals or requirements after publication.
Changes-23 September 2009
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1505.02(e) Revised to clarify the procedures for amendments to disclaimers after publication.
1505.03 New section - Republication for Opposition. 1505.03(a) New section - When Republication is Required. 1505.03(b) New section - When Republication is Not Required. 1601.01(a) Updated information about appearance of registration
certificate. 1603 Deleted reference to type of commerce. Incorporated change
to Rule 2.153. 1604.09(c) Language changes. 1604.11 Added example of nonuse that is not excusable. 1604.14 Added discussion of proper party to sign designation of
domestic representative. 1604.16 Incorporated change to Rule 2.163(c). 1604.17(a) Incorporated change to Rule 2.163(c). 1605.04 Incorporated change to Rule 2.167(a). 1606.12 Incorporated change to Rule 2.184(b)(1). 1606.13(a) Incorporated change to Rule 2.184(b)(1). 1609.01(a) Changed heading. Revised to clarify policy on amendment of
registered extensions of protection under §7 of the Trademark Act.
1609.01(b) Incorporated change to Rule 2.173(b)(2). Revised to clarify proper person to sign request for §7 amendment.
1609.02(c) Incorporated change to Rule 2.173(b)(2). Revised to clarify proper person to sign requests for §7 amendment, and declarations supporting use of substitute specimen.
1609.02(d) Former 1609.02(d) renumbered as 1609.02(e). New section - Conforming Amendments. Incorporates change to Rule 2.173(f).
1609.02(e) Renumbered as 1609.02(f). 1609.02(f) Renumbered as 1609.02(g). 1609.03 Revised to clarify policy on amendment or correction of
registered extensions of protection under §7. 1609.04 Revised to incorporate change to Rule 2.85(e)(3) relating to
reclassification of goods or services from United States classes to international classes, and to indicate that holder of registered extension of protection may surrender class(es).
1609.05 Incorporated change to Rule 2.173(g). 1609.10(b) Incorporated change to Rule 2.175(b)(2). Revised to clarify
proper person to sign request for correction under §7, and policy on correction of registered extension of protection under §7.
1611 Revised to clarify procedure for updating USPTO’s automated records after expiration of the grace period, and proper
Changes-24 September 2009
SECTION CHANGE
signatory for requests for expedited cancellation or expiration. 1613 Revised to correct inconsistency in setting forth grace period
for filing a ten-year §71 affidavit. 1615.01 Incorporated change to Rule 2.171(b)(1). Revised to clarify
proper signatory for request to divide, and procedures for processing divided registration. Added statement encouraging request to divide when ownership of a registration has changed with respect to some goods/services.
1615.02 Incorporated changes to Rule 2.171(b)(2). Revised to clarify procedures for processing registered extension of protection after ownership of the international registration changes with respect to some but not all of the goods or services.
1702 Incorporated changes to Rule 2.146. 1705.04 Language changes. 1705.07 Incorporated change to Rule 2.146(c). Revised to clarify
proper person to sign petition to Director. 1706 Language change. 1707 Language change. 1709 Language change. Deleted list of petitions that have been
delegated. 1710 Revised to clarify proper party to file request to make
application “special.” 1710.03 New section - Submitting Petition. 1712.02 Replaced italicized headings with new subsections (a) and (b). 1712.02(a) New section number. 1712.02(b) New section number. Revised to clarify policy regarding
petition to accept premature affidavit or renewal application. 1713 Moved content to new 1713.01 and 1713.02. 1713.01 New section - Standard of Review. Incorporated content from
former 1713. 1713.02 New section - Nonreceipt of Action Granting Additional Time to
Perfect Response. Incorporated content from former 1713. 1714.01 Revised to clarify procedure for handling deficient petitions that
are automatically granted through the electronic system. 1714.01(a) Moved content to new subsections 1714.01(a)(i) and (ii). 1714.01(a)(i) New section - Response to Nonfinal Office Action.
Incorporated content from former 1714.01(a). 1714.01(a)(ii) New section - Response to Final Office Action. Incorporated
content from former 1714.01(a). Revised to clarify procedures for petitions to revive and requests for reconsideration after final action.
1714.01(b) Revised to clarify requirements and fees for petition to revive application abandoned for failure to respond to NOA. Incorporated change to Rule 2.87(e)(3).
Changes-25 September 2009
SECTION CHANGE
1714.01(b)(i) Revised to clarify procedures for filing a petition to revive, extension request, and SOU through TEAS.
1714.01(f)(ii) Revised to clarify situations where the unintentional delay standard does not apply, and to incorporate change to Rule 2.88(i)(2) regarding goods/services omitted from SOU.
1715 Rewritten and reorganized to incorporate Exam Guide 4-08, which changed standard of review for letter of protest filed before publication.
1715.01 Changed section heading. 1715.01(a) Revised to clarify policy regarding letters of protest requesting
suspension pending civil litigation, and proper subject matter for letters of protest.
1715.02 Moved content to new 1715.02(a) and (b). 1715.02(a) New section - Standard of Review for Letter of Protest Filed
Before Publication. Incorporated content from former 1715.02 and Exam Guide 4-08, and clarified standard of review for letter of protest filed before publication but reviewed after publication.
1715.02(b) New section - Action by Examining Attorney Before Publication. Incorporated content from former 1715.02 and Exam Guide 4-08, and clarified procedures for processing letters of protest filed before publication but reviewed after publication.
1715.03 Moved content to sections 1715.03(a) - (d) and incorporated content from Exam Guide 4-08.
1715.03(a) Former 1715.03(a) renumbered as 1715.03(b). New section - Standard of Review for Letters of Protest Filed After Publication. Incorporated content from former 1715.03 and Exam Guide 4-08.
1715.03(b) Renumbered as 1715.03(e). 1715.03(c) New section - Jurisdiction of Application When a Letter of
Protest Is Granted After Publication. Incorporated content from former 1715.03 and Exam Guide 4-08.
1715.03(d) New section - Action by Examining Attorney After Publication. Incorporated content from former 1715.03 and Exam Guide 4- 08.
1715.04 Former 1715.04 renumbered 1715.04(b). New section - Information for Parties Filing Letter of Protest. Incorporated content from Exam Guide 4-08.
1715.04(a) New section - Submitting Letters of Protest. Incorporated content from Exam Guide 4-08.
1715.04(b) Revised to clarify procedure for monitoring action taken regarding letter of protest and policy regarding filing of second letter of protest.
Changes-26 September 2009
SECTION CHANGE
1715.05 Former section deleted. 1715.07 Renumbered as 1715.05. 1902.02(a) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to the Madrid Processing Unit (“MPU”).
1902.02(c) Incorporated amendment to Rule 7.11(a)(2). 1902.02(g)(ii) Revised to clarify standard for reclassifying goods/services. 1902.02(i) Revised to incorporate changes in procedures for payment of
international fees to the IB. 1902.03(a) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to the MPU. 1902.07(c)(i) Revised to clarify procedure regarding response to IB notices
of irregularities in classification. 1902.07(c)(ii) Language change. 1902.07(d) Revised to clarify procedure regarding international applicant’s
failure to remedy irregularities within three months of the date of the IB notice of irregularity.
1902.07(f) Revised to clarify procedure regarding late response to IB notice of irregularity. Updated information about hours for hand delivery to TAC, and procedure for mailing documents to MPU.
1902.08(b) Updated information about hours for hand delivery to TAC, and procedure for mailing documents to MPU.
1902.08(c) Revised to incorporate changes in IB procedures for payment of international fees.
1902.10 Revised to clarify when transformation may be requested. 1903.02 Revised to incorporate changes in IB procedures for payment
of international fees. IB no longer accepts banker’s checks. 1904.01(a) Revised to clarify that §1 and §44 applications cannot be
amended to add or substitute §66(a) basis. 1904.02(b) Changed heading. Moved some content to new 1904.02(c).
Incorporated amendments to Rule 2.85(d). 1904.02(c) Former 1904.02(c) renumbered as 1904.02(f). New section -
Examination of Identification of Goods/Services in §66(a) Applications. Incorporated content from Exam Guide 3-08 and former 1904.02(b).
1904.02(c)(i) New section - Acceptable Identifications of Goods/Services. Incorporated content from Exam Guide 3-08.
1904.02(c)(ii) New section - Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class. Incorporated content from Exam Guide 3-08.
1904.02(c)(iii) New section - Indefinite Identification of Goods/Services that Does not Include any Goods/Services Within the Class. Incorporated content from Exam Guide 3-08.
Changes-27 September 2009
SECTION CHANGE
1904.02(c)(iv) New section - Examination of Proposed Amendments and Issuance of Final Requirements For an Acceptable Identification. Incorporated content from Exam Guide 3-08.
1904.02(c)(v) New section - Effect of Indicated Classes - No Precedential Value on Later-Filed Applications. Incorporated content from Exam Guide 3-08.
1904.02(d) Former 1904.02(d) renumbered as 1904.02(g). New section - Certification and Collective Marks.
1904.02(e) Former 1904.02(e) renumbered as 1904.02(h). New section - Corrections and Limitations to the International Registration. Incorporated content from Exam Guide 3-08.
1904.02(e)(i) New section - Corrections. Incorporated content from Exam Guide 3-08.
1904.02(e)(ii) New section - Limitations. Incorporated content from Exam Guide 3-08.
1904.02(e)(iii) New section - Limitations vs. Amendments. Incorporated content from Exam Guide 3-08.
1904.02(f) Renumbered as 1904.02(i). 1904.02(g) Renumbered as 1904.02(j). 1904.02(h) Renumbered as 1904.02(k). 1904.02(i) Renumbered as 1904.02(l). 1904.03(f) Revised to clarify procedure for examining IB notices of
correction. 1904.09 Language changes. 1904.09(a) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to MPU. 1904.09(b) Language change. Added requirement for verification of
transformed application. 1904.11 Revised to clarify the period of continuous use on which
affidavit of incontestability may be based registered extension of protection.
1904.13 Changed heading. Revised to clarify policy on amendment or correction of registered extensions of protection under §7.
1904.13(a) New section - Limited Amendments to Registered Extension of Protection. Clarifies policy on amendment of registered extensions of protection under §7.
1904.13(b) New section - Corrections to Registered Extensions of Protection. Clarifies policy on correction of registered extensions of protection under §7.
1906.01(a) Added information about IB form. 1906.01(a)(i) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to MPU. Revised to clarify the circumstance in which an assignee may petition the Director to waive Rules 7.23(a)(6)-(7).
Changes-28 September 2009
SECTION CHANGE
1906.01(a)(ii) Updated information about payment of international fees to IB. 1906.01(a)(iv) Incorporated changes to Rules 2.87(g) and 2.171(b)(2). 1906.01(b) Updated information about hours for hand delivery to TAC, and
procedure for mailing documents to MPU. 1906.01(c) Added information about IB form. 1906.01(d) Added information about IB form. Appendix B Updated information about renewal terms in foreign countries. Appendix D Added new entity types that may be accepted without question. Appendix E New appendix - Countries That Have Standard Character
Marks or the Equivalent. Decisions Deleted. Case names can be searched on the TMEP page at
www.uspto.gov.
Changes-29 September 2009
Chapter 100 General Information
101 Trademark Statute and Rules
102 United States Patent and Trademark Office World Wide Website
103 Trademark Forms
104 Trademark Searching
105 General Information Booklet Concerning Trademarks
106 The Official Gazette
107 Trademark Manuals
108 Status Inquiries
108.01 Internet Information
108.02 Personal Telephone Assistance
108.03 Due Diligence: Duty to Monitor Status
109 Access to Records
109.01 Electronic Image Records
109.02 Paper Files
109.03 Making Copies of Materials in Records
110 Decisions Available to the Public
111 Requests for Copies of Trademark Documents
112 Patent and Trademark Depository Libraries
101 Trademark Statute and Rules
The federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §§1051 et seq. (also known as the Lanham Act), and 37 C.F.R. Parts 2, 3, 6, 7, 10, and 11. The text of the Act and rules can be accessed and downloaded from the United States Patent and Trademark Office (“USPTO”) website at http://www.uspto.gov.
100-1 September 2009
102 United States Patent and Trademark Office World Wide Website
The USPTO website http://www.uspto.gov provides access to a wide variety of information about patents and trademarks, and offers electronic filing of trademark documents.
The Trademark Electronic Business Center on the USPTO website contains all the information needed for the entire registration process. A customer may search the trademark database for conflicting marks using the Trademark Electronic Search System (“TESS”), file applications and other trademark documents online using the Trademark Electronic Application System (“TEAS”), check the status of applications and registrations through the Trademark Applications and Registrations Retrieval (“TARR”) database, or view and print images of the contents of trademark application and registration records through the Trademark Document Retrieval (“TDR”) portal at http://www.uspto.gov. See TMEP §104 regarding TESS, TMEP §108.01 regarding TARR, TMEP §109.01 regarding electronic image records, and TMEP §301 for further information about electronic filing.
Trademark information available for downloading from the USPTO website includes the trademark statute and rules, Trademark Manual of Examining Procedure, Trademark Trial and Appeal Board Manual of Procedure, Acceptable Identification of Goods and Services Manual, Federal Register notices, Official Gazette notices, examination guides, and fee schedules.
Certified or uncertified copies of trademark documents can also be purchased over the Internet. See TMEP §111 for further information.
103 Trademark Forms
Trademark documents can be filed electronically through TEAS, on the USPTO website at http://www.uspto.gov/teas/index.html. See TMEP §301 regarding TEAS. Additional forms may be available online at http://www.uspto.gov, or through the Trademark Assistance Center (“TAC”) (see TMEP §108.02).
Requests for recordation of assignments and other documents affecting title to an application or registration can be filed through the Electronic Trademark Assignment System (“ETAS”) at http://etas.uspto.gov.
The Electronic System for Trademark Trials and Appeals (“ESTTA”), at http://estta.uspto.gov/, can be used to file requests for extensions of time to oppose, notices of opposition, petitions to cancel, appeals, motions, briefs, notices of change of address, and other documents in Trademark Trial and Appeal Board (“Board”) proceedings.
100-2 September 2009
104 Trademark Searching
X-Search, the USPTO's computerized search system, contains text and images of registered marks, and marks in pending and abandoned applications. X-Search is used by examining attorneys when searching for conflicting marks during examination.
The public may conduct searches free of charge using TESS, on the USPTO website at http://www.uspto.gov. Like X-Search, TESS provides access to text and images of registered marks and marks in pending and abandoned applications. Additional information, including current status, for pending trademark applications and registered trademarks can be obtained by entering the trademark serial number or registration number in the TARR database. See TMEP §108.01. TESS and TARR are available in Patent and Trademark Depository Libraries (“PTDLs”) (see TMEP §112). X-Search is also available for public use in some of the PTDLs.
The public may also use the X-Search system and the Trademark Reporting and Monitoring (“TRAM”) System without charge in the Public Search Facility, which is located on the first floor of the James Madison Building - East Wing, 600 Dulany Street, Alexandria, Virginia, and is open from 8:00 a.m. to 8:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. The Public Search Facility also contains copies of State emblems and official signs and hallmarks of member countries of the Paris Convention for the Protection of Industrial Property, which are protected under Article 6ter of the Convention (see TMEP §1205.02), and copies of the official insignia of state and federally recognized Native American tribes.
If a mark includes a design element, it can be searched by using a design code. To locate the proper design code(s), the public can use the Design Search Code Manual on the USPTO website at http://www.uspto.gov.
For some marks, the USPTO has added a pseudo mark to the search data to assist users in identifying relevant marks related to their search term. The “pseudo mark” field, which is not displayed, often contains spellings that are very similar or phonetically equivalent to the word mark. For example, if “4U” appears in the mark, the term "for you" would be added to the pseudo-mark field. This provides an additional search tool for locating marks that contain an alternative or intentionally corrupted spelling for a normal English word. Pseudo mark entries are not displayed or printed in the search results and are not part of the official application or registration.
USPTO personnel cannot conduct trademark searches for the public. Private trademark search firms will conduct searches for a fee. The USPTO cannot aid in the selection of a search firm or an attorney. 37 C.F.R. §2.11. Search firms are often listed in the yellow page section of telephone directories under the heading "Trademark Search Services" or "Patent and Trademark Search Services."
100-3 September 2009
The public can search the trademark assignment records of the Assignment Services Branch on the USPTO website at http://assignments.uspto.gov/assignments. Assignment records can also be searched in the Public Search Facility. See TMEP §503.08 for further information about the accessibility of assignment records.
105 General Information Booklet Concerning Trademarks
The booklet entitled Basic Facts About Trademarks contains information and instructions for registering a trademark or service mark. The booklet can be accessed or downloaded from the USPTO website at http://www.uspto.gov/, or may be obtained by calling TAC. See TMEP §108.02 regarding TAC.
106 The Official Gazette
The Official Gazette (“OG”), issued every Tuesday, is a publication of the USPTO, which is available free of charge on the USPTO website.
Trademark Official Gazette (“TMOG”). The TMOG, posted at http://www.uspto.gov/web/trademarks/tmog/, contains an illustration of each mark published for opposition on the Principal Register, marks registered on the Principal Register under 15 U.S.C. §1051(d), and marks registered on the Supplemental Register on the date of the particular issue in which the marks appear. Effective July 15, 2003, the USPTO publishes the TMOG only in electronic form. See notice at 68 Fed. Reg. 37803 (June 25, 2003).
USPTO Notices. The TMOG does not contain USPTO Notices. Such notices are posted separately in the general information section of the Official Gazette, at http://www.uspto.gov/web/offices/com/sol/og/index.html. This section includes such general information as notices of changes in rules or Office procedures for both patents and trademarks; notices to parties who cannot be reached by mail; and indices of trademark registrations issued, renewed, cancelled, amended, or corrected on the date of the particular issue in which the marks appear.
Effective January 1, 2008, the USPTO discontinued the separate weekly publication of USPTO notices in paper form. See notice at 72 Fed. Reg. 72999 (Dec. 26, 2007).
107 Trademark Manuals
The following manuals may be downloaded free of charge from the USPTO website at http://www.uspto.gov:
• Trademark Manual of Examining Procedure (“TMEP”)
• Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
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• Acceptable Identification of Goods and Services Manual
The TMEP may also be purchased from the Government Printing Office (“GPO”) at http://bookstore.gpo.gov/. GPO’s general information telephone numbers are (202) 512-1800 and (866) 512-1800.
108 Status Inquiries
108.01 Internet Information
The TARR database on the USPTO website at http://tarr.uspto.gov provides detailed information about the status and prosecution history of trademark applications and registrations. The TARR database is available 24 hours a day, 7 days a week.
The TARR database is normally updated daily from 1:00 to 2:00 p.m. Eastern Time and does not include any newly filed applications, nor amendments thereto, entered into the USPTO’s internal trademark database after the last TARR update. For example, the TARR database shows applications that registered after its last update as pending applications rather than registrations, and does not include edits made to individual records after its last update.
In addition, the TARR database may not reflect changes in ownership that have been recorded in the Assignment Services Branch. There are circumstances in which the Trademark Database (i.e., TRAM and TARR) will be updated automatically upon the recordation of a change of ownership. See TMEP §§504 and 504.01. In all other cases, the new owner must separately notify the Trademark Operation in writing of the recordation of a document, and request that the Trademark Database be updated manually. See TMEP §§503.01(a) and 505 et seq.
Information about documents recorded with the Assignment Services Branch can be obtained though ETAS, at http://etas.uspto.gov.
See also TMEP §109.01 regarding public access to electronic images of the contents of trademark application and registration and Board proceeding records.
108.02 Personal Telephone Assistance
If additional information regarding the status of an application or registration is required, callers may telephone TAC at (571) 272-9250 or (800) 786-9199 and request a status check. TAC also provides general information about the trademark registration process. Telephone assistance is available from 8:30 a.m. to 8:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. Walk-in service is available from 8:30
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a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
The Trademark Assistance Center will gladly answer questions about the application process. However, USPTO employees cannot:
• conduct trademark searches for the public (see TMEP §104);
• comment on the validity of registered marks (see TMEP §1801);
• answer questions as to whether a particular mark or type of mark is eligible for registration;
• offer legal advice or opinions about common-law trademark rights, state registrations, or trademark infringement claims; or
• aid in the selection of a private trademark attorney or search firm (37 C.F.R. §2.11).
See TMEP Chapter 1800 regarding public inquiries about applications and registrations.
108.03 Due Diligence: Duty to Monitor Status
Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:
(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and
(2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted.
Should the status inquiry reveal that a document is lost, that no action has been taken regarding correspondence that was submitted, or that some other problem exists, the applicant or registrant must promptly request corrective action. 37 C.F.R. §2.146(i). Failure to act diligently and follow up with appropriate action may result in denial of the requested relief. The USPTO may deny petitions to reactivate abandoned applications and cancelled registrations when a party fails to inquire about the status of a pending matter within a reasonable time. See TMEP §§1705.05 and 1714.01(d).
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Written status inquiries are discouraged, because they can delay processing. Whenever possible, status inquiries should be made through the TARR database. If additional information regarding the status of an application or registration is required, callers may telephone TAC at (571) 272-9250 or (800) 786-9199.
109 Access to Records
18 U.S.C. §2071. Concealment, removal, or mutilation generally. (a) Whoever willfully and unlawfully conceals, removes, mutilates,
obliterates, or destroys, or attempts to do so, or, with intent to do so takes and carries away any record, proceeding, map, book, paper, document, or other thing, filed or deposited with any clerk or officer of any court of the United States, or in any public office, or with any judicial or public officer of the United States, shall be fined under this title or imprisoned not more than three years, or both.
(b) Whoever, having the custody of any such record, proceeding, map, book, document, paper, or other thing, willfully and unlawfully conceals, removes, mutilates, obliterates, falsifies, or destroys the same, shall be fined under this title or imprisoned not more than three years, or both; and shall forfeit his office and be disqualified from holding any office under the United States. As used in this subsection, the term “office” does not include the office held by any person as a retired officer of the Armed Forces of the United States.
37 C.F.R. §2.27(b). Except as provided in paragraph (e) of this section, access to the file of a particular pending application will be permitted prior to publication under §2.80 upon written request.
37 C.F.R. §2.27(d). Except as provided in paragraph (e) of this section, the official records of applications and all proceedings relating thereto are available for public inspection and copies of the documents may be furnished upon payment of the fee required by § 2.6.
37 C.F.R. §2.27(e). Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the Board shall be filed under seal.
In order to inspect the contents of a trademark application or registration record, it is not necessary to show good cause or to have a power to inspect from the applicant or registrant.
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109.01 Electronic Image Records
The public may view and print images of the contents of trademark application and registration records through the TDR portal on the USPTO website at http://www.uspto.gov. Electronic images of Board proceeding records are also available on the USPTO website at http://ttabvue.uspto.gov/ttabvue/. TDR and TTABVUE are available 24 hours a day, seven days a week, free of charge.
The public may also view and print images of the contents of trademark application and registration records through the Trademark Image Capture and Retrieval System (“TICRS”), available in the Public Search Facility on the USPTO premises. See TMEP §402.
109.02 Paper Files
Effective April 12, 2004, the USPTO no longer creates paper files for all trademark applications or paper copies of certain trademark-related documents that are submitted to the USPTO in electronic format. Furthermore, the USPTO does not generate paper copies of certain trademark documents that the USPTO creates, except for copies that are sent to recipients by mail. See New USPTO Policies Regarding (1) Generation of Paper Copies of Trademark-Related Documents and (2) Public Access to Existing Paper Copies of Trademark-Related Documents (TMOG Apr. 6, 2004), at http://www.uspto.gov/web/offices/com/sol/og/2004/week14/pattmcp.htm. All these documents can be viewed through TICRS and TDR.
Procedure for Requesting Paper Files. A member of the public must make a request for access to the file. The request must include the name and phone number of the person requesting the file. USPTO personnel must keep a record of all files being removed, and enter the new location of the file (e.g., charged to non-USPTO personnel) in the TRAM database. The public must inspect the file on the premises of the USPTO, and nothing may be removed from the file without written authorization from the Office of the Commissioner for Trademarks. Requests for files should be made at the following locations:
• Files Located Within the Trademark Operation or at the Board. A request for access to a paper file that is located within the Trademark Operation or at the Board should be directed to TAC, located in the James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, VA, between 8:30 a.m. and 5:00 p.m. This includes files located in the law offices, Pre-Examination Section, ITU Unit, and Post Registration Section. See Official Gazette noticed dated April 6, 2004, posted at http://www.uspto.gov/web/trademarks/notice_paperfiles.htm. The file will usually be available to the requester within a few days.
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• Files Located at the Warehouse. Requests for access to paper files located at the warehouse should be directed to the Public Search Facility, located on the first floor of the James Madison Building - East Wing, 600 Dulany Street, Alexandria, Virginia, between 8:30 a.m. and 5:00 p.m. This includes files for abandoned applications, cancelled and expired registrations, and terminated Trademark Trial and Appeal Board proceedings. The file will usually be available to the requester within a few days.
The public can check TRAM or TARR to determine where a file is located.
An unsent letter or draft is not part of the file. USPTO personnel should ensure that such material is removed before making the file available to a member of the public.
Paper files for abandoned applications and cancelled and expired registrations are stored in the warehouse for two years after the date of abandonment, cancellation, or expiration, and then destroyed. See notice at 980 TMOG 16, reprinted at 1232 TMOG 625 (March 21, 2000). See TBMP §120.03 regarding the retention schedule for the files of terminated Board proceedings.
No file or related document may be removed from the premises occupied by the USPTO, except as required by the issue process or other official process, unless specifically authorized by the Director. 18 U.S.C. §2071(b). If such authorization is given, the employee having custody will be responsible for complying with the requirements of law.
See TMEP §503.08 regarding the accessibility of assignment records.
109.03 Making Copies of Materials in Records
The public may print images of the contents of trademark application, registration, and Board proceeding records through TDR or TTABVUE on the USPTO website at http://www.uspto.gov. See TMEP §109.01. The public can also print electronic copies of records pertaining to applications or registrations through TESS (see TMEP §104), and prosecution histories through TARR (see TMEP §108.01) on the USPTO website. There is no charge for use of these databases.
The public may also print trademark documents from TICRS, TTABVUE, TARR, or X-Search in the Public Search Facility on the USPTO premises. There is a fee for printing images of documents in the Public Search Facility. See TMEP §104.
Photocopiers for making copies of paper files are available to the public on the premises of the USPTO for a fee.
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See TMEP §111 regarding requests that the USPTO provide copies of trademark documents.
110 Decisions Available to the Public
37 C.F.R. §2.27(c). Decisions of the Director and the Trademark Trial and Appeal Board in applications and proceedings relating thereto are published or available for inspection or publication.
Precedential decisions of the Director and the Board are noted as such and published in the United States Patents Quarterly (cited as USPQ or USPQ2d), which is a periodical reporting service of a non-governmental publishing company. The USPTO does not print these decisions in its own publications. Non-precedential decisions of the Director and the Board are not published.
Both precedential and non-precedential decisions are available for viewing, downloading, and printing via TTABVUE.
A weekly summary of final decisions issued by the Board appears on the USPTO website at http://www.uspto.gov and in each issue of the Official Gazette.
See TMEP §1803 regarding decisions that are available under the Freedom of Information Act.
111 Requests for Copies of Trademark Documents
The public may print images of the contents of trademark application, registration, and Board proceeding records through TDR or TTABVUE on the USPTO website at http://www.uspto.gov. See TMEP §109.01. The public can also print electronic copies of records pertaining to applications or registrations through TESS (see TMEP §104), and prosecution histories through TARR (see TMEP §108.01) on the USPTO website. There is no charge for use of these databases.
The public may purchase certified or uncertified copies of trademark documents (e.g., application or registration records, trademark title and status reports, etc.). Fee schedules are posted on the USPTO website. Requests for copies of trademark documents are handled by the Document Services Branch of the Public Records Division of the USPTO.
Copies of trademark documents can be ordered through the USPTO website at http://www.uspto.gov, for delivery by the United States Postal Service. The fee must be paid by credit card, EFT, or deposit account authorization. Requests for copies of trademark documents may also be e-mailed to
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dsd@uspto.gov, with an authorization to charge the fee to a credit card or deposit account.
Requests for certified or uncertified copies of trademark documents may be mailed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §2.190(d).
112 Patent and Trademark Depository Libraries
There is a network of PTDLs throughout the United States that provides access to many of the same products and services offered at the USPTO. A list of the PTDLs and their telephone numbers appears on the USPTO website at http://www.uspto.gov and in each issue of the Official Gazette.
Information available free of charge at the PTDLs includes the text of the trademark statute and rules (see TMEP §101); the Trademark Manual of Examining Procedure; Trademark Trial and Appeal Board Manual of Procedure; Acceptable Identification of Goods and Services Manual; and the Trademark Electronic Search System. Photocopiers are generally provided for a fee.
The scope of PTDL collections, hours of operation, services, and fees (where applicable) may vary from one library to another.
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Chapter 200 Application Filing Date
201 What Constitutes Filing Date
201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue
201.02 Constructive Use Priority
202 Requirements for Receiving a Filing Date
202.01 Clear Drawing of the Mark
202.02 Listing of Recognizable Goods or Services
202.03 Filing Fee for At Least One Class of Goods or Services
202.03(a) Fee Payment Refused or Charged Back By Financial Institution
202.03(a)(i) Processing Fee for Payment Refused or Charged Back By Financial Institution
203 Review for Compliance With Minimum Requirements
204 Defective or Informal Applications
204.01 Filing Date Cancelled if Minimum Filing Requirements not Met
204.02 Resubmission of Applications
204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
205 Filing Date Is Not Normally Changed
206 Effective Filing Date
206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use
206.02 Application Claiming Priority under §44(d) or §67
206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989
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206.04 Examining Attorney’s Action After Conducting New Search
201 What Constitutes Filing Date
In an application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, the filing date of an application is the date on which all the elements set forth in 37 C.F.R. §2.21(a) (see TMEP §202) are received in the United States Patent and Trademark Office (“USPTO”).
In a request for an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), the filing date is: (1) the international registration date, if the request for extension of protection to the United States is made in an international application; or (2) the date that the subsequent designation was recorded by the International Bureau of the World Intellectual Property Organization (“IB”), if the request for extension of protection to the United States is made in a subsequent designation. 15 U.S.C. §1141f(b); 37 C.F.R. §7.26. See TMEP §§1904 et seq. for further information about §66(a) applications.
Granting a filing date to an application does not necessarily mean that all requirements for registration have been satisfied. It is possible that registration could be refused on a substantive ground. See TMEP §818 for a list of potential grounds of refusal. If registration is not refused on any substantive basis (or if the applicant overcomes any substantive refusals), the applicant must comply with any procedural requirements issued by the examining attorney during examination, in accordance with applicable rules and statutes, in order to obtain a registration.
201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue
The filing date of an application (see TMEP §201) is also the effective filing date, except where: (1) the applicant is entitled to priority under 15 U.S.C. §1126(d) or §1141g (see TMEP §206.02); (2) the applicant amends an intent- to-use application filed under 15 U.S.C. §1051(b) to the Supplemental Register (see TMEP §206.01); or (3) the application was filed before November 16, 1989, the applicant had not used the mark in commerce for one year before the application filing date, and the applicant amends to the Supplemental Register on or after November 16, 1989 (see TMEP §206.03). The effective filing date is controlling for purposes of determining priority for publication or issue (see TMEP §1208.01) and constructive use priority (see TMEP §201.02).
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201.02 Constructive Use Priority
Under 15 U.S.C. §§1057(c) and 1141f(b), filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the mark, provided the application matures into a registration. Upon registration, filing affords the applicant nationwide priority over others, except: (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application under 15 U.S.C. §1126(d) or §1141g (see TMEP §206.02). See Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527 (D.C. Cir. 2008); Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
202 Requirements for Receiving a Filing Date
Under 37 C.F.R. §2.21(a), the USPTO will grant a filing date to an application under §1 or §44 of the Trademark Act that is in the English language and 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.
The filing date requirements apply to both the Principal and the Supplemental Register. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (use in commerce is not required for receipt of a filing date for an application requesting registration on the Supplemental Register).
If an application does not satisfy all the above requirements, it will not be given a filing date. The USPTO will notify the applicant of the reason(s) why the application was not given a filing date, and refund the application filing fee.
The applicant must provide a physical address to which paper correspondence can be mailed in order to receive a filing date. An e-mail address and authorization to send communications by e-mail cannot be substituted for a physical address. A post office box is acceptable.
Applications that do not meet the minimum requirements for receipt of a filing date are referred to as “informal.” See TMEP §203 regarding review for compliance with minimum filing requirements, and TMEP §§204 et seq. for information about how the USPTO handles informal applications.
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In an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a) (i.e., a request for extension of protection of an international registration to the United States), compliance with the minimum filing requirements of §66(a) of the Act will be determined by the IB prior to sending the application to the USPTO. See TMEP §§1904 et seq. for further information about §66(a) applications.
202.01 Clear Drawing of the Mark
In a §66(a) application, the drawing must meet the requirements of the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement, which are available on the IB’s website at http://www.wipo.int/madrid/en/. The IB will determine whether the drawing meets these requirements before sending the application to the USPTO. See TMEP §§1904 et seq. for further information about §66(a) applications.
Under 37 C.F.R. §2.21(a)(3), a §1 or §44 applicant must submit “a clear drawing of the mark” to receive a filing date, except in applications for registration of sound, scent, and other non-visual marks. A separate drawing page (or digital image of a separate drawing page in an application filed through the Trademark Electronic Application System (“TEAS”)) is not mandatory, but is encouraged. See TMEP §807.09 regarding “drawings” in applications for registration of non-visual marks.
A "drawing" is simply a depiction of the mark for which registration is sought. 37 C.F.R. §2.52. A drawing that includes multiple elements that do not comprise an identifiable mark, or that consists of wording describing the mark, does not constitute a clear drawing of the mark.
An application that includes two or more drawings displaying materially different marks does not meet the requirement for a “clear drawing of the mark.” Therefore, an application is denied a filing date if it includes two or more drawings displaying materially different marks. See Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004).
However, if an applicant (1) submits a separate drawing page showing a mark in a paper application, (2) enters a standard character mark in the “Mark Information” field of an application filed through TEAS, or (3) attaches a .jpg file containing a mark to the “Mark Information” field of a TEAS application, and a different mark appears elsewhere in the application, the drawing page or mark shown in the “Mark Information” field on TEAS will control for purposes of determining the nature and elements of the mark. The USPTO will grant a filing date to the application, and disregard any other mark that appears elsewhere in the application. The applicant will not be permitted to amend the mark if the amendment is a material alteration of the mark on the drawing page in a paper application or the “Mark Information” field in a TEAS application. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir
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USPTO 2001). See 37 C.F.R. §2.72 and TMEP §§807.14 et seq. regarding material alteration of a mark.
A specimen showing the mark does not satisfy the requirement for a drawing. If the only depiction of the mark is on a specimen (e.g., an advertisement, a photograph of the goods, or the overall packaging), then there is no drawing, and the application will be denied a filing date.
See TMEP §§807 et seq. for additional information about the examination of drawings.
See also TMEP §204.03 regarding the examining attorney’s handling of applications that are erroneously granted a filing date.
202.02 Listing of Recognizable Goods or Services
The USPTO will deny a filing date to an application under §1 or §44 of the Trademark Act if the application does not identify recognizable goods or services. See TMEP §1402.02 for further information.
202.03 Filing Fee for At Least One Class of Goods or Services
In an application under §1 or §44 of the Trademark Act, the applicant must pay the filing fee for at least one class of goods or services before an application can be given a filing date. 37 C.F.R. §2.21(a)(5). The fee can be paid by credit card, check, money order, electronic funds transfer (“EFT”), or by an authorization to charge a deposit account. 37 C.F.R. §2.207. See TMEP §§405 et seq. for additional information about fees.
The amount of the trademark application filing fee varies depending on whether the application is filed through TEAS or on paper. An applicant has three choices. The applicant can file:
• A paper application at the highest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i);
• A regular TEAS application at a lower fee per class, set forth in 37 C.F.R. §2.6(a)(1)(ii); or
• A TEAS Plus application (see TMEP §§819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iii).
See TMEP §§819 et seq. regarding TEAS Plus. See also notices at 70 Fed. Reg. 2952 (Jan. 19, 2005) and 70 Fed. Reg. 38768 (July 6, 2005). The current fee schedule is available on the USPTO website at http://www.uspto.gov.
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The complete fee for at least a single class must be submitted with the application as filed. Partial or piecemeal fee payments are unacceptable and will be returned.
If an application does not include a filing fee for at least a single class, the USPTO will deny a filing date. In re Buckhead Marketing & Distribution, Inc., 71 USPQ2d 1620 (Dir USPTO 2004); In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995). If a filing date has been granted when the USPTO discovers that the applicant has not paid the filing fee for at least a single class, the filing date will be cancelled. See TMEP §204.01.
See TMEP §§202.03(a) and 405.06 regarding payments that are refused or charged back by financial institutions, and TMEP §405.03 regarding deposit accounts.
The filing fee for a §66(a) application will be sent to the USPTO by the IB, pursuant to Article 8 of the Madrid Protocol. Generally, the examining attorney should not require additional fees during examination, except where the application is divided due to a change in ownership with respect to some but not all of the goods/services. See TMEP §810 for further information about application filing fees, and TMEP §§1904 et seq. for further information about §66(a) applications.
202.03(a) Fee Payment Refused or Charged Back By Financial Institution
Where a check submitted as payment of an application filing fee is returned to the USPTO unpaid, or an EFT or credit card payment is refused or charged back by a financial institution, the application is treated as though the fee had never been paid.
If the original application was accompanied by an authorization to charge fee deficiencies to a deposit account (37 C.F.R. §2.208), then the application filing fee and the processing fee required by 37 C.F.R. §2.6(b)(12) (see TMEP §§202.03(a)(i) and 405.06) are charged to the deposit account, and the original filing date remains unchanged.
However, if the original application was not accompanied by an authorization to charge deficient fees to a deposit account that has sufficient funds to cover the fee, and the applicant has not paid the filing fee for at least one class of goods or services, the filing date is void and will be cancelled. In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995).
In some cases, the applicant will have resubmitted the fee before the USPTO discovers that the payment was refused. In these cases, the USPTO will change the filing date to the date when the fee for a single class of goods or services was resubmitted.
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In a multiple-class application, if the fee for at least a single class has been paid, but the payment of the filing fee for additional class(es) is refused, the filing date of the application is not affected. The applicant must: (1) resubmit the fee for the additional class(es), or delete the additional class(es); and (2) pay the processing fee required by 37 C.F.R. §2.6(b)(12). The applicant must pay the processing fee even if the applicant chooses to delete the additional class(es).
See TMEP §§202.03(a)(i) and 405.06 regarding payments refused by financial institutions, and TMEP §204.03 regarding the examining attorney’s handling of applications that are erroneously granted a filing date.
202.03(a)(i) Processing Fee for Payment Refused or Charged Back By Financial Institution
There is a fee for processing any payment refused (including a check returned unpaid) or charged back by a financial institution. 37 C.F.R. §2.6(b)(12). See TMEP §405.06. However, this is not a filing date requirement. If an applicant resubmits the filing fee without paying the processing fee, the USPTO will give the application a filing date as of the date of resubmission, and the examining attorney will require submission of the processing fee during examination.
203 Review for Compliance With Minimum Requirements
In applications under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), the IB will determine whether the application complies with §66(a) prior to sending the request for extension of protection of an international registration to the USPTO. See TMEP §§1904 et seq. for further information about §66(a) applications.
Applications under §1 or §44 of the Act are given a receipt date (see TMEP §303.01) and then reviewed for compliance with the minimum requirements for granting a filing date (see 37 C.F.R. §2.21(a) and TMEP §202 for a list of these requirements).
If the minimum requirements of 37 C.F.R. §2.21 have been met, the USPTO assigns a filing date as of the date of receipt in the USPTO. See TMEP §§401 et seq. regarding the processing of new applications that meet the minimum requirements for receipt of a filing date, and TMEP §§204 et seq. regarding the processing of applications that do not meet these minimum requirements.
The minimum requirements for receipt of a filing date under 37 C.F.R. §2.21(a) apply to all applications under §§1 and 44 of the Act, whether filed electronically or on paper. When an application is filed electronically, the TEAS system will not accept the transmission if the fields corresponding to the minimum filing requirements are not filled in. However, if the fields are
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filled in with incomplete or inappropriate information, the TEAS system will accept the transmission, but the USPTO will deny the application a filing date upon review for compliance with minimum filing requirements. For example, if the services were identified as “miscellaneous services,” TEAS would accept the transmission, but the USPTO would not give the application a filing date (see TMEP §§202.02 and 1402.02).
204 Defective or Informal Applications
If an application under §1 or §44 of the Trademark Act does not meet the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) (see TMEP §202), the application is void. These applications are also referred to as “incomplete” or “informal.”
204.01 Filing Date Cancelled if Minimum Filing Requirements not Met
Applications under §1 or §44 of the Trademark Act are initially assigned a filing date and serial number and then reviewed for compliance with the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a). If the minimum filing requirements have not been met, the USPTO cancels the filing date and serial number, refunds any filing fee submitted, and sends a notice to the applicant explaining why the application is defective.
See TMEP §1711 regarding the procedures for requesting review of the denial of a filing date by the Office of the Deputy Commissioner for Trademark Examination Policy.
204.02 Resubmission of Applications
The USPTO recommends that all applications be filed through TEAS. However, if the USPTO denies a filing date in a paper application, the applicant may resubmit the original papers or a copy of the original papers, together with the item(s) necessary to correct the defect(s), and a new filing fee. The applicant should cross off the cancelled serial number. A filing fee for at least a single class of goods or services must be included when the applicant resubmits an application, even if the applicant has not yet received a refund of the fee previously submitted.
The new filing date will be the date on which a complete application, including all elements required by 37 C.F.R. §2.21(a), is received in the USPTO. Note that applications claiming priority under §44(d) of the Trademark Act must meet all filing date requirements within six months of the filing date of the foreign application. 37 C.F.R. §2.34(a)(4)(i); TMEP §§806.01(c) and 1003.02.
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If an applicant believes that the USPTO committed an error in denying the application a filing date, the applicant may submit a request to restore the filing date. See TMEP §1711. The USPTO recommends that the applicant file a new application, including the required application filing fee, using TEAS, located at http://www.uspto.gov/teas/index.html. After the applicant receives a new serial number, the applicant should fax the request to restore the original filing date to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950. This request should: (1) be captioned as a “Request for Restoration of the Filing Date;” (2) state the reason(s) why the applicant believes the filing date was denied in error; (3) include the new serial number; and (4) include a copy of any Notice of Incomplete Trademark Application received from the USPTO. Although applicants have two (2) months from the issuance date of a Notice of Incomplete Trademark Application to file a request to restore the original filing date (37 C.F.R. §2.146(d)), it is recommended that the applicant file the request immediately upon receipt of the new serial number, to expedite processing.
204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date
Sometimes an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R. §2.21 for receipt of a filing date is erroneously referred to an examining attorney for examination. In this situation, if the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal. The USPTO will cancel the filing date and serial number, refund any filing fee submitted, and send a notice to the applicant explaining why the application is defective. See TMEP §204.01.
If, however, an examining attorney discovers after issuing an action that the application as filed did not meet the minimum requirements for receipt of a filing date, then the examining attorney must issue a supplemental Office action, refusing registration on the ground that the application was not eligible to receive a filing date. Any outstanding refusals and requirements must be maintained and incorporated into the supplemental Office action. The applicant should be given six months to comply with all filing date requirements. If the applicant fails to qualify for a filing date within the response period, the application is void. If a filing fee was submitted with the original application, the examining attorney must have the filing fee refunded and update the USPTO’s automated records to indicate that the application is abandoned.
If the applicant complies with the filing date requirements within six months of the issuance of the examining attorney’s Office action, the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing date requirements. In such a case, the examining attorney
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must conduct a new search of Office records for conflicting marks, and issue another Office action if necessary.
205 Filing Date Is Not Normally Changed
After an application has been given a filing date, the USPTO will normally not vacate the filing date or physically alter the designation of the original filing date in the Trademark Reporting and Monitoring (“TRAM”) System, except where the application as originally filed was erroneously accorded a filing date (see TMEP §204.03) or where the Office grants restoration of a filing date (see TMEP §§204.02 and 1711).
In an application under §1 or §44 of the Trademark Act, if the application met the minimum requirements for receipt of a filing date (see TMEP §202) when originally filed, but during examination it is discovered that the applicant did not have a right to apply on the assigned filing date (e.g., because the applicant did not own the mark), the application is void, because a valid application was not created. See TMEP §§803.06 and 1201.02(b). The USPTO will not refund the filing fee in such a case. If, subsequent to the assigned filing date, the applicant became eligible to apply, the applicant may file a new application (including a filing fee).
206 Effective Filing Date
The filing date of an application (see TMEP §201) is also the effective filing date, except in the situations described in the subsections below. In these situations, the USPTO does not alter the original filing date in its automated records.
In the situations described below, because the effective filing date will likely be subsequent to the date on which the examining attorney searched USPTO records for conflicting marks, the examining attorney must conduct another search.
206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use
An applicant relying on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d). 37 C.F.R. §§2.47(d) and 2.75(b).
If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use and an acceptable amendment to the Supplemental Register, the USPTO will consider the filing
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date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b). The examining attorney must conduct a new search of USPTO records for conflicting marks. See TMEP §206.04 regarding examining attorney's action after conducting a new search.
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (filing date did not change when applicant who originally sought registration on the Supplemental Register without alleging use in commerce amended to seek registration on the Principal Register under §1(b)).
See TMEP §§816.02 and 1102.03 for additional information about examination of intent-to-use applications on the Supplemental Register.
206.02 Application Claiming Priority under §44(d) or §67
When an applicant is entitled to priority based on a foreign application, the effective filing date is the date on which the foreign application was first filed in the foreign country. The priority claim for the United States application must be filed within six months after the filing date of the foreign application. 15 U.S.C. §§1126(d)(1) and 1141g; 37 C.F.R. §§2.34(a)(4)(i) and 7.27(c); TMEP §§1003.02 and 1904.01(e).
In an application under §44(d) of the Trademark Act, the applicant can submit a priority claim after the filing date of the United States application if: (1) the applicant submits the priority claim within the six-month priority period (37 C.F.R. §2.35(b)(5)); and (2) the applicant was entitled to priority on the filing date of the United States application. If the priority claim is submitted after the examining attorney has conducted a search of USPTO records for conflicting marks, he or she must conduct a new search.
In an application under §66(a) of the Act, the priority claim must be set forth in the international application or subsequent designation filed with the IB. The priority claim will be part of the request for extension of protection sent to the USPTO by the IB. See TMEP §1904.01(e).
206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989
In an application filed before November 16, 1989, the date of the amendment to the Supplemental Register becomes the effective filing date of the application if: (1) the applicant had not used the mark in commerce for one year before the application filing date; and (2) the applicant amends to the Supplemental Register on or after November 16, 1989. See TMEP §816.02.
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206.04 Examining Attorney’s Action After Conducting New Search
When the effective filing date changes to a later date, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the search shows that because of the new, later effective filing date, there is a later-filed conflicting application that now has an earlier filing date, the examining attorney must suspend action of the subject application pending disposition of the other application, if the application is otherwise in condition for suspension. See TMEP §§1208 et seq. regarding the procedures for handling conflicting marks in pending applications. If the examining attorney is handling a later-filed application that has been suspended pending disposition of the subject application, the examining attorney must withdraw the application from suspension and either approve it for publication or take action on any other outstanding issues. If a later-filed conflicting application is being handled by a different examining attorney, the examining attorney should contact the other examining attorney to notify him or her of the change in the effective filing date of the subject application.
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Chapter 300 Filing and Receipt of Documents
301 Electronic Filing
302 Trademark Correspondence and Signature Requirements - In General
302.01 Original Documents Generally Not Required
302.02 Multiple Copies of Documents Should Not Be Filed
302.03 Identifying the Nature of Documents Filed
302.03(a) Correspondence Pertaining to Trademark Applications
302.03(b) Correspondence Pertaining to Trademark Registrations
303 Receipt of Documents by the Office
303.01 Date of Receipt
303.02 Acknowledgment of Receipt
303.02(a) TEAS “Success” Page
303.02(b) “Mail Room Date” Label Showing Receipt
303.02(c) Postcard Receipt
303.02(c)(i) Postage on Return Receipt Postcards
304 Electronic Mail
304.01 Communications Acceptable Via Electronic Mail
304.02 Communications Not Acceptable Via Electronic Mail
304.03 Authorization of Electronic Mail Communications From the USPTO
304.04 Date of Receipt of Electronic Mail
304.05 Certificate of Transmission by Electronic Mail
304.06 Outgoing Electronic Mail
304.07 Signature of Electronic Mail
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304.08 E-Mail Addresses for Correspondence With the Office
304.09 “Confirmation” Copies of E-Mail Communications Should Not Be Sent to the Office
305 Mailing Documents to the Office
305.01 Mailing Addresses
305.02 Certificate of Mailing Procedure
305.02(a) When Certificate of Mailing Procedure May Not Be Used
305.02(b) Mailing Requirements
305.02(c) Location and Form of Certificate
305.02(d) Wording of Certificate of Mailing
305.02(e) Effect of Certificate of Mailing
305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197 But Not Received by Office
305.02(g) Correspondence Deposited as First Class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
305.02(h) Certificate of Mailing Requirements Strictly Enforced
305.03 “Express Mail”
305.04 Interruptions in U.S. Postal Service
306 Facsimile Transmission (Fax)
306.01 Documents That May Not Be Filed by Facsimile Transmission
306.02 Fax Machines Designated to Accept Relevant Trademark Documents
306.03 Effect of Filing by Fax
306.04 Procedure for Filing by Fax
306.05 Certificate of Transmission Procedure
306.05(a) Location and Form of Certificate of Transmission
306.05(b) Wording of Certificate of Transmission
306.05(c) Effect of Certificate of Transmission
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306.05(d) Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §2.197 But Not Received by Office
306.06 Requirements for Certificate of Transmission Strictly Enforced
307 Hand Delivery
308 Period Ending on Saturday, Sunday, or Federal Holiday
309 Unscheduled Closings of the United States Patent and Trademark Office
310 Computing Period for Response to Office Action or Notice
301 Electronic Filing
The Trademark Electronic Application System (“TEAS”) makes electronic filing available on the United States Patent and Trademark Office (“USPTO”) website, at http://www.uspto.gov. TEAS can be used to file all forms related to a domestic application or registration, or for filings under the Madrid Protocol. TEAS offers a group of specific forms that require direct data entry in designated fields, and/or the attachment of a .jpg or .pdf image file. For documents for which a specific TEAS form has not yet been developed, TEAS also offers a “global form” approach. On the global form, the filer can indicate the type of filing through the use of a pull-down menu from one of four categories: Intent-to-Use matters; Post-Registration matters; Petitions and similar matters; and a miscellaneous category. The filer then uploads a .jpg or .pdf image file that contains the complete text for the actual filing.
When a document is filed electronically, either as a specific TEAS form or through the global form approach, the USPTO generally receives it within seconds after filing. TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the document, and may be printed or copied-and- pasted into an electronic record for storage. From the “Success” page, the filer can click on a link to a PDF receipt that includes a summary of the filed information and general processing information. TEAS also separately sends an e-mail acknowledgement of receipt that includes the same information. Electronic filing creates an automatic entry of receipt of this filing into the USPTO’s automated system, which helps to avoid improper abandonment or cancellation.
Under 37 C.F.R. §2.195(a)(2), correspondence transmitted electronically using TEAS is considered filed on the date the USPTO receives the transmission, in Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
See TMEP §611.01(c) regarding signature of documents filed electronically.
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See TMEP §§807.05 et seq. regarding drawings in electronically transmitted applications, and TMEP §904.02(a) regarding specimens in electronically transmitted applications.
Requests for recordation of assignments and other documents affecting title to an application or registration can be filed through the Electronic Trademark Assignment System (“ETAS”) on the USPTO website at http://etas.uspto.gov.
The Electronic System for Trademark Trials and Appeals (“ESTTA”), at http://estta.uspto.gov/, can be used to file requests for extensions of time to oppose, notices of opposition, petitions to cancel, appeals, motions, briefs, notices of change of address, and other documents in Board proceedings.
If a document transmitted through TEAS, ETAS, or ESTTA is due on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the document will be considered timely if the USPTO receives the transmission on or before the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia. 37 C.F.R. §2.196; TMEP §308.
See TMEP §§819 et seq. regarding TEAS Plus.
302 Trademark Correspondence and Signature Requirements - In General
37 C.F.R. §2.193. Trademark correspondence and signature requirements. (a) Since each file must be complete in itself, a separate copy of every
document to be filed in a trademark application, trademark registration file, or proceeding before the Trademark Trial and Appeal Board must be furnished for each file to which the document pertains, even though the contents of the documents filed in two or more files may be identical. Parties should not file duplicate copies of correspondence, unless the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence.
(b) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate document to avoid confusion and delay in answering correspondence dealing with different subjects.
(c)(1) Each piece of correspondence that requires a person’s signature, must:
(i) Be an original, that is, have an original signature personally signed in permanent ink by that person; or
(ii) Be a copy, such as a photocopy or facsimile transmission (§2.195(c)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original; or
(iii) Where an electronically transmitted trademark filing is permitted or required, the person who signs the filing must either:
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(A) Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission; or
(B) Sign the verified statement using some other form of electronic signature specified by the Director.
(2) The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by a party, whether a practitioner or non- practitioner, constitutes a certification under § 11.18(b) of this chapter. Violations of § 11.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this chapter. Any practitioner violating § 11.18(b) may also be subject to disciplinary action. See §§ 11.18(d) and 10.23(c)(15).
(d) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
The USPTO recommends filing through TEAS whenever possible. See TMEP §301. Trademark documents may also be sent through the United States Postal Service (“USPS”), delivered by a courier service, or hand carried to the USPTO. Except for documents listed in TMEP §306.01, correspondence may be transmitted by facsimile (“fax”). (Note that an application for registration of a mark may not be filed by fax, but can be filed through TEAS. 37 C.F.R. §§2.195(d)(1) and 2.197(a)(2)). Certain documents can be sent through e-mail (see TMEP §304).
See TMEP §§304 et seq. regarding e-mail, TMEP §§305 et seq. regarding mailing documents to the USPTO, TMEP §§306 et seq. regarding fax transmission, and TMEP §307 regarding hand delivery.
302.01 Original Documents Generally Not Required
When a party files a copy of a document related to an application or registration, the USPTO will normally not require the party to submit the original document. Copies (e.g., photocopies or fax transmissions) are acceptable unless a document is required by statute to be certified (e.g., a certified copy of a final court order pursuant to 15 U.S.C. §1119). However, the party who filed the copy should retain the original in case questions arise as to the authenticity of the signature on the photocopy or faxed correspondence. See 37 C.F.R. §2.193(c)(1)(ii).
Original certificates of registration are not required for requests for amendment or correction of a registration under §7 of the Trademark Act, and owners are strongly discouraged from submitting them. See TMEP §§1609.01(b) and 1609.10.
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302.02 Multiple Copies of Documents Should Not Be Filed
Extract from 37 C.F.R. §2.193(a). * * * Parties should not file duplicate copies of correspondence, unless the
Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence.
As a general rule, only one copy of each document should be filed, unless more than one copy is specifically required by statute or rule, or a USPTO employee specifically requests more than one copy.
When filing a document electronically or by fax, a party should not send a follow-up copy unless the USPTO specifically requests a follow-up copy. 37 C.F.R. §2.193(a). Submission of duplicate documents can delay processing.
302.03 Identifying the Nature of Documents Filed
302.03(a) Correspondence Pertaining to Trademark Applications
Documents filed through TEAS or ESTTA are automatically transmitted to the appropriate location and entered into the record of the appropriate application or Trademark Trial and Appeal Board (“Board”) proceeding.
For paper documents, to ensure the timely entry into the official record, every piece of correspondence filed in the USPTO pertaining to a trademark application should be identified at the beginning by a heading or caption and by the serial number of the application to which the document pertains. 37 C.F.R. §2.194(b)(1). Cover letters and transmittal letters should identify the material that they accompany.
To expedite processing, all incoming documents pertaining to an application should include the following identifying data:
(1) Serial number;
(2) Filing date;
(3) Mark;
(4) A title indicating the nature of the document;
(5) Law office (identified in the most recent Office action);
(6) Name of examining attorney identified on the most recent Office action;
(7) Issuance date of the Office action to which the document is in response, if applicable;
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(8) The name, address (including ZIP code), and telephone number of the applicant or the applicant’s attorney; and
(9) The applicant’s or attorney’s e-mail address.
To facilitate the matching of responses to Office actions with the correct records, examining attorneys’ Office actions issued on paper include peel-off response labels that reference the application serial number, the mark and the assigned law office. If filing a response on paper, the applicant is encouraged to affix this label to the upper right-hand corner of the response.
302.03(b) Correspondence Pertaining to Trademark Registrations
Documents filed through TEAS or ESTTA are automatically transmitted to the appropriate location and entered into the record of the appropriate registration or Board proceeding.
For paper filings, correspondence relating to a registered trademark should identify the registration by specifying the mark, the registrant’s name, and the registration number. 37 C.F.R. §2.194(b)(2).
Paper correspondence filed under 15 U.S.C. §§1057, 1058, 1059, and 1141k should be directed to the Post Registration Section of the Office.
Paper petitions to cancel a registered mark should be directed to the Board.
Court orders relating to registered trademarks should be sent to the Office of the Solicitor. See TMEP §1610.
303 Receipt of Documents by the Office
37 C.F.R. §2.195. Receipt of trademark correspondence. (a) Date of receipt and Express Mail date of deposit. Trademark
correspondence received in the Office is given a filing date as of the date of receipt except as follows:
(1) The Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted electronically under paragraph (a)(2) of this section or transmitted by facsimile under paragraph (a)(3) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Trademark-related correspondence transmitted electronically will be given a filing date as of the date on which the Office receives the transmission.
(3) Correspondence transmitted by facsimile will be given a filing date as of the date on which the complete transmission is received in the Office unless that date is a Saturday, Sunday, or Federal holiday within the District
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of Columbia, in which case the filing date will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Correspondence filed in accordance with §2.198 will be given a filing date as of the date of deposit as “Express Mail” with the United States Postal Service.
(b) Correspondence delivered by hand. Correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(c) Facsimile transmission. Except in the cases enumerated in paragraph (d) of this section, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See §2.196. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office. The application serial number, registration number, or proceeding number should be entered as a part of the sender’s identification on a facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks; (2) Drawings submitted under §2.51, §2.52, §2.72, or §2.173; (3) Correspondence to be filed with the Trademark Trial and Appeal
Board, except notices of ex parte appeal; (4) Requests for cancellation or amendment of a registration under section
7(e) of the Trademark Act; and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act; and
(5) Madrid-related correspondence submitted under §7.11, §7.21, §7.14, §7.23, §7.24, or §7.31.
(e) Interruptions in U.S. Postal Service. (1) If the Director designates a postal service interruption or emergency
within the meaning of 35 U.S.C. 21(a), any person attempting to file correspondence by “Express Mail Post Office to Addressee” service who was unable to deposit the correspondence with the United States Postal Service due to the interruption or emergency may petition the Director to consider such correspondence as filed on a particular date in the Office.
(2) The petition must: (i) Be filed promptly after the ending of the designated interruption or
emergency; (ii) Include the original correspondence or a copy of the original
correspondence; and (iii) Include a statement that the correspondence would have been
deposited with the United States Postal Service on the requested filing date but for the designated interruption or emergency in ‘‘Express Mail’’ service; and that the correspondence attached to the petition is the original
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correspondence or a true copy of the correspondence originally attempted to be deposited as Express Mail on the requested filing date.
(3) Paragraphs (e)(1) and (e)(2) of this section do not apply to correspondence that is excluded from the Express Mail procedure pursuant to § 2.198(a)(1).
303.01 Date of Receipt
Correspondence transmitted through TEAS is considered to have been filed on the date the USPTO receives the transmission, in Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(2).
For paper correspondence, the date of actual receipt in the USPTO is assigned as the filing date of all correspondence. 37 C.F.R. §2.195(a). However, under 37 C.F.R. §§2.195(a)(1) and (3), no paper correspondence is “received” in the USPTO on Saturdays, Sundays, or Federal holidays within the District of Columbia. See TMEP §308 regarding response periods that end on a Saturday, Sunday, or Federal holiday within the District of Columbia.
The filing date of an e-mail communication (see TMEP §§304 et seq.) or fax transmission (see TMEP §§306 et seq.) is the date the complete transmission is received in the USPTO, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date is the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §§2.195(a)(1) and (3). However, if the communication is properly filed using the “certificate of transmission” procedure under 37 C.F.R. §2.197, the USPTO looks to the date on the certificate to determine whether the filing is timely. TMEP §§304.05 and 306.05(c).
Similarly, if a document is mailed to the USPTO using the “certificate of mailing” procedure under 37 C.F.R. §2.197 (see TMEP §§305.02 et seq.), the filing date is the date of receipt in the USPTO, but the USPTO looks to the date on the certificate to determine whether the filing is timely. TMEP §305.02(e).
See TMEP §1904.01(b) regarding the filing date of a request for an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a).
303.02 Acknowledgment of Receipt
303.02(a) TEAS “Success” Page
When a document is filed electronically, the USPTO generally receives it within seconds after filing. TEAS almost immediately displays a “Success”
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page that confirms receipt. This page may be printed or copied-and-pasted into an electronic record for storage, and used as evidence of filing should any question arise as to the filing date of the document, and.
303.02(b) “Mail Room Date” Label Showing Receipt
The USPTO places a bar code label indicating the date of receipt on every application, part of an application, amendment, letter, or other document submitted to the USPTO on paper. The label is referred to as the “Mail Room Date” label, and it establishes the date of receipt (i.e., the filing date) of any document. Before 1998, the USPTO used a stamp, known as the “Office Date Stamp,” to indicate the date of receipt of incoming documents.
303.02(c) Postcard Receipt
For documents filed on paper, a party may obtain a receipt by enclosing a self-addressed, stamped postcard identifying the document. The USPTO will place a label indicating the receipt date on the card and return it to the party who filed the document.
The identifying data on the postcard should be complete and specific. The nature of the document being filed (e.g., application, affidavit, amendment, appeal, petition); the name of the applicant or registrant; the mark; the application filing date or registration date; and the application serial number, registration number, or proceeding number should be included if available. Each specific element of the filing should be listed on the postcard (e.g., written application, drawing page, fee, specimen) so that the postcard can be used as evidence that the element was submitted if it is lost or disassociated from the record.
The party submitting the postcard is responsible for placing proper postage on the self-addressed postcard, and for ensuring that the proper mailing address appears on the postcard. See TMEP §303.02(c)(i) regarding the use of postage meters.
If a postcard with proper postage accompanies application documents that are mailed to the USPTO, a bar code label indicating the serial number assigned to the application will be applied to the postcard.
If the postcard accompanies application documents that are hand delivered, the bar code label will not be applied to the postcard because the application has not yet been serialized. Therefore, if application documents are hand carried, the applicant may submit a second postcard with proper postage so that, upon serialization, the USPTO may send the additional card, with a bar code label indicating the serial number, to the applicant.
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When documents for more than one application or registration are filed under a single cover, a return postcard should be attached to each document for which a receipt is desired.
303.02(c)(i) Postage on Return Receipt Postcards
The party submitting a return receipt postcard (see TMEP §303.02(c)) is responsible for placing proper postage on the self-addressed postcard. Proper postage means that it has a stamp(s) in the correct amount or a meter stamp postmark that complies with USPS requirements.
The USPS provides in its Domestic Mail Manual that the date in a meter postmark must be the actual date of deposit, with limited exceptions, and that meter postmarks used to prepay reply postage must not show the date. The USPS will not accept for mailing a post card that contains a postage meter date more than ten days old. Thus, a return receipt postcard containing a dated meter postmark may not be delivered by the USPS, because the postcard will be mailed by the Office substantially after the date on which the meter postmark is printed on the card.
Therefore, to ensure the receipt of a confirmation post card, the party filing the postcard should: (1) affix postage stamps to their postcards, or purchase already-stamped post cards from the USPS; or (2) if a postage meter is used, ensure that the meter postmark does not show the date, and follow the instructions in the postage meter license agreement regarding prepay reply postage. See notice at 1246 TMOG 42 (May 8, 2001).
304 Electronic Mail
304.01 Communications Acceptable Via Electronic Mail
Applicants and registrants may use e-mail to conduct informal communications regarding a particular application or registration.
Attachments. The USPTO will accept legible attachments to e-mail in .jpg or .pdf format. The USPTO will not accept or open attachments in any other format.
Informal Communications. The USPTO accepts informal communications from applicants via e-mail, as an alternative to telephone communications. For example, an applicant may submit via e-mail:
• Questions regarding an outstanding Office action that do not constitute a response;
• Authorization to issue an examiner’s amendment or priority action (see TMEP §§707.01 and 708.01);
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• Objection to examiner’s amendment (see TMEP §§707 and 707.02);
• Notification of termination of a cancellation proceeding that is the basis for suspension (see TMEP §716.02(a)).
These are just examples and not an exhaustive list of informal communications.
The examining attorney must ensure that all relevant informal e-mail communications from applicants are entered into the electronic record. See TMEP §§709.04 and 709.05 for further information.
304.02 Communications Not Acceptable Via Electronic Mail
Internet e-mail may not be used to file applications for registration of marks, responses to examining attorneys’ Office actions, amendments to allege use under 15 U.S.C. §1051(c), statements of use under 15 U.S.C. §1051(d), requests for extensions of time to file statements of use under 15 U.S.C. §1051(d)(2), affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k, affidavits of incontestability under 15 U.S.C. §1065, combined affidavits under 15 U.S.C. §§1058 and 1065, or combined filings under 15 U.S.C. §§1058 and 1059. These documents may be filed electronically using TEAS.
Effective September 20, 2004, the USPTO does not accept responses to examining attorneys’ Office actions via e-mail. Applicants who want to file a response electronically must use TEAS. See Trademark Operation Will No Longer Accept Responses to Office Actions that are Transmitted by E-Mail (OG Apr. 6, 2004), posted at http://www.uspto.gov/web/trademarks/notice_emailresponses.htm.
The Board does not accept e-mail communications.
304.03 Authorization of Electronic Mail Communications From the USPTO
The USPTO will send communications concerning an application or registration by e-mail only if e-mail communication is authorized by the applicant or registrant, or the applicant’s or registrant’s attorney.
The applicant or registrant may authorize the USPTO to communicate by e-mail by so indicating in the initial application or in any official written communication. The authorization must include the e-mail address to which e-mail is to be sent. The USPTO will not send e-mail to more than one e-mail address.
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It is the responsibility of the applicant, registrant or attorney to notify the USPTO of any changes of e-mail address. See TMEP §609.03.
The Office considers any authorization for e-mail communications to end upon the date of registration of a mark.
See TMEP §304.06 regarding outgoing e-mail.
304.04 Date of Receipt of Electronic Mail
The date of receipt of an incoming e-mail communication is the date the communication is received in the USPTO. 37 C.F.R. §2.195(a)(1).
See TMEP §304.05 regarding certificates of transmission by e-mail.
304.05 Certificate of Transmission by Electronic Mail
Under 37 C.F.R. §2.197, e-mail correspondence will be considered to be timely filed, even if received after the due date, if the correspondence is: (1) transmitted to the USPTO by e-mail on or before the due date; and (2) accompanied by a certificate attesting to the date of transmission. See TMEP §§306.05 et seq. regarding the certificate of transmission procedure under 37 C.F.R. §2.197.
If e-mail correspondence is timely filed with a certificate of transmission, but is not received by or is lost within the USPTO, the correspondence will be considered timely based on the date of transmission set forth on the certificate of transmission, if the party who transmitted the correspondence: (1) informs the USPTO in writing of the previous e-mail transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of its receipt; (2) provides a copy of the previously transmitted correspondence, including the certificate of transmission; and (3) submits a statement attesting to the personal knowledge of transmission of the correspondence. 37 C.F.R. §2.197(b). The statement attesting to the personal knowledge of transmission does not have to be verified. See TMEP §306.05(d) for additional information about correspondence that is transmitted with a certificate of transmission but not received by or lost within the USPTO.
The following wording is suggested for the certificate of transmission:
CERTIFICATE OF TRANSMISSION
I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________
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(Signature) ___________________________________________ (Date)
See TMEP §304.07 regarding signature of electronic mail.
Responses to examining attorneys’ Office actions cannot be filed by e-mail. See TMEP §304.02. Therefore, the certificate of transmission by e-mail procedure cannot be used for such responses.
304.06 Outgoing Electronic Mail
The USPTO will not send formal e-mail notices or correspondence to an applicant or registrant unless the applicant or registrant authorizes the USPTO to do so. TMEP §304.03.
When authorized to communicate by e-mail, the USPTO may send notices regarding Office actions and other official correspondence to the e-mail address designated by the applicant or registrant. The USPTO will not send correspondence to more than one e-mail address. See TMEP §304.08 regarding addresses for e-mail correspondence directed to the USPTO.
If outgoing electronic mail is returned as undeliverable, the USPTO will mail a paper copy to the correspondence address of record.
The USPTO is not required to send Office actions and other official correspondence by e-mail whenever the applicant or registrant authorizes e-mail correspondence. The USPTO may send correspondence by e-mail, regular mail, fax, or other appropriate means.
304.07 Signature of Electronic Mail
An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes. See 37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii)(A) and TMEP §611.01(c).
In addition, the USPTO will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.
A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .pdf format.
Under 37 C.F.R. §11.18(b), the use of an electronic signature under 37 C.F.R. §2.193(c)(1)(iii)(A) or an “/s/” notation, will be understood to constitute a certification that:
(1) The correspondence has been read by the applicant, registrant, or attorney;
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(2) The filing of the correspondence is authorized;
(3) To the best of the signatory’s knowledge, information, and belief, there is good ground to support the correspondence; and
(4) The correspondence is not presented for purposes of delay.
The signatory must personally sign the communication. See TMEP §§611.02, 611.01(b), and 611.01(c).
304.08 E-Mail Addresses for Correspondence With the Office
Where an applicant or registrant is permitted to send communications to the USPTO by e-mail (see TMEP §304.01), the applicant or registrant should send e-mail to the address set forth on the correspondence sent by the USPTO. Applicants and registrants should not send e-mail to more than one address in the USPTO, and should not send courtesy copies of an e-mail message (e.g., “Cc” or “Bcc”) to additional e-mail addresses within the USPTO.
Responses to examining attorneys’ Office actions cannot be filed by e-mail. See TMEP §304.02.
304.09 “Confirmation” Copies of E-Mail Communications Should Not Be Sent to the Office
Applicants, registrants, and attorneys should not send “confirmation” copies of e-mail communications to the USPTO by fax, regular mail, or any other means, because this can delay processing.
305 Mailing Documents to the Office
305.01 Mailing Addresses
Documents filed through TEAS are automatically sent to the appropriate location.
For trademark-related documents filed on paper, except for documents sent to the Assignment Services Branch for recordation, requests for copies of trademark documents, and certain documents filed under the Madrid Protocol (listed below), all trademark-related correspondence that is mailed to the USPTO should be addressed to:
Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313-1451
The names of individual employees should not be placed on the envelopes in which official communications are sent to the USPTO. Envelopes may be
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marked “Attention: Trademark Examining Operation.” Responses to Office actions should include the name of the examining attorney in the heading.
Documents Filed Under the Madrid Protocol
International applications under 37 C.F.R. §7.11, subsequent designations under 37 C.F.R. §7.21, responses to irregularity notices under 37 C.F.R. §7.14, requests to record changes in the International Register under 37 C.F.R. §§7.23 and 7.24, requests for transformation under 37 C.F.R. §7.31, requests to note replacement under 37 C.F.R. §7.28, and petitions to the Director to review the actions of the USPTO’s Madrid Processing Unit, when filed by mail, must be mailed to:
Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b).
Documents to be Recorded in Assignment Services Branch
To expedite processing, the USPTO recommends filing requests to record documents through the USPTO website, at http://etas.uspto.gov. Documents filed electronically are recorded much faster than their paper counterparts. Paper documents and cover sheets to be recorded in the Assignment Services Branch should be sent to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §§2.190(c) and 3.27.
Requests for Copies of Trademark Documents
Copies of trademark documents can be ordered through the USPTO website at www.uspto.gov. Requests for copies of documents can also be faxed or e-mailed to the USPTO, with an authorization to charge the fee to a credit card or USPTO deposit account. See TMEP §111 for additional information.
All other requests for certified or uncertified copies of trademark documents should be sent to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §§2.190(d).
305.02 Certificate of Mailing Procedure
37 C.F.R. §2.197. Certificate of mailing or transmission. (a) Except in the cases enumerated in paragraph (a)(2) of this section,
correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this
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section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if: (i) The correspondence is mailed or transmitted prior to expiration of the
set period of time by being: (A) Addressed as set out in §2.190 and deposited with the U.S. Postal
Service with sufficient postage as first class mail; or (B) Transmitted by facsimile to the Office in accordance with §2.195(c);
and (ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person signing the certificate should have a reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to:
(i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and
(ii) Madrid-related correspondence filed under §7.11, §7.21, §7.14, §7.23, §7.24 or §7.31.
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.
(c) The Office may require additional evidence to determine whether the correspondence was timely filed.
In 37 C.F.R. §2.197, there is a “certificate of mailing or transmission” procedure to avoid lateness due to mail delay. This procedure may be used for all trademark correspondence except:
• Applications for registration of marks;
• International applications under 37 C.F.R. §7.11;
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• Subsequent designations under 37 C.F.R. §7.21;
• Responses to notices of irregularity under 37 C.F.R. §7.14;
• Requests to record changes of ownership under 37 C.F.R. §7.23;
• Requests to record restrictions of the holder’s right of disposal, or the release of such restrictions, under 37 C.F.R. §7.24; and
• Requests for transformation under 37 C.F.R. §7.31.
37 C.F.R. §§2.197(a)(2) and 7.4(e).
Under the certificate of mailing or transmission procedure, correspondence is considered to be timely even if received after the due date, if the correspondence was: (1) deposited with the United States Postal Service as first class mail or transmitted to the USPTO by facsimile transmission before the expiration of the filing period; and (2) accompanied by a certificate attesting to the date of deposit or transmission.
Filers must retain a copy of the correspondence, including the signed and dated certificate. In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995).
See TMEP §§305.02(a) et seq. regarding the certificate of mailing procedure, and TMEP §§306.05 et seq. regarding the certificate of facsimile transmission procedure.
305.02(a) When Certificate of Mailing Procedure May Not Be Used
The certificate of mailing procedure may be used for all trademark filings except:
• An application to register a mark;
• International applications under 37 C.F.R. §7.11;
• Subsequent designations under 37 C.F.R. §7.21;
• Responses to notices of irregularity under 37 C.F.R. §7.14;
• Requests to record changes of ownership under 37 C.F.R. §7.23;
• Requests to record restrictions of the holder’s right of disposal, or the release of such restrictions, under 37 C.F.R. §7.24; and
• Requests for transformation under 37 C.F.R. §7.31.
37 C.F.R. §§2.197(a)(2) and 7.4(e).
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305.02(b) Mailing Requirements
The correspondence must be deposited in the United States mail, properly addressed (see TMEP §305.01 for mailing addresses), and the envelope must have sufficient postage as first class mail. Since first class mail services of the USPS are not available in foreign countries, the certificate of mailing procedure may not be used for sending mail to the USPTO from a foreign country.
305.02(c) Location and Form of Certificate
The certificate of mailing must: (1) state the date of deposit in the mail, which must be a date within the set filing period (this includes the last day of the period, or the succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia when the last day of the period falls on a Saturday, Sunday, or Federal holiday within the District of Columbia); and (2) be signed by a person who has a reasonable basis to expect the correspondence to be deposited in the mail on the date indicated. The signature of the certificate must be separate from any signature for the correspondence being deposited.
The best location for the certificate of mailing is at the beginning of the correspondence to which it pertains, typed in its entirety.
The certificate of mailing should be separated from contents of the correspondence that are on the same page. Several blank lines between the contents and the certificate will suffice.
If the certificate of mailing does not fit on the correspondence to which it pertains, the certificate may be placed on a separate sheet of paper that is attached securely to the correspondence. The separate sheet must exhibit or bear a complete identification of the nature of the document or fee as well as an identification of the application, registration, and/or proceeding to which the document pertains (including serial number or registration number). The separate sheet may be a cover letter or transmittal letter, with the certificate placed at the bottom of the letter and signed separately from the letter. If there is any doubt concerning the correspondence to which a certificate of mailing on a separate sheet relates, the USPTO will not accept the certificate.
There must be a certificate of mailing for each piece of correspondence. When correspondence for more than one application or registration is mailed in a single envelope, each item of correspondence must have its own certificate of mailing. Similarly, when more than one type of correspondence is submitted in connection with the same application, each item of correspondence must have its own certificate of mailing.
It is suggested that the certificate be signed by the applicant or the party involved in the proceeding, or by the attorney for such person. If someone
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else signs, it should be a responsible person in a position to know that the mail will be deposited on the date specified.
The USPTO accepts the date of deposit stated in the certificate of mailing on the basis of the statement of personal knowledge. The USPTO does not normally inspect the postmark on the envelope.
305.02(d) Wording of Certificate of Mailing
The following wording is suggested for the certificate of mailing.
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on the date shown below:
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________ (Signature)
___________________________________________ (Date)
305.02(e) Effect of Certificate of Mailing
The filing date assigned to paper correspondence is the date of actual receipt in the USPTO. 37 C.F.R. §2.195(a). The USPTO does not retain the envelopes in which material is received or record the date of the postmark.
The date of deposit indicated on the certificate of mailing is used only to determine whether the correspondence was deposited with the USPS within the filing period. Therefore, if the correspondence is actually received in the USPTO within the filing period, the certificate of mailing is ignored. If, however, the USPTO receives the correspondence after the filing period has expired, the USPTO looks to see whether a certificate of mailing was included. If no certificate is found, the correspondence is untimely.
When a document received after the expiration of the filing period includes a signed certificate of mailing, and the date of deposit on the certificate is within the filing period, the USPTO considers the correspondence to be timely filed.
If the filing period ends on a Saturday, Sunday, or Federal holiday within the District of Columbia, the correspondence is considered timely if the date of deposit on the certificate of mailing is the next succeeding day that is not a
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Saturday, Sunday or Federal holiday within the District of Columbia (see 37 C.F.R. §2.196 and TMEP §308).
Whenever it is necessary to change the effective filing date of an application (e.g., when an application filed under §1(b) of the Trademark Act is amended to request registration on the Supplemental Register after submission of an allegation of use), the date of actual receipt rather than the date on the certificate is the new effective filing date. See TMEP §§206 et seq. as to changes in the effective filing date of an application.
305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197 But Not Received by Office
If correspondence filed with a certificate of mailing is not received by (or is lost within) the USPTO, the USPTO will consider the correspondence to be timely based on the date of deposit stated in the certificate of mailing if the party who filed the correspondence:
(1) informs the USPTO in writing of the previous mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence;
(2) supplies an additional copy of the previously mailed correspondence, including a copy of the signed and dated certificate of mailing (see In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995)); and
(3) includes a statement attesting to the previous timely mailing on the basis of the signer’s personal knowledge. This statement does not have to be verified.
37 C.F.R. §2.197(b).
A party must notify the USPTO of the mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence. 37 C.F.R. §§2.146(d) and 2.197(b)(1). Where no written action is generated that can be used as a starting point for measuring timeliness, the two-month deadline runs from the date that the party who filed the correspondence became aware that there was a problem with the filing date of the correspondence. See TMEP §1705.04.
The required evidence should be sent to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g., the law office, ITU/Divisional Unit, or Post Registration Section.
If all three criteria listed above cannot be met, the only remedy available is a petition to revive under 37 C.F.R. §2.66 (if appropriate) or a petition under 37 C.F.R. §2.146, which must include a petition fee, and a statement that attests on a personal knowledge basis to the previous timely mailing, along with any
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additional evidence. See 37 C.F.R. §§2.66 and 2.146; TMEP §§1702 through 1708 regarding petitions under 37 C.F.R. §2.146 and TMEP §§1714 et seq. regarding petitions to revive.
The above procedure does not apply to the filing of an application for registration of a mark, or to the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) and TMEP §305.02(a).
The USPTO may require additional evidence relating to the mailing or transmission of correspondence. 37 C.F.R. §2.197(c). See, e.g., In re Klein, 6 USPQ2d 1547 (Comm’r Pats. 1987), aff’d sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff’d, 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989), cert. denied, 490 U.S. 1091 (1989).
305.02(g) Correspondence Deposited as First Class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
The USPS requires that all domestic first class mail that weighs 16 ounces or more be presented to a retail clerk at a USPS office. All such mail that is not presented to a retail clerk at a USPS office (e.g., is placed in a mailbox) will be returned by the USPS. The USPS has posted notice of this requirement on mailboxes. The “Express Mail” service of the USPS is not affected.
Correspondence must be deposited with the USPS as first class mail in compliance with any and all applicable requirements of the USPS to be considered “[d]eposited with the U.S. Postal Service,” within the meaning of 37 C.F.R. §2.197(a)(1)(i)(A). Therefore, correspondence returned by the USPS as not mailed in compliance with USPS requirements concerning mail weighing sixteen ounces or more is not entitled to any benefit under 37 C.F.R. §2.197. See notice at 1192 TMOG 43 (Nov. 12, 1996).
305.02(h) Certificate of Mailing Requirements Strictly Enforced
The requirements of 37 C.F.R. §2.197 are strictly enforced, and the USPTO denies petitions to consider a document timely filed as of the date on the certificate if a party fails to comply with these requirements.
A party’s inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of a rule under 37 C.F.R. §2.146(a)(5) or §2.148. See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995), aff’d mem., 95 F.3d 1166 (Fed. Cir. 1996) (Commissioner did not abuse his discretion in refusing to waive requirements of 37 C.F.R. §1.10(c) and grant filing date to patent application, where applicant failed to produce “Express Mail” customer receipt or any other evidence that application was actually deposited with USPS as “Express Mail”); In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995) (failure to retain executed hard copy of certificate of mailing under
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37 C.F.R. §1.8 not extraordinary situation that would justify waiver of rule); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pats. 1985) (counsel’s unawareness of 37 C.F.R. §1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pats. 1978) (lateness due to mail delay not deemed to be extraordinary situation, because certificate of mailing procedure under 37 C.F.R. §1.8 was available to petitioner).
305.03 “Express Mail”
37 C.F.R. §2.198. Filing of correspondence by “Express Mail.” (a)(1) Except for documents listed in paragraphs (a)(1)(i) through (vii) of
this section, any correspondence received by the Office that was delivered by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) will be considered filed with the Office on the date of deposit with the USPS. The Express Mail procedure does not apply to:
(i) Applications for registration of marks; (i) Applications for registration of marks; (ii) Amendments to allege use under section 1(c) of the Act; (iii) Statements of use under section 1(d) of the Act; (iv) Requests for extension of time to file a statement of use under section
1(d) of the Act; (v) Affidavits of continued use under section 8 of the Act; (vi) Renewal requests under section 9 of the Act; and (vii) Requests to change or correct addresses. (2) The date of deposit with USPS is shown by the “date in” on the
“Express Mail” label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date.
(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the “Express Mail” mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
(c) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date-in” on the “Express Mail” mailing label or other official USPS notation, provided that:
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(1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing; and
(3) The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” and of any other official notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) prior to the original mailing; and
(3) The petition includes a showing that establishes, to the satisfaction of the Director, that the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup on the requested filing date. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or evidence that came into being within one business day after the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS.
(e) If correspondence is properly addressed to the Office pursuant to §2.190 and deposited with sufficient postage in the “Express Mail Post Office to Addressee” service of the USPS, but not received by the Office, the party who mailed the correspondence may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed within two months after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) prior to the original mailing;
(3) The petition includes a copy of the originally deposited paper(s) or fee(s) showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the correspondence was deposited in the “Express Mail Post
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Office to Addressee” service prior to the last scheduled pickup on the requested filing date; and
(4) The petition includes a statement that establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the “Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and official notation entered by the USPS.
(f) The Office may require additional evidence to determine whether the correspondence was deposited as “Express Mail” with the USPS on the date in question.
Documents Excluded From 37 C.F.R. §2.198
Trademark Rule 2.198, 37 C.F.R. §2.198, provides a procedure for obtaining a filing date as of the date that correspondence is deposited as “Express Mail” with the USPS. However, this procedure does not apply to the following trademark documents:
• Applications for registration of marks;
• Amendments to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c);
• Statements of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
• Requests for extension of time to file a statement of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
• Affidavits of continued use under §8 of the Trademark Act, 15 U.S.C. §1058;
• Renewal applications under §9 of the Trademark Act, 15 U.S.C. §1059;
• Requests to change or correct addresses;
• Combined filings under §§8 and 9 of the Trademark Act, 15 U.S.C. §§1058 and 1059;
• Combined affidavits or declarations under §§8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and 1065;
• Responses to notices of irregularity under 37 C.F.R. §7.14;
• Requests for transformation under 37 C.F.R. §7.31; and
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• Requests to note replacement under §7.28.
37 C.F.R. §§2.198(a)(1) and 7.4(b)(2). See notice at 67 Fed. Reg. 36099 (May 23, 2002), available at http://www.uspto.gov/web/offices/com/sol/notices/expmailrule2.pdf.
If the documents listed above are filed by “Express Mail,” they will receive a filing date as of the date of receipt in the USPTO and not the date of deposit with USPS. 37 C.F.R. §2.195(a). See TMEP §303.01.
Lost Documents
If one of the documents listed above is sent by “Express Mail” but is lost within the USPTO, and the applicant or registrant presents proof of actual receipt in the form of evidence that a USPTO employee signed for or acknowledged the “Express Mail” package (e.g., an “Express Mail” mailing label that bears an Office date stamp or label or the signature of a USPTO employee, or evidence from the USPS website showing that the document was actually received in the USPTO), the USPTO will grant the document a filing date as of the date of actual receipt in the USPTO. The applicant or registrant must submit a request to change the filing date that includes a true copy of the document(s), and an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the “Express Mail” package. See TMEP §1711 regarding restoration of application filing dates, TMEP §1712.01 regarding reinstatement of abandoned applications, and TMEP §§1712.02 et seq. regarding reinstatement of cancelled or expired registrations.
If a document is sent by “Express Mail” but is not received by or is lost within the USPTO, and the applicant does not have proof of actual receipt in the USPTO, the USPTO will not grant a filing date to the document.
Certificate of Mailing Under 37 C.F.R. §2.197 for Documents Sent by Express Mail
For documents other than applications for registration of marks and the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) (see TMEP §305.02(a)), the certificate of mailing procedure of 37 C.F.R. §2.197 may be used for documents sent by “Express Mail” as well as documents sent by first class mail. Under the certificate of mailing procedure, correspondence is considered to be timely filed even if received after the due date, if the correspondence is deposited with the USPS with sufficient postage as first class mail before the expiration of the filing period and accompanied by a certificate attesting to the date of deposit. Correspondence sent by “Express Mail” is deemed to meet the requirements of 37 C.F.R. §2.197(a)(1)(i)(A) for postage as first class mail, because the postage for “Express Mail” exceeds the postage required for first class mail. However, to use the certificate of mailing procedure for documents mailed by “Express Mail,” the filer must place a certificate attesting to the date of deposit and meeting the
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requirements of 37 CFR §2.197(a)(1)(ii) on the document prior to mailing. See TMEP §§305.02 et seq. for further information about the certificate of mailing procedure.
The following wording is suggested for a certificate of mailing when correspondence is sent by “Express Mail:”
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service as “Express Mail” in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on the date shown below:
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________ (Signature)
___________________________________________ (Date)
Documents Not Excluded From 37 C.F.R. §2.198
The procedures for filing documents by “Express Mail” under 37 C.F.R. §2.198 may be used for documents not expressly excluded by 37 C.F.R. §2.198(a), e.g., documents filed with the Board or the Assignment Services Branch of the Office. These documents are entitled to a filing date as of the date of deposit with USPS if the filer meets the requirements of 37 C.F.R. §2.198. The rule requires: (1) the document must be sent through the “Express Mail Post Office to Addressee” service of the USPS; (2) it must be deposited prior to the last scheduled pickup on the relevant date; (3) it must be properly addressed in accordance with the requirements of 37 C.F.R. §2.190; and (4) the number of the “Express Mail” mailing label must be placed on the document prior to mailing.
If a document not excluded by 37 C.F.R. §2.198(a) is filed in accordance with the requirements of 37 C.F.R. §2.198, but the document is not given a filing date as of the date of deposit as “Express Mail,” the filer may request the USPTO to change the filing date of the document, pursuant to 37 C.F.R. §2.198(c), (d) or (e). Rule 2.198(c) applies when there is a discrepancy between the filing date assigned by the USPTO and the “date-in” entered by the USPS on the “Express Mail” mailing label; Rule 2.198(d) applies when the “date-in” is incorrectly entered or omitted by the USPS; and Rule 2.198(e) applies when correspondence deposited with the USPS as “Express Mail” is not received by (or is lost within) the USPTO. A petition to change the filing date of a document pursuant to 37 C.F.R. §2.198 must:
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(1) be filed within two months of the issuance date of the action from which relief is requested, or, if there is no “issuance of an action,” within two months of the date that the party who filed the correspondence became aware that there was a problem with the USPTO’s receipt of the correspondence (37 C.F.R. §§2.146(d), 2.198(c)(1), 2.198(d)(1), and 2.198(e)(1); TMEP §1705.04);
(2) include a showing that the number of the “Express Mail” mailing label was placed on the correspondence prior to the original mailing (37 C.F.R. §§2.198(c)(2), 2.198(d)(2), and 2.198(e)(2));
(3) include a true copy of the “Express Mail” mailing label with the “date- in” clearly marked (37 C.F.R. §§2.198(c)(3), 2.198(d)(3), and 2.198(e)(3));
(4) if the filer contends that the “date-in” was entered incorrectly by the USPS, include: (a) a showing that the correspondence was deposited as “Express Mail” prior to the last scheduled pickup on the requested filing date; and (b) evidence from the USPS or evidence that came into being after deposit and within one business day of the deposit of the correspondence as “Express Mail” (37 C.F.R. §2.198(d)(3)); and
(5) if the correspondence is lost within or never received by the USPTO, include: (a) a true copy of the originally deposited correspondence showing the number of the “Express Mail” mailing label; and (b) a statement, signed by the person who deposited the documents as “Express Mail” with the USPS, setting forth the date and time of deposit, and stating that the copies of the correspondence and “Express Mail” mailing label accompanying the petition are true copies of those originally sent (37 C.F.R. §§2.198(e)(3) and 2.198(e)(4)).
When correspondence not excluded by 37 C.F.R. §2.198(a) is placed in an “Express Mail” drop box after the box has been cleared for the last time on a given day, it is considered to have been deposited as of the date of receipt indicated on the “Express Mail” mailing label by the USPS employee. See notice at 61 Fed. Reg. 56439 (Nov. 1, 1996) and 1192 TMOG 95 (Nov. 26, 1996).
305.04 Interruptions in U.S. Postal Service
37 C.F.R. §2.195(e). Interruptions in U.S. Postal Service. (1) If the Director designates a postal service interruption or emergency
within the meaning of 35 U.S.C. 21(a), any person attempting to file correspondence by “Express Mail Post Office to Addressee” service who was unable to deposit the correspondence with the United States Postal Service
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due to the interruption or emergency may petition the Director to consider such correspondence as filed on a particular date in the Office.
(2) The petition must: (i) Be filed promptly after the ending of the designated interruption or
emergency; (ii) Include the original correspondence or a copy of the original
correspondence; and (iii) Include a statement that the correspondence would have been
deposited with the United States Postal Service on the requested filing date but for the designated interruption or emergency in ‘‘Express Mail’’ service; and that the correspondence attached to the petition is the original correspondence or a true copy of the correspondence originally attempted to be deposited as Express Mail on the requested filing date.
(3) Paragraphs (e)(1) and (e)(2) of this section do not apply to correspondence that is excluded from the Express Mail procedure pursuant to §2.198(a)(1).
Under 35 U.S.C. §21(a) and 37 C.F.R. §2.195(e), if there is an interruption or emergency in the United States Postal Service, the Director may consider correspondence to have been filed in the Office on a particular date if the correspondence or a copy thereof is: (1) filed promptly after the ending of the designated interruption or emergency; and (2) accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service. This procedure does not apply to correspondence that is excluded from the “Express Mail” procedure pursuant to §2.198(a)(1). 37 C.F.R. §2.195(e)(3). See TMEP §305.03 regarding “Express Mail.”
306 Facsimile Transmission (Fax)
Extract from 37 C.F.R. §2.195. Receipt of trademark correspondence. (a) * * * Trademark correspondence received in the Office is given a filing date as
of the date of receipt except as follows: * * * (3) Correspondence transmitted by facsimile will be given a filing date as
of the date on which the complete transmission is received in the Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
* * * * * (c) Facsimile transmission. Except in the cases enumerated in paragraph
(d) of this section, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal
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holiday within the District of Columbia. See §2.196. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office. The application serial number, registration number, or proceeding number should be entered as a part of the sender’s identification on a facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks; (2) Drawings submitted under §2.51, §2.52, §2.72, or §2.173; (3) Correspondence to be filed with the Trademark Trial and Appeal
Board, except notices of ex parte appeal; (4) Requests for cancellation or amendment of a registration under section
7(e) of the Trademark Act; and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act; and
(5) Madrid-related correspondence submitted under §7.11, §7.21, §7.14, §7.23, §7.24, or §7.31.
* * * * *
The USPTO permits the filing of certain correspondence by fax. See TMEP §306.03 regarding the date of receipt of correspondence that is filed by fax.
A certificate of transmission may be used to establish timely filing in the event that the correspondence is transmitted within the response period but is received in the Office after expiration of the response period, or is not received by or lost within the Office. See TMEP §§306.05 et seq. regarding the requirements for the certificate of transmission procedure.
306.01 Documents That May Not Be Filed by Facsimile Transmission
All trademark documents except the documents listed below may be filed by fax, and are eligible for the benefits of the certificate of transmission provided for in 37 C.F.R. §2.195.
The following types of trademark correspondence may not be filed by facsimile transmission and, if submitted by fax, will not be given a filing date:
(1) Trademark applications;
(2) Drawings submitted under 37 C.F.R. §§2.51, 2.52, 2.72, or 2.173;
(3) Requests for cancellation or amendment of a registration under 15 U.S.C. §1057(e);
(4) Certificates of registration;
(5) Correspondence to be filed with the Board, except a notice of ex parte appeal;
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(6) Madrid-related correspondence submitted under 37 C.F.R. §7.11, §7.14, §7.21,§7.23, §7.24, or §7.31; and
(7) Documents that are required by statute to be certified (e.g., certified copies of court orders).
37 C.F.R. §§2.195(d) and 7.4(d). Applications for registration of marks may be filed through TEAS.
When any trademark document specifically excluded from the fax transmission procedure is received in the USPTO by fax, the document will not be accepted. Vibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (faxed notice of opposition unacceptable and can be given no effect). As a courtesy, the USPTO will attempt to notify senders whenever correspondence that falls within one of these prohibitions is sent to the USPTO by fax.
306.02 Fax Machines Designated to Accept Relevant Trademark Documents
The fax machines that are designated to accept trademark documents are attended between the business hours of 8:30 a.m. and 5:00 p.m., Eastern Time, Monday through Friday, excluding Federal holidays within the District of Columbia.
Submissions by fax should be transmitted to the location for which they are intended. A USPTO Contacts List, which includes fax numbers, is available on the USPTO website at http://www.uspto.gov, and appears periodically in the Official Gazette. In addition, questions about fax numbers may be directed to the Trademark Assistance Center at (571) 272-9250 or (800) 786- 9199.
The USPTO does not formally acknowledge receipt of documents transmitted by fax, but USPTO fax machines will usually confirm to the sending unit that the transmission is complete.
Each fax machine location in the USPTO maintains a log comprising a collection of daily activity sheets recording all fax transmissions received. These logs can be used as evidence of receipt in the USPTO, and may be used to reinstate applications and registrations. The individual activity report that pertains to a particular transmission received in the USPTO is kept with the correspondence.
306.03 Effect of Filing by Fax
The filing date of correspondence received in the USPTO by fax, regardless of whether it contains a certificate of transmission, is the date that the complete transmission is received by a USPTO fax machine, unless the
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transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia. Correspondence for which transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia is given a filing date as of the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(3).
For example, a 20-minute fax transmission to the USPTO from California starting on a Friday at 8:45 p.m. Pacific Time would be completed at 9:05 p.m. Pacific Time. The complete transmission would be received in the USPTO at approximately 12:05 a.m. Eastern Time on Saturday. The filing date accorded to the correspondence is the date of the following business day, which in this case would be Monday (assuming that Monday is not a Federal holiday within the District of Columbia).
The phrase “complete transmission” means that the transmission was received in its entirety. For example, if page one of a ten-page fax transmission is received in the USPTO at 11:55 p.m. on a Tuesday and page ten of that transmission is received at 12:05 a.m. Wednesday, the filing date accorded to that correspondence will be the date of that Wednesday (assuming that Wednesday is not a Federal holiday within the District of Columbia).
If the sender wants the correspondence to be considered timely filed as of the date that the transmission began, the correspondence must include a certificate of transmission under 37 C.F.R. §2.197(a). See TMEP §306.05(c) regarding the effect of a certificate of transmission.
306.04 Procedure for Filing by Fax
Each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the Office. The application serial number or registration number should be entered as a part of the sender’s identification on a facsimile cover sheet. 37 C.F.R. §2.195(c). Applicants should wait until an application serial number is assigned before filing any document related to a new application by fax. See 37 C.F.R. §2.194(a).
It is recommended that each transmission include a cover sheet that, in addition to stating the application serial number or registration number, specifies the mark, the number of pages being transmitted, and the name, address, fax number, and telephone number of the transmitting party.
Each facsimile-transmitted document must be legible. The preferred size of the document being submitted is 8½ inches by 11 inches, letter size or A4 paper. Because equipment used by the Office cannot print a document larger than 8½ inches by 11 inches, correspondence should not be transmitted on larger paper.
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When correspondence is filed by facsimile transmission, it is recommended that the sending facsimile machine generate a report confirming transmission for each transmission session. This report should be retained by the applicant, along with the original correspondence, as evidence of content and date of transmission.
Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax. 37 C.F.R. §2.193(a). This can delay processing.
306.05 Certificate of Transmission Procedure
37 C.F.R. §2.197. Certificate of mailing or transmission. (a) Except in the cases enumerated in paragraph (a)(2) of this section,
correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if: (i) The correspondence is mailed or transmitted prior to expiration of the
set period of time by being: (A) Addressed as set out in §2.190 and deposited with the U.S. Postal
Service with sufficient postage as first class mail; or (B) Transmitted by facsimile to the Office in accordance with §2.195(c);
and (ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person signing the certificate should have a reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to:
(i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and
(ii) Madrid-related correspondence filed under §7.11, §7.21, §7.14, §7.23, §7.24 or §7.31.
(b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
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(3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.
(c) The Office may require additional evidence to determine whether the correspondence was timely filed.
Trademark Rule 2.197, 37 C.F.R. §2.197, provides a certificate of transmission procedure to avoid lateness when correspondence is faxed within the response period but is received in the USPTO after expiration of the response period, or not received, or lost within the USPTO. The certificate of transmission procedure can be used for any correspondence that can be filed by fax. See TMEP §306.01 regarding documents that can be filed by fax.
Under the certificate of transmission procedure, certain correspondence will be considered to be timely filed even if received after the end of the filing period, if the correspondence is transmitted by fax to the USPTO before the expiration of the filing period and accompanied by a certificate attesting to the date of transmission. The person signing the certificate certifies the expectation that the transmission would be initiated before midnight, local time, on the date specified.
Filers must retain a copy of the correspondence, including the signed and dated certificate. See In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995).
See TMEP §306.05(d) regarding the procedure for establishing the timely filing of correspondence that was faxed to the USPTO with a certificate of transmission under 37 C.F.R. §2.197, but was lost or misplaced.
See TMEP §304.05 regarding certificates of transmission by e-mail.
306.05(a) Location and Form of Certificate of Transmission
The certificate of transmission should be clearly labeled as such and should include a reference to the registration number or application serial number, the date of transmission, and the signature of the person attesting that the document is being transmitted on a certain date.
When possible, the certificate should appear on the document being transmitted, rather than on a separate sheet of paper. See notices at 58 Fed. Reg. 54494 (Oct. 22, 1993) and 1157 TMOG 87, 92-93 (Dec. 28, 1993).
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If the certificate of facsimile transmission is presented on a separate paper, it must identify the document, and the application or registration to which it relates.
306.05(b) Wording of Certificate of Transmission
The following wording is suggested for the certificate of transmission:
CERTIFICATE OF TRANSMISSION
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date shown below.
___________________________________________ (Typed or Printed Name of Person Signing Certificate)
___________________________________________ (Signature)
___________________________________________ (Date)
306.05(c) Effect of Certificate of Transmission
As noted in TMEP §306.03, the filing date given to correspondence received by fax transmission is the date that the complete transmission is received by a USPTO fax machine, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date is the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
The date of transmission on the certificate is used only to determine whether the correspondence was transmitted to the USPTO within the filing period. Therefore, if the complete transmission is actually received in the USPTO within the filing period, the certificate of transmission is ignored. If the transmission is completed after the expiration of the filing period, the USPTO looks at the correspondence to see if a certificate of transmission was included. If no certificate is found, the correspondence is untimely.
If the correspondence includes a signed certificate of transmission, and the date of transmission on the certificate is within the filing period, the correspondence is considered to be timely.
For example, if a West Coast applicant transmitted correspondence by fax on the last day of the response period, beginning before 9:00 p.m. Pacific Time (midnight Eastern Time) but completed after 9:00 p.m. Pacific Time, the USPTO would give the correspondence a filing date as of the next business day, because that is the date on which the USPTO received the complete transmission. However, if the practitioner affixed a certificate of transmission
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to the faxed correspondence indicating that the correspondence was being transmitted on the last day of the response period, then the correspondence would be considered timely filed, even though the transmission completed after 9:00 p.m. Pacific Time (midnight Eastern Time) was received in the USPTO the day after the deadline for response.
If the filing period ends on a Saturday, Sunday or Federal holiday within the District of Columbia, the correspondence will be considered to be timely if the date of transmission on the certificate is the next succeeding day that is not a Saturday, Sunday or Federal holiday within the District of Columbia (see 37 C.F.R. §2.196 and TMEP §308).
Whenever it is necessary to change the effective filing date of an application (e.g., when an application filed under §1(b) of the Trademark Act is amended to request registration on the Supplemental rather than the Principal Register after submission of an allegation of use) and the correspondence included a certificate of transmission under 37 C.F.R. §2.197, the date of actual receipt (as stamped or labeled on the relevant correspondence) rather than the date on the certificate is used as the new effective filing date. See TMEP §§206 et seq. as to changes in the effective filing date of an application.
306.05(d) Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §2.197 But Not Received by Office
Rule 2.197(b) sets forth procedures for requesting that correspondence be considered timely when the correspondence is filed with a certificate of transmission, but is not received by or is lost within the USPTO. Such correspondence will be considered timely based on the date of transmission set forth on the certificate of transmission, if the party who transmitted the correspondence:
(1) informs the USPTO in writing of the previous fax transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence;
(2) supplies an additional copy of the previously transmitted correspondence, including a copy of the signed and dated certificate of transmission (see In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995)); and
(3) includes a statement attesting to the previous timely transmission on the basis of the signer’s personal knowledge. A copy of the sending unit’s report confirming transmission may be used to support this statement. The statement does not have to be verified.
The party who transmitted the correspondence must notify the USPTO of the transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence. 37 C.F.R.
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§§2.146(d) and 2.197(b)(1). Where no written action is generated that can be used as a starting point for measuring timeliness, the two-month deadline runs from the date that the party who filed the correspondence became aware that there was a problem with the filing date. See TMEP §1705.04.
The required evidence should be directed to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g., the law office, ITU/Divisional Unit, or Post Registration Section.
If all the above criteria cannot be met, the only remedy available is a petition to revive under 37 C.F.R. §2.66 (if appropriate), or a petition under 37 C.F.R. §2.146, which must include a petition fee, and a statement that attests on a personal knowledge basis to the previous timely transmission, along with any additional evidence. See 37 C.F.R. §§2.66 and 2.146; TMEP §§1702 through 1708 regarding petitions under 37 C.F.R. §2.146, and TMEP §§1714 et seq. regarding petitions to revive.
The above procedure does not apply to submissions that are excluded from the certificate of mailing or transmission procedures under 37 C.F.R. §2.195(d) or §2.197(a)(2). See TMEP §306.01.
The USPTO may require evidence relating to the transmission of correspondence under 37 C.F.R. §2.197(a), to establish an actual date of transmission. 37 C.F.R. §2.197(c). See, e.g., In re Klein, 6 USPQ2d 1547 (Comm’r Pats. 1987), aff’d sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff’d, 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989), cert. denied, 490 U.S. 1091 (1989).
306.06 Requirements for Certificate of Transmission Strictly Enforced
The requirements of 37 C.F.R. §2.197 are strictly enforced, and petitions to consider a document timely filed as of the date on the certificate are denied when a party fails to comply with these requirements. A party’s inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of the rule under 37 C.F.R. §2.146(a)(5) or §2.148. See TMEP §305.02(h) and cases cited therein.
307 Hand Delivery
Trademark Operation, Madrid Processing Unit, and Trademark Trial and Appeal Board. Correspondence may be hand-delivered between 8:30 a.m. and 5:00 p.m., Eastern Time, Monday through Friday, except Federal holidays within the District of Columbia, to the following location:
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Trademark Assistance Center James Madison Building - East Wing Concourse Level 600 Dulany Street Alexandria, VA
Trademark examining attorneys will not accept documents for filing (either with or without fees).
If the filer wants a receipt, he or she should provide a card, which will be date-labeled and handed back to the person delivering the document. When a card is used for receipt, it should include the applicant’s name, the application serial number or registration number, the mark, and the title or a description of the document being filed. The card should also specify the items submitted (e.g., drawing, specimen, fee). See TMEP §303.02(c).
Customer Service Window. The USPTO strongly encourages parties who are hand-delivering trademark correspondence to bring it directly to the Trademark Assistance Center at the address listed above. Use of any patent box for trademark-related correspondence is strongly discouraged, and may result in delayed processing. However, the USPTO will accept trademark correspondence delivered to the Customer Service Window located in the Randolph Building, 401 Dulany Street, Alexandria, Virginia. The USPTO will stamp postcard-type receipts to acknowledge the receipt of correspondence filed at the Customer Service Window. The Customer Service Window is open from 8:30 a.m. until 12:00 midnight, Monday through Friday, except Federal holidays within the District of Columbia.
See TMEP §309 regarding unscheduled closings of the USPTO.
308 Period Ending on Saturday, Sunday, or Federal Holiday
35 U.S.C. §21(b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day. 37 C.F.R. §2.196. Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by regulation under this part for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day that is not a Saturday, Sunday, or a Federal holiday.
(See also 37 C.F.R. §2.145 for time for appeal to court and civil action.)
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Any action or fee that is due on a date falling on a Saturday, Sunday, or a Federal holiday within the District of Columbia is considered timely if the action is received, or the fee paid, on the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia. This applies to all documents, whether filed through TEAS or on paper.
The following days are Federal holidays in the District of Columbia, under 5 U.S.C. §6103:
• New Year’s Day, January 1.
• Birthday of Martin Luther King, Jr., the third Monday in January.
• Washington’s Birthday, the third Monday in February.
• Memorial Day, the last Monday in May.
• Independence Day, July 4.
• Labor Day, the first Monday in September.
• Columbus Day, the second Monday in October.
• Veterans Day, November 11.
• Thanksgiving Day, the fourth Thursday in November.
• Christmas Day, December 25.
• Inauguration Day (January 20 of each fourth year after 1965), except when it falls on a Saturday (see Note below).
As to the observance of holidays that fall on Saturday, 5 U.S.C. §6103 also provides:
(b)(1) Instead of a holiday that occurs on a Saturday, the Friday immediately before is a legal public holiday....
NOTE: If Inauguration Day (January 20 of each fourth year after 1965) falls on a Saturday, the preceding Friday is not a legal public holiday for purposes of 35 U.S.C. §21. When Inauguration Day falls on Sunday, the next succeeding day selected for the public observance of the inauguration of the President is a legal public holiday. 5 U.S.C. §6103(c).
309 Unscheduled Closings of the United States Patent and Trademark Office
When the USPTO is officially closed by executive order of the President or by the Office of Personnel Management for an entire day because of some unscheduled event, such as adverse weather conditions, the USPTO will
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consider that day to be a “Federal holiday within the District of Columbia” under 35 U.S.C. §21. 37 C.F.R. §2.2(d). Any action or fee due that day is considered timely if the action is taken, or the fee paid, on the next succeeding business day that the USPTO is open.
However, when the USPTO is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., documents are due on that day even though the USPTO may be officially closed for some period of time during the business day because of an unscheduled event. TEAS, or the procedures of 37 C.F.R. §2.197, may be used, as appropriate, for the filing of documents during unscheduled closings of the USPTO.
310 Computing Period for Response to Office Action or Notice
The deadline for responding to an Office action, notice of allowance, or other notice issued by the USPTO is computed from the date of issuance of the action or notice to the date the response is received in the USPTO. See TMEP §303.01 regarding the date of receipt in the USPTO.
For example, a response to an examining attorney’s Office action dated August 31 is due on the following February 28 (or 29 if it is a leap year); a response to an Office action dated February 28 is due on August 28 and not on the last day of August. Ex parte Messick, 7 USPQ 57 (Comm’r Pats. 1930).
Under 37 C.F.R. §2.197, correspondence is considered to be timely filed even if it is received after the expiration of the filing period, if the correspondence was deposited with the USPS as first class mail or transmitted to the USPTO by facsimile transmission before the expiration of the filing period and accompanied by a certificate attesting to the date of mailing or transmission. See TMEP §§305.02 et seq. regarding the certificate of mailing procedure, and TMEP §§306.05 et seq. regarding the certificate of transmission procedure.
If a document or fee is due on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the document or fee is considered timely if it is received on or before the following day that is not a Saturday, Sunday or a Federal holiday within the District of Columbia. 35 U.S.C. §21(b); 37 C.F.R. §2.196; TMEP §308.
See TMEP §309 regarding unscheduled closings of the USPTO.
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Chapter 400 Processing Documents and Fees
401 Processing New Applications
401.01 Filing Receipts
401.02 Serial Numbers and Series Codes
401.03 Data Entry
401.04 Creation of Application Records
402 Electronic Application and Registration Records
402.01 USPTO No Longer Creates Paper Copies of Certain Trademark-Related Documents
403 Correspondence Returned as Undeliverable
404 Documents Not Returnable
405 Fees
405.01 Credit Cards
405.02 Checks
405.02(a) Personal Checks
405.03 Deposit Accounts
405.04 Refunds
405.05 Electronic Funds Transfer
405.06 Payments Refused or Charged Back By Financial Institutions
401 Processing New Applications
Upon receipt in the USPTO, trademark applications filed under §1 or §44 of the Trademark Act are given a date of receipt and reviewed for compliance with the minimum requirements for receipt of a filing date (see TMEP §202). See TMEP §§201 and 1904.01(b) regarding the filing date of applications under §66(a) of the Trademark Act.
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If an application meets the minimum filing date requirements of 37 C.F.R. §2.21, it is given a filing date and serial number.
See TMEP §§204 et seq. regarding the processing of applications that are not entitled to a filing date.
401.01 Filing Receipts
TEAS Applications
When an application is filed electronically, the USPTO generally receives it within seconds after filing, and TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the application filing date, and may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information and general processing information. No paper filing receipt is sent by the United States Patent and Trademark Office (“USPTO”) to the applicant.
The applicant should immediately review the summary of the filed information for accuracy. If the information in the summary is inconsistent with the information transmitted by applicant, the applicant or attorney should notify the USPTO by sending an e-mail message to TEAS@uspto.gov.
Section 66(a)Applications
For §66(a) applications (i.e., requests for extensions of protection of international registrations to the United States), the USPTO sends an acknowledgment of receipt of the application to the International Bureau of the World Intellectual Property Organization (“IB”), and the IB sends the acknowledgment to the applicant. The USPTO also separately sends a filing receipt to the correspondence address of record, for informational purposes only. See TMEP §§1904.02(i) regarding the correspondence address in §66(a) applications.
Paper Applications Under §1 or §44
For paper applications under §1 or §44 of the Trademark Act, after an application has been given a filing date, the Trademark Reporting and Monitoring (“TRAM”) System generates a filing receipt, which is sent to the applicant. The filing receipt identifies the following: (1) the mark; (2) the application serial number, filing date, and register; (3) the type of mark (e.g., trademark or service mark); (4) the statutory basis or bases for filing, if provided at the time of filing; (5) the identification of goods and/or services, and international classes; (6) information about the applicant (and the applicant’s attorney, if provided); and (7) the address to be used for
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correspondence. See TMEP §201 for further information about what constitutes the filing date.
The applicant or attorney should review the information on the filing receipt for accuracy and notify the USPTO in writing of any discrepancy. A request for correction of a filing receipt should be directed to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451, or sent via e-mail to TMfilingreceipt@uspto.gov.
An applicant should send a request for correction of a filing receipt only if the information on the filing receipt is inconsistent with the information in the application as filed. If the applicant made an error in the application, the applicant should file an amendment rather than a request for correction of the filing receipt. An electronic form for filing preliminary amendments is available through TEAS. Note: The mere filing of a preliminary amendment does not guarantee that the amendment will be accepted. For example, the examining attorney will not accept a preliminary amendment that materially alters the mark shown on the original drawing, or that expands the scope of the goods and/or services in the original application. See TMEP §807.14 regarding material alteration of a mark, and TMEP §1402.07 regarding the scope of the identification of goods and services for purposes of amendment.
401.02 Serial Numbers and Series Codes
Each application for registration is assigned a six-digit serial number, preceded by a two-digit series code.
As a general rule, the serial numbers of applications filed prior to the 1905 - 1920 Acts are preceded by the series code “70.”
Applications filed under the 1905 - 1920 Acts (i.e., applications filed through July 4, 1947) were preceded by the series code “71.” The last serial number was 526,346.
As of July 5, 1947, applications were filed under the 1946 Act, beginning with number 526,500 and running through number 700,943 (preceded by the series code “71”).
On January 3, 1956, a new series of serial numbers preceded by the series code “72” was started, after a change in record-keeping methods. This series ran through number 467,233, issued on August 31, 1973.
A new series of serial numbers preceded by the series code “73” began with applications filed on September 4, 1973, which was the first day of receipt of mail after the adoption of the international classification of goods and services as of September 1, 1973 (see TMEP §1401.02).
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A new series of serial numbers preceded by the series code “74” began with applications filed on November 16, 1989, the date on which the Trademark Law Revision Act of 1988 took effect.
A new series of serial numbers preceded by the series code “75” began with applications filed on October 1, 1995.
A new series of serial numbers preceded by the series code “76” began with applications filed on March 20, 2000.
A series of serial numbers preceded by the series code “77” began September 14, 2006 for applications filed through TEAS on or after that date.
A series of serial numbers preceded by the series code “78” was used for TEAS applications filed prior to September 14, 2006.
Effective November 2, 2003, a series of serial numbers preceded by the series code “79” is used for requests for extension of protection of international registrations to the United States under §66(a) of the Trademark Act.
A range of serial numbers, beginning with number 975,000, is used for applications that are created through the “dividing” of an application (see TMEP §§1110 et seq.).
See TMEP §1205.02 regarding series code “89.”
401.03 Data Entry
For applications filed through TEAS, the data provided by the applicant is loaded directly into the USPTO’s automated TRAM System.
For applications filed on paper, the application documents are scanned into the Trademark Image Capture and Retrieval System (“TICRS”), and the data is manually entered into TRAM. TRAM may be used by USPTO employees to obtain information about the location and status, prosecution history, ownership, and correspondence address for applications and registrations. This information is available to the public through the Trademark Applications and Registrations Retrieval (“TARR”) database, available on the USPTO’s website at http://tarr.uspto.gov.
401.04 Creation of Application Records
For TEAS applications, the USPTO maintains an electronic record containing all incoming and outgoing documents. See TMEP §402.
For paper applications, the USPTO scans all incoming documents and creates an electronic record. The USPTO also creates a paper file jacket and places all incoming documents into the file jacket. The examining attorney
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works from the electronic record, and outgoing communications are put into the electronic record only.
All applications are electronically routed to the law offices.
402 Electronic Application and Registration Records
The USPTO maintains TICRS, which includes images of the contents of trademark application and registration records.
TICRS is available in the Public Search Facility, free of charge, to all members of the public who visit the USPTO. Members of the public can print images of documents from TICRS for a fee.
The public may also view and print images of the contents of trademark application and registration records through the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov/. Electronic images of Trademark Trial and Appeal Board proceeding records are also available on the USPTO website at http://ttabvue.uspto.gov/ttabvue/. TDR and TTABVUE are available 24 hours a day, seven days a week, free of charge.
402.01 USPTO No Longer Creates Paper Copies of Certain Trademark-Related Documents
Effective April 12, 2004, the USPTO no longer creates paper file copies of certain trademark-related documents that are submitted to the USPTO in electronic format. Furthermore, the USPTO does not generate paper copies of certain trademark documents that the USPTO creates, except for copies that are sent to recipients by mail. See New USPTO Policies Regarding (1) Generation of Paper Copies of Trademark-Related Documents and (2) Public Access to Existing Paper Copies of Trademark-Related Documents (TMOG Apr. 6, 2004), at http://www.uspto.gov/web/offices/com/sol/og/2004/week14/pattmcp.htm.
All these documents can be viewed through TICRS and TDR.
The USPTO still provides certified paper copies of all trademark documents, upon request and payment of the appropriate fee. See TMEP §111.
403 Correspondence Returned as Undeliverable
If a paper Office action or notice (e.g., a notice of allowance) is returned to the USPTO because the United States Postal Service has not been able to deliver it, the time for response will not be extended unless the USPTO sent the Office action to the wrong address due to a USPTO error.
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If the USPTO sent the Office action or notice to the wrong address due to a USPTO error, the USPTO will reissue the Office action or notice and provide the applicant/registrant with a new response period. A “USPTO error in sending the Office action to the wrong address” means that the USPTO either entered the correspondence address incorrectly or failed to properly enter a notice of change of address filed before the date on which the action was issued. The transmittal of a response on letterhead bearing a new address is not a proper notice of change of address. The applicant or attorney must specifically request that the correspondence address be changed. See TMEP §§609.02 and 609.02(a).
If the Office action or notice was sent to the correspondence address of record (see TMEP §§609 et seq. regarding the correspondence address), but was returned as undeliverable, the USPTO will try to obtain the correct address and forward the Office action or notice. However, the time for response will not be extended.
The USPTO scans the returned action and envelope into TICRS.
If outgoing e-mail is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record. See TMEP §§304 et seq. regarding e-mail.
See TMEP §§717 et seq. regarding the reissuing of examining attorney’s Office actions.
404 Documents Not Returnable
37 C.F.R. §2.25 Documents not returnable. Except as provided in §2.27(e), documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed.
Documents filed in the USPTO by the applicant or registrant become part of the official record and will not be returned or removed. 37 C.F.R. §2.25. However, documents ordered to be filed under seal pursuant to a protective order issued by a court or by the TTAB, pursuant to 37 C.F.R. §2.27(e), are not made part of the official record.
The USPTO will furnish copies of the contents of trademark application, registration, and TTAB proceeding records upon request and payment of the required fee. See TMEP §111.
405 Fees
37 C.F.R. §2.207. Methods of payment. (a) All payments of money required in trademark cases, including fees for
the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a
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cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
(b) Payments of money required for trademark fees may also be made by credit card, except for replenishing a deposit account. 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.
See 37 C.F.R. §2.6(a)(i) and TMEP §§810 et seq. regarding the fee for filing an application for registration.
See TMEP §1903.02 regarding payment of fees to the IB through the USPTO.
405.01 Credit Cards
Under 37 C.F.R. §2.207, the USPTO accepts payment of fees by credit card, subject to actual collection of the fee.
Any payment of a fee by credit card must be in writing. 37 C.F.R. §2.191. A form for authorizing charges to a credit card can be accessed through TEAS for all filings for which a filing fee is required. Parties who file on paper can download a Credit Card Payment Form (PTO-2038) from the USPTO’s website at http://www.uspto.gov/. The USPTO does not put the Credit Card Payment Form in application or registration records.
A party is not required to use the USPTO’s Credit Card Payment Form when paying a fee by credit card. However, if a party provides a credit card charge authorization in another form or document (e.g., in the body of an application, cover letter, response to an Office action, or other correspondence relating to a trademark application or registration), the credit card information becomes part of the public record. 37 C.F.R. §2.207(b).
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All credit card authorizations must include: (1) a valid credit card number; (2) a valid expiration date; (3) the name of the cardholder with the cardholder’s signature and the date; (4) a billing address, including zip code; (5) a description and purpose of the payment; and (6) a specific payment amount. See TMEP §§611.01 et seq. regarding signature of documents.
If a Credit Card Payment Form or other document authorizing the USPTO to charge a fee to a credit card does not contain the information necessary to charge the fee to the credit card, the form will be returned and the fee will not be processed. USPTO employees will not accept oral instructions to complete the Credit Card Payment Form or otherwise charge a fee to a credit card.
The USPTO will only accept an authorization to charge a fee in a specific dollar amount to a credit card.
The USPTO currently accepts charges to the following credit cards: AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.
Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. 37 C.F.R. §2.209(a).
See notice at 65 Fed. Reg. 33452 (May 24, 2000) and 1235 TMOG 38 (June 13, 2000).
See TMEP §405.06 regarding credit card authorizations that are refused or charged back by a financial institution.
405.02 Checks
Trademark Rule 2.207(a), 37 C.F.R. §2.207(a), provides that:
All payments of money required in trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made….
405.02(a) Personal Checks
It is the practice of the USPTO to accept, as “conditional” payment of a fee, a signed uncertified check (e.g., a personal check). If an uncertified check clears, then the USPTO considers the fee paid as of the date it received the check.
However, if such a check is returned unpaid, then the fee remains unpaid, and the document that included the returned check is processed as though
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the fee had been omitted. See In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995). See TMEP §405.06 for further information about processing checks that are returned unpaid.
Under 37 C.F.R. §2.6(b)(12), there is a processing fee for any check returned to the USPTO unpaid.
405.03 Deposit Accounts
37 C.F.R. §2.208. (a) For the convenience of attorneys, and the general public in paying any
fees due, in ordering copies of records, or services offered by the Office, deposit accounts may be established in the Office upon payment of the fee for establishing a deposit account (§2.6(b)(13)). A minimum deposit of $1,000 is required for paying any fees due or in ordering any services offered by the Office. The Office will issue a deposit account statement at the end of each month. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit. An amount sufficient to cover all fees, copies, or services requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§2.6(b)(13)) will be assessed for each month that the balance at the end of the month is below $1,000.
(b) A general authorization to charge all fees, or only certain fees to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular document filed. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
(c) A deposit account holder may replenish the deposit account by submitting a payment to the Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
(1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
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(iv) The deposit account holder’s company name and deposit account number.
(2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet Web site (http://www.uspto.gov).
(3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
A party cannot charge a fee to a deposit account unless he or she has prior authorization to do so. The Office of Finance maintains a list of persons authorized to request transactions by deposit account. The USPTO will not charge a fee to a deposit account unless the person requesting the charge appears on the authorized list or files a proper request to have his or her name added to the authorized list.
An authorization to charge a fee to a deposit account must be made in a written document signed and submitted by an authorized person. It cannot be entered by examiner’s amendment unless the record contains a written authorization signed and submitted by an authorized person. If there is no written authorization already in the record, the applicant may fax or e-mail the authorization to the examining attorney.
If an applicant submits an authorization to charge a filing fee to a deposit account that has insufficient funds to cover the fee, the applicant has not paid the fee.
If a deposit account has insufficient funds to cover an authorization to charge the initial filing fee for an application for registration, the USPTO will not grant a filing date to the application. 37 C.F.R. §2.21(a)(5). See TMEP §204.01.
When a deposit account contains insufficient funds to cover a fee that has been authorized, the USPTO notifies the party who filed the authorization of the fee deficiency. If the fee in question is statutory (e.g., the filing fee for a notice of appeal, statement of use, or request for extension of time to file a statement of use), the fee deficiency must be cured before the expiration of the statutory filing period. If the deadline for filing the fee is not set by statute, the party who filed the authorization may cure the fee deficiency within the set period for response to the Office action.
A showing that the deposit account contained sufficient funds on the date on which the authorization was first filed, as opposed to the date on which USPTO personnel attempted to charge the fee, will not cure the fee deficiency. Trademark Rule 2.208 clearly requires that sufficient funds to cover all outstanding charge authorizations be on deposit at all times. The
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funds must be available in the account at the time the authorization is presented for debiting.
See TMEP §1104.09(g) regarding fee deficiencies in amendments to allege use, TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use, TMEP §1109.15(a) regarding fee deficiencies in statements of use, TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, and TMEP §1606.05(c) regarding fee deficiencies in renewal applications.
405.04 Refunds
37 C.F.R. §2.209. (a) The Director may refund any fee paid by mistake or in excess of that
required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a trademark application, appeal or other trademark filing for which a fee was paid, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§2.208(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
Under 35 U.S.C. §42(d) and 37 C.F.R. §2.209, only money paid by mistake or in excess (when a fee is not required by statute or rule, or is not required in the amount paid) may be refunded. A mere change of purpose after the payment of money does not entitle a party to a refund. For example, if a party deletes a class from an application, or withdraws an application or appeal, the party is not entitled to a refund.
If an examining attorney or other USPTO employee erroneously requires a fee, the USPTO will refund the fee submitted in response to the erroneous requirement.
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The USPTO will refund the filing fee for an application that is denied a filing date, or a filing fee that is untimely (e.g., the fee for a statement of use or request for an extension of time to file a statement of use filed after expiration of the statutory filing period). However, after the USPTO has processed an application or other document, the USPTO normally will not refund the filing fee. The USPTO will not refund an application filing fee when registration is refused, nor will it refund a fee when a timely filed document (such as a statement of use under 15 U.S.C. §1051(d) or affidavit of use or excusable nonuse under 15 U.S.C. §1058) is rejected for failure to meet the requirements of the statute and rules.
Refunds are processed at the Customer Service Window located in the Trademark Assistance Center, James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia. When a USPTO employee determines that a refund is appropriate, the employee should complete a form with the information necessary for processing the refund, and send it to the Fee Processing Office.
405.05 Electronic Funds Transfer
The Electronic Funds Transfer (“EFT”) payment method allows customers to send a payment over the Internet as easily as writing a check. In general, the Automated Clearing House performs EFT transactions through the Federal Reserve system. The customer must establish a User ID and Password. For further information, see http://www.uspto.gov/teas/payment.htm.
405.06 Payments Refused or Charged Back By Financial Institutions
If a check is returned unpaid, or an EFT or credit card is refused or charged back by a financial institution, the document that accompanied the payment is processed as though the fee had been omitted. See In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995). If the document included an authorization to charge deficient fees to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, the USPTO charges the fee in question, together with a fee for processing the payment that was refused, to the deposit account.
If the document was not accompanied by an authorization to charge fees to a deposit account, the USPTO notifies the party who filed the document of the fee deficiency in a written action. If the deadline for filing the fee is not set by statute, the fee may be resubmitted within the period set for response to the Office action. If the fee in question is statutory (e.g., a filing fee for an appeal, statement of use, or request for extension of time to file a statement of use), the fee must be resubmitted before the expiration of the statutory filing period.
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Under 37 C.F.R. §2.6(b)(12), there is a fee for processing any payment that is refused or charged back by a financial institution. This fee covers the work done by USPTO personnel in processing the payment that is refused or charged back. The requirement for submission of the processing fee is strictly enforced. The USPTO will not approve a pending application for publication or registration, or take any other requested action in an application or registration, until all outstanding fees, including the processing fee, have been paid. Any request for waiver of this processing fee should be referred to the Office of the Deputy Commissioner for Trademark Examination Policy.
See TMEP §§202.03(a) and 202.03(a)(i) regarding the processing of an application in which the application filing fee payment is refused or charged back by a financial institution, TMEP §1104.09(g) regarding fee deficiencies in amendments to allege use, TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use, TMEP §1109.15(a) regarding fee deficiencies in statements of use, TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, and TMEP §1606.05(c) regarding fee deficiencies in renewal applications.
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Chapter 500 Change of Ownership
501 Assignment of Marks
501.01 Assignability of Marks in Applications and Registrations
501.01(a) Assignability of Intent-to-Use Applications
501.01(b) Assignability of Extensions of Protection of International Registrations to the United States
501.02 Assignments Must Be in Writing
501.03 Effect of Failure to Record Assignment
501.04 Foreign Assignee May Designate Domestic Representative
501.05 Assignee Stands in Place of Applicant or Registrant
501.06 Partial Assignments
501.07 Assignment of Extension of Protection of International Registration to the United States
502 Establishing Ownership of Applications or Registrations
502.01 Establishing the Right to Take Action in Application or Registration
502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §§1 and 44 of the Trademark Act
502.02(b) Applications Under §66(a) of the Trademark Act
502.02(c) Examining Attorney’s Action Regarding Assignment
502.03 Issuance of New Certificate to Assignee of Registrant
503 Recording With Assignment Services Branch
503.01 Effect of Recording a Document
503.01(a) Recording May Not Update Ownership Information
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503.01(b) Recording Does Not Update Correspondence Address in Trademark Database
503.01(c) Recording is Not a Determination of Validity
503.01(d) Recording Does Not Constitute Response to Office Action
503.01(e) Conditional Assignment
503.02 Documents That the Office Will Record
503.03 Requirements for Recording
503.03(a) Formal Requirements for Documents
503.03(b) Supporting Documents
503.03(c) English Language Requirement
503.03(d) Fee for Recording
503.03(e) Cover Sheet
503.04 Address for Submitting Documents for Recording
503.05 Recording Procedure and Recordation Date
503.06 Correction of Errors in Cover Sheet or Recorded Document
503.06(a) Typographical Errors in Cover Sheet
503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect Title to Application or Registration
503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title to Application or Registration
503.06(b) Typographical Errors in Recorded Assignment Document
503.06(c) Assignment or Change of Name Improperly Filed and Recorded By Another Person Against Owner’s Application or Registration
503.06(d) Owner Must Notify Trademark Operation of Correction
503.06(e) Recorded Documents Not Removed From Assignment Records
503.06(f) Petitions to Correct or “Expunge” Assignment Records
503.07 “Indexing” Against Recorded Document Not Permitted
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503.08 Accessibility of Assignment Records
503.08(a) Abstracts of Title
504 Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database
504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated
504.02 Processing Time for Automatic Updating
504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title
504.04 Automatic Updating Does Not Apply to Requests for Recordation Filed Before November 2, 2003
504.05 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection
505 Notifying Trademark Operation of Recordation of a Document and Request to Update Ownership Information
505.01 Request to Update Ownership Information in Pending Application
505.02 Request to Update Ownership Information After Registration
501 Assignment of Marks
501.01 Assignability of Marks in Applications and Registrations
15 U.S.C. §1060(a). (1) A registered mark or a mark for which an application to register has
been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Notwithstanding the preceding sentence, no application to register a mark under section 1(b) shall be assignable prior to the filing of an amendment under section 1(c) to bring the application into conformity with section 1(a) or the filing of the verified statement of use under section 1(d), except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.
(2) In any assignment authorized by this section, it shall not be necessary to include the good will of the business connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted.
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(3) Assignments shall be by instruments in writing duly executed…
Extract from 37 C.F.R. §3.1. *** Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.
501.01(a) Assignability of Intent-to-Use Applications
In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. Section 10 of the Trademark Act, 15 U.S.C. §1060; 37 C.F.R. §3.16.
The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or goodwill, and to prevent “trafficking” in marks.
As a general rule, the United States Patent and Trademark Office (“USPTO”) does not investigate or evaluate the validity of assignments. Therefore, the examining attorney should issue an inquiry concerning the compliance of an assignment with the cited provisions of §10 only if:
(1) The application itself includes a statement indicating that the assignee is not a successor to the original applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or
(2) All of the following conditions are present:
(a) The assignment is executed before the filing of an allegation of use;
(b) The applicant submits the assignment document for inclusion in the application record; and
(c) The assignment document fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.
The examining attorney should not require the submission of assignment documents to determine compliance.
If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the cited provision of §10 is sufficient to
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resolve the issue. This statement may be entered through an examiner’s amendment.
The assignment of an intent-to-use application to someone who is not the successor to the applicant’s business before filing an allegation of use renders the application and any resulting registration void. Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996).
501.01(b) Assignability of Extensions of Protection of International Registrations to the United States
Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol). See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection to the United States, and TMEP Chapter 1900 for further information about the Madrid Protocol.
501.02 Assignments Must Be in Writing
Extract from 15 U.S.C. §1060(a)(3). Assignments shall be by instruments in writing duly executed. ***
501.03 Effect of Failure to Record Assignment
Extract from 15 U.S.C. §1060(a).
(3)* * *Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office, the record shall be prima facie evidence of execution.
(4) An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.
See TMEP §§503 et seq. regarding the recordation of assignments in the Assignment Services Branch of the USPTO.
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501.04 Foreign Assignee May Designate Domestic Representative
15 U.S.C. §1060(b). An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the assignee does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served upon the Director.
37 C.F.R. §3.61. If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
An assignee not domiciled in the United States may designate, by a document filed with the USPTO, the name and address of a domestic representative. 15 U.S.C. §§1051(e), 1058(f), 1059(c), and 1060; 37 C.F.R. §3.61; TMEP §610. The USPTO encourages assignees who do not reside in the United States to designate domestic representatives.
When an assignee designates a domestic representative, the designation should be in a document separate from the assignment document. One copy of the designation of domestic representative should be sent to the Assignment Services Branch with the document to be recorded. In addition, the assignee should send a separate copy of the designation to the Trademark Branch of the USPTO (“Trademark Operation”) for each registration or application to which an assignment pertains, so that a copy of the designation can be entered in each official record that is identified in the assignment document. 37 C.F.R. §2.193(b).
501.05 Assignee Stands in Place of Applicant or Registrant
Extract from 15 U.S.C. §1127. The terms “applicant” and “registrant” embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
37 C.F.R. §3.71(d). Trademarks. The assignee of a trademark application
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or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee's trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
An assignee, like an applicant, must be a natural or juristic person. See 15 U.S.C. §1127 and TMEP §803.
501.06 Partial Assignments
A trademark may be owned by two or more persons (see TMEP §803.03(d)), and a co-owner may assign his or her interest in a mark. Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of his or her interest in the mark to another party.
A trademark owner may also assign a separate portion of a business, together with the good will and trademarks associated with that portion of the business, but retain rights in the mark for uses pertaining to another part of the business. See VISA, U.S.A., Inc. v. Birmingham Trust National Bank, 696 F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982), cert. denied, 464 U.S. 826, 220 USPQ 385 (1983). Accordingly, one or more trademarks of a company can be validly assigned if the assignor transfers the good will associated with only some of the goods/services on which that mark appears. After a registration has been assigned with respect to only some of the goods/services, both owners must file the necessary renewal applications and affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k to maintain the registration. If only one party files, only those goods/services in the registration for which that party owns the mark are continued or renewed. See TMEP §§1604 et seq. and 1613 regarding affidavits of continued use or excusable nonuse, and TMEP §§1606 et seq. and 1614 regarding renewal.
A trademark owner may not use an assignment to impose geographic restrictions on a registration. This must be done by way of a concurrent use proceeding before the Trademark Trial and Appeal Board, or pursuant to a final determination by a federal court. 15 U.S.C. §1052(d). See TMEP §§1207.04 et seq. and Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) Chapter 1100 regarding concurrent use registration. However, the Assignment Services Branch of the USPTO will record an assignment purporting to transfer rights in an unrestricted registration for less than the entire United States, because it is a transfer that may affect title to the registration. As noted in TMEP §503.01(c), the Assignment Services Branch does not examine the substance of documents submitted for recording. The act of recording the document is not a determination of the validity or effect of the purported assignment and does not create a concurrent use registration.
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A trademark owner who files a partial assignment is strongly encouraged to file a separate request to divide so that the USPTO can more effectively track and administer applications and post registration filings, and ensure that USPTO records will accurately reflect current ownership information. See TMEP §§1615 et seq. regarding requests to divide registrations in which ownership has changed with respect to some but not all of the goods/services, and TMEP §§1110 et seq. regarding request to divide pending applications.
501.07 Assignment of Extension of Protection of International Registration to the United States
15 U.S.C. §1141l. Assignment of an Extension of Protection: An extension of protection may be assigned, together with the goodwill
associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that is a Contracting Party.
Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection of an international registration to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is a party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).
Because the extension of protection remains part of the international registration, assignments of extensions of protection to the United States must be recorded at the International Bureau of the World Intellectual Property Organization (“IB”). The IB will notify the USPTO of any changes in ownership recorded in the International Register. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the automated records of the Trademark Operation (i.e., the Trademark Reporting and Monitoring (“TRAM”) System and the Trademark Applications and Registrations Retrieval (“TARR”) database to reflect these changes.
See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of international registrations or extensions of protection to the United States. 37 C.F.R. §7.22.
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See TMEP §§1110.11 and 1615.02 regarding division of an extension of protection to the United States after ownership of an international registration has changed with respect to some, but not all, of the goods/services.
502 Establishing Ownership of Applications or Registrations
Extract from 37 C.F.R. §3.73(a). * * * The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
Section 1 or §44 Applications. In an application or registration based on §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, an assignee is not required to record the assignment in order to take an action with respect to an application or registration. 37 C.F.R. §3.73(b); TMEP §502.01. However, the assignee must record the assignment (or other document affecting title) with the Assignment Services Branch of the USPTO to obtain a certificate of registration in the name of the assignee. 37 C.F.R. §3.85; TMEP §§502.02(a) and 502.03. Moreover, it is advisable for an applicant or registrant to record the assignment to ensure that it is valid, under §10(a)(4) of the Trademark Act, against subsequent purchasers for valuable consideration without notice. See TMEP §501.03.
Section 66(a) Applications. In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration, or to obtain a certificate of registration in the name of a new owner. TMEP §§502.01, 502.02(b), and 502.03. See TMEP §501.07 regarding the assignment of extensions of protection of international registrations, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
502.01 Establishing the Right to Take Action in Application or Registration
37 C.F.R. §3.73(b). (1) In order to request or take action in a patent or trademark matter, the
assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to §3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before
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the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to §3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
Applications and Registrations Based on §§1 and 44 of the Trademark Act. In an application or registration based on §1 or §44 of the Trademark Act, when a party other than the owner of record attempts to take an action with respect to an application or registration (e.g., filing a response to an Office action, allegation of use under 15 U.S.C. §1051(c) or §1051(d), request for an extension of time to file a statement of use under 15 U.S.C. §1051(d)(2), affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavit”), or renewal application under 15 U.S.C. §1059 (“§9 renewal application”)), the party must establish ownership of the application or registration. To establish ownership, the new owner must either: (1) record the assignment (or other document affecting title) with the Assignment Services Branch of the USPTO, and notify the Trademark Operation that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1). The document(s) must show a clear chain of title from the original owner to the party who is taking the action.
See 37 C.F.R. §3.85 and TMEP §§502.02(a) and 502.03 regarding issuance of a certificate of registration in the name of a new owner.
Section 66(a) Applications and Registered Extensions of Protection. In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration. The new owner does not have the option of submitting documentary evidence of ownership, pursuant to 37 C.F.R. §3.73(b).
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The IB will notify the USPTO of any changes in ownership recorded in the International Register. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. See TMEP §501.07 for further information about assignment of extensions of protection of international registrations, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB. The document(s) must show a clear chain of title from the original owner to the party who is taking the action.
Part 3 of 37 C.F.R. does not apply to §66(a) applications and registered extensions of protection. 37 C.F.R. §7.22.
502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §§1 and 44 of the Trademark Act
37 C.F.R. §3.85. Issue of registration to assignee. The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.
Document Must Be Recorded With Assignment Services Branch. In an application under §1 or §44 of the Trademark Act, a new owner must record the assignment, change of name, or other document affecting title with the Assignment Services Branch of the USPTO to obtain a certificate of registration in the name of the new owner (or in applicant’s new name). 37 C.F.R. §3.85. However, the registration will not issue in the name of the new owner, unless the ownership field in the Trademark Database (i.e., TRAM and TARR) is updated to reflect the recorded assignment prior to approval of the mark for publication or registration on the Supplemental Register in an application based on §1(a) or §44, 15 U.S.C. §1051(a) or 1126, or prior to acceptance of the statement of use in an intent-to-use application based on §1(b).
Under 37 C.F.R. §3.85, a new owner bears the burden of recording and notifying appropriate USPTO personnel of assignments or changes of name to ensure that the registration issues in the name of the new owner, as necessary. However, for some documents recorded on or after November 2, 2003, recording a document with the Assignment Services Branch will automatically update ownership in TRAM and TARR, even if the new owner
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does not notify the Trademark Operation that the document has been recorded. See TMEP §§504 and 504.01 regarding the circumstances in which the Trademark Database will be automatically updated. Thus, if the recorded document does not meet the criteria for automatic updating set forth in TMEP §§504 and 504.01, or if there is insufficient time for the Assignment Services Branch to process a recently recorded document for automatic updating (see TMEP §504.02), the new owner must file a written request that the certificate issue in the name of the new owner. The new owner can search the Assignment Services Branch’s database, i.e., the Electronic Trademark Assignment System (“ETAS”), on the USPTO website at http://assignments.uspto.gov/assignments to determine whether the assignment has been recorded, and can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated to reflect the change of ownership. A request that a registration issue in a new name should be directed to the examining attorney, and should state that the appropriate document has been recorded (or filed for recordation) and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request should specify the assignee’s address and set forth the assignee’s citizenship or state of incorporation or organization (for United States assignees), or country of incorporation or organization (for foreign assignees). If the assignee is a domestic partnership or domestic joint venture, the request should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members. See TMEP §502.02(c) regarding an examining attorney’s handling of an application in which the mark has been assigned.
If the applicant states that a request to record a change of ownership has been filed with the Assignment Services Branch but is not yet recorded, and the application is in condition to be approved for publication or registration on the Supplemental Register, the examining attorney should suspend action pending recordation of the document and entry of the information into the Trademark Database. See TMEP §§716 et seq. regarding suspension.
Clear Chain of Title Required. A new owner’s request that a registration issue in a new name will not be granted unless documents recorded in the Assignment Services Branch show a clear chain of title from the original applicant to the party requesting the change. The examining attorney should check the Assignment Services Branch’s Database (“Assignment Database”) on the USPTO website at http://assignments.uspto.gov/assignments to ensure that there is a clear chain of title. If the Assignment Database shows a clear chain of title, the examining attorney should ensure that TRAM is updated, if necessary. If the Assignment Database does not show a clear chain of title, the examining attorney should issue an Office action advising applicant that it must record the necessary documents if it wants the registration to issue in the name of the new owner. If the applicant does not
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record the necessary documents, the registration will issue in the name of the party who has a clear chain of title according to the Assignment Database.
Time for Recordation and Filing of Request for Issuance in Name of New Owner. To ensure that the registration issues in the name of the new owner, the new owner should record the assignment before the mark is approved for publication or registration on the Supplemental Register in an application based on §1(a) or §44, or prior to acceptance of a statement of use in an application based on §1(b). The USPTO cannot ensure that a request to issue the certificate in a new name filed after the mark has been approved for publication or registration will be processed in time for the registration to issue in the name of the new owner.
If, before a mark is approved for publication or registration, an applicant has recorded the appropriate document and filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction. See 15 U.S.C. §1057(g), 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error, and TMEP §502.03 regarding issuance of a new certificate of registration to the new owner of a registered mark.
502.02(b) Applications Under §66(a) of the Trademark Act
In an application under §66(a) of the Trademark Act, a new owner must record any assignment, change of name, or other document affecting title with the IB. The document(s) must show a clear chain of title from the original owner to the party who is taking the action. See TMEP §501.07 regarding assignment of §66(a) applications, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes with the IB. The IB will notify the USPTO when the change of ownership is recorded in the International Register. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the “Ownership” field in the Trademark Database (i.e., TRAM and TARR). A new owner can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated to reflect a change in ownership that has been recorded with the IB.
If the Trademark Database has not been updated, before the mark is approved for publication the new owner should file a written request that the registration issue in the name of the new owner. The request that a registration issue in the name of the new owner should be directed to the examining attorney, and should state that the appropriate document has been recorded (or filed for recordation) with the IB, and that the applicant wants the registration to issue in the name of the assignee or the new name of the applicant. The request should specify the assignee’s address, and set forth the assignee’s citizenship or state of incorporation or organization (for United
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States assignees), or country of incorporation or organization (for foreign assignees). If the assignee is a domestic partnership or domestic joint venture, the request should set forth the names, legal entities, and national citizenship (or state or country of organization) of all general partners or active members. See TMEP §502.02(c) regarding an examining attorney’s handling of an application after a mark has been assigned.
If the applicant states that a request to record a change of ownership has been filed with the IB but is not yet recorded, and the application is in condition to be approved for publication, the examining attorney should suspend action pending recordation of the document and entry of the information into the Trademark Database. See TMEP §§716 et seq. regarding suspension.
If, before a mark is approved for publication, an applicant has recorded the appropriate document with the IB and filed a proper request that the certificate issue in the name of the new owner, but the registration does not issue in the name of the new owner, the USPTO will issue a certificate of correction. See 15 U.S.C. §1057(g), 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding the procedures for requesting correction of a USPTO error.
502.02(c) Examining Attorney’s Action Regarding Assignment
If, prior to approval for publication for opposition or registration on the Supplemental Register, or prior to acceptance of a statement of use in an application under §1(b), the applicant advises the examining attorney, or the examining attorney learns through some other source, that an assignment has been recorded, the examining attorney should check the Assignment Database at http://assignments.uspto.gov/assignments to ensure that there is a clear chain of title, and should ensure that the TRAM database is updated before approving the mark for publication or registration.
In general, the examining attorney should only issue an Office action questioning whether an assignment has occurred if an entity attempts to take action with respect to the application and USPTO records show ownership in another party. In this situation, the assignee must establish entitlement to take the action, either by recordation of an assignment or submission of proof of the assignment. 37 C.F.R. §3.73(b); TMEP §502.01.
During initial examination, the examining attorney should not suspend action or delay issuance of a final action to await recordation of a document. However, if the applicant submits a request indicating that the relevant document has been submitted for recordation and the application is in condition to be approved for publication for opposition or registration on the Supplemental Register, the examining attorney should suspend the application until the document has been recorded and the information
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regarding the assignment or the change of name has been entered into TRAM.
Similarly, during examination of the statement of use in an application under §1(b), the examining attorney should withhold final approval for registration until the relevant document has been recorded and the information regarding the assignment or the applicant’s new name has been entered in TRAM. If the application is in condition to be approved for publication or registration, the examining attorney should suspend action pending the recordation of the document and the entry of the information into TRAM. See TMEP §§716 et seq. regarding suspension.
502.03 Issuance of New Certificate to Assignee of Registrant
Registrations Under §§1 and 44 of the Trademark Act. In registrations that issued based on applications under §1 or §44 of the Trademark Act, the USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner (or in the registrant’s new name), if the new owner/registrant: (1) records the appropriate document (e.g., assignment document, change of name) with the Assignment Services Branch; (2) files a written request that a certificate of registration be issued in the new owner’s name; and (3) pays the required fee (37 C.F.R. §§2.6(a)(8) and 3.41). The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under 37 C.F.R. §11.14 (“qualified practitioner”) must sign the request for a new certificate. 15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85. The recorded document(s) must show a clear chain of title from the original registrant to the party requesting issuance of a new certificate. See TMEP §§503.03 et seq. regarding the requirements for recording.
Upon request and payment of the appropriate fee (see TMEP §111), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment Database. The certified copy will not show any transfer of ownership that has not been recorded with the Assignment Services Branch.
See TMEP §1604.07(c) regarding the issuance of a notification of acceptance of a §8 affidavit in the name of the new owner of a registration, and TMEP §1606.06 regarding renewal in the name of the new owner.
Registered Extensions of Protection of International Registrations to the United States. In a registered extension of protection, the new owner must record the assignment, change of name, or other document affecting title with the IB. See TMEP §501.07 regarding assignment of registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes in the International Register. The IB will notify the USPTO when the change of ownership is recorded in the International Register, and
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the USPTO will record the change in the Assignment Database and update the “Ownership” field in TRAM and TARR. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. The recorded document(s) must show a clear chain of title from the original owner to the party requesting issuance of a new certificate.
The USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner, if the new owner: (1) records the appropriate document (e.g., assignment document, change of name certificate) with the IB; (2) files a written request with the Assignment Services Branch that a certificate of registration be issued in the new owner’s name; and (3) pays the required fee (37 C.F.R. §2.6(a)(8)). The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner must sign the request for a new certificate. 15 U.S.C. §1057(d); 37 C.F.R. §2.171(a).
Upon request and payment of the appropriate fee (see TMEP §111), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment Database. The certified copy will not show any transfer of ownership that has not been recorded with the IB.
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. §7.22.
503 Recording With Assignment Services Branch
503.01 Effect of Recording a Document
37 C.F.R. §3.54. Effect of recording. The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.
503.01(a) Recording May Not Update Ownership Information
Recording a document with the Assignment Services Branch does not necessarily change or update the ownership of record shown in the Trademark Database (i.e., TRAM and TARR). There are circumstances in which the Trademark Database will be updated automatically upon the recordation of an assignment, change of name, or other document transferring title. See TMEP §§504 and 504.01. In all other cases, the new owner must separately notify the Trademark Operation in writing of the
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recordation of a document, and request that the Trademark Database be updated manually. See TMEP §505. See also TMEP §§502.02 et seq. and 502.03 regarding issuance of a certificate of registration in the name of a new owner.
503.01(b) Recording Does Not Update Correspondence Address in Trademark Database
The USPTO will only communicate with the applicant or the applicant’s attorney at the correspondence address listed in the Trademark Database (i.e., TRAM and TARR). If an assignment document is recorded with the Assignment Services Branch and it includes a new correspondence address, the USPTO will not enter the change of correspondence address or update the Trademark Database. The mere inclusion of the new correspondence address on documents filed with the Assignment Services Branch does not effect a change in the correspondence address in the Trademark Database, even if the ownership information is automatically updated. The USPTO will not change the correspondence address unless a separate written request is made to explicitly change the correspondence address. See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership, and TMEP §§504 et seq. regarding automatic updating of ownership information in the Trademark Database after recordation of a document with the Assignment Services Branch.
503.01(c) Recording is Not a Determination of Validity
The Assignment Services Branch does not examine the substance of documents submitted for recording. The act of recording a document is a ministerial act, and not a determination of the document’s validity or of its effect on title to an application or registration. The USPTO will determine the effect of a document only when an assignee attempts to take an action in connection with an application or registration (e.g., when an assignee files a statement of use under 15 U.S.C. §1051(d)(1) or a §8 affidavit). 37 C.F.R. §3.54.
503.01(d) Recording Does Not Constitute Response to Office Action
Recording a document with the Assignment Services Branch does not constitute a response to an outstanding Office action.
503.01(e) Conditional Assignment
If an assignment is conditional on a given act or event at the time of its execution, the USPTO will view the submission of the assignment for
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recordation as an indication that the act or event has occurred. See 37 C.F.R. §3.56.
503.02 Documents That the Office Will Record
37 C.F.R. §3.11 Documents which will be recorded. (a) Assignments of applications, patents, and registrations, accompanied by
completed cover sheets as specified in §§3.28 and 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in §§3.28 and 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943- 1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government- controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
The USPTO records assignments of trademark applications and registrations, accompanied by completed cover sheets. The USPTO also records documents that affect title to a trademark application or registration, such as certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses. Although a mere change of name does not constitute a change of legal entity, it is a proper link in the chain of title. Documents of merger are also proper links in the chain of title.
Some instruments that relate to registered marks or to marks in pending applications may be recorded, even though they do not constitute a transfer or change of title to the mark or do not convey the entire title or interest in the business in which the mark is used. Typically, these instruments are license agreements, security agreements, and agreements between parties limiting future extension of use of a mark with regard to the goods/services or other circumstances of use. These instruments are recorded to give third parties notification of equitable interests or other matters relevant to the ownership of a mark.
The USPTO may also record a partial assignment of an interest in a mark. See TMEP §501.06.
In an application under §66 of the Trademark Act or a registered extension of protection, the new owner must record any change of ownership with the IB, who will record the change in the International Register and notify the USPTO
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accordingly. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB. Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of §66(a) applications and registered extensions of protection. 37 C.F.R. §7.22. See TMEP §501.07.
503.03 Requirements for Recording
503.03(a) Formal Requirements for Documents
Applications and Registrations Based on §§1 and 44 of the Trademark Act. All documents submitted for recording must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31. See TMEP §503.03(e).
To expedite recordation, new owners are encouraged to file requests for recordation electronically through ETAS, on the USPTO website at http://etas.uspto.gov. Documents filed electronically are recorded much faster than paper documents. Using ETAS, a party can create and submit a Trademark Assignment Recordation Coversheet by completing an online form, and attach the supporting legal documentation as an image in tagged image file format (“TIFF”) for submission via the Internet.
See TMEP §§503.03(b) et seq. regarding the requirements for recordation.
Section 66(a) Applications and Registered Extensions of Protection. In a §66(a) application or a registered extension of protection, the new owner must record the change of ownership with the IB, who will record the change in the International Register and notify the USPTO accordingly. See TMEP §501.07. The IB does not require supporting documents. See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
503.03(b) Supporting Documents
To record an assignment document or other document affecting title to a trademark application or registration, a legible cover sheet and one of the following must be submitted:
(1) A copy of the document;
(2) A copy of an extract from the document evidencing the effect on title; or
(3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.
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37 C.F.R. §3.25(a).
To record a name change, only a legible cover sheet is required. 37 C.F.R. §3.25(b).
Documents filed through ETAS must be in TIFF format. When printed to a paper size of either 21.6 by 27.9 cm (8½ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides. 37 C.F.R. §3.25(c)(1).
All paper documents submitted for recordation must be submitted on white and non-shiny paper that is either 8½ by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case. Only one side of each page may be used. Original documents should not be submitted, because the USPTO does not return recorded documents. 37 C.F.R. §3.25(c)(2).
Documents that do not meet these requirements will not be recorded. 37 C.F.R. §3.51. See TMEP §503.05.
503.03(c) English Language Requirement
The USPTO will not record a document that is not in the English language, unless it is accompanied by an English translation that is signed by the translator. 37 C.F.R. §3.26.
503.03(d) Fee for Recording
All requests to record documents with the Assignment Services Branch must be accompanied by the appropriate fee. A fee is required for each application and registration against which a document is recorded, as identified in the cover sheet. 37 C.F.R. §§2.6 and 3.41. The fee does not depend on the length of the document.
If the Assignment Services Branch determines that materials submitted for recording do not meet the recording requirements, the fee is not refunded.
503.03(e) Cover Sheet
Each document submitted for recording in the Assignment Services Branch must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31. Only one set of documents and cover sheets to be recorded should be filed. 37 C.F.R. §3.28.
To expedite recordation, new owners are encouraged to file requests for recordation through the USPTO website, at http://etas.uspto.gov. Documents filed electronically are recorded much faster than paper documents. Using ETAS, a new owner can create a Trademark Assignment Recordation
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Coversheet by completing an online form, and attach the supporting legal documentation as a TIFF image for submission via the Internet.
If the new owner files the assignment or name change on paper, the cover sheet must be legible. 37 C.F.R. §3.25(a). The USPTO has a trademark cover sheet form that can be downloaded from the USPTO website at http://www.uspto.gov/web/forms/pto1594.pdf. Questions regarding cover sheets should be directed to the Assignment Services Branch. Contact information is provided on the USPTO website at http://etas.uspto.gov/. See notice at 1140 TMOG 65, 69 (July 28, 1992). Use of the USPTO’s form is preferred, but is not mandatory.
Under 37 C.F.R. §3.31, a trademark cover sheet must contain the following:
• The name of the party conveying the interest;
• The name and address of the party receiving the interest;
• The entity (e.g., individual, corporation, partnership, etc.) and citizenship of the party receiving the interest (e.g., the citizenship of an individual, the state or country of incorporation or organization of a corporation, etc.). If the party receiving the interest is a domestic partnership or domestic joint venture, the names, entity, and citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture;
• A description of the interest conveyed or transaction to be recorded (e.g., assignment, license, change of name, merger, security agreement);
• Each application serial number or registration number against which the document is to be recorded, if known. If the application serial number is not known, the party seeking to record the document must submit a copy of the application and/or a reproduction of the mark and an estimate of the date that the USPTO received the application;
• The name and address of the party to whom correspondence concerning the request to record the document should be sent;
• The date the document was executed; and
• The signature of the party submitting the document. For a document filed electronically, the person who signs the cover sheet must either: (1) place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g., “/Thomas O’Malley/”) in the signature block on the electronic submission; or (2) sign the cover sheet using some other form of electronic signature specified by the Director.
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The cover sheet should also include:
• The entity and citizenship of the conveying party (e.g., the citizenship of an individual, state or country of incorporation or organization of a corporation, or names and citizenship of the general partners of a domestic partnership);
• The number of applications and/or registrations identified in the cover sheet;
• The total fee; and
• An identification or description of the mark.
In addition, if the receiving party has designated a domestic representative (see TMEP §§501.04 and 610), the cover sheet should include an indication to this effect.
Documents that are not accompanied by a completed cover sheet will not be recorded. 37 C.F.R. §3.51.
Separate patent and trademark cover sheets should be submitted for documents that include interests in, or transactions involving, both patents and trademarks. If a cover sheet contains both patent and trademark information, any information contained therein about pending patent applications will become public record upon recordation. 37 C.F.R. §§3.28 and 3.31(b).
503.04 Address for Submitting Documents for Recording
To expedite recordation, new owners are encouraged to file requests to record documents with the Assignment Services Branch through the USPTO website, at http://etas.uspto.gov. Paper documents and cover sheets to be recorded in the Assignment Services Branch should be sent to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA 22313-1450. 37 C.F.R. §§2.190(c) and 3.27.
503.05 Recording Procedure and Recordation Date
Applications and Registrations Under §§1 and 44 of the Trademark Act. The recording of documents in the Assignment Services Branch of the USPTO is governed by 37 C.F.R. Part 3.
To expedite recordation, new owners are encouraged to file requests for recordation through the USPTO website, at http://etas.uspto.gov. Using ETAS, a new owner can create and submit a Trademark Assignment Recordation Coversheet by completing an online form, and attach the
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supporting legal documentation as a TIFF image for submission via the Internet. Documents filed electronically are recorded much faster than paper documents.
The date of recordation is the date that the USPTO receives a cover sheet that meets the requirements of 37 C.F.R. §3.31 and a document affecting title that meets the requirements of 37 C.F.R. §3.25. See 37 C.F.R. §3.51.
The party recording the document should carefully review the document and cover sheet for accuracy and completeness. The USPTO merely examines the materials submitted for form, to determine whether the requirements for recording (see TMEP §§503.03 et seq.) have been met.
If the materials submitted meet the requirements for recordation, the Assignment Services Branch will record the document and cover sheet. Only the data specified on the cover sheet will be entered in the Assignment Database. After recording the document and cover sheet, the USPTO will issue a notice of recordation that reflects the data as recorded in the Assignment Database. The party recording the document should carefully review the notice of recordation. See TMEP §§503.06 et seq. regarding correction of errors in a cover sheet or recorded document.
Under 37 C.F.R. §3.51, the USPTO will return documents that do not meet the requirements for recording (e.g., documents submitted without a completed cover sheet, the appropriate fee, or an English translation, where applicable) to the sender for correction. The returned documents, stamped with the original date of receipt in the USPTO, will be accompanied by a letter indicating that, if the returned documents are corrected and resubmitted to the USPTO within a specified period of time, the USPTO will assign the original filing date of the documents as the recordation date. The USPTO will not extend the time period specified in the letter. If the returned documents are corrected and resubmitted after the time specified in the letter, the recordation date is the date on which the USPTO receives corrected documents that meet the requirements for recording. The certificate of mailing and transmission procedures of 37 C.F.R. §2.197 and the “Express Mail” procedure of 37 C.F.R. §2.198 may be used for resubmitting the returned documents, to avoid lateness due to mail delay.
If documents submitted for recording are returned unrecorded by the Assignment Services Branch, and the submitter believes that the documents were returned in error, he or she may file a petition to the Director under 37 C.F.R. §2.146. See TMEP §§1702 through 1708 regarding petitions.
Applicants and registrants can search the Assignment Database on the USPTO website at http://assignments.uspto.gov/assignments/ to determine whether an assignment has been recorded.
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Section 66(a) Applications and Registered Extensions of Protection. In an application under §66(a) of the Trademark Act or a registered extension of protection, the IB will notify the USPTO of any changes in ownership recorded in the International Register, and of the date of recordation. The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register. See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. §7.22.
503.06 Correction of Errors in Cover Sheet or Recorded Document
37 C.F.R. §3.34. Correction of cover sheet errors. (a) An error in a cover sheet recorded pursuant to §3.11 will be corrected
only if: (1) The error is apparent when the cover sheet is compared with the
recorded document to which it pertains, and (2) A corrected cover sheet is filed for recordation. (b) The corrected cover sheet must be accompanied by a copy of the
document originally submitted for recording and by the recording fee as set forth in §3.41.
Once a document is recorded with the Assignment Services Branch, the Assignment Services Branch will not remove the document from the record relating to that application or registration. See TMEP §503.06(e).
During the recording process, the Assignment Services Branch will check to see that a trademark cover sheet is complete and record the data exactly as it appears on the cover sheet. Once the document is recorded, the USPTO will issue a notice of recordation.
The party recording the document should carefully review the notice of recordation.
Typographical errors made by the USPTO will be corrected promptly and without charge upon written request directed to the Assignment Services Branch. For any other error, the party recording the document is responsible for filing the documents and paying the recordation fees necessary to correct the error, using the procedures set forth in TMEP §§503.06(a) through 503.06(d).
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In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB. Such a request cannot be sent to the IB through the USPTO. See TMEP §§1906.01 et seq. for information about requests to record changes in the International Register.
503.06(a) Typographical Errors in Cover Sheet
A party who wishes to correct a typographical error on a recorded cover sheet must submit the following to the Assignment Services Branch: (1) a copy of the originally recorded assignment document (or other document affecting title); (2) a corrected cover sheet; and (3) the required fee for each application or registration to be corrected (37 C.F.R. §§2.6 and 3.41). 37 C.F.R. §3.34. The party requesting correction should also submit a copy of the original cover sheet, to facilitate comparison of this cover sheet with the originally recorded document.
The party filing the corrected cover sheet should check the box titled “Other” in the area of the sheet requesting “Nature of Conveyance,” and indicate that the submission is to correct an error in a cover sheet previously recorded. The party should also identify the reel and frame numbers (if known), and the nature of the correction (e.g., “correction to the spelling of assignor’s name” or “correction of a serial number or registration number”).
The USPTO will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature. If the error is typographical in nature, the Assignment Services Branch will record the corrected cover sheet and correct the Assignment Database.
503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect Title to Application or Registration
If the original cover sheet contains a typographical error that does not affect title to the application or registration against which the original assignment or name change is recorded, the Assignment Services Branch will correct the Assignment Database and permit the recording party to keep the original date of recordation.
503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title to Application or Registration
If the original cover sheet contains a typographical error that affects title to the application or registration against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. See TMEP §503.05. Rather, the Assignment Services Branch
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will correct its automated records and change the date of recordation to the date on which the corrected cover sheet was received in the USPTO.
503.06(b) Typographical Errors in Recorded Assignment Document
If there is an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either draft and record a new document or make corrections to the original document and re-record it. If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit in which the assignee identifies the error and requests correction. The affidavit must be accompanied by a copy of the originally recorded documents, a cover sheet (see TMEP §503.03(e)), and the required fee for each application or registration to be corrected (37 C.F.R. §§2.6 and 3.41). See In re Abacab Int’l Computers Ltd., 21 USPQ2d 1078 (Comm’r Pats. 1987).
In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB. Such a request cannot be sent to the IB through the USPTO.
503.06(c) Assignment or Change of Name Improperly Filed and Recorded By Another Person Against Owner’s Application or Registration
When the owner of an application or registration discovers that another party has improperly recorded an assignment or name change against the owner’s application or registration, the owner must correct the error by having a corrected cover sheet filed with the Assignment Services Branch.
The owner should contact the party who recorded the documents with the erroneous information and have that party record corrective documents. However, if the party cannot be located or is unwilling to file corrective documents, then the true owner must record the necessary documents with the Assignment Services Branch to correct the error.
Specifically, the owner should submit the following to the Assignment Services Branch: (1) a completed cover sheet identifying the application or registration against which the assignment or change of name was improperly recorded; (2) an affidavit or declaration identifying itself as the correct owner, stating that the previously recorded document was submitted with erroneous information, and providing the reel and frame number of the previously recorded document; and (3) the recording fee (37 C.F.R. §§2.6 and 3.41) for each application or registration to be corrected.
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The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the registration or application identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or registrant or last correct assignee has been and continues to be the owner of the application or registration at issue.
On the corrected cover sheet, the owner should check the box titled “Other” in the area of the cover sheet requesting the “Nature of Conveyance,” and indicate that the submission is to correct an error made in a previously recorded document that erroneously affects the identified application(s) or registration(s). The party should also write the name of the correct owner in both the box requesting the name of the conveying party and the box requesting the name and address of the receiving party, to make it clear that ownership of the mark never changed and that any assignment or name change recorded against the application(s) or registration(s) was erroneous.
503.06(d) Owner Must Notify Trademark Operation of Correction
Recording a corrective document with the Assignment Services Branch generally does not change or update the information to be corrected in the Trademark Database (i.e., TRAM and TARR). The owner must also separately notify the Trademark Operation in writing that the corrective document has been recorded and identify what the corrected information is.
See TMEP §504.03 regarding correction of the Trademark Database where it has been automatically updated to show ownership of an application or registration in a party who does not have a clear chain of title as evidenced by the Assignment Database, and TMEP §§505 et seq. regarding requests to update ownership information.
503.06(e) Recorded Documents Not Removed From Assignment Records
Once an assignment or other document is recorded against an application or registration, the Assignment Services Branch will not remove the document from the records relating to that application or registration in the Assignment Database, even if the assignment or other document is subsequently found to be invalid.
The goal of the USPTO is to maintain a complete history of claimed interests in a mark. Since the act of recording a document is not a determination of the document's validity, maintaining a complete record of claimed interests does not preclude an owner from using a mark, or from establishing its ownership of the mark in a proper forum, such as a federal court. In re Ratny, 24 USPQ2d 1713 (Comm'r Pats. 1992).
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503.06(f) Petitions to Correct or “Expunge” Assignment Records
To correct an error in a recorded document, the owner of an application or registration should record corrective documents with the Assignment Services Branch, in accordance with the procedures outlined in TMEP §§503.06 through 503.06(d).
If the Assignment Services Branch denies the request to correct the error, the owner may file a petition to the Director under 37 C.F.R. §2.146. See TMEP Chapter 1700 regarding petitions.
However, petitions to correct, modify, or “expunge” assignment records are rarely granted. Such petitions are granted only if the petitioner can prove that: (1) the normal corrective procedures outlined in TMEP §§503.06 through 503.06(d) will not provide the petitioner with adequate relief; and (2) the integrity of the assignment records will not be affected by granting the petition.
Even if a petition to “expunge” a document is granted with respect to a particular application or registration, the images of the recorded document remain in the records of the Assignment Services Branch. The USPTO will delete the links to the application or registration that was the subject of the petition, so that no information about the recorded document will appear when someone searches for that application or registration number in the Assignment Database. However, the image of the document remains at the same reel and frame number, and it still will appear when someone views that reel and frame number.
503.07 “Indexing” Against Recorded Document Not Permitted
The USPTO does not process requests for “indexing” or “cross-referencing” additional trademark registration numbers or application serial numbers against a document previously recorded in the Assignment Services Branch.
Therefore, even when an assignment document (or other document affecting title) has already been recorded in the Assignment Services Branch in connection with a trademark application or registration, a party who wants to record that document against additional applications or registrations must submit the following:
(1) A copy of the originally recorded assignment document (or other document affecting title), a copy of an extract from the recorded document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title (this may comprise a copy of the previously recorded documents on which the Assignment Services Branch has stamped the reel and frame numbers at which they are recorded);
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(2) A completed cover sheet (see TMEP §503.03(e)) that includes the number of each additional registration and/or application against which recordation of the assignment document (or other document affecting title) is requested; and
(3) The appropriate recording fee (37 C.F.R. §§2.6 and 3.41).
The USPTO will assign a new date of recordation for the additional applications or registrations, update the Assignment Database, and create an electronic record of the cover sheet and assignment document (or other document affecting title), which will become part of the official record. See notice at 1157 TMOG 12 (Dec. 7, 1993).
503.08 Accessibility of Assignment Records
The Assignment Services Branch of the USPTO maintains separate records for patents and trademarks. 15 U.S.C. §1060(a)(5); 37 C.F.R. §2.200(a)(1).
The public can search the trademark assignment records of the Assignment Services Branch on the USPTO website at http://assignments.uspto.gov/assignments.
Assignments of trademark applications and registrations are open to public inspection upon recordation in the Assignment Services Branch. See 37 C.F.R. §3.31(b) and TMEP §503.03(e) regarding the submission of separate cover sheets for documents that include interests in, or transactions involving, both patents and trademarks.
Before 1955, documents were recorded in bound volumes. The location of documents in these volumes is designated by “liber and page,” that is, by the number of the book (liber) and the number of the page in the book. Since 1955, documents have been recorded on microfilm, and are available for immediate inspection in the Trademark Assignment Search Room. The location of these documents is designated by “reel and frame,” that is, by the number of the reel on which they are microfilmed and the number of the frame on the reel.
All assignment records related to pre-1955 trademark records were transferred to the National Archives and Records Administration (“NARA”) in 1990. The USPTO still maintains records of all trademark assignments recorded on or after January 1, 1955.
All trademark assignment records from 1837 to December 31, 1954 are maintained and available for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746. Assignments recorded before 1837 are maintained at the National Archives and Records Administration, 841 South Pickett Street, Alexandria, Virginia 22304.
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Copies of assignment records recorded on or after January 1, 1955 may be ordered from the USPTO upon payment of the fee required by 37 C.F.R. §2.6. An order for a copy of an assignment record should identify the reel and frame at which it is recorded in the Assignment Services Branch. If the correct reel and frame numbers are not identified (e.g., the order identifies the document only by the name of the registrant and the number of the registration, or by the name of the applicant and the serial number of the application), the USPTO will charge an additional fee for the time spent searching for the document.
Requests for copies of pre-1955 trademark assignment records should be directed to NARA. Payment of the fees required by NARA should accompany all requests for copies. 37 C.F.R. §2.200(a)(2).
503.08(a) Abstracts of Title
Members of the public may obtain abstracts of title to particular registrations or applications from the Document Services Branch of the Public Records Division of the USPTO, upon payment of the fee required by 37 C.F.R. §2.6. See notices at 1140 TMOG 65, 66 (July 28, 1992) and 1165 TMOG 13 (Aug. 2, 1994).
504 Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database
Prior to November 2, 2003, recording a document with the Assignment Services Branch of the USPTO did not automatically change the ownership record in the Trademark Database (i.e., TRAM and TARR). To change the ownership record in the Trademark Database, a new owner had to notify the Trademark Operation that ownership had changed. 37 C.F.R. §3.85.
Effective November 2, 2003, except in the limited circumstances set forth in TMEP §504.01, the USPTO will automatically update the ownership information in the Trademark Database of registrations and pending applications when one of the following documents is recorded with the Assignment Services Branch:
• Assignment of entire interest and goodwill;
• Nunc Pro Tunc Assignment of entire interest and goodwill;
• Merger; and
• Name Change.
In these situations, it is unnecessary for the new owner to notify the Trademark Operation of the change of ownership, or to file a request in a pending application that the certificate of registration issue in the name of the
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new owner. In all other situations, the new owner must separately notify the Trademark Operation in writing that ownership has changed in order to update the ownership information in TRAM and TARR.
To ensure that the Trademark Database is automatically updated, the party filing the assignment, merger, or name change should identify the “Nature of the Conveyance” by checking the “Assignment,” “Merger,” or “Name Change” box in the “Nature of Conveyance” field and should not check the “Other” box.
The Trademark Database will show only the last recorded owner, not the complete chain of title. The complete chain of title can be obtained from the Assignment Services Branch’s database on the USPTO website at http://assignments.uspto.gov/assignments. The “Ownership” field in the Trademark Database will be automatically updated regardless of whether or not the records of the Assignment Services Branch show a clear chain of title transferring ownership to the last recorded owner. The Trademark Database will include the reel and frame number and execution date of the recorded document, as well as a notation to “Check Assignments.” Examining attorneys must check assignment records to ensure that the owner of record in the Trademark Database has a clear chain of title.
Trademark owners can search the Assignment Database to determine whether an assignment has been recorded and can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated.
Note - Filing Multiple Assignments With Same Execution Date on the Same Date: When multiple assignments with the same execution date are filed on the same date, the ownership information in the Trademark Database will not be automatically updated. See the note in TMEP §504.01 for further information.
504.01 Circumstances in Which Trademark Database Will Not be Automatically Updated
In the circumstances discussed below, the USPTO will not automatically update the Trademark Database (i.e., TRAM and TARR) to show the change in ownership, even if the appropriate document is recorded in the Assignment Services Branch on or after November 2, 2003. In these situations, the applicant must separately notify the Trademark Operation in writing that the assignment or other title document has been recorded, and request that the Trademark Database be updated to show title in the new owner. 37 C.F.R. §3.85; TMEP §§502.02 et seq. and 502.03. See TMEP §§505 et seq. regarding requests to update ownership information.
(1) Execution Date Conflicts With Previously Recorded Document. If a previously recorded assignment, merger, change of name, security interest document, or any other recorded document for the same
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application or registration has an execution date that is the same as or later than the execution date of the subsequently recorded document, the Trademark Database will not be automatically updated. Office personnel will have to review the assignment records and update the database manually.
Note - Filing Multiple Assignments With Same Execution Date on the Same Date: When requests to record multiple assignments (or other documents transferring title) with the same execution date are filed on the same date, the ownership information in the Trademark Database will not be automatically updated. Office personnel must manually update the ownership information to identify the proper owner based on the proper order of transfers specified by the new owner. Therefore, in this situation, the new owner must separately notify the Trademark Operation in writing that multiple documents have been recorded, specify the order of recordation of each document, and request that the Trademark Database be updated to show title in the new owner. See TMEP §505.01 regarding requests to update ownership information in pending applications and TMEP §505.02 regarding requests to update ownership information after registration.
(2) Blackout Period: Ownership of Pending Applications Cannot be Updated During Certain Time Periods. The Trademark Database will not be automatically updated to show a change of ownership during the following stages of the registration process:
(a) For §§1(a) and 44 applications:
• Between approval for publication and issuance of registration.
(b) For §1(b) applications:
• Between approval for publication and issuance of notice of allowance; and
• Between approval for registration and issuance of registration.
(3) Maximum Number of Ownership Changes. The Trademark Database will not be automatically updated if the maximum number of ownership changes permitted for the following time periods has been reached:
• Prior to publication - up to nine changes of ownership.
• Between publication and registration - up to nine additional changes of ownership.
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In the above situations, new owners must file a written request with the Trademark Operation to update the Trademark Database. See TMEP §505.01 regarding requests to update the Trademark Database prior to registration, and TMEP §505.02 regarding requests to update the Trademark Database after registration.
504.02 Processing Time for Automatic Updating
The process for automatically updating the Trademark Database (i.e., TRAM and TARR) requires that the Assignment Services Branch: (1) record the document transferring title in the Assignment Database; and (2) extract the trademark assignment information from the Assignment Database and send it electronically to the Trademark Operation for automatic updating. The Assignment Services Branch will extract trademark assignment information from the Assignment Database and transmit it to the Trademark Operation once a week.
To expedite recordation with the Assignment Services Branch, new owners are encouraged to file requests for recordation through the USPTO website, at http://etas.uspto.gov.
If a trademark owner wants the Trademark Database updated within a certain time frame, and there is insufficient time for the Assignment Services Branch to process a recently recorded title document for automatic updating, the owner should notify the Trademark Operation in writing of the change of ownership. 37 C.F.R. §3.85; TMEP §§502.02 et seq. and 502.03. Trademark owners can search the Assignment Services Branch’s database on the USPTO website at http://assignments.uspto.gov/assignments to determine whether an assignment has been recorded, and can check TARR at http://tarr.uspto.gov to determine whether the Trademark Database has been updated.
504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title
In the situations set forth in TMEP §504, the Trademark Database (i.e., TRAM and TARR) will be automatically updated to show the last recorded owner regardless of whether the Assignment Database shows that the last recorded owner has a clear chain of title. If the Trademark Database is automatically updated to show ownership of an application or registration in a party who does not have a clear chain of title as evidenced by the Assignment Database, the true owner of the application or registration may file a written request to have the “Ownership” field in the Trademark Database corrected. The USPTO will grant a request for correction of the “Ownership” field if:
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(1) The Trademark Database was automatically updated to show ownership in a party who does not have a clear chain of title according to the Assignment Database; and
(2) At the time the Trademark Database was automatically updated in the name of the incorrect party, the Assignment Database showed a clear chain of title in the party requesting correction of the “Ownership” field in the Trademark Database.
The correction of the Trademark Database will not be automatically reflected in the Assignment Database. To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06 et seq. for correcting errors in the Assignment Database.
Example: ABC Corporation owns Application No. 1. An assignment of the entire interest and goodwill is filed for recordation, transferring ownership of Application 1 from ZED Corporation to XYZ Corporation. The Assignment Services Branch records the assignment and transmits the trademark assignment information to the Trademark Operation. The Trademark Database is automatically updated to show XYZ Corporation as the new owner of Application 1. The Trademark Operation will correct its database, upon ABC Corporation’s request, because the Assignment Database does not show a clear chain of title from ABC Corporation to XYZ Corporation, and the Assignment Database shows a clear chain of title in ABC Corporation.
In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06 et seq. That is, the party must first file corrective documents with the Assignment Services Branch and pay the recordal fees necessary to correct the error, and then notify the Trademark Operation in writing that the corrective documents have been recorded.
Prior to registration, a request for correction of the “Ownership” field in the Trademark Database should be made in an amendment directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01 et seq. In a §1(b) application, if a request for correction of the “Ownership” field is filed between the issuance of the notice of allowance and the submission of a statement of use, the USPTO will place the request in the file for consideration at the time of examination of the statement of use. 37 C.F.R. §2.77; TMEP §1107.
After registration, a request for correction of the “Ownership” field should be submitted in writing to the Post Registration Section and made in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R.
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§2.174. See TMEP §505.02 regarding proper procedures for requests to update ownership information for registrations.
504.04 Automatic Updating Does Not Apply to Requests for Recordation Filed Before November 2, 2003
The automatic updating procedures discussed in §§504.01 through 504.03 apply to all assignments, mergers, and name changes recorded in the Assignment Services Branch on or after November 2, 2003, even if the request for recordation was filed before November 2, 2003.
These procedures do not apply to assignments, mergers, or name changes that were recorded in the Assignment Services Branch prior to November 2, 2003. For documents recorded prior to November 2, 2003, the new owner must notify the Trademark Operation in writing of the change of ownership and request that the Trademark Database (i.e., TRAM and TARR) be updated manually. 37 C.F.R. §3.85.
504.05 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection
The procedures discussed in §§504.01 through 504.04 do not apply to §66(a) applications and registered extensions of protection of international registrations to the United States. Changes of ownership of international registrations and requests for extensions of protection of international registrations to the United States must be recorded with the IB. The USPTO will record only those assignments (or other documents of title) that have been recorded in the International Register. The Trademark Database (i.e., TRAM and TARR) will be automatically updated to reflect any change of ownership that is recorded in the International Register. See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.
505 Notifying Trademark Operation of Recordation of a Document and Request to Update Ownership Information
As noted in TMEP §504.01, if the recordation of a document with the Assignment Services Branch does not automatically update the ownership information in the Trademark Database (i.e., TRAM and TARR), the new owner must separately notify the Trademark Operation in writing that ownership has changed, so that the ownership information is updated in the Trademark Database. See TMEP §505.01 regarding the procedures for requesting that ownership information be updated in pending applications,
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and TMEP §505.02 regarding the procedures for requesting that ownership information be updated after registration.
505.01 Request to Update Ownership Information in Pending Application
Prior to registration, a request to update the ownership information in the Trademark Database (i.e., TRAM and TARR) should be made in writing and directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01 et seq. In a §1(b) application, if such a request is filed between the issuance of the notice of allowance and the filing of a statement of use, the USPTO will place the request in the file for consideration at the time of examination of the statement of use. 37 C.F.R. §2.77; TMEP §1107.
See TMEP §§502.02(a) and (b) regarding issuance of a certificate of registration in the name of the new owner.
505.02 Request to Update Ownership Information After Registration
For registrations, even if the new owner records the appropriate document with the Assignment Services Branch and notifies the Trademark Operation that ownership has changed, the Post Registration Section will not update the Trademark Database (i.e., TRAM and TARR) with new owner information, unless either: (1) the owner of the registration files a written request to amend the registration pursuant to §7(d) of the Trademark Act, 15 U.S.C. §1057(d); or (2) the owner takes an action, such as filing a §8 affidavit or §9 renewal application.
Thus, if the owner of the registration is not taking an action such as filing a §8 affidavit, the owner must:
(1) Record the appropriate document (e.g., assignment, change of name) with the Assignment Services Branch;
(2) File a written request that the Trademark Database be updated under §7(d), signed by the new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner; and
(3) Pay the required fee (37 C.F.R. §§2.6(a)(8) and 3.41).
15 U.S.C. §1057(d); 37 C.F.R. §§2.171(a) and 3.85. Office records must show a clear chain of title from the original registrant to the new owner. See TMEP §502.03.
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The owner must file a §7 request to amend the registration even if the registrant does not want a new registration certificate but only wishes the Trademark Database to be updated. See TMEP §502.03 regarding issuance of a new certificate in the name of the new owner.
To expedite processing, new owners are encouraged to use the Trademark Electronic Application System (“TEAS”) form entitled “Section 7 Request for Amendment or Correction of Registration Certificate,” available on the USPTO website at http://www.uspto.gov, to file the request to update the ownership information in the Trademark Database.
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Chapter 600 Attorney, Representative, and
Signature
601 Owner of Mark May Be Represented by an Attorney at Law
601.01 USPTO Cannot Aid in Selection of an Attorney
601.02 Communications With Applicant or Registrant Who Is Represented by an Attorney
602 Persons Authorized to Practice Before USPTO in Trademark Matters
602.01 Attorneys Licensed to Practice in the United States
602.02 Non-Attorneys
602.03 Foreign Attorneys and Agents
602.03(a) Canadian Attorneys and Agents
602.03(b) Foreign Attorneys and Agents From Countries Other Than Canada
602.03(c) Documents Filed by Foreign Attorneys and Agents
602.03(d) Representatives of Holders of International Registrations
602.03(e) Identification of Foreign Attorney in Original Application
603 Standards of Conduct
604 Recognition as a Representative
604.01 Three Ways to Be Recognized
604.02 Duration of Recognition
604.03 Change of Attorney
605 Powers of Attorney
605.01 Requirements for Power of Attorney
605.02 Power of Attorney Relating to More Than One Application or Registration
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605.03 Associate Powers of Attorney
605.04 Powers of Attorney Filed After Registration
606 Revocation of Power of Attorney
607 Withdrawal of Attorney of Record
608 Unauthorized Practice
608.01 Actions by Unauthorized Persons Not Permitted
608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO
609 Correspondence, With Whom Held
609.01 Establishing the Correspondence Address
609.01(a) Correspondence in §66(a) Applications
609.02 Changing the Correspondence Address
609.02(a) Request to Change Correspondence Address Presumed
609.02(b) Requirements for Request to Change Correspondence Address
609.02(c) Processing Requests to Change the Correspondence Address Before Registration
609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations
609.02(e) Changing the Correspondence Address After Registration
609.02(f) Correspondence After Recordation of Change of Ownership
609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address
609.04 Correspondence with Parties Not Domiciled in the United States
610 Designation of Domestic Representative by Parties Not Domiciled in the United States
611 Signature on Correspondence Filed in the United States Patent and Trademark Office
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611.01 Signature and Certificate
611.01(a) Signature as Certificate
611.01(b) Requirements for Signature
611.01(c) Signature of Documents Filed Electronically
611.02 Signatures by Authorized Parties Required
611.02(a) TEAS Checkoff Boxes
611.03 Proper Person to Sign
611.03(a) Verification
611.03(b) Responses, Amendments to Applications, Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide
611.03(c) Powers of Attorney and Revocations of Powers of Attorney
611.03(d) Petitions to Revive
611.03(e) Petitions to the Director
611.03(f) Amendment, Correction, or Surrender of Registration
611.03(g) Renewal Applications
611.03(h) Designations and Revocations of Domestic Representative
611.03(i) Requests to Change Correspondence Address in an Application or Registration
611.04 Examples of Authorized and Potentially Unauthorized Signatories
611.05 Processing Documents Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney
611.05(a) Notice of Incomplete Response When Authority of Person Signing Response is Unclear
611.05(b) Replying to a Notice of Incomplete Response
611.05(c) Unsatisfactory Response or Failure to Respond
611.06 Guidelines on Persons With Legal Authority to Bind Certain Juristic Entities
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611.06(a) Joint Owners
611.06(b) Signature by Partnership
611.06(c) Signature by Joint Venture
611.06(d) Signature by Corporation
611.06(e) Signature by Foreign Companies and Corporations
611.06(f) Signature by Unincorporated Association
611.06(g) Signature by Limited Liability Company
611.06(h) Signature by Limited Liability Partnership
NOTE: This chapter sets forth the procedures for recognition of representatives, signature of documents, and establishing and maintaining the correspondence address in pending applications for registration, and documents filed with the Post Registration Section of the Office. For a statement of practice concerning representation of others, signature of documents, and establishing and maintaining the correspondence address in proceedings before the Trademark Trial and Appeal Board (“Board”), parties should refer to the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”), Chapter 100, available on the United States Patent and Trademark Office (“USPTO”) website at http://www.uspto.gov, or contact the Board at (571) 272-8500.
601 Owner of Mark May Be Represented by an Attorney at Law
The owner of a mark may represent himself or herself in prosecuting an application or maintaining a registration, or may be represented by a practitioner authorized under 37 C.F.R. §11.14 to practice in trademark cases (“qualified practitioner”). 37 C.F.R. §2.11. See TMEP §§602 et seq. regarding persons authorized to practice before the USPTO in trademark cases.
601.01 USPTO Cannot Aid in Selection of an Attorney
The USPTO cannot aid in the selection of a qualified practitioner. 37 C.F.R. §2.11.
If it is apparent that an applicant or registrant is unfamiliar with the procedures for prosecuting an application or maintaining a registration and needs more detailed or technical assistance than the USPTO staff is permitted to give, the USPTO staff may suggest that it may be desirable to employ an attorney who
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is familiar with trademark matters. The following is an example of language that may be used in the Office action:
The applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The United States Patent and Trademark Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
601.02 Communications With Applicant or Registrant Who Is Represented by an Attorney
If an applicant or registrant is represented by a qualified practitioner, the USPTO will conduct business only with the practitioner, unless that representation is terminated. If the applicant or registrant contacts the USPTO regarding the application or registration, he or she will be advised that the USPTO will only conduct business with the qualified practitioner. USPTO employees may answer general questions about the application or registration record and the procedures for obtaining and maintaining a registration, and are encouraged to refer the applicant or registrant to publicly available information on the USPTO’s website. See TMEP §1805 regarding general inquiries from the public.
An applicant or registrant may not authorize an examiner’s amendment or change of correspondence address, and the USPTO will not accept responses or amendments signed by the applicant or registrant if there is a qualified practitioner of record. See TMEP §§611 et seq. regarding signature of documents filed in the USPTO.
If the applicant or registrant wishes to revoke the power of attorney, the applicant or registrant should be encouraged to file the revocation through the Trademark Electronic Application System (“TEAS”). See TMEP §606 regarding revocation.
See TMEP §604.03 regarding changes of attorney, TMEP §604.02 regarding the duration of recognition as a representative, and TBMP §§114 et seq. regarding representation of parties to proceedings before the Board.
602 Persons Authorized to Practice Before USPTO in Trademark Matters
37 C.F.R. §11.14. Individuals who may practice before the Office in trademark and other non-patent matters.
(a) Attorneys. Any individual who is an attorney as defined in §11.1 may represent others before the Office in trademark and other non-patent matters. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent matters. Registration as a patent practitioner does not itself entitle an individual to practice before the
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Office in trademark matters. (b) Non-lawyers. Individuals who are not attorneys are not recognized to
practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark matters on behalf of a client. Any individual may appear in a trademark or other non- patent matter in his or her own behalf. Any individual may appear in a trademark matter for:
(1) A firm of which he or she is a member, (2) A partnership of which he or she is a partner, or (3) A corporation or association of which he or she is an officer and which
he or she is authorized to represent, if such firm, partnership, corporation, or association is a party to a trademark proceeding pending before the Office.
(f) Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by §1.21(a)(1)(i) of this subchapter.
Under 37 C.F.R. §11.14, only the following individuals may represent an applicant or registrant in a trademark case:
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• An attorney as defined in 37 C.F.R. §11.1, i.e., an attorney who is a member in good standing of the bar of the highest court of a state in the United States;
• A Canadian patent agent who is registered with the USPTO’s Office of Enrollment and Discipline (“OED”) and in good standing as a patent agent under 37 C.F.R. §11.6(c) for the limited purpose of representing parties located in Canada;
• A Canadian attorney or agent who has been granted recognition by the Director of Enrollment and Discipline (“OED Director”) for the limited purpose of representing parties located in Canada, pursuant to 37 C.F.R. §11.14(f); or
• An individual who is not an attorney but was recognized to practice before the USPTO in trademark cases prior to January 1, 1957.
See TMEP §602.03(a) regarding Canadian attorneys and agents, and TBMP §§114 et seq. regarding representation of parties to Board proceedings.
602.01 Attorneys Licensed to Practice in the United States
An attorney who is a member in good standing of the bar of the highest court of any State may practice before the USPTO in trademark matters. 37 C.F.R. §§11.1 (definition of attorney) and 11.14(a). No application for recognition to practice before the USPTO is necessary. The USPTO does not give an examination for eligibility or maintain a register of United States attorneys entitled to practice in trademark cases. An attorney meeting the requirements of 37 C.F.R. §11.14 who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant. 37 C.F.R. §2.17(c). A telephone call from an attorney does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(c).
Only individuals, not law firms, are entitled to be recognized to represent others. Generally, attorneys who have not specifically been mentioned in a power of attorney may discuss but not conclude business with the USPTO over the telephone. However, if an attorney from the same United States firm as the attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application or registration, the USPTO will permit the attorney to conclude business, and will note this fact in any resulting examiner’s amendment, priority action, or Office action.
602.02 Non-Attorneys
37 C.F.R. §11.14(b). Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice
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before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
Non-attorneys are not permitted to practice except under the limited circumstances specified in 37 C.F.R. §11.14(b), set forth above. 5 U.S.C. §§500(b) and (d); 37 C.F.R. §11.14(e).
See TMEP §608.01 regarding unauthorized practice and TMEP §§611 et seq. regarding signature of documents filed in the USPTO.
602.03 Foreign Attorneys and Agents
37 C.F.R. §11.14(c). Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
37 C.F.R. §11.14 (f). Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by §1.21(a)(1)(i) of this subchapter.
Generally, only an attorney as defined in 37 C.F.R. §11.1 may represent an applicant or registrant before the USPTO. 5 U.S.C. §§500(b) and (d); 37 C.F.R. §§11.14(c) and (e). In very limited circumstances, Canadian agents or attorneys registered or in good standing before the Canadian Intellectual Property Office may file an application for reciprocal recognition to represent parties located in Canada.
A foreign attorney or agent may be recognized to represent parties located in the country in which the foreign attorney resides and practices, only if:
(1) He or she applies in writing for reciprocal recognition and pays the fee required by 37 C.F.R. §1.21(a)(1)(i);
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(2) He or she proves to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation; and
(3) The patent or trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the USPTO.
37 C.F.R. §§11.14(c) and (f). The application for reciprocal recognition must be filed prior to practicing before the USPTO in trademark matters. A foreign attorney or agent may not practice before the USPTO in trademark matters prior to being recognized by the OED Director. Practice before the USPTO in trademark matters includes preparing and prosecuting applications for trademark registration and otherwise representing a party before the USPTO. See 37 C.F.R. §11.5(b)(2). The OED Director grants recognition only in the form of a written communication. A foreign attorney or agent not recognized to practice before the USPTO in trademark cases should allow adequate time to file and obtain recognition before representing a party before the USPTO.
Currently, a Canadian attorney or agent who is registered or in good standing with the Canadian Intellectual Property Office is the only foreign attorney or agent who may be recognized as meeting the above criteria. See TMEP §602.03(a) regarding Canadian attorneys and agents.
602.03(a) Canadian Attorneys and Agents
Written Application and Fee Required. A Canadian attorney or agent may represent parties located in Canada only if:
(1) He or she is registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c); or
(2) He or she files an application for and is granted recognition by the OED Director under 37 C.F.R. §11.14(c). To be recognized under 37 C.F.R. §11.14(c), an individual must file a written application and pay the fee required by 37 C.F.R. §1.21(a)(1)(i) prior to representing a party before the USPTO. The application must include proof that the individual meets the requirements of 37 C.F.R. §11.14(c), and must be addressed to the OED Director, Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. 37 C.F.R. §11.14(f).
May Only Represent Parties Located in Canada. Once recognized by OED, a Canadian attorney or agent can only represent parties located in Canada. Thus, even if the attorney or agent is on the OED list, he or she cannot represent a party located in the United States or in another foreign country before the USPTO. For example, he or she cannot represent a Canadian
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national who resides in California and has access to a mailing address in Canada.
Lists of Canadian Attorneys and Agents Who Have Been Recognized by OED. OED maintains two separate lists of attorneys and agents who have been recognized as qualified to represent parties located in Canada:
(1) The names of Canadian patent agents who are registered with the USPTO under 37 C.F.R. §11.6(c) are listed with other registered patent practitioners on the USPTO website at https://oedci.uspto.gov/OEDCI/GeoRegion.jsp. Registered practitioners located in Canada, including United States attorneys and agents in Canada, may be identified by selecting Canada under “country.” Alternatively, to ascertain whether a particular agent is registered, type in the agent’s surname, and a list of registered practitioners having the same surname will appear. Upon matching the surname and first name, additional information may be obtained via the link in the surname;
(2) OED maintains a separate list of attorneys and agents who are not registered as patent agents but have been recognized under 37 C.F.R. §§11.14(c) and (f) as qualified to represent parties located in Canada. This list is available only on the USPTO’s internal computer network.
If a Canadian attorney or agent is designated or acts as a representative of a party in a trademark matter, the USPTO staff must verify that the attorney or agent is recognized by OED by checking these lists. USPTO staff must check these lists even if the individual files a document through TEAS and checks a box indicating that he or she is an authorized Canadian attorney or agent who has been granted recognition by OED. See TMEP §611.02(a) regarding TEAS checkoff boxes.
If the individual appears on one of the lists, the USPTO staff should make an appropriate note in the “Notes-to-the-File” section of the record. If the individual does not appear on either list, the USPTO will treat any document filed by that individual as a document filed by an unauthorized person. See TMEP §§611.05 et seq. for information about processing these documents.
602.03(b) Foreign Attorneys and Agents From Countries Other Than Canada
A foreign attorney or agent who resides and practices in a foreign country other than Canada and who is not a member in good standing of the bar of the highest court of a state in the United States may not practice before the USPTO unless he or she establishes that he or she meets the requirements of 37 C.F.R. §11.14. 5 U.S.C. §§500(b) and (d). Any such attorney or agent who attempts to represent a party in a trademark matter should be advised
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that he or she must file a written application for reciprocal recognition with OED and pay the fee required by 37 C.F.R. §1.21(a)(1)(i); that the application must be filed and granted prior to representing a party before the USPTO; and that the application must include proof that the attorney or agent is in good standing with the foreign patent or trademark office in the country in which the attorney or agent resides, that the attorney or agent is possessed of good moral character and reputation, and that the USPTO Director has recognized that the foreign patent or trademark office provides substantially reciprocal rights to United States attorneys. 37 C.F.R. §§11.14(c) and (f).
602.03(c) Documents Filed by Foreign Attorneys and Agents
A foreign attorney or agent who is not authorized to practice before the USPTO under 37 C.F.R. §11.14 may receive correspondence from the USPTO and transmit it to the applicant or registrant. However, a foreign attorney or agent cannot prepare an application, response, or other document to be filed in the USPTO, sign responses to Office actions, or authorize issuance of examiner’s amendments and priority actions. Preparing a document, authorizing an amendment to an application, and submitting legal arguments in response to a requirement or refusal all constitute examples of representation of a party in a trademark matter. See 37 C.F.R. §11.5(b)(2); TMEP §608.01.
If a foreign attorney or agent who does not meet the requirements of 37 C.F.R. §11.14(c) is designated or acts as a representative of a party in a trademark matter, the USPTO will treat any document submitted by the attorney or agent as a document filed by an unauthorized party and follow the procedures in TMEP §§611.05 et seq.
602.03(d) Representatives of Holders of International Registrations
In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141f(a), or a registered extension of protection, the applicant’s appointed representative as communicated from the International Bureau of the World Intellectual Property Organization (“IB”) is considered the correspondence address of record only. If a person with an address outside the United States is identified, the person will not be recognized by the USPTO as a representative without further clarification of his or her qualifications under 37 C.F.R. §11.14. See TMEP §609.01(a) regarding correspondence in §66(a) applications, and TMEP §§611 et seq. regarding signature on correspondence filed in the USPTO.
602.03(e) Identification of Foreign Attorney in Original Application
If a new application identifies an attorney or agent with an address outside the United States (e.g., if a foreign address is set forth in the “attorney” section of a TEAS form), the examining attorney must advise in an Office action that
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unless the person meets the requirements of 37 C.F.R. §11.14, he or she is not authorized to practice before the USPTO in trademark matters and may not represent the applicant in the particular trademark application, and that any power of attorney to the person is void ab initio. The Office action should be sent to the correspondence address of record as established in the original application. If the identified person can establish that he or she is a qualified attorney, e.g., a member in good standing of the bar of the highest court of a U.S. state, who has an address abroad, then he or she is a qualified practitioner under 37 C.F.R. §§11.1 and 11.14(a).
If an Office action is not necessary (i.e., if the application is otherwise eligible for approval for publication or registration on the Supplemental Register), the USPTO staff must ensure that the USPTO database does not include the identified person in the “Attorney” field. The correspondence address should remain unchanged.
See TMEP §609.04 regarding correspondence with parties not domiciled in the United States.
603 Standards of Conduct
37 C.F.R. §11.15. Any practitioner authorized to appear before the Office may be suspended, excluded, or reprimanded in accordance with the provisions of this Part. Any practitioner who is suspended or excluded under this Part shall not be entitled to practice before the Office in patent, trademark, or other non-patent matters while suspended or excluded.
37 C.F.R. §10.20. Canons and Disciplinary Rules. (a) Canons are set out in §§10.21, 10.30, 10.46, 10.56, 10.61, 10.76, 10.83,
10.100, and 10.110. Canons are statements of axiomatic norms, expressing in general terms the standards of professional conduct expected of practitioners in their relationships with the public, with the legal system, and with the legal profession.
(b) Disciplinary Rules are set out in §§10.22 -10.24, 10.31 -10.40, 10.47 -10.57, 10.62 -10.68, 10.77, 10.78, 10.84, 10.85, 10.87 -10.89, 10.92, 10.93, 10.101 -10.103, 10.111, and 10.112. Disciplinary Rules are mandatory in character and state the minimum level of conduct below which no practitioner can fall without being subjected to disciplinary action.
Parts 10 and 11 of Title 37 of the Code of Federal Regulations pertain to representation of others before the USPTO. Part 11 identifies and defines individuals entitled to practice before the USPTO, and sets forth a procedure for investigations and disciplinary proceedings. Part 10 establishes a mandatory Code of Professional Responsibility.
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604 Recognition as a Representative
604.01 Three Ways to Be Recognized
To be recognized as a representative, a qualified practitioner may:
• File a power of attorney signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership);
• Sign a document on behalf of an applicant or registrant who is not already represented by a qualified practitioner from a different firm; or
• Appear in person on behalf of an applicant or registrant who is not already represented by a qualified practitioner from a different firm.
37 C.F.R. §§2.17(a) and (c). A foreign attorney or agent who has not been recognized by the OED Director pursuant to 37 C.F.R. §11.14(c) or registered as a patent agent pursuant to 37 C.F.R. §11.6(c) may not be recognized as a representative.
Generally, as long as no other qualified practitioner from a different firm has been previously appointed, it is not necessary for a qualified practitioner to file a power of attorney or any other special authorization in a trademark case. A qualified practitioner who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant. A telephone call from a qualified practitioner does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(c). Such a practitioner will not be recognized as a representative, and he or she may not authorize amendments to an application by telephone.
Once the USPTO has recognized a qualified practitioner as the representative of an applicant or registrant, the USPTO will communicate and conduct business only with that practitioner or with another qualified practitioner from the same United States firm. The USPTO will not conduct business directly with the applicant or registrant, or with a qualified practitioner from a different firm, unless the applicant or registrant files a new power of attorney or revokes the previous power, or the previously recognized practitioner files a request to withdraw. See TMEP §604.02 regarding duration of recognition, and TMEP §606 regarding revocation of power of attorney.
See TMEP §§609.01 and 609.02 et seq. regarding the correspondence address, and TBMP §§114 et seq. regarding representation of parties to Board proceedings.
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604.02 Duration of Recognition
Pending Applications. For purposes of recognition as a representative, the USPTO considers a power of attorney filed while an application is pending to end when the mark is registered, when ownership changes, or when the application is abandoned.
Post Registration. For purposes of recognition as a representative by the Post Registration Section of the Office, the USPTO considers a power of attorney filed in connection with an affidavit under 15 U.S.C. §1058, §1062(c), §1065, or §1141k (“affidavit under §8, §12(c), §15, or §71”), a renewal application under 15 U.S.C. §1059 (“§9 renewal application”), or a request for amendment or correction under 15 U.S.C. §1057 (“§7 request”) to end upon acceptance or final rejection of the filing. Due to the length of time that may elapse between the filing of these documents (which could be 10 years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of a previous power.
Example 1: A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit. If another qualified practitioner from a different firm (Attorney B) wants to respond to the Office action, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the response or correspond with Attorney B.
Example 2: A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO accepts the affidavit. If another qualified practitioner from a different firm (Attorney B) later files a §7 request, the USPTO will recognize and correspond with Attorney B regardless of whether a new power of attorney or revocation of the previous power is filed.
Example 3: A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO issues an action in connection with the affidavit. If another qualified practitioner from a different firm (Attorney B) wants to file a §7 request before the USPTO accepts or issues a final rejection of the §8 affidavit, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the §7 request or correspond with Attorney B.
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The USPTO also considers a power of attorney filed after registration to end when the registration is cancelled or expired. Therefore, the USPTO will not enter a request to withdraw as attorney or revocation of a power of attorney filed in connection with a cancelled or expired registration, unless it is accompanied by a petition to reinstate the registration. See TMEP §605.04 regarding powers of attorney filed after registration.
Change of Ownership. For purposes of recognition as a representative, the USPTO considers a power of attorney filed in connection with an application or registration to end when ownership changes. After a change in ownership has been recorded, if a new qualified practitioner appears on behalf of the new owner, the USPTO will communicate and conduct business with that practitioner even absent a new power of attorney or revocation of the previous power. If the previously recognized practitioner appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that practitioner. The previously recognized practitioner does not have to file a new power of attorney signed by the new owner. See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership.
Effect on Attorney and Correspondence Information in USPTO Records. In the situations discussed above, when the USPTO deems a power of attorney to end for purposes of recognition as a representative, the USPTO does not automatically change the attorney and correspondence address in its automated records (i.e., the Trademark Reporting and Monitoring (“TRAM”) System and Trademark Applications and Registrations Retrieval (“TARR”) database), because it is possible that the previously recognized practitioner still represents the applicant or registrant and wants to continue receiving correspondence. The USPTO will continue to recognize the previously recognized practitioner if he or she appears or signs a document on behalf of the applicant or registrant. However, if a new qualified practitioner appears in person or signs a document, the Office will recognize the new qualified practitioner pursuant to 37 C.F.R. §2.17(c), without requiring a new power of attorney or revocation of the previous power. See TMEP §§609.02 et seq. regarding changes of correspondence address.
These practices also apply where a qualified practitioner is recognized by appearing in person or filing a document on behalf of the party whom he or she represents. See 37 C.F.R. §2.17(c); TMEP §604.01.
Board Proceedings. See TBMP §§114 et seq. regarding representation of parties to Board proceedings, and TBMP §§117 et seq. regarding correspondence in Board proceedings.
604.03 Change of Attorney
Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, a new qualified practitioner from a different firm is
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not permitted to represent the applicant or registrant until: (1) the applicant or registrant revokes the previous power of attorney; (2) the applicant or registrant submits a new power of attorney naming the new qualified practitioner; or (3) the previously recognized practitioner files a request to withdraw. Until such action is taken, the new qualified practitioner cannot sign responses to Office actions, authorize issuance of examiner’s amendments or priority actions, expressly abandon an application, authorize a change of correspondence address, or otherwise represent the applicant or registrant.
If an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner from a different firm wishes to take action with respect to the application or registration, the new practitioner must file a revocation of the previous power of attorney or new power of attorney naming the new qualified practitioner, signed by the individual applicant or registrant or a person with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will accept filings by or correspond with the new practitioner. The new practitioner may not sign the revocation of the previous power him or herself. See TMEP §605.01 regarding requirements for power of attorney, and TMEP §606 regarding revocation of power of attorney.
Absent a revocation or new power, if the new qualified practitioner signs a response, amendment, or request to change the correspondence address, the USPTO will treat this as a document filed by an unauthorized party and follow the procedures in TMEP §§611.05 et seq.
For purposes of recognition as a representative of an applicant or registrant, the USPTO considers a power of attorney filed while an application is pending to end with respect to a particular application when the mark is registered or abandoned, or when ownership changes. The USPTO considers a power of attorney filed after registration to end when the registration is cancelled or expired, or when ownership changes. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02. In these situations, it is unnecessary to file a new power of attorney or revocation of the previous power before a new qualified practitioner takes an action. See TMEP §605.04 regarding the processing of powers of attorney filed after registration.
See TBMP §§114 et seq. regarding representation of parties to Board proceedings, and TBMP §§117 et seq. regarding correspondence in Board proceedings.
605 Powers of Attorney
37 C.F.R. §2.17(c). To be recognized as a representative, an attorney as defined in §11.1 of this chapter may file a power of attorney, appear in person,
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or sign a document on behalf of an applicant or registrant that is filed with the Office in a trademark case.
37 C.F.R. §2.17(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.
605.01 Requirements for Power of Attorney
A power of attorney must: (1) designate by name at least one individual qualified practitioner; and (2) be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or partner of a partnership). In the case of joint applicants or registrants, all should sign. See TMEP §611.01(c) regarding signature of documents transmitted electronically.
If a power specifies only the name of a law firm, the USPTO will treat it as a correspondence address rather than an authorization to conduct business. See TMEP §§609 et seq. regarding the correspondence address.
A qualified practitioner cannot sign an original power of attorney on behalf of his or her client. An original power of attorney, other than one associating an additional attorney with an already recognized attorney (see TMEP §605.03), must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant.
However, the filing of a power of attorney is not mandatory in a trademark case. Thus, if a power of attorney is signed by an improper person (e.g., by the named attorney) and no other qualified practitioner has been previously appointed, the USPTO generally does not require a properly signed power. If the improperly signed power is accompanied by a document that is signed by a qualified practitioner or includes the name and address of a qualified practitioner, the USPTO may recognize that qualified practitioner under 37 C.F.R. §2.17(c), separate and apart from the improperly signed power. See TMEP §604.01 regarding the three ways that a qualified practitioner can be recognized as a representative, TMEP §609.01 regarding establishment of the correspondence address in a new application, and TMEP §609.02(a) regarding the limited situations in which the USPTO will change the
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correspondence address to that of a qualified practitioner absent a written request to change the correspondence address.
Example: If the original application contains the name and address of a qualified practitioner (e.g., if the “Attorney” section of a TEAS application contains the name and address of an attorney from a United States firm or a Canadian attorney or agent who has been recognized by the OED Director), and the application includes a power of attorney signed by the named practitioner, the USPTO will disregard the improperly signed power. However, the USPTO will recognize and correspond with the named qualified practitioner, pursuant to 37 C.F.R. §2.17(c).
However, if an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner wishes to take action with respect to the application or registration, the new qualified practitioner must file a new power of attorney or revocation of the previous power, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant, before the USPTO will accept filings by or correspond with the new qualified practitioner. See TMEP §604.03 regarding change of attorney, and TMEP §606 regarding revocation of power of attorney.
If two or more qualified practitioners are named in a power of attorney, any of the named practitioners can sign and submit a notice of change of correspondence address setting forth a new address, even if the new address is at a new firm. It is not necessary to submit a new power signed by the applicant or registrant when a named practitioner(s) changes firms. See TMEP §§609.02 et seq. regarding changes of address.
To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov/teas/index.html. When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records.
605.02 Power of Attorney Relating to More Than One Application or Registration
Using TEAS, at www.uspto.gov/teas/index.html, an applicant or registrant may appoint a qualified practitioner for up to 20 existing applications or registrations that have the identical owner and qualified practitioner. A power of attorney relating to future applications cannot be filed through TEAS.
An applicant or registrant may file a power of attorney on paper that relates to more than one trademark application or registration, or to all existing and future applications and registrations. 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 of
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the power; 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. 37 C.F.R. §2.17(d). If the applicant or registrant meets these requirements, the USPTO will accept the power of attorney.
605.03 Associate Powers of Attorney
Once the applicant or registrant has designated a qualified practitioner, the practitioner may sign an associate power of attorney, appointing another qualified practitioner -- including one from a different law firm -- as an additional person authorized to represent the applicant or registrant.
If the applicant or registrant revokes the original power of attorney, the revocation also discharges any associate power signed by the practitioner whose power has been revoked.
If the practitioner who signed an associate power withdraws, the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the USPTO.
605.04 Powers of Attorney Filed After Registration
To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov/teas/index.html. When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records (i.e., TRAM and TARR).
When a new power of attorney is filed on paper after registration, the USPTO scans an image of the document into the Trademark Image Capture and Retrieval System (“TICRS”) and Trademark Document Retrieval (“TDR”) portal, but does not change the attorney information in the USPTO’s automated records unless the registrant concurrently takes a separate action, such as filing an affidavit under §8.
For purposes of recognition as a representative, the USPTO considers a power of attorney to end with registration. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02.
See also TMEP §1612 regarding powers of attorney filed after registration, and TMEP §609.02 et seq. regarding changing the correspondence address after registration.
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606 Revocation of Power of Attorney
37 C.F.R. §2.19(a). Authority to represent an applicant, registrant or a party to a proceeding may be revoked at any stage in the proceedings of a case upon written notification to the Director; and when it is revoked, the Office will communicate directly with the applicant, registrant or party to the proceeding, or with the new attorney or domestic representative if one has been appointed. The Office will notify the person affected of the revocation of his or her authorization.
Once a qualified practitioner has been recognized as the representative of an applicant or registrant, the applicant or registrant may revoke the power by filing a written revocation. To expedite processing, the USPTO recommends that revocations of powers of attorney be filed through TEAS, at http://www.uspto.gov/teas/index.html.
Signature. The revocation must be personally signed by the individual applicant or registrant, or by someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or partner of a partnership). In the case of joint applicants or registrants, all should sign.
A new qualified practitioner cannot sign a revocation of the previous power. A new qualified practitioner may submit a revocation and new appointment of power of attorney through TEAS by e-mailing the text form to the applicant or registrant for electronic signature from within TEAS, or by attaching a .jpg or .pdf image of a handwritten pen-and-ink revocation/appointment signed by the applicant or registrant. See TMEP §611.01(c) regarding electronic signature. A new qualified practitioner should not directly sign the TEAS revocation form.
Effect on Correspondence Address. If the applicant or registrant files a new power of attorney with the revocation, the address contained in the new power of attorney becomes the correspondence address of record. If the applicant or registrant files a revocation of the previous power of attorney without a new power of attorney, correspondence will be sent either: (1) directly to the applicant or registrant or to the correspondence address designated by the applicant or registrant; or (2) if the revocation is transmitted by a qualified practitioner, to the qualified practitioner who signed the cover letter or action accompanying the revocation. See TMEP §§609.02 and 609.02(a).
New Power Treated as Revocation. If the applicant or registrant files a new power of attorney naming a new qualified practitioner as its representative, this will be treated as a revocation of any previous power of attorney, even if the applicant or registrant does not specifically revoke the previous power.
Request to Change Correspondence Address Does Not Revoke Power of Attorney. A written request to change the correspondence address does not
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revoke a power of attorney. See TMEP §604.03 regarding changes of attorney, and TMEP §§609.02 et seq. regarding changes of address.
Processing Revocations Filed After Registration. For purposes of recognition as a representative, the USPTO considers a power of attorney to end with registration. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02.
After registration, if the registrant files a paper request to revoke a power of attorney appointed before registration, the USPTO scans an image of the revocation into TICRS and TDR but does not update the attorney information in its automated records (i.e., TRAM and TARR) unless the registrant concurrently takes an action such as filing an affidavit under §8. See TMEP §1612. When a request to revoke a power of attorney is filed through TEAS after registration, the data from the form is inputted directly into the automated records of the USPTO.
Board Proceedings. See TBMP §116.01 regarding revocation of authority to represent parties to Board proceedings.
607 Withdrawal of Attorney of Record
37 C.F.R. §2.19(b). If the requirements of §10.40 of this chapter are met, an attorney authorized under §11.14 to represent an applicant, registrant or party in a trademark case may withdraw upon application to and approval by the Director.
May Not Prejudice Applicant or Registrant. A qualified practitioner may withdraw from representing an applicant or registrant, but may not withdraw in a way that would prejudice the applicant or registrant. 37 C.F.R. §10.40(a). In re Legendary, Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992) (attorney’s request to withdraw denied where the request was filed on the last day of the period for response to an Office action and attorney stated neither that the applicant was given due notice of the attorney’s withdrawal from employment nor that the attorney had delivered all documents and property in his file concerning the prosecution of the application to the applicant). See 37 C.F.R. §§10.40(b) and (c) regarding mandatory and permissive withdrawal from employment by an attorney.
Form. To expedite processing, the USPTO recommends that all requests to withdraw be filed through TEAS, at http://www.uspto.gov/teas/index.html. The TEAS form can be used to request withdrawal on any application or registration that is currently active. For registrations, the form requires entry of the original application serial number rather than the registration number. If
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filed on paper, the request should be titled “Request for Permission to Withdraw as Attorney of Record.”
Requirements for Request. A request to withdraw must include the following:
(1) A statement of the reason(s) for the request to withdraw;
(2) The application serial number or registration number; and
(3) Either of the following;
• A statement that the practitioner has given due notice to the client that the practitioner is withdrawing from employment and will be filing the necessary documents with the USPTO; that the client was given notice of the withdrawal at least two months before the expiration of the response period, if applicable; that the practitioner has delivered to the client all documents and property in the practitioner’s file concerning the application or registration to which the client is entitled; and that the practitioner has notified the client of any responses or other filings that may be due, and of the deadline (37 C.F.R. §10.40(a)). See In re Slack, 54 USPQ2d 1504 (Comm’r Pats. 2000); or
• If there is more than one qualified practitioner of record, a statement that representation by co-counsel is ongoing.
The request should also include the present mailing address of the practitioner who is withdrawing and the present mailing address of the applicant or registrant.
The requirement for a statement that the client was given notice of the withdrawal at least two months before the expiration of any outstanding response period does not apply where the practitioner states that his or her representation was terminated by the applicant/registrant when less than two months remained in the response period.
The request should be filed soon after the practitioner notifies the applicant or registrant of his or her intent to withdraw.
These requirements apply to all requests to withdraw, whether withdrawal is mandatory or permissive. They also apply where a qualified practitioner was recognized by appearing in person or by filing a document on behalf of the party whom he or she represents (see TMEP §604.01).
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Processing TEAS Requests. Requests to withdraw filed through TEAS are processed electronically, and are automatically granted if they meet the requirements listed above.
Processing Paper Requests. For paper filings, a request for permission to withdraw filed before registration will be handled by the appropriate managing attorney, or, if a notice of allowance has issued and the application is awaiting the filing of a statement of use, by the Supervisor of the ITU/Divisional Unit. After registration, a paper request for permission to withdraw will be handled by the Supervisor of the Post Registration Section.
The managing attorney or supervisor will approve or deny the paper request, notify the applicant or registrant and the practitioner of the approval or denial of the request, and place a copy of this notification in the record. If the request is approved, the managing attorney or supervisor should ensure that the correspondence address is changed in the USPTO’s automated records. It is the responsibility of the managing attorneys or supervisors to establish procedures that permit withdrawal requests to be given priority and acted on promptly.
For paper filings, if the practitioner who seeks to withdraw is also the domestic representative, the managing attorney or supervisor should inquire as to whether the practitioner intends to withdraw as domestic representative. This inquiry should be made by phone or e-mail, if possible. If the practitioner withdraws as domestic representative, the managing attorney or supervisor must ensure that the “Domestic Representative” field in the USPTO’s automated records is updated.
Requests Filed After Registration. For purposes of recognition as a representative, the USPTO considers a power of attorney to end with registration. If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. See TMEP §604.02.
After registration, if a practitioner appointed before registration files a paper request to withdraw, the USPTO scans an image of the request into TICRS and TDR but does not update the attorney information in its automated records (i.e., TRAM and TARR) unless the registrant concurrently takes an action such as filing an affidavit under §8. When a proper request to withdraw is filed through TEAS after registration, the request is automatically granted, and the data from the form is inputted directly into the automated records of the USPTO. See TMEP §§605.04 and 1612.
Requests Filed in Abandoned Application. The USPTO will not process a request for permission to withdraw in an abandoned application. When a qualified practitioner files a request to withdraw in an abandoned application, the USPTO scans an image of the request into TICRS and TDR but does not
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update the attorney information in its automated records. See TMEP §1612 regarding withdrawal after registration.
Board Proceedings. See TBMP §§116.02-116.05 regarding withdrawal as the representative of a party to a Board proceeding.
608 Unauthorized Practice
608.01 Actions by Unauthorized Persons Not Permitted
37 C.F.R. §11.5(b)(2). Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an application for trademark registration; preparing an amendment which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.
An individual who is not authorized under 37 C.F.R. §11.14 to practice before the USPTO in trademark cases (see TMEP §§602 et seq.) is not permitted to represent a party in the prosecution of a trademark application, in the maintenance of a registration, or in a proceeding before the USPTO. 5 U.S.C. §§500(b) and (d); 37 C.F.R. §11.14(e).
An individual who does not meet the requirements of 37 C.F.R. §11.14 cannot: prepare an application, response, or other document to be filed in the USPTO; sign amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146, requests to change the correspondence address, or letters of express abandonment; authorize issuance of examiner’s amendments and priority actions; or otherwise represent an applicant, registrant, or party to a proceeding in the USPTO. Presenting an amendment to an application and submitting legal arguments in response to a refusal are examples of representation of the applicant or registrant. 37 C.F.R. §11.5(b)(2).
Exception: A paralegal, legal assistant, or other employee of a qualified practitioner may prepare documents for review and signature by the practitioner.
When an applicant or registrant is represented by a qualified practitioner, the USPTO encourages the practice of direct communication with the appointed practitioner(s). Although paralegals and legal assistants may relay information between the examining attorney and the appointed practitioner(s), they are not authorized to conduct business before the USPTO. For example, paralegals and legal assistants cannot authorize issuance of examiner’s amendments or priority actions, even if only conveying the
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appointed practitioner’s approval by indicating that the appointed practitioner has approved the amendment or action.
Once the USPTO recognizes a qualified practitioner(s) as representing an applicant or registrant, a new qualified practitioner from a different firm is not permitted to represent the applicant or registrant until the applicant or registrant revokes the power of attorney of the previously recognized representative, or the previously recognized representative withdraws. See TMEP §604.03.
An individual who is not authorized under 37 C.F.R. §11.14 may transmit and receive correspondence. Such an individual may also sign a verification on behalf of an applicant or registrant, if he or she meets the requirements of 37 C.F.R. §2.33(a), e.g., has firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or registrant (see TMEP §§611.03(a) and 804.04).
Any person, whether a practitioner or non-practitioner, who presents a document to the USPTO (whether by signing, filing, submitting, or later advocating the document) is subject to 37 C.F.R. §11.18(b). See TMEP §611.01(a).
If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §11.14 is engaging in widespread unauthorized practice by representing applicants or registrants, he or she should bring the matter to the attention of the Administrator for Trademark Policy and Procedure in the Office of the Deputy Commissioner for Trademark Examination Policy (“Administrator”).
See TMEP §§611 et seq. regarding signature on correspondence filed in the USPTO.
608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO
Occasionally, the Director of the USPTO suspends or excludes a particular individual from practice before the USPTO. Notice of the suspension or exclusion is published in the Official Gazette and the decision is posted in the FOIA Reading Room http://des.uspto.gov/Foia/OEDReadingRoom.jsp. A suspended or excluded individual is not a qualified practitioner.
Also, the USPTO sometimes learns that a person who does not meet the requirements of 37 C.F.R. §11.14 is engaged in the widespread unauthorized practice of representing applicants and registrants before the USPTO.
In these cases, the Administrator will notify the USPTO staff accordingly, and the USPTO will send a written notice to the affected applicant or registrant, indicating that:
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(1) The individual is not entitled to practice before the USPTO in trademark matters, and, therefore, may not represent the applicant or registrant;
(2) Any power of attorney is void ab initio;
(3) The individual may not sign responses to Office actions, conduct interviews with USPTO employees or otherwise represent an applicant, registrant, or party before the Office; and
(4) All correspondence concerning the application or registration will be sent to the domestic representative if appropriate, or, alternatively, to the applicant or registrant at its address of record.
The USPTO will change the correspondence address to that of the applicant, registrant, or domestic representative, as appropriate.
If an Office action is outstanding and no response has been received, the examining attorney or Post Registration staff must issue a supplemental action, addressed to the applicant or registrant, that restates any outstanding refusals and/or requirements, includes a new six-month response period, and states that a response signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (see TMEP §§611.06 et seq.), or a qualified practitioner (see TMEP §§602 et seq.) must be submitted within the response period. See TMEP §711.02 regarding supplemental Office actions.
If the examining attorney or Post Registration staff receives a response to an Office action signed by an excluded or suspended practitioner, or a person who appears to be engaged in deliberate or widespread unauthorized practice of law, he or she must prepare a notice of incomplete response, granting the applicant or registrant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b). See TMEP §§611.05 et seq., 712.03, and 718.03(b) for further information.
USPTO employees must also notify the Administrator of the receipt of a document signed by such a person.
609 Correspondence, With Whom Held
37 C.F.R. §2.18 Correspondence, with whom held. (a) If an attorney transmits documents documents, or a written power of
attorney is filed, the Office will send correspondence to the attorney transmitting the documents, or to the attorney designated in the power of attorney, provided that the attorney is an attorney as defined in §11.1 of this chapter.
(b) The Office will not undertake double correspondence. If two or more attorneys appear or sign a document, the Office’s reply will be sent to the
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address already established in the record until the applicant, registrant or party, or its duly appointed attorney, requests in writing that correspondence be sent to another address.
(c) If an application, registration or proceeding is not being prosecuted by an attorney but a domestic representative has been appointed, the Office will send correspondence to the domestic representative, unless the applicant, registrant or party designates in writing another correspondence address.
(d) If the application, registration or proceeding is not being prosecuted by an attorney and no domestic representative has been appointed, the Office will send correspondence directly to the applicant, registrant or party, unless the applicant, registrant or party designates in writing another correspondence address.
See TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.01 Establishing the Correspondence Address
When a trademark application is filed, the USPTO enters into its automated records an address (consisting of a name, street address or post office box, city, state and postal code, foreign country (if applicable), and an e-mail address if provided) where correspondence from the USPTO will be sent. This often differs from the applicant’s address.
The USPTO may send official communications concerning an application by e-mail only if the applicant or the applicant’s qualified practitioner authorizes e-mail communications. See TMEP §304.03.
The USPTO uses the following guidelines in entering the correspondence address in a new application:
• If the application is transmitted by a qualified practitioner, includes a power of attorney designating a qualified practitioner, or includes the name and address of a qualified practitioner, the USPTO will send correspondence to the practitioner;
• If an application is not being prosecuted by a qualified practitioner, but the applicant designates in writing a correspondence address other than its own address, the USPTO will send correspondence to that address if appropriate;
• If an application is not being prosecuted by a qualified practitioner and the applicant has not designated a correspondence address, but a domestic representative has been appointed, the USPTO will send correspondence to the domestic representative if appropriate; or
• If the application is not being prosecuted by a qualified practitioner, no
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domestic representative has been appointed, and the applicant has not designated a different address for correspondence, the USPTO will send correspondence directly to the applicant at its address of record.
37 C.F.R. §2.18.
The USPTO uses these same guidelines to reestablish the correspondence address when a registrant files an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request. The USPTO will update its automated records to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request. Due to the length of time that may elapse between the filing of these documents (which could be ten years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of the previous power. See TMEP §604.02 regarding the duration of recognition as a representative.
The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner. 37 C.F.R. §2.18(b).
If an application or other document is signed by a qualified practitioner, but the submission does not contain a separate address for that practitioner, the USPTO will correspond with the qualified practitioner in care of the correspondence address of record and direct such correspondence to the practitioner’s attention. If an Office action is required, the USPTO will require the practitioner to either specify his or her address for correspondence or affirmatively state that the USPTO should continue to address correspondence to his or her attention in care of the previously submitted correspondence address.
See TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States, TMEP §609.01(a) regarding correspondence in §66(a) applications, TMEP §§609.02 et seq. for information about changing the correspondence address, and TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.01(a) Correspondence in §66(a) Applications
The USPTO will send the first Office action in an application under §66(a) of the Trademark Act to the IB. The IB will send it to the applicant. The USPTO will send subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to any correspondence address provided in a properly signed request to change the correspondence address. See TMEP §1904.02(h) for further information about Office actions in §66(a) applications.
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The USPTO will accept a properly signed notice of change of the correspondence address in a §66(a) application or a registered extension of protection of an international registration to the United States, and will send correspondence to the new address. However, this will not change the representative designated in the international registration, to which the IB sends correspondence. A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. Forms for changing the name or address of the designated representative are available on the IB website at http://www.wipo.int/madrid/en/forms.
See TMEP §§1906.01 et seq. regarding requests to record changes with the IB, and TMEP §§602.03 et seq. regarding foreign attorneys.
609.02 Changing the Correspondence Address
Once the correspondence address is established, the USPTO will generally send correspondence to that address until a written request to change the address is submitted, signed by the practitioner whom the USPTO has recognized, or, if the applicant or registrant is not represented by a qualified practitioner, by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). 37 C.F.R. §2.18(b).
The mere transmittal of a response to an Office action bearing a new address does not effect a change in a correspondence address, except when a new owner takes an action in an application or registration (e.g., files a response to an Office action or statement of use) after recordation of a change of ownership, as discussed in TMEP §609.02(f).
The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner. 37 C.F.R. §2.18(b).
A written request to change the correspondence address does not revoke a power of attorney. See TMEP §606 regarding revocation.
See also TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.02(a) Request to Change Correspondence Address Presumed
The USPTO will construe the following as a written request to change the correspondence address:
(1) If a qualified practitioner transmits documents on behalf of an applicant or registrant who is not already represented by another qualified practitioner from a different firm, the USPTO will construe
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this as including a request to change the correspondence address to that of the practitioner (however, the filing of an “associate power of attorney” or similar document does not change the correspondence address); or
(2) If an applicant or registrant files a properly signed power of attorney (see TMEP §605.01) designating a qualified practitioner, the USPTO will change the correspondence address to that of the practitioner named in the power, even if the applicant or registrant does not file a separate request to change the address.
In these two situations, the USPTO will change the correspondence address to the address of the new qualified practitioner. In all other situations, a written request to change the correspondence address, signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or the qualified practitioner of record, is required. See TMEP §609.02(b) regarding the requirements for a written request to change the correspondence address.
See also TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.02(b) Requirements for Request to Change Correspondence Address
A request to change the correspondence address must be in writing. Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, only that practitioner or another qualified practitioner from the same United States firm may sign a request to change the address, unless the applicant or registrant files a revocation of the previous power and/or a new power of attorney, or the previously recognized practitioner files a request to withdraw. 37 C.F.R. §11.18(a).
If the applicant or registrant is not represented by a qualified practitioner, the request must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or registrants, all should sign. See 37 C.F.R. §11.14(e); TMEP §611.02.
A request to change the correspondence address cannot be entered by examiner’s amendment.
To expedite processing, notices of change of correspondence address (including changes of e-mail correspondence address) should be filed through TEAS, at www.uspto.gov/teas/index.html. The TEAS form can be used to change the correspondence address on any application or registration that is
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currently active. When a notice is filed through TEAS, the data from the form is inputted directly into the automated records of the USPTO.
If two or more qualified practitioners are named in a power, any of the named practitioners can sign and submit a notice of change of correspondence address setting forth a new address, even if the new address is at a new firm. It is not necessary to submit a new power signed by the applicant or registrant when a named practitioner(s) changes firms.
See TBMP §§117 et seq. for information about correspondence in Board proceedings.
609.02(c) Processing Requests to Change the Correspondence Address Before Registration
Once the correspondence address is established for a particular application, the USPTO will generally not change it unless there is a written request to do so, signed by the applicant or the qualified practitioner of record. The mere transmittal of a response to an Office action bearing a new address for an applicant or an applicant’s qualified practitioner does not effect a change in a correspondence address. See TMEP §609.02(b) for further information about the requirements for a written request to change the correspondence address, and TMEP §609.02(a) for discussion of situations in which a request to change the correspondence address is presumed.
When the request is filed through TEAS, the data from the form is inputted directly into the automated records of the USPTO. When a request to change the correspondence address is filed on paper, the USPTO manually enters the new correspondence address into its automated records and places the request in the application record, but does not send a confirmation or other acknowledgment of the request to change the correspondence address. The applicant may check the TARR database at http://tarr.uspto.gov to determine whether the change of address has been entered into the USPTO’s automated records.
The USPTO will not process a request to change the correspondence address in an abandoned application, unless submitted in conjunction with a petition to revive or request for reinstatement. When an applicant files a request to change the correspondence address in an abandoned application, the USPTO simply places the request in the record.
609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations
The TEAS change of correspondence address form can be used to change the correspondence address for more than one application or registration. An applicant or registrant may submit up to twenty (20) application serial numbers at one time. For registered marks, the TEAS form requires entry of
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the original application serial number rather than the registration number. Requests to change the address for more than twenty applications/registrations cannot be submitted in a single TEAS form.
Global address updates, i.e. requests to change an address in every application or registration in which it appears, will not be accepted.
609.02(e) Changing the Correspondence Address After Registration
As noted in TMEP §609.01, the USPTO reestablishes the correspondence address upon the examination of an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request, even if there is no new power of attorney or request to change the correspondence address. The USPTO will update its automated records to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request, and update the correspondence address to that of the qualified practitioner. If the registrant is not represented by a qualified practitioner, the USPTO will update its automated records to indicate the registrant’s address as shown in the affidavit, renewal application, or §7 request as the correspondence address of record. See TMEP §604.02 regarding the duration of recognition as a representative.
Once the USPTO establishes a correspondence address upon examination of an affidavit, renewal application, or §7 request, a written request to change the address is required to effect a change of address during the pendency of that filing. TMEP §604.02. See TMEP §609.02(b) regarding the requirements for a written request to change the correspondence address.
Owners of registrations are encouraged to promptly notify the USPTO of any changes of address. To expedite processing, the USPTO recommends that the notice of change of address be filed through TEAS, at www.uspto.gov/teas/index.html. The TEAS form can be used to change the correspondence address on any registration that is currently active, but requires submission of the original application serial number rather than the registration number. When the notice is filed through TEAS, the data from the form is inputted directly into the USPTO’s automated records.
The USPTO will not process a request to change the correspondence address in a cancelled or expired registration, unless submitted in conjunction with a petition or request for reinstatement of the registration. When a registrant files a request to change the correspondence address in a cancelled or expired registration, the USPTO simply places the request in the record.
See TMEP §604.03 regarding change of attorney, and TBMP §§117 et seq. for information about correspondence in Board proceedings.
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609.02(f) Correspondence After Recordation of Change of Ownership
For purposes of recognition as a representative, the USPTO considers a power of attorney to end when ownership changes. TMEP §604.02.
Recordation of an assignment (or other document changing title) with the Assignment Services Branch does not automatically update the correspondence address in the automated records of the Trademark Operation (i.e., TRAM and TARR). See TMEP §503.01(b). To ensure that the automated records of the Trademark Operation are updated to reflect the correct correspondence address, new owners should file a separate written request with the Trademark Operation to change the address, preferably through TEAS.
If the new owner does not file a separate written request with the Trademark Operation to change the correspondence address, but instead takes an action in connection with an application or registration by filing a properly signed communication (e.g., a response to an Office action or statement of use) bearing a new correspondence address, the USPTO may update its automated records to reflect the address of the new owner or the new owner’s qualified practitioner even if the new owner does not specifically request a change of the correspondence address. In this situation, the USPTO will reestablish the correspondence address, using the guidelines set forth in TMEP §609.01. If the new owner is not represented by a qualified practitioner, the correspondence address will be changed to reflect the address of the applicant or registrant, as set forth in the written communication.
If a new qualified practitioner appears in person or signs a document on behalf of the new owner, the USPTO will recognize the new practitioner even absent a new power of attorney or revocation of the previous power, pursuant to 37 C.F.R. §2.17(c). See TMEP §604.02. However, if the previously recognized qualified practitioner appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that practitioner. The previously recognized practitioner does not have to file a new power of attorney signed by the new owner.
See also TMEP §§505 et seq. regarding requests to update ownership information after recordation of a change of ownership, and TBMP §§117 et seq. regarding correspondence in Board proceedings.
609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address
The owner of an application or registration has a duty to maintain a current and accurate correspondence address. If the correspondence address changes, the USPTO must be promptly notified in writing, preferably through
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TEAS. See 37 C.F.R. §2.18. This also applies to e-mail addresses, if the applicant or registrant has authorized the USPTO to send correspondence by e-mail (see TMEP §304.03).
609.04 Correspondence with Parties Not Domiciled in the United States
If an applicant or registrant has not clearly stated a preferred correspondence address, the USPTO will process correspondence as follows:
• If an applicant or registrant has appointed a qualified practitioner (see TMEP §§602 et seq.), the USPTO will send correspondence to that practitioner.
• If the applicant or registrant is not represented by a qualified practitioner, and the applicant or registrant has appointed a domestic representative, the USPTO will send correspondence to the domestic representative if appropriate, unless the applicant or registrant designates in writing another correspondence address. However, the domestic representative is not authorized to prosecute an application or represent a party in a proceeding before the USPTO, unless the domestic representative is a qualified practitioner who has been recognized by the USPTO as the representative of the applicant or registrant. See TMEP §610 regarding domestic representatives.
• If the applicant or registrant is not represented by a qualified practitioner, and the applicant or registrant does not designate a domestic representative, the USPTO will send correspondence directly to the applicant or registrant at its foreign address, unless the applicant or registrant designates in writing another correspondence address.
See TMEP §609.01(a) regarding correspondence in §66(a) applications.
610 Designation of Domestic Representative by Parties Not Domiciled in the United States
Designation of Domestic Representative Encouraged. An applicant, registrant, or party to a proceeding before the USPTO who is not domiciled in the United States may file a document designating the name and address of a domestic representative on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §§1051(e), 1058(f), 1059(c), 1060(b), and 1141h(d). The USPTO encourages parties who do not reside in the United States to designate domestic representatives, but it is not mandatory. If the applicant, registrant, or party does not designate a domestic representative, the USPTO will not require a designation.
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May be Natural or Juristic Person. The person designated as a domestic representative may be a natural person or a juristic person as defined in 15 U.S.C. §1127.
Not the Same as Power of Attorney. The designation is not the same as a power of attorney. The designation serves a different purpose, namely, to provide a contact and address for service of process. The designation of a domestic representative does not authorize the person designated to practice before the USPTO, e.g., to prepare or prosecute the application, or represent a party in a proceeding before the USPTO. 37 C.F.R. §§2.24 and 11.5(b)(2). Similarly, a power of attorney does not serve as a designation of a domestic representative, unless the power of attorney specifically states that the attorney is also the domestic representative on whom may be served notices or process in proceedings affecting the mark.
Requirements. A designation of domestic representative must include the name and address of the person designated and a clear statement that the party intends to designate this person as a domestic representative upon whom notices or process affecting the mark may be served.
Signature. The designation must be in writing. If set forth in the initial application, a designation of domestic representative may be signed by a person properly authorized to sign the application on behalf of applicant. A person who is properly authorized to sign an application is:
(1) A person with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or party; or
(3) An attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant or party.
37 C.F.R. §2.33(a); TMEP §804.04.
If filed apart from the initial application, the designation should be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
Duration. An appointment of domestic representative remains in effect unless specifically revoked or supplanted by appointment of a new domestic representative.
Revocation. An applicant or registrant may revoke a designation of domestic representative. A revocation should be signed by the individual applicant or
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registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
Withdrawal. A domestic representative may withdraw, in a written document signed by an individual domestic representative, or by someone legally authorized to bind a juristic domestic representative.
Form. To expedite processing, the USPTO recommends that designations and revocations of domestic representative be filed through TEAS, at http://www.uspto.gov/teas/index.html.
See TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States.
611 Signature on Correspondence Filed in the United States Patent and Trademark Office
611.01 Signature and Certificate
611.01(a) Signature as Certificate
37 C.F.R. §11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and other non- patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed by such practitioner, in compliance with §1.4(d)(1) of this subchapter.
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after
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an inquiry reasonable under the circumstances, (i) The paper is not being presented for any improper purpose, such as to
harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of--
(1) Striking the offending paper; (2) Referring a practitioner’s conduct to the Director of Enrollment and
Discipline for appropriate action; (3) Precluding a party or practitioner from submitting a paper, or presenting
or contesting an issue; (4) Affecting the weight given to the offending paper; or (5) Terminating the proceedings in the Office. (d) Any practitioner violating the provisions of this section may also be
subject to disciplinary action.
611.01(b) Requirements for Signature
All correspondence that requires a signature must bear either a handwritten signature personally signed in permanent ink by the person named as the signatory, or an “electronic signature” that meets the requirements of 37 C.F.R. §2.193(c)(1)(iii), personally entered by the signatory. The USPTO will accept a signature that meets the requirements of 37 C.F.R. §2.193(c)(1)(iii) on all correspondence, whether filed on paper, by fax, or through TEAS or the Electronic System for Trademark Trials and Appeals (“ESTTA”). See TMEP §611.01(c) regarding the signature of documents filed electronically.
All documents must be personally signed. Another person (e.g., paralegal, legal assistant, secretary) may not sign the name of an attorney or other
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authorized signatory. See In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990).
The name of the person who signs a document should be set forth in printed or typed form immediately below or adjacent to the signature, or identified elsewhere in the filing (e.g., in a cover letter or other document that accompanies the filing). If the signatory’s name is not set forth in a document, the USPTO may require that it be stated for the record. This information can be entered through a note in the “Notes-to-the-File” section of the record.
Documents must be signed by a proper party. See TMEP §§611.02 and 611.03 et seq. for further information.
See TBMP §106.02 regarding signature of documents filed in Board proceedings, and TBMP §106.03 regarding the form of submissions in Board proceedings.
611.01(c) Signature of Documents Filed Electronically
In a document filed through TEAS or ESTTA, the party filing the document does not apply a conventional signature. Instead, the filer does one of the following:
(1) The filer enters any combination of letters, numbers, spaces, and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (“/”) symbols. 37 C.F.R. §2.193(c)(1)(iii). Examples of acceptable signatures include /john doe/, /drl/, and /544- 4925/. The signatory’s name should be set forth beneath the signature;
(2) The document is filled out online, printed in text form, and mailed or faxed to the signatory. The signatory signs the printed document in the traditional pen-and-ink manner. The signature portion, along with a declaration, if required, is scanned to create a .jpg or .pdf image file and attached to the document for electronic submission;
(3) The document is completed online, and e-mailed to the signatory for electronic signature from within TEAS. The signatory signs the document and it is automatically returned via TEAS to the party who requested the signature.
The USPTO will also accept a signature that meets the requirements of paragraph (1) above on documents that are filed on paper.
All documents must be personally signed. The person(s) identified as the signatory must manually enter the elements of the electronic signature. Another person (e.g., paralegal, legal assistant, or secretary) may not sign the name of a qualified practitioner or other authorized signatory. Just as signing
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the name of another person on paper does not serve as the signature of the person whose name is written, typing the electronic signature of another person is not a valid signature by that person.
The Trademark Trial and Appeal Board has held that an electronic signature on an electronic transmission through ESTTA pertains to all the attachments to the transmission. PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005).
See TBMP §106.02 regarding signature of documents filed in Board proceedings, and TBMP §106.03 regarding the form of submissions in Board proceedings.
611.02 Signatures by Authorized Parties Required
All documents filed in the USPTO must be properly signed. The USPTO staff must review the application or registration record to determine whether the applicant or registrant is represented by a qualified practitioner, and must ensure that all documents are properly signed.
Verifications of facts on behalf of an applicant or registrant must be personally signed by someone meeting the requirements of 37 C.F.R. §2.33(a) or §2.161(b). See TMEP §§611.03(a) and 804.04.
Other documents must be personally signed by the applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or by a qualified practitioner. This includes amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146, letters of express abandonment, requests to divide, and requests to change the correspondence address. Generally, if the applicant or registrant is represented by a qualified practitioner, the practitioner must sign. 37 C.F.R. §11.18(a). This applies to both in-house and outside counsel. If the applicant or registrant is not represented by a qualified practitioner, the document must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
See TMEP §§611.03 et seq. for guidelines as to the proper person to sign specific documents, TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of legal entities, and TMEP §611.04 for examples of authorized and potentially unauthorized parties.
611.02(a) TEAS Checkoff Boxes
On some of the TEAS forms, the person signing the response must confirm that he or she is authorized to sign the document by clicking one of three
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buttons indicating that he or she is: (1) an unrepresented applicant or registrant who has not previously been represented in this matter, or was previously represented by a qualified practitioner who has withdrawn or whose power has been revoked; (2) an attorney who is a member in good standing of the bar of the highest court of a U.S. state, and that if the applicant or registrant was previously represented by a different qualified practitioner, the previous power has been revoked, or the previously appointed practitioner has withdrawn; or (3) an authorized Canadian attorney or agent who has been granted recognition by OED, and if the applicant or registrant was previously represented by a different qualified practitioner, the previous power has been revoked, or the previously appointed practitioner has withdrawn. The USPTO will accept these statements unless there is conflicting information in the record or the USPTO is otherwise made aware of conflicting information.
Example: If an attorney lists a foreign address and checks the box indicating that he or she is a member in good standing of the bar of the highest court of a U.S. state, the USPTO will accept this statement, as long as there is no conflicting information in the record.
Example: If an attorney indicates that the applicant was previously unrepresented, or that the applicant was previously represented by another attorney who has withdrawn or whose power has been revoked, when, in fact, there is another attorney of record whose power has not been revoked, the USPTO must inquire into the signatory’s authority to sign, because there is inconsistent information in the record.
Example: If the signatory identifies himself or herself as an “attorney,” but does not check the box confirming that he or she is a member in good standing of the bar of the highest court of a U.S. state, the USPTO will inquire into the signatory’s authority to sign, because there is inconsistent information in the record.
Example: If the signatory checks the box indicating that he or she is a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), but sets forth a title that the USPTO would not normally accept (e.g., accountant, paralegal, or trademark administrator), the USPTO will inquire into the signatory’s authority to sign, because there is inconsistent information in the record.
Exception: If the signatory indicates that he or she is a Canadian attorney or agent who has been granted recognition by OED, the USPTO staff must still check the OED list to verify this information. See TMEP §602.03(a) for further information about Canadian attorneys and agents.
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611.03 Proper Person to Sign
This section provides guidelines as to the proper person to sign various documents. Unless otherwise specified by law, the following guidelines should be followed.
611.03(a) Verification
A verification must be sworn to or supported by a declaration signed by the owner of the application or registration or a person properly authorized to verify facts on behalf of the owner. A person who is properly authorized to verify facts on behalf of an owner is:
• A person with legal authority to bind the owner;
• A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
• A qualified practitioner who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
See 37 C.F.R. §§2.33(a), 2.153, 2.161(b), 2.167(a). Generally, the Office does not question the authority of the person who signs an affidavit or declaration verifying facts, unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §804.04.
The broad definition of a “person properly authorized to sign on behalf of an owner” in 37 C.F.R. §§2.33(a) and 2.161(b) applies only to verifications of facts, such as applications for trademark registration, affidavits under §8 or §71 of the Trademark Act, amendments to allege use under 37 C.F.R. §2.76, statements of use under 37 C.F.R. §2.88, and declarations in support of substitute specimens or claims of acquired distinctiveness. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, amendments to applications, letters of express abandonment, petitions to the Director under 37 C.F.R. §2.146, consent agreements, or changes of correspondence address. For example, the “Trademark Administrator” of the applicant, who has firsthand knowledge of the facts alleged in the application, may sign the verified statement in support of the application, but unless he or she has legal authority to bind the applicant (e.g., is a corporate officer or general partner of a partnership), or is a qualified practitioner, he or she may not sign responses to Office actions or agree to examiner’s amendments.
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611.03(b) Responses, Amendments to Applications, Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide
These documents must be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner, in accordance with the following guidelines:
• If the applicant or registrant is represented by a qualified practitioner, the practitioner must sign, except where the owner is required to sign the correspondence; or
• If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant must sign. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all should sign.
See 37 C.F.R. §§2.62, 2.68, 2.74, 2.87(f), 2.163(b), 2.171(b)(1), 2.184(b)(2), 11.14(e), and 11.18(a).
See TMEP §712.01 for further guidance as to who may sign a response to an examining attorney’s Office action.
611.03(c) Powers of Attorney and Revocations of Powers of Attorney
Powers of attorney and revocations of powers of attorney must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant. In the case of joint applicants or registrants, all should sign. Once the applicant or registrant has designated a qualified practitioner(s), the named practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to prosecute the application or registration. See TMEP §§605.01, 605.03, and 606.
611.03(d) Petitions to Revive
A petition to revive under 37 C.F.R. §2.66 must be signed by someone with firsthand knowledge of the facts regarding unintentional delay. 37 C.F.R. §§2.66(b)(2) and (c)(2); TMEP §1714.01(e). Any response to an Office action accompanying the petition must be signed by a qualified practitioner, or by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) if the applicant is not represented by an authorized practitioner (see TMEP §611.03(b)).
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611.03(e) Petitions to the Director
A petition to the Director under 37 C.F.R. §2.146 must be signed by the petitioner, someone with legal authority to bind the petitioner, or a qualified practitioner, in accordance with the following guidelines:
• If the petitioner is represented by a qualified practitioner, the practitioner must sign; or
• If the petitioner is not represented by a qualified practitioner, the individual petitioner or someone with legal authority to bind a juristic petitioner must sign. In the case of joint petitioners, all should sign.
37 C.F.R. §§2.146(c), 11.14(e), and 11.18(a); TMEP §1705.07.
611.03(f) Amendment, Correction, or Surrender of Registration
A request for correction or amendment of a registration or a surrender of a registration must be signed by the individual owner of the registration, someone with legal authority to bind a juristic owner, or a qualified practitioner. 37 C.F.R. §§2.173(a), 2.173(b)(2), and 2.175(b)(2). In the case of joint owners who are not represented by a qualified practitioner, all should sign.
611.03(g) Renewal Applications
A renewal application must be signed by the registrant or the registrant’s representative. 37 C.F.R. §2.183(a). See TMEP §§1606.06 and 1606.07 regarding filing and execution of renewal applications.
611.03(h) Designations and Revocations of Domestic Representative
Designation. An applicant or registrant may designate a domestic representative by either:
• Setting forth the name and address of the domestic representative in the initial application for registration; or
• Filing a separate designation setting forth the name and address of the domestic representative, signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner. In the case of joint applicants or registrants, all should sign.
Revocation. A revocation of domestic representative should be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner.
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See TMEP §610.
611.03(i) Requests to Change Correspondence Address in an Application or Registration
A request to change the correspondence address in an application or registration must be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner, in accordance with the following guidelines:
• If the applicant or registrant is represented by a qualified practitioner, the practitioner must sign; or
• If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant must sign. In the case of joint applicants or joint registrants, all should sign.
See 37 C.F.R. §§11.14(e) and 11.18(a); TMEP §609.02(b).
611.04 Examples of Authorized and Potentially Unauthorized Signatories
Set forth below is a list of examples of parties who are authorized and potentially unauthorized to sign responses, petitions to the Director under 37 C.F.R. §2.146, amendments, letters of express abandonment, and other documents on behalf of an applicant or registrant. This list is not exhaustive.
Authorized Parties. In the following situations, a signatory is presumed to be authorized to represent an applicant or registrant:
• Person identifies him/herself as an officer of a pro se applicant or registrant (e.g., “President,” “Vice President,” “Treasurer,” “Secretary”) of a domestic corporation or the equivalent for another type of business entity (e.g., “Partner” for a partnership, “Member” or “Principal” for a Limited Liability Company).
• Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney in good standing of the bar of the highest court of any state in the United States who is practicing abroad (e.g., Mary Smith, member of New York State Bar, with offices in Nassau, Bahamas).
• Person signing for a foreign corporation identifies him/herself as “general counsel” or “in-house counsel” AND a “corporate officer” or another corporate officer position (e.g., “Secretary,” “Treasurer,” or “Vice President”).
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• Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney with a United States law firm or as “general counsel” or “in-house counsel” of a United States applicant.
• Person signing is a different attorney from the same United States- based firm as the current attorney of record.
• Person signing on behalf of a Canadian applicant or registrant is a Canadian trademark attorney or agent whom OED has recognized as qualified to represent parties located in Canada (see TMEP §602.03(a)).
• Person signing identifies him/herself as an “officer” of a pro se corporate applicant.
Potentially Unauthorized Parties. In the following situations, a signatory is presumed to be unauthorized to represent an applicant or registrant:
• Person signing provides no title or position (e.g., applicant is Jack Smith, an individual citizen of the United States, and Mary Jones signs the response; or applicant is ABC Corporation, and Bill Miller, President, signs the original application, but Dave Wilson, with no listed title or position, signs the response).
• Person signing appears to be a foreign attorney (e.g., “solicitor” or “barrister” for a foreign entity), or is a foreign law consultant with a law firm in the United States.
• Person signing identifies him/herself as a non-attorney representing applicant or registrant in some other capacity (e.g., accountant, paralegal, trademark administrator, business manager, personal assistant, or legal secretary).
• Person signing provides the address of a foreign firm.
• Person signing in an application or registration owned by a foreign entity identifies him/herself as “attorney for applicant,” “attorney at law,” or similar language, but does not specify an address or firm.
• Person signing identifies him/herself as “attorney-in-fact.”
• Person signing in an application or registration owned by a foreign entity identifies him/herself as “in house counsel” or “general counsel,” with no other indication of officer status or recognition to practice in the United States or before the USPTO per 37 C.F.R. §§11.14(a) or (c).
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• Person signing identifies him/herself as “representative of,” “agent for,” or “representing” applicant or registrant, with no other explanation.
• Person signing identifies him/herself as an “authorized signatory” but provides no other indication of the nature of the signer’s relationship to applicant or registrant.
• Person signing is a new attorney from a different firm, when the applicant or registrant had previously appointed a qualified practitioner and no new power of attorney or revocation of the previously appointed power has been made of record.
611.05 Processing Documents Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney
When examining a document filed in connection with a trademark application or registration, the USPTO staff must ensure that all documents are signed by a proper party. See TMEP §611.02.
When it appears that a response to an Office action is signed by an improper party, the USPTO staff must treat the response as incomplete. See TMEP §611.05(a).
When it appears that a document other than a response to an Office action (e.g., a proposed amendment to an application that is not responsive to an Office action, a petition to the Director under 37 C.F.R. §2.146, or an express abandonment) is signed by an improper party, the USPTO will notify the applicant or registrant that no action will be taken on the document, unless the applicant or registrant either: (1) establishes the signatory’s authority; or (2) submits a properly signed document.
See TBMP §106.02 for information about signature of documents filed in Board proceedings.
611.05(a) Notice of Incomplete Response When Authority of Person Signing Response is Unclear
If it appears that a response to an examining attorney’s Office action is signed by an improper party, the examining attorney must treat the response as an incomplete response, and grant the applicant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b). The applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. These same principles and procedures apply to responses to Office actions issued by other USPTO employees (e.g., staff in the Post Registration Section, ITU/Divisional Unit, Madrid Processing Unit, or Office of Petitions).
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See also TMEP §712.03.
611.05(b) Replying to a Notice of Incomplete Response
If the person who signed the response is an authorized signer, the person may simply telephone or send an e-mail message to clarify the record, and the USPTO staff will make an appropriate note in the “Notes-to-the-File” section of the record, review the previously submitted response, and take the appropriate action.
A proper reply to a notice of incomplete response should state the nature of the relationship of the signer to the applicant or registrant. If the signer has legal authority to bind the applicant or registrant, the person should so state, and should set forth his or her title or position. If the signer is an attorney who may practice before the USPTO pursuant to 37 C.F.R. §11.14(a), the attorney should identify himself or herself as an attorney and indicate the bar of the U.S. state of which he or she is a member in good standing. If the signer meets the requirements of either 37 C.F.R. §§11.14(b) or (c), the person should explain how he or she meets these requirements. For example, a Canadian attorney or agent recognized to practice before the USPTO in trademark cases by OED (see TMEP §602.03(a)) may simply state he or she has received recognition by OED as a Canadian practitioner under §§11.14(c) and (f).
In a pending application, if the person who signed the response is not an authorized signer, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) may telephone the examining attorney to authorize such an amendment. Otherwise, when the person who signed the response is not an authorized signer, the applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant, or a qualified practitioner. See TMEP §§611.03(b), 611.06 et seq., and 712.01 regarding the proper party to sign a response to an Office action.
See TMEP §604.03 regarding changes of attorney.
611.05(c) Unsatisfactory Response or Failure to Respond
Pending Applications. In a pending application, if an unsatisfactory response or no response is received to the notice of incomplete response, the USPTO will abandon the application for incomplete response. See TMEP §718.03(a) for procedures for holding an application abandoned for failure to respond completely.
Post Registration. If there is an inadequate response or no response to a notice of incomplete response issued in connection with an affidavit of use or
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excusable nonuse under §8 or §71, or a §9 renewal application, the USPTO will notify the registrant that the affidavit or renewal application remains unacceptable, and that the registration will be cancelled in due course. In the case of a §7 request, the USPTO will notify the registrant that the request for amendment or correction is abandoned.
611.06 Guidelines on Persons With Legal Authority to Bind Certain Juristic Entities
611.06(a) Joint Owners
Joint owners are individual parties and not a single entity. Where a document must be signed by someone with legal authority to bind joint owners, the document should be signed by all the owners.
611.06(b) Signature by Partnership
Where a document must be signed by someone with legal authority to bind a partnership, a general partner must sign. Signature by all the general partners is not necessary. If the partnership is comprised of general partners who are juristic entities (e.g., the general partners are corporations), someone with legal authority to bind that type of juristic entity must sign.
In appropriate cases, a document filed by a partnership may be signed by an official other than a general partner, if the record contains an explanation or documentation indicating that the person signing the document has legal authority to bind the partnership.
611.06(c) Signature by Joint Venture
Where a document must be signed by someone with legal authority to bind a joint venture, each party to the venture must sign. Although a joint venture has many attributes of a partnership, it is a special partnership, which is very limited in nature and scope. Generally, signature by each party to the joint venture is necessary.
In appropriate cases, a document filed by a joint venture may be signed by a general manager or other official rather than by each of the joint venturers, if the applicant or registrant states that the person who signed has legal authority to bind the joint venture under relevant state law.
611.06(d) Signature by Corporation
Where a document must be signed by someone with legal authority to bind a corporation, a corporate officer must sign. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws.
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The usual titles for officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer. In some organizations, the Treasurer is called a Comptroller or Controller, and these terms are acceptable. In Maine and Massachusetts the term “Clerk” identifies an officer of a corporation.
Modifications of these basic titles are acceptable if they include the officer title. Titles such as Vice-President for Sales, Executive Vice-President, Assistant Treasurer, Executive Secretary, and Administrative Secretary are acceptable.
The signature of the “Chairman” or “Chairman of the Board of Directors” is also acceptable, but not the signature of an individual director (e.g., the Vice- Chairman of the Board). The terms “Executive Secretary” and “Administrative Secretary” are acceptable because they include the officer-title “Secretary.”
Some titles are generally not accepted because they usually do not identify officers. For instance, a General Manager, or any other type of manager, is usually merely an employee, not an officer.
If the applicant or registrant states that the person who signed the response is authorized to bind the applicant or registrant under the articles of incorporation or bylaws, the USPTO will accept the signature.
A corporation cannot delegate authority to sign to someone who is not a corporate officer. In re Textron, Inc., 183 USPQ 301 (Comm'r Pats. 1974). Therefore, documents purporting to authorize representation, even if signed by officers, will not be accepted as establishing authority of a person who does not have authority to legally bind the corporation under its bylaws or articles of incorporation.
When the applicant or registrant is a corporation, a statement that the signatory is an “officer” or “duly authorized officer” of the corporation is acceptable. However, it is unacceptable to state that the person who signed the verification is an “authorized signatory.”
611.06(e) Signature by Foreign Companies and Corporations
There are significant differences between the legal entities established under the laws of the United States and legal entities established and recognized under the laws of foreign countries, and the titles and duties of officers of foreign corporations and companies often differ from those in the United States. In the case of foreign entities that are in the nature of corporations, the USPTO will accept the signature of a person considered to be equivalent to an officer under the law of the foreign country. Indication of a title identifying the signer as a type of officer – such as “Legal Officer” or “Information Officer” – is also sufficient.
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In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer or the equivalent of an officer.
The term “Procurist” is used in a number of countries to indicate an officer. For British companies, the terms “Registrar” and “Confidential Clerk” are the equivalent of officers.
If the applicant or registrant states that the person who signed the response holds a position that is the equivalent of an officer of a United States corporation, the USPTO will accept the signature.
Simply stating that a person has been granted authority to act on behalf of the applicant or registrant is insufficient. Documents purporting to authorize representation, even if signed by officers, will not be accepted as establishing the authority of a person who is not the equivalent of an officer. The applicant or registrant must state that the signatory has authority to legally bind the applicant or registrant under its bylaws or articles of incorporation.
611.06(f) Signature by Unincorporated Association
For organizations that are less formally organized than corporations (e.g., fraternal societies, unions, unincorporated associations, and governmental bodies), the titles for officers are less standardized. These organizations frequently use more individualistic terms for titles than the terms customarily used by corporations, and the officer positions themselves may not be as clearly or as formally provided for as is the case with corporations. Regardless of how unfamiliar the title is or how informal the position seems to be, the USPTO will accept the signature if the applicant or registrant states on the record that the signer has, within the framework of the particular organization, authority equivalent to that of an officer to act on behalf of the organization, i.e., has authority to legally bind the applicant or registrant under its bylaws or articles of formation. Some titles that have been accepted are Director, National Director, National Commander, Permanent Chairman, International Sponsor, Supreme Ruler, Royal Impresario, and Chairman of the Steering Committee.
611.06(g) Signature by Limited Liability Company
A limited liability company (“LLC”) has attributes of both a corporation and a partnership. See TMEP §803.03(h). Laws vary to some extent as to the authority conferred on various individuals associated with the limited liability company. Generally, a “manager” has authority equivalent to an officer in a corporation. Therefore, anyone identified as a manager, or equivalent, may sign. In addition, anyone with a corporate-officer-type title may sign. In some states, the members, who are the owners, also have authority to act on behalf of the limited liability company.
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611.06(h) Signature by Limited Liability Partnership
A limited liability partnership (“LLP”) has attributes of both a partnership and a corporation. See TMEP §803.03(k). Laws vary to some extent as to the authority conferred on various partners associated with the limited liability partnership. Generally, all partners are recognized as having general agency authority to bind the partnership in the ordinary course of business. Therefore, anyone identified as a partner may sign.
Many states provide for the filing of a Statement of Partnership Authority which specifically names partners having authority and/or limits the authority of certain individuals. If an individual who is not a named partner of the LLP has been recognized as having authority to bind the LLP, that person may sign, and should indicate his or her position as an individual designated in the LLP’s Statement of Partnership Authority.
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Chapter 700 Procedure for Examining Applications
701 Statutory Authority for Examination
702 Order of Work
702.01 Order of Examination
702.02 “Special” Applications
702.03 Related Applications
702.03(a) Companion Applications
702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks
702.03(a)(ii) Companion Applications Previously Assigned
702.03(a)(iii) Companion Registrations
702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition
702.03(b) Conflicting Applications
703 USPTO Does Not Issue Duplicate Registrations
704 Initial Examination
704.01 Initial Examination Must be Complete
704.02 Examining Attorney’s Search
704.03 Supervisory Examining Attorney May Indicate Action for Non- Signatory Examining Attorney
705 The Examining Attorney’s Letter or Action
705.01 Language in Examining Attorney’s Letter
705.02 Examining Attorneys Should Not Volunteer Statements
705.03 Citation of Conflicting Marks
705.04 Reference to Matter in Printed or Online Publications
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705.05 Citation of Decisions and USPTO Publications
705.06 Reviewing and Signing of Letters
705.07 Processing Outgoing Office Actions
705.08 Six-Month Response Clause
706 New Matter Raised by Examining Attorney After First Action
706.01 “Clear Error”
707 Examiner’s Amendment
707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney
707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney
707.03 Form of the Examiner’s Amendment
708 Priority Action
708.01 Priority Action Defined
708.02 Discussion of Issues and Agreements
708.03 Form of the Priority Action
708.04 Refusal of Registration in Priority Action
708.05 Combined Examiner’s Amendment/Priority Action
709 Interviews
709.01 Personal Interviews
709.02 Persons Who May Represent Applicant in an Interview
709.03 Making Substance of Interview of Record
709.04 Telephone and E-Mail Communications
709.05 Informal Communications
709.06 Interviews Prior to Filing Application
710 Evidence
710.01 Evidence Supporting Refusal or Requirement
710.01(a) Evidence From Research Database
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710.01(b) Internet Evidence
710.01(c) Record Must Be Complete Prior to Appeal
710.02 Search for Evidence Indicating No Refusal or Requirement Necessary
710.03 Evidence of Third-Party Registrations
711 Deadline for Response to Office Action
711.01 Time May Run from Previous Action
711.02 Supplemental Office Action Resetting Response Period
712 Signature on Response to Office Action
712.01 Persons Who May Sign Response
712.02 Unsigned Response
712.03 Response Signed by an Unauthorized Person
713 Examination of Amendments and Responses to Office Actions
713.01 Previous Action by Different Examining Attorney
713.02 Noting All Outstanding Refusals or Requirements
713.03 Response to Applicant’s Arguments
714 Final Action
714.01 Not Permissible on First Action
714.02 Not Permissible on Suspension
714.03 When Final Action is Appropriate
714.04 Form of the Final Action
714.05 Delineating New Issues Requiring Issuance of Nonfinal Action
714.05(a) Unacceptable Amendment Proposed By Applicant
714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness
714.05(a)(ii) Amendment of Identification of Goods/Services
714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application That Has Matured Into Registration
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714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal
714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce
714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
714.06 Applicant’s Recourse When Final Action is Premature
715 Action After Issuance of Final Action
715.01 Proper Response to Final Action
715.02 Action After Final Action
715.03 Request for Reconsideration After Final Action
715.03(a) Examining Attorney’s Action When No New Issue is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
715.03(c) Time for Appeal Runs from Issuance Date of Final Action
715.04 Request for Reconsideration Filed in Conjunction With Notice of Appeal
715.04(a) Examining Attorney's Action When No New Issue is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed
715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
716 Suspension of Action by USPTO
716.01 Form of Suspension Notice
716.02 Circumstances Under Which Action May Be Suspended
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716.02(a) Applicant’s Petition to Cancel Cited Registration
716.02(b) Submission of Copy of Foreign Registration in §44(d) Application
716.02(c) Conflicting Marks in Pending Applications
716.02(d) Inter Partes or Court Proceeding
716.02(e) Suspension Pending Cancellation or Expiration of Cited Registration
716.03 Applicant’s Request to Remove Application from Suspension
716.04 Suspended Docket Checked
716.05 Inquiry by Examining Attorney Regarding Suspended Application
716.06 Suspension After Final Action
717 Reissuing an Office Action
717.01 Returned Office Action
717.02 Non-Receipt of Office Action
718 Abandonment
718.01 Express Abandonment by Applicant or Applicant’s Attorney
718.02 Failure by Applicant to Take Required Action During Statutory Period
718.02(a) Partial Abandonment
718.03 Incomplete Response
718.03(a) Holding of Abandonment for Failure to Respond Completely
718.03(b) Granting Additional Time to Perfect Response
718.03(c) Reconsideration of Holding of Abandonment
718.04 Failure to File Statement of Use
718.05 Failure to Perfect Appeal
718.06 Notice of Abandonment for Failure to Respond
718.07 Revival or Reinstatement of Abandoned Application - New Search Required
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719 Non-Responsive Communications
720 Fraud Upon the USPTO
701 Statutory Authority for Examination
15 U.S.C. §1062. Publication. (a) Upon the filing of an application for registration and payment of the
prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made....
(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.
702 Order of Work
702.01 Order of Examination
In general, examining attorneys should examine applications in the order in which they are received in the United States Patent and Trademark Office (“USPTO”), unless the application is made “special.” See TMEP §702.02 regarding “special” applications.
Generally, amended applications (i.e., applications that contain a response from the applicant), remands from the Trademark Trial and Appeal Board (“Board”), and statements of use are also reviewed in the order in which they are received in the USPTO.
Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension. See TMEP §§716 et seq. regarding suspension.
Examining attorneys should immediately act on inquiries regarding applications approved for publication or issue that are returned to the examining attorney to take action or provide information.
Where appropriate, the managing attorney may direct that a particular case be given special handling.
When an examining attorney resigns, the examining attorney should spend any remaining time in the Office getting his or her amended cases (including
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statements of use under 15 U.S.C. §1051(d) and appeal briefs), especially those with involved records, ready for final disposition.
702.02 “Special” Applications
While the USPTO normally processes applications in the order in which they are received, there is a procedure whereby an application can be made “special,” so that initial examination will be expedited. Initial examination can be expedited in the following circumstances:
(1) Petition to Make Special Granted. Applications made “special” as a result of a petition to the Director under 37 C.F.R. §2.146 (see TMEP §§1710 et seq.); and
(2) Registration Inadvertently Cancelled Under 15 U.S.C. §1058, §1059, or §1141k. A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired under 15 U.S.C. §1058, §1059, or §1141k will be made “special” upon the applicant’s request. No petition fee is required in this situation. However, the mark in the new application must be identical to the mark in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration.
Requests for “special” handling are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy. In order to ensure their proper routing and processing, requests for “special” handling should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number: 571-273-0032. It is recommended that the applicant first file the application using the Trademark Electronic Application System (“TEAS”). Then, the applicant should fax the request for “special” handling including the newly assigned serial number.
Alternatively, if the request for “special” handling is submitted by mail, the request should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy, to ensure proper routing and processing.
The examining attorney should promptly examine any application that has been made “special.”
702.03 Related Applications
702.03(a) Companion Applications
The term “companion applications” refers to pending applications filed by the same applicant. An application is pending until it registers or abandons.
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Pending applications include applications that have been approved for publication or for registration on the Supplemental Register, applications in the Intent-to-Use (“ITU”)/Divisional Unit, and revived or reinstated applications.
702.03(a)(i) Companion Applications Not Previously Assigned for the Same or Similar Marks
If an applicant has multiple pending applications, the issues in the applications are likely to be similar. When assigned a new application, an examining attorney will be assigned the companion applications filed within three months of the filing date of the first assigned application. If an applicant files more than ten applications within a three-month period, only the first ten will be assigned to one examining attorney. Examining attorneys are encouraged to assign all unassigned companion applications for the same or similar marks to themselves, even if the applications were filed outside the three-month period.
The assignment of companion applications is done electronically, based upon the owner’s name as set forth in the application. Therefore, the owner’s name should be set forth consistently in all applications.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(ii) Companion Applications Previously Assigned
If TRAM indicates that a companion application has been assigned to a different examining attorney, the examining attorney should not transfer his or her application to the other examining attorney. However, the examining attorney must review the electronic record of the earlier companion application before taking action in a later companion case, and should act consistently, unless it would be clear error (see TMEP §706.01) to do so. If the examining attorney believes that acting consistently with the prior action(s) would be erroneous, he or she should bring the issue to the attention of the managing attorney or senior attorney.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(iii) Companion Registrations
If the applicant previously filed a companion application that has matured into a registration, the examining attorney should not transfer his or her application to the prior examining attorney. Generally, in the later application, the examining attorney should act consistently with the registration, unless it would be clear error (see TMEP §706.01) to act consistently. However, the
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USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records. Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought. See TMEP §1216.01 and cases cited therein.
See TMEP §702.03(a)(iv) regarding classification and identification in companion registrations.
702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition
If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable, unless the identification or classification is clearly wrong. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion application or registration, the examining attorney must note the companion application serial number or registration number in the “Notes to the File” section of the record.
Sometimes, the classification and identification of goods and/or services in the prior companion application or registration is clearly wrong. For example, identifications and class assignments that were acceptable in the past may no longer be in accord with the current Nice Agreement classification system (see TMEP §§1401.02 et seq.) or with USPTO policy on acceptable identifications, which change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration. See TMEP §§1402.14 and 1904.02(c)(v).
702.03(b) Conflicting Applications
The term “conflicting applications” refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), due to a likelihood of confusion between the marks. When assigned a new application, the examining attorney must search the USPTO’s automated records to determine whether there are any conflicting applications. If there are conflicting applications, the examining attorney should not transfer the conflicting application to the examining attorney who acted on the first conflicting application. Instead, the examining attorney should examine the assigned application and issue an Office action that includes a notice to the applicant that there is a prior-filed application to register a mark that may be likely to cause confusion with the applicant’s mark. See TMEP §§1208 et
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seq. The examining attorney handling the later-filed application should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error (see TMEP §706.01) to act consistently. If necessary, the examining attorney should review the electronic record of the earlier-filed application before taking an action in the later-filed conflicting application.
703 USPTO Does Not Issue Duplicate Registrations
The USPTO will not issue two or more identical registrations on the same register. If two applications on the same register would result in registrations that are exact duplicates, the USPTO will permit only one application to mature into registration, and will refuse registration in the other application. 37 C.F.R. §2.48. For instance, if two identical applications are filed by an applicant, and the USPTO has not taken action in either application, then the USPTO will refuse registration in both applications. However, if the USPTO has already taken action in one of the applications but not the other, then the USPTO will refuse registration in the second application.
The applicant may overcome the refusal(s) by abandoning one of the applications. If practicable, the USPTO will permit the applicant to choose which application should mature into registration. If one of the applications has matured into registration, the applicant may choose to either surrender the registration and allow the application to proceed to registration, or retain the registration and abandon the application.
Basis. Applications filed under §1 of the Trademark Act are considered identical if the only difference between them is that one is based on use in commerce under §1(a) and the other is based on intent-to-use under §1(b). However, an application filed under §1 and an application filed under §44 that are otherwise identical are not regarded as duplicate registrations, nor is an application under §66(a) of the Trademark Act regarded as a duplicate of an application filed under §1 or §44.
Classification Change. Where the international classification of goods/services has changed, a new application for registration of the same mark for the same goods/services in a different class will not be considered a duplicate. For example, if applicant owns a registration of a mark for legal services in Class 42, and files a new application after January 1, 2007, for registration of the same mark for legal services in Class 45, this is not a duplicate.
Standard Character/Typed Drawing. An application for registration of a mark depicted in standard characters is considered a duplicate of an application for registration of the same mark in “typed” format (see TMEP §807.03(g)) for the same goods/services.
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Standard Character/Special Form. A standard character drawing and a special form drawing of the same mark are not considered identical.
Overlapping Goods/Services. Applications/registrations with identifications that include some of the same goods/services, but also different goods/services, are not identical.
Color. A drawing on which the entire mark is lined for color (see TMEP §808.01(b)), is considered a duplicate of a color drawing of the mark, if the colors are identical. See TMEP §§807.07 et seq. regarding color drawings.
If the applicant claims different shades of a color (e.g., purple in one and lavender in the other), the marks are not duplicates.
Where one application/registration is not completely lined for color (i.e., if the mark on the drawing includes color(s) in addition to unclaimed or unexplained black, white, and/or gray), this is not considered a duplicate of an application seeking registration that includes a claim of the same color(s) in addition to a claim of color for, or an explanation of the presence of, the black/white/gray in the drawing. See TMEP §§807.07(d) et seq. regarding drawings that include black/white/gray.
Principal/Supplemental Register. An application for registration of a mark on the Principal Register is not considered a duplicate of an application for registration of the same mark on the Supplemental Register.
Registrations Issued Under Prior Acts. If eligible, marks registered under the Acts of 1881, 1905, and 1920 may also be registered under the Act of 1946 (see §46(b) of the Trademark Act of 1946). Even if the mark and the goods/services in a registration issued under the 1946 Act are identical to the mark and goods/services in a registration issued under a prior Act, the registrations are not considered duplicates. See TMEP §§1601.04, 1601.05, 1602.02 and 1602.03 regarding registrations issued under prior Acts.
Section 66(a) Application Based on Different Int’l Registration. A §66(a) application is not a duplicate of another §66(a) application or registered extension of protection based on a different international registration.
When an application is a duplicate of a registration owned by the applicant, and USPTO records show that the registration is still active, the examining attorney must refuse registration. If the registration is subject to cancellation for failure to file an affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k, or due to expire for failure to file a renewal application under 15 U.S.C. §1059 (i.e., because the grace period has passed and no affidavit or renewal application has been filed), and the application is otherwise in condition for approval or final refusal, the examining attorney must suspend the application until the TRAM system is updated to show that the registration is cancelled or expired. See TMEP §1611 for information
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about how a registrant who has not timely filed a §8 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.
704 Initial Examination
704.01 Initial Examination Must be Complete
37 C.F.R. §2.61(a). Applications for registration, including amendments to allege use under §1(c) of the Act, and statements of use under §1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
The initial examination of an application by the examining attorney must be a complete examination. A complete examination includes a search for conflicting marks and an examination of the written application, any preliminary amendment(s) or other documents filed by applicant before an initial Office action is issued, the drawing, and any specimen(s) or foreign registration(s), to determine whether the mark is eligible for the type of registration requested, whether amendment is necessary, and whether all required fees have been paid.
If, on initial examination, the examining attorney finds the mark in an application for registration on the Principal Register to be in condition for publication for opposition, the examining attorney will approve the application for publication. Similarly, if the examining attorney finds the mark in an application for registration on the Supplemental Register to be in condition for registration, the examining attorney will approve the application for registration. The USPTO will send a notice of publication or certificate of registration to the applicant in due course.
If the application is not in condition to be approved for publication or issue, the examining attorney will write, telephone, or e-mail the applicant, as appropriate, informing the applicant of the reason(s) why the mark may not be registered and of the defect(s) that can be corrected or amended to make the application acceptable.
The examining attorney’s first Office action must be complete, so the applicant will be advised of all requirements for amendment and all grounds for refusal, with the exception of use-related issues that are considered for the first time in the examination of an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) in an intent-to-use application. See TMEP §§1102.01 and 1202 et seq. regarding use-related issues that are considered for the first time in the examination of an amendment to allege use or a statement of use. Every effort should be made to avoid piecemeal prosecution, because it prolongs the time needed to
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dispose of an application. See also TMEP §706 regarding new issues raised by the examining attorney after the first Office action.
Examining attorneys must also clearly explain all refusals and requirements. For example, if the identification of goods/services is indefinite, the examining attorney should explain why the identification is not acceptable and, if possible, suggest an acceptable identification. See TMEP §§705 et seq. for further information about examining attorneys’ Office actions.
704.02 Examining Attorney’s Search
If the examining attorney finds no conflicting marks, but must write to the applicant about other matters, the examining attorney must inform the applicant that no conflicting marks have been found. This is commonly called the “search clause.”
In an application filed under §1 or §44 of the Trademark Act, if the examining attorney cannot make a proper search or cannot examine the application properly due to lack of adequate information, the examining attorney should specifically indicate what information is needed, request that it be furnished, and state that further action on the matter will be taken as soon as the information is received. See 37 C.F.R. §2.61(b) and TMEP §814 regarding requirements for additional information.
If some but not all of the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search in part. The examining attorney must specifically indicate the good/services for which a search has been conducted by listing the goods/services for which no conflicting marks have been found, and, if relevant, issuing a §2(d) refusal that is specifically limited to certain goods/services. See TMEP §718.02(a) regarding partial refusals.
If all the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search. The examining attorney must issue a full refusal, require the necessary amendments to the goods/services, and state that further action on the merits with respect to likelihood of confusion will be considered as soon as a sufficiently definite identification of goods/services is received.
Before issuing a letter deferring action, the examining attorney should consult with the managing attorney or senior attorney.
704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney
When a non-signatory examining attorney examines an application, a supervisory examining attorney must thoroughly review the action. The usual
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procedure is for the non-signatory examining attorney to explain relevant information to the supervisory examining attorney, discussing any potential refusals or requirements. The supervisory examining attorney may indicate the action to be taken.
705 The Examining Attorney’s Letter or Action
If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by e-mail or telephone communication, which is typically followed by a written action. This constitutes the examining attorney’s official action.
Written Office actions may be of a variety of styles, including: (1) an “examiner’s amendment” (see TMEP §§707 et seq.), in which the examining attorney formally makes amendments to the application; (2) a “priority action (see TMEP §§708 et seq.),” setting forth and explaining the requirements discussed by telephone with the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or with a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 (“qualified practitioner”) designated by the applicant; (3) a letter explaining the bases for refusal(s) or requirement(s); (4) an examiner’s amendment combined with a priority action (see TMEP §708.05); or (5) a suspension notice (see TMEP §§716 et seq.). Office actions may be prepared through the use of standardized form paragraphs, in combination with language written to address the particular facts relevant to the refusal(s) or requirement(s). The examining attorney may send the Office action by regular mail or e-mail (if applicant has authorized e-mail communications). See TMEP §§304 et seq. regarding e-mail.
The USPTO encourages the use of examiner’s amendments and priority actions whenever appropriate.
705.01 Language in Examining Attorney’s Letter
The examining attorney must indicate the status of the application at the beginning of each letter.
In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as “Upon examination of this application....” The examining attorney must acknowledge any document received before the first action by identifying the document and the date of its receipt.
In subsequent actions, examining attorneys should begin letters with a sentence such as, “This Office action is in response to applicant’s communication filed on [date].” Other documents received, such as
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supplemental amendments, affidavits, and new drawings, should also be acknowledged.
Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act. For example, registration of a trademark should not be refused “because it is a surname,” but “because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act.”
Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested. However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.
The words “capable” and “incapable” should be reserved for addressing an amendment to the Supplemental Register.
Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions. However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.
705.02 Examining Attorneys Should Not Volunteer Statements
In Office actions, and e-mail and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in applications. The examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application. See In re American Physical Fitness Research Institute Inc., 181 USPQ 127 (TTAB 1974). See also TMEP §1801.
705.03 Citation of Conflicting Marks
When refusing registration under 15 U.S.C. §1052(d) based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and attach to the Office action a copy of each cited registration, which will become part of the record. The examining attorney should explain the reasons that the mark in each cited registration is a basis for refusal under §2(d).
If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, or that the USPTO attached a registration but did not cite the
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registration as a bar to registration in the Office action, the USPTO will reissue the Office action citing and attaching the relevant registration(s) and provide the applicant with a new response period.
705.04 Reference to Matter in Printed or Online Publications
When the examining attorney refers to matter in a printed publication, the examining attorney should provide the citation for the publication, and include the relevant material with the Office action. It is not necessary to attach a published legal decision to an Office action. A citation is sufficient. See TMEP §705.05 regarding citation of decisions.
When the examining attorney refers to an online publication, such as an article downloaded from the Internet, the examining attorney should provide any information that would aid a party in locating the document, including the complete URL address of the website, the time and date the search was conducted, and the terms searched. See TMEP §710.01(b) for a discussion of the weight accorded to Internet evidence. See also TMEP §710.01(a) regarding evidence from a research database.
705.05 Citation of Decisions and USPTO Publications
When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given. If possible, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d), or Federal Supplement (F. Supp. or F. Supp.2d) should also be given. The court or tribunal (2d Cir., C.C.P.A., Fed. Cir., TTAB, etc.) and the date of the decision should always be given.
When citing to a decision that is published and reported only in LexisNexis® and/or Westlaw®, for which there are no official print versions, the citing party should provide the name of the research service, case name, proceeding name and docket number, database identifier, court name, date, and screen, page, or paragraph numbers, if assigned. When citing to an unpublished decision of the Board, the examining attorney must either provide the Board’s TTABVUE website address and explain how the applicant may locate and view the decision, or append the decision to the Office action.
Non-Precedential Decisions. Prior to December 27, 2006, it was the policy of the Trademark Trial and Appeal Board that Board opinions not designated as precedential should not be cited and, if cited, were to be disregarded. General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992). The Board has changed that policy. In announcing the change, the Board stated that:
[T]he Board will henceforth permit citation to any TTAB disposition as follows:
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• The TTAB will continue its current practice of designating all final decisions as either precedential or not precedential. Unless specifically designated as precedential, an order on a motion should be considered not precedential.
• The TTAB will continue its practice of considering precedential decisions as binding upon the TTAB.
• A decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.
• Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database. If a non-precedential decision does not appear in the United States Patent Quarterly or the USPTO's public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited.
• Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.
See Citation of Opinions to the Trademark Trial and Appeal Board (OG Jan. 23, 2007).
The examining attorney may cite sections of the Trademark Manual of Examining Procedure (“TMEP”) or Trademark Trial and Appeal Board Manual of Procedure (“TBMP”). The abbreviations “TMEP” and “TBMP” are usually sufficient; however, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney should identify the Manuals by their full names in the first citation to the Manuals. It is not necessary to provide a copy of the relevant section(s) of the Manuals.
When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Official Gazette in which it may be found.
705.06 Reviewing and Signing of Letters
Examining attorneys must review and sign every Office action using an electronic signature. The signature block should include the name, law office, and telephone number of the examining attorney. The signature block should be set forth as follows:
/Examining attorney’s full name/ Trademark Examining Attorney
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Law Office xxx (571) 272-xxxx
If an examining attorney does not have signatory authority, he or she should sign the action and refer it to an authorized signatory examining attorney, who will review and approve the action. Review by a reviewer should ordinarily be done within two working days after receipt from the non-signatory examining attorney.
705.07 Processing Outgoing Office Actions
A date is placed on all copies of paper Office actions when they are issued. For outgoing e-mail communications, including electronically issued Office actions, the date is applied automatically when the communication is released to the USPTO's electronic mail system.
One copy of the action signed by the examining attorney, along with any supporting evidence and/or copies of registered marks or pending applications cited as a bar to registration, is sent to the Trademark Image Capture and Retrieval System (“TICRS”) and is available for review by the public through the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov.
An applicant who authorizes e-mail communication will not receive the actual Office action by e-mail. Instead, upon issuance of the Office action, the USPTO will e-mail a notice to the applicant with a link or web address to access the Office action using TDR. The Office action will not be attached to the e-mail notice. Upon receipt of the e-mail notice, the applicant may use the link or web address to view and print the actual Office action and any evidentiary attachments.
705.08 Six-Month Response Clause
Generally, the examining attorney’s letter or Office action should include a “six-month response clause” notifying the applicant that the applicant must respond to the action within six months of the issuance date to avoid abandonment under 15 U.S.C. §1062(b). See TMEP §§711 et seq. regarding the deadline for response to an Office action.
The examining attorney should not include a six-month response clause in an examiner’s amendment (see TMEP §§707 et seq.) or suspension notice (see TMEP §§716 et seq.), or in a situation where the time for response runs from the issuance date of a previous Office action (see TMEP §§711.01 and 715.03(c)).
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706 New Matter Raised by Examining Attorney After First Action
If in the first Office action an examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to correct the inadvertent error in a subsequent action. Examining attorneys should exercise great care to avoid these situations, and should take this step only when the failure to do so would result in clear error (see TMEP §706.01). After the first action, supervisors (e.g., supervisors reviewing the quality of the examining attorney’s work) should not introduce any new reason for refusal that is not clearly justified under the Act or rules.
Since it is unusual to make a new refusal or requirement that could have been raised in the first action, an examining attorney who does make a new refusal or requirement must clearly explain why the refusal or requirement is necessary, and apologize for the delay in raising the issue, if appropriate. See TMEP §711.02 regarding supplemental Office actions.
Sometimes, the examining attorney must issue a new refusal or requirement because the applicant submits information that raises a new issue.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the International Bureau of the World Intellectual Property Organization (“IB”) forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
706.01 “Clear Error”
The term “clear error” refers to an administrative internal guideline used by the USPTO to determine whether an examining attorney should issue a refusal or requirement that could or should have been raised in a previous action.
It is the policy of the USPTO to do a complete examination upon initial review of an application by an examining attorney, and to issue all possible refusals and requirements in the first Office action. TMEP §704.01. The USPTO will not issue a new refusal or requirement that could or should have been made in an earlier Office action unless it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act or applicable rules. See, e.g., TMEP §706. For example, the Director will not restore jurisdiction to an examining attorney to issue a new refusal of registration unless the failure to issue the refusal would result in the issuance of a registration that would violate the Trademark Act or applicable rules. See TMEP §1504.04. See also TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use that could or should have been issued during initial examination of the application.
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The internal “clear error” standard is merely an administrative guideline. It does not confer on an applicant any entitlement to a showing of clear error, nor does it impose a higher standard of proof on the examining attorney than is otherwise required to establish a prima facie case for the refusal or requirement.
There is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal. The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees. See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) (“[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors.”); see also BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner to withdraw a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee, and notification of the issue date, and with publication of the drawing and claim in the Official Gazette). Thus, if the USPTO discovers that a mistake made during examination would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been previously raised.
The question of whether a refusal or requirement was procedurally proper is reviewable on petition under 37 C.F.R. §2.146. However, “[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions....” 37 C.F.R. §2.146(b). Thus, the Director cannot consider on petition whether the issuance of or failure to issue a substantive refusal was a “clear error.” See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review on petition.
On appeal, the Trademark Trial and Appeal Board will review only the correctness of the underlying substantive refusal of registration. See In re Jump Designs, LLC, 80 USPQ2d 1370 (TTAB 2006); In re Sambado & Son, Inc., 45 USPQ2d 1312 (TTAB 1997).
707 Examiner’s Amendment
An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application. An examiner’s amendment is a communication to the applicant in which the examining attorney states that the application has been amended in a specified way. Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual applicant, someone with legal authority to bind a juristic applicant
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(e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner. Cf. 37 C.F.R. §2.74(b). See TMEP §707.01 regarding the authorization of an examiner’s amendment. Authorization is usually given in a telephone conversation, e-mail communication, or interview between the examining attorney and the applicant or the applicant’s qualified practitioner. See TMEP §§304 et seq. regarding e-mail.
The examining attorney may issue an examiner’s amendment whenever the required amendment does not have to be verified by the applicant. For example, in appropriate circumstances, an examiner’s amendment may be used to amend the identification of goods/services, enter a disclaimer, add the state of incorporation, or amend from the Principal to the Supplemental Register.
The following are examples of amendments that may not be made by examiner’s amendment: the dates of use, if verification would be required (see TMEP §903.04); the mark on a special form drawing (see TMEP §807.04), if the changes would require the filing of a substitute special form drawing; and amendments that require the submission of substitute specimen(s) (see TMEP §904.05). An application cannot be expressly abandoned by examiner’s amendment (see TMEP §718.01).
An authorization to charge a fee to a deposit account cannot be entered by examiner’s amendment, unless the record already contains a written authorization, signed and submitted by someone authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.
Examiner’s amendments generally are not used when there are statutory refusals. However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner’s amendment. For example, in appropriate cases, the applicant may overcome a surname refusal of a mark that is in use in commerce by amending the application to the Supplemental Register. See TMEP §708.04 regarding priority actions involving statutory refusals.
An examining attorney without partial signatory authority must have proper authorization from the managing attorney, senior attorney, or a reviewing examining attorney before initiating an examiner’s amendment.
See TMEP §707.03 regarding the form of an examiner’s amendment.
An applicant should not file correspondence confirming an examiner’s amendment, because this will delay processing of the application. A written response to an examiner’s amendment is not required.
If an applicant wishes to object to the examiner’s amendment, this should be done immediately (preferably by telephone or e-mail), so that the objection can be considered before publication or issue. See TMEP §1402.07(e) regarding an applicant’s objection to an examiner’s amendment of the
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identification of goods/services on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.
Often an applicant will seek to respond to an outstanding Office action with an amendment or other response by telephone. The examining attorney is encouraged to enter an examiner’s amendment if this amendment will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See TMEP §§716 et seq. regarding suspension. However, an applicant does not have an unlimited right to the entry of an examiner’s amendment in response to an Office action. If the applicant does not agree to an amendment that the examining attorney believes will immediately place the application in condition for publication for opposition or issuance of a registration, the applicant must file a complete written response to the outstanding Office action.
See TMEP §708.05 regarding combined examiner’s amendment/priority actions.
NOTE: In a §66(a) application, an examiner’s amendment may not be issued on a first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.
707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney
Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual applicant, someone with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b). See TMEP §602 et seq. for guidelines on persons who may practice before the USPTO.
If the applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner. If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to conclude business, and will note this fact in the examiner’s amendment. Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified practitioner’s approval by indicating that the practitioner has approved the amendment.
If the applicant is pro se, the examining attorney must speak directly with the individual applicant or with someone with legal authority to bind a juristic
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applicant (e.g., a corporate officer or general partner of a partnership). Cf. 37 C.F.R. §11.14(e). For joint applicants who are not represented by a qualified practitioner, each joint applicant must authorize the examiner’s amendment. See TMEP §§611.06 et seq. for guidelines on persons who have legal authority to bind various types of applicants.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) is not entitled to authorize an examiner’s amendment, unless he or she has legal authority to bind the applicant. The broad definition of “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04) does not apply to examiner’s amendments.
The applicant or the applicant’s qualified practitioner must actually authorize the examiner’s amendment. The examining attorney may not leave an e-mail or voicemail message for the applicant or the qualified practitioner indicating that an amendment shall be entered if the applicant or practitioner does not respond to the message.
If an examining attorney contacts an applicant and reaches agreement to issue an examiner’s amendment, but later determines that an Office action must be issued instead to state a refusal or requirement, the examining attorney should telephone or e-mail the applicant immediately to advise the applicant of the change of position.
Examining attorneys without partial signatory authority must advise applicants that issuance of the examiner’s amendment is subject to review by a supervisory attorney.
707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney
Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified practitioner (sometimes referred to as a “no-call” examiner’s amendment) in the following situations:
(1) Changes to international classification, either before or after publication (see Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm’r Pats. 1999));
(2) Deletion of “TM,” “SM,” “©,” or “®” from the drawing;
(3) Addition of a description of the mark where an Office action or regular examiner’s amendment is otherwise unnecessary and one of the following conditions applies:
(a) The record already contains an informal indication of what the mark comprises (see TMEP §808.03(b));
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Example - The cover letter accompanying a paper application refers to the mark as a stylized golf ball design. If appropriate, the examining attorney could enter an amendment that “the mark consists of the stylized design of a golf ball.”
Example – The application refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but the color yellow is omitted from the formal description of the colors in the mark (see TMEP §807.07(a)(ii)). The examining attorney may enter an amendment of the formal color description to accurately reflect all colors in the mark;
(b) The mark consists only of wording in stylized font, with no color claim and with no design element (see TMEP §808.03(b)); or
(c) The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording (see TMEP §808.03(b)).
(4) If the examining attorney determines that a description of the mark will not be printed in the Official Gazette or on the registration certificate, and it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters, the examining attorney may enter an amendment to that effect. See TMEP §§808.03 et seq.;
(5) Amendment of the application to enter a standard character claim when the record clearly indicates that the drawing is intended to be in standard character form. See TMEP §807.03(g);
(6) Correction of an obvious misspelling(s), typographical error(s), redundanc(ies) in the identification of goods/services, or in an otherwise accurate and complete description of the mark. See TMEP §§808.03(a) and 1402.01(a);
Example - The goods are recited as “T-shurtz.” The examining attorney could amend to “T-shirts.” However, “shirtz” could not be amended to “shirts” without calling the applicant, because “shirtz” (without the “T-” prefix) might also be a misspelling of “shorts.”
(7) When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods, services, and/or class(es), the examining attorney may issue an examiner’s amendment deleting the goods/services/classes to which the refusal or requirement pertained. Similarly, when an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney may issue an examiner’s
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amendment deleting the unacceptable terminology from the identification. See TMEP §§718.02(a) and 1402.13;
(8) Deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual. Bracketed material sometimes appears in the Manual for informational purposes but should not be included in an identification of goods/services. If this material is entered in an identification, it will be automatically deleted in a TEAS Plus application. In a TEAS or paper application, the examining attorney may delete the bracketed material with a “no- call” examiner’s amendment;
(9) If, in response to a general or specific inquiry about translation and/or transliteration of non-English wording in the mark, the applicant does not directly state that the term has no meaning in a foreign language but instead responds to the effect that “the mark has only trademark significance,” the examining attorney may enter a statement that “the term has no meaning in a foreign language” into the record. See TMEP §809.01(a);
(10) When an applicant provides a translation statement that has the proper translation but is not suitable for printing, the examining attorney may “reformat” the statement, without changing the substance, into a simple, clear statement as to meaning. See TMEP §809.03.
If the examining attorney must contact the applicant or the applicant’s qualified practitioner about other matters, or if the record contains any ambiguity as to the applicant’s intent, the examining attorney should advise the applicant that the above changes have been made.
A copy of the examiner’s amendment will be sent to the applicant. Any applicant who disagrees with any of these changes should contact the examining attorney immediately after receipt of the examiner’s amendment, preferably by telephone or e-mail.
707.03 Form of the Examiner’s Amendment
An examiner’s amendment should include the following information: the name, law office, and telephone number of the examining attorney; the name of the person interviewed; the date of the interview; the actual amendment; and, if applicable, a statement to the effect that the amendment has been authorized by the applicant or the applicant’s qualified practitioner.
The examiner’s amendment should not include a six-month response clause, because a written response by the applicant is not required for an examiner’s amendment.
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The examiner’s amendment must include a search clause (see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.
The examining attorney should not state in the examiner’s amendment that the application is ready for publication or issue, because some unforeseen circumstance might require that further action be taken in the application.
The examiner’s amendment must indicate any refusals or requirements that are withdrawn and/or continued by the examining attorney.
708 Priority Action
708.01 Priority Action Defined
A “priority action” is an Office action that is issued following a telephone conversation, personal interview, or e-mail communication in which the examining attorney and the individual applicant, someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner discuss the various issues raised in an application. The use of priority actions is encouraged to expedite examination.
A priority action should be issued according to the following procedure: (1) the examining attorney telephones or e-mails the applicant or applicant’s qualified practitioner and requests that the applicant take some specific action, explaining the reasons; (2) the applicant or applicant’s qualified practitioner specifically discusses the merits of the application with the examining attorney; (3) the examining attorney prepares and signs a priority action that fully discusses all refusals or requirements, includes evidence to support the refusals and/or requirements, and specifically describes what action the applicant may take in order to put the application into condition for publication or registration; and (4) the USPTO sends a copy of the priority action to the applicant.
If the evidence of record supports a statutory refusal of registration, a priority action may be issued only if the examining attorney believes that an amendment or explanation will obviate the refusal. See TMEP §708.04.
See TMEP §708.03 regarding the form of a priority action.
708.02 Discussion of Issues and Agreements
The examining attorney must discuss the issues with the individual applicant, a person with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner. The broad definition of “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04) does not apply to priority actions.
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Only the applicant, someone with legal authority to bind the applicant, or a qualified practitioner can agree to a priority action. If the applicant has a qualified practitioner, the examining attorney must speak directly to the practitioner. See TMEP §602 et seq. for guidelines on persons who may practice before the USPTO.
If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the qualified practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to authorize issuance of the priority action, and will note this fact in the priority action.
Paralegals and legal assistants cannot authorize issuance of a priority action, even if only conveying the qualified practitioner’s approval by indicating that the practitioner has agreed to the priority action.
If the applicant is pro se, the examining attorney must speak directly to the individual applicant or to someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership). Cf. 37 C.F.R. §11.14(e). See TMEP §§611.06 et seq. for guidelines on persons who have legal authority to bind various types of applicants.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) may not authorize issuance of a priority action, unless he or she also has legal authority to bind the applicant.
During the telephone conversation, e-mail discussion, or other communication, the examining attorney must fully discuss all refusals and requirements relating to the application, and explain the reason for each refusal or requirement. Whenever possible, the examining attorney should suggest appropriate language for amendments.
A priority action is not appropriate when the examining attorney leaves a voicemail or e-mail message for the applicant or applicant’s qualified practitioner, but the applicant or practitioner does not call back or respond to the message. All the issues in the priority action must be discussed on the merits with the applicant or the applicant’s qualified practitioner in a good faith attempt to resolve any issues and place the application in condition for publication or registration, as appropriate.
An agreement as to precisely how all issues will be resolved is not necessary. For example, the priority action may state that “the applicant will submit an acceptable identification of goods that specifies the common commercial names of the ‘computer equipment.’” It is not necessary that there be an agreement that “the applicant will amend the identification of goods to read: computer keyboards, computer monitors and computer printers.”
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The priority action may state that the applicant will follow one of two alternative courses of action, for example, providing either an amended drawing or a new specimen.
708.03 Form of the Priority Action
The priority action should reference the date of the telephone call, e-mail message, or other communication, and the name and title (where appropriate) of the person who authorized the priority action. See TMEP §708.02 for information about who may authorize issuance of a priority action.
A priority action must include a six-month response clause (see TMEP §705.08) so that it is clear that the applicant must timely respond to the priority action to avoid abandonment of the application.
The priority action must include a search clause (see TMEP §704.02) if it is a first action, or if the applicant has not previously been advised of the results of a search.
The priority action must also: (1) fully discuss all refusals and/or requirements; (2) include sufficient evidence to support all refusals and/or requirements; and (3) specifically describe what action the applicant may take in order to put the application into condition for publication or registration. See TMEP §708.02 regarding discussion of issues on the merits.
The examining attorney should discuss each issue separately, stating the reason for the refusal and/or requirement and/or citing the relevant sections of the statute, rules, and/or TMEP. The essential nature of the refusal or requirement, and any pertinent advisories relating thereto, must be clearly stated in the priority action, and fully supported by appropriate evidence (if applicable), because the action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191.
A priority action may be used for a final or nonfinal refusal or requirement. See TMEP §708.04 regarding refusal of registration in a priority action, and TMEP §§714 et seq. regarding final actions.
708.04 Refusal of Registration in Priority Action
Priority actions are generally used when there are no statutory refusals. However, if there is sufficient evidence to support a statutory refusal, and the examining attorney believes that an amendment or explanation will obviate the refusal, the examining attorney may attempt to resolve the issues through a priority action. An example would be a surname refusal where it is evident that the mark has been used in commerce for more than five years, and thus the refusal could be overcome by the submission of a claim of acquired distinctiveness under §2(f) of the Trademark Act. See TMEP §§1212 et seq. regarding §2(f).
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In the priority action, the examining attorney must clearly state the basis for refusal, citing the relevant sections of the statute and rules, attaching evidence to support the refusal, and indicating the resolutions agreed upon.
If the priority action includes a final refusal, the priority action must clearly indicate that the refusal is FINAL, and should contain any additional supporting evidence necessary for a complete record on appeal. See TMEP §§714 et seq. regarding final actions.
708.05 Combined Examiner’s Amendment/Priority Action
An examining attorney may issue an Office action that combines an examiner’s amendment and priority action, if the requirements for both have been met. An examining attorney may not issue a “no-call” examiner’s amendment/priority action, because the issues in the priority action portion of the action have not been discussed with the applicant or applicant’s qualified practitioner.
The action must include a six-month response clause (see TMEP §705.08) so that it is clear that the applicant must timely respond to the issues raised in the priority action to avoid abandonment of the application. The action must also include the subheadings “Priority Action” and “Examiner’s Amendment” to facilitate processing. The action should be reported in the USPTO’s automated TRAM system as a priority action.
709 Interviews
A discussion between the applicant or applicant’s qualified practitioner and the examining attorney in which the applicant presents matters for the examining attorney’s consideration is considered an interview. An interview can be conducted in person, by telephone, or by e-mail. See TMEP §§304 et seq. regarding e-mail.
The application will not normally be processed out of turn as a result of the interview, and the interview does not extend the deadline for response to an outstanding Office action.
The examining attorney may not discuss inter partes questions with any of the interested parties. See TMEP §1801.
709.01 Personal Interviews
Personal interviews with examining attorneys concerning applications and other matters pending before the USPTO are permissible on any working day and must be in the office of the respective examining attorney, within office hours that the examining attorney may designate.
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Personal interviews should be arranged in advance, preferably by fax, e-mail, or telephone. This will ensure that the assigned examining attorney will be available for the interview at the scheduled time and will have an opportunity to review the application record. The unexpected appearance of a qualified practitioner or applicant requesting an interview without any previous notice to the examining attorney is not appropriate.
An interview should be conducted only when it could serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant. Interviews should not extend beyond a reasonable time.
The examining attorney should not hesitate to state that matter presented for consideration during the interview requires further research, if this is the case. Furthermore, the examining attorney may conclude an interview when it appears that no common ground can be reached.
During an interview with a pro se applicant who is not familiar with USPTO procedure, the examining attorney may in his or her discretion make suggestions that will advance the prosecution of the application, but these interviews should not be allowed to become unduly long.
When an agreement is reached during an interview but it is not possible to resolve all issues through an examiner’s amendment, the examining attorney should make a note in the “Notes-to-the-File” section of the record concerning the agreement, and request that the applicant incorporate the agreement in its response.
Sometimes, the examining attorney who conducted the interview is transferred, resigns, or retires, and examination of the application is taken over by another examining attorney. If there is an indication in the record that an interview was held, the new examining attorney should endeavor to ascertain whether any agreements were reached during the interview. The new examining attorney should take a position consistent with agreements previously reached, unless doing so would be a clear error (see TMEP §706.01).
Except in unusual situations, no interview on the merits is permitted after the brief on appeal is filed, or after an application has been forwarded for publication or issue.
709.02 Persons Who May Represent Applicant in an Interview
In general, interviews are not granted to persons who lack proper authority from the applicant. See TMEP §§602 et seq. regarding persons who may represent an applicant before the USPTO in a trademark matter, and TMEP §§611.06 et seq. for information as to persons who have authority to bind various types of juristic applicants.
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The examining attorney may request proof of a person’s authority if there is any reason to suspect that the person is not, in fact, a qualified practitioner who is authorized to represent the applicant. 37 C.F.R. §2.17(a).
For an interview with an examining attorney who does not have signatory authority, arrangements should be made for the presence of an examining attorney who does have such authority and who is familiar with the application, so that an authoritative agreement may be reached, if possible, at the time of the interview.
USPTO employees are forbidden to engage in oral or written communication with a disbarred, suspended, or excluded practitioner (see TMEP §608.02), unless the practitioner is the applicant.
Requests for interviews from third parties are inappropriate and should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy. See TMEP §1801.
709.03 Making Substance of Interview of Record
The substance of an interview must always be made of record in the application, since the action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191. This should be done promptly after the interview while the matters discussed are fresh in the minds of the parties.
If possible, agreements reached in the interview should be incorporated in an examiner’s amendment or priority action. Otherwise, to ensure that any agreements reached at an interview will be implemented, and to avoid subsequent misunderstanding, the examining attorney should include, in the “Notes-to-the-File” section of the record, a list of the issues discussed and indicate whether any agreement was reached. See TMEP §709.04 for further information about “Notes-to-the-File”.
The applicant or the applicant’s qualified practitioner may also make the substance of an interview part of the record by incorporating a summary of the interview in the applicant’s response to the Office action. If there is any disagreement between the examining attorney and the applicant as to the substance of the interview, the written record governs. 37 C.F.R. §2.191.
709.04 Telephone and E-Mail Communications
Use of the telephone and e-mail is encouraged. Examining attorneys should initiate telephone and e-mail communications whenever possible to expedite prosecution of an application. Similarly, applicants and qualified practitioners may telephone or e-mail examining attorneys, if they feel that a call or e-mail will advance prosecution of an application.
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All documents filed in connection with the application should include the telephone number of the applicant or the applicant’s qualified practitioner.
The examining attorney should return telephone calls and e-mail messages within a reasonable time, normally the same working day and never later than the next working day.
Generally, the examining attorney who prepared the action, and not the supervisory or reviewing examining attorney, should be the person contacted by telephone or e-mail. However, a non-signatory examining attorney must secure proper authorization from the managing attorney, senior attorney, or reviewing examining attorney before approving an amendment.
The action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191. Therefore, the examining attorney must use an examiner’s amendment (see TMEP §§707 et seq.), priority action (see TMEP §§708 et seq.), upload a relevant e-mail communication, or enter a note in the “Notes- to-the-File” section of the record to make the substance of the telephone call or the resolution of any issue part of the written record. See TMEP §709.03.
Notes in the “Notes-to-the-File” section must not summarize arguments or legal conclusions. Rather, the note-to-the-file must merely list the issues discussed and indicate any agreement that may have been reached. If no agreement was reached, that should be noted also.
If an examining attorney does not respond to a telephone or e-mail message within two business days, the applicant may telephone the law office manager or supervisor. Contact information is available on the USPTO website at http://www.uspto.gov/teas/contactUs.htm.
709.05 Informal Communications
An applicant may conduct informal communications with an examining attorney regarding a particular application by telephone, e-mail (see TMEP §§304 et seq.), or fax. Informal communications should be conducted only if they serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant. For example, an applicant may telephone or send an e-mail regarding:
• Questions about an outstanding Office action that do not constitute a response;
• Authorization to issue an examiner’s amendment or priority action (see TMEP §§707.01 and 708.01);
• Notification of termination of a cancellation proceeding that is the basis for suspension (see TMEP §716.02(a)).
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An informal communication does not constitute a response to an outstanding Office action and does not extend the deadline for response.
If it is unclear whether a written communication is an informal inquiry or a response to an Office action, the USPTO will process the communication as a response.
Informal communications must be made part of the record, because the USPTO uses them in decision making, and anything used in decision making must be made of record. 37 C.F.R. §2.191. That is, the examining attorney should make a note in the “Notes-to-the-File” section of the record that an applicant or qualified practitioner called to discuss a particular issue, or should upload a relevant e-mail communication. See TMEP §709.04 for further information about “Notes-to-the-File”.
The applicant should monitor the status of an application after an informal communication to avoid abandonment. This may be done through the Trademark Applications and Registrations Retrieval (“TARR”) database at http://tarr.uspto.gov/, or by calling the Trademark Assistance Center (“TAC”) at (571) 272-9250 or (800) 786-9199. See TMEP §§108.03 and 1705.05 regarding the duty to monitor the status of an application in cases where a notice or action from the USPTO is expected.
709.06 Interviews Prior to Filing Application
No interviews are permitted before the filing of an application. If a party has general questions about how to file an application, he or she can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. See TMEP §108.02.
USPTO employees cannot give advice on trademark law. It is inappropriate for USPTO personnel to give legal advice, to act as a counselor for individuals, or to recommend a qualified practitioner. 37 C.F.R. §2.11.
710 Evidence
710.01 Evidence Supporting Refusal or Requirement
In general, the examining attorney must always support his or her action with relevant evidence and ensure that proper citations to the evidence are made in the Office action.
All evidence that the examining attorney relies on in making a requirement or refusal must be placed in the record and copies must be sent to the applicant.
In appropriate cases, the examining attorney may also present evidence that may appear contrary to the USPTO’s position, with an appropriate explanation as to why this evidence was not considered controlling. In some
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cases, this may foreclose objections from an applicant and present a more complete picture if there is an appeal. Cf. In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).
710.01(a) Evidence From Research Database
If evidence is obtained from a research database, the record should include an indication of the specific search that was conducted. The record should indicate the libraries and/or files that were searched and the results. If the examining attorney does not review all of the documents located in a search, the record should indicate the number of documents that were reviewed. The search summary should be made a part of the record and will provide most of this information. Information not indicated on the search summary, such as the number of documents viewed, should be stated in narrative in the Office action. The Office action should include a citation to the research service, indicating the service, the library and the file searched, and the date of the search (e.g., “LEXIS®, News and Business, All News (Sept. 25, 2009)”).
When evidence is obtained from a research database, the examining attorney does not have to make all stories of record. It is sufficient to include only a portion of the search results, as long as that portion is a representative sample of what the entire search revealed. In re Vaughan Furniture Co. Inc., 24 USPQ2d 1068, 1069 n.2 (TTAB 1992). See also In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987).
See TMEP §710.01(b) regarding evidence originating in foreign publications.
710.01(b) Internet Evidence
Articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. However, the weight given to this evidence must be carefully evaluated, because the source may be unknown. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-71 (TTAB 1998). When making Internet evidence part of the record, the examining attorney should provide complete information as to the source or context of the evidence. Any information that would aid a party in locating the relevant document should be included in the citation (e.g., the complete URL address of the website, the time and date the search was conducted, and the terms searched).
A list of Internet search results has little probative value, because such a list does not show the context in which the term is used on the listed web pages. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (GOOGLE® search results that provided very little context of the use of ASPIRINA deemed to be “of little value in assessing the consumer public perception of the ASPIRINA mark”); In re Tea and
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Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (truncated Google® search results entitled to little probative weight without additional evidence of how the searched term is used); In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board rejected an applicant’s attempt to show weakness of a term in a mark through citation to a large number of GOOGLE® “hits” because the “hits” lacked sufficient context); In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006); In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002); In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002). The examining attorney should attach copies of the website pages that show how the term is actually used.
As long as it is written in the English language, information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern United States consumer impression of a proposed mark. The probative value of such evidence will vary depending upon the context and manner in which the term is used. In Bayer, NEXIS® evidence that originated in foreign publications was deemed to be of “some probative value with respect to prospective consumer perception in the United States,” the Court noting “the growing availability and use of the internet as a resource for news, medical research results, and general medical information.” 488 F.3d at 969, 82 USPQ2d at 1835. In Remacle, the Board held evidence from a website in Great Britain admissible, noting that:
[I]t is reasonable to assume that professionals in medicine, engineering, computers, telecommunications and many other fields are likely to utilize all available resources, regardless of country of origin or medium. Further, the Internet is a resource that is widely available to these same professionals and to the general public in the United States. Particularly in the case before us, involving sophisticated medical technology, it is reasonable to consider a relevant article from an Internet web site, in English, about medical research in another country, Great Britain in this case, because that research is likely to be of interest worldwide regardless of its country of origin.
66 USPQ2d at 1224 n.5. However, the weight given to such evidence may vary depending upon the context and manner in which the term is used. In King Koil, the Board gave only “limited probative value” to the contents of websites of commercial entities outside the United States showing use of the term “breathable” in relation to mattresses and bedding, stating that:
[C]onsumers may visit foreign web sites for informational purposes, even if they are more likely to focus on internet retailers that can easily ship items or make items available for pick up in a store in a location convenient to the purchaser. That would appear especially likely in a case such as this, where the item in question, a mattress, is large and potentially more expensive to ship than a smaller item.
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Accordingly, while we do not discount entirely the impact of foreign web sites in this case, we find them of much more limited probative value than in the Remacle case.
79 USPQ2d at 1050. See also In re Cell Therapeutics, Inc., 67 USPQ2d 1795, 1797-98 (TTAB 2003) (relying on several NEXIS® items from foreign wire services to support a refusal and distinguishing earlier decisions that accorded such evidence little probative value given the sophisticated public and the widespread use of personal computers that increase access to such sources).
With respect to evidence taken from the online Wikipedia® encyclopedia, at www.wikipedia.org, the Board has noted that “[t]here are inherent problems regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that permits anyone to edit the entries,” and has stated as follows:
[T]he Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence by submitting other evidence that may call into question the accuracy of the particular Wikipedia information. Our consideration of Wikipedia evidence is with the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information)....
As a collaborative online encyclopedia, Wikipedia is a secondary source of information or a compilation based on other sources. As recommended by the editors of Wikipedia, the information in a particular article should be corroborated. The better practice with respect to Wikipedia evidence is to corroborate applicant’s Wikipedia evidence....
In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007).
Given its inherent limitations, any information obtained from Wikipedia® should be treated as having limited probative value. If the examining attorney relies upon Wikipedia® evidence and makes it of record, then additional supportive and corroborative evidence from other sources should also be made of record, especially when issuing final actions.
The examining attorney must check applicant’s own website for information about the goods/services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006), where the Board rejected applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent-to-use and no specimens were yet required. According to the Board, “The fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing
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evidence that it may have in its possession.” See also In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007).
When a document found on the Internet is not the original publication, the examining attorney or Trademark Law Library staff should try to obtain a copy of the originally published document, if practicable. Electronic-only documents are considered to be original publications, and scanned images are considered to be copies of original publications. See notice at 64 Fed. Reg. 33056, 33063 (June 21, 1999).
See also TBMP §1208.03.
710.01(c) Record Must Be Complete Prior to Appeal
The record in any application must be complete prior to appeal. 37 C.F.R. §2.142(d). Accordingly, if an examining attorney or applicant attempts to introduce new evidence at the time of the appeal, the new evidence will generally be excluded from the record. TBMP §§1207 et seq. See Rexall Drug Co. v. Manhattan Drug Co., 284 F.2d 391, 128 USPQ 114 (C.C.P.A. 1960); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999). However, the Board may consider evidence submitted after appeal, despite its untimeliness, if the non-offering party: (1) does not object to the evidence; and (2) discusses the evidence or otherwise treats it as being of record. See TBMP §1207.03 and cases cited therein. Therefore, examining attorneys and applicants should either consider or object to new evidence.
Whenever an examining attorney objects to evidence submitted by an applicant, the objection should be raised as soon as possible and continued in the examining attorney’s brief, or the Board may consider the objection to be waived. In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).
If the applicant or examining attorney wishes to introduce new evidence at the time of or during appeal, the party seeking to introduce the new evidence may request the Board to suspend the appeal and remand the case. See TMEP §§1504.05 et seq. and TBMP §1207.02 regarding requests for remand.
The Board may take judicial notice of definitions from printed dictionaries, even if they are not made of record by the applicant or examining attorney prior to appeal. In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008); In re Dodd Int’l, Inc., 222 USPQ 268 (TTAB 1983); In re Canron, Inc., 219 USPQ 820 (TTAB 1983); TBMP §1208.04. However, the better practice is to attach the relevant material to ensure that it is in the record. The examining attorney must include a copy of the title page of the dictionary. In re Gregory, 70 USPQ2d 1792 (TTAB 2004) (Board declined to take judicial notice of dictionary definitions submitted with examining attorney’s appeal brief, where neither the photocopied pages nor the examining attorney’s brief specified the dictionaries from which the copies were made).
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The Board will not take judicial notice of online dictionary definitions that are not available in printed form, unless the dictionary is readily available and verifiable, due to concerns about the reliability of such material. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (Board took judicial notice of the Encarta Dictionary, because it was a widely known reference that was readily available in specifically denoted editions via the Internet and CD-ROM, holding that it was “the electronic equivalent of a print publication and applicant may easily verify the excerpt”). However, it refused to take judicial notice of a definition excerpted from www.wordsmyth.net, where the source of the definition was not identified on the submitted website excerpt or by the examining attorney and thus could not be verified. See also In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (Board took judicial notice of online dictionary that was also available in printed form); In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999) (Board refused to take judicial notice of online dictionary that did not exist in printed format, where the source was unknown and the Board was unsure whether the dictionary was readily available or reliable, stating that the evidence should have been made of record prior to appeal, so applicant would have the opportunity to check the reliability of the evidence and offer rebuttal evidence).
710.02 Search for Evidence Indicating No Refusal or Requirement Necessary
It is USPTO practice to indicate the results of a search for evidence when the examining attorney considers an issue and determines that no action will be taken on it. This information is helpful for internal review. The “Notes-to-the- File” section of the record should be used to reflect that a search for evidence was conducted in any case where the examining attorney determines that a search would be useful for review of the application, but that no further action is required. The examining attorney should simply note the parameters of the search conducted without stating any opinions or conclusions.
For instance, in the case of a search of telephone directories for surnames, the record should indicate only the directories investigated and the number of occurrences of the surname. Or, in the case of a search for the meaning of a term, the record should show the sources checked and whether the term was found. Examining attorneys should provide the same information indicated in TMEP §710.01(a) regarding searches of research databases in this type of case.
Examining attorneys should not provide any analysis, opinions, or conclusions regarding the evidence when the examining attorney determines that a refusal or requirement is not appropriate. The examining attorney should not place in the record copies of e-mail messages or other communications between the examining attorney and other USPTO personnel concerning the application. Also, the examining attorney should
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not refer to any registration or pending application that was considered in a §2(d) search, unless the examining attorney determines that there is a conflict and issues an Office action based on the application or registration. The examining attorney should not place copies of marks not cited under §2(d) in the record.
710.03 Evidence of Third-Party Registrations
The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). Furthermore, the submission of a copy of a commercial search report is not proper evidence of third-party registrations. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).
To make registrations of record, soft copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems (X-Search, TESS, TARR, or TRAM)) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992).
If the applicant submits improper evidence of third-party registrations, the examining attorney should object to the evidence in the next Office action, or the Board may consider the objection to be waived. See In re 1st USA Realty Professionals, supra (Board considered applicant’s own registration, provided for the first time on appeal, because it had been referred to during prosecution and the examining attorney addressed the issue without objection; Board also allowed evidence of a list of third-party registrations because the examining attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake); In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (objection to evidence waived where it was not interposed in response to applicant’s reliance on listing of third-party registrations in response to initial Office action). If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.
See TMEP §1207.01(d)(iii) regarding the relevance of third-party registrations to a determination of likelihood of confusion under 15 U.S.C. §1052(d).
711 Deadline for Response to Office Action
The statutory period for response to an examining attorney’s Office action is six months from the date of issuance. 15 U.S.C. §1062(b); 37 C.F.R.
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§2.62(a). The examining attorney has no discretion to shorten or extend this period. The applicant must file a response within six months of the issuance date of the Office action, unless the examining attorney has issued a supplemental action resetting the period for response. See TMEP §711.02 regarding supplemental Office actions.
In a §66(a) application, a response to an Office action is due within six months of the date on which the USPTO sends the action to the IB, not the date on which the refusal is processed by the IB. See §1904.02(h) for further information about issuing Office actions in §66(a) applications.
To expedite processing, the USPTO recommends that responses to Office actions be filed through TEAS, at http://www.uspto.gov/teas/index.html.
Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action, appeal to the Board, or petition to the Director. 37 C.F.R. §2.64(c)(1); TMEP §1104.
See TMEP §310 for information about computing the response period; TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness; and TMEP §§718.02 and 718.03 et seq. regarding abandonment for failure to respond or incomplete response to an Office action.
711.01 Time May Run from Previous Action
In most cases, the six-month statutory period to respond to an Office action runs from the issuance date of the Office action. In some situations, the examining attorney’s Office action does not re-start the beginning of a statutory response period. For example, a notice that an applicant’s response was incomplete (see TMEP §§718.03 et seq.), or a notice that an applicant’s request for reconsideration of a final action fails to overcome a refusal or satisfy an outstanding requirement (see TMEP §§715.03(a) and (c)), does not begin a new response period. In all cases where the statutory response period runs from the date of a previous Office action, the examining attorney must include a statement to that effect in the Office action, and must omit the six-month response clause.
711.02 Supplemental Office Action Resetting Response Period
Sometimes the examining attorney must issue a supplemental Office action that resets the six-month statutory period for response. If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response. See TMEP §706. The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a
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previous Office action (e.g., during examination of an amendment to allege use).
If the examining attorney issues a supplemental Office action, a new six- month response period will begin running from the issuance date of the supplemental action. 15 U.S.C. §1062(b). In a supplemental Office action, the examining attorney should: (1) indicate that the action is supplemental to and supersedes the previous action; (2) incorporate all outstanding issues by reference to the previous action; and (3) include the standard six-month response clause.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
See TMEP §§717 et seq. regarding reissuing of Office actions.
712 Signature on Response to Office Action
A response to an Office action must be personally signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §§2.62(b) and 11.18(a). The examining attorney must review the application record to determine whether the applicant is represented by a qualified practitioner, and must ensure that all responses and amendments are properly signed. See TMEP §§611.03(b) and 712.02 regarding the proper person to sign, and TMEP §§611.06 et seq. as to persons who have legal authority to bind various types of juristic entities.
The signatory must personally sign his or her name. In a document filed through TEAS, the person identified as the signer must manually enter the elements of the electronic signature. See TMEP §611.01(b).
The name of the person who signs the response should be set forth in printed or typed form immediately below or adjacent to the signature, or identified elsewhere in the filing (e.g., in a cover letter or other document that accompanies the filing). See TMEP §611.01(b).
See TMEP §611.01(c) regarding signature of electronically filed documents.
712.01 Persons Who May Sign Response
The examining attorney must ensure that the record establishes the authority of the persons who signs the response. Under 5 U.S.C. §500(d) and 37 C.F.R. §11.14(e), non-attorneys may not sign responses to Office actions or otherwise represent a party in a trademark proceeding before the USPTO. 37 C.F.R. §11.5(b)(2); TMEP §608.01. See TMEP §§602 et seq. regarding persons who are authorized to represent others before the USPTO, and
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TMEP §611.04 for examples of authorized and potentially unauthorized signatories.
If an applicant is represented by a qualified practitioner, the practitioner must personally sign the response. 37 C.F.R. §11.18(a). This applies to both in- house and outside counsel.
If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) must sign the response. 37 C.F.R. §2.62(b). In the case of joint applicants who are not represented by a qualified practitioner, all should sign the response. See TMEP §§611.06 et seq. for guidelines as to persons who have legal authority to bind various types of juristic entities. A person who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) is not entitled to sign responses to Office actions, unless he or she also has legal authority to bind the applicant or is a qualified practitioner.
Example: A corporate manager might have the firsthand knowledge and implied authority to act on behalf of the applicant required to verify facts under 37 C.F.R. §2.33(a)(2) and still not have legal authority to bind the applicant.
If the applicant is represented by a qualified practitioner, and the response consists only of a declaration (e.g., if the verification was omitted from the initial application and no other issues were raised in the Office action), the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a) (see TMEP §804.04), and no separate signature by the practitioner is required. However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the practitioner.
Similarly, if the applicant is pro se (i.e., is not represented by a qualified practitioner), and the response consists only of a declaration, the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a), and no separate signature by someone with legal authority to bind the applicant is required. However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant. 37 C.F.R. §§2.62(b) and 2.74(b).
If a response to an Office action appears to be signed by an unauthorized person (e.g., a foreign attorney who is not licensed to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must treat the response as incomplete and require the applicant to submit a properly signed response. The response cannot be ratified by an examiner’s amendment. See TMEP §§608.01, 611.05 et seq., and 712.03 for further information.
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These same principles apply to authorizations of examiner’s amendments and priority actions. See TMEP §§707.01 and 708.02.
712.02 Unsigned Response
The examining attorney should treat an unsigned response as an incomplete response, and should either call the applicant to obtain permission to enter an examiner’s amendment from an authorized party (if appropriate), or issue a notice of incomplete response granting the applicant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b). If the response does not require a verification that must be signed by the applicant (see TMEP §§804 et seq.), the applicant, a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner, may either request that the amendment(s) be entered through an examiner’s amendment, or submit a properly signed copy of the response. If the response requires a verification that must be signed by the applicant, the applicant must submit a signed verification. A duplicate of the original response can be submitted through TEAS (using the response to Office action form) or a properly signed copy of the original document can be submitted by fax (unless it is excluded by 37 C.F.R. §2.195(d)). The examining attorney must defer action on the merits of the response until the applicant files a properly signed response. In a TEAS Plus application, the applicant must file the response through TEAS, or the applicant will lose TEAS Plus status (see TMEP §819.02(b)).
The substitute response must be personally signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §§2.62(b) and 11.18(a). See TMEP §§611.03(b) and 712.02 for further information about the proper party to sign.
If an applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66. The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146. See TMEP §1713.01.
712.03 Response Signed by an Unauthorized Person
Notice of Incomplete Response. A response to an Office action must be personally signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner (see TMEP §§602 et seq.). 37 C.F.R. §§2.62(b) and 11.18; TMEP §§611.03(b) and 712.02. When it appears that a response to an Office action was signed by an improper party (e.g., a foreign
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attorney who is not licensed to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must treat the response as incomplete. The examining attorney must issue a notice of incomplete response granting the applicant additional time to perfect the response, pursuant to 37 C.F.R. §2.65(b) (see TMEP §718.03(b)), and send the notice to the correspondence address of record. See TMEP §611.05(a). The examining attorney should defer action on the merits of the response until a properly signed response is filed.
Applicant’s Reply to Notice of Incomplete Response. If the person who signed the response was authorized to sign, the applicant’s reply to the notice of incomplete response should state the nature of the relationship of the signer to the applicant. If the signer has legal authority to bind the applicant, the person should so state, and should set forth his or her title or position. If the signer is an attorney authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14(a), the attorney should identify him or herself as an attorney and indicate the United States state bar of which he or she is a member in good standing. If the signer meets the requirements of either 37 C.F.R. §11.14(b) or §11.14(c), the person should explain how he or she meets these requirements. See TMEP §611.05(b) for further information.
If the person who signed the response is not an authorized signer, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant may telephone the examining attorney to authorize such an amendment. Otherwise, the applicant must submit a response signed by the applicant or someone with legal authority to bind the applicant (see TMEP §§712.01 et seq.), or by a qualified practitioner. This should be done through TEAS (using the response to Office action form), or may be done by fax (unless it is excluded by 37 C.F.R. §2.195(d)). In a TEAS Plus application, the applicant must file the response through TEAS, or the applicant will lose TEAS Plus status (see TMEP §819.02(b)). See TMEP §611.01(c) regarding signature of documents submitted through TEAS. When a response is signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.
Unsatisfactory Response or No Response. If no acceptable response is received within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66. The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146. See TMEP §1713.01.
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713 Examination of Amendments and Responses to Office Actions
37 C.F.R. §2.63. Reexamination. (a) After response by the applicant, the application will be reexamined or
reconsidered. If registration is again refused or any formal requirement[s] is repeated, but the examiner’s action is not stated to be final, the applicant may respond again.
(b) After reexamination the applicant may respond by filing a timely petition to the Director for relief from a formal requirement if: (1) The requirement is repeated, but the examiner’s action is not made final, and the subject matter of the requirement is appropriate for petition to the Director (see §2.146(b)); or (2) the examiner’s action is made final and such action is limited to subject matter appropriate for petition to the Director. If the petition is denied, the applicant shall have until six months from the date of the Office action which repeated the requirement or made it final or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement. A formal requirement which is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board.
The examining attorney will consider the applicant’s response and will determine whether the mark may be approved for publication or registration. The examining attorney must carefully consider all arguments, comments, and amendments made or proposed by the applicant.
If the applicant’s response has put the application in condition for approval for publication for opposition or registration on the Supplemental Register, the examining attorney will approve the application for publication or registration, as appropriate.
If the applicant’s response has not put the application in condition for publication or registration, the examining attorney will issue an Office action, or telephone or e-mail the applicant, depending on the circumstances.
If the applicant’s response does not present any new issues, and the applicant has had an opportunity to reply to all points raised by the examining attorney, the examining attorney’s next action should be stated to be final. See TMEP §§714 et seq.
If the examining attorney has cited an earlier-filed conflicting application, and the applicant responds by arguing that there is no likelihood of confusion, the examining attorney should suspend the application pending disposition of the conflicting application, if applicant’s arguments are not persuasive. See TMEP §716.02(c) regarding suspension pending disposition of an earlier-filed conflicting application, TMEP §716.03 regarding the applicant’s request to
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remove an application from suspension, and TMEP §§1208 et seq. regarding conflicting marks in pending applications.
713.01 Previous Action by Different Examining Attorney
When assigned to act on an application that was previously handled by a different examining attorney, the examining attorney should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error (see TMEP §706.01) to act consistently.
713.02 Noting All Outstanding Refusals or Requirements
When acting on an amendment or response to an Office action, the examining attorney must note all outstanding refusals or requirements in every Office action. The examining attorney must indicate whether particular refusals or requirements are withdrawn or maintained, and whether the applicant’s response is acceptable, where appropriate.
To prevent any misunderstanding, every refusal or requirement in the prior action that is still outstanding must be referenced in any subsequent action. Even when suspending action on an application, the examining attorney must note all outstanding refusals or requirements. While this is done as a courtesy to prevent any misunderstanding, a refusal or requirement issued in a previous action remains in effect unless the examining attorney specifically indicates that it has been withdrawn. If an examining attorney issues an Office action that does not mention an outstanding refusal or requirement that was raised in a previous action, the refusal or requirement may be made final in a subsequent action, if the application is otherwise in condition to be made final.
713.03 Response to Applicant’s Arguments
When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments.
714 Final Action
37 C.F.R. §2.64. Final action. (a) On the first or any subsequent reexamination or reconsideration the
refusal of the registration or the insistence upon a requirement may be stated to be final, whereupon applicant’s response is limited to an appeal, or to a compliance with any requirement, or to a petition to the Director if permitted by §2.63(b).
(b) During the period between a final action and expiration of the time for filing an appeal, the applicant may request the examiner to reconsider the final
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action. The filing of a request for reconsideration will not extend the time for filing an appeal or petitioning the Director, but normally the examiner will reply to a request for reconsideration before the end of the six-month period if the request is filed within three months after the date of the final action. Amendments accompanying requests for reconsideration after final action will be entered if they comply with the rules of practice in trademark cases and the Act of 1946.
(c)(1) If an applicant in an application under section 1(b) of the Act files an amendment to allege use under §2.76 during the six-month response period after issuance of a final action, the examiner shall examine the amendment. The filing of an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action, appeal to the Trademark Trial and Appeal Board, or petition to the Director.
(2) If the amendment to allege use under §2.76 is acceptable in all respects, the applicant will be notified of its acceptance.
(3) If, as a result of the examination of the amendment to allege use under §2.76, the applicant is found not entitled to registration for any reason not previously stated, applicant will be notified and advised of the reasons and of any formal requirements or refusals. The Trademark Examining Attorney shall withdraw the final action previously issued and shall incorporate all unresolved refusals or requirements previously stated in the new non-final action.
714.01 Not Permissible on First Action
A first action by an examining attorney may not be a final action. An applicant is entitled to at least one opportunity to reply to any issue raised by the examining attorney.
714.02 Not Permissible on Suspension
A letter of suspension cannot be made final. See TMEP §§716 et seq. regarding suspension.
714.03 When Final Action is Appropriate
Final action is appropriate when a clear issue has been developed between the examining attorney and the applicant, i.e., the examining attorney has previously raised all outstanding issues and the applicant has had an opportunity to respond to them.
For a second action to be made final, all requirements or refusals must have been made in the first action. No refusal or requirement may be made final, even if it is a repeated refusal or requirement, unless the entire action is made final. Thus, if the examining attorney makes a new refusal or requirement in a second or subsequent action, a repeated refusal or requirement may not be made final.
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In a §44(d) application, the examining attorney may not issue a final action until the applicant submits a copy of the foreign registration. When the application is otherwise in condition for final refusal, the examining attorney must suspend action on the application pending receipt of a copy of the foreign registration. The notice of suspension must indicate all outstanding refusals or requirements that will be made final upon receipt of the foreign registration if no new issues are raised. See TMEP §§716.02(b) and 1003.04(b).
Second actions should be final actions whenever possible. While an applicant is entitled to a full and fair hearing, it is in the interest of the public that prosecution be limited to as few actions as is consistent with proper examination. Neither the Act nor the rules of practice give an applicant the right to an extended prosecution.
See TMEP §§714.05 et seq. for further discussion of when an examining attorney should issue a nonfinal action rather than a final action, and TMEP §714.06 regarding final actions that are premature.
714.04 Form of the Final Action
When making an action final, the examining attorney must restate any requirements or refusals that remain outstanding, and must cite the rule(s) and/or statute(s) that provide the basis for these refusals or requirements. The examining attorney should place all evidence in support of his or her refusal in the record at the time the final action is issued.
The final action should include a clear and unequivocal statement that the refusal or requirement is final. When there is more than one ground set out as the basis for the final action, the action may conclude with a paragraph containing wording such as “This action is made FINAL” or “This is a FINAL action,” which covers all grounds.
The final action must also mention any refusals or requirements that have been withdrawn. See TMEP §713.02.
The examining attorney must include a statement that the only proper response to a final action is an appeal to the Board (or a petition to the Director, if permitted under 37 C.F.R. §2.63(b)), or compliance with the outstanding requirement(s). 37 C.F.R. §2.64(a).
A final action must include a six-month response clause (see TMEP §705.08) so that is it clear that the applicant must file a timely response to avoid abandonment of the application.
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714.05 Delineating New Issues Requiring Issuance of Nonfinal Action
It is sometimes difficult to determine what constitutes a new issue requiring a new nonfinal action, rather than a final action, after receipt of a response. See TMEP §§714.05(a) through 714.05(f) regarding the propriety of issuing a final action in specific situations, and TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after date on which the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
714.05(a) Unacceptable Amendment Proposed By Applicant
Generally, an unacceptable amendment raises a new issue requiring a new nonfinal action, unless the amendment is a direct response to a previous requirement.
If an amendment is not offered in direct response to a requirement, and the amendment is not acceptable, the examining attorney generally must issue a new nonfinal action with a six-month response clause, addressing the issues raised by the amendment and continuing all other refusals and requirements. The following are examples of amendments that would require a new nonfinal action:
(1) Amendments to the drawing, unless the examining attorney had previously required that the drawing be amended;
(2) Amendments to the Supplemental Register and amendments to assert acquired distinctiveness under 15 U.S.C. §1052(f), unless the amendment is irrelevant to an outstanding refusal (see TMEP §714.05(a)(i));
(3) Amendments to disclaim the entire mark (see TMEP §1213.06);
(4) Amendments to the drawing that materially alter the mark, if the examining attorney had required a new drawing because the original drawing was of poor quality that could not be reproduced, but had not previously raised the issue of material alteration. See TMEP §714.05(c) regarding advisory statements.
However, evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a nonfinal action. See In re GTE Education Services, 34 USPQ2d 1478 (Comm’r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens,
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where the substitute specimens submitted with the request were deficient for same reason as the original specimens). Generally, the examining attorney may issue a final action if the same refusal or requirement was made before.
714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness
If registration is refused under §2(e)(1), §2(e)(2), or §2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(1), §1052(e)(2), or §1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter (e.g., product or container configurations (see TMEP §§1202.02(b)(i) and (ii)), color marks (see TMEP §§1202.05 et seq.), or marks that comprise matter that is purely ornamental (see TMEP §§1202.03 et seq.)), an amendment to the Supplemental Register or to claim acquired distinctiveness under 15 U.S.C. §1052(f) presents a new issue. This is true even if the examining attorney previously issued an advisory statement indicating that the examining attorney believed the mark to be unregistrable on the Supplemental Register or under §2(f).
If the examining attorney determines that the amendment does not overcome the refusal, the examining attorney should issue a new nonfinal refusal of registration with a six-month response clause. See TMEP §816.04 regarding refusal of registration after an amendment to the Supplemental Register, and TMEP §1212.02(h) regarding refusal of registration after an applicant submits a claim of acquired distinctiveness under §2(f).
However, if the amendment is irrelevant to an outstanding refusal, the examining attorney may issue a final refusal or requirement. For example, if registration is refused under §2(a) (see TMEP §§1203 et seq.), §2(b) (see TMEP §1204), §2(d) (see TMEP §§1207 et seq.), §2(e)(3) (see TMEP §1210.01(b)), or §2(e)(5) (see TMEP §§1202.02(a) et seq.) of the Trademark Act, an amendment to the Supplemental Register or a claim of distinctiveness under §2(f) does not raise a new issue, and the examining attorney may issue a final refusal. See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992) (amendment to the Supplemental Register in response to a refusal of registration under §2(a) does not raise a new issue). Likewise, in a §66(a) application, an amendment to the Supplemental Register does not raise a new issue, because a mark in a §66(a) application is not eligible for registration on the Supplemental Register. Section 68(a)(4) of the Trademark Act, 15 U.S.C. §1141h(a)(4). Thus, an amendment to the Supplemental Register cannot overcome the refusal.
Exception: An amendment to the Supplemental Register in a §1(b) application for which no allegation of use has been filed does raise a new issue, because the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce.
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37 C.F.R. §2.75(b); TMEP §1102.03. In this situation, if the applicant files a proper amendment to allege use or statement of use, the examining attorney will consider the amendment to the Supplemental Register.
See TMEP §§715.03(b) and 715.04(b) regarding new issues presented in a request for reconsideration of an examining attorney’s final action.
714.05(a)(ii) Amendment of Identification of Goods/Services
If the applicant responds to a nonfinal Office action requiring an amendment to the identification of goods/services, and the examining attorney determines that the identification is still unacceptable, generally the examining attorney must issue a final requirement to amend the identification of goods/services. There are only two exceptions to this rule:
(1) If the amended identification is broader in scope than the original identification, and the prior Office action failed to advise the applicant that amendments broadening the identification are prohibited under 37 C.F.R. §2.71(a), the examining attorney cannot issue a final Office action.
(2) If the amended identification sets forth goods/services in multiple classes, but the applicant has not submitted all the requirements for a multiple-class application (e.g., specimens and fees for all classes), and the prior Office action failed to advise the applicant that the missing elements were required, the examining attorney cannot issue a final Office action. See TMEP §§1403 et seq. regarding multiple- class applications.
If the examining attorney issues a nonfinal action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite, but is otherwise unacceptable (e.g., because it includes a registered trademark or service mark (see TMEP §1402.09)), this is not considered a new issue, and the examining attorney must issue a final Office action requiring amendment of the identification.
However, if the examining attorney issues a final action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but is otherwise unacceptable (e.g., because it includes a registered mark), the examining attorney should treat the response as incomplete, and grant the applicant additional time to cure this deficiency, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b) for further information about granting an applicant additional time to perfect an incomplete response. Examining attorneys are encouraged to try to resolve these issues by examiner’s amendment.
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714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application That Has Matured Into Registration
The examining attorney must issue a new nonfinal action when first refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d), even if the applicant had been advised of the existence of an earlier-filed application before it matured into the registration on which the refusal is based.
In a §66(a) application, a new nonfinal refusal under §2(d) of the Act may be issued more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO, provided that the USPTO had notified the IB of the conflicting application prior to expiration of the 18- month period.
714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement
Except as provided in TMEP §714.05(a)(ii), an advisory statement in an Office action indicating that a refusal or requirement will be issued if specified circumstances arise cannot serve as the foundation for issuing a final requirement or refusal in the next action. To establish the foundation for issuing a final refusal or requirement in the next Office action, an initial requirement or refusal must relate to matter that is of record at the time of the action.
714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal
Consent Agreement. If an applicant files a consent agreement in response to a nonfinal refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney should issue a final refusal, assuming the application is otherwise in condition for final refusal.
If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney should issue a new final refusal, i.e., an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement.
Assertion of Unity of Control. If an applicant asserts unity of control (see TMEP §§1201.07 et seq.) in response to a nonfinal refusal under §2(d), and the examining attorney determines that unity of control has not been established, the examining attorney should issue a final refusal, assuming that the application is otherwise in condition for final refusal.
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If an applicant asserts unity of control in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established, the examining attorney should issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause.
714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce
If an applicant submits a substitute specimen in response to a nonfinal refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127 (for trademarks), or §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, and 1127 (for service marks), and the mark on the substitute specimen does not agree with the mark on the drawing, but the specimen would otherwise be acceptable to show use in connection with the goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. See TMEP §807.12. If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal, assuming the application is otherwise in condition for final refusal, because the substitute specimen does not present a new issue. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark in commerce, remains the same.
714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark
If an applicant submits a substitute specimen in response to a nonfinal refusal under §§1 and 45 of the Trademark Act, and the mark on the substitute specimen does not agree with the mark on the drawing, but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. See TMEP §807.12. If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal, assuming the application is otherwise in condition for final refusal, because the substitute specimen does not present a new issue. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark as a trademark or service mark, remains the same.
714.06 Applicant’s Recourse When Final Action is Premature
If an applicant believes that a refusal to register or a requirement has been made final prematurely, the applicant must raise the issue while the
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application is still pending before the examining attorney. It is not a ground for appeal to the Trademark Trial and Appeal Board. TBMP §1201.02. The applicant may raise the matter by filing a request for reconsideration with the examining attorney, or by contacting the managing attorney or senior attorney in the examining attorney’s law office. If the examining attorney does not withdraw the finality, the applicant may file a petition to the Director under 37 C.F.R. §2.146. See TMEP Chapter 1700 regarding petitions.
If, on request for reconsideration, the examining attorney finds the final action to have been premature, the examining attorney should issue a new nonfinal action with a six-month response clause.
715 Action After Issuance of Final Action
715.01 Proper Response to Final Action
An applicant must respond to a final action within six months of the issuance date. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a).
In general, the only proper response to a final action is a notice of appeal to the Board, a petition to the Director if permitted under 37 C.F.R. §2.63(b)(2), or compliance with an outstanding requirement. 37 C.F.R. §2.64(a).
After a final refusal to register on the Principal Register, an amendment requesting registration on the Supplemental Register or registration on the Principal Register under §2(f) of the Trademark Act may be a proper response in some circumstances. See TMEP §§714.05(a)(i), 816.04 and 1212.02(h).
715.02 Action After Final Action
Once an action has been properly made final, the examining attorney normally should not change his or her position. However, this does not mean that an applicant’s amendment or argument will not be considered after final action. An amendment may be accepted and entered if it places the application in condition for publication or registration, or will put the application in better form for appeal (i.e., reduce the issues on appeal). For example, an amendment requesting registration on the Supplemental Register or on the Principal Register under §2(f) may be a proper response to a final refusal of registration on the Principal Register in some circumstances. See TMEP §§714.05(a)(i), 816.04, and 1212.02(h).
If the examining attorney believes that an examiner's amendment (see TMEP §§707 et seq.) will immediately put the application in condition for publication or registration, or reduce the issues on appeal, the examining attorney should issue an examiner's amendment.
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If the applicant files a response that complies with all outstanding requirements and overcomes all outstanding refusals, the examining attorney should approve the application for publication or registration, as appropriate.
The applicant may request reconsideration after final action, within six months of the issuance date of the final action. However, filing a request for reconsideration does not extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(b).
See TMEP §716.06 regarding suspension after final action.
715.03 Request for Reconsideration After Final Action
Under 37 C.F.R. §2.64(b), the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board.
However, filing a request for reconsideration does not extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b) (2). 37 C.F.R. §2.64(b); TMEP §715.03(c). The USPTO cannot extend the statutory deadline for filing an appeal. 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a). Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the six-month period for response to the final action, or the application will be abandoned. See TMEP §§715.04 et seq. for information about processing a request for reconsideration filed with a notice of appeal. If the request for reconsideration is unsuccessful, and the applicant has not timely filed a notice of appeal, the application will be abandoned for incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
The examining attorney should construe any document filed after final action that responds to the outstanding refusals or requirements as a request for reconsideration. If the request for reconsideration does not overcome or resolve all outstanding refusals and requirements, the examining attorney must issue a written action that advises the applicant of the status of the application. The Office action should discuss any new evidence submitted with a request for reconsideration.
Regardless of whether an applicant submits new evidence with a request for reconsideration, the examining attorney may introduce additional evidence directed to the issue(s) for which reconsideration is sought. TBMP §1207.04. See In re Davey Products Pty Ltd., ___ USPQ2d ___, Ser. No. 77029776 (TTAB Aug. 7, 2009); In re Giger, 78 USPQ2d 1405 (TTAB 2006). If the evidence is significantly different from the evidence currently of record, the examining attorney must issue a new final refusal, i.e., an “Examiner’s Subsequent Final Refusal,” with a six-month response clause.
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In determining the appropriate action to take upon receipt of a request for reconsideration, the examining attorney must determine whether: (1) the applicant has timely filed a notice of appeal; and (2) the request for reconsideration presents a new issue. See TMEP §§715.03(a), 715.03(b), and 715.04 et seq. for further information as to how examining attorneys should handle requests for reconsideration.
715.03(a) Examining Attorney’s Action When No New Issue is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
If an examining attorney is not persuaded by the request for reconsideration and no new issues have been raised, the examining attorney should deny the request. See TMEP §715.03(b) regarding requests for reconsideration that raise a new issue, and TMEP §§715.04 et seq. regarding requests for reconsideration filed in conjunction with a notice of appeal.
If there is time remaining in the response period, the examining attorney must issue an “Examiner’s Action Continuing a Final Refusal” that: (1) acknowledges the request for reconsideration; (2) indicates that it is denied; (3) restates the final refusal; and (4) advises the applicant that the time for appeal runs from the issuance date of the final Office action. The examining attorney should advise the applicant that the applicant has the remainder of the response period to comply with any outstanding requirement and/or to file a notice of appeal to the Board. The Office action must not include a six-month response clause (see TMEP §705.08).
If the six-month period for response to the final action has expired, and the applicant has not timely filed a notice of appeal, the examining attorney must issue an Office action entitled “Abandoned – Due to Incomplete Response.” The action must indicate that the request for reconsideration is denied and the application is abandoned due to an incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
If the examining attorney denies the request for reconsideration and holds the application abandoned for incomplete response, the applicant may file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only if there is clear procedural error or abuse of discretion (see TMEP §706.01). In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994); In re Legendary Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992). See TMEP §1713.01. The unintentional delay standard of 37 C.F.R. §2.66 does not apply in this situation. See TMEP §1714.01(f)(ii).
If the request for reconsideration convinces the examining attorney that a refusal or requirement should be withdrawn, the examining attorney may
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withdraw the refusal or requirement and approve the application for publication or registration, if it is in condition for such action.
If the applicant has submitted a timely response, but there is no time remaining in the six-month response period, and the applicant has made a good faith but incomplete attempt to comply with all outstanding requirements and to overcome all outstanding refusals, the examining attorney has discretion under 37 C.F.R. §2.65(b) to issue an “Examiner’s Action Continuing a Final Refusal” that gives the applicant additional time to resolve the matters that remain outstanding. See TMEP §718.03(b). The Office action must not include a six-month response clause. This should be done only if the record indicates that the applicant can place the application in condition for approval by completing the response. If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. §2.65(b), the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate) is not extended. 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
If the examining attorney believes that an examiner's amendment (see TMEP §§707 et seq.) will immediately put the application in condition for publication or registration, the examining attorney should attempt to contact the applicant to obtain authorization to issue an examiner's amendment.
715.03(b) Examining Attorney’s Action When New Issue or New Evidence is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed
If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new final action (i.e., an “Examiner’s Subsequent Final Refusal”) or a nonfinal action with a six-month response clause. For example, in the case of an amendment that asserts a claim of acquired distinctiveness under §2(f) for the first time, or an amendment to the Supplemental Register for the first time, but fails to place the application in condition for approval, the examining attorney should issue a nonfinal action. See TMEP §714.05(a)(i).
When the examining attorney issues a new nonfinal action after review of an applicant’s request for reconsideration, the Office action should explain that the applicant must respond to all requirements or refusals within six months of the issuance date of the action, but that the applicant should not file an appeal to the Board because an appeal would be premature under 15 U.S.C. §1070 and 37 C.F.R. §2.141(a).
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new final or nonfinal action. In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for
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reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for the same reason as original specimens).
If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney should issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. This provides applicant with the opportunity to respond before filing an appeal. Any response to the subsequent final refusal will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.03 et seq.
Example: If an applicant files an executed consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an “Examiner’s Subsequent Final Refusal.” However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d).
Example: The examining attorney should issue an “Examiner’s Subsequent Final Refusal” if the applicant asserts unity of control (see TMEP §§1201.07 et seq.) in response to a final refusal under §2(d), and the examining attorney determines that unity of control has not been established. See TMEP §714.05(d).
Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a subsequent final or nonfinal action. Generally, if the same refusal or requirement was made before, the examining attorney does not have to issue a subsequent final or nonfinal action.
See TMEP §§714.05 et seq. for further information about delineating new issues that require issuance of a nonfinal action.
When an application has been suspended after final action, and the grounds for refusal remain operative after the application is removed from suspension and no new issues have been raised, the examining attorney must issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. See TMEP §716.06.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
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715.03(c) Time for Appeal Runs from Issuance Date of Final Action
Filing a request for reconsideration does not stay the time for responding to a final refusal. 15 U.S.C. §1062(b); 37 C.F.R. §§2.64(b) and 2.142(a). If the examining attorney denies an applicant’s request for reconsideration, the deadline for filing a notice of appeal to the Board (or petition to the Director if permitted by 37 C.F.R. §2.63(b)(2)) runs from the issuance date of the final action. If this deadline has expired and the applicant has not filed a notice of appeal, the application will be abandoned due to an incomplete response. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). The applicant may not file a petition to revive under 37 C.F.R. §2.66, based on unintentional delay. See TMEP §1714.01(f)(ii). The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. However, the Director will reverse the examining attorney’s action on petition only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. See TMEP §1713.01.
715.04 Request for Reconsideration Filed in Conjunction With Notice of Appeal
If an applicant files a notice of appeal with a request for reconsideration, the Trademark Trial and Appeal Board will acknowledge the appeal, suspend further proceedings with respect to the appeal, including the applicant’s time to file an appeal brief, and remand the application to the examining attorney for review of the request for reconsideration. TBMP §1204. See TMEP §§1501 et seq. and TBMP Chapter 1200 for further information about ex parte appeals.
If, upon remand, the examining attorney determines that the outstanding refusal or requirement should be withdrawn, the examining attorney may approve the application for publication or registration. In this situation, the appeal is moot. If there are remaining unresolved refusals, the Board should be notified to resume the appeal.
715.04(a) Examining Attorney's Action When No New Issue is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed
If the examining attorney is not persuaded by the request for reconsideration, and no new issue is presented therein, the examining attorney should issue an “Examiner’s Action Denying Reconsideration of the Final Action” that acknowledges the request for reconsideration and indicates that it is denied, restates the final refusal(s), and advises the applicant that the Board will be notified to resume the appeal. An Office action denying reconsideration of the final action should not include a six-month response clause.
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715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed
If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new nonfinal Office action with a six-month response clause. For example, in the case of an amendment that asserts a claim of acquired distinctiveness under §2(f) for the first time, or an amendment to the Supplemental Register for the first time, but fails to place the application in condition for approval, a nonfinal action may be appropriate. See TMEP §714.05(a)(i).
If the request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney must issue an “Examiner’s Subsequent Final Refusal,” with a six-month response clause. This provides applicant with the opportunity to respond before the appeal. For example, if an applicant files a consent agreement in response to a final refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal, the examining attorney must issue an “Examiner’s Subsequent Final Refusal” that discusses applicant’s consent agreement. However, the examining attorney should not issue a subsequent final refusal if the applicant merely states that it is negotiating a consent agreement. See TMEP §714.05(d). Any response to the subsequent final action will be treated as a new request for reconsideration and processed according to the guidelines set forth in TMEP §§715.04 et seq.
When the examining attorney issues a new nonfinal or subsequent final action, the Office action should explain that the applicant must respond to all requirements or refusals within six months of the issuance date of the action and that the appeal will remain suspended while the application is on remand.
Evidence or amendments that are merely cumulative and are not significantly different from material previously submitted do not raise a new issue that requires the examining attorney to issue a new action. In re GTE Education Services, 34 USPQ2d 1478 (Comm'r Pats. 1994) (examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for the same reason as the original specimens).
Submission of new arguments in response to the same refusal or requirement does not raise a new issue that requires the examining attorney to issue a new action. Generally, if the same refusal or requirement was made before, the examining attorney may issue an Office action denying reconsideration of the final action.
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See TMEP §§714.05 et seq. for further information about delineating new issues that require issuance of a nonfinal action.
In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date the IB forwards the request for extension of protection to the USPTO. See TMEP §1904.03(a).
716 Suspension of Action by USPTO
37 C.F.R. §2.67. Suspension of action by the Patent and Trademark Office.
Action by the Patent and Trademark Office may be suspended for a reasonable time for good and sufficient cause. The fact that a proceeding is pending before the Patent and Trademark Office or a court which is relevant to the issue of registrability of the applicant’s mark, or the fact that the basis for registration is, under the provisions of Section 44(e) of the Act, registration of the mark in a foreign country and the foreign application is still pending, will be considered prima facie good and sufficient cause. An applicant’s request for a suspension of action under this section filed within the 6-month response period (see §2.62) may be considered responsive to the previous Office action. The first suspension is within the discretion of the Examiner of Trademarks and any subsequent suspension must be approved by the Director.
The term “suspension of action” means suspending action by the examining attorney. It does not mean suspending or extending an applicant’s time to respond. The Trademark Act requires that an applicant respond within six months of an examining attorney’s Office action, and the examining attorney has no discretion to suspend or extend the time for the applicant’s response. 15 U.S.C. §1062(b).
The examining attorney should suspend an application only after all issues have been resolved or are in condition for final action, except the matter on which suspension is based.
716.01 Form of Suspension Notice
In a suspension notice, the examining attorney must specifically state that action is suspended and must omit any reference to a six-month response period. The examining attorney should also inform the applicant of the status of the application, i.e., that the mark appears to be otherwise entitled to be approved for publication or issue, or that the application is in condition for a final action.
If the application is in condition for a final action but for the matter necessitating suspension, the notice of suspension must clearly indicate which refusals or requirements will be made final when the application is removed from suspension. When the application is removed from
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suspension, the examining attorney must promptly issue a final action, assuming that no new issues have arisen.
716.02 Circumstances Under Which Action May Be Suspended
Under 37 C.F.R. §2.67, an examining attorney has the discretion to suspend an application “for good and sufficient cause.” The most common reasons for suspension of an application are discussed below.
As a general rule, the USPTO will not suspend an application to give an applicant time to secure a consent agreement.
Any request to stay a deadline for responding to an Office action pending disposition of a petition to the Director should be directed to the Deputy Commissioner for Trademark Examination Policy. If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Deputy Commissioner for Trademark Examination Policy. The examining attorney should not suspend action on an application pending a decision on petition to the Director. See 37 C.F.R. §2.146(g); TMEP §1705.06.
716.02(a) Applicant’s Petition to Cancel Cited Registration
If the examining attorney refuses registration under §2(d) of the Trademark Act in view of the mark in a prior registration, the applicant may file a petition to cancel the registration under 15 U.S.C. §1064 and, within a proper response period, inform the examining attorney that the petition to cancel has been filed. This will constitute a proper response to the §2(d) refusal, and may be done by telephone, if there are no other outstanding issues that require a written response. The examining attorney will then suspend further action until the termination of the cancellation proceeding, if the application is otherwise in condition for approval or final refusal. The applicant should provide the number of the cancellation proceeding, if available; however, if the applicant does not provide the cancellation number, the examining attorney may ascertain it from USPTO records.
The examining attorney should suspend further action only if the applicant states that the cancellation proceeding has already been filed or is being filed concurrently with the response to the Office action.
Although the examining attorney will determine the status of the cancellation proceeding through a routine status check (see TMEP §716.04), the applicant may call or e-mail to advise the examining attorney when the proceeding is terminated, in order to avoid any possible delay in removing the application from suspension.
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See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 or §71 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.
716.02(b) Submission of Copy of Foreign Registration in §44(d) Application
When an applicant who claims the benefit of a prior foreign application under §44(d) of the Act, 15 U.S.C. §1126(d), is required to submit a copy of a foreign registration, the applicant may respond to the requirement by stating that the foreign application is still pending. The examining attorney should then suspend further action pending receipt of a copy of the foreign registration, if the application is otherwise in condition for approval or final refusal. See TMEP §1003.04(a).
If an applicant asserts a claim of priority under §44(d) in addition to another basis, before suspending the application, the examining attorney must inquire whether the applicant wishes to retain §44(e) as a second basis for registration (based on the foreign registration that will issue from the foreign application on which the applicant relied for priority). See TMEP §1003.04(b) for further information.
If the applicant responds that it does want to assert a dual basis for registration and the application is otherwise in condition for publication or final refusal, the examining attorney should suspend further action pending receipt of a copy of the foreign registration.
During the suspension period, the examining attorney will issue an Office action approximately every six months after suspension to inquire as to the status of the foreign application. If the applicant does not respond to the inquiry, the application will be abandoned. See TMEP §716.05.
The examining attorney may suspend the application pending receipt of a copy of a foreign registration only in a §44(d) application. In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). TMEP §1004.01. However, the examining attorney may suspend a §44(e) application pending receipt of proof of renewal of the foreign registration. TMEP §1004.01(a).
716.02(c) Conflicting Marks in Pending Applications
When there are conflicting marks in pending applications, action on the application with the later effective filing date will be suspended (if the application appears to be otherwise in condition for publication or issue or for a final action) until the mark in the conflicting application with the earlier effective filing date is either registered or abandoned. 37 C.F.R. §2.83(c).
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See TMEP §§1208 et seq. for more information about conflicting marks in pending applications.
If the examining attorney has cited an earlier-filed pending application, the applicant may respond by arguing that there is no likelihood of confusion between the marks. If the examining attorney is not persuaded by the applicant’s arguments, the examining attorney should suspend the later-filed application pending disposition of the earlier-filed conflicting application. The suspension notice should include a statement that the applicant’s arguments were not persuasive. It is not necessary to address the merits of the applicant’s arguments prior to the initial suspension. See TMEP §716.03 regarding the applicant’s request to remove an application from suspension.
If the examining attorney discovers that an earlier-filed pending application was abandoned, but that a petition to revive is pending, the examining attorney should suspend the later-filed application pending disposition of the petition to revive. If the petition to revive is granted, the later-filed application will remain suspended until the mark in the earlier-filed application is registered or the earlier-filed application is again abandoned.
When an application is suspended pending the disposition of more than one earlier-filed conflicting application, and one of the conflicting applications matures into registration, the examining attorney will normally not issue a refusal of registration until all the remaining conflicting application(s) are registered or abandoned, in order to avoid issuing piecemeal refusals. However, if deemed appropriate, the examining attorney does have the discretion to issue a refusal of registration under §2(d) in this situation.
716.02(d) Inter Partes or Court Proceeding
When an examining attorney learns that a proceeding relevant to the registrability of an applicant’s mark is pending before the Trademark Trial and Appeal Board or a court, the examining attorney should call the proceeding to the applicant’s attention. If the applicant is not a party to the inter partes or court proceeding, the examining attorney must explain why the proceeding is relevant to the registrability of the applicant’s mark. If the examining attorney believes the proceeding may result in a decision that supports a refusal of registration of the applicant’s mark, the examining attorney must issue the refusal and give the applicant an opportunity to respond before suspending the application.
When an applicant requests suspension because a proceeding relevant to the registrability of the applicant’s mark is pending before the Board or a court, the applicant must submit a copy of the relevant pleadings, the docket number of the proceeding, and a written explanation of why the proceeding is relevant to the registrability of the mark. Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of
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a relevant application or registration. However, when resolution of the court action requires the court to consider questions of USPTO policy or procedure, the examining attorney should not assume that the court would prefer to decide such questions absent the USPTO’s decision in the consideration of an application. In these instances, action on an application should generally not be suspended. It is important to review the relevant pleadings, including the complaint and answer, before determining whether suspension is appropriate. The Office of the Solicitor may be consulted if there is a question as to whether suspension of the application is appropriate.
Before an application is suspended, the applicant must respond to all outstanding issues raised in the examining attorney’s Office action that are not related to the proceeding. The examining attorney should not suspend the application unless all matters not related to the proceeding are resolved or in condition for final action.
See TMEP §716.02(a) regarding suspension pending disposition of an applicant’s petition to cancel a cited registration under 15 U.S.C. §1064, and TMEP §716.03 regarding the applicant’s request to remove an application from suspension.
716.02(e) Suspension Pending Cancellation or Expiration of Cited Registration
When the applicant submits a timely affidavit or declaration of continued use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavit”) and/or an application for renewal under 15 U.S.C. §1059, the USPTO’s automated records are updated to indicate receipt of the document and the action taken on the document. The USPTO’s automated records are updated 30 days after the grace period expires to indicate that a registration is cancelled or expired if:
(1) No §8 affidavit has been filed before the end of the six-month grace period following the sixth year after the date of registration or publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c); or
(2) No §8 affidavit has been filed before the end of the six-month grace period following the end of any ten-year period after the date of registration; or
(3) No §9 renewal application has been filed before the end of the six- month grace period following the expiration of the previous term of registration.
See TMEP §§1602 et seq. regarding the duration of a registration, TMEP §1604.04 regarding the due dates for §8 affidavits, and TMEP §1606.03 regarding the due dates for §9 renewal applications.
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To avoid inadvertent cancellation or expiration of a registration due to a delay in entering a timely filed affidavit or renewal application into the records of the USPTO, the USPTO waits until 30 days after the expiration of the grace period for filing the §8 affidavit or §9 renewal application before updating its records to show that the registration is cancelled or expired.
The examining attorney must confirm the status of the cited registration to ensure that it is still active before issuing any refusal of registration under Trademark Act §2(d) or filing a brief on appeal of a §2(d) refusal.
If the examining attorney is ready to issue a nonfinal refusal of registration under §2(d), and TRAM shows that the registration is still active, the examining attorney must issue the refusal even if the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed and TRAM does not indicate that the registrant has filed a §8 affidavit and/or §9 renewal application. The examining attorney should not suspend the application, but should advise the applicant that the grace period for filing the §8 affidavit or §9 renewal application has passed and that it appears that the registration may be subject to cancellation under §8 and/or expiration under §9.
If the examining attorney is ready to issue a final refusal of registration under §2(d), and the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has not passed, the examining attorney must issue the final refusal. The examining attorney should not suspend action, because the cited registration is still active and the registrant has until the end of the grace period to submit the §8 affidavit and/or a §9 renewal application. Similarly, if the examining attorney is ready to issue a denial of a request for reconsideration of a final refusal of registration under §2(d), and the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has not passed, the examining attorney must issue the denial.
If the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, and the examining attorney is ready to issue a final refusal of registration under §2(d), or a denial of a request for reconsideration of a final refusal of registration under §2(d), the examining attorney should not issue the action until the USPTO’s automated records indicate that the registrant has filed the §8 affidavit or §9 renewal application, and the USPTO has accepted the §8 affidavit or granted renewal. Instead, the examining attorney should suspend action for six months pending final disposition of the cited registration.
If the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, and the examining attorney is ready to write an appeal brief, the examining attorney should request a remand so that the application can be suspended pending final disposition of the cited registration. The Board will issue an order suspending the appeal and
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remanding the case to the examining attorney. If the cited registration is cancelled or expires, the examining attorney should withdraw the §2(d) refusal and notify the applicant that it has been withdrawn. If an appropriate affidavit or renewal application is filed for the cited registration, the examining attorney should notify the Board; the Board will resume proceedings and reset the time for filing the examining attorney’s appeal brief. Similarly, if the cited registration is cancelled or expires, but the §2(d) refusal is only one of the issues on appeal, the examining attorney should notify the Board of the status of the cited registration. The Board will resume proceedings and reset the time for filing a brief. See TBMP §1213 regarding the suspension of an ex parte appeal pending cancellation of the cited registration under §8 or §9 of the Act.
The examining attorney cannot withdraw a refusal of registration under §2(d) until the TRAM system shows that the registration has actually been cancelled or expired.
See TMEP §1611 for information about how a registrant who has not timely filed a §8 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.
716.03 Applicant’s Request to Remove Application from Suspension
If an examining attorney suspends action on an application, and the applicant believes the suspension is improper, the applicant may file a request to remove the application from suspension. The applicant should state the reasons for the belief that the suspension is improper and attach any relevant evidence.
If persuaded by the request, the examining attorney should remove the application from suspension, resume examination of the application, and take appropriate action.
If not persuaded by the request, the examining attorney must issue a new suspension action that addresses the applicant’s arguments and explains the reasons why the request is not granted. The applicant’s recourse is to file a petition to the Director to review the examining attorney’s action continuing the suspension. The Director will reverse the examining attorney’s action only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. See TMEP Chapter 1700 for information about petitions.
716.04 Suspended Docket Checked
A legal instruments examiner (“LIE”) will review each case in the suspended docket at least every six months to determine whether continued suspension is appropriate. If the LIE determines that the application should remain suspended, he or she should perform the appropriate TRAM transaction to
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report the suspension check. If suspension is no longer necessary, the LIE will notify the examining attorney and the examining attorney will take the appropriate action.
716.05 Inquiry by Examining Attorney Regarding Suspended Application
In certain circumstances, if the application has been suspended for six months or more, the examining attorney will issue an Office action inquiring as to the status of the matter on which suspension was based, unless the information is available to the examining attorney in the USPTO’s databases. If the applicant does not respond to the Office action, the application will be abandoned for failure to respond. To expedite processing, the USPTO recommends that the applicant’s response to a suspension inquiry be filed through TEAS, at http://www.uspto.gov/teas/index.html, using the “Response to Suspension Inquiry or Letter of Suspension” form.
For example, if action is suspended pending the receipt of a copy of a foreign registration or proof of renewal of a foreign registration, the examining attorney will inquire every six months during the suspension period as to the status of the foreign application or registration. Similarly, for applications that are suspended pending the outcome of a civil action, the examining attorney will inquire every six months as to the status of the proceeding. If the foreign application or the civil action is still pending, a statement by the applicant to this effect is a proper response.
The examining attorney should not issue any inquiry about the status of a proceeding pending in the USPTO (e.g., an inter partes proceeding).
716.06 Suspension After Final Action
If the examining attorney determines that action on an application should be suspended after issuance of a final refusal, the examining attorney must issue a suspension notice. This may occur, for example, when the applicant files a petition to cancel a cited registration. See TMEP §716.02(a). The examining attorney should not “withdraw the finality” of the refusal in order to suspend; however, in the suspension notice, the examining attorney should inform the applicant that the refusal of registration is continued but that it is not necessary to respond to the final refusal until the application is removed from suspension.
If the application is eventually removed from suspension and the grounds for refusal remain operative, the examining attorney should issue an “Examiner’s Subsequent Final Refusal,” thereby reissuing the final refusal, and the applicant will have six months to respond. It is inappropriate to remove the case from suspension and immediately declare the application abandoned.
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717 Reissuing an Office Action
Sometimes, an Office action must be reissued because the action has been returned as undeliverable and/or because the applicant notifies the USPTO that the applicant did not receive the Office action. In these situations, the USPTO will not extend the deadline for response, unless the Office action was sent to the wrong address due to a USPTO error.
If there was a USPTO error, the USPTO will issue an Office action notifying the applicant that it may view and print the Office action via the TDR portal on the USPTO website at http://www.uspto.gov. The applicant will be given a new response period.
If there was no USPTO error, the USPTO will issue an Office action notifying the applicant that it may view and print the original Office action via the TDR portal on the USPTO website, but that the deadline for applicant’s response will not be extended.
A “USPTO error in sending the Office action to the wrong address” means that the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the date on which the action was issued. The transmittal of a response on letterhead bearing a new address is not a proper notice of change of address. The applicant must specifically instruct the USPTO to change the correspondence address. 37 C.F.R. §2.18. Applicants and attorneys have a duty to maintain a current and accurate correspondence address. This also applies to e-mail addresses, if the applicant has authorized the USPTO to send correspondence by e-mail. See TMEP §§609.02 et seq. regarding changes of address.
See TMEP §717.01 regarding Office actions returned as undeliverable, and TMEP §717.02 regarding non-receipt of Office actions.
717.01 Returned Office Action
If an Office action is returned to the USPTO because the United States Postal Service was not able to deliver it, or because an outgoing e-mail communication was undeliverable, USPTO personnel will review the record to determine whether the correspondence address was entered correctly and/or whether the applicant has filed a notice of change of address. See TMEP §717 regarding the reissuance of an Office action sent to the wrong address due to a USPTO error.
If the USPTO is ultimately unsuccessful in delivering or redelivering the Office action, the returned action and envelope should be scanned into the TICRS database. If no communication from the applicant is received within the period for response, the application will be abandoned.
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If outgoing e-mail is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record. See TMEP §§304 et seq. regarding e-mail.
See TMEP §403 for more information about returned correspondence.
717.02 Non-Receipt of Office Action
If an applicant notifies the USPTO that the applicant did not receive an action, either before or after the expiration of the response period, the examining attorney must check to determine whether the action was sent to the correspondence address of record. See TMEP §§609 et seq.
If the Office action was sent to the correspondence address of record, and there is time remaining in the response period, the examining attorney should direct the applicant to view the full record on the TDR portal on the USPTO website, and advise the applicant that the deadline for response runs from the original issuance date, and that a response must be received in the USPTO before this deadline to avoid abandonment. If the response period has expired, the examining attorney should advise the applicant that the application is abandoned, and that the applicant may file a petition to revive under 37 C.F.R. §2.66. See TMEP §§1714 et seq. regarding petitions to revive. In either situation, the examining attorney should make an appropriate note in the “Notes-to-the-File” section of the record.
If there is evidence in the record that the USPTO sent the Office action to the wrong address due to a USPTO error (see TMEP §717), the USPTO will reissue the action and provide the applicant with a new response period. The examining attorney should first ensure that the correspondence address has been corrected, and then e-mail the internal TM Clerical Support mailbox, stating that the action was sent to the wrong address, and requesting that the action be reissued with a new response period. The deadline for response will run from the new issuance date. If the application had been abandoned, it will be reinstated. See TMEP §1712.01 regarding reinstatement of applications that are abandoned due to USPTO error.
718 Abandonment
An abandoned application is an application for registration that is removed from the USPTO docket of pending applications because of express abandonment or because the applicant failed to take appropriate action within the specified response period.
718.01 Express Abandonment by Applicant or Applicant’s Attorney
37 C.F.R. §2.68. Express abandonment (withdrawal) of application. An
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application may be expressly abandoned by filing in the Patent and Trademark Office a written statement of abandonment or withdrawal of the application signed by the applicant, or the attorney or other person representing the applicant. Except as provided in §2.135, the fact that an application has been expressly abandoned shall not, in any proceeding in the Patent and Trademark Office, affect any rights that the applicant may have in the mark which is the subject of the abandoned application.
37 C.F.R. § 2.135. Abandonment of application or mark. After the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant. The written consent of an adverse party may be signed by the adverse party or by the adverse party’s attorney or other authorized representative.
To expedite processing, the USPTO recommends that letters of express abandonment be filed through TEAS, at http://www.uspto.gov/teas/index.html. Generally, all express abandonments filed via TEAS are processed electronically and the TRAM database is automatically updated to indicate that the application has been expressly abandoned. TRAM generates a notice to the applicant that the application is abandoned. However, in the later stages after the application has been approved for publication, the TEAS system will not automatically process an incoming express abandonment, and the express abandonment must be reviewed manually. The Office is generally unable to withdraw a mark from publication or issue unless the express abandonment is received and processed at least twenty days before the scheduled publication date or registration issuance date.
Paper letters of express abandonment are reviewed by examining attorneys.
All letters of express abandonment must be signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., an officer of a corporation or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.68; see TMEP §§608.01 and 611.02. The same principles that govern the signature of responses to Office actions (see TMEP §§712 and 712.01) apply to the signature of express abandonments. For express abandonments filed on paper, the examining attorney must ensure that the letter of express abandonment is signed by a proper party. If the applicant is represented by a qualified practitioner, the practitioner must personally sign the letter of express abandonment. 37 C.F.R. §11.18(a). If the applicant is pro se, the letter of express abandonment must be personally signed by the individual applicant or someone with legal authority to bind a juristic applicant. See TMEP §§611.06 et seq. for more information about persons who have legal authority to bind various types of juristic applicants, and TMEP §§611.05 et seq. and 712.03 regarding documents signed by unauthorized parties.
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An application cannot be expressly abandoned by examiner’s amendment.
When an applicant files a letter of express abandonment on paper that meets the requirements of 37 C.F.R. §2.68, the examining attorney should perform a TRAM transaction expressly abandoning the application, effective as of the filing date of the letter of express abandonment. TRAM will generate a letter notifying the applicant that the application is abandoned.
If it is unclear whether a document is a letter of abandonment, the examining attorney should contact the applicant to inquire about his or her intention before abandoning the application.
If an applicant files an express abandonment of an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, and wants to withdraw the abandonment to resume prosecution of the application, the applicant must petition the Director under 37 C.F.R. §2.146(a)(3) to request withdrawal of the express abandonment, within two months of the effective date of abandonment. 37 C.F.R. §2.146(d). However, such a petition will be granted only in an extraordinary situation. In re Glaxo Group Ltd., 33 USPQ2d 1535 (Comm’r Pats. 1993).
If the applicant files a written request to abandon the application after the commencement of an opposition proceeding, the request for abandonment must be filed with the Board, and must include the written consent of every adverse party to the proceeding. If the applicant files a request for abandonment without the written consent of every adverse party to the proceeding, judgment will be entered against the applicant. 37 C.F.R. §2.135. If an applicant whose application is the subject of an opposition proceeding files an express abandonment of the application after the commencement of the opposition proceeding, but before receipt of the Board’s notice of the filing of the opposition, the Board will allow the applicant an opportunity to withdraw the abandonment because the abandonment, if not withdrawn, may result in entry of judgment against the applicant in the opposition. TBMP §602.01. It is not necessary to obtain consent of a potential opposer during an extension of time to oppose. TBMP §218.
In a §66(a) application, an applicant may file a letter of express abandonment either with the USPTO or with the IB.
718.02 Failure by Applicant to Take Required Action During Statutory Period
15 U.S.C. §1062(b). If the applicant is found not entitled to registration, the examiner shall advise the applicant thereof and of the reason therefor. The applicant shall have a period of six months in which to reply or amend his application, which shall then be reexamined. This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the
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application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended.
Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a), an application becomes abandoned if the applicant fails to respond, or fails to respond completely, within the six-month statutory response period. See TMEP §§718.03 et seq. regarding incomplete responses. When an applicant is granted additional time to perfect its response under 37 C.F.R. §2.65(b) (TMEP §718.03(b)), but fails to respond or responds late, the date of abandonment is not affected. It remains the day after the date on which the six-month response period ends, since the grant of additional time to perfect a response does not extend the statutory six-month response period.
The examining attorney has no authority to accept a late response. If an applicant files a late response, the examining attorney must immediately send a notice to the applicant stating that the response was untimely; that the application is abandoned; and that the applicant may file a petition to revive under 37 C.F.R. §2.66 if the failure to timely respond was unintentional. See TMEP §§1714 et seq. regarding petitions to revive.
See TMEP §718.02(a) regarding partial abandonment.
718.02(a) Partial Abandonment
General Rule. Trademark Rule 2.65(a), 37 C.F.R. §2.65(a), provides that if a refusal or requirement is expressly limited to certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services. See notice at 68 Fed. Reg. 55748 (Sept. 26, 2003).
Office Action Must State That Refusal Applies Only to Certain Goods, Services or Classes. If the examining attorney issues a refusal or requirement that applies only to certain goods/services/class(es), this must be expressly stated in the Office action. Partial abandonment applies only where the Office action expressly states that a refusal or requirement is limited to only certain goods/services/class(es). Unless the action includes a clear and explicit statement that the refusal or requirement applies to only certain goods/services/class(es), the refusal or requirement will apply to all the goods/services/class(es), and failure to respond to the action will result in abandonment of the entire application.
Incomplete Response to Partial Refusal or Requirement. Partial abandonment may also occur when an applicant fails to file a complete response to a final refusal or final requirement that is expressly limited to only certain goods/services/class(es). If an applicant files an incomplete response to a nonfinal action that is limited to only certain goods/services/class(es), the
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examining attorney should generally issue an action making all outstanding requirements and refusals final rather than partially abandoning the application. See TMEP §§718.03 et seq. regarding incomplete responses. When an examining attorney holds an application abandoned for failure to file a complete response, the applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the holding. See TMEP §1713.01.
Failure to Respond to Partial Refusal or Requirement. When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods/services/class(es), the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/classes to which the refusal or requirement pertained. The examiner’s amendment should clearly set forth the changes that will be made to the identification of goods/services in the application. No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation. TMEP §707.02. If the failure to respond to the partial refusal or requirement was unintentional, the applicant may file a petition to revive the deleted goods/services/classes under 37 C.F.R. §2.66, within two months of the issuance date of the examiner’s amendment. See TMEP §§1714 et seq. regarding petitions to revive.
Failure to Perfect Appeal of Partial Refusal or Requirement. Partial abandonment can also occur when a partial refusal or requirement is upheld on appeal, and the applicant fails to perfect an appeal to, or an appeal is dismissed by, the Court of Appeals for the Federal Circuit or civil court, or when an applicant withdraws or fails to prosecute an appeal of a partial refusal to the Board. In these situations, the examining attorney should issue an examiner’s amendment deleting (abandoning) the goods/services/class(es) to which the appeal pertained. No prior authorization from the applicant or the applicant’s qualified practitioner is needed to issue an examiner’s amendment in this situation.
Use of Headings in Office Actions Encouraged. When issuing a partial refusal or requirement, the examining attorney is encouraged to use the heading “Partial Refusal” or “Partial Requirement,” so the record is clear that the refusal or requirement applies only to certain goods/services/class(es).
Use of Abandonment Advisory in Office Actions. When issuing a partial refusal or requirement, the examining attorney should advise the applicant that if the applicant does not respond to the Office action within the response period, certain goods/services/class(es) will be deleted from the application (abandoned) and the application will proceed forward with only the remaining goods/services/class(es).
Requirements for Amendment of Identification of Goods/Services. See TMEP §1402.13 regarding an examining attorney’s requirement for amendment of an identification of goods/services that includes some terminology that is
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indefinite and some terminology that is acceptable, and the processing of applications in which an applicant fails to respond to such a requirement.
Requirements for Fees to Cover All Classes in a Multiple Class Application. If the fees paid in a multiple-class application are sufficient to cover one class but insufficient to cover all the classes, the examining attorney will require that the applicant submit the additional fees or specify the classes to which the original fee(s) should be applied. If the applicant does not respond to the Office action, the entire application will be abandoned.
718.03 Incomplete Response
37 C.F.R. §2.65. (a) If an applicant fails to respond, or to respond completely, within six
months after the date an action is issued, the application shall be deemed abandoned unless the refusal or requirement is expressly limited to only certain goods and/or services. If the refusal or requirement is expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services. A timely petition to the Director pursuant to §§2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to §2.142, if appropriate, is a response that avoids abandonment of an application.
(b) When action by the applicant filed within the six-month response period is a bona fide attempt to advance the examination of the application and is substantially a complete response to the examiner’s action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of abandonment is considered.
Under 15 U.S.C. §1062(b) and 37 C.F.R. §2.65(a), an applicant must respond completely to each issue raised in the examining attorney’s Office action to avoid abandonment. A response is incomplete if it: (1) does not address one or more of the requirements or refusals made in the Office action; (2) is unsigned; or (3) is signed by an unauthorized person.
Unsigned Responses. If a response is unsigned, the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney should issue a notice of incomplete response, granting the applicant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b). The applicant must submit a properly signed copy of the response, or, if all issues raised are proper subject matter for an examiner’s amendment, the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s previously recognized qualified practitioner may authorize the examining attorney to enter an examiner’s
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amendment. If all issues raised are not proper subject matter for an examiner’s amendment, the applicant may not ratify the unsigned response through an examiner’s amendment. See TMEP §712.02. If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney should hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). Note: A new qualified practitioner may not authorize an examiner’s amendment, because a telephone call from a qualified practitioner does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(c). See TMEP §604.01.
Responses Signed by Unauthorized Persons. If a response is signed by an unauthorized party (e.g., a foreign attorney who is not a member in good standing of the bar of the highest court of a state in the United States or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must obtain a properly signed copy before acting on the merits of the response, regardless of whether the Office action was final or nonfinal. The examining attorney should issue a notice of incomplete response, granting the applicant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b), and send the notice to the correspondence address of record. The applicant must submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant (see TMEP §§611.06 et seq. and 712.01 et seq.), or by a qualified practitioner (see TMEP §§602 et seq.). 37 C.F.R. §2.62(b). Where a response was signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment. See TMEP §§611.05 et seq. and 712.03 for further information. If the applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(b), the examining attorney should hold the application abandoned for failure to file a complete response. See TMEP §718.03(a) regarding holdings of abandonment.
Properly Signed but Incomplete Responses to Nonfinal Actions. When an applicant files an incomplete response to a nonfinal action (i.e., does not address one or more of the requirements or refusals made in the Office action), the examining attorney should not hold the application abandoned. Instead, the examining attorney has the discretion to: (1) issue a final action, if the application is in condition for final action; or (2) issue a notice of incomplete response granting the applicant additional time to complete the response, if the response meets the requirements of 37 C.F.R. §2.65(b) (see TMEP §718.03(b)). If the application is not in condition for final action, and the response does not meet the requirements of 37 C.F.R. §2.65(b), the examining attorney should issue another nonfinal action, explaining why the response was incomplete, and continuing all outstanding refusals and requirements.
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A written disagreement with the examining attorney’s refusal or requirement may be a complete response to a nonfinal action with respect to that refusal or requirement.
Exception - TEAS Responses Consisting Only of a Signature. Occasionally, the USPTO receives a response to an Office action filed through TEAS which consists only of a signature. This is generally due to user error. If an examining attorney receives a TEAS response to a nonfinal action that consists only of a signature, the examining attorney should not issue a notice of incomplete response granting the applicant additional time to complete the response. Instead, the examining attorney must issue a final action, if the application is in condition for a final action. If the application is not in condition for final action (e.g., because an earlier-filed conflicting application has matured into a registration), the examining attorney should issue another nonfinal action, with a six-month response clause, explaining why the response was incomplete, continuing all outstanding refusals and requirements, and addressing any new issues.
Properly Signed but Incomplete Responses to Final Actions. When an applicant files an incomplete response to a final action, the examining attorney has the discretion to: (1) hold the application abandoned for failure to respond completely, if the time for responding to that action has expired (see TMEP §718.03(a)); or (2) issue a notice of incomplete response granting the applicant additional time to perfect the response, if the applicant meets the requirements of 37 C.F.R. §2.65(b) (see TMEP §718.03(b)). See TMEP §715.01 regarding a proper response to a final refusal, and TMEP §§715.03 et seq. regarding the examining attorney’s response to an applicant’s request for reconsideration of a final Office action.
Exception - TEAS Responses Consisting Only of a Signature. If an examining attorney receives a TEAS response to a final action (or a request for reconsideration) that consists only of a signature, the examining attorney should not hold the application abandoned for failure to respond completely. Instead, the examining attorney must issue a notice of incomplete response granting the applicant additional time to complete the response, with an appropriate explanation. If the applicant then fails to submit a complete response (or a request for reconsideration) that resolves all outstanding issues within the time granted under 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. Thus, after affording the applicant one opportunity to perfect, if the applicant fails to do so within the six-month period (or the additional 30 days) provided, the examining attorney must then follow the standard procedure regarding incomplete responses.
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Non-Responsive Communications. An inquiry, a request to extend the response period, or a communication on a matter unrelated to the preceding Office action should be treated as a non-responsive communication, not as an incomplete response. See TMEP §719 for further information.
Failure to Respond to Notice of Incomplete Response. If the examining attorney issues a notice of incomplete response, and the applicant fails to respond or submits an unsatisfactory response to the notice, the examining attorney will abandon the application for incomplete response. See TMEP 718.03(b).
See TMEP §717.02 regarding the procedure for handling an applicant’s claim that the applicant did not receive the Office action.
718.03(a) Holding of Abandonment for Failure to Respond Completely
Generally, the examining attorney should not hold an application abandoned when an applicant files an incomplete response to a nonfinal action. See TMEP §718.03. However, the examining attorney may hold an application abandoned if the applicant files an incomplete response to a final action, and the time for responding to that action has expired. In such cases, the examining attorney should issue an “Abandoned Due to Incomplete Response” action, without a six-month response clause (see TMEP §705.08), stating that the application is abandoned due to an incomplete response, and explaining why. See TMEP §718.03(c) regarding an applicant’s request for reconsideration of an examining attorney’s holding of abandonment for failure to file a complete response, and TMEP §1713.01 regarding a petition to the Director for review of the examining attorney’s holding of abandonment for failure to file a complete response.
If the examining attorney acts on an incomplete response to a final action before the response period has expired, the examining attorney cannot abandon the application. Instead, the examining attorney should issue an “Examiner’s Action Continuing a Final Refusal,” without a six-month response clause, explaining why the response is incomplete, and advising the applicant that to avoid abandonment, a proper response must be filed within the period for response to the previous Office action. If there are less than 30 days remaining in the response period, and the response meets the requirements of 37 C.F.R. §2.65(b), the examining attorney has discretion to issue an “Examiner’s Action Continuing a Final Refusal,” giving the applicant an additional 30 days to perfect the response. See TMEP §718.03(b).
718.03(b) Granting Additional Time to Perfect Response
Under 37 C.F.R. §2.65(b), the examining attorney has discretion to give an applicant additional time to perfect the response if:
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(1) the response was filed within the six-month period;
(2) the response was a bona fide attempt to advance the examination;
(3) the response was a substantially complete response to the examining attorney’s action; and
(4) consideration of some matter or compliance with some requirement was inadvertently omitted.
If the examining attorney decides that the response meets all four criteria, he or she should issue a notice of incomplete response explaining why the response is incomplete and granting the applicant 30 days, or to the end of the response period set forth in the action, whichever is longer, to complete the response. The examining attorney must not include a six-month response clause in the action.
If the examining attorney grants the applicant additional time to complete a response under 37 C.F.R. §2.65(b), the time for filing an appeal to the Trademark Trial and Appeal Board (or a petition to the Director under 37 C.F.R. §2.63(b)) is not extended. The applicant must file a notice of appeal (or petition) within six months of the issuance date of the final action. 15 U.S.C. §1062(b); 37 C.F.R. §§2.64(b) and 2.142(a).
If the applicant fails to complete the response within the time granted pursuant to 37 C.F.R. §2.65(b), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03(a). In this situation, the applicant cannot file a petition to revive due to unintentional delay, pursuant to 37 C.F.R. §2.66. The applicant’s recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney’s holding of abandonment. The Director will reverse the examining attorney’s action on petition only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. See TMEP §1713.01.
If an applicant does not receive an action granting additional time to complete a response, or if the applicant is unable to respond to the action due to some other extraordinary circumstance, the applicant may file a petition to the Director to exercise supervisory authority under 37 C.F.R. §2.146. If the petition is granted, the USPTO will send a notice to the applicant directing the applicant to view the action on the TDR portal on the USPTO website at http://portal.uspto.gov/external/portal/tow. The applicant will receive a new 30-day period in which to perfect the response. This does not extend the time for filing a notice of appeal to the Board (or petition to the Director under 37 C.F.R. §2.63). 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
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718.03(c) Reconsideration of Holding of Abandonment
If an examining attorney holds an application abandoned for failure to file a complete response, the applicant may file a request for reconsideration of the examining attorney’s holding, arguing that the response was complete. While the examining attorney has no authority to act on an application when no response was filed within the statutory response period, the examining attorney does have the authority to reverse his or her holding as to whether or not a response received during the statutory period was a complete response. If the examining attorney reverses his or her holding of abandonment for failure to file a complete response, the TRAM System must be updated to withdraw the abandonment and show the correct status of the application.
The applicant may also contact the managing attorney or senior attorney and request review of the examining attorney’s action. If the managing attorney or senior attorney believes that the holding of abandonment was improper, he or she will direct the examining attorney to reverse the holding of abandonment.
If the examining attorney does not reverse the holding of abandonment, the applicant may petition the Director to reverse the holding. A petition to reverse a holding of abandonment is not the same as a petition to revive an abandoned application. The Director will reverse the examining attorney’s holding of abandonment only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. The “unintentional delay” standard does not apply. See TMEP §1713.01.
718.04 Failure to File Statement of Use
Under 15 U.S.C. §1051(d)(4), an application under §1(b) of the Act is abandoned if the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use. 37 C.F.R. §§2.65(c) and 2.88(h); TMEP §§1108.01 and 1109.04.
The ITU/Divisional Unit will abandon the application if the applicant fails to file a statement of use or request for an extension of time to file a statement of use within six months of the issuance date of the notice of allowance, or within a previously granted extension period. The USPTO will send a computer-generated notice of abandonment to the applicant.
If the failure to timely file the statement of use or extension request was unintentional, the applicant may file a petition to revive under 15 U.S.C. §1051(d)(4) and 37 C.F.R. §2.66. See TMEP §§1714 et seq.
718.05 Failure to Perfect Appeal
An application may become abandoned because of withdrawal of, or failure to prosecute, an appeal to the Trademark Trial and Appeal Board. 15 U.S.C. §1062(b); TBMP §1203.02(a); TMEP §1501.
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An application may also become abandoned because of failure to perfect an appeal, or dismissal of an appeal, to the Court of Appeals for the Federal Circuit or civil court.
See TMEP §718.02(a) regarding partial abandonment due to failure to perfect an appeal.
718.06 Notice of Abandonment for Failure to Respond
If no response is received by the USPTO within six months of the issuance date of an Office action, the application is sent to the examining attorney to be abandoned or partially abandoned, as appropriate. The examining attorney must check the record to ensure that there is no response and that the Office action was sent to the correspondence address of record. See TMEP §§717 et seq. regarding reissuing an Office action that was sent to the wrong address due to a USPTO error. The examining attorney must also check to see whether the Office action contained a partial refusal or requirement. See TMEP §718.02(a) regarding partial abandonment.
An application is considered to be abandoned as of the day after the date on which a response was due, even though the examining attorney performs the TRAM transaction that reports the abandonment at a later date. The USPTO sends a computer-generated notice of abandonment to the correspondence address listed in the application.
Applications that are abandoned after ex parte appeals or inter partes proceedings are considered abandoned as of the date of the action by the Board that caused the application to abandon (e.g., affirming the examining attorney’s refusal or sustaining an opposition). However, the TRAM transaction reporting the abandonment is not performed until a month after expiration of the period for appeal from the Board’s decision.
718.07 Revival or Reinstatement of Abandoned Application - New Search Required
When an abandoned application is revived or reinstated, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the search shows that the same examining attorney handled a later-filed conflicting application that has been approved for publication, the examining attorney should request jurisdiction (TMEP §1504.04(a)) and suspend the later-filed application pending disposition of the earlier-filed (revived) application. 37 C.F.R. §2.83(c); TMEP §1208.02(c).
If the new search shows that the same examining attorney handled a later- filed conflicting application that has been approved for registration, the examining attorney should withdraw the application from issue (if possible) and suspend it. However, if a later-filed conflicting application is already registered, the USPTO is without authority to cancel the registration. The
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examining attorney must refuse registration of the earlier-filed (revived) application under 15 U.S.C. §1052(d). In this situation, an applicant may file a petition to cancel the registration under Section 14 of the Trademark Act, 15 U.S.C. §1064.
If the later-filed conflicting application is being handled by a different examining attorney, the examining attorney handling the earlier-filed (revived) application should e-mail the other examining attorney to notify him or her of the revival or reinstatement. The examining attorney handling the later-filed application will follow the procedures set forth above.
See TMEP §§1714 et seq. regarding petitions to revive, TMEP §1712.01 regarding reinstatement of applications abandoned due to USPTO error, and TMEP §1713.01 regarding petitions to reverse an examining attorney’s holding of abandonment.
719 Non-Responsive Communications
An inquiry, a request to extend the response period, or a communication on a matter unrelated to the outstanding Office action should be treated as a “non- responsive communication,” not as an incomplete response to an outstanding Office action. If the applicant files a non-responsive communication while an Office action is outstanding, the examining attorney should send the applicant a letter acknowledging receipt of the communication, noting that the communication is non-responsive, and advising the applicant that a response to the outstanding Office action must be received within six months of the issuance date of the outstanding Office action to avoid abandonment. The examining attorney should perform the TRAM transaction indicating that an acknowledgment of receipt of a non-responsive communication has been sent to the applicant. If no response to the Office action is received within six months of the issuance date, the application must be abandoned for failure to respond.
720 Fraud Upon the USPTO
If an examining attorney suspects the possibility of fraud upon the USPTO in the ex parte examination of a trademark application, the following procedure must be followed.
(1) The examining attorney must bring the matter to the attention of the managing attorney.
(2) If the managing attorney concurs with the examining attorney as to the possibility of fraud upon the USPTO, the managing attorney will bring the matter to the attention of the Administrator for Trademark Policy and Procedure.
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(3) If the Administrator believes that the matter warrants further action, he or she will make an appropriate recommendation to the Commissioner for Trademarks.
Under no circumstances should any USPTO communication pertaining to fraud be made, either orally or in writing, by anyone in the Trademark Examining Operation, except as set forth in paragraphs 1 and 2 above.
These issues may ultimately be referred to the Office of Enrollment and Discipline.
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Chapter 800 Application Requirements
801 Types of Applications
801.01 Single or Combined Application
801.01(a) Single (Single-Class) Application
801.01(b) Combined (Multiple-Class) Application
801.02 Principal Register or Supplemental Register
801.02(a) Act of 1946, Principal Register
801.02(b) Act of 1946, Supplemental Register
802 Application Form
803 Applicant
803.01 Who May Apply
803.02 Name of Applicant
803.02(a) Individual
803.02(b) Partnership, Joint Venture, or Other “Firm”
803.02(c) Corporation and Association
803.03 Legal Entity of Applicant
803.03(a) Individual or Sole Proprietorship
803.03(b) Partnership, Joint Venture, or Other “Firm”
803.03(c) Corporation, Association, Organization, and Company
803.03(d) Joint Applicants
803.03(e) Trusts, Conservatorships, and Estates
803.03(e)(i) Business Trusts
803.03(f) Governmental Bodies and Universities
803.03(g) Banking Institutions
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803.03(h) Limited Liability Companies
803.03(i) Common Terms Designating Entity of Foreign Applicants
803.03(j) Federally Recognized Indian Tribe
803.03(k) Limited Liability Partnerships
803.04 Citizenship of Applicant
803.05 Address of Applicant
803.06 Applicant May Not Be Changed
804 Verification and Signature
804.01 Form and Wording of Verification in §1 or §44 Application
804.01(a) Verification with Oath
804.01(a)(i) Verification Made in Foreign Country
804.01(b) Declaration in Lieu of Oath
804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application
804.03 Time Between Execution and Filing of Documents - §1 or §44 Application
804.04 Persons Authorized to Sign Verification or Declaration
804.05 Verification of §66(a) Application
805 Identification and Classification of Goods and Services
806 Filing Basis
806.01 Requirements for Establishing a Basis
806.01(a) Use in Commerce - §1(a)
806.01(b) Intent-to-Use - §1(b)
806.01(c) Foreign Priority - §44(d)
806.01(d) Foreign Registration — §44(e)
806.01(e) Extension of Protection of International Registration - §66(a)
806.02 Multiple Bases
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806.02(a) Procedure for Asserting More Than One Basis
806.02(b) Applicant May File Under Both §1(a) and §1(b) in the Same Application
806.02(c) Examination of Specimens of Use in a Multiple-Basis Application
806.02(d) Abandonment of Multiple-Basis Applications
806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application is Based on Both §44 and §1(a)
806.02(f) Section 44(d) Combined With Other Bases
806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application
806.03 Amendments to Add or Substitute a Basis
806.03(a) When Basis Can be Changed
806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period
806.03(c) Amendment From §1(a) to §1(b)
806.03(d) Amendment From §44 to §1(b)
806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a)
806.03(f) Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application
806.03(g) Amendment From §1(b) to §44
806.03(h) Effect of Substitution of Basis on Application Filing Date
806.03(i) Verification of Amendment Required
806.03(j) Petition to Amend Basis After Publication - §1 or §44 Application
806.03(j)(i) Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance
806.03(j)(ii) Amending the Basis of a §1(b) Application Between Issuance of Notice of Allowance and Filing of Statement of Use
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806.03(j)(iii) Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration
806.03(k) Basis Cannot be Changed in §66(a) Application
806.03(l) §66(a) Basis Cannot be Added to §1 or §44 Application
806.04 Deleting a Basis
806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance
806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis
806.05 Review of Basis Prior to Publication or Issue
807 Drawing
807.01 Drawing Must Show Only One Mark
807.02 Drawing Must Be Limited to Mark
807.03 Standard Character Drawings
807.03(a) Requirements for Standard Character Drawings
807.03(b) List of Standard Characters
807.03(c) Drawings Containing Both a Standard Character Claim and Designs or Other Elements
807.03(d) Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration
807.03(e) Standard Character Drawing and Specimen of Use
807.03(f) Standard Character Drawing and Foreign Registration
807.03(g) Drawings in “Typed” Format With No Standard Character Claim
807.03(h) Drawings Where the Format Is Unclear
807.03(i) Typed Drawings
807.04 Special Form Drawings
807.04(a) Characteristics of Special Form Drawings
807.04(b) When Special Form Drawing is Required
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807.05 Electronically Submitted Drawings
807.05(a) Standard Character Drawings Submitted Electronically
807.05(a)(i) Long Marks in Standard Character Drawings
807.05(b) Special Form Drawings Submitted Electronically
807.05(c) Requirements for Digitized Images
807.06 Paper Drawings
807.06(a) Type of Paper and Size of Mark
807.06(b) Long Marks in Standard Character Drawings
807.06(c) Separate Drawing Page Preferred
807.07 Color in the Mark
807.07(a) Requirements for Color Drawings
807.07(a)(i) Color Must Be Claimed as a Feature of the Mark
807.07(a)(ii) Applicant Must Specify the Location of the Colors Claimed
807.07(b) Color Drawings Filed Without a Color Claim
807.07(c) Color Drawings Filed With an Incorrect Color Claim
807.07(d) Color Drawings that Contain Black, White, or Gray
807.07(d)(i) Applications Under §1
807.07(d)(ii) Applications Under §44
807.07(d)(iii) Applications Under §66(a)
807.07(e) Black-and-White Drawings and Color Claims
807.07(f) Black-and-White Drawings that Contain Gray or Black- and-White Drawings with a Mark Description that Refers to Black, White, or Gray
807.07(f)(i) TEAS, TEAS Plus, and §66(a) Applications
807.07(f)(ii) Applications Filed on Paper
807.07(g) Drawings in Applications Filed Before November 2, 2003
807.08 Broken Lines to Show Placement
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807.09 “Drawing” of Sound, Scent, or Non-Visual Mark
807.10 Three Dimensional Marks
807.11 Marks With Motion
807.12 Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration
807.12(a) Applications Under §1 of the Trademark Act
807.12(a)(i) Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen
807.12(a)(ii) Punctuation on the Drawing but not on the Specimen
807.12(a)(iii) Punctuation on the Specimen but not on the Drawing
807.12(b) Applications Under §44 of the Trademark Act
807.12(c) Applications Under §66(a) of the Trademark Act
807.12(d) Mutilation or Incomplete Representation of Mark
807.12(e) Compound Word Marks and Telescoped Marks
807.13 Amendment of Mark
807.13(a) Amendment of Mark in Applications Under §§1 and 44
807.13(b) Mark in §66(a) Application Cannot be Amended
807.14 Material Alteration of Mark
807.14(a) Removal or Deletion of Matter from Drawing
807.14(b) Addition or Deletion of Previously Registered Matter
807.14(c) Addition or Deletion of Punctuation
807.14(d) Amendments to Correct “Internal Inconsistencies”
807.14(e) Amendments to Color Features of Marks
807.14(e)(i) Black-and-White Drawings
807.14(e)(ii) Marks that Include Color and Other Elements
807.14(e)(iii) Color Marks
807.14(f) Material Alteration: Case References
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807.15 Substitute Drawings
807.16 Amendment of Drawings by the USPTO
807.17 Procedures for Processing Unacceptable Amendments to Drawings
807.18 Mark Drawing Code
808 Description of Mark
808.01 Guidelines for Requiring Description
808.01(a) Meaning of Term in Mark
808.01(b) Lining and Stippling Statements for Drawings
808.02 Description Must Be Accurate and Concise
808.03 Examination Procedure for Descriptions
808.03(a) Accurate and Complete Descriptions
808.03(b) No Description in Application
808.03(c) Accurate But Incomplete Description in Application or Amendment
808.03(c)(i) Accurate But Incomplete Descriptions in Cases Where a Description is Needed to Clarify the Mark and Should be Printed
808.03(c)(ii) Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed
808.03(d) Inaccurate Description in Application or Amendment
808.03(e) Amending Descriptions
808.03(f) Updating Design Coding
809 Translation and Transliteration of Non-English Wording in Mark
809.01 Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration
809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language
809.01(b) Limited Exceptions to Rules for Translations
809.01(b)(i) Foreign Terms Appearing in English Dictionary
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809.01(b)(ii) Foreign Articles or Prepositions Combined with English Terms
809.01(b)(iii) Words From Dead or Obscure Languages
809.02 Equivalency in Translation
809.03 Printing of Translations and Transliterations
810 Filing Fee
810.01 Collection of Fees for Multiple Classes
810.02 Refunds
811 Designation of Domestic Representative
812 Identification of Prior Registrations of Applicant
812.01 Proving Ownership of Prior Registrations
813 Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark
813.01 Statement Printed in Official Gazette and on Registration Certificate
813.01(a) Name or Likeness is That of a Living Individual
813.01(b) Name or Likeness is Not That of a Living Individual
813.01(c) Updating TRAM Database
814 Requesting Additional Information
815 Application Filed on Supplemental Register
815.01 Marks Eligible for Principal Register Not Registrable on Supplemental Register
815.02 Elements Required
815.03 Filing on Supplemental Register is Not an Admission That the Mark Has Not Acquired Distinctiveness
815.04 Basis for Refusal of Registration of Matter That is Incapable
816 Amending Application to Supplemental Register
816.01 How to Amend
816.02 Effective Filing Date
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816.03 Amendment to Different Register
816.04 Amendment After Refusal
816.05 Amendment After Decision on Appeal
817 Preparation of Application for Publication or Registration
818 Application Checklist
819 TEAS Plus
819.01 TEAS Plus Filing Requirements
819.01(a) Type of Mark
819.01(b) Applicant’s Name and Address
819.01(c) Applicant’s Legal Entity and Citizenship
819.01(d) Name and Address for Paper Correspondence
819.01(e) E-mail Address and Authorization for the USPTO to Send Correspondence By E-Mail
819.01(f) Basis or Bases for Filing
819.01(f)(i) Section 1(a) - Use in Commerce
819.01(f)(ii) Section 1(b) - Intent to Use
819.01(f)(iii) Section 44(e) - Foreign Registration
819.01(f)(iv) Section 44(d)
819.01(g) Identification and Classification of Goods/Services
819.01(h) Filing Fee
819.01(i) Drawing
819.01(j) Color Claim
819.01(k) Description of the Mark
819.01(l) Verification
819.01(m) Translation and/or Transliteration
819.01(n) Multiple-Class Applications
819.01(o) Consent to Registration of Name or Portrait
819.01(p) Prior Registration of the Same Mark
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819.01(q) Concurrent Use Applications
819.02 Additional Requirements for a TEAS Plus Application
819.02(a) Receipt of Communications by E-Mail
819.02(b) Additional Documents That Must be Filed Through TEAS
819.03 Adding a Class During Examination
819.04 Procedures for Payment of TEAS Plus Processing Fee Per Class
801 Types of Applications
The wording “type of application” refers to the kind of application by which registration is requested, e.g., whether the application is a single-class application or a multiple-class application, or whether registration is sought on the Principal Register or on the Supplemental Register.
See TMEP Chapter 700 regarding the examination of applications in general, and Chapter 1300 regarding the examination of applications for service marks, collective marks, and certification marks.
801.01 Single or Combined Application
801.01(a) Single (Single-Class) Application
A single-class application limits the goods or services for which registration is sought to goods or services in only one of the classes in the classification schedules. The application may recite more than one item, if the items recited are all classified in one class. See TMEP §§1401 et seq. for additional information about classification.
801.01(b) Combined (Multiple-Class) Application
A combined or multiple-class application is an application to register the mark for items classified in two or more classes. The applicant must pay a filing fee for each class. The class numbers and corresponding goods or services must be listed separately, from the lowest to the highest number.
See TMEP §§1403 et seq. for further information about combined applications.
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801.02 Principal Register or Supplemental Register
801.02(a) Act of 1946, Principal Register
The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register (15 U.S.C. §§1051 through 1072). When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Act. The advantages of owning a registration on the Principal Register include the following:
• Constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
• A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (15 U.S.C. §§1057(b) and 1115(a));
• A date of constructive use of the mark as of the filing date of the application (15 U.S.C. §1057(c); TMEP §201.02);
• The ability to bring an action concerning the mark in federal court (15 U.S.C. §1121);
• The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods (15 U.S.C. §1124);
• The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” subject to certain statutory defenses (15 U.S.C. §§1065 and 1115(b)); and
• The use of the United States registration as a basis to obtain registration in foreign countries.
If the applicant seeks registration on the Principal Register, the application should state that registration is requested on the Principal Register. However, if the applicant does not specify a register, the United States Patent and Trademark Office (“USPTO”) will presume that the applicant seeks registration on the Principal Register.
801.02(b) Act of 1946, Supplemental Register
Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register. Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091 through 1096, provide for registration on
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the Supplemental Register. This is a continuation of the register provided for in the Act of March 19, 1920. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946. The excluded sections are listed in §26 of the Act, 15 U.S.C. §1094.
If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the USPTO will presume that the applicant seeks registration on the Principal Register.
See TMEP §§815 and 816 et seq. regarding examination procedure relating to the Supplemental Register.
An applicant may not seek registration on both the Principal and the Supplemental Register in the same application. If an applicant requests registration on both the Principal and the Supplemental Register in the same application, the examining attorney must require that the applicant amend to specify only one register, or file a request to divide under 37 C.F.R. §2.87.
A mark in an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), based on a request for extension of protection of an international registration to the United States, cannot be registered on the Supplemental Register. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
802 Application Form
Applications under §66(a) of the Trademark Act are sent to the USPTO electronically by the International Bureau of the World Intellectual Property Organization (“IB”).
The USPTO prefers that applicants file applications under §1 or §44 of the Trademark Act through the Trademark Electronic Application System (“TEAS”), available at http://www.uspto.gov (using either a TEAS or TEAS Plus application form), or on the USPTO’s pre-printed scannable form. The applicant may obtain the USPTO’s pre-printed scannable form by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.
The amount of the trademark application filing fee varies, depending upon whether the application (or the amendment adding classes to an existing application) is filed through TEAS or on paper. See TMEP §810. An applicant has three choices. The applicant can file:
• A paper application at the higher fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i);
• A regular TEAS application at a lower fee per class, set forth in 37 C.F.R. §2.6(a)(1)(ii); or
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• A TEAS Plus application (see TMEP §§819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iii).
The current fee schedule is available on the USPTO website at http://www.uspto.gov.
Note: Applications that are downloaded from TEAS or TEAS Plus, printed, and mailed to the USPTO are considered paper applications and are subject to the paper application filing fee.
Trademark applications may not be filed by facsimile (“fax”) transmission. 37 C.F.R. §2.195(d)(1); TMEP §306.01.
The USPTO strongly discourages self-created forms, but will accept them if they meet the requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) (see TMEP §202). If a self-created form is used, the application should be on letter size (i.e., 8½ inches (21.6 cm.) by 11 inches (27.9 cm.)) paper, typewritten, double spaced, with margins of at least 1½ inches (3.8 cm.) at the left and top of the pages. The application should be written on only one side of the paper.
The application must be in the English language. 37 C.F.R. §§2.21(a) and 2.32(a).
The USPTO does not generally require the submission of original documents, so the applicant may file a copy of a signed application. 37 C.F.R. §2.193(c)(1)(ii); TMEP §302.01.
See TMEP §§819 et seq. regarding TEAS Plus applications.
803 Applicant
803.01 Who May Apply
An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application under 15 U.S.C. §1051(b), by the person who is entitled to use the mark in commerce. Normally the owner of a mark is the person who applies the mark to goods that he or she produces, or uses the mark in the sale or advertising of services that he or she performs. See TMEP §§1201 et seq. regarding ownership, and TMEP §§501 and 502 et seq. regarding assignment of marks and changes of ownership.
If an applicant is not the owner of (or entitled to use) the mark at the time the application is filed, the application is void and cannot be amended to specify the correct party as the applicant, because the applicant did not have a right that could be assigned. 37 C.F.R. §2.71(d). See TMEP §803.06 and cases cited therein.
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Applicants may be natural persons or juristic persons. Juristic persons include corporations, partnerships, joint ventures, unions, associations, and other organizations capable of suing and being sued in a court of law. 15 U.S.C. §1127. An operating division, or the like, that is merely an organizational unit of a company and not a legal entity that can sue and be sued, may not own or apply to register a mark. See TMEP §1201.02(d).
Nations, states, municipalities, and other related types of bodies operating with governmental authorization may apply to register marks that they own. See National Aeronautics & Space Admin. v. Record Chemical Co. Inc., 185 USPQ 563 (TTAB 1975); In re U.S. Department of the Interior, 142 USPQ 506 (TTAB 1964).
The question of whether an application can be filed in the name of a minor depends on state law. If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor. Otherwise, the application should be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is:
John Smith, United States citizen, (parent/legal guardian) of Mary Smith.
If the record indicates that the named applicant is a minor, the examining attorney must inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled. If the minor cannot enter into binding legal obligations, the examining attorney must require correction of the applicant-identifying information in the manner shown above, if necessary.
If a minor comes of age during the prosecution of an application in which his or her parent/legal guardian is identified as the applicant, the application may be amended to change the applicant’s name. No assignment is required in such cases. However, the minor must also state his or her citizenship. See also TMEP Chapter 500 regarding assignments, name changes, and issuance of a registration in the name of an assignee or in an applicant’s new name.
See also TMEP §§1002 et seq. regarding eligibility to file an application under §44 of the Trademark Act, 15 U.S.C. §1126, and TMEP §1901 regarding eligibility to file a request for an extension of protection of an international registration to the United States under §66(a) of the Act, 15 U.S.C. §1141f(a).
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803.02 Name of Applicant
The name of the applicant should be set out in its correct legal form. For example, a corporate applicant should be identified by the name set forth in the articles of incorporation.
If the applicant’s legal name includes the assumed name under which it does business, an assumed name designation should be used to connect the actual name with the assumed name. Assumed name designations include “d.b.a.” (doing business as), “a.k.a.” (also known as), and “t.a.” (trading as). The particular assumed name designation used is optional. Only the abbreviation of the assumed name designation will be printed in the Official Gazette and on the certificate of registration. If an applicant gives the assumed name designation in full, the abbreviation will automatically be used for printing purposes.
803.02(a) Individual
If the applicant is an individual person who is doing business under an assumed business name, the individual’s name should be set forth, followed by an assumed name designation (e.g., d.b.a., a.k.a., or t.a.) and by the assumed business name.
If an individual indicates that he or she is doing business under a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.), the USPTO will presume that relevant state law permits such a practice. The assumed name will be printed on the registration certificate.
If the application reflects an inconsistency between the owner name and the entity type as to whether a corporation or an individual owns the mark, the examining attorney must require the applicant to clarify the record regarding ownership (e.g., if the name of an individual appears as the applicant, but the entity is listed as a corporation, or if a business is named as the applicant but the entity is listed as an individual). However, in view of the broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04), the fact that the title of the person signing an application refers to a different entity is not in itself considered an inconsistency between owner and entity type that would warrant an inquiry as to who owns the mark.
See TMEP §803.03(a) for information about identifying an individual applicant’s entity, and TMEP §§803.06 and 1201.02(c) regarding USPTO policies regarding correction of an applicant’s name and entity.
803.02(b) Partnership, Joint Venture, or Other “Firm”
If a partnership, joint venture, or other “firm” has been organized under a particular business name, the application should be filed in that name. If the
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partnership or firm has not been organized under a business name, the names of the members should be listed as though they composed a company name. If a partnership or joint venture is doing business under an assumed name, this may be indicated, using an assumed name designation. See TMEP §803.02 regarding assumed name designations, and TMEP §803.03(b) for information about identifying a partnership or joint venture as a legal entity.
803.02(c) Corporation and Association
If the applicant is a corporation, the official corporate name must be set out as the applicant’s name. Listing an assumed business name is optional. The name of a division of the applicant should not be included in or along with the applicant’s name. If the applicant wishes to indicate in the application that actual use of the mark is being made by a division of the applicant, the applicant may provide a statement that “the applicant, through its division [specify name of division], is using the mark in commerce.” This statement should not appear in conjunction with the listing of the applicant’s name, and will not be printed on the registration certificate.
In unusual situations, one corporation may also be doing business under another name, even another corporate name. This sometimes happens, for example, when one corporation buys out another. In the unusual situation where a corporate applicant provides a DBA (“doing business as”) that includes a corporate designation (e.g., Corporation, Corp., Incorporated, Inc., Limited, Ltd.) in addition to its official corporate name, the USPTO will presume that relevant state law permits such a practice. The DBA will be printed on the registration certificate.
Associations should be identified by the full, official name of the association.
See TMEP §803.03(c) for information about identifying a corporation or association as a legal entity.
803.03 Legal Entity of Applicant
Immediately after the applicant’s name, the application should set out the applicant’s form of business, or legal entity, such as partnership, joint venture, corporation, or association. The words “company” and “firm” are indefinite for purposes of designating a domestic applicant’s legal entity, because those words do not identify a particular type of legal entity in the United States. (However, the word “company” is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See TMEP §803.03(i).)
Whether the USPTO will accept the identification of an applicant’s entity depends on whether that entity is recognized by the applicant’s state of domicile.
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If other material in the record indicates that the applicant is a different type of entity than is set out in the written application, the examining attorney must ask for an explanation, and require amendment if necessary. However, in view of the broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §804.04), no explanation is usually required merely because the person signing a declaration has a title that refers to a different type of entity. See TMEP §§803.06 and 1201.02(c) regarding USPTO policies governing correction of an applicant’s name.
803.03(a) Individual or Sole Proprietorship
Individual. For an individual, it is not necessary to specify “individual,” but it is acceptable to do so. The applicant may state that he or she is doing business under a specified assumed company name. TMEP §803.02.
In an application for international registration, if the applicant is a natural person, he or she must indicate his or her name and may include the country of which he or she is a national. Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”), Rule 9(4)(b)(i) (2008). The international application does not require this information, but when the information is included, the IB will forward the nationality of the applicant to the USPTO. In a §66(a) application, if the “Nationality of Applicant” field appears in the Trademark Image Capture and Retrieval System (“TICRS”) (which is available to the public through the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov), this means that the applicant is an individual rather than a juristic entity, and that applicant’s citizenship is the country corresponding to the two letter code set forth in this field. However, a separate statement that applicant is an individual will not appear in TICRS, and the “Legal Nature” and Legal Nature: Place Incorporated” fields will state “Not Provided.”
If the “Nationality of Applicant” field appears in TICRS, the examining attorney may enter the relevant information into TRAM, or ask the LIE to enter it. No inquiry as to the applicant’s entity or citizenship is necessary. If the “Nationality of Applicant” field does not appear in TICRS, the examining attorney must require that the applicant indicate its entity and citizenship. Examining attorneys cannot rely on the “Entitlement Nationality,” “Entitlement Establishment,” or “Entitlement Domiciled” fields for the applicant’s citizenship because these fields merely indicate the basis for the applicant’s entitlement to file an application through the Madrid system, not the national citizenship of the individual applicant.
Sole Proprietorship. An applicant may identify itself as a sole proprietorship. If an applicant does so, the applicant must also indicate the state where the
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sole proprietorship is organized, in addition to the name and national citizenship of the sole proprietor.
If the application specifically identifies the applicant as a sole proprietorship and indicates the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor, the USPTO will accept the characterization of the entity. On the other hand, if the application refers to a sole proprietorship but lacks some of the necessary information or is ambiguous as to whether the applicant should be identified as a sole proprietorship or as an individual, the examining attorney must require appropriate clarification of the entity type.
A sole proprietorship generally means a business which has only one owner. Therefore, if an application identifies two persons or two different entities as a “sole proprietorship,” this is an ambiguity that requires clarification of the entity type.
803.03(b) Partnership, Joint Venture, or Other “Firm”
After setting forth the applicant’s name and entity, the application of a partnership or a joint venture should specify the state or country under whose laws the partnership or joint venture is organized. 37 C.F.R. §2.32(a)(3)(ii). In addition, domestic partnerships must set forth the names, legal entities, and national citizenship (for individuals), or state or country of organization (for businesses), of all general partners or active members that compose the partnership or joint venture. 37 C.F.R. §§2.32(a)(3)(iii) and (iv). These requirements apply to both general and limited partnerships. They also apply to a partnership that is a general partner in a larger partnership. Limited partners or silent or inactive partners need not be listed. The following format should be used:
“_____________________, a (partnership, joint venture) organized under the laws of _______________, composed of ______________ (name, entity, and citizenship or state of organization).”
In the case of a domestic partnership consisting of ten or more general partners, if the partnership agreement provides for the continuing existence of the partnership in the event of the addition or departure of specific partners, the USPTO will require that the applicant provide the names, legal entities, and national citizenship (or the state or country of organization) of the principal partners only. If there are more than ten principal partners, the applicant need list only the first ten principal partners. If there is no class of principal partners, the applicant may list any ten general partners.
Upon the death or dissolution of a partner or other change in the members that compose a domestic partnership, that legal entity ceases to exist and any subsequent arrangement constitutes a new entity, unless the partnership
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agreement provides for continuation of the partnership in the event of changes in partners. This same principle also applies to joint ventures. See TMEP Chapter 500 regarding changes of ownership.
The rule requiring names and citizenships of general partners seeks to provide relevant information in the record, given the legal effects of partnership status in the United States. Because the USPTO does not track the varying legal effects of partnership status in foreign countries, and the relevance of the additional information has not been established, the same requirement for additional information does not apply to foreign partnerships.
The term “firm” is not an acceptable designation of the applicant’s entity, because it does not have a universally understood meaning. The examining attorney must require a definite term such as “partnership” or “joint venture” when it is necessary to identify these entities.
See TMEP §803.03(k) regarding limited liability partnerships.
803.03(c) Corporation, Association, Organization, and Company
Corporation. In the United States, the term “corporation” is proper for juristic entities incorporated under the laws of the various states or under special federal statutes. In addition to specifying that an applicant is a corporation, the application must specify the applicant’s state (for United States corporations) or country of incorporation (for foreign corporations). It is customary to follow the applicant’s name by the words “a corporation of the state (or country) of . . . .” This also applies to a nonprofit or tax-exempt corporation. If no state or country of incorporation, or the incorrect state or country of incorporation, is given for an applicant corporation, this defect may be corrected by amendment. The amendment does not have to be verified. If a corporation exists by virtue of a specific state or federal statute, this should be stated.
Association. “Association” and “nonprofit association” are acceptable terms to identify juristic entities organized under state laws or federal statutes that govern this form of organization. The application must specify the United States state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated. This also applies to a nonprofit or tax-exempt association. If an association exists by virtue of a specific state or federal statute, this should be stated. Verification is not required.
Company. The term “company” is indefinite for describing a United States entity because it does not identify a particular juristic entity, but is acceptable to identify entities organized under the laws of foreign countries that are equivalent or analogous to United States corporations or associations. See TMEP §803.03(i) and TMEP Appendix D regarding foreign companies.
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Organization. “Organization” and “nonprofit organization” are indefinite to identify juristic entities. If an applicant’s entity type is identified as a “nonprofit organization,” the examining attorney must require amendment of the entity, or proof that such a legal entity exists under the appropriate state statute or foreign country law.
803.03(d) Joint Applicants
An application may be filed in the names of joint applicants or joint owners. Ex parte Pacific Intermountain Express Co., 111 USPQ 187 (Comm’r Pats. 1956); Ex parte Edward Taylor and Isabelle Stone Taylor doing business as Baby’s Spray-Tray Co., 18 USPQ 292 (Comm’r Pats. 1933). The terms “joint applicant(s)" or “joint owner(s)” reflects the relationship of multiple applicants as to a particular mark, but does not identify a particular type of legal entity in the United States. Therefore, the application must name each of the joint applicants, and must set forth the citizenship (or the state or nation of organization for a juristic applicant) of each of the joint applicants. 37 C.F.R. §§2.32(a)(2) and (3); TMEP §§803.02 and 803.03. The application may also state the joint applicant relationship; however, where an application identifies two or more individuals or entities as the applicant, and separately sets forth the citizenship or state of organization of each, the USPTO will presume that the entity is that of joint applicants, if the record is not otherwise contradictory. If, however, the legal entity is set out as “joint applicant(s)” or “joint owner(s),” the examining attorney must require each applicant to clarify the nature of its legal entity as an individual or juristic person.
An application by joint applicants must be verified by all the applicants, since they are individual parties and not a single entity. However, if only one of the joint applicants signs the verification, the USPTO will presume that he or she is signing on behalf of all the joint applicants, and will not require an additional verification or declaration, unless there is evidence in the record indicating that the party who signed the application was not in fact authorized to sign on behalf of all the joint applicants under 37 C.F.R. §2.33(a). This does not apply to a response to an Office action submitted by joint applicants who are not represented by a practitioner authorized under 37 C.F.R. §11.14 to practice in trademark cases (“qualified practitioner”). Such a response should be signed personally by each of the joint applicants. TMEP §611.06(a). See TMEP §804.04 regarding persons authorized to sign a verification on behalf of an applicant.
Joint applicants are not the same as a joint venture. A joint venture is a single applicant, in the same way that a partnership is a single applicant. See TMEP §803.03(b) regarding joint ventures.
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803.03(e) Trusts, Conservatorships, and Estates
If a trust is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. Thus, the examining attorney should require that the trust’s application be captioned as follows:
The Trustees of the XYZ Trust, a California trust, the trustees comprising John Doe, a United States citizen, and the ABC Corporation, a Delaware corporation.
The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. Then the state under whose laws the trust exists must be set forth. Finally, the names and citizenship of the individual trustees must be listed.
The same format generally applies to conservatorships and estates as follows:
The Conservator of Mary Jones, a New York conservatorship, the conservator comprising James Abel, a United States citizen.
The Executors of the John Smith estate, a New York estate, the executors comprising Mary Smith and James Smith, United States citizens.
803.03(e)(i) Business Trusts
Most states recognize an entity commonly identified as a “business trust,” “Massachusetts trust,” or “common-law trust.” A business trust has attributes of both a corporation and a partnership. Many states have codified laws recognizing and regulating business trusts; other states apply common law. The USPTO will accept the entity designation “business trust,” or any appropriate variation provided for under relevant state law.
The business trust is created under the instructions of the instrument of trust. Generally, the “trustee” has authority equivalent to an officer in a corporation. Laws vary to some extent as to the authority conferred on various individuals associated with the business trust.
The application must first refer to the trustee(s) as the applicant and indicate the name of the trust, if any. The state under whose laws the trust exists, and the names and citizenship (or state of incorporation or organization) of the individual trustees, must also be set forth. Accordingly, the examining attorney should require that the business trust's application be captioned as follows:
The Trustees of the DDT Trust, a California business trust, the trustees comprising Sue Smith, a United States citizen, and the PDQ Corporation, a Delaware corporation.
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For the purpose of service of process, the business trust is essentially like a corporation. Therefore, it is not necessary to identify the beneficiaries or equitable owners of the business trust in identifying the entity.
803.03(f) Governmental Bodies and Universities
It is difficult to establish any rigid guidelines for designating the entity of a governmental body. Due to the variety in the form of these entities, the examining attorney must consider each case on an individual basis. The following are just a few examples of acceptable governmental entities:
Department of the Air Force, an agency of the United States.
Maryland State Lottery Agency, an agency of the State of Maryland.
City of Richmond, Virginia, a municipal corporation organized under the laws of the Commonwealth of Virginia.
These examples are not exhaustive of the entity designations that are acceptable.
The structure of educational institutions varies significantly. The following are examples of acceptable university entities:
Board of Regents, University of Texas System, a Texas governing body.
University of New Hampshire, a nonprofit corporation of New Hampshire.
Auburn University, State University, Alabama.
These examples are not exhaustive of the entity designations that are acceptable.
The designations “education institution” and “educational organization” are not acceptable. If the applicant uses either of these designations to identify the entity, the examining attorney must require the applicant to amend the entity designation to a legally recognized juristic entity.
803.03(g) Banking Institutions
The nature of banking institutions is strictly regulated and, thus, there are a limited number of types of banking entities. Some banking institutions are federally chartered while others are organized under state law. The following are examples of acceptable descriptions of banking institutions:
First American Bank of Virginia, a Virginia corporation.
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Pathway Financial, a federally chartered savings and loan association.
This is not an exhaustive listing of acceptable entity designations.
803.03(h) Limited Liability Companies
Most states recognize an entity commonly identified as a “limited liability company” or “LLC.” The entity has attributes of both a corporation and a partnership. Therefore, the USPTO must accept the entity designation “limited liability company.” The examining attorney may accept appropriate variations of this entity, with proof that the entity exists under the law of the relevant state.
If “LLC” appears in the applicant’s name, but the entity is listed as a corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation.
The applicant must indicate the state under whose laws the limited liability company is established. It is not necessary to list the “members” or owners of the limited liability company when identifying the entity.
See TMEP §611.06(g) regarding the proper party to sign a response to an Office action filed by a limited liability company that is not represented by an attorney.
Limited Liability Corporation. A business organization known as a “limited liability corporation” is currently not recognized. If an applicant’s entity type is identified as a limited liability corporation, the examining attorney must inquire as to whether the applicant is a limited liability company or a corporation. If the applicant believes that it is a limited liability corporation, then the applicant must provide proof that such a legal entity exists under the appropriate state statute.
See TMEP §803.03(k) regarding limited liability partnerships.
803.03(i) Common Terms Designating Entity of Foreign Applicants
In designating the legal entity of foreign applicants, acceptable terminology is not always the same as for United States applicants. The word “corporation” as used in the United States is not necessarily equivalent to juristic entities of foreign countries; the word “company” is sometimes more accurate. If the applicant is from the United Kingdom or another commonwealth country (e.g., Canada or Australia) and the term “company” (or the abbreviation “co.”) is used, no inquiry is needed. “Limited company” is also acceptable in commonwealth countries. There is a list of commonwealth countries on the commonwealth website at
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http://www.thecommonwealth.org/Internal/142227/members/. In any other case, when the term “company” is used, the examining attorney must clarify what type of entity is applying.
“Limited corporation” is also an acceptable entity designation for a foreign applicant.
A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is sufficient. The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so.
Appendix D of this manual lists additional common terms and abbreviations used by various foreign countries to identify legal commercial entities. If a designation or its abbreviation appears in the appendix, the examining attorney may accept the entity designation without further inquiry. The applicant must specify the foreign country under whose laws it is organized, but no additional information is required, even if additional information would be required for a United States entity of the same name. For example, it is not necessary to set forth the names and citizenship of the partners of a foreign partnership. The rule requiring names and citizenships of general partners (37 C.F.R. §2.32(a)(3)(iii)) seeks to provide relevant information in the record, given the legal effects of partnership status in the United States. Because the USPTO does not track the varying legal effects of partnership status in foreign countries, and the relevance of the additional information has not been established, the same requirement for additional information does not apply to foreign partnerships.
If a foreign entity designation or abbreviation does not appear in Appendix D, the examining attorney must inquire further into the specific nature of the entity. The examining attorney may request a description of the nature of the foreign entity, if necessary.
Foreign entities may be organized under either national or provincial laws. However, the TEAS form requires an applicant to specify the state or foreign country under which it is legally organized, but does not permit an applicant to specify a foreign province or geographical region in this field. Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select as the entity type the choice of “Other,” which will allow entry within the free-text field provided at “Specify Entity Type” of both the type of entity and the foreign province or geographical region under which it is organized (e.g., “corporation of Ontario”). In the next section, “State or Country Where Legally Organized,” the country (e.g., “Canada”) should then be selected from the pull-down menu.
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803.03(j) Federally Recognized Indian Tribe
A federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant’s entity.
803.03(k) Limited Liability Partnerships
Most states recognize an entity commonly identified as a “limited liability partnership” (“LLP”). An LLP is separate and distinct from a limited partnership, and is more closely associated with a limited liability company in that it has attributes of both a corporation and a partnership. Therefore, the USPTO will accept the entity designation “limited liability partnership.” The examining attorney may accept appropriate variations of this entity (e.g., "limited liability limited partnership” or “LLLP”), with proof that the entity exists under the law of the relevant state.
The applicant must indicate the state under whose laws the limited liability partnership is established. It is not necessary to list the partners of the limited liability partnership when identifying the entity.
See TMEP §611.06(h) regarding the proper party to sign a response to an Office action filed by a limited liability partnership that is not represented by a qualified practitioner.
See also TMEP §803.03(h) regarding limited liability companies.
803.04 Citizenship of Applicant
An application for registration must specify the applicant’s citizenship or the state or nation under whose laws the applicant is organized. 37 C.F.R. §2.32(a)(3). If ambiguous terms such as “American” are used, the examining attorney must require the applicant to clarify the record by setting forth the required information with greater specificity (e.g., “United States”).
An individual applicant should set forth the country of which he or she is a citizen. Current citizenship information must be provided; a statement indicating that the applicant has applied for citizenship in any country is not relevant or acceptable. If an individual is not a citizen of any country, a statement to this effect is acceptable.
In an application for international registration, if the applicant is a natural person, he or she must indicate his or her name and may include the country of which he or she is a national. Common Regs, Rule 9(4)(b)(i). The international application does not require this information, but when the information is included, the IB will forward the nationality of the applicant to the USPTO. In a §66(a) application, if the “Nationality of Applicant” field appears in TICRS, this means that the applicant is an individual rather than a juristic entity, and that applicant’s citizenship is the country corresponding to
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the two letter code set forth in this field. However, a separate statement that applicant is an individual will not appear in TICRS, and the “Legal Nature” and Legal Nature: Place Incorporated” fields will state “Not Provided.”
If the “Nationality of Applicant” field appears in TICRS, the examining attorney may enter the relevant information into TRAM, or ask the LIE to enter it. No inquiry as to the applicant’s entity or citizenship is necessary. If the “Nationality of Applicant” field does not appear in TICRS, the examining attorney must require that the applicant indicate its entity and citizenship. Examining attorneys cannot rely on the “Entitlement Nationality,” “Entitlement Establishment,” or “Entitlement Domiciled” fields for the applicant’s citizenship because these fields merely indicate the basis for the applicant’s entitlement to file an application through the Madrid system, not the national citizenship of the individual applicant.
If an applicant asserts dual citizenship, the applicant must choose which citizenship will be printed in the Official Gazette and on the registration certificate. The USPTO will print only one country of citizenship for each person in the Official Gazette and on the registration certificate, and the automated records of the USPTO will indicate only one country of citizenship for each person.
For a corporation, the application must set forth the United States state or foreign country of incorporation. 37 C.F.R. §2.32(a)(3)(ii).
Foreign entities may be organized under either national or provincial laws. However, the TEAS form requires an applicant to specify the state or foreign country under which it is legally organized, but does not permit an applicant to specify a foreign province or geographical region in this field. Therefore, if the applicant is organized under the laws of a foreign province or geographical region, the applicant should select as the entity type the choice of “Other,” which will allow entry within the free-text field provided at “Specify Entity Type” of both the type of entity and the foreign province or geographical region under which it is organized (e.g., “corporation of Ontario”). In the next section, “State or Country Where Legally Organized,” the country (e.g., “Canada”) should then be selected from the pull-down menu.
For an association, the application must set forth the United States state or foreign country under whose laws the association is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii). See TMEP §803.03(c).
A partnership or other firm must set forth the United States state or foreign country under the laws of which the partnership is organized. Domestic partnerships must also provide citizenship information for each general partner in the partnership or active member in the firm. 37 C.F.R. §2.32(a)(3)(iii). This requirement also applies to a partnership that is a general partner in a larger partnership. See TMEP §803.03(b) for the proper format for identifying a partnership. Given the varying legal effects of
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partnership status in foreign countries, the relevance of the name and citizenship information for each partner has not been established. Therefore, for foreign partnerships, it is not necessary to provide the names and citizenship of the partners. See TMEP §803.03(i) for further information about foreign applicant entities.
For joint applicants or a joint venture, the application should set forth the citizenship or United States state or foreign country of organization of each party. Domestic joint ventures must also provide citizenship information for all active members of the joint venture. 37 C.F.R. §2.32(a)(3)(iv). See TMEP §803.03(b) for the proper format for identifying a joint venture.
803.05 Address of Applicant
The written application must specify the applicant’s mailing address. 37 C.F.R. §2.32(a)(4). Addresses should include the United States Postal Service ZIP code or its equivalent. The applicant’s address may consist of a post office box.
For an individual, the application must set forth either the business address or the residence address.
If the application sets out more than one address, the applicant should designate the address to be included on the registration certificate.
For a partnership or other firm, only the address of the business need be set forth -- not the addresses of the partners or members.
For a corporation or association, the business address should be set forth. If the corporation’s business address is not in its state of incorporation, the applicant should set out the address where the applicant is domiciled.
For joint applicants, the application should include addresses for each party.
The application must also include an address for correspondence concerning the application. See 37 C.F.R. §§2.18 and 2.21(a)(2). This is referred to as the correspondence address. See TMEP §§609 et seq.
803.06 Applicant May Not Be Changed
While an application can be amended to correct an inadvertent error in the manner in which an applicant’s name is set forth (see TMEP §1201.02(c)), an application cannot be amended to substitute another entity as the applicant. If the application was filed in the name of a party who had no basis for his or her assertion of ownership of (or entitlement to use) the mark as of the filing date, the application is void, and registration must be refused. 37 C.F.R. §2.71(d); TMEP §1201.02(b). Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great
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Seats, Inc., 84 USPQ2d 1235 (TTAB 2007); American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991); In re Lettmann, 183 USPQ 369 (TTAB 1974); Dunleavy v. Koeppel Steel Products, Inc., 114 USPQ 43 (Comm’r Pats. 1957), aff’d, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Richardson Corp. v. Richardson, 51 USPQ 144 (Comm’r Pats. 1941); Celanese Corp. of America v. Edwin Crutcher, 35 USPQ 98 (Comm’r Pats. 1937). The USPTO will not refund the application filing fee in such a case.
A void application cannot be cured by amendment or assignment. The true owner may file another application (with a new filing fee) in its name or, if the applicant who is refused later becomes the owner of the mark, he or she may file another application (with a new filing fee) at that time.
See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the applicant, TMEP §803.01 regarding minor applicants, and TMEP §1201.02(e) and TMEP Chapter 500 regarding the situation in which the true owner of a mark files an application and transfers ownership to another party after the filing date.
804 Verification and Signature
An application must include a statement that is verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. 15 U.S.C. §§1051(a)(3) and 1051(b)(3); 37 C.F.R. §§2.32(b) and 2.33(a).
In an application under §1 or §44 of the Trademark Act, a signed verification is not required for receipt of an application filing date under 37 C.F.R. §2.21(a). If the initial application does not include a proper verified statement, the examining attorney must require the applicant to submit a verified statement that relates back to the original filing date. See TMEP §§804.01 et seq. regarding the form of the oath or declaration, TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.
In §66(a) applications, the verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). See TMEP §§804.05 and 1904.01(c).
804.01 Form and Wording of Verification in §1 or §44 Application
The format of the verification in an application under §1 or §44 of the Trademark Act may be: (1) the classical form for verifying, which includes an oath (jurat) (see TMEP §804.01(a)); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath (see TMEP §804.01(b)).
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804.01(a) Verification with Oath
The verification is placed at the end of the application. It should first set forth the venue; followed by the signer’s name (or the words “the undersigned”); then the necessary statements (TMEP §804.02); concluding with the signature. After the signature, there should be the jurat for the officer administering the oath, and an indication of the officer’s authority (such as notarial seal).
The form of the verification depends on the law of the jurisdiction where the document is executed, so variations of the above form are acceptable. If there is a question as to the validity of the verification, the examining attorney should ask the applicant if the verification complies with the laws of the applicant’s jurisdiction. See TMEP §804.01(a)(i) regarding verifications made in a foreign country.
If the verification is notarized but does not include the notarial seal, the examining attorney must require a substitute affidavit or declaration under 37 C.F.R. §2.20.
If the verification is notarized but has not been dated, the applicant must submit either a statement from the notary public attesting to the date of signature and notarization, or a substitute affidavit or declaration under 37 C.F.R. §2.20.
804.01(a)(i) Verification Made in Foreign Country
Verification (with oath) made in a foreign country may be made: (1) before any diplomatic or consular officer of the United States; or (2) before any official authorized to administer oaths in the foreign country. In those foreign countries that are members of The Hague Convention Abolishing the Requirement of Legislation for Foreign Public Documents, a document verified before a foreign official should bear or have appended to it an apostille (i.e., a certificate issued by an official of the member country).
Member countries, territories, and Departments in Europe participating in this Convention are: Anqulla, Antigua & Barbuda, Argentina, Armenia, Australia, Austria, Bahamas, Bailiwick of Guernsey, Barbados, Belarus, Belgium, Belize, Bermuda, Bosnia & Herzegovina, Botswana, British Antarctic, British Guiana (Guyana), British Soloman Islands, Cayman, Croatia, Cyprus, Dominica, El Salvador, Falkland Islands, Figi, Finland, France, French Guiana, Germany, Gibraltar, Gilbert & Ellice Islands (Kiribati), Greece, Grenada, Guadeloupe, Hong Kong, Hungary, Isle of Man, Jersey, Israel, Italy, Japan, Latvia, Lesotho, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malawi, Malta, Marshall Islands, Martinique, Mauritius, Mexico, Montserrat, Netherlands, New Hebrides (Vanuatu), Norway, Panama, Portugal, Reunion, Saint Christopher & Nevis, Saint Helena, Saint Lucia, Saint Vincent, San Marino, Seychelles, Slovenia, South Africa, Southern Rhodesia (Zimbabwe),
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Spain, Suriname, Swaziland, Switzerland, Tonga, Turkey, Turks & Caicos, United Kingdom & Northern Ireland, and the Virgin Islands.
An apostille must be square shaped with sides at least 9 centimeters long. The following is the prescribed form for an apostille:
APOSTILLE
(Convention de La Haye du Oct. 5, 1961)
1. Country: ________________________
This public document 2. has been signed by
________________ 3. acting in capacity of
_______________ 4. bears the seal/stamp of
____________
CERTIFIED
5. at ____________________________
6. the ___________________________
7. by ____________________________
8. No. ___________________________
9. Seal/stamp: _____________________
10. Signature: ______________________
See notice at 1013 TMOG 3 (December 1, 1981).
If a verification is made before a foreign official in a country that is not a member of the Hague Convention, the foreign official’s authority must be proved by a certificate of a diplomatic or consular officer of the United States. 15 U.S.C. §1061.
Declarations under 37 C.F.R. §2.20 and 28 U.S.C. §1746 by foreign persons do not have to be made before a United States diplomatic or consular officer,
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or before a foreign official authorized to administer oaths. A declaration under 28 U.S.C. §1746 that is executed outside the United States must allege that “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.” See TMEP §804.01(b).
See http://www.state.gov/www/authenticate/index.html for updated information about the Hague Convention.
804.01(b) Declaration in Lieu of Oath
Under 35 U.S.C. §25, the USPTO is authorized to accept a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath. These declarations can be used whenever the Act or rules require that a document be verified or under oath.
When the language of 37 C.F.R. §2.20 or 28 U.S.C. §1746 is used with a document, the document is said to have been subscribed to (signed) by a written declaration rather than verified by oath (jurat).
When a declaration is used in lieu of an oath, the party must include in place of the oath (jurat) the statement that “all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.” Preferably, this language is placed at the end of the document.
In addition, the declaration must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. §1001). 35 U.S.C. §25(b). Trademark Rule 2.20 requires that the warning contain the additional language that such statements may jeopardize the validity of the application (or document) or any registration resulting therefrom. A declaration under 37 C.F.R. §2.20 should read as follows:
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.
___________________________ (Signature)
___________________________ (Print or Type Name and Position)
___________________________ (Date)
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Instead of using the language of 37 C.F.R. §2.20, an applicant may use the language of 28 U.S.C. §1746, which provides as follows:
Wherever, under any law of the United States or under any rule, regulation, order, or requirement made pursuant to law, any matter is required or permitted to be supported, evidenced, established, or proved by the sworn declaration, verification, certificate, statement, oath, or affidavit, in writing of the person making the same (other than a deposition, or an oath of office, or an oath required to be taken before a specific official other than a notary public), such matter may, with like force and effect, be supported, evidenced, established, or proved by the unsworn declaration, certificate, verification, or statement, in writing of such person which is subscribed by him, as true under penalty of perjury, and dated, in substantially the following form:
(1) If executed outside the United States, its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. Executed on (date).
(Signature)”.
(2) If executed within the United States, its territories, possessions, or commonwealths: “I declare (or certify, verify, or state) under penalty of perjury that the foregoing is true and correct. Executed on (date).
(Signature)”.
NOTE: Title 35 of the United States Code pertains specifically to the USPTO and, therefore, is preferred to 28 U.S.C. §1746, which is a statute of general application relating to verification on penalty of perjury.
A declaration that does not attest to an awareness of the penalty for perjury is unacceptable. 35 U.S.C. §25. In re Hoffmann-La Roche Inc., 25 USPQ2d 1539 (Comm’r Pats. 1992) (failure to include a statement attesting to an awareness of the penalty for perjury, which is the very essence of an oath, is not a “minor defect” that can be provisionally accepted under 35 U.S.C. §26), overruled on other grounds, In re Moisture Jamzz Inc., 47 USPQ2d 1762, 1764 (1997); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968 (TTAB 1986); In re Laboratories Goupil, S.A., 197 USPQ 689 (Comm’r Pats. 1977).
The signatory must personally sign his or her name. It is unacceptable for a person to sign another person’s name to a declaration pursuant to a general power of attorney. See In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990). In a TEAS
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submission, the person(s) identified as the signer(s) must manually enter the elements of the electronic signature. The rules do not provide authority for an attorney to sign another person's declaration. Dermahose, 82 USPQ2d at 1795. See TMEP §611.01(c) regarding signature of documents filed through TEAS.
If a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 is not dated, the examining attorney must require the applicant to state the date on which the declaration was signed. This statement does not have to be verified, and may be entered through a note in the “Notes-to-the-File” section of the record.
See TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark.
804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application
The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in §§1(a)(3), 1(b)(3), and 44 of the Trademark Act, 15 U.S.C. §§1051(a)(3), 1051(b)(3), and 1126, and 37 C.F.R. §§2.33 and 2.34. These allegations are required regardless of whether the verification is in the form of an oath (TMEP §804.01(a)) or a declaration (TMEP §804.01(b)). See TMEP §804.05 regarding the requirements for verification of a §66(a) application.
Truth of Facts Recited. Under 15 U.S.C. §§1051(a)(3)(B) and 1051(b)(3)(C), the verification of an application for registration must include an allegation that “to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate.” 37 C.F.R. §§2.33(b)(1) and (2). The language in 37 C.F.R. §2.20 that “all statements made of [the verifier’s] own knowledge are true, and all statements made on information and belief are believed to be true” satisfies this requirement.
Use in Commerce. If the filing basis is §1(a), the applicant must submit a 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 original application, the verified statement must also 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. 37 C.F.R. §2.34(a)(1)(i).
Bona Fide Intention to Use in Commerce. If the filing basis is §1(b), §44(d), or §44(e), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), and 1126(e). If the verification is not filed with the original application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in
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connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i), and 2.34(a)(4)(ii).
Ownership or Entitlement to Use. In an application based on §1(a), the verified statement must allege that the verifier believes the applicant to be the owner of the mark and that no one else, to the best of his or her knowledge and belief, 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. 15 U.S.C. §1051(a)(3)(A); 37 C.F.R. §2.33(b)(1).
In an application based on §1(b) or §44, the verified statement must allege that the verifier believes the applicant to be entitled to use the mark in commerce and that no one else, to the best of his or her knowledge and belief, 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. See 15 U.S.C. §1051(b)(3)(A); 37 C.F.R. §2.33(b)(2).
While the correct language for an application filed under §1(b) or §44 is “entitled to use,” if a §1(b) or §44 applicant files a verification stating that the applicant is the owner of the mark, the USPTO will accept the verification, and will not require a substitute verification stating that the applicant is entitled to use the mark.
Concurrent Use. The verification for concurrent use should be modified to indicate an exception, i.e., that no one else except as specified in the application has the right to use the mark. 15 U.S.C. §1051(a)(3)(D). See TMEP §§1207.04 et seq. regarding concurrent use registration.
Related-company use does not require stating an exception, because the statement that no one else has the right to use the mark refers only to adverse users and not to licensed or permitted use. See TMEP §§1201.03 et seq. regarding use by related companies.
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Affirmative, Unequivocal Averments Based on Personal Knowledge Required. The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements such as “the undersigned [person signing the declaration] has been informed that the applicant is using [or has a bona fide intention to use] the mark in commerce...” are unacceptable.
Substitute Verification. If the verified statement does not include all the necessary averments, the examining attorney will require a substitute or supplemental affidavit or declaration under 37 C.F.R. §2.20.
804.03 Time Between Execution and Filing of Documents - §1 or §44 Application
Documents Must Be Filed Within a Reasonable Time After Execution
All applications and documents must be filed within a reasonable time after their execution. Under 37 C.F.R. §2.33(c), if the verified statement supporting an application for registration is not filed within a reasonable time after it is signed, the USPTO will require the applicant to submit a substitute affidavit or declaration under 37 C.F.R. §2.20 of the applicant’s continued use or bona fide intention to use the mark in commerce. Re-execution is also required where an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) or request for extensions of time to file a statement of use is not filed within a reasonable time after the date of execution. 37 C.F.R. §§2.76(i), 2.88(k), and 2.89(h); TMEP §§1104.09(b), 1108.02(b), and 1109.11(c).
The USPTO considers one year between execution and filing as reasonable for all applications and all documents. No new verification should be required if the document is filed within one year of execution. If an application, allegation of use, or request for extension of time to file a statement of use is filed more than one year after its execution, the examining attorney will require that the applicant submit re-executed documents, or a statement that is verified or includes a declaration under 37 C.F.R. §2.20, of the applicant’s continued use or bona fide intent to use the mark in commerce, as appropriate.
Documents Cannot Be Filed Before They Are Executed
If an applicant files an application that is signed and lists a date of execution that is subsequent to the application filing date, the examining attorney will inquire as to the actual date on which the application was signed. However, where an application is executed in a foreign country located across the international date line, the fact that an application shows a date of execution as of the day after the application filing date is not inconsistent with its having been executed before filing. No inquiry is required in this limited situation.
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804.04 Persons Authorized to Sign Verification or Declaration
37 C.F.R. §2.33(a). The application must include a statement that is signed and verified (sworn to) or supported by a declaration under §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 §11.1 of this chapter who has an actual or implied written or verbal power of attorney from the applicant.
The Trademark Act does not specify the appropriate person to verify facts on behalf of an applicant. The definition of a “person properly authorized to sign on behalf of the applicant” is set forth in 37 C.F.R. §2.33(a). This definition applies to applications for registration, amendments to allege use, statements of use, requests for extensions of time to file statements of use, affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, affidavits of incontestability under 15 U.S.C. §1065, and combined filings under 15 U.S.C. §§1058 and 1059. 37 C.F.R. §§2.76(b)(1), 2.88(b)(1), 2.89(b)(3), and 2.161(b). It also applies to declarations supporting amendments to dates of use, use of substitute specimens, claims of acquired distinctiveness under 15 U.S.C. §1052(f), amendments changing the basis for filing, and requests for amendment or correction of registrations under 15 U.S.C. §1057.
Generally, the USPTO does not question the authority of the person who signs a verification, unless there is an inconsistency in the record as to the signatory’s authority to sign. The USPTO presumes that the verification or declaration is properly signed. In view of the broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a), the fact that an application is signed by someone whose title refers to a different entity is not considered an inconsistency that warrants an inquiry as to whether the verification was properly signed.
Example: If an application is filed by “ABC Company, Inc.,” and the verification is signed by an officer of “XYZ Company, Inc.,” the USPTO will presume that XYZ Company, Inc. is a related company properly authorized to sign on behalf of ABC Company, Inc.
The signatory should set forth his or her name and title, or state the relationship between the applicant and the person who signed the verification.
If the person signing the verification is identified as a different person than the individual named as the applicant, or as representing a different legal entity
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than the juristic applicant, the USPTO generally will not question whether the proper party is listed as the applicant.
Example: If the applicant is identified as Mary Smith, an individual citizen of the U.S., and the application is signed by John Smith, the USPTO will not question whether the proper party is listed as applicant.
Example: If the applicant is John Smith, an individual citizen of the U.S., and the application is signed by John Smith, President, XYZ, Inc., the USPTO will not question whether the proper party is listed as applicant.
If a qualified practitioner signs a verification on behalf of an applicant, the USPTO will not require a power of attorney or other documentation stating that the practitioner is authorized to sign.
This policy applies to both individual applicants and juristic applicants.
The broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) applies only to verifications of facts by the applicant. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, letters of express abandonment, or changes to the correspondence address.
A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a) is not necessarily entitled to sign responses to Office actions, or to authorize examiner’s amendments and priority actions. Preparing a document, authorizing an amendment to an application, and submitting legal arguments in response to an examining attorney’s requirement or refusal of registration all constitute examples of representation of the applicant in a trademark matter. 37 C.F.R. §11.5(b)(2). Under 5 U.S.C. §500(d) and 37 C.F.R. §11.14(e), non-attorneys may not represent a party in a trademark proceeding before the USPTO. See TMEP §§611.03(b), 611.06 et seq., and 712 et seq. regarding signature on responses to Office actions.
The signatory must personally sign his or her name. It is unacceptable for a person to sign another person’s name to a verification pursuant to a general power of attorney. See In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990). In a TEAS submission, the person whose name is affixed to the verification must manually enter the elements of the electronic signature. The rules do not provide authority for an attorney to sign another person's declaration. Dermahose, 82 USPQ2d at 1795.
In applications under §66(a) of the Act, the verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB establishes that an international registration includes a signed declaration
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before it sends the request for extension of protection to the USPTO. Generally, the examining attorney should not issue any inquiry regarding the authority of the signatory to verify the application. If the applicant needs to file a request for correction of the declaration, the request should be filed with the IB. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration. See TMEP §804.05 regarding verification of §66(a) applications.
804.05 Verification of §66(a) Application
In applications under §66(a) of the Act, the request for extension of protection to the United States must include a declaration that the applicant has a bona fide intention to use the mark in commerce that can be controlled by the United States Congress. The declaration must include a statement that the person making the declaration believes applicant to be entitled to use the mark in commerce, and that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. §1141(5). The declaration must be signed by: (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) a qualified practitioner who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.
The verified statement in a §66(a) application is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. The examining attorney should generally not issue any inquiry regarding the verification of the application. If the applicant needs to file a request for correction of the declaration, the request should be filed with the IB. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration.
805 Identification and Classification of Goods and Services
An application must include a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. 37 C.F.R. §2.32(a)(6). See TMEP §§1402 et seq. for further information about identifying goods and services in an application.
The applicant should designate the international class number(s) that are appropriate for the identified goods or services, if this information is known.
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37 C.F.R. §2.32(a)(7). See TMEP §§1401 et seq. for more information about classification.
806 Filing Basis
A filing basis is the statutory basis for filing an application for registration of a mark in the United States. An applicant must specify and meet the requirements of one or more bases. 37 C.F.R. §2.32(a)(5). There are five filing bases: (1) use of a mark in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a); (2) bona fide intention to use a mark in commerce under §1(b) of the Act, 15 U.S.C. §1051(b); (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act, 15 U.S.C. §1126(d); (4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act, 15 U.S.C. §1126(e); and (5) extension of protection of an international registration to the United States, under §66(a) of the Act, 15 U.S.C. §1141f(a). 37 C.F.R. §2.34.
An applicant is not required to specify the basis for filing to receive a filing date. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009). If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.
In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.
See 37 C.F.R. §2.34 and TMEP §§806.01 et seq. for a list of the requirements for each basis.
806.01 Requirements for Establishing a Basis
The requirements for establishing a basis are set forth in TMEP §§806.01(a) through 806.01(e). If these requirements are not met in the original application, the examining attorney will require the applicant to comply with them in the first Office action.
806.01(a) Use in Commerce - §1(a)
Under 15 U.S.C. §1051(a) and 37 C.F.R. §2.34(a)(1), to establish a basis under §1(a) of the Trademark Act, the applicant must:
(1) Submit a verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application.
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15 U.S.C. §1051(a)(3)(C). If this verified statement is not filed with the initial application, the verified statement must also 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 (37 C.F.R. §2.34(a)(1)(i));
(2) Specify the date of the applicant’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.34(a)(1)(ii); TMEP §903.01);
(3) Specify the date of the applicant’s first use of the mark in commerce as a trademark or service mark (37 C.F.R. §2.34(a)(1)(iii); TMEP §903.02); and
(4) Submit one specimen for each class, showing how the applicant actually uses the mark in commerce (37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §§904 et seq.).
The Trademark Act defines “commerce” as commerce which may lawfully be regulated by Congress, and “use in commerce” as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127; 37 C.F.R. §2.34(c). See TMEP §§901 et seq.
An applicant may claim both use in commerce under §1(a) of the Act and intent-to-use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date. 37 C.F.R. §2.34(a)(1)(i). Cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995).
If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed. TMEP §806.02(c).
806.01(b) Intent-to-Use - §1(b)
In an application based on 15 U.S.C. §1051(b), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1051(b)(3)(B). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in
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connection with the goods or services as of the filing date of the application. 37 C.F.R. §2.34(a)(2).
Prior to registration, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) that states that the applicant is using the mark in commerce on or in connection with the goods or services, includes dates of use and a filing fee for each class, and includes one specimen evidencing such use for each class. See 37 C.F.R. §2.76 and TMEP §§1104 et seq. regarding amendments to allege use, and 37 C.F.R. §2.88 and TMEP §§1109 et seq. regarding statements of use.
Once an applicant claims a §1(b) basis for any or all of the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act. 37 C.F.R. §2.35(b)(8).
See TMEP Chapter 1100 for additional information about intent-to-use applications.
806.01(c) Foreign Priority - §44(d)
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03. If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered. See TMEP §806.01(b) regarding the requirements for a §1(b) basis.
Under 15 U.S.C. §1126(d) and 37 C.F.R. §2.34(a)(4), the requirements for receipt of a priority filing date based on a previously filed foreign application are:
(1) The applicant must file a claim of priority within six months of the filing date of the foreign application. 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5);
(2) The applicant must: (a) specify the filing date, serial number, 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. 37 C.F.R. §§2.34(a)(4)(i)(A) and (B). See also Paris Convention Article 4(D); and
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(3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application. 15 U.S.C. §1126(d)(2). This allegation is required even if use in commerce is asserted in the application. TMEP §806.02(e). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the filing date of the application. 37 C.F.R. §2.34(a)(4)(ii).
The scope of the goods/services covered by the §44 basis in the United States application cannot exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §§2.35(b)(3) and (4). See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis, and TMEP §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis.
See TMEP §§1003 et seq. for further information about §44(d) applications.
806.01(d) Foreign Registration — §44(e)
Under 15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:
(1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b);
(2) The application must include the applicant’s verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. §1126(e). This allegation is required even if use in commerce is asserted in the application. TMEP §806.02(e). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(3)(i); and
(3) The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002 et seq.
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If the applicant does not submit a certification or a certified copy of the registration from the country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin. A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.
The scope of the goods/services covered by the §44 basis in the United States application cannot exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is considered a change in basis. TMEP §1004.02. See TMEP §§806.03 et seq. regarding amendments to add or substitute a basis.
See TMEP §§1004 et seq. for further information about §44(e) applications.
806.01(e) Extension of Protection of International Registration - §66(a)
Section 66(a) of the Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.34(a)(5). The request must include a declaration of a bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration. The verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. Generally, the examining attorney need not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the initial verification of the application. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration. See TMEP §804.05.
A §66(a) applicant cannot change the basis or claim more than one basis. 37 C.F.R. §§2.34(b)(3) and 2.35(a). See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application can be transformed into an application under §1 or §44.
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. It cannot be added or substituted as a basis in an application originally filed under §1 or §44.
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Under 15 U.S.C. §1141g and Madrid Protocol Article 4(2), the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
(1) The request for extension of protection contains a claim of priority;
(2) The request for extension of protection specifies the filing date, serial number, and the country of the application that forms the basis for the claim of priority; and
(3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than six months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).
See Common Regs., Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2008) (“Guide to International Registration”), Para. B.II.13.02.
806.02 Multiple Bases
806.02(a) Procedure for Asserting More Than One Basis
In a §66(a) application, the applicant cannot claim more than one basis. 37 C.F.R. §2.34(b)(3).
In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b)(1). The applicant must clearly indicate that more than one basis is claimed, and must separately 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. 37 C.F.R. §§2.34(b)(2) and 2.35(b)(6).
Example: Based on use - SHIRTS AND COATS, in Class 25; Based on intent to use - DRESSES, in Class 25.
The applicant may assert different bases for different classes, and may also assert different bases as to different goods or services within a class.
When a single class has different bases for goods or services within the same class, the USPTO uses parentheses to indicate the specific basis for specific goods or services. When entering this information into the Trademark Reporting and Monitoring (“TRAM”) System, the examining attorney or legal instruments examiner (“LIE”) must refer to “use in commerce” or “intent to use” rather than referring to the statutory citation.
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Example: Class 025: (Based on Use in Commerce) PANTS; (Based on Intent to Use) SHIRTS.
The applicant may claim a §44 basis in addition to either a §1(a) or a §1(b) basis for the same goods or services. However, the applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services. 37 C.F.R. §2.34(b)(1).
806.02(b) Applicant May File Under Both §1(a) and §1(b) in the Same Application
An applicant may rely on both §1(a) and §1(b) in the same application. The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in the same application, but the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services. This can occur in either a single or multiple-class application. 37 C.F.R. §2.34(b)(1).
When the applicant asserts both §1(a) and §1(b) as bases for registration in the same application, the USPTO will publish the mark for opposition and will issue a notice of allowance (see TMEP §§1106 et seq.) if there is no successful opposition. The goods/services for which a §1(a) basis is asserted will remain in the application pending the filing and approval of a statement of use for the goods/services based on §1(b), unless the applicant files a request to divide. See TMEP §§1110 et seq. regarding requests to divide. If the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use. TMEP §806.02(d).
806.02(c) Examination of Specimens of Use in a Multiple-Basis Application
If the applicant claims use in commerce in addition to another basis, but does not specify which goods/services are covered by which basis, the USPTO may defer examination of the specimens until the applicant identifies the goods/services for which use is claimed. A proper examination of specimens requires consideration of the particular goods/services on or in connection with which the mark is used.
806.02(d) Abandonment of Multiple-Basis Applications
If an applicant fails to respond to an Office action or notice of allowance pertaining to only one basis of a multiple-basis application, the failure to respond will result in abandonment of the entire application, unless the applicant files a request to divide under 37 C.F.R. §2.87 and notifies the
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examining attorney that the request has been filed. See TMEP §§1110 et seq. regarding requests to divide. If the failure to respond was unintentional, the applicant may file a petition to revive. See TMEP §§1714 et seq. regarding petitions to revive.
806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application is Based on Both §44 and §1(a)
Any application filed under §44(d) or §44(e) must include a verified statement that the applicant has a bona fide intention to use the mark in commerce even if §1(a) (use in commerce) is asserted as an additional filing basis. Cf. In re Paul Wurth S.A., 21 USPQ2d 1631 (Comm’r Pats. 1991).
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce.
806.02(f) Section 44(d) Combined With Other Bases
If an applicant properly claims priority under §44(d), 15 U.S.C. §1126(d), in addition to a §1 basis, the applicant may elect not to perfect the §44(e) basis (based on the foreign registration that will issue from the application on which the applicant relies for priority) and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4).
The examining attorney must advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquire whether the applicant wishes to retain §44(e) as a second basis for registration. See TMEP §806.04(b) regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis, and TMEP §1003.04(b) regarding the procedures to follow when an applicant claims priority under §44(d) in addition to another basis.
806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce. Therefore, when an applicant adds or substitutes §1(b) or §44 as a filing basis, it is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if there is already one in the record with respect to the goods or services covered by the new basis.
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806.03 Amendments to Add or Substitute a Basis
806.03(a) When Basis Can be Changed
Section 1 or §44 Application - Before Publication. The applicant may add or substitute a basis before publication, provided that the applicant meets all requirements for the new basis. 37 C.F.R. §2.35(b)(1).
Section 1 or §44 Application - After Publication. In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must first petition the Director to allow the examining attorney to consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. §2.35(b)(2). See TMEP §§806.03(j) et seq. for further information.
Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a). See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §514.
Section 66(a) Application. In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a); TMEP §806.03(k).
806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period
An applicant may add or substitute a §44(d) basis only during the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.02(f) regarding §44(d) combined with another basis.
806.03(c) Amendment From §1(a) to §1(b)
In an application filed under §1(a), if the §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis. The USPTO will presume that the applicant had a continuing valid basis, in that the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3).
When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services, and that the applicant had a bona fide intention to use the mark in commerce on or in connection
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with the goods/services as of the application filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2).
Note, however, that in a §1(b) application, once an applicant has filed a statement of use, the applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17. Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed. See TMEP §1104.10 regarding withdrawing an amendment to allege use.
See TMEP §§806.03(j) et seq. regarding amendment of the basis after publication.
806.03(d) Amendment From §44 to §1(b)
An applicant may amend the basis from §44 to §1(b). The USPTO will presume that the applicant had a continuing valid basis, because the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3). Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006). It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).
Applicant must clearly indicate whether it wants to: (1) add the §1(b) basis and maintain the §44 basis; or (2) replace the §44 basis with the §1(b) basis.
In a §44(d) application, the applicant may substitute §1(b) as a basis and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4); TMEP §806.03(h). If the applicant chooses to add the §1(b) basis and maintain the §44 basis, the examining attorney cannot approve the mark for publication until the applicant files a copy of the foreign registration. See TMEP §806.02(f).
See TMEP §806.03(j) regarding amendment of the basis after publication.
806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a)
An applicant who claims a §1(b) basis for any or all of the goods or services may not amend the application to seek registration under §1(a) of the Act for those goods or services, unless the applicant files an allegation of use. 37 C.F.R. §2.35(b)(8). See TMEP §§1103, 1104 et seq., and 1109 et seq. regarding allegations of use.
806.03(f) Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application
An applicant can add or substitute a basis only if the applicant meets all the requirements for the new basis. 37 C.F.R. §2.35(b)(1). Therefore, an
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applicant may not amend a §44 application to claim a §1(a) basis unless the applicant: (1) verifies that the mark is in use in commerce on or in connection with the goods or services listed in the application, and 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; (2) provides a specimen, with a verified statement that the specimen was in use in commerce as of the application filing date; and (3) supplies the date of first use anywhere and the date of first use in commerce of the mark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1), 2.59(a), and 2.71(c)(1); TMEP §§806.01(a), 806.03(i), 903.01, 903.02, 903.04, and 904.05.
If an applicant began using the mark in commerce after the application filing date, the applicant cannot add or substitute §1(a) as a basis. However, the applicant may add or substitute §1(b) as a basis, and concurrently file an amendment to allege use. See TMEP §806.03(d) regarding amendment of the basis from §44 to §1(b), and TMEP §§1104 et seq. regarding amendments to allege use.
806.03(g) Amendment From §1(b) to §44
An applicant may amend the basis from §1(b) to §44, if the applicant meets the requirements of §44 as of the filing date of the amendment. It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).
When an applicant adds §44(e) as a basis, the applicant must submit a copy of the foreign registration (and a translation, if necessary) with the amendment. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b).
The applicant may add a claim of priority under §44(d) only within the six- month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.02(f) regarding §44(d) combined with another basis.
If the amendment is filed before publication, the applicant must clearly indicate whether it wants to: (1) add the §44 basis and maintain the §1(b) basis; or (2) replace the §1(b) basis with the §44 basis. If the applicant chooses to add §44 and maintain the §1(b) basis, the application will proceed to publication with a dual basis. See TMEP §§806.03(j) et seq. regarding amendment of the basis after publication.
806.03(h) Effect of Substitution of Basis on Application Filing Date
When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis. The applicant will retain the original filing date, provided that the applicant has had a continuing valid basis for
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registration since the application filing date. Unless there is contradictory evidence in the record, the USPTO will presume that there was a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3); Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009); Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).
If the applicant properly asserts a claim of priority under §44(d) during the six- month priority period, the applicant will retain the priority filing date, no matter which basis for registration is ultimately established, provided that the applicant has had a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3) and (4); TMEP §§806.02(f) and 1003.
If there is no continuing valid basis, the application is void, and registration will be refused. In this situation, the applicant cannot amend the filing date, and the USPTO will not refund the filing fee. See TMEP §205.
806.03(i) Verification of Amendment Required
An applicant who adds or substitutes use in commerce under §1(a) as a basis must verify that the mark is in use in commerce on or in connection with the goods/services covered by the §1(a) basis, and that the mark was in use in commerce on or in connection with these goods/services as of the filing date of the application. 37 C.F.R. §2.34(a)(1)(i).
An applicant who adds or substitutes §1(b), §44(d), or §44(e) as a basis must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services covered by the amendment, and that the applicant had a bona fide intention to use the mark in commerce on or in connection with these goods/services as of the filing date of the application, unless a verified statement of the applicant’s bona fide intention to use the mark in commerce has already been filed with respect to all the goods/services covered by the new basis. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i), and 2.34(a)(4)(ii).
Example: If a §44 application originally included a verified statement that the applicant had a bona fide intention to use the mark in commerce, it is not necessary to repeat this statement if the applicant later adds or substitutes a §1(b) basis for the goods/services covered by the §44 basis.
See TMEP §804.04 regarding persons who may sign a verification on behalf of an applicant under 37 C.F.R. §2.33(a).
806.03(j) Petition to Amend Basis After Publication - §1 or §44 Application
37 C.F.R. §2.35(b)(2). After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding
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before the Trademark Trial and Appeal Board, but only with the express permission of the Director, 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 §2.133(a).
In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a) (see TBMP §514).
When granting a petition to amend the basis, the Director will restore jurisdiction to the examining attorney to consider the amendment, except in a §1(b) application in which the notice of allowance has issued. See TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.
If the examining attorney accepts the new basis, the mark must be republished. 37 C.F.R. §2.35(b)(2).
If the examining attorney does not accept the new basis, he or she will issue an Office action using standard examination procedures except in a §1(b) application in which a notice of allowance has issued and no statement of use has been filed. See TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.
Any petition to change the basis must be filed before issuance of the registration. To avoid the possible issuance of a registration without consideration of the petition, an applicant should submit the petition no later than six weeks after publication.
The Director will not grant a petition to amend the basis after publication if the amendment could substantially delay prosecution of the application. For example, the Director will deny petitions to amend the basis after publication in the following situations:
• Once the Director has granted a petition to amend the basis after publication, the Director will not thereafter grant a second petition to amend the basis with respect to the same application.
• If an applicant had previously deleted a §1(b) basis after a notice of allowance had issued, the Director will not grant a petition to re- assert §1(b) as a basis for registration. This would require issuance of a new notice of allowance and could result in filing of a statement of use more than 36 months after issuance of the first notice of
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allowance, which is not permitted under §1(d) of the Act, 15 U.S.C. §1051(d).
See TMEP §806.03(j)(i) regarding amendment of the basis in a §1(b) application between publication and issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.
Petitions to amend the basis after publication are processed by the Office of Petitions, which is part of the Office of the Deputy Commissioner for Trademark Examination Policy.
806.03(j)(i) Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance
An applicant who wants to add a §44(e) basis to a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j). The petition should indicate whether applicant wants to maintain the §1(b) basis. The applicant has three options:
(1) Applicant may delete the §1(b) basis and substitute §44(e). If the petition is granted, the Office of Petitions will delete the §1(b) basis from TRAM, and enter the foreign registration information. The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the examining attorney will approve the mark for republication. If registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant cannot later re-assert the §1(b) basis;
(2) Applicant may add §44(e) and retain the §1(b) basis. If the Director grants the petition and the examining attorney accepts the §44(e) basis, the application will be republished with a dual basis and, if registration of the mark is not opposed, a notice of allowance will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment and proceed under §1(b) as the sole basis; or
(3) Applicant may add §44(e) and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis. If the Director grants the petition and the examining attorney accepts the §44(e) basis, the examining attorney will: (a) ensure that the §1(b) basis is deleted from TRAM; and (b) approve the mark for
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republication. If the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment and proceed under §1(b) as the sole basis.
806.03(j)(ii) Amending the Basis of a §1(b) Application Between Issuance of Notice of Allowance and Filing of Statement of Use
Amendments Adding or Substituting a §44 Basis
An applicant who wants to add or substitute a §44(e) basis in a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment. If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j).
The petition should indicate whether applicant wants to maintain the §1(b) basis. The applicant has three options:
(1) The applicant may delete the §1(b) basis and substitute §44(e). If the petition is granted, Office of Petitions will delete the §1(b) basis from TRAM, and enter the foreign registration information. The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the mark will be republished and, if registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the new basis, the examining attorney will issue an Office action advising the applicant of the reasons. The applicant cannot re-assert the §1(b) basis;
(2) The applicant may add §44(e) and perfect the §1(b) basis by filing a statement of use with the petition. The Director will not grant a petition to add §44(e) and retain the §1(b) basis unless a statement of use is filed with the petition, because examination of the §44(e) basis could substantially delay prosecution of the application. If the examining attorney found the §44(e) basis unacceptable, the notice of allowance would have to be cancelled in order to issue an Office action. The USPTO will not cancel or reissue the notice of allowance in this situation, since this could result in the filing of a statement of use more than 36 months after issuance of the first notice of allowance, which is not permitted under §1(d) of the Act, 15 U.S.C. §1051(d). If the petition is granted, the examining attorney will examine the §44(e) basis during examination of the statement of use; or
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(3) As noted above, the applicant may not add §44(e) and maintain a dual basis, unless a statement of use is filed with the petition. However, the applicant may add a §44(e) basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis. If the Director grants the petition and the examining attorney accepts the §44(e) basis, the examining attorney will: (a) ensure that the §1(b) basis is deleted from TRAM; and (b) approve the mark for republication. If the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis, the §1(b) basis will be maintained. The examining attorney will notify the applicant by telephone or e-mail that the §44(e) basis is unacceptable and that an Office action will issue during examination of the statement of use, and make an appropriate note in the “Notes-to-the-File” section of the record. The application will then await the filing of the statement of use. The applicant may withdraw the request to amend the basis.
See also 37 C.F.R. §2.77 and TMEP §§1107 et seq.
Amendments That Apply to Less Than All the Goods/Services
The Director will not grant a petition to amend the basis if the amendment does not apply to all the goods/services covered by the §1(b) basis, unless the applicant concurrently files: (1) a request to divide out the goods/services to which the amendment applies; or (2) an amendment deleting the good/services not covered by the amendment. See 37 C.F.R. §2.87 and TMEP §§1110 et seq. regarding requests to divide.
806.03(j)(iii) Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration
A §1(b) applicant who wants to add or substitute a §44(e) basis after filing a statement of use must petition the Director to allow the examining attorney to consider the amendment. If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j).
While an applicant may not withdraw the statement of use (37 C.F.R. §2.88(g); TMEP §1109.17), the applicant may elect not to perfect the use basis and substitute §44(e). The statement of use, specimen(s), and any materials submitted with the statement of use will remain part of the record even if the §1(b) basis is deleted. See 37 C.F.R. §2.25.
The petition should indicate whether applicant wants to maintain the §1(b) basis. The applicant has three options:
(1) The applicant may delete the §1(b) basis and substitute §44(e). If the petition is granted, the Office of Petitions will delete the §1(b)
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basis from TRAM, and enter the foreign registration information. The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the examining attorney must e-mail the internal TMPHOTOCOMP mailbox to ensure that the mark is republished. If registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the new basis, the examining attorney will issue an Office action advising the applicant of the reasons. The applicant cannot re-assert the §1(b) basis;
(2) The applicant may add §44(e) and maintain the §1(b) basis. If the petition is granted, the examining attorney will be instructed to examine both the §1(b) and §44(e) bases, in accordance with standard examination procedures. If the §44(e) basis is unacceptable, the examining attorney must issue an Office action explaining the reasons. If an Office action is already outstanding, the examining attorney must issue a supplemental Office action, with a new six-month response period. The examining attorney must indicate that the action is supplemental to the previous action and must incorporate all outstanding issues by reference to the previous action.
If the §44(e) basis is acceptable, an Office action is outstanding, and deletion of the §1(b) basis would resolve all outstanding issues, the examining attorney should contact the applicant by telephone or e-mail to notify the applicant that the §44(e) basis is acceptable and inquire as to whether the applicant wants to delete the §1(b) basis. The §1(b) basis may be deleted by examiner’s amendment. If the applicant authorizes such an examiner’s amendment, the examining attorney must e-mail the internal TMPHOTOCOMP mailbox to ensure that: (a) the §1(b) basis is deleted from TRAM; (b) the dates of use are deleted from TRAM; (c) the foreign registration information is entered; and (d) the mark is republished. If the mark is not successfully opposed, a registration will issue.
If the applicant does not want to delete the §1(b) basis, the examining attorney must advise the applicant that a response to the Office action is due within six months of the date of issuance, and make an appropriate note in the “Notes-to-the-File” section of the record. The applicant must respond to the Office action within six months of the issuance date, or the application will be abandoned; or
(3) The applicant may add a §44(e) basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis. If the petition is granted, the examining attorney will be instructed to examine the §44(e) basis in addition to the statement of use.
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If the examining attorney accepts the §44(e) basis, the examining attorney must issue a “no-call” examiner’s amendment (see TMEP §707.02), and must e-mail the internal TMPHOTOCOMP mailbox to ensure that: (a) the §1(b) basis is deleted from TRAM; (b) the dates of use are deleted from TRAM; (c) the foreign registration information is entered; and (d) the mark is republished. If the mark is not successfully opposed, a registration will issue.
If the examining attorney does not accept the §44(e) basis, he or she will refuse the amendment to the basis and address any additional issue(s) that arise during examination of the statement of use in an Office action. If an Office action has already been issued, the examining attorney must issue a supplemental action, with a new six-month response period, notifying the applicant that the §44 basis is unacceptable. The examining attorney must indicate that the action is supplemental to the previous action and incorporate all outstanding issues by reference to the previous action. The applicant may choose to withdraw the request to amend the basis.
Filing a petition to add or substitute a new basis does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in an application. See TMEP §§711 et seq. regarding the deadline for response to an Office action. If the applicant has filed a petition to delete the §1(b) basis and substitute §44(e), but the petition has not yet been acted on, the applicant may respond to a refusal or requirement relating only to the §1(b) basis by informing the examining attorney that a petition has been filed to add §44(e) and delete the §1(b) basis. If the applicant has filed a petition to add a §44(e) basis and maintain the §1(b) basis, or a petition requesting that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis, but the petition has not yet been acted on, the applicant should state in the response that the petition has been filed, but must also respond to any outstanding issues regarding the statement of use.
806.03(k) Basis Cannot be Changed in §66(a) Application
In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a). See TMEP §§1904.09 et seq. regarding transformation.
806.03(l) §66(a) Basis Cannot be Added to §1 or §44 Application
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. It cannot be added or substituted as a basis in an application originally filed under §1 or §44.
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806.04 Deleting a Basis
If an applicant claims more than one basis, the applicant may delete a basis at any time, before or after publication. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a basis from a multiple-basis application after publication. When the applicant deletes a basis, the applicant must also delete any goods or services covered solely by that basis. 37 C.F.R. §2.35(b)(7).
To expedite processing, the USPTO recommends that a request to delete a §1(b) basis from a multiple-basis application be filed through TEAS, at http://www.uspto.gov/teas/index.html.
806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance
If an application is based on §1(b) in addition to another basis, the applicant may file a request to delete the §1(b) basis by amendment at any time, except as set forth below. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a §1(b) basis from a multiple-basis application after publication. To expedite processing, the USPTO recommends that any request to delete a §1(b) basis be filed through TEAS, at http://www.uspto.gov/teas/index.html, using the “Request to Delete §1(b) Basis” form.
If a notice of allowance has issued, the request must be filed: (1) within six months of the issuance date of the notice of allowance, or within a previously granted extension of time to file a statement of use; or (2) between the filing date of the statement of use and the date on which the examining attorney approves the mark for registration. If filed on paper, the request should be directed to the ITU Unit. The ITU Unit will cancel the notice of allowance, and take the necessary steps to delete the §1(b) basis and issue the registration.
If filed on paper before issuance of the notice of allowance, the request should be faxed to Post Publication Amendments/Corrections at 571-270- 9007. The request will be reviewed by paralegal specialists in the Office of Petitions, who will delete the §1(b) basis and schedule the mark for issuance of the registration.
806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis
If an applicant properly claims §44(d) in addition to another basis, the applicant may elect not to perfect a §44(e) basis and still retain the §44(d) priority filing date. 37 C.F.R. §§2.35(b)(3) and (4); TMEP §§806.01(c) and 806.02(f).
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When a §44(d) applicant elects not to proceed to registration under §44(e), the USPTO does not delete the §44(d) priority claim from the TRAM database. Both the §44(d) priority claim and the other basis will remain in the TRAM database.
Sometimes, a §44(d) applicant who elects not to perfect a §44(e) basis will file an amendment “deleting” the §44 basis. In this situation, the USPTO will presume that the applicant wants to retain the priority claim, unless the applicant specifically states that it wants to delete the priority claim and instead rely on the actual filing date of the application in the United States.
If the applicant is not entitled to priority (e.g., because the United States application was not filed within six months of the foreign filing), the examining attorney should ensure that the priority claim is deleted from the TRAM database, and should conduct a new search of USPTO records for conflicting marks.
806.05 Review of Basis Prior to Publication or Issue
If an application claims more than one basis, the examining attorney must ensure that the record clearly and accurately shows which goods are covered by which basis before approving the application for publication for opposition or registration on the Supplemental Register. If there are any errors, the examining attorney must ensure that the TRAM database is corrected.
When a single class has different bases for goods or services within the same class, the USPTO uses parentheses to indicate the specific basis for specific goods or services. When entering this information into the TRAM database, the examining attorney or LIE must refer to “use in commerce” or “intent to use” rather than referring to the statutory citation.
Example: Class 025: (Based on Use in Commerce) PANTS; (Based on Intent to Use) SHIRTS.
807 Drawing
The drawing shows the mark sought to be registered. 37 C.F.R. §2.52. An applicant must submit a clear drawing with the original application in order to receive a filing date in any application for registration of a mark, except in applications for registration of sound, scent, and other non-visual marks. See 37 C.F.R. §§2.21(a)(3) and 37 C.F.R. 2.52(e); see also TMEP §807.09 regarding “drawings” in applications for registration of non-visual marks. Submitting a specimen showing how the mark is or may be used (e.g., the overall packaging, a photograph of the goods, or an advertisement) does not satisfy the requirement for a clear drawing of the mark. See TMEP §202.01.
The drawing is used to reproduce the mark in the Trademark Official Gazette and on the registration certificate.
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The main purpose of the drawing is to provide notice of the nature of the mark sought to be registered. The drawing of a mark is promptly entered into the automated records of the USPTO and is available to the public through the Trademark Electronic Search System (“TESS”) and the Trademark Applications and Registrations Retrieval (“TARR”) database on the USPTO website at http://tarr.uspto.gov/. Timely public notification of the filing of applications is important, because granting a filing date to an application potentially establishes a date of constructive use of the mark (see TMEP §201.02). Therefore, an application must include a clear drawing of the mark to receive a filing date. 37 C.F.R. §2.21(a)(3); TMEP §202.01.
Examining attorneys must require applicants to comply promptly with the drawing rules. Requests to defer drawing corrections until the application is approved for publication or registration should be denied.
There are two forms of drawings: “special form drawings” and “standard character drawings.” See 37 C.F.R. 2.52(a) and (b); see also TMEP §§807.03 et seq. for information about standard character drawings, and TMEP §§807.04 et seq. for information about special form drawings. (Note: “Typed” drawings are acceptable for applications filed before November 2, 2003. See TMEP §807.03(i)).
The mark in the drawing must agree with the mark as used on the specimen in an application under §1 of the Trademark Act, 15 U.S.C. §1051; as applied for or registered in a foreign country in an application under §44, 15 U.S.C. §1126; or as it appears in the international registration in an application under §66(a), 15 U.S.C. §1141f(a). 37 C.F.R. §2.51; TMEP §§807.12 et seq. and 1011.01.
In a TEAS application, the drawing must be submitted electronically through TEAS, and must meet the requirements of 37 C.F.R. §§2.52 and 2.53 (see TMEP §§807.05 et seq.). In a paper application, the drawing must be submitted on paper and must meet the requirements of 37 C.F.R. §§2.52 and 2.54 (see TMEP §§807.06 et seq.).
807.01 Drawing Must Show Only One Mark
An application must be limited to only one mark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.52. See In re International Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999)
Under 37 C.F.R. §2.21(a)(3), an applicant must submit “a clear drawing of the mark” to receive a filing date. An application that includes two or more drawings displaying materially different marks does not meet this requirement. Two marks are considered to be materially different if the substitution of one for the other would be a material alteration of the mark, within the meaning of 37 C.F.R. §2.72 (see TMEP §§807.14 et seq.).
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Accordingly, if an applicant submits two or more drawing pages, the application is denied a filing date, because the applicant has not met the requirement for a clear drawing of the mark. See TMEP §202.01 for further information. See also Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004). However, if an applicant submits a separate drawing page in a paper application showing a mark, and a different mark appears in the written application, the application will receive a filing date, and the drawing page will control for purposes of determining what the mark is. The USPTO will disregard the mark in the written application. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001). Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the “Mark” field of a TEAS application, and a different mark appears in another field, the application will receive a filing date, and the mark entered in the “Mark” field will control for purposes of determining what the mark is.
The USPTO will not deny a filing date if the drawing shows spatially separate elements. If the applicant submits an application where the “drawing” is composed of multiple elements on a separate page, multiple elements on a single digitized image, or multiple elements in a separate area of the body of the application, the applicant has met the requirement of 37 C.F.R. §2.21(a)(3) for a clear drawing of the mark. The examining attorney must determine whether the matter presented for registration is a single mark projecting a unitary commercial impression. See TMEP §807.12(d) regarding “mutilation” or incomplete representation of the mark.
If the examining attorney determines that spatially separate elements constitute two or more different marks, the examining attorney should refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the applicant seeks registration of more than one mark. See In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974); In re Robertson Photo-Mechanix, Inc., 163 USPQ 298 (TTAB 1969). This refusal may apply in any application, regardless of the filing basis.
When registration is refused because the matter presented on the drawing does not constitute a single mark, the application filing fee will not be refunded. The applicant may amend the drawing if the amendment does not materially alter the mark, or may submit arguments that the matter on the drawing does in fact constitute a single mark. See TMEP §§807.14 et seq. regarding material alteration, and TMEP §807.14(a) regarding deletion of matter from the drawing.
Under 37 C.F.R. §2.52(b)(2), even if registration is sought for a three- dimensional mark, the applicant must submit a drawing depicting a single
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rendition of the mark. See TMEP §807.10. If the applicant submits a drawing that depicts a three-dimensional mark in multiple renditions, the examining attorney will require a substitute drawing depicting the mark in a single rendition. If the applicant believes that its mark cannot be adequately depicted in a single rendition, the applicant may file a petition under 37 C.F.R. §2.146 requesting that the rule be waived. See TMEP Chapter 1700 regarding petitions.
If the mark is duplicated in some form on the drawing (e.g., a typed word and a stylized display of the same word), this is generally not considered to be two materially different marks, and deletion of one of the marks is permitted.
See TMEP §§1214 et seq. regarding the refusal of registration of a mark with a “phantom” element on the ground that it includes more than one mark in a single application.
See also In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001) (hologram used on trading cards in varying shapes, sizes, contents, and positions constitutes more than one “device” as contemplated by §45 of the Trademark Act).
807.02 Drawing Must Be Limited to Mark
The drawing allows the USPTO to properly code and index the mark for search purposes, indicates what the mark is, and provides a means for reproducing the mark in the Official Gazette and on the certificate of registration. Therefore, matter that appears on the specimen that is not part of the mark should not be placed on the drawing. Purely informational matter such as net weight, contents, or business addresses are generally not considered part of the mark.
Quotation marks and hyphens should not be included in the mark on a drawing, unless they are a part of the mark. See TMEP §§807.12(a)(i) through (a)(iii) and 807.14(c) regarding the role of punctuation in determining whether the mark on the drawing agrees with the mark on the specimen. The drawing may not include extraneous matter such as the letters “TM,” “SM,” the copyright notice ©, or the federal registration notice ®. See TMEP §§906 et seq. regarding use of the federal registration notice.
See TMEP §807.14(a) regarding requirements for removal of matter from the drawing.
807.03 Standard Character Drawings
37 C.F.R. §2.52(a). Standard character (typed) drawing. Applicants who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color must submit a standard character drawing that shows the mark in black on a white background. An
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applicant may submit a standard character drawing if:
(1) The application includes a statement that the mark is in standard characters and no claim is made to any particular font style, size, or color;
(2) The mark does not include a design element;
(3) All letters and words in the mark are depicted in Latin characters;
(4) All numerals in the mark are depicted in Roman or Arabic numerals; and
(5) The mark includes only common punctuation or diacritical marks.
Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. Applicants who seek to register a mark without any claim as to the manner of display must submit a standard character drawing that complies with the requirements of 37 C.F.R. §2.52(a).
807.03(a) Requirements for Standard Character Drawings
A standard character drawing must show the mark in black on a white background. An applicant may submit a standard character drawing if:
• The mark does not include a design element;
• All letters and words in the mark are depicted in Latin characters;
• All numerals in the mark are depicted in Roman or Arabic numerals;
• The mark includes only common punctuation or diacritical marks; and
• No stylization of lettering and/or numbers is claimed in the mark.
37 C.F.R. §2.52(a).
In the drawing, the applicant may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters, or all lowercase letters, since no claim is made to any particular font style, size, or color. The applicant does not have to display the mark in all uppercase letters.
Superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set (see TMEP §807.03(b)) are not permitted in standard character drawings. In re AFG Industries Inc., 17 USPQ2d 1162 (TTAB 1990) (special form drawing required for raised numeral). The degree symbol is permitted.
Underlining is not permitted in a standard character drawing.
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Standard Character Claim Required. An applicant who submits a standard character drawing must also submit the following standard character claim:
The mark consists of standard characters without claim to any particular font style, size, or color.
This statement will appear in the Official Gazette and on the certificate of registration.
807.03(b) List of Standard Characters
The USPTO has created a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing. The standard character set is available on the USPTO website at http://teas.uspto.gov/standardCharacterSet.html. If the applicant has claimed standard character format and the drawing includes elements that are not in the set, then the examining attorney must treat the drawing as a special form drawing, ensure that the mark drawing code is changed, and require the applicant to delete the standard character claim. See TMEP §807.18 concerning mark drawing codes.
In a §66(a) application, if the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even if the international registration indicates that the mark is in standard characters. See the IB’s Guide to International Registration, Para. B.II.14.08.
807.03(c) Drawings Containing Both a Standard Character Claim and Designs or Other Elements
If the application contains a standard character claim, but the mark includes a design element, or color, or a claim of a particular style or size of lettering, or other elements such that the mark does not meet the requirements of 37 C.F.R. §2.52(a), then the examining attorney must: (1) treat the drawing as a special form drawing; (2) require that the applicant delete the standard character claim from the record; (3) ensure that the appropriate mark drawing code is entered into the TRAM database; and (4) if appropriate, add design search codes. See TMEP §807.18 concerning mark drawing codes, and TMEP §104 regarding design codes.
Similarly, a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons.
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807.03(d) Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration
A special form drawing containing a design element, color, a claim to a particular style or size of lettering, or other distinctive elements cannot be amended to a standard character drawing, unless the examining attorney determines that the amendment is not material. 37 C.F.R. §2.72.
Conversely, a standard character drawing cannot be amended to a special form drawing containing a design element, color, or a claim to a distinctive style or size of lettering, unless the examining attorney determines that the amendment is not material. 37 C.F.R. §2.72. See TMEP §§807.14 et seq. regarding material alteration.
807.03(e) Standard Character Drawing and Specimen of Use
When the applicant submits a standard character, the mark shown in the drawing does not necessarily have to appear in the same font style, size, or color as the mark shown on the specimen of use. However, the examining attorney must review the mark depicted on the specimen to determine whether a standard character claim is appropriate, or whether a special form drawing is required.
If the examining attorney determines that the standard characters are displayed in a distinctive manner that changes the meaning or overall commercial impression of the mark, the examining attorney must process the drawing as a special form drawing, and require the applicant to delete the standard character claim. As with all drawings, the mark on the drawing must be a substantially exact representation of the mark used on the specimen in an application under §1 of the Trademark Act. 37 C.F.R. §§2.51(a) and (b); TMEP §§807.12(a) et seq.
The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or the applicant’s qualified practitioner. When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed. See TMEP §807.18 concerning mark drawing codes.
See TMEP §807.04(b) for further information as to when a special form drawing is required.
807.03(f) Standard Character Drawing and Foreign Registration
In a §44 application, if the applicant claims standard characters, the examining attorney must ensure that the foreign registration also claims standard characters. See 37 C.F.R. §2.51(c); TMEP §807.12(b).
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If the foreign registration certificate does not indicate that the mark is in standard characters (or the equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent). The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the United States application. A statement that the foreign registration includes a claim that the mark is in standard characters may be entered through a note in the “Notes-to-the-File” section of the record, if there are no other outstanding issues.
Appendix E of this manual lists countries that register marks in standard characters or the equivalent. For countries on this list, if the drawing of the mark in the foreign registration is in block letters or other plain type font, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent. If the applicant has indicated that the mark is not in standard characters or the equivalent, but the foreign registration is from a country on the list and the mark appears in block letters or other plain type font, the examining attorney must inquire about the discrepancy. In response to the inquiry, the applicant must either amend the application to claim standard characters, or confirm that the mark is not in standard characters or the equivalent. If a particular country is not on this list, the examiner must inquire as to whether the mark in the foreign registration is for a mark in standard characters or the equivalent.
The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or applicant’s qualified practitioner. When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed. See TMEP §807.18 concerning mark drawing codes.
807.03(g) Drawings in “Typed” Format With No Standard Character Claim
Section 1 Applications. If the application does not include a standard character claim, but the mark is shown in a format that would have been considered “typed” prior to November 2, 2003 (i.e., the mark is shown in capital letters, or the mark is specified as “typed” in the body of the application, on a separate drawing page, or on a cover letter filed with the application), the drawing will initially be coded and entered into the automated records of the USPTO as a special form drawing. However, the examining attorney must treat the drawing of the mark as a standard character drawing, and ensure that a standard character claim is entered into the record.
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If the application is ready to be published for opposition, the examining attorney should enter the standard character claim by a no-call examiner’s amendment. In this situation, no prior authorization from the applicant is required to add a claim by an examiner’s amendment. See TMEP §707.02. If an Office action is necessary, it must include a requirement that the applicant submit a standard character claim.
Once the applicant submits a standard character statement, the examining attorney should ensure that the mark drawing code is changed to 4 (see TMEP §807.18).
Section 44 Applications. In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters. See TMEP §807.03(f).
Section 66(a) Applications. In a §66(a) application, the request for extension of protection forwarded by the IB normally indicates whether there is a standard character claim in the international registration. However, due to differences in requirements for standard character claims in different countries, there may be situations where the mark in the international registration meets the USPTO’s requirements for a standard character claim, but no standard character claim is set forth in the international registration. If the international registration does not indicate that the mark is in standard characters, and the applicant seeks to amend the §66(a) application to add a standard character claim, the examining attorney must contact the Supervisor of the Madrid Processing Unit (“MPU”) via e-mail for instructions on how to proceed. The applicant may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a) (see TMEP §§807.03(a) and (b)).
807.03(h) Drawings Where the Format Is Unclear
Section 1 Applications. When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification. For example, clarification is needed if the font style used in the mark on the drawing does not match the font style used on the specimen and there is no standard character claim in the application, or if the applicant files a paper application in which the mark is printed or written by hand. If the mark is intended to be in standard characters, then the examining attorney must require that the applicant amend the application to include the standard character claim. This may be done by examiner’s amendment. Once the applicant submits this statement, the examining attorney should ensure that the mark drawing code is changed to 4 (see TMEP §807.18).
Section 44 Applications. In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters. See TMEP §807.03(f).
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Section 66(a) Applications. In a §66(a) application, the request for extension of protection forwarded by the IB normally indicates whether there is a standard character claim in the international registration. However, due to differences in requirements for standard character claims in different countries, there may be situations where the mark in the international registration meets the USPTO’s requirements for a standard character claim, but no standard character claim is set forth in the international registration. If the international registration does not indicate the mark is in standard characters, and the applicant seeks to amend the §66(a) application to add a standard character claim, the examining attorney must contact the MPU Supervisor via e-mail for instructions on how to proceed. The applicant may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a) (see TMEP §§807.03(a) and (b)).
Alternatively, if the international registration indicates that the mark is in standard characters, but the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even if the international registration indicates that the mark is in standard characters. See the IB’s Guide to International Registration, Para. B.II.14.08.
The Guide to the International Registration provides that if an Office “considers that the mark is not in standard characters, it may issue a refusal, for example, on the ground that the international registration covers two marks (one in standard characters and one in special characters) or that it is simply not clear for what protection is sought.” Para. B.II.14.09. See TMEP §807.01 regarding multiple marks and §§1214 et seq. regarding phantom marks.
807.03(i) Typed Drawings
Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. The mark on a typed drawing had to be typed entirely in capital letters. A typed mark is the legal equivalent of a standard character mark.
807.04 Special Form Drawings
Extract from 37 C.F.R. §2.52(b). Special form drawing. Applicants who seek to register a mark that includes a two or three-dimensional design; color; and/or words, letters, or numbers or the combination thereof in a particular font style or size must submit a special form drawing. The drawing should show the mark in black on a white background, unless the mark includes color.
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807.04(a) Characteristics of Special Form Drawings
A “special form drawing” is a drawing that presents a mark comprised, in whole or in part, of special characteristics such as elements of design or color, style(s) of lettering, or unusual form(s) of punctuation.
All special form drawings must be of a quality that will reproduce satisfactorily for scanning into the USPTO’s database. If the drawing is not of a quality that will reproduce satisfactorily for scanning and printing in the Official Gazette and on the certificate of registration, the examining attorney must require a new drawing. If there is any doubt as to whether the drawing is acceptable, the examining attorney should contact the Office of Trademark Quality Review.
Pasted material, taped material, and correction fluid is not acceptable because it does not reproduce satisfactorily.
See TMEP §807.18 concerning mark drawing codes.
807.04(b) When Special Form Drawing is Required
A special form drawing is required if words, letters, or numerals are presented in a distinctive form that changes the meaning or overall commercial impression of the mark. In re Morton Norwich Products, Inc., 221 USPQ 1023 (TTAB 1983); In re United Services Life Ins. Co., 181 USPQ 655 (TTAB 1973); In re Dartmouth Marketing Co., Inc., 154 USPQ 557 (TTAB 1967).
A special form drawing is required for marks that contain superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set. In re AFG Industries Inc., 17 USPQ2d 1162 (TTAB 1990) (special form drawing required for raised numeral). See TMEP §807.03(b) regarding the USPTO’s standard character set.
The USPTO encourages the use of standard character drawings. As a general rule, an applicant may submit a standard character drawing when a word, letter, numeral, or combination thereof creates a distinct commercial impression apart from any stylization or design element appearing on the specimen. If a mark remains the same in essence and is recognizable regardless of the form or manner of display that is presented, displaying the mark in standard character format affords a quick and efficient way of showing the essence of the mark. In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) (Board reversed refusal on the ground that the standard character mark on the drawing was not a substantially exact representation of the mark as actually used, finding that SPECTRAMET creates a distinct commercial impression apart from any stylization or design element appearing on the specimens, on which the letter “C” was displayed with an arrow design); In re Oroweat Baking Co., 171 USPQ 168 (TTAB 1971) (requirement for special form drawing to register OROWEAT displayed with wheat designs in the letter
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“O” held improper); In re Electronic Representatives Ass’n, 150 USPQ 476 (TTAB 1966) (special form drawing not required when acronym makes an impression apart from design).
When an application is for a mark in standard characters, the examining attorney should consider the manner in which the mark is used on the specimen, and decide whether the mark includes an essential element or feature that cannot be produced by the use of standard characters. For example, if the mark comprises the prescription symbol Rx, a claim of standard characters would be inappropriate. See TMEP §§807.12(a) et seq. regarding agreement between the mark on the drawing and the mark used on the specimen.
If the examining attorney determines that the mark in a standard character drawing should have been presented in special form, the applicant may submit a special form drawing if the amendment would not result in a material alteration of the mark. The applicant cannot substitute a special form drawing if the amendment would materially alter the mark. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. If a standard character drawing is amended to a special form drawing, the examining attorney must ensure that the mark drawing code is changed. See TMEP §807.18 concerning mark drawing codes.
807.05 Electronically Submitted Drawings
The drawing in a TEAS application must meet the requirements of 37 C.F.R. §§2.52 and 2.53.
The USPTO has waived the requirement of 37 C.F.R. §2.53(c) that drawings have a length and width of no less than 250 pixels and no more than 944 pixels. See notice at 69 Fed. Reg. 59809 (Oct. 6, 2004). However, applicants are encouraged to continue to submit drawings with a length and width of no less than 250 pixels and no more than 944 pixels.
807.05(a) Standard Character Drawings Submitted Electronically
If an applicant is filing a standard character drawing, the applicant must enter the mark in the appropriate data field. The applicant must also submit a standard character claim, which is automatically generated once the applicant selects the standard character option. 37 C.F.R. §2.52(a)(1).
When an application for a standard character mark is filed through TEAS, the characters entered in the appropriate data field in the TEAS application or TEAS response form are automatically checked against the USPTO’s standard character set. See TMEP §807.03(b) regarding the standard character set.
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If all the characters in the mark are in the standard character set, the USPTO will create a digitized image that meets the requirements of 37 C.F.R. §2.53(c), and automatically generate the standard character statement. The application record will indicate that standard characters have been claimed and that the USPTO has created the image. The examining attorney need not check the standard character mark against the standard character set during examination.
807.05(a)(i) Long Marks in Standard Character Drawings
As noted in TMEP §807.05(a), when an applicant files an application for a standard character mark through TEAS, the applicant must enter the mark in the appropriate data field.
A single line can consist of no more than 26 characters, including spaces. If the applicant enters a mark that exceeds 26 characters into the standard character word mark field, the USPTO’s automated system will break the mark, so that it fits into the Official Gazette. After 26 characters, the mark will automatically continue onto the next line. The online TEAS instructions provide further information about breaks in long standard character marks. If a standard character mark exceeds 26 characters, and the applicant has a preference as to where the mark will be broken, the applicant should use the special form option, and attach a digitized image that meets the requirements of 37 C.F.R. §2.53(c). See TMEP §807.05(c) regarding the requirements for digitized images. If the applicant selects the special form option, the applicant may not include a standard character claim.
807.05(b) Special Form Drawings Submitted Electronically
If the mark is in special form, the applicant must attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c) to the “Mark” field on the electronic application. See TMEP §807.05(c).
807.05(c) Requirements for Digitized Images
The mark image must be in .jpg format, and should be scanned at no less than 300 dots per inch and no more than 350 dots per inch, to produce the highest quality image. All lines must be clean, sharp, and solid, must not be fine or crowded, and must produce a high-quality image. 37 C.F.R §2.53(c). It is recommended that mark images have a length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels.
Mark images should have little or no white space appearing around the design of the mark. If scanning from a paper image of the mark, it may be necessary to cut out the mark and scan it with little or no surrounding white space. Failure to do this may cause the mark to appear very small in the
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USPTO’s automated records, such that it may be difficult to recognize all words or design features of the mark. To ensure that there is a clear image of the mark in the automated records of the USPTO, examining attorneys and LIEs should view the mark on the Publication Review program available on the USPTO’s internal computer network. If the mark is not clear, the examining attorney must require a new drawing that meets the requirements of 37 C.F.R. §§2.52 and 2.54.
When color is not claimed as a feature of the mark, the image must be depicted only in black and white. When scanning an image, the applicant should confirm that the settings on the scanner are set to create a black-and- white image file, not a color image file.
Mark images may not include extraneous matter such as the symbols TM or SM, or the registration notice ®. The image should be limited to the mark. See TMEP §807.02.
807.06 Paper Drawings
37 C.F.R. §2.52(d). Paper drawings. A paper drawing must meet the requirements of §2.54.
37 C.F.R. §2.54. Requirements for drawings submitted on paper.
The drawing must meet the requirements of §2.52. In addition, in a paper submission, the drawing should:
(a) Be on non-shiny white paper that is separate from the application;
(b) Be on paper that is 8 to 8.5 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 image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
(c) Include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge; and
(d) Depict the mark in black ink, or in color if color is claimed as a feature of the mark.
(e) Drawings must be typed or 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. All lines must be clean, sharp and solid, and must not be fine or crowded.
Paper drawings may be filed by mail or hand delivery. Drawings may not be submitted by facsimile transmission. 37 C.F.R. §2.195(d)(2).
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The drawing must meet the requirements of 37 C.F.R. §§2.52 and 2.54.
807.06(a) Type of Paper and Size of Mark
Size of Mark. The mark on the drawing should be no larger than 3.15 inches high by 3.15 inches wide (8 cm high by 8 cm wide). 37 C.F.R. §2.54(b).
The USPTO will create a digitized image of all drawings submitted on paper. The examining attorney must view the mark on the Publication Review program, available on the USPTO’s internal computer network. If the display of the mark appears to be clear and accurate, the examining attorney will presume that the drawing meets the size requirements of the rule.
Type of Paper and Recommended Format. The drawing should:
• Be on non-shiny white paper that is separate from the application;
• Be on paper that is 8 to 8.5 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;
• Include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge; and
• Depict the mark in black ink, or in color if color is claimed as a feature of the mark.
37 C.F.R. §§2.54(a) through (d).
The drawing must be typed or made with ink or by a process that will provide high definition when scanned. A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used. All lines must be clean, sharp, and solid, and must not be fine or crowded. 37 C.F.R. §2.54(e).
807.06(b) Long Marks in Standard Character Drawings
Because all standard character drawings are stored in USPTO systems as an image, a standard character drawing must meet the 3.15 inch (8 cm) by 3.15 inch (8 cm) requirement of 37 C.F.R. §2.54(b). If the mark is too long to meet this requirement, applicant must submit an image on which the mark is broken in an appropriate place. It is suggested that the applicant use 14-point type to ensure that the mark will be legible in the Official Gazette and on the certificate of registration.
If an applicant submits an image on which the mark exceeds the size requirements of 37 C.F.R. §2.54(b), the USPTO will reduce the image so that it will meet these requirements. See TMEP §807.06(a). This could cause the mark to appear very small. To ensure that the mark will be legible in the Official Gazette and on the certificate of registration, the examining attorney
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should view the mark on the Publication Review program available on the USPTO’s internal computer network. If the mark is not legible, the examining attorney must require a new drawing that meets the requirements of 37 C.F.R. §§2.52 and 2.54.
807.06(c) Separate Drawing Page Preferred
The USPTO recommends that an applicant submit a drawing of the mark on a separate page from the written application. 37 C.F.R. §2.54(a). However, a separate drawing page is not mandatory. Instead of a drawing page, an applicant may include a drawing of the mark embedded in the application, in either the heading or the body of the application.
If the applicant identifies a separate page as a drawing (e.g., by labeling it as a drawing, or providing a heading with the applicant’s name, address and the subject goods/services), this will be the only drawing considered.
A mark depicted on the specimen or in the foreign registration certificate will not be considered a drawing.
If there is no separate drawing page, the examining attorney must review the application to determine what the mark is. If an embedded drawing meets the requirements of 37 C.F.R. §§2.51, 2.52, and 2.54, the examining attorney should accept it and not require a substitute drawing.
Effective October 30, 1999, a separate drawing page is considered part of the written application, not a separate element. Dates of use, disclaimers, descriptions of the mark, identifications of goods/services, and other information that appears on the drawing are also considered part of the written application. This applies to substitute drawings as well as original drawings. If there is an inconsistency between the information on the drawing page and the information in the body of the application, the examining attorney must require clarification.
If an applicant submits a separate drawing page showing a mark, and a different mark appears in the written application, the drawing page controls for purposes of determining what the mark is. See TMEP §807.01.
807.07 Color in the Mark
37 C.F.R. §2.52(b)(1). Marks that include color. If the mark includes color, the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.
If the applicant wishes to register the mark in color, the applicant must submit a color drawing and meet the requirements of 37 C.F.R. §2.52(b)(1). See
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TMEP §§807.07(a) et seq. regarding the requirements for color drawings. If the applicant does not claim color as a feature of the mark, the applicant must submit a black-and-white drawing.
Generally, if the applicant has not made a color claim, the description of the mark should not mention color(s), because reference to color in the description of a non-color mark creates a misleading impression. TMEP §808.02. However, in some cases, it may be appropriate to submit a black- and-white drawing and a description of the mark that refers to black, white, and/or gray, if the applicant states that color is not claimed as a feature of the mark. This occurs where the black, white, or gray is used as a means to indicate areas that are not part of the mark, such as background or transparent areas; to depict a certain aspect of the mark that is not a feature of the mark, such as dotted or broken-line outlining to show placement of the mark; to represent shading or stippling; or to depict depth or three- dimensional shape. See TMEP §§807.07(f) et seq. regarding applications with black-and-white drawings and mark descriptions that refer to black, white, or gray with no corresponding color claim; TMEP §§807.07(d) et seq. regarding color drawings that contain black, white, or gray, and TMEP §807.07(e) regarding black-and-white drawings and color claims.
See TMEP §§1202.05 et seq. regarding the registration of marks that consist solely of one or more colors used on particular objects.
807.07(a) Requirements for Color Drawings
For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings with a color claim, or drawings that show color by use of lining patterns. 37 C.F.R. §2.52(b)(1).
If the mark includes color, the drawing must show the mark in color. In addition, the application must include: (1) a claim that the color(s) is/are a feature of the mark; and (2) a color location statement in the “Description of the Mark” field naming the color(s) and describing where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1). A color drawing will not publish without both of these statements. See TMEP §807.07(a)(i) regarding the color claim, and TMEP §807.07(a)(ii) regarding the color location statement.
807.07(a)(i) Color Must Be Claimed as a Feature of the Mark
If an applicant submits a color drawing, or a description of the mark that indicates the use of color on the mark, the applicant must claim color as a feature of the mark. 37 C.F.R. §2.52(b)(1). Alternatively, the applicant may amend to a black-and-white drawing, if the amendment would not constitute a material alteration. A properly worded color claim would read as follows:
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The color(s) <name the color(s)> is/are claimed as a feature of the mark.
If the color claim is unclear or ambiguous, the examining attorney must require clarification.
The color claim must include the generic name of the color(s) claimed. The color claim may also include a reference to a commercial color identification system. The USPTO does not endorse or recommend any one commercial color identification system.
In an application filed on or after November 2, 2003, an applicant cannot file a color drawing with a statement that "no claim is made to color" or "color is not a feature of the mark.” If this occurs, the examining attorney must require the applicant to claim color as a feature of the mark. The applicant may not substitute a black-and-white drawing, unless the examining attorney determines that color is non-material.
807.07(a)(ii) Applicant Must Specify the Location of the Colors Claimed
If an applicant submits a color drawing, in addition to claiming the color(s), the applicant must include a separate statement specifying where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1). This statement is often referred to as a “color location statement.” In a TEAS application, the color location statement should be set forth in the “Description of the Mark” field. A properly worded color location statement would read as follows:
The mark consists of <specify the color(s) and literal or design element(s) on which the color(s) appear, e.g., a red bird sitting on a green leaf>.
If the color location statement is unclear or ambiguous, the examining attorney must require clarification. However, if the record contains an accurate and properly worded color claim listing all the colors, and an informal description of where the colors appear, but one of the colors is omitted from the formal description of the colors in the mark, the examining attorney may enter an amendment of the color description that accurately reflects the location of all colors in the mark without prior approval by the applicant or the applicant’s qualified practitioner. See TMEP §707.02.
Example – A TEAS applicant includes a statement in the “Miscellaneous” field that refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but omits the color yellow from the description of the mark. The examining attorney may enter an amendment of the description to accurately reflect all colors in the mark;
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The color location statement must include the generic name of the color claimed. The statement may also include a reference to a commercial color identification system. The USPTO does not endorse or recommend any one commercial color identification system.
It is usually not necessary to indicate shades of a color, but the examining attorney has the discretion to require that the applicant indicate shades of a color, if necessary to accurately describe the mark.
See TMEP §1202.05(e) for additional information regarding the requirement for a written explanation of a mark consisting solely of color.
807.07(b) Color Drawings Filed Without a Color Claim
If the applicant submits a color drawing but does not include a color claim in the written application, and if the color is a material element of the mark, the examining attorney must require the applicant to submit a claim that color(s) is a feature of the mark, and a separate color location statement in the “Description of the Mark” field naming the color(s) and specifying where the color(s) appear(s) on the mark.
In an application under §1, if the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing.
In an application under §44, the drawing of the mark must be a substantially exact representation of the mark in the foreign registration. 37 C.F.R. §2.51(c). If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes the color(s) shown as claimed features of the mark. The applicant must either: (1) submit an affirmative statement that color is a feature of the mark, and comply with the United States requirements for drawings in color; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration. If the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing. See TMEP §§807.12(b) and 1011.01.
In an application under §66(a), the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration. 37 C.F.R. §2.51(d); TMEP §807.12(c). The IB will include a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States. The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
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Generally, when a mark is depicted in color, the §66(a) application will contain a claim of the colors featured in the mark. However, because some countries accept color drawings of marks that do not include a color claim, there may be cases where no claim of color has been made in the international registration, but the reproduction of the mark contains color. In these cases, the examining attorney should require the applicant to submit either: (1) a claim of the color(s) featured in the mark and a separate statement in the “Description of the Mark” field describing where the color(s) appear(s) in the mark; or (2) a statement that no claim of color is made with respect to the international registration, and a black-and-white reproduction of the same mark depicted in the international registration to comply with United States drawing requirements. 37 C.F.R. §2.52(b).
807.07(c) Color Drawings Filed With an Incorrect Color Claim
When the color shown in the drawing page in a paper application, or in the digitized image of the drawing in a TEAS application, is inconsistent with the color claimed in the written application (e.g., the mark is shown in blue in the drawing, but the color claimed is orange), the drawing controls. The color claim may be corrected to conform to the drawing. The drawing may not be corrected to conform to the color claim, unless the examining attorney determines that the amendment is non-material.
807.07(d) Color Drawings that Contain Black, White, or Gray
When color is claimed as a feature of the mark, the applicant must submit a color claim that identifies each color and a separate color location statement describing where each color appears in the mark. 37 C.F.R §2.52(b)(1); TMEP §807.07(a). The applicant must claim all colors shown in the mark; the applicant cannot claim color for some elements of the mark and not others. See id. For example, when the drawing includes solid black lettering as well as elements in other colors, the applicant must claim the color black as a feature of the mark and include reference to the black lettering in the color location statement. The applicant may not state that solid black lettering represents all colors, or that it represents the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.
If color is claimed as a feature of the mark, the drawing may include black, white, and/or gray used in two ways: (1) as claimed features of the mark; and/or (2) as a means to depict a certain aspect of the mark that is not a feature of the mark, such as dotted or broken-line outlining to show placement of the mark on a product or package; to represent shading or stippling; to depict depth or three-dimensional shape; or to indicate areas that are not part of the mark, such as background or transparent areas. See TMEP §§807.08 and 808.01(b).
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The terms “background” and “transparent areas” refer to the white or black portions of the drawing which are not part of the mark, but appear or will appear in the particular color of the label, product, packaging, advertisement, website, or other acceptable specimen on which the mark is or will be displayed. The applicant may not claim that the background or transparent areas represent all colors or that they represent the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.
If the applicant claims color as a feature of the mark, the examining attorney must require the applicant to:
• state that the color(s) black, white, and/or gray (and all other colors in the drawing) are claimed as a feature of the mark, and describe where the colors appear on the mark; or
• if appropriate, state that the black, white, and/or gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.
These statement(s) may be submitted in either a written amendment to the application or by an examiner's amendment. The examining attorney must ensure that the statement(s) is entered into the database. The statement(s) will be printed on the registration certificate.
The only exception to the requirement to claim or explain any black, white, and/or gray shown on the drawing is that, if the background of the drawing is white and it is clear that the white background is not part of the mark, no explanation of the white background is required. For example, if the drawing depicts the letters “ABC” in solid blue on a white background, or depicts a solid purple and green flower on a white background, no statement about the white background is required. On the other hand, if the shape of each of the letters “ABC” is outlined in blue with an enclosed white interior, or if the purple and green flower is enclosed in a green or black rectangle, square, or circle with a white interior, the applicant must explain the purpose of the interior white areas on the drawing.
807.07(d)(i) Applications Under §1
If the drawing includes black, white, gray tones, gray shading, and/or gray stippling, and also includes other colors (e.g., red, turquoise, and beige), and the color claim does not include the black/white/gray, the examining attorney must require the applicant to either: (1) add the black/white/gray to the color claim and to the color location statement; or (2) if appropriate, add a statement that “The <black/white/gray> in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.”
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Drawing must match the specimen of use. The drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods or services, as shown by the specimen. 37 C.F.R. §§2.51 and 2.72(a)(1). See TMEP §§807.12(a) et seq.
For example, if the drawing shows a red flower and the letters XYZ in the color black, the specimen must show the mark in the same colors. If the specimen depicts the lettering in a color other than solid black (e.g., green), the applicant must: (1) submit an amended drawing that depicts the lettering in the color shown on the specimen, if the amendment would not materially alter the mark; and (2) amend the color claim and the color location statement to match the new drawing, e.g., replace the word “black” with the word “green.” Alternatively, the applicant may submit a substitute specimen showing use of the mark in the colors depicted on the drawing, or, if deleting the colors from the drawing would not materially alter the mark, the applicant may delete the color claim and substitute a black-and-white drawing for the color drawing. 37 C.F.R. §2.72.
807.07(d)(ii) Applications Under §44
If the applicant claims any color as a feature of the mark in the foreign registration, the applicant must claim the same color(s) in the United States application. If the foreign registration includes a color claim and also includes black, white, and/or gray that is not claimed as a feature of the mark, the applicant must state that the black/white/gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark. See 37 C.F.R. §§2.51(c) and 2.72(c)(1); TMEP §§807.12(b) and 1011.01.
In applications under §44, the drawing of the mark, including any color claim, must match the mark in the foreign registration. See 37 C.F.R. 2.51(c). An applicant under §44 who is claiming color in the United States application must state for the record that the foreign registration includes a claim of color, unless the foreign registration clearly indicates that color is a feature of the registered mark. The statement that the foreign registration includes a claim of color will not be printed on the United States registration certificate.
807.07(d)(iii) Applications Under §66(a)
If the applicant claims color as a feature of the mark, and the drawing also includes black, white, and/or gray that is not mentioned in the international registration color claim, the applicant must either: (1) claim the black/white/gray as color(s) in the United States application and describe the location of the black/white/gray; or (2) state that the black/white/gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.
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807.07(e) Black-and-White Drawings and Color Claims
If an applicant submits a black-and-white drawing that is lined for color (see TMEP §808.01(b)), or if the applicant submits a black-and-white drawing with an application that includes a color claim, the examining attorney must require the applicant to submit a color drawing, a claim that color(s) are a feature of the mark, and a separate statement naming the color(s) and describing where they appear on the mark. If, however, the examining attorney determines that the color is a non-material element of the drawing, the applicant may instead be given the option of submitting a black-and-white drawing that is not lined for color, or deleting the color claim in the written application, whichever is applicable.
If an applicant submits a black-and-white drawing that is not lined for color, and there is no color claim in the written application, generally the applicant cannot substitute a color drawing and claim color, unless the examining attorney determines that the color is a non-material element of the drawing.
807.07(f) Black-and-White Drawings that Contain Gray or Black- and-White Drawings with a Mark Description that Refers to Black, White, or Gray
807.07(f)(i) TEAS, TEAS Plus, and §66(a) Applications
If the applicant submits a black-and-white drawing that contains gray or stippling that produces gray tones, and the application states that color is not claimed as a feature of the mark, no further inquiry is required. Similarly, if an applicant submits a black-and-white drawing and a description of the mark that references black, white, and/or gray, and the applicant states that color is not claimed as a feature of the mark, no further inquiry is required and no change to the description of the mark is required.
The word “No” in the “Color Mark” field on a TEAS or TEAS Plus application, or in the “Mark in Color” field on a §66(a) application, is sufficient to indicate that color is not claimed as a feature of the mark, even if the application contains the notation “grayscale” in reference to the drawing.
When a mark contains stippling, it is generally not necessary to require a statement that the stippling represents shading or is a feature of the mark, unless the examining attorney believes such a statement is necessary to accurately describe the mark. See TMEP §808.01(b) regarding stippling statements.
807.07(f)(ii) Applications Filed on Paper
If the applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark,
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the presence of any gray in the drawing creates an ambiguity as to whether black, white, and/or gray are claimed as a feature of the mark. Similarly, if an applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark, the inclusion of a description of the mark that refers to black/white/gray creates an ambiguity as to whether black/white/gray is claimed as a feature of the mark. In these cases, the examining attorney must require that the applicant submit one of the following:
(1) A statement that the mark is not in color. The applicant may submit the statement, or the examining attorney may obtain the information in a telephone interview or e-mail exchange with the applicant or the applicant’s qualified practitioner, and enter a note in the “Notes- to-the-File” section of the record that the mark is not in color; or
(2) A statement that the color(s) black, white, and/or gray is a feature of the mark, and a separate statement naming the color(s) and describing where the color(s) appear(s) on the mark.
807.07(g) Drawings in Applications Filed Before November 2, 2003
Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark was required to submit a black- and-white drawing, with a statement describing the color(s) and where they appeared on the mark. Alternatively, the applicant could use a color lining system that previously appeared in 37 C.F.R. §2.52 but was deleted from the rule effective October 30, 1999. See notice at 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999).
In applications filed prior to November 2, 2003, it was presumed that color was claimed as a feature of the mark, unless the applicant specifically stated that no claim was made to color, or that color was not claimed as a feature of the mark.
For applications filed before November 2, 2003, unless the application included a statement that color was not claimed as a feature of the mark (or that no claim was made to color), the applicant may voluntarily submit a color drawing under the current rules, with the requisite color claim and a separate description of the color(s) in the mark.
A registrant may substitute a color drawing for a black-and-white drawing in a registration where color is claimed, by filing a §7 request to amend the registration certificate. The request must include: (1) a color drawing; (2) a color claim; (3) a description of where the color appears in the mark; and (4) the fee required by 37 C.F.R. §2.6. See TMEP §1609.02(e).
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807.08 Broken Lines to Show Placement
37 C.F.R. §2.52(b)(4). Broken lines to show placement. 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 describe the mark and explain the purpose of the broken lines.
Occasionally, the position of the mark on the goods, or on a label or container, may be a feature of the mark. If necessary to adequately depict the commercial impression of the mark, the examining attorney may require the applicant 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 a written description of the mark and explain the purpose of the broken lines, e.g., by indicating that the matter shown by the broken lines is not a part of the mark and that it serves only to show the position of the mark. 37 C.F.R. §2.52(b)(4).
The drawing should clearly define the matter the applicant claims as its mark. See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983).
Because the matter depicted in broken lines is not part of the mark, it should not be considered in determining likelihood of confusion. In re Homeland Vinyl Products, Inc., 81 USPQ2d 1378 (TTAB 2006).
807.09 “Drawing” of Sound, Scent, or Non-Visual Mark
37 C.F.R. §2.52(e). Sound, scent, and non-visual marks. An applicant is not required to submit a drawing if the 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 description of the mark.
The applicant is not required to submit a drawing if the mark consists solely of a sound (e.g., music or words and music), a scent, or other completely non- visual matter. For these types of marks, the applicant must submit a detailed written description of the mark that clearly explains the sound, scent, or other non-visual matter. 37 C.F.R. §2.52(e). In a TEAS application, the required
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description of the mark should be set forth in the “Description of the Mark” field.
A TEAS application will not validate unless the applicant either types something in the “Standard Character” field or designates “stylized or design mark” within the “Mark” section of the form and attaches a .jpg file in the “Drawing” field. Therefore, to enable validation of the application, the applicant should indicate that the mark type is “Standard Characters” and type the wording “NON-VISUAL MARK” in the box where the mark would otherwise be entered. The USPTO will enter the proper mark drawing code when the application is processed. See TMEP §807.18 regarding mark drawing codes.
In a paper application, the applicant should clearly indicate in the application that the mark is a “NON-VISUAL MARK.”
Although a drawing is not required for completely non-visual matter, the applicant should submit an audio or video reproduction of any sound mark. See 37 C.F.R. §2.61(b). The purpose of this reproduction is to supplement and clarify the description of the mark. The reproduction should contain only the mark itself; it is not meant to be a specimen.
For paper filings, reproductions of sound marks must be submitted on compact discs (“CDs”), digital video discs (“DVDs”), videotapes, and audiotapes. The applicant should indicate that the reproduction of the mark is meant to supplement the mark description.
For TEAS filings, the reproductions must be in an electronic file, in .wav, .mp3, .mpg, or .avi format. However, TEAS does not permit direct attachment of these types of electronic files. Therefore, the electronic reproduction must be sent after the TEAS document is transmitted, as an attachment to an e-mail message directed to TEAS@uspto.gov, with clear instructions that the electronic reproduction should be associated with “the application filed under Serial No. <specify>” as a supplement to the mark description.
If the mark is a composite comprising both visual and non-visual matter, the applicant must submit a drawing depicting the visual matter, and include a description of the non-visual matter in the “Description of the Mark” field.
The applicant must also submit a detailed description of the mark for all non- visual marks. 37 C.F.R. 2.52(e). If the mark comprises music or words set to music, the applicant should generally submit the musical score sheet music to supplement or clarify the description of the mark. See 37 C.F.R. §2.61(b). In a TEAS application or response, the score should be attached as a .jpeg or .pdf file in the “Additional Statements” section of the form, under “Miscellaneous Statements.”
Non-visual marks are coded under mark drawing code 6 in the automated search system. See TMEP §807.18 regarding mark drawing codes.
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See TMEP §§904.03(f) and 1202.15 regarding specimens for sound marks, and TMEP §904.03(m) regarding specimens for scent and flavor marks.
807.10 Three Dimensional Marks
37 C.F.R. §2.52(b)(2). Three dimensional marks. If the mark has three- dimensional features, the drawing must depict a single rendition of the mark, and the applicant must indicate that the mark is three-dimensional.
If the mark is three-dimensional, the drawing should present a single rendition of the mark in three dimensions. In re Schaefer Marine, Inc., 223 USPQ 170, 171 n.1 (TTAB 1984). The applicant must include a description of the mark indicating that the mark is three-dimensional.
Under 37 C.F.R. §2.52(b)(2), the applicant is required to submit a drawing that depicts a single rendition of the mark. If the applicant believes that its mark cannot be adequately depicted in a single rendition, the applicant may file a petition under 37 C.F.R. §2.146 requesting that the rule be waived. See TMEP Chapter 1700 regarding petitions.
807.11 Marks With Motion
37 C.F.R. §2.52(b)(3). Motion marks. If the mark has motion, the drawing may depict a single point in the movement, or the drawing may depict up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also describe the mark.
If the mark includes motion (i.e., a repetitive motion of short duration) as a feature, 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 detailed written description of the mark. 37 C.F.R. §2.52(b)(3).
See TMEP §904.03(l) regarding specimens for motion marks.
807.12 Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration
37 C.F.R. §2.51 Drawing required.
(a) In an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.
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(b) In an application under section 1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods and/or services specified in the application, and once an amendment to allege use under §2.76 or a statement of use under §2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.
(c) In an application under section 44 of the Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the applicant’s country of origin.
(d) In an application under section 66(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration.
807.12(a) Applications Under §1 of the Trademark Act
For applications under §1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match. 37 C.F.R. §§2.51(a) and (b). The first step is to analyze whether the mark in the drawing is a substantially exact representation of the mark shown on the specimen.
In an application filed under §1(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen. 37 C.F.R. §§2.51(a) and 2.72(a)(1).
In an application filed under §1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods/services, and as actually used as shown by the specimen filed with the amendment to allege use or statement of use. 37 C.F.R. §§2.51(b) and 2.72(b)(1).
If the mark in the drawing is not a substantially exact representation of the mark shown in the specimen, the second step is to determine whether an amendment to the drawing to agree with the mark shown on the specimen would be a material alteration of the mark in the original drawing. If the answer is “no,” the applicant must submit either an amended drawing or a substitute specimen. If the answer is “yes,” the applicant must submit a substitute specimen and no amendment to the drawing is allowed. 37 C.F.R. §§2.72(a) and (b); see TMEP §§807.14 et seq. for more information about material alteration.
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Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols “TM” or “SM,” the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) may not be shown on the drawing. See TMEP §807.14(a) regarding deletion of non-distinctive matter.
See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a mark with a “phantom” or changeable element, and TMEP §1215.02(c) regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a domain name mark.
807.12(a)(i) Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen
In assessing discrepancies in punctuation between the mark on the drawing and the mark shown on the specimen, the general rule is that:
(1) Extraneous, non-distinctive punctuation that appears on the specimen may be omitted from the mark on the drawing, because an acceptable specimen may contain additional matter used with the mark on the drawing, so long as the mark on the drawing makes a separate and distinct commercial impression apart from the other matter. See TMEP §807.12(d) and cases cited therein regarding “mutilation” of the mark.
(2) Punctuation in the mark on the drawing must also appear on the specimen because a mark sought to be registered under §1 must be “used in commerce,” and if the punctuation on the drawing does not appear on the specimen, the mark on the drawing is not used in commerce.
807.12(a)(ii) Punctuation on the Drawing but not on the Specimen
If a drawing contains punctuation, the elements of punctuation are presumed to be part of the mark. Thus, if there is punctuation in the mark on the drawing, the punctuation must also appear on the specimen or the drawing is not considered to be a substantially exact representation of the mark as used in commerce. If deletion of the punctuation from the drawing does not alter the commercial impression, the drawing may be amended to match the specimen. If deletion of the punctuation changes the commercial impression, i.e., constitutes a material alteration, the applicant must submit a substitute specimen to match the original drawing. See TMEP §§807.14 et seq. regarding material alteration.
For example, if the mark on the drawing is “ALL THE KING’S MEN,” and the mark on the specimen is ALL THE KING’S MEN, the mark on the drawing is not a substantially exact representation of the mark as used in commerce.
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Since the deletion of the quotation marks from the drawing would not change the commercial impression of the mark, the drawing may be amended to match the specimen. The applicant has the option to either: (1) amend the drawing to delete the punctuation; or (2) submit a new specimen showing use of the mark with the punctuation.
However, if the mark on the drawing is GOT MILK?, and the mark on the specimen is GOT MILK, the deletion of the punctuation from the drawing would constitute a material alteration because it changes the commercial impression from a question to a statement. Therefore, the drawing may not be amended and the applicant must submit a substitute specimen that includes punctuation in order for the drawing to be a substantially exact representation. See TMEP §§807.14 et seq.
807.12(a)(iii) Punctuation on the Specimen but not on the Drawing
Generally, extraneous, non-distinctive punctuation marks that appear on the specimen may be omitted from the drawing, if the matter on the drawing makes an impression separate and apart from the punctuation marks that appear on the specimen. See TMEP §807.12(d). For example, if the mark on the drawing is HOME RUN, and the mark on the specimen is “HOME RUN,” the drawing is considered a substantially exact representation of the mark as used on the specimen. The quotation marks on the specimen are nondistinctive and do not change the commercial impression of the mark, so it is unnecessary to amend the drawing or require a substitute specimen.
However, in rare instances, the punctuation marks on the specimen result in a mark with a different commercial impression than the mark shown on the drawing. For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used. The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark. Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration. Therefore, the applicant must submit a new specimen showing the mark without the punctuation. See TMEP §§807.14 et seq.
807.12(b) Applications Under §44 of the Trademark Act
In a §44 application, the drawing of the mark must be “a substantially exact representation of the mark as it appears in the drawing in the registration certificate of the mark registered in the applicant’s country of origin.” 37 C.F.R. §§2.51(c) and 2.72(c)(1). The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether a specimen supports use of a mark in an application under §1 of the Trademark Act. See TMEP
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§1011.01. The drawing in the United States application must display the entire mark as registered in the foreign country. The applicant may not limit the mark to part of the mark shown in the foreign registration, even if it creates a separate and distinct commercial impression.
Exception: Non-material informational matter that appears on the foreign registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.
When the mark on the drawing does not agree with the mark on the foreign registration, the applicant cannot amend the drawing of the mark if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §2.72(c); TMEP §§807.14 et seq. and 1011.01.
If the United States application has a black-and-white drawing, and color appears in the foreign registration, or color is claimed or described as a feature of the mark in the foreign registration, the mark in the United States drawing does not agree with the mark in the foreign registration. In general, the black-and-white drawing in the United States application should be amended to agree with the colored mark in the foreign registration, unless the proposed amendment would be a material alteration.
If the United States application has a color drawing, the same colors must be part of the mark in the foreign registration. Whether the drawing in the United States application can be amended depends upon whether the amendment would be a material alteration of the mark. If the United States application has a color drawing but the drawing in the foreign registration is in black and white with no color claim, the applicant must either: (1) amend the drawing in the United States application to a black-and-white drawing, if the amendment would not be a material alteration; or (2) delete the §44 basis and proceed under §1.
See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the foreign registration in an application that seeks registration of a mark with a “phantom” or changeable element.
807.12(c) Applications Under §66(a) of the Trademark Act
In an application under §66(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration. 37 C.F.R. §2.51(d). The IB will include a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States. It is, therefore, unnecessary for the examining attorney to compare the drawing in the §66(a) application with the reproduction in the international registration. See TMEP §§1904 et seq. for further information about §66(a) applications.
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The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
Exception: Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.
Because the drawing requirements in other countries often differ from those in the United States, an ambiguity may arise when the international registration contains no color claim, but the reproduction of the mark in the international registration is in color. In such cases, the §66(a) applicant must either: (1) make a color claim to clarify that the depicted color(s) is a feature of the mark and submit a description of the location of the color(s); or (2) submit a black-and-white reproduction of the mark. See 37 C.F.R. §§2.52(b) and 2.52(b)(1). This is not considered to be an amendment to the mark, but rather a clarification of the ambiguity.
If the USPTO receives a notification of correction to a mark in the International Register from the IB, the examining attorney must conduct a new search of the mark as corrected and, if appropriate, issue a provisional refusal of the request for extension of protection as corrected on all applicable grounds. The USPTO must notify the IB of the provisional refusal within 18 months of notification of the correction. See TMEP §1904.03(f) regarding notifications of corrections to the International Register. If the reproduction of the corrected mark features color, the applicant will be required to comply with the requirements for a color drawing (see TMEP §§807.07(a) et seq.). 37 C.F.R. §2.52(b)(1).
807.12(d) Mutilation or Incomplete Representation of Mark
In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute a complete mark, it is sometimes referred to as a “mutilation” of the mark. This term indicates that essential and integral subject matter is missing from the drawing. An incomplete mark may not be registered. See In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999); In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Semans, 193 USPQ 727 (TTAB 1976).
However, in a §1 application, an applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.
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The determinative factor is whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s). See Chemical Dynamics, supra (registration of design of medicine dropper and droplet properly refused, where the proposed mark is actually used as an integral part of a unified mark that includes a design of a watering can, and does not create a separate commercial impression); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950) (refusal to register the term “SERVEL“ as a mutilation of the mark “SERVEL INKLINGS“ reversed, where the specimen displays an insignia between the words “SERVEL“ and “INKLINGS,“ and “INKLINGS” is printed in a large and different kind of type); In re Pharmavite LLC, ____ USPQ2d ____ Ser. No. 77333250 (TTAB Aug. 17, 2009) (Board affirmed refusal to register a mark comprised of the design of two bottles, finding that it does not create a separate and distinct commercial impression apart from the mark shown on the specimen and further that it is not a substantially exact representation of the mark shown on the specimen); In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) (Board affirmed refusal to register “UPPER 90,” finding that it does not form a separate and distinct commercial impression apart from the degree symbol that appears on the specimen); In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (Board reversed refusal to register the term “NANOCEUTICAL,” finding that the term is actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name “RBC’s”); In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006) (“PSYCHO” creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word “PSYCHO” is displayed in a different color, type style and size, such that it stands out); In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006) (refusal to register “WSI” and globe design reversed, since the letters “WSI” and globe design create a separate commercial impression apart from a curved design element that appears on the specimen; although proximity is a consideration, it is the overall commercial impression that is controlling on the issue of mutilation); In re Miller Sports Inc., supra (proposed mark comprising the letter “M” and skater design properly refused, where the “M” portion of applicant’s “Miller” logo is so merged in presentation with remainder of logo that it does not create a separate commercial impression); In re Boyd Coffee Co., supra (proposed mark comprising cup and saucer design properly refused as mutilation of mark actually used, which includes the cup and saucer design as well as a sunburst design, since the cup and saucer design does not create a separate and distinct commercial impression apart from the sunburst design); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (Board reversed refusal to register “TINEL-LOCK” as mutilation of mark “TRO6AI-TINEL-LOCK-RING,” noting that part or stock number does not usually function as a source identifier, and that the “fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK’ has no significance by itself as a
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trademark.”); In re Sperouleas, 227 USPQ 166 (TTAB 1985) (design unregistrable apart from wording that appears on specimen, where the words are not only prominent but are also physically merged with the design, such that the design does not make a separate commercial impression); In re Volante Int’l Holdings, 196 USPQ 188 (TTAB 1977) (mark consisting of a design of a double-headed girl, a dragon and a tree is not a substantially exact representation of the mark actually used, which incorporates the visually inseparable and intertwined term “VIRGIN”); In re Library Restaurant, Inc., 194 USPQ 446 (TTAB 1977) (the words “THE LIBRARY” are so intimately related in appearance to other elements of the mark actually used that it is not possible to conclude that the pictorial features by themselves create a separate commercial impression); In re Semans, supra (the term “KRAZY,” displayed on the specimen on the same line and in the same script as the expression “MIXED-UP,” does not in itself function as a registrable trademark apart from the unitary phrase “KRAZY MIXED-UP”); In re Mango Records, 189 USPQ 126 (TTAB 1975) (the typed mark “MANGO” is so uniquely juxtaposed with the pictorial elements of the composite that it is not a substantially exact representation of the mark as used on the specimen and does not show the mark in the unique manner used thereon).
In a §44 application, the standard is stricter. TMEP §1011.01. The drawing in the United States application must display the entire mark as registered in the country of origin. The applicant may not register part of the mark in the foreign registration, even if it creates a distinct commercial impression.
In any application, if registration is refused on the ground that the mark on the drawing does not agree with the mark as shown on the specimen or foreign registration, the applicant may not amend the drawing if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §2.72; TMEP §§807.14 et seq. and 1011.01.
This issue will not arise in a §66(a) application, because the IB includes a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States. The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
807.12(e) Compound Word Marks and Telescoped Marks
Like any other drawing, a drawing of a compound word mark or telescoped mark must be a substantially exact representation of the mark as it appears on the specimen in a §1 application or on the foreign registration in a §44 application.
A compound word mark is comprised of two or more distinct words, or words and syllables, that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR). Often, each word or syllable in a compound word mark is displayed or highlighted by: (1) capitalizing the first
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letter of each word or syllable (e.g., TimeMaster); or (2) presenting the words or syllables in a different color, script, or size (e.g., RIBtype).
If the drawing depicts the mark as a compound word mark, (e.g., BOOKCHOICE) but the specimen shows the mark as two separate words (e.g., BOOK CHOICE), or vice versa, the examining attorney must determine whether the specimen is a substantially exact representation of the mark on the drawing and/or whether an amendment to the drawing would be a material alteration of the mark. See In re Innovative Companies, LLC, 88 USPQ2d 1095 (TTAB 2008) (FREEDOMSTONE not a substantially exact representation of FREEDOM STONE, but amendment of FREEDOMSTONE to FREEDOM STONE not deemed a material alteration).
A telescoped mark is comprised of two or more words that share letters (e.g., SUPERINSE). A telescoped word must be presented as a unitary term with the letters shared. The telescoped element may not be represented as two words, because the shared letter is an aspect of the commercial impression, (e.g., SUPERINSE, not SUPE RINSE or SUPER RINSE).
See TMEP §§1213.05(a) et seq. regarding disclaimers in these types of marks.
807.13 Amendment of Mark
37 C.F.R. §2.72. Amendments to description or drawing of the mark.
(a) In an application based on use in commerce under section 1(a) of the Act, the applicant may amend the description or drawing of the mark only if:
(1) The specimens originally filed, or substitute specimens filed under §2.59(a), support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. 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 filed with the original application.
(b) In an application based on a bona fide intention to use a mark in commerce under section 1(b) of the Act, the applicant may amend the description or drawing of the mark only if:
(1) The specimens filed with an amendment to allege use or statement of use, or substitute specimens filed under §2.59(b), support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. 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 filed with the original application.
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(c) In an application based on a claim of priority under section 44(d) of the Act, or on a mark duly registered in the country of origin of the foreign applicant under section 44(e) of the Act, the applicant may amend the description or drawing of the mark only if:
(1) The description or drawing of the mark in the foreign registration certificate supports the amendment; and
(2) The proposed amendment does not materially alter the mark. 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 filed with the original application.
807.13(a) Amendment of Mark in Applications Under §§1 and 44
Section 1(a) Application. The mark in an application under §1(a) of the Trademark Act can be amended if the specimen supports the amendment and the amendment does not materially alter the mark. 37 C.F.R. §2.72(a). See TMEP §§904 et seq. regarding specimens, and TMEP §§807.14 et seq. regarding material alteration.
Section 1(b) Application. The mark in an application under §1(b) of the Trademark Act can be amended if the specimen filed with an amendment to allege use or statement of use supports the amendment, and the amendment does not materially alter the mark. 37 C.F.R. §2.72(b). See TMEP §§904 et seq. regarding specimens, TMEP §§1104 et seq. regarding amendments to allege use, TMEP §§1109 et seq. regarding statements of use, and TMEP §§807.14 et seq. regarding material alteration.
Section 44 Application. The mark in an application under §44 of the Trademark Act can be amended if the mark in the foreign registration certificate supports the amendment, and the amendment does not materially alter the mark. 37 C.F.R. §2.72(c). See TMEP §1011.01 regarding the requirement that the mark on the drawing in a §44 application be a substantially exact representation of the mark as it appears in the foreign registration certificate, and TMEP §§807.14 et seq. regarding material alteration.
807.13(b) Mark in §66(a) Application Cannot be Amended
The Madrid Protocol and the Common Regs. do not permit amendment of the mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The IB’s Guide to International Registration, Para. B.II.69.02, provides as follows:
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[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time. If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application. This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be....
Accordingly, because an application under §66(a) of the Trademark Act is a part of the international registration, 37 C.F.R. §2.72 makes no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit any such amendments. See notice at 68 FR 55748, 55756 (Sept. 26, 2003). See TMEP §1904.02(j).
Exception: Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.
However, the applicant must comply with United States requirements regarding drawings and descriptions of the mark. See TMEP §1904.02(k).
Similarly, after registration, a registrant generally cannot amend under §7 of the Trademark Act a mark in a registered extension of protection under §7 of the Trademark Act, except to add a standard character claim if the registered mark complies with the requirements of 37 C.F.R. §§2.52(a)(1)-(5). TMEP §§1609.01(a) and 1609.02.
See TMEP §§1904.03(f) and 1904.14 regarding notifications of corrections in the International Register with respect to pending §66(a) applications and registered extensions of protection.
807.14 Material Alteration of Mark
Trademark Rule 2.72, 37 C.F.R. §2.72, prohibits any amendment of the mark in an application under §1 or §44 of the Trademark Act that materially alters the mark on the drawing filed with the original application.
The test for determining whether an amendment is a material alteration is as follows:
The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different
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from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.
In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa Int’l Service Ass’n v. Life-Code Systems, Inc., 220 USPQ 740,743-44 (TTAB 1983). This test applies to both an amendment of the description of a mark and an amendment of the mark on a drawing. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001).
Although the test refers to republication, it also applies to amendments to marks proposed before publication. Material alteration is the standard used for evaluating amendments to marks in all phases of prosecution, i.e., before publication, after publication, and after registration. See TMEP §§1609.02 et seq. regarding amendment of registered marks.
As a general rule, the addition of any element that would require a further search will constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986). However, while the question of whether a new search would be required is a factor to be considered in deciding whether an amendment would materially alter a mark, it is not necessarily the determining factor. In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990).
Each case must be decided on its own facts, and these general rules are subject to exceptions. The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression.
See TMEP §807.14(a) regarding amendments to delete matter from a drawing, TMEP §807.14(b) regarding the addition or deletion of previously registered matter, TMEP §807.14(c) regarding the addition or deletion of punctuation, and TMEP §§1215.08 et seq. regarding material alteration in marks comprised, in whole or in part, of domain names.
807.14(a) Removal or Deletion of Matter from Drawing
An applicant may request deletions from the mark on the drawing, and the examining attorney may approve the request if he or she believes the deletions are appropriate and would not materially alter the mark. 37 C.F.R. §2.72.
Deletion of matter from the mark can result in a material alteration. See In re Dillard Department Stores, Inc., 33 USPQ2d 1052 (Comm’r Pats. 1993) (proposed deletion of highly stylized display features of mark “IN•VEST•MENTS” held to be a material alteration of a registered mark). However, nondistinctive matter may be deleted, if it does not constitute a material alteration. For example, the deletion of the generic name of the goods or services would not generally be considered a material alteration, unless it was so integrated into the mark that the deletion would alter the
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commercial impression. In some circumstances, nondistinctive matter may be deleted if the overall commercial impression is not altered. Also, deletions of matter determined to be unregistrable under §§2(a) or 2(b) of the Act, 15 U.S.C. §1052(a) or (b) (see TMEP §§1203 and 1204), are sometimes permissible.
If a specimen shows that matter included on a drawing is not part of the mark, the examining attorney may require that such matter be deleted from the mark on the drawing, if the deletion would not materially alter the mark. See In re Sazerac Co., Inc., 136 USPQ 607 (TTAB 1963) and cases cited therein.
The symbols “TM,” “SM,” and the registration notice ® must be deleted from the drawing.
Informational matter, such as net weight and volume statements, lists of contents, addresses, and similar matter, should also be deleted from the mark, unless it is truly part of a composite mark and the removal of this matter would alter the overall commercial impression. If unregistrable matter, including informational matter and the name of the goods, is incorporated in a composite mark in such a way that its removal would change the commercial impression of the mark or make it unlikely to be recognized, the matter may remain on the drawing and be disclaimed. See TMEP §1213.03(b) regarding disclaimer of such matter. However, this type of matter rarely is part of a composite mark.
See TMEP §807.14(b) regarding deletion of previously registered matter.
807.14(b) Addition or Deletion of Previously Registered Matter
Addition. An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted. The rationale is that “[t]he addition of applicant’s well-known registered mark to the mark sought to be registered ... is not a material change which would require republication of the mark.” Florasynth Laboratories Inc. v. Mülhens, 122 USPQ 284 (Comm’r Pats. 1959) (addition of applicant’s previously registered mark “4711” to the mark “ELAN” held not a material alteration). However, the addition of matter that the applicant has previously registered for different goods or services is not permissible. In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997); In re Nationwide Industries Inc., 6 USPQ2d 1882, 1886 (TTAB 1988). An amendment adding previously registered matter is also unacceptable if it substantially alters the original mark. In re John LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm’r Pats. 1992) (“Here, the applicant does not seek to merely add an element from one registration to another. Rather, the applicant seeks to eliminate its original mark, and substitute another. The exception to the material alteration rule clearly does not encompass cases where the original mark disappears.”).
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Deletion. The question of whether a proposed amendment to delete previously registered matter from a mark is a material alteration should be determined without regard to whether the matter to be deleted is the subject of an existing registration.
807.14(c) Addition or Deletion of Punctuation
Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks generally does not significantly alter the commercial impression of the mark. See, e.g., In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) and cases cited therein. See also In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006) (the Board found the mark PARTY AT A DISCOUNT! to be merely descriptive, specifically noting that "[t]his punctuation mark does not significantly change the commercial impression of the mark. It would simply emphasize the descriptive nature of the mark to prospective purchasers...").
However, punctuation may be incorporated into a mark in such a way that the commercial impression of the mark would be changed by the addition or deletion of such punctuation. See Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974), overruled on other grounds, In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996) (proposed change of FYE[R- W]ALL and design to FYER-WALL in block letters denied as material alteration, in part, because brackets changed commercial impression of mark as the initial letters of applicant’s name, “R” and “W,” were no longer emphasized). For example, unlike most cases where the addition of an exclamation point does not affect the commercial impression of a mark, the addition of an exclamation point to the mark MOVE IT transforms the words from a mere command to relocate an object to an exclamatory statement – MOVE IT! – often used to order a person out of the way, and, therefore, changes the commercial impression of the mark.
Some other examples, though not exhaustive, are:
• the addition or deletion of a question mark, which changes a statement into a question or vice versa;
• the addition or deletion of spaces between the syllables of a term, which may change the commercial impression created by the separate syllables or the unitary word; and
• the addition or deletion of a period before the term “.com”, which can change wording to or from a website address.
See also TMEP §§807.12(a)(i)-(iii) regarding the role of punctuation in determining whether the mark on the drawing agrees with the mark on the specimen(s).
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807.14(d) Amendments to Correct “Internal Inconsistencies”
The USPTO will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application. 37 C.F.R. §§2.72(a)(2), 2.72(b)(2), and 2.72(c)(2).
Prior to October 30, 1999, in certain limited circumstances, the USPTO would accept an amendment that corrected an “internal inconsistency” in an application as originally filed, without regard to the issue of material alteration. Because 37 C.F.R. §§2.72(b), (c), and (d) did not expressly prohibit an amendment that materially altered the mark on the original drawing, the USPTO would accept an amendment to correct an “internal inconsistency,” even if the amendment materially altered the mark on the original drawing. An application was considered “internally inconsistent” if the mark on the original drawing did not agree with the mark on the specimen in an application based on use, or with the mark on the foreign registration in an application based on §44 of the Act. See In re ECCS Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996); In re Dekra e.V., 44 USPQ2d 1693 (TTAB 1997).
Effective October 30, 1999, 37 C.F.R. §2.72 was amended to prohibit amendments that materially alter the mark on the drawing filed with the original application. Furthermore, 37 C.F.R. §2.52 was amended to state that the “drawing depicts the mark sought to be registered.” Accordingly, the USPTO no longer accepts amendments to cure “internal inconsistencies,” if these amendments materially alter the mark on the original drawing. In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000). See also In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm'r Pats. 1990) (examining attorney properly refused to accept amendment to “correct a typographical error” that materially altered mark on original drawing page).
If a paper application includes a separate drawing page showing a mark, and a different mark appears in the written application, the drawing controls for purposes of determining what the mark is. See TMEP §§202.01 and 807.01. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001). Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the “Mark” field on a TEAS application, and a different mark appears in another field, the mark entered in the “Mark” field will control for purposes of determining what the mark is. The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing.
For example, if the applicant submits a drawing page showing the word mark “ABC and design,” the applicant may not amend the application to delete the wording “and design,” and add a design feature to the letters “ABC.” However, the applicant may amend the drawing to “ABC.” In re Meditech Int’l Corp., 25 USPQ2d 1159 (TTAB 1990) (mark comprised of a design of blue
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star found to be a material alteration of the typed words “DESIGN OF BLUE STAR”).
807.14(e) Amendments to Color Features of Marks
If a proposed amendment to a color feature of a mark does not change the commercial impression of the mark, the amendment is unlikely to have an adverse impact on public notice. In such cases, the mark need not be republished, and the proposed amendment would not be deemed a material alteration.
Whenever a proposed color amendment is refused as a material alteration, the examining attorney must clearly explain why the proposed amendment changes the meaning or overall impression of the mark, or impacts the likelihood of confusion analysis.
807.14(e)(i) Black-and-White Drawings
The amendment of a black-and-white special form drawing to one claiming a color(s) as a feature of the mark generally does not constitute a material alteration.
If a mark is initially depicted in a black-and-white special form drawing in which no color is claimed, the drawing is presumed to contemplate the use of the mark in any color, without limitation. See, e.g., In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972). The amendment of the black-and-white drawing to one claiming a particular color as a feature of the mark is, therefore, a restriction or limitation of the applicant’s rights.
807.14(e)(ii) Marks that Include Color and Other Elements
The extent to which color contributes to the commercial impression created by a mark is often determined by the type of mark in question (i.e., word mark, design mark, or trade dress). In some cases, color may play only an incidental or insignificant part in creating the commercial impression of a mark, such as the color lettering of a word mark. In other cases, color is the only feature of the mark that creates a commercial impression, such as where the mark consists only of color(s) applied to goods or their packaging, or to articles used in the sale or advertising services.
Word Marks
In general, the addition, deletion, or amendment of color lettering in a word mark does not result in a material alteration of the mark.
Word marks may appear as stylized marks in color lettering. With the possible exception of generic wording, as discussed below, the literal portions
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of word marks are likely to be the dominant portions that create the greatest commercial impression. Inter-State Oil Co., Inc. v. Questor Corp., 209 USPQ 583, 586 (TTAB 1980). In most cases, the color in the lettering is unlikely to have a significant impact on the commercial impression created by the mark.
Exception – Generic Terms. Generic terms are incapable of functioning as marks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. However, if the generic wording appears in color lettering, the color portion may be capable of functioning as a source indicator. See, e.g., Courtenay Communications Corp., v. Hall, 334 F.3d 210, 216, 67 USPQ2d 1210, 1214 (2nd Cir. 2003) and cases cited therein (“There are many examples of legally protected marks that combine generic wording with distinctive lettering, coloring, or other design elements.”). With respect to such generic word marks, the color element of the wording is likely to be the more dominant portion in creating the commercial impression of the mark. Therefore, in cases where the entire literal portion is generic, a proposed amendment to the color portion of the word mark generally would be a material alteration.
Design Marks
In general, the addition, deletion, or amendment of color features in a design mark does not result in a material alteration of the mark.
In a color design mark, the design portion is likely to be the most dominant portion of the mark in creating a commercial impression. Although the color portion is part of the mark, it only appears in the context of the design and is not a separable element. The color portion is, therefore, less likely than the design portion to play a significant role in likelihood of confusion or trademark selection considerations. For example, the fact that two different designs, such as a red hat design and a red boat design, may appear in identical colors is unlikely to result in a finding of likelihood of confusion. In contrast, if two boat designs are identical in stylization, it is likely that the designs would be held to be confusingly similar regardless of any differences in their respective colors.
Exception - Color Impacts the Meaning or Significance of the Mark. An amendment that causes the mark to have a new meaning or significance in the context of the goods or services is likely to be a material alteration. For example, the amendment of a blue colored drop for “spring water,” which looks like a rain drop, to a red drop, which looks like blood, would probably be a material alteration because the change in the color of the drop has altered the meaning or commercial impression of the mark. An amendment of a rainbow design, consisting of an arc with a spectrum of colors, to a black or solid-colored arc, would be a material alteration, regardless of the goods or services, because the amended mark is just an arc and is no longer identifiable as a rainbow.
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Exception – Color is the Dominant Portion of the Mark. Generally, if the color portion to be amended constitutes the dominant or most significant part of the entire mark, it becomes more likely that the proposed color amendment is a material alteration. For example, if the design mark consists solely of a common geometric shape, the color element is likely to be the dominant element of the mark. As a result, amending the color of a common geometric shape is likely to be a material alteration.
Another factor to consider in assessing the dominance of the color element of the mark is the size or prominence of the color design or graphic element to be amended in proportion to the rest of the mark. For example, if it is clear that the mark consists of the overall color scheme of a product’s trade dress, such as the product package or container, an amendment to a particular color element that is small or insignificant in proportion to the entire mark is unlikely to be a material alteration. Conversely, an amendment to a color element that is large in proportion to the entire mark, or is a dominant element of the overall color scheme, is more likely to be a material alteration. For example, if a mark consists solely of the color scheme or pattern of a package or container that is equally divided into two colors, amending one or both colors is more likely to be a material alteration.
807.14(e)(iii) Color Marks
The amendment of any color in a color mark is a prohibited material alteration.
Color marks are marks that consist solely of one or more colors used on particular objects or substances as a source identifier (as opposed to marks that include color in addition to other elements). See TMEP §§1202.05 et seq. Color marks generally appear in a drawing with the outline or configuration of the goods on which they appear to show the placement of the color mark. However, the shape or configuration of the goods is not part of the mark. The mark is comprised solely of the color as applied to the object or substance, in the manner depicted and described, so that changing or amending the color of the mark would always change the entire commercial impression created by the mark.
An amendment of the mark to show the same color on a different object is also generally a material alteration (e.g., an amendment of a drawing of a blue hammer to a blue saw). A color takes on the characteristics of the object to which it is applied, and the commercial impression of a color may change depending on the object to which it is applied. See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (“[A] word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances”); In re Hayes, 62 USPQ2d 1443 (TTAB 2002); TMEP §1202.05(c).
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See TMEP §807.07(e) regarding black-and-white drawings in an application that includes a color claim, and TMEP §807.07(c) regarding incorrect color claims.
807.14(f) Material Alteration: Case References
Proposed amendments to marks were held to be material alterations in the following decisions: In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (amendment describing a mark as the color blue applied to an unlimited variety of objects found to be a material alteration of the mark on the original drawing, which depicted the color blue applied to a building); In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) (proposed addition of house mark to conform to mark on foreign registration found to be material alteration of mark on drawing filed with original application); In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (proposed amendment from “TACILESENSE” to “TACTILESENSE” found to be material alteration); In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à- vis a drawing consisting of the typed words ‘DESIGN OF A BLUE STAR’”); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990) (addition of wording “MR. SEYMOUR” to design mark held to be a material alteration); In re The Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries, Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (addition of house mark “PIERCE” to “CHIK’N-BAKE” held a material alteration).
Proposed amendments to marks were found not to constitute a material alteration in the following cases: In re Innovative Companies, LLC, 88 USPQ2d 1095 (TTAB 2008) (amendment from “FREEDOMSTONE” to “FREEDOM STONE” held not a material alteration); Paris Glove of Canada, Ltd. v. SBC/Sportco Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (“AQUASTOP” depicted on one line in semicircular form not material alteration of “AQUA STOP” depicted on two lines in rectangular form; the Board found that “the commercial impression of the mark is dependent upon the literal terms AQUA STOP and not on the rectangular, semicircular or linear forms of display”); In re Finlay Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996) (“NEW YORK JEWELRY OUTLET” not material alteration of “NY JEWELRY OUTLET”); In re Larios S.A., 35 USPQ2d 1214 (TTAB 1995) (“VINO DE MALAGA LARIOS” and design not material alteration of “GRAN VINO MALAGA LARIOS” with similar design); Visa Int’l Service Ass’n v. Life-
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Code Systems, Inc., 220 USPQ 740 (TTAB 1983) (amendment inverting the design portion of the mark held not a material alteration).
807.15 Substitute Drawings
When requiring a substitute drawing, the examining attorney must inform the applicant of the specific reason for rejecting the existing drawing and explain what type of amendment is needed to comply with the rules.
If the examining attorney requires a change in the drawing, the applicant must submit a substitute drawing, except in the limited circumstances discussed in TMEP §807.16 in which the USPTO will amend or correct a drawing. The USPTO will not return the original drawing to the applicant. 37 C.F.R. §2.25.
It is preferred that the applicant submit a substitute drawing on a separate drawing page (or a digitized image of a separate drawing page). However, the USPTO will accept a substitute drawing embedded in a response to an Office action, if the substitute drawing meets the requirements of 37 C.F.R. §§2.51 and 2.52.
When the applicant voluntarily submits a substitute drawing, the examining attorney must determine whether the substitute drawing is acceptable. See TMEP §807.17 regarding the procedures for processing unacceptable amendments to drawings.
When a substitute drawing is submitted and accepted, the original drawing is replaced by the substitute drawing. The examining attorney must ensure that the automated records of the USPTO reflect the amended mark, and have the TRAM database corrected, if necessary. The original drawing remains in the record.
The examining attorney must also ensure that the mark drawing code is changed, if necessary. See TMEP §807.18 concerning mark drawing codes.
807.16 Amendment of Drawings by the USPTO
If the examining attorney requires correction of a standard character drawing, the applicant may submit a substitute drawing (see TMEP §807.15), or may request that the USPTO amend the drawing. If only a minor correction to a standard character drawing (such as deletion of the letters “TM”) is required, the examining attorney may correct the drawing on his or her own initiative, or may require the applicant to submit a substitute drawing.
When correcting a standard character drawing, the examining attorney must create a new drawing page, and have the new drawing page scanned. The examining attorney must also ensure that the “Word Mark” field in TRAM is corrected.
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When the correction involves a special form drawing, the examining attorney will delete matter from the drawing only if the matter to be deleted is sufficiently separate from the matter that is to remain. If the matter to be deleted is not sufficiently separate from the matter that is to remain, the applicant must submit a substitute drawing. If the examining attorney deletes matter from the drawing, the examining attorney must ensure that the corrected drawing is scanned, and that it appears in TRAM, before the mark is approved for publication or registration.
The examining attorney must also ensure that the mark drawing code is changed, if necessary. See TMEP §807.18 concerning mark drawing codes.
807.17 Procedures for Processing Unacceptable Amendments to Drawings
If an applicant submits an amendment to the drawing and the examining attorney determines that the amendment is unacceptable, the examining attorney must issue an action refusing to accept the amendment and advising the applicant that it will not be entered. If the unacceptable amended drawing has been entered into the automated records of the USPTO, the examining attorney must ensure that the automated records are modified to reflect that the previous drawing is operative.
If the applicant later submits arguments in support of acceptance of the amendment and the examining attorney determines that the amendment is still unacceptable, the examining attorney must issue a final refusal of the amendment, if the application is otherwise in condition for final action.
807.18 Mark Drawing Code
Standard Character Drawings. Standard character drawings are coded in the USPTO’s automated system as mark drawing code 4. Prior to November 2, 2003, typed drawings (see TMEP §807.03(i)) were coded as mark drawing code 1. Mark drawing code 1 is not available for applications filed on or after November 2, 2003. Applications that were filed before November 2, 2003, may be amended to mark drawing code 1, if appropriate for that drawing. Only mark drawing code 4 should be used for standard character drawings.
Special Form Drawings. Marks comprising only a design are coded as mark drawing code 2; marks comprising words plus a design are coded as mark drawing code 3; and marks comprising stylized letters and/or numerals with no design feature are coded as mark drawing code 5. All marks consisting of words, numerals, and/or diacritical symbols for which no standard character claim (see TMEP §807.03(a)) has been submitted are coded as mark drawing code 5.
Non-Visual Marks. “Drawings” of non-visual marks (see TMEP §807.09) are coded as mark drawing code 6.
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808 Description of Mark
37 C.F.R. §2.37. A description of the mark must be included if the mark is not in standard characters. In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.
37 C.F.R. §2.52(b)(5). Description of mark. A description of the mark must be included.
808.01 Guidelines for Requiring Description
For applications filed on or after May 13, 2008, a description of the mark is required for any mark not in standard characters.
Therefore, the examining attorney must require a description of the mark if:
• the applicant is claiming a particular font style, size, or color of words, letters, or numbers (37 C.F.R. §2.52(a));
• the mark contains a design element;
• the mark includes non-Latin characters;
• the mark includes non-Roman or non-Arabic numerals;
• the mark includes uncommon punctuation or diacritical marks;
• the mark is three-dimensional, or is a configuration of the goods or packaging (TMEP §§807.10 and 1202.02(c)(ii));
• the drawing includes broken lines to show placement or to indicate a portion of the product or packaging that is not part of the mark (TMEP §§807.08 and 1202.02(c)(ii));
• the mark includes color (TMEP §§807.07(a) and 1202.05(e));
• the mark includes motion (TMEP §807.11);
• the mark is a sound, scent, or non-visual mark (TMEP §807.09);
• the mark appears in standard characters, but an element of the mark is unclear or ambiguous; or
• the mark consists of characters from the standard character set (TMEP §807.03(b)), but the characters are displayed in a manner that affects the meaning or significantly contributes to the overall commercial impression of the mark, such as using standard characters that create emoticons (TMEP §807.03(c)).
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37 C.F.R. §§2.37 and 2.52.
808.01(a) Meaning of Term in Mark
If, after conducting independent research, it is unclear to the examining attorney whether a term in a mark has meaning in the relevant industry, the examining attorney must make an inquiry of the applicant, pursuant to 37 C.F.R. §2.61(b). If the examining attorney determines that the term is arbitrary or fanciful, the examining attorney may indicate in a note in the “Notes-to-the-File” section of the record that research was conducted regarding the meaning of the term in the relevant industry, without stating any legal opinions or conclusions. A statement that a term has no meaning in the relevant industry should not be entered as a description of the mark, nor should it be printed. If such a statement is entered as a description of the mark, the examining attorney must ensure that the statement is deleted from the “Description of the Mark” field in TRAM, and enter an appropriate note in the “Notes-to-the-File” section of the record. The document containing the information deleted from TRAM will remain of record for informational purposes. See TMEP §808.03 regarding printing of descriptions of the mark.
See TMEP §§809 et seq. regarding translation and transliteration of non- English wording and non-Latin characters.
808.01(b) Lining and Stippling Statements for Drawings
Current Practice. For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings lined for color. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a). Thus, the examining attorney should not require the applicant to enter a statement that the lining or stippling represents shading or is a feature of the mark, unless the examining attorney believes such a statement is necessary to accurately describe the mark.
See TMEP §§808.03 et seq. and 817 regarding printing of lining and stippling statements and other descriptions of the mark.
Previous Practice. Prior to October 30, 1999, an applicant who wanted to show color in a mark was required to use the USPTO’s color lining system. The color lining system required applicants to line their drawings using certain patterns designated for certain colors, and to provide a color lining statement describing where the colors appeared. The color lining system was deleted from the rule effective October 30, 1999; however, during a transitional period between October 30, 1999 and November 2, 2003, the USPTO continued to accept drawings that showed color by using this lining system. See notice at 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999). When an applicant submitted a drawing that included lining that was a feature of the mark and was not intended to indicate color, the applicant was required to submit a statement to that effect, so the record
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would be clear as to what applicant was claiming as the mark. Similarly, when an applicant submitted a drawing that included stippling for shading purposes, the applicant was required to submit a statement to that effect.
808.02 Description Must Be Accurate and Concise
If a description of a mark is placed in the record, the description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission. The description should describe all significant aspects of the mark, including both literal elements and design elements. Insignificant features need not be included in a description.
When a mark includes a large number of elements, they are not all necessarily significant. For example, background design elements can sometimes be considered insignificant if they do not change the overall commercial impression of the mark. In addition, it may be unnecessary to describe the placement of repetitive literal or design elements within a mark, as long as the description generally characterizes them and explains that the elements are repeated. Similarly, when a mark contains a substantial number of design elements, it may only be necessary to generally state in the description those elements that capture the essence of the mark. Please note that because of the requirement to describe where colors appear in the mark, marks that include color will generally have a more detailed description. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07(a) et seq. regarding requirements for color drawings.
If a mark contains both wording and design features, the description should describe both aspects of the mark in order to be complete. The rare exception is for wording that is (1) not significant to the mark; and (2) would not be searched (e.g., purely informational matter such as product weight, lists of contents, and business addresses). The better – but not mandatory – practice with descriptions of non-standard character marks that include wording is to indicate that the wording is “in stylized font.”
Generally, if the applicant has not made a color claim, the description of the mark should not mention color, because a reference to color in the description of a non-colored mark creates a misleading impression. See TMEP §§807.07 et seq. regarding color. However, in some cases, it may be appropriate to submit a black-and-white drawing and a description of the mark that refers to black, white, and/or gray if the applicant states that color is not claimed as a feature of the mark. See TMEP §§807.07(f) et seq. regarding applications that include mark descriptions that refer to black, white, or gray when there is no corresponding color claim.
A description cannot be used to restrict the likely public perception of a mark. A mark’s meaning is based on the impression actually created by the mark in the minds of consumers, not on the impression that the applicant states the
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mark is intended to convey. However, an examining attorney may defer to the applicant’s phrasing of a description, so long as the description is accurate and complete. For example, if an element in a mark could reasonably be characterized in more than one way, the examining attorney should accept the applicant’s selection of one characterization over the other in the description.
See TMEP §808.03 regarding the examination procedure for descriptions.
808.03 Examination Procedure for Descriptions
After having determined that a description of the mark is required because the mark is not in standard characters, the examining attorney must then consider whether the description should be printed in the Official Gazette and on the registration certificate. Accurate and complete descriptions may always be printed. In other situations, the decision to print – and to modify the description so that it is appropriate for printing – depends on whether, in view of the nature or drawing of the particular mark in question, a description is necessary to clarify the mark for the public.
For example, pursuant to longstanding policy, a description must always be printed if:
(1) The mark is three-dimensional, or a configuration of the goods or packaging (TMEP §§807.10 and 1202.02(c)(ii));
(2) The drawing includes broken lines to show position or placement or to indicate a portion of the product or packaging that is not part of the mark (TMEP §§807.08 and 1202.02(c)(ii));
(3) The mark includes color (TMEP §§807.07(a) and 1202.05(e));
(4) The mark includes motion (TMEP §807.11); or
(5) The mark is a sound, scent, or other non-visual mark (37 C.F.R. §§2.37, 2.52(e); TMEP §§807.09 and 808.01).
In rare instances, a description must be printed when the mark consists of characters from the standard character set, but the characters are displayed in a manner that affects the meaning or significantly contributes to the overall commercial impression of the mark, for example, emoticons such as :) or :(. Note that a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons (TMEP §807.03(c)).
If the examining attorney determines that a description provided by the applicant will not be printed, notice to the applicant is not required. The examining attorney must either make a note in the “Notes-to-the-File” section of the record stating that the description should not be printed or issue an examiner’s amendment stating that the description will not be printed.
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Generally, the examining attorney may use either option, but a note in the “Notes-to-the-File” section of the record should be used where the examining attorney will issue an Office action regarding other matters. An examiner’s amendment without the prior approval of the applicant (see TMEP §707.02) may be used where it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters.
The examining attorney must then either: (1) delete the mark description from the “Description” field in the TRAM database; or (2) send the examiner’s amendment or an e-mail instruction (where only a note to the file was made) to the LIE for appropriate action in the TRAM database.
The foregoing procedures ensure that a description not intended for printing is deleted from the TRAM database. They further ensure that at the publication review stage, the description is not mistakenly re-entered into the TRAM database, because the note to the file or examiner’s amendment reflects the determination not to print.
The following sections explain how to handle various scenarios relating to the description requirement. Regarding TEAS applications, please note that although TEAS Plus applications for non-standard character marks cannot be validated and filed unless an entry is made in the ”Description” field, “regular” TEAS applications can be filed without entry of a description. The “regular” TEAS application will, however, display a warning message in non-standard character mark applications where no entry has been made in the “Description of the Mark” field. The warning message will indicate that although the description is not a filing date requirement, it must be provided at some point in the prosecution, or the application will not proceed to registration (assuming, of course, that all other requirements have been satisfied).
808.03(a) Accurate and Complete Descriptions
If the application contains an accurate and complete description of the mark, the examining attorney may leave the description in the TRAM database for printing in the Official Gazette and on the certificate of registration. No further action regarding the description is necessary in these situations. Obvious misspellings, typographical errors and redundancies in an otherwise accurate and complete description may be corrected by examiner’s amendment without the prior approval of the applicant (see TMEP §707.02).
808.03(b) No Description in Application
If the description is not submitted with the initial application, the examining attorney must ensure that a description is included in the record. Applications that include vague statements such as “the mark contains wording and a design,” “the mark contains a miscellaneous design,” and “the mark consists
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of words” should be treated as the equivalent of accurate but incomplete descriptions.
For TEAS applications for marks that consist only of wording in stylized font, with no design element, the applicant’s completion of the “Literal Element” field may be accepted for purposes of compliance with the rule, even if an unacceptably vague statement or no information is entered in the “Description of the Mark” field. In these cases, where the description need not be printed, the “Literal Element” information need not be copied into the “Description of the Mark” field in the TRAM database.
Likewise, for §66(a) applications for marks that consist only of wording in stylized font, with no design element, the applicant’s completion of the “Textual Elements of Mark” field may be accepted for purposes of compliance with the rule. In these cases, where the description need not be printed, the “Textual Elements of Mark” information need not be copied into the “Description” field in the TRAM database.
Similarly, in any application for a mark that includes color, the applicant’s provision of a color location statement (either in the original application or in response to a requirement) may be accepted for purposes of compliance with the rule. For TEAS applications, a color location statement provided in the initial application will automatically appear in the “Description” field in the TRAM database and should remain there for printing. For paper applications, the color location statement is placed in the “Description” field in the TRAM database and should remain there for printing.
Where an Office action or regular examiner’s amendment is otherwise unnecessary, in the following situations the examining attorney may enter a description by examiner’s amendment without the prior approval of the applicant (as with any examiner’s amendment, the examining attorney is thereby providing the applicant with notice and an opportunity to disagree):
• The mark consists only of wording in stylized font, with no color claim and with no design element (note that an examiner’s amendment would only be necessary where the applicant also failed to provide the “Literal Element,” which can serve as a description for this type of mark);
• The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording; or
• The record already contains an informal indication of what the mark comprises, such as where the cover letter of a paper application refers to the mark as “a stylized golf ball design.”
See TMEP §707.02.
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In the foregoing situations, if a description is necessary to comply with the requirements of the rule, but need not be printed in the Official Gazette or on the registration, the examining attorney must ensure the description is not entered into the TRAM database. In such cases, the “no-call” examiner’s amendment (TMEP §707.02) should neither be sent to the LIE nor entered into the TRAM database by the examining attorney. Where printing of the description is unnecessary, the examiner’s amendment must indicate that the description will not be printed in the Official Gazette or on the registration certificate. This indication in the examiner’s amendment ensures that at the publication review stage, the description is not mistakenly entered into the TRAM database.
On the other hand, where an Office action or examiner’s amendment regarding other matters is necessary, a description should be required in the Office action or entered by examiner’s amendment. If a response to an Office action requiring the description fails to include a description but resolves all other issues, and one of the special situations set out above applies, the examining attorney may do a “no-call” examiner’s amendment (TMEP §707.02) at that time. If all other issues have not been resolved, the requirement for a description must be maintained or made final, as appropriate.
For marks that include a design element of any kind that are not covered by the special situations set out above, the examining attorney must either issue a requirement for the description, or enter a description by examiner’s amendment, with the prior approval of the applicant. Once a description of the mark is received in response to an Office action or through an examiner’s amendment, the examining attorney must follow the procedures set forth in the other parts of TMEP §§808.03(c)-(d) (i.e., determine whether the description is accurate and complete, accurate and incomplete, or inaccurate, and proceed accordingly).
808.03(c) Accurate But Incomplete Description in Application or Amendment
If the description accurately describes some elements of the proposed mark but does not describe other elements, the USPTO will require amendment to complete the description only if the description will be printed in the Official Gazette and on the certificate of registration.
808.03(c)(i) Accurate But Incomplete Descriptions in Cases Where a Description is Needed to Clarify the Mark and Should be Printed
If the examining attorney determines that a description should be printed in the Official Gazette and on the registration certificate because it is necessary to clarify the proposed mark, the examining attorney must ensure that the
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description accurately addresses all significant elements of the mark. If the description is incomplete, the examining attorney must require amendment to ensure that the description is complete and accurate. The amendment may be done by examiner’s amendment, with the prior approval of the applicant.
808.03(c)(ii) Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed
Alternatively, if the examining attorney determines that the description need not be printed, the examining attorney need not require the applicant to amend or withdraw an incomplete or inartfully worded description, so long as the description does not misdescribe those elements of the mark addressed in the description. In such a case, although the incomplete description remains part of the application record in TICRS, it must be deleted from the TRAM database so that it will not be printed in the Official Gazette and on the certificate of registration. The examining attorney must follow the procedure described in §808.03 for descriptions provided by the applicant that need not be printed.
808.03(d) Inaccurate Description in Application or Amendment
If the examining attorney determines that the description misdescribes some element of the mark, such that the description is inconsistent with the mark shown on the drawing, the examining attorney must require the applicant to amend the description, even if the description will not be printed. An inaccurate description may not remain part of the record, regardless of whether the description will be printed. The amendment of the description may be done by examiner’s amendment, with the prior approval of the applicant.
808.03(e) Amending Descriptions
Generally, amending the description of the mark is liberally permitted, so long as the drawing supports the description. In rare cases where the amendment of the description constitutes a material alteration of the mark on the drawing or of the description filed with the original application, amendment will not be permitted. See 37 C.F.R. §2.72; In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001). See TMEP §§807.14 et seq. regarding material alteration.
808.03(f) Updating Design Coding
Particularly when a description is not included in the initial application, the examining attorney should ensure that the design coding is updated in accordance with the description, where appropriate and necessary. The examining attorney should ensure the design coding of all significant
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elements of the mark, specifically those that the examining attorney used in conducting a search. The examining attorney may update the “Design Code” field by making the appropriate entries in the TRAM database or by sending an e-mail message to the internal TM Design Code Correct mailbox that contains instructions regarding the changes to be made.
If additional codes beyond those searched have been coded for a particular design, deleting the extra codes is unnecessary.
809 Translation and Transliteration of Non-English Wording in Mark
An application to register a mark that includes non-English wording must include an English translation of that wording. 37 C.F.R. §2.32(a)(9). Similarly, an application for a mark that comprises non-Latin characters must include a transliteration of those characters, and either an English translation of the transliterated term, or a statement that the transliterated term has no meaning in English. 37 C.F.R. §2.32(a)(10). A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. Examples of a statement translating and transliterating a word in non-Latin characters are as follows:
The non-Latin characters in the mark transliterate to “Asahi,” and this means “Rising Sun” in English.
or
The non-Latin characters in the mark transliterate to “Asahi,” and this has no meaning in a foreign language.
If an application for a mark comprising non-English wording or non-Latin characters does not include an accurate translation and/or transliteration, the examining attorney must require the applicant to submit a statement of translation/transliteration. 37 C.F.R. §§2.32(a)(9) and (10).
When an application or certificate of registration includes a translation, both the non-English wording and the English translation will appear in the records of the USPTO. See TMEP §809.03 regarding the printing of the translation/transliteration statement in the Official Gazette and on the registration certificate.
In a TEAS Plus application, if the mark includes non-English wording, the initial application must include an English translation of that wording. 37 C.F.R. §2.22(a)(16). If the mark includes non-Latin characters, the application must include a transliteration of those characters. 37 C.F.R. §2.22(a)(17). If the applicant does not meet these requirements, the applicant must pay a processing fee per class to have the application examined as a regular TEAS application. See TMEP §819.01(m) for further
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information on translation and transliteration statements in TEAS Plus applications.
809.01 Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration
In order to properly examine applications with non-English wording, the translation and transliteration of the non-English wording must be determined prior to performing a search of the mark. This is critical because the foreign equivalent of an English term may be regarded in the same way as the English term for purposes of determining descriptiveness, requiring disclaimer, and citing marks under §2(d) of the Act (see, e.g., TMEP §§1207.01(b)(vi) and 1209.03(g)).
Therefore, if there is no translation and/or transliteration in the initial application, the examining attorney should ascertain the meaning of non- English wording before searching the mark.
The examining attorney may obtain the meaning of non-English wording through sources such as foreign language dictionaries and search engines. The examining attorney may also consult the Trademark Librarian or the Translations Branch, as appropriate.
If research by the examining attorney, the Trademark Library, and/or the Translations Branch indicates that the term has no meaning or no clear and exact equivalent in a foreign language and an inquiry to the applicant is not necessary, the examining attorney should enter a note in the “Notes-to-the- File” section of the record that the term has no meaning in a foreign language. In such cases, a statement regarding meaning should not be entered into the record for printing in the Official Gazette.
If the examining attorney determines the meaning of the non-English term(s), he or she must search the terms as they appear in the application, the transliterated terms, and the English translation(s) for the terms, as applicable. The examining attorney must also require (under 37 C.F.R. §2.61(b)) that an accurate translation be made of record by the applicant using the researched translation or other accurate translation provided by applicant. If the applicant disputes a translation obtained through online resources, the examining attorney should supplement the record with evidence from the Trademark Librarian and/or the Translations Branch.
If the translation is provided or supplemented after the examining attorney has conducted a search for conflicting marks, the examining attorney must conduct a new search of the transliterated terms and/or the English translation(s) for the terms, as applicable.
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809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language
Because the translation statement will be printed, examining attorneys should make a separate inquiry regarding the meaning of non-English wording and provide the applicant with the correct format for the translation or transliteration statement. See TMEP §809.03. If a general inquiry is made regarding meaning under 37 C.F.R. §2.61(b) (i.e., whether the term has significance in the relevant trade, any geographical significance, or any meaning in a foreign language), the applicant’s response may not be in the correct format for the translation or transliteration statement. If necessary, the examining attorney should rewrite the statement, as noted below, and ensure that the TRAM database is updated accordingly.
If the applicant responds to an inquiry regarding the meaning of non-English wording by stating that “the term has no significance in the relevant trade, no geographical significance, and no meaning in a foreign language,” the examining attorney should enter only the statement that the term “has no meaning in a foreign language” into TRAM. It is not necessary to issue an examiner’s amendment in such cases.
However, if the applicant responds that “the mark has only trademark significance,” or in some similar manner, the examining attorney should enter the statement that “the term has no meaning in a foreign language” into the record by a “no-call” examiner’s amendment (see TMEP §707.02).
809.01(b) Limited Exceptions to Rules for Translations
There are three limited exceptions to the general rule requiring that all foreign wording be translated. See TMEP §§809.01(b)(i) through (iii).
809.01(b)(i) Foreign Terms Appearing in English Dictionary
It is generally unnecessary to provide a translation of a foreign term if the term appears in an English dictionary (e.g., croissant, fiesta or flambé). However, if a term that appears in the English dictionary appears in a mark as part of a foreign idiomatic phrase or other unitary expression, a translation of the idiomatic phrase or unitary expression is required. It would be illogical to break the phrase into its individual word elements and to translate only the individual words that do not appear in the English dictionary. Such a translation would serve no useful purpose because it would not convey the true commercial impression of the phrase.
Example: If the mark included the phrase “la fiesta grande,” an appropriate translation would be “the great celebration” or possibly “the great fiesta.” It would be inappropriate to translate only “la” and “grande.” The ultimate goal is to provide a translation that reflects the true meaning of the non-English
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wording in the mark and the commercial impression made by the entire phrase. See TMEP §809.01 regarding equivalency in translation.
809.01(b)(ii) Foreign Articles or Prepositions Combined with English Terms
It is generally unnecessary to provide a translation of foreign articles or prepositions, such as “de,” “le,” “la,” or “il,” when combined with English terms, because their meaning is generally understood and, in this context, they are being used to convey an impression different from their foreign meaning. For example, in the mark “LE CASE,” it is unnecessary to translate “LE.”
809.01(b)(iii) Words From Dead or Obscure Languages
It is generally not necessary to translate words from dead or obscure languages. Cf. General Cigar Co. Inc. v. G.D.M. Inc., 988 F. Supp. 647, 45 USPQ2d 1481 (S.D.N.Y. 1997) (applicant had no obligation to disclose that the term COHIBA for cigars means “tobacco” in the language of the Taino Indians in the Dominican Republic, because cigar smokers in the United States would not be aware of such a meaning). See TMEP §§1207.01(b)(vi) and 1209.03(g) regarding the applicability of the doctrine of foreign equivalents to words from dead or obscure languages. The determination of whether a language is “dead” must be made on a case by case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
809.02 Equivalency in Translation
The translation that should be relied upon in examination is the English meaning that has significance in the United States as the equivalent of the meaning in the non-English language. The following are examples of equivalency in translation:
(1) “Chat Noir” - The exact equivalent in English is “black cat,” and this translation would undoubtedly be recognized by the purchasing public in this country. Ex parte Odol-Werke Wien Gesellschaft M.B.H., 111 USPQ 286 (Comm’r Pats. 1956) (mark “Chat Noir” refused registration because the words “Black Cat” were already registered for related goods).
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(2) “Mais Oui” - The English equivalent of the phrase “mais oui” is “why, certainly,” or “why, of course,” and not the literal translation “but yes.” In re Societe Des Parfums Schiaparelli, S.A., 122 USPQ 349 (TTAB 1959). A satisfactory translation must be some normal English expression that will be the equivalent in meaning of the term “mais oui” in French.
(3) “Schwarzkopf” - The term can be literally translated as “black head,” but, even to German-speaking persons, the primary significance of “Schwarzkopf” is most likely that of a surname. Neither English nor foreign surnames should be translated. See TMEP §1211 regarding surnames.
If any question arises as to the proper translation of a mark, the examining attorney may consult the Trademark Library or Translations Branch of the USPTO. The determination of the appropriate translation often requires consideration of the meaning in relation to the goods and/or services. See TMEP §1207.01(b)(vi) regarding the use of the doctrine of foreign equivalents in determining likelihood of confusion under 15 U.S.C. §1052(d), TMEP §1209.03(g) regarding the doctrine of foreign equivalents in determining questions of descriptiveness under 15 U.S.C. §1052(e)(1), and TMEP §1211.01(a)(vii) regarding the doctrine of foreign equivalents in determining whether a term is primarily merely a surname under 15 U.S.C. §1052(e)(4).
809.03 Printing of Translations and Transliterations
Generally, non-English wording in a mark must be translated into English and the translation (and transliteration, if applicable) must be printed in the Official Gazette and on the registration certificate. A statement that a term has no meaning in a foreign language also should be printed.
Sometimes, translations that are not precise, or that give a variety of meanings, are placed in the record. While all possible translations, and discussions relative to meaning, are useful for informational purposes, not all such matter is appropriate for printing in the Official Gazette or on the certificate of registration. Only a translation that is the clear and exact equivalent (see TMEP §809.02) should be printed. This normally means only one translation, because the existence of a variety of alternative translations, or the necessity of including explanatory context, usually indicates lack of a clearly recognized equivalent meaning.
If an applicant submits a translation that is too verbose or vague to be appropriate for printing, the examining attorney must require a clear, concise translation. The transliteration of non-Latin characters, if any, must be included in the statement to be printed. If necessary, the examining attorney should rewrite the statement via an examiner’s amendment and ensure that the TRAM database is updated accordingly.
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Example: The translation statement contains the proper translation, but the statement is not suitable for printing because it is too wordy. If the examining attorney is only “reformatting” the applicant’s statement without changing the substance, the examining attorney should rewrite the translation statement into a simple, clear statement as to meaning, issue a “no-call” examiner’s amendment (see TMEP §707.02), and ensure that the TRAM database is updated accordingly.
Example: The translation statement is vague or is otherwise in need of clarification in order for the statement to be clear and concise. The examining attorney should contact the applicant and suggest a simple, clear statement. If the applicant agrees to amend the translation statement as suggested, the examining attorney should issue a regular examiner’s amendment, and ensure that the TRAM database is updated accordingly. If the applicant and examining attorney cannot agree on wording, the examining attorney must issue an Office action to resolve the issue.
One of the following statement formats should be used, as appropriate:
“The English translation of __________ in the mark is __________,” or
“The wording __________ has no meaning in a foreign language,” or
“The non-Latin characters in the mark transliterate to __________ and this means __________ in English,” or
“The non-Latin characters in the mark transliterate to __________ and this has no meaning in a foreign language.”
All information in the “Translation” and “Transliteration” fields in the application record will automatically be printed in the Official Gazette and on the certificate of registration. Accordingly, the examining attorney must ensure that the translation or transliteration is entered into the TRAM database. When an examining attorney determines that a translation should not be printed because it is unnecessary, the examining attorney must ensure that the translation is deleted from the TRAM database, and enter a note in the “Notes-to-the-File” section of the record indicating that the translation has been deleted. The document containing the information deleted from TRAM will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or issuance.
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810 Filing Fee
An application under §1 or §44 of the Trademark Act must include a filing fee for each class of goods or services. 15 U.S.C. §§1051(a)(1), 1051(b)(1), and 1126.
The required filing fee for at least one class of goods or services must be received before an application can be given a filing date. 37 C.F.R. §2.21(a)(5).
The amount of the trademark application filing fee varies, depending upon whether the application (or the amendment adding classes to an existing application) is filed through TEAS or on paper. An applicant has three choices. The applicant can file:
• A paper application at the highest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i);
• A regular TEAS application at the lower fee per class, set forth in 37 C.F.R. §2.6(a)(1)(ii); or
• A TEAS Plus application (see TMEP §§819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iii).
See notices at 70 Fed. Reg. 2952 (Jan. 19, 2005) and 70 Fed. Reg. 38768 (July 6, 2005). The current fee schedule is available on the USPTO website at http://www.uspto.gov.
Note: Applications that are downloaded from TEAS or TEAS Plus, printed, and mailed to the USPTO are considered paper applications and are subject to the paper application filing fee.
An applicant who amends an application to add classes is entitled to the lower fee if the applicant files the amendment through TEAS (either as a preliminary amendment or a response to an examining attorney’s Office action), or through an examiner’s amendment. The applicant must pay the higher fee if the applicant files an amendment adding class(es) on paper. See TMEP §§1403.02(c) and 1403.06 for further information about fees in multiple-class applications.
See also TMEP §§405 et seq. regarding payment of fees to the USPTO, and TMEP §§202.03(a) and 202.03(a)(i) regarding the processing of applications in which a check submitted as the application filing fee is returned unpaid, or an electronic funds transfer or credit card payment is refused or charged back by a financial institution.
The filing fee for a §66(a) application will be sent to the USPTO by the IB, pursuant to the provisions of the Madrid Protocol and the Common
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Regulations. The examining attorney should not require additional fees during examination.
810.01 Collection of Fees for Multiple Classes
A filing fee is required for each class in a multiple-class application under §1 or §44 of the Trademark Act. 37 C.F.R. §2.86(a)(2). The USPTO has established the following policy to ensure the collection of application filing fees from all applicants on an equitable basis.
In an application under §1 or §44, if the applicant has specifically authorized the USPTO to charge any additional fees to a deposit account, the examining attorney should ask the LIE to charge the fees, and proceed with examination of the application on the merits. If the applicant has not provided a specific authorization to charge an account, the examining attorney should attempt to contact the applicant to secure a written authorization to charge fees to a credit card or deposit account by fax or-e-mail.
An authorization to charge a fee to a deposit account must be made in a written document signed and submitted by an authorized person. It cannot be entered by examiner’s amendment unless the record already contains a written authorization, signed and submitted by someone who is authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.
If the examining attorney is able to secure a written authorization to charge fees to a credit card or deposit account, the examining attorney should have the LIE charge the necessary fees to the credit card or deposit account and proceed with examination. See TMEP §§810, 1403.02(c), and 1403.06 regarding the amount of the fee for adding classes to an application.
If an authorization to charge fees has not been provided and the examining attorney is unable to secure one, the examining attorney must issue a written Office action noting the deficiency and requiring either payment of the fees or deletion of classes. This policy applies to any application under §1 or §44 of the Trademark Act in which the applicant specifically delineates more than one class of goods or services and the applicant has paid the fee(s) for less than all the classes. The delineation may be by indicating class numbers or any other means demonstrating a clear intention to seek registration in multiple classes.
In limited circumstances, the examining attorney should advise the applicant that action on the merits of the application is deferred pending receipt of the applicant’s response to the Office action requiring payment of missing fees or deletion of classes. In most cases, the examining attorney should simply act on the merits of the application and require the additional fees. For example, it would be inappropriate to defer action in a pro se application or in other cases where the applicant has in good faith attempted to pay the appropriate fees. Before issuing a letter deferring action until additional fees are paid, the
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examining attorney should consult with the managing attorney or senior attorney.
The filing fee for a §66(a) application will be sent to the USPTO by the IB, pursuant to the provisions of the Madrid Protocol and the Common Regulations. The examining attorney should not require additional fees during examination. The classification in a §66(a) application cannot be changed and additional classes cannot be added. See TMEP §1401.03(d) for further information.
810.02 Refunds
Only money paid by mistake or in excess (when a fee is not required by the statute or rules, or is not required in the amount paid) may be refunded. A mere change of purpose after the payment of money does not entitle a party to a refund. For example, if an applicant deletes a class from an application, or withdraws an application, the applicant is not entitled to a refund. 37 C.F.R. §2.209.
The filing fee for an application that is denied a filing date will be refunded. After an application has been given a filing date and processed, the filing fee will normally not be returned. However, if an examining attorney erroneously requires a fee, the USPTO will refund any fee submitted in response to the erroneous requirement.
If the examining attorney determines that an applicant is entitled to a refund, he or she should refer the application to the LIE to process the refund.
If the examining attorney is uncertain as to whether a refund is appropriate, he or she should discuss the situation with the managing attorney or senior attorney.
See TMEP §405.04 for additional information about processing refunds.
811 Designation of Domestic Representative
Under 15 U.S.C. §§1051(e) and 1141h(d) and 37 C.F.R. §2.24, an applicant not domiciled in the United States may file a document designating the name and address of a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. See TMEP §610 for further information. The USPTO encourages applicants who do not reside in the United States to designate domestic representatives. To expedite processing, the USPTO recommends that designations of domestic representative be filed through TEAS, at http://www.uspto.gov/teas/index.html.
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812 Identification of Prior Registrations of Applicant
37 C.F.R. §2.36. Identification of prior registrations. Prior registrations of the same or similar marks owned by the applicant should be identified in the application.
Trademark Rule 2.36, 37 C.F.R. §2.36, states that prior registrations of the same or similar marks owned by the applicant should be identified in the application. The rule does not precisely define when an applicant should claim ownership of prior registration(s), and the examining attorney may exercise discretion in invoking the rule. The main purpose of the rule is to provide the examining attorney with information necessary for proper examination. The information does not have to be given in any specific form. The applicant’s claim of ownership of prior registrations will be printed in the Official Gazette and on the registration certificate.
Normally, identification of a registration is necessary because the registration would, if not owned by the applicant, be a basis for refusal under §2(d) of the Act, 15 U.S.C. §1052(d). Occasionally, it is desirable to ask an applicant to identify a particular registration as being owned by the applicant merely to provide relevant information.
It is not necessary to assert ownership of expired or cancelled registrations. If the applicant wants to include a reference to a cancelled or expired registration, the applicant should indicate that the applicant owns the mark disclosed in the cancelled or expired registration, because technically one does not “own” a registration that is not in force and effect. Claims of ownership of pending applications, expired or cancelled registrations, and registrations that are unrelated to an application will not be printed.
Before approving an application that includes a claim of ownership of prior registrations for publication or registration, the examining attorney must ensure that the registrations are active. If a registration is not active, the claim of ownership should not be printed.
All information in the “Prior Registration” field in the application record in the TRAM database will automatically be printed in the Official Gazette and on the certificate of registration. Accordingly, when an examining attorney determines that a claim of ownership of a prior registration should not be printed (e.g., because the registration is no longer active or is irrelevant to the registrability of the mark in the subject application), the examining attorney must ensure that the claim of ownership is deleted from the TRAM database, and enter a note in the “Notes-to-the-File” section of the record indicating that the claim has been deleted. The document containing the information deleted from TRAM will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or issuance.
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If the applicant owns numerous prior registrations, it is not necessary to list them all. The applicant should specifically identify the two or three registration numbers that are most relevant (due to the similarity of the marks and/or relatedness of the goods or services), and then indicate that it owns other registrations as well, e.g., “the applicant is the owner of Reg. Nos. <specify the numbers> and others.”
In a TEAS Plus application, if the applicant owns one or more registrations for the same mark, the initial application must include a claim of ownership of the registration(s). If this information is not included in the initial application, the applicant must pay a processing fee per class to have the application examined as a regular TEAS application. 37 C.F.R. §2.22(a)(19). See TMEP §819.01(p) for further information.
812.01 Proving Ownership of Prior Registrations
If an applicant includes a claim of ownership of a prior registration in the application as filed, the examining attorney should accept the claim without further proof of ownership and should not cite the registration for likelihood of confusion under §2(d) of the Act.
If the applicant does not assert ownership of a pertinent registration in the application when it is filed, but the records of the USPTO indicate that the registration is owned by the applicant, the examining attorney does not have to cite the registration for likelihood of confusion, but should call the registration to the applicant’s attention and ask the applicant to state that the applicant owns the registration, if accurate. This statement may be placed in the record through an examiner’s amendment.
If the TRAM database indicates that an assignment was filed, the examining attorney should check the automated records of the Assignment Services Branch of the USPTO to determine whether information contained in those records supports ownership of the registration in the applicant’s name.
Generally, the applicant has the burden of proving ownership of a registration. The USPTO’s automated search system may not reflect the recordation of changes of ownership in the Assignment Services Branch. See TMEP §§502 et seq. Therefore, if an applicant does not assert ownership of a pertinent registration in an application when it is filed, it is possible that the registration may be cited against the current application under §2(d) because the records of the USPTO do not indicate that it is owned by the applicant. If so, the applicant must do one of the following: (1) state for the record that the documents have been recorded in the Assignment Services Branch for a registration based on an application under §1 or §44 of the Trademark Act, or with the IB for a §66(a) registration; (2) submit copies of documents evidencing the chain of title; or (3) submit a statement, supported by an affidavit or declaration under 37 C.F.R. §2.20, that the applicant is the owner
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of the cited registration. This also applies to pending conflicting applications that are cited as a potential bar to registration.
813 Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark
When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow, respectively. The requirement for consent also applies to the registration of a pseudonym, stage name, or nickname, if there is evidence that the name identifies a specific living individual who is publicly connected with the goods or services, is generally known, or is well known in the field relating to the relevant goods or services. See TMEP §§1206 et seq. concerning refusal of registration under §2(c) of the Trademark Act, 15 U.S.C. §1052(c), when a mark in an application comprises the name, portrait, or signature of a living individual whose consent to register such name or likeness is not of record.
See TMEP §1206.03 for information about when the examining attorney should issue an inquiry as to whether a name or likeness identifies a particular living individual.
Consent may be presumed where the individual whose name or likeness appears in the mark personally signs the application. See TMEP §1206.04(b) for further information.
If a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for the same goods or services, the applicant may satisfy the requirement for a consent statement by claiming ownership of the registration and advising the examining attorney that the consent is of record therein. See TMEP §1206.04(c) for further information.
If a mark comprises the name or likeness of a living individual and consent to register is of record or is presumed from signature of the application (TMEP §1206.04(b)), a statement that the mark identifies a living individual whose consent is of record must be printed in the Official Gazette and on the registration certificate. See TMEP §813.01(a). If a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual, a statement to that effect is printed in the Official Gazette and on the registration certificate. See TMEP §813.01(b).
In a TEAS Plus application, if the mark includes an individual’s name or portrait, the initial application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises, and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual. If this statement does not appear
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in the initial application, the applicant must pay a processing fee per class to have the application examined as a regular TEAS application. 37 C.F.R. §2.22(a)(18). See TMEP §819.01(o) for further information.
See TMEP §§813.01(b) and 1206.05 regarding statements that a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual.
813.01 Statement Printed in Official Gazette and on Registration Certificate
813.01(a) Name or Likeness is That of a Living Individual
If a mark comprises the name or likeness of a living individual and consent to register is of record, a statement to that effect must be printed in the Official Gazette and on the registration certificate. The following are examples of acceptable statements:
The name, portrait, and/or signature shown in the mark identifies a living individual whose consent to register is made of record;
The name shown in the mark identifies a living individual whose consent is of record;
“<JOHN SMITH>” identifies a living individual whose consent is of record;
The portrait or likeness shown in the mark identifies a living individual whose consent is of record;
The signature shown in the mark identifies a living individual whose consent is of record; or
The name, portrait, and/or signature shown in the mark identifies <John Smith>, whose consent to register is made of record.
Only matter that actually appears in the mark should appear in capital letters within quotation marks.
Where the mark comprises a portrait, first name, pseudonym, nickname, surname, surname preceded by initials (e.g., “J.C. Jones”), or title of a living individual, the record must clearly identify the actual name of the individual and indicate that the name shown in the mark identifies that individual. A legible signature on the consent statement may in itself be sufficient to identify the individual’s name. If the actual name is unclear, the examining attorney must issue an inquiry. The name may be entered by examiner’s amendment, if appropriate.
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Where the mark comprises the name or likeness of a living individual whose consent is of record, the consent statement must always be printed, even if the name that appears in the mark is that of the applicant. The statement must also be printed if consent is presumed from signature of the application (TMEP §1206.04(b)), or if consent is of record in a valid registration owned by applicant (TMEP §1206.04(c)).
The examining attorney must ensure that the TRAM database is updated, if necessary. See TMEP §813.01(c).
813.01(b) Name or Likeness is Not That of a Living Individual
If a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual, a statement to that effect must be printed in the Official Gazette and on the registration certificate. The statement should read as follows:
“__________ does not identify a living individual.”
The applicant should explain any additional relevant circumstances. For example, if the matter identifies a certain character in literature or a deceased historical person, then a statement of these facts in the record may be helpful, but this information will not be printed in the Official Gazette or on the registration certificate.
No statement should be printed unless the name or portrait might reasonably be perceived as that of a specific living individual. This is true even if the applicant submits an unsolicited statement that a particular name or portrait does not identify a living individual.
Generally, if the name or likeness is such that an inquiry would have been required as to whether it identifies a living individual (see TMEP §1206.03), and the applicant states that the mark does not identify a living individual, then the statement that the name or likeness does not identify a living individual should be printed.
The examining attorney must ensure that the TRAM database is updated, if necessary. See TMEP §813.01(c).
If the applicant owns a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the record for the registration contains a statement that the name or likeness is not that of a living individual, the applicant should claim ownership of the registration and advise the examining attorney that the statement is of record therein. The examining attorney may then enter the same statement in the record for the application, even if applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation.
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813.01(c) Updating TRAM Database
All statements in the TRAM database as to whether a mark comprises the name, portrait, or signature of a living individual whose consent is of record will automatically be printed in the Official Gazette and on the certificate of registration. Accordingly, when an examining attorney determines that such a statement should not be printed, the examining attorney must ensure that the statement is deleted from the database by personally deleting the statement from TRAM or asking the LIE to do so. The examining attorney must also enter a note in the “Notes-to-the-File” section of the record indicating that the statement has been deleted. The document containing the information deleted from TRAM will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or issuance.
814 Requesting Additional Information
Sometimes, it is necessary for the examining attorney to request additional information from an applicant in order to examine the application properly, pursuant to 37 C.F.R. §2.61(b). If the applicant does not comply with a requirement for information, registration may be refused.
If the applicant does not comply with the examining attorney’s request for information, the requirement should be repeated and, if appropriate, made final. See In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003) (§2(e)(1) refusal moot, since failure to comply with requirement for information is sufficient basis, in itself, for refusan( � In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (registration properly refused where applicant ignores request for information); In re Page, 51 USPQ2d 1660 (TTAB 1999) (intent-to-use applicant’s failure to comply with requirement for information as to the intended use of the mark constitutes grounds for refusan( � In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information); In re Air Products and Chemicals, Inc., 192 USPQ 157, 158 (TTAB 1976) (“The rule has the effect of law.”). See also In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008), in which the Board made factual presumptions unfavorable to the applicant in considering alternative statutory refusals under §§2(e)(2) and 2(e)(3), in view of the applicant’s failure to comply with the examining attorney’s requirement for information as to the geographic origin of the goods.
The examining attorney may request literature, exhibits, and general information concerning circumstances surrounding the mark, as well as, if applicable, its use or intended use. Requests for information that is not public knowledge, but is peculiarly within the knowledge of the applicant or available to the applicant, are particularly appropriate. The examining attorney should explain why the information is needed, if the reason is not obvious.
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If applicant wants to provide information from its website in response to the examining attorney’s request for information, applicant should attach the relevant information to its response. A mere statement that information about the goods or services is available on applicant’s website is an inappropriate response to the examining attorney’s request for information, and insufficient to make the relevant information of record. In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004).
If applicant does not believe that it has relevant information, applicant should submit a statement to this effect.
If the requested information is confidential, or if, for a valid reason, the applicant does not want to have the information become part of a public record, the applicant should explain those circumstances. Placing confidential information in the record is not required. Sometimes an explanation will suffice.
815 Application Filed on Supplemental Register
Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091 through 1096, provide for registration on the Supplemental Register. Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register. Marks registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Act of 1946. The excluded sections are listed in 15 U.S.C. §1094 and TMEP §801.02(a).
If the applicant seeks registration on the Supplemental Register, the application should state that registration is requested on the Supplemental Register. If no register is specified, the USPTO will presume that the applicant seeks registration on the Principal Register.
A mark in an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), based on a request for extension of protection of an international registration to the United States, cannot be registered on the Supplemental Register. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
Upon approval of the mark for registration, the record will indicate that the mark has been “Allowed for Supplemental Registration” rather than that the mark has been approved for publication. Marks on the Supplemental Register are not published for opposition, but are issued as registered marks on the date that they are printed in the Official Gazette.
Applications on the Supplemental Register are not subject to opposition under 15 U.S.C. §1063, but are subject to cancellation under 15 U.S.C. §1064. 15 U.S.C. §1092.
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See TMEP §§816 et seq. regarding amendments to the Supplemental Register.
815.01 Marks Eligible for Principal Register Not Registrable on Supplemental Register
A mark that is clearly eligible for the Principal Register may not be registered on the Supplemental Register. An application requesting registration on the Supplemental Register must be amended to the Principal Register, or refused registration, if the mark is registrable on the Principal Register. Daggett & Ramsdell, Inc. v. I. Posner, Inc., 115 USPQ 96 (Comm’r Pats. 1957).
815.02 Elements Required
An application requesting registration on the Supplemental Register should state that the applicant requests registration on the Supplemental Register. If no register is specified, the USPTO will assume that the applicant is requesting registration on the Principal Register.
In an application under §1(b), the mark must be in lawful use in commerce on or in connection with the goods/services before the mark can register. 15 U.S.C. §1091(a). Under 37 C.F.R. §2.47(d), an intent-to-use applicant is not eligible for registration on the Supplemental Register until the applicant has filed an acceptable allegation of use. When the applicant amends to the Supplemental Register after filing an acceptable allegation of use, the effective filing date of the application is the date on which the applicant filed the allegation of use, i.e., the date on which the applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for an amendment to allege use (see TMEP §1104.01), or 37 C.F.R. §2.88(e) for a statement of use (see TMEP §1109.01). 37 C.F.R. §2.75(b). See also TMEP §§816.02 and 1102.03 regarding intent-to-use applications and the Supplemental Register.
If an applicant submits a §1(b) application requesting registration on the Supplemental Register for which no acceptable allegation of use has been filed, the examining attorney must refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. The examining attorney will withdraw the refusal if the applicant submits an acceptable allegation of use.
If the application is based solely on §44, the applicant may seek registration on the Supplemental Register without alleging use in commerce or use anywhere in the world. 15 U.S.C. §1126(e); 37 C.F.R. §2.47(b); TMEP §1009. However, the §44 applicant must verify that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1126(d) and (e); 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii).
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815.03 Filing on Supplemental Register is Not an Admission That the Mark Has Not Acquired Distinctiveness
Under 15 U.S.C. §1095, registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness.
815.04 Basis for Refusal of Registration of Matter That is Incapable
When the examining attorney refuses registration on the Supplemental Register on the ground that the proposed mark is incapable of distinguishing the applicant’s goods or services, the examining attorney should cite §§23(c) and 45 of the Trademark Act, 15 U.S.C. §§1091(c) and 1127, as a basis for refusal. See In re Controls Corp. of America, 46 USPQ2d 1308, 1309 n.2 (TTAB 1998).
816 Amending Application to Supplemental Register
816.01 How to Amend
If an application meets the requirements noted in TMEP §815.02, the application may be amended by requesting that the words “Principal Register” be changed to “Supplemental Register,” or that “the application is amended to the Supplemental Register.”
An application under §66(a) of the Trademark Act cannot be amended to the Supplemental Register. Section 68(a)(4) of the Act, 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
816.02 Effective Filing Date
Intent-to-Use Applications
As noted in TMEP §815.02, an intent-to-use applicant may file an amendment to the Supplemental Register only after the applicant has begun using the mark and filed an acceptable allegation of use. 37 C.F.R. §2.47(d). In such a case, if the application is based solely on §1(b), the effective filing date of the application is the filing date of the allegation of use, i.e., the date on which the applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for an amendment to allege use (see TMEP §1104.01), or 37 C.F.R. §2.88(e) for a statement of use (see TMEP §1109.01). 37 C.F.R. §2.75(b); TMEP §1102.03. The examining attorney should examine the amendment to allege use or statement of use before taking any action on the amendment to the Supplemental Register.
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Group LLC v.
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Harpole, 90 USPQ2d 1837 (TTAB 2009) (filing date did not change when an applicant who originally sought registration on the Supplemental Register, without alleging use in commerce, amended to seek registration on the Principal Register under §1(b)).
Applications Filed Before November 16, 1989
Prior to November 16, 1989, one year’s lawful use of the mark in commerce was required to apply for registration on the Supplemental Register. Effective November 16, 1989, an applicant may apply for registration on the Supplemental Register at any time after commencing use of the mark in commerce.
An applicant may amend a pending application to request registration on the Supplemental Register at any time after use of the mark has commenced. The date of the amendment to the Supplemental Register becomes the effective filing date of the application if: (1) the applicant had not used the mark in commerce for one year before the application filing date; and (2) the applicant amends to the Supplemental Register on or after November 16, 1989.
See also TMEP §§206 et seq. regarding effective filing date.
816.03 Amendment to Different Register
There is no restriction on the number of times an applicant may amend from one register to another. Normally, however, one amendment is sufficient, and subsequent amendments should be avoided except for unusual circumstances.
816.04 Amendment After Refusal
In an application under §1 or §44 of the Trademark Act, the applicant may amend to the Supplemental Register after a refusal to register on the Principal Register, including a final refusal. If the final refusal was under §2(e)(1), §2(e)(2), or §2(e)(4) of the Trademark Act, 15 U.S.C. §§1052(e)(1), 1052(e)(2), or 1052(e)(4), or on grounds pertaining to other non-inherently distinctive subject matter, amendment to the Supplemental Register is procedurally an acceptable response. See 37 C.F.R. §2.75.
The applicant may argue the merits of the examining attorney’s refusal of registration on the Principal Register and, in the alternative, request registration on the Supplemental Register. Similarly, the applicant may seek registration on the Principal Register based on acquired distinctiveness under §2(f) , 15 U.S.C. §1052(f), and, in the alternative, on the Supplemental Register. See TMEP §1212.02(c).
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An amendment to the Supplemental Register after refusal presents a new issue requiring consideration by the examining attorney, unless the amendment is irrelevant to the outstanding refusal. If the examining attorney determines that the proposed mark is incapable of identifying and distinguishing the applicant’s goods or services, the examining attorney should issue a nonfinal refusal of registration on the Supplemental Register, under §§23 and 45 of the Trademark Act, 15 U.S.C. §§1091 and 1127. See TMEP §714.05(a)(i).
A mark in an application under §66(a) of the Trademark Act cannot be amended the Supplemental Register. Section 68(a)(4) of the Act, 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
816.05 Amendment After Decision on Appeal
An applicant may not amend to the Supplemental Register after the Trademark Trial and Appeal Board has affirmed a refusal of registration on the Principal Register. After having elected one of the remedies available for contesting the basis for the refusal, namely, appeal rather than amendment to the Supplemental Register, and having pursued the remedy to a conclusion, the applicant may not return to its previous position and pursue another remedy for the same refusal anew. In the following cases, the USPTO refused to grant petitions to reopen prosecution and return jurisdiction to the examining attorney to consider an amendment to the Supplemental Register after decision on appeal: Ex parte Simoniz Co., 161 USPQ 365 (Comm’r Pats. 1969); Ex parte Helene Curtis Industries, Inc., 134 USPQ 73 (Comm’r Pats. 1962); Ex parte Sightmaster Corp., 95 USPQ 43 (Comm’r Pats. 1951). See also TMEP §1501.06 and cases cited therein.
The applicant may file a new application requesting registration on the Supplemental Register.
817 Preparation of Application for Publication or Registration
When an application is ready to be approved for publication or registration, the examining attorney must carefully review the application record to ensure the accuracy of the information contained therein and to ensure that all information that should be printed in the Official Gazette and on the certificate of registration has been properly entered into the TRAM database. The type of information that should be printed includes:
(1) Disclaimer statements (TMEP §§1213 et seq.);
(2) Notations of acquired distinctiveness, i.e., “2(f)” or “2(f) in part as to . . .,” as appropriate (TMEP §§1212 et seq.);
(3) Lining and/or stippling statements, if necessary (TMEP §808.01(b));
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(4) Consent to register a name or portrait and/or statements that a name or portrait does or does not identify a living individual (TMEP §§813.01 et seq.);
(5) Translations of non-English wording and transliterations of non- Latin characters in the mark, or statements that the non-English wording or transliterated term has no meaning in English (TMEP §809.03);
(6) Ownership of related United States registrations (TMEP §812);
(7) Description of mark statements (TMEP §§808 et seq.);
(8) Dates of use of the mark in another form (TMEP §903.07); and
(9) Color claims and color location statements (TMEP §§807.07(a) et seq.).
All statements in the TRAM database relating to the above-listed items will automatically be printed in the Official Gazette and on the registration certificate. Therefore, examining attorneys must ensure that information about these items that should not be printed (e.g., claims of ownership of unrelated or cancelled United States registrations, statements such as disclaimers that have been amended and are no longer valid, or unnecessary §2(f) statements) is deleted from the TRAM database. The documents containing the information deleted from TRAM will remain of record for informational purposes. It is not necessary to notify the applicant that the information will not be printed. If an applicant provides information by phone that should not be printed (e.g., a statement that a particular term has no meaning in the relevant industry), the examining attorney should enter a note in the “Notes-to-the-File” section of the record detailing the information that will not be entered into the database.
In addition, the examining attorney must check to ensure the accuracy of the following critical data elements:
(1) The mark;
(2) The register for which application is made;
(3) The identification of goods and/or services;
(4) International classification;
(5) Filing date;
(6) Dates of use for each class, if applicable;
(7) Foreign application and registration data, if applicable;
(8) Whether §1(b) of the Act is a basis for registration;
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(9) In a multiple-basis application, which goods are covered by which basis; and
(10) In concurrent use cases, information as to the proposed geographic limitation.
If any of the above items are not accurately entered into the TRAM database, the examining attorney must ensure that the necessary correction(s) are made.
If there has been an assignment, the examining attorney must check the records of the Assignment Services Branch of the USPTO to ensure that there is a clear chain of title, and ensure that the change of ownership is entered into the TRAM database, if necessary. See TMEP §§502.02(a) and 502.02(c).
818 Application Checklist
This section may be used to determine whether materials submitted as a trademark application are complete, and to ensure that appropriate requirements and refusals are made. See 37 C.F.R. §2.21 and TMEP §202 regarding the elements that must be received before the USPTO will grant a filing date to an application.
An application for trademark registration must include the following:
(1) a clear drawing of the mark (37 C.F.R. §§2.21(a)(3), 2.51 through 2.54; TMEP §§202.01 and 807 et seq.);
(2) a verified statement signed by a person properly authorized to sign on behalf of the applicant (15 U.S.C. §§1051(a)(3) and (b)(3); 37 C.F.R. §2.33; TMEP §§804 et seq.);
(3) a written application that includes the following:
(a) the date on which the application was signed;
(b) the applicant’s name, and DBA designation if appropriate (37 C.F.R. §2.32(a)(2); TMEP §§803.02 et seq.);
(c) the applicant’s legal entity (TMEP §§803.03 et seq.);
(d) the country of which the applicant is a citizen, or the state or country of incorporation or organization of a juristic applicant (15 U.S.C. §§1051(a)(2) and (b)(2); 37 C.F.R. §§2.32(a)(3)(i) and (ii); TMEP §803.04);
(e) if the applicant is a domestic partnership or domestic joint venture, the names and citizenship (or state or country of incorporation or organization) of the general partners or active
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members of the joint venture (37 C.F.R. §2.32(a)(3)(iii) and (iv); TMEP §§803.03(b) and 803.04);
(f) the applicant’s domicile and post office address (15 U.S.C. §§1051(a)(2) and (b)(2); 37 C.F.R. §2.32(a)(4); TMEP §803.05);
(g) a statement that the applicant is using the mark in commerce in a §1(a) application, or has a bona fide intent to use the mark in commerce in an application under §1(b) or §44 (15 U.S.C. §§1051(a)(3)(C), 1051(b)(3)(B), 1126(d)(2), and 1126(e); 37 C.F.R. §§2.33(b)(1) and (2));
(h) an identification of the goods/services (15 U.S.C. §§1051(a)(2) and (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §§1402 et seq.);
(i) the class(es) of the goods/services, if known to the applicant (37 C.F.R. §2.32(a)(7); TMEP §§1401 et seq.);
(j) the dates when the mark was first used and first used in commerce with the goods/services in each class, in an application under §1(a) (15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii) and (iii); TMEP §§903 et seq.);
(k) a statement that the mark is being used by a related company or companies, in a §1(a) application where use of the mark is only by one or more related companies and inures to the applicant’s benefit (37 C.F.R. §2.38; TMEP §901.05);
(l) if the applicant claims priority under §44(d), a claim of the benefit of the applicant’s first-filed foreign application in a treaty country within the preceding six months, specifying the filing date, country, and serial number of such application (15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §§1003 et seq.);
(m) a basis for filing (37 C.F.R. §§2.32(a)(5) and 2.34; TMEP §§806 et seq.);
(n) an averment by the person making the verification that he or she believes the applicant to be the owner of the mark sought to be registered in an application under §1(a), or to be entitled to use the mark in commerce in a §1(b) or §44 application (15 U.S.C. §1051(a)(3)(A) and 1051(b)(3)(A); 37 C.F.R. §§2.33(b)(1) and (2); TMEP §804.02);
(o) an averment that the mark is in use in commerce in a §1(a) application (37 C.F.R. §§2.33(b)(1) and 2.34(a)(1)(i); TMEP §901);
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(p) an averment that, to the best of the verifier’s knowledge and belief, no other person, firm, corporation, or association has the right to use such mark in commerce either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods of the other person, to cause confusion, or to cause mistake, or to deceive (15 U.S.C. §§1051(a)(3)(D) and (b)(3)(D); 37 C.F.R. §§2.33(b)(1) and (2); TMEP §804.02);
(q) a description of the mark, if the mark is not in standard characters (37 C.F.R. §2.37 and 2.52(b)(5); TMEP §§808 et seq.);
(r) if the mark includes color, a color claim naming the colors that are a feature of the mark, and a separate statement describing where the color(s) appear on the mark. (37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.);
(s) a translation of non-English wording and transliteration of non- Latin characters in the mark, if any (TMEP §§809 et seq.);
(t) a statement that identifies any living individual whose name or likeness the mark comprises and indicates that his or her consent is of record, or a statement that the name or portrait does not identify a living individual, if appropriate (15 U.S.C. §1052(c); TMEP §§813.01 et seq.);
(u) a claim of the applicant’s ownership of prior registrations of the same or similar marks, if any (37 C.F.R. §2.36; TMEP §812); and
(v) if the applicant seeks to register the mark in standard characters, a statement that “The mark consists of standard characters without claim to any particular font style, size, or color” (TMEP §807.03(a));
(3) a designation of a domestic representative is encouraged, if the applicant is not domiciled in the United States (15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §610);
(4) a filing fee for each class of goods/services (15 U.S.C. §§1051(a)(1) and 1051(b)(1); 37 C.F.R. §2.6(a)(1); TMEP §§810 et seq.);
(5) in a §44(e) application, a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin, and a translation of the foreign registration if it is not in English (15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 et seq.); and
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(6) in a §1(a) application, one specimen for each class (15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), and 2.86(a)(3); TMEP §§904 et seq.).
See 15 U.S.C. §§1051(a)(3)(D) and 1052(d), 37 C.F.R. §2.99, and TMEP §§1207.04 et seq. regarding requirements for applications for concurrent use registration.
See 37 C.F.R. §2.44 and TMEP §§1303 et seq. regarding the requirements for collective trademark and collective service mark applications; 37 C.F.R. §2.44 and TMEP §§1304 et seq. regarding collective membership mark applications, and 37 C.F.R. §2.45 and TMEP §§1306 et seq. regarding certification mark applications.
The following are substantive grounds for refusal. Registration may be refused on the ground that:
(1) The applicant is not the owner of the mark (15 U.S.C. §1051; TMEP §1201);
(2) The subject matter for which registration is sought does not function as a mark (15 U.S.C. §§1051, 1052, 1053, and 1127) because, for example, the proposed mark:
(a) is used solely as a trade name (TMEP §1202.01);
(b) is functional, i.e., consists of a utilitarian design feature of the goods or their packaging (15 U.S.C. §1052(e)(5); TMEP §§1202.02(a) et seq.);
(c) is a nondistinctive configuration of the goods or their packaging (TMEP §§1202.02(b) et seq.);
(d) is mere ornamentation (TMEP §§1202.03 et seq.);
(e) is the generic name for the goods or services (TMEP §§1209.01(c) et seq.); or
(f) is the title of a single creative work or the name of an author or performing artist (TMEP §§1202.08 et seq. and 1202.09 et seq.);
(3) The proposed mark comprises immoral or scandalous matter (15 U.S.C. §1052(a); TMEP §1203.01);
(4) The proposed mark is deceptive (15 U.S.C. §1052(a); TMEP §§1203.02 et seq.);
(5) The proposed mark comprises matter that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national
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symbols, or bring them into contempt or disrepute (15 U.S.C. §1052(a); TMEP §§1203.03 et seq.);
(6) The proposed mark comprises the flag, coat of arms, or other insignia of the United States or any State, municipality, or foreign nation (15 U.S.C. §1052(b); TMEP §§1204 et seq.);
(7) The applicant’s use of the mark is or would be unlawful because it is prohibited by statute (TMEP §§1205 et seq.);
(8) The proposed mark comprises a name, portrait, or signature identifying a particular living individual without the individual’s written consent, or the name, portrait, or signature of a deceased president of the United States during his widow’s life, without written consent of the widow (15 U.S.C. §1052(c); TMEP §§1206 et seq.);
(9) The proposed mark so resembles a previously registered mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive (15 U.S.C. §1052(d); TMEP §§1207 et seq.);
(10) The proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods and/or services (15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.);
(11) The proposed mark is primarily geographically descriptive of the applicant’s goods and/or services (15 U.S.C. §1052(e)(2); TMEP §1210.01(a));
(12) The proposed mark is primarily geographically deceptively misdescriptive of the applicant’s goods and/or services (15 U.S.C. §1052(e)(3); TMEP §1210.01(b)); or
(13) The proposed mark is primarily merely a surname (15 U.S.C. §1052(e)(4); TMEP §§1211 et seq.).
An applicant may submit a claim and proof of distinctiveness of the mark or a portion of the mark, under §2(f). See 15 U.S.C. §§1052(f); TMEP §§1212 et seq.
A mark that is capable of distinguishing the applicant's goods or services may be registrable on the Supplemental Register, in an application under §1 or §44 of the Trademark Act. See 15 U.S.C. §§1091 through 1096; TMEP §§815 et seq.
The examining attorney will require a disclaimer of an unregistrable component of an otherwise registrable mark. See 15 U.S.C. §1056; TMEP §§1213 et seq.
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819 TEAS Plus
TEAS Plus permits an applicant who files an application for registration of a trademark or service mark based on §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, to pay a reduced filing fee, if the applicant:
(1) Files a complete application, using the USPTO’s TEAS Plus form, available at www.uspto.gov/teas/index.html;
(2) Agrees to file certain communications regarding the application, such as responses to Office actions, through the TEAS; and
(3) Agrees to receive communications concerning the application by e-mail.
A notice of final rulemaking setting forth the requirements for a TEAS Plus application was published at 70 Fed. Reg. 38768 (July 6, 2005).
The requirements that must be met at the time of filing are set forth in 37 C.F.R. §2.22 (see TMEP §§819.01 et seq.), and the requirements that must be met during the pendency of the application are set forth in 37 C.F.R. §2.23 (see TMEP §§819.02 et seq.). If an applicant files a TEAS Plus application but does not meet these requirements, the applicant will be required to pay an additional TEAS Plus processing fee, i.e., the difference between the filing fee for a regular TEAS application and the reduced fee for a TEAS Plus application. 37 C.F.R. §2.6(a)(1)(iv). See TMEP §819.04.
819.01 TEAS Plus Filing Requirements
To be eligible for the reduced fee, a TEAS Plus application must request registration of a trademark or service mark on the Principal Register, and must include the following at the time of filing:
• Applicant’s Name and Address;
• Applicant’s Legal Entity and Citizenship (or state or country of incorporation of a juristic applicant);
• Paper Correspondence Address. A name and address for paper correspondence;
• E-mail Correspondence Address and Authorization. An e-mail correspondence address and authorization for the USPTO to send correspondence to the applicant by e-mail;
• Filing Basis or Bases. One or more bases for filing, and all requirements of 37 C.F.R. §2.34 for each basis;
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• Identification and Classification of Goods/Services. A correctly classified and definite identification of goods/services taken directly from the USPTO’s Acceptable Identification of Goods and Services Manual (“USPTO ID Manual”), at http://tess2.uspto.gov/netahtml/tidm.html;
• Filing Fee. A filing fee per class for all classes listed in the application;
• Signed Verification. A verified statement, dated and signed by a properly authorized person;
• Drawing. A clear drawing of the mark comprising either: (1) a claim of standard characters and the mark, typed in the appropriate TEAS Plus field; or (2) a digitized image of a mark in special form. If the mark includes color, the digitized image must show the mark in color;
• Color Claim and Description of Color(s). If the mark includes color, a claim that the color(s) is a feature of the mark; and a statement in the “Description of the Mark” field naming the color(s) and describing where the color(s) appears on the mark;
• Description of Mark. If the mark is not in standard characters, a description of the mark;
• Prior Registrations for Same Mark. If the applicant owns one or more registrations for the same mark, a claim of ownership of the registration(s), identified by the United States registration number(s);
• Translation. If the mark includes foreign wording, a translation of that wording;
• Transliteration of Non-Latin Characters. If the mark includes non-Latin characters, a transliteration of those characters;
• Consent to Registration of Name or Portrait. If the mark includes an individual’s name or portrait, either: (1) a statement that identifies the living individual whose name or likeness the mark comprises, and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual;
• Concurrent Use. If the application is a concurrent use application, the application must meet the requirements of 37 C.F.R. §2.42;
• Multiple-Class Applications. If the application contains goods/services in more than one class, the application must meet the requirements of 37 C.F.R. §2.86; and
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• Section 44 Applications. In a §44 application, the scope of the goods/services covered by the §44 basis may not exceed the scope of the goods/services in the foreign application or registration.
37 C.F.R. §2.22(a).
As long as the applicant has made a reasonable attempt to supply the required information in the initial application, the applicant has met the TEAS Plus filing requirements and generally will not lose TEAS Plus status if the information is later amended, either in response to an examining attorney’s requirement or on the applicant’s initiative, as long as the amendment is filed through TEAS or entered by examiner’s amendment. See TMEP §§819.01(a) through 819.01(q) for further guidance as to when the additional fee will be required in particular situations.
If an applicant files a TEAS Plus application but does not meet these requirements, the examining attorney must issue an Office action requiring the applicant to pay the additional TEAS Plus processing fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b). If a required field is filled with irrelevant or clearly inappropriate information, the required element will be considered omitted (e.g., if the notation “???” is entered as the translation in a mark that includes foreign wording).
When an application loses TEAS Plus status, the application will be examined as a regular TEAS application. The application will retain its original filing date, assuming that the initial application met the minimum filing requirements required of all applications, which are set forth in 37 C.F.R. §2.21. The examining attorney must perform the proper transaction to change the application status in the USPTO’s automated systems.
819.01(a) Type of Mark
TEAS Plus is available only to applicants seeking registration of a trademark or service mark on the Principal Register under §1 and/or §44 of the Trademark Act. Applications for certification marks, collective marks, and collective membership marks and applications for registration on the Supplemental Register cannot be filed using TEAS Plus. 37 C.F.R. §2.22(c).
The additional fee will be required if the mark in a TEAS Plus application is amended to a collective, collective membership, or certification mark.
No additional fee will be required if the application is amended from the Principal to the Supplemental Register, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
TEAS Plus does not apply to applications filed under §66(a) of the Act, 15 U.S.C. §1141f(a), because they cannot be filed through TEAS.
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819.01(b) Applicant’s Name and Address
The application must include the applicant’s name and address. 37 C.F.R. §2.22(a)(1). The additional fee will be required if this information is omitted. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b).
If the application includes this information, no additional fee will be required if the application is amended to clarify the information or to correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
819.01(c) Applicant’s Legal Entity and Citizenship
The application must include the applicant’s legal entity. 37 C.F.R. §2.22(a)(2). The application must also set forth the citizenship of an individual applicant, or the state or country of incorporation or organization of a juristic applicant. 37 C.F.R. §2.22(a)(3). The additional fee will be required if this information is omitted. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b).
If the application includes this information, no additional fee will be required if the application is amended to clarify the information or correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
Trademark Rule 2.22(a)(4) requires that where the applicant is a partnership, the application must include the names and citizenship of the applicant’s general partners. However, the USPTO has waived the requirement that this information be provided at the time of filing. If this information is not included in the initial application, the applicant will not lose TEAS Plus status, but the information will be required before the mark is approved for publication. Note: The requirement for the names and citizenship of the general partners applies only to domestic partnerships. 37 C.F.R. §2.32(a)(3)(iii); TMEP §803.04.
819.01(d) Name and Address for Paper Correspondence
The application must include a name and address to which the USPTO can send paper correspondence. 37 C.F.R. §2.22(a)(5). The additional fee will be required if this information is omitted. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b). The application must also include an e-mail address and an authorization for the USPTO to send correspondence by e-mail. 37 C.F.R. §2.22(a)(6); TMEP §819.01(e). The USPTO will send most official correspondence to the applicant by e-mail, but a paper correspondence address is also required.
If the application includes this information, the applicant will not lose TEAS Plus status if the application is amended to clarify the information or to correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
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819.01(e) E-mail Address and Authorization for the USPTO to Send Correspondence By E-Mail
The application must include an e-mail address and an authorization for the USPTO to send correspondence by e-mail. 37 C.F.R. §2.22(a)(6). TEAS Plus will not accept transmission of an application that does not include this information.
If the application includes an e-mail address and an authorization for the USPTO to send correspondence by e-mail, no additional fee will be required if the e-mail address is amended to change or to correct an inadvertent error in the e-mail correspondence address, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
The additional fee will be required if the applicant or the applicant’s qualified practitioner files a change of correspondence address, and the correspondence address change does not authorize e-mail correspondence. 37 C.F.R. §§2.6(a)(1)(iv), 2.23(a)(2) and 2.23(b); TMEP §819.02(a). The applicant cannot avoid paying the fee by subsequently agreeing to authorize e-mail correspondence.
819.01(f) Basis or Bases for Filing
The application must include at least one basis for filing under §1 and/or §44 of the Act that meets the requirements of 37 C.F.R. §2.34. If more than one basis is set forth, the applicant must comply with the requirements of 37 C.F.R. §2.34 for each asserted basis. 37 C.F.R. §2.22(a)(7). Otherwise, applicant will lose TEAS Plus status and will be required to pay the TEAS Plus processing fee.
In a multiple-basis application, if the applicant fails to comply with the requirements of 37 C.F.R. §2.34 for one of the bases claimed in the initial application, the applicant cannot avoid paying the TEAS Plus processing fee by deleting the relevant basis.
819.01(f)(i) Section 1(a) - Use in Commerce
The requirements for establishing a §1(a) basis are set forth in 37 C.F.R. §2.34(a)(1). See also TMEP §806.01(a).
Specimen(s). The application must include one specimen showing how the applicant uses the mark in commerce for each class of goods/services. TEAS Plus will not accept transmission of a §1(a) application that does not include an attachment in the “Specimen” field. As long as the specimen depicts the mark, no additional fee will be required if registration is refused because the specimen is unacceptable.
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An additional fee will be required if the mark on the specimen is materially different from the mark on the drawing. If the marks on the specimen and the drawing are materially different, the applicant has, in effect, failed to submit a specimen showing use of the mark sought to be registered. However, no additional fee will be required if the difference between the mark on the specimen and the mark on the drawing is not material.
Example: The mark on the drawing is ZZZ, and the mark on the specimen is ZEBRAMAX. Amending the drawing to match the specimen would materially alter the mark on the drawing, so the applicant, in effect, has failed to submit a specimen showing use of the mark on the drawing. As a result, the applicant loses TEAS Plus status and the examining attorney will require the additional fee.
Example: The mark on the drawing is ZEBRAMAXX, and the mark on the specimen is ZEBRAMAX. The mark on the drawing is not a substantially exact representation of the mark on the specimen, but the difference between the marks is not material, so the applicant may amend the drawing, or submit a substitute specimen showing use of the mark on the drawing, without paying the additional fee.
Verified Statement of Use in Commerce. The application must include a verified statement that the mark is in use in commerce on or in connection with the goods/services listed in the application. The TEAS Plus form will always include this statement when the applicant asserts a §1(a) basis. See TMEP §819.01(l) regarding verification.
Dates of Use. The application must include a date of first use of the mark anywhere and a date of first use of the mark in commerce for each class of goods/services. When the applicant indicates that it is filing under §1(a), the TEAS Plus form brings up free-text fields in which applicant must type the date of first use anywhere and date of first use in commerce. TEAS Plus will not accept the transmission unless these fields are completed in the appropriate format (MM/DD/YYYY). The applicant will not lose TEAS Plus status if the dates are later amended, as long as the amendment is filed through TEAS.
819.01(f)(ii) Section 1(b) - Intent to Use
A §1(b) application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §2.34(a)(2). The TEAS Plus form will always include this statement when the applicant asserts a §1(b) basis. See TMEP §819.01(l) regarding verification.
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819.01(f)(iii) Section 44(e) - Foreign Registration
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3). See also TMEP §806.01(d). The application must include a digitized image of a copy, a certification, or a 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. If the foreign registration is not in the English language, the applicant must submit a translation.
The following are examples of situations where an additional fee will be required:
• Foreign Registration Omitted. TEAS Plus will not accept transmission of a §44(e) application that does not include an attachment in the “Foreign Registration” field. The additional fee will be required if the applicant attaches inappropriate material, such as a copy of the drawing or of the foreign application. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b).
• Translation of Foreign Registration Omitted. 37 C.F.R. §§2.22(a)(7) and 2.34(a)(3)(iii). The additional fee will be required if the foreign registration is not in the English language and the applicant does not include a translation.
• Mark Not on Foreign Registration. The additional fee will be required if the mark shown in the drawing does not appear on the foreign registration.
• Material Alteration. The additional fee will be required if the mark on the drawing is a material alteration of the mark on the foreign registration. However, no additional fee will be required if the difference between the mark on the foreign registration and the mark on the drawing is not material.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the additional fee.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. The applicant loses TEAS Plus status and must pay the additional fee.
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• Goods/Services Exceed Scope of Foreign Registration. The additional fee will be required if the examining attorney determines that the goods/services for which registration is sought under §44(e) in the United States application exceed the scope of those in the foreign registration. 37 C.F.R. §2.22(a)(8).
Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the United States registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the United States registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed.
Bona Fide Intention to Use the Mark in Commerce. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. The TEAS Plus form will always include this statement when the applicant asserts a §44(e) basis. See TMEP §819.01(l) regarding verification.
819.01(f)(iv) Section 44(d)
The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.34(a)(4). See also TMEP §806.01(c).
Claim of Priority Filed Within Six Months of Foreign Filing. The additional fee will be required if the claim of priority is not filed through TEAS within six months of the filing date of the foreign application. The applicant can submit the priority claim after the filing date of the United States application, as long as the priority claim is filed within six months after the foreign filing.
First Filed Application. The applicant must: (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. The additional fee will be required if applicant does not meet this requirement.
Goods/Services Exceed Scope of Foreign Registration. The additional fee will be required if the examining attorney determines that the goods/services for which registration is sought under §44 in the United States application exceed the scope of those in the foreign application or registration. 37 C.F.R. §2.22(a)(8).
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Serial Number of Foreign Application Omitted - No Fee Required. No additional fee is required if a §44(d) filing basis is asserted and the applicant fails to specify the serial number of the foreign application in the initial application, because some applicants will not yet know the serial number of the foreign application at the time of filing in the United States. However, the serial number must be provided before the application can be approved for publication. 37 C.F.R. §2.34(a)(4)(i)(A).
Bona Fide Intention to Use the Mark in Commerce. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. The TEAS Plus form will always include this statement when the applicant asserts a §44(d) basis. See TMEP §819.01(l) regarding verification.
819.01(g) Identification and Classification of Goods/Services
USPTO ID Manual. The application must include correctly classified goods and/or services, with an identification of goods/services from the USPTO ID Manual. 37 C.F.R. §2.22(a)(8). The TEAS Plus form will automatically provide the correct class for goods/services selected from the USPTO ID Manual, and it will not permit the applicant to edit the “Classification” field.
To enter an identification of goods/services, the TEAS Plus form will instruct the applicant to enter search terms appropriate for the desired goods/services within the identified field on the TEAS Plus form. The TEAS Plus system will then retrieve relevant entries from the USPTO ID Manual, and the applicant must select one or more of the entries.
Amendment of Identification. No additional fee is required if the identification of goods/services is acceptable and correctly classified as filed, but is later amended, either in response to a requirement or on the applicant’s initiative. This is true even if the amendment is unacceptable.
Example: The goods are identified in the application as “clothing, namely, pants and shirts,” and the applicant files a preliminary amendment to “clothing, namely, pants, shirts and dresses.” The examining attorney will refuse the amended identification because “dresses” is beyond the scope of the original identification (37 C.F.R. §2.71(a)), but no additional fee will be required.
Fill-in-the-Blank Element. Some USPTO ID Manual entries require the applicant to complete parenthetical information (e.g., “specify the function of the programs”). The display of such entries will include a free-text field so the applicant can type the necessary information, following the instructions within the listing. If an applicant attempts to use such a listing without completing the required information, TEAS Plus will generate an error message.
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No additional fee is required if the identification of goods/services has a fill-in- the-blank element, and the applicant inserts information that is a reasonable attempt to supply the required information, but requires amendment because the inserted information: (1) sets forth goods/services in another class (e.g., headgear, namely, football helmets (headgear is in Class 25, helmets are in Class 9)); (2) is indefinite (e.g., clothing, namely, sportswear); or (3) is inaccurate (see TMEP §1402.05).
However, an additional fee is required if the applicant leaves the fill-in-the- blank element empty, inserts information that is clearly inappropriate for the selected identification, or inserts additional goods/services that are unrelated to the selected identification. For example, an additional fee is required if the goods/services in the original application are identified as follows:
• “processed meat, namely, laptop computers;”
• “bicycle parts, namely, bicycle parts;”
• “cutlery, namely forks, knives, and rain jackets for dogs;” or
• “sound recordings featuring music, and sunglasses.”
In these situations, the applicant has, in effect, failed to submit an identification from the USPTO ID Manual. The additional fee is required even if the applicant deletes the unacceptable terminology.
Classification. Trademark Rule 2.22(a)(8) indicates that if the applicant classified the goods/services in the wrong class in the initial application, the applicant will lose TEAS Plus status and will be required to pay the additional fee for all classes in the application. However, this is unlikely to occur, because the TEAS Plus form will automatically provide the correct class for goods/services selected from the USPTO ID Manual, and it will not permit the applicant to edit the “Classification” field. No additional fee is required if the identification is acceptable and correctly classified as filed, but is amended during examination to add or substitute another class (e.g., amendment from “clothing, namely, pants and jackets” in Class 25 to “protective clothing, namely, fireproof pants and jackets” in Class 9; or amendment from “hair brushes” in Class 21 to “electronically heated hair brushes” in Class 9), as long as the amendment is filed through TEAS or entered by examiner’s amendment. See TMEP §819.03 regarding the addition of classes to a TEAS Plus application.
Section 44 - Goods/Services Exceed Scope of Foreign Registration. In a §44 application, the additional fee is required if the examining attorney determines that the goods/services for which registration is sought under §44 in the United States application exceed the scope of those in the foreign registration. 37 C.F.R. §2.22(a)(8).
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819.01(h) Filing Fee
The application must include a filing fee for each class of goods/services as required by 37 C.F.R. §2.6(a)(1)(iii). TEAS Plus will not accept transmission of an application that does not include a fee for each class.
See TMEP §819.03 regarding the fee for adding a class during examination.
819.01(i) Drawing
The application must include a clear drawing of the mark comprising either: (1) a claim of standard characters and the mark, typed in the appropriate TEAS Plus field; or (2) a digitized image of a mark in special form. 37 C.F.R. §2.22(a)(12). TEAS Plus requires the applicant to indicate whether the mark is stylized or in standard characters, and will not accept the transmission unless the applicant selects one of these options. If the applicant claims standard characters, TEAS Plus will not accept transmission unless something has been typed in the appropriate field. The TEAS Plus system will generate a digitized image of the standard character mark and attach it to the application.
A “clear drawing of the mark” is the same standard used in 37 C.F.R. §2.21(a)(3), which sets forth the requirements for receipt of an application filing date. Thus, if the TEAS Plus application does not include a clear drawing of the mark, the application will be denied a filing date, in accordance with standard procedures for processing informal applications (see TMEP §§202 et seq. and 204 et seq.). If the application meets the requirement for a clear drawing of the mark, the applicant will not lose TEAS Plus status if the examining attorney requires amendment of the drawing because it does not meet all the requirements of 37 C.F.R. §§2.51 through 2.53.
Marks That Include Color. If the mark includes color, the drawing must show the mark in color, or the applicant will lose TEAS Plus status. 37 C.F.R. §2.22(a)(12). The application must also include a color claim and a statement in the “Description of the Mark” field naming the color(s) and describing where they appear on the mark. 37 C.F.R. §§2.22(a)(14) and 2.52(b)(1). See TMEP §819.01(j).
See TMEP §§807.03 et seq. for further information about standard character drawings, and TMEP §807.05(c) for the requirements for digitized images.
819.01(j) Color Claim
As noted above, if the mark includes color, the drawing must show the mark in color. 37 C.F.R. §2.22(a)(12). In addition, the application must include: (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the “Description of the Mark” field naming the color(s) and describing where the color(s) appear on the mark. 37 C.F.R. §§2.22(a)(14) and 2.52(b)(1). The
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TEAS Plus form includes a checkbox in the “Color(s) Claimed” field to indicate whether the mark is in color. When the applicant checks this box, the applicant must name the colors claimed in the text field below the checkbox in the same “Color(s) Claimed” field. The applicant must then enter the color location statement in a separate “Description of the Mark” field.
As long as the initial application has a color drawing and applicant makes a reasonable attempt to identify the colors claimed in either the “Color(s) Claimed” field or the “Description of the Mark” field, no additional fee is required if the application is amended to clarify the information or to correct an inadvertent error, as long as the amendment is filed through TEAS or entered by examiner’s amendment. For example, applicant will not lose TEAS Plus status if the list of colors claimed is incomplete, or if the mark description does not identify the location of the colors claimed. However, the additional fee is required if the applicant fails to identify any colors.
See TMEP §§807.07(a) et seq. for further information about color claims.
819.01(k) Description of the Mark
If the mark is not in standard characters, the application must include a description of the mark. 37 C.F.R. §§2.22(a)(15) and 2.37. The applicant must enter the description in the “Description of the Mark” field of the TEAS Plus application.
TEAS Plus will not accept transmission of an application that does not include either: (1) a standard character claim; or (2) a description of the mark. If the applicant makes a good faith effort to describe the mark, no additional fee is required if the description is later amended, either in response to an examining attorney’s requirement or on applicant’s initiative, as long as the amendment is filed through TEAS or entered by examiner’s amendment. However, the additional fee is required if the applicant enters completely inappropriate information in the “Description of the Mark” field.
If the mark includes color, the “Description of the Mark” field should include a statement naming the color(s) and describing where the color(s) appear on the mark. See TMEP §819.01(j) regarding color claims.
The examining attorney should not require the applicant to delete an accurate description of the mark.
See TMEP §§808 et seq. for further information about descriptions of the mark.
819.01(l) Verification
The application must include a verified statement that meets the requirements of 37 C.F.R. §2.33, dated and signed by a person properly authorized to sign
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on behalf of the applicant pursuant to §2.33(a). 37 C.F.R. §2.22(a)(11). If the application includes a signed verification, no additional fee is required if a substitute verification is later submitted, as long as it is submitted through TEAS.
To provide a signature, the applicant has the option of: (1) entering any combination of letters, numbers, spaces, and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (“/”) symbols in the TEAS Plus form; (2) signing the verified statement in the traditional pen-and-ink manner, and attaching an image file of the signed document to the TEAS Plus form; or (3) completing the application online and e-mailing it to the signatory for electronic signature and automatic return via TEAS to the party who requested the signature. See TMEP §611.01(c). If the applicant elects to attach a verified statement with a pen-and-ink signature, the additional fee will be required if the attachment:
• fails to include a signature; or
• does not display the text of the verification and declaration (i.e., only displays a signature).
819.01(m) Translation and/or Transliteration
If the mark includes non-English wording, the application must include an English translation of that wording. 37 C.F.R. §§2.22(a)(16) and 2.32(a)(9). If the mark includes non-Latin characters, the application must include a transliteration of those characters. 37 C.F.R. §§2.22(a)(17) and 2.32(a)(10). The TEAS Plus form does not include any edits to determine when a translation and/or transliteration is required.
If a translation and/or transliteration is omitted, the examining attorney will issue an Office action requiring the additional fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b). If the initial application includes a translation and/or transliteration, no additional fee is required if the translation/transliteration is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment. However, the additional fee will be required if the translation or transliteration comprises inappropriate material, such as the notation “???.”
819.01(n) Multiple-Class Applications
If the application contains goods/services in more than one class, the application must meet the requirements of 37 C.F.R. §2.86. 37 C.F.R. §2.22(a)(9). That is, the application must include:
(1) An identification of goods/services in each class, from the USPTO ID Manual. 37 C.F.R. §§2.22(a)(8) and 2.86(a)(1). See TMEP §819.01(g);
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(2) An application filing fee for each class. 37 C.F.R. §§2.6(a)(1)(iii) and 2.86(a)(2). TEAS Plus will not accept transmission of an application that does not include a filing fee for each class; and
(3) Either (a) dates of use and one specimen for each class, in an application under §1(a) of the Trademark Act; or (b) a statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with all the goods/services specified in each class, in an application under §1(b) or §44 of the Trademark Act. 37 C.F.R. §2.86(a)(3).
819.01(o) Consent to Registration of Name or Portrait
If the mark includes the name or portrait of a particular living individual (see TMEP §§813 and 1206 et seq.), the application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual. 37 C.F.R. §2.22(a)(18).
The additional fee is required if the mark includes an individual’s name or portrait, and these statements are omitted. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b).
Exception: If the applicant fails to include a consent to use a name or portrait that appears in the mark, but the individual’s consent can be presumed because the individual named or shown in the mark personally signed the application (see TMEP §1206.04(b)), the applicant will not lose TEAS Plus status.
If consent is of record in a valid registration owned by applicant, the applicant may satisfy the requirement for a consent statement by claiming ownership of the existing registration. See TMEP §1206.04(c).
If the initial application includes a statement regarding the name or likeness of an individual, no additional fee is required if the statement is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
The additional fee should be required only where it is clear that the name or likeness could reasonably be perceived as that of a living individual. The fee should be charged if the mark is comprised of a portrait, or of a first and last name. If the mark is comprised of a title, such as Mrs. Smith, or a first name only, the examining attorney must consider whether the name is that of a particular living individual (see TMEP §1206.03), but should not require the additional fee.
Example: The mark is STEVEN JONES, and the application is silent as to whether this name identifies a living individual. The
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examining attorney must: (1) inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name must be submitted; and (2) require the additional TEAS Plus processing fee.
Example: The mark is DOCTOR JONES, and the application is silent as to whether this name identifies a living individual. If there is evidence that the name identifies an individual who is generally known or well known in the field relating to the relevant goods or services (see TMEP §§1206.02 and 1206.03), the examining attorney must issue an inquiry and require the individual’s written consent to register the name, but should not require the additional TEAS Plus processing fee. If there is no evidence that the individual is generally known or well known in the relevant field, the examining attorney should not inquire or require the additional fee.
Example: The mark is STEVEN, and the application is silent as to whether this name identifies a living individual. If there is no evidence that the individual is generally known or well known in the relevant field, the examining attorney should not inquire or require the additional fee. If there is evidence that the first name identifies an individual who is generally known or well known in the relevant field, the examining attorney must issue an inquiry and require the individual’s written consent to register the name, but should not require the additional TEAS Plus processing fee.
See TMEP §1206.03 for further information as to when the examining attorney should issue an inquiry as to whether a name or likeness is that of a particular living individual, and TMEP §1206.02 regarding the connection between the individual and the relevant goods or services.
819.01(p) Prior Registration of the Same Mark
If the applicant owns one or more registrations for the same mark as of the application filing date, the application must include a claim of ownership of the prior registration(s), identified by the United States registration number(s). 37 C.F.R. §§2.22(a)(19) and 2.36. See TMEP §812. The TEAS Plus form accepts the entry of up to three registration numbers. If the applicant owns more than three registrations for the same mark, the TEAS Plus applicant may check the box “and others” after entering the numbers for the three claimed registrations.
The additional fee is required if a claim of ownership of registration(s) for the same mark is omitted. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b). If the initial application includes an ownership claim, the application will not lose TEAS
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Plus status if the claim is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
No additional fee is required if a list of claimed registrations for the same mark is incomplete (e.g., applicant owns three registrations for the same mark and only claims two of them), but the examining attorney may require a claim of ownership of additional registrations for the same mark during examination.
No additional fee is required if an applicant fails to claim ownership of a registration(s) for a similar mark (e.g., mark in application is ABC and applicant fails to claim ownership of a registration for ABC WEB BUILDERS). However, the examining attorney will require a claim of ownership of similar marks during examination, where appropriate.
819.01(q) Concurrent Use Applications
If the applicant seeks concurrent use registration, the application must comply with the requirements of 37 C.F.R. §2.42. 37 C.F.R. §2.22(a)(20). That is, the applicant must:
• Set forth the geographic area, the goods, and the mode of use for which applicant seeks registration; and
• State, to the extent of the applicant’s knowledge, the concurrent lawful use of the mark by others, setting forth their names and addresses; registrations issued to or applications filed by such others, if any; the geographic areas of such use; the goods on or in connection with which such use is made; the mode of such use; and the periods of such use.
If the elements for a concurrent use application are omitted, the examining attorney will issue an Office action requiring the additional fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.22(b). If the initial application includes a concurrent use claim with the proper elements, the application will not lose TEAS Plus status if an element is later amended, as long as the amendment is filed through TEAS or entered by examiner’s amendment.
See TMEP §1207.04(d)(i) for further information about the requirements for concurrent use applications.
819.02 Additional Requirements for a TEAS Plus Application
819.02(a) Receipt of Communications by E-Mail
Trademark Rule 2.22(a)(6), 37 C.F.R. §2.22(a)(6), requires that the application as filed include an e-mail address for correspondence and an authorization for the USPTO to send correspondence concerning the application to the applicant by e-mail. Trademark Rule 2.23(a)(2), 37 C.F.R.
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§2.23(a)(2), requires that the applicant maintain a valid e-mail correspondence address, and continue to receive correspondence by e-mail throughout the pendency of the application.
The additional fee will be required if the TEAS Plus applicant (or the applicant’s qualified practitioner) files a change of correspondence address, and the correspondence address change does not authorize e-mail correspondence, or if it comes to the attention of the USPTO that the applicant has a change in e-mail address, but does not notify the USPTO of the new e-mail address, thereby causing correspondence from the USPTO to be undeliverable. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(b). The applicant cannot avoid paying the fee by subsequently agreeing to authorize e-mail correspondence.
When issuing a nonfinal action on a TEAS Plus application, the examining attorney will notify the applicant that the applicant must maintain a valid e-mail correspondence address, and continue to accept correspondence from the USPTO via e-mail throughout the examination process in order to avoid the additional fee. If the applicant files a request to change the correspondence address that does not authorize e-mail correspondence, the requirement for payment of the additional fee will be made final, assuming that the application is otherwise in condition for final refusal.
819.02(b) Additional Documents That Must be Filed Through TEAS
In addition to the filing requirements set forth in 37 C.F.R. §2.22 (see TMEP §§819.01 et seq.), to maintain TEAS Plus status, the applicant must file the following documents through TEAS:
• Responses to Office actions (except notices of appean( �
• Requests for reconsideration of final Office actions;
• Requests to change the correspondence address and/or owner’s address;
• Appointment and/or revocation of power of attorney;
• Appointment and/or revocation of domestic representative;
• Preliminary amendments;
• Amendments to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c);
• Statements of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
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• Requests for extensions of time to file a statement of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d); and
• Requests to delete a §1(b) basis in a multiple-basis application.
37 C.F.R. §2.23(a)(1). The additional fee(s) for each class of goods/services will be required if the applicant files one of these documents on paper. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(b).
When issuing a nonfinal action on a TEAS Plus application, the examining attorney will require that the applicant either: (1) respond through TEAS (or by examiner’s amendment, if appropriate); or (2) if responding on paper, include the additional TEAS Plus processing fee with the response. If the applicant files a paper response without the required fee, the requirement for payment of the fee will be made final, assuming that the application is otherwise in condition for final refusal. See TMEP §§714 et seq. regarding procedures for issuing a final refusal.
When an applicant files a statement of use or request for an extension of time to file a statement of use on paper, the ITU Unit staff will send a letter requiring payment of the additional fee. If the applicant fails to submit the fee, the examining attorney will require payment of the fee during examination of the statement of use.
819.03 Adding a Class During Examination
Amendments to classification are rare in TEAS Plus applications, since the identification of goods/services is taken from the USPTO ID Manual, and the TEAS Plus form does not permit the applicant to edit the “Classification” field. In the rare case where the TEAS Plus applicant amends the application to add a product or service that is within the scope of the original identification of goods/services, but is in a different class, the fee for the additional class is the reduced TEAS Plus fee, as long as the amendment is filed through TEAS or entered by examiner’s amendment. See TMEP §1403.02(c).
Example: The applicant selects the identification “hair shampoo” in Class 3. The applicant later adds “dandruff shampoo” in Class 5, which is within the scope of the original identification. The applicant will pay the reduced TEAS Plus fee, as long as the applicant has not lost TEAS Plus status for some other reason.
If the applicant adds a class after losing TEAS Plus status, the applicant must pay the regular TEAS fee if the fee is paid through TEAS or by examiner’s amendment, or the paper fee if the class is added by a paper amendment.
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819.04 Procedures for Payment of TEAS Plus Processing Fee Per Class
A TEAS Plus applicant must pay a processing fee per class to have the application examined as a regular TEAS application if: (1) the initial application does not meet the requirements of 37 C.F.R. §2.22(a); (2) the applicant files one of the documents listed in 37 C.F.R. §2.23(a)(1) on paper; or (3) the applicant files a notice of change of correspondence address that does not authorize e-mail correspondence. 37 C.F.R. §§2.6(a)(1)(iv) , 2.23(a)(2), and 2.23(b). The application will retain its original filing date, assuming the initial application met the minimum filing requirements that are mandatory for all applications under 37 C.F.R. §2.21(a).
Processing Fee Must Be Paid for All Active Classes. If the applicant loses TEAS Plus status, the applicant must pay the TEAS Plus processing fee per class for all classes that are in the application at the time the examining attorney issues the Office action requiring the TEAS Plus processing fee.
Example: The original application is for two classes. The applicant loses TEAS Plus status because in the original application, the applicant failed to include a transliteration of the Chinese characters in the mark. The first Office action includes: (1) a requirement for a transliteration; (2) a requirement for the additional fee for two classes; and (3) a refusal of registration as to one class under §2(d) of the Trademark Act. If the applicant responds by submitting a transliteration and deleting the class that was refused, the applicant must pay the processing fee for two classes, because there were two classes in the application when the Office action requiring the processing fee was issued.
Example: The original application is for two classes. One of the items in the identification has a fill-in-the-blank element and requires amendment. The first Office action includes: (1) a requirement to amend the identification of goods/services; and (2) a refusal of registration because the mark is merely descriptive of the goods. The applicant responds through TEAS by deleting a class and submitting evidence that the mark has acquired distinctiveness. The examining attorney issues another refusal. If the applicant responds on paper, the applicant is only required to pay the processing fee for one class, because the applicant deleted the second class before the applicant lost TEAS Plus status.
Examiner’s Amendment. If all remaining issues can be handled through a telephone or e-mail conversation with the applicant or the applicant’s qualified practitioner, and the applicant uses a deposit account to pay the fee or faxes an authorization to charge the fee to a credit card, the fee may be collected by examiner’s amendment. However, a fee cannot be charged to a deposit
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account by examiner’s amendment unless the record contains a written authorization, signed by someone who is authorized to charge fees to the account. If there is no written authorization in the record, the applicant may submit the authorization by fax or e-mail. See TMEP §405.03 regarding deposit accounts.
Combined Examiner’s Amendment/Priority Action. If all of the issues except payment of the processing fee are resolved by a telephone or e-mail conversation with the applicant or the applicant’s qualified practitioner, the examining attorney may issue a combined Examiner’s Amendment/Priority Action (TMEP §708.05) to enter the amendment(s) and require payment of the TEAS Plus processing fee.
No Partial Refusal. If the applicant loses TEAS Plus status, the requirement for the TEAS Plus processing fee applies to the entire application, so an Office action requiring the processing fee can never be a partial refusal.
Paying the Processing Fee Through TEAS. To pay the TEAS Plus processing fee through TEAS, the applicant must use the TEAS Response to Office Action (“ROA”) form. The TEAS Preliminary Amendment form does not permit payment of the TEAS Plus processing fee. Also, if the requirement for the processing fee is issued in the first action, TEAS will not allow the applicant to use the TEAS ROA form to pay the fee until 48-72 hours after the Office action is entered into the TRAM System.
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Chapter 900 Use in Commerce
901 Use in Commerce
901.01 Definitions
901.02 Bona Fide Use in the Ordinary Course of Trade
901.03 Commerce That May Be Lawfully Regulated By Congress
901.04 Inquiry Regarding Use in Commerce
901.05 Use Only by Related Company
902 Allegations of Use for §1(b) Applications
903 Dates of Use
903.01 Date of First Use Anywhere
903.02 Date of First Use in Commerce
903.03 Relation Between the Two Dates of Use
903.04 Amending Dates of Use
903.05 First Use by Predecessor or Related Company
903.06 Indefinite Dates of Use
903.06(a) Apparent Discrepancies Between Dates of Use and Date of Execution
903.07 Dates of Use in Another Form
903.08 More than One Item of Goods or Services
904 Specimens
904.01 Number of Specimens
904.01(a) More than One Item Specified in a Class
904.01(b) In Combined or Multiple-Class Applications
904.02 Physical Form of Specimens
904.02(a) Electronically Filed Specimens
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904.02(b) Paper-Filed Specimens
904.02(c) Additional Requirements
904.02(c)(i) Other Materials Required for Examination
904.02(c)(ii) Specimens for Marks Comprising Color
904.02(c)(iii) Specimens for Marks Used on Publications
904.03 Material Appropriate as Specimens for Trademarks
904.03(a) Labels and Tags
904.03(b) Stampings
904.03(c) Commercial Packaging
904.03(d) Electronic and Digital Media Attachments to Paper Filings
904.03(e) Specimens for Trademarks Identifying Computer Programs, Movies, or Video Tapes
904.03(f) Specimens for Sound Marks
904.03(g) Displays Associated with Goods
904.03(h) Catalogs
904.03(i) Electronic Displays
904.03(j) Manuals
904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays
904.03(l) Specimens for Motion Marks
904.03(m) Specimens for Scent and Flavor Marks
904.04 Material Not Appropriate as Specimens for Trademarks
904.04(a) Drawing or “Picture” of the Mark
904.04(b) Advertising Material
904.04(c) Package Inserts
904.05 Affidavit Supporting Substitute Specimens
904.06 Translation of Matter on Specimens
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904.07 Requirements for Substitute Specimens and Statutory Refusals
904.07(a) Whether the Specimen Shows the Mark Used in Commerce
904.07(b) Whether the Specimen Shows the Applied-for Mark Functioning as a Mark
905 Method of Use
906 Federal Registration Notice
906.01 Foreign Countries That Use Registration Symbol ®
906.02 Improper Use of Registration Symbol
906.03 Informing Applicant of Apparent Improper Use
906.04 Fraud
907 Compliance with Other Statutes
901 Use in Commerce
In an application based on use in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. See 37 C.F.R. §2.34(a)(1)(i). The application must include a statement that the mark is in use in commerce, verified in an affidavit or declaration under 37 C.F.R. §2.20. If the verification is not filed with the original application, it must also 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. 37 C.F.R. §2.34(a)(1)(i). See TMEP §§804 et seq. regarding verification.
In an application based on “intent-to-use” under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant typically begins use in commerce after the filing date. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date. Prior to registration, the applicant must actually use the mark in commerce on or in connection with all the goods or services specified in the application and file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). See TMEP §902.
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A §1 applicant must use the mark in commerce even if the applicant asserts §44(d) or §44(e), 15 U.S.C. §1126(d) or §1126(e), as a second basis for filing. See TMEP §§806.02 et seq. regarding filing on more than one basis.
Applicants relying solely on a foreign registration as the basis for registration under §44(e) of the Trademark Act are not required to assert actual use of the mark prior to registration in the United States. TMEP §1009. See Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). However, to retain a valid registration, the registrant must file an affidavit or declaration of use of the mark in commerce under 15 U.S.C. §1058 at the appropriate times, and establish use in commerce or excusable nonuse. See TMEP §§1604 et seq. regarding the affidavit or declaration of continued use or excusable nonuse.
Similarly, applicants requesting an extension of protection of an international registration to the United States under §66(a) of the Trademark Act are not required to assert actual use of the mark prior to registration in the United States. However, to retain a valid registration, the registrant must file an affidavit or declaration of use of the mark in commerce under 15 U.S.C. §1141k at the appropriate times, and establish use in commerce or excusable nonuse. See TMEP §1613.
901.01 Definitions
The power of the federal government to register marks comes from the commerce clause of the Constitution. Section 1 of the Trademark Act, 15 U.S.C. §1051, permits application for registration of “a trademark used in commerce” (15 U.S.C. §1051(a)) or of a trademark that a person has a bona fide intention to use in commerce (15 U.S.C. §1051(b)).
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Section 45 defines “use in commerce” as follows:
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--
(1) on goods when--
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
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(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
901.02 Bona Fide Use in the Ordinary Course of Trade
The definition of use in commerce (TMEP §901.01) was amended by the Trademark Law Revision Act of 1988 (TLRA), Public Law 100-667, 102 Stat. 3935, to add the phrase “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” The primary purpose of the amendment was to eliminate the practice of “token use,” or use made solely to reserve rights in a mark.
The legislative history of the TLRA makes it clear that the meaning of “use in the ordinary course of trade” will vary from one industry to another. The report of the House Judiciary Committee stated that:
While use made merely to reserve a right in a mark will not meet this standard, the Committee recognizes that “the ordinary course of trade” varies from industry to industry. Thus, for example, it might be in the ordinary course of trade for an industry that sells expensive or seasonal products to make infrequent sales. Similarly, a pharmaceutical company that markets a drug to treat a rare disease will make correspondingly few sales in the ordinary course of its trade; the company’s shipment to clinical investigators during the Federal approval process will also be in its ordinary course of trade....
H.R. Rep. No. 1028, 100th Cong. 2d Sess. 15 (1988).
The report of the Senate Judiciary Committee stated:
The committee intends that the revised definition of “use in commerce” be interpreted flexibly so as to encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval....
S. Rep. No. 515, 100th Cong. 2d Sess. 44-45 (1988). See also Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774 n.8 (TTAB 1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (Table).
Therefore, some factors to consider when determining compliance with the statutory requirement for a “bona fide use of a mark in the ordinary course of
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trade” are: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry.
901.03 Commerce That May Be Lawfully Regulated By Congress
The scope of federal trademark jurisdiction is commerce that may be regulated by the United States Congress. The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.
“Territorial commerce” is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, or the United States Virgin Islands) or between the United States and a territory of the United States.
Purely intrastate use does not provide a basis for federal registration. However, if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act. See Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991), cert. denied 502 U.S. 823 (1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in “use in commerce”); In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977) (intrastate sale of imported wines by importer constitutes “use in commerce,” where goods bearing labels supplied by applicant were shipped to applicant in United States); In re Gastown, Inc., 326 F.2d 780, 140 USPQ 216 (C.C.P.A. 1964) (automotive service station located in one state was rendering services “in commerce” because services were available to customers travelling interstate on federal highways); U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020, 1022 (TTAB 1984) (billiard parlor services satisfy the “use in commerce” requirements, where the record showed that applicant’s billiard parlor services were advertised in both Kansas and New York); In re G.J. Sherrard Co., 150 USPQ 311 (TTAB 1966) (hotel located in only one state has valid use of its service mark in commerce because it has out-of-state guests, has offices in many states, and advertises in national magazines); In re Federated Department Stores, Inc., 137 USPQ 670 (TTAB 1963) (mark used to identify retail department store services located in one state was in use in commerce, where the mark was used on credit cards issued to out-of-state residents, and on catalogs and advertisements shipped to out-of-state customers).
In some cases, services such as restaurant and hotel services have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which, like the Trademark Act, is predicated on the commerce clause. See In re Ponderosa Motor Inns, Inc., 156 USPQ 474 (TTAB 1968); In re Smith Oil Corp., 156 USPQ 62 (TTAB 1967).
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The term “foreign” is not acceptable to specify the type of commerce in which a mark is used, because it does not clearly indicate that the mark is in use in a type of commerce that Congress can lawfully regulate. Unless the “foreign commerce” involves the United States, Congress does not have the power to regulate it. Use of a mark in a foreign country does not give rise to rights in the United States if the goods or services are not sold or rendered in the United States. Buti v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d 1985 (2nd Cir. 1998); Mother’s Restaurants Inc. v. Mother’s Bakery, Inc., 498 F. Supp. 847, 210 USPQ 207 (W.D.N.Y. 1980); Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Aktieselskabet af 21.November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861 (TTAB 2006). See also Honda Motor Co., Ltd. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009) (“[T]he evidence that applicant relies upon through its foreign registrations and Internet printouts does not demonstrate trademark use for the claimed goods. Further, these documents do not show that applicant has an intent to use the mark in the United States.”)
Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website. See Planned Parenthood Federation of America, Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (Table), cert. denied, 525 U.S. 834 (1998).
An applicant is not required to specify the type of commerce in which the mark is used. The USPTO presumes 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, unless there is contradictory evidence in the record. See TMEP §901.04 regarding the circumstances where an examining attorney should inquire as to whether the mark is in use in commerce that can be regulated by Congress.
901.04 Inquiry Regarding Use in Commerce
It is the responsibility of the applicant and the applicant’s attorney to determine whether an assertion of use in commerce is supported by the relevant factual situation. The validity of an applicant’s assertion of use in commerce generally does not arise in ex parte examination. The examining attorney will normally accept the applicant’s verified claim of use in commerce without investigation into whether the use referred to constitutes “use in commerce.”
An applicant is not required to specify the type of commerce in which the mark is used. See TMEP §901.03. However, if the applicant specifically states that the mark is in use in commerce that cannot be regulated by Congress (e.g., “intrastate commerce” or “foreign commerce”), the applicant has not met the statutory requirement for a verified statement that the mark is
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in use in commerce, and a specification of the date of first use in commerce, as defined in §45 of the Trademark Act. Accordingly, the examining attorney must advise the applicant that it appears that the mark is not in use in a type of commerce that can be regulated by Congress and must require that the applicant either submit a verified statement that “the mark is in use in commerce that can be regulated by Congress,” or amend the basis of the application to a bona fide intention to use the mark in commerce under §1(b) of the Act, if permitted by 37 C.F.R. §2.35. See TMEP §806.03(c) regarding amendment of the basis from §1(a) to §1(b).
If the application record contains evidence or information indicating that the mark may not be in use in commerce that “may lawfully be regulated by Congress,” the examining attorney must ask the applicant whether there is use in commerce that may lawfully be regulated by Congress and require a satisfactory explanation or showing of such use. When necessary, the examining attorney may also require additional product or sales literature concerning the use of the mark to permit full consideration of the issue. 37 C.F.R. §2.61(b); TMEP §814.
901.05 Use Only by Related Company
If the applicant is not itself using the mark in commerce but the mark is being used by one or more related companies whose use inures to the applicant’s benefit (15 U.S.C. §§1055 and 1127), this must be stated in the application or allegation of use. 37 C.F.R. §2.38(b); TMEP §1201.03(a). See TMEP §903.05 regarding first use by a predecessor in title or related company.
See TMEP §§1201.03 et seq. regarding use by related companies.
902 Allegations of Use for §1(b) Applications
Section 1(b) of the Trademark Act permits the filing of an application to register a mark on the basis of the applicant’s bona fide intention to use the mark in commerce for the identified goods or services. Before a registration can issue, however, the applicant must actually use the mark in commerce on or in connection with all the goods or services specified in the application and file an allegation of use of the mark in commerce (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) that states that the applicant is using the mark in commerce on or in connection with the goods or services, includes dates of use for each class, and includes one specimen evidencing such use for each class.
See 37 C.F.R. §2.76 and TMEP §§1104 et seq. regarding amendments to allege use, and 37 C.F.R. §2.88 and TMEP §§1109 et seq. regarding statements of use.
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903 Dates of Use
When asserting use of a mark in commerce, an applicant must specify the date of first use anywhere and the date of first use in commerce, either in an original application under §1(a) of the Trademark Act, or in an allegation of use in an application under §1(b). The dates of use must be verified, i.e., supported by an affidavit or declaration under 37 C.F.R. §2.20. See TMEP §§804 et seq. regarding verification.
An applicant filing under §1(b) is not required to state dates of use in the original application, but must include dates of use in an allegation of use under §1(c) or §1(d).
A §1(b) applicant may assert dates of use that are earlier than the filing date of the application in an amendment to allege use or statement of use.
903.01 Date of First Use Anywhere
The date of first use anywhere is the date when the goods were first sold or transported or the services were first rendered under the mark, if such use is bona fide and in the ordinary course of trade. See 15 U.S.C. §1127 (definition of “use” within the definition of “abandonment of mark”). For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.
903.02 Date of First Use in Commerce
The date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by Congress, if such use is bona fide and in the ordinary course of trade. See TMEP §901.01 for definitions of “commerce” and “use in commerce,” and TMEP §901.03 regarding types of commerce.
In a §1(a) application, the applicant may not specify a date of use that is later than the filing date of the application. If an applicant who filed under §1(a) did not use the mark in commerce before the application filing date, the applicant may amend the basis to §1(b). See TMEP §§806.03 et seq. regarding amendments to the basis.
Neither a date of first use nor a date of first use in commerce is required to receive a filing date in an application based on use in commerce under §1(a) of the Act. If the application does not include a date of first use and/or a date of first use in commerce, the examining attorney must require that the applicant state the date of first use and/or date of first use in commerce. The
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dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.34(a)(1) and 2.71(c).
An applicant may not file an application on the basis of use of a mark in commerce if such use has been discontinued.
903.03 Relation Between the Two Dates of Use
The application or allegation of use must specify both the date of first use anywhere and the date of first use in commerce. If the first use made by the applicant was in commerce that may be regulated by Congress, the date of first use and the date of first use in commerce will be the same date.
The date of first use anywhere will always be either earlier than or the same as the date of first use in commerce. If the date of first use anywhere specified in an application or allegation of use is later than the date of first use in commerce, the examining attorney must require clarification.
The requirement that an applicant specify the date of first use anywhere as well as the date of first use in commerce applies to foreign applicants as well as domestic applicants in applications under §§1(a) and 1(b) of the Act. In re Sevi S.p.A., 1 USPQ2d 1671 (TTAB 1986).
903.04 Amending Dates of Use
Any amendment of the dates must be supported by an affidavit or declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c). The affidavit or declaration must be signed by someone properly authorized to sign on behalf of the applicant under 37 C.F.R. §2.33(a). See TMEP §611.03(a).
In an application under §1(a) of the Trademark Act, the applicant may amend the dates of use to adopt a date of use that is later than the date originally stated, but before the application filing date. However, the applicant may not amend to specify a date of use that is later than the filing date of the application. 37 C.F.R. §2.71(c)(1). If an applicant who filed under §1(a) did not use the mark in commerce on or before the application filing date, the applicant may amend the basis to §1(b). See TMEP §§806.03 et seq. regarding amendments to the basis.
In an application under §1(b), after the applicant files an amendment to allege use, the applicant may not subsequently amend the dates of use to recite dates of use that are later than the filing of the amendment to allege use. If a §1(b) applicant did not use the mark in commerce before the filing date of the amendment to allege use, the applicant may withdraw the amendment to allege use before the application is approved for publication. 37 C.F.R. §2.76(h). See TMEP §§1104.09(d) and 1104.10.
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In an application under §1(b), after the applicant files a statement of use, the applicant may not amend to recite dates of use that are later than the expiration of the statutory deadline for filing a statement of use (i.e., the amended dates must be within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). 37 C.F.R. §2.71(c)(2). If a §1(b) applicant did not use the mark in commerce before the expiration of the deadline for filing a statement of use, the applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.
A multiple-class application must include dates of use for each class. If a single-class application containing dates of use is amended to a multiple- class application, the dates-of-use clause must be amended to reflect dates of use for each class. See 37 C.F.R. §2.86(a)(3); TMEP §1403.01. If a single-class application is amended to a multiple-class application, but the applicant does not set forth dates of use for the added classes, the examining attorney must inquire as to whether the dates of use apply to all classes and require an amendment, if necessary. A supporting affidavit or declaration is not necessary if the dates of use alleged in the original application or in an earlier-filed allegation of use apply to all classes.
A supporting affidavit or declaration is required for any change to the dates of use. 37 C.F.R. §2.71(c). However, if the applicant has properly verified the date of first use in commerce and, for whatever reason, seeks to amend the date of first use anywhere to the same date as the date of first use in commerce, a verified statement is not required if the originally specified date of first use anywhere is earlier than the date of first use in commerce. This is not considered a change to the dates of use, because the applicant has already sworn to a date of first use in commerce that necessarily requires, and logically includes, use of the mark “anywhere.” Thus, the applicant has, in fact, already verified in its original application or allegation of use that the date of first use of the mark anywhere is at least as early as the date of first use of the mark in commerce. Such an amendment may be entered by examiner’s amendment.
When the date of first use anywhere is later than the date of first use in commerce, an unverified amendment is inappropriate because the validity of the verification is called into question by the impossibility of first use anywhere being later than the first use in commerce.
Compare the following examples.
(1) First use anywhere: March 6, 1985
First use in commerce: February 10, 1985
An amendment of the date of first use anywhere to February 10, 1985, must be verified, because the validity of the date of first use
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in commerce is called into question by the fact that the applicant has specified a later date of first use anywhere.
(2) First use anywhere: March 6, 1985
First use in commerce: April 10, 1985
An unverified amendment of the date of first use anywhere to April 10, 1985, is acceptable, because first use in commerce logically includes use anywhere.
(3) First use anywhere: March 1985
First use in commerce: March 10, 1985
An unverified amendment of the date of first use anywhere to March 10, 1985, is acceptable because the information in the record is not contradictory on its face. There is only an apparent contradiction resulting from the way in which the USPTO construes the information when an applicant provides only the month and year (i.e., as indicating the last day of the month - see TMEP §903.06 regarding indefinite dates of use).
This policy is not applicable to the converse. That is, an amendment to the date of first use in commerce to conform to the date of first use anywhere is a change (because first use anywhere does not necessarily include first use in commerce) and must be verified.
903.05 First Use by Predecessor or Related Company
If the first use anywhere or the first use in commerce was by a predecessor in title to the applicant, or by a related company of the applicant (see 15 U.S.C. §§1055 and 1127), the dates of use clause should state that the use on this date was by the applicant’s predecessor in title, or by a related company of the applicant, as the case may be. See 37 C.F.R. §2.38(a). It is generally not necessary to give the name of the predecessor in title or the related company.
See TMEP §§901.05 and 1201.03 et seq. regarding current use by a party other than the applicant.
903.06 Indefinite Dates of Use
In specifying the dates of first use, the applicant should give dates that are as definite as possible.
The only date that will be recognized for USPTO proceedings is the latest definite date specified by the applicant. However, the applicant may use indefinite terms in describing dates if the applicant considers it necessary due to uncertainty as to the particular date. Although terms such as “at least as
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early as,” “prior to,” “before,” “on or about,” and “in” are acceptable for the record, these terms are not printed in the Official Gazette or on the certificate of registration.
When a month and year are given without a specified day, the date presumed for purposes of examination is the last day of the month. When only a year is given, the date presumed for purposes of examination is the last day of the year. Some examples are as follows:
• “Prior to January 1, 1955” is treated as December 31, 1954.
• “Before February 1961” is treated as January 31, 1961.
• “On or about June 18, 1987” is treated as June 18, 1987.
• “1990” is treated as December 31, 1990.
• “In November 1991” is treated as November 30, 1991.
• “In the 1920s” is treated as December 31, 1929.
When an applicant alleges only a year prefaced by vague or ambiguous language such as “in the Spring of,” the USPTO will construe the date as the last day of that year, unless the applicant amends to specify a particular date or a particular month of the specified year.
When an applicant’s date of first use in commerce is more specific than its date of first use anywhere, the above presumption can result in an unacceptable dates-of-use clause in which the date of first use in commerce precedes the date of first use anywhere. For example:
First use anywhere: 1991 First use in commerce: January 15, 1991 Usual presumption of first use anywhere: December 31, 1991 (which results in a logical inconsistency).
Therefore, when the above presumption would be applicable, and the result is a date of first use in commerce that precedes the date of first use anywhere, the examining attorney must contact the applicant by telephone or e-mail, if appropriate, for authorization to amend the date of first use anywhere to the same date as the date of the first use in commerce. This may be done by examiner’s amendment.
Indefinite phraseology of the type described above is not considered to be misleading, because it does give notice that, when called upon to do so, the applicant may undertake to prove a date earlier than the one stated.
The presumed dates discussed above are not entered into the automated records of the USPTO, or printed in the Official Gazette or on the certificate of registration. Instead, only the information provided by the applicant is printed.
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Thus, if the applicant states that the mark was first used “at least as early as January of 1994,” the date printed is “1/0/1994.” If applicant states that the mark was first used “sometime in 1965,” the date printed is “0/0/1965.”
In an inter partes proceeding, a date of use must be established by appropriate evidence. A date of use set forth in an application or registration owned by applicant or registrant is not evidence on behalf of that applicant or registrant. 37 C.F.R. §2.122(b)(2); Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §704.04.
See TMEP §903.06(a) regarding apparent discrepancies between dates of use and execution dates.
903.06(a) Apparent Discrepancies Between Dates of Use and Date of Execution
If an application, or an allegation of use under §1(c) or §1(d), specifies a date of first use only by the year, or by the month and the year, and the date would be interpreted under TMEP §903.06 as later than the date on which the application or allegation of use was signed, the USPTO will presume that the date specified is the date on which applicant signed the application or allegation of use. In this case, it is not necessary to amend the application to indicate the date of use more specifically. However, if the date specified would be interpreted as later than the filing date of the application or allegation of use, then amendment of the date of use, supported by an affidavit or declaration under 37 C.F.R. §2.20, is still required.
If an application or allegation of use specifies the date of signature only by the year, or by the month and the year, and the date would be interpreted under TMEP §903.06 as later than the date(s) of first use, the USPTO will presume that the date of signature was on or after the date of first use.
903.07 Dates of Use in Another Form
If the mark in the application is a composite mark, the applicant may specify dates of first use of a separable element of the composite mark. These dates will be printed on the certificate of registration for general information. However, the applicant must also specify the dates of first use of the entire composite mark for which registration is being sought.
903.08 More than One Item of Goods or Services
If more than one item of goods or services is specified in a particular class, the date of first use anywhere and date of first use in commerce do not have to pertain to every item in the class. It might be that the mark, although in use on all of the items at the time the application or allegation of use was filed, was first used on various items on differing dates, so that it would be
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cumbersome to designate the dates for all items individually. See Sunshine Biscuits, Inc. v. Berke Bakeries, Inc., 106 USPQ 222 (PTO 1955); Ex parte Wayne Pump Co., 88 USPQ 437 (PTO 1951).
There must be at least one specified item in a class to which the specified dates pertain. Where the dates of use do not pertain to all items, the applicant should designate the particular item(s) to which they do pertain. 37 C.F.R. §§2.34(a)(1)(v), 2.76(c), and 2.88(c).
Where the dates of use do not pertain to every item in the class, and the identification of goods or services is amended to delete the item(s) to which the dates of use pertain, the applicant must amend the dates-of-use clause to specify the dates that apply to an item that remains in the identification, and this item should be designated. See TMEP §903.04 regarding amendments to dates of use.
If more than one item of goods or services is specified in a particular class, the USPTO will presume that the dates of use apply to all the goods or services, unless the applicant states otherwise.
Where more than one date is specified for a particular class, the earliest date will be printed in the Official Gazette and, if a registration issues, on the certificate of registration. The Official Gazette and registration certificate will not indicate which item is specified.
904 Specimens
Specimens are required because they show the manner in which the mark is seen by the public. Specimens also provide supporting evidence of facts recited in the application.
An application for registration under §1(a) of the Trademark Act must include one specimen for each class, showing use of the mark on or in connection with the goods, or in the sale or advertising of the services, in commerce. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a). If an application under §1(a) is filed without a specimen, the examining attorney must issue an Office action requiring the applicant to submit one specimen for each class, with an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce on the filing date of the application. The Office action must also indicate that, pending submission of an acceptable specimen, registration is refused because the applicant has not provided evidence of use of the mark in commerce. 15 U.S.C. §§1051(a)(1) and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a).
In an application for registration under §1(b) of the Trademark Act, no specimen is required at the time the application is filed. However, before a registration will issue, the applicant must file an allegation of use that includes one specimen for each class, showing use of the mark in commerce on or in
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connection with the goods or in the sale or advertising of the services. 37 C.F.R. §§2.56(a), 2.76(b)(2), and 2.88(b)(2).
No specimen showing use of the mark is required in an application based solely on §44 or §66(a) of the Trademark Act, 15 U.S.C. §1126 or §1141f(a). While a §44 or §66(a) applicant must assert a bona fide intent to use the mark in commerce, the applicant is not required to assert actual use in commerce prior to registration. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984); TMEP §§1009 and 1904.01(d).
If the nature of a specimen is unclear, the applicant must explain what it is and how it is used.
A copy or reproduction of the drawing is not an acceptable specimen. 37 C.F.R. §2.56(c).
Specimens of value should not be filed.
Interested parties, including potential opposers, may view and print images of the specimens in an application or registration file through the Trademark Document Retrieval ("TDR") portal on the USPTO website at http://www.uspto.gov. The USPTO does not permit specimens to be removed from the record. Furthermore, once filed, specimens remain part of the record and will not be returned to the applicant. 37 C.F.R. §2.25. This ensures that there is a complete record of the submissions made by the applicant. See notice at 64 Fed. Reg. 48900, 48901 (Sept. 8, 1999) and 1226 TMOG 103 (Sept. 28, 1999). See also TMEP §404.
904.01 Number of Specimens
One specimen for each class is required in an application for registration under §1(a) of the Trademark Act, or in an allegation of use in an application under §1(b). If a single specimen supports multiple classes, the applicant should indicate which classes are supported by the specimen. The examining attorney need not require multiple copies of the specimen. The examining attorney should make a note in the “Notes-to-the-File” section of the record indicating which class(es) the specimen supports.
904.01(a) More than One Item Specified in a Class
If more than one item of goods, or more than one service, is specified in one class in an application, it is usually not necessary to have a specimen for each product or service. However, if the range of items is wide or contains unrelated articles, the examining attorney may request additional specimen(s) under 37 C.F.R. §2.61(b). See TMEP §1402.03 regarding broad identifications, TMEP §1402.03(b) regarding house marks, and TMEP §1402.03(c) regarding marks for “a full line of” a genre of products.
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904.01(b) In Combined or Multiple-Class Applications
A combined (or multiple-class) application is a request to register the same mark for goods and/or services in multiple classes in a single application. There must be one specimen of the mark for each class. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv) and 2.56(a). If a single specimen supports multiple classes, the applicant should indicate which classes are supported by the specimen. The examining attorney need not require multiple copies of the specimen. The examining attorney should make a note in the “Notes-to-the-File” section of the record indicating which classes the specimen supports.
See TMEP §§1403 et seq. regarding examination of multiple-class applications.
904.02 Physical Form of Specimens
904.02(a) Electronically Filed Specimens
In an electronically filed application, allegation of use, affidavit of use under 15 U.S.C. §1058 or §1141k of the Trademark Act (“§8 affidavit” or “§71 affidavit”), or response to an Office action, the specimen(s) must be in .jpg or .pdf format. 37 C.F.R. §§2.56(d)(4) and 2.161(g)(3). If the nature of the specimen is unclear, the applicant should explain what it is and how it is used. The USPTO prefers that applicants submit small files of less than two minutes in duration.
Sometimes, there is no visible specimen in the record due to a technical problem. In this situation, the examining attorney must ask the applicant to submit by mail or fax: (1) the specimen (or a facsimile) that was attached to the original TEAS submission; and (2) a statement by the person who transmitted the original TEAS submission that the specimen being submitted by mail or fax is a true copy of the specimen originally filed through TEAS. This statement does not have to be verified. Alternatively, the owner may submit a new specimen, together with an affidavit or declaration of use of the substitute specimen. See TMEP §904.05 regarding the requirements for an affidavit or declaration supporting use of substitute specimens.
904.02(b) Paper-Filed Specimens
In a paper-filed application, allegation of use, affidavit of use under §8 or §71 of the Trademark Act, or response to Office action, the specimen(s) must be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. 37 C.F.R. §2.56(d)(1). Actual specimens are preferred if they are available and do not exceed the size requirements. The USPTO may create a photocopy or facsimile for the official record and destroy the original.
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When the applicant cannot supply an actual specimen meeting these size requirements due to the nature or manner of use of the mark, the application, allegation of use, affidavit of use, or response must include a facsimile, such as a photograph, photocopy, or other acceptable reproduction, that is a suitable size and clearly shows how the mark is used on or in connection with the goods or in the sale or advertising of the services.
Facsimiles should show the whole article to which the mark is applied, or enough of the article so that the nature of the article can be identified. The mark and all other pertinent written matter on the article should be clear and legible. For example, product photographs appearing on folders or brochures that show the trademark on the goods are acceptable facsimiles. It is permissible to show the complete article in one photograph and the written matter in another, so that the written matter will be legible, or to show different views of an article either in a single photograph or in separate photographs.
A copy or reproduction of the drawing is not an acceptable specimen or facsimile. 37 C.F.R. §2.56(c).
If color is a feature of the mark, the applicant should submit facsimiles made by color photography, or by any process that reproduces in color. See TMEP §904.02(c)(ii).
If an applicant does submit a specimen that exceeds the size requirements (a “bulky specimen”), the USPTO will create a facsimile of the specimen that meets the size requirements of the rule and destroy the original specimen. 37 C.F.R. §2.56(d)(2). If the copy of the specimen created by the USPTO does not adequately depict the mark, the examining attorney will require a substitute specimen that meets the size requirements of the rule and an affidavit or declaration verifying the use of the substitute specimen. See TMEP §904.05 regarding affidavits supporting substitute specimens.
If necessary, the examining attorney may require one actual specimen for examination purposes, under 37 C.F.R. §2.61(b).
904.02(c) Additional Requirements
904.02(c)(i) Other Materials Required for Examination
During examination, an examining attorney also has the discretion to request additional materials, under 37 C.F.R. §2.61(b), if necessary for proper examination of the mark. TMEP §814. For example, if the mark is a configuration of the goods or of the container for the goods, the examining attorney may require one actual product or container. Or the examining attorney might require a complete copy of a publication in order to determine whether a mark is merely descriptive of the goods. See TMEP §904.02(c)(iii) regarding marks used on publications.
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In specific cases, such as when an applicant submits additional materials in response to a requirement made by the examining attorney, and the materials do not meet the size parameters identified above, the USPTO may create facsimiles of these materials to be entered into the record and destroy the originals. However, the examining attorney should encourage the applicant to submit a photograph of the specimen(s) or evidence for the record.
904.02(c)(ii) Specimens for Marks Comprising Color
If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color. 37 C.F.R. §2.51; TMEP §807.12. Note: In an application filed on or after November 2, 2003, if an applicant submits a color drawing, or a description of the mark that indicates the use of color on the mark, the applicant must claim color as a feature of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).
If the applicant submits a specimen that is not in color or not in the appropriate color, the examining attorney will require the applicant to file a substitute specimen that shows use of the appropriate color(s). See TMEP §904.05 regarding substitute specimens.
See also TMEP §1202.05(f) regarding specimens showing use of marks that consist solely of color.
904.02(c)(iii) Specimens for Marks Used on Publications
An application for registration of a mark for publications is treated the same as any other application with respect to specimen requirements. The USPTO does not require a complete copy of the publication or a title page in every case. However, the examining attorney may require a copy of the publication under 37 C.F.R. §2.61(b) if he or she believes it is necessary for proper examination. For example, a copy of the publication might be necessary to determine whether a mark is merely descriptive of the goods.
904.03 Material Appropriate as Specimens for Trademarks
For a trademark application under §1(a), allegation of use in an application under §1(b), or affidavit of use under §8 or §71 of the Trademark Act, the specimen must show the mark as used on or in connection with the goods in commerce. A trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. 37 C.F.R. §2.56(b)(1). A photocopy or other reproduction of a specimen of the mark as actually used on or in connection with the goods is acceptable. 37 C.F.R. §2.56(c).
See TMEP §§1301.04 et seq. regarding service mark specimens, TMEP §1304.08(e) regarding collective membership mark specimens, TMEP
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§1303.02(b) regarding collective mark specimens, and TMEP §1306.06(b) regarding certification mark specimens.
904.03(a) Labels and Tags
In most cases, where the trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen.
Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. Electronic Communications, Inc. v. Electronic Components for Industry Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971), cert. denied 404 U.S. 833 (1971); In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969). They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark. An example of this is the use of the term solely as a return address. In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Restaurant, Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co., Inc. v. Biltmore Industries, Inc., 22 USPQ 257 (Comm’r Pats. 1934). See TMEP §1202.01 regarding trade name refusals.
In connection with labels whose appearance suggests that they are only for temporary use, the examining attorney may consider it necessary to make further inquiry as to how the specimen is used, under 37 C.F.R. §2.61(b), in order to properly examine the application. A response to the inquiry may include an additional specimen(s) if labels of a more permanent nature have by that time been adopted. However, nothing prohibits the registration of a mark in an application that contains only “temporary” specimens, provided that the specimens were actually used in commerce. See In re Chica, 84 USPQ2d 1845 (TTAB 2007) (specimen deemed unacceptable not because it was temporary but because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).
904.03(b) Stampings
Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation. See In re Crucible Steel Co. of America, 150 USPQ 757 (TTAB 1966). The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template.
When a trademark is used in this manner, photographs or facsimiles showing the actual stamping or stenciling are acceptable as specimens.
When the specimen consists of a stamp on paper, the applicant must explain the nature of the specimen and how it is used.
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904.03(c) Commercial Packaging
The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen. For example, gasoline pumps are normal containers or “packaging” for gasoline.
A specimen showing use of the trademark on a vehicle in which the goods are marketed to the relevant purchasers may constitute use of the mark on a container for the goods, if this is the normal mode of use of a mark for the particular goods. In re E.A. Miller & Sons Packing Co., Inc., 225 USPQ 592 (TTAB 1985). But see In re Lyndale Farm, 186 F.2d 723, 88 USPQ 377 (C.C.P.A. 1951).
904.03(d) Electronic and Digital Media Attachments to Paper Filings
In the absence of alternative specimens, the USPTO will accept specimens consisting of compact discs (“CDs”), digital video discs (“DVDs”), videotapes, and audiotapes. See 37 C.F.R. §2.56(d)(3). Equipment for viewing or listening to these materials is available in the USPTO.
Compact discs, DVDs, audiotapes, and videotapes may contain files in .jpg, .pdf, .wav, .mp3, .mpg, or .avi format. The USPTO is unable to review files in any other format. The USPTO prefers that the applicant submit small files of less than two minutes in duration. Only one specimen should be included on each tape or disc; however, in a multiple-class application, the applicant may include more than one specimen on the same disc or tape. If the nature of the specimen is unclear, the applicant should explain what it is and how it is used.
This section pertains only to CDs, DVDs, audiotapes, and videotapes attached to paper filings. Attachments to TEAS filings must be in .jpg or .pdf format. See 37 C.F.R. §2.56(d)(4); TMEP §904.02(a).
See TMEP §904.03(f) regarding specimens for sound marks, and TMEP §904.03(l) regarding specimens for motion marks. See also 37 C.F.R. §§2.56(d)(1) and (2) and TMEP §904.02(b) regarding the size requirements for specimens attached to paper filings, and the procedures for handling specimens that exceed these requirements.
904.03(e) Specimens for Trademarks Identifying Computer Programs, Movies, or Video Tapes
The computer program, video tape, and movie industries have adopted the practice of applying trademarks that are visible only when the goods, that is,
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programs or movies, are displayed on a screen (e.g., on the first several frames of a movie).
An acceptable specimen might be a photograph or printout of a display screen projecting the identifying trademark of a computer program, or a photograph of a frame(s) of a movie or video tape bearing the mark. It is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, held sufficient).
For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it provides sufficient information to enable the user to download or purchase the software from the website. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable. In re Osterberg, 83 USPQ2d 1220 (TTAB 2007); In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). See TMEP §904.03(i) regarding electronic displays as specimens for trademarks.
904.03(f) Specimens for Sound Marks
To show that a sound mark actually identifies and distinguishes the goods/services and indicates their source, an applicant must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goods/services.
For paper filings, specimens for sound marks must be submitted on CDs, DVDs, videotapes, and audiotapes. 37 C.F.R. §2.56(d)(3). See TMEP §904.03(d). For TEAS filings, the specimen must be an electronic file in .wav, .mp3, .mpg, or .avi format. However, TEAS does not permit direct attachment of these types of electronic files. Therefore, the electronic specimen must be sent after the TEAS document is transmitted, as an attachment to an e-mail message directed to TEAS@uspto.gov, with clear instructions that the electronic specimen should be associated with “the application filed under Serial No. <specify assigned serial number>.”
Additionally, for any filing where a specimen is required, the TEAS form only validates if there is an attachment in the “Specimen” field. Therefore, in conjunction with the workaround described above, the applicant should create a .jpg or .pdf file that states that an electronic specimen will be sent to TEAS@uspto.gov, and attach the .jpg or .pdf file to the TEAS document in the “Specimen” field. See TMEP §904.02(a) regarding specimens filed electronically.
See also TMEP §§807.09 and 1202.15 regarding sound marks.
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904.03(g) Displays Associated with Goods
A display must be associated directly with the goods offered for sale. It must bear the trademark prominently. However, it is not necessary that the display be in close proximity to the goods. See In re Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A. 1972); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).
Displays associated with the goods essentially comprise point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices.
These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must prominently display the trademark in question and associate it with, or relate it to, the goods. In re Osterberg, 83 USPQ2d 1220 (TTAB 2007); In re Morganroth, 208 USPQ 284 (TTAB 1980) (purported mark was so obfuscated on the specimen that it was not likely to make any impression on the reader). The display must be related to the sale of the goods such that an association of the two is inevitable. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein. See also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980). Cf. In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982).
Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se “displays.” In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990). In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation. Such evidence must consist of more than an applicant's statement that copies of the material were distributed at sales presentations or tradeshows. A mere statement that advertising and promotional materials are used in connection with sales presentations is not sufficient, in and of itself, to transform advertising and promotional materials into displays used in association with the goods. Osterberg, 83 USPQ2d 1220, 1224 (“Applicant's declaration lacks sufficient detail to transform the web page from advertising into a display used in association with the goods. For example, there is no discussion regarding how the applicant used the web page at sales presentations to make an association between the mark and the products or whether consumers, in fact, associated the mark with the products. The use of advertising material in connection with the sales of a product does not ipso facto make it a display used in association with the goods sufficient to support technical trademark use for registration.”); see also In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); (holding that a photograph showing an informational flyer or leaflet clearly depicting the mark and presented on the goods at a trade show exhibit was an acceptable display associated with the goods); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982) (holding that folders and brochures describing goods and their characteristics or serving as advertising literature are not displays, and the appearance of marks and product
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photographs in such literature does not per se amount to use of a mark on displays without evidence of point-of-sale presentation).
An infomercial was held to be a display associated with the goods, where the goods were shown either immediately before or immediately after the trademark was displayed, and the information on how to order the goods was given within a reasonable time after the goods were shown. The Board found that the infomercial created an association between the trademark and the goods, and the test for constituting a display associated with the goods was, therefore, satisfied. In re Hydron Technologies, Inc., 51 USPQ2d 1531 (TTAB 1999).
See TMEP §904.03(i) regarding electronic displays.
904.03(h) Catalogs
In appropriate cases, catalogs are acceptable specimens of trademark use. See Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). In that case, the applicant had applied to register “KETCH” for purses. The specimen was a catalog page that included a picture of the goods and, below the picture, the mark and a description of the goods. The Court stated, “The alleged trademark ‘KETCH’ appears prominently in large bold lettering on the display of purses in the Lands’ End specimen in a manner which closely associates the term with the purses.” 24 USPQ2d at 1315.
The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods. The Court evaluated the catalog specimen as follows:
A customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone. A customer can easily associate the product with the word “KETCH” in the display.... The point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods.
24 USPQ2d at 1316.
Accordingly, examining attorneys may accept any catalog or similar specimen as a display associated with the goods, provided that it: (1) includes a picture of the relevant goods; (2) shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).
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However, the mere inclusion of a phone number, Internet address, and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet brochures held not to qualify as a catalog under Lands’ End, where the specimen failed to show the mark near a picture of the goods, and included no information as to how to order the goods). It is not necessary that the specimen list the price of the goods.
904.03(i) Electronic Displays
A website page that displays a product, and provides a means of ordering the product, can constitute a “display associated with the goods,” as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods. The Trademark Trial and Appeal Board has held that web pages that display goods and their trademarks and provide for online ordering of such goods are, in fact, electronic displays which are associated with the goods. Such uses are not merely advertising, because in addition to showing the goods, they provide a link for ordering the goods. In effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it. The web page is, thus, a point-of-sale display by which an actual sale is made. In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004).
However, an Internet web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods. See In re Genitope Corp., 78 USPQ2d 1819,1822 (TTAB 2006) (“[T]he company name, address and phone number that appears at the end of the web page indicates only location information about applicant; it does not constitute a means to order goods through the mail or by telephone, in the way that a catalog sales form provides a means for one to fill out a sales form or call in a purchase by phone.”). Merely providing a link to the websites of online distributors is not sufficient. There must be a means of ordering the goods directly from the applicant’s web page, such as a telephone number for placing orders or an online ordering process. In re Osterberg, 83 USPQ2d 1220 (TTAB 2007).
The mark must also be displayed on the web page in a manner in which customers will easily recognize it as a mark. In re Morganroth, 208 USPQ 284 (TTAB 1980). In Osterberg, supra, the Board found that CONDOMTOY CONDOM was not displayed so prominently that consumers would recognize it as a trademark for condoms.
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It is important to consider whether the goods are specialized in nature when determining whether web page specimens constitute a display associated with the goods. The Board found a web page containing a link to an online catalog, along with a toll free number and links to customer service and technical support, to be an acceptable specimen, where the goods (industrial tools) were specialized industrial goods, and the record contained declaration evidence that purchase of the goods requires careful calculation and technical knowledge, and that the online phone numbers were in fact used to order the goods. In re Valenite Inc., 84 USPQ2d 1346, 1349 (TTAB 2007) (“[A]pplicant’s website, in addition to showing pictures of the goods, provides an on-line catalog, technical information apparently intended to further the prospective purchaser’s determination of which particular product to consider, an online calculator and both a link to, and phone number for, customer service representatives. Therefore, applicant’s website provides the prospective purchaser with sufficient information that the customer can select a product and call customer service to confirm the correctness of the selection and place an order.”).
The Valenite decision should not be interpreted as a broad-reaching change in USPTO practice regarding the determination of whether a website page constitutes a “display associated with the goods.” If it appears that the web page merely provides information about the goods, but does not provide a means of ordering the goods directly from the applicant’s web page, it should be viewed as promotional material and a refusal should be issued. Pursuant to Valenite, the applicant may overcome the refusal by submitting additional extrinsic evidence that: (1) the specialized, industrial nature of the goods is such that they cannot simply be ordered from a web page by adding the product to a “shopping cart;” (2) the practice in the industry is for customers to seek technical assistance prior to placing an order; and (3) the telephone number shown on the specimen is used by customers for customer service or technical support and to place orders. However, given the narrow range of scenarios to which this decision applies, examining attorneys generally should avoid suggesting reliance on Valenite to overcome a specimen refusal.
904.03(j) Manuals
If printed matter included with the goods functions as a part of the goods, such as a manual that is part of a kit for assembling the product, then placement of the mark on that printed matter does show use on the goods. In re Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984) (“We believe the instruction manual is as much a part of applicant’s goods as are the various parts that are used to build the gliders. Application of the mark to the manual of assembly instructions, then, must be considered affixation to the goods.”).
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904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays
The USPTO may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging, or displays associated with the goods. 15 U.S.C. §1127 (definition of “use in commerce”); 37 C.F.R. §2.56(b)(1). This provision is not intended as a general alternative to submitting labels, tags, containers, or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable. For example, it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars.
A mere assertion of impracticability does not suffice to establish that traditional trademark use is impracticable. Rather, the record must indicate that the goods are, in fact, of such a nature. In In re Settec, Inc., 80 USPQ2d 1185 (TTAB 2006), the applicant asserted that placing the mark on the goods or on displays associated with the goods in the traditional manner was impracticable because the purpose of the goods was to provide digital media copy protection to media content providers, and placing the mark on the final product available to the ultimate end-user would impair the value of the goods, because the end-user would thereby be armed with an additional piece of the encryption puzzle. The Board rejected this contention, finding that there were a variety of ways in which applicant could use its mark in the traditional manner without making it available to the end-user.
904.03(l) Specimens for Motion Marks
To show that a motion mark actually identifies and distinguishes the goods/services and indicates their source, an applicant must submit a specimen that depicts the motion sufficiently to show how the mark is used on or in connection with the goods/services, and that matches the required description of the mark. Although the drawing for a motion mark may depict a single point in the movement, or up to five freeze frames showing various points in the movement, an acceptable specimen should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g., a video clip, a series of still photos, or a series of screen shots).
For TEAS filings in which the specimen is an electronic file in .wav, .mp3, .mpg, or .avi format, TEAS does not permit direct attachment of these types of electronic files. Therefore, the electronic specimen must be sent after the TEAS document is transmitted, as an attachment to an e-mail message directed to TEAS@uspto.gov, with clear instructions that the electronic specimen should be associated with “the application filed under Serial No. <specify assigned serial number>.”
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Additionally, for any filing where a specimen is required, the TEAS form only validates if there is an attachment in the “Specimen” field. Therefore, in conjunction with the workaround described above, the applicant should create a .jpg or .pdf file that states that an electronic specimen will be sent to TEAS@uspto.gov, and attach the .jpg or .pdf file to the TEAS document in the “Specimen” field. See TMEP §904.02(a) regarding specimens filed electronically.
See also TMEP §807.11 regarding drawings for motion marks.
904.03(m) Specimens for Scent and Flavor Marks
To show that the specimen for a scent or flavor mark actually identifies and distinguishes the goods and indicates their source, an applicant must submit a specimen that contains the scent or flavor and that matches the required description of the scent or flavor. In most cases, the specimen will consist of the actual goods themselves because the examining attorney must be able to smell or taste the scent or flavor in order to determine whether the specimen shows use of the mark in connection with the goods. When submitting such a specimen, the applicant should clearly indicate on the specimen itself that it is a specimen for a scent or flavor mark application so that the USPTO will properly route the actual specimen to the examining attorney.
A “scratch and sniff” sticker for a scent mark is an acceptable specimen, provided that it is part of the packaging for the goods or is used in such a manner as to identify the goods and indicate their source.
See also TMEP §§807.09 and 1202.13 regarding scent and flavor marks.
904.04 Material Not Appropriate as Specimens for Trademarks
904.04(a) Drawing or “Picture” of the Mark
A photocopy of the drawing required by 37 C.F.R. §2.51 is not a proper specimen. 37 C.F.R. §2.56(c). Similarly, the specimen may not be a “picture” of the mark, such as an artist’s drawing or a printer’s proof that merely illustrates what the mark looks like and is not actually used on or in connection with the goods in commerce. See In re Chica, 84 USPQ2d 1845 (TTAB 2007) (specimen deemed unacceptable because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).
904.04(b) Advertising Material
Advertising material is generally not acceptable as a specimen for goods. Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support
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trademark use. Similarly, informational inserts are generally not acceptable to show trademark use. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979). However, an instruction sheet may be an acceptable specimen. In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). See TMEP §904.03(j) regarding manuals and TMEP §904.04(c) regarding package inserts.
The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods: advertising circulars and brochures; price lists; announcements; press releases; listings in trade directories; and business cards. Moreover, material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods. These materials include all documents whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties, and business stationery. See In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972); In re Bright of America, supra; Varian Associates v. IMAC Corp., 160 USPQ 283 (N.D. Ill. 1968); Upco Co. v. Speed Crete of La., Inc., 154 USPQ 555 (TTAB 1967); Dynacolor Corp. v. Beckman & Whitley, Inc., 134 USPQ 410 (TTAB 1962); Pendleton Woolen Mills v. Eloesser-Heynemann Co., 133 USPQ 211 (TTAB 1962); Boss Co. v. Homemaker Rugs, Inc., 117 USPQ 255 (N.D. Ill. 1958).
As to display of trademarks on company uniforms, see In re McDonald’s Corp., 199 USPQ 702 (TTAB 1978); Toro Mfg. Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969).
Bags and other packaging materials bearing the name of a retail store and used by the store merely for packaging items of sold merchandise are not acceptable to show trademark use of the store name for the products sold by the store (e.g., bags at cash register). When used in this manner, the name merely identifies the store. See In re The Pennsylvania Fashion Factory, Inc., 198 USPQ 568 (TTAB 1978), aff’d, 588 F.2d 1343, 200 USPQ 140 (C.C.P.A. 1978).
904.04(c) Package Inserts
If material inserted in a package with the goods is merely advertising material, then it is not acceptable as a specimen of use on or in connection with the goods. Material that is only advertising does not necessarily cease to be advertising because it is placed inside a package.
Package inserts such as invoices, announcements, order forms, bills of lading, leaflets, brochures, printed advertising material, circulars, press
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releases, and the like are not acceptable specimens to show use on goods. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).
904.05 Affidavit Supporting Substitute Specimens
If the specimen is unacceptable, the examining attorney will require a substitute specimen. Generally, when submitting a substitute specimen, the applicant must include an affidavit or declaration under 37 C.F.R. §2.20 verifying that the substitute specimen is in use in commerce. Similarly, when submitting an additional specimen in support of a multiple-class application that is not identical to the specimen originally filed, the applicant must include an affidavit or declaration under 37 C.F.R. §2.20 verifying that the new specimen was in use in commerce as of the pertinent date indicated in this section.
In an application under §1(a) of the Trademark Act, the affidavit or declaration must state that the substitute or additional specimen was in use in commerce at least as early as the application filing date. 37 C.F.R. §2.59(a). If the applicant cannot provide an acceptable substitute specimen, supported by an affidavit or declaration of use in commerce as of the filing date of the application, the applicant may amend the basis to §1(b). See TMEP §§806.03 et seq. regarding amendments to the basis.
In an application under §1(b) of the Act, an applicant who files a substitute or additional specimen after an amendment to allege use under §1(c) of the Act must include an affidavit or declaration stating that applicant used the substitute or additional specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. 37 C.F.R. §2.59(b)(1). An applicant who files a substitute specimen after a statement of use under §1(d) of the Act must verify that the substitute or additional specimen was in use in commerce before the expiration of the deadline for filing a statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). 37 C.F.R. §2.59(b)(2).
If the dates of use change as the result of the submission of new specimen(s), the applicant must file an amendment of the dates of use, supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.71(c); TMEP §903.04.
In some situations, however, an affidavit or declaration of use of substitute specimens is not necessary. For instance, if the specimen originally filed is cut from a larger object, it is not necessary to provide an affidavit or declaration when a sample (or a photograph) of the complete object is submitted to corroborate the original specimen. In these circumstances, the additional specimen is supplemental, and the examining attorney may consider the original specimens to have been satisfactory.
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904.06 Translation of Matter on Specimens
If there is matter printed on a specimen that is not in English, the examining attorney may require that the applicant submit a translation of this matter to permit proper examination. 37 C.F.R. §2.61(b). If the examining attorney determines that a translation is necessary, he or she should limit the requirement in an appropriate manner to avoid placing an unnecessary burden on the applicant.
904.07 Requirements for Substitute Specimens and Statutory Refusals
904.07(a) Whether the Specimen Shows the Mark Used in Commerce
An application for registration under §1(a) of the Trademark Act or an allegation of use in an application under §1(b) of the Act must include one specimen per class showing use of the mark as used on or in connection with the goods, or in the sale or advertising of the services in commerce. 15 U.S.C. §§1051(a)(1), 1051(c) and 1051(d)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b) and 2.88(b). Initially, the examining attorney must review the specimen to determine whether: (1) the applied-for mark appears on the specimen; (2) the specimen shows that the applied-for mark is in “use in commerce;” and (3) the specimen shows use for the specific goods/services identified.
The following non-exhaustive list reflects examples of problems that may be raised on initial review of specimens:
• No specimen is submitted;
• The applied-for mark does not appear on the specimen;
• The specimen does not show use of the applied-for mark on or in connection with any of the relevant goods or in the sale or advertising of the services;
• The specimen is not in “use in commerce” (e.g., a printer’s proof of an advertisement for services);
• The specimen is altered/mutilated/unprintable or illegible;
• The specimen is merely advertising material for goods;
• The specimen is merely a picture or drawing of the mark;
• The specimen is an electronic display associated with the goods (15 U.S.C. §, a printed or web catalog, or web page display for goods), and fails to include ordering information or pricing;
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• The specimen is a non-electronic point of sale display and fails to show use of the mark in a display.
In an Office action addressing such specimen issues, the examining attorney must require a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20. The Office action must also indicate that pending a proper response to the requirement, registration is refused because applicant has not provided evidence of use of the applied-for mark in commerce. The statutory basis for refusal is 15 U.S.C. §§1051 and 1127.
If the applicant responds by submitting a substitute specimen, and the mark on the substitute specimen does not agree with the mark on the drawing, but the specimen would otherwise be acceptable to use in connection with the goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. See TMEP §807.12. If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal (assuming the application is otherwise in condition for final refusal), because the substitute specimen does not present a new issue. See TMEP §714.05. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark in commerce, remains the same.
904.07(b) Whether the Specimen Shows the Applied-for Mark Functioning as a Mark
The examining attorney must also evaluate the specimen to determine whether the applied-for mark is used in a way that shows that: (1) it identifies the goods/services of the applicant and distinguishes them from the goods/services of others; and (2) it indicates the source of those goods/services. If use on the specimen fails in either regard, the record lacks the requisite evidence that the applied-for mark functions as a mark. The following non-exhaustive list reflects examples where review of the specimen would indicate a failure to function as a mark:
• Applied-for mark is used solely as a trade name (TMEP §1202.01);
• Applied-for mark is mere ornamentation (TMEP §1202.03);
• Applied-for mark is merely informational matter (TMEP §§1202.04 and 1301.02(a));
• Applied-for mark identifies the name or pseudonym of a performing artist or author (TMEP §1202.09(a));
• Applied-for mark identifies a model number or grade designation (TMEP §1202.16);
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• Applied-for mark is merely a background design or shape and is not separable from the entire mark (TMEP §1202.11);
• Applied-for mark identifies a process, system, or method (TMEP §1301.02(e));
• Applied-for mark is used to refer to activities that are not considered “services” (TMEP §§1301.01 et seq.);
• Applied-for mark is used solely as a domain name (TMEP §1215.02);
• Applied-for mark is used solely to identify a character (TMEP §1301.02(b)).
If the deficiency in a specimen amounts to failure to demonstrate use of the subject matter as a trademark and/or service mark, the examining attorney must issue a refusal of registration on the ground that the subject matter does not function as a mark, in addition to requiring a substitute specimen. The statutory basis for refusal is 15 U.S.C. §§1051, 1052, and 1127 for trademarks, or 15 U.S.C. §§1051, 1052, 1053, and 1127 for service marks. See In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008). Generally, when initially refusing registration on the ground that the subject matter does not function as a mark, the examining attorney should advise the applicant that the refusal will be reconsidered if the applicant submits a substitute specimen showing proper use of the applied-for mark as a trademark or service mark and, if necessary, a supporting affidavit or declaration. See TMEP §904.05 regarding affidavits supporting new specimens.
If the applicant responds by submitting a substitute specimen, and the mark on the substitute specimen does not agree with the mark on the drawing, but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. See TMEP §807.12. If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal (assuming the application is otherwise in condition for final refusal), because the substitute specimen does not present a new issue. See TMEP §714.05. The underlying basis for refusal, i.e., that the applicant has not provided evidence of use of the applied-for mark as a trademark or service mark, remains the same.
See TMEP §§1202 et seq. regarding matter that does not function as a trademark, and TMEP §§1301.02 et seq. regarding matter that does not function as a service mark.
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905 Method of Use
The applicant is not required to specify the method or intended method of use of a mark. However, the examining attorney has the discretion under 37 C.F.R. §2.61(b) to inquire as to the method or intended method of use of the mark if this information is needed to properly examine the application. See TMEP §814. See also In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).
906 Federal Registration Notice
The owner of a mark registered in the United States Patent and Trademark USPTO may give notice that the mark is registered by displaying with the mark the words “Registered in United States Patent and Trademark Office,” the abbreviation “Reg. U.S. Pat. & Tm. Off.,” or the letter R enclosed within a circle, ®. 15 U.S.C. §1111.
The registration symbol should be used only on or in connection with the goods or services that are listed in the registration.
The federal registration symbol may not be used with marks that are not actually registered in the USPTO. Even if an application is pending, the registration symbol may not be used until the mark is registered.
Registration in a state of the United States does not entitle a person to use the federal registration notice. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964).
A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.
906.01 Foreign Countries That Use Registration Symbol ®
In addition to the United States, several countries recognize use of the symbol ® to designate registration. When a foreign applicant’s use of the symbol on the specimens is based on a registration in a foreign country, the use is appropriate.
The following foreign countries use the ® symbol to indicate that a mark is registered in their country:
• Belgium
• China (People’s Republic)
• Costa Rica
• Denmark
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• Ecuador
• Germany
• Guatemala
• Hungary
• Luxembourg
• Netherlands
• Nicaragua
• Poland
• Sweden
906.02 Improper Use of Registration Symbol
Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See TMEP §906.04. However, misunderstandings about use of federal registration symbols are more frequent than occurrences of actual fraudulent intent. Common reasons for improper use of the federal registration symbol that do not indicate fraud are:
• Mistake as to the requirements for giving notice (confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which must be given before publication by placing the notice © on material when it is first published);
• Inadvertence in not giving instructions (or adequate instructions) to the printer, or misunderstanding or voluntary action by the printer;
• The mistaken belief that registration in a state or foreign country gives a right to use the registration symbol (see Brown Shoe Co., Inc. v. Robbins, 90 USPQ2d 1752 (TTAB 2009); Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964));
• Registration of a portion of the mark (see Coca-Cola Co. v. Victor Syrup Corp., 218 F.2d 596, 104 USPQ 275 (C.C.P.A. 1954));
• Registration of the mark for other goods (see Duffy-Mott Co., Inc. v. Cumberland Packing Co., 424 F.2d 1095, 165 USPQ 422 (C.C.P.A. 1970), aff’g 154 USPQ 498 (TTAB 1967); Meditron Co. v. Meditronic, Inc., 137 USPQ 157 (TTAB 1963));
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• A recently expired or cancelled registration of the subject mark (see Rieser Co., Inc. v. Munsingwear, Inc., 128 USPQ 452 (TTAB 1961));
• Another mark to which the symbol relates on the same label (see S.C. Johnson & Son, Inc. v. Gold Seal Co., 90 USPQ 373 (Comm’r Pats. 1951)).
See also Sauquoit Paper Co., Inc. v. Weistock, 46 F.2d 586, 8 USPQ 349 (C.C.P.A. 1931); Dunleavy Co. v. Koeppel Metal Furniture Corp., 134 USPQ 450 (TTAB 1962), aff’d, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Radiant Mfg. Corp. v. Da-Lite Screen Co., 128 USPQ 132 (TTAB 1961); Tobacco By-Products & Chemical Corp. v. Smith, 106 USPQ 293 (Comm’r Pats. 1955), modified 243 F.2d 188, 113 USPQ 339 (C.C.P.A. 1957).
906.03 Informing Applicant of Apparent Improper Use
If a specimen in an application shows the federal registration symbol used with the mark that is the subject of the application, or with any portion of this mark, the examining attorney must determine from USPTO records whether or not such matter is registered. If it is not, and if the symbol does not appear to indicate registration in a foreign country (see TMEP §906.01), the examining attorney must point out to the applicant that the records of the USPTO do not show that the mark with which the symbol is used on the specimens is registered, and that the registration symbol may not be used until a mark is registered in the USPTO. The examining attorney should not require any explanation or comment from the applicant concerning the use of the symbol in relation to the mark.
906.04 Fraud
Improper use of the federal registration symbol, ®, that is deliberate and intends to deceive or mislead the public or the USPTO is fraud. See Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Associates, 20 USPQ2d 1156 (TTAB 1991).
The examining attorney may not issue a refusal of registration based on fraud. If it appears to the examining attorney that fraud on the USPTO has been committed, the examining attorney must follow the procedures outlined in TMEP §720.
907 Compliance with Other Statutes
37 C.F.R. §2.69. Compliance with other laws. When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining
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lawfulness of the commerce recited in the application.
Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. Under 37 C.F.R. §2.69, the USPTO may inquire about compliance with federal laws to confirm that the applicant’s use of the mark in commerce is lawful. However, the USPTO does not inquire whether use in commerce is lawful unless the record shows a clear violation of law, such as the sale or transportation of a controlled substance. The USPTO presumes that an applicant’s use of the mark in commerce is lawful.
The examining attorney must inquire about compliance with federal laws or refuse registration based on the absence of lawful use in commerce when a court or the responsible federal agency has issued a finding of noncompliance under the relevant statute or where there has been a per se violation of the relevant statute. Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045 (TTAB 1988); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984).
For the purpose of determining whether to issue an inquiry, the USPTO will not regard apparent technical violations, such as labeling irregularities on specimens, as violations. For example, if a package fails to show all required labeling information, the examining attorney should not take any action. Likewise, the USPTO does not routinely solicit information regarding label approval under the Federal Alcohol Administration Act or similar acts.
See TMEP §1205 regarding refusal of registration of matter that is protected by a statute or convention.
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Chapter 1000 Applications Under Section 44
1001 Section 44 Applications - General
1002 Eligible Applicants Under §44
1002.01 Eligible Applicants Under §44(e)
1002.02 Eligible Applicants Under §44(d)
1002.03 Establishing Entitlement Under a Treaty
1002.04 Establishing Country of Origin
1002.05 United States Applicants
1003 Section 44(d) - Priority Filing Date Based on a Foreign Application
1003.01 The “First-Filed” Requirement
1003.02 Priority Claim Must Be Filed Within Six Months of Foreign Filing
1003.03 Basis for Registration Required
1003.04 Suspension Awaiting a Foreign Registration
1003.04(a) Applications Based Solely on Section 44
1003.04(b) Multiple-Basis Applications
1003.04(c) Periodic Inquiries Issued as to Status of Foreign Application
1003.05 Section 44(d) and Priority for Publication
1003.06 Applicants May File Under Both §§44(d) and 44(e)
1003.07 Application May be Based on More Than One Foreign Application
1003.08 Abandonment of the Foreign Application
1004 Applications Based on Foreign Registrations under §44(e)
1004.01 Copy of Foreign Registration Required
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1004.01(a) Status of the Foreign Registration
1004.01(b) Translation of the Foreign Registration
1004.02 Application May be Based on More Than One Foreign Registration
1005 Ownership of the Foreign Application or Registration
1006 Assignment of §44 Applications
1007 Standards for Registration Under Section 44
1008 Bona Fide Intention to Use the Mark in Commerce
1009 Allegation of Use and Specimen of Use Not Required Prior to Registration
1010 Proof of Acquired Distinctiveness in §44 Applications
1011 Drawings
1011.01 Substantially Exact Representation of Mark in Foreign Registration
1011.02 One Mark Per Application
1011.03 Amendment of Drawing
1011.04 Drawings and Descriptions of Three-Dimensional and Non- Visual Marks
1012 Identification of Goods and Services
1013 Designation of Domestic Representative by Applicants Not Domiciled in the United States
1014 Section 44 Applications for the Supplemental Register
1015 Section 44 Registration Independent of Underlying Foreign Registration
1016 International Registration As Basis for §44 Application
1001 Section 44 Applications - General
The United States has assumed certain obligations from agreements adopted at the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to these agreements. The United States is also a member of the Inter-American Convention for Trademarks and Commercial
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Protection (also known as the “Pan-American Convention”), the Buenos Aires Convention for the Protection of Trade Marks and Commercial Names, the World Trade Organization, and certain other treaties and agreements. See TMEP §1002.03 and Appendix B of this Manual for additional information about treaties and international agreements.
Section 44 of the Trademark Act, 15 U.S.C. §1126, implements these agreements. Section 44 applications fall into two basic categories: (1) United States applications relying on foreign applications to secure a priority filing date in the United States under §44(d); and (2) United States applications relying on ownership of foreign registrations as a basis for registration in the United States under §44(e). See TMEP §§1003 et seq. regarding §44(d), and TMEP §§1004 et seq. regarding §44(e).
Section 44(d) of the Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration. See TMEP §1003.03.
An applicant may file an application based solely on §44, or may claim §44 in addition to §1(a) or §1(b) as a filing basis. An applicant who claims more than one basis must comply with all application requirements for each basis asserted. 37 C.F.R. §2.34. See TMEP §§806.02 et seq. regarding multiple- basis applications.
In an application based solely on §44, the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration. TMEP §1009.
In limited circumstances, applicants domiciled in the United States may be entitled to file under §44, if they meet the requirements of the Act. See TMEP §1002.05.
See TMEP Chapter 1900 regarding international registration under the Madrid Protocol.
1002 Eligible Applicants Under §44
1002.01 Eligible Applicants Under §44(e)
To be eligible for registration under §44(e), an applicant must meet the following requirements:
(1) The applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration, or must extend reciprocal registration rights to nationals of the United States (15 U.S.C. §1126(b)); and
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(2) The applicant must be the owner of a valid registration in the applicant’s country of origin (15 U.S.C. §1126(c) and (e)).
See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to a treaty or agreement, or provides reciprocal registration rights to United States nationals.
If an applicant does not meet the requirements listed above, the examining attorney must refuse registration under §44(e). The applicant may amend the application to claim §1(a) or §1(b) as a basis. See TMEP §§806.03 et seq. regarding amendment of the basis.
An applicant domiciled in the United States cannot obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant’s country of origin. See TMEP §1002.05.
See TMEP §§1004 et seq. for additional information about the requirements for registration under §44(e).
1002.02 Eligible Applicants Under §44(d)
To be eligible for a priority filing date under §44(d), an applicant must meet the following requirements:
(1) The applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to United States nationals; and
(2) The foreign application that is the basis for the priority claim must be filed in a country that either is a party to a treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights to priority to United States nationals.
15 U.S.C. §§1126(b) and (d).
See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides a right of priority to United States nationals.
If an applicant does not meet the requirements listed above, the examining attorney must advise the applicant that it is not entitled to priority. If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect an acceptable basis before the application can be approved for publication or registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for
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§44 applications and TMEP §§806.03 et seq. regarding amendment of the basis. The examining attorney must ensure that the priority claim is deleted from the TRAM database, and conduct a new search of the records of the United States Patent and Trademark Office (“USPTO”) for conflicting marks.
To obtain a priority filing date under §44(d), the foreign application does not have to be filed in the applicant’s country of origin. However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which the applicant relies for priority, the applicant must establish that the country in which the application was filed is its country of origin. TMEP §1002.01. Therefore, if the applicant files a §44(d) priority claim based on an application from a treaty country other than the country in which the applicant is domiciled, the examining attorney must advise the applicant that in order to rely on the registration issuing from the identified foreign application as its basis for registration, the applicant will be required to establish that the country where the foreign application was filed is its country of origin.
It is important to keep in mind that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. A party who files under §44(d) must establish a basis for registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03. For example, a French corporation may rely on a first-filed application in Canada for its priority claim under §44(d), regardless of whether Canada is the applicant’s country of origin. However, before the mark can be published for opposition in the United States, the French corporation must do one of the following: (1) establish Canada as its country of origin and rely on the prospective Canadian registration as its basis for registration in the United States (see TMEP §§1002.01 and 1002.04); (2) assert use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication in the United States; or (3) rely on a registration from France as its basis for registration in the United States.
An applicant domiciled or organized in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States. See TMEP §1002.05.
See TMEP §§1003 et seq. for additional information about the requirements for obtaining a priority filing date under §44.
1002.03 Establishing Entitlement Under a Treaty
In a §44 application, the examining attorney must confirm that: (1) both the applicant’s country of origin and the country where the applicant has filed the application or obtained registration are parties to a treaty or agreement with the United States (or that they extend reciprocal rights to United States nationals by law); and (2) the specific benefit that the applicant is claiming under §44 (i.e., the right to a priority filing date under §44(d) and/or the right
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to registration under §44(e)) is provided for under the treaty or agreement. See TMEP §§1002.01 and 1002.02.
To determine whether a particular country has a treaty with the United States that provides for the benefit that the applicant is claiming under §44, examining attorneys should consult Appendix B of this manual. Appendix B lists the members of the Paris Convention, Inter-American Convention, Buenos Aires Convention, World Trade Organization, European Union (“EU”), and certain countries entitled to reciprocal treatment under other international agreements, as well as websites where examining attorneys can obtain updated information about these treaties or agreements.
In a §44 application or an amendment adding or substituting §44 as a basis, an eligible applicant may rely on an application filed in or registration issued by certain common offices of several states. A “common office of several states” refers to an entity serving as the issuing office for trademark registrations for an established group of countries. Examples include the Benelux Trademark Office, servicing Belgium, The Netherlands, and Luxemburg; and the African Intellectual Property Organization (“OAPI”), which issues registrations covering all member states (i.e., Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo).
An applicant may also claim the benefits of §44 based on an application for or registration of a Community Trade Mark, if the applicant has a bona fide and effective industrial or commercial establishment in a country or state that is a member of the EU, formerly known as the European Community (EC) or European Economic Community (EEC). See Appendix B for a list of these countries.
If an eligible applicant filed an application or obtained a registration in a country that is a member of the Paris Convention, Inter-American Convention, World Trade Organization, or European Union, the applicant can claim the benefits of either §44(d) or §44(e), if the applicant meets the requirements of those sections. An eligible applicant may also file under either §44(e) or §44(d) based on an application filed or registration obtained in Taiwan. On the other hand, if the applicant filed an application or obtained a registration in a country that is a member of the Buenos Aires Convention, the applicant may seek registration under §44(e), but may not obtain a priority filing date under §44(d). See Appendix B for additional information.
In the case of agreements not covered in Appendix B, an applicant can establish its eligibility for the benefits of §44 by providing evidence of statutes or agreements establishing reciprocity between the United States and the relevant country. Examining attorneys may also consult sources such as Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2nd ed. 2008), available to
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USPTO employees in the Trademark Law Library, for information about the trademark laws of foreign countries. Additional resources are listed in Appendix B.
See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).
1002.04 Establishing Country of Origin
To obtain registration under §44(e), the applicant must be the owner of a valid registration from the applicant’s country of origin. TMEP §1002.01. To obtain a priority filing date under §44(d), the applicant’s country of origin must be a treaty country, but the foreign application that is the basis for the priority claim does not have to be filed in the applicant’s country of origin. TMEP §1002.02. An applicant domiciled or organized in the United States may be entitled to registration under §44(e) if the applicant can also claim a country of origin other than the United States. See TMEP §1002.05.
Section §44(c) of the Trademark Act defines the applicant’s country of origin as “the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national.” Under this definition, an applicant can have more than one country of origin.
If a §44 applicant is domiciled or incorporated in the relevant country, the examining attorney should presume that the country is the applicant’s country of origin, and should not issue any inquiry about the applicant’s country of origin.
If a §44(e) applicant is not domiciled or incorporated in the country that issued the foreign registration (or if a §44(d) applicant is not domiciled or incorporated in a treaty country), the examining attorney should require the applicant to establish that the country is its country of origin. Normally, a statement by the applicant or the applicant’s attorney that the applicant has a bona fide and effective industrial or commercial establishment in the relevant country will be sufficient to establish that the country is the applicant’s country of origin. This statement does not have to be verified. However, if any evidence in the record contradicts the applicant’s assertion that it has a bona fide and effective industrial or commercial establishment in the relevant country, the examining attorney should require the applicant to set forth the specific circumstances which establish that the applicant maintains a bona fide and effective industrial or commercial establishment in the country.
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Relevant factors include the presence of production facilities, business offices, and personnel.
The presence of an applicant’s wholly owned subsidiary in a country does not, by itself, establish country of origin. In re Aktiebolaget Electrolux, 182 USPQ 255 (TTAB 1974). The fact that the applicant is wholly owned by a foreign company does not establish country of origin. Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006).
The sale of goods or services outside the United States through related companies or licensees does not create a bona fide commercial establishment and thus does not establish country of origin. Karsten, supra. See also Ex parte Blum, 138 USPQ 316 (Comm’r Pats. 1963) (country of origin cannot be established by relying on contractual relationships with a licensee in another country).
The United States, by definition, is not a country that has a treaty with the United States. Therefore, the term “country of origin” in §§44(b) and (c) means some country other than the United States. In re Fisons Ltd., 197 USPQ 888 (TTAB 1978). See TMEP §1002.05.
See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).
1002.05 United States Applicants
Section 44(b) of the Trademark Act provides that, “Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section....”
Section 44(i) of the Act provides that “[c]itizens or residents of the United States shall have the same benefits as are granted by this section to persons granted by this section to persons described in subsection [44](b)....” However, §44(i) does not provide an independent basis for a United States applicant to register a mark under §44(e). In re Pony Int’l Inc., 1 USPQ2d 1076 (Comm’r Pats. 1986).
The United States, by definition, is not a country that has a treaty with the United States. Therefore, the term “country of origin” in §44(b) means some country other than the United States, and the term “person” in §44(b) means a person who can claim a country of origin other than the United States. In re Fisons Ltd., 197 USPQ 888 (TTAB 1978).
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An applicant domiciled in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States, even if the other country is not the applicant’s country of origin. See In re ETA Systems Inc., 2 USPQ2d 1367 (TTAB 1987), dec. withdrawn on other grounds (TTAB, November 28, 1988); In re International Barrier Corp., 231 USPQ 310 (TTAB 1986). See TMEP §1002.02.
However, an applicant domiciled in the United States may not obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant’s country of origin. See Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006); In re International Barrier Corp., supra; In re Fisons, supra. See TMEP §1002.01.
For example, a Texas corporation may assert a priority claim under §44(d) based on ownership of an application in Mexico, regardless of whether Mexico is its country of origin. However, this applicant must also assert a valid basis for registration (see TMEP §1003.03). The applicant may do so by asserting use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication. The applicant cannot obtain registration in the United States under §44(e) unless the applicant establishes that Mexico is one of its countries of origin.
See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides for priority and/or registration based on ownership of a foreign registration.
See also TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).
1003 Section 44(d) - Priority Filing Date Based on a Foreign Application
Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), provides for a priority filing date to eligible applicants (see TMEP §1002.02) who have filed an application in a treaty country as defined by §44(b) (see TMEP §1002.03). If an eligible applicant files the United States application claiming §44(d) priority within six months of filing the first application to register the mark in a treaty country, the filing date of the first-filed foreign application is the effective filing date of the United States application.
The requirements for receipt of a priority filing date under §44(d) are:
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(1) The eligible applicant must file a claim of priority within six months of the filing date of the first-filed foreign application. 15 U.S.C. §1126(d)(1); 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5); TMEP §§1003.01 and 1003.02.
(2) The applicant must: (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. 15 U.S.C. §1126(d); 37 C.F.R. §§2.34(a)(4)(i)(A) and (B).
(3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1126(d)(2). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application. 37 C.F.R. §2.34(a)(4)(ii).
(4) Both the non-United States applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to United States nationals. 15 U.S.C. §1126(b) and (d); TMEP §§1002.02, 1002.03 and 1002.04.
(5) The scope of the goods covered by the §44 basis cannot exceed the scope of the goods or services in the foreign application. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
(6) The applicant must specify the serial number of the foreign application. 37 C.F.R. §2.34(a)(4)(i)(A); Paris Convention Article 4(D)(5).
If the applicant is not domiciled in the United States, the applicant may designate a domestic representative, i.e., a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §1051(e); TMEP §610. This can be done through the Trademark Electronic Application System (“TEAS”), at http://www.uspto.gov/teas/index.html.
The priority filing date also constitutes a constructive date of first use in the United States under 15 U.S.C. §1057(c) (see TMEP §201.02), if the application matures into a registration. See SCM Corp. v. Langis Foods Ltd., 539 F.2d 196, 190 USPQ 288 (D.C. Cir. 1976).
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Section 44(d) of the Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration. See TMEP §1003.03.
In a §44(d) application, both the actual date the application was received in the USPTO and the priority date will appear in the TRAM database.
1003.01 The “First-Filed” Requirement
The application relied upon under §44(d) must be the applicant’s first application in a treaty country for the same mark and for the same goods or services. If the foreign country denominates an application in the foreign country as “An Application to Extend the Wares” or in some similar fashion, but the application is, in substance, the equivalent of a new application in the United States, the foreign application will be considered the first-filed for the purpose of meeting the requirements of §44(d) in the United States. However, the goods or services must be different from those covered by any previous application for the mark in a treaty country.
The §44(d) priority claim may be based upon a subsequently filed application in the same foreign country or common office of several states, if the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority.
The USPTO will presume that the application identified as the basis for the priority claim was the first filed, unless there is contradictory evidence in the record.
If the examining attorney determines that the application relied on was not the first filed, the examining attorney must advise the applicant that it is not entitled to priority. If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect a basis before the application can be approved for publication or for registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and TMEP §§806.03 et seq. regarding amendment of the basis. The examining attorney should ensure that the priority claim is deleted from the TRAM database, and should conduct a new search of USPTO records for conflicting marks.
1003.02 Priority Claim Must Be Filed Within Six Months of Foreign Filing
An applicant must file a claim of priority within six months after the filing date of the foreign application. 15 U.S.C. §1126(d)(1); 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5); Paris Convention Article 4(C)(3). The applicant can submit the priority claim after the filing date of the United States application, as long as it is within six months of the foreign filing.
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Example: If an eligible applicant files in France on December 6, 2009, and in the United States on January 12, 2010, the applicant can add a priority claim to the United States application on or before June 6, 2010, if the applicant meets the requirements of §44(d). The applicant cannot add a priority claim to the United States application after June 6, 2010.
If an applicant claims priority under §44(d), but does not specify the filing date of the foreign application, the examining attorney must require that the applicant specify the date of the foreign filing.
If the applicant submits a claim of priority more than six months after the date of the foreign filing, the examining attorney must advise the applicant that it is not entitled to priority. 15 U.S.C. §1126(d); 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5). If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect an acceptable basis before the application can be approved for publication or for registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and TMEP §§806.03 et seq. regarding amendment of the basis. The examining attorney should ensure that the priority claim is deleted from the TRAM database, and should conduct a new search of USPTO records for conflicting marks.
If the priority period ends on a Saturday, Sunday, or Federal holiday within the District of Columbia, the priority claim may be filed no later than the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia. Paris Convention Article 4(C)(3); 35 U.S.C. §21(b); 37 C.F.R. §2.196.
1003.03 Basis for Registration Required
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. §2.34(a)(4)(iii). If the applicant claims a §1(b) basis, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) before the mark can be registered. See TMEP §806.01(b) regarding the requirements for a §1(b) basis.
The USPTO will generally presume that the applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application relied on for priority) in an application that includes a proper claim of priority under §44(d). Unless the applicant specifically indicates that it is claiming more than one basis, the USPTO will presume that §44(e) is the only basis being asserted. See TMEP §1002.02 regarding applications that are entitled to a priority filing date under §44(d), but are not entitled to registration
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under §44(e), because the foreign application was filed in a treaty country that is not the applicant’s country of origin.
See TMEP §§1004 et seq. regarding the requirements for registration under §44(e).
A §44(d) applicant may not assert a basis under §66(a) of the Trademark Act, based on an extension of protection of an international registration to the United States. 37 C.F.R. §§2.34(b)(3) and 2.35(a).
1003.04 Suspension Awaiting a Foreign Registration
1003.04(a) Applications Based Solely on Section 44
In a §44(d) application, if a copy of the foreign registration has not been submitted at the time of filing in the United States, the examining attorney will require submission of a copy of the foreign registration before approving the United States application for publication or for registration on the Supplemental Register.
If, on initial examination of the application, there are no refusals, requirements, or prior pending applications, the examining attorney will suspend action on the application pending receipt of a copy of the foreign registration. The suspension notice must include a search clause (see TMEP §704.02).
If the examining attorney must issue any refusals or requirements, the initial Office action must include a requirement that the applicant submit the foreign registration when it becomes available. Depending upon the applicant’s response, the examining attorney will take appropriate action to place the application in condition for either approval or final action on all other issues, and will then suspend further action pending receipt of a copy of the foreign registration. In the notice of suspension, the examining attorney must reference any continued refusals or requirements. See TMEP §716.01.
1003.04(b) Multiple-Basis Applications
If an applicant properly claims §44(d) priority in addition to a §1 basis, the applicant may elect not to perfect the §44 basis, and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4). In this situation, before suspending the application pending receipt of a copy of the foreign registration, the examining attorney must inquire whether the applicant wishes to perfect §44 as a second basis for registration.
If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, the examining attorney may attempt to call or e-mail the applicant (if the applicant has authorized e-mail communications). If the applicant states that it wishes to perfect the
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§44 basis, the examining attorney must make a note in the “Notes-to-the-File” section of the record and suspend the application pending receipt of the foreign registration. If the applicant states that it does not wish to perfect the §44 basis, the examining attorney must issue an examiner’s amendment to this effect. If the examining attorney is unable to reach the applicant by telephone or e-mail, the examining attorney must make a note to the file indicating the unsuccessful attempt to contact the applicant and suspend action on the application pending receipt of the foreign registration.
If it is necessary to issue an Office action regarding any refusals or requirements, the examining attorney must inquire as to whether the applicant wishes to perfect §44 as a second basis for registration. If a response is filed and the application is otherwise in condition for publication or final action, but the response does not indicate whether the applicant intends to perfect the §44 basis, the examining attorney must suspend action on the application pending receipt of the foreign registration.
If, on initial examination, the only issue is a prior-pending application, the examining attorney must issue a suspension letter as to the prior-pending application only, without inquiring about the §44 basis. When the application is removed from suspension, either for issuance of a nonfinal action or approval for publication, the examining attorney must inquire at that time as to whether the applicant wishes to perfect the §44 basis.
1003.04(c) Periodic Inquiries Issued as to Status of Foreign Application
Examining attorneys must issue inquiries as to the status of the foreign application in applications that have been suspended for more than six months. See TMEP §716.05. If the applicant does not respond to this inquiry within six months of the issuance date, the application will be abandoned for failure to respond to an Office action.
If the applicant is unable to furnish a copy of the foreign registration before the expiration of time to respond to the inquiry, the applicant should advise the examining attorney of this fact. This may be done by telephone or e-mail. If the applicant states that the foreign registration has not yet issued, the examining attorney will issue a new notice of suspension.
If the applicant states that the foreign registration has issued, but fails to send a copy, the examining attorney must issue an Office action requiring a copy. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii).
To expedite processing, the USPTO recommends that the applicant’s response to a suspension inquiry be filed through TEAS, at http://www.uspto.gov/teas/index.html, using the Response to Suspension Inquiry or Letter of Suspension form.
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1003.05 Section 44(d) and Priority for Publication
To determine priority for publication under 37 C.F.R. §2.83, an application filed in the United States under §44(d) will be treated as if it were filed in the United States on the same date as the filing in the foreign country. The §44(d) application will receive priority over any application filed after the §44(d) applicant’s priority filing date that might otherwise be a possible bar to registration under §2(d) of the Trademark Act due to a likelihood of confusion. See TMEP §§1208 et seq. regarding conflicting marks in pending applications.
In some cases, another United States application filed after the §44(d) applicant’s priority date may proceed to publication or registration because the §44(d) applicant had not yet filed in the United States when the examining attorney searched USPTO records for conflicting marks. If the USPTO learns that a §44(d) application is entitled to priority over another pending application before the other mark registers, the USPTO will take appropriate action to give the §44(d) application the priority to which it is entitled.
If an examining attorney discovers a conflicting application entitled to priority under §44(d) after taking action in a case, the examining attorney should issue a supplemental action correcting the situation. If the mark has been published, the examining attorney must request jurisdiction before issuing the action, unless a notice of allowance has issued. See TMEP §§1504.01 and 1504.04(a) regarding the examining attorney’s jurisdiction.
However, if the conflicting mark has already registered, the USPTO does not have the authority to cancel the registration sua sponte. The §44(d) applicant must take action to enforce its priority rights, e.g., by filing a petition to cancel the registration with the Trademark Trial and Appeal Board.
1003.06 Applicants May File Under Both §§44(d) and 44(e)
In some cases, a §44 applicant may have already received, before filing in the USPTO, a foreign registration as a result of the same foreign application upon which the applicant relies for priority under §44(d). This may occur in countries that do not examine applications prior to registration. In this situation, the applicant may file under both §§44(d) and 44(e).
An applicant may also claim priority under §44(d) based upon a foreign application, and proceed to registration under §44(e) based upon a different foreign registration. Both foreign countries must be parties to a treaty or agreement with the United States and the foreign registration must be from a country of origin of the applicant. If the applicant amends an application to rely on a different foreign registration, this is considered a change in basis. See TMEP §§806.03 et seq. regarding amendments to add or substitute a basis.
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1003.07 Application May be Based on More Than One Foreign Application
An applicant may file an application in the United States based on more than one foreign application for different goods or services, or for different classes, if the applicant meets the requirements of §44(d) with respect to each foreign application on which the United States application is based. The applicant must specify which goods or services, or which classes, are covered by which foreign application. The mark in each foreign application must be the same mark for which registration is sought in the United States application.
1003.08 Abandonment of the Foreign Application
If the foreign application relied on under §44(d) is abandoned during the prosecution of the United States application, the applicant may amend the application to rely on another basis. See TMEP §§806.03 et seq. If the applicant met the requirements of §44(d) on the filing date of the United States application, the applicant will retain the priority filing date even if the foreign application is abandoned. 37 C.F.R. §2.35(b)(4).
In this situation, the USPTO will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date, unless there is contradictory evidence in the record. See 37 C.F.R. §2.35(b)(3) and TMEP §806.03(h).
1004 Applications Based on Foreign Registrations under §44(e)
If an eligible applicant (see TMEP §1002.01) owns a valid registration from the applicant’s country of origin, the applicant may base its United States application on that foreign registration under §44(e).
A §44(e) application must meet the following requirements:
(1) The applicant must be the owner of a valid registration in the applicant’s country of origin. 15 U.S.C. §§1126(c) and (e). See TMEP §§1002.01 and 1002.04 regarding country of origin.
(2) The applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration, or must extend reciprocal registration rights to nationals of the United States. 15 U.S.C. §1126(b). See TMEP §§1002.03, 1002.04, and 1002.05.
(3) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of
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origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.
(4) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1126(e). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant has had a bona fide intention to use the mark in commerce since the application filing date. 37 C.F.R. §2.34(a)(3)(i).
(5) The scope of the goods covered by the §44(e) basis cannot exceed the scope of the goods or services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
If the applicant is not domiciled in the United States, the applicant is encouraged to designate a domestic representative, i.e., a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §1051(e); TMEP §610. This can be done through TEAS, at http://www.uspto.gov/teas/index.html.
An applicant may not file an application under §44(e), or amend an application to add or substitute a §44(e) basis, before the registration in the applicant’s country of origin has issued. An applicant can file under §44(d) within six months after the filing date of an application in the applicant’s country of origin (see TMEP §§1003 et seq.). However, once this six-month priority period has passed, an applicant cannot file an application in the United States based on a pending foreign application.
1004.01 Copy of Foreign Registration Required
Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e), requires “a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant.” If a copy of the foreign registration is not included with the application as filed, the examining attorney must require submission of a copy of the foreign registration in the first Office action. The copy must show the name of the owner, the mark, and the goods or services for which the mark is registered.
If the applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. A photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect, unless accompanied by a certification from the issuing office.
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An English translation of a registration from the country of origin by itself is not an acceptable “copy” of the foreign registration. A certification or copy of the registration as issued by the intellectual property office of the country of origin is required, along with an English translation. 37 C.F.R. §2.34(a)(3)(ii). See TMEP §1004.01(b) regarding translation of foreign registrations.
If an applicant files more than one application in the United States based on the same foreign registration, the applicant must file a copy of the foreign registration (and its English translation, if applicable), in each of the United States applications. 37 C.F.R. §2.193(a).
In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). However, the examining attorney may suspend the application pending receipt of proof of renewal of the foreign registration (see TMEP §1004.01(a)).
1004.01(a) Status of the Foreign Registration
The foreign registration must be in force at the time the United States issues the registration based on that foreign registration. In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784 (TTAB 2003); Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792 (TTAB 1993); Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36 (TTAB 1986), recon denied 1 USPQ2d 1304 (TTAB 1986). Appendix B of this manual lists the terms of registration in various foreign countries.
If the record indicates that the foreign registration will expire before the United States registration will issue, the examining attorney must require that an applicant submit a certificate of renewal or other certification from the intellectual property office of the foreign country, or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States. 37 C.F.R. §2.34(a)(3)(iii). Generally, the examining attorney should require proof of renewal if it appears that the foreign registration will expire within six months after the date of approval for publication.
If the applicant states that renewal is pending in the foreign country, the examining attorney should suspend the application pending receipt of proof of renewal. A photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the registration has been renewed in that country and is in full force and effect, unless accompanied by a certification from the issuing office.
If an applicant submits a certified copy or certification of the foreign registration that is certified by the foreign government agency who issued the foreign registration, the examining attorney should inquire concerning renewal
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only if the certified copy of the foreign registration indicates that the registration will expire after the date on which the foreign government agency issued the certified copy or certification of the foreign registration. For example, if a certified copy of a foreign registration was issued by the trademark agency in the foreign country on January 5, 2009, and the certified copy indicates that the registration expired on June 1, 2008, no inquiry is necessary. The USPTO presumes that the foreign country would not have issued a certified copy of the registration unless the registration had been renewed. This applies only to a certified copy or certification issued by the foreign trademark agency. If the copy of the registration is not certified by the foreign trademark agency, and the record indicates that the foreign registration will expire before the United States registration will issue, the examining attorney must require that the applicant submit a copy of the foreign registration showing that that the registration has been renewed.
If the examining attorney determines that the foreign registration is not in force, the examining attorney will refuse registration under §44(e). The applicant may amend the application to claim another basis. See TMEP §§806.03 et seq. regarding amendments to the basis.
For information about recent changes in the term of registration in a foreign country, examining attorneys may consult resources such as Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2nd ed. 2008), available to USPTO employees in the Trademark Law Library. Additional resources are listed in Appendix B.
1004.01(b) Translation of the Foreign Registration
If the foreign registration is not in English, the applicant must provide a translation. 37 C.F.R. §2.34(a)(3)(ii). The translator should sign the translation, but does not have to swear to the translation.
1004.02 Application May be Based on More Than One Foreign Registration
A United States application may be based on more than one foreign registration. The applicant must meet all requirements of the Trademark Act and rules for each foreign registration upon which the United States application is based, and must specify which goods/services are covered by which foreign registration.
If a §44 applicant amends an application to rely on a different foreign registration, this is considered a change in basis. See TMEP §§806.03 et seq. regarding amendments to add or substitute a basis.
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1005 Ownership of the Foreign Application or Registration
Section 44 Claimed in Original Application
If an applicant claims §44 as the filing basis in the original United States application, or if the applicant omits the basis from the original United States application and subsequently claims §44 as the basis, the applicant must be the owner of the foreign application or registration on the filing date of the United States application. See In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991). If the foreign application or registration identifies a party other than the §44 applicant as the owner, the examining attorney must require the applicant to establish that the applicant was the owner of the foreign application or registration on the date of filing in the United States.
Proof of ownership may consist of a copy of an assignment document recorded in the foreign country, or a statement from the agency administering the trademark register in the foreign country establishing that the applicant was the owner of the foreign application or registration as of the United States application filing date. Other forms of proof may also be acceptable. If the transfer of ownership took place before the United States application filing date, the §44 basis will be considered valid, even if the change in ownership was not yet recorded in the foreign country on the United States application filing date.
If the applicant was not the owner of the foreign application or registration on the United States application filing date, the examining attorney must refuse registration under §44. The applicant may amend the application to claim §1(a) or §1(b) as a basis. See TMEP §§806.03 et seq. regarding amendment of the basis.
If a §44(d) applicant was not the owner of the foreign application on the United States application filing date, the examining attorney should advise the applicant that it is not entitled to priority, ensure that the priority claim is deleted from the TRAM database, and conduct a new search of USPTO records for conflicting marks. TMEP §1002.02.
Section 44 Added to or Substituted for Valid Section 1 Basis
If an application is properly filed based on §1(a) or §1(b), and the applicant later amends the application to add or substitute §44 as a basis, the applicant must be the owner of the foreign application or registration as of the filing date of the amendment adding or substituting §44 as a basis for registration. See TMEP §§806.03 et seq. regarding amendments to change the basis.
If the applicant owned the foreign application or registration on the filing date of the amendment, but did not own the foreign application or registration on the filing date of the United States application, the applicant will retain the original filing date in the United States, as long as there was a continuing
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valid basis since the application filing date. 37 C.F.R. §2.35(b)(3); TMEP §806.03(h).
If the foreign application or registration identifies a party other than the §44 applicant as the owner, the examining attorney will require the applicant to establish that the applicant was the owner of the foreign application or registration on the filing date of the amendment adding or substituting §44 as a basis. If the applicant was not the owner of the foreign application or registration on the filing date of the amendment, the examining attorney must refuse registration under §44.
See TMEP §1006 regarding assignment of §44 applications.
1006 Assignment of §44 Applications
A §44 applicant may assign the foreign application or registration and/or the United States application from the original applicant to another party.
Assignee Must Be Eligible for the Benefits of §44
In order to continue to claim the benefits of §44 after such an assignment, the assignee of the United States application must be eligible for the benefits of §44. Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006); Nestle Co., Inc. v. Grenadier Chocolate Co., Ltd., 212 USPQ 214 (TTAB 1981); In re Fisons Ltd., 197 USPQ 888 (TTAB 1978). See TMEP §1002.01 regarding applicants eligible for registration under §44(e), and TMEP §1002.02 regarding applicants eligible for a priority filing date under §44(d).
To be eligible for registration under §44(e), the assignee must establish that the country that issued the relevant registration is the assignee’s country of origin. TMEP §§1002.01 and 1002.04. See also TMEP §1004 regarding the requirements for registration under §44(e).
To be eligible for a priority filing date under §44(d), any non-United States assignee must establish that the assignee’s country of origin is a party to an international treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights of priority to United States nationals. See TMEP §§1002.02, 1002.03, and 1002.04. See also TMEP §1003.
In an application based solely on §44, if the assignee is not entitled to registration under §44(e), the examining attorney must refuse registration under that basis. The applicant may amend the application to claim §1(a) or §1(b) as a basis. In Karsten, supra, the Board held that the assignment of a properly filed §44 application to a party who is not eligible to claim the benefits of §44 does not render the application void, as long as there is a continuing valid basis for registration. See TMEP §§806.03 et seq. regarding amendment of the basis.
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In a §44(d) application, if the assignee is not eligible for a priority filing date (i.e., a non-United States applicant whose country of origin is not a party to any convention or treaty as outlined in §44(b)), the examining attorney must advise the assignee that it is not entitled to priority, ensure that the priority claim is deleted from the TRAM database, and conduct a new search of USPTO records for conflicting marks. TMEP §1002.02.
Assignee Does Not Have To Be the Owner of the Underlying Foreign Application or Registration
The Trademark Act requires that an applicant own the underlying application or registration at the time of filing in the United States (or as of the filing date of the amendment adding or substituting §44 as a basis, for an application originally based on §1(a) or §1(b), and later amended to add or substitute §44 as a basis). TMEP §1005. However, if the applicant was the owner of the foreign application or registration on the filing date of the United States application (or amendment adding or substituting §44 as a basis), the applicant may assign the United States application to another party without assigning the underlying foreign application or registration to that party. In re De Luxe N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993). Therefore, examining attorneys should not require proof of assignment of the underlying foreign application or registration when an applicant assigns the United States application.
Designation of Domestic Representative Encouraged
If the United States application is assigned to a party who is not domiciled in the United States, the assignee may file an appointment of a domestic representative with the assignment of the United States application. 15 U.S.C. §1060(b); 37 C.F.R. §3.61. See TMEP §610. The USPTO encourages parties who do not reside in the United States to designate domestic representatives. This can be done through TEAS, at http://www.uspto.gov/teas/index.html.
1007 Standards for Registration Under Section 44
Although §44 exempts eligible applicants from the use requirements of §1 of the Trademark Act, §44 applicants must meet all other requirements for registration set forth in the Trademark Act and relevant rules. Registration in a foreign country does not automatically ensure eligibility for registration in the United States. In re Rath, 402 F.3d 1207, 1214, 74 USPQ2d 1174, 1179 (Fed. Cir. 2005) ("[I]t is impossible to read section 44(e) to require the registration of foreign marks that fail to meet United States requirements for eligibility. Section 44 applications are subject to the section 2 bars to registration..."); In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); Order Sons of Italy in America v. Marofa S.A., 38 USPQ2d 1602 (TTAB 1996).
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The foreign registration that is the basis for the United States application may include disclaimers or may be on a secondary register, equivalent to the Supplemental Register. The United States application will be reviewed according to the standards for registrability in the United States, and the examining attorney will not require a disclaimer, amendment to the Supplemental Register, or any other amendment unless it is required under United States law and USPTO policy.
See TMEP §1306.08 regarding the registration of certification marks under §44.
1008 Bona Fide Intention to Use the Mark in Commerce
Any application filed under §44(d) or §44(e) on either the Principal or the Supplemental Register must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. See TMEP §1101 for additional information about this requirement. If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant has had a bona fide intention to use the mark in commerce since the application filing date. 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii).
The allegation of the applicant’s bona fide intention to use the mark in commerce is required even if use in commerce is asserted in the application. In re Paul Wurth, S.A., 21 USPQ2d 1631 (Comm’r Pats. 1991). See also In re Unisearch Ltd., 21 USPQ2d 1559 (Comm’r Pats. 1991) (requirement for verified statement of bona fide intent to use the mark in commerce held not contrary to Paris Convention).
1009 Allegation of Use and Specimen of Use Not Required Prior to Registration
Although §44 applicants must assert a bona fide intention to use the mark in commerce, §44 applicants do not have to allege use or provide specimens or dates of use prior to registration on either the Principal or Supplemental Register in an application based solely on §44. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). However, if a §44 applicant wishes to assert use in commerce under §1(a) or a bona fide intention to use the mark in commerce under §1(b) as an additional basis, then the applicant must comply with all applicable requirements related to the second basis asserted.
If the applicant provides specimens gratuitously in a §44 application, the examining attorney may refer to the specimens to determine issues unrelated to use, such as whether the mark is merely descriptive.
When the §44 application, as submitted, raises questions concerning the registrability of the mark, the examining attorney may request an explanation,
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information, literature, or other materials to assist in consideration of the application. 37 C.F.R. §2.61(b); TMEP §814.
1010 Proof of Acquired Distinctiveness in §44 Applications
A §44 applicant may assert that a mark has acquired distinctiveness under 15 U.S.C. §1052(f) if the applicant establishes that the mark has become distinctive of its goods or services in commerce in the same manner that any other applicant must. For these purposes, the applicant may not rely on use other than use in commerce that may be regulated by the United States Congress, that is, the applicant may not rely on use solely in a foreign country or between two foreign countries. See TMEP §1212.08 and cases cited therein for further information about claims of acquired distinctiveness in §44 applications.
1011 Drawings
Applicants filing under §44 must comply with the drawing requirements of 37 C.F.R. §§2.51 through 2.54. See TMEP §§807 et seq. regarding drawings.
1011.01 Substantially Exact Representation of Mark in Foreign Registration
The drawing of the mark must be “a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the country of origin of the applicant.” 37 C.F.R. §2.51(c); TMEP §807.12(b).
The “substantially exact representation” standard is construed narrowly. Only slight, inconsequential variations between the mark in the United States application and the mark shown in the foreign registration are permitted. In re Hacot-Colombier, 105 F.3d 616, 618, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995); United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1484 (TTAB 1988). For example, non-material informational matter such as net weight or contents may be deleted. Beyond such limited exceptions, however, any difference between the mark on the drawing and the mark in the foreign registration requires the examining attorney to refuse registration. In re Hacot-Colombier, 105 F.3d at 619, 41 USPQ2d at 1525.
The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act. In United Rum Merchants, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44 applications represent an exception to the use requirements of the Act,
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and that this exception should be construed narrowly to ensure that a foreign applicant cannot obtain a registration in the United States of matter that could not have been registered in the foreign country. 9 USPQ2d at 1483-84.
If the mark in the foreign registration is in standard characters, the mark in the United States application must also be in standard characters. If the foreign registration certificate does not indicate that the mark is in standard characters (or the legal equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters. The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the United States application. See TMEP §807.03(f) for further information. See also Appendix E, which lists countries that register marks in standard characters or the equivalent.
Likewise, if the mark in the foreign registration is in special form, the drawing of the mark in the United States application must appear in the same special form. If the mark in the foreign registration shows color, the applicant must submit a color photocopy of the foreign registration. All claims of color made in the foreign registration must also be made in the United States application. The applicant must also comply with all requirements for a color drawing of the mark. See 37 C.F.R. §2.52(b)(1) and TMEP §§807.07 et seq. regarding the requirements for claiming color.
If the foreign registration is not issued in color, the examining attorney may require evidence to establish that a colored mark in a United States application is a substantially exact representation of the mark in the foreign registration.
If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes a claim of color(s) as a feature of the mark. The applicant must either: (1) submit an affirmative statement that color is claimed as a feature of the mark in the foreign registration; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration. If the examining attorney determines that the color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing. See TMEP §807.07(b).
The mark on the drawing in the United States application may not be a translation or transliteration of the mark in the foreign registration.
If the United States application is based on both a foreign registration and use in commerce, the mark on the drawing in the United States application must not only be a substantially exact representation of the mark in the foreign
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registration, but also may not differ in a material way from the mark shown on the specimen(s) of record. See TMEP §§807.12(b) and 807.14 et seq.
1011.02 One Mark Per Application
If the foreign application or registration covers a series of distinct marks, the applicant must file separate applications in the United States to register each of the marks the applicant wishes to register in the United States. For example, some countries permit registration of several versions of a mark in a single application. In the United States, separate applications are required. The drawing in the United States application must show only one mark. 37 C.F.R. §2.52; TMEP §807.01.
1011.03 Amendment of Drawing
Section 44 applicants often try to amend the mark in the United States application to overcome an objection that the mark in the drawing does not agree with the mark in the foreign registration. Amendments to drawings in §44 applications are governed by 37 C.F.R. §2.72(c). An applicant cannot amend the drawing in the United States application to conform to the mark in the foreign registration if the amendment would result in a material alteration of the mark on the drawing submitted with the original application in the United States. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989). Thus, when a §44 applicant proposes to amend its drawing, the examining attorney must consider: (1) whether the proposed amendment of the drawing would result in a material alteration of the mark on the original drawing; and (2) whether the proposed amendment would result in a mark that is a substantially exact representation of the mark in the foreign registration. In In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995), the Trademark Trial and Appeal Board held that the mark “GRAN VINO MALAGA LARIOS” and design on the drawing originally filed with the United States application was not a substantially exact representation of the mark “VINO DE MALAGA LARIOS” with a similar design in the foreign registration; however, the Board found that amendment of the drawing to conform to the foreign registration was not a material alteration within the meaning of 37 C.F.R. §2.72. The Board noted that “[t]he material alteration test ... is not quite as rigorous as the substantially exact representation standard and thus allows for a bit more leeway or flexibility with respect to ... amendment of the drawing....” 35 USPQ2d at 1217. See TMEP §§807.14 et seq. regarding material alteration.
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1011.04 Drawings and Descriptions of Three-Dimensional and Non-Visual Marks
If the foreign application or registration depicts several views of a three- dimensional mark, the examining attorney must require the applicant to comply with 37 C.F.R. §2.52(b)(2), and submit an acceptable drawing that depicts a single rendition of the mark. See generally TMEP §§807 et seq. regarding drawings. In the alternative, the applicant may petition the Director, pursuant to 37 C.F.R. §2.146(a)(5), to waive the requirement and accept a drawing featuring multiple views of the mark. See TMEP Chapter 1700 regarding petitions to the Director.
In all such cases, the applicant must indicate that the mark is three- dimensional. 37 C.F.R. §2.52(b)(2); TMEP §807.10. 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 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 a written description of the mark and explain the purpose of the broken lines, e.g., by indicating that the matter shown by the broken lines is not a part of the mark and that it serves only to show the position of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08.
With respect to sound, scent, and other non-visual marks, an applicant is not required to submit a drawing, but must submit a detailed description of the mark. TMEP §807.09. If the foreign registration includes a drawing, such as a musical staff depicting the notes of which a sound mark is comprised, the United States application need not include such a drawing. As the drawing of the mark must be a substantially exact representation of the mark in the foreign registration, and the description of the mark defines the mark sought to be registered in a non-visual mark, the description of the mark in the United States application must be substantially comparable to any description of the mark in the foreign application or registration. 37 C.F.R. §§2.51(c) and 2.52(e).
1012 Identification of Goods and Services
The identification of goods and services in a §44 application must comply with the same standards that govern other applications.
If the United States application is based on §44, the identification of goods and services covered by the §44 basis may not exceed the scope of the goods and services identified in the foreign registration. 37 C.F.R. §2.32(a)(6). See Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Löwenbräu München, 175 USPQ 178 (TTAB 1972).
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See TMEP §1402.01(b) for more information about the identification of goods or services in a §44 application.
1013 Designation of Domestic Representative by Applicants Not Domiciled in the United States
An applicant not domiciled in the United States may file a document designating the name and address of a person residing in the United States upon whom notices or process in proceedings affecting the mark may be served. 15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §610. The USPTO encourages parties who do not reside in the United States to designate domestic representatives. This can be done through TEAS, at http://www.uspto.gov/teas/index.html.
1014 Section 44 Applications for the Supplemental Register
A §44 applicant may apply to register a mark on the Supplemental Register, and a §44 applicant may amend an application from the Principal Register to the Supplemental Register without filing any allegation of use. It is not necessary to change the application filing date after an amendment to the Supplemental Register in a §44 application. See TMEP §1008 regarding the requirement for an allegation of the applicant’s bona fide intention to use the mark in commerce in a §44 application.
1015 Section 44 Registration Independent of Underlying Foreign Registration
Once issued, the United States registration issuing from a §44 application exists independent of the underlying foreign registration and is subject to all provisions of the Trademark Act that apply to all other registrations, such as affidavits of use, renewals, amendments under 15 U.S.C. §1057(e), assignments, and similar matters. 15 U.S.C. §1126(f). See Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Exxon Corp. v. Oxon Italia S.p.A., 219 USPQ 907 (TTAB 1982); Reynolds Televator Corp. v. Pfeffer, 173 USPQ 437 (TTAB 1972); Sinclair v. Deb Chemical Proprietaries Ltd., 137 USPQ 161 (TTAB 1963).
1016 International Registration As Basis for §44 Application
An international registration issued by the International Bureau of the World Intellectual Property Organization (“IB”) can be the basis for a §44(e) application only if the international registration shows that there is an extension of protection of the international registration to applicant’s country of origin. See TMEP Chapter 1900 regarding international registration. A request for an extension of protection of the international registration to applicant’s country of origin is not sufficient.
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An applicant should submit a copy of the registration (or certificate of extension of protection) issued by the national trademark office in the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii). If the applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration, showing that protection of the international registration has been extended to applicant’s country of origin. A copy of a request for an extension of protection of the international registration to applicant’s country of origin is not sufficient.
If the applicant is not domiciled or incorporated in the relevant country, examining attorney must require the applicant to establish that the country is its country of origin. See TMEP §1002.04.
The applicant must meet all the requirements of the Trademark Act and the Trademark Rules of Practice for §44(e) applications. The requirements for §66(a) applications are not applicable.
The identification of goods/services covered by the §44(e) basis may not exceed the scope of the goods/services identified in the registered extension of protection in the applicant’s country of origin. 37 C.F.R. §2.32(a)(6); TMEP §1012.
An extension of protection of an international registration cannot be the basis for a §44(d) application, because neither the international application nor the request for extension of protection is the first application filed in a treaty country for the same mark for the same goods or services. 15 U.S.C. §1126(d); 37 C.F.R. §§2.34(a)(4)(i)(A) and (B); TMEP §1003.01. The basic application or basic registration upon which the international registration is based was the first-filed application.
If an applicant wants to base a §44(e) application on the basic registration that was the basis for the international registration, the applicant must submit a copy of the basic registration issued by the Office of Origin, i.e., the country or intergovernmental organization who issued the registration which provided the basis for the international registration (see TMEP §1901 regarding the Office of Origin). The applicant cannot submit the international registration, because an international registration does not provide protection in the territory of the Contracting Party whose office is the Office of Origin. Madrid Protocol Article 3bis.
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Chapter 1100 — Intent-to-Use Applications and Requests to Divide
1101 Bona Fide Intention To Use the Mark In Commerce
1102 Initial Examination of Intent-to-Use Applications
1102.01 Substantive Refusals
1102.02 Drawings
1102.03 Intent-to-Use Applications and the Supplemental Register
1102.04 Claims of Acquired Distinctiveness under §2(f)
1103 Allegations of Use
1104 Amendment to Allege Use Under §1(c) of the Act
1104.01 Minimum Filing Requirements for an Amendment to Allege Use
1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements
1104.01(b) Processing an Amendment to Allege Use That Does Not Meet Minimum Filing Requirements
1104.01(c) Processing Defective Amendment to Allege Use Filed With Other Amendments
1104.02 Form of Amendment to Allege Use
1104.03 Time for Filing Amendment to Allege Use
1104.03(a) Use on All Goods/Services Required Before Filing
1104.03(b) The “Blackout Period”
1104.03(c) Processing Amendment to Allege Use Filed During the Blackout Period
1104.04 Processing Timely Amendment to Allege Use Located After Publication
1104.05 Amendment to Allege Use Filed in Conjunction With Application
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1104.06 Processing Amendment to Allege Use Received Before Application is Assigned to an Examining Attorney
1104.07 Amendments to Allege Use and Ex Parte Appeals
1104.08 Requirements for a Complete Amendment to Allege Use
1104.09 Examination of Amendment to Allege Use by Examining Attorney
1104.09(a) Ownership
1104.09(b) Verification and Date of Execution
1104.09(c) Identification of Goods/Services
1104.09(d) Use in Commerce and Dates of Use
1104.09(e) Specimen
1104.09(f) Drawing
1104.09(g) Fees
1104.09(h) Issuance of Actions by Examining Attorney Related to the Amendment to Allege Use
1104.10 Amendment and Withdrawal of Amendment to Allege Use
1104.11 Approval of Amendment to Allege Use After Examination
1105 Publication of Intent-to-Use Applications for Opposition
1106 Notice of Allowance
1106.01 Issuance of the Notice of Allowance
1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance
1106.03 Cancellation of Notice of Allowance
1106.04 Correction of Errors in Notice of Allowance
1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use
1107.01 Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is Filed
1108 Requests for Extensions of Time to File the Statement of Use
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1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use
1108.02 Requirements for Request for an Extension of Time to File a Statement of Use
1108.02(a) Ownership
1108.02(b) Verification
1108.02(c) Filing Fees
1108.02(d) Identification of Goods/Services
1108.02(e) Bona Fide Intention to Use the Mark in Commerce
1108.02(f) Good Cause Required for Extensions Beyond the First Six-Month Extension
1108.03 Only One Extension Request May Be Filed With or After a Statement of Use
1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney
1108.04 Recourse After Denial of Extension Request
1108.05 Petitions From Denial of Request For An Extension of Time to File a Statement of Use
1109 Statement of Use Under §1(d) of the Trademark Act
1109.01 Minimum Filing Requirements for a Statement of Use
1109.02 Review for Compliance with Minimum Filing Requirements
1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements
1109.03 Use on All Goods/Services Required Before Filing
1109.04 Time for Filing Statement of Use
1109.05 Form of Statement of Use
1109.06 Requirements For a Complete Statement of Use
1109.07 Examination of the Statement of Use — In General
1109.08 Examination of the Statement of Use – New Requirements and Refusals
1109.09 Use in Commerce
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1109.09(a) Dates of Use
1109.09(b) Specimens
1109.10 Ownership
1109.11 Verification and Execution
1109.11(a) Authority of Signatory
1109.11(b) Verification of Essential Elements
1109.11(c) Date of Execution
1109.11(d) Signature of Electronically Transmitted Statement of Use
1109.12 Drawing
1109.13 Identification of Goods/Services in Statement of Use
1109.14 Classification
1109.15 Filing Fees
1109.15(a) Processing Deficient Fees
1109.16 Correcting Defects in Statement of Use
1109.16(a) Statutory Requirements That Must Be Met Within Statutory Filing Period
1109.16(b) Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Requirements
1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements
1109.16(d) Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use
1109.16(e) Applicant’s Recourse After Refusal of Registration
1109.17 Withdrawal of the Statement of Use Prohibited
1109.18 Approval of the Statement of Use
1110 Request to Divide an Application
1110.01 Application May be Divided
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1110.02 Fees for Filing Request to Divide
1110.03 Time for Filing Request to Divide
1110.04 Form and Processing of Request to Divide
1110.05 Outstanding Time Periods Apply to Newly Created Applications
1110.06 Signature of Request to Divide
1110.07 Dividing an Application When Statement of Use is Due
1110.08 Dividing an Application When Response to Office Action is Due
1110.09 Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board
1110.10 Dividing a §44 Application
1110.11 Dividing a §66(a) Application
1110.11(a) Dividing a §66(a) Application After Change of Ownership With Respect to Some But Not All of the Goods/Services
1110.12 Division of Registrations
1101 Bona Fide Intention To Use the Mark In Commerce
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an applicant may file an application based on a bona fide intention to use a mark in commerce “under circumstances showing the good faith of such person.”
A verified statement of the applicant’s bona fide intention to use the mark in commerce must be included in intent-to-use (“ITU”) applications under §1(b), and in applications under §§44 and 66(a), 15 U.S.C. §§1126 and 1141f(a). See TMEP §1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.
If the verification is not filed with the initial application, the verified statement must also allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii). See TMEP §§804 et seq. regarding verifications.
A verified statement of the applicant’s continued bona fide intention to use the mark in commerce must also be included in a request for an extension of time
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to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3) and (b)(3); TMEP §§1108.02 and 1108.02(e).
Reasonable variations in the wording of the statement may be acceptable. For example, the applicant may state that it has “a bona fide intention to use in commerce the mark on or in connection with...,” or may use the words “good faith” instead of “bona fide.” However, the wording “in commerce” is required and cannot be varied. In re Custom Technologies Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991); In re B.E.L.-Tronics Ltd., 24 USPQ2d 1397 (Comm’r Pats. 1992).
See TMEP §1201.03(a) regarding an assertion by an intent-to-use applicant of a bona fide intention to use the mark in commerce through a related company.
See TMEP §1008 regarding the requirement for an allegation of a bona fide intention to use the mark in commerce in an application filed under §44 of the Trademark Act.
The USPTO will not evaluate the good faith of an applicant in the ex parte examination of applications. Generally, the applicant’s sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context. Consideration of issues related to good faith may arise in an inter partes proceeding, but the USPTO will not make an inquiry in an ex parte proceeding unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce.
1102 Initial Examination of Intent-to-Use Applications
In an intent-to-use application, the examining attorney will potentially examine the application twice: first, when it is initially filed based on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b), and second, when the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). See TMEP §§1104 et seq. regarding amendments to allege use and TMEP §§1109 et seq. regarding statements of use. After receipt of the application, the examining attorney will initially examine the application to determine whether the mark is eligible for registration but for the lack of evidence of use. If the mark is determined to be eligible, the mark will be approved for publication and then published for opposition. If the applicant has not submitted an amendment to allege use before approval for publication, and the application is not successfully opposed, the USPTO will issue a notice of allowance. 15 U.S.C. §1063(b); 37 C.F.R. §2.81. See TMEP §§1106 et seq. regarding notices of allowance. In such a case, the applicant must submit a statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88.
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An intent-to-use application is subject to the same requirements and examination procedures as other applications, except as specifically noted. The examining attorney must raise all possible refusals and requirements in initial examination.
1102.01 Substantive Refusals
To the fullest extent possible, the examining attorney will examine an intent- to-use application for registrability under Trademark Act §§1, 2(a), 2(b), 2(c), 2(d), and 2(e), 15 U.S.C. §§1051 and 1052(a), (b), (c), (d), and (e), according to the same procedures and standards that apply to any other application. That is, the examining attorney must make all appropriate refusals and/or requirements with respect to issues such as ownership, deceptiveness, likelihood of confusion, mere descriptiveness, geographic significance, and surname significance. In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997); In re American Psychological Ass’n, 39 USPQ2d 1467 (Comm’r Pats. 1996).
The examining attorney should not issue a requirement or refusal under these sections during examination of the statement of use if the issue could or should have been raised during initial examination, unless the failure to issue the refusal or requirement would be a clear error. See TMEP §§706.01 and 1109.08.
Where a significant length of time has elapsed since the initial examination, a mark may have become descriptive or even generic as applied to the goods/services. In such a case, since the evidence of the descriptive or generic use would not have been available during initial examination, the requirement or refusal must be issued during second examination.
The examining attorney should investigate all possible issues regarding registrability through all available sources. If appropriate, the examining attorney may require that the applicant provide literature or an explanation concerning the intended manner of use of the mark, or the meaning of the mark in relation to the goods/services, under 37 C.F.R. §2.61(b). See TMEP §814; In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003); In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).
The examining attorney should also search applicant’s own website to see if it provides information about the goods/services. See TMEP §710.01(b); In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (the Board rejected applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent-to-use and no specimens were yet required, and stated that “[t]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession.”).
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While the examining attorney must examine and act on all possible issues in the initial examination of the application, requirements or refusals specifically tied to use of the mark (e.g., ornamentation) should generally be addressed after the applicant submits an allegation of use and a specimen showing use of the mark in commerce. See TMEP §§1202 et seq. regarding use as a mark. However, an examining attorney may review a §1(b) application for which no allegation of use and specimen have been submitted, and believe it likely that a refusal of registration on the ground that the subject matter does not function as a mark may be made after an allegation of use is submitted. In that instance, this potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from later refusing registration on this basis.
1102.02 Drawings
The examination of the drawing during initial examination, before submission of an allegation of use and specimen, will focus primarily on the form of the drawing and compliance with 37 C.F.R. §§2.52, 2.53, and 2.54. Intent-to-use applicants must comply with all formal requirements related to drawings, whether in standard characters or in special form. See TMEP §§807 et seq. See TMEP §1104.09(f) regarding examination of the drawing after submission of an amendment to allege use, and TMEP §1109.12 regarding examination of the drawing after submission of a statement of use. The applicant may not amend the mark in a drawing if the amendment constitutes a material alteration of the mark. 37 C.F.R. §2.72(b)(2).
1102.03 Intent-to-Use Applications and the Supplemental Register
A mark in an intent-to-use application is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable allegation of use (i.e., either an amendment to allege use that meets the requirements of 37 C.F.R. §§2.76(b) and (c), or a statement of use that meets the requirements of 37 C.F.R. §2.88(b)). 37 C.F.R. §§2.47(d) and 2.75(b).
If an intent-to-use applicant requests registration on the Supplemental Register before filing an acceptable allegation of use, the examining attorney will refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. If an application is based on intent-to-use in addition to another basis, registration of the entire application will be refused on the Supplemental Register unless the applicant either deletes the §1(b) basis or files a request to divide. See TMEP §§1110 et seq. regarding requests to divide. The examining attorney will withdraw the refusal if the applicant submits an acceptable allegation of use.
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If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use and an acceptable amendment to the Supplemental Register, the USPTO will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b); TMEP §206.01. The filing date of an amendment to allege use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.76(e), and the filing date of a statement of use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.88(e). Due to the change in the effective filing date, the examining attorney must conduct a new search of USPTO records for conflicting marks. In this situation, the USPTO does not alter the original filing date in its automated records (i.e., the Trademark Reporting and Monitoring (“TRAM”) System and Trademark Applications and Registrations Retrieval (“TARR”) database). TMEP §206. If the new search shows that a later-filed conflicting application now has an earlier filing date (based on the change in the effective filing date of the subject application), the examining attorney must suspend action on the subject application pending disposition of the other application, if the application is otherwise in condition for suspension. See TMEP §§1208 et seq. regarding the procedures for handling conflicting marks in pending applications.
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (filing date did not change when applicant who originally sought registration on the Supplemental Register without alleging use in commerce amended to seek registration on the Principal Register under §1(b), because use in commerce is not required for receipt of a filing date on the Supplemental Register).
When the applicant files an allegation of use together with an amendment to the Supplemental Register, the examining attorney must examine the allegation of use before taking action on the amendment to the Supplemental Register.
See TMEP §§815 and 816 et seq. for additional information about the Supplemental Register.
1102.04 Claims of Acquired Distinctiveness under §2(f)
See TMEP §§1212.09 et seq. regarding claims of distinctiveness under §2(f), 15 U.S.C. §1052(f), in intent-to-use applications.
1103 Allegations of Use
While §1(b) of the Trademark Act provides for filing an application based on the applicant’s bona fide intent to use the mark in commerce, registration cannot be granted until the applicant files an allegation of use. The allegation
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of use must include verified dates of first use (see TMEP §§903 et seq.), and a specimen of use for each class of goods/services (see TMEP §§904 et seq.).
An allegation of use may be filed as either an amendment to allege use or a statement of use. The principal difference between the amendment to allege use and the statement of use is the time of filing. The amendment to allege use may be filed after the application filing date but before approval of the mark for publication. 37 C.F.R. §2.76(a); TMEP §1104.03. If the applicant does not file an acceptable amendment to allege use during initial examination, or if an amendment to allege use is filed and withdrawn, and the USPTO issues a notice of allowance under 15 U.S.C. §1063(b)(2) (see TMEP §§1106 et seq.), the applicant must file a statement of use within six months of the issuance date of the notice of allowance, or within an extension of time granted for filing of the statement of use. 15 U.S.C. §1051(d). See TMEP §§1109 et seq. regarding statements of use.
The applicant may not file the allegation of use during the period after approval of the mark for publication and before issuance of the notice of allowance. 37 C.F.R. §2.88(a); TMEP §1104.03. This period is known as the “blackout period.” See TMEP §§1104.03(b) and (c).
See TMEP §§1104.02 and 1109.05 regarding the form for filing allegations of use.
1104 Amendment to Allege Use Under §1(c) of the Act
As previously stated, an intent-to-use applicant must file either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) before issuance of the registration. This section pertains only to amendments to allege use. Statements of use are discussed in TMEP §§1109 et seq.
Filing an amendment to allege use does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in the case, including filing a notice of appeal to the Board or a petition to the Director. 37 C.F.R. §2.64(c)(1). See TMEP §1104.07 regarding the filing of an amendment to allege use in conjunction with an appeal. Therefore, the applicant must file a separate response to any outstanding Office action. Failure to respond to an outstanding Office action will result in abandonment of the application. See TMEP §718.06 regarding notice of abandonment for failure to respond.
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1104.01 Minimum Filing Requirements for an Amendment to Allege Use
The amendment to allege use must include the following minimum elements before it will be referred to the examining attorney for examination on the merits:
(1) the prescribed fee for at least one class;
(2) one specimen or facsimile of the mark as used in commerce; and
(3) a verification or declaration signed by the applicant stating that the mark is in use in commerce.
37 C.F.R. §2.76(e).
An amendment to allege use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. §2.76(e)(3) for a verified statement that the mark is in use in commerce. Cf. In re Carnicon Development Co., 34 USPQ2d 1541 (Comm’r Pats. 1992); In re Conservation Technology Inc., 25 USPQ2d 1079 (Comm’r Pats. 1992). The examining attorney will require an allegation that the “mark is in use in commerce” during examination.
See TMEP §1104.08 regarding the requirements for a complete amendment to allege use.
1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements
A legal instruments examiner (“LIE”) will conduct a preliminary review of an amendment to allege use to determine whether it is timely and complies with the minimum requirements of 37 C.F.R. §2.76(e). If so, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits.
With respect to the requirement that the amendment to allege use include a verification or declaration signed by the applicant stating that the mark is in use in commerce, the LIE will review the document only to determine whether it bears a signed verification stating that the mark is in use in commerce. The examining attorney will determine whether the amendment to allege use was filed by the owner. See TMEP §1104.09(a).
See TMEP §1104.01(b) regarding processing an amendment to allege use that does not meet minimum filing requirements, and TMEP §1104.03(c) regarding processing an untimely amendment to allege use.
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1104.01(b) Processing an Amendment to Allege Use That Does Not Meet Minimum Filing Requirements
If an amendment to allege use is timely, but does not comply with the minimum filing requirements of 37 C.F.R. §2.76(e) (see TMEP §1104.01), the LIE will advise the applicant in writing of the deficiency. The applicant may correct the deficiency, provided the applicant does so before the mark is approved for publication. See 37 C.F.R. §2.76(g). If an acceptable amendment to correct the deficiency is not filed before the mark is approved for publication, the amendment to allege use will not be referred to the examining attorney and will not be examined on the merits. 37 C.F.R. §2.76(g).
If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an electronic funds transfer (“EFT”) or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the LIE will advise the applicant that the applicant must repay the fee before the mark is approved for publication, or the amendment to allege use will not be examined. In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(12). This processing fee must be paid even if the applicant withdraws the amendment to allege use. See TMEP §405.06 regarding payments that are refused.
If the amendment to allege use does not include a specimen, the LIE will advise the applicant that the applicant must submit a specimen, supported by an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen is in use in commerce on or in connection with the goods/services, before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.
If the amendment to allege use is not signed, the LIE will notify the applicant of the deficiency and advise the applicant that the applicant must submit a properly signed amendment to allege use before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.
An amendment to allege use that does not meet the minimum filing requirements will remain in the record. If the applicant does not correct all deficiencies before approval of the mark for publication, the examining attorney will not examine the amendment to allege use. In such a case, if the applicant has submitted the fee, the fee will not be refunded and cannot be applied to a later-filed statement of use. If the mark is published for opposition and a notice of allowance issues, the applicant must file a statement of use or request for extension of time to file a statement of use within six months of the date of issuance to avoid abandonment of the application.
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If the applicant wishes to establish that the amendment to allege use as filed met the minimum requirements of 37 C.F.R. §2.76(e), the applicant must file a petition under 37 C.F.R. §2.146. In addition to the petition fee (37 C.F.R. §2.6), the petition should include a copy of the amendment to allege use and specimen, and any evidence establishing that the amendment to allege use as filed met the minimum filing requirements. See Chapter 1700 for additional information about petitions. If the petition is granted, the amendment to allege use will be considered filed on the date it was originally received in the USPTO.
See TMEP §1104.03(c) regarding processing an untimely amendment to allege use.
1104.01(c) Processing Defective Amendment to Allege Use Filed With Other Amendments
After the LIE has taken appropriate action on a defective amendment to allege use (see TMEP §1104.01(b)), the LIE will process any other amendments filed with the amendment to allege use and will refer the application to the assigned examining attorney for appropriate action on those other amendments.
If the amendment to allege use did not meet the minimum filing requirements of 37 C.F.R. §2.76(e), the examining attorney will act on any other amendments in the application without considering the amendment to allege use. The examining attorney should issue requirements or refusals according to standard examination procedure without considering the amendment to allege use. Any specimen submitted becomes part of the record and may be relied on in relation to issues other than use.
If the examining attorney determines that the LIE erred in holding that the amendment to allege use did not meet the minimum filing requirements of 37 C.F.R. §2.76(e), the examining attorney should advise the applicant by telephone or e-mail that the amendment to allege use will be examined on the merits and to disregard the LIE’s action, and should make an appropriate note in the “Notes-to-the-File” section of the record.
1104.02 Form of Amendment to Allege Use
To expedite processing, the USPTO recommends that an applicant file an amendment to allege use through the Trademark Electronic Application System (“TEAS”), available at http://www.uspto.gov/teas/index.html. Alternatively, the owner may call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed paper form that may be used to file either a statement of use or an amendment to allege use (“Trademark/Service Mark Allegation of Use”). The applicant may mail, fax, or hand-deliver the completed form to the USPTO. If the form is faxed, it
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must be accompanied by an authorization to charge the filing fee to a credit card or deposit account. The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf. If the amendment to allege use is filed though TEAS, payment must be made by credit card, deposit account, or EFT. Paper forms may be delivered by hand or courier to the Trademark Assistance Center (“TAC”), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia. TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
If the applicant does not file the amendment to allege use electronically or use the pre-printed paper form designed by the USPTO, the applicant should submit the amendment to allege use in a document separate from other amendments, with the caption “Allegation of Use” appearing at the top of the first page of the document. 37 C.F.R. §2.76(d). However, this format is not mandatory. The USPTO will accept and enter any document that includes an amendment to allege use, if it meets the minimum filing requirements set forth in 37 C.F.R. §2.76(e), regardless of whether it is properly titled or includes other amendments.
See TMEP §1104.01 regarding the minimum filing requirements that must be met before an amendment to allege use can be referred to an examining attorney for examination, and TMEP §1104.08 regarding the requirements for a complete amendment to allege use.
1104.03 Time for Filing Amendment to Allege Use
An applicant may file an amendment to allege use at any time between the application filing date and the date the examining attorney approves the mark for publication. 37 C.F.R. §2.76(a).
An amendment to allege use may be filed after commencement of an ex parte appeal. See TMEP §1104.07.
An applicant may not file either an amendment to allege use or a statement of use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance. This period, during which no allegation of use may be filed, is known as the “blackout period.” See TMEP §§1104.03(b) and (c).
1104.03(a) Use on All Goods/Services Required Before Filing
An applicant may not file an amendment to allege use until the applicant has used the mark in commerce on or in connection with all goods/services for which the applicant seeks registration under §1(b), unless the applicant files a request to divide. 37 C.F.R. §2.76(c). If the applicant files an amendment to allege use before using the mark on or in connection with all the goods/services, but does not file a request to divide, the examining attorney
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will require the applicant to: (1) withdraw the amendment to allege use (see TMEP §1104.10); (2) delete from the application the goods/services not covered by the amendment to allege use; or (3) file a request to divide out the goods/services that are not yet in use. See TMEP §§1110 et seq. regarding requests to divide.
1104.03(b) The “Blackout Period”
Under 37 C.F.R. §2.76(a), an applicant may not file an amendment to allege use under 15 U.S.C. §1051(c) after the date that the application is approved for publication by the examining attorney. Under 37 C.F.R. §2.88(a), an applicant may not file a statement of use under 15 U.S.C. §1051(d) before the date of issuance of the notice of allowance. These two rules combine to create a period of time when neither an amendment to allege use nor a statement of use may be filed. This period is known as the “blackout period.” Any statement of use or amendment to allege use filed during this period will be deemed untimely and the fee will be refunded. In re Sovran Financial Corp., 25 USPQ2d 1537 (Comm’r Pats. 1991). See TMEP §1104.03(c) regarding processing allegations of use filed during the blackout period.
Intent-to-use applicants are encouraged to check the TARR database on the USPTO website at http://tarr.uspto.gov to determine the status of the application before filing an amendment to allege use.
If the status check indicates that the status of the application is any of the following, then the blackout period is in effect because the mark has been approved for publication and a notice of allowance has not yet issued:
• Approved for Publication (by the examining attorney)
• Publication/Registration review complete (by the law office clerk)
• Published for Opposition
• Notice of Allowance—Withdrawn
• Notice of Allowance—Cancelled
• Withdrawn from publication
• Cancelled—Restored to Pendency (indicates subject registration number was issued inadvertently and correction requires restoration of the application to pendency)
• Inadvertently issued registration number—Cancelled (indicates the subject registration number was issued inadvertently and has been cancelled)
• Concurrent use proceeding terminated—granted
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• Concurrent use proceeding terminated—denied
• Concurrent use proceeding pending
• Interference proceeding pending
• Interference proceeding terminated
• Opposition pending
• Opposition dismissed
• Opposition dismissed—See TTAB records
• Opposition sustained
• Opposition instituted
• Request for extension of time to file opposition
• Amendment after publication
If the reported status is one of those listed above, then the blackout period has begun and the applicant should not file the amendment to allege use. On the other hand, if the reported status is not one of those listed above, the applicant may file the amendment to allege use.
It is possible that the mark could be approved for publication on the same day but shortly after the applicant checks the status of the application. However, the blackout period does not begin until the day after a mark is approved for publication.
1104.03(c) Processing Amendment to Allege Use Filed During the Blackout Period
If an applicant files an amendment to allege use during the blackout period, the USPTO will notify the applicant that the amendment to allege use is untimely and will not be processed, and refund the filing fee.
The examining attorney should not cancel an approval of or withdraw an application from publication to process an untimely amendment to allege use. Furthermore, the examining attorney should not suspend an application or take any other similar action to extend the time for filing an amendment to allege use.
The USPTO will not retain an untimely amendment to allege use and process it as a statement of use. However, the applicant may resubmit an untimely amendment to allege use as a statement of use after the notice of allowance issues.
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1104.04 Processing Timely Amendment to Allege Use Located After Publication
If an amendment to allege use is timely (see TMEP §1104.03) and complies with the minimum filing requirements so that it may be examined on the merits (see TMEP §1104.01), but the mark was published for opposition before the amendment to allege use was associated with the application, the USPTO will proceed as follows.
The examining attorney will contact the applicant or the applicant’s attorney by telephone or e-mail, and give the applicant the opportunity to withdraw the amendment to allege use. The examining attorney should advise the applicant that the application will be withdrawn from publication if the amendment to allege use is not withdrawn.
Amendment to Allege Use Withdrawn
If the applicant withdraws the amendment to allege use, the examining attorney should advise applicant that a notice of allowance will issue if the application is not successfully opposed, and that the applicant must file a statement of use (or request for an extension of time to file a statement of use) within six months after the issuance date of the notice of allowance. The examining attorney should advise applicant that, instead of filing a statement of use, the applicant may file a written request that the USPTO treat the amendment to allege use as a statement of use. Such a request must be filed within six months after the issuance date of the notice of allowance, and should be faxed to the ITU/Divisional Unit at (571) 273-9550. The examining attorney should make a note in the “Notes-to-the-File” section of the record, reflecting the substance of the communication with the applicant. The filing date of the statement of use will be the date of receipt of the applicant’s written request to treat the amendment to allege use as a statement of use.
The applicant has the option of receiving a refund of the filing fee for the amendment to allege use, or applying the fee toward the statement of use. If the applicant requests a refund, the examining attorney should ask an LIE to arrange for the refund.
Because §1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1), explicitly requires that a statement of use be filed within six months after the issuance date of the notice of allowance, the USPTO cannot process the amendment to allege use as a statement of use unless the applicant files a written request within six months after the issuance date of the notice of allowance. If the applicant does not file a statement of use, a request for an extension of time to file a statement of use, or a written request to treat the amendment to allege use as a statement of use within six months after the issuance of the notice of allowance, the application will be abandoned, even if the amendment to allege use is still in the record and the filing fee for the amendment to allege use has not been refunded.
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Amendment to Allege Use Not Withdrawn
If the applicant does not withdraw the amendment to allege use, and no notice of allowance has issued, the examining attorney must withdraw the application from publication. If the notice of allowance has issued, the examining attorney must ask the ITU/Divisional Unit to cancel the notice of allowance. The examining attorney should make an appropriate note in the “Notes-to-the-File” section of the record, and then examine the amendment to allege use. If the amendment to allege use can be approved, and does not raise any issues that require the examining attorney to issue an Office action requiring a response, the examining attorney should approve the amendment to allege use (see TMEP §1104.11). The mark must then be republished.
If examination of the amendment to allege use raises issues that would require the examining attorney to issue requirements or refusals in an Office action, the examining attorney should request jurisdiction for the purpose of issuing the relevant requirements or refusals. See TMEP §1504.04(a). The proposed Office action setting forth the relevant requirements or refusals must accompany the request for jurisdiction. If the applicant ultimately complies with all requirements and overcomes all refusals, the amendment to allege use will be approved. The mark must then be republished.
Applications that are the Subject of an Opposition
If a notice of opposition has been filed when a timely amendment to allege use is associated with the application, the Board will usually suspend the opposition proceeding and remand the application to the examining attorney for examination of the amendment to allege use. The examining attorney should follow the procedures explained above, except that no request for jurisdiction is necessary. Once the amendment to allege use is ultimately approved or withdrawn, the application should be referred back to the Board for appropriate action. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §219.
Applications that are the Subject of an Extension of Time to Oppose
If the application is under an extension of time to file an opposition when the amendment to allege use is associated with the application, the potential opposer must continue to file further request(s) for extension(s) of time to oppose, or file a notice of opposition, if it wishes to preserve its right to oppose if the amendment to allege use is withdrawn by the applicant or approved by the examining attorney. TBMP §219. The Board will not suspend the potential opposer’s time to file a notice of opposition. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).
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1104.05 Amendment to Allege Use Filed in Conjunction With Application
If an applicant files an intent-to-use application under 15 U.S.C. §1051(b), and, at the same time, files an amendment to allege use asserting dates of use before the filing date of the application, the applicant will be required to comply with all requirements related to the amendment to allege use, including the payment of the required fees for all classes.
1104.06 Processing Amendment to Allege Use Received Before Application is Assigned to an Examining Attorney
If an amendment to allege use is received before an application has been assigned to an examining attorney, the LIE will review the amendment to allege use to determine whether it complies with the minimum filing requirements of 37 C.F.R. §2.76(e) and will take appropriate action. See TMEP §§1104.01 et seq. If the amendment to allege use complies with the minimum filing requirements, it will be placed in the record and examined on the merits when the application is assigned to an examining attorney. If it does not, the LIE will advise the applicant in writing of the deficiency and advise the applicant that it must correct the deficiency before the mark is approved for publication, or the amendment to allege use will not be examined on the merits. See 37 C.F.R. §2.76(g).
1104.07 Amendments to Allege Use and Ex Parte Appeals
An amendment to allege use may be filed together with a notice of appeal to the Trademark Trial and Appeal Board, or it may be filed while an appeal is pending.
Once the appeal is filed, the Board has jurisdiction over the application. If the applicant files the amendment to allege use with the notice of appeal, the Board will institute the appeal, suspend action on the appeal, and remand the case to the examining attorney to examine the amendment to allege use. When the applicant files the amendment to allege use after commencement of the appeal, the Board may, in its discretion, suspend action on the appeal and remand the application to the examining attorney for consideration of the amendment to allege use, or it may continue action on the appeal, thus deferring examination of the amendment to allege use until after disposition of the appeal.
If the Board remands the application, the examining attorney should continue examination according to standard examining procedures until final resolution of any new issues that arise in the examination of the amendment to allege use. If all issues are resolved or made the subject of a final action, the examining attorney should refer the application back to the Board for resumption of the appeal. TBMP §1206.01.
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If the examining attorney withdraws the refusal or requirement that is the subject of the appeal, he or she should advise the applicant or the applicant’s attorney by telephone or e-mail, and make an appropriate note in the “Notes- to-the-File” section of the record.
1104.08 Requirements for a Complete Amendment to Allege Use
The requirements for a complete amendment to allege use are:
(1) a verified statement that the applicant is believed to be the owner of the mark and that the mark is in use in commerce, specifying the dates of the applicant’s first use of the mark anywhere and first use of the mark in commerce, and setting forth or incorporating by reference those goods/services specified in the application on or in connection with which the mark is in use in commerce;
(2) one specimen or facsimile per class of the mark as used in commerce that meets the requirements of 37 C.F.R. §2.56; and
(3) the prescribed fee for each class (see 37 C.F.R. §2.6).
37 C.F.R. §2.76(b).
1104.09 Examination of Amendment to Allege Use by Examining Attorney
If a timely filed amendment to allege use meets the minimum requirements of 37 C.F.R. §2.76(e) (see TMEP §1104.01), the examining attorney will examine the amendment to allege use.
The examining attorney must examine the amendment to allege use for compliance with all relevant sections of the Act. The following sections present examples of issues that should be considered during examination of the amendment to allege use. These sections do not exhaust all possibilities, but rather present a general framework governing the areas for examination.
1104.09(a) Ownership
The examining attorney must confirm that the proper party has filed the amendment to allege use. Only the applicant or a valid assignee under §10 of the Trademark Act, 15 U.S.C. §1060, may file an amendment to allege use.
If the party filing the amendment to allege use is the owner at the time of filing, but the records of the USPTO show title in another party, the examining attorney must refuse to approve the amendment to allege use and advise the applicant in writing that the amendment to allege use cannot be accepted, because it was not filed by the owner. To overcome the refusal, the applicant may submit evidence to establish chain of title within the response period
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specified in the Office action. See 37 C.F.R. §§3.71(d) and 3.73(b). To establish ownership, the party who filed the amendment to allege use must either: (1) record an assignment or other document of title with the Assignment Services Branch, and include a statement that the document has been recorded in the response to the Office action; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1); TMEP §502.01.
If an amendment to allege use is filed by the owner of the mark, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
However, if the party filing the amendment to allege use was not the owner of the mark at the time of filing, the examining attorney should not approve the amendment to allege use. The examining attorney must advise the applicant in writing that the amendment to allege use cannot be accepted, and that the true owner may file a substitute amendment to allege use (including a filing fee for each class) on or before the date the application is approved for publication.
See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of the new owner, and TMEP §502.02(c) regarding an examining attorney’s handling of an application after the mark has been assigned.
1104.09(b) Verification and Date of Execution
The verification should be signed by the applicant or a person properly authorized to sign on behalf of the applicant. 37 C.F.R. §2.76(b)(1). See TMEP §611.03(a) as to who is properly authorized to sign on behalf of an applicant. Generally, the USPTO will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.
If the amendment to allege use is not filed within one year after it is signed, the examining attorney must require a substitute or supplemental verification or declaration under 37 C.F.R. §2.20 stating that the mark is still in use in commerce. 37 C.F.R. §2.76(i); TMEP §804.03.
See TMEP §§611 et seq. regarding signature.
1104.09(c) Identification of Goods/Services
The examining attorney must examine the identification of goods/services in an amendment to allege use to ensure that it conforms to the goods/services
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specified in the application. The applicant may limit or clarify the goods/services, but may not add to or expand the identification. 37 C.F.R. §2.71(a). The amendment to allege use must include all the goods/services for which the applicant seeks registration under §1(b). An amendment to allege use cannot be accepted for only some of the goods/services unless it is accompanied by a request to divide out the goods/services that are not in use. See 37 C.F.R. §2.76(c); TMEP §1104.03(a).
If the applicant has not specified the goods/services in the amendment to allege use, as required by 37 C.F.R. §2.76(b)(1)(ii), or if the goods/services specified in the amendment to allege use exceed the scope of the goods/services specified in the application, the examining attorney must require an amendment.
In a paper amendment to allege use, if goods/services identified in the application are omitted from the amendment to allege use, but the applicant has not indicated an intention to delete those goods/services from the application or filed a request to divide the application, the examining attorney should confirm that the applicant intends to delete the omitted goods/services. The applicant may amend the amendment to allege use to claim use on or in connection with the goods/services that were omitted, provided that: (1) the applicant did not expressly delete the goods/services; and (2) the applicant verifies in an affidavit or declaration under 37 C.F.R. §2.20 that it has used the mark in commerce on or in connection with those goods/services prior to filing the amendment to allege use. Inadvertently omitted goods/services may not be reinserted by examiner’s amendment, because verification is required.
If the applicant lists all the goods/services identified in the application in the section of a pre-printed paper amendment to allege use form designated for the identification of goods/services that are not in use (the effect of which is a representation that the mark was not used in connection with any goods/services), then the applicant has not expressed an intention to delete these goods/services, and the examining attorney must inquire as to the discrepancy.
Omission of goods/services in a paper amendment to allege use is the only instance when an applicant may reinsert inadvertently omitted goods/services. Once expressly deleted or omitted from the identification of goods/services in a statement of use or request for extension of time to file a statement of use, goods/services may not be reinserted by later amendment. TMEP §1402.07(e).
When an amendment to allege use is filed electronically, the TEAS form requires the applicant to expressly indicate an intention to delete a class, or to delete goods/services within a class. Therefore, if any of the goods/services identified in the application do not appear in the identification of goods/services in the amendment to allege use, the examining attorney
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should not issue any inquiry with respect to these deleted goods/services. The applicant may not thereafter reinsert these goods/services.
If an amendment of the identification of goods/services results in the addition of class(es) to the application after an amendment to allege use is filed, the examining attorney must require payment of the fee(s) for filing the amendment to allege use in the added class(es), in addition to the fee(s) required by 37 C.F.R. §2.6(a)(1) for adding a class(es) to the application. TMEP §1403.02(c).
1104.09(d) Use in Commerce and Dates of Use
An amendment to allege use must include a verified statement that “the mark is in use in commerce,” and must specify the dates of the applicant’s first use of the mark and first use of the mark in commerce for each class of goods/services. 37 C.F.R. §2.76(b)(1)(ii). The applicant may amend the dates of use if the applicant supports the amendment with an affidavit or declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c). The applicant may not amend the dates of use to recite dates of use that are subsequent to the filing of the amendment to allege use. However, the applicant may withdraw the amendment to allege use. 37 C.F.R. §2.76(h).
The requirement for a verified statement that “the mark is in use in commerce” is a minimum filing requirement that must be satisfied before the amendment to allege use may be examined on the merits. 37 C.F.R. §2.76(e)(3). See TMEP §§1104.01 et seq. regarding amendments to allege use that do not meet minimum filing requirements.
1104.09(e) Specimen
An amendment to allege use must include a specimen for each class of goods/services. The examining attorney must review the specimen for compliance with all relevant requirements. See TMEP §§904.04 et seq. regarding material that is appropriate as a trademark specimen, TMEP §§1301.04 et seq. regarding material that is appropriate as a service mark specimen, and TMEP §§1202 et seq. and 1301.02 et seq. regarding use as a mark.
If the applicant submits a substitute specimen in conjunction with an amendment to allege use, the applicant must verify that the applicant used the substitute specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. Similarly, if the applicant submits a new specimen in support of a multiple-class application that is not identical to the specimen originally filed, the applicant must verify that the applicant used the new specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. TMEP §904.05.
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If, in fact, the mark was first used on dates other than those asserted in the amendment to allege use, the dates of use must be corrected. See TMEP §§903.04 and 1104.09(d) regarding amendment of the dates of use.
If the amendment to allege use is filed through TEAS, the specimen must be a digitized image in .jpg or .pdf format. 37 C.F.R. §2.56(d)(4). See TMEP §904.02(a) for additional information about electronically filed specimens.
1104.09(f) Drawing
Under 37 C.F.R. §2.51(b), the drawing in an intent-to-use application must be a substantially exact representation of the mark as intended to be used and as actually used, as shown on the specimen filed with the amendment to allege use. An applicant may not amend the mark in the original drawing if the amendment constitutes a material alteration of the mark. 37 C.F.R. §2.72(b)(2); TMEP §§807.14 et seq. The same standards that apply to use applications in determining whether specimens support use of the mark and whether amendments to the drawing can be permitted also apply to amendments to allege use.
Therefore, if the mark in the drawing filed with the original application is not a substantially exact representation of the mark as used on the specimen filed with the amendment to allege use, the examining attorney must require: (1) either submission of a new specimen or an amendment of the mark in the drawing to agree with the mark shown on the specimen, if such an amendment would not be a material alteration of the mark as shown in the original drawing; or (2) submission of a new specimen, if amendment of the mark would be a material alteration of the mark as shown in the original drawing. 37 C.F.R. §2.72(b)(2). See TMEP §§807.14 et seq. regarding material alteration.
1104.09(g) Fees
While the payment of the fee for at least one class is enough to meet the minimum filing requirements for an amendment to allege use (37 C.F.R. §2.76(e)), the examining attorney must require payment of fees to cover all classes identified in the application before approving the amendment to allege use. The applicant may amend the identification to delete class(es).
If class(es) are added to the application after the filing of the amendment to allege use, the examining attorney must require payment of the fee(s) for filing the amendment to allege use in the added class(es), in addition to the fee(s) required by 37 C.F.R. §2.6(a)(1) for adding class(es) to the application. See TMEP §1403.02(c) regarding the amount of the fee(s) for adding class(es) to an application.
If the applicant submits a filing fee that is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, a check is returned unpaid, or an
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EFT or credit card payment is refused or charged back by a financial institution), the examining attorney must require repayment of the fee before approving the amendment to allege use. In addition, when an EFT or credit card is refused, or a check is returned unpaid, the examining attorney must require a processing fee under 37 C.F.R. §2.6(b)(12). This processing fee must be paid even if the applicant withdraws the amendment to allege use or deletes a class(es). See TMEP §405.06 regarding payments that are refused.
1104.09(h) Issuance of Actions by Examining Attorney Related to the Amendment to Allege Use
When an LIE reviews an amendment to allege use and refers it to the examining attorney for examination on the merits, the examining attorney will examine the amendment to allege use.
If the examining attorney determines that the amendment to allege use is not acceptable, or that it raises new issues in the case, the examining attorney will issue an Office action stating all refusals and requirements arising in the examination of the amendment to allege use and incorporating all unresolved issues from any outstanding Office action in the application. The examining attorney’s action related to the amendment to allege use supersedes any outstanding Office action, and the applicant’s response on all issues is due within six months from the date of the new action. The new action must be nonfinal, because those issues arising from the examination of the amendment to allege use will have been raised for the first time.
If the amendment to allege use was referred for examination before the case was assigned to the examining attorney, the examining attorney will examine the application as a whole, including the amendment to allege use, and will issue a first Office action addressing all issues in the application and the amendment to allege use.
If the application is suspended, the examining attorney should examine the amendment to allege use. If any action is required, the examining attorney should remove the application from suspension and take appropriate action. Any refusals or requirements that were operative at the time of suspension should be incorporated in the examining attorney’s Office action.
If the amendment to allege use is referred for examination on the merits at the same time as a response, or if it is referred for examination when the application is in the examining attorney’s amended docket after receipt of a response, the examining attorney should consider both the response and the amendment to allege use. If the amendment to allege use is acceptable in all respects, the examining attorney should approve the amendment to allege use and take whatever action is necessary on the response. See TMEP §1104.11 regarding approval of the amendment to allege use.
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See TMEP §1104.07 regarding an amendment to allege use filed with a notice of appeal or after the commencement of an appeal.
1104.10 Amendment and Withdrawal of Amendment to Allege Use
The applicant may amend the amendment to allege use to correct deficiencies, to overcome a refusal, to comply with a requirement, or for any other purpose.
The applicant may withdraw the amendment to allege use at any time before approval of the mark for publication. 37 C.F.R. §2.76(h). The USPTO will not refund the fee for filing an amendment to allege use that is withdrawn (except as provided in TMEP §1104.04).
A withdrawn amendment to allege use document, specimen(s), and any other materials filed with the amendment to allege use will remain part of the record.
The applicant may authorize the examining attorney to issue an examiner’s amendment that withdraws the amendment to allege use.
If the applicant withdraws the amendment to allege use, the application will be processed as an intent-to-use application subject to publication and issuance of a notice of allowance. After issuance of the notice of allowance, the applicant must file a statement of use.
If the applicant wishes to request withdrawal of an amendment to allege use during an ex parte appeal, the applicant should direct the request to the Trademark Trial and Appeal Board.
If the applicant withdraws the amendment to allege use, the examining attorney will withdraw any requirements or refusals specifically related to use of the mark, such as objections related to the form of the verified statement itself, the agreement of the mark as used on the specimens with the mark shown on the drawing, or the use of the applied-for designation as a trademark or service mark evidenced by the specimen. The examining attorney should also withdraw any requirement or refusal related to the execution of the amendment to allege use.
The examining attorney should maintain any requirement or refusal arising from the amendment to allege use not specifically related to the dates of use or use of the mark, such as refusals under 15 U.S.C. §1052(e)(1), §1052(e)(2), §1052(e)(3), or §1052(e)(4). The amendment to allege use document, specimen(s), and any materials submitted with the amendment to allege use may be relied on to support refusals or requirements under these sections.
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If the applicant withdraws the amendment to allege use after it has been approved, the examining attorney must withdraw the approval from TRAM.
1104.11 Approval of Amendment to Allege Use After Examination
The examining attorney must approve the amendment to allege use if it complies with the requirements specified in 37 C.F.R. §§2.76(b) and (c). The amendment to allege use must be approved even if requirements or refusals unrelated to 37 C.F.R. §2.76(b) or §2.76(c) are necessary as a result of the examination of the amendment to allege use. Approval of the amendment to allege use does not signify that the application is in condition for approval for publication.
The examining attorney should not approve the amendment to allege use if it does not meet all the requirements of 37 C.F.R. §§2.76(b) and (c), e.g., if the applicant has not provided both a specimen and a fee for each class, if the amendment to allege use was not filed by the owner of the mark, or if the goods/services in the amendment to allege use do not conform to the goods/services specified in the application.
On the other hand, if the amendment to allege use meets the requirements of 37 C.F.R. §§2.76(b) and (c), but requirements or refusals related to use of the mark, inconsistencies between the mark in the drawing and the mark on the specimens, or other matters require action, the examining attorney should approve the amendment to allege use, and then take action on those other issues. For example, if the specimen shows ornamental use of the proposed mark, the examining attorney should approve the amendment to allege use and issue a refusal based on ornamental use of the proposed mark.
When approving an amendment to allege use, the examining attorney must perform the appropriate TRAM transaction to ensure that a computer- generated notice is issued advising the applicant that the amendment to allege use has been approved and that, if and when the application publishes, it will be published in the same manner as a use-based application. In other words, publication in the Official Gazette will include dates of use and, if the application survives the opposition period, the USPTO will issue a certificate of registration rather than a notice of allowance.
1105 Publication of Intent-to-Use Applications for Opposition
If an amendment to allege use has been submitted and accepted, the intent- to-use application is processed as a use application. If the examining attorney determines that the mark is entitled to registration, the examining attorney will approve the mark for publication and the mark will be published for opposition. If the application is not successfully opposed, the mark will register and the USPTO will issue a certificate of registration.
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If no amendment to allege use has been accepted for an intent-to-use application, and the examining attorney determines that the mark is entitled to registration but for the submission of an allegation of use, the examining attorney will approve the mark for publication and the mark will be published for opposition. If the application is not successfully opposed, the USPTO will issue a notice of allowance. 15 U.S.C. §1063(b)(2); 37 C.F.R. §2.81(b).
1106 Notice of Allowance
1106.01 Issuance of the Notice of Allowance
Section 13(b)(2) of the Trademark Act, 15 U.S.C. §1063(b)(2), provides for issuance of a notice of allowance if a §1(b) application is published for opposition and is not successfully opposed. The notice of allowance in an intent-to-use application will issue within the same time frame that a registration would issue in a use application (normally twelve weeks after the date of publication). The USPTO does not publish any notification in the Official Gazette that a notice of allowance has been issued.
The notice of allowance will list the serial number of the application, the name of the applicant, the correspondence address, the mark, the identification of goods/services, and the date of issuance of the notice of allowance. 37 C.F.R. §2.81(b). The notice of allowance is a key document because its issue date establishes the due date for filing a statement of use.
The accuracy of the information stated on the notice of allowance is important. If there are any errors in the notice of allowance, or if the applicant believes that the notice of allowance issued in error (e.g., because an amendment to allege use was previously approved by the USPTO or the filing basis of the application should not be designated as intent-to-use under §1(b)), the applicant should notify the ITU/Divisional Unit immediately, preferably by fax or telephone. See TMEP §1106.04. Telephone and fax numbers may be found on the USPTO website at www.uspto.gov/teas/contactUs.htm.
If an applicant asserts other bases for registration in addition to §1(b), the USPTO will publish the mark for opposition and will issue a notice of allowance if there is no successful opposition. The goods/services for all the bases will remain in the application pending the filing and approval of a statement of use for the goods/services based on §1(b) unless the applicant files a request to divide, or a request to delete the §1(b). See TMEP §§1110 et seq. regarding requests to divide, and TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use. TMEP §806.02(d). The applicant may file a petition to revive if the delay in filing the
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statement of use or extension request was unintentional. See TMEP §§1714 et seq.
1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance
If, after issuance of the notice of allowance but before submission of the statement of use, the USPTO determines that a clear error (see TMEP §706.01) was made in approving the mark for publication, the USPTO will cancel the notice of allowance and return the application to examination. The examining attorney will issue an appropriate Office action that includes the relevant requirement or refusal and informs the applicant of the cancellation of the notice of allowance. See TMEP §1106.03 regarding cancellation of the notice of allowance.
After the notice of allowance issues, the examining attorney has jurisdiction to act in the case. 37 C.F.R. §2.84(a). Therefore, the examining attorney does not have to request jurisdiction to take an action, as would be required after publication but before the notice of allowance issues. However, after a notice of allowance issues, the examining attorney should not make a refusal or requirement that could or should have been made during initial examination of the application unless the initial failure to make the refusal or requirement was a clear error. If the examining attorney determines that he or she must make a refusal or requirement after issuance of the notice of allowance that could or should have been made during initial examination, the examining attorney must consult with his/her managing attorney or senior attorney before taking the action. This must be done whether the action is to be taken before, during, or after examination of the statement of use, and regardless of whether the notice of allowance is cancelled. This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.
There is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal. The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees. See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) (“[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors.”); see also BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner to withdraw a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee and notification of the issue date, and with publication of the drawing and claim in the Official Gazette).
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Thus, if the USPTO discovers that a mistake was made during initial examination that would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been raised during initial examination.
See TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use.
1106.03 Cancellation of Notice of Allowance
If the USPTO cancels the notice of allowance before the filing or examination of the statement of use, the USPTO will refund any fees paid in conjunction with a statement of use or request(s) for extension(s) of time to file a statement of use, except where: (1) the applicant files a request to delete the §1(b) basis from a multiple-basis application (see TMEP §806.04(a)); or (2) the notice of allowance is cancelled as a result of an amendment to the filing basis after publication, pursuant to a petition to the Director (see TMEP §806.03(j)(ii)).
Cancellation of the notice of allowance is done by the ITU/Divisional Unit of the USPTO. To request that a notice of allowance be cancelled, a USPTO employee must send an e-mail request to the ITU/Divisional Unit’s internal mailbox with a clear statement of the reason why the notice of allowance is being cancelled. The ITU staff will enter an appropriate note in the “Notes-to- the-File” section of the record stating who requested the cancellation and why. When the notice of allowance is cancelled, the examining attorney must inform the applicant that this has been done.
When the notice of allowance is cancelled, the application is returned to initial examination. The examining attorney does not have to request jurisdiction to issue an Office action. If the applicant overcomes the refusal or complies with the requirement, the examining attorney may approve the mark for publication again. The mark must be republished.
If the application is returned to initial examination, any statement of use previously submitted will remain in the record but will not be examined unless it is resubmitted with the required fee as an amendment to allege use or statement of use at the appropriate time.
If the applicant files a statement of use or request for an extension of time to file a statement of use after the notice of allowance has been cancelled, the ITU/Divisional Unit will inform the applicant in writing that the statement of use or extension request is untimely, and refund the filing fee.
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1106.04 Correction of Errors in Notice of Allowance
When the applicant receives a notice of allowance, the applicant should check the accuracy of the information. If there are any errors in the notice of allowance, the applicant should notify the ITU/Divisional Unit of the USPTO immediately, preferably by fax or telephone. Telephone and fax numbers may be found on the USPTO website at www.uspto.gov/teas/contactUs.htm.
Correction of USPTO Error
If an error in the notice of allowance was the result of a USPTO error (e.g., entering data incorrectly or failing to enter a timely filed amendment), the USPTO will determine whether the change requires republication. If necessary, the ITU staff will contact the examining attorney by e-mail to approve the change and determine whether republication is required.
If the change may be made without republication, the ITU staff will make the correction and issue a corrected notice of allowance. The USPTO will not issue a new notice of allowance or extend the time for filing a statement of use.
If republication is required, and no action by the examining attorney that requires a response is necessary, the ITU staff will make the correction, cancel the notice of allowance, and refund any fees paid for filing a statement of use or request(s) for extension of time to file a statement of use. The application will then be scheduled for republication. If the application is not successfully opposed, the USPTO will issue a new notice of allowance.
If the examining attorney must issue an Office action that requires a response as a result of the requested correction, the ITU staff will cancel the notice of allowance, refund any fees paid for filing a statement of use or request(s) for extension of time to file a statement of use, and forward the application to the examining attorney for further action.
Correction of Applicant’s Error
If an error in the notice of allowance is the result of an applicant’s error (e.g., providing incorrect information in the application or in an amendment to the application), the applicant must file a written amendment, which will be processed like any other amendment filed after issuance of the notice of allowance and before filing of the statement of use. See TMEP §1107.
1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use
Generally, the only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods/services from the identification of goods/services; (2) the deletion of a basis in a multiple-basis
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application; and (3) changes of attorney and changes of address. See 37 C.F.R. §2.77(a). “Deletion,” within the meaning of 37 C.F.R. §2.77, means the elimination of an existing item in an identification of goods/services in its entirety. Deletion is distinct from other types of amendments to limit an identification, such as amendments to limit the goods/services as to types, channels of trade or class of purchasers, or to restrict an existing item in scope by the introduction of some qualifying language, or the substitution of specific terms for more general terms.
The USPTO will normally not consider any other amendment to the application during this period. If the applicant submits any other amendment during this period, the USPTO will place the amendment in the record for consideration at the time of examination of the statement of use. 37 C.F.R. §2.77(b). The ITU staff will advise the applicant in writing that the amendment has been received but that it will not be considered until the examining attorney examines the statement of use unless the applicant files a petition to the Director. The ITU staff will enter a notation in the “Notes-to-the- File” section of the record directing the examining attorney’s attention to the amendment.
The applicant may file a petition under 37 C.F.R. §§2.146(a)(3) and (a)(5) to waive 37 C.F.R. §2.77 to permit an examining attorney to examine an amendment (other than an amendment deleting a basis or deleting specified goods/services) during the period between the issuance of the notice of allowance and the filing of the statement of use. TMEP §1107.01. In re Upsher-Smith Laboratories, Inc., 45 USPQ2d 1371 (Comm’r Pats. 1997). The petition must be accompanied by the fee required by 37 C.F.R. §2.6. See TMEP Chapter 1700 regarding petitions.
The filing of an amendment after issuance of the notice of allowance does not extend the deadline for filing the statement of use. Unless the notice of allowance is cancelled because the amendment requires republication, the applicant must file a statement of use or request for an extension of time to file a statement of use.
See TMEP §1106.04 regarding correction of errors in a notice of allowance, TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendments to add or substitute a basis between issuance of the notice of allowance and filing the statement of use.
1107.01 Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is Filed
As noted in TMEP §1107, an applicant may file a petition to the Director under 37 C.F.R. §§2.146(a)(3) and (a)(5) to waive 37 C.F.R. §2.77 to permit an examining attorney to examine an amendment during the period between the issuance of a notice of allowance and the filing of a statement of use. In
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re Upsher-Smith Laboratories, Inc., 45 USPQ2d 1371 (Comm’r Pats. 1997). If such a petition is granted, the examining attorney will either accept or reject the proposed amendment(s) in accordance with the following procedures:
Amendment Accepted; Republication Not Required: If an examining attorney determines that an amendment is acceptable and republication is not required, the examining attorney will call or e-mail the applicant to notify the applicant of the acceptance, and make a note in the “Notes-to-the-File” section of the record that the proposed amendment has been accepted and that the applicant has been notified of the acceptance. The examining attorney will instruct the LIE to enter the amendment. The application will await the filing of a statement of use or extension request.
Amendment Unacceptable: If an examining attorney determines that an amendment is unacceptable, the examining attorney will call or e-mail the applicant to notify the applicant that the amendment is not accepted, and make a note in the “Notes-to- the-File” section of the record that the proposed amendment is unacceptable and that the applicant has been notified of this. The application will await filing of a statement of use or extension request. The applicant must accept the refusal to enter the amendment, but may again request to amend the application when filing the statement of use.
Amendment Accepted; Republication Required: If an examining attorney determines that the amendment is acceptable, but that republication is required, the examining attorney will call or e-mail the applicant to ask if the applicant wishes to maintain the request for amendment in light of the fact that republication is required. If the applicant elects to maintain the request, the examining attorney will make a note in the “Notes-to-the-File” section of the record that the proposed amendment has been accepted, that republication is required, and that the applicant has been advised of this. The examining attorney will have the amendment entered, and will request that the ITU staff cancel the notice of allowance by sending an e-mail message to the internal TM ITU Cancel mailbox. The ITU staff will cancel the notice of allowance and the application will be scheduled for republication.
Examiner’s Amendment Required; Republication Not Required: If an examining attorney determines that an examiner’s amendment is necessary, and republication is not required, the examining attorney will prepare, but not mail, the examiner’s amendment. The examiner’s amendment must contain a statement that republication is not required. The examining attorney must e-mail the internal TMPHOTOCOMP mailbox, with the unmailed
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examiner’s amendment attached, along with instructions for entering the requested amendment. The body of the e-mail message must include a statement that republication is not required. The Office of Trademark Program Control will enter and mail the examiner’s amendment.
Examiner’s Amendment Required; Republication Required: If an examining attorney determines that an examiner’s amendment is necessary, and republication is required, the examining attorney will call or e-mail the applicant to ask if the applicant wishes to maintain the request for amendment in light of the fact that republication is required. If the applicant elects to maintain the request, the examining attorney will prepare, but not mail, the examiner’s amendment. The examiner’s amendment must contain a statement that republication is required. The examining attorney must e-mail the internal TMPHOTOCOMP mailbox, with the unmailed examiner’s amendment attached, along with instructions for entering the requested amendment. The body of the e-mail message must contain a statement that republication of the mark will be required, and request cancellation of the notice of allowance. The Office of Trademark Program Control will ask the ITU staff to cancel the notice of allowance, enter and mail the examiner’s amendment, and republish the mark.
The granting of a petition to examine an amendment between issuance of the notice of allowance and filing of the statement of use does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use (unless the notice of allowance is cancelled). Regardless of whether an applicant has received a response to a proposed amendment, the applicant must file its extension request or statement of use when it becomes due. The extension request or statement of use may refer to the proposed amended identification.
See TMEP §1505.03 et seq. for examples of situations where republication is and is not required.
1108 Requests for Extensions of Time to File the Statement of Use
Section 1(d) of the Trademark Act, 15 U.S.C. §1051(d), requires that a statement of use be filed within six months after the issuance of the notice of allowance, or before the expiration of a previously granted extension of time to file a statement of use. If the mark is not in use in commerce before the expiration of the six-month period following the issuance of the notice of allowance, the applicant must file a request for an extension of time to file a statement of use within the six-month period to avoid abandonment of the application.
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The first six-month extension may be requested without a showing of good cause. Up to four additional six-month extensions may be requested; each must include a showing of good cause. 15 U.S.C. §1051(d)(2). Thus, the total time available for filing the statement of use may not be extended beyond thirty-six months from the issuance date of the notice of allowance.
To expedite processing, it is recommended that the applicant file the extension request through TEAS, at http://www.uspto.gov/teas/index.html. Alternatively, an applicant may call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed paper form. The applicant may mail, fax, or hand-deliver the completed form to the USPTO. If the form is faxed, it must be accompanied by an authorization to charge the filing fee to a credit card or deposit account. The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf. If the extension request is filed though TEAS, payment must be made by credit card, deposit account, or EFT.
Paper forms may be delivered by hand or courier to the Trademark Assistance Center (“TAC”), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia. TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
Extension requests are processed by the ITU/Divisional Unit of the USPTO.
1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use
Under 15 U.S.C. §1051(d), the applicant must file the extension request within six months of the issuance date of the notice of allowance, or before the expiration of a previously granted extension; otherwise the application is abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.65(c) and 2.88(h).
Extensions of time are granted in six-month increments. 37 C.F.R. §2.89(c). The first extension will begin to run from the expiration of the six-month period following issuance of the notice of allowance. An applicant will receive the full benefit of each extension before a subsequent extension will begin to run. The six-month period following issuance of the notice of allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension. No extension will be granted for more than six months. 37 C.F.R. §2.89(c).
The applicant cannot file two extension requests within the same six-month period following the issuance of the notice of allowance. For example, if the notice of allowance was issued May 6, 2009, and the applicant files the first extension request on July 2, 2009, the applicant may file the second extension request no earlier than November 7, 2009 (the beginning of the second six-month period after issuance of the notice of allowance) and no
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later than May 6, 2010 (the expiration of the first extension of time to file a statement of use).
The USPTO will notify the applicant of the grant or denial of an extension request, and of the reasons for a denial. However, failure to notify the applicant of the grant or denial of an extension request before the expiration of the requested extension does not relieve the applicant of the duty to file a statement of use or further extension request. 37 C.F.R. §2.89(g).
Under 37 C.F.R. §2.195(a)(2), an extension request filed through TEAS is considered to have been filed on the date the USPTO receives the transmission (Eastern Time), regardless of whether that date is a Saturday, Sunday, or federal holiday within the District of Columbia. When an extension request is filed electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the extension request, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.
A paper extension request is considered timely if it is received in the Office by the due date or mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197. See TMEP §§305.02 et seq. and 306.05 et seq. for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.
1108.02 Requirements for Request for an Extension of Time to File a Statement of Use
First Extension Request
The first request for an extension of time to file a statement of use must include: (1) a written request from the applicant, before expiration of the six- month period following issuance of the notice of allowance; (2) the prescribed fee for each class of goods/services; and (3) a verified statement signed by the applicant or a person properly authorized to sign on behalf of the applicant (TMEP §804) that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. 37 C.F.R. §2.89(a).
Second and Subsequent Extension Requests
A second or subsequent extension request must be submitted before expiration of a previously granted extension of time and must include: (1) a written request from the applicant; (2) the prescribed fee for each class of goods/services; (3) a verified statement signed by the applicant or a person
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properly authorized to sign on behalf of the applicant that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (4) a showing of good cause, as required by 37 C.F.R. §2.89(d). 37 C.F.R. §2.89(b). Extensions of time under 37 C.F.R. §2.89(b) (i.e., second and subsequent extension requests) are granted in six-month increments and may not aggregate more than 24 months. 37 C.F.R. §2.89(c).
1108.02(a) Ownership
The party filing the extension request must be the owner of the application, i.e., the person or entity who is entitled to use the mark, at the time of filing. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3) and 2.89(b)(3). If the party filing the extension request is not the owner of record, the request should include either a statement that the assignment or other document of title is recorded (or filed for recordation) in the Assignment Services Branch of the USPTO, or other evidence that the party filing the extension request is the owner of the application in accordance with 37 C.F.R. §§3.71(d) and 3.73(b). (Note: An application under §1(b) cannot be assigned before the applicant files an allegation of use, except to a successor to the applicant’s business, or portion of the business to which the mark pertains. See TMEP §501.01(a).)
If the extension request is filed by someone other than the owner of record and does not include the necessary evidence of ownership, the ITU staff will issue an Office action denying the request. If the party who filed the extension request was the owner at the time of filing, the applicant may submit evidence to establish the chain of title after expiration of the statutory filing period, within the time provided in the Office action advising the applicant of the denial.
To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Services Branch, and state in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20 that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1); TMEP §502.01. The USPTO recommends that requests to record documents with the Assignment Services Branch be filed through Electronic Trademark Assignment System (“ETAS”) at http://etas.uspto.gov.
If an extension request is filed by the owner, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
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If the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is time remaining in the statutory period for filing the extension request. Cf. In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994). See TMEP §1108.05 for applicant's recourse if an extension request is denied.
If the applicant notifies the ITU/Divisional Unit during the processing of an extension request that an assignment or other document of title has been recorded, and there is a clear chain of title, the ITU staff will update the owner of record in TRAM and TARR. See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of a new owner, and TMEP §§504 et seq. regarding the circumstances in which the “Ownership” field in TRAM and TARR will be automatically updated after recordation of a document with the Assignment Services Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.
1108.02(b) Verification
The extension request must be verified by someone properly authorized to sign on behalf of applicant. If the extension request is unsigned or signed by the wrong party, a substitute verification must be submitted before the expiration of the deadline for filing the statement of use. 37 C.F.R. §§2.89(a)(3) and 2.89(b)(3). See TMEP §611.03(a) regarding the definition of a person properly authorized to sign on behalf of applicant. Generally, the USPTO will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.
If the extension request is not filed within one year after it is signed, the USPTO will require a substitute verification or declaration under 37 C.F.R. §2.20 that the applicant still has a bona fide intention to use the mark in commerce. 37 C.F.R. §2.89(h). See TMEP §804.03.
See TMEP §§611 et seq. regarding signature.
1108.02(c) Filing Fees
A filing fee sufficient to cover at least one class must be submitted within the statutory time for filing the extension request, or the request will be denied. In a multiple-class application, if the applicant files a fee sufficient to pay for at least one class, but insufficient to cover all the classes, the ITU staff will issue a notice of fee deficiency allowing the applicant thirty days to remit the amount by which the fee is deficient or specify the class(es) to be abandoned. If the USPTO does not receive a timely response to a fee deficiency letter, the USPTO will apply the fees paid to the lowest-numbered class(es) in
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ascending order, and will delete the goods/services in the higher-numbered class(es) from the application. See 37 C.F.R. §§2.89(a)(2) and 2.89(b)(2).
If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the fee for at least one class of goods/services must be submitted before the expiration of the statutory filing period. If the extension request was not accompanied by an authorization to charge deficient fee(s) to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, and the applicant does not resubmit the fee before expiration of the statutory deadline, the extension request will be denied and the application will be abandoned. 37 C.F.R. §§2.89(a)(2) and (b)(2). In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(12). See TMEP §405.06 regarding payments that are refused.
1108.02(d) Identification of Goods/Services
The applicant must identify or reference the goods/services on or in connection with which the applicant still has a bona fide intention to use the mark in commerce in the extension request. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3) and (b)(3). The goods/services identified in the extension request must conform to those identified in the notice of allowance. 37 C.F.R. §2.89(f). If the applicant wants to delete goods/services from the application, the applicant should clearly specify those goods/services to be deleted.
The applicant may incorporate by reference the goods/services listed in the notice of allowance. This is advisable where applicant intends to retain all the goods/services identified in the notice of allowance, to avoid the possibility that goods/services may be inadvertently omitted. Thus, the applicant may specify the goods/services by referring to “those goods/services identified in the notice of allowance” or “those goods/services identified in the notice of allowance except... [followed by a listing of the goods/services to be deleted].”
If the applicant lists the goods/services with specificity in the extension request, and omits any goods/services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted. The applicant may not thereafter request that the goods/services be reinserted in the application. 37 C.F.R. §2.89(f). In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing an extension request for the omitted goods/services.
If an applicant files an extension request on a pre-printed paper form provided by the USPTO and fails to check either of the boxes available for identifying the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU staff will assume that the applicant has a continued bona fide intention to use the mark
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in commerce on or in connection with all the goods/services identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89. In re Omega-3 Marketing Inc., 35 USPQ2d 1158 (Comm’r Pats. 1994).
If the applicant lists goods/services to be deleted and the result would be to delete all of the goods/services in the notice of allowance, or if the applicant fails to identify or incorporate by reference any goods/services, the USPTO will presume this was a typographical error. Applicant will be allowed to correct the mistake. The ITU staff will issue a letter noting that no goods/services were specified or incorporated by reference in the extension request, and granting applicant thirty days in which to submit a verified statement clarifying the goods/services. However, if by mistake the applicant lists goods/services to be deleted and removal does not result in the deletion of all goods/services, the goods/services specifically listed will be deleted and may not later be reinserted.
See TMEP §1107 regarding amendments to the identification of goods/services filed between the issuance of the notice of allowance and the filing date of the statement of use.
1108.02(e) Bona Fide Intention to Use the Mark in Commerce
A request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with the goods/services identified in the notice of allowance. 37 C.F.R. §§2.89(a)(3) and (b)(3). This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request. In re Custom Technologies Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991); In re Raychem Corp., 20 USPQ2d 1355 (Comm’r Pats. 1991), modified, In re IMI Cornelius Inc., 33 USPQ2d 1062 (Comm'r Pats. 1994).
The USPTO will accept an allegation of actual use in commerce as meeting the requirement for an allegation of bona fide intention to use the mark in commerce in an extension request. In re Vitamin Beverage Corp., 37 USPQ2d 1537 (Comm’r Pats. 1995).
See TMEP §1101 for additional information about the requirement for an allegation of the applicant’s bona fide intention to use the mark in commerce.
1108.02(f) Good Cause Required for Extensions Beyond the First Six-Month Extension
No showing of good cause is required in the first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(b)(4) and 2.89(d). The showing of good cause must include a
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statement of the applicant’s ongoing efforts to make use of the mark in commerce on or in connection with each of the goods/services covered by the extension request. Efforts to use the mark in commerce may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities. In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. 37 C.F.R. §2.89(d).
A mere assertion that the applicant is engaged in ongoing efforts is not enough; the efforts must be specified. In re Comdial Corp., 32 USPQ2d 1863 (Comm’r Pats. 1993). However, the USPTO will not require a detailed explanation or evidence in a showing of good cause. The statement concerning good cause only has to refer to the types of activities listed in the rule or similar types of activities. For example, the applicant may simply state that the applicant is engaged in manufacturing and promotional activities.
The applicant may satisfy the requirement for a showing of good cause by asserting that the applicant believes that it has made valid use of the mark in commerce, and is in the process of preparing (or is concurrently filing) a statement of use, but that if the statement of use is found by the USPTO to be fatally defective, the applicant will need additional time to file a new statement of use. However, such a statement will be accepted only once as a statement of the applicant’s ongoing efforts to make use of the mark in commerce. Repetition of these same allegations in a subsequent extension request is not, without more, deemed to be a statement of the applicant’s ongoing efforts, as required by 37 C.F.R. §2.89(d). In re SPARC Int’l Inc., 33 USPQ2d 1479 (Comm’r Pats. 1993), overruled on other grounds, In re El Taurino Restaurant, Inc., 41 USPQ2d 1220 (Comm'r Pats. 1996). If these allegations are repeated, the extension request will be denied.
If an extension request does not include a showing of good cause, or if the showing of good cause in an extension request is deemed insufficient, the ITU staff will issue an Office action denying the extension request but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause). This showing may be submitted even if the statutory period for filing the statement of use has expired. El Taurino, 41 USPQ2d at 1222.
1108.03 Only One Extension Request May Be Filed With or After a Statement of Use
An applicant may file a request for an extension of time to file a statement of use with a statement of use, or after filing the statement of use if there is time remaining in the existing six-month period in which the statement of use was filed, provided that granting the extension request would not extend the time
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for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. The applicant may not request any further extensions of time after this request. 37 C.F.R. §2.89(e)(1).
The purpose of such a request (sometimes called an “insurance” extension request) is to secure additional time to correct any deficiency in the statement of use that must be corrected before the expiration of the deadline for filing the statement of use. See TMEP §1109.16(a) regarding the deficiencies that must be cured before expiration of the statutory filing period. Consider the following examples:
Example: If the notice of allowance was issued February 6, 2009, and the applicant files a statement of use on August 6, 2009 (but does not file an “insurance” extension request), the applicant has only until August 6, 2009 to cure any deficiency that must be corrected before the expiration of the statutory period for filing the statement of use. After August 6, 2009, it is too late to file an “insurance” extension request, because no time remains in the existing six-month period in which the statement of use was filed.
Example: If the notice of allowance was issued February 6, 2009, the applicant could file a statement of use, together with an “insurance” extension request, on or before August 6, 2009. If the extension request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request(s) could be filed.
Example: If the notice of allowance was issued February 6, 2009, and the applicant filed a statement of use on February 7, 2009, the applicant could file an “insurance” extension request within the time remaining in the existing six-month period in which the statement of use was filed, i.e., on or before August 6, 2009. If the request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request(s) could be filed.
An “insurance” extension request filed with or filed after a statement of use must meet all relevant requirements, including payment of the applicable fee. If the request is not the first request for an extension of time, and thus a showing of good cause is required, the applicant may satisfy the requirement for a showing of good cause by asserting that the applicant believes that it has made valid use of the mark in commerce, as evidenced by the statement of use, but that if the statement of use is found to be fatally defective, the applicant will need additional time to correct defects or file a substitute statement of use. 37 C.F.R. §2.89(e)(2); TMEP §1108.02(f).
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The filing fee for the “insurance” extension request will not be refunded, even if the extension is not needed to perfect the statement of use.
If the applicant files an “insurance” extension request in conjunction with a statement of use, and the applicant submits fees sufficient for one but not both filings, the USPTO will apply the fees as follows: (1) if there is enough money to cover the extension request, the USPTO will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the USPTO will apply the fees to the statement of use. See TMEP §1110.07 regarding the application of fees when an applicant submits a request to divide along with an extension request and statement of use.
If an applicant files an “insurance” extension request with a statement of use and the extension request is defective, the ITU staff will deny the request and advise the applicant of the reason for denial. If the statement of use meets the minimum requirements for examination on the merits, the ITU staff will then forward the application to the examining attorney. If there is time remaining in the current period for filing a statement of use, the applicant may file a substitute extension request.
See TMEP §1108.03(a) regarding the processing of an extension request after a statement of use has been referred to an examining attorney.
1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney
Under 37 C.F.R. §2.89(e)(1), an applicant may file a request for an extension of time to file a statement of use after filing a statement of use if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; and (2) granting the extension request would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. See TMEP §1108.03.
When an extension request is filed after the statement of use has been referred to the examining attorney, the request will be referred to the examining attorney. The USPTO will not examine the extension request unless the applicant needs the extension to perfect the statement of use.
If the examining attorney issues a requirement or refusal based on the statement of use, the examining attorney should note in the Office action that the extension request is being referred to the ITU/Divisional Unit for processing of the extension request. The filing of such an extension request is not in itself a proper response to an outstanding Office action, and does not extend the time for responding to an outstanding Office action. See TMEP §§1109.16(c) and (d). If the examining attorney does not issue a requirement
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or refusal based on the statement of use, the USPTO will not take formal action on the extension request.
The USPTO will not refund the filing fee for the extension request, even if the extension is not needed to perfect the statement of use.
1108.04 Recourse After Denial of Extension Request
If an extension request is denied, the applicant will be notified of the reason(s) for denial.
To avoid abandonment of the application, the applicant must meet the minimum requirements for filing the extension request on or before the deadline for filing a statement of use.
If the USPTO denies the extension request because the applicant failed to meet minimum filing requirements on or before the statutory deadline, and there is time remaining in the applicant’s existing period for filing the statement of use, the applicant may file the statement of use and/or a substitute extension request. Otherwise, the applicant’s only recourse after denial of the extension request is a petition under 37 C.F.R. §§2.89(g) and 2.146, or a petition to revive under 37 C.F.R. §2.66, if appropriate. See TMEP §1108.05 regarding petitions that may be filed after the denial of an extension request.
The minimum filing requirements that must be satisfied before expiration of the statutory deadline are: (1) a verified statement, signed by a person properly authorized to sign on behalf of the applicant, that the applicant has a continued bona fide intention to use the mark in commerce; (2) an identification of the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods/services. In re El Taurino Restaurant, Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996).
1108.05 Petitions From Denial of Request For An Extension of Time to File a Statement of Use
If an extension request is denied, and there is no time remaining in the statutory filing period, the application is abandoned. Applicant’s recourse is as follows:
• Petition to Revive Under 37 C.F.R. §2.66. If the applicant unintentionally failed to comply with the minimum filing requirements (see TMEP §1108.04 for a list of these requirements), the applicant may file a petition to revive under 37 C.F.R. §2.66, within two months of the issuance date of the denial of the extension request, and must
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include the fee required by 37 C.F.R. §2.6. See TMEP §§1714 et seq. regarding petitions to revive.
• Request for Reinstatement. If the applicant has proof that shows on its face that the extension request met the minimum requirements when filed, the applicant may request reinstatement within two months of the issuance date of the denial of the extension request. For example, if the extension request is denied due to the omission of a fee, and the applicant has proof that shows on its face that the fee was included, the applicant may request reinstatement. No fee is required. The request should be directed to the ITU/Divisional Unit. See TMEP §1712.01 regarding the types of evidence that support reinstatement.
• Petition Under 37 C.F.R. §2.146. The applicant may file a petition under 37 C.F.R. §2.146 if the applicant believes that the ITU staff’s denial of an extension request was improper (e.g., if applicant contends that the extension request actually met the requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89, but was improperly denied). 37 C.F.R. §§2.89(g) and 2.146(a)(2). For example, the applicant might file a petition claiming that the denial was improper if the ITU staff denied an extension request because the applicant’s showing of good cause was insufficient, but applicant believes that the showing was sufficient. The applicant must file the petition within two months of the issuance date of the denial of the extension request, and must include the fee required by 37 C.F.R. §2.6. See TMEP Chapter 1700 regarding petitions.
Filing a petition or request for reinstatement does not stay the time for filing a statement of use or further extension request. 37 C.F.R. §2.89(g). However, if the applicant fails to file a statement of use or further request(s) for extension(s) of time to file a statement of use during the pendency of a petition, the applicant will be given an opportunity to perfect the petition by paying the fee(s) for each missed extension request and filing the last extension request, or statement of use, that should have been filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762 (Comm’r Pats. 1997).
If a petition is granted, the term of the requested six-month extension will run from the date of the expiration of the previously existing six-month period for filing a statement of use. 37 C.F.R. §2.89(g).
No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance. 15 U.S.C. §1051(d)(2).
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1109 Statement of Use Under §1(d) of the Trademark Act
As noted in TMEP §1103, an intent-to-use applicant must file an allegation of use in order to obtain a registration. This section discusses statements of use only. See TMEP §§1104 et seq. regarding amendments to allege use.
Under 15 U.S.C. §1051(d), a statement of use must be filed within six months of the issuance date of the notice of allowance, or within a previously granted extension of time to file a statement of use.
1109.01 Minimum Filing Requirements for a Statement of Use
The statement of use must meet the following minimum filing requirements before it may be referred to an examining attorney for examination on the merits:
(1) the prescribed fee for at least one class;
(2) one specimen or facsimile of the mark as used in commerce; and
(3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant that the mark is in use in commerce.
37 C.F.R. §2.88(e).
A statement of use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. §2.88(e)(3) for a verified statement that the mark is in use in commerce. In re Carnicon Development Co., 34 USPQ2d 1541 (Comm’r Pats. 1992); In re Conservation Technology Inc., 25 USPQ2d 1079 (Comm’r Pats. 1992). The examining attorney will require an allegation that the “mark is in use in commerce” during examination. See TMEP §1109.09.
See TMEP §1109.02 regarding review of the statement of use for compliance with minimum filing requirements, and TMEP §1109.06 regarding the requirements for a complete statement of use.
1109.02 Review for Compliance with Minimum Filing Requirements
Statements of use are reviewed by the ITU/Divisional Unit to determine whether they are timely and in compliance with the minimum requirements listed in 37 C.F.R. §2.88(e). If the statement of use is untimely, either because it is premature or late, the ITU staff will notify the applicant in writing that the statement of use cannot be considered because it is untimely, and refund the filing fee.
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If the statement of use is timely, but does not comply with one or more of the minimum filing requirements of 37 C.F.R. §2.88(e), the ITU staff will notify the applicant in writing of the defect and advise the applicant that the USPTO will not examine the statement of use on the merits unless the applicant corrects the defect before expiration of the deadline for filing a statement of use.
If the statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title. See TMEP §1109.10 for further information.
If the applicant does not correct the deficiency before the expiration of the statutory deadline, the application will be abandoned. In such a case, the USPTO will not refund the filing fee.
The applicant may not withdraw the statement of use and return the application to the previous status of awaiting filing of the statement of use, even if the statement of use fails to meet the minimum filing requirements. 37 C.F.R. §2.88(g); TMEP §1109.17. However, in limited circumstances, an applicant may file an “insurance” extension request after the filing of a statement of use, in order to gain more time to comply with the minimum requirements for filing the statement of use. 37 C.F.R. §2.89(e)(1). See TMEP §§1108.03 and 1109.16(c) for further information.
1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements
If the ITU staff determines that a statement of use does not meet the minimum filing requirements of 37 C.F.R. §2.88(e), and there is no time remaining in the statutory filing period, the applicant’s recourse is as follows:
• Petition to Revive Under 37 C.F.R. §2.66. If the applicant unintentionally failed to comply with the minimum filing requirements, the applicant may file a petition to revive under 37 C.F.R. §2.66 within two months of the issuance date of the Office action notifying the applicant that the statement of use is deficient. See TMEP §§1714 et seq. regarding petitions to revive.
• Request for Reinstatement. If the applicant has proof that shows on its face that the statement of use met the minimum requirements when filed, the applicant may request reinstatement, within two months of the issuance date of the Office action notifying the applicant that the statement of use is deficient. For example, if the statement of use is rejected due to the omission of a specimen or fee, and the applicant has proof that shows on its face that the missing element was included, the applicant may request reinstatement. No fee is required. The request should be directed to
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the ITU/Divisional Unit. See TMEP §1712.01 regarding the types of evidence that support reinstatement.
• Petition Under 37 C.F.R. §2.146. If the applicant contends that the statement of use met the minimum requirements of 37 C.F.R. §2.88(e) when filed but was improperly denied by the ITU staff, and the applicant does not have proof that shows on its face that the statement of use was complete when filed (see TMEP §1712.01), the applicant may file a petition under 37 C.F.R. §2.146(a)(3), asking the Director to review the action of the ITU staff. The petition must be filed within two months of the issuance date of the Office action notifying the applicant that the statement of use is deficient, and must include the petition fee required by 37 C.F.R. §2.6, proof in the form of an affidavit or declaration under 37 C.F.R. §2.20, and any available evidence showing that the statement of use was complete when filed. See TMEP §1705.03 regarding proof of facts on petition.
No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance. 15 U.S.C. §1051(d)(2).
1109.03 Use on All Goods/Services Required Before Filing
The applicant may not file a statement of use until the applicant has made use of the mark in commerce on or in connection with all goods/services specified in the notice of allowance, unless the applicant files a request to divide. 37 C.F.R. §2.88(c). See TMEP §§1110 et seq. regarding requests to divide.
If the applicant files a statement of use for some of the goods/services identified in the notice of allowance, and a request for an extension of time to file a statement of use for other goods/services that are identified in the notice of allowance, but does not file a request to divide, the ITU/Divisional Unit will issue an Office action granting the applicant additional time to either: (1) file a request to divide, or (2) delete the goods/services that are not in use from the application. If the applicant met the minimum requirements for filing the statement of use and extension request before expiration of the deadline for filing the statement of use, the applicant may file the request to divide after expiration of the statutory deadline for filing the statement of use. If the applicant does not file an acceptable request to divide within the time specified in the Office action, the goods/services that are not covered by the statement of use will be deleted from the application.
See TMEP §1109.13 regarding examination of a statement of use that omits, but does not expressly delete, some of the goods/services identified in the notice of allowance.
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1109.04 Time for Filing Statement of Use
The statement of use must be filed within six months after the issuance date of the notice of allowance or within a previously granted extension of time for filing a statement of use. See TMEP §§1108 et seq. regarding extension requests.
If the applicant does not timely file a statement of use within this time period, the application is abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §2.88(h). If the failure to timely file a statement of use is unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66. See TMEP §§1714 et seq.
A statement of use filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(2).
A statement of use filed on paper is considered timely if it is received in the Office by the due date or mailed or transmitted by the due date with a certificate of mailing or facsimile transmission in accordance with 37 C.F.R. §2.197. See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.
Any statement of use filed after the examining attorney approves the mark for publication but before the issuance of the notice of allowance is untimely and will not be considered. The USPTO will refund the filing fee. 37 C.F.R. §§2.76(a) and 2.88(a); TMEP §1104.03(c).
1109.05 Form of Statement of Use
To expedite processing, it is recommended that the statement of use be filed through TEAS, available at http://www.uspto.gov/teas/index.html. A statement of use filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(2). When a statement of use is filed electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.
Alternatively, the applicant may call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed paper form. The completed form may be mailed, faxed, or hand-delivered to the USPTO. If the form is faxed, it must be accompanied by an authorization to charge the filing fee to a credit card or deposit account. The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf. If a statement
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of use is filed though TEAS, payment must be made by credit card, deposit account, or EFT. Paper forms may be delivered by hand or courier to the Trademark Assistance Center (“TAC”), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia. TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
If the applicant does not file electronically or use the USPTO’s pre-printed form, the statement of use should be captioned as an “Allegation of Use.” 37 C.F.R. §2.88(d). However, this format is not mandatory. The USPTO will accept and enter a document that meets the minimum filing requirements set forth in 37 C.F.R. §2.88(e), regardless of whether it is properly titled.
1109.06 Requirements For a Complete Statement of Use
The requirements for a complete statement of use must include the following elements:
(1) a verified statement that the applicant is believed to be the owner of the mark and that the mark is in use in commerce, specifying the dates of the applicant’s first use of the mark and first use of the mark in commerce, and setting forth or incorporating by reference those goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce;
(2) one specimen or facsimile per class of the mark as used in commerce; and
(3) the fee per class required by 37 C.F.R. §2.6.
37 C.F.R. §2.88(b).
1109.07 Examination of the Statement of Use — In General
If the statement of use is timely and complies with the minimum filing requirements of 37 C.F.R. §2.88(e), the ITU staff will refer it to the examining attorney for examination on the merits. If available, the same examining attorney who initially examined the application will examine the statement of use. Examination of the statement of use is sometimes referred to as “second examination.”
The examining attorney will review the statement of use to confirm that it meets the requirements of the Act and the rules. See TMEP §1109.06 for the requirements for a complete statement of use.
The examining attorney will examine the specimen to confirm that it shows appropriate use as a mark on or in connection with the goods/services identified in the statement of use (see TMEP §§1202 et seq. regarding use of
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subject matter as a trademark, and 1301.02 et seq. regarding use of matter as a service mark), and will also determine whether the mark shown on the drawing is a substantially exact representation of the mark as used on the specimen (see TMEP §§807.12(a) et seq. and 1109.12).
If the applicant has complied with the statutory requirements for a statement of use before the expiration of the deadline for filing the statement of use, the applicant may amend or correct the statement of use during examination. See TMEP §§1109.16(a)-(d) regarding compliance with statutory requirements before the expiration of the time for filing the statement of use.
If the examining attorney finds the statement of use acceptable, the USPTO will notify the applicant that the statement of use is approved. See TMEP §1109.18 regarding approval of the statement of use. The USPTO will then issue the registration and publish notice of the registration in the Official Gazette. The application is not again subject to opposition.
See TMEP §§1109.16 et seq. regarding the issuance of Office actions and correction of defects in a statement of use.
1109.08 Examination of the Statement of Use – New Requirements and Refusals
Generally, in examining the statement of use, the USPTO will only issue requirements or refusals concerning matters related to the statement of use. The examining attorney should not make a requirement or refusal concerning matters that could or should have been raised during initial examination, unless the failure to do so in initial examination constitutes a clear error, i.e., would result in issuance of a registration in violation of the Act or applicable rules. See 706.01 regarding “clear error.” For example, if the goods/services were published for opposition in the wrong class, it would be clear error for the examining attorney not to require correction of the classification when examining the statement of use.
If the examining attorney determines that he or she must make a refusal or requirement that could or should have been made during initial examination of the application, the examining attorney must consult the managing attorney or senior attorney before taking the action. This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.
The examining attorney must act on all new issues arising in the examination of the statement of use. For example:
• The examining attorney must issue a refusal if the specimen fails to show use of the designation as a mark. See TMEP §§1202 et seq. and 1301.02 et seq. regarding use as a mark.
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• The examining attorney must issue an appropriate refusal or requirement if there is evidence that the mark has become descriptive or generic as applied to the goods/services during the time that has elapsed since initial examination.
Generally, the USPTO will not conduct any search for conflicting marks or issue any refusals under §2(d) of the Act in the examination of the statement of use. However, if the examining attorney determines that a second search is necessary, the examining attorney will conduct a second search and take any action that is appropriate.
1109.09 Use in Commerce
The filing of a verified statement that “the mark is in use in commerce” is a minimum requirement that must be satisfied before the expiration of the statutory period for filing the statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(3). If the examining attorney determines, before taking an action in connection with the statement of use, that the verified statement of use in commerce has been omitted, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.
An application that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, is considered to be substantially in compliance with the minimum filing requirements under 37 C.F.R. §2.88(e)(3). In re Carnicon Development Co., 34 USPQ2d 1541 (Comm’r Pats. 1992); In re Conservation Technology Inc., 25 USPQ2d 1079 (Comm’r Pats. 1992). Thus, if the applicant files a statement containing a verified date of first use in commerce on or before the expiration of the period for filing the statement of use, the applicant has met the minimum filing requirements. The examining attorney must require a verified statement that the “mark is in use in commerce” before approving the statement of use. This statement may be filed after expiration of the deadline for filing the statement of use, within the period for response to the examining attorney’s Office action.
An applicant is not required to specify the method of use or the type of commerce in which a mark is used. TMEP §§901.03 and 905.
1109.09(a) Dates of Use
The statement of use must include the dates of the applicant’s first use of the mark and first use of the mark in commerce on or in connection with the goods/services specified in the notice of allowance. 15 U.S.C. §1051(d)(1). Where the applicant claims a §1(a) filing basis for some of the goods/services and a §1(b) filing basis for other goods/services, the statement of use must include dates of use for the §1(b) goods/services that are covered by the notice of allowance. 37 C.F.R. §2.88(b)(1)(ii). See TMEP §903.08 regarding applications in which more than one date is specified for a particular class.
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Setting forth the dates of use is not a minimum filing requirement that must be met before the application will be referred to the examining attorney. If the dates of use are omitted from the statement of use, but the statement that “the mark is in use in commerce” is included, the dates may be supplied after the expiration of the statutory period for filing the statement of use. The applicant may also amend or correct the dates of use after the expiration of the deadline for filing the statement of use, if the applicant meets the requirements of 37 C.F.R. §2.71(c)(2). Any amendment to the dates of use must be verified. 37 C.F.R. §2.71(c).
The date of first use in commerce may not be earlier than the date of first use anywhere. TMEP §903.03.
The applicant must state dates of use for each class. The dates of first use for each class must apply to at least one item in the class but do not have to apply to more than one item. However, the applicant must have used the mark in commerce on all items listed in the notice of allowance before filing the statement of use, unless the applicant files a request to divide. TMEP §1109.03. See TMEP §1110.07 regarding the division of an application in which a statement of use is due.
While the dates of use may be supplied after expiration of the statutory filing period, the applicant must make valid use of the mark in commerce on or in connection with all the goods/services in the application before the expiration of the statutory filing period. 37 C.F.R. §2.71(c)(2). If the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use, the examining attorney must refuse registration because the applicant failed to make use within the time permitted, and also inform the applicant that the application is deemed abandoned. When refusing registration on this ground, the examining attorney should issue a regular Office action with a six-month response clause. See TMEP §1109.16(b).
1109.09(b) Specimens
The examining attorney must examine the specimens to confirm that they show use of the subject matter as a mark on or in connection with the goods/services identified in the statement of use. See TMEP §§1202 et seq. regarding use of subject matter as a trademark, and 1301.02 et seq. regarding use of matter as a service mark. The examining attorney must also determine whether the mark as used on the specimens is a substantially exact representation of the mark on the drawing (see TMEP §§807.12(a) et seq. and 1109.12). The examining attorney should issue requirements and refusals, as appropriate, based on the examination of the specimens, subject to the same standards that govern the examination of specimens in a §1(a) application. TMEP §§904 et seq.
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The submission of at least one specimen with a statement of use is a statutory requirement that must be satisfied before expiration of the statutory period for filing the statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e); In re Campbell, 33 USPQ2d 1055 (Comm’r Pats. 1993). If the examining attorney determines, before taking an action regarding the statement of use, that no specimen was submitted with the statement of use, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.
In a multiple-class application, the applicant must submit one specimen for each class of goods/services in the statement of use before the statement of use may be approved. 37 C.F.R. §§2.86(b) and 2.88(b)(2). However, only one specimen for one class is needed to comply with the minimum filing requirements. If at least one specimen is filed within the time permitted for filing the statement of use, the applicant may submit specimen(s) for the other class(es) after the expiration of the statutory filing period, if the applicant verifies that the additional specimen(s) was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b).
If the applicant files at least one specimen with the statement of use, but the specimen is unacceptable, the applicant may provide a substitute specimen after the expiration of the time permitted for filing the statement of use, provided that the applicant verifies that the substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b). If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline, the examining attorney must refuse registration because the applicant failed to make use of the mark within the time permitted, and inform the applicant that the application is deemed abandoned. The examining attorney should issue a regular Office action with a six-month response clause. TMEP §1109.16(b). See TMEP §1108.03 regarding the filing of an “insurance” request for an extension of time to file a statement of use in order to gain additional time to make proper use of the mark.
If the dates of first use change as a result of the submission of a new specimen, the applicant must amend the dates of use in the statement of use. The amendment must be supported by an affidavit or declaration. 37 C.F.R. §2.71(c); TMEP §1109.09(a).
If the statement of use is filed electronically using TEAS, the applicant must submit a digitized image in .jpg or .pdf format. 37 C.F.R. §2.56(d)(4). See TMEP §904.02(a) for additional information about electronically filed specimens.
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1109.10 Ownership
Review by the ITU/Divisional Unit
Section 1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1), requires that “the applicant shall file ... a verified statement that the mark is in use in commerce ...” within six months of the notice of allowance, or within a previously granted extension of time to file a statement of use. The party filing the statement of use must be the owner of the mark at the time of filing. This is a statutory requirement that must be satisfied before the expiration of the deadline for filing the statement of use. In re Colombo, Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).
If the party who files a statement of use was the owner of the mark at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use. However, if the party who files a statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the application is abandoned.
The question of whether the statement of use was filed by the owner will be determined by the ITU/Divisional Unit. If a statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title. If the party who filed the statement of use was the owner at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use. See 37 C.F.R. §§3.71(d) and 3.73. To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Services Branch, and include a statement in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use. 37 C.F.R. §3.73(b)(1); TMEP §502.01.
If the applicant does not establish that the party who filed the statement of use was the owner of the application at the time of filing, the ITU/Divisional Unit will abandon the application. The true owner may then file a petition to revive under 37 C.F.R. §2.66, accompanied by a substitute statement of use or request for extension of time to file a statement of use, provided that granting the petition would not extend the period for filing the statement of use beyond thirty-six months after the issuance date of the notice of allowance. See TMEP §1714.01(b) regarding the requirements for petitions to revive.
If a statement of use is filed by the owner of the mark, but there is a minor error in the manner in which the name of the owner is set out, the mistake
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may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
Review by Examining Attorney
If an examining attorney determines, before taking an action in connection with the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney should return the statement of use to the ITU/Divisional Unit for appropriate action.
If the examining attorney determines, after taking an action regarding the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney must require the applicant to submit evidence to establish chain of title, as discussed above. If the party who filed the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the examining attorney must refuse registration because no acceptable statement of use was filed within the time permitted, and inform the applicant that the application is deemed abandoned. When refusing registration on this ground, the examining attorney should issue a regular Office action with a six- month response clause. See TMEP §1109.16(b).
1109.11 Verification and Execution
The requirement that a statement of use include a signed verification or declaration is a statutory requirement that must be satisfied before expiration of the deadline for filing the statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(3); In re Kinsman, 33 USPQ2d 1057 (Comm’r Pats. 1993).
If, before taking an action in connection with the statement of use, the examining attorney determines that the statement of use does not include a signed verification or declaration, the examining attorney should return the application to the ITU/Divisional Unit for appropriate action.
1109.11(a) Authority of Signatory
A statement of use must include a statement that is signed and verified by a person properly authorized to sign on behalf of the applicant. 37 C.F.R. §2.88(b)(1). Anyone who can verify the initial application may verify the statement of use. Generally, if the statement of use is filed by the owner of the mark, the USPTO will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §611.03(a).
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1109.11(b) Verification of Essential Elements
The examining attorney must review the verified statement of use to confirm that it conforms to the requirements of the Act and the rules. The verified statement must include an allegation that the applicant believes it is the owner of the mark, and a verification of the dates of use and identification of the goods/services. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1). See TMEP §1109.10 regarding ownership, TMEP §1109.09(a) regarding dates of use, and TMEP §1109.13 regarding the identification of goods/services.
The averment of ownership is an essential element of the verification. If it is omitted, the examining attorney must require the applicant to submit a verified statement that the applicant is the owner of the mark. This statement may be submitted after expiration of the time for filing the statement of use.
1109.11(c) Date of Execution
If the statement of use was executed before the stated dates of use, the examining attorney must require that the statement be re-executed. See TMEP §903.06(a) regarding apparent discrepancies between dates of use and execution dates, and TMEP §§903.04 and 1109.09(a) regarding amendment of the dates of use.
If the statement of use is filed more than one year after the date of execution, the examining attorney will require a substitute verification or declaration under 37 C.F.R. §2.20 stating that the mark is still in use in commerce. 37 C.F.R. §2.88(k); TMEP §804.03.
1109.11(d) Signature of Electronically Transmitted Statement of Use
See TMEP §611.01(c) regarding signature of documents filed through TEAS.
1109.12 Drawing
Under 37 C.F.R. §2.51(b), the drawing in an intent-to-use application must be a substantially exact representation of the mark as intended to be used and as actually used on filing the allegation of use. An applicant may not amend the mark in a drawing if the amendment is a material alteration of the mark on the drawing originally submitted with the application. 37 C.F.R. §2.72(b)(2); TMEP §§807.13(a) and 807.14 et seq. Also, the mark in the drawing must agree with the mark as used on the specimen(s). TMEP §§807.12(a) et seq. The same standards that apply to §1(a) applications for determining whether a specimen supports use of the mark and whether an amendment to the mark may be permitted also apply in the examination of the statement of use.
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Therefore, if the mark in the drawing filed with the application is not a substantially exact representation of the mark as used on the specimen, the examining attorney must require: (1) either submission of a new specimen or an amendment of the mark in the drawing, if the amendment of the mark would not be a material alteration of the mark on the original drawing; or (2) submission of a new specimen, if the amendment of the mark would be a material alteration of the mark on the original drawing. 37 C.F.R. §2.72(b)(2).
1109.13 Identification of Goods/Services in Statement of Use
The statement of use must either list or incorporate by reference the goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1)(ii). The goods/services specified in the statement of use must conform to the goods/services identified in the notice of allowance. 37 C.F.R. §2.88(i)(1). To incorporate the goods/services by reference, the applicant may state that the mark is in use on “those goods/services identified in the notice of allowance” or “those goods/services identified in the notice of allowance except...[followed by an identification of the goods/services to be deleted].” If the applicant omits any goods/services that were listed in the notice of allowance, the ITU/Divisional Unit will delete these goods/services from the application. The applicant may not thereafter reinsert the deleted goods/services. 37 C.F.R. §2.88(i)(2). In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing a statement of use for the omitted goods/services.
If the applicant fails to identify or incorporate by reference any goods or services, or if the applicant lists all the goods/services in the section of a pre- printed form designated for the identification of goods that are not in use, the Office will permit applicant to correct the mistake. The ITU staff will issue a letter noting that no goods or services were specified or incorporated by reference in the statement of use, and granting the applicant thirty days in which to submit a verified statement clarifying the goods/services.
1109.14 Classification
If the mark published in the wrong class of the goods/services, the examining attorney must ensure that the classification is corrected. This may be done in an examiner’s amendment without prior approval by the applicant (see TMEP §707.02). Republication is not required.
If class(es) are added to the application after the filing of the statement of use, the examining attorney must require payment of the fee(s) for filing the statement of use for the added class(es), in addition to the fee(s) required by 37 C.F.R. §2.6(a)(1) for adding a class(es) to the application. TMEP §1403.02(c).
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1109.15 Filing Fees
Payment of the filing fee for at least a single class is a statutory requirement that must be satisfied before the expiration of the statutory filing period. See 37 C.F.R. §§2.88(b)(3). In re L.R. Sport Inc., 25 USPQ2d 1533 (Comm’r Pats. 1992).
In a multiple-class application, if the applicant files the fee for at least one class of goods/services but fails to file the fees for additional class(es), the examining attorney must require payment of fees to cover all class(es) during examination of the statement of use. The additional fees may be paid after the time for filing the statement of use has expired, within the six-month period for response to the examining attorney’s Office action. If the USPTO does not receive a timely response to a fee deficiency letter, the USPTO will apply the fees paid to the lowest-numbered class(es) in ascending order, unless the applicant has expressly abandoned a specific unpaid-for class, and will delete the goods/services in the higher-numbered class(es) from the application. 37 C.F.R. §2.88(b)(3).
If an applicant files a statement of use and a request to divide the application at the same time, and the fees submitted are sufficient for one but not both, the fees will be applied first to the statement of use, and the applicant will be notified of the deficiency. See TMEP §§1110.02 and 1110.07 for further information about filing fees for requests to divide.
If the applicant files an “insurance” extension request in conjunction with a statement of use (see TMEP §1108.03), and the applicant submits fees sufficient for one but not both, the USPTO will apply the fees as follows: (1) if there is enough money to cover the extension request, the USPTO will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the USPTO will apply the fees to the statement of use.
See TMEP §1109.15(a) regarding returned checks, EFT and credit card payments that are refused by financial institutions, and fees charged to deposit accounts with insufficient funds.
1109.15(a) Processing Deficient Fees
If the filing fee for at least a single class is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the fee for at least one class of goods/services must be repaid before the expiration of the statutory filing period, or the application is abandoned.
If a check is returned unpaid or an EFT or credit card payment is refused, and the statement of use was accompanied by an authorization to charge
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deficient fee(s) to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, the USPTO will charge the filing fee for the statement of use and the fee for processing the returned check or refused payment (37 C.F.R. §2.6(b)(12)) to the deposit account.
If the examining attorney determines, before taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, the examining attorney should return the application to the ITU/Divisional Unit for appropriate action.
If the examining attorney determines, after taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, the examining attorney must refuse registration on the ground that the filing fee for the statement of use was not paid. If there is time remaining in the statutory period for filing the statement of use, the examining attorney should require the applicant to resubmit the filing fee on or before the statutory deadline. If a check was returned unpaid, or an EFT or credit card was refused, the examining attorney should also require submission of the processing fee required by 37 C.F.R. §2.6(b)(12). The processing fee may be paid after expiration of the statutory deadline for filing the statement of use.
If the fee for at least a single class has not been paid, and there is no time remaining in the statutory period for filing the statement of use, the examining attorney will issue an Office action refusing registration and stating that the application is abandoned because a proper statement of use was not filed within the time required by statute. 37 C.F.R. §§2.88(e)(1) and 2.88(h). In such a case, the examining attorney should issue a regular Office action, with a six-month response clause. If the applicant does not establish within the six-month response period that the fee for at least a single class of goods/services was paid prior to the expiration of the statutory filing period, the application will be abandoned.
If the fee for at least a single class is paid before expiration of the statutory deadline, but the fee(s) for additional class(es) are deficient, the examining attorney will issue an Office action requiring payment of the fee(s) to cover all class(es). The fee(s) may be submitted after expiration of the deadline for filing the statement of use, within the period for response to the examining attorney’s Office action. If a check was returned unpaid, or an EFT or credit card payment was refused, the examining attorney should also require submission of the processing fee required by 37 C.F.R. §2.6(b)(12).
If the statement of use has been approved and the mark is registered when the Office learns that the fee for the statement of use was deficient, the USPTO will cancel the registration as inadvertently issued, because the statutory requirements for registration have not been met. If the fee for at least a single class of goods/services was not paid before the expiration of the statutory filing period, the application will be abandoned. If the fee for at
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least a single class of goods/services was timely paid, but the fees for additional class(es) have not been paid, the USPTO will restore the application to pendency and refer it to the examining attorney for appropriate action.
See TMEP §405.06 regarding payments that are refused.
1109.16 Correcting Defects in Statement of Use
The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b)) before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). Other defects may be cured after the expiration of the statutory filing period, within the period for response to the Office action notifying the applicant of the defect. See TMEP §1109.16(a) regarding defects that must be cured before the expiration of the statutory filing period.
1109.16(a) Statutory Requirements That Must Be Met Within Statutory Filing Period
The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b)) before expiration of the period for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). Thus, the following deficiencies must be cured before expiration of the statutory filing period:
(1) Specimens and Dates of Use in Commerce. The applicant must make valid use of the mark in commerce and must provide one specimen that was in use before the expiration of the time permitted for filing the statement of use. 37 C.F.R. §2.59(b)(2). If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline for filing the statement of use, the examining attorney must refuse registration because the applicant failed to make use within the time permitted. See TMEP §1109.09(b).
The examining attorney must refuse registration on the same grounds if the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use. 37 C.F.R. §2.71(c)(2); TMEP §1109.09(a).
(2) Filing by Owner. The party filing the statement of use must be the owner of the mark at the time of filing. If the party who filed the statement of use was not the owner at the time of filing the statement
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of use, the applicant may not provide a substitute statement of use (or the equivalent) in the name of the true owner after the expiration of the deadline for filing the statement of use. In re Colombo, Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994). Therefore, if the party filing the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the application will be abandoned for failure to file a statement of use. See TMEP §1109.10 for further information.
(3) Verification. The statement of use must be verified by the applicant or a person properly authorized to sign on behalf of applicant. If the statement of use is unsigned or signed by the wrong party, a substitute verification must be filed before the expiration of the statutory period for filing the statement of use. 37 C.F.R. §2.88(e)(3). Generally, however, the USPTO does not question the authority of the person who verifies a statement of use. See TMEP §1109.11(a).
(4) Filing Fee For At Least a Single Class. Payment of the filing fee for at least a single class is a statutory requirement that must be satisfied before the expiration of the statutory period for filing the statement of use. See TMEP §§1109.15 and 1109.15(a).
When refusing registration on the above grounds, the examining attorney should issue a regular Office action with a six-month response clause. This gives the applicant six months to establish that it met the statutory requirements on or before the expiration of the time for filing the statement of use. See TMEP §1109.16(b).
1109.16(b) Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Requirements
When the examining attorney determines that the applicant did not meet the minimum statutory requirements within the period for filing the statement of use, the examining attorney must issue an Office action refusing registration on the ground that the applicant did not file a statement of use that meets the requirements of 15 U.S.C. §1051(d)(1). If there is time remaining in the statutory filing period, the Office action should state that the deficiency must be cured before the expiration of the deadline for filing the statement of use.
If there is no time remaining in the statutory filing period, the examining attorney should issue an Office action with a six-month response clause, stating that the application will be abandoned for failure to timely file a statement of use that meets the requirements of §1(d)(1) of the Act. Even though the statutory filing period has expired, the Office action should include a six-month response clause. This gives the applicant six months to establish that it met the minimum requirements on or before the expiration of the time for filing the statement of use.
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If the applicant fails to respond to the Office action, the application will be abandoned for failure to respond. If the applicant responds to the Office action, but does not establish that the requirements for filing a statement of use had been satisfied as of the expiration of the deadline for filing the statement of use, the examining attorney will make the refusal of registration final. If the applicant does not respond, the application will be abandoned for failure to respond to the final refusal.
See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that the applicant did not comply with the statutory requirements for filing the statement of use within the statutory filing period.
1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements
In limited circumstances, an applicant may file a request for an extension of time to file a statement of use after filing a statement of use, in order to gain more time to comply with the minimum requirements for filing the statement of use (sometimes called an “insurance” extension request). An applicant may file an extension request after filing a statement of use only if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). See TMEP §1108.03 regarding the time periods and requirements for filing an “insurance” extension request, and TMEP §1108.03(a) regarding the procedures for processing such a request.
The filing of an “insurance” extension request is not in itself a proper response to an Office action, and does not extend the six-month period for response to the Office action. See TMEP §1109.16(d).
Example: Assume that a notice of allowance issues July 3, 2009, the applicant files a statement of use on July 22, 2009, and the examining attorney issues an Office action requiring substitute specimens on August 6, 2009. The applicant may file an “insurance” extension request on or before January 3, 2010, which would give the applicant until July 3, 2010 to make proper use of the mark. However, the applicant must file a response to the Office action on or before February 6, 2010. See TMEP §1109.16(d) for information about responding to an Office action in this situation.
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1109.16(d) Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use
In limited circumstances, when the applicant files an “insurance” extension request in conjunction with or after filing a statement of use (see TMEP) and the examining attorney has issued an Office action, the six-month period for response to the Office action will expire before the statutory deadline for filing the statement of use. To avoid abandonment, the applicant must respond within six months of the issuance date of the Office action, regardless of the expiration date of the time for filing the statement of use.
If the time for filing the statement of use expires after the time for responding to an Office action, and the applicant believes that it can cure a deficiency raised in the Office action before expiration of the time for filing the statement of use, the applicant should timely respond to the Office action, stating in the response that it intends to comply with the minimum requirements for filing the statement of use on or before the expiration of the statutory filing period.
If the applicant files such a response, the examining attorney should not suspend the application. Instead, the examining attorney should make final any outstanding refusal or requirement. The applicant will then have six months from the issuance date of the final Office action to cure statutory deficiencies. Of course, applicant still must comply with the minimum requirements for filing the statement of use before the expiration date of the deadline for filing the statement of use.
Example: If the deadline for filing the statement of use expires July 3, 2009, and the examining attorney issues an Office action requiring substitute specimens on March 4, 2009, the applicant has until September 4, 2009 to file the substitute specimens, but the applicant must verify that the specimens were in use in commerce on or before July 3, 2009.
If the applicant files a proper response to the final Office action within six months of the date of issuance, and complies with the minimum requirements for filing the statement of use before the expiration of the period for filing the statement of use, the examining attorney will withdraw the refusal based on non-compliance with the statutory requirements for filing the statement of use.
1109.16(e) Applicant’s Recourse After Refusal of Registration
If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use within the time permitted, as set forth in 37 C.F.R. §2.88(e) (see TMEP §1109.01), the applicant may file a petition to revive under 37 C.F.R. §2.66. However, if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(e), but the examining attorney refuses registration on the ground that the applicant failed to satisfy the statutory
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requirements for a complete statement of use on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use), the applicant cannot overcome the refusal by filing a petition to revive under 37 C.F.R. §2.66. TMEP §1714.01(f)(ii). The applicant’s only recourse is to appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board.
See 37 C.F.R. §2.88(b) and TMEP §1109.16(a) regarding the statutory requirements that must be met within the statutory period for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).
1109.17 Withdrawal of the Statement of Use Prohibited
Once an applicant has filed a statement of use, the applicant may not withdraw the statement of use, even if the USPTO determines that the statement of use does not comply with the minimum filing requirements. 37 C.F.R. §2.88(g). In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993). Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed.
See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that applicant did not meet the statutory requirements for filing a statement of use before the expiration of the statutory deadline.
1109.18 Approval of the Statement of Use
Approval of the statement of use indicates that the mark is eligible for registration. If the examining attorney determines that the application is in condition for registration, the examining attorney will approve the mark for registration under §1(d) of the Trademark Act, 15 U.S.C. §1051(d). Before approving the mark for registration, the examining attorney must ensure that the information contained in the record is accurate, that all amendments filed by the applicant have been examined, that material that should be printed in the Official Gazette and on the registration certificate has been properly entered into TRAM, and that material that should not be printed has been deleted from TRAM. See TMEP §817 regarding preparation of an application for publication or registration. If an assignment has been recorded, the examining attorney should ensure that the ownership information in TRAM is updated to reflect the true owner of record. See TMEP §502.02(c). The examining attorney must also perform the appropriate TRAM transaction to ensure that the computer-generated notice of approval of the statement of use is issued.
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If the applicant filed an amendment to the Supplemental Register with or after filing a statement of use, and the application is otherwise in condition to be approved for registration, the examining attorney should approve the statement of use and approve the application for registration on the Supplemental Register. See TMEP §1102.03 regarding the examination of intent-to-use applications for registration on the Supplemental Register.
1110 Request to Divide an Application
37 C.F.R. §2.87. Dividing an application. (a) Application may be divided. An application may be divided into two or
more separate applications upon the payment of a fee for each new application created and submission by the applicant of a request in accordance with paragraph (d) of this section.
(b) Fee. In the case of a request to divide out one or more entire classes from an application, only the fee for dividing an application as set forth in §2.6(a)(19) will be required. However, in the case of a request to divide out some, but not all, of the goods or services in a class, the applicant must submit the application filing fee as set forth in §2.6(a)(1) for each new separate application to be created by the division, in addition to the fee for dividing an application.
(c) Time for filing. (1) A request to divide an application may be filed at any time between the application filing date and the date on which the trademark examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board.
(2) In an application under section 1(b) of the Act, a request to divide may also be filed with a statement of use under §2.88 or at any time between the filing of a statement of use and the date on which the trademark examining attorney approves the mark for registration.
(3) In a multiple-basis application, a request to divide out goods or services having a particular basis may also be filed during the period between the issuance of the notice of allowance under section 13(b)(2) of the Act and the filing of a statement of use under §2.88.
(d) Form. A request to divide an application should be made in a separate document from any other amendment or response in the application. The title “Request to Divide Application” should appear at the top of the first page of the document.
(e) Outstanding time periods apply to newly created applications. Any time period for action by the applicant which is outstanding in the original application at the time of the division will apply to each separate new application created by the division, except as follows:
(1) If an Office action pertaining to less than all the classes in a multiple-class application is outstanding, and the applicant files a request to divide out the goods, services, and/or class(es) to which the Office action does not pertain
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before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application;
(2) If an Office action pertaining to less than all the bases in a multiple-basis application is outstanding, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application; or
(3) In a multiple-basis application in which a notice of allowance has issued, if the applicant files a request to divide out the goods/services having the basis or bases to which the notice of allowance does not pertain before the deadline for filing the statement of use, the new (child) applications created by the division are not affected by the notice of allowance.
(f) Signature. The request to divide must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of §11.14.
(g) Section 66(a) applications - change of ownership with respect to some but not all of the goods or services. (1) When the International Bureau of the World Intellectual Property Organization notifies the Office that an international registration has been divided as the result of a change of ownership with respect to some but not all of the goods or services, the Office will construe the International Bureau’s notice as a request to divide. The Office will record the partial change of ownership in the Assignment Services Branch, and divide out the assigned goods/services from the original (parent) application. The Office will create a new (child) application serial number, and enter the information about the new application in its automated records.
(2) To obtain a certificate of registration in the name of the new owner for the goods/services that have been divided out, the new owner must pay the fee(s) for the request to divide, as required by §2.6 and paragraph (b) of this section. The examining attorney will issue an Office action in the child application requiring the new owner to pay the required fee(s). If the owner of the child application fails to respond, the child application will be abandoned. It is not necessary for the new owner to file a separate request to divide.
(3) The Office will not divide a section 66(a) application based upon a change of ownership unless the International Bureau notifies the Office that the international registration has been divided.
1110.01 Application May be Divided
Under 37 C.F.R. §2.87(a), an applicant may divide the application into two or more separate applications upon payment of the applicable fees. When dividing an application, the applicant preserves the filing date for all the goods/services covered by the application. See 37 C.F.R. §2.87(b) and TMEP §1110.02 regarding the fees for a request to divide.
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An applicant may request division of an application for any reason. For example, in an intent-to-use application, the applicant may wish to proceed to publication or registration with the goods/services on or in connection with which the applicant has used the mark in commerce and retain an active intent-to-use application for any remaining goods/services.
The applicant must file a request to divide if the applicant files an amendment to allege use before making use on all the goods/services for which applicant seeks registration under §1(b), or a statement of use before making use on all the goods/services specified in the notice of allowance. 37 C.F.R. §§2.76(c) and 2.88(c); TMEP §§1104.03(a) and 1109.03.
1110.02 Fees for Filing Request to Divide
Request to Divide Out One or More Entire Classes. With a request to divide out one or more entire classes from an application, only the fee for dividing the application (“divisional fee”), as set forth in 37 C.F.R. §2.6(a)(19), is required. A divisional fee is required for each new (child) application created by the division of the original (parent) application. 37 C.F.R. §2.87(b). No separate application filing fee is required for any new applications created.
Request to Divide Out Some, But Not All, of the Goods/Services in a Single Class. A request to divide out some, but not all, of the goods/services in a single class must be accompanied by both: (1) the divisional fee for each new (child) application created by the division of the original (parent) application (37 C.F.R. §2.6(a)(19)); and (2) an application filing fee for each new separate application created by the division, as set forth in 37 C.F.R. §2.6(a)(1). The amount of the new application filing fee depends on the method used to file the original application and request to divide, as follows:
• If the original application was filed through TEAS Plus and the request to divide is filed through TEAS, then the new application filing fee is the same as the TEAS Plus application filing fee (37 C.F.R. §2.6(a)(1)(iii));
• If the original application was not filed through TEAS Plus, and the request to divide is filed through TEAS, then the new application filing fee is the same as the TEAS application filing fee (37 C.F.R. §2.6(a)(1)(ii));
• If the request to divide is filed on paper, then the new application filing fee is the same as the fee for filing an application on paper (37 C.F.R. §2.6(a)(1)(i)), regardless of how the original application was filed.
The current fee schedule is available on the USPTO website at http://www.uspto.gov.
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If the request to divide does not include the required fee(s), the ITU/Divisional Unit will notify the applicant in writing of the deficiency and grant the applicant time to submit the required fees. The applicant must submit the fee(s) within the time permitted, or the request to divide will be considered abandoned and the application will not be divided. If the applicant does not submit the necessary fees, the ITU/Divisional Unit will notify the applicant that the request to divide is considered abandoned.
See TMEP §1110.07 regarding the application of fees when an applicant files a request to divide in conjunction with a statement of use and/or request for an extension of time to file a statement of use, but submits insufficient fees.
1110.03 Time for Filing Request to Divide
An applicant may file a request to divide at any time between the filing of the application and the date the examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board. 37 C.F.R. §2.87(c)(1).
A request to divide a §1(b) application may also be filed with a statement of use, or at any time between the filing of a statement of use and the date the examining attorney approves the mark for registration. 37 C.F.R. §2.87(c)(2).
In a multiple-basis application, a request to divide out goods/services having a particular basis may also be filed during the period between the issuance of the notice of allowance and the filing of the statement of use. 37 C.F.R. §2.87(c)(3).
If the USPTO receives a request to divide at any other time, the USPTO will deny the request, and refund any fees submitted with the request.
1110.04 Form and Processing of Request to Divide
A request to divide can be filed either on paper or through TEAS.
In TEAS, the applicant can file a request to divide directly as part of the TEAS “Allegation of Use” form, but only when the request to divide is limited to the creation of only one child application. If the applicant wishes to create more than one child application, or if the request to divide is being made in a context other than an “Allegation of Use” scenario, the applicant can still file electronically by doing the following: (1) choose the “global form” offering within TEAS, and (2) select therein the “Request to Divide Application” choice from the form pull-down list, which is found in the “Miscellaneous” form category. A “Request to Divide Registration” offering is also available in the global form, within the “Post- Registration” form category.
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A paper request to divide should be made in a separate document from any other amendment or response in the application. The title “Request to Divide Application” should appear at the top of the first page of the document. 37 C.F.R. §2.87(d).
All requests to divide should be immediately referred to the ITU/Divisional Unit for processing, unless the application is the subject of a proceeding before the Trademark Trial and Appeal Board. See TMEP §1110.09 regarding requests to divide applications that are the subject of a proceeding at the Board.
1110.05 Outstanding Time Periods Apply to Newly Created Applications
Any outstanding deadline in effect at the time an application is divided applies not only to the original application, but also to each separate new application created by the division of the application, except in the following circumstances:
(1) If an Office action pertaining to less than all the classes in a multiple- class application is outstanding, and the applicant files a request to divide out the goods, services, and/or class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application;
(2) If an Office action pertaining to less than all the bases in a multiple- basis application is outstanding, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application; or
(3) In a multiple-basis application in which a notice of allowance has issued, if the applicant files a request to divide out the goods/services having the basis or bases to which the notice of allowance does not pertain before the deadline for filing the statement of use, the new (child) application(s) created by the division is/are not affected by the notice of allowance.
37 C.F.R. §2.87(e).
1110.06 Signature of Request to Divide
A request to divide must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of 37 C.F.R. §11.14 (“qualified practitioner”). 37 C.F.R. §2.87(f). The ITU/Divisional Unit
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must ensure that the request to divide is signed by a proper party. If the applicant is represented by a qualified practitioner, the practitioner must sign the request to divide. 37 C.F.R. §11.18(a). If the applicant is pro se, the request must be signed by the individual applicant or someone with legal authority to bind a juristic applicant. See TMEP §611.06 et seq. for more information about persons who have legal authority to bind various types of entities who are not represented by an attorney, and TMEP §§611.05 et seq. regarding processing documents signed by someone other than the applicant or the applicant’s designated qualified practitioner.
1110.07 Dividing an Application When Statement of Use is Due
Filing a request to divide does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use.
Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application. 37 C.F.R. §2.87(e). Therefore, if a notice of allowance has issued and a statement of use is due, a statement of use, or request for extension of time to file a statement of use, is due in each separate new application created by the division, unless the following exception applies:
• In a multiple-basis application, if the applicant files a request to divide out the goods/services having the basis or bases to which the notice of allowance does not pertain before the deadline for filing the statement of use, the new (child) application(s) created by the division are not affected by the notice of allowance. 37 C.F.R. §2.87(e)(3); TMEP §1110.05.
A request to divide must be filed if the applicant files a statement of use before making use of the mark in commerce on all the goods/services specified in the notice of allowance as based on §1(b), unless the applicant deletes the goods/services that are not in use. 37 C.F.R. §2.88(c); TMEP §1109.03.
Requests to divide are given priority in processing over any other document, with one exception: if the applicant submits a request for extension of time to file a statement of use at the same time as or before the request to divide, and the extension request applies to the resulting applications, the extension request will be processed first. This provides the applicant with an extension that applies to all resulting applications without requiring additional fees for extension requests.
When the applicant files a request to divide goods/services that are in use from goods/services that are not yet in use, the USPTO puts the goods/services in use in the newly created (child) application, and retains the
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goods/services not in use in the original (parent) application. More child applications may later be created from the parent application.
When the applicant files a request to divide goods/services based solely on §44(e) from goods/services that are not yet in use, the USPTO puts the goods/services that are based solely on §44 in a newly created (child) application, and retains the goods/services not in use in the original (parent) application.
If the applicant submits a request to divide along with a statement of use and a request for an extension of time to file a statement of use, and the fees are insufficient to cover all three, the fees will be applied first to the extension request (if there is enough to cover the extension request), second to the statement of use, and last to the request to divide. See TMEP §1108.02(c) regarding fee deficiencies in extension requests, TMEP §1109.15(a) regarding fee deficiencies in statements of use, and TMEP §1110.02 regarding fee deficiencies in requests to divide.
1110.08 Dividing an Application When Response to Office Action is Due
Filing a request to divide is not a proper response to an Office action and does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action.
Any outstanding deadline in effect at the time the application is divided applies not only to the original application, but also to each new application created by the division of the application. 37 C.F.R. §2.87(e). Therefore, if a response to an Office action is due, the response is due in each separate new application created by the division of the application, unless one of the following exceptions applies:
(1) If the Office action pertains to less than all the classes in a multiple- class application, and the applicant files a request to divide out the goods, services, or class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.
(2) If the Office action pertains to less than all the bases in a multiple- basis application, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application.
37 C.F.R. §§2.87(e)(1) and (2).
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If the applicant files a request to divide goods/services that are subject to a refusal from goods/services that are not subject to a refusal, the USPTO puts the goods/services that are not subject to refusal in the new (child) application, and retains the goods/services that are subject to refusal in the original (parent) application. More child applications may later be created from the parent application.
When a request to divide is filed together with a response to an Office action, the response should be entered first, and then the request to divide should be referred to the ITU/Divisional Unit. The ITU/Divisional Unit will process the request and then return the application to regular processing.
A request to divide may be made by examiner’s amendment, if the applicant pays the fees by deposit account authorization or faxes an authorization to charge the fees to a credit card. However, fees cannot be charged to a deposit account by examiner’s amendment, unless the record already contains a written authorization signed and submitted by someone who is authorized to charge fees to the account. See TMEP §405.03 regarding deposit accounts.
1110.09 Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board
A request to divide may be filed during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board. 37 C.F.R. §2.87(c). When an application is the subject of a proceeding before the Board, any request to divide should first be referred to the Board for appropriate action. If the Board determines that the request to divide should be granted, the Board will refer the request to the ITU/Divisional Unit with instructions for dividing the application. The ITU/Divisional Unit will process the request and then return the application to regular processing. See TBMP §516.
See TBMP §1205.02 regarding the filing of a request to divide filed with or after an appeal.
1110.10 Dividing a §44 Application
When the applicant divides an application that includes a claim of priority under §44(d), the separate new (child) application(s) created through the division retain the priority filing date, provided that each new application meets the requirements of §44(d). This is true even if the applicant does not ultimately perfect a §44(e) basis. See 37 C.F.R. §§2.35(b)(3) and (4); TMEP §§806.01(c) and 806.02(f).
When an applicant requests division of an application that includes a copy of a foreign registration, the applicant does not have to provide additional copies for each new application created by the division.
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1110.11 Dividing a §66(a) Application
If ownership of an international registration changes for some but not all of the goods/services, the USPTO will not divide a §66(a) application unless the IB notifies the USPTO that the international registration has been divided. 37 C.F.R. §2.87(g)(3). See TMEP §1110.11(a) for further information about division of a §66(a) application after a partial change of ownership.
In all other situations, a §66(a) applicant may divide a §66(a) application into two or more separate applications, if applicant meets all the requirements of 37 C.F.R. §2.87. See TMEP §§1110.02 – 1110.06 for further requirements for filing a request to divide.
1110.11(a) Dividing a §66(a) Application After Change of Ownership With Respect to Some But Not All of the Goods/Services
When ownership of an international registration changes for some but not all of the goods/services for all designated Contracting Parties, the International Bureau of the World Intellectual Property Organization (“IB”) will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2008), Para. B.II.65.01.
When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods/services, the USPTO will construe the IB’s notice as a request to divide. The USPTO will record the partial change of ownership in the Assignment Services Branch, and divide out the assigned goods/services from the original (parent) application. The USPTO will create a new (child) application serial number, and enter the information about the new application in its automated records. 37 C.F.R. §2.87(g)(1).
To obtain a certificate of registration in the name of the new owner for the goods/services that have been divided out, the new owner must pay the required fee(s) for the request to divide. 37 C.F.R. §§2.6, 2.87(b), and 2.87(g)(2). The application will be forwarded to the examining attorney to issue an Office action in the new (child) application requiring the new owner to pay the required fees. See TMEP §1110.02 regarding the amount of the fee(s) for a request to divide. If the owner of the child application fails to respond, the child application will be abandoned. The USPTO will not approve the child application for publication or registration until the new owner pays the required divisional fees. It is not necessary for the new owner to file a separate request to divide.
The USPTO will not divide a §66(a) application based upon a change of ownership, unless the IB notifies the USPTO that the international registration has been divided. 37 C.F.R. §2.87(g)(3).
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See TMEP §1615.02 regarding division of registered extensions of protection of international registrations, and TMEP §501.07 regarding assignment of extensions of protection.
1110.12 Division of Registrations
See TMEP §§1615 et seq. regarding division of registrations.
Chapter 1200 Substantive Examination of
Applications
1201 Ownership of Mark
1201.01 Claim of Ownership May Be Based on Use By Related Companies
1201.02 Identifying the Applicant in the Application
1201.02(a) Identifying the Applicant Properly
1201.02(b) Application Void if Wrong Party Identified as the Applicant
1201.02(c) Correcting Errors in How the Applicant Is Identified
1201.02(d) Operating Divisions
1201.02(e) Changes in Ownership After Application Is Filed
1201.03 Use by Related Companies
1201.03(a) Use Solely by Related Company Must be Disclosed
1201.03(b) No Explanation of Applicant’s Control Over Use of Mark by Related Companies Required
1201.03(c) Wholly Owned Related Companies
1201.03(d) Common Stockholders, Directors, or Officers
1201.03(e) Sister Corporations
1201.03(f) License and Franchise Situations
1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record
1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use
1201.06 Special Situations Pertaining to Ownership
1201.06(a) Applicant Is Merely Distributor or Importer
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1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located
1201.07 Related Companies and Likelihood of Confusion
1201.07(a) “Single Source” – “Unity of Control”
1201.07(b) Appropriate Action with Respect to Assertion of Unity of Control
1201.07(b)(i) When Either Applicant or Registrant Owns All of the Other Entity
1201.07(b)(ii) When Either Applicant or Registrant Owns Substantially All of the Other Entity
1201.07(b)(iii) When the Record Does Not Support a Presumption of Unity of Control
1201.07(b)(iv) When the Record Contradicts an Assertion of Unity of Control
1202 Use of Subject Matter as Trademark
1202.01 Refusal of Matter Used Solely as a Trade Name
1202.02 Registration of Trade Dress
1202.02(a) Functionality
1202.02(a)(i) Statutory Basis for Functionality Refusal
1202.02(a)(ii) Purpose of Functionality Doctrine
1202.02(a)(iii) Background and Definitions
1202.02(a)(iii)(A) Functionality
1202.02(a)(iii)(B) “De Jure” and “De Facto” Functionality
1202.02(a)(iv) Burden of Proof in Functionality Determinations
1202.02(a)(v) Evidence and Considerations Regarding Functionality Determinations
1202.02(a)(v)(A) Utility Patents and Design Patents
1202.02(a)(v)(B) Advertising, Promotional, or Explanatory Material in Functionality Determinations
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1202.02(a)(v)(C) Availability of Alternative Designs in Functionality Determinations
1202.02(a)(v)(D) Ease or Economy of Manufacture in Functionality Determinations
1202.02(a)(vi) Aesthetic Functionality
1202.02(a)(vii) Functionality and Service Marks
1202.02(a)(viii) Functionality and Non-Traditional Marks
1202.02(b) Distinctiveness of Trade Dress
1202.02(b)(i) Distinctiveness and Product Design Trade Dress
1202.02(b)(ii) Distinctiveness and Product Packaging Trade Dress for Goods or Services
1202.02(c) Drawing and Description of Mark in Trade Dress Applications
1202.02(c)(i) Drawings in Trade Dress Applications
1202.02(c)(ii) Description Required
1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress Marks
1202.02(c)(iv) Three-Dimensional Marks
1202.02(d) Trade Dress in §1(b) Applications
1202.02(e) Trade Dress in §44 and §66(a) Applications
1202.03 Refusal on Basis of Ornamentation
1202.03(a) Commercial Impression
1202.03(b) Practices of the Trade
1202.03(c) “Secondary Source”
1202.03(d) Evidence of Distinctiveness
1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a) Applications
1202.03(f) Ornamentation: Case References
1202.03(f)(i) Slogans or Words Used on the Goods
1202.03(f)(ii) Designs Used on the Goods
1200-3 October 2009
1202.03(f)(iii) Trade Dress on the Containers for the Goods
1202.03(g) Ornamentation Cases and Acquired Distinctiveness
1202.04 Informational Matter
1202.05 Color as a Mark
1202.05(a) Color Marks Never Inherently Distinctive
1202.05(b) Functional Color Marks Not Registrable
1202.05(c) Color as a Separable Element
1202.05(d) Drawings of Color Marks Required
1202.05(d)(i) Drawings of Color Marks in Trademark Applications
1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications
1202.05(d)(iii) Amendment of Drawings of Color Marks
1202.05(d)(iv) Drawings for Marks Including Both Color and Words or Design
1202.05(e) Written Explanation of a Color Mark
1202.05(f) Specimens for Color Marks
1202.05(g) Special Considerations for Service Mark Applications
1202.05(h) Applications for Color Marks Based on §1(b)
1202.05(i) Applications for Color Marks Based on §44 or §66(a)
1202.06 Goods in Trade
1202.06(a) Goods Must Have Utility to Others
1202.06(b) Registration Must Be Refused if Trademark Not Used on Goods in Trade
1202.06(c) “Goods in Trade” in §1(b), §44, and §66(a) Applications
1202.07 Marks That Identify Columns or Sections of Publications
1202.07(a) Marks That Identify Columns or Sections of Printed Publications
1202.07(a)(i) Syndicated Columns and Sections
1200-4 October 2009
1202.07(a)(ii) Non-Syndicated Columns and Sections
1202.07(a)(iii) Marks That Identify Columns and Sections of Printed Publications in §1(b), §44, and §66(a) Applications
1202.07(b) Marks That Identify Columns and Sections of Online Publications
1202.08 Title of a Single Creative Work
1202.08(a) What Constitutes a Single Creative Work
1202.08(b) What Does Not Constitute a Single Creative Work
1202.08(c) Complete Title of the Work – Evidence of a Series
1202.08(d) Portion of a Title of the Work
1202.08(d)(i) Mark Must Create a Separate Commercial Impression
1202.08(d)(ii) Establishing a Series When the Mark is a Portion of the Title
1202.08(d)(iii) Evidence that the Portion of the Title is Promoted or Recognized as a Mark
1202.08(e) Identification of Goods/Services
1202.08(f) Title of a Single Work in §1(b), §44, and §66(a) Applications
1202.09 Names of Artists and Authors
1202.09(a) Names and Pseudonyms of Authors and Performing Artists
1202.09(a)(i) Author or Performer’s Name – Evidence of a Series
1202.09(a)(ii) Evidence that the Name is a Source Identifier
1202.09(a)(ii)(A) Promotion and Recognition of the Name
1202.09(a)(ii)(B) Control over the Nature and Quality of the Goods
1202.09(a)(iii) Names of Authors and Performing Artists in §1(b), §44, and §66(a) Applications
1200-5 October 2009
1202.09(b) Names of Artists Used on Original Works of Art
1202.10 Names and Designs of Characters in Creative Works
1202.10(a) Names and Designs of Characters in Creative Works in §1(b), §44, or §66(a) Applications
1202.11 Background Designs and Shapes
1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants)
1202.13 Scent, Fragrance, or Flavor
1202.14 Holograms
1202.15 Sound Marks
1202.16 Model or Grade Designations
1203 Refusal on Basis of Immoral or Scandalous Matter; Deceptive Matter; Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.01 Immoral or Scandalous Matter
1203.02 Deceptive Matter
1203.02(a) Types of Deceptive Marks
1203.02(b) Elements of a §2(a) Deceptiveness Refusal
1203.02(c) Distinction between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1))
1203.02(d) Determining Materiality
1203.02(d)(i) Objective Criteria
1203.02(d)(ii) Mere Personal Preference
1203.02(e) Procedures for Issuing §2(a) Deceptive Refusals
1203.02(e)(i) When the Mark is Clearly Misdescriptive
1203.02(e)(ii) When It is Not Clear Whether the Mark is Misdescriptive
1203.02(f) Responding to a §2(a) Deceptiveness Refusal
1203.02(f)(i) Amending the Identification of Goods or Services
1203.02(f)(ii) Other Arguments
1200-6 October 2009
1203.02(g) Deceptive Matter: Case References
1203.03 Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.03(a) “Persons” Defined
1203.03(b) “National Symbols” Defined
1203.03(c) Disparagement, Bringing into Contempt, and Bringing into Disrepute
1203.03(d) Disparagement, Bringing into Contempt, and Bringing into Disrepute: Case References
1203.03(e) False Suggestion of a Connection
1203.03(f) False Suggestion of a Connection: Case References
1204 Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation
1204.01 Flags and Simulations of Flags
1204.01(a) Flags and Simulations of Flags are Refused
1204.01(b) Stylized Flag Designs are not Refused under §2(b)
1204.01(c) Caselaw Interpreting "Simulation of Flag"
1204.01(d) Description of the Mark
1204.01(e) Flags Not Presently Used as National Flags
1204.02 Government Insignia
1204.02(a) Designs that are Insignia Under §2(b) Must Be Refused
1204.02(b) Examples of Insignia That Should Be Refused
1204.02(c) Examples of Designs That Should Not Be Refused
1204.02(d) Caselaw Interpreting Insignia Under §2(b)
1204.03 Other Refusals May be Appropriate
1204.04 Responding to §2(b) Refusal
1204.04(a) Absolute Bar to Registration
1204.04(b) Deletion of §2(b) Matter
1200-7 October 2009
1204.04(b)(i) Examples of Matter That May and May Not Be Deleted
1204.05 Resources
1205 Refusal on Basis of Matter Protected by Statute or Convention
1205.01 Statutory Protection
1205.01(a) Examination Procedures for Marks Comprising a Red Crystal or Red Crescent on a White Background, or the Phrases “Red Crescent” or “Third Protocol Emblem”
1205.01(a)(i) First Use After December 8, 2005
1205.01(a)(ii) First Use On or Before December 8, 2005 – Grandfather Clause
1205.01(a)(iii) Date of First Use Not Specified
1205.01(a)(iv) Nature of the Mark
1205.01(a)(v) Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation
1205.01(a)(vi) Parties Authorized to use the Red Crescent and Third Protocol Emblem
1205.02 Article 6ter of the Paris Convention
1206 Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent
1206.01 Name, Portrait, or Signature of Particular Living Individual
1206.02 Connection With Goods or Services
1206.03 When Inquiry is Required
1206.04 Consent of Individual or President’s Widow
1206.04(a) Consent Statement Must Be Written Consent to Registration
1206.04(b) Consent May Be Presumed From Signature of Application
1206.04(c) New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant
1206.04(d) Implicit Consent
1200-8 October 2009
1206.05 Names and Likenesses That Do Not Identify a Particular Living Individual
1207 Refusal on Basis of Likelihood of Confusion, Mistake, or Deception
1207.01 Likelihood of Confusion
1207.01(a) Relatedness of the Goods or Services
1207.01(a)(i) Goods or Services Need Not Be Identical
1207.01(a)(ii) Goods May Be Related to Services
1207.01(a)(ii)(A) Food and Beverage Products Versus Restaurant Services
1207.01(a)(iii) Reliance on Identification of Goods/Services in Registration and Application
1207.01(a)(iv) No “Per Se” Rule
1207.01(a)(v) Expansion of Trade Doctrine
1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services
1207.01(b) Similarity of the Marks
1207.01(b)(i) Word Marks
1207.01(b)(ii) Similarity In Appearance
1207.01(b)(iii) Comparing Marks That Contain Additional Matter
1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents
1207.01(b)(v) Similarity in Meaning
1207.01(b)(vi) Doctrine of Foreign Equivalents
1207.01(b)(vi)(A) Background
1207.01(b)(vi)(B) When an Ordinary American Purchaser Would “Stop and Translate”
1207.01(b)(vi)(C) Likelihood of Confusion Factors Still Apply When Assessing Whether Marks are Confusingly Similar
1207.01(b)(vii) Transposition of Terms
1207.01(b)(viii) Marks Consisting of Multiple Words
1200-9 October 2009
1207.01(b)(ix) Weak or Descriptive Marks
1207.01(b)(x) Parody Marks
1207.01(c) Design Marks
1207.01(c)(i) Legal Equivalents – Comparison of Words and Their Equivalent Designs
1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs
1207.01(c)(iii) Comparison of Standard Character Marks and Special Form Marks
1207.01(c)(iv) Matter Depicted in Broken Lines
1207.01(d) Miscellaneous Considerations
1207.01(d)(i) Doubt Resolved in Favor of Registrant
1207.01(d)(ii) Absence of Actual Confusion
1207.01(d)(iii) Third-Party Registrations and Evidence of Third- Party Use
1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding
1207.01(d)(v) Classification of Goods/Services
1207.01(d)(vi) Prior Decisions of Examining Attorneys
1207.01(d)(vii) Sophisticated Purchasers
1207.01(d)(viii) Consent Agreements
1207.01(d)(ix) Fame of Mark
1207.01(d)(x) Conflicting Marks Owned by Different Parties
1207.01(d)(xi) Family of Marks
1207.02 Marks That Are Likely to Deceive
1207.03 Marks Previously Used in United States but Not Registered
1207.04 Concurrent Use Registration
1207.04(a) Concurrent Use – In General
1207.04(b) Filing Basis of Application Seeking Concurrent Use
1200-10 October 2009
1207.04(c) Basis for Concurrent Use Registration
1207.04(d) Determining Eligibility for Concurrent Use
1207.04(d)(i) Requirements for All Concurrent Use Applications
1207.04(e) Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board
1207.04(e)(i) Preparing the Record for Publication
1207.04(f) Application for Concurrent Use Registration Pursuant to Court Decree
1207.04(f)(i) Preparing the Record for Publication
1208 Conflicting Marks in Pending Applications
1208.01 Priority for Publication or Issue Based on Effective Filing Date
1208.01(a) What Constitutes Conflict Between Pending Applications
1208.01(b) What Constitutes Effective Filing Date
1208.01(c) Change in Effective Filing Date During Examination
1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival
1208.02 Conflicting Applications Examination Procedure
1208.02(a) Examination of Application with Earliest Effective Filing Date
1208.02(b) Action on Later-Filed Application: Giving Notice of the Earlier Application or Applications
1208.02(c) Suspension of Later-Filed Application
1208.02(d) Action on Later-Filed Application upon Disposition of the Earlier Application or Applications
1208.02(e) Applicant’s Argument on Issues of Conflict
1208.02(f) Conflicting Mark Mistakenly Published or Approved for Issuance on the Supplemental Register
1208.03 Procedure Relating to Possibility of Interference
1208.03(a) Procedures on Request for Interference
1208.03(b) Decision on Request for Interference
1200-11 October 2009
1208.03(c) Procedure When Interference Is to be Declared
1209 Refusal on Basis of Descriptiveness
1209.01 Distinctiveness/Descriptiveness Continuum
1209.01(a) Fanciful, Arbitrary, and Suggestive Marks
1209.01(b) Merely Descriptive Marks
1209.01(c) Generic Terms
1209.01(c)(i) Test
1209.01(c)(ii) Terminology
1209.01(c)(iii) Generic Matter: Case References
1209.02 Procedure for Descriptiveness and/or Genericness Refusal
1209.02(a) Descriptive Marks – Advisory Statement That Mark Appears to Be Generic
1209.02(a)(i) Amendment to Supplemental Register in Response to Office Action
1209.02(a)(ii) Assertion of §2(f) in Response to Office Action
1209.02(b) Descriptive and Possibly Generic Marks – Assertion of §2(f) in Application
1209.03 Considerations Relevant to Determination of Descriptiveness
1209.03(a) Third-Party Registrations
1209.03(b) No Dictionary Listing
1209.03(c) First or Only User
1209.03(d) Combined Terms
1209.03(e) More Than One Meaning
1209.03(f) Picture or Illustration
1209.03(g) Foreign Equivalents
1209.03(h) Incongruity
1209.03(i) Intended Users
1209.03(j) Phonetic Equivalent
1200-12 October 2009
1209.03(k) Laudatory Terms
1209.03(l) Telephone Numbers
1209.03(m) Domain Names
1209.03(n) “America” or “American”
1209.03(o) “National,” “International,” “Global,” and “Worldwide”
1209.03(p) Function or Purpose
1209.03(q) Source or Provider of Goods or Services
1209.03(r) Retail Store and Distributorship Services
1209.03(s) Slogans
1209.03(t) Repetition of Descriptive Term
1209.03(u) Punctuation
1209.04 Deceptively Misdescriptive Marks
1210 Refusal on Basis of Geographic Significance
1210.01 Elements
1210.01(a) Geographically Descriptive Marks – Test
1210.01(b) Geographically Deceptively Misdescriptive Marks – Test
1210.01(c) Geographically Deceptive Marks – Test
1210.02 Primarily Geographic Significance
1210.02(a) Geographic Locations
1210.02(b) Primary Significance
1210.02(b)(i) Other Meanings
1210.02(b)(i)(A) Surname Significance
1210.02(b)(ii) More Than One Geographic Location With Same Name
1210.02(b)(iii) Non-Geographic Characteristics of Goods or Services
1210.02(b)(iv) “America” or “American” and Similar Terms in Marks
1200-13 October 2009
1210.02(c) Geographic Terms Combined With Additional Matter
1210.02(c)(i) Two Geographic Terms Combined
1210.02(c)(ii) Geographic Terms Combined With Descriptive or Generic Matter
1210.02(c)(iii) Arbitrary, Fanciful, or Suggestive Composites
1210.03 Geographic Origin of the Goods or Services
1210.04 Goods/Place or Services/Place Association
1210.04(a) Establishing Goods/Place Association
1210.04(b) Establishing Services/Place Association
1210.04(c) Obscure or Remote Geographic Marks
1210.04(d) Arbitrary Use of Geographic Terms
1210.05 Geographically Deceptive Marks
1210.05(a) Basis for Refusal
1210.05(b) Elements of a §2(e)(3) Refusal
1210.05(c) Determining Materiality
1210.05(c)(i) Materiality In Cases Involving Goods
1210.05(c)(ii) Materiality In Cases Involving Services
1210.05(d) Procedures for Issuing Geographically Deceptive Refusals
1210.05(d)(i) Neither Applicant Nor Goods/Services Come from the Place Named
1210.05(d)(ii) It is Not Clear Whether the Goods/Services Originate From the Place Named
1210.05(e) Geographically Deceptive Matter: Case References
1210.06 Procedure for Examining Geographic Composite Marks
1210.06(a) Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter
1210.06(b) Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter
1200-14 October 2009
1210.07 Supplemental Register and Section 2(f)
1210.07(a) Registrability of Geographic Terms on the Supplemental Register
1210.07(b) Registrability of Geographic Terms Under Section 2(f)
1210.08 Geographical Indications Used on Wines and Spirits
1210.08(a) Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place
1210.08(b) Geographical Indications Used on Wines and Spirits That Originate in the Named Place
1210.08(c) Geographical Indications That Are Generic for Wines and Spirits
1210.09 Geographic Certification Marks
1210.10 Doctrine of Foreign Equivalents
1211 Refusal on Basis of Surname
1211.01 “Primarily Merely a Surname”
1211.01(a) Non-Surname Significance
1211.01(a)(i) Ordinary Language Meaning
1211.01(a)(ii) Phonetic Equivalent of Term With Ordinary Language Meaning
1211.01(a)(iii) Geographical Significance
1211.01(a)(iv) Historical Place or Person
1211.01(a)(v) Rare Surnames
1211.01(a)(vi) “Look And Feel” of a Surname
1211.01(a)(vii) Doctrine of Foreign Equivalents
1211.01(b) Surname Combined with Additional Matter
1211.01(b)(i) Double Surnames
1211.01(b)(ii) Stylization or Design Elements
1211.01(b)(iii) Surname Combined with Initials
1211.01(b)(iv) Surname Combined with Title
1200-15 October 2009
1211.01(b)(v) Surname in Plural or Possessive Form
1211.01(b)(vi) Surname Combined with Wording
1211.01(b)(vii) Surname Combined With Domain Name
1211.01(b)(viii) – Surname Combined With Legal or Familial Entity Designation
1211.02 Evidence Relating to Surname Refusal
1211.02(a) Evidentiary Burden – Generally
1211.02(b) Evidentiary Considerations
1211.02(b)(i) Telephone Directory Listings
1211.02(b)(ii) LexisNexis® Research Database Evidence
1211.02(b)(iii) U.S. Census Database Evidence
1211.02(b)(iv) Surname of Person Associated with Applicant
1211.02(b)(v) Specimens Confirming Surname Significance of Term
1211.02(b)(vi) Negative Dictionary Evidence
1211.02(b)(vii) Evidence of Fame of a Mark
1212 Acquired Distinctiveness or Secondary Meaning
1212.01 General Evidentiary Matters
1212.02 General Procedural Matters
1212.02(a) Situations in which a Claim of Distinctiveness under §2(f) Is Appropriate
1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive
1212.02(c) Claiming §2(f) Distinctiveness in the Alternative
1212.02(d) Unnecessary §2(f) Claims
1212.02(e) Disclaimers in Applications Claiming Distinctiveness under §2(f)
1212.02(f) Section 2(f) Claim in Part
1212.02(f)(i) Section 2(f) Claim as to a Portion of the Mark
1200-16 October 2009
1212.02(f)(ii) Section 2(f) Claim Restricted to Particular Goods/Services/Classes
1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or Appropriate Kind/Amount of Evidence
1212.02(h) Nonfinal and Final Refusals
1212.02(i) Section 2(f) Claim with Respect to Incapable Matter
1212.03 Evidence of Distinctiveness Under §2(f)
1212.04 Prior Registrations as Proof of Distinctiveness
1212.04(a) Sufficiency of Claim vis-à-vis Nature of the Mark
1212.04(b) “Same Mark”
1212.04(c) Relatedness of Goods or Services
1212.04(d) Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905
1212.04(e) Form of §2(f) Claim Based on Ownership of Prior Registrations
1212.05 Five Years of Use as Proof of Distinctiveness
1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark
1212.05(b) “Substantially Exclusive and Continuous”
1212.05(c) Use “as a Mark”
1212.05(d) Form of the Proof of Five Years’ Use
1212.06 Establishing Distinctiveness by Actual Evidence
1212.06(a) Long Use of the Mark in Commerce
1212.06(b) Advertising Expenditures
1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator
1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies
1212.06(e) Miscellaneous Considerations Regarding Evidence Submitted to Establish Distinctiveness
1212.06(e)(i) First or Only User
1200-17 October 2009
1212.06(e)(ii) State Trademark Registrations
1212.06(e)(iii) Design Patent
1212.06(e)(iv) Acquiescence to Demands of Competitors
1212.07 Form of Application Asserting Distinctiveness
1212.08 Section 44 and §66(a) Applications and Distinctiveness
1212.09 Section 1(b) Applications and Distinctiveness
1212.09(a) Section 2(f) Claim Requires Prior Use
1212.09(b) Claim of §2(f) “in Part” in §1(b) Application
1212.10 Printing “§2(f)” Notations
1213 Disclaimer of Elements in Marks
1213.01 History of Disclaimer Practice
1213.01(a) Discretion in Requiring Disclaimer
1213.01(b) Refusal to Register Because of Failure to Disclaim
1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter
1213.02 “Composite” Marks
1213.03 Disclaimer of Unregistrable Components of Marks
1213.03(a) “Unregistrable Components” in General
1213.03(b) Generic Matter and Matter Which Does Not Function as a Mark
1213.03(c) Pictorial Representations of Descriptive Matter
1213.03(d) Entity Designations
1213.04 Trade Names
1213.05 “Unitary” Marks
1213.05(a) Compound Word Marks
1213.05(a)(i) Telescoped Words
1213.05(a)(ii) Compound Words Formed with Hyphen or Other Punctuation
1200-18 October 2009
1213.05(b) Slogans
1213.05(c) “Double Entendre”
1213.05(d) Incongruity
1213.05(e) Sound Patterns
1213.05(f) Display of Mark
1213.06 Entire Mark May Not Be Disclaimed
1213.07 Removal Rather than Disclaimer
1213.08 Form of Disclaimers
1213.08(a) Wording of Disclaimer
1213.08(a)(i) Standardized Printing Format for Disclaimer
1213.08(a)(ii) Unacceptable Wording for Disclaimer
1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety
1213.08(c) Disclaimer of Misspelled Words
1213.08(d) Disclaimer of Non-English Words
1213.09 Mark of Another May Not Be Registered with Disclaimer
1213.10 Disclaimer in Relation to Likelihood of Confusion
1213.11 Acquiring Rights in Disclaimed Matter
1214 “Phantom” Elements in Marks
1214.01 Single Application May Seek Registration of Only One Mark
1214.02 Agreement of Mark on Drawing With Mark on Specimens or Foreign Registration
1214.03 “Phantom Marks” in §1(b) Applications
1214.04 “Phantom Marks” in §44 and §66(a) Applications
1215 Marks Composed, in Whole or in Part, of Domain Names
1215.01 Background
1215.02 Use as a Mark
1215.02(a) Use Applications
1200-19 October 2009
1215.02(b) Advertising One’s Own Products or Services on the Internet is not a Service
1215.02(c) Agreement of Mark on Drawing with Mark on Specimens of Use
1215.02(d) Marks Comprised Solely of TLDs for Domain Name Registry Services
1215.02(e) Section 1(b) Applications
1215.02(f) Section 44 and §66(a) Applications
1215.03 Surnames
1215.04 Descriptiveness
1215.05 Generic Refusals
1215.06 Marks Containing Geographical Matter
1215.07 Disclaimers
1215.08 Material Alteration
1215.08(a) Adding or Deleting TLDs in Domain Name Marks
1215.08(b) Adding or Deleting TLDs in Other Marks
1215.09 Likelihood of Confusion
1215.10 Marks Containing the Phonetic Equivalent of a Top-Level Domain
1216 Effect of Applicant’s Prior Registrations
1216.01 Decisions Involving Prior Registrations Not Controlling
1216.02 Effect of “Incontestability” in Ex Parte Examination
1217 Res Judicata, Collateral Estoppel, and Stare Decisis
1201 Ownership of Mark
Under §1(a)(1) of the Trademark Act, 15 U.S.C. §1051(a)(1), an application based on use in commerce must be filed by the owner of the mark. A §1(a) application must include a verified statement that the applicant believes it is the owner of the mark sought to be registered. 15 U.S.C. §1051(a)(3)(A); 37 C.F.R. §2.33(b)(1). An application that is not filed by the owner is void. See TMEP §1201.02(b).
1200-20 October 2009
An application under §1(b) or §44 of the Act, 15 U.S.C. §1051(b) or §1126, must be filed by a party who is entitled to use the mark in commerce, and must include a verified statement that the applicant is entitled to use the mark in commerce and that the applicant has a bona fide intention to use the mark in commerce as of the application filing date. 15 U.S.C. §§1051(b)(3), 1126(d)(2), and 1126(e); 37 C.F.R. §2.33(b)(2). When the person designated as the applicant is not the person with a bona fide intention to use the mark in commerce, the application is void. See TMEP §1201.02(b).
In a §1(b) application, before the mark can be registered, the applicant must file an amendment to allege use under 15 U.S.C. §1051(c) (see TMEP §§1104 et seq.) or a statement of use under 15 U.S.C. §1051(d) (see TMEP §§1109 et seq.) which states that the applicant is the owner of the mark. 15 U.S.C. §§1051(b)(3)(A) and (B); 37 C.F.R. §§2.76(b)(1) and 2.88(b)(1).
In a §44 application, the applicant must be the owner of the foreign application or registration on which the United States application is based as of the filing date of the United States application. See TMEP §1005.
An application under §66(a) of the Trademark Act (i.e., a request for extension of protection of an international registration to the United States under the Madrid Protocol), must be filed by the holder of the international registration. 15 U.S.C. §1141e(a). The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1141(5). The verified statement in a §66(a) application is part of the international registration on file at the International Bureau of the World Intellectual Property Organization (“IB”). The IB will have established that the international registration includes this verified statement before it sends the request for extension of protection to the United States Patent and Trademark Office (“USPTO”). See TMEP §804.05. The request for extension of protection remains part of the international registration, and ownership is determined by the IB. See TMEP §501.07 regarding assignment of §66(a) applications.
1201.01 Claim of Ownership May Be Based on Use By Related Companies
In an application under §1 of the Trademark Act, an applicant may base its claim of ownership of a trademark or a service mark on:
(1) its own exclusive use of the mark;
(2) use of the mark solely by a related company whose use inures to the applicant’s benefit (see TMEP §§1201.03 et seq.); or
(3) use of the mark both by the applicant and by a related company whose use inures to the applicant’s benefit (see TMEP §1201.05).
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Where the mark is used by a related company, the owner is the party who controls the nature and quality of the goods sold or services rendered under the mark. The owner is the only proper party to apply for registration. 15 U.S.C. §1051. See TMEP §§1201.03 et seq. for additional information about use by related companies.
The examining attorney should accept the applicant’s statement regarding ownership of the mark unless it is clearly contradicted by information in the record. In re Los Angeles Police Revolver and Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2003).
The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark. Moreover, where the application states that use of the mark is by a related company or companies, the examining attorney should not require any explanation of how the applicant controls such use.
The provisions discussed above also apply to service marks, collective marks, and certification marks, except that, by definition, collective marks and certification marks are not used by the owner of the mark, but are used by others under the control of the owner. 15 U.S.C. §§1053 and 1054. See TMEP §§1303.01, 1304.03, and 1306.01(a).
See TMEP §1201.04 for information about when an examining attorney should issue an inquiry or refusal with respect to ownership.
1201.02 Identifying the Applicant in the Application
1201.02(a) Identifying the Applicant Properly
The applicant may be any person or entity capable of suing and being sued in a court of law. See TMEP §§803 et seq. for the appropriate format for identifying the applicant and setting forth the relevant legal entity. See TMEP §1201.03(a) regarding the form for indicating that the mark is used solely by a related company.
1201.02(b) Application Void if Wrong Party Identified as the Applicant
An application must be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. See TMEP §1201.
An application based on use in commerce under 15 U.S.C. §1051(a) must be filed by the party who owns the mark on the application filing date. If the applicant does not own the mark on the application filing date, the application is void. 37 C.F.R. §2.71(d). Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d
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1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007).
If the record indicates that the applicant is not the owner of the mark, the examining attorney should refuse registration on that ground. The statutory basis for this refusal is §1 of the Trademark Act, 15 U.S.C. §1051, and, where related company issues are relevant, §§5 and 45 of the Act, 15 U.S.C. §§1055 and 1127. The examining attorney should not have the filing date cancelled or refund the application filing fee.
In an application under §1(b) or §44 of the Trademark Act, 15 U.S.C. §1051(b) or §1126, the applicant must be entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §§1051(b)(3)(A), 1051(b)(3)(B), 1126(d)(2), and 1126(e). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void. American Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000) (intent-to- use application filed by an individual held void, where the entity that had a bona fide intention to use the mark in commerce on the application filing date was a partnership composed of the individual applicant and her husband). However, the examining attorney will not inquire into the bona fides, or good faith, of an applicant’s asserted intention to use a mark in commerce during ex parte examination, unless there is evidence in the record clearly indicating that the applicant does not have a bona fide intention to use the mark in commerce. See TMEP §1101.
When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment. 37 C.F.R. §2.71(d); TMEP §803.06. However, if the application was filed by the owner, but there was a mistake in the manner in which the applicant’s name was set forth in the application, this may be corrected. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
See TMEP §1201 regarding ownership of a §66(a) application.
1201.02(c) Correcting Errors in How the Applicant Is Identified
If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be corrected by amendment. U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613 (Comm’r Pats. 1974). However, the application may not be amended to designate another entity as the applicant. 37 C.F.R. §2.71(d); TMEP §803.06. An application filed in the name of the wrong party is void and cannot be corrected by amendment. Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats,
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Inc., 84 USPQ2d 1235 (TTAB 2007); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).
Correctable Errors. The following are examples of correctable errors in identifying the applicant:
(1) Trade Name Set Forth As Applicant. If the applicant identifies itself by a name under which it does business, which is not a legal entity, then amendment to state the applicant’s correct legal name is permitted. Cf. In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm'r Pats 1990) (Post Registration staff erred in refusing to allow amendment of affidavit under 15 U.S.C. §1058 to show registrant’s corporate name rather than registrant’s trade name).
(2) Operating Division Identified as Applicant. If the applicant mistakenly names an operating division, which by definition is not a legal entity, as the owner, then the applicant’s name may be amended. See TMEP §1201.02(d).
(3) Minor Clerical Error. Minor clerical errors such as the mistaken addition or omission of “The” or “Inc.” in the applicant’s name may be corrected by amendment, as long as this does not result in a change of entity. However, change of a significant portion of the applicant’s name is not considered a minor clerical error.
(4) Inconsistency in Original Application as to Owner Name or Entity. If the original application reflects an inconsistency between the owner name and the entity type, e.g., an individual and a corporation are each identified as the owner in different places in the application, the application may be amended to clarify the inconsistency.
Example: Inconsistency Between Owner Section and Entity Section of TEAS Form: If the information in the “owner section” of a TEAS application form is inconsistent with the information in the “entity section” of the form, the inconsistency can be corrected, e.g., if an individual is identified as the owner and a corporation is listed as the entity, the application may be amended to indicate the proper applicant name/entity.
Signature of Verification By Different Entity Does Not Create Inconsistency. In view of the broad definition of a “person properly authorized to sign on behalf of the applicant” in 37 C.F.R. §2.33(a) (see TMEP §611.03(a)), if the person signing an application refers to a different entity, the USPTO will presume that the person signing is an authorized signatory who meets the requirements of 37 C.F.R. §2.33(a), and will not issue an inquiry regarding the inconsistency or question the signatory’s authority to sign. If the applicant later requests correction to identify the party who signed the verification as
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the owner, the USPTO will not allow the amendment. For example, if the application is filed in the name of “John Jones, individual U.S. citizen,” the verification is signed by “John Jones, President of ABC Corporation,” and the applicant later proposes to amend the application to show ABC Corporation as the owner, the USPTO will not allow the amendment, because there was no inconsistency in the original application as to the owner name/entity.
(5) Change of Name. If the owner of a mark legally changed its name before filing an application, but mistakenly lists its former name on the application, the error may be corrected, because the correct party filed, but merely identified itself incorrectly. In re Techsonic Industries, Inc., 216 USPQ 619 (TTAB 1982).
(6) Partners Doing Business as Partnership. If an applicant has been identified as “A and B, doing business as The AB Company, a partnership,” and the true owner is a partnership organized under the name The AB Company and composed of A and B, the applicant’s name should be amended to “The AB Company, a partnership composed of A and B.”
(7) Non-Existent Entity. If the party listed as the applicant did not exist on the application filing date, the application may be amended to correct the applicant’s name. See Accu Personnel Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB 1996) (application was not void ab initio where corporation named as applicant technically did not exist on filing date, since four companies who later merged acted as a single commercial enterprise when filing the application); Argo & Co. Inc. v. Springer, 198 USPQ 626 (TTAB 1978) (application may be amended to name three individuals as joint applicants in place of an originally named corporate applicant which was never legally incorporated, because the individuals and non-existent corporation were found to be the same, single commercial enterprise); U.S. Pioneer Electronics Corp. v. Evans Marketing, Inc., 183 USPQ 613 (Comm’r Pats. 1974) (applicant’s name may be corrected where the application was mistakenly filed in the name of a fictitious and non- existent party).
Example 1: If the applicant is identified as ABC Company, a Delaware partnership, and the true owner is ABC LLC, a Delaware limited liability company, the application may be amended to correct the applicant’s name and entity if the applicant states on the record that “ABC Company, a Delaware partnership, did not exist as a legal entity on the application filing date.”
Example 2: If an applicant has been identified as “ABC Corporation, formerly known as XYZ, Inc.,” and the correct entity is “XYZ, Inc.,” the applicant’s name may be amended to “XYZ, Inc.,” as long as “ABC
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Corporation, formerly known as XYZ, Inc.” was not a different existing legal entity. Cf. Custom Computer Services Inc. v. Paychex Properties Inc., 337 F.3d 1334, 1337, 67 USPQ2d 1638, 1640 (Fed. Cir. 2003).
To correct an obvious mistake of this nature, a verification or declaration is not normally necessary.
Non-Correctable Errors. The following are examples of non-correctable errors in identifying the applicant:
(1) President of Corporation Files as Individual. If the president of a corporation is identified as the owner of the mark when in fact the corporation owns the mark, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a corporation in the entity section of the application), the application is void as filed because the applicant is not the owner of the mark.
(2) Predecessor in Interest. If an application is filed in the name of entity A, when the mark was assigned to entity B before the application filing date, the application is void as filed because the applicant was not the owner of the mark at the time of filing. Cf. Huang v. Tzu Wei Chen Food Co., supra (application filed by an individual two days after ownership of the mark was transferred to a newly formed corporation held void).
(3) Joint Venturer Files. If the application is filed in the name of a joint venturer when the mark is owned by the joint venture, and there is no inconsistency in the original application between the owner name and the entity type (such as a reference to a joint venture in the entity section of the application), the applicant’s name cannot be amended. In re Tong Yang Cement Corp., supra.
(4) Sister Corporation. If an application is filed in the name of corporation A and a sister corporation (corporation B) owns the mark, the application is void as filed, because the applicant is not the owner of the mark. Great Seats, supra (§1(a) application held void where the sole use and advertising of the mark was made by a sister corporation who shared the same president, controlling shareholder, and premises as the applicant).
(5) Parent/Subsidiary. If an application is filed in the name of corporation A, a wholly owned subsidiary, and the parent corporation (corporation B) owns the mark, the application is void as filed because the applicant is not the owner of the mark. See TMEP §1201.03(c) regarding wholly owned related companies.
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1201.02(d) Operating Divisions
An operating division that is not a legal entity that can sue and be sued does not have standing to own a mark or to file an application to register a mark. The application must be filed in the name of the company of which the division is a part. In re Cambridge Digital Systems, 1 USPQ2d 1659, 1660 n.1 (TTAB 1986). An operating division’s use is considered to be use by the applicant and not use by a related company; therefore, reference to related- company use is permissible but not necessary.
1201.02(e) Changes in Ownership After Application Is Filed
See TMEP Chapter 500 regarding changes of ownership and changes of name subsequent to filing an application for registration, and TMEP §§502.02 et seq. regarding the procedure for requesting that a certificate of registration be issued in the name of an assignee or in an applicant’s new name.
1201.03 Use by Related Companies
Section 5 of the Trademark Act, 15 U.S.C. §1055, states, in part, as follows:
Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public.
Section 45 of the Act, 15 U.S.C. §1127, defines “related company” as follows:
The term “related company” means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
Thus, §5 of the Act permits applicants to rely on use of the mark by related companies. Either a natural person or a juristic person may be a related company. 15 U.S.C. §1127.
The essence of related-company use is the control exercised over the nature and quality of the goods or services on or in connection with which the mark is used. When a mark is used by a related company, use of the mark inures to the benefit of the party who controls the nature and quality of the goods or services. This party is the owner of the mark and, therefore, the only party who may apply to register the mark. Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981).
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Reliance on related-company use requires, inter alia, that the related company use the mark in connection with the same goods or services recited in the application. In re Admark, Inc., 214 USPQ 302 (TTAB 1982) (related company use not at issue where the applicant sought registration of a mark for advertising agency services and the purported related company used the mark for retail store services).
A related company is different from a successor in interest who is in privity with the predecessor in interest for purposes of determining the right to register. Wells Cargo, Inc. v. Wells Cargo, Inc., 197 USPQ 569 (TTAB 1977), aff’d, 606 F.2d 961, 203 USPQ 564 (C.C.P.A. 1979).
See TMEP §1201.03(c) regarding wholly owned related companies, §1201.03(d) regarding corporations with common stockholders, directors, or officers, §1201.03(e) regarding sister corporations, and §1201.03(f) regarding license and franchise situations.
1201.03(a) Use Solely by Related Company Must be Disclosed
If the mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under §5 of the Act, then these facts must be disclosed in the application. 37 C.F.R. §2.38(b). See Pease Woodwork Co., Inc. v. Ready Hung Door Co., Inc., 103 USPQ 240 (Comm’r Pats. 1954); Industrial Abrasives, Inc. v. Strong, 101 USPQ 420 (Comm’r Pats. 1954). Use that inures to the applicant’s benefit is a proper and sufficient support for an application and satisfies the requirement of 37 C.F.R. §2.33(b)(1) that a §1(a) application specify that the applicant has adopted and is using the mark.
The party who controls the nature and quality of the goods or services on or in connection with which the mark is used should be set forth as the applicant. In an application under §1(a) of the Trademark Act, the applicant should state in the body of the application that the applicant has adopted and is using the mark through its related company (or equivalent explanatory wording). In a §1(b) application, the statement that the applicant is using the mark through a related company should be included in the amendment to allege use under 15 U.S.C. §1051(c) (see TMEP §§1104 et seq.) or statement of use under 15 U.S.C. §1051(d) (see TMEP §§1109 et seq.).
The applicant is not required to give the name of the related-company user, unless it is necessary to explain information in the record that clearly contradicts the applicant’s verified claim of ownership of the mark.
The applicant may claim the benefit of use by a related company in an amendment to the application. Greyhound Corp. v. Armour Life Insurance Co., 214 USPQ 473, 475 (TTAB 1982).
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If the applicant and a related company both use the mark, and it is the applicant’s own use of the mark that is relied on in the application, then the applicant does not have to include a reference to use by a related company in the application. See TMEP §1201.05.
1201.03(b) No Explanation of Applicant’s Control Over Use of Mark by Related Companies Required
Where the application states that use of the mark is by a related company or companies, the USPTO does not require an explanation of how the applicant controls the use of the mark.
Similarly, the USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark. See TMEP §1201.04.
1201.03(c) Wholly Owned Related Companies
Related-company use includes situations where a wholly owned related company of the applicant uses the mark, or where the applicant is wholly owned by a related company that uses the mark.
Frequently, related companies comprise parent and wholly owned subsidiary corporations. Either a parent corporation or a subsidiary corporation may be the proper applicant, depending on the facts concerning ownership of the mark. The USPTO will consider the filing of the application in the name of either the parent or the subsidiary to be the expression of the intention of the parties as to ownership in accord with the arrangements between them. However, once the application has been filed in the name of either the parent or the wholly owned subsidiary, the USPTO will not permit an amendment of the applicant’s name to specify the other party as the owner. The applicant’s name can be changed only by assignment.
Furthermore, once an application has been filed in the name of either the parent or the wholly owned subsidiary, the USPTO will not consider documents (e.g., statements of use under 15 U.S.C. §1051(d) or affidavits of continued use or excusable nonuse under 15 U.S.C. §1058) filed in the name of the other party to have been filed by the owner. See In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002) (§8 affidavit filed in the name of a subsidiary and predecessor in interest of the current owner held unacceptable); In re ACE III Communications, Inc., 62 USPQ2d 1049 (Dir USPTO 2001) (§8 affidavit unacceptable where the owner of the registration was a corporation, and the affidavit was filed in the name of an individual who asserted that she was the owner of the corporation; the registrant corporation and the individual owner are separate legal entities).
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Either an individual or a juristic entity may own a mark that is used by a wholly owned related company. See In re Hand, 231 USPQ 487 (TTAB 1986).
1201.03(d) Common Stockholders, Directors, or Officers
Corporations are not “related companies” within the meaning of §5 of the Trademark Act, 15 U.S.C. §1055, merely because they have the same stockholders, directors, or officers, or because they occupy the same premises. Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007) (the facts that both the applicant corporation and the corporate user of the mark have the same president and controlling stockholder, and share the same premises, does not make them related companies); In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983) (statement that both the applicant corporation and the corporate user of the mark have the same principal stockholder and officer held insufficient to show that the user is a related company).
If an individual applicant is not the sole owner of the corporation that is using the mark, the question of whether the corporation is a “related company” depends on whether the applicant maintains control over the nature and quality of the goods or services such that use of the mark inures to the applicant’s benefit. A formal written licensing agreement between the parties is not necessary, nor is its existence sufficient to establish ownership rights. The critical question is whether the applicant sufficiently controls the nature and quality of the goods or services with which the mark is used. See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981) (detailed written agreement and substantial evidence in the record indicating that the applicant, an individual, exercised control over the nature and quality of the goods sold under the mark by the user corporation held sufficient to show that the corporation was a related company).
Similarly, where an individual applicant is not the sole owner of the corporation that is using the mark, the fact that the individual applicant is a stockholder, director, or officer in the corporation is insufficient in itself to establish that the corporation is a related company. The question depends on whether the applicant maintains control over the nature and quality of the goods or services.
See TMEP §1201.03(c) regarding use by wholly owned related companies.
1201.03(e) Sister Corporations
The fact that two sister corporations are controlled by a single parent corporation does not mean that they are related companies. Where two corporations are wholly owned subsidiaries of a common parent, use by one sister corporation is not considered to inure to the benefit of the other, unless the applicant sister corporation exercises appropriate control over the nature
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and quality of the goods or services on or in connection with which the mark is used. Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007); In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987); Greyhound Corp. v. Armour Life Insurance Co., 214 USPQ 473 (TTAB 1982).
See TMEP §1201.03(c) regarding use by wholly owned related companies.
1201.03(f) License and Franchise Situations
The USPTO accepts applications by parties who claim to be owners of marks through use by controlled licensees, pursuant to a contract or agreement. Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981).
A controlled licensing agreement may be recognized whether oral or in writing. In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983).
If the application indicates that use of the mark is pursuant to a license or franchise agreement, and the record contains nothing that contradicts the assertion of ownership by the applicant (i.e., the licensor or franchisor), the examining attorney will not inquire about the relationship between the applicant and the related company (i.e., the licensee or franchisee).
Ownership rights in a trademark or service mark may be acquired and maintained through the use of the mark by a controlled licensee even when the only use of the mark has been made, and is being made, by the licensee. Turner v. HMH Publishing Co., Inc., 380 F.2d 224, 229, 154 USPQ 330, 334 (5th Cir. 1967), cert. denied, 389 U.S. 1006, 156 USPQ 720 (1967); Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQ2d 1262 (TTAB 2008) (Board found petitioner to be the owner of the marks even though respondent had been the only user because of an implied license between the parties); Central Fidelity Banks, Inc. v. First Bankers Corp. of Florida, 225 USPQ 438, 440 (TTAB 1984) (use of the mark by petitioner’s affiliated banks considered to inure to the benefit of petitioner bank holding company, even though the bank holding company could not legally render banking services and, thus, could not use the mark).
Joint applicants enjoy rights of ownership to the same extent as any other “person” who has a proprietary interest in a mark. Therefore, joint applicants may license others to use a mark and, by exercising sufficient control and supervision of the nature and quality of the goods or services to which the mark is applied, the joint applicants/licensors may claim the benefits of the use by the related company/licensee. In re Diamond Walnut Growers, Inc. and Sunsweet Growers Inc., 204 USPQ 507 (TTAB 1979).
Stores that are operating under franchise agreements from another party are considered “related companies” of that party, and use of the mark by the franchisee/store inures to the benefit of the franchisor. Mr. Rooter Corp. v.
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Morris, 188 USPQ 392, 394 (E.D. La. 1975); Southland Corp. v. Schubert, 297 F. Supp. 477, 160 USPQ 375, 381 (C.D. Cal. 1968).
In all franchise and license situations, the key to ownership is the nature and extent of the control by the applicant over the goods or services to which the mark is applied. A trademark owner who fails to exercise sufficient control over licensees or franchisees may be found to have abandoned its rights in the mark. See Hurricane Fence Co. v. A-1 Hurricane Fence Co. Inc., 468 F. Supp. 975, 986-989; 208 USPQ 314, 325-27 (S.D. Ala. 1979).
In general, where the application states that a mark is used by a licensee or franchisee, the USPTO does not require an explanation of how the applicant controls the use. See TMEP §1201.03(f).
1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record
The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark.
The examining attorney should inquire about another party if the record specifically states that another party is the owner of the mark, or if the record specifically identifies the applicant in a manner that contradicts the claim of ownership, for example, as a licensee. In these circumstances, registration should be refused under §1 of the Trademark Act, on the ground that the applicant is not the owner of the mark. Similarly, when the record indicates that the applicant is a United States distributor, importer, or other distributing agent for a foreign manufacturer, the examining attorney should require the applicant to establish its ownership rights in the United States in accordance with TMEP §1201.06(a).
Where the specimen of use indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer. See TMEP §1201.06(b). Also, where the application states that use of the mark is by related companies, an explanation of how the applicant controls use of the mark by the related companies is not required. See TMEP §1201.03(b).
1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use
An applicant’s claim of ownership of a mark may be based on the applicant’s own use of the mark, even though there is also use by a related company. The applicant is the owner by virtue of the applicant’s own use, and the application does not have to refer to use by a related company.
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An applicant may claim ownership of a mark when the mark is applied on the applicant’s instruction. For example, if the applicant contracts with another party to have goods produced for the applicant and instructs the party to place the mark on the goods, that is considered the equivalent of the applicant itself placing the mark on its own goods and reference to related- company use is not necessary.
1201.06 Special Situations Pertaining to Ownership
1201.06(a) Applicant Is Merely Distributor or Importer
A distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade. In re Bee Pollen from England Ltd., 219 USPQ 163 (TTAB 1983); Audioson Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977); Jean D’Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In re Lettmann, 183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of America Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods bearing the mark of a manufacturer or producer is neither the owner nor a related-company user of the mark.
If the applicant merely distributes or imports goods for the owner of the mark, registration must be refused under §1 of the Trademark Act, except in the following situations:
(1) If a parent and wholly owned subsidiary relationship exists between the distributor and the manufacturer, then the applicant’s statement that such a relationship exists disposes of an ownership issue. See TMEP §1201.03(c).
(2) If an applicant is the United States importer or distribution agent for a foreign manufacturer, then the applicant can register the foreign manufacturer’s mark in the United States, if the applicant submits one of the following:
(a) written consent from the owner of the mark to registration in the applicant’s name, or
(b) written agreement or acknowledgment between the parties that the importer or distributor is the owner of the mark in the United States, or
(c) an assignment (or true copy) to the applicant of the owner’s rights in the mark as to the United States together with the business and good will appurtenant thereto.
See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987); In re Geo. J. Ball, Inc., 153 USPQ 426 (TTAB 1967).
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1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located
Where a specimen indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer. If, however, information in the record clearly contradicts the applicant’s verified claim of ownership (e.g., a statement in the record that the mark is owned by the foreign manufacturer and that the applicant is only an importer or distributor), then registration must be refused under §1, 15 U.S.C. §1051, unless registration in the United States by the applicant is supported by the applicant’s submission of one of the documents listed in TMEP §1201.06(a).
1201.07 Related Companies and Likelihood of Confusion
1201.07(a) “Single Source” – “Unity of Control”
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), requires that the examining attorney refuse registration when an applicant’s mark, as applied to the specified goods or services, so resembles a registered mark as to be likely to cause confusion. In general, registration of confusingly similar marks to separate legal entities is barred by §2(d). See, e.g., In re Citibank, N.A., 225 USPQ 612 (TTAB 1985); In re Champion Int’l Corp., 220 USPQ 478 (TTAB 1982); In re Air Products, Inc., 124 USPQ 81 (TTAB 1960). However, the Court of Appeals for the Federal Circuit has held that, where the applicant is related in ownership to a company that owns a registered mark that would otherwise give rise to a likelihood of confusion, the examining attorney must consider whether, in view of all the circumstances, use of the mark by the applicant is likely to confuse the public about the source of the applicant’s goods because of the resemblance of the applicant’s mark to the mark of the other company. The Court stated that:
The question is whether, despite the similarity of the marks and the goods on which they are used, the public is likely to be confused about the source of the hair straightening products carrying the trademark “WELLASTRATE.” In other words, is the public likely to believe that the source of the product is Wella U.S. rather than the German company or the Wella organization.
In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276 (Fed. Cir. 1986). The Court remanded the case to the Board for consideration of the likelihood of confusion issue.
In ruling on that issue, the Board concluded that there was no likelihood of confusion, stating as follows:
[A] determination must be made as to whether there exists a likelihood of confusion as to source, that is, whether purchasers
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would believe that particular goods or services emanate from a single source, when in fact those goods or services emanate from more than a single source. Clearly, the Court views the concept of “source” as encompassing more than “legal entity.” Thus, in this case, we are required to determine whether Wella A.G. and Wella U.S. are the same source or different sources....
The existence of a related company relationship between Wella U.S. and Wella A.G. is not, in itself, a basis for finding that any “WELLA” product emanating from either of the two companies emanates from the same source. Besides the existence of a legal relationship, there must also be a unity of control over the use of the trademarks. “Control” and “source” are inextricably linked. If, notwithstanding the legal relationship between entities, each entity exclusively controls the nature and quality of the goods to which it applies one or more of the various “WELLA” trademarks, the two entities are in fact separate sources. Wella A.G. has made of record a declaration of the executive vice president of Wella U.S., which declaration states that Wella A.G. owns substantially all the outstanding stock of Wella U.S. and “thus controls the activities and operations of Wella U.S., including the selection, adoption and use of the trademarks.” While the declaration contains no details of how this control is exercised, the declaration is sufficient, absent contradictory evidence in the record, to establish that control over the use of all the “WELLA” trademarks in the United States resides in a single source.
In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987) (emphasis in original), rev’d on other grounds, 858 F.2d 725, 8 USPQ2d 1365 (Fed. Cir. 1988).
Therefore, in some limited circumstances, the close relationship between related companies will obviate any likelihood of confusion in the public mind because the related companies constitute a single source. See TMEP §§1201.07(b) et seq. for further information.
1201.07(b) Appropriate Action with Respect to Assertion of Unity of Control
First, it is important to note that analysis under Wella is not triggered until an applicant affirmatively asserts that a §2(d) refusal is inappropriate because the applicant and the registrant, though separate legal entities, constitute a single source, or the applicant raises an equivalent argument. Examining attorneys should issue §2(d) refusals in any case where an analysis of the marks and the goods or services of the respective parties indicates a bar to registration under §2(d). The examining attorney should not attempt to analyze the relationship between an applicant and registrant until an
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applicant, in some form, relies on the nature of the relationship to obviate a refusal under §2(d).
Once an applicant has made this assertion, the question is whether the specific relationship is such that the two entities constitute a “single source,” so that there is no likelihood of confusion. The following guidelines may assist the examining attorney in resolving questions of likelihood of confusion when the marks are owned by related companies and the applicant asserts unity of control. (Of course, in many of these situations, the applicant may choose to attempt to overcome the §2(d) refusal by submitting a consent agreement or other conventional evidence to establish no likelihood of confusion. See In re Sumitomo Electric Industries, Ltd., 184 USPQ 365 (TTAB 1974). Another way to overcome a §2(d) refusal is to assign all relevant registrations to the same party.)
1201.07(b)(i) When Either Applicant or Registrant Owns All of the Other Entity
If the applicant or the applicant’s attorney represents that either the applicant or the registrant owns all of the other entity, and there is no contradictory evidence, then the examining attorney should conclude that there is unity of control, a single source, and no likelihood of confusion. This would apply to an individual who owns all the stock of a corporation, and to a corporation and a wholly owned subsidiary. In this circumstance, additional representations or declarations should generally not be required, absent contradictory evidence.
1201.07(b)(ii) When Either Applicant or Registrant Owns Substantially All of the Other Entity
In Wella, the applicant provided a declaration stating that the applicant owned substantially all of the stock of the registrant and that the applicant thus controlled the activities of the registrant, including the selection, adoption, and use of trademarks. The Board concluded that this declaration alone, absent contradictory evidence, established unity of control, a single source, and no likelihood of confusion. Therefore, if either the applicant or the registrant owns substantially all of the other entity and asserts control over the activities of the other entity, including its trademarks, and there is no contradictory evidence, the examining attorney should conclude that unity of control is present, that the entities constitute a single source, and that there is no likelihood of confusion under §2(d). In such a case, the applicant should generally provide these assertions in the form of an affidavit or declaration under 37 C.F.R. §2.20.
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1201.07(b)(iii) When the Record Does Not Support a Presumption of Unity of Control
If neither the applicant nor the registrant owns all or substantially all of the other entity, the applicant bears a more substantial burden to establish that unity of control is present. For instance, if both the applicant and the registrant are wholly owned by a third common parent, the applicant would have to provide detailed evidence to establish how one sister corporation controlled the trademark activities of the other to establish unity of control to support the contention that the sister corporations constitute a single source. See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987); Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473 (TTAB 1982). Likewise, where an applicant and registrant have certain stockholders, directors, or officers in common, the applicant must demonstrate with detailed evidence or explanation how those relationships establish unity of control. See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). The applicant’s evidence or explanation should generally be supported by an affidavit or a declaration under 37 C.F.R. §2.20.
1201.07(b)(iv) When the Record Contradicts an Assertion of Unity of Control
In contrast to those circumstances where the relationship between the parties may support a presumption of unity of control or at least afford an applicant the opportunity to demonstrate unity of control, some relationships, by their very nature, contradict any claim that unity of control is present. For instance, if the relationship between the parties is that of licensor and licensee, unity of control will ordinarily not be present. The licensing relationship suggests ownership in one party and control by that one party over only the use of a specific mark or marks, but not over the operations or activities of the licensee generally. Thus, there is no unity of control and no basis for concluding that the two parties form a single source. Precisely because unity of control is absent, a licensing agreement is necessary. The licensing agreement enables the licensor/owner to control specific activities to protect its interests as the sole source or sponsor of the goods or services provided under the mark. Therefore, in these situations, it is most unlikely that an applicant could establish unity of control to overcome a §2(d) refusal.
1202 Use of Subject Matter as Trademark
In an application under §1 of the Act, the examining attorney must determine whether the subject matter for which registration is sought is used as a trademark by reviewing all evidence (e.g., the specimen and any promotional material) of record in the application. See In re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992) (examining attorney should look primarily to the specimen to determine whether a designation would be perceived as a
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source indicator, but may also consider other evidence, if there is other evidence of record).
Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed in In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960):
The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.
Sections 1 and 2 of the Trademark Act, 15 U.S.C. §§1051 and 1052, require that the subject matter presented for registration be a “trademark.” Section 45 of the Act, 15 U.S.C. §1127, defines that term as follows:
The term “trademark” includes any word, name, symbol, or device, or any combination thereof–
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Thus, §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, provide the statutory basis for refusal to register on the Principal Register subject matter that, due to its inherent nature or the manner in which it is used, does not function as a mark to identify and distinguish the applicant’s goods. The statutory basis for refusal of registration on the Supplemental Register of matter that does not function as a trademark because it does not fit within the statutory definition of a trademark is §§23 and 45, 15 U.S.C. §§1091 and 1127.
When the examining attorney refuses registration on the ground that the subject matter is not used as a trademark, the examining attorney should explain the specific reason for the conclusion that the subject matter is not used as a trademark. See TMEP §§1202.01 et seq. for a discussion of situations in which it may be appropriate, depending on the circumstances, for the examining attorney to refuse registration on the ground that the proposed mark does not function as a trademark, e.g., TMEP §§1202.01 (trade names),
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1202.02(a) et seq. (functionality), 1202.03 (ornamentation), 1202.04 (informational matter), 1202.05 (color marks), 1202.06 (goods in trade), 1202.07 (columns or sections of publications), 1202.08 (title of single creative work), 1202.09 et seq. (names of artists and authors), 1202.16 (model or grade designations), 1202.11 (background designs and shapes), and 1202.12 (varietal and cultivar names).
The presence of the letters “SM” or “TM” cannot transform an otherwise unregistrable designation into a mark. In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984); In re Minnetonka, Inc., 212 USPQ 772 (TTAB 1981).
The issue of whether a designation functions as a mark usually is tied to use of the mark, as evidenced by the specimen. Therefore, unless the drawing and description of the mark are dispositive of the failure to function without the need to consider a specimen, generally, no refusal on this basis will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen(s) with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the matter presented for registration does not function as a mark, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue a failure to function refusal where the mark on its face, as shown in the drawing and described in the description, reflects a failure to function. See In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application).
See TMEP §§1301.02 et seq. regarding use of subject matter as a service mark; TMEP §§1302 through 1304 et seq. regarding use of subject matter as a collective mark; and TMEP §§1306 et seq. regarding use of subject matter as a certification mark.
1202.01 Refusal of Matter Used Solely as a Trade Name
The name of a business or company is a trade name. The Trademark Act distinguishes trade names from trademarks by definition. While a trademark is used to identify and distinguish the trademark owner’s goods from those manufactured or sold by others and to indicate the source of the goods, “trade
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name” and “commercial name” are defined in §45 of the Act, 15 U.S.C. §1127, as follows:
The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation.
The Trademark Act does not provide for registration of trade names. See In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985) (“[T]here was a clear intention by the Congress to draw a line between indicia which perform only trade name functions and indicia which perform or also perform the function of trademarks or service marks.”).
If the examining attorney determines that matter for which registration is requested is merely a trade name, registration must be refused both on the Principal Register and on the Supplemental Register. The statutory basis for refusal of trademark registration on the ground that the matter is used merely as a trade name is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, and, in the case of matter sought to be registered for services, §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
A designation may function as both a trade name and a trademark or service mark. See In re Walker Process Equipment Inc., 233 F.2d 329, 332, 110 USPQ 41, 43 (C.C.P.A. 1956), aff’g 102 USPQ 443 (Comm’r Pats. 1954).
If subject matter presented for registration in an application is a trade name or part of a trade name, the examining attorney must determine whether it is also used as a trademark or service mark, by examining the specimen and other evidence of record in the application file. See In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994) (DIAMOND HILL FARMS, as used on containers for goods, found to be a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others).
Whether matter that is a trade name (or a portion thereof) also performs the function of a trademark depends on the manner of its use and the probable impact of the use on customers. See In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008) (use of trade name in “Ship From” section of Federal Express label where it serves as a return address does not demonstrate trademark use as the term appears where customers would look for the name of the party shipping the package); In re Unclaimed Salvage & Freight Co., Inc., 192 USPQ 165, 168 (TTAB 1976) (“It is our opinion that the foregoing material reflects use by applicant of the notation ‘UNCLAIMED SALVAGE & FREIGHT CO.’ merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof.”); In re Lytle Engineering & Mfg. Co., 125 USPQ 308 (TTAB 1960) (“‘LYTLE’ is applied to the container for applicant’s goods in a
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style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression.”)
The presence of an entity designator in a name sought to be registered and the proximity of an address are both factors to be considered in determining whether a proposed mark is merely a trade name. In re Univar Corp., 20 USPQ2d 1865, 1869 (TTAB 1991) (“[T]he mark “UNIVAR” independently projects a separate commercial impression, due to its presentation in a distinctively bolder, larger and different type of lettering and, in some instances, its additional use in a contrasting color, and thus does more than merely convey information about a corporate relationship.”) See also Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 727 (TTAB 1984) (“That the invoices ... plainly show ... service mark use is apparent from the fact that, not only do the words ‘BookCrafters, Inc.’ appear in larger letters and a different style of print than the address, but they are accompanied by a design feature (the circularly enclosed ends of two books).”).
A determination of whether matter serves solely as a trade name rather than as a mark requires consideration of the way the mark is used, as evidenced by the specimen. Therefore, no refusal on that ground will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use in conjunction with an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d)).
1202.02 Registration of Trade Dress
When an applicant applies to register a product’s design, product packaging, color, or other trade dress for goods or services, the examining attorney must consider two issues: (1) functionality; and (2) distinctiveness. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28-29, 58 USPQ2d 1001, 1004-1005 (2001); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775, 23 USPQ2d 1081, 1086 (1992) (only nonfunctional distinctive trade dress is protected). See TMEP §§1202.02(a) et seq. regarding functionality and TMEP §§1202.02(b) and 1212 et seq. regarding distinctiveness. In many cases, a refusal of registration is necessary on both grounds. Therefore, in any application where a product design or product packaging is refused because it is functional, registration should also be refused on the ground that the proposed mark is nondistinctive.
In appropriate cases, the issues of functionality and acquired distinctiveness should be addressed in the alternative. For example, if the examining attorney has determined that a mark is functional and the applicant has made a claim of acquired distinctiveness, the examining attorney must determine whether the showing of acquired distinctiveness would be sufficient to warrant registration if the examining attorney’s decision on the functionality issue is reversed.
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If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be functional. See In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had “effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness,” where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) issue of whether the would be registrable under 2(f) if it were ultimately found to be non-functional.
Of course, if the mark is ultimately determined to be functional, evidence of acquired distinctiveness is irrelevant and registration will be refused. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001).
With respect to the functionality and distinctiveness issues in the specific context of color as a mark, see TMEP §§1202.05(a) and 1202.05(b).
1202.02(a) Functionality
In general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n.10, 214 USPQ 1, 4 n.10 (1982)).
1202.02(a)(i) Statutory Basis for Functionality Refusal
Before October 30, 1998, there was no specific statutory reference to functionality as a ground for refusal, and functionality refusals were thus issued as failure-to-function refusals under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
Effective October 30, 1998, the Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069, amended the Trademark Act to expressly prohibit registration on either the Principal or Supplemental Register of functional matter:
• Section 2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5), prohibits registration on the Principal Register of “matter that, as a whole, is functional.”
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• Section 2(f) of the Act, 15 U.S.C. §1052(f), provides that matter that, as a whole, is functional may not be registered even on a showing that it has become distinctive.
• Section 23(c) of the Act, 15 U.S.C. §1091(c), provides that a mark that, as a whole, is functional may not be registered on the Supplemental Register.
• Section 14(3) of the Act, 15 U.S.C. §1064(3), lists functionality as a ground that can be raised in a cancellation proceeding more than five years after the date of registration.
• Section 33(b)(8) of the Act, 15 U.S.C. §1115(b)(8), lists functionality as a statutory defense to infringement in a suit involving an incontestable registration.
These amendments codified case law and the longstanding USPTO practice of refusing registration of functional matter.
1202.02(a)(ii) Purpose of Functionality Doctrine
The functionality doctrine, which prohibits registration of functional product features, is intended to encourage legitimate competition by maintaining the proper balance between trademark law and patent law. As the Supreme Court explained, in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995):
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, 35 U.S.C. §§154, 173, after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).
In other words, the functionality doctrine ensures that protection for utilitarian product features be properly sought through a limited-duration utility patent, and not through the potentially unlimited protection of a trademark registration. Upon expiration of a utility patent, the invention covered by the patent enters the public domain, and the functional features disclosed in the patent may then be copied by others – thus encouraging advances in product design and manufacture. In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34-35, 58 USPQ2d 1001, 1007 (2001), the Supreme Court
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reiterated this rationale, also noting that the functionality doctrine is not affected by evidence of acquired distinctiveness.
Thus, even where the evidence establishes that consumers have come to associate a functional product feature with a single source, trademark protection will not be granted in light of the public policy reasons stated. Id.
1202.02(a)(iii) Background and Definitions
1202.02(a)(iii)(A) Functionality
Functional matter cannot be protected as trade dress or a trademark. 15 U.S.C. §§1052(e)(5) and (f), 1091(c), 1064(3), and 1115(b). A feature is functional as a matter of law if it is “essential to the use or purpose of the product or if it affects the cost or quality of the device.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982).
While some courts had developed a definition of functionality that focused solely on “competitive need” – thus finding a particular product feature functional only if competitors needed to copy that design in order to compete effectively – the Supreme Court held that this “was incorrect as a comprehensive definition” of functionality. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1006. The Court emphasized that where a product feature meets the traditional functionality definition – that is, it is essential to the use or purpose of the product or affects its cost or quality – then the feature is functional, regardless of the availability to competitors of other alternatives. Id.; see also Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002) (“Rather, we conclude that the [TrafFix] Court merely noted that once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available” (footnote omitted).)
However, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need, although not determinative, remains a significant consideration in functionality determinations. Valu Engineering, 278 F.3d at 1276, 61 USPQ2d at 1427.
The determination that a proposed mark is functional constitutes, for public policy reasons, an absolute bar to registration on either the Principal Register or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness. TrafFix, 532 U.S. at 29-33, 58 USPQ2d at 1005-1007. See also In re Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).
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See TMEP §§1202.02(a)(v) et seq. regarding evidentiary considerations pertaining to functionality refusals.
1202.02(a)(iii)(B) “De Jure” and “De Facto” Functionality
Prior to 2002, the USPTO used the terms “de facto” and “de jure” in assessing whether “subject matter” (usually a product feature or the configuration of the goods) presented for registration was functional. This distinction originated with the Court of Customs and Patent Appeals’ Morton- Norwich decision, which was discussed by the Federal Circuit in Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002):
Our decisions distinguish de facto functional features, which may be entitled to trademark protection, from de jure functional features, which are not. ‘In essence, de facto functional means that the design of a product has a function, i.e., a bottle of any design holds fluid.’ In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984). De facto functionality does not necessarily defeat registrability. Morton-Norwich, 671 F.2d [1332] at 1337, 213 USPQ [9] at 13 [(C.C.P.A. 1982)] (A design that is de facto functional, i.e., ‘functional’ in the lay sense ... may be legally recognized as an indication of source.’). De jure functionality means that the product has a particular shape ‘because it works better in this shape.’ Smith, 734 F.2d at 1484, 222 USPQ at 3.
However, in three Supreme Court decisions involving functionality – Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995), Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), and TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) – the Court did not use the “de facto/de jure” distinction. Nor were these terms used when the Trademark Act was amended to expressly prohibit registration of matter that is “functional.” Technical Corrections to Trademark Act of 1946, Pub. L. No. 105-330, §201, 112 Stat. 3064, 3069 (1998). Accordingly, in general, examining attorneys no longer make this distinction in Office actions that refuse registration based on functionality.
De facto functionality is not a ground for refusal. In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1282 (TTAB 2000); In re Parkway Machine Corp., 52 USPQ2d 1628, 1631 n.4 (TTAB 1999).
1202.02(a)(iv) Burden of Proof in Functionality Determinations
The examining attorney must establish a prima facie case that the design sought to be registered is functional. The burden then shifts to the applicant
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to present sufficient evidence to rebut the examining attorney’s prima facie case of functionality. Textron, Inc. v. U.S. Int'l Trade Comm'n, 753 F.2d 1019, 1025, 224 USPQ 625, 629 (Fed. Cir. 1985); In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Bio-Medicus Inc., 31 USPQ2d 1254, 1257 n.5 (TTAB 1993).
The functionality determination is a question of fact, and depends on the totality of the evidence presented in each particular case. Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1273, 61 USPQ2d 1422, 1424 (Fed. Cir. 2002); In re UDOR U.S.A., Inc., 89 USPQ2d 1978, 1979 (TTAB 2009); In re Caterpillar Inc., 43 USPQ2d 1335, 1339 (TTAB 1997). While there is no set amount of evidence that an examining attorney must present to establish a prima facie case of functionality, it is clear that there must be evidentiary support for the refusal in the record. See, e.g., In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1342, 213 USPQ 9, 16-17 (C.C.P.A. 1982) (admonishing both the examining attorney and the Board for failing to support the functionality determination with even “one iota of evidence”).
If the design sought to be registered as a mark is the subject of a utility patent that discloses the feature’s utilitarian advantages, then the applicant bears an especially “heavy burden of overcoming the strong evidentiary inference of functionality.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 30, 58 USPQ2d 1001, 1005 (2001); UDOR U.S.A., Inc., 89 USPQ2d at 1979- 80; see TMEP §1202.02(a)(v)(A).
1202.02(a)(v) Evidence and Considerations Regarding Functionality Determinations
Trade dress is functional if it is essential to the use or purpose of a product or if it affects the cost or quality of the product. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982).
A determination of functionality normally involves consideration of one or more of the following factors, commonly known as the “Morton-Norwich factors”:
(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1340-1341, 213 USPQ 9, 15-16 (C.C.P.A. 1982).
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Since relevant technical information is often more readily available to an applicant, the applicant will often be the source of most of the evidence relied upon by the examining attorney in establishing a prima facie case of functionality in an ex parte case. In re Teledyne Industries Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1990). Therefore, when there is reason to believe that the proposed mark may be functional, in the first Office action, the examining attorney should require the applicant to provide information necessary to permit an informed determination concerning the registrability of the proposed mark, pursuant to 37 C.F.R. §2.61(b). See In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information). Accordingly, the examining attorney should: (1) ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s); (2) ask the applicant to provide any available advertising, promotional, or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark; (3) inquire of the applicant whether alternative designs are available; and (4) inquire whether the feature makes the product easier or cheaper to manufacture. The examining attorney should also examine the specimen(s) for information relevant to the Morton-Norwich factors, and conduct independent research to find advertising or promotional material.
It is not necessary to consider all the Morton-Norwich factors in every case. The Supreme Court held that “[w]here the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001). Moreover, there is no requirement that all four of the Morton-Norwich factors weigh in favor of functionality to support a refusal. See Valu Engineering, 278 F.3d at 1276, 61 USPQ2d at 1427 (“once a product feature is found functional based on other considerations there is no need to consider the availability of alternative designs”); In re UDOR U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009) (affirming a functionality refusal of “a round disk head on a sprayer nozzle” where the third and fourth factors showed that applicant’s competitors manufactured and marketed spray nozzles with similar features, the shape was preferred in the industry, and it appeared efficient, economical, and advantageous, even though applicant’s utility patent and advertising did not weigh in favor of functionality); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (orange flavor found functional based on applicant’s touting of the utilitarian advantages of the flavor and the lack of evidence of acceptable alternatives, even though the mark was not the subject of a patent or patent application and there was no evidence that the flavor affected the cost of the product); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (where there was no utility patent, and no evidence that applicant’s guitar
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configuration resulted from a simpler or cheaper method of manufacture, these factors did not weigh in Board’s decision).
Evidence that the proposed mark is the subject of a utility patent that discloses the utilitarian advantages of the configuration at issue can be sufficient in itself to support a functionality refusal. TrafFix, 532 U.S. at 33, 58 USPQ2d at 1007 (“There is no need, furthermore, to engage ... in speculation about other design possibilities”); In re Howard Leight Industries, LLC, 80 USPQ2d 1507, 1515 (TTAB 2006) (“[W]e find that applicant's expired utility patent, which specifically discloses and claims the utilitarian advantages of applicant's earplug configuration and which clearly shows that the shape at issue ‘affects the . . . quality of the device,’ is a sufficient basis in itself for finding that the configuration is functional, given the strong weight to be accorded such patent evidence under TrafFix.”). See TMEP §1202.02(a)(v)(A) for further discussion of utility patents.
It is important that the functionality inquiry focus on the utility of the feature or combination of features claimed as protectable trade dress. Morton-Norwich, 671 F.2d at 1338, 213 USPQ at 13. Generally, dissecting the design into its individual features and analyzing the utility of each separate feature does not establish that the overall design is functional. See 15 U.S.C. §1052(e)(5); Teledyne Industries Inc., 696 F.2d at 971, 217 USPQ at 11. However, it is sometimes helpful to analyze the design from the standpoint of its various features. See Elmer v. ICC Fabricating Inc., 67 F.3d 1571, 1579-80, 36 USPQ2d 1417, 1422-23 (Fed. Cir. 1995) (rejecting the argument that the combination of individually functional features in the configuration resulted in an overall nonfunctional product design); In re R.M. Smith, Inc., 734 F.2d 1482-1484, 222 USPQ 1, 2 (Fed. Cir. 1984) (affirming the functionality determination, where the Board had initially considered the six individual features of the design, and then had concluded that the design as a whole was functionan( � American Flange & Mfg. Co., Inc. v. Rieke Corp., 80 USPQ2d 1397 (TTAB 2006) (Board held that applicant’s marks were functional overall where only one of the two features claimed was found to be functionan( � In re Controls Corp. of America, 46 USPQ2d 1308, 1312 (TTAB 1998) (finding the entire configuration at issue functional because it consisted of several individual features, each of which was functional in nature).
Where the evidence shows that the overall design is functional, the inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result. See Textron, Inc. v. U.S. Int’l Trade Commission, 753 F.2d 1019, 1025, 224 USPQ 625, 628-29 (Fed. Cir. 1985); In re Vico Products Mfg. Co., Inc., 229 USPQ 364, 368 (TTAB 1985).
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1202.02(a)(v)(A) Utility Patents and Design Patents
Utility Patents
Utility patents cover the invention or discovery of a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. 35 U.S.C. §101.
In TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001), the Supreme Court resolved a circuit split regarding the proper weight to be afforded a utility patent in the functionality determination, stating:
A utility patent is strong evidence that the features claimed therein are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.
See also In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); In re Dietrich, 91 USPQ2d 1622 (TTAB 2009); In re UDOR U.S.A., Inc., 89 USPQ2d 1978 (TTAB 2009); In re Visual Communications Co., Inc., 51 USPQ2d 1141 (TTAB 1999); In re Edward Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999); In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997).
The Court in TrafFix went on to hold that where the evidence includes a utility patent that claims the product features at issue, it is unnecessary to consider evidence relating to the availability of alternative designs:
There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works. Other designs need not be attempted.
TrafFix, 532 U.S. at 23, 33-34, 58 USPQ2d at 1007 (citation omitted).
Therefore, in those instances where the examining attorney is presented with facts similar to those in TrafFix (i.e., where there is a utility patent establishing the utilitarian nature of the product design at issue), the examining attorney may properly issue a final functionality refusal based primarily on the utility
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patent. In re Howard Leight Industries, LLC, 80 USPQ2d 1507 (TTAB 2006). Where functionality appears to be an issue, in the first Office action, the examining attorney should ask the applicant to provide copies of any patent(s) or any pending or abandoned patent application(s). 37 C.F.R. §2.61(b). See Valu Engineering, 278 F.3d at 1279, 61 USPQ2d at 1429 (Fed. Cir. 2002) (“We agree with the Board that an abandoned patent application should be considered under the first Morton-Norwich factor, because an applied-for utility patent that never issued has evidentiary significance for the statements and claims made in the patent application concerning the utilitarian advantages, just as an issued patent has evidentiary significance.”).
It is not necessary that the utility patent be owned by the applicant; a third- party utility patent is also relevant to the functionality determination, if the patent claims the features in the product design sought to be registered. See Dietrich, supra; In re Virshup, 42 USPQ2d 1403 (TTAB 1997); In re American Nat’l Can Co., 41 USPQ2d 1841 (TTAB 1997); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990). Therefore, the examining attorney may also search the USPTO’s patent records to see if utility patents owned by third parties disclose the functional advantages of the product design that the applicant seeks to register.
It is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. If it does not, or if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely. TrafFix, 532 U.S. at 34, 58 USPQ2d at 1007 (where a manufacturer seeks to protect arbitrary, incidental or ornamental aspects or features of a product found in the patent claims, such as arbitrary curves in the legs or an ornamental pattern painted on the springs, functionality will not be established if the manufacturer can prove that those aspects do not serve a purpose within the terms of utility patent); In re UDOR U.S.A., Inc., 89 USPQ2d at 1980-82 (where a review of the patent’s language and a detailed comparison between the identified features of the patent drawing with the visible features of the trademark drawing established that the patent claims involved components neither shown nor described in the trademark design, the Board determined that the utility patent did not support a finding of functionality); see also Black & Decker Inc. v. Hoover Service Ctr., 886 F.2d 1285, 12 USPQ2d 1250 (Fed. Cir. 1989); In re Zippo Mfg. Co., 50 USPQ2d 1852 (TTAB 1999); In re Weber-Stephen Products Co., 3 USPQ2d 1659 (TTAB 1987). Where a utility patent claims more than what is sought to be registered, this fact does not establish the non-functionality of the product design, if the patent shows that the part claimed as a trademark is an essential or integral part of the invention and has utilitarian advantages. Cf. TrafFix, 532 U.S. at 31, 58 USPQ2d at 1006.
The examining attorney should consider both the numbered claims and the disclosure in the written description, drawings, and abstract of the patent. In
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Leight, the Board found functionality based on both the claims and the disclosure. The Board rejected the applicant’s argument that the examining attorney erred in looking to the claims made in applicant’s patent, noting that the Supreme Court in TrafFix repeatedly referred to a patent’s claims as evidence of functionality.
Statements regarding utilitarian advantages of the design made in the course of the prosecution of the patent application can also be very strong evidence of functionality. TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006 (“These statements [regarding specific functional advantages of the product design] made in the patent applications and in the course of procuring the patents demonstrate the functionality of the design. MDI does not assert that any of these representations are mistaken or inaccurate, and this is further strong evidence of the functionality of the dual-spring design.”); M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001).
The fact that the proposed mark is not the subject of a utility patent does not establish that the product feature is nonfunctional. TrafFix, 532 U.S. at 32, 58 USPQ2d at 1006; In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.3, (TTAB 2001).
Design Patents
Design patents cover the invention of a new, original, and ornamental design for an article of manufacture. 35 U.S.C. §171. A design patent is a factor that weighs against a finding of functionality, because design patents by definition protect only ornamental and nonfunctional features. However, ownership of a design patent does not in itself establish that a product feature is nonfunctional, and can be outweighed by other evidence supporting the functionality determination. In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984); Caterpillar Inc., 43 USPQ2d at 1339; American Nat’l Can Co., 41 USPQ2d at 1843; In re Witco Corp., 14 USPQ2d 1557, 1559 (TTAB 1989).
1202.02(a)(v)(B) Advertising, Promotional, or Explanatory Material in Functionality Determinations
The applicant’s own advertising touting the utilitarian aspects of its design is often strong evidence supporting a functionality refusal. See, e.g., In re N.V. Organon, 79 USPQ2d 1639, 1645 (TTAB 2006) (“applicant's promotional materials touting the utilitarian advantages of the orange flavor, is particularly significant in assessing functionality in this case”); American Flange & Mfg. Co., Inc. v. Rieke Corp., 80 USPQ2d 1397 (TTAB 2006); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001); M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001); In re Visual Communications Co., Inc., 51 USPQ2d 1141 (TTAB 1999); In re Edward Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999); In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997); In re
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Bio-Medicus Inc., 31 USPQ2d 1254 (TTAB 1993); In re Witco Corp., 14 USPQ2d 1557 (TTAB 1989).
An applicant will often assert that statements in its promotional materials touting the utilitarian advantages of the product feature are mere “puffery” and, thus, entitled to little weight in the functionality analysis. However, where the advertising statements clearly emphasize specific utilitarian features of the design claimed as a mark, the Board will reject such assertions of “puffing.” See, e.g., In re Gibson Guitar Corp., supra; Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705, 1716-17 (TTAB 1998); In re Bio-Medicus Inc., 31 USPQ2d 1254, 1260 (TTAB 1993); In re Witco Corp., 14 USPQ2d 1557, 1559-61 (TTAB 1989).
In Gibson Guitar, the Board found the design of a guitar body to be functional, noting that applicant’s literature clearly indicated that the shape of applicant’s guitar produced a better musical sound. Applicant’s advertisements stated that “[t]his unique body shape creates a sound which is much more balanced and less ‘muddy’ than other ordinary dreadnought acoustics.” 61 USPQ2d at 1951.
Where functionality appears to be an issue, in the first Office action, the examining attorney should ask the applicant to provide any available advertising, promotional, or explanatory material concerning the goods/services, particularly any material specifically related to the features embodied in the proposed mark. 37 C.F.R. §2.61(b). The examining attorney should also examine the specimen(s), and check to see if the applicant has a website on which the product is advertised or described.
The examining attorney may also check trade publications and computer databases to determine whether others have written about the applicant’s design and its functional features or characteristics. In Gibson Guitar, the record included an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant’s configuration, touting the acoustical advantages of the shape of the guitar.
1202.02(a)(v)(C) Availability of Alternative Designs in Functionality Determinations
An applicant attempting to rebut a prima facie case of functionality will often submit evidence of alternative designs to demonstrate that there is no “competitive need” in the industry for the applicant’s particular product design. See TMEP §1202.02(a)(iii)(A). In order to be probative, the alternative design evidence must pertain to the same category of goods as the applicant’s goods. See, e.g., In re Zippo Mfg. Co., 50 USPQ2d 1852, 1854 (TTAB 1999); In re EBSCO Industries Inc., 41 USPQ2d 1917, 1920 (TTAB 1997).
However, in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001), the Supreme Court clearly indicated that if the record
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shows that a design is essential to the use or purpose of a product, or if it affects the cost or quality of the product, it is unnecessary to consider whether there is a competitive need for the product feature. The Court explained:
[W]e have said “in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Expanding upon the meaning of this phrase, we have observed that a functional feature is one the “exclusive use of [which] would put competitors at a significant non-reputation- related disadvantage.” The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is “whether the particular product configuration is a competitive necessity.” . . . This was incorrect as a comprehensive definition. As explained in Qualitex, supra, and Inwood, supra, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device . . . Where the design is functional under the Inwood formulation there is no need to proceed further to consider if there is a competitive necessity for the feature.
* * *
There is no need, furthermore, to engage, as did the Court of Appeals, in speculation about other design possibilities, such as using three or four springs which might serve the same purpose. Here, the functionality of the spring design means that competitors need not explore whether other spring juxtapositions might be used. The dual-spring design is not an arbitrary flourish in the configuration of MDI’s product; it is the reason the device works. Other designs need not be attempted (emphasis added).
TrafFix, 532 U.S. at 32-34, 58 USPQ2d at 1006-1007 (citations and additional internal quotations omitted).
Nonetheless, since the preservation of competition is an important policy underlying the functionality doctrine, competitive need generally remains an important factor in a functionality determination. See Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268, 1277, 61 USPQ2d 1422, 1428 (Fed. Cir. 2002) (“[I]n determining ‘functionality,’ the Board must assess the effect registration of a mark would have on competition.”).
Accordingly, examining attorneys should request information about alternative designs in the initial Office action, pursuant to 37 C.F.R. §2.61(b), i.e., inquire whether alternative designs are available for the feature embodied in the proposed mark, and whether the alternatives are more costly to produce.
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Where the evidence indicates that the applicant’s configuration is the best or one of a few superior designs available, then this evidence will strongly support a finding of functionality. See, e.g., In re Dietrich, 91 USPQ2d 1622, 1636 (TTAB 2009); (“[T]he question is not whether there are alternative designs that perform the same basic function, but whether the available designs work ‘equally well.’”) (citation omitted); In re N.V. Organon, 79 USPQ2d 1639, 1645 (TTAB 2006); In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) (Board found that the applicant had not shown that there were alternative guitar shapes that could produce the same sound as applicant’s configuration, noting that the record contained an advertisement obtained from the website of a competitor whose guitar appeared to be identical in shape to applicant’s configuration, stating that the shape of the guitar produces a better sound).
A configuration of a product or its packaging that embodies a superior design feature and provides a competitive advantage to the user is functional. In N.V. Organon, 79 USPQ2d at 1649, the Board found that by masking the unpleasant taste of the medicinal ingredients in pharmaceuticals, “flavor performs a utilitarian function that cannot be monopolized without hindering competition in the pharmaceutical trade. To allow registration of ‘an orange flavor’ as a trademark would give applicant potentially perpetual protection for this flavor, resulting in hindrance of competition.”
Functionality may be established by a single competitively significant application in the recited identification of goods, even if there is no anticompetitive effect in other areas of use, since competitors in that single area could be adversely affected. Valu Engineering, 278 F.3d at 1278, 61 USPQ2d at 1428 (“[I]f the Board identifies any competitively significant single use in the recited identification of goods for which the mark as a whole is functional, the Board should deny registration.”).
1202.02(a)(v)(D) Ease or Economy of Manufacture in Functionality Determinations
A product feature is functional if it is essential to the use or purpose of the product or if it affects the cost or quality of the product. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982). Therefore, a showing that a design results from a comparatively simple or inexpensive method of manufacture will support a finding that the design is functional.
In many cases, there is little or no evidence pertaining to this factor. However, the examining attorney should still ask the applicant for information as to whether the subject design makes the product simpler or less costly to manufacture, since evidence on this issue weighs strongly in favor of a finding of functionality. 37 C.F.R. §2.61(b). See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); In re
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Virshup, 42 USPQ2d 1403 (TTAB 1997). Statements pertaining to the cost or ease of manufacture may sometimes also be found in informational or advertising materials. See M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant’s design results in reduced installation costs found to be evidence of the functionality of applicant’s configurations of metal ventilating ducts and vents for tile or concrete roofs).
While evidence showing that the product feature results from a comparatively simple or inexpensive method of manufacture supports a finding that the design is functional, the opposite is not necessarily the case. That is, assertions by the applicant that its design is more expensive or more difficult to make, or that the design does not affect the cost, will not establish that the configuration is not functional. In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009) (“Even at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially, as claimed in the patents, a superior quality wheel.”); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006).
1202.02(a)(vi) Aesthetic Functionality
“Aesthetic functionality” refers to situations where the feature may not provide a truly utilitarian advantage in terms of product performance, but provides other competitive advantages. For example, in Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995), the Federal Circuit affirmed the Board’s determination that the color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages – i.e., ease of coordination with a variety of boat colors and reduction in the apparent size of the engines.
The concept of “aesthetic functionality” (as opposed to “utilitarian functionality”) has for many years been the subject of much confusion. While the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit) appeared to reject the doctrine of aesthetic functionality in In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 399-401 (C.C.P.A. 1982), the Supreme Court later referred to aesthetic functionality as a valid legal concept in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001). The confusion regarding aesthetic functionality stems in part from widespread misuse of the term “aesthetic functionality” in cases involving ornamentation issues, with some courts having mistakenly expanded the category of “functional” marks to include matter that is solely ornamental, essentially on the theory that such matter serves an “aesthetic function” or “ornamentation function.” It is this incorrect use of the term “aesthetic functionality” in connection with ornamentation cases that was rejected by the Court of Customs and Patent Appeals. See In re DC Comics, Inc., 689 F.2d 1042, 1047-1050, 215 USPQ 394, 397, 399-401 (C.C.P.A. 1982) (majority opinion and Rich, J., concurring)
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(holding, in a case involving features of toy dolls, that the Board had improperly “intermingled the concepts of utilitarian functionality and what has been termed ‘aesthetic functionality;’” and rejecting the concept of aesthetic functionality where it is used as a substitute for “the more traditional source identification principles of trademark law,” such as the ornamentation and functionality doctrines).
Where the issue presented is whether the proposed mark is ornamental in nature, it is improper to refer to “aesthetic functionality,” because the doctrine of “functionality” is inapplicable to such cases. The proper refusal is that the matter is ornamental and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. See TMEP §§1202.03 et seq. regarding ornamentation.
The Supreme Court’s use of the term “aesthetic functionality” in the TrafFix case appears limited to cases where the issue is one of actual functionality, but where the nature of the proposed mark makes it difficult to evaluate the functionality issue from a purely utilitarian standpoint. This is the case with color marks and product features that enhance the attractiveness of the product. The color or feature does not normally give the product a truly utilitarian advantage (in terms of making the product actually perform better), but may still be found to be functional because it provides other real and significant competitive advantages and, thus, should remain in the public domain. See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use “would put competitors at a significant non-reputation-related disadvantage,” even where the color was not functional in the utilitarian sense).
In M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001), the Board considered the proper use of the aesthetic functionality doctrine in connection with product designs for metal ventilating ducts and vents for tile or concrete roofs:
This case seems to involve elements of both utilitarian and aesthetic functionality. Here, for example, there is evidence of utility in applicant’s patent application, as well as statements touting the superiority of applicant’s design in applicant’s promotional literature, and statements that applicant’s design results in reduced costs of installation. On the other hand, there is no question that applicant’s roof designs which match the appearance of surrounding roof tiles are more pleasing in appearance because the venting tiles in each case are unobtrusive.
M-5 Steel, 61 USPQ2d at 1096. Citing extensively from the TrafFix, Qualitex, and Brunswick cases, the Board concluded that the product designs were
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functional for a combination of utilitarian and aesthetic reasons. M-5 Steel, 61 USPQ2d at 1097.
Note that this type of functionality determination – while employed in connection with a normally “aesthetic” feature such as color – is a proper use of the functionality doctrine, necessitating a §2(e)(5) refusal where the evidence establishes that a color or other matter at issue provides identifiable competitive advantages and, thus, should remain in the public domain. This is the opposite of an ornamentation refusal, where the matter at issue serves no identifiable purpose other than that of pure decoration.
Generally speaking, examining attorneys should exercise caution in the use of the term “aesthetic functionality,” in light of the confusion that historically has surrounded this issue. In most situations, reference to aesthetic functionality will be unnecessary, since a determination that the matter sought to be registered is purely ornamental in nature will result in an ornamentation refusal under §§1, 2, and 45, and a determination that the matter sought to be registered is functional will result in a functionality refusal under §2(e)(5). Use of the term “aesthetic functionality” may be appropriate in limited circumstances where the proposed mark presents issues similar to those involved in the M-5 Steel and Brunswick cases, supra – i.e., where the issue is one of true functionality under §2(e)(5), but where the nature of the mark makes the functionality determination turn on evidence of particular competitive advantages that are not necessarily categorized as “utilitarian” in nature. Any such use of the term “aesthetic functionality” should be closely tied to a discussion of specific competitive advantages resulting from use of the proposed mark at issue, so that it is clear that the refusal is properly based on the functionality doctrine and not on an incorrect use of “aesthetic functionality” to mean ornamentation.
See TMEP §§1202.05 and 1202.05(b) for additional discussion and case references regarding the functionality issue in connection with color marks.
1202.02(a)(vii) Functionality and Service Marks
Although rare in the context of service mark applications, examining attorneys are not foreclosed from refusing registration based on functionality. In Duramax Marine, LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780 (TTAB 2006), the Board held that a two-dimensional design of a marine heat exchanger (commonly known as a “keel cooler”), was not functional for “manufacture of marine heat exchangers to the order and specification of others.” It found “a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself ... and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services;” and stated that “[t]he inquiry
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regarding functionality may need to be decidedly different” in cases involving a service mark.
The record showed that the keel cooler depicted in the proposed mark was “identical, or nearly so” to the depiction of a keel cooler in applicant’s expired patent; that opposer and at least one other party had been marketing keel coolers very similar to the proposed mark; and that the design sought to be registered appeared in applicant’s catalog of pre-manufactured keel coolers. The Board framed the question at issue as “whether any manufacturer of the formerly patented item should be free to utilize, in advertising its goods for sale, a realistic depiction of the item,” and stated that:
[W]e must balance against opposer’s argument for the extension of existing case law on functionality [to] what is shown by the record to be long use of the keel cooler depiction by applicant in the manner of a logo. Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply the TrafFix test for functionality (a three- dimensional product design is functional if it is “essential to the use or purpose of the product or if it affects the cost or quality of the product”) to the product that results from purchasing the services, or whether the test should be adapted and focus on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service.
80 USPQ2d at 1794, citing TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001).
The Board held that opposer had failed to justify an extension of existing law to cover the circumstances of this case, but stated that its decision “does not foreclose the extension of TrafFix to service marks if circumstances in a future case warrant such an extension.” Id. at 1794.
1202.02(a)(viii) Functionality and Non-Traditional Marks
The functionality doctrine has been applied to non-traditional proposed marks, such as sound, color, and flavor. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532, 32 USPQ2d 1120, 1123 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) (the color black for outboard motors deemed functional because it provided competitive advantages such as ease of coordination with a variety of boat colors and reduction in the apparent size of the engines); In re Vertex Group LLC, 89 USPQ2d 1694 (TTAB 2009) (affirming the refusal to register an alarm sound emitted by personal security alarms in the normal course of operation); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1447 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that coated abrasive manufacturers have a competitive need to be able to use various shades of purple, include
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applicant’s shade; and that “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.”); In re N.V. Organon, 79 USPQ2d 1639, 1645 (TTAB 2006) (the flavor orange deemed functional for pharmaceuticals, where the evidence showed that the flavor served to mask the otherwise unpleasant taste of the medicine flavor); see also Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use “would put competitors at a significant non- reputation-related disadvantage,” even where the color was not functional in the utilitarian sense); TMEP §1202.02(a)(vi) (regarding aesthetic functionality and color marks).
Examining attorneys should also consider the functionality doctrine in relation to other types of non-traditional marks, such as scent. For example, an application to register scent for an air freshener or an application to register the sound of a ring tone for downloadable ring tones must be refused as functional, as the proposed marks is essential to the use or purpose of the goods. Cf. Vertex Group, 89 USPQ2d at 1703 (the Board found that the “ability of applicant’s [security alarms] to emit a loud, pulsing sound is essential to their use or purpose” because the evidence showed that use of a loud sound as an alarm is important and that alternating sound pulses and silence is a "more effective way to use sound as an alarm than is a steady sound”).
1202.02(b) Distinctiveness of Trade Dress
In Wal-Mart Stores, Inc. v Samara Bros., Inc., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), the Supreme Court distinguished between two types of trade dress – product design and product packaging. If the trade dress falls within the category of “product design,” it can never be inherently distinctive. Id. 529 U.S. at 212, 54 USPQ 1068 (“It seems to us that design, like color, is not inherently distinctive.”). Moreover, the Court held that in close cases in which it is difficult to determine whether the trade dress at issue is product packaging or product design, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Id. 529 U.S. at 215, 54 USPQ2d at 1070. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006). (Note: If the trade dress is functional, it cannot be registered despite acquired distinctiveness. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 34, 58 USPQ2d 1001, 1007 (2001)).
The statutory basis for refusal of registration on the Principal Register on the ground that the trade dress is nondistinctive is 15 U.S.C. §§1051, 1052, and 1127.
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1202.02(b)(i) Distinctiveness and Product Design Trade Dress
In addition to determining whether a proposed mark is functional, the examining attorney must refuse to register, on the Principal Register, any mark that consists of a product design, unless the applicant establishes that the mark has acquired distinctiveness under §2(f). Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1067 (2000). Features of a product’s design can never be inherently distinctive and are registrable only upon a showing of secondary meaning. Id. at 213–14, 54 USPQ2d at 1069. The Supreme Court noted that product design almost invariably serves purposes other than source identification, and that consumers are aware that even the most unusual product design (such as a cocktail shaker shaped like a penguin) is intended not to identify the source, but to render the product itself more useful or appealing. Id.
The examining attorney must refuse registration on the ground that the proposed mark is not inherently distinctive in all applications seeking registration of a product design, unless the applicant claims that the mark has acquired distinctiveness under §2(f) and includes sufficient evidence to show that the mark has acquired distinctiveness. The ground for refusal is that the proposed mark consists of a nondistinctive product design, and, thus, does not function as a mark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. If the product design is not functional, the mark may be registered on the Supplemental Register, or, if the applicant shows that the product design has acquired distinctiveness, on the Principal Register under §2(f). See TMEP §1202.02(a) regarding functionality, TMEP §§815 and 816 et seq. regarding the Supplemental Register, and TMEP §§1212 et seq. regarding acquired distinctiveness.
In distinguishing between product packaging and product design trade dress, Wal-Mart instructs that in “close cases” courts should classify the trade dress as product design. Id., 529 U.S. at 215, 54 USPQ2d at 1070. In addition, product design can consist of design features incorporated into products and need not implicate the entire product. See Wal-Mart, 529 U.S. at 207, 213, 54 USPQ2d at 1066, 1069 (a “cocktail shaker shaped like a penguin” is product design, as is “a line of spring/summer one-piece seersucker outfits decorated with appliqués of hearts, flowers, fruits, and the like”); In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006) (trade dress for clothing consisting of a label with the words “FLASH DARE!” in a V-shaped background and cut-out areas located on each side of the label with the cut- out areas consisting of a hole in a garment and a flap attached to the garment with a closure device, held to be product design).
Applicants face a heavy burden in establishing the distinctiveness in an application to register trade dress. See Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., ___ USPQ2d ___, Opp’n Nos. 91161403, 91161405, et al., (TTAB Mar. 25, 2009). A mere statement of five years’ use is generally not sufficient. In re Ennco Display Systems Inc., 56 USPQ2d
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1279, 1284 (TTAB 2000). Further, a product design may become generic and, thus, cannot be registered regardless of an applicant’s claim of acquired distinctiveness. See Stuart Spector Designs, ___ USPQ2d at ___ (noting that “genericness may be found where the design is, at a minimum, so common in the industry that it cannot be said to identify a particular source.”). See TMEP §1212.02(i) regarding acquired distinctiveness with respect to incapable matter.
For applications based on §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the examining attorney must issue the refusal even if the applicant has not filed an allegation of use. See TMEP §1202.02(d) regarding intent-to-use applications.
1202.02(b)(ii) Distinctiveness and Product Packaging Trade Dress for Goods or Services
Where a proposed mark consists of product packaging trade dress for goods or services, the examining attorney must determine whether the proposed mark is inherently distinctive. If it is not inherently distinctive, the examining attorney must refuse registration on the Principal Register on the ground that the proposed mark is nondistinctive trade dress under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademark applications; or §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service mark applications.
In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000), the Supreme Court discussed the distinction between the trade dress at issue in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992), and the product design trade dress (designs for children’s clothing) under consideration in Wal-Mart:
Two Pesos unquestionably establishes the legal principle that trade dress can be inherently distinctive, but it does not establish that product design trade dress can be. Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging – which, as we have discussed, normally is taken by the consumer to indicate origin – or else some tertium quid that is akin to product packaging....
Wal-Mart, 529 U.S. at 215, 54 USPQ2d at 1069.
Thus, unlike product design trade dress, trade dress constituting product packaging may be inherently distinctive for goods or services and registrable on the Principal Register without a showing of acquired distinctiveness. However, the examining attorney should be mindful of the Supreme Court’s admonishment that where there are close cases, trade dress should be
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classified as product design for which secondary meaning is always required. Id., 529 U.S. at 215, 54 USPQ2d at 1070.
“[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular source.’” Id. at 210, 54 USPQ2d at 1068 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)). The test for determining inherent distinctiveness set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977), although not applicable to product design trade dress, is still viable in the examination of product packaging trade dress. The examining attorney should consider the following “Seabrook” factors – whether the proposed mark is:
(1) a “common” basic shape or design;
(2) unique or unusual in the field in which it is used;
(3) a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods;
(4) capable of creating a commercial impression distinct from the accompanying words.
Id. See also Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 59 USPQ2d 1720 (1st Cir. 2001) (trade dress for common elements of candle labels was nondistinctive product packaging for which insufficient evidence of acquired distinctiveness was shown; and evidence of acquired distinctiveness for trade dress comprised of label elements, candle holders, display systems, and candle containers was deemed insufficient); Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1205, 31 USPQ2d 1321, 1331 (Fed. Cir. 1994) (citing Seabrook); In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“[f]or the ‘blue motif’ of a retail store to be registrable on the Principal Register without resort to Section 2(f), the trade dress would have to be immediately recognizable as a distinctive way of identifying the source of the store services.”); In re File, 48 USPQ2d 1363, 1367 (TTAB 1998) (novel tubular lights used in connection with bowling alley services would be perceived by customers as “simply a refinement of the commonplace decorative or ornamental lighting ... and would not be inherently regarded as a source indicator.”); In re J. Kinderman & Sons Inc., 46 USPQ2d 1253, 1255 (TTAB 1998) (“... while the designs applicant seeks to register [the packaging for electric lights for Christmas trees] may be unique in the sense that we have no evidence that anyone else is using designs which are identical to them, they are nonetheless not inherently distinctive.”).
Unless the drawing and description of the mark are dispositive of the lack of distinctiveness without the need to consider a specimen, applications for
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product packaging trade dress generally will not be refused registration on the ground of nondistinctiveness until the applicant has filed an allegation of use. See TMEP §1202.02(d).
Regardless of the bases for filing, if a proposed mark is inherently distinctive, it may be registered on the Principal Register. See In re Creative Beauty Innovations, Inc., 56 USPQ2d 1203 (TTAB 2000) (bottle configuration found inherently distinctive); In re Fre-Mar Industries, Inc., 158 USPQ 364, 367 (TTAB 1968) (“[A]lthough the particular shape is a commonplace one for flashlights, it is nevertheless so unique and arbitrary as a container in the tire repair field that it may be inherently distinctive and, therefore, by reason of its shape alone, serve to identify applicant’s goods and distinguish them from like goods of others.”); In re International Playtex Corp., 153 USPQ 377 (TTAB 1967) (container configuration having the appearance of an ice cream cone found inherently distinctive as a trademark for baby pants).
If a proposed mark is not inherently distinctive, the mark may be registered on either the Principal Register under §2(f) or on the Supplemental Register. Secondary meaning is acquired when the public views its primary significance as identifying the source of the product rather than the product itself. Wal-Mart, 529 U.S. at 211, 54 USPQ2d at 1068. In the following cases, the applicant’s evidence was found to be sufficient to support a claim of acquired distinctiveness: In re World’s Finest Chocolate, Inc., 474 F.2d 1012, 177 USPQ 205 (C.C.P.A. 1973) (package design found to identify applicant’s candy bars and distinguish them from those of others); Ex parte Haig & Haig Ltd., 118 USPQ 229, 230 (Comm’r Pats. 1958) (“[The decree] recited that because of the original, distinctive and peculiar appearance of the ‘Pinched Decanter’ the brand of whiskey in such bottles had come to be known and recognized by the public, by dealers and by consumers; and that the whiskey contained in such bottles had come to be identified with the ‘Pinched Decanter’ in the minds of the public generally.”).
The examining attorney must establish a prima facie case that the trade dress is not inherently distinctive. To meet this burden, the examining attorney must at a minimum, set forth a “‘reasonable predicate’ for its position of no inherent distinctiveness.” The USPTO is an agency of limited resources, and as such, it cannot be expected to shoulder the burden of conducting market research. In re Pacer Technology, 338 F.3d 1348, 1351-1352, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (design patents showing other adhesive container cap designs found sufficient to establish prima facie case that applicant’s adhesive container cap was not inherently distinctive).
See TMEP §§1212 et seq. regarding acquired distinctiveness and TMEP §§815 and 816 et seq. regarding the Supplemental Register. In In re Usher, S.A., 219 USPQ 920, 921 (TTAB 1983), the evidence of secondary meaning was insufficient. (The configuration of a package for mint candies was not functional but the package design was not shown to possess secondary meaning.).
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1202.02(c) Drawing and Description of Mark in Trade Dress Applications
Applicants often submit drawings of marks depicting configurations of goods, trade dress, three-dimensional marks, and the like, containing matter that is: (1) not part of the mark; (2) functional; (3) non-distinctive but capable; (4) inherently distinctive; or (5) any combination of these factors. To ensure proper examination, drawings and descriptions of these marks must accurately depict the mark the applicant intends to register.
If the drawing does not meet the requirements of 37 C.F.R. §2.52, the examining attorney must require the applicant to submit a substitute drawing. The examining attorney may require the applicant to provide additional information such as pictures of the goods, samples, or other relevant materials pursuant to 37 C.F.R. §2.61(b) to assist in assessing the accuracy and completeness of the drawing and in crafting a comprehensive description of the mark.
1202.02(c)(i) Drawings in Trade Dress Applications
Drawings of three-dimensional, configuration, and trade dress marks may not contain elements that are not a part of the mark. If the mark comprises the design of only a portion of a product or container, broken or dotted lines must be used in the drawing to indicate that portion of the product or container that is not part of the mark. 37 C.F.R. §2.52(b)(4); see In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); TMEP §807.08. Additionally, broken or dotted lines should be used to indicate elements that are functional, are included in the drawing merely to show the position of the claimed portion of the mark, or are otherwise not a part of the mark. In such a case, disclaimer of these elements generally is not appropriate because they do not form part of the mark. See In re Famous Foods, 217 USPQ 177 (TTAB 1983).
A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole. This means that the applicant maintains rights in the disclaimed matter as part of its own mark. Therefore, with respect to configurations, trade dress, and three-dimensional marks, matter that is functional or intended to show placement only is not part of the mark and should not be disclaimed. Representations of certain non- distinctive but capable features of a mark may be disclaimed in the limited circumstance discussed below.
Where broken or dotted lines are used to show position or placement, the mark consists only of the placement or position on the item(s) depicted in broken or dotted lines. However, because elements in the drawing shown in broken or dotted lines are not part of the mark, they are excluded from the examining attorney’s consideration during any §2(d) (likelihood of confusion)
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analysis. See In re Homeland Vinyl Products, Inc., 81 USPQ2d 1378, 1382 (TTAB 2006).
In rare instances where it is impractical to render certain elements of a mark in dotted or broken lines - for example, if those elements are proportionally so small as to render dotted lines illegible, or if dotted lines would result in an unclear depiction of the mark, then the applicant may use solid lines. However, the applicant must insert a statement into the description of the mark identifying these elements and declaring that these elements are not a part of the mark, and that they serve only to show the position of the mark on the goods, as appropriate.
Elements of the mark such as features of non-functional product packaging or product configuration that have acquired distinctiveness may appear in solid lines in the drawing as part of the mark. Such elements may be removed from the mark only if the removal thereof does not result in material alteration.
A photograph of the applied-for trade dress is acceptable as a drawing if it otherwise meets the drawing requirements (e.g., it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses) and it fairly represents the mark. Note that, although the mark in a §66(a) application cannot be amended, the applicant must comply with the United States requirements regarding drawings of the mark, and an amendment for the purpose of compliance with United States law will be accepted. TMEP §1904.02(h). Therefore, in §66(a) applications, amendments to delete extraneous matter from photographs, or amendments of drawings from photographs to illustrated renderings showing elements of the mark in dotted or broken lines, will be accepted.
1202.02(c)(ii) Description Required
Trade dress applications must include an accurate description of the mark. See 37 C.F.R. §2.37. If an acceptable statement describing the mark is not in the record, the examining attorney must require the applicant to submit a description to clarify what the applicant seeks to register. The description must adequately describe the mark, with unnecessary matter kept to a minimum. If applicable, the description must clearly indicate that the mark is “three-dimensional” and/or constitutes a “configuration” of or “packaging” or “container” for the goods, and must adequately explain any elements in the drawing not claimed as part of the mark. If applicable, the description must also clearly indicate the portion of the configuration or packaging that the mark comprises. The description of the mark must make it clear what any dotted or broken lines in the drawing represent and include a statement that the matter shown in dotted or broken lines is not part of the mark. See 37 C.F.R. §2.52(b)(4); TMEP §§808 et seq. Examples of acceptable language for this purpose are: “The broken lines depicting [describe elements] indicate placement of the mark on the goods and are not part of the mark” or “The
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dotted lines outlining [the goods] are intended to show the position of the mark on the goods and are not part of the mark.”
For example, for the mark below,
an appropriate description (and color claim) of the mark could read:
The colors white, blue, light blue, and silver are claimed as a feature of the mark. The mark consists of the color blue applied to the cap of the container of the goods, a white background applied to the rest of the container, a blue rectangle with a silver border, a light blue curving band, and three light blue droplets. The dotted lines outlining the container and its cap indicate placement of the mark on the goods and are not part of the mark.
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For the mark below,
an appropriate description (and color claim) of the mark would read:
The color red is claimed as a feature of the mark. The mark consists of a single transverse red stripe applied adjacent to one end of the elongated packaging for the goods. The dotted outline of the packaging is intended to show the position of the mark and is not part of the mark.
The examining attorney must ensure that the description statement has been entered into the Trademark Reporting and Monitoring (“TRAM”) database, so that it will be printed in the Official Gazette and on the certificate of registration. See TMEP §817.
See TMEP §§1202.05(d)(i) and (d)(ii) regarding drawings in applications for color marks consisting solely of one or more colors.
1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress Marks
Where the trade dress as a whole is registrable but contains unregistrable elements, those elements generally must be disclaimed. See 15 U.S.C. §1056; TMEP §1213 regarding disclaimers. Trade dress marks generally are not considered unitary, as each of the elements normally creates a separate commercial impression. As stated in the Federal Circuit decision In re Slokevage, 441 F.3d 957, 963, 78 USPQ2d 1395, 1400 (Fed. Cir. 2006), “[m]oreover, trade dress, by its nature, contains distinct elements and is characterized as the combination of various elements to create an overall impression.” Although each element is combined with others to form one composite mark, each element retains its separate commercial impression.
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If the mark consists of inherently distinctive elements combined with elements that are not inherently distinctive but are capable, and the applicant indicates that the capable matter is claimed as a part of the mark, then a disclaimer is appropriate.
See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). See also In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766, 768 (TTAB 1986) (“[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).”).
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (“Section 6 is equally applicable to the Supplemental Register.”); In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of “BALSAM,” found registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) (“Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.”).
1202.02(c)(iv) Three-Dimensional Marks
In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition. 37 C.F.R. §2.52(b)(2). See TMEP §807.10. In order to accurately reflect the exact nature of the applied-for mark, the mark description must state that the mark is three-dimensional in nature. This feature of the mark must be shown in the supporting specimens of use for the drawing to comprise a substantially exact representation of the mark as actually used. Conversely, a three- dimensional specimen would not be acceptable to show use for a mark that is described or depicted as a two-dimensional mark. If the applicant believes it cannot adequately display its mark in a single rendition, it may petition the Director to waive the requirement and accept a drawing featuring multiple views of the mark. 37 C.F.R. §2.146(a)(5).
1202.02(d) Trade Dress in §1(b) Applications
Distinctiveness and Product Design
A product design mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara
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Bros., Inc., 529 U.S. 205, 212, 54 USPQ2d 1065, 1068 (2000); In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); TMEP §1202.02(b)(i). Therefore, if the mark is comprised of a product design, the examining attorney will refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under §§1, 2, and 45 of the Trademark Act. 15 U.S.C. §§1051, 1052, and 1127. The examining attorney must make this refusal even in an intent-to- use application under 15 U.S.C. §1051(b) for which no allegation of use has been filed.
Distinctiveness and Product Packaging
If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992). This usually requires consideration of the context in which the mark is used and the impression it would make on purchasers. Generally, no refusal based on lack of inherent distinctiveness will be issued in an intent-to-use application until the applicant has submitted specimen(s) with an allegation of use. However, if appropriate, the examining attorney has discretion to issue this refusal before a specimen is submitted.
Functionality
To determine whether a proposed mark is functional, the examining attorney must consider how the asserted mark is used. Generally, in a §1(b) application, the examining attorney will not issue a refusal on the ground that the mark is functional until the applicant has filed an allegation of use under §1(c) or §1(d), 15 U.S.C. §1051(c) or (d).
Advisory Statement
In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal based on functionality or nondistinctive trade dress will be made, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.
1202.02(e) Trade Dress in §44 and §66(a) Applications
Distinctiveness and Product Design
A product design mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213, 54 USPQ2d 1065, 1068-1069 (2000); In
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re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); TMEP §1202.02(b)(i). Therefore, if the proposed mark is comprised of a product design, the examining attorney must refuse registration on the Principal Register on the ground that the proposed mark consists of a nondistinctive product design under 15 U.S.C. §§1051, 1052, and 1127.
Distinctiveness and Product Packaging
If the mark comprises product packaging trade dress for goods or services, the examining attorney must determine whether the mark is inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992). See TMEP §§1202.02(b) et seq. regarding distinctiveness of trade dress. Because a specimen of use is not required prior to registration in these cases, it is appropriate for examining attorneys to issue the refusal where the mark on its face, as shown in the drawing and described in the description, reflects a lack of distinctiveness. Cf. In re Right- On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application despite the lack of a specimen).
Functionality
If the record indicates that the proposed mark is functional, the examining attorney should issue a refusal of registration on the Principal Register under §2(f), or on the Supplemental Register. See TMEP §§1202.02(a) et seq. regarding functionality. NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
1202.03 Refusal on Basis of Ornamentation
Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or other trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark as required by §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
Generally, the ornamentation refusal applies only to trademarks, not to service marks. See TMEP §§1301.02 et seq. regarding matter that does not function as a service mark.
Matter that serves primarily as a source indicator, either inherently or as a result of acquired distinctiveness, and that is only incidentally ornamental or decorative, can be registered as a trademark. In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982).
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With regard to registrability, ornamental matter may be categorized along a continuum ranging from ornamental matter that is registrable on the Principal Register, to purely ornamental matter that is incapable of trademark significance and unregistrable under any circumstances, as follows:
(1) Ornamental matter that serves as an identifier of a “secondary source” is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation “NEW YORK UNIVERSITY”) can convey to the purchasing public the “secondary source” of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship, or authorization by the identified party is indicated. See TMEP §1202.03(c).
(2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f), if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods. See TMEP §1202.03(d).
(3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
(4) Some matter is determined to be purely ornamental and, thus, incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register. See TMEP §1202.03(a).
The examining attorney should consider the following factors to determine whether ornamental matter can be registered: (1) the commercial impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary source, if applicable; and (4) evidence of distinctiveness. These factors are discussed in the following sections.
1202.03(a) Commercial Impression
The examining attorney must determine whether the overall commercial impression of the proposed mark is that of a trademark. Matter that is purely ornamental or decorative does not function as a trademark and is unregistrable on either the Principal Register or the Supplemental Register.
The significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, “smiley face,” or the phrase “Have a Nice Day”) are normally not perceived as marks.
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The examining attorney must also consider the size, location, and dominance of the proposed mark, as applied to the goods, to determine whether ornamental matter serves a trademark function. In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984). A small, neat, and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas a larger rendition of the same matter emblazoned across the front of a garment (or a tote bag, or the like) may be likely to be perceived merely as a decorative or ornamental feature of the goods. However, a small, neat, and discrete word or design feature will not necessarily be perceived as a mark in all cases.
1202.03(b) Practices of the Trade
In determining whether a proposed mark is inherently distinctive, factors to be considered include whether the subject matter is unique or unusual in a particular field, as opposed to a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods that would be viewed by the public as a dress or ornamentation for the goods. See, e.g., In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire); In re Chung, Jeanne & Kim Co., Inc., 226 USPQ 938 (TTAB 1985) (stripe design applied to sides of sport shoes).
Even if a proposed mark is not inherently distinctive, it may be registered on the Principal Register if it has become distinctive of the applicant’s goods in commerce. See TMEP §1202.03(d). The practices of the trade may be relevant in assessing the applicant’s burden of proving that the proposed mark has become distinctive. Typically, more evidence is required if the proposed mark is a type of ornamental matter used so frequently in the relevant industry that consumers would be less apt to discern a source- indicating significance from its use. See Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (cornflower design recognized as a trademark for coffee percolators and culinary vessels and utensils). Cf. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987) (affirming refusal to register design of morning glories and leaves for tableware, the Board noting that the design “has not been shown to be other than another decorative pattern without trademark significance....”).
If the applicant cannot show that the proposed mark has acquired distinctiveness, the mark in an application under §1 or §44 of the Trademark Act may be registered on the Supplemental Register if it is capable of distinguishing the applicant’s goods or services. 15 U.S.C. §1091. The practices of the trade may be relevant in determining whether a proposed mark is capable of distinguishing the goods or services. If the practices of the trade suggest that certain matter performs the function of a trademark by
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signifying to purchasers and prospective purchasers the goods of a particular entity and distinguishing them from the goods of others, the matter is assumed to be capable of distinguishing the applicant’s goods and, therefore, may be registered on the Supplemental Register. See In re Todd Co., Inc., 290 F.2d 597, 129 USPQ 408 (C.C.P.A. 1961) (repeating pattern of green lines, used to cover the entire back surface of safety paper products (e.g., checks), held registrable on the Supplemental Register for safety paper products, where the record showed that it had long been the practice in the industry to use distinctive overall surface designs to indicate origin of the products).
1202.03(c) “Secondary Source”
To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental. To show secondary source, the applicant may show: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act; (2) non-ornamental use of the mark in commerce on other goods or services; or (3) ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods or services. Ownership of an intent-to-use application for which no allegation of use has been filed is not sufficient to show secondary source. If the applicant establishes that the proposed mark serves as an identifier of a secondary source, the matter is registrable on the Principal Register.
See In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982), in which MORK & MINDY was held registrable for decals, because applicant had a television series of that name and had previously registered MORK & MINDY for various goods and services. The Board found that the primary significance of the term MORK & MINDY to a prospective purchaser of decals was to indicate the television series and the principal characters of the television series. Id. at 1112. The Board held that the case was controlled by its decision in In re Olin Corp., 181 USPQ 182 (TTAB 1973) (stylized “O” design registrable for T-shirts, where applicant had previously registered the “O” design for skis), in which that Board had stated:
It is a matter of common knowledge that T-shirts are “ornamented” with various insignia ... or … various sayings such as “Swallow Your Leader.” In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own
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example, “Swallow Your Leader” probably would not be considered as an indication of source.
The “ornamentation” of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source....
181 USPQ at 182.
In Paramount, applying the test set forth in Olin, the Board found that “the paired names ‘MORK & MINDY,’ while certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same sense as the stylized ‘O’ in Olin.” 213 USPQ at 1113. The Board noted that “while purchasers may be accustomed to seeing characters’ names and images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters’ names and images used as trademarks to indicate source ....” Id. at 1114.
See also In re Watkins Glen Int’l, Inc., 227 USPQ 727 (TTAB 1985) (stylized checkered flag design registrable for patches and clothing items, where applicant had previously registered WATKINS GLEN and checkered flag design (with “WATKINS GLEN” disclaimed) for services); In re Expo ‘74, 189 USPQ 48 (TTAB 1975) (EXPO ‘74 registrable for handkerchiefs and T-shirts, where applicant, organizer of the 1974 World’s Fair, had previously registered EXPO ‘74 for other goods and services).
A series of ornamental uses of the subject matter on various items will not establish that the subject matter functions as an indicator of secondary source; use as a trademark for the other goods or services must be shown. See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) (refusal to register ASTRO GODS and design for T-shirts affirmed, despite applicant’s ornamental use of the proposed mark on other goods and appearance of applicant’s trade name “Astro Gods Inc.” on the T-shirt as part of a copyright notice).
1202.03(d) Evidence of Distinctiveness
As noted above, even if a proposed mark is not inherently distinctive, it may nevertheless be registered on the Principal Register under §2(f), 15 U.S.C. §1052(f), if it becomes distinctive of the applicant’s goods in commerce. See TMEP §§1212 et seq. regarding acquired distinctiveness.
Generally, evidence of five years’ use alone is not sufficient to show acquired distinctiveness of a mark that is mere ornamentation. Concrete evidence that the mark is perceived as a mark for the relevant goods or services is required to establish distinctiveness. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).
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1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a) Applications
Generally, the issue of ornamentation is tied to the use of the mark as evidenced by the specimen. Therefore, unless the ornamental nature of the mark is clearly apparent from the drawing and description of the mark, no ornamentation refusal will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use with an allegation of use under §1(c) or §1(d), 15 U.S.C. §1051(c) or (d).
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue an ornamentation refusal where the mark on its face, as shown in the drawing and described in the description, reflects a failure to function. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application).
1202.03(f) Ornamentation: Case References
The following cases show the various ways in which ornamental matter was found not to function as a mark.
1202.03(f)(i) Slogans or Words Used on the Goods
Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (“DAMN I’M GOOD,” inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (“SUMO,” as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps serves merely as an ornamental feature of applicant's goods); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts.”); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (“YOU ARE SPECIAL TODAY” for ceramic plates found to be without any source-indicating significance).
See also TMEP §1202.04 regarding informational matter.
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1202.03(f)(ii) Designs Used on the Goods
See In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire considered just a refinement of a general ornamental concept rather than a trademark); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961) (two parallel colored bands at the top of the sock, the upper band red, and the lower band blue, for men’s ribbed socks held merely ornamental absent convincing evidence that the purchasing public recognized the design as a trademark); In re Sunburst Products, Inc., 51 USPQ2d 1843 (TTAB 1999) (combination of matching color of watch bezel and watch band and contrasting colors of watch case and watch bezel for sports watches found to be nothing more than a mere refinement of a common or basic color scheme for sports watches and, therefore, would not immediately be recognized or perceived as a source indicator); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern design of morning glories and leaves for tableware not distinctive and not shown to be other than decorative pattern without trademark significance).
1202.03(f)(iii) Trade Dress on the Containers for the Goods
See In re J. Kinderman & Sons Inc., 46 USPQ2d 1253 (TTAB 1998) (design of container for Christmas decorations that resembles a wrapped Christmas gift not inherently distinctive); In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994) (rose design used on cosmetics packaging is essentially ornamental or decorative background and does not function as mark); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim).
1202.03(g) Ornamentation Cases and Acquired Distinctiveness
In the following cases, subject matter sought to be registered was found to have acquired distinctiveness as a trademark: In re Jockey Int’l, Inc., 192 USPQ 579 (TTAB 1976) (inverted Y design used on underwear found to have acquired distinctiveness, where evidence showed extensive use on packaging and in advertising in a manner calculated to draw the attention of prospective purchasers to the design and for them to look at the design as a badge of origin); Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (blue cornflower design for coffee percolators and culinary vessels and utensils found to have acquired distinctiveness, where evidence showed extensive and prominent use of the design in advertising, use of the design on pins and aprons worn by sales promotion representatives in the course of their duties, and surveys and statements of purchasers indicating that they recognized the design as indicating origin in applicant).
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1202.04 Informational Matter
Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (SPECTRUM fails to function as a mark for illuminated pushbutton switches, where the mark is used in a manner that merely informs the potential purchaser of the multiple color feature of the goods, and the coloring and font in which the proposed mark is displayed are not sufficient to imbue the term with source-identifying significance or to set it apart from other informational wording); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998) (DRIVE SAFELY perceived as an everyday, commonplace safety admonition that does not function as mark); In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and design found unregistrable for weatherstripping and paper products, the Board stating, “[R]ather than being regarded as an indicator of source, the term ‘THINK GREEN’ would be regarded simply as a slogan of environmental awareness and/or ecological consciousness ....”); In re Southbrook Entertainment Corp., 8 USPQ2d 1166 (TTAB 1988) (HI-YO-SILVER for videotapes and cassettes held to be a well known expression closely linked to a character that did not function as a trademark for the goods); In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA, for electric shavers, held incapable of functioning as a mark, notwithstanding use of letters “TM” in connection with prominent display of slogan on packages for the goods and claim of acquired distinctiveness); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD held not to function as a mark for construction material notwithstanding long use, where the only use was on the bumpers of construction vehicles in which the goods were transported); In re Schwauss, 217 USPQ 361 (TTAB 1983) (FRAGILE used on labels and bumper stickers does not function as a mark).
A slogan can function as a trademark if it is not merely descriptive or informational. See e.g., Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970) (affirming the Board’s dismissal of an opposition to the registration of HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE for a hair coloring preparation); In re The Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (QUALITY THROUGH CRAFTSMANSHIP found registrable for radio equipment). See TMEP §1202.03(f)(i) regarding ornamental slogans used on goods.
See TMEP §1301.02(a) regarding informational matter that does not function as a service mark.
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1202.05 Color as a Mark
Color marks are marks that consist solely of one or more colors used on particular objects. For marks used in connection with goods, the color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, a color trademark might consist of purple used on a salad bowl, pink used on the handle of a shovel, or a blue background and a pink circle used on all or part of a product package. See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995) (green-gold used on dry cleaning press pads held to be a protectible trademark, where the color had acquired secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink as applied to fibrous glass residential insulation registrable where the evidence showed the color had acquired secondary meaning). Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.
The registrability of a color mark depends on the manner in which the proposed mark is used. Owens-Corning, 774 F.2d at 1120, 227 USPQ at 419. A color(s) takes on the characteristics of the object or surface to which it is applied, and the commercial impression of a color will change accordingly. See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (“a word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances”).
Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000). See TMEP §1202.05(a) and cases cited therein.
Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. Owens-Corning, 774 F.2d at 1124, 227 USPQ at 422; In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“blue motif” used in retail stores would likely be perceived by prospective purchasers as “nothing more than interior decoration” that “could be found in any number of retail establishments. Undoubtedly such features are usually perceived as interior decoration or ornamentation.”) However, color can function as a mark if it is used in the manner of a trademark/service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. The United States Supreme Court has held that color alone may, sometimes, meet the basic legal requirements for a trademark. When it does, there is no rule that prevents color from serving as a mark. Qualitex, 514 U.S. at 161, 34 USPQ2d at 1162. If a color is not functional and is shown to have acquired distinctiveness on or
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in connection with the applicant’s goods or services, it is registrable as a mark.
Functional color marks are not registrable. See TMEP §1202.05(b) and cases cited therein.
1202.05(a) Color Marks Never Inherently Distinctive
Color marks are never inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001). Therefore, the examining attorney must refuse to register a color mark on the Principal Register, unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The examining attorney must issue this refusal in all color mark applications where acquired distinctiveness has not been shown, regardless of the filing basis of the application. The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45, or does not function as a service mark under §§1, 2, 3, and 45.
If the proposed color mark is not functional, it may be registrable on the Principal Register if it is shown to have acquired distinctiveness under §2(f). If it is not distinctive, it is registrable only on the Supplemental Register. See In re Hudson News Co., 39 USPQ2d 1915 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“blue motif” applied to retail store services not registrable on Principal Register without resort to Section 2(f)); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (the color green, as uniformly applied to medical instruments, not barred from registration on the basis of functionality; however, evidence failed to establish that the color had become distinctive of the goods); In re Deere & Co., 7 USPQ2d 1401 (TTAB 1988) (the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence held to establish that the colors had become distinctive of the goods).
The burden of proving that a color mark has acquired distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink, as uniformly applied to fibrous glass residential insulation, shown to have acquired distinctiveness as a trademark for the goods); In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998) (evidence insufficient to establish that green rectangular background design had acquired distinctiveness as applied to clothing and footwear); In re American Home Products Corp., 226 USPQ 327 (TTAB 1985) (tri-colored, three-dimensional, circular-shaped design found to have become distinctive of analgesic and muscle relaxant tablets); In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (evidence found
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insufficient to establish that two-colored drug capsules and multi-colored seeds or granules contained therein had become distinctive of methyltestosterone). A mere statement of long use is not sufficient. The applicant must demonstrate that the color has acquired source-indicating significance in the minds of consumers.
As noted above, the commercial impression of a color may change depending on the object to which it is applied. Therefore, evidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects, but not for other objects. See Thrifty, 61 USPQ2d at 1124. Cf. Qualitex, 514 U.S. at 163, 34 USPQ2d at 1162-1163 (“The imaginary word ‘Suntost,’ or the words ‘Suntost Marmalade,’ on a jar of orange jam immediately would signal a brand or a product ‘source’; the jam’s orange color does not do so. But, over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods – i. e., ‘to indicate’ their ‘source...’”).
1202.05(b) Functional Color Marks Not Registrable
A color mark is not registrable on the Principal Register under §2(f), or the Supplemental Register, if the color is functional. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1447 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that opposer had established a prima facie case that coated abrasive manufacturers have a competitive need to be able to use various shades of purple, include applicant’s shade, which applicant had failed to rebut; and that “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.”); Brunswick Corp. v. British Seagull, supra (holding the color black functional for outboard motors because while the color did not provide utilitarian advantages in terms of making the engines work better, it nevertheless provided recognizable competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (color pink used on surgical wound dressings is functional because the actual color of the goods closely resembles Caucasian human skin); In re Orange Communications, Inc., 41 USPQ2d 1036 (TTAB 1996) (colors yellow and orange held to be functional for public telephones and telephone booths, since they are more visible under all lighting conditions in the event of an
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emergency); In re Howard S. Leight & Associates Inc., 39 USPQ2d 1058 (TTAB 1996) (color coral held to be functional for earplugs, because it is more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by- product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process.
See also In re Pollak Steel Co., 314 F.2d 566, 136 USPQ 651 (C.C.P.A. 1963) (reflective color on fence found to be functionan( � R.L. Winston Rod Co. v. Sage Mfg. Co., 838 F. Supp. 1396, 29 USPQ2d 1779 (D. Mont. 1993) (color green used on graphite fishing rods found to be functionan( � Russell Harrington Cutlery Inc. v. Zivi Hercules Inc., 25 USPQ2d 1965 (D. Mass. 1992) (color white used on cutlery handles found to be functionan( � Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501 (TTAB 1993) (color green used as wrapper for saw blades is functional when the color is one of the six colors used in a color-coding system to identify the type of blade).
The doctrine of “aesthetic functionality” may apply in some cases where the evidence indicates that the color at issue provides specific competitive advantages that, while not necessarily categorized as purely “utilitarian” in nature, nevertheless dictate that the color remains in the public domain. Brunswick Corp. v. British Seagull, supra. See also TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (in which the Supreme Court discussed aesthetic functionality, distinguishing Qualitex, supra, as a case where “aesthetic functionality was the central question…”). See TMEP §1202.02(a)(vi).
1202.05(c) Color as a Separable Element
As with all trademarks, a color mark may contain only those elements that make a separable commercial impression. See TMEP §807.12(d). Accordingly, an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression. However, the applicant may register the color of the background material on which the words or design appear apart from the words or design. See TMEP §1202.11.
The commercial impression of a color may change depending on the object to which it is applied. In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); In re Hayes, 62 USPQ2d 1443 (TTAB 2002). An application seeking registration of color in the abstract, without considering the manner or context in which the color is used, would be contrary to law and public policy, because it would result in an unlimited number of marks being claimed in a single application. Cf. In re International Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999) (mark
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with changeable or “phantom” element unregistrable because it would “encompass too many combinations and permutations to make a thorough and effective search possible,” and, therefore, would not provide adequate notice to the public); In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001) (hologram used on trading cards in varying shapes, sizes, contents, and positions constitutes more than one “device” as contemplated by §45 of the Trademark Act). Only one mark can be registered in a single application. TMEP §807.01.
1202.05(d) Drawings of Color Marks Required
All marks, other than sound and scent marks, require a drawing. TMEP §807. An application for a color mark that is filed without a drawing will be denied a filing date. 37 C.F.R. §2.21(a)(3). Similarly, an application for a color mark with a proposed drawing page that states “no drawing,” or sets forth only a written description of the mark, will be denied a filing date. The drawing provides notice of the nature of the mark sought to be registered. Only marks that are not capable of representation in a drawing, such as sound or scent marks, are excluded from the requirement for a drawing. Color marks are visual, and should be depicted in a color drawing, accompanied by: (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement describing where the color(s) appear and how they are used on the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
1202.05(d)(i) Drawings of Color Marks in Trademark Applications
In most cases, the drawing will consist of a representation of the product or product package. The drawing of the mark must be a substantially exact representation of the mark as used or intended to be used on the goods. 37 C.F.R. §2.51. A depiction of the object on which the color is used is needed to meet this requirement.
The object depicted on the drawing should appear in broken lines. The broken lines inform the viewer where and how color is used on the product or package, while at the same time making it clear that the shape of the product, or the shape of the package, is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08. In the absence of a broken-line drawing, the USPTO will assume that the mark is a composite mark consisting of the product shape, or the packaging shape, in a particular color.
Color used on multiple goods
If the mark is used on multiple goods, the drawing required will depend on the nature of the goods. The drawing of the mark must be a substantially exact representation of the mark as used or intended to be used on the goods. 37 C.F.R. §2.51. A drawing consisting of a depiction of only one of the goods will be accepted if the goods, or the portions of the goods on which color
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appears, are similar in form and function so that a depiction of only one of the products is still a substantially exact representation of the mark as used on all of the products. For example, if the mark is the color purple used on refrigerators and freezers, a drawing of a freezer (in broken lines, with a description of the mark indicating that the color purple is used on the mark) would be sufficient. Or, if the mark is the color pink used on the handles of rakes, shovels, and hoes, a drawing of any of those items (in dotted lines with a description of the mark stating that the handle is pink) would be sufficient. Or, if the mark consists of packaging for various food items that is always blue with a pink circle, a drawing of any one of the packages (in dotted lines with a description of the colors) would be sufficient.
If the mark is used on multiple goods that are dissimilar or unrelated, or if color is used in different ways on different goods, so that a depiction of one of the goods is not a substantially exact representation of the mark as used on all goods (e.g., the color purple used on microscopes and vending machines), a separate application must be submitted for each item.
Color used on liquids or powders
Sometimes a color mark consists of color(s) used on liquids or powders. For example, the mark might consist of fuchsia body oil or red, white, and blue granular washing machine detergent. In these cases, the nature of the drawing will depend on the manner of use of the liquid or powder. If the liquid or powder is visible through the product package, then the drawing should consist of the shape of the product package in broken lines, with the description of the mark identifying the color of the liquid or powder.
1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications
It is difficult to anticipate all of the issues that may arise, because there are a myriad of ways that color can be used in connection with services. However, the following general guidelines will be used to determine the sufficiency of drawings in these cases:
• The purpose of a drawing is to provide notice to the public of the nature of the mark. As with color used on goods, a color service mark does not consist of color in the abstract. Rather, the mark consists of color used in a particular manner, and the context in which the color is used is critical to provide notice of the nature of the mark sought to be registered. Therefore, as with color marks used on goods, a drawing, supplemented with a written description, is required.
• The drawing must display the manner in which the mark is used in connection with the services. As with any application, only one mark can be registered in a single application. TMEP §807.01. The mark depicted on the drawing must, as used on the specimen, make a
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separate and distinct commercial impression to be considered one mark. See In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988). See TMEP §1202.05(c) regarding color as a separable element.
• If color is used in a variety of ways, but in a setting that makes a single commercial impression, such as a retail outlet with various color features, a broken-line drawing of the setting must be submitted, with a detailed description of the color(s).
• If an applicant seeks to register a single color as a service mark used on a variety of items not viewed simultaneously by purchasers, e.g., stationery, uniforms, pens, signs, shuttle buses, the store awning, and the walls of the store, the drawing must display a solid-colored square with a dotted peripheral outline and include a detailed description of the mark. Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124. Applicant will receive a filing date for its application. However, as yet, the issues raised by the use of this type of drawing, e.g., sufficient notice and phantom marks, have not yet been decided by the USPTO. Cf. In re International Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999). See TMEP §1202.05(c).
• The commercial impression of a color may change depending on the object on which it is applied. See Thrifty, 61 USPQ2d at 1124.
1202.05(d)(iii) Amendment of Drawings of Color Marks
Because color marks are comprised solely of the color as applied to the object or substance, in the manner depicted and described, amending the color of the mark would always change the commercial impression of the mark. Thus, the amendment of any color in a color mark is a prohibited material alteration. Similarly, the amendment of the color mark to show the same color on a different object is also generally a material alteration, e.g., an amendment of a drawing of a blue hammer to a blue saw would be a material alteration.
1202.05(d)(iv) Drawings for Marks Including Both Color and Words or Design
Sometimes, a product or advertisement for a service will include both color and words or a design. For example, the surface of a toaster might be green, with the trademark “ABC” and design displayed on the toaster. In this situation, the applicant must decide whether to seek registration for the color green used on toasters, the letters “ABC” with or without the design, the design, or some combination of those elements. If applicant only seeks
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registration for the use of the color, no word or design elements should appear on the drawing.
1202.05(e) Written Explanation of a Color Mark
The drawing of a color mark must be supplemented with: (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the “Description of the Mark” field naming the color(s) and describing where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
The description of the mark must be clear and specific, use ordinary language, and identify 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. If the applicant is claiming a shade of color, the shade must be described in ordinary language, for example, “maroon,” “turquoise,” “navy blue,” “reddish orange.” This is required even if the applicant also describes the color using a commercial coloring system.
The applicant may not amend the description of the mark if the amendment is a material alteration of the mark on the drawing filed with the original application. 37 C.F.R. §2.72. See In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); cf. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). See TMEP §§807.14 et seq. regarding material alteration.
The description of a color mark must be limited to a single mark, because only one mark can be registered in a single application. See In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443 (TTAB 2002). See TMEP §1202.05(c) regarding color as a separable element. Cf. TMEP §807.01 (drawing must be limited to a single mark).
1202.05(f) Specimens for Color Marks
An application under §1 of the Trademark Act must be supported by a specimen that shows use of the mark depicted in the drawing. Therefore, an applicant who applies to register a color mark must submit a specimen showing use of color, either with a §1(a) application or with an allegation of use in a §1(b) application. If a black-and-white specimen is submitted, the examining attorney will require a substitute specimen. See TMEP §904.02(c)(ii).
See TMEP §§904.03 et seq. regarding trademark specimens and TMEP §§1301.04 et seq. regarding service mark specimens.
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1202.05(g) Special Considerations for Service Mark Applications
Although the applicant in In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) argued that it applied for the color blue per se as a service mark, the Court determined that the drawing controlled, such that the application was for the color blue applied to a building. Although the Court did not reach the issue of color per se as a service mark, the Court acknowledged the special evidentiary problem associated with showing acquired distinctiveness in this context. Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124 (“. . . [E]vidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects (e.g., blue vehicle rental centers), but not for other objects (e.g., blue rental cars)”). Accordingly, any claim to color per se must be specific as to use and include evidence of acquired distinctiveness for each claimed use.
1202.05(h) Applications for Color Marks Based on §1(b)
A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995)); TMEP §1202.05(a). Therefore, the examining attorney must refuse to register a color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
The issue of whether the proposed mark is functional requires consideration of the manner in which the mark is used. Generally, no refusal on these grounds will be issued in a §1(b) application until the applicant has submitted specimen(s) of use with an amendment to allege use or statement of use. See TMEP §§1102.01, 1202.02(d), and 1202.03(e). The specimen(s) provide a better record upon which to determine the registrability of the mark. In appropriate cases, the examining attorney will bring the potential refusal to the applicant’s attention in the initial Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.
1202.05(i) Applications for Color Marks Based on §44 or §66(a)
A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163,
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34 USPQ2d 1161, 1162-1163 (1995)); TMEP §1202.05(a). Therefore, the examining attorney must refuse to register a proposed color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
If the record indicates that the proposed mark is functional, the examining attorney should issue a refusal of registration on the Principal Register under §2(f), or on the Supplemental Register. See TMEP §1202.05(b). NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
1202.06 Goods in Trade
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines a “trademark” as a “word, name, symbol, or device, or any combination thereof” that is used or intended to be used in commerce “to identify and distinguish his or her goods (emphasis added).” Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be “goods in trade.” Incidental items that an applicant uses in conducting its business (such as letterhead, invoices, and business forms), as opposed to items sold or transported in commerce for use by others, are not “goods in trade.” See In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (reports not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); In re MGA Entertainment, Inc., 84 USPQ2d 1743 (TTAB 2007) (applicant’s trapezoidal cardboard boxes for toys, games, and playthings held to be merely point of sale containers for applicant’s primary goods and not separate goods in trade, where there was no evidence that applicant is a manufacturer of boxes or that applicant is engaged in selling boxes as commodities in trade); In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972) (reports and printouts not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service); Ex parte Bank of America Nat’l Trust and Savings Ass’n, 118 USPQ 165 (Comm’r Pats. 1958) (mark not registrable for passbooks, checks, and other printed forms, where forms are used only as necessary tools in the performance of banking services, and the applicant is not engaged in printing or selling forms as commodities in trade).
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1202.06(a) Goods Must Have Utility to Others
Affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on “goods.” While a formal sale is not always necessary, items sold or transported in commerce are not “goods in trade” unless they have utility to others as the type of product named in the application.
Example: Holiday greeting cards sent by a law firm to its clients are not “goods,” where applicant is merely sending its own cards through the mail as a holiday greeting, and the cards are not suitable for use by the recipients as a greeting card.
See Gay Toys, Inc. v. McDonald’s Corp., 585 F.2d 1067, 199 USPQ 722 (C.C.P.A. 1978) (plaster mockup of toy truck not goods in trade, where there is no evidence the mockup is actually used as a toy); Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (mark not registrable for games, where purported games are advertising flyers used to promote applicant’s services and have no real utilitarian function or purpose as games); In re Douglas Aircraft Co., Inc., 123 USPQ 271 (TTAB 1959) (books, pamphlets, and brochures that serve only to explain and advertise the goods in which applicant deals are not “goods”). Cf. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (ball point pens used to promote applicant’s tools are goods in trade, where they have a utilitarian function and purpose, and have been sold to applicant’s franchised dealers and transported in commerce under mark); In re United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB 1967) (calendar used to promote applicant’s plastic film constitutes goods in trade, where calendar has a utilitarian function and purpose in and of itself, and has been regularly distributed in commerce for several years).
In In re MGA Entertainment, Inc., 84 USPQ2d 1743, 1746 (TTAB 2007) (applicant’s trapezoidal cardboard boxes for toys, games, and playthings found to be merely point of sale containers for applicant’s primary goods and not separate goods in trade), the Board rejected applicant’s argument that boxes for puzzles and laptop play units have use beyond holding the goods at point of sale, in that the box functions as an ongoing carrying case for applicant’s laptop play unit, and the puzzle box may be used to store puzzle pieces when not in use, finding that “the mere fact that original boxes or packaging may be used to store products does not infuse such boxes or packaging with additional utility such that they constitute goods in trade;” and that there is no indication that the laptop computer boxes are labeled as a carrying case nor any evidence that applicant promotes the boxes as carrying cases or that children actually use them as carrying cases.
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1202.06(b) Registration Must Be Refused if Trademark Not Used on Goods in Trade
If the specimen, identification of goods, or other evidence in the record indicate that the applicant uses the mark only on items incidental to conducting its own business, as opposed to items intended to be used by others, the examining attorney should refuse registration on the Principal Register under §§1, 2, and 45 of the Trademark Act; 15 U.S.C. §§1051, 1052, and 1127, on the ground that the mark is not used on “goods in trade.”
If a mark is not used on “goods in trade,” it is not registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), or on the Supplemental Register.
If some but not all of the items listed in the identification of goods are found not to be “goods in trade,” it is not necessary to refuse registration of the entire application, but the examining attorney should require that these items be deleted from the identification of goods.
1202.06(c) “Goods in Trade” in §1(b), §44, and §66(a) Applications
In an intent-to-use application under §1(b) of the Trademark Act, the question of whether a mark is used on goods in trade usually does not arise until the applicant files an allegation of use under §1(c) or §1(d) of the Act, because this issue is based on the manner in which the mark is used. However, if the identification of goods in an intent-to-use application includes items that do not appear to be goods in trade, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the record indicates that the mark will not be used on goods in trade, without the need to await consideration of the specimen, the examining attorney may issue the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue a refusal based on the lack of use on goods in trade where the record clearly indicates that the mark will not be used on goods in trade. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen- based, in a §66(a) application).
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1202.07 Marks That Identify Columns or Sections of Publications
1202.07(a) Marks That Identify Columns or Sections of Printed Publications
A column, section, or supplement of a printed publication is normally not considered to be separate “goods” or “goods in trade,” unless it is sold, syndicated, or offered for syndication separate and apart from the larger publication in which it appears. In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962); Ex parte Meredith Publishing Co., 109 USPQ 426 (Comm’r Pats. 1956). This is true even of a removable or separable “pullout” section of a newspaper or other publication. In Meredith, the issue was analyzed as follows:
The basic question is whether or not, under the circumstances of use, the section title is a name adopted and used by the publisher to identify his goods and distinguish them from those of others. The “goods” actually are magazines-not sections of magazines. When the magazine is purchased, the purchaser receives the sections whether he wants them or not, and it is doubtful that magazine readers ordinarily purchase a magazine merely to receive a section of it, or think of a magazine merely in terms of a section title. Sections of magazines are not in and of themselves articles of commerce other than as a part of an integrated whole; and we must therefore be concerned with whether a section title actually identifies and distinguishes, and if so, what it distinguishes. Under these circumstances it becomes necessary to ask: Was the mark adopted to identify a section of applicant’s magazine and distinguish it from sections of other publishers’ magazines, or was it adopted to distinguish one section of applicant’s magazine from the other sections of its magazine? Ordinarily, it is the latter (emphasis in original).
109 USPQ at 426.
The examining attorney may accept the statement of the applicant or applicant’s attorney that the column is syndicated. It is not necessary to set this forth in the identification of goods.
1202.07(a)(i) Syndicated Columns and Sections
Columns or sections that are separately sold, syndicated, or offered for syndication do constitute goods in trade. A mark that identifies a column or section that is separately syndicated or offered for syndication is registrable on the Principal Register without resort to §2(f) of the Trademark Act, 15 U.S.C. §1052(f), if registration is not barred by other sections of the Act.
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1202.07(a)(ii) Non-Syndicated Columns and Sections
A column or section of a printed publication that is not separately sold, syndicated, or offered for syndication is not, in and of itself, considered to be separate goods in trade. Therefore, where the specimen, identification of goods, or other evidence in the record indicates that the mark identifies a column or section of a printed publication that is not separately sold, syndicated, or offered for syndication, the examining attorney should refuse registration on the Principal Register under §§1, 2, and 45 of the Trademark Act; 15 U.S.C. §§1051, 1052, and 1127, on the ground that the mark is not used on separate goods in trade.
Marks that identify non-syndicated columns or sections of printed publications are registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), if the column or section is shown to have acquired separate recognition and distinctiveness. An applicant who seeks registration on the Principal Register bears the burden of establishing, through evidence of promotion, long use, advertising expenditures, and breadth of distribution or sales figures, that the public has come to recognize the proposed mark as an indicator of source.
The evidence of acquired distinctiveness must show that the column or section title is used and promoted to distinguish applicant’s column or section from the columns or sections of other publishers’ publications, rather than merely to distinguish applicant’s column or section from other columns or sections of applicant’s publication. Metro Publishing v. San Jose Mercury News, 987 F.2d 637, 25 USPQ2d 2049 (9th Cir. 1993); In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962).
The amount of evidence needed to establish distinctiveness must be evaluated by the examining attorney on a case-by-case basis, in light of the type of column or supplement. If the mark identifies a removable or pull-out section, a lesser degree of evidence might be required to establish distinctiveness. Of course, the amount of evidence needed to establish distinctiveness in any particular case will also vary depending on the strength or weakness of the mark. TMEP §1212.04(a).
Marks that identify non-syndicated columns or sections of printed publications, but have not yet acquired distinctiveness under §2(f) of the Act, are registrable on the Supplemental Register in applications under §1 or §44 of the Trademark Act, if registration is not barred by other sections of the Act. Ex parte Meredith Publishing Co., 109 USPQ 426 (Comm’r Pats. 1956).
1202.07(a)(iii) Marks That Identify Columns and Sections of Printed Publications in §1(b), §44, and §66(a) Applications
Since a refusal to register a mark that identifies a column or section of a printed publication is based on whether the column or section is separately
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sold or syndicated, the issue ordinarily does not arise in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has filed an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c) or (d). However, if the identification of goods suggests that the mark is intended to be used to identify a column or section of a printed publication that is not separately sold or syndicated, the potential refusal on the ground that the proposed mark is not used on separate goods in trade should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant prior to the filing of the allegation of use, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark will identify a column or section of a printed publication that is not separately sold or syndicated, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to refuse registration because the mark is not used on goods in trade where the record indicates that the mark will identify a column or section of a printed publication that is not separately sold or syndicated. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).
1202.07(b) Marks That Identify Columns and Sections of Online Publications
An online publication is considered a service rather than a product. Therefore, refusal of registration on the ground that the proposed mark is not used on goods in trade is inappropriate. Unlike a printed column or section, an online column or section can be accessed directly and can exist independent of any single publication. See Ludden v. Metro Weekly, 8 F. Supp. 2d 7, 14, 47 USPQ2d 1087, 1093 (D.D.C. 1998). Therefore, a mark that identifies an online column is registrable on the Principal Register without resort to §2(f) of the Trademark Act, 15 U.S.C. §1052(f), if registration is not barred by other sections of the Act.
1202.08 Title of a Single Creative Work
The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-
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16, 117 USPQ 396, 400 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (title of a live theater production held unregistrable); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (title of single phonograph record, as distinguished from a series, does not function as mark).
See TMEP §1301.02(d) regarding the titles of radio and television programs.
1202.08(a) What Constitutes a Single Creative Work
Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. Materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs, and films are usually single creative works. Creative works that are serialized, i.e., the mark identifies the entire work but the work is issued in sections or chapters, are still considered single creative works. A theatrical performance is also a single creative work, because the content of the play, musical, opera, or similar production does not significantly change from one performance to another. In re Posthuma, 45 USPQ2d 2011 (TTAB 1998). A cornerstone was considered a single creative work in an application for registration of FREEDOM STONE for “building stones used as landmarks or cornerstones,” where the record showed that the proposed mark would identify only one building stone used as a landmark or cornerstone, to serve as the cornerstone for the Freedom Tower that is to be erected at the World Trade Center site in New York City. In re Innovative Companies, LLC., 88 USPQ2d 1095 (TTAB 2008).
1202.08(b) What Does Not Constitute a Single Creative Work
Single creative works do not include periodically issued publications, such as magazines, newsletters, brochures, comic books, comic strips, or printed classroom materials, because the content of these works change with each issue. If the creative work is labeled “volume 1” or “part 1,” it is presumed to be periodical in nature and not a single creative work.
A book with a second edition, in which there are significant changes in the content, is not regarded as a single creative work. However, a second edition that makes only minor changes is not considered to be a new work.
Computer software and computer games are not treated as single creative works. Live performances by musical bands, television and radio series, and educational seminars are presumed to change with each presentation and, therefore, are not single creative works.
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1202.08(c) Complete Title of the Work – Evidence of a Series
The name of a series of books or other creative works may be registrable if it serves to identify and distinguish the source of the goods. An applicant must submit evidence that the title is used on at least two different creative works. A series is not established when only the format of the work is changed, i.e., the same title used on a printed version of a book and a recorded version does not establish a series. Likewise, use of the title on unabridged and abridged versions of the same work, or on collateral goods such as posters, mugs, bags, or t-shirts does not establish a series.
For example, if an application for the mark HOW TO RETIRE EARLY for “books” is refused because the specimen shows the mark used on a single creative work, the applicant may submit copies of other book covers showing use of the mark HOW TO RETIRE EARLY and any additional evidence to establish that the book is published each year with different content. It is not necessary, however, to show that the mark was used on the series prior to filing the application or the allegation of use. Evidence that the applicant intends to use the mark on a series is insufficient.
1202.08(d) Portion of a Title of the Work
A portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria:
(1) It creates a separate commercial impression apart from the complete title;
(2) It is used on series of works; and
(3) It is promoted or recognized as a mark for the series.
1202.08(d)(i) Mark Must Create a Separate Commercial Impression
When registration is sought for a portion of a title, the mark must be used as a separable element on the specimen. The examining attorney should consider the size, type font, color, and any separation between the mark and the rest of the title when making this determination. In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992) (the words THE MAGIC SCHOOL BUS are prominently displayed on the books' covers, and are in a larger, bolder style of type and different color from the remainder of each title. Moreover, the words appear on a separate line above the remainder of each title). If the portion of the title sought to be registered is not separable, the examining attorney should refuse registration on the ground that the mark is not a substantially exact representation of the mark as it appears on the specimen. See TMEP §807.12(d).
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1202.08(d)(ii) Establishing a Series When the Mark is a Portion of the Title
An applicant may establish that the portion of the title of a creative work is used on a series by submitting more than one book cover or CD cover with the mark used in all the titles. For example, if the mark on the drawing is “THE LITTLE ENGINE” and on the book it appears as “THE LITTLE ENGINE THAT WENT TO THE FAIR,” registration should be refused because the mark is a portion of a title of a single work. To establish use on a series, the applicant may submit additional book covers showing use of, e.g., “THE LITTLE ENGINE GOES TO SCHOOL,” and “THE LITTLE ENGINE AND THE BIG RED CABOOSE.”
1202.08(d)(iii) Evidence that the Portion of the Title is Promoted or Recognized as a Mark
When a mark is used merely as a portion of the title of a creative work, the applicant has a heavier burden in establishing that the portion for which registration is sought serves as a trademark for the goods. The mere use of the same words in more than one book title is insufficient to establish the words as a mark for a series. The applicant must show that the public perceives the portion sought to be registered as a mark for the series. In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992) (THE MAGIC SCHOOL BUS used as a portion of the book titles in “THE MAGIC SCHOOL BUS AT THE WATERWORKS” and “THE MAGIC SCHOOL BUS INSIDE THE EARTH,” held to function as a mark for a series, because the record contained evidence of repeated use of the designation displayed prominently on book covers, as well as evidence that applicant promoted THE MAGIC SCHOOL BUS as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).
1202.08(e) Identification of Goods/Services
Identification Need Not Reflect Use on a Series. The identification of goods/services need not reflect that the applicant is using the title on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.
Creative Works in a List of Goods or Services. A refusal of registration on the ground that the mark merely identifies the title of a single creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information, or if the examining attorney learns from another source, that the mark identifies the title of a single creative work, the examining attorney must issue a partial refusal as to the relevant goods/services. A
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partial refusal is a refusal that applies only to certain goods/services, or to certain classes. See TMEP §718.02(a).
Example: An application for “newspapers, books in the field of finance, pencils, and coloring books” would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified the title of the “books in the field of finance.” The use of the same mark on other non- creative matter such as the pencils and coloring books does not overcome the refusal.
1202.08(f) Title of a Single Work in §1(b), §44, and §66(a) Applications
The issue of whether a proposed mark is the title of a single creative work usually is tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen with an allegation of use under §1(c) or §1(d) of the Act, 15 U.S.C. §1051(c) or (d).
However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark is the title of a single creative work, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark constitutes the title of a single work, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify the title of a single work. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).
1202.09 Names of Artists and Authors
1202.09(a) Names and Pseudonyms of Authors and Performing Artists
Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist. In
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re Polar Music Int’l AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); In re First Draft, Inc. 76 USPQ2d 1183 (TTAB 2005); In re Peter Spirer, 225 USPQ 693 (TTAB 1985). Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.
However, the name of the author or performer may be registered if:
(1) It is used on a series of written or recorded works; and
(2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist.
If the applicant cannot show a series, or can show that there is a series but cannot show that the name identifies the source of the series, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act. These types of marks may not be registered on the Principal Register under §2(f).
See also TMEP §1301.02(b) regarding personal names as service marks.
1202.09(a)(i) Author or Performer’s Name – Evidence of a Series
In an application seeking registration of an author’s or performer’s name, the applicant must provide evidence that the mark appears on at least two different works. Such evidence could include copies of multiple book covers or multiple CD covers that show the name sought to be registered. A showing of the same work available in different media, i.e., the same work in both printed and/or recorded or downloadable format, does not establish a series.
The identification of goods need not reflect that the applicant is using the name on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.
1202.09(a)(ii) Evidence that the Name is a Source Identifier
The use of the author’s or performer’s name on a series of works does not, in itself, establish that the name functions as a mark. The record must also show that the name serves as more than a designation of the writer or performer, i.e., that it also serves to identify the source of the series. See In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005) (pseudonym FERN MICHAELS identified only the author and did not function as a mark to identify and distinguish a series of fictional books because the “evidence of promotion was scant,” despite applicant’s showing that the name had been used as an author's name for 30 years; that 67 separate books had been published under the name, and approximately 6 million copies had been sold;
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that the book jackets listed the titles of other works by Fern Michaels and promoted her as a bestselling author; that the author had been inducted into the New Jersey Literary Hall of Fame; and that there was a www.fernmichaels.com website); In re Chicago Reader Inc., 12 USPQ2d 1079 (TTAB 1989) (CECIL ADAMS, used on the specimen as a byline and as part of the author’s address appearing at the end of a column, merely identifies the author and does not function as a trademark for a newspaper column).
A showing that the name functions as a source identifier may be made by submitting evidence of either: (1) promotion and recognition of the name as a source indicator for the series (see TMEP §1202.09(a)(ii)(A)); or (2) the author’s or performer’s control over the name and quality of his or her works in the series (see TMEP §1202.09(a)(ii)(B)).
1202.09(a)(ii)(A) Promotion and Recognition of the Name
To show that the name of an author or performing artist has been promoted and is recognized as indicating the source of a series of written works, the applicant could submit copies of advertising that promotes the name as the source of a series, copies of third-party reviews showing others’ use of the name to refer to a series of works, or evidence showing the name used on a display associated with the series of works. See In re First Draft, 76 USPQ2d 1183 (TTAB 2005), citing In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992) (THE MAGIC SCHOOL BUS held to function as a mark for a series of books, where the record contained evidence of use of the designation displayed prominently on many different book covers, as well as evidence that applicant promoted the term as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).
1202.09(a)(ii)(B) Control over the Nature and Quality of the Goods
Alternatively, an applicant may show that the name of an author or performing artist functions as a source indicator by submitting documentary evidence that the author/performer controls the quality of his or her distributed works and controls the use of his or her name. Such evidence would include license agreements and other documentary or contractual evidence. In In re Polar Music Int’l AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983) (the name of the musical group ABBA held to function as a mark for sound recordings where a license agreement showed that the owner of the mark, ABBA, controlled the quality of the goods, and other contractual evidence showed that the owner also controlled the use of the name of the group).
In In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005), the Board found that the applicant failed to meet the Polar Music test, noting that:
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[W]e have neither any evidence bearing on [the question of applicant’s control over the quality of the goods] nor even any representations by counsel regarding such matters. This is in stark contrast to Polar Music, wherein there was detailed information and documentary (i.e., contractual) evidence regarding the relationship between the performing group ABBA and its “corporate entity,” as well as evidence of the control such corporation maintained in dealings with a manufacturer and seller of its recordings in the United States.
If the applicant maintains control over the quality of the goods because the goods are published or recorded directly under the applicant’s control, the applicant may submit a verified statement that “the applicant publishes or produces the goods and controls their quality.”
1202.09(a)(iii) Names of Authors and Performing Artists in §1(b), §44, and §66(a) Applications
The issue of whether a proposed mark identifies only an author or performing artist is usually tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d).
In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only an author or performing artist, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only an author or performing artist, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record, even without a specimen, reflects that the proposed mark identifies only an author or performing artist. Cf. In re Right- On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen- based, in a §66(a) application).
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1202.09(b) Names of Artists Used on Original Works of Art
An artist’s name or pseudonym affixed to an original work of art may be registered on the Principal Register without a showing that the name identifies a series. Original works of art includes paintings, murals, sculptures, statues, jewelry, and like works that the artist personally creates. In In re Wood, 217 USPQ 1345, 1350 (TTAB 1983), the Board held that the pseudonym YSABELLA affixed to an original work of art functioned as a mark. The Board has expressly limited this holding to cases involving original works of art, stating in Wood that “[l]est we be accused of painting with too broad a brush, we hold only that an artist’s name affixed to an original work of art may be registered as a mark and that here applicant’s name, as evidenced by some of the specimens of record [the signature of the artist on a work of art], functions as a trademark for the goods set forth in the application.” In In re First Draft, 76 USPQ2d 1183, 1190 (TTAB 2005), the Board again stated that “Wood is limited in its application to cases involving original works of art and there is nothing to indicate that the panel deciding that case considered novels to be encompassed by the phrase original works of art.”
1202.10 Names and Designs of Characters in Creative Works
Marks that merely identify a character in a creative work, whether used in a series or in a single work, are not registrable. In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) (THE LITTLES, used in the title of each book in a series of children's books, does not function as a mark where it merely identifies the main characters in the books). Cf. In re Caserta, 46 USPQ2d 1088 (TTAB 1998) (FURR-BALL FURCANIA, used as the principal character in a single children's book, held not to function as a mark even though the character's name appeared on the cover and every page of the story); In re Frederick Warne & Co. Inc., 218 USPQ 345 (TTAB 1983) (an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark).
To overcome a refusal of registration on the ground that the proposed mark merely identifies a character in a creative work, the applicant may submit evidence that the character name does not merely identify the character in the work. For example, the applicant may submit evidence showing use of the character name as a mark on the spine of the book, or on displays associated with the goods, in a manner that would be perceived as a mark.
A refusal of registration on the ground that the mark merely identifies a character in a creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information or if the examining attorney learns from another source that the mark identifies a character in a creative work, the examining attorney should issue a partial refusal as to the relevant
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goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes. See TMEP §718.02(a).
Example: An application for “children’s books, pencils, and coloring books” would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified a character in the books. The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal.
1202.10(a) Names and Designs of Characters in Creative Works in §1(b), §44, or §66(a) Applications
The issue of whether a proposed mark identifies only the name or design of a particular character is tied to use of the mark, as evidenced by the specimen. Therefore, unless the record, even without a specimen, reflects that the proposed mark identifies only the name or design of a character, generally no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only a particular character, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only the name or design of a character, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify only the name or design of a particular character. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).
See TMEP §1301.02(b) regarding names of characters or personal names as service marks.
1202.11 Background Designs and Shapes
Common geometric shapes, when used separately as vehicles for the display of word marks, are not regarded as indicators of origin absent evidence of distinctiveness of the design alone. As stated in In re Chemical Dynamics,
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Inc., 839 F.2d 1569, 1570-1571, 5 USPQ2d 1828, 1829 (Fed. Cir. 1988), “[a] background design which is always used in connection with word marks must create a commercial impression on buyers separate and apart from the word marks for the design to be protectible as a separate mark. In deciding whether the design background of a word mark may be separately registered, the essential question is whether or not the background material is or is not inherently distinctive…. If the background portion is inherently distinctive, no proof of secondary meaning need be introduced; if not, such proof is essential (citations omitted).”
Additionally, the Supreme Court stated in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) that color can never be inherently distinctive.
An applicant may respond to a refusal to register an application for a common geometric shape or background design by submitting evidence that the subject matter has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). The examining attorney should scrutinize any submission that asserts distinctiveness solely on the basis of a statement of substantially exclusive and continuous use for five years to determine whether it truly establishes that the subject matter is perceived as a trademark by the purchasing public. The examining attorney may continue to refuse registration if he or she believes that the applicant’s assertion does not establish that the matter is perceived as a trademark. The applicant may submit additional evidence to establish distinctiveness. See TMEP §§1212 et seq.
In the following cases, the evidence of distinctiveness was insufficient: In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998) (green rectangular background design not inherently distinctive; evidence of acquired distinctiveness found insufficient); In re Anton/Bauer Inc., 7 USPQ2d 1380 (TTAB 1988) (parallelogram designs used as background for word marks found not inherently distinctive; evidence of record held insufficient to establish acquired distinctiveness pursuant to §2(f)); In re Kerr-McGee Corp., 190 USPQ 204 (TTAB 1976) (affirming refusals to register escutcheon design used as a frame or border for words, under §2(f)).
In the following cases, the evidence of distinctiveness was sufficient: In re Schenectady Varnish Co., Inc., 280 F.2d 169, 126 USPQ 395 (C.C.P.A. 1960) (where use of applicant’s design of a cloud and a lightning flash was always used as a background for the word “SCHENECTADY,” evidence of record found sufficient to show acquired distinctiveness of the design alone as a trademark for synthetic resins); In re Raytheon Co., 202 USPQ 317 (TTAB 1979) (light-colored oval within black rectangular carrier considered not inherently distinctive; evidence of record found sufficient to establish acquired distinctiveness).
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1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants)
Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or seed by which such variety is known to the public. These names can consist of a numeric or alphanumeric code or can be a “fancy” (arbitrary) name. The terms “varietal” and “cultivar” may have slight semantic differences but pose indistinguishable issues and are treated identically for trademark purposes.
Subspecies are types of a particular species of plant or seed that are members of a particular genus. For example, all maple trees are in the genus Acer. The sugar maple species is known as Acer saccharum, while the red maple species is called Acer rubrum. In turn, these species have been subdivided into various cultivated varieties that are developed commercially and given varietal or cultivar names that are known to the public.
A varietal or cultivar name is used in a plant patent to identify the variety. Thus, even if the name was originally arbitrary, it “describe[s] to the public a [plant] of a particular sort, not a [plant] from a particular [source].” Dixie Rose, 131 F.2d at 447, 55 USPQ at 316. It is against public policy for any one supplier to retain exclusivity in a patented variety of plant, or the name of a variety, once its patent expires. Id.
Market realities and lack of laws concerning the registration of varietal and cultivar names have created a number of problems in this area. Some varietal names are not attractive or easy to remember by the public. As a result, many arbitrary terms are used as varietal names. Problems arise when trademark registration is sought for varietal names, when arbitrary varietal names are thought of as being trademarks by the public, and when terms intended as trademarks by plant breeders become generic through public use. These problems make this a difficult area for the examining attorney in terms of gathering credible evidence and knowing when to make refusals.
Whenever an application is filed to register a mark containing wording for live plants, agricultural seeds, fresh fruits, or fresh vegetables, the examining attorney must inquire of the applicant whether the term has ever been used as a varietal name, and whether such name has been used in connection with a plant patent, a utility patent, or a certificate for plant variety protection. See 37 C.F.R. §2.61(b). The examining attorney should also undertake an independent investigation of any evidence that would support a refusal to register, using sources of evidence that are appropriate for the particular goods specified in the application (e.g., laboratories and repositories of the United States Department of Agriculture, plant patent information from the USPTO, a variety name search of plants certified under the Plant Variety Protection Act listed at www.ars-grin.gov/npgs/searchgrin.html).
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If the examining attorney determines that wording sought to be registered as a mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables comprises a varietal or cultivar name, then the examining attorney must refuse registration, or require a disclaimer, on the ground that the matter is the varietal name of the goods and does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. See In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758 (Fed. Cir. 2006) (upholding the USPTO’s long-standing precedent and policy of treating varietal names as generic, and affirming refusal to register REBEL for grass seed because it is the varietal name for the grass seed as evidenced by its designation as the varietal name in applicant’s plant variety protection certificate); Dixie Rose Nursery v. Coe, 131 F.2d 446, 55 USPQ 315 (D.C. Cir. 1942), cert. denied 318 U.S. 782, 57 USPQ 568 (1943); In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034 (TTAB 1979); In re Farmer Seed & Nursery Co., 137 USPQ 231 (TTAB 1963); In re Cohn Bodger & Sons Co., 122 USPQ 345 (TTAB 1959).
Likewise, if the mark identifies the prominent portion of a varietal name, it must be refused. In re Delta and Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) (Board affirmed refusal to register DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506).
1202.13 Scent, Fragrance, or Flavor
Scent. The scent of a product may be registrable if it is used in a nonfunctional manner. See In re Clarke, 17 USPQ2d 1238 (TTAB 1990) (Trademark Trial and Appeal Board held that a scent functioned as a mark for “sewing thread and embroidery yarn).” Scents that serve a utilitarian purpose, such as the scent of perfume or an air freshener, would be functional and not registrable. See TMEP §§1202.02(a) et seq. regarding functionality. When a scent is not functional, it may be registered on the Principal Register under §2(f), or on the Supplemental Register if appropriate. The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial. Cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).
Flavor. Just as with a scent or fragrance, a flavor can never be inherently distinctive. In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (affirming refusal to register “an orange flavor” for “pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills,” on the grounds that the proposed mark was functional under §2(e)(5) and failed to function as a mark within the meaning of §§1, 2, and 45 of the Trademark Act.). The Board has observed that it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function and consumers generally have no access to a product’s flavor or taste prior to
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purchase. Id. Thus, an application to register a flavor “requires a substantial showing of acquired distinctiveness.” Id.
Detailed Description of the Mark Required. The requirement for a drawing does not apply to non-visual marks. For these types of marks, the applicant must submit a detailed written description of the mark that clearly explains the sound, scent, or other non-visual matter. 37 C.F.R. §2.52(e). In a TEAS application, the required description of the mark should be set forth in the “Description of the Mark” field. See TMEP §807.09 regarding validating and submitting electronic applications for non-visual marks.
1202.14 Holograms
A hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as a trademark. See In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001), where the Board held that a hologram used on trading cards in varying shapes, sizes, and positions did not function as a mark, because the record showed that other companies used holograms on trading cards and other products as anti-counterfeiting devices, and there was no evidence that the public would perceive applicant’s hologram as an indicator of source. The Board noted that “the common use of holograms for non-trademark purposes means that consumers would be less likely to perceive applicant’s uses of holograms as trademarks.” 59 USPQ2d at 1693.
Therefore, in the absence of evidence of consumer recognition as a mark, the examining attorney should refuse registration on the ground that the hologram does not function as a mark, under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
Generally, if a hologram has two or more views, the examining attorney should also refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark. In re Upper Deck, supra. See TMEP §807.01.
1202.15 Sound Marks
A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound” with a good or service. In re General Electric Broadcasting Co., Inc., 199 USPQ 560, 563 (TTAB 1978). Thus, sounds may be registered on the Principal Register when they are “arbitrary, unique, or distinctive and can be used in a manner so as to attach to the mind of the listener and be awakened on later hearing in a way that would indicate for the listener that a particular product or service was coming from a
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particular, even if anonymous, source.” In re Vertex Group LLC, 89 USPQ2d 1694, 1700 (TTAB 2009). Examples of sound marks include: (1) a series of tones or musical notes, with or without words; and (2) wording accompanied by music.
There is, however, a difference between unique, different, or distinctive sounds and those that resemble or imitate “commonplace” sounds or those to which listeners have been exposed under different circumstances, which must be shown to have acquired distinctiveness. In re General Electric Broadcasting Co., Inc., 199 USPQ 560, 563 (TTAB 1978). An example of this type of mark is a sound for goods that make the sound in their normal course of operation (e.g., alarm clocks, appliances that include audible alarms or signals, telephones, and personal security alarms). Therefore, sound marks for goods that make the sound in their normal course of operation can be registered only on a showing of acquired distinctiveness under §2(f). Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009) (cellular telephones that emit a “chirp” sound fall into the category of goods that make the sound in their normal course of operation); Vertex, 89 USPQ2d at 1700, 1702.
Detailed Description of the Mark Required. The requirement for a drawing does not apply to sound marks. Instead, the applicant must submit a detailed description of the mark. 37 C.F.R. §2.52(e). If the sound mark includes words or lyrics, they should be included in the description. See TMEP §807.09.
Audio or Video Reproduction of the Mark. To supplement and clarify the description, the applicant should also submit an audio or video reproduction of any sound mark sought to be registered. 37 C.F.R. §2.61(b). This reproduction should contain only the mark itself; it is not meant to be a specimen.
For paper filings, reproductions of sound marks must be submitted on compact discs (“CDs”), digital video discs (“DVDs”), audiotapes, or videotapes. See TMEP §904.03(d). The applicant should clearly and explicitly indicate that the reproduction of the mark contained on the disc or tape is meant to supplement the mark description and that it should be placed in the paper file jacket and not be discarded.
For TEAS filings, the reproductions must be in an electronic file, in .wav, .mp3, .mpg, or .avi format. However, TEAS does not permit direct attachment of these types of electronic files. Therefore, the electronic reproduction must be sent after the TEAS document is transmitted, as an attachment to an e-mail message directed to TEAS@uspto.gov, with clear instructions that the electronic reproduction should be associated with “the application filed under Serial No. <specify>” as a supplement to the mark description.
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Specimen. The specimen is not the same as the reproduction required to supplement and clarify the description of the mark. See TMEP §807.09. To show that the sound mark actually identifies and distinguishes the goods/services and indicates their source, the specimen should contain a sufficient portion of the audio or video content to show how the mark is used on or in connection with the goods/services.
For paper filings, specimens for sound marks must be submitted on audio CDs, DVDs, audiotapes, or videotapes. 37 C.F.R. §2.56(d)(3). The applicant should clearly and explicitly indicate that the CD, DVD, audiotape, or videotape is a specimen for a sound mark, and that it should be forwarded to the examining attorney and not be discarded.
For TEAS filings, the specimen must be in an electronic file, in .wav, .mp3, .mpg, or .avi format. When filing an application, allegation of use, response to an Office action, or §8 affidavit through TEAS, an audio or video reproduction file cannot be sent as an attachment. Therefore, the USPTO has developed a special procedure for handling these files. The electronic specimen must be sent after the TEAS document is transmitted, as an attachment to an e-mail message directed to TEAS@uspto.gov, with clear instructions that the electronic specimen should be associated with “the application/registration filed under Serial No./Registration No. <specify>.”
For any filing where a specimen is required, the TEAS form only validates if there is an attachment in the “Specimen” field. Therefore, in conjunction with the workaround identified above, the applicant should create a .jpg or .pdf file that states that an electronic specimen will be sent to TEAS@uspto.gov, and attach the .jpg or .pdf file to the TEAS document in the “Specimen” field.
If the mark comprises music or words set to music, the applicant may also be required to submit the musical score sheet music to supplement and clarify the description of the mark. See TMEP §807.09.
Checklist. To expedite examination, when filing a sound mark application, the applicant should submit:
• An indication that the application is for a “NON-VISUAL MARK.” See TMEP §807.09;
• A detailed description of the mark, including any words or lyrics;
• An audio or video reproduction of the mark, to supplement the description. For paper files, include explicit instructions that the reproduction be placed in the paper file and not discarded. See TMEP §807.09;
• In an application under §1, a separate audio or video reproduction, as a specimen, showing how the mark is used on or in connection with the goods/services. In a §1(b) application, the specimen must
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be submitted with the allegation of use. In either case, for paper files, include explicit instructions that the CD, DVD, audiotape, or videotape be placed in the paper file and not discarded. See TMEP §904.03(f); and
• If the mark comprises music or words set to music, the applicant should generally submit the musical score sheet music. See TMEP §807.09.
1202.16 Model or Grade Designations
Subject matter used solely as a model, style, or grade designation within a product line does not function as a trademark. In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) (alphanumeric designations, such as “5-469X,” held unregistrable for universal joint couplings; evidence insufficient to establish distinctiveness and recognition as a mark). Cf. In re Clairol Inc., 457 F.2d 509, 173 USPQ 355 (C.C.P.A. 1972) (SWEDISH CRYSTAL found to be a registrable trademark, not merely a color designation, for a hair coloring preparation, the Court relying on the arbitrariness of the mark, its manner of use and the fact that it was always used in addition to a shade designation); In re Petersen Mfg. Co., Inc., 229 USPQ 466, 468 (TTAB 1986) (letter- number combinations found registrable for locking hand tools, the Board stating, “[T]here is no question that such model designations can, through use and promotion, be perceived as marks indicating origin in addition to functioning as model designations.”).
1203 Refusal on Basis of Immoral or Scandalous Matter; Deceptive Matter; Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.
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The provisions of 15 U.S.C. §1052(a) apply to both the Principal Register and the Supplemental Register.
1203.01 Immoral or Scandalous Matter
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.
Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter. See In re McGinley, 660 F.2d 481, 484 n.6, 211 USPQ 668, 672 n.6 (C.C.P.A. 1981), aff’g 206 USPQ 753 (TTAB 1979) (“Because of our holding, infra, that appellant’s mark is ‘scandalous,’ it is unnecessary to consider whether appellant’s mark is ‘immoral.’ We note the dearth of reported trademark decisions in which the term ‘immoral’ has been directly applied.”)
The prohibition against the registration of marks that consist of or comprise immoral or scandalous matter was originally enacted as §5(a) of the Trademark Act of 1905, and was reenacted as part of §2(a) of the Act of 1946. There is little legislative history concerning the intent of Congress with regard to the provision; therefore, the term “scandalous” is interpreted by looking to “its ordinary and common meaning.” In re Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (C.C.P.A. 1938). This may be established by referring to court decisions, decisions of the Trademark Trial and Appeal Board and dictionary definitions. McGinley, 660 F.2d at 485, 211 USPQ at 673.
In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous). The statutory language “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.” In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).
The meaning imparted by a mark must be determined in the context of the current attitudes of the day. See In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) (evidence found insufficient to establish that BLACK TAIL used on adult entertainment magazines comprises scandalous matter; court noted that there were both vulgar and non-vulgar definitions of “tail,” and that the record was devoid of evidence demonstrating which of these definitions a substantial composite of the general public would choose in the context of the relevant marketplace); In re Old Glory Condom
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Corp., 26 USPQ2d 1216 (TTAB 1993) (OLD GLORY CONDOM CORP and design comprising the representation of a condom decorated with stars and stripes in a manner to suggest the American flag held not to be scandalous); In re Thomas Laboratories, Inc., 189 USPQ 50, 52 (TTAB 1975) (“[I]t is imperative that fullest consideration be given to the moral values and conduct which contemporary society has deemed to be appropriate and acceptable.”)
The determination of whether a mark is scandalous must be made in the context of the relevant marketplace for the goods or services identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a “substantial composite of the general public.” McGinley, 660 F.2d at 485, 211 USPQ at 673 (“[T]he Lanham Act does not require, under the rubric of ‘scandalous,’ any inquiry into the specific goods or services not shown in the application itself.”); In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (mark for restaurant and bar services consisting of words DICK HEADS positioned directly underneath caricature of a human head composed primarily of graphic and readily recognizable representation of male genitalia held scandalous, as it would be considered offensive by a substantial portion of the public); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988) (graphic design of a dog defecating, as applied to polo shirts and T-shirts, held scandalous, given the broad potential audience that may view applicant’s mark in sales establishments and “virtually all public places”); In re Hepperle, 175 USPQ 512 (TTAB 1972) (while the words might be a reference to marijuana, ACAPULCO GOLD found not scandalous when used as a mark for suntan lotion).
Therefore, to support a refusal on the ground that a proposed mark is immoral or scandalous, the examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace. Mavety Media, 33 F.3d at 1371-1372, 31 USPQ2d at 1925. This evidence could include dictionary definitions, newspaper articles, and magazine articles. The examining attorney should not rely solely on an earlier decision holding a term to be scandalous in support of a refusal. The Trademark Trial and Appeal Board has held that an earlier decision is insufficient to warrant the same finding in a future case. In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) (rejecting examining attorney’s argument that the Board’s 1981 decision in In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981) finding BULLSHIT to be scandalous is sufficient to warrant the same finding in a later case). Rather, the facts underlying the earlier decision must be looked at to determine, first, whether it has any relevance to the present case, and, if so, whether that earlier finding is equally applicable today, for example, by looking at other evidence such as recent dictionary definitions. Red Bull at 1381.
Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at
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least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word. In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) (1-800-JACK-OFF and JACK OFF held scandalous, where all dictionary definitions of “jack-off” were considered vulgar); Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (Board sustained opposition finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term “ROD” as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation); Red Bull, supra (multiple dictionary definitions indicating BULLSHIT is “obscene,” “vulgar,” “usually vulgar,” “vulgar slang,” or “rude slang” constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).
It has been noted that the threshold is lower for what can be described as “scandalous” than for “obscene.” Refusal to register immoral or scandalous matter has been found not to abridge First Amendment rights, because no conduct is proscribed and no tangible form of expression is suppressed. Also, the term “scandalous” has been held sufficiently precise to satisfy due process requirements under the Fifth Amendment. McGinley, 660 F.2d at 484-85, 211 USPQ at 672.
The prohibition in §2(a) of the Act against the registration of scandalous matter pertains only to marks that are scandalous. The authority of the Act does not extend to goods that may be scandalous. See In re Madsen, 180 USPQ 334, 335 (TTAB 1973) (WEEK-END SEX for magazines held not scandalous, the Board observing that whether the magazine contents may be pornographic was not an issue before the Board).
The examining attorney may look to the specimen(s) or other aspects of the record to determine how the mark will be seen in the marketplace. See McGinley, 660 F.2d at 482 n.3, 211 USPQ at 670 n.3 (containing excerpts from appellant’s newsletters pertaining to their subject matter); In re Hershey, 6 USPQ2d 1470, 1472 (TTAB 1988) (BIG PECKER BRAND for T-shirts found not scandalous, the Board considering the labels that were submitted as specimens in determining the question of how the mark might be perceived. “[T]he inclusion of the bird design would make it less likely that purchasers would attribute any vulgar connotation to the word mark and we note that it is proper to look to the specimens of record to determine connotation or meaning of a mark.”)
To ensure consistency in examination with respect to immoral or scandalous matter, when an examining attorney believes, for whatever reason, that a mark may be considered to comprise such matter, the examining attorney must consult with his or her supervisor.
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1203.02 Deceptive Matter
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter. See American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984); In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).
1203.02(a) Types of Deceptive Marks
A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non- deceptive wording and/or design elements; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use (see American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984)); (4) the phonetic equivalent of a deceptive term (see In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997); Tanners' Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979); or (5) the foreign equivalent of any of the above (see, e.g., Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Although there is no published Board or Federal Circuit decision regarding whether a mark consisting solely of a design can be deceptive, if there is evidence to support such a refusal, it should be issued.
Deceptive marks may include marks that falsely describe the material content of a product (see In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982)) and marks that are geographically deceptive (see Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984)). See TMEP §§1210.05 et seq. regarding geographically deceptive marks.
However, marks containing a term identifying a material, ingredient, or feature should not be refused registration under §2(a) if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient. For example, the mark COPY CALF was found not deceptive for wallets and billfolds of synthetic and plastic material made to simulate leather, because it was an obvious play on the expression "copy cat" and suggested to purchasers that the goods were imitations of items made of calf skin. See A. F. Gallun & Sons Corp. v. Aristocrat Leather Products, Inc., 135 USPQ 459 (TTAB 1962). Note, however, the difference with such marks as TEXHYDE and SOFTHIDE, which were held deceptive as applied to synthetic fabric and
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imitation leather material, respectively. See Intex Plastics, supra; Tanners' Council of Am., supra.
In addition, formatives and other grammatical variations of a term may not necessarily be deceptive in relation to the relevant goods. For example, “silky” is defined, inter alia, as “resembling silk.” Thus, a mark containing the term SILKY would not be considered deceptive (but might be unregistrable under §2(e)(1)). Dictionary definitions of such terms should be carefully reviewed to determine the significance the term would have to prospective purchasers. For example, although the term GOLD would be considered deceptive for jewelry not made of gold, the term GOLDEN would not be deceptive.
1203.02(b) Elements of a §2(a) Deceptiveness Refusal
The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:
(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1589 (Fed. Cir. 2009); In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).
1203.02(c) Distinction between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1))
If the first two inquiries set forth by the Federal Circuit in In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods/services and whether prospective purchasers are likely to believe the misdescription) are answered affirmatively, the mark is deceptively misdescriptive of the goods/services under §2(e)(1). See TMEP §1209.04 regarding deceptively misdescriptive marks.
The third inquiry, whether the misdescription is likely to affect the decision to purchase, distinguishes marks that are deceptive under §2(a) from marks that are deceptively misdescriptive under §2(e)(1). To be deceptively misdescriptive under §2(e)(1), the misdescription must concern a feature that would be relevant to the decision to purchase the goods or use the services. If the misdescription is more than simply a relevant factor that may be
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considered in purchasing decisions, but is a material factor, the mark would be deceptive under §2(a) of the Trademark Act, 15 U.S.C. §1052(a). See In re Shniberg, 79 USPQ2d 1309 (TTAB 2006). See TMEP §1209.04 regarding establishing deceptive misdescriptiveness and TMEP §1203.02(d) regarding determining materiality.
If it is difficult to determine whether misdescriptive matter would materially affect a decision to purchase, the examining attorney should refuse registration under both §§2(a) and 2(e)(1). See, e.g., Gold Seal Co. v. Weeks, 129 F. Supp. 928, 105 USPQ 407 (D.D.C. 1955), aff’d sub nom. S. C. Johnson & Son, Inc. v. Gold Seal Co., 230 F.2d 832, 108 USPQ 400 (D.C. Cir. 1956) (per curiam), cert. denied, 352 U.S. 829, 111 USPQ 467 (1956), superseded by statute on other grounds as stated in Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527, 1532 (D.C. Cir. 2008). See also R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964), and Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988), in which third parties filed oppositions based on both statutory sections. See TMEP §1203.02(e) regarding procedures for issuing deceptiveness refusals under §2(a).
Marks that are deceptive under §2(a) are unregistrable on either the Principal Register or the Supplemental Register, whereas marks that are deceptively misdescriptive under §2(e)(1) may be registrable on the Principal Register with a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register, if appropriate.
See TMEP §1210.05(c) regarding the distinction between marks comprising deceptive matter under §2(a) and matter that is primarily geographically deceptively misdescriptive under §2(e)(3).
1203.02(d) Determining Materiality
To establish a prima facie case of deceptiveness, the examining attorney must provide sufficient evidence that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a significant portion of the relevant consumers. To do so, the examining attorney must provide evidence that the misdescriptive quality or characteristic would make the product or service more appealing or desirable to prospective purchasers. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992). A product or service is usually more desirable because of objective standards or criteria that provide an objective inducement to purchase the goods and/or services beyond that of mere personal preference.
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1203.02(d)(i) Objective Criteria
In assessing whether a misdescription would affect the decision to purchase, the following are examples (not a comprehensive list) of the type of objective criteria that should be used to analyze whether a term is a material factor. The evidence may often point to more than one characteristic, thereby strengthening the examining attorney’s prima facie case. For example, the evidence may show that goods deemed “organic” because they are produced in compliance with objective criteria can also be more costly, provide health benefits, and satisfy a social policy of reducing the impact on the environment by utilizing chemical-free growing practices. The evidence also must suffice to indicate that the misdescriptive quality or characteristic would affect the purchasing decision of a significant portion of the relevant consumers. In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009). Generally, evidence of the objective inducement to purchase supports a presumption that a significant portion of the relevant consumers would likely be deceived.
Superior Quality - The evidence must support a finding that goods or services that contain or feature the misdescriptive term are superior in quality to similar goods and/or services that do not. For example, silk can be shown to be a more luxurious and expensive material because of the difficulty in making silk, its unique feel, and its breathability. Similarly, cedar wood can be shown to have superior durability and resistance to decay.
Enhanced Performance or Function - The evidence must support a finding that goods possessing the characteristic or feature at issue are superior to those that do not. For example, certain wood species are naturally resistant to termite attack or may be more durable than others. There might also be evidence of an increasing interest in reducing the potential leaching of chemicals from treated wood into the environment.
Difference in Price - Evidence of a price differential between items that do and those that do not possess the feature or characteristic described by the misdescriptive term may be enough to support a §2(a) refusal, depending upon the nature of the goods or services. It is also important to remember that because a difference in price is relative to the goods and/or services in a particular industry, a particular term may be deceptive for goods and services that are not typically thought of as luxury items.
Health Benefit - The evidence must establish a belief that the feature or characteristic provides a health benefit.
Religious Practice or Social Policy - The evidence must show that the religious practice or social policy has definable recognized
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criteria for compliance in order to support a finding of deceptiveness when the criteria are not adhered to by the applicant. For example, a body of Jewish law deals with what foods can and cannot be eaten and how those foods must be prepared and eaten. The term “kosher" refers to food prepared in accordance with these standards as well as to the selling or serving of such food. See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Another example is the term “vegan,” which is defined as someone who eats plant products only and who uses no products derived from animals, such as fur or leather. Id.
The evidence necessary to establish deceptiveness can come from the same sources used to show that the term is misdescriptive. Internet searches that combine the deceptive term with terms such as “desirable,” “superior,” “premium,” “better quality,” “sought after,” “more expensive,” or “established standards” may be useful in seeking evidence to support the second and third prongs of the test.
Applicant’s own advertising - in the form of specimens, brochures, web pages, press releases, or product and service information sheets - may provide the best evidence of deceptiveness. Moreover, the examining attorney should make of record any instances where the applicant attempts to benefit from the potentially deceptive term and where the advertising includes false assertions related to the deceptive wording. Although not a requirement for a deceptive refusal, proof of an actual intent to deceive may be considered strong evidence of deceptiveness.
1203.02(d)(ii) Mere Personal Preference
The types of objective criteria discussed above can be contrasted with mere personal preferences for which the requisite evidentiary support generally cannot be found to establish materiality. For example, SPEARMINT for gum, LAVENDER for dish soap, and BLUE for bicycles refer to flavor, scent, and color features that, in those contexts, most likely reflect mere personal preferences which would not be considered material for purposes of a deceptiveness refusal.
Similarly, personal preferences regarding types of cuisine served at restaurants (e.g., SEAFOOD or PIZZA) generally do not establish materiality absent evidence that the type of cuisine meets some objective criteria more in line with those listed above, such as for VEGAN or KOSHER.
Whether the requisite evidentiary support can be found to establish that the use of such terms in connection with goods/services that do not contain or feature the characteristic is deceptively misdescriptive under §2(e)(1) must be determined on a case-by-case basis.
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1203.02(e) Procedures for Issuing §2(a) Deceptive Refusals
1203.02(e)(i) When the Mark is Clearly Misdescriptive
If there is evidence in the record clearly indicating that the mark or a term(s) in the mark is misdescriptive (e.g., the specimen or language in the identification indicates that the goods/services do not have the relevant feature or characteristic), the examining attorney must determine whether the misdescription is believable and material and do the following:
• If the misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, approve the mark for publication. Otherwise, issue an Office action containing all other relevant refusals and/or requirements.
• If the misdescription would be believable, but would not be material, issue a refusal under §2(e)(1) as deceptively misdescriptive, with supporting evidence, and all other relevant refusals and/or requirements.
• If the misdescription would be believable and material, issue a deceptiveness refusal under §2(a) with supporting evidence, an alternative refusal under §2(e)(1) as deceptively misdescriptive, and all other relevant refusals and/or requirements.
1203.02(e)(ii) When It is Not Clear Whether the Mark is Misdescriptive
When a mark comprises or contains descriptive wording, but it is not clear whether the goods/services possess the relevant feature or characteristic, the examining attorney must first determine whether such feature or characteristic would be believable and material to the decision to purchase.
If the goods possess the relevant feature or characteristic and the feature or characteristic referenced by the mark would be believable and material, the identification must include the feature or characteristic in order to resolve the ambiguity between the mark and the identification of goods/services. The identification must be amended even if the record indicates elsewhere that the goods/services contain the feature or characteristic. Therefore, if the application could otherwise be put in condition for approval for publication by an examiner’s amendment (see TMEP §707), to expedite prosecution, the examining attorney should:
• Attempt to contact the applicant to obtain authorization for a disclaimer and an amendment to the identification to include the feature or characteristic, and for any other amendments that would put the application in condition for approval for publication.
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• If the applicant states that the goods/services do not possess the feature or characteristic, the examining attorney must so indicate in a note in the “Notes-to-the-File” section of the record, and must then issue a refusal under §2(e)(1) as deceptively misdescriptive (if believable but not material), or a refusal under §2(a) as deceptive (if believable and material) and an alternative refusal under §2(e)(1) as deceptively misdescriptive, and make all other relevant requirements.
• To ensure the completeness of the record in the event of an appeal, any Office action issued must also include an information request under 37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic.
If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must:
• Issue a refusal under §2(e)(1) as descriptive (or a requirement for a disclaimer, if appropriate), based on the presumption that the goods/services possess the feature or characteristic, and a requirement that the applicant amend the identification to include the feature or characteristic, if accurate; and
• If the misdescription would be believable and material, issue an alternative refusal under §2(a) as deceptive, based on the presumption that the goods/services do not possess the relevant feature or characteristic, and supported by evidence; and
• Issue an alternative refusal under §2(e)(1) as deceptively misdescriptive, based on the presumption that the goods/services do not possess the relevant feature or characteristic (the presumption is made even if the record indicates that the goods/services contain the feature because the identification does not include the feature); and
• Issue any other relevant refusals and requirements; and
• Issue an information request under 37 C.F.R. §2.61(b), asking whether the goods/services possess the feature or characteristic. This written request is made to ensure the completeness of the record in the event of an appeal.
See, e.g., In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT held primarily geographically descriptive or, in the alternative, primarily geographically deceptively misdescriptive for cheese; the applicant failed to respond to a 37 C.F.R. §2.61(b) information request as to the origin of the goods).
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1203.02(f) Responding to a §2(a) Deceptiveness Refusal
1203.02(f)(i) Amending the Identification of Goods or Services
If the applicant amends the identification to include the potentially deceptive term, the USPTO will rely on the presumption that the goods contain a sufficient amount of the material to obviate deceptiveness; there is no requirement to substantiate the amount or percentage of the material or feature in the goods. Thus, the applicant may amend “ties” to “silk ties,” “milk and cheese” to “organic milk and cheese,” and “jewelry” to “gold jewelry” or to “jewelry made in whole or significant part of gold.”
Amending an identification of services to add “featuring” or “including” a material term (e.g., “restaurants featuring organic cuisine” and “retail furniture stores including leather furniture”) generally is sufficient to obviate deceptiveness. For example, as long as the identification indicates that the restaurant provides organic cuisine, or the furniture store sells leather furniture, there is no deception even if other types of food or furniture are also available.
1203.02(f)(ii) Other Arguments
Applicants may attempt to overcome a §2(a) refusal by providing evidence that applicant’s advertising, or other means, would make consumers aware of the misdescription. Neither evidence regarding advertising, labeling, or extent of use, nor information found on the specimens, can negate the misdescriptiveness with regard to use of the mark in relation to the goods or services. In addition, an applicant’s anecdotal or past practices and “explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided” are of little value in the deceptiveness analysis. See In re Budge Mfg. Co. Inc., 857 F.2d 773, 775-776, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988).
However, in some cases, the applicant may be able to provide credible evidence that consumers would not expect goods sold under a certain mark to actually consist of or contain the feature or characteristic named in the mark. See, e.g., In re Robert Simmons, Inc., 192 USPQ 331 (TTAB 1976)(holding that WHITE SABLE is not deceptive on artist's paint brushes).
The argument that there is no deception because consumers will immediately discern the true nature of the goods and/or services when they encounter them is not persuasive. Deception can attach prior to seeing or encountering the goods or services, for example, based on advertising over the radio or Internet or via word of mouth. See In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1014 (TTAB 2006).
As noted above, marks that are deceptive under §2(a) are never registrable on either the Principal Register, even under §2(f) or the Supplemental
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Register. However, applicants may present evidence of a similar nature to what is often submitted for acquired distinctiveness, such as declarations regarding how the mark is perceived by consumers, as rebuttal evidence to the prima facie case, in an effort to overcome one or all of the prongs of the §2(a) test. See In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235, 1238 (TTAB 1989). Note that merely relying on the length of use, without providing other information or evidence, would never be sufficient to overcome a §2(a) refusal.
The fact that only those knowledgeable in the relevant trade, and not average purchasers, would be deceived does not preclude a finding that a mark comprises deceptive matter. In re House of Windsor, Inc., 223 USPQ 191, 192 (TTAB 1984).
1203.02(g) Deceptive Matter: Case References
In the following cases, proposed marks were determined to be deceptive, under §2(a): In re Budge Mfg. Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987) (LOVEE LAMB held deceptive for seat covers not made of lambskin); In re ALP of South Beach Inc., 79 USPQ2d 1009 (TTAB 2006) (CAFETERIA (stylized) held deceptive as used in connection with “restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants”); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (SUPER SILK held deceptive for “clothing, namely dress shirts and sport shirts made of silk-like fabric”); In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment, notwithstanding applicant’s assertions that the goods are manufactured by a process that avoids the use of chemical bleaches, because the identification of goods was broad enough to include textiles and clothing manufactured with chemical processes or dyes); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive for clothing having no connection with London); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design of New York City skyline held deceptive for clothing originating in North Carolina, in view of the renown of New York City in the apparel industry); Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (GOLDENER TROPFEN held deceptive for wines, in view of evidence of the international renown of the Goldtropfchen vineyard of West Germany, the Board finding that the purchasing public would be likely to think, mistakenly, that applicant’s wines were produced from grapes grown there in accordance with German wine laws and regulations); Bureau Nat’l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COLAGNAC held deceptive for cola-flavored liqueur containing Spanish brandy, the Board concluding that purchasers were likely to believe that applicant’s goods contained COGNAC brandy); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986)
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(SILKEASE held deceptive as applied to clothing not made of silk); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984) (BAHIA held deceptive as applied to cigars having no connection with the Bahia province of Brazil, the record indicating that tobacco and cigars are important products in the Bahia region); Evans Products Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) (CEDAR RIDGE held deceptive for embossed hardboard siding not made of cedar); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) (TEXHYDE held deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, and the like); Tanners’ Council of America, Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (SOFTHIDE held deceptive for imitation leather materian( � In re Salem China Co., 157 USPQ 600 (TTAB 1968) (AMERICAN LIMOGES, used on dinnerware that was neither made in Limoges, France, nor made from Limoges clay, held deceptive because of the association of Limoges with fine quality china); Company of Cutlers of Hallamshire in the County of York v. Regent-Sheffield, Ltd., 155 USPQ 597 (TTAB 1967) (SHEFFIELD, used on cutlery not made in Sheffield, England, held deceptive because of the renowned status of Sheffield in relation to cutlery); In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963) (IVORY WOOD, for lumber and timber products, held deceptive since the goods were not made of ivorywood nor did they contain an ivorywood pattern).
Marks were found not to be deceptive in the following cases: Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (PARK AVENUE held neither deceptive nor geographically deceptively misdescriptive as applied to applicant’s cigarettes and smoking tobacco, the Board finding no goods/place association between Park Avenue in New York City, on which opposer’s world headquarters was located, and tobacco products); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (WOOLRICH for clothing not made of wool found not to be deceptive under §2(a)); In re Fortune Star Products Corp., 217 USPQ 277 (TTAB 1982) (NIPPON, for radios, televisions, and the like, found not deceptive in relation to the goods because, although the applicant was an American firm, the goods were actually made in Japan); In re Sweden Freezer Mfg. Co., 159 USPQ 246, 249 (TTAB 1968) (SWEDEN and design, for which registration was sought under §2(f) for external artificial kidney units, held not deceptive, the Board finding the case to be in the category “where a geographical trademark may involve a degree of untruth but the deception may be perfectly innocent, harmless or negligible”); A. F. Gallun & Sons Corp. v. Aristocrat Leather Products, Inc., 135 USPQ 459 (TTAB 1962) (COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, found not deceptive, the Board noting that the mark, as an obvious play on the expression “copy cat,” suggested to purchasers that the goods were imitations of items made of calf skin).
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1203.03 Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), bars the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, does any of the following: (1) disparages them; (2) falsely suggests a connection with them; (3) brings them into contempt; or (4) brings them into disrepute.
Section 2(a) is distinctly different from §2(d), 15 U.S.C. §1052(d), for which the relevant test is likelihood of confusion. In University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1375-76, 217 USPQ 505, 508-09 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982), the Court of Appeals for the Federal Circuit noted as follows:
A reading of the legislative history with respect to what became §2(a) shows that the drafters were concerned with protecting the name of an individual or institution which was not a technical “trademark” or “trade name” upon which an objection could be made under §2(d)....
Although not articulated as such, it appears that the drafters sought by §2(a) to embrace concepts of the right to privacy, an area of the law then in an embryonic state (footnote omitted). Our review of case law discloses that the elements of a claim of invasion of one’s privacy have emerged as distinctly different from those of trademark or trade name infringement. There may be no likelihood of such confusion as to the source of goods even under a theory of “sponsorship” or “endorsement,” and, nevertheless, one’s right of privacy, or the related right of publicity, may be violated.
The right to privacy protects a party’s control over the use of its identity or “persona.” A party acquires a protectible interest in a name or equivalent designation under §2(a) where the name or designation is unmistakably associated with, and points uniquely to, that party’s personality or “persona.” A party’s interest in a name or designation does not depend upon adoption and use as a technical trademark or trade name. University of Notre Dame du Lac, 703 F.2d at 1376-77, 217 USPQ at 509; Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). Section 2(a) protection is intended to prevent the unauthorized use of the persona of a person or institution and not to protect the public. In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008).
See TMEP §§1203.03(c) and 1203.03(d) regarding disparagement, bringing into contempt, and bringing into disrepute, and TMEP §§1203.03(e) and 1203.03(f) regarding false suggestion of a connection.
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See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983), concerning the various forms of identity which have been protected under the rights of privacy and publicity.
1203.03(a) “Persons” Defined
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), protects, inter alia, “persons, living or dead.”
Section 45 of the Act, 15 U.S.C. §1127, defines “person” and “juristic person” as follows:
The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term “person” also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.
The term “person” also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any non-governmental entity.
The term “persons” in §2(a) refers to real persons, not fictitious characters. In addition to natural persons, it includes juristic persons, i.e., legally created entities such as firms, corporations, unions, associations, or any other organizations capable of suing and being sued in a court of law. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969); Popular Merchandise Co. v. “21” Club, Inc., 343 F.2d 1011, 145 USPQ 203 (C.C.P.A. 1965); John Walker & Sons, Ltd. v. American Tobacco Co., 110 USPQ 249 (Comm’r Pats. 1956); Copacabana, Inc. v. Breslauer, 101 USPQ 467 (Comm’r Pats. 1954).
With respect to natural persons, they may be living or dead. However, §2(a) may not be applicable with regard to a deceased person when there is no
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longer anyone entitled to assert a proprietary right or right of privacy. Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (DA VINCI held not to falsely suggest connection with deceased artist Leonardo Da Vinci); In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008 (MARIA CALLAS did not falsely suggest a connection with deceased opera singer Maria Callas).
A juristic person’s rights under §2(a) are extinguished when the juristic person ceases to exist. In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (overruled on other grounds, In re WNBA Enterprise, LLC, 70 USPQ2d 1153 (TTAB 2003)).
Juristic persons or institutions do not have to be well known to be protected from the registration of a mark that falsely suggests a connection with or disparages them, or brings them into contempt or disrepute. Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960).
It is well settled that the United States Government is a juristic person. See NASA v. Record Chemical Co. Inc., 185 USPQ 563, 566 (TTAB 1975), and cases cited therein.
A mark does not have to comprise a person’s full or correct name to be unregistrable; a nickname or other designation by which a person is known by the public may be unregistrable under this provision of the Act. Buffett v. Chi- Chi’s, Inc., 226 USPQ 428, 430 (TTAB 1985) (evidence of record “sufficient to raise a genuine issue of material fact as to whether the term ‘MARGARITAVILLE’ is so uniquely and unmistakably associated with opposer as to constitute opposer’s name or identity such that when applicant’s mark is used in connection with its [restaurant] services, a connection with opposer would be assumed”).
1203.03(b) “National Symbols” Defined
A “national symbol” is subject matter of unique and special significance that, because of its meaning, appearance, and/or sound, immediately suggests or refers to the country for which it stands. In re Consolidated Foods Corp., 187 USPQ 63 (TTAB 1975) (noted national symbols include the bald eagle, Statue of Liberty, American flag, Presidential symbol, designation “Uncle Sam” and the unique human representation thereof, and the heraldry and shield designs used in governmental offices). National symbols include the symbols of foreign countries as well as those of the United States. In re Anti- Communist World Freedom Congress, Inc., 161 USPQ 304 (TTAB 1969).
The Trademark Act does not prohibit registration of marks comprising national symbols; it only prohibits registration of matter that may disparage national symbols, falsely suggest a connection with them, or hold them up to contempt or disrepute. Liberty Mutual Insurance Co. v. Liberty Insurance Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960) (marks
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comprising portion of the Statue of Liberty found not to disparage, bring into contempt or disrepute, or falsely suggest a connection with the Statue of Liberty or the United States government, the Court “[a]ssuming without deciding” that the statue is a national symbol).
Designations have been held to be national symbols within the meaning of §2(a) in the following cases: In re Anti-Communist World Freedom Congress, Inc., 161 USPQ 304 (TTAB 1969) (representation of a hammer and sickle held to be a national symbol of the Union of Soviet Socialist Republics (U.S.S.R.)); In re National Collection & Credit Control, Inc., 152 USPQ 200, 201 n.2 (TTAB 1966) (“The American or bald eagle with wings extended is a well-known national symbol or emblem of the United States”); In re Teasdale Packing Co., Inc., 137 USPQ 482 (TTAB 1963) (U. S. AQUA and design held unregistrable under §2(a) on the ground that purchasers of applicant’s canned drinking water would be misled into assuming approval or sponsorship by the United States government in view of the nature of the mark, including a red, white, and blue shield design, and the nature of the goods, the Board noting a program for stocking emergency supplies of water in fallout shelters and the setting of standards for drinking water by United States government agencies).
Designations have been held not to be national symbols in the following cases: W. H. Snyder and Sons, Inc. v. Ladd, 227 F. Supp. 185, 140 USPQ 647 (D.D.C. 1964) (HOUSE OF WINDSOR held not to be a national symbol of England, but merely the name of its present reigning family); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671 (TTAB 1987) (SPACE SHUTTLE found not to constitute a national symbol on the evidence of record, the Board also finding “shuttle” to be a generic term for a space vehicle or system); Jacobs v. International Multifoods Corp., 211 USPQ 165, 170-71 (TTAB 1981), aff’d on other grounds, 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982) (“[H]istorical events such as the ‘BOSTON TEA PARTY’..., although undoubtedly associated with the American heritage, do not take on that unique and special significance of a ‘national symbol’ designed to be equated with and associated with a particular country.”); In re General Mills, Inc., 169 USPQ 244 (TTAB 1971) (UNION JACK, which applicant was using on packages of frozen fish marked “English cut cod” and in its restaurant near representations of the British national flag, found not to suggest a particular country, the Board noting that it could consider only the matter for which registration was sought); In re Horwitt, 125 USPQ 145, 146 (TTAB 1960) (U. S. HEALTH CLUB found registrable for vitamin tablets. “Considering both the nature of the mark and the goods, it is concluded that the purchasing public would not be likely to mistakenly assume that the United States Government is operating a health club, that it is distributing vitamins, or that it has approved applicant’s goods.”).
The name of a country is not a national symbol within the meaning of §2(a) of the Trademark Act, In re Sweden Freezer Mfg. Co., 159 USPQ 246, 248-249
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(TTAB 1968), nor does use of the name of a country as a mark, by itself, amount to deception, disparagement, or a “false connection” under §2(a). In re Fortune Star Products Corp., 217 USPQ 277 (TTAB 1982).
The acronyms for, and names of, government agencies and bureaus are not considered to be national symbols. Consolidated Foods Corp., 187 USPQ at 64 (OSS, acronym for the Office of Strategic Services, held not to be a national symbol, but merely to designate a particular (and long defunct) government agency, the Board contrasting national symbols with names and acronyms of government agencies: “’National symbols’ ... are more enduring in time, ... and immediately conjure up the image of the country as a whole. Symbols of a country take on a special meaning and significance and are not so numerous as to dilute the special meaning and significance that each has.”)
“National symbols” cannot be equated with the “insignia” of nations. As noted in Liberty Mutual Insurance Co., 185 F. Supp. at 908, 127 USPQ at 323:
The Act ... does not put national symbols on a par with the flag, coat of arms, or other insignia of the United States, which may not in any event be made the subject matter of a trade or service mark. With regard to national symbols the statute provides merely that they shall not be disparaged or held up to contempt or disrepute, and shall not be used as falsely to suggest a connection between the holder of the mark and the symbol.
See TMEP §1204 regarding insignia.
While the prohibition of §2(a) against the registration of matter that may disparage or falsely suggest a connection with national symbols, or bring them into contempt or disrepute, may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules. See TMEP §1205.01.
1203.03(c) Disparagement, Bringing into Contempt, and Bringing into Disrepute
Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols. See TMEP §1203.03(a) regarding persons, and TMEP §1203.03(b) regarding national symbols.
In sustaining an opposition on this ground, the Trademark Trial and Appeal Board stated as follows:
Disparagement is essentially a violation of one’s right of privacy – the right to be “let alone” from contempt or ridicule. See, Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ
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1 (6th Cir. 1983). It has been defined as the publication of a statement which the publisher intends to be understood, or which the recipient reasonably should understand, as tending “to cast doubt upon the quality of another’s land, chattels, or intangible things.” Restatement (Second) of Torts §629 (1977).
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639 (TTAB 1988).
The Board applies a two-part test in determining whether a proposed mark is disparaging:
(1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
(2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
See In re Squaw Valley Development Co., 80 USPQ2d 1264 (TTAB 2006); Order Sons of Italy in America v. The Memphis Mafia, Inc., 52 USPQ2d 1364 (TTAB 1999); Harjo v. Pro-Football Inc., 50 USPQ2d 1705 (TTAB 1999), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005).
The question of disparagement must be considered in relation to the goods or services identified in the application. In Squaw Valley, the terms SQUAW and SQUAW ONE were found to be disparaging when used in connection with clothing in Class 25 and retail store services in the field of sporting goods and equipment and clothing in Class 35, because the likely meaning of “Squaw” is an American Indian woman or wife, and the examining attorney’s evidence established prima facie that a substantial composite of Native Americans would consider the term to be offensive. However, these terms were found not to be disparaging when used in connection with ski-related equipment in Class 28, because the likely meaning of “Squaw” in relation to these goods was deemed to be applicant’s Squaw Valley ski resort.
In an ex parte case, the examining attorney must make a prima facie showing that a substantial composite of the referenced group would find the proposed mark, as used on or in connection with the relevant goods or services, to be disparaging. This shifts the burden to applicant to rebut the examining attorney’s showing. Squaw Valley.
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1203.03(d) Disparagement, Bringing into Contempt, and Bringing into Disrepute: Case References
See In re Heeb Media LLC, 89 USPQ2d 1071 (TTAB 2008) (HEEB for clothing and entertainment services found to be disparaging since HEEB means a Jewish person, dictionary definitions unanimously support the derogatory nature of HEEB, evidence of record supports that a substantial composite of the referenced group, i.e., the Jewish community, will perceive HEEB as disparaging, and HEEB has no other meaning in relation to clothing or entertainment services); Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (SEX ROD held to be disparaging because it is sexually vulgar and offensive and the public will associate it with opposer’s mark RED SOX); In re Squaw Valley Development Co., 80 USPQ2d 1264 (TTAB 2006) (SQUAW and SQUAW ONE found to be disparaging when used in connection with clothing in Class 25 and retail store services in the field of sporting goods and equipment and clothing in Class 35, because the likely meaning of “Squaw” in relation to these goods/services is an American Indian woman or wife, and the examining attorney’s evidence established prima facie that a substantial composite of Native Americans would consider the term to be offensive; however, these terms were found not to be disparaging when used in connection with ski-related equipment in Class 28, because the likely meaning of “Squaw” in relation to these goods was deemed to be applicant's Squaw Valley ski resort); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) (BLACK TAIL used on adult entertainment magazines, found not to be disparaging of women in general, or African-American women in particular, nor to bring those groups into contempt or disrepute); Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (THE MEMPHIS MAFIA for entertainment services found not to be matter that disparages Italian- Americans or bring them into contempt or disrepute); In re In Over Our Heads Inc., 16 USPQ2d 1653, 1654 (TTAB 1990) (MOONIES and design incorporating a “buttocks caricature,” for dolls whose pants can be dropped, held not to be disparaging matter that is unregistrable under §2(a), the Board finding that the mark “would, when used on a doll, most likely be perceived as indicating that the doll ‘moons,’ and would not be perceived as referencing members of The Unification Church.”); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639-40 (TTAB 1988) (design of dog defecating, for clothing, held to disparage, and bring into contempt or disrepute, opposer’s running dog symbol, the Board finding the evidence of record “sufficient to show prima facie that this design [the running dog symbol] is, in effect, an alter ego of opposer which points uniquely and unmistakably to opposer’s persona.”); In re Anti-Communist World Freedom Congress, Inc., 161 USPQ 304 (TTAB 1969) (design of an “X” superimposed over a hammer and sickle held to disparage, and hold in contempt and disrepute, a national symbol of the U.S.S.R.).
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1203.03(e) False Suggestion of a Connection
Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols. See TMEP §1203.03(a) regarding persons, TMEP §1203.03(b) regarding national symbols, and TMEP §1203.03 for information about the legislative history of §2(a).
To establish that a proposed mark falsely suggests a connection with a person or an institution, it must be shown that: (1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and (4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed. In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009); In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008); Association Pour La Defense et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007); In re White, 80 USPQ2d 1654 (TTAB 2006); In re White, 73 USPQ2d 1713 (TTAB 2004); In re Nuclear Research Corp., 16 USPQ2d 1316, 1317 (TTAB 1990); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).
The term “institution” has been broadly construed. See In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1219 (Fed. Cir. 2009) (“[T]he ordinary meaning of ‘institution’ suggests the term is broad enough to include a self-governing Indian nation,” quoting Black's Law Dictionary 813, 1133 (8th ed. 2004), which defines “institution” as “[a]n established organization,” and defines “organization” as a “body of persons ... formed for a common purpose”); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) (“each federally recognized Apache tribe is necessarily either a juristic person or an institution”); In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999) (“[T]he entire organization which comprises the Olympic Games, as a whole, qualifies as an ‘institution’ within the meaning of Section 2(a) of the Trademark Act”); In re North American Free Trade Ass’n, 43 USPQ2d 1282, 1285-1286 (TTAB 1997) (finding that the “NAFTA is an institution, in the same way that the United Nations is an institution,” the Board noted that the “legislative history ... indicates that the reference to an ‘institution’ in Section 2(a) was designed to have an expansive scope.”)
The requirement that the proposed mark would be recognized as pointing uniquely and unmistakably to the person or institution does not mean that the term itself must be unique. Rather, the question is whether, as used on the goods or services in question, consumers would view the mark as pointing uniquely to petitioner, or whether they would perceive it to have a different meaning. Hornby v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008) (in
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granting the petition to cancel registration of the mark TWIGGY, Board found that, at the time of registration in 2000, the mark TWIGGY on children’s clothing would be recognized as pointing uniquely and unmistakably to petitioner, who was recognized as a famous British model, and that consumers would presume an association with petitioner; Board also found that evidence of third-party registrations showing registration of the term “TWIGGY” for goods unrelated to children’s clothing to have “no probative value”).
In the case of a mark comprising the name of a deceased natural person, the “right to the use of a designation which points uniquely to his or her persona may not be protected under §2(a) after his or her death unless heirs or other successors are entitled to assert that right…. In order to possess rights, such person, or someone to whom those rights have been transferred, must exist.” In re MC MC S.r.l., 88 USPQ2d 1378, 1380 (TTAB 2008) (quoting In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (overruled on other grounds by In re WNBA Enterprise, LLC, 70 USPQ2d 1153 (TTAB 2003)). A key consideration is “whether or not there is someone (this may be a natural person, estate, or juristic entity) with rights in the name.” Id. Any doubt regarding the existence of heirs or successors with such rights must be resolved in favor of the applicant. MC MC S.r.l., 88 USPQ2d at 1380.
In In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350, 1353-34 (TTAB 1997), the Trademark Trial and Appeal Board held that Ernest Hemingway’s friendship with the original owner of applicant’s bar, his frequenting the bar, and his use of the back room as an office is not the kind of “connection” contemplated by §2(a). Rather, a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant’s services would be necessary to entitle the applicant to registration. White, 80 USPQ2d at 1660- 61 (“there must be a specific endorsement, sponsorship or the like of the particular goods and services, whether written or implied”).
If it is unclear whether the person or institution is connected with the goods sold or services performed by the applicant, the examining attorney should make an explicit inquiry under 37 C.F.R. §2.61(b).
A refusal on this basis requires, by implication, that the person or institution with which a connection is falsely suggested must be the prior user. Nuclear Research Corp., 16 USPQ2d at 1317; In re Mohawk Air Services Inc., 196 USPQ 851, 854-55 (TTAB 1977).
Intent to identify a party or trade on its goodwill is not a required element of a §2(a) claim of false suggestion of an association with such party. S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 754 (TTAB 1985). However, evidence of such an intent could be highly persuasive that the public would make the intended false association. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703
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F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982).
1203.03(f) False Suggestion of a Connection: Case References
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982) (NOTRE DAME and design, for cheese, held not to falsely suggest a connection with the University of Notre Dame. “As the board noted, ‘Notre Dame’ is not a name solely associated with the University. It serves to identify a famous and sacred religious figure and is used in the names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris, France. Thus it cannot be said that the only ‘person’ which the name possibly identifies is the University and that the mere use of NOTRE DAME by another appropriates its identity.”); In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (registration of BO BALL for oblong shaped leather ball with white stitching properly refused under §2(a), since use of “Bo” would be recognized by purchasers as reference to football and baseball player Bo Jackson, and there was no connection between Jackson and applicant); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218 (Fed. Cir. 2009) (SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS, both for cigarettes, falsely suggest a connection with the Shinnecock Indian Nation); In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) (Board affirmed §2(a) refusal, finding that “U.S. CUSTOMS SERVICE” is a close approximation of the former name of the government agency, United States Customs Service, which is now known as the United States Customs and Border Protection but which is still referred to as the U.S. Customs Service by the public and the agency itself, that the seal design in the proposed mark is nearly identical to the seal used by the former United Stated Customs Service, that the only meaning the “U.S. Customs Service” has is to identify the government agency, and that a connection between applicant’s “attorney services” and the activities performed by the United States Customs and Border Protection would be presumed); In re MC MC S.r.l., 88 USPQ2d 1378, 1381 (TTAB 2008) (Board reversed §2(a) refusal of MARIA CALLAS for jewelry and other goods, because the record contained contradictory evidence as to the existence of anyone currently possessing rights in the name “Maria Callas,” and resolving doubt in favor of applicant “removes the possibility that we might be denying registration to an applicant based on non- existent rights,” and because a person or entity claiming rights in a name or persona has recourse since §2(a) is not time barred); Hornby v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008) (Board affirmed refusal of registration of TWIGGY for children’s clothing, on the ground that it would falsely suggest a connection with the internationally known British model and actress who was a major celebrity in the late 1960s, finding that she retained a sufficient degree of fame or reputation that a connection would still be
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presumed by consumers seeing the mark TWIGGY on children’s clothing as of the date on which respondent’s registration issued in 2000); In re White, 80 USPQ2d 1654 (TTAB 2006) (Board affirmed refusal of MOHAWK for cigarettes under §2(a), on the ground that it would falsely suggest a connection with the federally recognized tribe the St. Regis Band of Mohawk Indians of New York); In re White, 73 USPQ2d 1713 (TTAB 2004) (APACHE, for cigarettes, falsely suggests a connection with the nine federally recognized Apache tribes); In re Los Angeles Police Revolver and Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) (slogan TO PROTECT AND TO SERVE, used by applicant Los Angeles Police Revolver and Athletic Club, Inc., does not falsely suggest a connection with the Los Angeles Police Department, where evidence showed an actual longstanding commercial connection, publicly acknowledged and endorsed by both parties); In re Urbano, 51 USPQ2d 1776 (TTAB 1999) (SYDNEY 2000, used for advertising and business services and communication services, falsely suggests connection with Olympic Games, since general public would recognize phrase as referring unambiguously to Olympic Games to be held in Sydney, Australia, in 2000; entire organization that comprises Olympic games qualifies as “institution.”); In re North American Free Trade Ass’n, 43 USPQ2d 1282 (TTAB 1997) (NAFTA, used on “promotion of trade and investment” services, falsely suggests connection with North American Free Trade Agreement; NAFTA qualifies as institution because it encompasses treaty, supplemental agreements, and various commissions, committees and offices created by those documents); In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350 (TTAB 1997) (use of mark SLOPPY JOE’S, with design that includes portrait of Ernest Hemingway, falsely suggests connection with deceased writer); Internet Inc. v. Corporation for Nat’l Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) (cancellation petitioners failed to state claim for relief where they have not alleged, and cannot reasonably allege, that the term INTERNET points uniquely and unmistakably to their own identity or persona); Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1471 (TTAB 1990) (RIT-Z in stylized form, for toilet seats, held not to falsely suggest a connection with opposer, the Board observing that there was “no evidence of record directed to showing a connection of applicant’s mark with opposer corporation, The Ritz Hotel Limited”); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990) (NRC and design, for radiation and chemical agent monitors, electronic testers, and nuclear gauges, held not to falsely suggest a connection with the U.S. Nuclear Regulatory Commission in view of applicant’s use of NRC long prior to the inception of that agency); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671, 1676 (TTAB 1987) (opposition to the registration of SPACE SHUTTLE for wines dismissed, the Board finding “shuttle” to be a generic term for a space vehicle or system. “Where a name claimed to be appropriated does not point uniquely and unmistakably to that party’s personality or ‘persona,’ there can be no false suggestion.”); Board of Trustees of University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (petition to cancel registration of BAMA, for shoes, slippers,
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stockings, socks, and insoles, granted, the Board finding that the evidence of record indicated that BAMA points uniquely to the University of Alabama and thus falsely suggests a connection with the University); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (WESTPOINT, for shotguns and rifles, held to falsely suggest a connection with an institution, the United States Military Academy). For examples of findings of false suggestion of a connection prior to the decision of the Court of Appeals for the Federal Circuit in Notre Dame, supra, see In re U.S. Bicentennial Society, 197 USPQ 905 (TTAB 1978) (U.S. BICENTENNIAL SOCIETY, for ceremonial swords, held to falsely suggest a connection with the American Revolution Bicentennial Commission and the United States government); In re National Intelligence Academy, 190 USPQ 570 (TTAB 1976) (NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, held to falsely suggest a connection with the United States government).
1204 Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
Section 2(b) of the Trademark Act, 15 U.S.C. §1052(b), bars the registration on either the Principal Register or the Supplemental Register of marks that consist of or comprise (whether consisting solely of, or having incorporated in them) the flag, coat of arms, or other insignia of the United States, of any state or municipality, or of any foreign nation. Section 2(b) also bars the registration of marks that consist of or comprise any simulation of such symbols.
“Simulation” refers to “something that gives the appearance or effect or has the characteristics of an original item.” Whether a mark comprises a simulation must be determined from a visual comparison of the proposed mark vis-à-vis replicas of the flag, coat of arms, or other insignia in question. In re Waltham Watch Co., 179 USPQ 59, 60 (TTAB 1973). Focus must be on the general recollection of the flag or insignia by purchasers, “without a careful analysis and side-by-side comparison.” In re Advance Industrial Security, Inc., 194 USPQ 344, 346 (TTAB 1977).
The incorporation in a mark of individual or distorted features that are merely suggestive of flags, coats of arms, or other insignia does not bar registration
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under §2(b). See Knorr-Nahrmittel A.G. v. Havland Int’l, Inc., 206 USPQ 827, 833 (TTAB 1980) (flag designs incorporated in the proposed mark NOR-KING and design not recognizable as the flags of Denmark, Norway, and Sweden, the Board finding that “[a]ll that the record reflects is that the mark contains a representation of certain flags, but not the flag or flags of any particular nation”); Advance Industrial Security, 194 USPQ at 347 (proposed mark comprising a gold and brown triangular shield design with the words “ADVANCE SECURITY” predominately displayed in the upper central portion of the mark “creates an overall commercial impression distinctly different from the Coat of Arms”); Waltham Watch Co., 179 USPQ at 60 (mark comprising wording with the design of a globe and flags held not to be a simulation of the flags of Switzerland and Great Britain, the Board stating that “although the flags depicted in applicant’s mark incorporate common elements of flag designs such as horizontal or vertical lines, crosses or stars, they are readily distinguishable from any of the flags of the nations alluded to by the examiner.”).
Section 2(b) differs from the provision of §2(a) regarding national symbols (see TMEP §1203.03(b)) in that §2(b) requires no additional element, such as disparagement or a false suggestion of a connection, to preclude registration.
1204.01 Flags and Simulations of Flags
1204.01(a) Flags and Simulations of Flags are Refused
Registration must be refused under §2(b) if the design sought to be registered includes a true representation of the flag of the United States, any state, municipality, or foreign nation, or is a simulation thereof. A refusal must be issued if the design would be perceived by the public as a flag, regardless of whether other matter appears with or on the flag. The examining attorney should consider the following factors, in regard to both color drawings and black-and-white drawings, to determine whether the design is perceived as a flag: (1) color; (2) presentation of the mark; (3) words or other designs on the drawing; and (4) use of the mark on the specimen(s).
Generally, a refusal should be made where a black-and-white drawing contains unmistakable features of the flag, contains features of the flag along with indicia of a nation, or is shown on the specimen in the appropriate colors of that national flag. For example, merely amending a "red, white, and blue" American flag to a black-and-white American flag will not overcome a §2(b) refusal. However, black-and-white drawings of flags that consist only of common geometric shapes should not be refused unless there are other indicia of the country on the drawing or on the specimens. For example, a black-and-white drawing showing three horizontal rectangles would not be refused as the Italian or French flag unless there is something else on the drawing or on the specimen that supports the refusal.
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Examples of Situations Where Registration Should be Refused. The following are examples of situations where registration should be refused, because all significant features of the flag are present or a simulation of the flag is used with state or national indicia:
The wording "That’s Italian" emphasizes that the banner design is a simulation of a flag.
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This design is refused because the word SWISS emphasizes that the design is intended to be a simulation of the Swiss flag.
This black-and-white mark is refused because the word Texas emphasizes that the design is intended to be the state flag of Texas.
1204.01(b) Stylized Flag Designs are not Refused under §2(b)
Marks containing elements of flags in a stylized or incomplete form are not refused under §2(b). The mere presence of some significant elements of flags, such as stars and stripes (U.S. flag) or a maple leaf (Canadian flag), does not necessarily warrant a refusal.
If the flag design fits one of the following scenarios, the examining attorney should not refuse registration under §2(b):
• The flag design is used to form a letter, number, or design.
• The flag is substantially obscured by words or designs.
• The design is not in a shape normally seen in flags.
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• The flag design appears in a color different from that normally used in the national flag.
• A significant feature is missing or changed.
Examples. The following are examples of stylized designs that are registrable under §2(b):
Flag Forms Another Design, Number, or Letter - No §2(b) Refusal
Flag Is Substantially Obscured By Other Matter - No §2(b) Refusal
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Flag Design Is Not In the Normal Flag Shape - No §2(b) Refusal
Significant Feature of the Flag Is In a Different Color - No §2(b) Refusal
NOTE: Stripes in flag are red, white, and green.
Significant Feature Is Changed - No §2(b) Refusal
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1204.01(c) Caselaw Interpreting "Simulation of Flag"
The Trademark Trial and Appeal Board found that no simulation of a flag existed in the following cases: In re American Red Magen David for Israel, 222 USPQ 266, 267 (TTAB 1984) ("As to the State of Israel, it is noted that the flag of that nation consists essentially of a light blue Star of David on a white background. In the absence of any evidence that the State of Israel is identified by a six-pointed star in any other color, we conclude that only a light blue six-pointed star would be recognized as the insignia thereof."); In re Health Maintenance Orgs., Inc., 188 USPQ 473 (TTAB 1975) (Dark cross, with legs of equal length, having a caduceus symmetrically imposed thereon held sufficiently distinctive from Greek red cross and flag of Swiss Confederation).
1204.01(d) Description of the Mark
The description of the mark should make it clear that the design is a stylized version of the national flag, if accurate. For example, a statement that "the mark consists of the stylized American flag" or "the mark consists of the stylized American flag in the shape of the letters USA" are acceptable descriptions.
1204.01(e) Flags Not Presently Used as National Flags
Flags of former countries, states, or municipalities are not refused under §2(b). For example, the flags of now non-existent countries such as the German Democratic Republic (East Germany) or Yugoslavia are not refused. However, former flags of existing countries, states, or municipalities are refused under §2(b). For example, the original flag of the United States representing the 13 colonies should be refused.
1204.02 Government Insignia
1204.02(a) Designs that are Insignia Under §2(b) Must Be Refused
Flags and coats of arms are specific designs formally adopted to serve as emblems of governmental authority. The wording "other insignia" should not be interpreted broadly, but should be considered to include only those emblems and devices that also represent governmental authority and that are of the same general class and character as flags and coats of arms.
The following are insignia of the United States for purposes of §2(b):
• Great Seal of the United States
• Presidential Seal
• Seals of Government Agencies
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The Trademark Trial and Appeal Board has construed the statutory language as follows:
[T]he wording “or other insignia of the United States” must be restricted in its application to insignia of the same general class as “the flag or coats of arms” of the United States. Since both the flag and coat of arms are emblems of national authority it seems evident that other insignia of national authority such as the Great Seal of the United States, the Presidential Seal, and seals of government departments would be equally prohibited registration under Section 2(b). On the other hand, it appears equally evident that department insignia which are merely used to identify a service or facility of the Government are not insignia of national authority and that they therefore do not fall within the general prohibitions of this section of the Statute.
In re U.S. Department of the Interior, 142 USPQ 506, 507 (TTAB 1964) (logo comprising the words “NATIONAL PARK SERVICE” and “Department of the Interior,” with depiction of trees, mountains, and a buffalo, surrounded by an arrowhead design, held not to be an insignia of the United States). The Trademark Trial and Appeal Board recently reaffirmed this interpretation in In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB June 26, 2009), by affirming the §2(b) refusal since applicant’s seal design was virtually identical to the seal used by the United States Department of the Treasury.
1204.02(b) Examples of Insignia That Should Be Refused
Examples: The following are examples of insignia that should be refused under §2(b):
Great Seal of the United States
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Seal of The President of The United States
The Official Seal of a Government Agency
1204.02(c) Examples of Designs That Should Not Be Refused
Designs that do not rise to the level of being "emblems of national authority" should not be refused. The following are examples of emblems of national authority that are not barred from registration under §2(b):
Designs That Identify Governmental Departments - No §2(b) Refusal
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Monuments, Statues, Buildings - No §2(b) Refusal
Objects Used By The Government - No §2(b) Refusal
Words or Initials that Identify People or Departments in The Government - No §2(b) Refusal
• U.S. Park Ranger
• U.S. Department of Transportation
• DOD - Department of Defense
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1204.02(d) Caselaw Interpreting Insignia Under §2(b)
The following cases provide examples of matter that was held not to be government insignia under §2(b):
(1) Department insignia that shows a service or facility of a federal department are not refused registration under §2(b). See In re United States Department of the Interior, 142 USPQ 506, 507 (TTAB 1964) (insignia of the National Park Service registrable).
(2) Monuments, statues, or buildings associated with the United States such as the White House, Washington Monument, and Statue of Liberty, are not refused registration under §2(b). See Liberty Mutual Insurance Co. v. Liberty Insurance Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960) ("That the Statue of Liberty is not a part of the ‘insignia of the United States’ is too clear to require discussion.").
(3) Designs of objects used by the U.S. government are not refused registration under §2(b). See In re Brumberger Co., Inc., 200 USPQ 475 (TTAB 1978) (representation of the U.S. mailbox was held not to be an insignia of the United States. However, the Board affirmed a refusal to register the mark under §2(a) because of a false connection with the United States Postal Service).
(4) Initials or words that identify people or departments of a government agency. Letters that merely identify people and things associated with a particular agency or department of the United States government, instead of representing the authority of the government or the nation as a whole, are generally not considered to be “insignia of the United States” within the meaning of §2(b). See U.S. Navy v. United States Mfg. Co., 2 USPQ2d 1254 (TTAB 1987) (USMC, the initials of the Marine Corps, which is part of the Navy, which itself is within the Department of Defense, cannot be construed as an “other insignia of the United States” under Section 2(b) of the Lanham Act). Note: As a result of the enactment of Public Law 98 525 on October 19, 1984, the initials, seal, and emblem of the United States Marine Corps are “deemed to be insignia of the United States,” under 10 U.S.C. §7881, pertaining to unauthorized use of Marine Corps insignia. However, “USMC” was not so protected when the applicant began using its stylized version of those letters as a mark. In view of the provision in Public Law 98-525 that the amendments adding Chapter 663 (10 U.S.C. §7881) shall not affect rights that vested before the date of its enactment, the majority of the Board found that enactment of the law did not adversely affect the mark’s registrability, stating that “opposer has not shown that applicant’s mark was an insignia of the United States prior to the law making it one, or that the law effectively bars registration to applicant.” Id. at 1260.
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1204.03 Other Refusals May be Appropriate
Marks that are not barred by §2(b) may be refused if prohibited by other sections of the Trademark Act. For example, a design may not be an insignia under §2(b) but may be refused under §2(a). See, e.g., In re Brumberger Co., Inc., 200 USPQ 475 (TTAB 1978) (representation of the U.S. mailbox was not an insignia under §2(b) but was properly refused under §2(a) because it falsely suggested a connection with the United States Postal Service). Likewise, §2(d) may be a bar to registering a stylized flag that is not prohibited under §2(b).
See also TMEP §1205.01 and TMEP Appendix C regarding subject matter that is protected by statute.
1204.04 Responding to §2(b) Refusal
1204.04(a) Absolute Bar to Registration
Because §2(b) provides an absolute bar to registration, a disclaimer of the prohibited flag or insignia or an amendment to seek registration under §2(f) or on the Supplemental Register will not overcome a refusal.
The statute does not list any exceptions that would allow for countries, states, or municipalities to register their own flags or insignia. Applications for marks that contain flags, coats of arms, or government insignia, even if filed by the relevant state, country, or municipality, must be refused.
1204.04(b) Deletion of §2(b) Matter
Section 1 Applications. The deletion of the unregistrable §2(b) matter, which no party can have trademark rights in, will not be considered a material alteration if the matter is separable from the other elements in the mark, e.g., if the flag design is spatially separated from other matter in the mark or is used as a background for other words or designs. If the flag is deleted from the drawing, the specimen that shows the flag is still acceptable. The examining attorney must ensure that the design search codes are corrected whenever a change is made to the drawing.
No deletion is allowed if the flag design is integrated into the overall mark in such a way that deletion would significantly change the commercial impression of the mark.
An amendment to the drawing showing the outline of the flag design absent the interior material is not permitted. Amending the mark from a national, state, or municipal flag to a blank flag changes the commercial impression of how the mark is used, or intended to be used, in commerce.
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Section 44 Applications. Amendments to the drawing to delete §2(b) matter are not permitted because the drawing must be a substantially exact representation of the mark as registered in the foreign country. TMEP §1011.01.
Section 66(a) Applications. Amendments to the drawing to delete the §2(b) matter are not permitted because the Madrid Protocol does not permit the amendment of a mark in an international registration. TMEP §807.13(b).
1204.04(b)(i) Examples of Matter That May and May Not Be Deleted
The Flag Design May Be Deleted If It Is A Separable Element:
The Flag May Not Be Deleted If It Is Integrated Into the Overall Design:
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1204.05 Resources
Internet Evidence
Many useful websites present images of national and state flags, government insignia, and coats of arms:
Flags of Foreign Nations:
• http://www.crwflags.com/fotw/flags/
• http://en.wikipedia.org/wiki/Gallery_of_sovereign_state_flags
• http://www.wave.net/upg/immigration/flags.html
United States, State, and Territory Flags:
• http://www.law.ou.edu/hist/flags/
• http://www.50states.com/flag/
Insignia:
• Great Seal of the United States http://www.greatseal.com/
• Seal of the President of the United States http://www.whitehouse.gov/history/eeobtour/images/seal-presidential- color.html
• Seals of Government departments - see specific agency website
Coat of Arms - Gallery of Coats of Arms:
• http://en.wikipedia.org/wiki/Coat_of_arms
Non Registration Data: X-Search and TESS
Article 6ter of the Paris Convention provides for the notification of flags, coats of arms, and national insignia of member countries. When the USPTO receives notification under Article 6ter from the IB, they are assigned serial numbers in the "89" series code, i.e., serial numbers beginning with the digits "89," and are sometimes referred to as "non-registrations." These designs may indicate whether the matter presented for registration in the application under review is a flag, coat of arms, or insignia of a foreign government. See TMEP §1205.02.
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1205 Refusal on Basis of Matter Protected by Statute or Convention
1205.01 Statutory Protection
Various federal statutes and regulations prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals, and characters adopted by the United States government or particular national and international organizations. These designations are reserved for the specific purposes prescribed in the relevant statute and must be free for use in the prescribed manner. See the listings of citations to sections of the United States Code and the Code of Federal Regulations in Appendix C of this Manual.
For example, Congress has created statutes that grant exclusive rights to use certain designations to federally created private corporations and organizations. Violation of some of these statutes may be a criminal offense, e.g., 18 U.S.C. §§705 (regarding badges, medals, emblems, or other insignia of veterans’ organizations); 706 (“Red Cross,” “Geneva Cross,” and emblem of Greek red cross); 707 (4-H Club); 708 (coat of arms of the Swiss Confederation); 711 (“Smokey Bear”); and 711a (“Woodsy Owl” and slogan, “Give a Hoot, Don’t Pollute”). Other statutes provide for civil enforcement, e.g., 36 U.S.C. §§153104 (National Society of the Daughters of the American Revolution); 30905 (Boy Scouts); 80305 (Girl Scouts); 130506 (Little League); and 21904 (The American National Theater and Academy).
The following are examples of the protection of words and symbols by statute.
(1) The Copyright Act of 1976 includes provisions regarding the use of appropriate notices of copyright. These include provisions concerning the use of the letter “C” in a circle – ©, the word “Copyright” and the abbreviation “Copr.” to identify visually perceptible copies (17 U.S.C. §401); the use of the letter “P” in a circle to indicate phonorecords of sound recordings (17 U.S.C. §402); and the use of the words “mask work,” the symbol *M* and the letter “M” in a circle to designate mask works (17 U.S.C. §909). The Copyright Act designates these symbols to indicate that the user of the symbol is asserting specific statutory rights.
(2) Use of the Greek red cross other than by the American National Red Cross, and by sanitary and hospital authorities of the armed forces of the United States, is proscribed by statute. There is an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before June 25, 1948. 18 U.S.C. §706. Use of the coat of arms of the Swiss Confederation for trade or commercial purposes is proscribed by statute. 18 U.S.C. §708. See In re Health Maintenance Orgs., Inc., 188 USPQ 473 (TTAB 1975) (mark comprising a dark cross with legs of equal length on which a
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caduceus is symmetrically imposed (representation of caduceus disclaimed) held registrable, the Board finding the mark readily distinguishable from the Greek red cross (on white background) and the Swiss confederation coat of arms (white cross on red background)).
(3) False advertising or misuse of names to indicate a federal agency is proscribed by 18 U.S.C. §709. For example, this provision prohibits knowing use, without written permission of the Director of the Federal Bureau of Investigation, of the words “Federal Bureau of Investigation,” the initials “F.B.I.” or any colorable imitation, in various formats “in a manner reasonably calculated to convey the impression that such advertisement, ... publication, ... broadcast, telecast, or other production, is approved, endorsed, or authorized by the Federal Bureau of Investigation.” Thus, an examining attorney must refuse to register such matter, pursuant to 18 U.S.C. §709, if its use is reasonably calculated to convey an approval, endorsement, or authorization by the Federal Bureau of Investigation.
(4) Section 110 of the Amateur Sports Act of 1978, 36 U.S.C. §220506, protects various designations associated with the Olympics. Under 36 U.S.C. §220506(a), the United States Olympic Committee has the exclusive right to use the name “United States Olympic Committee,” its symbol and emblem, and the words “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Pan American,” “Paralympiad,” “America Espirito Sport Fraternite,” or any combination thereof. The United States Supreme Court has held that the grant by Congress to the United States Olympic Committee of the exclusive right to use the word “Olympic” does not violate the First Amendment. San Francisco Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 3 USPQ2d 1145 (1987) (concerning petitioner’s use of “Gay Olympic Games”). Under 36 U.S.C. §220506(c), a person is subject to suit in a civil action by the Committee if such person, without the Committee’s consent, uses for the purpose of trade, to induce the sale of goods or services, or to promote any theatrical exhibition, athletic performance, or competition, a designation noted above (listed in §220506(a)) or “any trademark, trade name, sign, symbol, or insignia falsely representing association with, or authorization by, the International Olympic Committee or ... [the United States Olympic Committee]” or any simulation of the words “Olympic,” “Olympiad,” or “Citius Altius Fortius” “tending to cause confusion, to cause mistake, to deceive, or to falsely suggest a connection with ... [the United States Olympic Committee] or any Olympic activity.”
See U.S. Olympic Committee v. Toy Truck Lines Inc., 237 F.3d 1331, 57 USPQ2d 1380 (Fed. Cir. 2001); O-M Bread, Inc. v. U.S. Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041(Fed. Cir. 1995); U.S.
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Olympic Committee v. Intelicense Corp., S.A., 737 F. 2d 263, 222 USPQ 766 (2d Cir. 1984), cert. denied 469 U.S. 982 (1984); U.S. Olympic Committee v. Union Sport Apparel, 220 USPQ 526 (E.D. Va. 1983); U.S. Olympic Committee v. International Federation of Body Builders, 219 USPQ 353 (D.D.C. 1982); Stop the Olympic Prison v. U.S. Olympic Committee, 489 F. Supp. 1112, 207 USPQ 237 (S.D.N.Y. 1980).
(5) In chartering the Blinded Veterans Association, Congress granted it the sole right to use its name and such seals, emblems, and badges as it may lawfully adopt. 36 U.S.C. §30306. This protection of its exclusive right to use “Blinded Veterans Association” does not extend to the term “blinded veterans,” which has been found generic. Blinded Veterans Ass’n v. Blinded American Veterans Foundation, 872 F.2d 1035, 10 USPQ2d 1432 (D.C. Cir. 1989).
(6) Red Crescent Emblem, Third Protocol Emblem, or the designations “Red Crescent” and “Third Protocol Emblem.” Under 18 U.S.C. §706a, the use of the distinctive emblems the Red Crystal and the Red Crescent, as well as the designations “Third Protocol Emblem” and “Red Crescent,” or any imitation thereof, is prohibited, except by those authorized to wear, display, or use them under the provisions of the Geneva Conventions. The statute carves out an exception for use of any emblem, sign, insignia, or words which were lawfully used on or before December 8, 2005, if use of these would not appear in time of armed conflict to confer the protections of the Geneva Conventions of August 12, 1949. See TMEP §§1205.01(a) et seq. for further information.
Usually, the statute will define the appropriate use of a designation and will prescribe criminal penalties or civil remedies for improper use. However, the statutes themselves do not provide the basis for refusal of trademark registration. To determine whether registration should be refused in a particular application, the examining attorney should consult the relevant statute to determine the function of the designation and its appropriate use. If a statute provides that a specific party or government agency has the exclusive right to use a designation, and a party other than that specified in the statute has applied to register the designation, the examining attorney must refuse registration on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, in addition to the relevant statute.
Depending on the nature and use of the mark, other sections of the Trademark Act may also bar registration and must be cited where appropriate. For example, it may be appropriate for the examining attorney to refuse registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a), on the ground that the mark comprises matter that may falsely suggest a connection with a national symbol, institution, or person specified in the
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statute (e.g., the United States Olympic Committee). See TMEP §1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203 et seq. It may be appropriate to refuse registration under §2(b), 15 U.S.C. §1052(b), for matter that comprises a flag, coat of arms, or other similar insignia. See TMEP §1204. It may be appropriate to refuse registration under §2(d), 15 U.S.C. §1052(d), if the party specified in the statute owns a registration for a mark that is the same or similar. Cf. U.S. Olympic Committee v. Olymp- Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497 (TTAB 1984) (opposition to the registration of OLYMP sustained on ground of likelihood of confusion with opposer’s registered mark OLYMPIC under §2(d), the Board finding that the evidence of record did not show that OLYMP falsely suggests a connection with opposer under §2(a), and that the remedies provided in 36 U.S.C. §220506(c) for misuse of Olympic designations are not pertinent to opposition proceedings).
In some instances, it may be appropriate for the examining attorney to refuse registration pursuant to §§1, 2 (preamble), and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark. For service mark applications, §3 of the Act, 15 U.S.C. §1053, should also be cited as a basis for refusal.
To determine what action is appropriate, the examining attorney should look to the particular use of a symbol or term by the applicant. For example, where it is evident that the applicant has merely included a copyright symbol in the drawing of the mark inadvertently, and the symbol is not a material portion of the mark, the examining attorney should indicate that the symbol is not part of the mark and require that the applicant amend the drawing to remove the symbol, instead of issuing statutory refusals of the types noted above.
Examining attorneys should also consider whether registration of matter as a trademark by the applicant may be prohibited by Article 6ter of the Paris Convention. See TMEP §1205.02.
1205.01(a) Examination Procedures for Marks Comprising a Red Crystal or Red Crescent on a White Background, or the Phrases “Red Crescent” or “Third Protocol Emblem”
On December 8, 2005, the United States signed the Third Protocol Additional to the 1949 Geneva Conventions relating to the Adoption of an Additional Distinctive Emblem (the “Protocol”). The Protocol creates two new distinctive emblems: (1) the Third Protocol Emblem, composed of a red diamond on a white background (shown below); and (2) the Red Crescent, composed of a red crescent on a white background (shown below).
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Effective January 12, 2007, Public Law 109-481, 120 Stat. 3666, created a new criminal statutory provision, 18 U.S.C. §706a, to prohibit the use of the distinctive emblems the Red Crystal and the Red Crescent, or any imitation thereof, as well as the designations “Third Protocol Emblem” and “Red Crescent,” except by those authorized to wear, display, or use them under the provisions of the Geneva Conventions. The statute carves out an exception for use of any such emblem, sign, insignia, or words that were lawfully used on or before December 8, 2005, if use of these would not appear in time of armed conflict to confer the protections of the Geneva Conventions of August 12, 1949. The provisions of 18 U.S.C. §706a closely mirror the existing provision in 18 U.S.C. §706 for the American National Red Cross (see TMEP §1205.01).
1205.01(a)(i) First Use After December 8, 2005
If a party other than an authorized party (see TMEP §1205.01(a)(vi) for definition of authorized party) applies to register the Red Crescent, the Third Protocol Emblem, or the designation “Red Crescent” or “Third Protocol Emblem,” and claims a date of first use in commerce after December 8, 2005, the examining attorney must refuse registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a), on the ground that the mark comprises matter that may falsely suggest a connection with the International Federation of Red Cross and Red Crescent Societies and/or other authorized parties under the statute. See 18 U.S.C. 706a; TMEP §1203.03(e). The examining attorney must provide appropriate supporting evidence for the refusal. In addition, a refusal must also be made on the ground that the mark is not in lawful use in commerce, citing §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127.
When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark or, in the case of services, §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, as appropriate. See TMEP §§1202 and 1204.
1205.01(a)(ii) First Use On or Before December 8, 2005 – Grandfather Clause
Registration of the Red Crescent, the Third Protocol Emblem, or the designation “Red Crescent” or “Third Protocol Emblem” need not be refused
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where, in an application under §1 of the Trademark Act, 15 U.S.C. §1051, the applicant claims a date of first use in commerce on or before December 8, 2005, if the goods and services would not appear in time of armed conflict to confer the protections of the Geneva Conventions. However, registration should be refused under §2(a) and §§1 and 45 of the Act if the goods or services are of a type typically offered as emergency relief or assistance in times of armed conflict. Such services may include, but are not limited to, medical assistance, religious, and charitable services. For example, applications for clothing, food items, or first-aid services must be refused under §2(a) and §§1 and 45 of the Trademark Act. The refusals can be withdrawn if the applicant amends the identification to indicate that the goods/services are not offered as emergency relief or assistance in time of armed conflict.
When examining specimens of use for such designations, the examining attorney should also consider issuing a refusal under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark or, in the case of services, §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, as appropriate. See TMEP §§1202 and 1204.
1205.01(a)(iii) Date of First Use Not Specified
For applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the date of first use in commerce is or will be after December 8, 2005, unless the application record indicates otherwise.
A refusal of registration because the mark is not in lawful use in commerce cannot be issued in a §1(b) application unless the applicant files an allegation of use. However, a refusal under §2(a), and any other applicable refusals discovered in the normal course of examination, should be issued during initial examination.
1205.01(a)(iv) Nature of the Mark
Design elements
The statute prohibiting use of the Red Crystal and Red Crescent symbols by unauthorized parties applies to “any sign or insignia made or colored in imitation thereof.” If the mark includes a design element where the color red is claimed, and the design would be likely to be perceived as the Red Crystal symbol or the Red Crescent symbol, the examining attorney must refuse registration under §2(a) and, if applicable (see TMEP §§1205.01(a) and 1205.01(a)(i)), under §§1 and 45.
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A mark that includes a design element will generally be considered registrable, and will not be refused under §2(a), if the applicant does not claim color as a feature of the mark. In such cases, a statement that the mark is not used in the color red is unnecessary, and if submitted, should not be printed on the registration certificate. Registration will be refused, however, if the applicant does not claim color as a feature of the mark, but the specimen shows use of the mark in the color red. In such cases, the examining attorney must refuse registration under §§1 and 45 of the Trademark Act, because the mark is not in lawful use in commerce. The refusal will be withdrawn if the applicant submits a proper substitute specimen showing use of the mark in a color other than red. A photocopy of the original specimen is not an acceptable substitute specimen.
Word Elements
Regarding the phrases “Red Crescent” and “Third Protocol Emblem,” the statute prohibiting use of these designations does not apply to variations or modifications of these words. Only marks that include the exact wording RED CRESCENT or THIRD PROTOCOL EMBLEM, with or without additional wording, must be refused under §2(a) and §§1 and 45.
For example, REDCRESCENTS would not be refused registration, but RED CRESCENT DONOR could be refused registration if the date of first use is after December 8, 2005, or the application otherwise fails to qualify for the grandfather clause described in TMEP §1205.01(a)(ii).
1205.01(a)(v) Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation
If the mark is unregistrable because it includes the Red Crescent or Third Protocol symbols or words, a disclaimer of the unregistrable matter will not render the mark registrable. Similarly, disclaimer of the color red is inappropriate, and will not obviate a refusal of registration.
On the other hand, if the unregistrable symbol or designation is deleted from the mark sought to be registered, the examining attorney should withdraw the refusal(s) based on the unregistrable symbol or designation, and, if necessary, refuse registration because the amendment to the mark is material. Deletions of matter determined to be unregistrable under §2(a) of the Act are sometimes permissible. See TMEP §807.14(a).
The examining attorney may also permit an amendment from a color drawing to a black-and-white drawing, to eliminate the claim of the color red, if such an amendment would not constitute a material alteration of the mark, and the amendment is supported by a proper specimen. See TMEP §§807.14(e) et seq. regarding amendments to color features of marks, and TMEP §1205.01(a)(iv) regarding the situation where the applicant does not claim
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color as a feature of the mark, but the specimen shows use of the mark in red.
1205.01(a)(vi) Parties Authorized to use the Red Crescent and Third Protocol Emblem
Under 18 U.S.C. §706a, the following parties are authorized to use the Red Crescent symbol and the Third Protocol Emblem on a white background and the designations “Red Crescent” and “Third Protocol Emblem:”
(1) authorized national societies that are members of the International Federation of Red Cross and Red Crescent Societies, and their duly authorized employees and agents;
(2) the International Committee of the Red Cross, and its duly authorized employees and agents;
(3) the International Federation of Red Cross and Red Crescent Societies, and its duly authorized employees and agents; and
(4) the sanitary and hospital authorities of the armed forces of State Parties to the Geneva Conventions of August 12, 1949.
If the applicant is not clearly authorized to use an emblem or designation, the examining attorney must refuse registration. The refusal may be withdrawn if the applicant or the applicant’s attorney submits a statement that the applicant is an authorized party, and indicates the reason why the applicant is authorized (e.g., applicant is an authorized agent of the International Federal of Red Cross and Red Crescent Societies).
1205.02 Article 6ter of the Paris Convention
The United States is a member of the Paris Convention for the Protection of Industrial Property, as revised at Stockholm on July 14, 1967, the members of which constitute a Union for the protection of industrial property.
Under Article 6ter of the Paris Convention, the contracting countries have agreed to refuse or to invalidate the registration, and to prohibit the unauthorized use as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems of the member countries, official signs and hallmarks indicating control and warranty adopted by member countries, and any imitation from a heraldic point of view. The provision applies equally to armorial bearings, flags, other emblems, abbreviations, and names of international intergovernmental organizations of which one or more countries of the Union are members, except for those that are already the subject of international agreements in force, intended to ensure their protection (e.g., “Red Cross” and emblems protected by the Geneva Convention of August 12, 1949).
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Under Article 6ter, each member country shall communicate the list of emblems, official signs, and hallmarks that it wishes to protect, and all subsequent modifications of its list, to the IB, who will transmit the communications to the other member countries. Within twelve months from receipt of the notification, a member country may transmit its objections, through the IB.
When the USPTO receives requests for protection under Article 6ter from the IB, they are assigned serial numbers in the “89” series code, i.e., serial numbers beginning with the digits “89,” and are sometimes referred to as “non-registrations.” The USPTO searches its records for conflicting marks, but the requests are not subjected to a full examination by an examining attorney or published for opposition. Information about the designation is entered in the USPTO’s search records, and should be discovered in an examining attorney’s search.
Refusal of Marks Because of an Article 6ter Designation
The Paris Convention requires that the United States refuse to register designations that have been deposited pursuant to Article 6ter and to which the United States has transmitted no objections. Depending on the nature and use of the mark, §§2(a) and 2(b) of the Trademark Act, 15 U.S.C. §§1052(a) and 1052(b), may bar registration of these marks. A refusal under §2(d) of the Trademark Act is not appropriate. The issue is not whether the marks are confusingly similar, but whether registration of the mark would violate §§2(a) or 2(b) of the Trademark Act.
For example, it may be appropriate for the examining attorney to refuse registration under §2(a) of the Act on the ground that the mark comprises matter that may falsely suggest a connection with a national symbol of a member country or an international intergovernmental organization. See TMEP §1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203 et seq. It may be appropriate to refuse registration under §2(b) of the Act if the proposed mark comprises a flag, coat of arms, or other similar insignia. See TMEP §1204. In some instances, it may be appropriate to refuse registration under §§1, 2 (preamble), and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the subject matter would not be perceived as a trademark. For service mark applications, §3 of the Act, 15 U.S.C. §1053, should also be cited as a basis for refusal.
1206 Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (c) Consists of or comprises a name, portrait, or signature identifying a particular
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living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c), bars the registration of a mark that consists of or comprises (whether consisting solely of, or having incorporated in the mark) a name, portrait, or signature that identifies a particular living individual, or a deceased United States president during the life of his widow, except by the written consent of the individual or the president’s widow.
Section 2(c) absolutely bars the registration of these marks on either the Principal Register or the Supplemental Register.
The purpose of requiring the consent of a living individual to the registration of his or her name, signature, or portrait is to protect rights of privacy and publicity that living persons have in the designations that identify them. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982); Canovas v. Venezia 80 S.R.L., 220 USPQ 660, 661 (TTAB 1983). See TMEP §1203.03 for a discussion of the right to control the use of one’s identity, which underlies part of §2(a) as well as §2(c).
Section 2(c) does not apply to marks that comprise matter that identifies deceased persons, except for a deceased president of the United States during the life of the president’s widow. See McGraw-Edison Co. v. Thomas Edison Life Insurance Co., 160 USPQ 685 (TTAB 1969), vacated on other grounds, 162 USPQ 372 (N.D. Ill. 1969) (opposition to the registration of THOMAS EDISON dismissed, the Board finding §2(c) inapplicable, as the particular individual whom the name identifies is deceased); In re Masucci, 179 USPQ 829 (TTAB 1973) (affirming refusal to register mark consisting of the name EISENHOWER, a portrait of President Dwight D. Eisenhower and the words PRESIDENT EISENHOWER REGISTERED PLATINUM MEDALLION #13, for greeting cards, on the ground that the mark comprises the name, signature, or portrait of a deceased United States president without the written consent of his widow, under §2(c)).
Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. There generally must be a connection between the individual and the relevant goods or services. A consent is required only if the individual will be associated with the goods or services, because the person is publicly connected with the business in which the mark is used, is well known in the field relating to the relevant goods or services, or is so well known that the public would reasonably assume a connection. See TMEP §1206.02 for further information.
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See TMEP §1206.03 regarding when it is necessary for an examining attorney to inquire of the applicant as to whether a name, signature, or portrait in a mark identifies a particular living individual, and TMEP §§813.01 et seq. regarding the entry of pertinent statements in the record for printing in the Official Gazette and on a registration certificate.
1206.01 Name, Portrait, or Signature of Particular Living Individual
Section 2(c) explicitly pertains to any name, portrait, or signature that identifies a particular living individual, or a deceased president of the United States during the life of the president’s widow.
Does Not Have to Be Full Name. A “name” does not have to be the full name of an individual. Section 2(c) also applies to a first name, surname, pseudonym, stage name, title, or nickname, if there is evidence that the name identifies a specific living individual who is generally known or well known in the relevant field, or is publicly connected with the goods or services. See Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999) (registration of opposer’s surname without consent prohibited by §2(c), where the record showed that because of opposer’s reputation as an inventor in the field of electrochemical analysis, the relevant public would associate the goods so marked with opposer); In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (BO, the recognized nickname of professional football and baseball star Bo Jackson, found to be so well known by the general public that use of the name BO in connection with sports balls would lead to the assumption that he was in some way associated with the goods or with applicant’s business); In re Steak and Ale Restaurants of America, Inc., 185 USPQ 447 (TTAB 1975) (PRINCE CHARLES found to identify a particular living individual whose consent was not of record); Laub v. Industrial Development Laboratories, Inc., 121 USPQ 595 (TTAB 1959) (LAUB, for flowmeters, found to identify the holder of a patent for flowmeters, whose written consent was not of record); Reed v. Bakers Engineering & Equipment Co., 100 USPQ 196 (PTO 1954) (registration of REED REEL OVEN, for ovens, held to be barred by §2(c) without written consent of the designer and builder of the ovens, Paul N. Reed. Cf. Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (“Section 2(c) does not apply to surnames except in those cases where a particular individual is known by a surname alone.”)
Name Could Refer to More Than One Person. The fact that a name appearing in a mark may be the name of more than one person does not negate the requirement for a written consent to registration, if the mark identifies, to the relevant public, a particular living individual who is well known or is publicly connected with the goods or services, or a deceased United States president whose spouse is living. See Steak and Ale
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Restaurants, 185 USPQ at 447 (affirming refusal to register PRINCE CHARLES, for meat, in the absence of consent to register by Prince Charles, a member of the English royal family. “Even accepting the existence of more than one living ‘Prince Charles,’ it does not follow that each is not a particular living individual.”).
Portraits. Cases involving portraits include In re McKee Baking Co., 218 USPQ 287 (TTAB 1983) (mark comprising a sign on which the portrait of a young girl appears below the words LITTLE DEBBIE); In re Masucci, 179 USPQ 829 (TTAB 1973) (mark comprising name and portrait of a deceased president of the United States, President Eisenhower); Garden v. Parfumerie Rigaud, Inc., 34 USPQ 30 (Comm’r Pats. 1937) (marks comprising name and portrait of Mary Garden).
1206.02 Connection With Goods or Services
Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. A consent is required only if the individual will be associated with the goods or services, either because: (1) the person is generally known or so well known in the field relating to the goods or services that the public would reasonably assume a connection; or (2) the individual is publicly connected with the business in which the mark is used. Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005), aff’d per curiam, No. 2007- 1364, 2007 U.S. App. LEXIS 28399 (Fed. Cir. Dec. 7, 2007).
The Trademark Trial and Appeal Board noted as follows in Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979):
[Section] 2(c) was not designed to protect every person from having a name which is similar or identical to his or her name registered as a trademark. Such a scope of protection would practically preclude the registration of a trademark consisting of a name since in most cases there would be someone somewhere who is known by the name and who might be expected to protest its registration. Rather, the Statute was intended to protect one who, for valid reasons, could expect to suffer damage from another’s trademark use of his name. That is, it is more than likely that any trademark which is comprised of a given name and surname will, in fact, be the name of a real person. But that coincidence, in and of itself, does not give rise to damage to that individual in the absence of other factors from which it may be determined that the particular individual bearing the name in question will be associated with the mark as used on the goods, either because that person is so well known that the public would reasonably assume the connection or because the individual is publicly connected with the business in which the mark is used.
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If the record shows that the name or likeness in the mark is that of a living individual who is actually connected with the applicant, then the individual is publicly connected with the business in which the mark is used, and the examining attorney must require consent.
If no one by the name of the person identified in the mark is connected with the applicant, and no person by the name in the mark is generally known or well known in the field relating to the relevant goods or services, the mark generally would not be deemed to identify a particular person under §2(c), and consent would not be required.
In Martin, the Board held that §2(c) did not prohibit registration of NEIL MARTIN for men’s shirts, where the individual, although well known in his own professional and social circles, failed to establish that he was so famous as to be recognized by the public in general, or that he is or ever was publicly connected or associated with the clothing field.
In Krause, evidence was found sufficient to establish that the cancellation petitioner was publicly connected with the fields of numismatics, car collecting, and publishing, such that a connection between petitioner and the mark KRAUSE PUBLICATIONS would be presumed by people who have an interest in these fields. Thus, the mark was unregistrable for magazines featuring antique automobiles and numismatics, conducting trade shows and award programs featuring coins, and other related goods and services. However, the mark was found registrable for “entertainment services in the nature of competitions and awards in the field of cutlery,” because petitioner had not demonstrated that he was publicly connected with the field of cutlery, or that he is so well known by the general public that a connection between petitioner and the mark would be presumed with respect to these services. See also Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB 1999) (evidence found sufficient to establish that opposer Dr. James Ross was publicly connected with the electrochemical analysis equipment field and that use of the name ROSS in connection with equipment in that field would lead to the assumption that opposer was in some way associated with the goods); In re Sauer, 27 USPQ2d 1073 (TTAB 1993), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994) (BO, the recognized nickname of professional football and baseball star Bo Jackson, found to be so well known by the general public that use of the name BO in connection with sports balls would lead to the assumption that he was in some way associated with the goods or with applicant’s business); Fanta v. Coca-Cola Co., 140 USPQ 674 (TTAB 1964) (dismissing a petition to cancel registrations of FANTA for soft drinks and syrup concentrate, the Board noting no use by the petitioner, Robert D. Fanta, of his name in connection with the sale of soft drinks, nor any indication that petitioner had attained recognition in that field); Brand v. Fairchester Packing Co., 84 USPQ 97 (Comm’r Pats. 1950) (affirming dismissal of a petition to cancel the registration of ARNOLD BRAND, for fresh tomatoes, the Commissioner finding nothing in the record to indicate that the mark identified
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the petitioner, Arnold Brand, an attorney specializing in patent and trademark matters, with the tomato business, or that use of the mark would lead the public to make such a connection).
To support a refusal under §2(c) as to a particular class in an application, it is not necessary to demonstrate that the individual is publicly connected with all the goods or services listed in the class. It is enough to show that the individual is publicly connected with at least some of the goods/services in the class. Krause, supra.
1206.03 When Inquiry is Required
If a mark comprises a name or likeness that could reasonably be perceived as identifying a particular living individual, and the applicant does not state whether the name or likeness does in fact identify a living individual, the examining attorney must inquire whether the name or likeness is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name or likeness must be submitted.
Full Name. Generally, if a mark comprises a full name, e.g., a first name and surname, the examining attorney must issue an inquiry as to whether the mark comprises the name of a living individual, unless it is clear from the record that the name is not that of a living individual. It is not necessary to establish that the individual is well known in the relevant field before making the inquiry.
Example: The mark is STEVEN JONES, and the application is silent as to whether this name identifies a living individual. The examining attorney must inquire whether the name is that of a specific living individual and advise the applicant that, if so, the individual’s written consent to register the name must be submitted.
Portrait or Likeness. Generally, if the mark comprises a portrait, or a likeness that could reasonably be perceived as that of a particular living individual, the examining attorney must issue an inquiry as to whether the mark comprises the likeness of living individual, unless it is clear from the record that the likeness is not that of a living individual. It is not necessary to establish that the individual is well known in the relevant field before making the inquiry.
Fictitious Character. The examining attorney should not make an inquiry if it is clear from the record, or from the examining attorney’s research, that the matter identifies a fictitious character. For example, no inquiry is necessary as to whether “Alfred E. Neuman,” “Betty Crocker,” or “Aunt Jemima” is the name of a particular living individual; and no inquiry is necessary as to a design that is obviously that of a cartoon character.
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First Name, Pseudonym, Stage Name, Surname, Nickname, or Title. If the mark comprises a first name, pseudonym, stage name, nickname, surname, or title (e.g., “Mrs. Johnson” or “Aunt Sally”), the examining attorney must determine whether there is evidence that the name identifies an individual who is well known in the field relating to the relevant goods or services. See TMEP §1206.02. This may be done through an Internet search. If there is no evidence that the name identifies a living individual who is generally known or well known in the relevant field, the examining attorney should not issue an inquiry.
Example: The mark is DOCTOR JONES, and the application is silent as to whether this name identifies a living individual. If there is evidence that the name identifies an individual who is generally known or well known in the relevant field, the examining attorney must issue an inquiry and require the individual’s written consent to register the name. If there is no evidence that the name identifies an individual who is generally known or well known in the relevant field, the examining attorney should not inquire or require consent.
Example: The mark is JOE for cookies, and the application is silent as to whether this name identifies a living individual. Unless there is evidence that the name is generally known or well known in the relevant field, the examining attorney should not inquire or require consent.
Statement of Record in Prior Registration. If the applicant claims ownership of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the prior registration includes a statement that the name, portrait, or signature is not that of a living individual, the examining attorney may enter the same statement in the record, even if applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation. See TMEP §§813.01(b) and 1206.05.
1206.04 Consent of Individual or President’s Widow
1206.04(a) Consent Statement Must Be Written Consent to Registration
Must Be Personally Signed. When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent of the individual, or of the president’s widow. The consent must be a written consent to the registration of the identifying matter as a mark, and must be personally signed by the individual whose name or likeness appears in the mark.
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Consent to Use is Not Consent to Registration. Consent to use of a mark does not constitute consent to register. Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005), aff’d per curiam, No. 2007-1364, 2007 U.S. App. LEXIS 28399 (Fed. Cir. Dec. 7, 2007); Reed v. Bakers Engineering & Equipment Co., 100 USPQ 196, 199 (PTO 1954); Garden v. Parfumerie Rigaud, Inc., 34 USPQ 30, 31 (Comm’r Pats. 1937) (granting petition to cancel registrations of marks that named and portrayed the petitioner, Mary Garden, who, although she had consented to the use of her name and portrait in connection with a particular perfume, had not given written consent to register the marks for perfumes and other cosmetic items. “Permission to use one’s name and portrait in connection with a specified item of merchandise falls far short of consent to register one’s name and portrait as a trade mark for such merchandise generally.”) Consent to register a mark that makes no reference to consent to use is acceptable; the USPTO has no authority to regulate use of a mark.
Minors. If the record indicates that the person whose name or likeness appears in the mark is a minor, the question of who should sign the consent depends on state law. If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state in which he or she is domiciled, then the minor may sign the consent. Otherwise, the consent should be signed by a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. If the record indicates that person whose name or likeness appears in the mark is a minor, the examining attorney must inquire as to whether the person can validly enter into binding legal obligations under the law of the state in which he or she is domiciled. If the minor cannot enter into binding legal obligations, the examining attorney must require consent by the parent or guardian. See TMEP §803.01 regarding the filing of an application in the name of a minor.
1206.04(b) Consent May Be Presumed From Signature of Application
When a particular individual identified in a mark is also the person who signed the application, his or her consent to registration will be presumed. Alford Mfg. Co. v. Alfred Electronics, 137 USPQ 250 (TTAB 1963), aff’d, 333 F.2d 912, 142 USPQ 168 (C.C.P.A. 1964) (“The written consent to the registration of the mark ‘ALFORD’ by Andrew Alford, the individual, is manifested by the fact that said person executed the application....”); Ex parte Dallioux, 83 USPQ 262, 263 (Comm’r Pats. 1949) (“By signing the application, the applicant here obviously consents....”). Consent may be presumed from an application signature regardless of whether the person who signed the application is the applicant.
Name of Signatory. Consent to register is presumed if the application is personally signed by the individual whose name appears in the mark, e.g., if the mark is JOHN SMITH, and the application is personally signed by John
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Smith. The examining attorney should not make an inquiry or require a written consent. The examining attorney must ensure that the consent statement (see TMEP §813.01(a)) is entered into the TRAM database. The consent statement must be printed even if the name that appears in the mark is that of the applicant.
Names Must Match. Consent may be presumed only where the name in the mark matches the name of the signatory. If the names do not match, the examining attorney must issue an inquiry. For example, if the name in the mark is J.C. Jones, and the application is signed by John Jones, the examining attorney must inquire whether J.C. Jones is John Jones. If applicant states that J.C. Jones is John Jones, consent is presumed. The statement that J.C. Jones is John Jones may be entered by examiner’s amendment, if appropriate.
Likeness of Signatory. Consent may also be presumed when the mark comprises the portrait or likeness of the person who personally signs the application. When the mark comprises a portrait, or a likeness that could reasonably be perceived as that of a particular living individual, the examining attorney must make an inquiry, unless the record indicates that the likeness is that of the person who signed the application. If the applicant responds by stating that the likeness is that of the person who signed the application, consent is presumed. No written consent is required, but the examining attorney must ensure that the consent statement (see TMEP §813.01(a)) is entered into the TRAM database.
Application Must be Personally Signed. Consent may be presumed only where the individual whose name or likeness appears in the mark personally signs the application. If the application is signed by an authorized signatory, consent to register the name or likeness must be obtained from the individual. This is true even where the name or likeness that appears in the mark is that of the individual applicant.
Section 66(a) Applications. In a §66(a) application, the signed verification is part of the international registration on file at the IB and is not included with the request for extension of protection sent to the USPTO. 37 C.F.R. §2.33(e); TMEP §1904.01(c). The examining attorney is thus unable to determine who signed the verified statement. Therefore, the examining attorney must require a written consent to register, even where the name that appears in the mark is that of the applicant. If the verified statement in support of the request for extension of protection to the United States was personally signed by the individual whose name or likeness appears in the mark, the applicant may satisfy the requirement for a written consent to registration by submitting a copy of the verified statement that is on file with the IB.
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1206.04(c) New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant
An applicant does not have to submit a new consent if a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for the same goods or services. In this situation, the applicant only has to: (1) claim ownership of that existing registration; and (2) advise the examining attorney that the consent is of record therein. If the applicant provides the information that the consent is of record in the claimed registration by telephone, the examining attorney must make an appropriate note in the “Notes-to-the-File” section of the record. The examining attorney must ensure that the consent statement is entered into the TRAM database (see TMEP §813.01(a)).
If an applicant has submitted a consent to register in an application that has not matured to registration, a new consent is not required for pertinent co- pending applications, but the applicant must submit a copy of the consent for each pending application. In re McKee Baking Co., 218 USPQ 287 (TTAB 1983) (applicant’s claim of ownership of a prior registration that includes a consent to register in the record held sufficient for purposes of complying with the consent requirement of the Act); 37 C.F.R. §2.193(a).
See TMEP §§813.01(b) and 1206.05 regarding statements that a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual.
1206.04(d) Implicit Consent
Consent may sometimes be inferred from the actions of the individual. In re D.B. Kaplan Delicatessen, 225 USPQ 342, 344 (TTAB 1985) (consent to the use and registration of the mark D. B. KAPLAN’S DELICATESSEN, for restaurant services, found to be implicit in the terms of a “buy-out” agreement that relinquished all property rights in the name and forbade its use by the named party in any subsequent business). However, the mere incorporation of a business or consent to the business’s use of the mark does not constitute implied consent to the registration of the mark. Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005), aff’d per curiam, No. 2007- 1364, 2007 U.S. App. LEXIS 28399 (Fed. Cir. Dec. 7, 2007) (cancellation petitioner did not give implied consent to register when he incorporated a business, sold his stock in the business, and pledged his assets to finance expansion and acquisitions, and acquiesced in the corporation’s use of the mark for 50 years, where there was no evidence that the individual expressly stated that the mark was the property of the corporation, or agreed to refrain from use of the name in any subsequent business); In re New John Nissen Mannequins, 227 USPQ 569 (TTAB 1985) (consent to register not implied from appearance of the name “John Nissen” in a deed of incorporation of
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applicant’s predecessor, nor from existence of foreign registrations incorporating the name).
1206.05 Names and Likenesses That Do Not Identify a Particular Living Individual
If it appears that a name, portrait, or signature in a mark may identify a particular living individual but, in fact, the applicant devised the matter as fanciful, or believes it to be fanciful, the applicant may be required to submit a statement to that effect. See TMEP §813.01(b) for further information as to when a statement that a name or likeness is not that of a living individual should be printed, and TMEP §1206.03 for information as to when an examining attorney should inquire as to whether a name or likeness is that of an individual.
The applicant should explain any additional relevant circumstances. For example, if the matter identifies a certain character in literature, or a deceased historical person, then a statement of these facts in the record may be helpful; however, this information will not be printed in the Official Gazette or on the registration certificate.
No statement should be printed unless the name or portrait might reasonably be perceived as that of a specific living individual. This is true even if the applicant submits an unsolicited statement that a particular name or portrait does not identify a living individual.
Generally, if the name or likeness is such that an inquiry would have been required as to whether it identifies a living individual (see TMEP §1206.03), and the applicant states that the mark does not identify a living individual, then the statement that the name or likeness does not identify a living individual should be printed.
If the applicant owns a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for any goods or services, and the record for the registration contains a statement that the name or likeness is not that of a living individual, the applicant should claim ownership of the registration and advise the examining attorney that the statement is of record therein. The examining attorney may then enter the same statement in the record for the application, even if applicant does not resubmit or reference the statement. It is not necessary to issue an inquiry in this situation.
1207 Refusal on Basis of Likelihood of Confusion, Mistake, or Deception
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (d) Consists of or comprises a mark which so resembles a mark registered in the
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Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive....
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), is the statutory basis for a refusal to register due to likelihood of confusion with another mark. Section 2(d) applies to both the Principal and the Supplemental Registers.
1207.01 Likelihood of Confusion
In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney’s conclusion that the applicant’s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. (See TMEP §1207.02 concerning §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)
The examining attorney must conduct a search of USPTO records to determine whether the applicant’s mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the record.
If the examining attorney determines that there is a likelihood of confusion between applicant’s mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the USPTO to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.
Also, if USPTO records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the USPTO to determine whether the conflicting mark has been assigned to applicant.
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the
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similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) (“Not all of the DuPont factors may be relevant or of equal weight in a given case, and ‘any one of the factors may control a particular case,’” quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:
• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
• The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
• The similarity or dissimilarity of established, likely-to-continue trade channels.
• The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
• The number and nature of similar marks in use on similar goods.
• A valid consent agreement between the applicant and the owner of the previously registered mark.
The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:
The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.
In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).
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There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.
The determination of likelihood of confusion under §2(d) in an intent-to-use application under §1(b) of the Trademark Act does not differ from the determination in any other type of application.
1207.01(a) Relatedness of the Goods or Services
If the marks of the respective parties are identical, the relationship between the goods or services need not be as close to support a finding of likelihood of confusion as would be required in a case where there are differences between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981).
In some instances, because of established marketing practices, the use of identical marks on seemingly unrelated goods and services could result in a likelihood of confusion. See In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986) (“The licensing of commercial trademarks for use on ‘collateral’ products (such as clothing, glassware, linens, etc.), that are unrelated in nature to those goods or services on which the marks are normally used, has become a common practice in recent years.”)
1207.01(a)(i) Goods or Services Need Not Be Identical
The goods or services do not have to be identical or even competitive in order to determine that there is a likelihood of confusion. The inquiry is whether the goods are related, not identical. The issue is not whether the goods will be confused with each other, but rather whether the public will be confused about their source. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975). It is sufficient that the goods or services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) (ON-LINE TODAY for Internet connection services held likely to be confused with ONLINE TODAY for Internet content); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (MARTIN’S for wheat bran and honey bread held likely to be confused with MARTIN’S for cheese); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266 (TTAB 2009) (VANTAGE TITAN for MRI diagnostic equipment held likely to be confused with TITAN for medical ultrasound device); L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) (ENYCE for
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custom automotive accessories held likely to be confused with ENYCE for various clothing items and accessories directed to the urban lifestyle market); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use); In re Jeep Corp., 222 USPQ 333 (TTAB 1984) (LAREDO for land vehicles and structural parts therefor held likely to be confused with LAREDO for pneumatic tires).
Conversely, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).
1207.01(a)(ii) Goods May Be Related to Services
It is well recognized that confusion is likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S (stylized) for retail grocery and general merchandise store services held likely to be confused with BIGGS and design for furniture); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (C.C.P.A. 1961) (SEILER’s for catering services held likely to be confused with SEILER’S for smoked and cured meats); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’, and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Corinthian Broadcasting Corp. v. Nippon Electric Co., Ltd., 219 USPQ 733 (TTAB 1983) (TVS for transmitters and receivers of still television pictures held likely to be confused with TVS for television
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broadcasting services); In re Industrial Expositions, Inc., 194 USPQ 456 (TTAB 1977) (POLLUTION ENGINEERING EXPOSITION for programming and conducting of industrial trade shows held likely to be confused with POLLUTION ENGINEERING for a periodical magazine).
1207.01(a)(ii)(A) Food and Beverage Products Versus Restaurant Services
While likelihood of confusion has often been found in situations where similar marks are used in connection with both food or beverage products and restaurant services, there is no per se rule to this effect. To establish likelihood of confusion, a party must show “something more than that similar or even identical marks are used for food products and for restaurant services.” In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (no likelihood of confusion between applicant’s BLUE MOON and design for beer and the registered mark BLUE MOON and design for restaurant services); Jacobs v. International Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (C.C.P.A. 1982) (no likelihood of confusion between BOSTON SEA PARTY for restaurant services and BOSTON TEA PARTY for tea).
The determination of the relatedness of the goods and services is based on the evidence provided by the applicant and the examining attorney. In Coors, the examining attorney introduced evidence from several sources discussing the practice of some restaurants to offer private label or house brands of beer; evidence that brewpubs who brew their own beer often feature restaurant services; and copies of third-party registrations showing that a single mark had been registered for beer and restaurants services. However, applicant countered with evidence that while there are about 1,450 brewpubs and microbreweries in the United States, there are over 800,000 restaurants, which means that brewpubs and microbreweries account for only about 18 one-hundredths of one percent of all restaurants. Noting that “[t]here was no contrary evidence introduced on those points,” the court found that:
While there was evidence that some restaurants sell private label beer, that evidence did not suggest that such restaurants are numerous. And although the Board had before it a few registrations for both restaurant services and beer, the very small number of such dual use registrations does nothing to counter Coors’ showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark. Thus, the evidence before the Board indicates not that there is a substantial overlap between restaurant services and beer with respect to source, but rather that the degree of overlap between the sources of restaurant services and the sources of beer is de
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minimis. We therefore disagree with the Board’s legal conclusion that Coors’ beer and the registrant’s restaurant services are sufficiently related to support a finding of a likelihood of confusion.
343 F.3d at 1346, 68 USPQ2d at 1063-1064.
See also Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) (Board erred in failing to consider evidence of third party use of service marks in telephone directories); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) (likelihood of confusion between OPUS ONE used on both wine and restaurant services, where the evidence showed that it is common in the industry for restaurants to offer and sell private label wines named after the restaurant, and that registrant’s wines were actually served at applicant’s restaurant); In re Comexa Ltda., 60 USPQ2d 1118, 1123 (TTAB 2001) (likelihood of confusion found between AMAZON for restaurant services and AMAZON and design for chili sauce and pepper sauce, where 50 third-party registrations (48 based on use) showing registration of the same mark for sauces and restaurant services were probative to the extent that they served to suggest that the goods and services were of a kind that may emanate from a single source); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1211 (TTAB 1999) (AZTECA MEXICAN RESTAURANT for restaurant services held likely to be confused with AZTECA for tortillas, taco shells, and salsa, where the evidence indicated that the goods at issue were “Mexican food items” of a type that were “often principal items of entrees served by … Mexican restaurants”); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (likelihood of confusion between GOLDEN GRIDDLE for table syrup and GOLDEN GRIDDLE PANCAKE HOUSE for restaurant that serves pancakes and syrup); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988) (likelihood of confusion between MUCKY DUCK and duck design for mustard and THE MUCKY DUCK and duck design for restaurant services, the Board finding that “[a]lthough these goods and services obviously differ, mustard is … a condiment which is commonly utilized in restaurants by their patrons, especially in such restaurants as delicatessens, fast food houses, steak houses, taverns, inns, and the like, and we think it is common knowledge that restaurants sometimes market their house specialties, including items such as salad dressings, through retail outlets”); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1478 (TTAB 1987) (no likelihood of confusion between STEVE’S for ice cream and STEVE’S for restaurant featuring hot dogs, where the marks differed and “there [was] no evidence in the record before us that applicant makes or sells ice cream, or that any one business makes and sells ice cream under the same mark in connection with which it renders restaurant services”).
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1207.01(a)(iii) Reliance on Identification of Goods/Services in Registration and Application
The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1208 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).
If the cited registration describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Therefore, if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods. See, e.g., In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (where a registrant’s goods are broadly identified as “computer programs recorded on magnetic disks,” without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant’s goods encompass all such computer programs, and that they travel in the same channels of trade and are available to all classes of prospective purchasers of those goods); In re Diet Center Inc., 4 USPQ2d 1975 (TTAB 1987) (VEGETABLE SVELTES for wheat crackers sold through franchised outlets offering weight reduction services held likely to be confused with SVELTE for low-calorie frozen dessert); In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986) (SPRAYZON for cleaning preparations and degreasers for industrial and institutional use held likely to be confused with SPRA-ON and design for preparation for cleaning woodwork and furniture). Similarly, there is a likelihood of confusion if an applicant identifies its goods or services so broadly that the identification encompasses the goods or services identified in the registration of a similar mark. See, e.g., In re Americor Health Services, 1 USPQ2d 1670 (TTAB 1986) (RESOLVE for corporate employee assistance services, namely, providing confidential mental health counseling services, held likely to be confused with RESOLVE for counseling services in the field of infertility); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (RESPONSE for banking services held likely to be confused with RESPONSE CARD for banking services rendered through 24-hour teller machines).
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An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods. See, e.g., In re Bercut- Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Where the terminology in the identification is unclear, the Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to show that the registrant’s identification has a specific meaning to members of the trade. The Board noted that in light of such evidence it is improper to consider the identification in a vacuum and attach all possible interpretations to it. In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990).
1207.01(a)(iv) No “Per Se” Rule
The facts in each case vary and the weight to be given each factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See, e.g., Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); Hi- Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171 (TTAB 1987) (regarding food products); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984), and cases cited therein (regarding clothing). See also M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 1383, 78 USPQ2d 1944, 1947-1948 (Fed. Cir. 2006) (relatedness between software-related goods may not be presumed on the mere basis that the goods are delivered in the same media format; rather, a subject-matter-based mode of analysis of the relatedness of the fields of use is the appropriate analysis).
1207.01(a)(v) Expansion of Trade Doctrine
The examining attorney must consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under §2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). A trademark owner is entitled to protection against the registration of a similar mark on products that might reasonably be expected to be produced by him in the normal expansion of his business. The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007); CPG Products Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983).
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1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services
The examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. Evidence of relatedness might include news articles and/or evidence from computer databases showing that the relevant goods/services are used together or used by the same purchasers; advertisements showing that the relevant goods/services are advertised together or sold by the same manufacturer or dealer; or copies of prior use-based registrations of the same mark for both applicant’s goods/services and the goods/services listed in the cited registration. See TMEP §1207.01(d)(iii) and cases cited therein regarding the probative value of third-party registrations.
The identification of goods/services in the subject application and in the cited registration(s) may in itself constitute evidence of the relatedness of the goods or services. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (Board erred in finding that there was insufficient evidence of relatedness, “because the Board did not consider the important evidence already before it, namely the ITU application and [opposer’s multiple] registrations”).
1207.01(b) Similarity of the Marks
If it appears that confusion may be likely as a result of the contemporaneous use of similar marks by the registrant and the applicant with the identified goods or services, the next step is to evaluate the marks themselves, in relation to the goods and services. Under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the first factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks are sufficiently similar that there is a likelihood of confusion as to the source of the goods or services. When considering the similarity of the marks, “[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). In evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Where the goods are identical, “the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); Starbucks
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U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1752 (TTAB 2006) (quoting this language from Century 21 and finding LESSBUCKS COFFEE similar in appearance, sound, and overall commercial impression to STARBUCKS and STARBUCKS COFFEE); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).
1207.01(b)(i) Word Marks
The points of comparison for a word mark are appearance, sound, meaning, and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), citing In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related. Rather, the rule is that taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987).
1207.01(b)(ii) Similarity In Appearance
Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for systems software); Canadian Imperial Bank of Commerce, N.A., v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH held likely to be confused with COMMUNICASH, both for banking services); Ava Enterprises, Inc. v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006) (AUDIO BSS USA and design for car power amplifiers, car speakers, car stereos, and home theater speakers held likely to be confused with BOSS AUDIO SYSTEMS and design for automobile audio components); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for synthetic coolant held likely to be confused with TURCOOL for cutting oin( � In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986) (MCKENZIE’S (stylized) for processed frozen fruits and vegetables held likely to be confused with MCKENZIE for canned fruits and vegetables); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (NEWPORTS for women’s shoes held likely to be confused with NEWPORT for outer shirts); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON for microprocessor used in commercial laundry machines held likely to be confused with MILLTRONICS (stylized) for electronic control devices for machinery); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL for resinous chemicals used in dyeing textiles held
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likely to be confused with LUTEX for non-resinous chemicals used in the textile industry).
1207.01(b)(iii) Comparing Marks That Contain Additional Matter
It is a general rule that likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark or matter that is descriptive or suggestive of the named goods or services. Sometimes, the rule is expressed in terms of the dominance of the common term. Therefore, if the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences. See, e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) (VEUVE ROYALE for sparkling wine found likely to be confused with VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN for champagne, noting that the presence of the “strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE”); In re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical”); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (even though applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, similar overall commercial impression is created); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266 (TTAB 2009) (VANTAGE TITAN for MRI diagnostic equipment held likely to be confused with TITAN for medical ultrasound device, noting that the marks are more similar than they are different and that the addition of applicant’s “product mark” to the registered mark would not avoid confusion); In re SL&E Training Stable, Inc., 88 USPQ2d 1216 (TTAB 2008) (Board found likelihood of confusion between SAM EDELMAN and EDELMAN both for wallets and various types of bags noting that the marks are similar because they share the same surname, and it is the practice in the fashion industry to refer to surnames alone); In re Chica, 84 USPQ2d 1845 (TTAB 2007) (Board found likelihood of confusion between CORAZON and design and CORAZON BY CHICA and design, both for jewelry); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS (with “COMBOS” disclaimed) held likely to be confused with MACHO (stylized), both for food items as a part of restaurant services); In re Computer Systems Center Inc., 5 USPQ2d 1378 (TTAB 1987) (CSC ADVANCED BUSINESS SYSTEMS for retail computer stores held likely to be confused with CSC for computer time sharing and computer programming services); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (RESPONSE held likely to be confused with RESPONSE CARD (with “CARD” disclaimed), both for banking services); In re Apparel Ventures, Inc.,
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229 USPQ 225 (TTAB 1986) (SPARKS BY SASSAFRAS (stylized) for clothing held likely to be confused with SPARKS (stylized) for footwear); In re The U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use); In re Energy Images, Inc., 227 USPQ 572 (TTAB 1985) (SMART-SCAN (stylized) for optical line recognition and digitizing processors held likely to be confused with SMART for remote-data gathering and control systems); In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE and design for automotive service stations held likely to be confused with ACCUTUNE for automotive testing equipment); In re Denisi, 225 USPQ 624 (TTAB 1985) (PERRY’S PIZZA held likely to be confused with PERRY’S, both for restaurant services); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and design (with “CALIFORNIA” disclaimed) held likely to be confused with COLLEGIENNE, both for items of clothing); In re Pierre Fabre S.A., 188 USPQ 691 (TTAB 1975) (PEDI-RELAX for foot cream held likely to be confused with RELAX for antiperspirant).
Exceptions to the above-stated general rule regarding additions or deletions to marks may arise if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different commercial impressions); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844 (TTAB 2008) (Board found no likelihood of confusion between the word and design marks BASS PRO SHOPS SPORTMAN'S WAREHOUSE (with SPORTSMAN’S WAREHOUSE disclaimed) and SPORTSMAN'S WAREHOUSE (with all wording disclaimed) for essentially the same retail store services); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with “CATFISH” disclaimed) for fish held not likely to be confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH’S GOLD’N CRUST and design (with “GOLD’N CRUST” disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics).
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1207.01(b)(iv) Similarity in Sound – Phonetic Equivalents
Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no “correct” pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, “correct” pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that “there is no correct pronunciation of a trademark” and finding ISHINE (stylized) likely to be confused with ICE SHINE, both for floor-finishing preparations); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices); In re Energy Telecommunications & Electrical Ass’n, 222 USPQ 350 (TTAB 1983) (ENTELEC and design for association services in the telecommunication and energy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery).
1207.01(b)(v) Similarity in Meaning
Similarity in meaning or connotation is another factor in determining whether there is a likelihood of confusion between marks. The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. See, e.g., In re M. Serman & Co., Inc., 223 USPQ 52 (TTAB 1984) (CITY WOMAN held likely to be confused with CITY GIRL, both for clothing); Gastown Inc., of Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975) (GAS CITY (“GAS” disclaimed) held likely to be confused with GASTOWN, both for gasoline); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971) (AQUA-CARE (stylized) held likely to be confused with WATERCARE (stylized), both for water-conditioning products).
The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSS-OVER for bras held not likely to be confused with CROSSOVER for ladies’ sportswear, the Board finding that the term was suggestive of the construction of applicant’s bras, but was likely to be perceived by purchasers either as an entirely arbitrary designation or as being suggestive of sportswear that “crosses over” the line between informal and more formal wear when applied to ladies’ sportswear); In re British Bulldog,
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Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men’s underwear held not likely to be confused with PLAYERS for shoes, the Board finding that the term PLAYERS implies a fit, style, color, and durability adapted to outdoor activities when applied to shoes, but “implies something else, primarily indoors in nature” when applied to men’s underwear); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (BOTTOMS UP for ladies’ and children’s underwear held not likely to be confused with BOTTOMS UP for men’s clothing, the Board finding that the term connotes the drinking phrase “Drink Up” when applied to men’s suits, coats, and trousers, but does not have this connotation when applied to ladies’ and children’s underwear).
1207.01(b)(vi) Doctrine of Foreign Equivalents
Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. See, e.g., Continental Nut Co. v. Cordon Bleu, Ltee, 494 F.2d 1397, 181 USPQ 647 (C.C.P.A. 1974); In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (MARCHE NOIR for jewelry held likely to be confused with BLACK MARKET MINERALS for retail jewelry store services); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (BUENOS DIAS for soap held likely to be confused with GOOD MORNING and design for latherless shaving cream); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983) (EL SOL for clothing and footwear held likely to be confused with SUN and design for footwear).
Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet, and LexisNexis® evidence. If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding the Italian language mark LUPO for men’s and boys’ underwear, which translates to mean “wolf,” likely to be confused with WOLF and design for various clothing items, because LUPO had a literal and direct English translation such that the doctrine was applied).
If an examining attorney determines that the doctrine is applicable, the examining attorney must also apply the relevant du Pont factors to assess whether there is a likelihood of confusion between the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re L’Oreal S.A., 222 USPQ 925, 926 (TTAB 1984) (noting that “similarity in connotation [of the marks] must be viewed as but a single factor in the overall evaluation of likelihood of confusion”).
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1207.01(b)(vi)(A) Background
With respect to likelihood of confusion, “[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source.” Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973).
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when the “ordinary American purchaser” would “stop and translate” the foreign wording in a mark. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (reversing finding of likelihood of confusion between VEUVE ROYALE – the French equivalent of “Royal Widow” – and THE WIDOW, both for sparkling wine, deeming it improbable that American purchasers would be aware that “Veuve” means “widow”). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).
With respect to likelihood of confusion, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g., In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re Am. Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). This is the most common scenario in the case law.
The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., 221 USPQ 180, 181-83 (TTAB 1983) (stating that “[i]t seems to us that the fact that both marks may be comprised of foreign words should not mean that we can disregard their meanings. Indeed, we believe that many members of the American public, even those who have only a rudimentary acquaintance with the French language, are likely to understand the significance of the respective terms;” the Board applied the doctrine to the French marks BIEN JOLIE, which means “quite pretty,” and TRES JOLIE, which means “very pretty,” even though it did not find a likelihood of confusion between the marks because of the marks’ highly suggestive nature). In the Lar Mor case, the marks in question consisted of common French terms and, thus, it was perhaps more likely that the ordinary American purchaser would stop and translate such terms. But see Palm Bay, 396 F.3d at 1369, 1377, 73 USPQ2d at 1689, 1696 (finding the doctrine inapplicable to applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but upholding the Board’s likelihood of confusion determination for such marks for other reasons); Brown Shoe Co., Inc. v. Robbins, 90 USPQ2d 1752 (TTAB 2009) (Board did not think
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circumstances in case warranted application of the doctrine, but found a likelihood of confusion between applicant’s Spanish mark PALOMITA and opposer’s Spanish mark PALOMA).
The Board has also applied the doctrine where the wording in one of the marks is in a foreign language and the wording in the other mark or marks is in a different foreign language. See Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (applying the doctrine and finding a likelihood of confusion between the Italian language mark DUE TORRI for wines, which means “two towers,” and the Spanish language marks TORRES for wines and brandy and TRES TORRES for brandy, which mean “towers” and “three towers,” respectively). However, comparing marks in different foreign languages appears to be a rare occurrence. It seems less likely that the ordinary American purchaser would be fluent in two or more foreign languages. See Safeway Stores Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ2d 1980, 1982 (TTAB 1987) (“[T]his Board does not think it proper to take the French expression ‘bel air’ and the Italian expression ‘bel aria’ and then convert both into English and compare the English translations....”). Thus, the doctrine may not be as relevant, and certainly not the sole determinative factor, in a situation such as the Miguel Torres case where the marks were found confusingly similar because they were similar in both sound and meaning.
However, the Board has yet to apply the doctrine in a published decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-language words or terms. In such a case, the issue will likely remain whether the ordinary American purchaser would stop and translate these combined-language marks. The sufficiency of the translation evidence, the nature of the foreign and English combined-wording (i.e., whether the wording is arbitrary, suggestive, generic, etc.), and any other relevant facts and evidence should be considered in these cases.
1207.01(b)(vi)(B) When an Ordinary American Purchaser Would “Stop and Translate”
Issues regarding the doctrine of foreign equivalents arise early in examination, that is, at the time of conducting a search for confusingly similar marks. The search of foreign words in an applied-for mark must include a search of their English translation to ensure that all possible conflicting registrations and prior-filed applications have been identified in the event that the doctrine applies. See TMEP §§809 et seq. for information regarding how to ascertain the meaning of non-English wording in a mark.
After conducting a complete search, an examining attorney must then assess whether a refusal under §2(d) may be warranted. If so, the examining attorney should research the English translation further using available
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resources, such as dictionaries, the Internet, and LexisNexis®, to ascertain whether there is sufficient evidence to support applying the doctrine.
As discussed below, if the evidence shows that the English translation is “literal and direct,” with no contradictory evidence of other relevant meanings or shades of meaning, then the doctrine should be applied, barring unusual circumstances. Further, if in its response to the application of the doctrine applicant argues that the foreign language is rare, obscure, or dead, then the examining attorney will need to provide evidence that the foreign language is a common, modern language.
English Translations – Literal and Direct
The English translation evidence is a critical factor for the courts and the Board when determining whether to apply the doctrine. If the translation evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, the doctrine has generally been applied, and, therefore, should be applied by the examining attorney. See La Peregrina, 86 USPQ2d 1645, 1648-1650 (holding the Spanish language mark LA PEREGRINA for jewelry, pearl jewelry, and precious stones, which translates to mean “the pilgrim,” likely to be confused with PILGRIM for jewelry where the two terms were equivalent in meaning and there was no dictionary evidence to the contrary); In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding the French language mark MARCHE NOIR for jewelry, which is the exact French equivalent of the English idiom “Black Market,” likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services because the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding the Italian language mark LUPO for men’s and boys’ underwear, which translates to mean “wolf,” likely to be confused with WOLF and design for various clothing items); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983) (holding the Spanish language mark EL SOL for clothing likely to be confused with its English language equivalent SUN for footwear where EL SOL was determined to be the “direct foreign language equivalent” of the term SUN); see also Ex parte Odol-Werke Wien Gesellschaft M.B.H., 111 USPQ 286, 286 (Comm’r Pats. 1956) (holding the French language mark CHAT NOIR and its English language equivalent BLACK CAT confusingly similar because they have the same meaning).
When determining the appropriate English translation of the foreign wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. See Perez, 21 USPQ2d at 1075 (holding the Spanish language mark EL GALLO for fresh vegetables, which translates to mean “rooster,” likely to be confused with ROOSTER for fresh citrus fruit where the English translation was the first definition listed in the Spanish- English language dictionary, GALLO was the only listed Spanish translation
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for the English wording ROOSTER, and the design of a rooster on the specimen reinforced the translation of GALLO even though this word had other meanings).
Specifically, the Federal Circuit has stated that “[t]he test to be applied to a foreign word vis-à-vis an English word with respect to equivalency is not less stringent than that applicable to two English words.” In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983).
In contrast, the doctrine has generally not been applied where the evidence shows that the English translation is not exact, literal, or direct. See Sarkli, 721 F.2d at 353, 220 USPQ at 111 (finding REPECHAGE for various skin- care products not to be the French equivalent of SECOND CHANCE for face creams and other toiletries because the translation dictionary evidence showed they were not direct foreign equivalents); see also In re Buckner Enters. Corp., 6 USPQ2d 1316 (TTAB 1987) (finding the Spanish language mark PALOMA, which translates primarily into English to mean “pigeon, dove,” has a different connotation from the cited registration DOVE, and, thus the doctrine was not applied). Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied.
Further, when comparing two different foreign-language marks, the same strict standard regarding equivalency in translation would also apply.
Common, Modern Foreign Languages
The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages. An applicant may respond to the application of the doctrine by arguing that the foreign language is obscure, or not commonly spoken in the United States, and thus the doctrine is inapplicable. If this or a similar argument is set forth, or if the foreign language appears to be obscure or unusual, an examining attorney should provide evidence to show that the foreign language is a common, modern language. The type of evidence will vary depending on the particular facts of the case but, if available, the examining attorney should provide evidence of the percentage or number of United States consumers who speak the language in question. For example:
• Census evidence provided by applicant to show that only 0.6% of the population speak French “very well” or “well” was used by the Board against the applicant to show that, of the foreign languages with the greatest number of speakers in the United States, French was second only to Spanish. Thomas, 79 USPQ2d at 1024.
• Evidence showing that 706,000 Russian-speakers live in the United States was persuasive evidence to establish that a “significant
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portion of consumers” would understand the English meaning of the Russian mark for Russian vodka. In re Joint Stock Co. “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006).
Census evidence identifying the number of people who speak various foreign languages in the United States can be found at http://www.census.gov/population/cen2000/phc-t20/tab05.pdf.
If such evidence is unavailable or unpersuasive, the examining attorney may instead provide other evidence that the language in question is a common, modern language by establishing, for example, that the foreign country(ies) where the language is spoken is a prominent trading partner of the United States or that the foreign language is spoken by a sizeable world population. Such evidence should be obtained from the USPTO’s Translations Branch, as well as the Internet, LexisNexis®, and any other relevant electronic or print resources. See In re Savisa (Pty.) Ltd., Ser. No. 78154196, 2005 TTAB LEXIS 91, at *6-12 (Feb. 24, 2005) (finding Afrikaans to be a common, modern, and not-obscure language and applying the doctrine even though the applicant submitted evidence that only .096% of Americans spoke Afrikaans where the examining attorney submitted a report from the USPTO translator stating that Afrikaans is a well-established language recognized by all of the advanced and developed nations, it is a form of old Dutch and is a European language that is familiar in the United States, and it is one of the principal Germanic languages spoken by more than twenty million people; the Board took judicial notice of the following sources: World Almanac and Book of Facts 2004 (W. McGeveren, editorial dir.) which states that six million people speak the language, with significant numbers in ten countries; Facts About the World’s Languages: An Encyclopedia of the World’s Major Languages, Past and Present (J. Garry & C. Rubino eds., 2001), which states that Afrikaans is the home language of 6.2 million people in South Africa (out of a total population of 44 million people); and the language was spoken as a second or third language by an indeterminate but very large number of Black South Africans (who speak Bantu languages), Asians, and English-speaking Whites).
Common, modern languages have been found to include Spanish, French, Italian, German, Chinese, Japanese, Russian, Polish, Hungarian, Serbian, and Yiddish. See, e.g., Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411 (C.C.P.A. 1961) (Hungarian); La Peregrina, 86 USPQ2d at 1648 (Spanish); Joint-Stock Co. “Baik,” 80 USPQ2d at 1305 (Russian); Perez, 21 USPQ2d at 1075 (Spanish); In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986) (Chinese); Ithaca Indus., 230 USPQ at 702 (Italian); In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983) (German); In re Westbrae Natural Foods, Inc., 211 USPQ 642 (TTAB 1981) (Japanese); In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (French); In re Bagel Nosh, Inc., 193 USPQ 316 (TTAB 1976) (Yiddish); In re
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Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967) (Serbian); In re New Yorker Cheese Co., 130 USPQ 120 (TTAB 1961) (Polish).
If evidence shows that the language at issue is highly obscure or a dead language, the doctrine will generally not be applied. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 54 USPQ2d 1497 (5th Cir. 2000), reh’g denied 218 F.3d 745 (2000). The determination of whether a language is “dead” must be made on a case-by-case basis, based upon the meaning the word or term would have to the relevant purchasing public. For example, Latin is generally considered a dead language. However, if evidence shows that a Latin term is still in use by the relevant purchasing public (i.e., if the term appears in current dictionaries or news articles), then this Latin term would not be considered dead. The same analysis is applied to other words or terms from uncommon or obscure languages.
Other Considerations: Alternate Meaning of Mark and Marketplace Circumstances of the Commercial Setting in Which the Mark is Used
The Board, generally, will also review the evidence of record to determine the following:
(1) Whether the foreign wording has a meaning in the relevant marketplace that differs from the translated meaning in English; and
(2) Whether it is more or less likely that the foreign expression will be translated by purchasers because of the manner in which the term is encountered in the marketing environment as used in connection with the goods and/or services.
See Thomas, 79 USPQ2d at 1025-26; see also Jos. Schlitz Brewing Co., 223 USPQ at 45; Optica Int’l, 196 USPQ at 777. In making such determinations, the Board has generally reviewed such evidence as dictionary definitions, declarations, and specimens.
Typically, the doctrine will not be applied where the foreign wording has developed an alternate meaning in the relevant marketplace that is different from the translated meaning in English, and the evidence shows that the alternate meaning would be understood by the relevant purchasing public. See Cont’l Nut Co. v. Le Cordon Bleu S.A.R.L., 494 F.2d 1395, 1396-97, 181 USPQ 646, 647 (C.C.P.A. 1974) (finding that the French language mark CORDON BLEU, which translates to mean “blue ribbon,” would not be translated by or have the same significance to an American purchaser because of the adoption of the wording CORDON BLEU into English, as evidenced by American dictionary entries indicating that such wording refers to a cook of great skiln( � cf. La Peregrina, 86 USPQ2d at 1649 (finding that if sufficient evidence had been provided to show that the Spanish-language mark LA PEREGRINA, which translates to mean “the pilgrim,” for goods including pearls and pearl jewelry, was viewed by the relevant purchasing
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public as the “name of a very famous and unique pearl,” such would be a situation “where purchasers would not translate the name”).
The doctrine also typically will not be applied where the record indicates that it is unlikely purchasers would translate the mark because of “marketplace circumstances or the commercial setting in which the mark is used.” La Peregrina, 86 USPQ2d at 1648; Thomas, 79 USPQ2d at 1026. For example, the doctrine may not be applied where it is unlikely that purchasers will translate the foreign expression because of the manner in which the foreign term is used on the specimen. See In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976) (finding that the Spanish language mark LA POSADA for lodging and restaurant services, which translates to mean “the inn,” would not likely be translated by American purchasers because of the manner of use of the mark on applicant’s specimens, in which applicant used the mark in advertising brochures and on a sign mounted in front of its motor hotel with the words “motor hotel” appearing directly under the notation LA POSADA). Further, the doctrine may not be applied due to marketplace circumstances, which include differing channels of trade for the relevant goods and/or services. See In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975) (finding that the Spanish language mark TIA MARIA for restaurant services, which translates to mean “Aunt Mary,” when compared with the registered mark AUNT MARY’S for canned fruits and vegetables, would not likely be translated by American purchasers because a person who had purchased Aunt Mary’s canned fruits and vegetables from a supermarket would, upon dining at the TIA MARIA restaurant surrounded by its Mexican décor and serving Mexican food, not likely translate TIA MARIA into AUNT MARY).
1207.01(b)(vi)(C) Likelihood of Confusion Factors Still Apply When Assessing Whether Marks are Confusingly Similar
If the examining attorney has sufficient evidence to show that the foreign wording has a relevant, literal, and direct English translation such that the foreign wording has an English language equivalent, then the doctrine generally should be applied to the foreign wording in a mark or marks. However, applying the doctrine is only part of the process of determining whether the marks being compared are confusingly similar. Appearance, sound, meaning, and commercial impression are also factors to be considered when comparing marks. See Palm Bay, 396 F.3d at 1371, 73 USPQ2d at 1691 (citing E.I. du Pont, 476 F.2d at 1361, 177 USPQ at 567).
Similarity of the marks in one respect – sight, sound, or meaning – does not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related. Rather, the rule is that, taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); TMEP §1207.01(b)(i).
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For example, if the English and foreign marks being compared are weak or highly suggestive, or have additional wording or matter that serves to distinguish the marks, then regardless of application of the doctrine and similarity in meaning, the marks may not be considered confusingly similar. See In re Ness & Co., 18 USPQ2d 1815 (TTAB 1991) (finding no likelihood of confusion between the French mark LABONTE, which means “the goodness,” and the mark GOOD-NESS for the same goods because of the laudatory nature of the marks, the dissimilarity in sight and sound, the slight differences in meaning, and the connotation of the mark GOOD-NESS in relation to applicant’s company name “Ness & Co.”); L’Oreal, 222 USPQ at 925 (applying the doctrine to the French mark HAUTE MODE, which means “high fashion,” but finding no likelihood of confusion between the mark and HI- FASHION SAMPLER because of the suggestive nature of the marks and because of the differences in the marks due to the addition of the term SAMPLER in the English-language mark).
If both marks being compared are in a foreign language, and application of the doctrine shows that these marks have the same or a very similar meaning, the following factors should also be assessed: (1) whether the English meaning of the marks is weak or highly suggestive with respect to the goods and/or services; and (2) whether the marks being compared are similar in sound and/or appearance in addition to having the same or similar meaning. If the marks are not weak or highly suggestive and are similar in meaning and sound, such marks have been found confusingly similar. See Miguel Torres S.A., 49 USPQ2d at 2018 (applying the doctrine and holding the Italian language mark DUE TORRI for wines, which means “two towers,” likely to be confused with the Spanish language mark TORRES for wines and brandy and TRES TORRES for brandy, which mean “tower” and “three towers,” respectively, because the marks were similar in sound and connotation); Lar Mor, 221 USPQ at 180 (applying the doctrine to the French marks BIEN JOLIE, which means “quite pretty,” and TRES JOLIE, which means “very pretty,” but holding no likelihood of confusion between the marks, even though the goods were related clothing products, because of the highly laudatory or suggestive nature of the marks’ English translations and because of the marks’ differences in sound and appearance).
In addition, when comparing only foreign marks, even if it is determined that the doctrine does not apply, the marks may still be found confusingly similar for other reasons, such as similarity in sound and/or appearance. See Palm Bay, 396 F.3d 1369, 73 USPQ2d 1689 (finding the doctrine inapplicable to applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but upholding the Board’s likelihood of confusion determination for such marks for other reasons).
See also TMEP §§1209.03(g), 1210.05(b), 1210.10, and 1211.01(a)(vii) regarding the doctrine of foreign equivalents.
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1207.01(b)(vii) Transposition of Terms
Where the primary difference between marks is the transposition of the elements that compose the marks, and where this transposition does not change the overall commercial impression, there may be a likelihood of confusion. See, e.g., In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA and design, for “wine club membership services including the supplying of printed materials, sale of wines to members, conducting wine tasting sessions and recommending specific restaurants offering wines sold by applicant,” held likely to be confused with AMERICAN WINE SOCIETY 1967 and design, for a newsletter, bulletin, and journal of interest to members of the registrant); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (RUST BUSTER (with “RUST” disclaimed) for rust-penetrating spray lubricant held likely to be confused with BUST RUST for penetrating oin( � In re General Tire & Rubber Co., 213 USPQ 870 (TTAB 1982) (SPRINT STEEL RADIAL (with “STEEL” and “RADIAL” disclaimed) for tires held likely to be confused with RADIAL SPRINT (with “RADIAL” disclaimed) for tires).
However, if the transposed mark creates a distinctly different commercial impression, then confusion is not likely. See, e.g., In re Best Products Co., Inc., 231 USPQ 988 (TTAB 1986) (BEST JEWELRY and design (with “JEWELRY” disclaimed) for retail jewelry store services held not likely to be confused with JEWELERS’ BEST for jewelry).
1207.01(b)(viii) Marks Consisting of Multiple Words
When assessing the likelihood of confusion between compound word marks, one must determine whether a portion of the word mark is dominant in terms of creating the commercial impression. Although there is no mechanical test to select a “dominant” element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. Accordingly, if two marks for related goods or services share the same dominant feature and the marks, when viewed in their entireties, create similar overall commercial impressions, then confusion is likely. See In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) (JM ORIGINALS (with “ORIGINALS” disclaimed) for various items of apparel held likely to be confused with JM COLLECTABLES for “knitwear – namely, sport shirts”).
If the common element of two marks is “weak” in that it is generic, descriptive, or highly suggestive of the named goods or services, consumers typically will be able to avoid confusion unless the overall combinations have other commonality. See, e.g., In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes held not likely to be confused with BED & BREAKFAST INTERNATIONAL for room booking agency
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services); The U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (COBBLER’S OUTLET for shoes held not likely to be confused with CALIFORNIA COBBLERS (stylized) for shoes); In re Istituto Sieroterapico E Vaccinogeno, Toscano “SCLAVO” S.p.A., 226 USPQ 1035 (TTAB 1985) (ASO QUANTUM (with “ASO” disclaimed) for diagnostic laboratory reagents held not likely to be confused with QUANTUM I for laboratory instrument for analyzing body fluids). See also TMEP §1207.01(b)(ix).
In a sense, the public can be said to rely more on the nondescriptive portions of each mark. On the other hand, this does not mean that the public looks only at the differences, or that the descriptive words play no role in creating confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (THE CASH MANAGEMENT EXCHANGE (with “CASH MANAGEMENT” disclaimed) for computerized cash management services held likely to be confused with CASH MANAGEMENT ACCOUNT for various financial services).
1207.01(b)(ix) Weak or Descriptive Marks
The Trademark Trial and Appeal Board and the courts have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. Benjamin J. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006); In re Central Soya Co., Inc., 220 USPQ 914 (TTAB 1984). However, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (C.C.P.A. 1974).
In In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975), the Board stated:
[R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. (citation omitted.) This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as “weak” marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods.
However, even marks that are registered on the Supplemental Register may be cited under §2(d). In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (C.C.P.A. 1978).
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1207.01(b)(x) Parody Marks
Parody is not a defense to a likelihood of confusion refusal. There are confusing parodies and non-confusing parodies. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §31.153 (4th ed. 2006). A true parody actually decreases the likelihood of confusion because the effect of the parody is to create a distinction in the viewer’s mind between the actual product and the joke. While a parody must call to mind the actual product to be successful, the same success also necessarily distinguishes the parody from the actual product. Mutual of Omaha Insurance Co. v. Novak, 648 F. Supp. 905, 231 USPQ 963 (D. Neb. 1986), aff’d, 836 F.2d 397, 5 USPQ2d 1314 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988).
Another example of parody can be found in Columbia Pictures Industries Inc., v. Miller, 211 USPQ 816 (TTAB 1981) (CLOTHES ENCOUNTERS held likely to be confused with CLOSE ENCOUNTERS OF THE THIRD KIND, for men’s and women’s clothing); see also Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741 (TTAB 2006) (LESSBUCKS COFFEE held not likely to be perceived as a parody of the mark STARBUCKS and, therefore, likely to be confused with STARBUCKS COFFEE for coffee and retail store services featuring coffee); cf. Jordache Enterprises, Inc. v. Hogg Wyld, Inc., 828 F.2d 1482, 4 USPQ2d 1216 (10th Cir. 1987) (LARDASHE for pants was not an infringement of the JORDACHE mark).
1207.01(c) Design Marks
When the marks at issue are both design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. In this situation, consideration must be given to the fact that a purchaser’s recollection of design marks is often of a general and hazy nature. See, e.g., Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988) (stylized house design for “management of real estate properties for others” held not likely to be confused with stylized house design for real estate brokerage services); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (silhouette of two profiles facing right within a teardrop background for “distributorship services in the field of health and beauty aids” held likely to be confused with silhouette of two profiles facing left within an oval background for skin cream); Ocean Spray Cranberries, Inc. v. Ocean Garden Products, Inc., 223 USPQ 1027 (TTAB 1984) (abstract circular design mark for seafood held not likely to be confused with oval breaking wave design for various food items including juices and fruits); In re Steury Corp., 189 USPQ 353 (TTAB 1975) (design comprised of three generally horizontal bars for boats and camper trailers held likely to be confused with design comprised of two generally horizontal bars for boats and campers); Matsushita Electric Industrial Co., Ltd. v. Sanders Associates, Inc., 177 USPQ 720 (TTAB 1973) (triangular arrow design within a square border for various items of electrical and electronic equipment held likely to be confused with
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triangular arrow design for various items of electrical and electronic components and equipment).
1207.01(c)(i) Legal Equivalents – Comparison of Words and Their Equivalent Designs
Under the doctrine of legal equivalents, a pictorial representation and its literal equivalent may be found to be confusingly similar. This doctrine is based on a recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers. See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (design comprising the silhouette of the head of a lion and the letter “L” for shoes held likely to be confused with LION for shoes); Puma-Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984) (designs of mountain lion, for shirts and tops, held confusingly similar to PUMA, for items of clothing; the design of a puma, for items of sporting goods and clothing; and PUMA and design, for T-shirts); In re Duofold Inc., 184 USPQ 638 (TTAB 1974) (design of eagle lined for the color gold, for various items of sports apparel, held likely to be confused with GOLDEN EAGLE and design of an eagle, for various items of clothing).
1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs
Often, the examining attorney must determine whether a likelihood of confusion exists between composite marks that consist of a design element as well as words and/or letters. Frequently, the marks at issue are similar in only one element. Although it is not proper to dissect a mark, if one feature of a mark is more significant than another feature, greater weight may be given to the dominant feature for purposes of determining likelihood of confusion. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). However, the fundamental rule in this situation is that the marks must be considered in their entireties. See Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (C.C.P.A. 1974).
If a mark comprises both a word and a design, greater weight is often given to the word, because it is the word that purchasers would use to refer to or request the goods or services. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (APPETITO and design of two broad stripes lined for the colors red and green, for Italian sausage, held likely to be confused with A APPETITO’S and design and A APPETITO’S INC. and design of a sandwich (with “INC.” and sandwich design disclaimed), both for restaurant services). The Court of Appeals for the Federal Circuit has cautioned, however, that “[t]here is no general rule as to whether letters or designs will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue.” In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (K+ and design for dietary
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potassium supplement held not likely to be confused with K+EFF (stylized) for dietary potassium supplement).
The comparison of composite marks must be done on a case-by-case basis, without reliance on mechanical rules of construction. See, e.g., Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) (finding a likelihood of confusion between SPICE VALLEY and SPICE ISLANDS, both for tea); Spice Islands, Inc. v. The Frank Tea & Spice Co., 505 F.2d 1293, 184 USPQ 35 (C.C.P.A. 1974) (SPICE TREE and tree design held not confusingly similar to SPICE ISLANDS and tree design, both for spices); In re Sun Supermarkets, Inc., 228 USPQ 693 (TTAB 1986) (SUN SUPERMARKETS and design of sun held likely to be confused with SUNSHINE and design of sun and SUNRISE and design of sun, all for retail grocery store services).
1207.01(c)(iii) Comparison of Standard Character Marks and Special Form Marks
If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Products Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1751 (TTAB 1987); In re Hester Industries, Inc., 231 USPQ 881, 883, n.6 (TTAB 1986).
1207.01(c)(iv) Matter Depicted in Broken Lines
In some cases, where the position of the mark on the goods (or on a label or container for the goods) is a feature of the mark, the applicant will 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. 37 C.F.R. §2.52(b)(4); TMEP §807.08.
The matter depicted in broken lines is not part of the mark and should not be considered in determining likelihood of confusion. In re Homeland Vinyl Products, Inc., 81 USPQ2d 1378 (TTAB 2006).
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1207.01(d) Miscellaneous Considerations
1207.01(d)(i) Doubt Resolved in Favor of Registrant
If there is any doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the prior registrant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
1207.01(d)(ii) Absence of Actual Confusion
It is well settled that the relevant test is likelihood of confusion, not actual confusion. It is unnecessary to show actual confusion to establish likelihood of confusion. Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.
1207.01(d)(iii) Third-Party Registrations and Evidence of Third-Party Use
Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. Third-party registrations may be relevant to show that the mark or a portion of the mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269-70 (C.C.P.A. 1973); Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used. See, e.g., Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 675, 223 USPQ 1281, 1285 (Fed. Cir. 1984); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911 (TTAB 1988); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987).
Third-party registrations that cover a number of different goods or services have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. However, registrations issued under 15 U.S.C. §1126(e), based on a foreign registration, have very little, if any, persuasive value. In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988).
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A list of registrations or a copy of a search report is not proper evidence of third-party registrations. To make registrations of record, soft copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic search records of the USPTO) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). See TMEP §710.03.
Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, this evidence “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).
1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant’s nonuse of the mark). See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).
It is also inappropriate for the applicant to place the burden of showing a likelihood of confusion on the owner of the cited registration. In re Majestic Distilling Co., 315 F.3d 1311, 1318, 65 USPQ2d 1201, 1206 (Fed. Cir. 2003) (“[I]t is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks.... [I]t is no answer for the applicant to ask that the application be passed to publication to see whether the owner of the cited mark will oppose the registration,” quoting Dixie Restaurants, 105 F.3d at 1408, 41 USPQ2d at 1535.).
1207.01(d)(v) Classification of Goods/Services
The classification of goods and services has no bearing on the question of likelihood of confusion. Rather, it is the manner in which the applicant and/or
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registrant have identified their goods or services that is controlling. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993); National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990).
1207.01(d)(vi) Prior Decisions of Examining Attorneys
Each case must be decided on its own merits. Previous decisions by examining attorneys in approving other marks are without evidentiary value and are not binding on the agency or the Board. In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984).
1207.01(d)(vii) Sophisticated Purchasers
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). However, circumstances suggesting care in purchasing may tend to minimize likelihood of confusion.
1207.01(d)(viii) Consent Agreements
The term “consent agreement” generally refers to an agreement in which a party (e.g., a prior registrant) consents to the registration of a mark by another party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of the same mark or a similar mark by the other party.
A consent agreement may be submitted by the applicant to overcome a refusal of registration under §2(d) of the Act, or in anticipation of a refusal to register. When a consent agreement is submitted, the examining attorney will consider the agreement, and all other evidence in the record, to determine likelihood of confusion. The examining attorney may not solicit a consent agreement.
Consents come in different forms and under circumstances in infinite variety. They are, however, but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d). In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985).
A consent agreement must be signed by the owner of the application or registration, or by someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership).
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In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1363, 177 USPQ 563, 568 (C.C.P.A. 1973), the Court of Customs and Patent Appeals stated as follows:
[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
A consent agreement that is not merely a “naked” consent typically details reasons why no likelihood of confusion exists and/or arrangements undertaken by the parties to avoid confusing the public. In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent agreement found to be “naked” because the agreement did not restrict the markets in such a way as to avoid confusion).
The Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other factors clearly dictate a finding of likelihood of confusion. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Bongrain Int’l (American) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); and In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985).
Compare In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987) (refusal to register affirmed even with a consent to register, where applicant had not used the mark in commerce and the consent agreement contained contradictory statements).
The examining attorney should give great weight to a proper consent agreement. The examining attorney should not interpose his or her own judgment concerning likelihood of confusion when an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion.
A consent agreement is not the same as a “concurrent use” agreement. The term “concurrent use” is a term of art that refers to a geographical restriction on the registration. See TMEP §§1207.04 et seq. regarding concurrent use.
1207.01(d)(ix) Fame of Mark
The fame of a registered mark is a factor to be considered in determining likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
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1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Famous marks enjoy a wide latitude of legal protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) (Trademark Trial and Appeal Board erred in discounting the fame of opposer’s marks ACOUSTIC WAVE and WAVE); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (Board erred in limiting the weight accorded to the fame of opposer’s FRITO-LAY mark); Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 352-353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506 U.S. 862 (1992) (Board erred in discounting the fame of opposer’s mark PLAY-DOH). The Court of Appeals for the Federal Circuit has stated:
[A] mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.
Achieving fame for a mark in a marketplace where countless symbols clamor for public attention often requires a very distinct mark, enormous advertising investments, and a product of lasting value. After earning fame, a mark benefits not only its owner, but the consumers who rely on the symbols to identify the source of a desired product. Both the mark’s fame and the consumer’s trust in that symbol, however, are subject to exploitation by free riders.
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456.
When present, the fame of the mark is “a dominant factor in the likelihood of confusion analysis for a famous mark, independent of the consideration of the relatedness of the goods.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1328, 54 USPQ2d 1894, 1898. Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1750 (TTAB 2006) (“As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines.”). However, like the other du Pont factors, the fame of a mark may be considered only if there is relevant evidence of record. See TMEP §1207.01 and cases cited therein.
In view of the wide latitude of legal protection afforded to a famous mark, and the dominant role fame plays in the likelihood of confusion analysis, a party who asserts that its mark is famous must clearly establish that its mark is viewed by relevant purchasers as a famous mark. Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005) (Board rejected opposer’s argument that its mark was famous, noting that there was no evidence regarding the nature and extent of opposer’s promotion of its mark, no figures as to volume of sales or advertising expenditures, and no evidence showing recognition of the name by relevant purchasers as a famous mark; while the
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evidence showed that the opposer’s mark had appeared in printed publications, on the Internet, and in recorded broadcasts and as a result had achieved a degree of recognition as a strong and distinctive mark for entertainment services, the evidence was insufficient to show that consumers had been so exposed to the mark that it would be considered a famous mark).
It is not necessary to show recognition by every segment of the population. When determining likelihood of confusion, fame is measured with regard to “the class of customers and potential customers of a product or service, and not the general public.” Palm Bay Imports, 396 F.3d at 1375, 73 USPQ2d at 1695. Thus, the Federal Circuit affirmed the finding that VEUVE CLICQUOT had achieved fame among purchasers of champagne and sparkling wine, where the record showed that sales volume and advertising expenditures over a 15-year period were “substantial;” that VEUVE CLICQUOT was the second leading brand sold in the United States, sold in 8,000 restaurants nationwide, and in liquor stores, wine shops, and other establishments; that the product was advertised in general interest and wine specialty magazines, on the radio, on the Internet, and through point-of-sale displays, wine tastings, and sponsorship of events; and that the product had been featured in articles and reviews in both specialized and general interest magazines. Id. See also ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351 (TTAB 2007) (Board found that PROQUEST, though not famous to members of the general public at large, had achieved “niche market fame” within the academic, research, and education fields, i.e., had achieved such a level of fame that nearly everyone in those fields recognizes the mark.)
Direct evidence of consumer recognition of a mark is not necessary. The “fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident.” See Bose, 293 F.3d at 1371, 63 USPQ2d at 1305, and cases cited therein. It is important to consider the context of how the proposed mark is presented in sales and advertising materials. In Bose, the Court found that evidence of extensive sales and advertising expenses established the fame of opposer’s WAVE and ACOUSTIC WAVE marks, noting that opposer’s sales literature, advertisements, and promotional materials included frequent and prominent references to the marked product separate and apart from the house mark BOSE. In Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983), the court found that the mark GIANT FOOD was famous based on 45 years of use, sales in excess of $1 billion per year, extensive media exposure, and prominent display on the facade of supermarkets. However, in Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004), the court found that evidence of more than $5 million annual sales of products bearing the mark, over 100 years of use, and advertising expenditure of hundreds of thousands of dollars
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per year was insufficient to establish that RITZ had achieved the extensive public recognition of a famous mark.
In Tiffany & Broadway v. Commissioner, 167 F. Supp. 2d 949 (S.D. Tex. 2001), the fame of four registered marks cited against the applicant was a significant factor in finding a likelihood of confusion between applicant’s TIFFANY for ladies’ dress shoes and registrant’s TIFFANY and TIFFANY & CO. for a variety of goods, including jewelry, china, silverware, glassware, leather goods, belt buckles, ties, scarves, clocks, watches, brushes, and lamps, and for retail store services specializing in the sale of jewelry, watches, clocks, and gift items. The record included excerpts from 18 news articles where the registrant Tiffany & Company was identified as a famous business; citations to three published decisions in which the fame of the TIFFANY mark had been judicially recognized; and evidence that the registrant’s goods were sold at over 60 Tiffany locations worldwide – including 34 in the United States – and through independently owned retail stores and mail-order outlets.
Fame for likelihood of confusion purposes and fame for dilution purposes, 15 U.S.C. §1125(c), are distinct concepts. Fame for dilution purposes is an either/or proposition, whereas the “fame” factor in the likelihood of confusion analysis varies along a spectrum from very strong to very weak. Palm Bay Imports, 396 F.3d at 1374-75, 73 USPQ2d at 1694.
In an ex parte proceeding, the Board normally does not expect the examining attorney to submit evidence as to the fame of the cited mark. Therefore, in an analysis of the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) for determining likelihood of confusion (see TMEP §1207.01), the “fame of the mark” factor is normally treated as neutral. In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006).
1207.01(d)(x) Conflicting Marks Owned by Different Parties
During the examination of an application, the examining attorney should consider separately each registration found in a search of the marks registered in the USPTO that may bar registration of the applicant’s mark under §2(d). If the examining attorney finds registrations that appear to be owned by more than one registrant, he or she should consider the extent to which dilution may indicate that there is no likelihood of confusion. However, the examining attorney must cite all the marks that are considered to be a bar to registration of the mark presented in the application, even if they are owned by different parties. The examining attorney should always explain the reason that the mark in each cited registration is grounds for refusal under §2(d).
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1207.01(d)(xi) Family of Marks
A family of marks is defined as a group of marks sharing a common element. The common element may be a term, a phrase, or a component in the nature of a prefix or suffix. The family of marks doctrine may be invoked by a plaintiff in inter partes proceedings relating to likelihood of confusion, but is not available to a defendant as a defense against an opposer’s or applicant’s intervening rights. Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB 1992). Moreover, a family of marks argument is not available to an applicant seeking to overcome a likelihood of confusion refusal in an ex parte appeal. In an ex parte case, the focus of the likelihood of confusion analysis must be on the mark applicant seeks to register, not other marks applicant may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Lar Mor Int’l, Inc., 221 USPQ 180 (TTAB 1983); In re Ald, Inc., 148 USPQ 520 (TTAB 1965).
It has also been noted that, in ex parte proceedings, examining attorneys do not have access to the evidence and information needed to establish whether a family of marks exists. In re Mobay Chemical Co., 166 USPQ 218 (TTAB 1970). Therefore, examining attorneys should refrain from invoking the family of marks doctrine or from referring to a family of marks in a likelihood of confusion analysis. Id.
The Federal Circuit states that “[a] family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462 (Fed. Cir. 1991) (the Federal Circuit affirmed Board’s refusal to register MCPRETZEL and MCDUGAL MCPRETZEL because of likelihood of confusion with the MC and MAC family of marks which include the marks EGG MCMUFFIN, CHICKEN MCNUGGETS, and MCPIZZA); Black and Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (Board sustained opposition to register DIRT HAWG and WATER HAWG because these marks are likely to cause consumer confusion with opposer’s family of HOG marks, such as HEDGE HOG, EDGE HOG, GRASS HOG, LAWN HOG, LEAF HOG, and LOG HOG).
Merely using or registering a series of marks containing a common characteristic is insufficient to establish a family of marks. “There must be recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.” J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462 (Fed. Cir. 1991). See also Eveready Battery Co., Inc. v. Green Planet, Inc., 91 USPQ2d 1511 (TTAB 2009) (Board ruled that owning and using a number of marks sharing a common feature is insufficient to demonstrate that there is a family of marks in absence of evidence that the owner advertises or promotes the various marks in a way that creates a common exposure and common recognition that the marks
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come from the same owner). That is, consumers must see that marks with a shared element originate from the same source. Consumers must also recognize that the common characteristic in a family of marks is itself a trademark and distinct on its own. White Heather Distiller, Ltd. V. American Distilling Co., 200 USPQ 466, 470 (TTAB 1978). Public perception and recognition of the family is crucial for establishing a family of marks. When comparing marks, the focus is not on whether an applicant’s mark is the same as, or similar to, an opposer’s individual marks; rather, the focus is on whether an applicant’s mark may be viewed as a member of an opposer’s family of marks. Black and Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1491 (TTAB 2007).
The determination of whether a family of marks exists is a question of fact, taking into consideration the distinctiveness of the common characteristic shared by the family of marks, and the competency of the evidence establishing the nature of the use, advertising, and promotion of the family of marks as well as joint advertising and promotion of the family of marks as a unit to create an association of common origin of all marks. AM General Corp. v. DaimlerChrysler Corp., 65 USPQ2d 1001, 1013 (7th Cir. 2002). As in any determination of a likelihood of confusion, the more distinctive or arbitrary the common characteristic is, the more weight it will be given in determining likelihood of confusion. See TMEP §1207.01(b)(ix). Alternatively, the more descriptive or generic the common characteristic is, the less weight it will be accorded in determining likelihood of confusion. American Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457 (TTAB 1978) (no AQUA family of marks for faucets); Champion Int’l Corp. v. Plexowood, Inc., 191 USPQ 160 (TTAB 1976) (no FLEX family of marks for flexible sheet materian( � Cambridge Filter Corp. v. Servodyne Corp., 189 USPQ 99 (TTAB 1975) (no CAP or FLO family of marks for air filters); Ft. Howard Paper Co. v. Nice-Pak Products, Inc., 127 USPQ 431, 433 (TTAB 1960) (no NAP family of marks for napkins since NAP is derived from “napkin”).
1207.02 Marks That Are Likely to Deceive
In addition to referring to a mark that so resembles another mark as to be likely to cause confusion or mistake, §2(d) refers to a mark being likely “to deceive.” As a practical matter, this provision is rarely applied in examination, because deceptiveness involves intent and would be difficult to prove in an ex parte proceeding.
1207.03 Marks Previously Used in United States but Not Registered
As a basis for refusal, §2(d) refers not only to registered marks but also to “a mark or trade name previously used in the United States by another and not abandoned.” Refusal on the basis of an unregistered mark or trade name has, sometimes, been referred to as refusal on the basis of a “known mark.”
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This provision is not applied in ex parte examination because of the practical difficulties with which an examining attorney is faced in locating “previously used” marks, and determining whether anyone has rights in them and whether they are “not abandoned.”
1207.04 Concurrent Use Registration
1207.04(a) Concurrent Use – In General
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), contains a proviso under which an eligible applicant may request issuance of a registration concurrent with the registration of a conflicting mark.
In a concurrent use application, the applicant normally requests a geographically restricted registration. The applicant seeks registration for a specified geographical area of the United States and lists one or more parties who concededly have rights in the mark in other geographical areas of the United States. These other parties may own applications or registrations, or they may have common law rights in a mark, but no application or registration. “Incontestable” registrations (i.e., where the registrant’s right to use the mark has become incontestable pursuant to 15 U.S.C. §1065) are subject to concurrent use registration proceedings. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (C.C.P.A. 1976); Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330 (TTAB 1980).
Registrations and applications to register on the Supplemental Register and registrations under the Act of 1920 (see TMEP §1601.05) are not subject to concurrent use registration proceedings. 37 C.F.R. §2.99(g).
Concurrent use registration is requested by the applicant; it should not be suggested or initiated by the examining attorney.
1207.04(b) Filing Basis of Application Seeking Concurrent Use
In an application based on use in commerce under 15 U.S.C. §1051(a), the applicant may seek concurrent use registration at the time the application is filed or in a subsequent amendment. See 37 C.F.R. §2.73.
In an application based on a bona fide intent to use the mark in commerce under 15 U.S.C. §1051(b), the applicant may not amend to seek concurrent use registration until the applicant files an acceptable allegation of use. 37 C.F.R. §§2.73 and 2.99(g).
Applications based solely on §44 or §66(a) of the Trademark Act are not subject to concurrent use registration proceedings. 37 C.F.R. §2.99(g). See notice at 73 FR 67759 (Nov. 17, 2008).
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1207.04(c) Basis for Concurrent Use Registration
If an applicant requests a concurrent use registration, the examining attorney must first determine the basis for seeking such a registration. An application for registration as a concurrent user is either: (1) subject to a concurrent use registration proceeding before the Trademark Trial and Appeal Board; or (2) pursuant to the final determination by a court of competent jurisdiction of the concurrent rights of the parties to use the same or similar marks in commerce. See 15 U.S.C. §1052(d); 37 C.F.R. §2.99.
1207.04(d) Determining Eligibility for Concurrent Use
An applicant is eligible to request a registration subject to concurrent use if it meets one or more of the following criteria:
(1) The concurrent use request is sought pursuant to a decree of a court of competent jurisdiction reflecting its final determination of the rights of the concurrent user;
(2) The owner of the registration consents to the grant of a concurrent use registration to the applicant; or
(3) The applicant’s date of first use in commerce is before the filing date of the pending applications or of any registrations issued under the Trademark Act of 1946. When a party specified as an excepted user does not own an application or registration, the applicant’s date of first use in commerce is before the filing date of any application to register the mark that may be filed by the excepted user.
15 U.S.C. §1052(d). The applicant has the burden of proving that it is entitled to a concurrent use registration. 37 C.F.R. §2.99(e).
1207.04(d)(i) Requirements for All Concurrent Use Applications
An application for registration as a lawful concurrent user is generally examined in the same manner as any other application for registration. 37 C.F.R. §2.99(a). The examining attorney must examine the application to determine whether it complies with the relevant requirements for a non- restricted application. Additionally, the applicant must comply with the following requirements in a concurrent use application:
(1) The applicant must specify the goods and the geographic area for which the applicant seeks registration of the mark. 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.42. The applicant must also set forth the mode of use. 15 U.S.C. §1052(d); 37 C.F.R. §2.42.
(2) The applicant must specify, to the extent of its knowledge, the exceptions to its claim of exclusive use, listing any concurrent use by
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others and the relevant goods, geographic areas, and periods of this use. 15 U.S.C. §1051(a)(3)(D); 37 C.F.R. §2.42.
(3) The applicant must also list the names and addresses of the concurrent users, the registrations issued to or applications filed by them (if any), and the mode of such use. 37 C.F.R. §2.42.
(4) The verification for concurrent use should be modified to indicate an exception, that no one else except as specified in the application has the right to use the mark. 15 U.S.C. §1051(a)(3)(D). See TMEP §804.02.
The applicant does not have to insert the stated exceptions in the verification or declaration; the exceptions may be set forth anywhere in the application.
In addition to the requirements noted above, which apply to all applications for concurrent use registration, concurrent use applications must meet other conditions, depending on whether the application is subject to a concurrent use proceeding before the Board (see TMEP §§1207.04(e) et seq.) or pursuant to the decree of a court (see TMEP §§1207.04(f) et seq.).
1207.04(e) Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board
If an application for concurrent use registration complies with the requirements listed above and it appears that the applicant is entitled to registration but for the question of concurrent rights, the examining attorney will approve the application for publication subject to a concurrent use registration proceeding. 15 U.S.C. §1062(a).
Ordinarily, the examining attorney should not require an applicant for concurrent use registration to submit evidence in support of its claim to concurrent rights. However, the examining attorney should refuse registration under §2(d) if the applicant has requested a concurrent use registration and information in the record suggests that the applicant has not met the basic requirements for concurrent use registration (e.g., if the application indicates that the applicant adopted and used the mark with knowledge of the rights of a person specified as an excepted user, or that actual confusion has resulted from the concurrent use of the marks of the parties in their respective geographic areas). See In re Place for Vision, Inc., 196 USPQ 267, 269-70 (TTAB 1977). Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306 (Fed. Cir. 1987), aff’g 229 USPQ 474 (TTAB 1986).
1207.04(e)(i) Preparing the Record for Publication
When the examining attorney determines that the mark in an application that is subject to a concurrent use proceeding is ready for publication, the examining attorney should prepare the record as follows:
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(1) The application must contain a concurrent use statement that will be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. The statement must be in the following form:
Subject to Concurrent Use Proceeding with ____________ [specifying the application serial number(s) or registration number(s), if any, of each other party; otherwise, the name and address of each other party].
Applicant claims the exclusive right to use the mark in the area comprising _____________ [specifying the area for which the applicant seeks registration].
(2) To aid in the preparation of the record by the Legal Instruments Examiner (“LIE”), the examining attorney should prepare a brief summary of the relevant concurrent use information. The information on the summary page should be set forth in the following manner:
CONCURRENT USE SUMMARY
Applicant:
Address:
Mark:
Goods or services:
Other Reg. or Serial Nos.:
Dates of use:
Areas of use:
EXCEPTIONS TO EXCLUSIVE USE
Name:
Address:
Mark:
Goods or Services:
Reg. or Serial No.:
Dates of Use:
Area of use:
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After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the Trademark Trial and Appeal Board will institute the concurrent use proceeding. The Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding. 37 C.F.R. §2.99(h). See 37 C.F.R. §2.99; TMEP §1506.
See, generally, Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) Chapter 1100.
1207.04(f) Application for Concurrent Use Registration Pursuant to Court Decree
Under the last two sentences of §2(d), the USPTO may issue a concurrent use registration pursuant to the final determination of a court of competent jurisdiction that more than one person is entitled to use the same or similar marks in commerce. An applicant who seeks a concurrent use registration on the basis of a court determination does not have to claim use in commerce prior to the specified dates or obtain the consent of the owner of the involved mark, and the registration may be issued notwithstanding the possibility of public confusion. See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (C.C.P.A. 1976). Cf. Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412 (C.C.P.A. 1961), cert. denied, 369 U.S. 864, 133 USPQ 702 (1962).
When examining an application for concurrent use registration pursuant to the decree of a court, the examining attorney must determine whether the application complies with the specific requirements for concurrent use applications (see TMEP §§1207.04(d) and (d)(i)) and the requirements that would apply to an unrestricted application.
In addition, under 37 C.F.R. §2.99(f), all of the following conditions must be met, or a concurrent use proceeding before the Board must be prepared and instituted:
(1) The applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding;
(2) The court decree specifies the rights of the parties;
(3) A true copy of the court decree is submitted to the examining attorney;
(4) The concurrent use application complies fully and exactly with the court decree; and
(5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted by the Director in accordance with the court decree.
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If any of the conditions listed above are not satisfied, the examining attorney will approve the application for publication subject to a concurrent use registration proceeding before the Board (see TMEP §§1207.04(e) and (e)(i)), rather than pursuant to the court decree. 37 C.F.R. §2.99(f).
1207.04(f)(i) Preparing the Record for Publication
If the application complies with all the conditions listed in TMEP §1207.04(f) and all other relevant requirements, and is otherwise entitled to registration, the examining attorney will approve the application for publication of the mark. The examining attorney should prepare the record as follows:
The application must contain a concurrent use statement to be printed in the Official Gazette. The statement may be submitted by the applicant or prepared by the examining attorney. The statement will delineate the concurrent rights of the parties as determined by the court, in the following form:
Registration limited to the area comprising __________ [specifying the area granted to the applicant by the court and any other restriction designated by the court] pursuant to the decree of ______________ [specifying the name of the court, proceeding number and date of the decree].
Concurrent registration with ________________ [specifying the application serial number(s) or registration number(s), if any, of each other party; otherwise, the name and address of each other party].
After publication, if no opposition is filed, or if any opposition that is filed is dismissed or withdrawn, the application will mature into a registration.
1208 Conflicting Marks in Pending Applications
37 C.F.R. §2.83. Conflicting marks.
(a) Whenever an application is made for registration of a mark which so resembles another mark or marks pending registration as to be likely to cause confusion or mistake or to deceive, the mark with the earliest effective filing date will be published in the “Official Gazette” for opposition if eligible for the Principal Register, or issued a certificate of registration if eligible for the Supplemental Register.
(b) In situations in which conflicting applications have the same effective filing date, the application with the earliest date of execution will be published in the “Official Gazette” for opposition or issued on the Supplemental Register.
(c) Action on the conflicting application which is not published in the Official
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Gazette for opposition or not issued on the Supplemental Register will be suspended by the Examiner of Trademarks until the published or issued application is registered or abandoned.
1208.01 Priority for Publication or Issue Based on Effective Filing Date
In ex parte examination, priority among conflicting pending applications is determined based on the effective filing dates of the applications, without regard to whether the dates of use in a later-filed application are earlier than the filing date or dates of use of an earlier-filed application, whether the applicant in a later-filed application owns a registration of a mark that would be considered a bar to registration of the earlier-filed application, or whether an application was filed on the basis of use of the mark in commerce or a bona fide intent to use the mark in commerce.
When two or more applications contain marks that are conflicting, the mark in the application that has the earliest effective filing date will be published for opposition if it is eligible for registration on the Principal Register, or will be registered if it is eligible for registration on the Supplemental Register. 37 C.F.R. §2.83(a). See TMEP §§206 et seq. regarding effective filing dates.
The examining attorney cannot refuse registration under §2(d) of the Trademark Act based on an earlier-filed application for a conflicting mark until the mark registers. Therefore, when the examining attorney has examined the later-filed application and determined that it is in condition to be approved for publication or issue or in condition for a final refusal, but for the conflict between the marks, the examining attorney will suspend action on the later- filed application until the earlier-filed application matures into a registration or is abandoned. 37 C.F.R. §2.83(c); TMEP §§716.02(c) and 1208.02(c).
1208.01(a) What Constitutes Conflict Between Pending Applications
Marks in applications filed by different parties are in conflict when the registration of one of the marks would be a bar to the registration of the other under §2(d) of the Trademark Act, 15 U.S.C. §1052(d). Therefore, the term “conflicting application” refers to an application to register a mark that so resembles the mark in another application as to be likely to cause confusion. See TMEP §702.03(b). See TMEP §§1207 et seq. regarding likelihood of confusion. There may be several conflicting pending applications.
1208.01(b) What Constitutes Effective Filing Date
The filing date of an application under §1 or §44 of the Trademark Act is the date when all the elements designated in 37 C.F.R. §2.21(a) are received at
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the USPTO. In an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), the filing date is: (1) the international registration date, if the request for extension of protection to the United States is made in an international application; or (2) the date that the subsequent designation was recorded by the IB, if the request for extension of protection to the United States is made in a subsequent designation. TMEP §201.
While this is generally the effective filing date for purposes of determining priority among conflicting applications, in certain situations another date is treated as the effective filing date. See TMEP §§206 et seq. For example, in an application claiming priority under §44(d) or §67 of the Trademark Act based on a foreign application, the effective filing date is the date of filing the foreign application. TMEP §206.02. In a §1(b) application that is amended to the Supplemental Register on the filing of an acceptable allegation of use, the effective filing date is the date of filing the allegation of use. TMEP §206.01. However, the USPTO does not alter the original filing date in its automated records.
If two or more applications conflict, the application with the earliest effective filing date will be approved for publication for opposition or for issuance of a registration on the Supplemental Register, as appropriate. 37 C.F.R. §2.83(a); TMEP §1208.01.
If conflicting applications have the same effective filing date, the application with the earliest date of execution will be published for opposition or issued on the Supplemental Register. 37 C.F.R. §2.83(b). An application that is unexecuted will be treated as having a later date of execution.
Occasionally, conflicting applications will have the same date of filing and execution. If this situation occurs, the application with the lowest serial number will have priority for publication or issuance. When determining which serial number is the lowest, the examining attorney should disregard the series code (e.g., “76,” “77,” “78,” or “79”) and look only to the six-digit serial number.
1208.01(c) Change in Effective Filing Date During Examination
If the effective filing date in an application containing a conflicting mark changes, the examining attorney should review all the application(s) involved to determine which application has the earliest effective filing date as a result of the change, and notify the examining attorney assigned to the application with the earliest effective filing date.
The examining attorney should conduct a new search of the mark whenever the effective filing date of an application changes to a date that is later than the original filing date. See TMEP §206.04.
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1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival
When an abandoned application is revived or reinstated (see TMEP §§1712.01, 1713, and 1714 et seq.), the examining attorney must conduct a new search to determine whether any later-filed applications for conflicting marks have been approved for publication or registration, and place the search strategy in the record.
If a later-filed application has been approved, the examining attorney should inform the examining attorney who approved the later-filed application that the earlier-filed application has been revived, if necessary. If the later-filed application has been published, the examining attorney handling that application should request jurisdiction (see TMEP §1504.04(a)) and suspend the application pending disposition of the earlier-filed application that was revived or reinstated.
If a later-filed application for a conflicting mark has matured into registration, the examining attorney must refuse registration of the revived or reinstated application under §2(d), even though the application for the registered mark was filed after the revived or reinstated application. The USPTO does not have the authority to cancel the registration.
1208.02 Conflicting Applications Examination Procedure
1208.02(a) Examination of Application with Earliest Effective Filing Date
When the application with the earliest effective filing date is first reviewed for action, the examining attorney should approve the application for publication or for issuance of a registration on the Supplemental Register, if appropriate. 37 C.F.R. §2.83(a).
If the application with the earliest effective filing date is not in condition for publication or issue, the examining attorney should issue an Office action that includes all relevant refusals and requirements.
The USPTO does not notify applicants of potentially conflicting later-filed applications.
See TMEP §§206 et seq. and 1208.01(b) regarding what constitutes an effective filing date.
1208.02(b) Action on Later-Filed Application: Giving Notice of the Earlier Application or Applications
If, when the later-filed conflicting application is first reviewed for action, it is not in condition for publication or issue, the examining attorney should, in
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addition to treating other matters, send with the Office action an electronic copy or a printout from the USPTO’s automated search system of the information for the mark in each earlier-filed application. The examining attorney’s letter should also advise the applicant that the earlier application, if and when it matures into a registration, may be cited against the applicant’s later-filed application. The applicant should be notified of all conflicting applications with earlier effective filing dates.
See TMEP §1208.02(c) regarding suspension of later-filed conflicting applications that are otherwise in condition to be approved for publication or issue.
1208.02(c) Suspension of Later-Filed Application
When the later-filed application is in condition for publication or issue except for the conflicting mark in an earlier-filed application, either because no action was necessary on the application as filed or because examination on other matters has been brought to a conclusion, the examining attorney should suspend the later-filed application until the mark in the earlier-filed application is registered or the earlier-filed application is abandoned. 37 C.F.R. §2.83(c). In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d 1393 (Comm’r Pats. 1993). If the examining attorney discovers that a previously filed pending application was abandoned, but that a petition to revive is pending, the examining attorney should suspend the later-filed application pending disposition of the petition to revive.
Action on the later-filed application should also be suspended when the application is in condition for a final action but for the conflict with the earlier- filed application. The letter of suspension should repeat any outstanding issues, but these issues should not be made final.
If the Office action informing the applicant of the suspension is the first action in the case, the examining attorney should include an electronic copy or a printout from the USPTO’s automated search system of the information for the mark in each earlier-filed conflicting application.
1208.02(d) Action on Later-Filed Application upon Disposition of the Earlier Application or Applications
If all conflicting earlier-filed applications have either matured into registrations or become abandoned, and there are no other grounds for suspension, the examining attorney should remove the later-filed application from suspension and take appropriate action as follows.
The examining attorney should cite the registration or registrations that issued from the earlier-filed conflicting application or applications, if there is a likelihood of confusion. This will be a first refusal under §2(d) of the
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Trademark Act, 15 U.S.C. §1052(d). Any other outstanding issues should be repeated at this time.
If all earlier-filed applications have become abandoned, the examining attorney should either approve the later-filed application for publication or issue, or repeat and make final any remaining issues, as appropriate.
If some, but not all of the earlier-filed conflicting applications have matured into registrations, the examining attorney will normally not issue a refusal of registration until the remaining conflicting application(s) are registered or abandoned, in order to avoid issuing piecemeal refusals. TMEP §716.02(c).
1208.02(e) Applicant’s Argument on Issues of Conflict
If an applicant with a later-filed application files a request to remove the later-filed application from suspension (see TMEP §716.03), arguing that there is no conflict in relation to the application with the earlier effective filing date, the examining attorney should consider the merits of that argument and determine whether or not the earlier-filed application constitutes a potential bar to registration under §2(d) of the Act.
If the examining attorney concludes that the earlier-filed application is not a potential bar, the examining attorney should remove the application from suspension and take appropriate action on any other outstanding issues.
However, if the examining attorney concludes that the earlier-filed application is a potential bar, the examining attorney should issue an action for the later- filed application (e.g., a new letter of suspension if there are no other issues that are not in condition for final action), in which the examining attorney explains why the applicant’s argument is not persuasive.
1208.02(f) Conflicting Mark Mistakenly Published or Approved for Issuance on the Supplemental Register
If a later-filed conflicting mark is mistakenly published for opposition, it may be necessary for the assigned examining attorney to obtain jurisdiction of the application to take appropriate action. See TMEP §§1504 et seq. concerning obtaining jurisdiction of an application after publication.
The examining attorney does not lose jurisdiction of an application forwarded for issuance on the Supplemental Register until the day of issuance of the registration.
1208.03 Procedure Relating to Possibility of Interference
An interference will not be declared except upon petition to the Director. The Director will declare an interference only upon a showing of extraordinary circumstances that would result in a party being unduly prejudiced without an
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interference. These cases are extremely rare. In ordinary circumstances, the availability of an opposition or cancellation proceeding is deemed to remove any undue prejudice. 37 C.F.R. §2.91(a). Interferences are generally limited to situations where a party would otherwise be required to engage in a series of opposition or cancellation proceedings, and where the issues are substantially the same. See TMEP §1208.03(b). The potential need to file two notices of opposition that could be consolidated if the issues were sufficiently similar, is not considered an extraordinary circumstance that will unduly prejudice a petitioner without an interference.
All petitions, or requests for interference should be forwarded to the Office of the Deputy Commissioner for Trademark Examination Policy for decision. The examining attorney does not make a determination on a request for interference.
See TBMP Chapter 1000.
1208.03(a) Procedures on Request for Interference
The request for interference should be in a separate document in the form of a petition, and should be captioned as a petition. The petition fee indicated in 37 C.F.R. §2.6 should accompany the request. A petition to declare an interference should not be filed before the application has been examined and the mark has been found to be registrable but for the existence of one or more conflicting pending applications.
A request for interference does not make an application “special” or alter the normal order of examination.
See TBMP Chapter 1000.
1208.03(b) Decision on Request for Interference
Section 16 of the Trademark Act, 15 U.S.C. §1066, states that, upon petition showing extraordinary circumstances, the Director may declare that an interference exists when application is made for the registration of a mark that so resembles a mark previously registered by another, or for the registration of which another has previously applied, as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion or mistake or to deceive. No interference shall be declared between an application and a registration that has become incontestable.
The Director will declare an interference only upon a showing of extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 37 C.F.R. §2.91(a). The availability of opposition and cancellation procedures provides a remedy and ordinarily precludes the possibility of undue prejudice to a party. The request for interference must show that there is some extraordinary circumstance that would make the
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remedy of opposition or cancellation inadequate or prejudicial to the party’s rights. See In re Family Inns of America, Inc., 180 USPQ 332 (Comm’r Pats. 1974).
The fact that an earlier-filed application based on §1(b), §44, or §66(a) has been cited against a later-filed application based on use in commerce under §1(a) is not an extraordinary circumstance that warrants declaration of an interference. An opposition proceeding is the proper forum for determining priority between an applicant and another party. Priority for purposes of examination of an application is determined by filing date. 37 C.F.R. §2.83(a); TMEP §1208.02(a).
Although §16 of the Act permits the declaration of an interference between an application and a registration, the practice of declaring an interference in these cases has been discontinued because the applicant cannot obtain a registration if the interfering registration remains on the register. Therefore, even if the applicant prevailed in the interference, the applicant would still have to petition to cancel the interfering registration. See In re Kimbell Foods, Inc., 184 USPQ 172 (Comm’r Pats. 1974); Ex parte H. Wittur & Co., 153 USPQ 362 (Comm’r Pats. 1966); 37 C.F.R. §2.96.
See TBMP Chapter 1000.
1208.03(c) Procedure When Interference Is to be Declared
If the Director grants a petition requesting an interference, the examining attorney must determine that each mark is registrable but for the interfering mark before the interference will be instituted. 37 C.F.R. §2.92.
All marks must be published for opposition before interference proceedings are instituted; if possible, the marks should be published simultaneously.
Each application that is to be the subject of an interference must contain the following statement to be printed in the Official Gazette:
This application is being published subject to declaration of interference with:
Serial No.: Filed: Applicant: (Address, if there is no attorney) Attorney and Address: Mark:
The examining attorney should prepare the statement.
If an application that is published subject to interference is opposed by a party other than the applicant(s) in the interfering application(s), the opposition will
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be determined first. If still necessary and appropriate, the interference will be instituted. If an opposition is filed by the applicant in the interfering application, the rights of the parties will be determined in the opposition proceeding, and the interference proceeding will not be instituted.
If, during the pendency of an interference, another application appears involving substantially the same registrable subject matter, the examining attorney may request suspension of the interference for the purpose of adding that application. If the application is not added, the examining attorney should suspend further action on the application pending termination of the interference proceeding. 37 C.F.R. §2.98.
See TBMP Chapter 1000.
1209 Refusal on Basis of Descriptiveness
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it .... (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them....
Matter that “merely describes” the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted in In re Abcor Development Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978):
The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.
1209.01 Distinctiveness/Descriptiveness Continuum
With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness – or, on the other hand, descriptiveness – of a designation can be determined only by considering it in relation to the specific goods or services. Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 1580, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods).
At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are
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suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961), “[t]he generic name of a thing is in fact the ultimate in descriptiveness.”
Fanciful, arbitrary, and suggestive marks, often referred to as “inherently distinctive” marks, are registrable on the Principal Register without proof of acquired distinctiveness. See TMEP §1209.01(a).
Marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness under 15 U.S.C. §1052(f). See TMEP §1209.01(b) regarding merely descriptive marks, and TMEP §§1212 et seq. regarding acquired distinctiveness. Merely descriptive marks may be registrable on the Supplemental Register in applications under §1 or §44 of the Trademark Act. 15 U.S.C. §1091.
Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstances. See TMEP §§1209.01(c) et seq.
1209.01(a) Fanciful, Arbitrary, and Suggestive Marks
Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).
Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey). See, e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (VEUVE – meaning WIDOW in English – held to be “an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark”); Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as “a known word used in an unexpected or uncommon way”).
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held
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not merely descriptive of a snow-removal hand tool). See also In re Quik- Print Copy Shop, Inc., 203 USPQ 624 (TTAB 1979), aff’d, 616 F.2d 523, 205 USPQ 505 (C.C.P.A. 1980) (QUIK-PRINT held merely descriptive of printing services); In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984) (BUG MIST held merely descriptive of insecticide). Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.
1209.01(b) Merely Descriptive Marks
To be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing).
The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). The mark need not describe all the goods and services identified, as long as it merely describes one of them. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (“[T]he Trademark Office may require a disclaimer as a condition of registration if the mark is merely descriptive for at least one of the products or services involved.”)
It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services,” citing
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In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010; In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB 2007).
The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits. See In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985); In re Venturi, Inc., 197 USPQ 714 (TTAB 1977).
See TMEP §§1209.03 et seq. regarding factors that often arise in determining whether a mark is merely descriptive or generic.
See also TMEP §§1213 et seq. concerning disclaimer of merely descriptive matter within a mark.
1209.01(c) Generic Terms
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial- A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.
When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. The disclaimer does not render an otherwise unregistrable generic mark registrable. See TMEP §§1213.06 and 1213.08(c).
1209.01(c)(i) Test
There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the primary significance that the term would have to the relevant public.
The examining attorney has the burden of proving that a term is generic by clear evidence. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the public’s understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, newspapers, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of
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cake, held generic for ring cake mix); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities). Applicant’s website and the websites of others are also proper sources of evidence as to the meaning of the proposed mark and the manner in which it is used in relation to the goods/services. In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (In holding LAWYERS.COM generic for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services,” the Board properly considered applicant’s website and eight other websites containing “lawyer.com” or “lawyers.com to determine the meaning of applicant’s “information exchange about legal services.”)
When a term is a compound word, the examining attorney may establish that a term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound.” In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens).
However, the Court of Appeals for the Federal Circuit has expressly limited the holding in Gould to “compound terms formed by the union of words” where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends “no additional meaning to the term.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citing In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). Where the mark is a phrase, the examining attorney cannot simply cite definitions and generic uses of the individual components of the mark, but must provide evidence of the meaning of the composite mark as a whole.
In American Fertility Society, the court held that evidence that the components “Society” and “Reproductive Medicine” were generic was not enough to establish that the composite phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic for association services in the field of reproductive medicine. The court held that the examining attorney must show: (1) the genus of services that the applicant provides; and (2) that the relevant public understands the proposed composite mark to primarily refer to that genus of services. 51 USPQ2d at 1836-37.
In Dial-A-Mattress, the court held that an alphanumeric telephone number “bears closer conceptual resemblance to a phrase than a compound word.” 57 USPQ2d at 1811. The court found that 1-888-M-A-T-R-E-S-S was not generic as applied to “telephone shop-at-home retail services in the field of mattresses,” because there was no evidence of record that the public
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understood the term to refer to shop-at-home telephone mattress retailers. Therefore, to establish that a mnemonic telephone number is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance.
With respect to Internet domain names, even if the evidence shows that the individual components that make up the proposed mark are generic, one must determine whether joining the individual terms creates a composite that is itself generic. In very rare instances, the addition of a top-level domain indicator (“TLD”) to an otherwise generic term may operate to create a distinctive mark. In In re Steelbuilding.com, 415 F.3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005), the Federal Circuit reversed the Board’s determination that STEELBUILDING.COM is generic for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems.” The Court criticized the Board for considering STEELBUILDING and .COM separately, stating that “[i]n this unusual case, the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. Specifically, the TLD expanded the mark to include internet services that include ‘building’ or designing steel structures on the website and then calculating an appropriate price before ordering the unique structure.”
The Court also criticized the Board for relying only on evidence that the separate terms “steel building” or “steel buildings” are generic, where the terms were joined together in the subject mark:
The record does not contain any examination of dictionary definitions or other sources that might have indicated that joining the separate words “steel” and “building” would create a word that, in context, would be generic. The Board merely cited evidence that showed that when customers or competitors talked about a steel building, they used the phrase “steel building.” That evidence shows that “steel building” is generic, but does not address directly the composite term STEELBUILDING.
415 F.3d at 1298-1299, 75 USPQ2d at 1423.
Thus, to establish that a proposed mark comprising an Internet domain name is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance. See In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for “provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a website on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment...,” where the record included multiple examples of use of the terms “sports betting” as well as the jointed terms “sportsbetting” by both applicant and its competitors to
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refer to both sports wagering and providing information about sports wagering, and there was no indication of a realistic alternative connotation of the compound term. See also TMEP §§1209.03(m) and 1215.05 regarding domain names comprising generic matter.)
1209.01(c)(ii) Terminology
As specifically amended by the Trademark Law Revision Act of 1988, §14 of the Trademark Act provides for the cancellation of a registration of a mark at any time if the mark “becomes the generic name for the goods or services, or a portion thereof, for which it is registered....” 15 U.S.C. §1064(3). Previously, that provision had pertained to a mark that “becomes the common descriptive name of an article or substance....” Cases previously distinguished between generic names and “apt or common descriptive names,” which referred to matter that, while not characterized as “generic,” had become so associated with the product that it was recognized in the applicable trade as another name for the product, serving as a term of art for all goods of that description offered by different manufacturers rather than identifying the goods of any one producer. See Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ 358, 364 (TTAB 1978), aff’d, 599 F.2d 1009, 202 USPQ 100 (C.C.P.A. 1979). In addition, the Trademark Law Revision Act of 1988 amended §15 of the Trademark Act to adopt the term “generic name” to refer to generic designations. 15 U.S.C. §1065(4). In view of the amendment of §§14 and 15, a distinction between “generic” names and “apt or common descriptive” names should not be made. Rather, the terminology of the Act should be consistently used, e.g., in refusals to register matter that is a generic name for the goods or services, or a portion thereof. See In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994).
Similarly, cases have distinguished between “generic” terms and terms that were deemed “so highly descriptive as to be incapable of exclusive appropriation as a trademark.” See In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS held so highly descriptive as to be incapable of distinguishing applicant’s services of arranging and conducting seminars in the field of business law); In re Industrial Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984) (INDUSTRIAL RELATIONS COUNSELORS, INC. held an apt name or so highly descriptive of educational services in the industrial relations field that it is incapable of exclusive appropriation and registration, notwithstanding de facto source recognition capacity). Regarding current practice for refusing registration of such matter, the Trademark Trial and Appeal Board noted as follows in In re Women’s Publishing Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992):
The Examining Attorney’s refusal that applicant’s mark is “so highly descriptive that it is incapable of acting as a trademark” is not technically a statutory ground of refusal. Where an applicant
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seeks registration on the Principal Register, the Examining Attorney may refuse registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), on the basis that the mark sought to be registered is generic (citations omitted). Alternatively, an Examining Attorney may refuse registration under the same section if he or she believes that the mark is merely descriptive and that applicant’s showing of acquired distinctiveness is unpersuasive of registrability.
In essence, the Board was merely emphasizing the need to use precise statutory language in stating grounds for refusal. While the decision does not explicitly bar the use of the terminology “so highly descriptive that it is incapable of acting as a trademark” under all circumstances, the case illustrates that the use of this terminology may lead to confusion and should be avoided. It is particularly important in this context to use the precise statutory language to avoid doctrinal confusion. See generally McLeod, The Status of So Highly Descriptive and Acquired Distinctiveness, 82 Trademark Rep. 607 (1992). Therefore, examining attorneys should not state that a mark is “so highly descriptive that it is incapable of acting as a trademark” in issuing refusals. Rather, in view of the amendments of the Trademark Act noted above, the terminology “generic name for the goods or services” should be used in appropriate refusals, and use of the terminology “so highly descriptive” should be discontinued when referring to incapable matter.
This does not mean that designations that might formerly have been categorized as “so highly descriptive” should not be regarded as incapable. The Court of Appeals for the Federal Circuit has specifically stated that “a phrase or slogan can be so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark.” In re Boston Beer Co. L.P., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale held to be “so highly laudatory and descriptive of the qualities of [applicant’s] product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as a indication of origin”).
The Court of Appeals for the Federal Circuit has also stated that “[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-990, 228 USPQ 528, 530 (Fed. Cir. 1986). Also, note that it is entirely appropriate to consider whether a particular designation is “highly descriptive” in evaluating registrability under §2(f), or in similar circumstances.
The expression “generic name for the goods or services” is not limited to noun forms but also includes “generic adjectives,” that is, adjectives that refer to a genus, species, category, or class of goods or services. In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA
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PRESS generic for soil and stain removers for use on permanent press products).
1209.01(c)(iii) Generic Matter: Case References
Marks Held Generic
In the following cases, the matter sought to be registered was found generic: In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”); In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale held to be “so highly laudatory and descriptive of the qualities of [applicant’s] product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as a indication of origin”); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., __ USPQ2d __, Opp’n Nos. 91161403, 91161405, et at. (TTAB Mar. 25, 2009) (product design configurations of “the body portion of a guitar” held generic for “guitar bodies”); In re Noon Hour Food Products, Inc., 88 USPQ2d 1172 (TTAB 2008) (BOND-OST held generic for cheese); In re Rosemount, Inc., 86 USPQ2d 1436 (TTAB 2008) (REDUCER generic for “flow meters used for measuring flow through pipes; vortex flow meters”); In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007) (LENS held generic for “retail store services featuring contact eyewear products rendered via a global computer network”); In re Active Ankle Systems, Inc., 83 USPQ2d 1532 (TTAB 2007) (DORSAL NIGHT SPLINT generic for “orthopedic splints for the foot and ankle”); In re International Business Machines Corp., 81 USPQ2d 1677 (TTAB 2006) (ESERVER generic for “computer network access products, namely, computer hardware and operating software therefor that allow connectivity to and the administration of public and proprietary computer networks and the processing of information contained thereon”); In re The Outdoor Recreation Group, 81 USPQ2d 1392 (TTAB 2006) (OUTDOOR PRODUCTS generic for a class of goods worn and used by persons engaged in outdoor activities); In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN held generic for “providing information in the field of health and diet via a web site on the Internet”); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for
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“provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; [and] providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment”); In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, conducted via the Internet); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) (CELL THERAPEUTICS INC. generic for pharmaceutical preparations and laboratory research and development services); In re American Institute of Certified Public Accountants, 65 USPQ2d 1972 (TTAB 2003) (CPA EXAMINATION held generic for “printed matter, namely, practice accounting examinations; accounting exams; accounting exam information booklets; and prior accounting examination questions and answers”); In re American Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002) (FACIAL PLASTIC SURGERY held generic for training, association, and collective membership services, where evidence showed that the phrase “facial plastic surgery” is a recognized field of surgical specialization); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture, and jewelry); Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation and ticketing of transportation services); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for architectural design of buildings and retail outlets selling kits for building log homes); In re Web Communications, 49 USPQ2d 1478 (TTAB 1998) (WEB COMMUNICATIONS generic for consulting services to businesses seeking to establish sites on a global computer network); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff’d, 20 USPQ2d 1319 (Fed. Cir. 1991) (ICE PAK for reusable ice substitute for use in food and beverage coolers held generic; even assuming a contrary holding, evidence submitted by applicant deemed insufficient to establish acquired distinctiveness); In re The Paint Products Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS CO. for “interior and exterior paints and coatings, namely, alkyd, oil, latex, urethane and epoxy based paints and coatings” held so highly descriptive as to be incapable of becoming distinctive; even assuming the term could function as a mark, applicant’s evidence deemed insufficient to establish acquired distinctiveness); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities); In re Mortgage Bankers Ass’n of America, 226 USPQ 954 (TTAB 1985) (CERTIFIED MORTGAGE BANKER (“MORTGAGE BANKER”
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disclaimed) for “educational services, namely providing qualifying examinations, testing and grading in the field of real estate finance” held so highly descriptive as to be incapable of functioning as a mark notwithstanding evidence of acquired distinctiveness); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 222 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES for retail book and record store services “is incapable of designating origin and any evidence of secondary meaning can only be viewed as ‘de facto’ in import and incapable of altering the inability of the subject matter for registration to function as a service mark”).
Marks Held Not Generic
In the following cases, the matter sought to be registered was found not to be generic: In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) (STEELBUILDING.COM not generic for “computerized on line retail services in the field of pre-engineered metal buildings and roofing systems,” but evidence submitted by applicant insufficient to establish acquired distinctiveness under §2(f)); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (1-888-M-A-T-R-E-S-S not generic for “telephone shop-at-home retail services in the field of mattresses”); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (CASH MANAGEMENT ACCOUNT for “stock brokerage services, administration of money market fund services, and providing loans against securities services” held merely descriptive, rather than generic, and remanded to Board to consider sufficiency of §2(f) evidence); H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (FIRE CHIEF not generic for publications); In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006) (INSTANT MESSENGER not generic for telecommunications services and computer services related to providing real time text messages; evidence submitted by applicant held sufficient to demonstrate acquired distinctiveness under §2(f)); Zimmerman v. National Ass’n of Realtors, 70 USPQ2d 1425 (TTAB 2004) (collective service marks REALTOR and REALTORS held not generic for real estate brokerage, management, appraisal, and planning services); In re Federated Dept. Stores Inc., 3 USPQ2d 1541 (TTAB 1987) (THE CHILDREN’S OUTLET (“OUTLET” disclaimed), while merely descriptive of applicant’s “retail children’s clothing store services,” held capable of functioning as a mark, with evidence submitted by applicant sufficient to establish acquired distinctiveness pursuant to §2(f)); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER for periodic trade journal held merely descriptive, rather than generic, and applicant’s evidence held sufficient to establish acquired distinctiveness pursuant to §2(f)); In re Failure Analysis Associates, 1 USPQ2d 1144 (TTAB 1986) (FAILURE ANALYSIS ASSOCIATES, for “consulting services in the field of mechanical, structural,
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metallurgical, and metal failures, fires and explosions; engineering services in the field of mechanical design and risk analysis” and “consulting engineering services in the metallurgical field,” found to be merely descriptive of applicant’s services rather than incapable of distinguishing them from those of others; evidence submitted by applicant held sufficient to demonstrate acquired distinctiveness under §2(f)).
1209.02 Procedure for Descriptiveness and/or Genericness Refusal
The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985). The examining attorney may request that the applicant submit additional explanation or materials to clarify the nature of the goods or services. 37 C.F.R. §2.61(b); TMEP §814. The examining attorney should also do any necessary research to determine the nature of the use of the designation in the marketplace. To the fullest extent possible, the examining attorney will examine §1(b) applications for registrability under §2(e)(1) according to the same procedures and standards that apply to any other application. See In re American Psychological Ass’n, 39 USPQ2d 1467 (Comm’r Pats. 1996); TMEP §§1102 and 1102.01. “[T]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession.” In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006). If the examining attorney refuses registration, he or she should support the refusal with appropriate evidence. See also In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005), involving an intent-to-use application where the Federal Circuit found a press release cited by the examining attorney relevant to show the public’s perception of the goods.
In all cases, the examining attorney should try to make the Office action as complete as possible, so that the applicant may respond appropriately.
1209.02(a) Descriptive Marks – Advisory Statement That Mark Appears to Be Generic
A designation that is merely descriptive must be refused registration under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). The examining attorney must not initially issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services, unless the applicant asserts that the mark has acquired distinctiveness under §2(f) in the application itself. See TMEP §1209.02(b). Even if it appears that the mark is generic, the proper basis for the initial refusal is §2(e)(1) descriptiveness. If there is strong evidence that the proposed mark is generic, a statement that the subject matter appears to be a generic name for the goods or services should be included in conjunction with
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the refusal on the ground that the matter is merely descriptive. It has been said that a generic term is “the ultimate in descriptiveness.” H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961).
If, on the other hand, the mark appears to be capable, the examining attorney should provide appropriate advice concerning a possible amendment to the Supplemental Register or assertion of a claim of acquired distinctiveness. See TMEP §1102.03 concerning ineligibility of the proposed mark in a §1(b) application for the Supplemental Register prior to filing an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d).
If the record is unclear as to whether the designation is capable of functioning as a mark, the examining attorney should refrain from giving any advisory statement. In general, the examining attorney should make every effort to apprise applicants as early as possible of the prospects for registration through appropriate amendments, if feasible. NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
If, in response to a first-action refusal under §2(e)(1), the applicant merely argues that the mark is registrable on the Principal Register without claiming acquired distinctiveness or amending to the Supplemental Register, the examining attorney should issue a final refusal under §2(e)(1), on the ground that the proposed mark is merely descriptive, if he or she is not persuaded by the applicant’s arguments.
1209.02(a)(i) Amendment to Supplemental Register in Response to Office Action
If the applicant responds to a §2(e)(1) descriptiveness refusal by amending its application to the Supplemental Register, this amendment presents a new issue requiring consideration by the examining attorney (unless the amendment is irrelevant to the outstanding refusal—see TMEP §714.05(a)(i)). If the examining attorney determines that the designation is a generic name for the applicant’s goods or services, the examining attorney should then issue a nonfinal action refusing registration on the Supplemental Register. The statutory basis for such a refusal is §23 of the Trademark Act, 15 U.S.C. §1091. See TMEP §§815 et seq. and 816 et seq. concerning applications for registration on the Supplemental Register.
1209.02(a)(ii) Assertion of §2(f) in Response to Office Action
If the applicant responds to a §2(e)(1) descriptiveness refusal by amending its application to assert acquired distinctiveness under §2(f), this also raises a
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new issue. See TMEP §1212.02(h). If the examining attorney determines that the designation is a generic name for the applicant’s goods or services, the examining attorney must issue a new nonfinal action refusing registration under §2(e)(1) on the basis that the mark is generic and stating that the claim of acquired distinctiveness is insufficient to overcome the refusal. The examining attorney must also maintain and continue, in the alternative, the refusal under §2(e)(1) that the mark is merely descriptive and must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the mark is ultimately deemed not to be generic. As the Trademark Trial and Appeal Board noted in In re Women’s Publishing Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992):
The Examining Attorney’s refusal that applicant’s mark is “so highly descriptive that it is incapable of acting as a trademark” is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), on the basis that the mark sought to be registered is generic. See, e.g., In re Northland Aluminum Products Inc., 777 F.2d 1556, 227 USPQ 961, 962 (Fed. Cir. 1985), Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (C.C.P.A. 1961), In re Deutsche Airbus GmbH, 224 USPQ 611 (TTAB 1984) and Conde Nast Publications Inc. v. Redbook Publishing Co., 217 USPQ 356, 360 (TTAB 1983). Alternatively, an Examining Attorney may refuse registration under the same section if he or she believes that the mark is merely descriptive and that applicant’s showing of acquired distinctiveness is unpersuasive of registrability.
If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be generic. Cf. In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had “effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness,” where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) issue of whether the would be registrable under 2(f) if it were ultimately found to be non-functional.
Therefore, the descriptiveness refusal must be maintained, in the alternative, in the event that the mark is ultimately determined not to be generic. See TMEP §§1212 et seq. regarding distinctiveness under §2(f), and TMEP §1212.02(i) regarding assertion of §2(f) claims with respect to generic matter.
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See, e.g., In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883 (TTAB 2004); In re American Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001).
1209.02(b) Descriptive and Possibly Generic Marks – Assertion of §2(f) in Application
If the applicant asserts acquired distinctiveness under §2(f) in the original application and the examining attorney determines that the applied-for mark is a generic name for the applicant’s goods or services, the examining attorney must issue a nonfinal action refusing registration under §2(e)(1) on the basis that the mark is generic and stating that the claim of acquired distinctiveness is insufficient to overcome the refusal. The examining attorney must also refuse registration under §2(e)(1), in the alternative, as merely descriptive and must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the mark is ultimately deemed not to be generic.
If the examining attorney ultimately issues a final refusal under §2(e)(1) on the ground that the mark is generic, the descriptiveness refusal, including an explanation of the insufficiency of any §2(f) evidence, must also be made final, in the alternative, in case the mark is ultimately determined not to be generic. See, e.g., In re Candy Bouquet Int’l, I73 USPQ2d 1883 (TTAB 2004); In re American Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001).
If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be generic. Cf. In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had “effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness,” where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) issue of whether the would be registrable under 2(f) if it were ultimately found to be non-functional.
See TMEP §§1212 et seq. regarding distinctiveness under §2(f), and TMEP §1212.02(i) regarding assertion of §2(f) claims with respect to generic matter.
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1209.03 Considerations Relevant to Determination of Descriptiveness
The following sections discuss factors and situations that often arise during a determination of whether a mark is descriptive or generic.
1209.03(a) Third-Party Registrations
Third-party registrations are not conclusive on the question of descriptiveness. Each case must stand on its own merits, and a mark that is merely descriptive should not be registered on the Principal Register simply because other such marks appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977) (SCHOLASTIC held merely descriptive of devising, scoring, and validating tests for others). The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS held merely descriptive of computer software for use in development and deployment of application programs on a global computer network).
1209.03(b) No Dictionary Listing
The fact that a term is not found in a dictionary is not controlling on the question of registrability if the examining attorney can show that the term has a well understood and recognized meaning. See In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jellies and jams).
1209.03(c) First or Only User
The fact that an applicant may be the first and only user of a merely descriptive or generic designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting, and outdoor sports products field). See also TMEP §1212.06(e)(i) and cases cited therein.
1209.03(d) Combined Terms
When two descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself
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descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet); In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation and real estate listing services); In re Leonhardt, ___ USPQ2d ___, Ser. No. 78666879 (TTAB November 13, 2008) (BOBBLE POPS held merely descriptive for “candy,” which the record showed was a lollipop candy featuring a bobble head device); In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB 2007) (THEATL – a compressed version of the term “THE ATL,” a recognized nickname for the city of Atlanta – held merely descriptive of printed matter of interest to residents of and tourists and visitors to Atlanta, Georgia); In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (THE BREATHABLE MATTRESS held merely descriptive of “beds, mattresses, box springs and pillows,” based on dictionary definitions of “breathable” and “mattress,” and excerpts of web pages that refer to “breathable mattresses” and “breathable bedding”); In re Finisar Corp., 78 USPQ2d 1618 (TTAB 2006), aff’d per curiam, No. 2006-1463, 2007 U.S. App. LEXIS 11535 (Fed. Cir. May 3, 2007) (SMARTSFP held merely descriptive of optical transceivers); In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT be merely descriptive of bread containing oats and hazelnuts); In re Serv-A-Portion Inc., 1 USPQ2d 1915 (TTAB 1986) (SQUEEZE N SERV merely descriptive of ketchup and thus subject to disclaimer); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE merely descriptive of banking and trust services); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (STEELGLAS BELTED RADIAL merely descriptive of vehicle tires containing steel and glass belts); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS merely descriptive of coasters suitable for direct mailing).
However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique,
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nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool).
When there is evidence that the composite mark itself has been used together to form a phrase that is descriptive of the goods or services, it is unnecessary to engage in an analysis of each individual component. In re Shiva Corp., 48 USPQ2d 1957 (TTAB 1998) (TARIFF MANAGEMENT merely descriptive of computer hardware and computer programs to control, reduce, and render more efficient wide area network usage).
The Trademark Trial and Appeal Board has held that the addition of the prefix “e” does not change the merely descriptive significance of a term in relation to goods or services sold or rendered electronically, where the record showed that the “e” prefix has become commonly recognized as a designation for goods or services sold or delivered electronically. In re International Business Machines Corp., 81 USPQ2d 1677, 1679 (TTAB 2006) (“We see no difference in the meaning or connotation of ‘e-server’ and ‘eserver,’ and consider them both to be an abbreviated form of ‘electronic server.’”); In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (E-AUTODIAGNOSTICS merely descriptive of an “electronic engine analysis system comprised of a hand-held computer and related computer software”); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (E FASHION merely descriptive of software used to obtain beauty and fashion information, and for electronic retailing services); Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation and ticketing of transportation services). Similarly, with appropriate evidence, the prefix “i” or “I” was held to be understood by purchasers to signify Internet, when used in relation to Internet-related products or services. See In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2000) (ITOOL merely descriptive of computer software for use in creating web pages, and custom design of websites for others). In these situations, the examining attorney should provide evidence of use of the prefix “e” or “i” in relation to the goods or services.
The addition of an entity designator (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) to a descriptive term does not alter the term’s descriptive significance, because an entity designation has no source-indicating capacity. See Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888) (“The addition of the word ‘Company’ [to an otherwise generic mark] only indicates that parties have formed an association or partnership to deal in such goods . . . .” and does not render the generic mark registrable);” In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) (CELL THERAPEUTICS INC. generic for pharmaceutical preparations and laboratory research and development services); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (“PRESS,” as applied
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to a printing or publishing establishment, “is in the nature of a generic entity designation which is incapable of serving a source-indicating function”); In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998) (PATENT & TRADEMARK SERVICES INC. is merely descriptive of legal services in the field of intellectual property; the term “INC.” merely indicates the type of entity that performs the services, and has no significance as a mark); In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“‘PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company.”); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) (the element “INC.” [in PACKAGING SPECIALISTS, INC.] has “no source indication or distinguishing capacity”). See TMEP §1213.03(d) regarding disclaimer of entity designators.
1209.03(e) More Than One Meaning
Descriptiveness must be determined in relation to the goods or services for which registration is sought. Therefore, the fact that a term may have a different meaning(s) in a different context is not controlling. See In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion Int’l Corp., 183 USPQ 318 (TTAB 1974). If a term has a primary significance that is descriptive in relation to at least one of the recited goods/services, and does not create any double entendre or incongruity, then the term is merely descriptive.
See TMEP §1213.05(c) regarding wording that constitutes a “double entendre.”
1209.03(f) Picture or Illustration
A visual representation that consists merely of an illustration of the goods, or of an article that is an important feature or characteristic of the goods or services, is merely descriptive under §2(e)(1) of the Act. See In re Society for Private and Commercial Earth Stations, 226 USPQ 436 (TTAB 1985) (representation of satellite dish held merely descriptive of services of an association promoting the interests of members of the earth station industry); In re Underwater Connections, Inc., 221 USPQ 95 (TTAB 1983) (pictorial representation of a compressed air gas tank held merely descriptive of travel tour services involving underwater diving). But see In re LRC Products Ltd., 223 USPQ 1250 (TTAB 1984) (stylized hand design found not merely an illustration of the goods, i.e., gloves; thus not merely descriptive).
1209.03(g) Foreign Equivalents
The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself. Words from modern languages are translated into English to determine descriptiveness or genericness. In re
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Northern Paper Mills, 64 F.2d 998, 17 USPQ 492 (C.C.P.A. 1933). The test is whether, to those American buyers familiar with the foreign language, the word would have a descriptive or generic connotation. In re Zazzara, 156 USPQ 348 (TTAB 1967) (PIZZA FRITTE, the Italian equivalent of “fried buns,” held incapable for fried dough). See In re Tokutake Industry Co., Ltd., 87 USPQ2d 1697 (TTAB 2008) (AYUMI and its Japanese-character equivalent which applicant translated as “walking, a step” held merely descriptive for footwear); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (Chinese characters that translate as ORIENTAL DAILY NEWS held merely descriptive of newspapers); In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985) (SAPORITO, an Italian word meaning “tasty,” held merely descriptive because it describes a desirable characteristic of applicant’s dry sausage); In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (OPTIQUE, a French word meaning “optic,” held merely descriptive of eyeglass frames).
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).
While foreign words are generally translated into English for purposes of determining descriptiveness, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 54 USPQ2d 1497 (5th Cir. 2000), reh’g denied 218 F.3d 745 (2000); cf. General Cigar Co. Inc. v. G.D.M. Inc., 988 F. Supp. 647, 45 USPQ2d 1481 (S.D.N.Y. 1997). The determination of whether a language is “dead” must be made on a case-by-case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then that Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
See TMEP §§809 et seq. for information regarding how to ascertain the meaning of non-English wording in a mark. See also TMEP §§1207.01(b)(vi) et seq., 1210.10, and 1211.01(a)(vii) regarding the doctrine of foreign equivalents.
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1209.03(h) Incongruity
Arbitrary and incongruous combinations of English terms with terms from a foreign language have been found registrable. See In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (LA YOGURT for yogurt registrable on Principal Register, with a disclaimer of “YOGURT”); In re Universal Package Corp., 222 USPQ 344 (TTAB 1984) (LE CASE not merely descriptive of jewelry boxes and gift boxes and, therefore, registrable with a disclaimer of “CASE”).
1209.03(i) Intended Users
A term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of risk management services in the field of pricing and purchasing natural gas); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems; evidence sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail-order services in the field of outdoor equipment and apparel).
1209.03(j) Phonetic Equivalent
A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. See C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976) (C-THRU held to be the equivalent of “see-through” and, therefore, merely descriptive of transparent rulers and drafting aids); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING, in standard character form, would be perceived by consumers as the equivalent of the descriptive term URBAN HOUSING, rather than as including the separate word ZING); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007) (generic meaning of “togs” not overcome by the misspelling of the term as TOGGS); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX held generic for mineral licks for feeding livestock).
1209.03(k) Laudatory Terms
Laudatory terms, those that attribute quality or excellence to goods or services, are merely descriptive under §2(e)(1). See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK found to be merely descriptive and, therefore, subject to disclaimer); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (the words BEST and
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PREMIER in mark BEST! SUPPORTPLUS PREMIER merely descriptive of computer consultation and support services and thus subject to disclaimer); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME merely descriptive of cheese); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY merely descriptive of tobacco products); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND merely descriptive of cat food).
1209.03(l) Telephone Numbers
If an applicant applies to register a designation that consists of a merely descriptive term with numerals in the form of an alphanumeric telephone number (e.g., 800, 888, or 900 followed by a word), the examining attorney should refuse registration under §2(e)(1). See In re Page, 51 USPQ2d 1660 (TTAB 1999) (888 PATENTS merely descriptive of patent-related legal services). The fact that a designation is in the form of a telephone number is insufficient, by itself, to render it distinctive.
If the relevant term is merely descriptive, but not generic, the mark may be registered on the Principal Register with a proper showing of acquired distinctiveness under §2(f), or on the Supplemental Register, if appropriate. See Express Mortgage Brokers Inc. v. Simpson Mortgage Inc., 31 USPQ2d 1371 (E.D. Mich. 1994) (369-CASH held merely descriptive but shown to have acquired distinctiveness as applied to mortgage brokering and mortgage-related services). Of course, the designation must also be used in the manner of a mark. See TMEP §§1202 et seq. regarding use as a mark.
If the proposed mark is generic, the designation is unregistrable on either the Principal or the Supplemental Register. However, to support a refusal of registration on the ground that a telephone number is generic, the Court of Appeals for the Federal Circuit has held that it is not enough to show that the telephone number consists of a non-source-indicating area code and a generic term. The examining attorney must show evidence of the meaning the relevant purchasing public accords the proposed alphanumeric mark as a whole. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001). See also Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989) (use of confusingly similar telephone number enjoined). But see Dranoff-Perlstein Associates v. Sklar, 967 F.2d 852, 857, 23 USPQ2d 1174, 1178 (3d Cir. 1992) (“[W]e decline to adopt the position espoused by the Second Circuit that telephone numbers which correlate to generic terms may be protectible as trademarks.... If telephone numbers that correlate to generic terms were granted protection, the first firm in a given market to obtain such a telephone number would, merely by winning the race to the telephone company, gain an unfair advantage over its competitors.”) (footnotes omitted); 800 Spirits Inc. v. Liquor By Wire, Inc., 14 F. Supp. 2d 675 (D.N.J. 1998) (800 SPIRITS generic for “gift delivery service of alcohol beverages”).
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1209.03(m) Domain Names
A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. Portions of the uniform resource locator (“URL”), including the beginning, (“http://www.”) and the top-level Internet domain name (“TLD”) (e.g., “.com,” “.org,” “.edu,”) function to indicate an address on the World Wide Web, and, therefore, generally serve no source-indicating function. See TMEP §§1215 et seq. for further information.
The TLD typically signifies the type of entity using the domain name. For example, the TLD “.com” signifies to the public that the user of the domain name constitutes a commercial entity, “.edu” signifies an educational institution, “.biz” signifies a business, and “.org” signifies a non-commercial organization. TLDs designated for types of entities using the TLDs should be treated as non-source-indicating. As the number of available TLDs is increased by the Internet Corporation for Assigned Names and Numbers ("ICANN"), or if the nature of new TLDs changes, the examining attorney must consider any potential source-indicating function of the TLD and introduce evidence as to the significance of the TLD. See www.icann.org for information about TLDs.
Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”); In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records and for tracking the status of the records by means of the Internet); In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, sold via the Internet); In re Microsoft Corp., 68 USPQ2d 1195, 1203 (TTAB 2003) (“The combination of the specific term and TLD at issue, i.e., OFFICE and .NET, does not create any double entendre, incongruity, or any other basis upon which we can find the composite any more registrable than its separate elements. The combination immediately informs prospective purchasers that the software includes ‘office suite’ type software and is from an Internet business, i.e., a ‘.net’ type business.”); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792 (TTAB 2002) (“Applicant seeks to register the generic term ‘bonds,’ which has no source-identifying significance in connection with applicant’s services, in
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combination with the top level domain indicator “.com,” which also has no source-identifying significance. And combining the two terms does not create a term capable of identifying and distinguishing applicant’s services.”); In re Martin Container, Inc., 65 USPQ2d 1058, 1061 (TTAB 2002) (“[N]either the generic term nor the domain indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability.”).
However, there is no bright-line, per se rule that the addition of a TLD to an otherwise descriptive mark will never, under any circumstances, operate to create a registrable mark. If the TLD is capable of indicating a source, the addition of the source-indicating TLD to an otherwise unregistrable mark may render it registrable.
Example: The addition of the TLD “.PETER” to CLOTHES to form the mark CLOTHES.PETER would create a registrable mark.
Additionally, the Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a non-source-indicating TLD such as “.com” or “.net.” In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (STEELBUILDING.COM for “computerized on line retail services in the field of pre-engineered metal buildings and roofing systems” held highly descriptive, but not generic), citing Oppedahl & Larson, 373 F.3d at 1175-1176, 71 USPQ2d at 1373.
Thus, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole to determine whether the composite mark conveys any distinctive source-identifying impression apart from its individual components. The examining attorney should introduce evidence as to the significance of the individual components, including the TLD, but must also consider the significance of the composite to determine whether the addition of a TLD has resulted in a mark that conveys a source- identifying impression. See In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for “provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; [and] providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment....”).
See TMEP §§1215.04 and 1215.05 for further discussion of TLDs combined with descriptive or generic terminology.
1209.03(n) “America” or “American”
If “AMERICA” or “AMERICAN” appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely
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descriptive as laudatory or even incapable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM held incapable); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S FAVORITE POPCORN held merely descriptive). Typically, these marks primarily extol the quality or popularity of the goods or services and secondarily denote geographic origin. The examining attorney must look at each mark to determine whether it is capable, considering all relevant circumstances and case law.
See TMEP §1210.02(b)(iv) and cases cited therein regarding use of terms such as “AMERICA,” “AMERICAN,” and “USA” in a way that is primarily geographically descriptive under 15 U.S.C. §1052(e)(2), primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3), or deceptive under 15 U.S.C. §1052(a).
1209.03(o) “National,” “International,” “Global,” and “Worldwide”
The terms “NATIONAL” and “INTERNATIONAL” have been held to be merely descriptive of services that are nationwide or international in scope. See Jefferson Bankshares Inc. v. Jefferson Savings Bank, 14 USPQ2d 1443 (W.D. Va. 1989) (NATIONAL BANK merely descriptive of banking services); National Automobile Club v. National Auto Club, Inc., 365 F. Supp. 879, 180 USPQ 777 (S.D.N.Y. 1973), aff’d, 502 F.2d 1162 (2d Cir. 1974) (NATIONAL merely descriptive of auto club services); In re Institutional Investor, Inc., 229 USPQ 614 (TTAB 1986) (INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries held incapable); In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (BILLFISH INTERNATIONAL CORPORATION merely descriptive of corporation involved with billfish on an international scale); In re National Rent A Fence, Inc., 220 USPQ 479 (TTAB 1983) (NATIONAL RENT A FENCE merely descriptive of nationwide fence rental services); BankAmerica Corp. v. International Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979) (INTERNATIONAL TRAVELERS CHEQUE merely descriptive of financial consulting services that are international in scope); National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691 (TTAB 1978) (NATIONAL INSURANCE TRUST merely descriptive of services of handling administrative matters in locating suitable insurance coverage for attorneys).
The terms “GLOBAL” and “WORLDWIDE” are also considered to be merely descriptive of services that are global or worldwide in scope.
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1209.03(p) Function or Purpose
Terms that identify the function or purpose of a product or service may be merely descriptive under 15 U.S.C. §1052(e)(1) or generic. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for cleaning computer and television screens); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) (SOLUTIONS merely descriptive of the purpose of applicant’s computer hardware – to resolve a problem – and must be disclaimed); In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006) (ERGONOMIC held merely descriptive of ceiling fans); In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) (WALLYBALL held descriptive of sports clothing and game equipment); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) (BURGER held merely descriptive of cooking utensils); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jams and jellies).
1209.03(q) Source or Provider of Goods or Services
Terms that identify the source or provider of a product or service may be merely descriptive under 15 U.S.C. §1052(e)(1) or generic. In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001) (MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors, and skin guards); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB 2000) (PSYCHOLOGY PRESS merely descriptive of books in the field of psychology); In re The Paint Products Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS COMPANY incapable for paint); In re The Phone Co., Inc., 218 USPQ 1027 (TTAB 1983) (THE PHONE COMPANY merely descriptive of telephones).
1209.03(r) Retail Store and Distributorship Services
A term that is generic for goods is descriptive of retail store services featuring those goods, when the goods are not a significant item typically sold in the type of store in question. In re Pencils Inc., 9 USPQ2d 1410 (TTAB 1988) (PENCILS held merely descriptive of office supply store services). However, where the matter sought to be registered identifies the primary articles of a store or distributorship service, the term is considered generic. In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007) (LENS generic for “retail store services featuring contact eyewear products rendered via a global computer network”); In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, conducted via the Internet); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY
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BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture, and jewelry); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for retail outlets selling kits for building log homes); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for retail stores specializing in the sale of lingerie); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of products made of wicker); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES generic for retail book and record store services).
The examining attorney, therefore, must analyze the term in relation to the services recited, the context in which it is used and the possible significance it would have to the recipient of the services. Pencils, 9 USPQ2d at 1411.
1209.03(s) Slogans
Slogans that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness). See TMEP §1202.04 and cases cited therein.
1209.03(t) Repetition of Descriptive Term
The mere repetition of a merely descriptive term does not negate the mere descriptiveness of the mark as a whole, unless the combination is such as to create a new and different commercial impression from that which is engendered by the separate components. See In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) (CAESAR! CAESAR! merely descriptive of salad dressing); In re Disc Jockeys, Inc., 23 USPQ2d 1715 (TTAB 1992) (DJDJ merely descriptive of disc jockey services).
1209.03(u) Punctuation
The use of a common punctuation mark is not sufficient to negate the mere descriptiveness of a term. See In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) (CAESAR! CAESAR! merely descriptive of salad dressing); In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006) (presence of punctuation mark (a hyphen) in the mark “3-0’s” does not negate mere descriptiveness of mark for automobile wheel rims); In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006) (PARTY AT A DISCOUNT! merely descriptive of preparation and dissemination for others of advertising and promotional matter via global
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computer communications networks in the field of shopping for goods and services); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (presence of slash in the mark “designers/fabric” does not negate mere descriptiveness of mark for retail store services in field of fabrics); In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A DAY, A WEEK, A MONTH OR MORE! merely descriptive of hotel services); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! merely descriptive of unpopped popcorn); In re Samuel Moore & Co., 195 USPQ 237 (TTAB 1977) (SUPERHOSE! merely descriptive of hydraulic hose made of synthetic resinous material).
1209.04 Deceptively Misdescriptive Marks
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), also prohibits registration of designations that are deceptively misdescriptive of the goods or services to which they are applied. The examining attorney must consider the mark in relation to the applicant’s goods or services to determine whether a mark is deceptively misdescriptive.
The examining attorney must first determine whether a term is misdescriptive as applied to the goods or services. A term that conveys an immediate idea of an ingredient, quality, characteristic, function, or feature of the goods or services with which it is used is merely descriptive. See TMEP §1209.01(b). If a term immediately conveys such an idea but the idea is false, although plausible, then the term is deceptively misdescriptive and is unregistrable under §2(e)(1). See In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO deceptively misdescriptive of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents, and oils).
The Trademark Act does not prohibit the registration of misdescriptive terms unless they are deceptively misdescriptive, that is, unless persons who encounter the mark, as used on or in connection with the goods or services in question, are likely to believe the misrepresentation. See Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984) (LIQUID CRAYON held neither common descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers).
As explained in the case of In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984):
The test for deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955), aff’d sub nom. S.C. Johnson & Son v. Gold Seal Co., 230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied, 352 U.S. 829 (1956), superseded by statute
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on other grounds as stated in Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527, 1532 (D.C. Cir. 2008). A third question, used to distinguish between marks that are deceptive under Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1), is whether the misrepresentation would materially affect the decision to purchase the goods. Cf. In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983).
Thus, if the identification of goods/services does not include the wording in the mark, the examining attorney must make of record evidence demonstrating why the mark is misdescriptive. Specifically, the record should show the meaning of the wording at issue and that the identification indicates that the applicant’s goods/services lack the feature or characteristic. Examples of such evidence are dictionary definitions, LexisNexis® articles, Internet websites, advertising material, product information sheets, hang tags, point-of-purchase displays, and trade journals. The applicant’s admission regarding its goods/services may also satisfy the first prong of the test.
The examining attorney must then prove that the description conveyed by the mark is plausible by demonstrating that consumers regularly encounter goods or services that contain the features or characteristics in the mark. For example, to support the believability element as to the mark LOVEE LAMB for seat covers that were not made of lambskin, the examining attorney provided evidence that seat covers can be and are made from lambskin. See In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). Excerpts from a LexisNexis® search for the phrases “organic clothing,” “organic fabric,” “organically grown cotton,” and “organic cotton” were used to prove that consumers were familiar with clothing and textiles from organically grown plants or plants free of chemical processing or treatment. See In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997). Applicant’s own hang tags, labels, advertising, and product information may also provide evidence of the believability of the misdescription. See In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986); Evans Products Co. v. Boise Cascade Corp., 218 USPQ 160, 165 (TTAB 1983).
If the misdescription represented by the mark is material to the decision to purchase the goods or use the services, then the mark should be refused registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a). See TMEP §1203.02 regarding deceptive marks, TMEP §1203.02(c) regarding the distinction between deceptive marks and deceptively misdescriptive marks, and TMEP §§1203.02(d) et seq. regarding determining materiality.
The examining attorney should consider and make of record, or require the applicant to make of record, all available information that shows the presence or absence, and the materiality, of a misrepresentation. See Glendale Int’l Corp. v. United States Patent and Trademark Office, 374 F. Supp. 2d 479, 75 USPQ2d 1139 (E.D. VA 2005) (TITANIUM deceptively misdescriptive of
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recreational vehicles that do not contain titanium, where the examining attorney made of record articles which showed that titanium is a lightweight metal, and discussed the use or potential use of titanium in the automotive industry).
The mere fact that the true nature of the goods or services is revealed by other matter on the labels, advertisements, or other materials to which the mark is applied does not preclude a determination that a mark is deceptively misdescriptive. See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964) (DURA-HYDE held deceptive and deceptively misdescriptive of plastic material of leather-like appearance made into shoes); In re Shniberg, 79 USPQ2d 1309 (TTAB 2006) (SEPTEMBER 11, 2001 held deceptively misdescriptive of books and entertainment services which did not in any way cover the terrorist attacks of September 11, 2001; the fact that the nature of the misdescription would become known after consumers studied applicant’s books and entertainment services does not prevent the mark from being deceptively misdescriptive).
See also Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985); R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169 (TTAB 1985); and American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984) regarding the issue of deceptive misdescriptiveness.
Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register if appropriate. 15 U.S.C. §§1052(f) and 1091. Marks that are deceptive under §2(a) are not registrable on either the Principal Register or the Supplemental Register under any circumstances.
1210 Refusal on Basis of Geographic Significance
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–
(a) Consists of or comprises ... deceptive ... matter;… or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996].
...
(e) Consists of a mark which ... (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4, (3) when used on or in connection with the goods of the applicant is primarily geographically
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deceptively misdescriptive of them....
Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), prohibits registration on the Principal Register of a mark that is primarily geographically descriptive of the goods or services named in the application. See TMEP §1210.01(a).
Section 2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), prohibits registration of a mark that is primarily geographically deceptively misdescriptive of the goods or services named in the application. See TMEP §1210.01(b). Prior to the amendment of the Trademark Act on January 1, 1994, by the North American Free Trade Agreement (“NAFTA”) Implementation Act, Public Law 103-182, 107 Stat. 2057, the statutory basis for refusal to register primarily geographically deceptively misdescriptive marks was §2(e)(2).
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits registration of a designation that consists of or comprises deceptive matter, as well as geographical indications which, when used on or in connection with wines or spirits, identify a place other than the origin of the goods. See TMEP §§1210.01(c) and 1210.08.
See TMEP §1210.05(c) regarding the distinction between marks that are primarily geographically deceptively misdescriptive under §2(e)(3) and marks that are deceptive under §2(a).
1210.01 Elements
1210.01(a) Geographically Descriptive Marks – Test
To establish a prima facie case for refusal to register a mark as primarily geographically descriptive, the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02 et seq.);
(2) the goods or services originate in the place identified in the mark (see TMEP §1210.03); and
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04 et seq.). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)).
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1210.01(b) Geographically Deceptively Misdescriptive Marks – Test
To support a refusal to register a mark as primarily geographically deceptively misdescriptive, the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02 et seq.);
(2) the goods or services do not originate in the place identified in the mark (see TMEP §1210.03);
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04 et seq.). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)); and
(4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services (see TMEP §§1210.05(c) et seq.).
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1495 (Fed. Cir. 2009); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).
Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, it was not necessary to show that the misrepresentation was likely to be a material factor in the consumer’s decision to buy the goods or use the services in order to establish that a mark was primarily geographically deceptively misdescriptive. However, in California Innovations, the Court of Appeals for the Federal Circuit held that in view of the NAFTA amendments, a showing of public deception is required to establish that a mark is unregistrable under §2(e)(3).
See TMEP §1210.05(c) for further information regarding the distinction between marks comprising deceptive matter under §2(a) and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3), and TMEP §§1210.05(c) et seq. regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser’s decision to buy the goods or use the services.
1210.01(c) Geographically Deceptive Marks – Test
As noted in TMEP §1210.05(a), the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is the same as the test for determining whether a mark is deceptive under §2(a). To
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support a refusal of registration on the ground that a geographic term is deceptive under §2(a), the examining attorney must show that:
(1) the primary significance of the mark is a generally known geographic location (see TMEP §§1210.02 et seq.);
(2) the goods or services do not originate in the place named in the mark (see TMEP §1210.03);
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (see TMEP §§1210.04 et seq.). Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association (see TMEP §1210.04(c)); and
(4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services (see TMEP §§1210.05(c) et seq.).
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1495 (Fed. Cir. 2009); Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., Inc., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984). See also In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).
See TMEP §1210.05(a) for further information regarding the distinction between marks comprising deceptive matter under §2(a) and marks comprising primarily geographically deceptively misdescriptive matter under §2(e)(3), and TMEP §§1210.05(c) et seq. regarding the showing that a misrepresentation of the origin of the goods or services is likely to affect the purchaser’s decision to buy the goods or use the services.
1210.02 Primarily Geographic Significance
A mark is primarily geographic if it identifies a real and significant geographic location, and the primary meaning of the mark is the geographic meaning.
1210.02(a) Geographic Locations
A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street.
Region. A particular, identifiable region (e.g., “Midwest” or “Mid-Atlantic”) is a geographic location. In re Pan-O-Gold Baking Co., 20 USPQ2d 1761 (TTAB 1991) (primary significance of “New England” is geographic). On the other hand, vague geographic terms (e.g., “Global,” “National,” “International,” or
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“World”) are not considered to be primarily geographic, though they may be merely descriptive or deceptively misdescriptive under §2(e)(1). See TMEP §1209.03(o).
Nicknames. A geographic nickname (e.g., “Big Apple” or “Motown”), or an abbreviation or other variant of the name of a geographic location, is treated the same as the actual name of the geographic location, if it is likely to be perceived as such by the purchasing public. See In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007) (Board found that “Yosemite” - a well recognized and frequently used shorthand reference to Yosemite National Park and the Yosemite region in general - conveys a readily recognizable geographic significance); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services, where the evidence showed that “Carolina” is used to indicate either the state of North Carolina or the state of South Carolina). Cf. In re Trans Continental Records, Inc., 62 USPQ2d 1541 (TTAB 2002) (O-TOWN found to be a “relatively obscure term” that would not be perceived by a significant portion of the purchasing public as a geographic reference to Orlando, Florida).
Adjectives. The adjectival form of the name of a geographic location is considered primarily geographic if it is likely to be perceived as such by the purchasing public. See In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA – the Russian equivalent of “from Baikal” or “Baikal’s” – held primarily geographically descriptive of vodka); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028 (TTAB 1985) (NEAPOLITAN held primarily geographically deceptively misdescriptive of sausage emanating from the United States, where the term is defined as “of or pertaining to Naples in Italy”); American Paper & Plastic Products, Inc. v. American Automatic Vending Corp., 152 USPQ 117 (TTAB 1966) (AMERICAN AUTOMATIC VENDING held primarily geographically descriptive).
Maps. A map or outline of a geographic area is also treated the same as the actual name of the geographic location if it is likely to be perceived as such. See In re Canada Dry Ginger Ale, Inc., 86 F.2d 830, 32 USPQ 49 (C.C.P.A. 1936) (map of Canada held to be the equivalent of the word “Canada”). Cf. In re Texsun Tire and Battery Stores, Inc., 229 USPQ 227 (TTAB 1986) (indicating that if the depiction of a map is fanciful or so integrated with other elements of a mark that it forms a unitary whole, then the map should not be considered primarily geographically descriptive).
Coined Locations. The mere fact that a term may be the name of a place that has a physical location does not necessarily make that term geographic under §2(e)(2). For example, names of amusement parks, residential communities, and business complexes which are coined by the applicant, should not be refused. In re Pebble Beach Co., 19 USPQ2d 1687 (TTAB 1991) (17 MILE DRIVE not a geographic term, where it refers to a specific location wholly
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owned by applicant, and was coined by applicant to refer both to applicant’s services and the place where the services were performed).
1210.02(b) Primary Significance
To support a refusal to register geographic matter, the Trademark Act requires that the mark be primarily geographic, that is, that its primary significance be that of a geographic location. 15 U.S.C. §§1052(e)(2) and (3). See, e.g., In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (primary significance of NEW YORK held to be geographic; Court was not persuaded by assertions that the composite NEW YORK WAYS GALLERY evokes a gallery that features New York “ways” or “styles”); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (evidence insufficient to establish that public in United States would perceive VITTEL as the name of a place where cosmetic products originate; Vittel, France found to be obscure); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT (“CAMEMBERT” disclaimed) held primarily geographically descriptive of cheese because NORMANDIE is the French spelling for Normandy, consumers would recognize NORMANDIE as the equivalent of Normandy, the primary significance of Normandy is a known geographic place in France, and CAMEMBERT is generic for applicant’s goods; Board was not persuaded that the primary significance of NORMANDIE was the ocean liner SS Normandie); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (the primary significance of WESTPOINT is as the name of the United States Military Academy rather than the town in New York).
The fact that the proposed mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. See TMEP §§1210.02(b)(i) et seq.
When a geographic term is combined with additional matter (e.g., wording and/or a design element), the examining attorney must determine the primary significance of the composite. See TMEP §§1210.02(c) et seq.
See TMEP §1210.04(c) regarding obscure or remote geographic marks.
1210.02(b)(i) Other Meanings
The fact that the mark has meaning or usage other than as a geographic term does not necessarily alter its primarily geographic significance. Thus, if a geographic term has another meaning, the examining attorney must determine whether the primary significance is geographic. If so, registration should be refused under §2(e)(2), §2(e)(3), or §2(a). See, e.g., In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (THE NASHVILLE NETWORK held primarily geographically descriptive of television program production and distribution services, the Board finding that the primary
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significance of the term was Nashville, Tennessee, and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (the fact that MANHATTAN identifies an alcoholic cocktail does not alter the primary significance of that term as a borough of New York City); In re Jack’s Hi- Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (the fact that NEAPOLITAN identifies, among other things, a type of ice cream, does not alter the primary significance of that term as meaning “of or pertaining to Naples in Italy”).
However, if the most prominent meaning or significance of the mark is not geographic, or if the mark creates a separate readily understood meaning that is not geographic, registration should not be refused under §2(e)(2), §2(e)(3), or §2(a). See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951), aff’d, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) (primary significance of HYDE PARK for men’s suits is to suggest that the product is stylish or of high quality rather than to provide information about geographic origin); In re International Taste Inc., 53 USPQ2d 1604, 1605-06 (TTAB 2000) (because of other prominent, significant meaning of HOLLYWOOD as referring to the entertainment industry in general, doubt about the primary significance of HOLLYWOOD was resolved in favor of the applicant); In re Urbano, 51 USPQ2d 1776, 1780 (TTAB 1999) (primary significance of SYDNEY 2000, used for advertising and business services and communication services, is as a reference to the Olympic Games, not to the name of a place); In re Municipal Capital Markets Corp., 51 USPQ2d 1369, 1371 (TTAB 1999) (primary significance of COOPERSTOWN is that of “an institution, namely, the Baseball Hall of Fame” rather than a geographic location); In re Jim Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (primary significance of THE GREAT AMERICAN BASH for promoting, producing, and presenting professional wrestling matches, is to suggest something of desirable quality or excellence rather than to describe the geographic origin of the services); In re Dixie Insurance Co., 223 USPQ 514, 516 (TTAB 1984) (DIXIE held not primarily geographically descriptive of property and casualty underwriting services, where the examining attorney provided no evidence to show that the geographical significance of DIXIE was its primary significance).
1210.02(b)(i)(A) Surname Significance
A term’s geographic significance may not be its primary significance if the term also has surname significance. Cf. In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993) (HAMILTON held primarily merely a surname, even though the term had some geographical connotations); In re Colt Industries Operating Corp., 195 USPQ 75 (TTAB 1977) (FAIRBANKS held not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance).
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1210.02(b)(ii) More Than One Geographic Location With Same Name
The fact that the mark identifies more than one geographic location does not necessarily detract from the term’s primary geographic significance. See, e.g., In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (DURANGO held primarily geographically deceptively misdescriptive of chewing tobacco not grown in Durango, Mexico, where the evidence of record showed that tobacco is a crop produced and marketed in that area, even though there is more than one place named Durango); In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986) (CAMBRIDGE DIGITAL and design held primarily geographically descriptive of computer systems and parts thereof, where applicant’s place of business is Cambridge, Massachusetts, even though there is more than one Cambridge).
1210.02(b)(iii) Non-Geographic Characteristics of Goods or Services
Geographic matter may serve to designate a kind or type of goods or services, or to indicate a style or design that is a feature of the goods or services, rather than to indicate their geographic origin. For example, the geographic components in terms such as “dotted swiss,” “Boston baked beans,” “Swiss cheese,” “Early American design,” and “Italian spaghetti” are not understood as indicating the geographic origin of the goods but, rather, a particular type or style of product (regardless of where the product is produced). See Forschner Group Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 31 USPQ2d 1614 (2d Cir. 1994), aff’d, 124 F.3d 402, 43 USPQ2d 1942 (2d Cir. 1997) (SWISS ARMY KNIFE); Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., Inc., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992) (evidence showing that Chablis is the name of a region in France insufficient to establish that CHABLIS WITH A TWIST is geographically deceptive of wine under §2(a), where evidence showed that the term “Chablis” would be perceived by consumers in the United States as the generic name for a type of wine with the general characteristics of French chablis); Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951), aff’d, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) (primary significance of HYDE PARK for men’s suits is to suggest that the product is stylish or of high quality rather than to provide information about geographic origin).
When geographic terms are used in circumstances in which it is clear that they are meant to convey some meaning other than geographic origin, registration should not be refused on the basis of geographical descriptiveness or misdescriptiveness. However, there may be some other basis for refusal; for example, the terms may be merely descriptive or deceptively misdescriptive of the goods or services under §2(e)(1) of the Act, 15 U.S.C. §1052(e)(1). In re MBNA America Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003), reh’g denied, 2004 U.S. App. LEXIS 2187 (Fed. Cir. Jan. 12, 2004) (MONTANA SERIES and PHILADELPHIA SERIES
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are merely descriptive of “credit card services featuring credit cards depicting scenes or subject matter of, or relating to” the places named in the marks); In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB 2007) (applicant’s mark, THEATL, is simply a compressed version of the term “THE ATL,” which is a nickname for the city of Atlanta, and is merely descriptive of the subject matter of applicant’s publications); In re Busch Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000) (EGYPT merely descriptive of subject matter or motif of amusement park services). See TMEP §§1209 et seq. regarding marks that are merely descriptive or deceptively misdescriptive under §2(e)(1).
In rare circumstances, it may be unclear whether the primary significance of the term is geographic or merely descriptive or deceptively misdescriptive. In such cases, the examining attorney may refuse registration on both grounds, in the alternative.
1210.02(b)(iv) “America” or “American” and Similar Terms in Marks
When terms such as “AMERICA,” “AMERICAN,” and “USA” appear in marks, determining whether the term or the entire mark should be considered geographic can be particularly difficult. There is no simple or mechanical answer to the question of how to treat “AMERICA” or “AMERICAN” in a mark. The examining attorney must evaluate each mark on a case-by-case basis. The examining attorney must consider the entire context, the type of goods or services at issue, the geographic origin of the goods or services and, most importantly, the overall commercial impression engendered by the mark at issue. The following principles, developed in the case law, should provide guidance in reaching a judgment in a given case.
(1) If “AMERICA” or “AMERICAN” is used in a way that primarily denotes the United States origin of the goods or services, then the term is primarily geographically descriptive. See, e.g., American Diabetes Ass’n, Inc. v. National Diabetes Ass’n, 533 F. Supp. 16, 214 USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982) (AMERICAN DIABETES ASSOCIATION held primarily geographically descriptive); In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999) (MONOGRAMS AMERICA primarily geographically descriptive of consultation services for owners of monogramming shops); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (BANK OF AMERICA held primarily geographically descriptive); American Paper & Plastic Products, Inc. v. American Automatic Vending Corp., 152 USPQ 117 (TTAB 1966) (AMERICAN AUTOMATIC VENDING held primarily geographically descriptive).
One commentator refers to such marks as exhibiting an “unadorned” use of “AMERICA” or “AMERICAN.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §14:11 (4th ed. 2006). Many
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service marks (e.g., association-type marks) fall squarely into this category. See also In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998) (U.S. CARGO primarily geographically descriptive of towable trailers carrying cargo and vehicles).
(2) If a composite mark does not primarily convey geographic significance overall, or if “AMERICA” or “AMERICAN” is used in a nebulous or suggestive manner, then it is inappropriate to treat “AMERICA” or “AMERICAN” as primarily geographically descriptive. See, e.g., Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916) (THE AMERICAN GIRL held not primarily geographically descriptive for shoes); American Plan Corp. v. State Loan & Finance Corp., 365 F.2d 635, 150 USPQ 767 (3d Cir. 1966), cert. denied, 385 U.S. 1011, 152 USPQ 844 (1967) (AMERICAN PLAN CORPORATION held not primarily geographically descriptive); Wilco Co. v. Automatic Radio Mfg. Co., Inc., 255 F. Supp. 625, 151 USPQ 24 (D. Mass. 1966) (ALL AMERICAN held not primarily geographically descriptive); In re Jim Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (THE GREAT AMERICAN BASH held not primarily geographically descriptive of wrestling exhibitions).
The introduction of a nuance, even a subtle one, may remove a mark from the primarily geographically descriptive category. This area calls for the most difficult analysis. The examining attorney must determine whether the overall commercial impression is something other than primarily geographic – for example, due to double meanings or shades of suggestive meanings.
(3) If “AMERICA” or “AMERICAN” is used in virtually any manner with goods or services that are not from the United States, then the examining attorney should determine whether the term is primarily geographically deceptively misdescriptive under §2(e)(3) and/or deceptive under §2(a). See, e.g., Singer Mfg. Co. v. Birginal-Bigsby Corp., 319 F.2d 273, 138 USPQ 63 (C.C.P.A. 1963) (AMERICAN BEAUTY held primarily geographically deceptively misdescriptive when used on Japanese-made sewing machines); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design (“AMERICAN” disclaimed) held deceptive for clothing manufactured in Italy). Cf. In re Salem China Co., 157 USPQ 600 (TTAB 1968) (AMERICAN LIMOGES held deceptive under §2(a) when used on china not made in Limoges, France). In this situation, even marks that arguably convey a non-geographic commercial impression must be viewed with great skepticism.
(4) If “AMERICA” or “AMERICAN” appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely descriptive as laudatory, or even incapable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
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1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM held incapable); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S FAVORITE POPCORN held merely descriptive); Kotzin v. Levi Strauss & Co., 111 USPQ 161 (Comm’r Pats. 1956) (AMERICA’S FINEST JEANS and AMERICA’S FINEST for overalls held not confusingly similar and incapable by inference).
Typically these marks primarily extol the quality or popularity of the goods or services and secondarily denote geographic origin. See TMEP §1209.03(n) regarding use of terms such as “AMERICA” and “AMERICAN” in a way that is merely descriptive or generic.
1210.02(c) Geographic Terms Combined With Additional Matter
A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must determine the primary significance of the composite. See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark, for various goods, held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY (“NEW YORK” disclaimed) held primarily geographically deceptively misdescriptive of backpacks, handbags, purses, and similar items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HAVANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER primarily geographically deceptively misdescriptive of rum); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design (“NEW YORK” disclaimed) held deceptive for various items of clothing that originate in North Carolina, and have no connection with New York, because of the renown of New York in the apparel industry); In re Biesseci S.p.A., 12 USPQ2d 1149 (TTAB 1989) (AMERICAN SYSTEM and design of running man, for clothing manufactured in Italy, held deceptive).
See TMEP §§1210.06 et seq. regarding the procedure for examining geographic composites.
1210.02(c)(i) Two Geographic Terms Combined
When two geographic terms are combined in the same mark, the primary significance of the composite may still be geographic, if purchasers would believe that the goods/services originate from or are rendered in both of the locations named in the mark. See In re Narada Productions, Inc., 57
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USPQ2d 1801, 1803 (TTAB 2001) (CUBA L.A. primarily geographically deceptively misdescriptive of musical recordings and live musical performances that do not originate in Cuba or Los Angeles, the Board finding that purchasers would understand the composite as a reference to the two places named rather than to “some mythical place called ‘Cuba L.A.’”); In re London & Edinburgh Insurance Group Ltd., 36 USPQ2d 1367 (TTAB 1995) (LONDON & EDINBURGH INSURANCE primarily geographically descriptive of insurance and underwriting services that are rendered or originate in the cities of London and Edinburgh).
Repeating a geographical term does not alter the geographical significance of that term. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive for clothing having no connection with London, given the renown of London as a center for contemporary as well as traditional fashions).
1210.02(c)(ii) Geographic Terms Combined With Descriptive or Generic Matter
Generally, the addition of a highly descriptive or generic term to the name of a geographic place does not alter its primarily geographic significance. In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT (“CAMEMBERT” disclaimed) held primarily geographically descriptive of cheese because Normandy, France was famous for cheese and the Board presumed that the goods would originate there since applicant failed to submit information about the origin of the goods); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and goods by air); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA held primarily geographically descriptive of wine club membership services); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN (“PIZZA KITCHEN” disclaimed) held primarily geographically descriptive of restaurant services); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986) (CAMBRIDGE DIGITAL and design (“DIGITAL” disclaimed) held primarily geographically descriptive of computer systems and parts thereof).
1210.02(c)(iii) Arbitrary, Fanciful, or Suggestive Composites
If, when viewed as a whole, a composite mark would not be likely to be perceived as identifying the geographic origin of the goods or services (i.e., the mark as a whole is not primarily geographically descriptive, primarily
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geographically deceptively misdescriptive, or deceptive), then the mark is regarded as arbitrary, fanciful, or suggestive. See In re Sharky’s Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) (PARIS BEACH CLUB, applied to T-shirts and sweatshirts, not deceptive under §2(a), the Board reasoning that because Paris is not located on an ocean or lake, and does not have a beach, the juxtaposition of “Paris” with “Beach Club” results in an incongruous phrase which purchasers would view as a humorous mark, a take off on the fact that Paris is known for haute couture. Thus, purchasers would not expect T-shirts and sweatshirts to originate in the city of Paris).
1210.03 Geographic Origin of the Goods or Services
The question of whether a term is primarily geographically descriptive under §2(e)(2), primarily geographically deceptively misdescriptive under §2(e)(3), or geographically deceptive under §2(a) depends on whether the mark identifies the place from which the goods or services originate. Goods or services may be said to “originate” from a geographic location if, for example, they are manufactured, produced, or sold there. See Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) (RODEO DRIVE held primarily geographically deceptively misdescriptive of perfume, where opposer’s evidence showed that a significant number of Rodeo Drive retailers sell “prestige” fragrances, and that the public would be likely to make the requisite goods/place association between perfume and Rodeo Drive). Cf. In re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990) (RODEO DRIVE held not primarily geographically deceptively misdescriptive of perfume because of the lack of persuasive evidence of a goods/place association in the ex parte record).
A geographic designation for a large city (e.g., Washington, D.C., Boston, San Francisco) may include locations in the metropolitan area.
A wide variety of factors must be considered in determining the origin of a product or service. For example, a product might be found to originate from a place if the main component or ingredient is made in that place. See In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA – the Russian equivalent of “from Baikal” or “Baikal’s” – held primarily geographically descriptive of vodka, where the record showed that applicant was located in Irkutsk, Russia, a city near Lake Baikal, and that applicant’s vodka is made from the water of Lake Baikal).
Goods and services do not always originate in the applicant’s place of business. See In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (THE MONTECITO DIET held not primarily geographically descriptive of printed publications, on-line journals, or information services in the fields of health, nutrition, illness prevention, detoxification, and diet and lifestyle choices, the Board finding that there was “no connection between Montecito and applicant’s goods and services other than applicant’s address”); In re John
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Harvey & Sons Ltd., 32 USPQ2d 1451, 1455 (TTAB 1994) (HARVEYS BRISTOL CREAM not primarily geographically descriptive of cakes flavored with sherry wine, the Board finding that neither applicant’s sherry wines nor applicant’s cakes come from Bristol, England, where “the only connection appears to be that applicant’s headquarters are located there and that applicant’s sherry wine was bottled there at one time”); In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993) (NANTUCKET NECTARS held primarily geographically descriptive of soft drinks, even though the goods were manufactured elsewhere, where the record showed that applicant’s headquarters and research and development division were on Nantucket; the distributor of the goods was located on Nantucket; the goods were sold in the applicant’s store on Nantucket; and the specimens were labels that bore a picture of Nantucket, stated that the goods were “born” or “created” on Nantucket, and mentioned no other geographic location); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and goods by air, because the applicant’s services included flights to and from Paradise Island, Bahamas, even though the flights were not based there); In re Fortune Star Products Corp., 217 USPQ 277 (TTAB 1982) (NIPPON held not deceptive of, inter alia, radios and televisions because, although the applicant is an American corporation, the goods are made in Japan.)
When the goods or services may be said to originate both in the geographic place named in the mark and outside that place, registration will normally be refused on the ground that the mark is primarily geographically descriptive under §2(e)(2) of the Trademark Act. In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 n.2 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN for restaurant services held primarily geographically descriptive, where the services were rendered both in California and elsewhere).
If it is unclear where the goods/services originate or will originate, the examining attorney may refuse registration under both §§2(e)(2) and 2(e)(3), in the alternative. The examining attorney must inquire where the goods/services originate or will originate, pursuant to 37 C.F.R. §2.61(b) (see TMEP §814). See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008), (Board affirmed alternative refusals of NORMANDIE CAMEMBERT for cheese under both §§2(e)(2) and 2(e)(3), as well as a refusal based on the applicant’s failure to comply with the examining attorney’s requirement for information as to the geographic origin of the goods under 37 C.F.R. §2.61(b). The Board stated that “our findings with respect to the substantive Section 2(e)(2) refusal include a presumption, unfavorable to applicant, that applicant’s goods in fact originate or will originate in or from the place named in the mark. Similarly with respect to the alternative Section 2(e)(3) refusal, we alternatively presume, unfavorably to applicant, that applicant’s goods do not or will not originate in or from the place named in the mark”).
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1210.04 Goods/Place or Services/Place Association
Refusal of registration under §2(e)(2), §2(e)(3), or §2(a) requires that there be a goods/place or services/place association such that the public is likely to believe that the goods or services originate in the place identified in the mark.
To show that there is a goods/place or services/place association, the examining attorney may provide such evidence as excerpts from telephone directories, gazetteers, encyclopedias, geographic dictionaries, the LexisNexis® database, or the results of an Internet search.
The examining attorney should also examine the specimen(s) and any other evidence in the record that shows the context in which the applicant’s mark is used. See In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1517 (TTAB 2001), where the Board noted that applicant’s point of purchase display catalogs “foster a goods/place association between its furniture and Tuscany by referring to ‘Europe’s Mediterranean coast’ and ‘European sensibility;’” and In re Nantucket Allserve Inc., 28 USPQ2d 1144 (TTAB 1993), where the Board noted that the applicant’s product labels bore a picture of Nantucket, stated that the goods were “born” or “created” on Nantucket and “[embody] the wholesome quality of the Island whose name they bear,” and mentioned no other geographic location).
When the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, for purposes of §2(e)(2), the goods/place or services/place association may ordinarily be presumed from the fact that the applicant’s goods or services originate in or near the place named in the mark. In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007) (YOSEMITE BEER held geographically descriptive of beer produced and sold in a brewpub in Merced, California, the Board stating that “[s]ince the goods originate at or near [Yosemite National Park], we can presume an association of applicant’s beer with the park.”); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA – the Russian equivalent of from Baikal” or “Baikal’s” – held primarily geographically descriptive of vodka made from water piped from Lake Baikal, the Board presuming a goods/place association “because applicant is located near Lake Baikal, in the city of Irkutsk.”); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998) (U.S. CARGO primarily geographically descriptive of towable trailers carrying cargo and vehicles); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and goods by air); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held primarily geographically descriptive of restaurant services that originate in California); In re Handler Fenton Westerns, Inc., 214 USPQ 848, 849-50
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(TTAB 1982) (DENVER WESTERNS held primarily geographically descriptive of western-style shirts originating in Denver).
This presumption is rebuttable. See TMEP §1210.04(c) regarding obscure or remote places, and TMEP §§1210.02 et seq. regarding the primary significance of a geographic term.
It is more difficult to establish a services/place association than a goods/place association when making a refusal under §§2(e)(3) and 2(a). In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003). See TMEP §1210.04(a) regarding establishment of a goods/place association, and TMEP §1210.04(b) regarding establishment of a services/place association.
1210.04(a) Establishing Goods/Place Association
To establish a goods/place association, it is not necessary to show that the place identified in the mark is well known or noted for the goods. In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003) (“[T]he goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product.”). See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and design held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy, where an encyclopedia and a gazetteer showed that Venice was a large metropolitan area where fine art objects, glassware, and decorative items had been made and sold for centuries, and a popular tourist destination); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive where manufacturing listings and Nexis® excerpts showed that handbags and luggage are designed and manufactured in New York); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (evidence from a gazeteer and dictionary showing that tobacco is a crop produced and marketed in Durango, Mexico held sufficient to establish a prima facie goods/place association); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA held primarily geographically descriptive of vodka where record the showed that applicant is located in Irkutsk, Russia, a city near Lake Baikal and one of the main export regions of Russian vodka, applicant’s vodka is made from water piped directly from Lake Baikal, Lake Baikal is the world’s largest fresh water lake, and there are numerous references to “Baikal” in publications from various cities throughout the United States and in national publications); In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511 (TTAB 2001) (evidence that Tuscany, Italy is an important industrial center that produces a variety of products including furniture, and that several businesses advertise the sale of furniture from Tuscany on the Internet, held sufficient to establish a goods/place association between Tuscany and furniture, even though Tuscany is not famous for its furniture); In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000)
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(HAVANA RESORT & CASINO and ROYAL HAVANA RESORT & CASINO held primarily geographically deceptively misdescriptive of wearing apparel, beauty products and perfume that do not come from Havana, Cuba, where the record showed that Havana produces a variety of goods, including clothing and cosmetic items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HAVANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER all held primarily geographically deceptively misdescriptive of rum that does not originate in Havana, Cuba, where the evidence showed that Havana is a major city and rum is a significant product).
In Save Venice, the court noted that in the modern marketing context, geographic regions that are noted for certain products or services are likely to expand from their traditional goods or services into related goods or services, and that this would be expected by consumers. Accordingly, the court held that “the registrability of a geographic mark may be measured against the public’s association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there.” 259 F.3d at 1355, 59 USPQ2d at 1784.
However, a showing that the geographic place is known to the public and could be the source of the goods or services may not be enough in itself to establish a goods/place or services/place association in all cases. See In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (THE MONTECITO DIET held not primarily geographically descriptive and the evidence of a goods/place or services/place association, consisting only of the fact that the applicant lived in Montecito, found insufficient, the Board stating that “it would be speculation on our part to reach the conclusion that the goods or services originate there or that the public would understand that there is a goods/place relationship”); In re John Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994) (HARVEYS BRISTOL CREAM not primarily geographically descriptive of cakes flavored with sherry wine, the Board finding evidence that applicant’s headquarters are located in Bristol, England and that applicant’s sherry wine was once bottled there insufficient to show that American consumers are likely to think that “Bristol” refers to a place from which the goods originate); In re Gale Hayman Inc., 15 USPQ2d 1478 (TTAB 1990) (SUNSET BOULEVARD held not primarily geographically descriptive of perfume and cologne, the Board holding that the mere fact that applicant’s principal offices are in Century City, close to Sunset Boulevard does not mandate a finding that a goods/place association should be presumed, determining that the public would not make a goods/place association, and noting that there was no evidence that any perfume or cologne is manufactured or produced on Sunset Boulevard or that applicant’s goods are sold there); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (PARK AVENUE held neither deceptive nor geographically deceptively misdescriptive as applied to cigarettes and smoking tobacco, the Board finding no goods/place association between tobacco products and Park Avenue in New York City, on
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which opposer’s world headquarters was located); In re Venice Maid Co., Inc., 222 USPQ 618, 619 (TTAB 1984) (VENICE MAID held not primarily geographically deceptively misdescriptive of canned foods, including, inter alia, lasagna and spaghetti, where the evidence of a goods/place association was found insufficient, the Board stating that “we are unwilling to sustain the refusal to register in this case simply on the basis that Venice is a large Italian city that could, conceivably, be the source of a wide range of goods, including canned foods”).
The question of whether there is a goods/place association is determined on a case-by-case basis, based on the evidence in the record. Compare Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) (RODEO DRIVE held primarily geographically deceptively misdescriptive of perfume, where opposer’s evidence showed that a significant number of Rodeo Drive retailers sell “prestige” fragrances, and that the public would be likely to make the requisite goods/place association between perfume and Rodeo Drive) with In re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990) (RODEO DRIVE held not primarily geographically deceptively misdescriptive of perfume because of the lack of persuasive evidence of a goods/place association in the ex parte record).
1210.04(b) Establishing Services/Place Association
It is more difficult, with respect to refusals under §§2(a) and 2(e)(3), to establish a services/place association than a goods/place association. The Court of Appeals for the Federal Circuit has provided the following guidance for refusals under §2(e)(3):
Application of the second prong of this test – the services-place association – requires some consideration. A customer typically receives services, particularly in the restaurant business, at the location of the business. Having chosen to come to that place for the services, the customer is well aware of the geographic location of the service. This choice necessarily implies that the customer is less likely to associate the services with the geographic location invoked by the mark rather than the geographic location of the service, such as a restaurant. In this case, the customer is less likely to identify the services with a region of Paris when sitting in a restaurant in New York.
[T]he services-place association operates somewhat differently than a goods-place association…. In a case involving goods, the goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product [citations omitted]. Thus, to make a goods-place association, the case law permits an inference that the consumer associates the product with the geographic location in the mark
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because that place is known for producing the product…. In the case of a services-place association, however, a mere showing that the geographic location in the mark is known for performing the service is not sufficient. Rather the second prong of the test requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark. See In re Municipal Capital Markets, Corp., 51 USPQ2d 1369, 1370-71 (TTAB 1999) (“Examining Attorney must present evidence that does something more than merely establish that services as ubiquitous as restaurant services are offered in the pertinent geographic location.”). Thus, a services-place association in a case dealing with restaurant services … requires a showing that the patrons of the restaurant are likely to believe the restaurant services have their origin in the location indicated by the mark. In other words, to refuse registration under section 2(e)(3), the PTO must show that patrons will likely be misled to make some meaningful connection between the restaurant (the service) and the relevant place.
For example, the PTO might find a services-place association if the record shows that patrons, though sitting in New York, would believe the food served by the restaurant was imported from Paris, or that the chefs in New York received specialized training in the region in Paris, or that the New York menu is identical to a known Parisian menu, or some other heightened association between the services and the relevant place….
In re Les Halles De Paris J.V., 334 F.3d 1371, 1373-74, 67 USPQ2d 1539, 1541-42 (Fed. Cir. 2003) (LE MARAIS held not primarily geographically deceptively misdescriptive of restaurant services. Evidence that “Le Marais” was a fashionable Jewish area in Paris was insufficient to establish that the public would believe that “Le Marais” was the source of New York restaurant services featuring a kosher cuisine).
What constitutes a “heightened association” between the services and the place will vary depending on the nature of the services. There may be situations where the fact that the geographic location is known or famous for performing the service would be sufficient to establish a services/place association (e.g., “Texas” for cattle breeding services).
The burden is greater for restaurant services, due to their ubiquitous nature. In In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004) (COLORADO STEAKHOUSE and design held primarily geographically deceptively misdescriptive of restaurant services), the Board found that the examining attorney had established an “additional reason” why purchasers would mistakenly believe that the food served in the restaurant was from Colorado, where the record contained the following evidence: gazetteer and dictionary definitions of “Colorado” and “steakhouse;” a United States
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Department of Agriculture report on cattle inventory; stories excerpted from the LexisNexis® database; and Internet excerpts showing that Colorado was one of the 11 top cattle states in the United States, that Colorado was known for its steaks, that “Colorado steaks” are featured food items in restaurants outside the state, and that politicians from Colorado use “Colorado steaks” as the basis for wagers on sporting events.
1210.04(c) Obscure or Remote Geographic Marks
Geographic matter may be so obscure or remote that it would not be recognized as an indication of the geographic source of the goods or services. In such a case, the mark is treated as an arbitrary designation because its geographic meaning is likely to be lost on consumers. Thus, consumers will not perceive the geographic significance of the term as its primary significance and will not make a goods/place or services/place association. See In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820 (TTAB 2006) (Balashi, Aruba deemed to be so obscure or remote that purchasers in the United States would not recognize it as indicating the geographical source of applicant’s beer); ConAgra Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987) (TAPATIO held not primarily geographically deceptively misdescriptive of meatless hot sauce, despite the fact that the mark is a Spanish term meaning “of or pertaining to Guadalajara, Mexico” and the goods did not originate from Guadalajara, the Board finding that the significance of the term is lost on the public because of its obscurity); In re Bavaria St. Pauli Brauerei AG, 222 USPQ 926 (TTAB 1984) (reversing examining attorney’s requirement for disclaimer of “JEVER” in application to register JEVER and design for beer originating in Jever, West Germany, where the sole evidence of a goods/place association was an entry from a 32- year-old geographic index); In re Brauerei Aying Franz Inselkammer KG, 217 USPQ 73 (TTAB 1983) (AYINGER BIER (“BIER” disclaimed) held not primarily geographically descriptive of beer emanating from Aying, West Germany, a hamlet of 500 inhabitants, where the examining attorney’s only evidence of a goods/place association was the specimen label identifying Aying as the place of origin).
Remoteness or obscurity is determined from the perspective of the average American consumer. See In re Societe Generale des Eaux Minerales de Vittel, S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (VITTEL and design held not primarily geographically descriptive of cosmetic products because of lack of goods/place association between the goods and the applicant’s place of business in Vittel, France). However, the examining attorney does not necessarily have to show that the nationwide general public would associate the mark with the place. The significance of the term is determined not in the abstract, but from the point of view of the consumers of the particular goods or services identified in the application. In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995) (FOUNTAIN HILLS held primarily geographically descriptive of real estate development services
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rendered in Fountain Hills, Arizona, where the record showed that Fountain Hills was the name of the town where the applicant was located and rendered its services, and that the purchasers who came in contact with the mark would associate that place with the services).
1210.04(d) Arbitrary Use of Geographic Terms
The name of a geographic location that has no significant relation to commercial activities or the production of the relevant goods or services, such as ALASKA for bananas, is treated as an arbitrary mark because it is unlikely that consumers would believe that the mark identifies the place from which the goods originate.
Often, names of mountains or rivers are arbitrary for goods because no commercial activity is performed there. For example, “Colorado River” for candy bars or “Mount Rushmore” for automobiles would be arbitrary. See In re Nantucket, Inc., 677 F.2d 95, 105, 213 USPQ 889, 897 (C.C.P.A. 1982) (Nies, J., concurring) (“Thus, the names of places devoid of commercial activity are arbitrary usage. In this category are names of places such as ANTARCTICA, MOUNT EVEREST, or GALAPAGOS, at least when used for ordinary commercial products, such as beer and shoes. Names such as SUN, WORLD, GLOBE, MARS, or MILKY WAY are also arbitrary, not informational; competitors do not need to use the terms to compete effectively.”).
1210.05 Geographically Deceptive Marks
1210.05(a) Basis for Refusal
Past Practice. Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, the test for determining whether a mark was primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act differed from the test for determining whether a mark was deceptive under §2(a) of the Act, 15 U.S.C. §1052(a). To establish that a mark was primarily geographically deceptively misdescriptive under §2(e)(3), the examining attorney had to show that the primary significance of the mark was geographic, that purchasers would be likely to believe that the goods or services originated in the place named in the mark, and that the goods or services did not originate in that place. In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (C.C.P.A. 1982). An additional showing of “materiality” was required to establish that a mark was deceptive under §2(a), i.e., a showing that a goods/place or services/place association made by purchasers was “material” to the decision to purchase the goods or services. Bureau Nat’l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984).
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Current Practice. The Court of Appeals for the Federal Circuit has held that with the NAFTA amendments, §2 of the Act “no longer treats geographically deceptively misdescriptive marks differently from geographically deceptive marks,” and that a showing of public deception is required to establish that a mark is unregistrable under §2(e)(3). In re California Innovations Inc., 329 F.3d 1334, 1339, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003). Thus, the test for determining whether, post-NAFTA, a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is now the same as the test for determining whether a mark is deceptive under §2(a). Id., 329 F.3d at 1340, 66 USPQ2d at 1857.
1210.05(b) Elements of a §2(e)(3) Refusal
Accordingly, the elements of a refusal under Trademark Act §2(e)(3) are as follows:
(1) The primary significance of the mark is a generally known geographic location;
(2) The goods or services do not originate in the place identified in the mark;
(3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and
(4) The misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services.
See In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1495 (Fed. Cir. 2009); California Innovations, 329 F.3d at 1341; 66 USPQ 2d at 1858.
Often, the record is clear that neither the applicant nor the goods/services originate from the place named in the mark. In other cases, although the applicant may not come from the place named, it is not clear whether the goods/service originate in that place. In either situation, after determining that the primary significance of the mark is a generally known geographic location, and that there is a goods/place or services/place association such that the public is likely to believe that the goods or services originate in the place identified in the mark, the examining attorney must then determine whether a geographically deceptively misdescriptive refusal would be warranted. At this point, the assessment turns on materiality – that is, whether a known or possible misdescription in the mark would affect a substantial portion of the relevant consumers’ decision to purchase the goods/services.
In cases under the doctrine of foreign equivalents, where the place name in the mark appears in a foreign language, the requirement that a substantial
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portion of the relevant consuming public would likely be deceived raises special issues. To make a determination about “a substantial portion” in such cases, the examining attorney must consider whether the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers (e.g., because they are the “target audience”). Spirits, 563 F.3d at 1353, 90 USPQ2d at 1495.
1210.05(c) Determining Materiality
To establish that a geographic term is primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3) or deceptive under §2(a), it must be shown that the goods/place or services/place association made by a consumer is material to the consumer’s decision to purchase those goods/services. In re California Innovations Inc., 329 F.3d 1334, 1340, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).
1210.05(c)(i) Materiality In Cases Involving Goods
In determining "materiality,” the Board has stated that it looks to evidence regarding the probable reaction of purchasers to a particular geographical term when it is applied to particular goods. See In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983). If the evidence shows that the geographical area named in the mark is sufficiently known to lead purchasers to make a goods/place association, but the record does not show that the relevant goods are a principal product of that geographical area, the deception will most likely be found not to be material. If, however, there is evidence that the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.
Furthermore, evidence that a place is famous as a source of the goods at issue raises an inference in favor of materiality. See In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003). Such evidence supports a presumption that a substantial portion of the relevant consumers is likely to be deceived.
Thus, to establish the materiality element for goods, the evidence should show that:
• The place named in the mark is famous as a source of the goods at issue;
• The goods in question are a principal product of the place named in the mark; or
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• The goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.
See California Innovations, 329 F.3d at 1340, 66 USPQ2d at 1857; In re Save Venice N.Y., Inc., 259 F.3d 1346, 1355, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001); House of Windsor, 221 USPQ at 57.
Searches that combine the place name with the name of the goods and terms such as “famous,” “renowned,” “well-known,” “noted for,” “principal,” or “traditional” may be useful to establish materiality.
Note that in U.S. Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1542 (TTAB 2006), the Board held that the mark VEGAS was not primarily geographically deceptively misdescriptive of playing cards that do not originate in Las Vegas, finding that the opposer failed to establish that the misleading goods/place association would be a material factor in the customer’s decision to purchase the goods. The Board rejected opposer’s argument that it had met the materiality factor by proving that there is a market for cancelled casino cards from Las Vegas casinos, stating that “[a]lthough the evidence demonstrates that consumers are interested in obtaining cards that were used in casinos, the evidence does not establish that they are interested in purchasing playing cards that were manufactured or used in Las Vegas.” The Board also disagreed with opposer’s contention that the goods/place association between Las Vegas and playing cards was so strong that materiality could be presumed.
1210.05(c)(ii) Materiality In Cases Involving Services
In a case involving services, a showing that the geographic location in the mark is known for performing the service is not sufficient, unless it rises to the level of fame. This is especially true for restaurant services because, having chosen a particular restaurant, a customer is aware of the geographic location of the service and is less likely to associate the services with the place named in the mark (e.g., a customer is less likely to identify restaurant services with a region of Paris when sitting in a restaurant in New York).
Therefore, before addressing materiality, the examining attorney must satisfy the services/place association prong by providing evidence of an additional reason for the consumer to associate the services with the geographic location invoked by the mark. For example, the examiner could provide evidence that a customer sitting in a restaurant in one location would believe that:
• The food came from the place named in the mark; or
• The chef received specialized training in the place identified in the mark; or
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• The menu is identical to a known menu from the geographic location named in the mark.
See In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541-1542 (Fed. Cir. 2003); In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921, 1927 (TTAB 2004).
This heightened association between the services and geographic place named in the mark raises an inference of deception or materiality for a service mark. The Court of Appeals for the Federal Circuit has provided the following guidance regarding additional evidence that would be sufficient to satisfy the materiality element:
In any event, the record might show that customers would patronize the restaurant because they believed the food was imported from, or the chef was trained in, the place identified by the restaurant’s mark. The importation of food and culinary training are only examples, not exclusive methods of analysis….
Les Halles De Paris J.V., 334 F.3d 1371, 1375, 67 USPQ2d 1539, 1542.
In In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004) (COLORADO STEAKHOUSE and design held primarily geographically deceptively misdescriptive of restaurant services), the Board found that a mistaken belief that the steaks served in applicant’s restaurant were from Colorado would be material to the customer’s decision to patronize the restaurant, where the record contained the following evidence: gazetteer and dictionary definitions of “Colorado” and “steakhouse;” a United States Department of Agriculture report on cattle inventory; stories excerpted from the LexisNexis® database; and Internet excerpts showing that Colorado was one of the 11 top cattle states in the United States, that Colorado was known for its steaks, that “Colorado steaks” are featured food items in restaurants outside the state, and that politicians from Colorado use “Colorado steaks” as the basis for wagers on sporting events. The Board stated that “an inference of materiality arises where there is a showing of a ‘heightened association’ between the services and the geographic place or, in other words, a showing of ‘a very strong services-place association.’” Id. at 1928.
See also TMEP §§1203.02 et seq. regarding deceptive marks, and TMEP §1210.08 regarding geographical designations used on or in connection with wines or spirits that identify a place other than the origin of the goods.
1210.05(d) Procedures for Issuing Geographically Deceptive Refusals
Although the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is now the same as the test for determining whether a mark is deceptive under §2(a), the statutory provisions
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with respect to registrability on the Supplemental Register and on the Principal Register under §2(f) are different:
• Under §23(a) of the Trademark Act, a mark that is primarily geographically deceptively misdescriptive may be registered on the Supplemental Register if the mark has been in lawful use in commerce since before December 8, 1993 (the date of enactment of the NAFTA Implementation Act), while a mark that is deceptive may not be registered on the Supplemental Register; and
• Under §2(f) of the Trademark Act, a mark that is primarily geographically deceptively misdescriptive may be registered if the mark became distinctive of the goods or services in commerce before December 8, 1993, while a mark that is deceptive may not be registered on the Principal Register even upon a showing of acquired distinctiveness.
Accordingly, because the statute expressly prohibits registration of deceptive marks on the Supplemental Register or on the Principal Register under §2(f), the examining attorney will proceed as follows.
1210.05(d)(i) Neither Applicant Nor Goods/Services Come from the Place Named
To ensure that no geographically deceptively misdescriptive marks claiming use or acquired distinctiveness prior to December 8, 1993 are registered on the Supplemental Register or under §2(f) when it is clear that neither the applicant nor the goods/services come from the place named in the mark, the examining attorney must determine whether the misdescription would be material and follow the procedures outlined below:
• If the examining attorney determines that the misdescription would not be material to the decision to purchase, no refusal should be made. If the application is otherwise in condition for publication, the examining attorney should approve the mark for publication.
• If the examining attorney determines that the misdescription would be material to the decision to purchase, and the application does not claim use prior to December 8, 1993, the examining attorney must issue nonfinal refusals under §§2(e)(3) and 2(a), supported by appropriate evidence.
Depending upon the applicant’s response, the examining attorney will ultimately issue a final refusal under either §2(e)(3) or §2(a):
• If the applicant’s response does not claim use or acquired distinctiveness prior to December 8, 1993, the examining attorney
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must withdraw the §2(a) refusal and issue a final refusal under §2(e)(3), if otherwise appropriate.
• In the rare circumstance that the applicant responds by claiming use prior to December 8, 1993 and amends to the Supplemental Register, or establishes that the mark acquired distinctiveness under §2(f) prior to December 8, 1993, to ensure that a geographically deceptively misdescriptive mark will not be allowed to register, the examining attorney must withdraw the §2(e)(3) refusal and issue a final refusal under §2(a), if otherwise appropriate.
In re South Park Cigar, Inc., 82 USPQ2d 1507, 1509, n.3 (TTAB 2007). See also Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008) (Board considered only the §2(e)(3) claim in opposition based on both §§2(a) and 2(e)(3)); In re Beaverton Foods, Inc., 84 USPQ2d 1253, 1257 (TTAB 2007) (“[W]here an applicant is seeking registration for a mark with a geographic term on the Principal Register under Section 2(f) based on a claim that the mark had acquired distinctiveness prior to December 8, 1993, a geographically deceptive mark is properly refused registration under Section 2(a). Nothing in the statute or legislative history dictates otherwise. Moreover, this analysis is consistent with the practice of the USPTO.”).
1210.05(d)(ii) It is Not Clear Whether the Goods/Services Originate From the Place Named
If the applicant does not come from the place named in the mark, and the record does not indicate whether the goods/services originate in that place (see TMEP §1210.03), the examining attorney must do the following:
(1) If (a) the entire mark would not be geographically descriptive (making disclaimer an option), (b) there are no other substantive refusals (making an examiner’s amendment an option), and (c) the application could be put into condition for publication by examiner’s amendment (see TMEP §707), to expedite prosecution, the examining attorney should:
• Attempt to contact the applicant to determine whether the goods/services originate in the place named and, if so, to obtain authorization for a disclaimer and for any other amendments that would put the application in condition for approval for publication.
• If the applicant states that the goods/services do not originate in the place named, the examining attorney must so indicate in a note in a “Notes-to-the-File” section of TICRS. The examining attorney must then follow the appropriate procedure in TMEP §1210.05(d)(i).
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• To ensure the completeness of the record in the event of an appeal, any Office action must also include an information request under 37 C.F.R. §2.61(b), asking whether the goods/services originate in the place named.
(2) If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if the applicant indicates that they do not know where the goods/services will originate, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must proceed as follows:
• Issue a refusal under §2(e)(2) as geographically descriptive (or a requirement for a disclaimer, if appropriate), based on the presumption that the goods/services come from the place named in the mark; and
• If the misdescription would be material, issue alternative refusals, supported by evidence, under §§2(a) and 2(e)(3) as geographically deceptively misdescriptive, based on the alternative presumption that the goods do not come from the place named; and
• Issue any other relevant refusals and requirements; and
• Issue an information request under 37 C.F.R. §2.61(b), asking where the goods/services originate. This written request is made to ensure the completeness of the record in the event of an appeal.
See In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008).
1210.05(e) Geographically Deceptive Matter: Case References
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009) (Remanding case to Trademark Trial and Appeal Board to determine whether a substantial portion of the relevant consumers would translate and be materially deceived by the Russian term Moskovskaya for vodka); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003) (Court found that the record did not show that a diner at the restaurant in question would identify the region in Paris named in the mark as a source of the restaurant services or that a material reason for the choice of the restaurant was its identity with the region in Paris); In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003); In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE
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COLLECTION and design held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy, where an encyclopedia and a gazetteer showed that Venice was a well known center for the manufacture of glass, lace, art objects, jewelry, cotton, and silk textiles); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive where manufacturing listings and Nexis® excerpts showed that New York was well known as a place where leather goods and handbags are designed and manufactured); Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2008) (HAVANA CLUB found primarily geographically deceptively misdescriptive of cigars made from Cuban seed tobacco since Havana is world renowned for cigars and consumers would believe that the cigars originate in Havana when, in fact, they do not); Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008) (opposition to registration of GUANTANAMERA sustained for cigars and smokers’ articles as being primarily geographically deceptively misdescriptive where the primary significance of the term was “of or from Guantanamo, Cuba” or “a female from Guantanamo” and Cuba was renowned for tobacco and cigars); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (NORMANDIE CAMEMBERT held primarily geographically descriptive of cheese because Normandy, France was famous for cheese and the Board presumed that the goods would originate there, and, in the alternative, primarily geographically deceptively misdescriptive for cheese, based on the presumption that the goods would not originate there, since applicant failed to submit information about the origin of the goods); In re Beaverton Foods, Inc., 84 USPQ2d 1253 (TTAB 2007) (NAPA VALLEY MUSTARD CO. for mustard that did not originate in Napa Valley, California held deceptive, where the record contained printouts from various websites showing use of NAPA VALLEY in relation to mustard by third parties, evidence of a widely advertised annual Napa Valley Mustard Festival, evidence of the connection of Napa Valley to wineries and gourmet food, and copies of advertisements for applicant’s goods which imply that the mustard originates in Napa Valley); In re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) (YBOR GOLD held primarily geographically deceptively misdescriptive of cigars and tobacco that do not come from the Ybor City area of Tampa, Florida, given the prominence of Ybor City as a current and historical source of cigars); In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004) (Board found that patrons of applicant’s restaurants, COLORADO STEAKHOUSE, would believe the steaks that were served would come from Colorado); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (LONDON LONDON held deceptive for clothing having no connection with London, given the renown of London as a center for contemporary as well as traditional fashions); In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992) (juxtaposition of “Paris” with “Beach Club” results in incongruous phrase, and purchasers, thus, will view PARIS BEACH CLUB as humorous mark in which “Paris” is used facetiously rather than as geographic reference); In re Perry
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Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (PERRY NEW YORK and design (“NEW YORK” disclaimed) held deceptive for various items of clothing that originate in North Carolina, and have no connection with New York, because of the renown of New York in the apparel industry); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984) (BAHIA held deceptive of cigars that do not originate in the Bahia province of Brazil, where the evidence of record was “unequivocal” that tobacco and cigars are important products in the Bahia region).
1210.06 Procedure for Examining Geographic Composite Marks
A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must first determine the primary significance of the composite. See TMEP §§1210.02(c) et seq.
Composite marks present unique issues in regard to both geographically descriptive and misdescriptive refusals. When evaluating whether the mark’s primary significance is a generally known geographic location, a composite mark must be evaluated as a whole. See In re Save Venice New York Inc., 259 F.3d 1346,1352, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001). In order to do so, the examiner may also consider the significance of each element within the mark. Id.
For example, the mark PARIS BEACH CLUB, for clothing, was held not to be perceived as primarily geographic. In re Sharky's Drygoods Co., 23 USPQ2d 1061 (TTAB 1992). Because Paris is known for haute couture, is not located on an ocean or lake and does not have a beach, the Board found that the juxtaposition of PARIS with BEACH CLUB resulted in an incongruous phrase and that the word PARIS would be viewed as a facetious rather than a geographic reference. The mark NEW YORK WAYS GALLERY, however, was found to be geographically deceptive. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999). The Board determined that (1) NEW YORK was not an obscure geographical term; (2) NEW YORK was known as a place where the goods at issue were designed, manufactured, and sold; and (3) the primary geographic significance was not lost by the addition of WAYS GALLERY to NEW YORK. Likewise, in the YBOR GOLD case, the Board held that the mere addition of the word GOLD to the geographic designation YBOR did not result in an arbitrary, fanciful, or suggestive composite. In re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007). The Board determined that GOLD connoted the high quality of the goods and thus did not detract from the geographic significance of YBOR or negate the primarily geographic significance of the mark as a whole.
Depending on the primary significance of the composite, the examining attorney will handle the geographic issue in a geographic composite mark in one of the following ways:
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(1) If the examining attorney finds that the mark, when viewed as a whole, is arbitrary, fanciful, or suggestive, he or she will approve the mark for publication without evidence that the mark has acquired distinctiveness under §2(f). However, examining attorneys must consult their senior or managing attorney before going forward when they have made a preliminary determination that the primary significance of the mark as a whole is not geographic. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy, within the Office of the Deputy Commissioner for Trademark Examination Policy;
(2) If the examining attorney finds that the mark is primarily geographically descriptive under §2(e)(2) without a showing of acquired distinctiveness, primarily geographically deceptively misdescriptive under §2(e)(3), or deceptive under §2(a), he or she will refuse registration of the mark as a whole; or
(3) If the examining attorney finds that the geographic matter is a separable part of the mark, the examining attorney’s action will depend on whether the matter is primarily geographically descriptive, primarily geographically deceptively misdescriptive, or deceptive. See TMEP §1210.06(a) regarding primarily geographically descriptive composites, and TMEP §1210.06(b) regarding primarily geographically deceptively misdescriptive and deceptive composites.
1210.06(a) Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter
If a composite mark comprises a geographic term that is primarily geographically descriptive of the goods or services under §2(e)(2), and the mark as a whole would be likely to be perceived as indicating the geographic origin of the goods or services, then the examining attorney must consider: (1) whether the geographic term is a separable element in the mark; and (2) the nature of the additional matter that makes up the composite mark.
If the geographic term is not a separable element or if none of the additional matter that makes up the composite mark is inherently distinctive (e.g., it is merely descriptive or incapable), then the examining attorney should refuse registration of the entire mark on the Principal Register pursuant to §2(e)(2).
If the geographic term is a separable element and the additional matter making up the mark is inherently distinctive as applied to the goods or services (i.e., coined, arbitrary, fanciful, or suggestive), the applicant may either: (1) register the mark on the Principal Register with a disclaimer of the geographic term; or (2) establish that the geographic term has acquired distinctiveness under §2(f).
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A disclaimer is appropriate where the geographic component is a separable feature of the mark, and the composite mark includes an inherently distinctive, non-disclaimed component (e.g., coined, arbitrary, fanciful, or suggestive wording or design). The composite mark must include a non-disclaimed component because a mark cannot be registered if all the components have been disclaimed. See TMEP §§1213 et seq. regarding disclaimer.
When the examining attorney requires a disclaimer of primarily geographically descriptive matter, the applicant may seek to overcome the disclaimer requirement by submitting a showing that the geographic term has become distinctive under §2(f). See TMEP §§1210.07(b) and 1212.02(f)(i) regarding §2(f) claims as to a portion of the mark.
A term that is primarily geographically descriptive of the goods or services under §2(e)(2) may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act, if it is not barred by other section(s) of the Act. See TMEP §1210.07(a).
To help ensure that determinations concerning the primary significance of composite marks are handled consistently, examining attorneys must consult their senior or managing attorney before going forward when they have made a preliminary determination that the primary significance of the mark as a whole is not geographic. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy regarding such marks.
1210.06(b) Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter
If a composite mark includes matter that is primarily geographically deceptively misdescriptive within the meaning of §2(e)(3) or deceptive under §2(a), and the mark as a whole would be likely to be perceived as indicating the geographic origin of the goods or services, the examining attorney must follow the procedures outlined above for refusing registration. See TMEP §1210.05(d).
A composite mark that is deceptive under §2(a) cannot be registered, even with a disclaimer of the geographic component. In re Perry Mfg. Co., 12 USPQ2d 1751, 1751-52 (TTAB 1989).
A disclaimer of the geographic matter will not overcome a §2(e)(3) refusal, even if the mark was in use prior to December 8, 1993. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539,1542 (Fed. Cir. 1999).
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See TMEP §1210.05(a) regarding the basis for refusal of marks that are primarily geographically deceptively misdescriptive, and TMEP §1210.05(d) for procedures for issuing such refusals.
To help ensure that determinations concerning the primary significance of composite marks are handled consistently, examining attorneys must consult their senior or managing attorney before going forward when they have made a preliminary determination that the primary significance of the mark as a whole is not geographic. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy regarding such marks.
1210.07 Supplemental Register and Section 2(f)
1210.07(a) Registrability of Geographic Terms on the Supplemental Register
Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Supplemental Register, if it is not barred by other section(s) of the Act.
Primarily Geographically Deceptively Misdescriptive Marks. A mark that is found to be primarily geographically deceptively misdescriptive under §2(e)(3) may not be registered on the Supplemental Register unless the mark has been in lawful use in commerce since before December 8, 1993, the date of enactment of the NAFTA Implementation Act. Section 23(a) of the Trademark Act; 15 U.S.C. §1091(a). If the applicant claims use prior to December 8, 1993 and seeks registration on the Supplemental Register, or amends to the Supplemental Register, the examining attorney must refuse registration under §2(a). See TMEP §1210.05(d)(i).
Geographically Deceptive Marks. A mark that is deceptive under §2(a) may not be registered on the Supplemental Register. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992).
NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
1210.07(b) Registrability of Geographic Terms Under Section 2(f)
Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Principal Register if it is shown to have acquired distinctiveness under §2(f). See TMEP §§1212 et seq. regarding §2(f).
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Primarily Geographically Deceptively Misdescriptive Marks. A mark that is primarily geographically deceptively misdescriptive under §2(e)(3) may not be registered under §2(f) unless the mark became distinctive of the goods or services in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act. See In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000); Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996).
If the applicant claims that the mark acquired distinctiveness prior to December 8, 1993, the examining attorney must refuse registration under §2(a). See TMEP §1210.05(d)(i).
Geographically Deceptive Marks. A mark that is deceptive under §2(a) may not be registered on the Principal Register even under §2(f).
Section 2(f) in Part. An applicant may claim that a geographic component of a mark has acquired distinctiveness under §2(f). See TMEP §1212.02(f)(i) regarding claims of acquired distinctiveness as to a portion of a mark. Thus, if the examining attorney requires a disclaimer of matter that is primarily geographically descriptive under §2(e)(2), the applicant may seek to overcome the disclaimer requirement by submitting a showing that the geographic component has acquired distinctiveness under §2(f). If the applicant is able to establish to the satisfaction of the examining attorney that the geographic component has acquired distinctiveness, the examining attorney will approve the mark for publication with a notation that there is a claim of distinctiveness under §2(f) as to the geographic component, if appropriate.
1210.08 Geographical Indications Used on Wines and Spirits
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), prohibits the registration of a designation that consists of or comprises “a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996].” This provision was added by the Uruguay Round Agreements Act, implementing the Trade-Related Intellectual Property (“TRIPs”) portions of the General Agreement on Tariffs and Trade (“GATT”). This provision does not apply to geographic indications that were first used in commerce on or in connection with wines or spirits prior to January 1, 1996.
The term “spirits” refers to “a strong distilled alcoholic liquor” (e.g., gin, rum, vodka, whiskey, or brandy). Random House Webster’s Unabridged Dictionary 1839 (2nd ed. 1998). This provision does not apply to designations used on or in connection with beer, nor does it apply to goods that are not wines or spirits, but are partially composed of wines or spirits (e.g., wine vinegar, wine sauces, wine jelly, rum balls, bourbon chicken).
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This provision of §2(a) applies if the applicant’s identification of goods: (1) specifically includes wines or spirits; or (2) describes the goods using broad terms that could include wines or spirits (e.g., alcoholic beverages).
Section 2(a) is an absolute bar to the registration of these geographical designations on either the Principal Register or the Supplemental Register. Neither a disclaimer of the geographical designation nor a claim that it has acquired distinctiveness under §2(f) can obviate a §2(a) refusal if the mark consists of or comprises a geographical indication that identifies a place other than the origin of the wines or spirits.
See TMEP §1210.08(a) regarding geographical indications used on wines and spirits that do not originate in the named place, TMEP §1210.08(b) regarding geographical indications used on wines and spirits that originate in the named place, and TMEP §1210.08(c) regarding geographical indications that are generic for wines and spirits.
1210.08(a) Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place
In implementing the TRIPs Agreement through the Uruguay Round Agreements Act (“URAA”), Pub. L. 103-465, 103 Stat. 4809, Congress approved a Statement of Administrative Action (“SAA”) which provides, in part, that:
“Geographical indications” are defined in TRIPs Article 22.1 as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” The Administration expects that this definition will be applied in the context of trademark registration and that a “geographical indication” as used in this provision will be interpreted to comprise only those areas which have a reputation for being associated with the specific goods at issue. Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration (emphasis added).
Statement of Administrative Action, Agreement on Trade-Related Aspects of Intellectual Property Rights, H. Doc. 103-316, Vol. 1, 103rd Cong., 2d Sess. 1000, 1994 WL 761796, §B.1.e (Sept. 27, 1994). 19 U.S.C. §§3511(a)(2) and 3512(d).
A designation is considered a geographical indication under §2(a) if it identifies the applicant’s wines or spirits as originating in a territory known for a given quality, reputation, or other characteristic associated with wines or spirits. A mark for wines or spirits that includes a geographical indication is
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unregistrable if: (1) purchasers would erroneously believe that the goods originate in the relevant geographic location; and (2) the quality, reputation, or characteristic associated with wines or spirits from that location would materially affect the purchaser’s decision to buy the goods.
To establish a prima facie case for refusal to register a mark under the “wines and spirits” provision of §2(a), the following is required:
(1) The primary significance of the relevant term or design is geographic, e.g., a place name, abbreviation, nickname, or symbol; or an outline or map of a geographic area (see TMEP §§1210.02(a) and 1210.02(b) et seq.);
(2) Purchasers would be likely to think that the goods originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place association (see TMEP §§1210.04 et seq.);
(3) The goods do not originate in the place identified in the mark (see TMEP §1210.03);
(4) A purchaser's erroneous belief as to the geographic origin of the goods would materially affect the purchaser's decision to buy the goods (see TMEP §§1210.05(c) et seq.); and
(5) The mark was first used in commerce by the applicant on or after January 1, 1996.
Section 2(a) is an absolute bar to the registration of false geographical indications used on wines or spirits on either the Principal Register or the Supplemental Register. Neither a disclaimer of the geographic term or design nor a claim that it has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), can obviate a §2(a) refusal if the mark consists of or includes a geographical indication that identifies a place other than the true origin of the wines or spirits.
Requirement for First Use On or After January 1, 1996
For all applications filed under §1(b), §44, or §66(a) of the Trademark Act, 15 U.S.C. §1051(b), §1126, or §1141f(a), or for applications filed under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), where the application fails to indicate the applicant’s date of first use of the mark in commerce, the examining attorney should presume that the applicant’s first use of the mark in commerce is or will be on or after January 1, 1996, unless the application record indicates otherwise.
If the examining attorney determines that a mark featuring a false geographical indication was in use prior to January 1, 1996, the examining attorney should refuse registration because the mark is primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark
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Act, 15 U.S.C. §1052(e)(3), and deceptive under §2(a). See TMEP §1210.05(a).
1210.08(b) Geographical Indications Used on Wines and Spirits That Originate in the Named Place
If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under §2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate. See TMEP §§1210.01(a) and 1210.06(a).
Sometimes, a geographic term is used to certify the geographic origin of wines or spirits. If the proposed mark is used to certify the goods, the applicant may convert the application to one for a certification mark of regional origin under §4 of the Trademark Act, 15 U.S.C. §1054. See TMEP §1306.06(f)(vi) regarding amendment to a different type of mark, and TMEP §§1210.09 and 1306.02 et seq. regarding geographic certification marks.
1210.08(c) Geographical Indications That Are Generic for Wines and Spirits
When a geographic term or design in the mark is generic for a type of wine or spirit, the examining attorney must refuse registration under §2(e)(1) on the Principal Register or §23 on the Supplemental Register, as appropriate, because the term or design is generic. See TMEP §§1209.02 et seq. Or, if appropriate, the examining attorney must require a disclaimer of the generic term or design. See TMEP §§1213 et seq. regarding disclaimer.
A geographic term or design is considered generic if United States consumers view it as designating the genus of the goods, rather than their geographic origin. See TMEP §§1209.01(c) et seq. If a geographic term or design is used in connection with wines or spirits, the examining attorney may submit a search request to the Trademark Law Library to determine whether there is evidence indicating that the term or design is generic for the applicant’s goods.
1210.09 Geographic Certification Marks
Under certain circumstances, the name of the place from which goods or services originate may function as a certification mark. When geographic terms are used to certify regional origin (e.g., “Idaho” used to certify that potatoes are grown in Idaho), registration of certification marks should not be refused and, in applications to register composite certification marks, disclaimers of these geographic terms should not be required on the ground
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of geographical descriptiveness. See TMEP §§1306.02 et seq. concerning procedures for registration of certification marks that certify regional origin.
When a geographical term used in a composite certification mark is not used to certify regional origin (e.g., “California” used to certify that fruit is organically grown), appropriate refusals pursuant to §§2(e)(2), 2(e)(3), or 2(a) should be made.
1210.10 Doctrine of Foreign Equivalents
Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine their geographic significance. Although the doctrine arises more often in cases involving likelihood of confusion, descriptiveness, and genericness, the doctrine also applies to issues involving geographic marks. See, e.g., In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009) (doctrine applied in determining whether MOSKOVSKAYA, a Russian word meaning “of or from Moscow,” was primarily geographically deceptively misdescriptive for vodka not from Moscow); In re Joint Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA, a Russian word meaning “from Baikal” held primarily geographically descriptive of vodka from Lake Baikal).
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” Spirits Int’l, 563 F.3d 1347, 1352, 90 USPQ2d at 1492 (Fed. Cir. 2009).
While foreign words are generally translated into English for purposes of determining geographic significance, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 54 USPQ2d 1497 (5th Cir. 2000), reh’g denied 218 F.3d 745 (2000); cf. General Cigar Co. Inc. v. G.D.M. Inc., 988 F. Supp. 647, 45 USPQ2d 1481 (S.D.N.Y. 1997). The determination of whether a language is “dead” must be made on a case-by- case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then that Latin term is not
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considered dead. The same analysis should be applied to other uncommon languages.
See TMEP §§809 et seq. for information regarding how to ascertain the meaning of non-English wording in a mark. See also TMEP §§1207.01(b)(vi) et seq., 1209.03(g), and 1211.01(a)(vii) regarding the doctrine of foreign equivalents.
1211 Refusal on Basis of Surname
Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (e) Consists of a mark which ... (4) is primarily merely a surname.
Under §2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f). See TMEP §§1212 et seq. regarding acquired distinctiveness. Formerly §2(e)(3) of the Act, this section was designated §2(e)(4) when the NAFTA Implementation Act took effect on January 1, 1994. A mark that is primarily merely a surname may be registrable on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
The Trademark Act, in §2(e)(4), reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name. In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985).
The question of whether a mark is primarily merely a surname depends on the mark’s primary significance to the purchasing public. See, e.g., Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pats. 1955). Each case must be decided on its own facts, based upon the evidence in the record.
1211.01 “Primarily Merely a Surname”
The legislative history of the Trademark Act of 1946 indicates that the word “primarily” was added to the existing statutory language “merely” with the intent to exclude registration of names such as “Johnson” or “Jones,” but not registration of names such as “Cotton” or “King” which, while surnames, have a primary significance other than as a surname. See Sears, Roebuck & Co. v. Watson, 204 F.2d 32, 33-34, 96 USPQ 360, 362 (D.C. Cir. 1953), cert.
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denied, 346 U.S. 829, 99 USPQ 491 (1953); Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pats. 1955).
The question of whether a term is primarily merely a surname depends on the primary, not the secondary, significance to the purchasing public. The Trademark Trial and Appeal Board has identified five factors to be considered in making this determination:
(1) whether the surname is rare (see TMEP §1211.01(a)(v));
(2) whether the term is the surname of anyone connected with the applicant;
(3) whether the term has any recognized meaning other than as a surname (see TMEP §§1211.01(a) et seq.);
(4) whether it has the “look and feel” of a surname (see TMEP §1211.01(a)(vi)); and
(5) whether the stylization of lettering is distinctive enough to create a separate commercial impression (see TMEP §1211.01(b)(ii).
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). Where the mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85 USPQ2d 1150 (TTAB 2007).
If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. Yeley, supra; Benthin, supra.
1211.01(a) Non-Surname Significance
Often a word will have a meaning or significance in addition to its significance as a surname. The examining attorney must determine the primary meaning of the term to the public.
1211.01(a)(i) Ordinary Language Meaning
If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005) (FIORE is not primarily merely a surname where it is also the Italian translation of the English word “flower” and the non- surname meaning is not obscure); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (the relatively rare surname HACKLER held not primarily merely a surname, in light of dictionary meaning); Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) (BIRD held not primarily merely a surname despite surname significance); In re Hunt Electronics Co.,
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155 USPQ 606 (TTAB 1967) (HUNT held not primarily merely a surname despite surname significance). However, this does not mean that an applicant only has to uncover a non-surname meaning of the proposed mark to obviate a refusal under §2(e)(4). See In re Nelson Souto Major Piquet, 5 USPQ2d 1367, 1368 (TTAB 1987) (N. PIQUET (stylized) held primarily merely a surname despite significance of the term “piquet” as “the name of a relatively obscure card game”).
1211.01(a)(ii) Phonetic Equivalent of Term With Ordinary Language Meaning
A term may be primarily merely a surname even if it is the phonetic equivalent of a word that has an ordinary meaning (e.g., Byrne/burn; Knott/not or knot; Chappell/chapel). See In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (PICKETT SUITE HOTEL held primarily merely a surname despite applicant’s argument that PICKETT is the phonetic equivalent of the word “picket”). Cf. In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) (CALISTO held not primarily merely a surname, the Board characterizing the telephone directory evidence of surname significance as “minimal” and in noting the mythological significance of the name “Callisto,” stating that it is common knowledge that there are variations in the rendering of mythological names transliterated from the Greek alphabet (distinguishing In re Pickett Hotel Co., supra)). Similarly, the fact that a word that has surname significance is also a hybrid or derivative of another word having ordinary language meaning is insufficient to overcome the surname significance, unless the perception of non-surname significance would displace the primary surname import of the word. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (DARTY held primarily merely a surname despite applicant’s argument that the mark is a play on the word “dart”); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (PETRIN held primarily merely a surname despite applicant’s argument that the mark represents an abbreviation of “petroleum” and “insulation”).
1211.01(a)(iii) Geographical Significance
A term with surname significance may not be primarily merely a surname if that term also has a well-known geographical meaning. In re Colt Industries Operating Corp., 195 USPQ 75 (TTAB 1977) (FAIRBANKS held not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance). However, the fact that a term is shown to have some minor significance as a geographical term will not dissipate its primary significance as a surname. In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993) (HAMILTON held primarily merely a surname).
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1211.01(a)(iv) Historical Place or Person
A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (DA VINCI not primarily merely a surname because it primarily connotes Leonardo Da Vinci); In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (SOUSA for fireworks and production of events and shows featuring pyrotechnics not primarily merely a surname, where the evidence showed present-day recognition and continuing fame of John Philip Sousa as a composer of patriotic music, and the applicant’s goods and services were of a nature that “would be associated by potential purchasers with patriotic events such as the Fourth of July, patriotic figures, and patriotic music”); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000) (primary significance of M. C. ESCHER is that of famous deceased Dutch artist). Cf. In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (PICKETT SUITE HOTEL held primarily merely a surname despite applicant’s evidence that PICKETT was the name of a famous Civil War generan( � In re Champion Int’l Corp., 229 USPQ 550 (TTAB 1985) (McKINLEY held primarily merely a surname despite being the name of a deceased president).
Evidence that an individual is famous in a particular field does not necessarily establish that he or she is a historical figure. In re Thermo LabSystems Inc., 85 USPQ2d 1285 (TTAB 2007) (WATSON held primarily merely a surname). Furthermore, the Board has held that a surname that would be evocative of numerous individuals, rather than one particular historical individual, does not qualify as a historical name and is merely a surname of numerous individuals with varying degree of historical significance. Id.
1211.01(a)(v) Rare Surnames
The rarity of a surname is an important factor to be considered in determining whether a term is primarily merely a surname. In re Joint-Stock Co. “Baik,” 84 USPQ2d 1921 (TTAB 2007) (finding that extreme rarity of BAIK weighed against surname refusan( � In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (the fact that BENTHIN was a rare surname found to be a factor weighing against a finding that the term would be perceived as primarily merely a surname); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) (SAVA not primarily merely a surname, where there was evidence that the term had other meaning, no evidence that the term was the surname of anyone connected with applicant, and the term’s use as a surname was very rare); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987) (GARAN held not primarily merely a surname). However, the fact that a surname is rare does not per se preclude a finding that a term is primarily merely a surname. Even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname. See In re Etablissements
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Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (DARTY held primarily merely a surname); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) (REBO held primarily merely a surname); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986) (POSTEN held primarily merely a surname). Regardless of the rarity of the surname, the test is whether the primary significance of the term to the purchasing public is that of a surname.
An issue to be considered in determining how rarely a term is used is the media attention or publicity accorded to public personalities who have the surname. A surname rarely appearing in birth records may nonetheless appear more routinely in news reports, so as to be broadly exposed to the general public. In re Gregory, 70 USPQ2d 1792 (TTAB 2004).
1211.01(a)(vi) “Look And Feel” of a Surname
Some names, by their very nature, have only surname significance even though they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989) (PIRELLI held primarily merely a surname, the Board stating that “certain rare surnames look like surnames and certain rare surnames do not and ... ‘PIRELLI’ falls into the former category....”); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (PETRIN held primarily merely a surname). Conversely, certain surnames are so rare that they do not even have the appearance of surnames. In such cases, even in the absence of non-surname significance, a reasonable application of the “primary significance to the purchasing public” test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful. In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (HACKLER does not have the look and feel of a surname); see also In re Joint-Stock Co. “Baik,” 84 USPQ2d 1921 (TTAB 2007) (lack of other recognized meaning does not in itself imbue a mark with the “look and feel” of a surname).
1211.01(a)(vii) Doctrine of Foreign Equivalents
In determining whether a term is primarily merely a surname, the examining attorney must consider whether the term has any meaning in a foreign language. This determination is made from the point of view of American buyers familiar with the foreign language. In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005) (FIORE – the Italian equivalent of “Flower” – not primarily merely a surname).
The doctrine of foreign equivalents is not an absolute rule, but merely a guideline, which should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
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“ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009). To support a refusal under §2(e)(4), the record must show that the surname significance is the primary significance. See In re Picone, 221 USPQ 93 (TTAB 1984) (evidence that “PICON” is the name of a town and a mountain in Spain and that “piccone” is an Italian word meaning “pick” or “pickax” insufficient to overcome a refusal on the ground that PICONE is primarily merely a surname).
In Fiore, the Board noted that applicant had produced evidence that Italian is a popular language in the United States, such that the meaning of the term would be recognized by a wide variety of people; that “Fiore” is “listed as the only translation of the common English word “flower;” that Italian is a major, modern language, not an obscure language; and that the non-surname meaning of the term in Italian is not obscure. The Board found that FIORE “is the type of term that potential customers would stop and translate,” and that “there is no question of whether the term would be recognized in its current form as the Italian word for ‘Flower.’” 75 USPQ2d at 1569.
The fact that a term has no meaning in a foreign language may also be relevant to a determination of whether a term is primarily merely a surname. In holding that PIRELLI was primarily merely a surname, the Board noted that the term “has no ordinary meaning in the Italian language, as the Italian dictionary excerpt, made of record by the Examining Attorney, shows.” In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989).
See TMEP §§809 et seq. for information regarding how to ascertain the meaning of non-English wording in a mark.
See also TMEP §§1207.01(b)(vi) et seq., 1210.10, and 1209.03(g) regarding the doctrine of foreign equivalents.
1211.01(b) Surname Combined with Additional Matter
Often a mark will be comprised of a word that, standing by itself, would be primarily merely a surname, coupled with additional matter (e.g., letters, words, or designs). The question remains whether the mark sought to be registered would be perceived by the public primarily merely as a surname. In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). See TMEP §§1211.01(b)(i) et seq. for additional information about surnames combined with additional matter.
1211.01(b)(i) Double Surnames
A combination of two surnames is not primarily merely a surname, within the meaning of §2(e)(4), unless there is evidence of record showing that the
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combination would be perceived by the public primarily merely as a surname. See In re Standard Elektrik Lorenz A.G., 371 F.2d 870, 152 USPQ 563 (C.C.P.A. 1967) (SCHAUB-LORENZ held not primarily merely a surname, the Court noting that there was no evidence submitted that the mark sought to be registered was primarily merely a surname; that the only evidence of surname significance related to the individual “SCHAUB” and “LORENZ” portions of the mark; and that the mark must be considered in its entirety rather than dissected).
1211.01(b)(ii) Stylization or Design Elements
A mark comprised of a word that, standing by itself, would be considered primarily merely a surname, but which is coupled with a distinctive stylization or design element, is not considered primarily merely a surname. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (stylized display of term BENTHIN found to be a factor weighing against a finding that the term would be perceived as primarily merely a surname). However, the addition of a nondistinctive design element or stylization to a term that, standing by itself, is primarily merely a surname does not remove the term from that category. The primary significance of the mark, in its entirety, would be merely that of a surname. See In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (PICKETT SUITE HOTEL held primarily merely a surname despite the stylization of the lettering, which was considered “insignificant, in that it is clearly not so distinctive as to create any separate commercial impression in the minds of purchasers of appellant’s services”).
The display of a term in lower-case lettering does not detract from its surname significance. In re Directional Marketing Corp., 204 USPQ 675 (TTAB 1979).
1211.01(b)(iii) Surname Combined with Initials
The addition of initials to a term that, standing by itself, is primarily merely a surname does not remove the term from that category. In fact, the use of the first name initial followed by a surname has been held to reinforce, rather than diminish, the surname significance of a term. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953) (S. SEIDENBERG & CO’S. held primarily merely a surname); In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987) (N. PIQUET held primarily merely a surname); In re Taverniti, SARL, 225 USPQ 1263 (TTAB 1985), recon. denied 228 USPQ 975 (TTAB 1985) (J. TAVERNITI held primarily merely a surname).
However, there is no per se rule that the addition of initials to a surname means that the mark is automatically primarily merely a surname. It depends on the principal significance of the term, which must be decided on a case-by- case basis. In re Yeley, 85 USPQ2d 1150 (TTAB 2007) (Board held that the proposed mark J.J. YELEY was recognized as the full name of the well
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known NASCAR race driver and as such was perceived as a reference to a particular person and not primarily merely a surname); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (Board found that the primary significance of M.C. ESCHER was that of a famous deceased Dutch artist, commenting that “[t]he mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.”).
1211.01(b)(iv) Surname Combined with Title
A title, such as “Mr.,” “Mrs.,” “Mlle.,” “Dr.,” or “MD,” does not diminish the surname significance of a term; rather, it may enhance the surname significance of a term. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005) (Federal Circuit affirmed Board decision holding that DR. RATH was primarily merely a surname); In re Giger, 78 USPQ2d 1405 (TTAB 2006) (GIGER MD primarily merely a surname); In re Revillon, 154 USPQ 494 (TTAB 1967) (MLLE. REVILLON primarily merely a surname). Cf. In re Hilton Hotels Corp., 166 USPQ 216 (TTAB 1970) (LADY HILTON held not primarily merely a surname because it suggests a person or lady of nobility).
1211.01(b)(v) Surname in Plural or Possessive Form
The surname significance of a term is not diminished by the fact that the term is presented in its plural or possessive form. See In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (WOOLLEY’S PETITE SUITES for hotel and motel services held primarily merely a surname); In re McDonald’s Corp., 230 USPQ 304, 306 (TTAB 1986) (MCDONALD’S held primarily merely a surname based on a showing of surname significance of “McDonald,” the Board noting that “it is clear that people use their surnames in possessive and plural forms to identify their businesses or trades”); In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984) (BURDONS held primarily merely a surname based in part on telephone listings showing surname significance of “Burdon”); In re Directional Marketing Corp., 204 USPQ 675 (TTAB 1979) (DRUMMONDS held primarily merely a surname based on a showing of surname significance of “Drummond”).
1211.01(b)(vi) Surname Combined with Wording
The treatment of marks that include wording in addition to a term that, standing by itself, is primarily merely a surname, depends on the significance of the non-surname wording.
If the wording combined with the surname is incapable of functioning as a mark (i.e., a generic name for the goods or services), the examining attorney should refuse registration on the ground that the entire mark is primarily merely a surname under §2(e)(4). If the policy were otherwise, one could evade §2(e)(4) by the easy expedient of adding the generic name of the
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goods or services to a word that is primarily merely a surname. In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993) (HAMILTON PHARMACEUTICALS for pharmaceutical products held primarily merely a surname); In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991) (BRASSERIE LIPP held primarily merely a surname where “‘brasserie’ is a generic term for applicant’s restaurant services”); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (WOOLLEY’S PETITE SUITES for hotel and motel services held primarily merely a surname); In re Possis Medical, Inc., 230 USPQ 72, 73 (TTAB 1986) (POSSIS PERFUSION CUP held primarily merely a surname, the Board finding that “[a]pplicant’s argument that PERFUSION CUP is not a generic name for its goods ... is contradicted by the evidence the Examining Attorney has pointed to”); In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (LIQUORE MARTINONI (stylized) for liqueur held primarily merely a surname, with “liquore” being the Italian word for “liqueur”).
If the wording combined with the surname is capable of functioning as a mark (i.e., matter that is arbitrary, suggestive, or merely descriptive of the goods or services), the mark is not considered to be primarily merely a surname under §2(e)(4). However, if the additional wording is merely descriptive or the equivalent, and a disclaimer is otherwise proper, the examining attorney should require a disclaimer of the additional wording. See In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988) (HUTCHINSON TECHNOLOGY for computer components held not primarily merely a surname when the mark is considered as a whole, the Court remanding the case for entry of a disclaimer of “TECHNOLOGY” before publication).
Some wording may enhance rather than diminish the surname significance of the mark. See In re Piano Factory Group Inc., 85 USPQ2d 1522 (TTAB 2007) (the addition of “& SONS” to the surname VOSE “serves only to emphasize or reinforce that ‘VOSE’ is the surname of the sons’ parents.”), and cases cited therein. See also TMEP §1211.01(b)(iv) regarding surnames combined with titles, TMEP §1211.01(b)(iii) regarding surnames combined with initials, and TMEP §1211.01(b)(viii) regarding surnames combined with legal or familial business entity designations.
1211.01(b)(vii) Surname Combined With Domain Name
A surname combined with a non-source-identifying top-level domain name (e.g., JOHNSON.COM) is primarily merely a surname under §2(e)(4). See TMEP §1215.03.
1211.01(b)(viii) – Surname Combined With Legal or Familial Entity Designation
The addition of wording that merely indicates the legal entity of an applicant, such as “Corporation,” “Inc.,” “Ltd.,” “Company,” or “Co.,” or the family
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business structure of an applicant, such as “& Sons” or “Bros.,” does not diminish the surname significance of a term that is otherwise primarily merely a surname. See In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006) (holding VOSE & SONS primarily merely a surname), In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953) (holding S. SEIDENBERG & CO’S. primarily merely a surname). In fact, adding the familial entity designation “& SONS” to a surname was found to emphasize or reinforce the surname significance of the mark. Piano Factory Group, Inc., 85 USPQ2d at 1527.
1211.02 Evidence Relating to Surname Refusal
1211.02(a) Evidentiary Burden – Generally
The burden is initially on the examining attorney to establish a prima facie case that a mark is primarily merely a surname. The burden then shifts to the applicant to rebut this showing. In re Petrin Corp., 231 USPQ 902 (TTAB 1986). The evidence submitted by the examining attorney was found insufficient to establish a prima facie case in the following decisions: In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975); In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993); In re Raivico, 9 USPQ2d 2006 (TTAB 1988); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987).
There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname. This question must be resolved on a case-by-case basis. See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986). The entire record is examined to determine the surname significance of a term. The following are examples of evidence that may be relevant: telephone directory listings; excerpted articles from computerized research databases; evidence in the record that the term is a surname; the manner of use on the specimen; dictionary definitions of the term and evidence from dictionaries showing no definition of the term. The quantum of evidence that is persuasive in finding surname significance in one case may be insufficient in another because of the differences in the names themselves. See In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985).
See TMEP §§710 et seq. and 1211.02(b) et seq. for additional information about evidence.
1211.02(b) Evidentiary Considerations
In appropriate cases, the examining attorney may present evidence that may appear contrary to his or her position, with an appropriate explanation as to why, in view of other evidence presented, this evidence was not considered
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controlling. In some cases, this may foreclose objections from an applicant and present a more complete picture in the event of an appeal.
See TMEP §§1211.02(b)(i) et seq. regarding types of evidence that may be relevant to a refusal of registration under §2(e)(4).
1211.02(b)(i) Telephone Directory Listings
Telephone directory listings from telephone books or electronic databases are one type of credible evidence of the surname significance of a term. The Trademark Trial and Appeal Board has declined to hold that a minimum number of listings in telephone directories must be found to establish a prima facie showing that the mark is primarily merely a surname. See, e.g., In re Petrin Corp., 231 USPQ 902 (TTAB 1986); In re Wickuler-Kupper-Brauerei KGaA, 221 USPQ 469 (TTAB 1983).
It is the American public’s perception of a term that is determinative. Therefore, foreign telephone directory listings are not probative of the significance of a term to the purchasing public in the United States, regardless of whether the applicant is of foreign origin. See, e.g., Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205 (TTAB 1988); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968 (TTAB 1986); In re Wickuler-Kupper-Brauerei, supra.
1211.02(b)(ii) LexisNexis® Research Database Evidence
Excerpted articles from the LexisNexis® research database are one type of credible evidence of the surname significance of a term. There is no requirement that the examining attorney make of record every story found in a LexisNexis® search. However, the examining attorney is presumed to make the best case possible. See In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987). See also In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) (“We must conclude that, because the Examining Attorney is presumed to have made the best case possible, the 46 stories not made of record [the search yielded 48 stories] do not support the position that CALISTO is a surname and, indeed, show that CALISTO has non surname meanings.”) An Office action that includes any evidence obtained from a research database should include a citation to the research service and a clear record of the specific search that was conducted, indicating the libraries or files that were searched and the date of the search (e.g., LexisNexis®, News and Business, All News, Aug. 5, 2007). The electronic record or printout summarizing the search should be made a part of the record. Relevant information not included on the summary, such as the number of documents viewed, should be stated in narrative in the Office action. See TMEP §710.01(a).
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See TMEP §710.01(b) regarding evidence originating in foreign publications.
1211.02(b)(iii) U.S. Census Database Evidence
The Census Bureau (http://www.census.gov/genealogy/www/freqnames2k.html) has a database of surnames taken from the most recent decennial census. The surnames are ordered by rank, and the database lists the number of individuals in the country having each surname. Because the database reflects the number of individuals, rather than the number of households, with a particular name, search results from this database may be more persuasive evidence of surname frequency than results from telephone directory listings.
1211.02(b)(iv) Surname of Person Associated with Applicant
The fact that a term is the surname of an individual associated with the applicant (e.g., an officer or founder) is evidence of the surname significance of the term. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989); In re Taverniti, SARL, 225 USPQ 1263 (TTAB 1985), recon. denied, 228 USPQ 975 (TTAB 1985).
1211.02(b)(v) Specimens Confirming Surname Significance of Term
The fact that a term appears on the specimen of record in a manner that confirms its surname significance is evidence of the surname significance of a term. See Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1208 (TTAB 1988) (DOURTHE found primarily merely a surname, the Board noting applicant’s references to “Dourthe” as the name of a particular family and finding the surname significance of the term to be reinforced by the appearance on applicant’s wine labels of the name and/or signature of an individual named Pierre Dourthe); In re Taverniti, SARL, 225 USPQ 1263, 1264 (TTAB 1985), recon. denied, 228 USPQ 975 (TTAB 1985) (J. TAVERNITI held primarily merely a surname, the Board considering, among other factors, the presentation of the mark on the specimen in signature form); In re Luis Caballero, S.A., 223 USPQ 355, 356-57 (TTAB 1984) (BURDONS held primarily merely a surname, the Board weighting heavily the applicant’s use of “Burdon” on the specimen as a surname, albeit of a fictitious character (“John William Burdon”)).
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1211.02(b)(vi) Negative Dictionary Evidence
Negative dictionary evidence (i.e., evidence that a term is absent from dictionaries or atlases) may demonstrate the lack of non-surname significance of a term. See In re Petrin Corp., 231 USPQ 902 (TTAB 1986).
1211.02(b)(vii) Evidence of Fame of a Mark
Evidence of the fame of a mark (e.g., evidence of consumer recognition of a mark, or expenditures made in promoting or advertising a mark) is not relevant unless registration is sought under §2(f). In re McDonald’s Corp., 230 USPQ 304, 307 (TTAB 1986) (McDONALD’S held primarily merely a surname in spite of strong secondary meaning, with the Board stating that “the word ‘primarily’ refers to the primary significance of the term, that is, the ordinary meaning of the word, and not to the term’s strength as a trademark due to widespread advertising and promotion of the term as a mark to identify goods and/or services.”) See also In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989); In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987).
1212 Acquired Distinctiveness or Secondary Meaning
15 U.S.C. §1052(f). Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act.
If a proposed mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).
Within the context of the Trademark Act, §2(f) may be described as follows:
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[U]nlike the first five sections of 15 U.S.C. §1052 which define the grounds upon which a trademark registration is to be refused, Section 2(f) serves as an exception to a rejection under the provisions of one of the other sections, Section 2(e) (citation omitted). Section 2(f) permits registration of marks that, despite not qualifying for registration in light of Section 2(e), have nevertheless “become distinctive of the applicant’s goods in commerce.” Thus, “Section 2(f) is not a provision on which registration can be refused,” ... but is a provision under which an applicant has a chance to prove that he is entitled to a federal trademark registration which would otherwise be refused.
Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1580, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988), quoting In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983).
The purpose and significance of secondary meaning may be described as follows:
A term which is descriptive ... may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer. 1 Nims, Unfair Competition and Trademarks at §37 (1947). This is what is known as secondary meaning.
The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer (citations omitted). This may be an anonymous producer, since consumers often buy goods without knowing the personal identity or actual name of the manufacturer.
Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972).
Three basic types of evidence may be used to establish acquired distinctiveness under §2(f):
(1) A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application (see 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.);
(2) A statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the
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applicant for the five years before the date when the claim of distinctiveness is made (see 37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.); and
(3) Actual evidence of acquired distinctiveness (see 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.).
The applicant may submit one or any combination of these types of evidence, which are discussed below. Depending on the nature of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. The applicant may then submit actual evidence of acquired distinctiveness.
1212.01 General Evidentiary Matters
Whether acquired distinctiveness has been established is a question of fact. See In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985), and cases cited therein. The record must contain facts or evidence of acquired distinctiveness.
The burden of proving that a mark has acquired distinctiveness is on the applicant. See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1578-79, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).
The applicant may present any competent evidence to establish that a mark has acquired distinctiveness. Actual evidence of acquired distinctiveness may be submitted regardless of the length of time the mark has been used. Ex parte Fox River Paper Corp., 99 USPQ 173 (Comm’r Pats. 1953).
The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985).
Typically, more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Associates, Inc., 1 USPQ2d 1657 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984).
Facts based on events that occurred subsequent to the filing date of the application may be considered. Whether acquired distinctiveness has been
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established is determined in view of the facts that exist at the time registrability is being considered. McCormick & Co., Inc. v. Summers, 354 F.2d 668, 148 USPQ 272 (C.C.P.A. 1966); General Foods Corp. v. MGD Partners, 224 USPQ 479 (TTAB 1984); Kaiser Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ 419 (TTAB 1967); In re Hoffman House Sauce Co., 137 USPQ 486 (TTAB 1963).
1212.02 General Procedural Matters
1212.02(a) Situations in which a Claim of Distinctiveness under §2(f) Is Appropriate
A claim of distinctiveness by the applicant under §2(f) is usually made either in response to a statutory refusal to register or in anticipation of such a refusal. A claim of distinctiveness is appropriately made in response to, or in anticipation of, only certain statutory refusals to register. For example, it is inappropriate to assert acquired distinctiveness to contravene a refusal under §2(a), (b), (c), (d), or (e)(5), 15 U.S.C. §§1052(a), (b), (c), (d), or (e)(5). Furthermore, acquired distinctiveness may not be asserted to contravene a refusal under §2(e)(3), 15 U.S.C. §1052(e)(3), unless the mark became distinctive of the applicant’s goods in commerce before December 8, 1993, the date of enactment of the NAFTA Implementation Act (see TMEP §1210.07(b)). See TMEP §1210.05(d) et seq. regarding procedures for refusing registration under §2(a) in response to a claim that a geographically deceptive mark acquired distinctiveness prior to December 8, 1993.
In In re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 1403 n.3, 184 USPQ 345, 347 n.3 (C.C.P.A. 1975), the Court of Customs and Patent Appeals noted as follows:
[T]he judicially developed concept of “secondary meaning,” codified by section 2(f) (15 U.S.C. 1052(f)), relates to descriptive, geographically descriptive, or surname marks which earlier had a primary meaning which did not indicate a single source and were, therefore, unregistrable because of section 2(e) (citation omitted). Additionally, section 2(f) has been applied to permit registration of a mark consisting solely of a design and, therefore, not within the purview of section 2(e).
1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive
For procedural purposes, a claim of distinctiveness under §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as conceding that the matter to which it pertains is not inherently distinctive and, thus, not registrable on the Principal Register absent proof of acquired distinctiveness. Once an applicant has claimed that matter has
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acquired distinctiveness under §2(f), the issue to be determined is not whether the matter is inherently distinctive but, rather, whether it has acquired distinctiveness. See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 (TTAB 1986); In re Chopper Industries, 222 USPQ 258, 259 (TTAB 1984). However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP §1212.02(c).
For the purposes of establishing that the subject matter is not inherently distinctive, the examining attorney should not rely on this concession alone, but should provide other appropriate evidence.
See TMEP §1212.02(d) regarding unnecessary §2(f) claims.
1212.02(c) Claiming §2(f) Distinctiveness in the Alternative
An applicant may argue the merits of an examining attorney’s refusal and, in the alternative, claim that the matter sought to be registered has acquired distinctiveness under §2(f). Unlike the situation in which an applicant initially seeks registration under §2(f) or amends its application without objection, the alternative claim does not constitute a concession that the matter sought to be registered is not inherently distinctive. See In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 n.2 (TTAB 1986).
When an applicant claims acquired distinctiveness in the alternative, the examining attorney should treat separately the questions of: (1) the underlying basis of refusal; and (2) assuming the matter is determined to be registrable, whether acquired distinctiveness has been established. In the event of an appeal, the Board will use the same analysis, provided the evidence supporting the §2(f) claim is in the record and the alternative grounds have been considered and finally decided by the examining attorney. In re Harrington, 219 USPQ 854, 855 n.1 (TTAB 1983).
If the examining attorney accepts the §2(f) evidence, the applicant should be given the option of publication under §2(f) or going forward with the appeal on the underlying refusal. This should be done by telephone or e-mail, with a note in the “Notes-to-the-File” section of the record, wherever possible. If the applicant wants to appeal, or if the examining attorney is unable to reach the applicant by telephone or e-mail, the examining attorney must issue a written action continuing the underlying refusal and noting that the §2(f) evidence is deemed acceptable and will not be an issue on appeal.
In In re Capital Formation Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983), the Board outlined its procedure in situations where the applicant maintains the position that the underlying refusal is improper and,
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alternatively, seeks registration pursuant to §2(f) in the interest of advancing the prosecution of the application:
If we decide that the mark as applied to the services is arbitrary or suggestive of the services, as applicant claims, we must reverse the refusal of registration under Section 2(e)(1) and we need not consider any of the affidavits or other material made of record by applicant in support of its Section 2(f) claim of distinctiveness. If, on the other hand, we find the mark to be merely descriptive of the services and, in fact, so highly descriptive of them that no amount of evidence could persuade us that the mark has become distinctive, we must affirm the refusal of registration. Similarly, in this situation, we need not consider any of the affidavits or other material made of record by applicant in its Section 2(f) claim of distinctiveness. If we find that the mark is merely descriptive of the goods for purposes of Section 2(e)(1), but not so highly descriptive as to be incapable of functioning as a service mark to identify applicant’s services and distinguish them from like services of others, we must determine whether the evidence in support of applicant’s claim of distinctiveness is sufficient to warrant registration under the provisions of Section 2(f) of the Trademark Act.
Similarly, in an application under §1 or §44 of the Trademark Act, the applicant may seek registration on the Principal Register under §2(f) and, in the alternative, on the Supplemental Register. Depending on the facts of the case, this approach may have limited practical application. If the examining attorney finds that the matter sought to be registered is not a mark within the meaning of §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127 (e.g., is generic or purely ornamental), the examining attorney will refuse registration on both registers.
However, if the issues are framed in the alternative (i.e., whether the matter sought to be registered has acquired distinctiveness under §2(f) or, in the alternative, whether it is capable of registration on the Supplemental Register), and it is ultimately determined that the matter is a mark within the meaning of the Act (e.g., that the matter is merely descriptive rather than generic), then the evidence of secondary meaning will be considered. If it is determined that the applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness, the application will be approved for publication on the Principal Register under §2(f). If the evidence is determined to be insufficient, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act.
Accordingly, the applicant may submit an amendment to the Supplemental Register, and continue to argue entitlement to registration on the Principal Register in an appeal.
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If the applicant files a notice of appeal in such a case, the Board will institute the appeal, suspend action on the appeal and remand the application to the examining attorney to determine registrability on the Supplemental Register.
If the examining attorney determines that the applicant is entitled to registration on the Supplemental Register, the examining attorney should send a letter notifying the applicant of the acceptance of the amendment and telling the applicant that the application is being referred to the Board for resumption of the appeal. If the examining attorney determines that the applicant is not entitled to registration on the Supplemental Register, the examining attorney will issue a nonfinal action refusing registration on the Supplemental Register. If the applicant fails to overcome the refusal, the examining attorney will issue a final action, and refer the application to the Board to resume action on the appeal with respect to entitlement to registration on either the Principal or the Supplemental Register.
Rather than framing the issues in the alternative (i.e., whether the matter has acquired distinctiveness pursuant to §2(f) or, in the alternative, whether it is capable of registration on the Supplemental Register), the applicant may amend its application between the Principal and Supplemental Registers. 37 C.F.R. §2.75. See generally In re Educational Communications, Inc., 231 USPQ 787 (TTAB 1986); In re Broco, 225 USPQ 227 (TTAB 1984).
See TMEP §§816 et seq. and 1102.03 regarding amending a §1(b) application to the Supplemental Register.
1212.02(d) Unnecessary §2(f) Claims
If the applicant specifically requests registration under §2(f), but the examining attorney considers the entire mark to be inherently distinctive and the claim of acquired distinctiveness to be unnecessary, the examining attorney should so inform the applicant and inquire whether the applicant wishes to delete the statement or to rely on it.
In this situation, if it is necessary to issue an Office action about another matter, the examining attorney should state in the Office action that the §2(f) claim appears to be unnecessary, and inquire as to whether the applicant wants to withdraw it. If it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or e-mail. If the applicant wants to delete the §2(f) claim, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or e-mail message (applicant should be given at least a week), the examining attorney should enter a note in the “Notes-to-the-File” section of the record and approve the application for publication without deleting the §2(f) claim.
If the applicant specifically requests registration of the entire mark under §2(f), but the examining attorney believes that part of the mark is inherently distinctive, the examining attorney should give the applicant the option of
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limiting the §2(f) claim to the matter that is not inherently distinctive. See TMEP §1212.02(f)(i) regarding claims of §2(f) distinctiveness as to a portion of a mark. However, if the applicant wishes, a claim of acquired distinctiveness under §2(f) may be made as to an entire mark or phrase that contains both inherently distinctive matter and matter that is not inherently distinctive. In re Del E. Webb Corp., 16 USPQ2d 1232, 1234 (TTAB 1990).
If the application contains statements that seem to relate to acquired distinctiveness or §2(f) but do not actually amount to a request for registration under §2(f), and the examining attorney does not believe that resort to §2(f) is necessary, the examining attorney may treat the statements as surplusage. If it is necessary to communicate with the applicant about another matter, the examining attorney should inform the applicant that the statements are being treated as surplusage. If it is otherwise unnecessary to communicate with the applicant, the examining attorney may delete the statements from the TRAM database, enter a note in the “Notes-to-the-File” section of the record that this has been done, and approve the application for publication. The documents containing the surplusage will remain in the record, but a §2(f) claim will not be printed in the Official Gazette or on the certificate of registration. See TMEP §817 regarding preparation of applications for publication or issuance.
1212.02(e) Disclaimers in Applications Claiming Distinctiveness under §2(f)
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), states, in part, “The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” See In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766, 768 (TTAB 1986) (“[W]e conclude that it is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).”).
1212.02(f) Section 2(f) Claim in Part
1212.02(f)(i) Section 2(f) Claim as to a Portion of the Mark
A claim of acquired distinctiveness may apply to a portion of a mark. The applicant must clearly identify the portion of the mark for which distinctiveness is claimed. The standards for establishing acquired distinctiveness are the same whether the claim of distinctiveness pertains to the entire mark or to a portion of it. See TMEP §§1212.09 et seq. regarding claims of acquired distinctiveness in intent-to-use applications under §1(b) of the Act.
Generally, the element that is the subject of the §2(f) claim must present a distinct commercial impression apart from the other elements of the mark. That is, it must be a separable element.
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If the examining attorney determines that the claim of distinctiveness as to a portion of the mark is appropriate, the examining attorney should ensure that the record reflects that the §2(f) claim applies to the mark “in part” and that the relevant portion of the mark is identified.
If a claim of distinctiveness applies to only part of a mark and the examining attorney determines (1) that the claimed portion of the mark is unregistrable even under §2(f) (e.g., because it is generic or functional), or (2) that, although the claimed portion is registrable, the applicant has failed to establish acquired distinctiveness, the examining attorney may require a disclaimer of that portion of the mark, if a disclaimer is otherwise appropriate. See In re Lillian Vernon Corp., 225 USPQ 213 (TTAB 1985) (requirement for disclaimer of PROVENDER affirmed in application to register PROVENDER and design for “mail order services in the gourmet, bath and gift item field,” “provender” meaning “food” (claim of §2(f) distinctiveness in part held unacceptable)). Cf. In re Chopper Industries, 222 USPQ 258 (TTAB 1984) (requirement for disclaimer of CHOPPER reversed in application to register CHOPPER 1 and design for wood log splitting axes (claim of §2(f) distinctiveness in part held acceptable)).
1212.02(f)(ii) Section 2(f) Claim Restricted to Particular Goods/Services/Classes
An applicant may claim acquired distinctiveness as to certain classes in a multiple-class application, or as to only a portion of the goods/services within a single class. The applicant must clearly identify the goods/services/classes for which distinctiveness is claimed. The standards for establishing acquired distinctiveness are the same whether the claim of distinctiveness pertains to all or to only a portion of the goods/services.
If the examining attorney determines that the claim of distinctiveness as to a portion of the goods/services/classes is appropriate, the examining attorney must ensure that the “§2(f)” field in the TRAM database indicates that the §2(f) claim is restricted to certain goods/services/classes, and that those goods/services/classes are clearly identified in the restriction statement of record in the USPTO database. See the following example, where the applicant is claiming §2(f) for the entire mark, but only as to a portion of the goods/services:
MISCELLANEOUS INFORMATION Section 2(f): Yes Section 2(f) in part: No Section 2(f) Restriction Statement:
The §2(f) claim is restricted to class <specify classes> as to the <specify goods/services>.
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See also the following example, where the applicant is claiming §2(f) in part (not as to the entire mark), restricted to a portion of the goods/services:
MISCELLANEOUS INFORMATION Section 2(f): No Section 2(f) in part: Yes. Section 2(f) Restriction Statement:
The §2(f) claim is restricted to class <specify classes> as to the <specify goods/services>; and to <specify which part of the mark>.
1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or Appropriate Kind/Amount of Evidence
In a first action refusing registration, the examining attorney should suggest, where appropriate, that the applicant amend its application to seek registration under §2(f). For example, this should be done as a matter of course, if otherwise appropriate, in cases where registration is refused under §2(e)(4) on the ground that the mark is primarily merely a surname, and the applicant has recited dates of use that indicate that the mark has been in use in commerce for at least five years.
If the examining attorney determines that an applicant’s evidence is insufficient to establish that the mark has acquired distinctiveness, the examining attorney should suggest, where appropriate, that the applicant submit additional evidence. See In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 220 n.2 (TTAB 1984) (Noting that applicant was specifically invited to seek registration pursuant to §2(f) but, after amending its application to do so, was refused registration on the ground that the mark was incapable of acquiring distinctiveness, the Board stated that, in fairness to applicant, this practice should be avoided where possible).
The examining attorney should not “require” that the applicant submit evidence of secondary meaning. There would be no practical standard for a proper response to this requirement, nor would there be a sound basis for appeal from the requirement. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983) (“Section 2(f) is not a provision on which registration can be refused.”).
The examining attorney should not specify the kind or the amount of evidence sufficient to establish that a mark has acquired distinctiveness. It is the responsibility of the applicant to submit evidence to establish that the mark has acquired distinctiveness. See TMEP §1212.01. However, the examining attorney may make a suggestion as to a course of action, if the examining attorney believes this would further the prosecution of the application.
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1212.02(h) Nonfinal and Final Refusals
If an application is filed under §2(f) of the Trademark Act and the examining attorney determines that (1) the mark is not inherently distinctive, and (2) the applicant’s evidence of secondary meaning is insufficient to establish that the mark has acquired distinctiveness, the examining attorney will issue a nonfinal action refusing registration on the Principal Register pursuant to the appropriate section of the Trademark Act (e.g., §2(e)(1)), and will separately explain why the applicant’s evidence of secondary meaning is insufficient to overcome the underlying statutory basis for refusal. The examining attorney should suggest, where appropriate, that the applicant submit additional evidence. See TMEP §1212.02(g) concerning the examining attorney’s role in suggesting a claim of distinctiveness under §2(f).
If an application is not filed under §2(f) and the examining attorney determines that the mark is not inherently distinctive, the examining attorney should issue a nonfinal action refusing registration on the Principal Register under the appropriate section of the Act (e.g., §2(e)(1)). The examining attorney should suggest, where appropriate, that the applicant amend its application to claim distinctiveness under §2(f).
Thereafter, if the applicant amends its application to seek registration under §2(f), a new issue is raised as to the sufficiency of the applicant’s evidence of secondary meaning (see TMEP §714.05(a)(i)). The underlying statutory basis for refusal remains the same (e.g., §2(e)(1)), but the issue changes from whether the underlying refusal is warranted to whether the matter has acquired distinctiveness. If the examining attorney is persuaded that a prima facie case of acquired distinctiveness has been established, the examining attorney will approve the application for publication under §2(f). If the examining attorney determines that the applicant’s evidence is insufficient to establish that the matter has acquired distinctiveness, the examining attorney will issue a second nonfinal action repeating the underlying statutory basis for refusal (e.g., §2(e)(1)), and explaining why the applicant’s evidence is insufficient to overcome the stated refusal.
The examining attorney cannot issue a final refusal on the underlying statutory basis of the original refusal, upon an applicant’s initial assertion of a §2(f) claim. The mere assertion of distinctiveness under §2(f) raises a new issue. See In re Educational Communications, Inc., 231 USPQ 787, 787 n.2 (TTAB 1986). Even if the applicant has submitted, in support of the §2(f) claim, a statement of five years’ use that is technically defective (e.g., not verified or comprising incorrect language), the assertion of §2(f) distinctiveness still constitutes a new issue.
Exception: The examining attorney may issue a final refusal upon an applicant’s initial assertion of a §2(f) claim if the amendment is irrelevant to the outstanding refusal. See TMEP §714.05(a)(i). See also TMEP §§1212.02(a) and 1212.02(i) regarding situations
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where it is and is not appropriate to submit a claim of acquired distinctiveness to overcome a refusal.
After the examining attorney has issued a nonfinal action refusing registration on the Principal Register with a finding that the applicant’s evidence of secondary meaning is insufficient to overcome the stated refusal, the applicant may elect to submit additional arguments and/or evidence regarding secondary meaning. If, after considering this submission, the examining attorney is persuaded that the applicant has established a prima facie case of acquired distinctiveness, the examining attorney will approve the application for publication under §2(f). If the examining attorney is not persuaded that the applicant has established a prima facie case of acquired distinctiveness, and the application is otherwise in condition for final refusal, the examining attorney will issue a final refusal pursuant to the appropriate section of the Act (e.g., §2(e)(1)), with a finding that the applicant’s evidence of acquired distinctiveness is insufficient to overcome the stated refusal. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983).
In any action in which the examining attorney indicates that the evidence of record is insufficient to establish that the mark has acquired distinctiveness, the examining attorney must specify the reasons for this determination. See In re Interstate Folding Box Co., 167 USPQ 241, 242 (TTAB 1970); In re H. A. Friend & Co., Inc., 158 USPQ 609 (TTAB 1968).
1212.02(i) Section 2(f) Claim with Respect to Incapable Matter
If matter is generic, functional, or purely ornamental, or otherwise fails to function as a mark, the matter is unregistrable. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (“If a mark is generic, incapable of serving as a means ‘by which the goods of the applicant may be distinguished from the goods of others’ ... it is not a trademark and can not be registered under the Lanham Act.”); H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), and cases cited therein (“A generic term ... can never be registered as a trademark because such a term is ‘merely descriptive’ within the meaning of §2(e)(1) and is incapable of acquiring de jure distinctiveness under §2(f). The generic name of a thing is in fact the ultimate in descriptiveness.”). See also In re Melville Corp., 228 USPQ 970, 972 (TTAB 1986) (BRAND NAMES FOR LESS, for retail store services in the clothing field, “should remain available for other persons or firms to use to describe the nature of their competitive services.”).
An underlying basis of refusal common in each of the situations referred to above is the failure of the matter to function as a mark within the meaning of the Trademark Act (15 U.S.C. §§1051, 1052, and 1127). In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
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It is axiomatic that matter may not be registered unless it is used as a mark, namely, “in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods in question.” In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987). See, e.g., In re Melville Corp., 228 USPQ 970, 970 n.2 (TTAB 1986) (“If matter proposed for registration does not function as a mark, it is not registrable in accordance with Sections 1 and 2 of the Act because the preambles of those sections limit registration to subject matter within the definition of a trademark.”); In re Whataburger Systems, Inc., 209 USPQ 429, 430 (TTAB 1980) (“[A] designation may not be registered either as a trademark or as a service mark unless it is used as a mark, in such a manner that its function as an indication of origin may be readily perceived by persons encountering the goods or services in connection with which it is used.”).
Therefore, where the examining attorney has determined that matter sought to be registered is not registrable because it is not a mark within the meaning of the Trademark Act, a claim that the matter has acquired distinctiveness under §2(f) as applied to the applicant’s goods or services does not overcome the refusal. See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1007 (2001) (“Functionality having been established, whether MDI’S dual spring design has acquired secondary meaning need not be considered.”); In re R.M. Smith, Inc., 734 F.2d 1482, 1484-85, 222 USPQ 1, 3 (Fed. Cir. 1984) (“Evidence of distinctiveness is of no avail to counter a de jure functionality rejection.”); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., ___ USPQ2d ___, Opp’n Nos. 91161403, 91161405, et al. (TTAB Mar. 25, 2009) (stating that a product design may become generic and, thus, cannot be registered, regardless of applicant’s claim of acquired distinctiveness); In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984) (“Long use of a slogan which is not a trademark and would not be so perceived does not, of course, transform the slogan into a trademark.”); In re Mancino, 219 USPQ 1047, 1048 (TTAB 1983) (“Since the refusal ... was based on applicant’s failure to demonstrate technical service mark use, the claim of distinctiveness under Section 2(f) was of no relevance to the issue in the case.”).
As discussed above, evidence of acquired distinctiveness will not alter the determination that matter is unregistrable. However, the examining attorney must review the evidence and make a separate, alternative, determination as to whether, if the proposed mark is ultimately determined to be capable, the applicant’s evidence is sufficient to establish acquired distinctiveness. This will provide a more complete record in the event that the applicant appeals and prevails on the underlying refusal. The examining attorney should also consider whether the applicant’s evidence has any bearing on the underlying refusal. See TMEP §§1209.02 et seq. regarding the procedure for descriptiveness and/or generic refusals.
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If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found to be capable. Cf. In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had “effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness,” where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) issue of whether the would be registrable under 2(f) if it were ultimately found to be non-functional.
See also In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (the Board, while finding applicant’s evidence relating to public perception of WHY PAY MORE! entitled to relatively little weight, noting that the evidence is relevant to the issue of whether the slogan functions as a mark for applicant’s supermarket services).
1212.03 Evidence of Distinctiveness Under §2(f)
37 C.F.R. §2.41. Proof of distinctiveness under section 2(f).
(a) When registration is sought of a mark which would be unregistrable by reason of section 2(e) of the Act but which is said by applicant to have become distinctive in commerce of the goods or services set forth in the application, applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, affidavits, or declarations in accordance with §2.20, depositions, or other appropriate evidence showing duration, extent and nature of use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and affidavits, or declarations in accordance with §2.20, letters or statements from the trade or public, or both, or other appropriate evidence tending to show that the mark distinguishes such goods or services.
(b) In appropriate cases, ownership of one or more prior registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness. Also, if the mark is said to have become distinctive of applicant’s goods by reason of substantially exclusive and continuous use in commerce thereof by applicant for the five years before the date on which the claim of distinctiveness is made, a showing by way of statements which are verified or which include declarations in accordance with §2.20, in the application may, in appropriate cases, be accepted as prima facie evidence of distinctiveness. In each of these situations, however, further evidence may be required.
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“To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982).
1212.04 Prior Registrations as Proof of Distinctiveness
Trademark Rule 2.41(b), 37 C.F.R. §2.41(b), provides that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more prior registrations of the same mark on the Principal Register or under the Act of 1905. See TMEP §1212.04(b) as to what constitutes the “same mark,” and TMEP §§1212.09 et seq. concerning §1(b) applications.
The rule states that ownership of existing registrations to establish acquired distinctiveness “may” be considered acceptable in “appropriate cases,” and that the USPTO may, at its option, require additional evidence of distinctiveness. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).
The following are general guidelines regarding claiming ownership of prior registrations as a method of establishing acquired distinctiveness.
1212.04(a) Sufficiency of Claim vis-à-vis Nature of the Mark
The examining attorney has the discretion to determine whether the nature of the mark sought to be registered is such that a claim of ownership of a prior registration for the same or similar goods or services is enough to establish acquired distinctiveness. For example, if the mark sought to be registered is deemed to be highly descriptive or misdescriptive of the goods or services named in the application, the examining attorney may require additional evidence of acquired distinctiveness. See In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (claim of ownership of a prior registration held insufficient to establish acquired distinctiveness where registration was refused as primarily geographically deceptively misdescriptive); In re Kerr-McGee Corp., 190 USPQ 204 (TTAB 1976) (claim of ownership of prior registrations held insufficient to establish acquired distinctiveness where registration was refused on ground that the subject matter was merely an ornamental border or “carrier” for words and symbols appearing within).
If the term for which the applicant seeks to prove distinctiveness was disclaimed in the prior registration, the prior registration may not be accepted as prima facie evidence of acquired distinctiveness. Kellogg Co. v. General
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Mills, Inc., 82 USPQ2d 1766 (TTAB 2007); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004).
1212.04(b) “Same Mark”
A proposed mark is the “same mark as a previously registered mark for the purpose of 37 C.F.R. §2.41(b)” if it is the “legal equivalent” of such a mark. A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). See also Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1477 (TTAB 1988) (“The words GOLDEN RING, while they are used to describe the device, are by no means identical to or substantially identical to the gold ring device trademark.”); In re Best Products Co., Inc., 231 USPQ 988, 989 n.6 (TTAB 1986) (“[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations, were deemed to be immaterial differences.”); In re Loew’s Theatres, Inc., 223 USPQ 513, 514 n.5 (TTAB 1984), aff’d, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (“We do not, however, agree with the Examining Attorney that a minor difference in the marks (i.e., here, merely that the mark of the existing registration is in plural form) is a proper basis for excluding any consideration of this evidence under the rule.”); In re Flex-O- Glass, Inc., 194 USPQ 203, 205-06 (TTAB 1977) (“[P]ersons exposed to applicant’s registered mark ... would, upon encountering [applicant’s yellow rectangle and red circle design] ..., be likely to accept it as the same mark or as an inconsequential modification or modernization thereof.... [A]pplicant may ‘tack on’ to its use of the mark in question, the use of the registered mark ... and therefore may properly rely upon its registration in support of its claim of distinctiveness herein.”).
See, e.g., Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991) regarding the concept of “tacking” with reference to prior use of a legally equivalent mark.
When an applicant is claiming §2(f) in part as to only a portion of its mark, then the previously registered mark must be the legal equivalent of the portion for which the applicant is claiming acquired distinctiveness.
1212.04(c) Relatedness of Goods or Services
The examining attorney should determine whether the goods or services named in the application are sufficiently similar to the goods or services named in the prior registration(s). See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1478 (TTAB 1988) (“Applicant’s almost total reliance on the distinctiveness which its gold ring device has achieved vis-à-vis rifle scopes and handgun scopes is simply not sufficient by itself to
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establish that the same gold ring device has become distinctive vis-à-vis binoculars and spotting scopes.”); In re Best Products Co., Inc., 231 USPQ 988, 989 n.6 (TTAB 1986) (“[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations [‘mail order and catalog showroom services’ and ‘retail jewelry store services’], were deemed to be immaterial differences.”); In re Owens-Illinois Glass Co., 143 USPQ 431, 432 (TTAB 1964) (applicant’s ownership of prior registration of LIBBEY for cut-glass articles held acceptable as prima facie evidence of distinctiveness of identical mark for plastic tableware, the Board stating, “Cut- glass and plastic articles of tableware are customarily sold in the same retail outlets, and purchasers of one kind of tableware might well be prospective purchasers of the other.”); In re Lytle Engineering & Mfg. Co., 125 USPQ 308, 309 (TTAB 1960) (applicant’s ownership of prior registration of LYTLE for various services, including the planning, preparation, and production of technical publications, held acceptable as prima facie evidence of distinctiveness of identical mark for brochures, catalogs, and bulletins).
1212.04(d) Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905
Trademark Rule 2.41(b), 37 C.F.R. §2.41(b), states that ownership of a prior registration “on the Principal Register or under the Act of 1905” may be accepted as prima facie evidence of distinctiveness. Therefore, claims of acquired distinctiveness under §2(f) cannot be based on ownership of registrations on the Supplemental Register. See In re Canron, Inc., 219 USPQ 820 (TTAB 1983).
Moreover, a claim of acquired distinctiveness cannot be based on a registration that is cancelled or expired. See In re BankAmerica Corp., 229 USPQ 852, 853 (TTAB 1986). When an examining attorney considers a §2(f) claim based on ownership of one or more prior registrations, the examining attorney must confirm, in the records of the USPTO, that the claimed registrations were issued on the Principal Register or under the Act of 1905 and that they are in full force and effect.
1212.04(e) Form of §2(f) Claim Based on Ownership of Prior Registrations
The following language may be used to claim distinctiveness under §2(f) on the basis of ownership of one or more prior registrations:
The mark has become distinctive of the goods (or services) as evidenced by ownership of U.S. Registration No(s). __________ on the Principal Register for the same mark for the same or related goods or services.
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37 C.F.R. §2.41(b).
If the applicant is relying solely on its ownership of one or more prior registrations as proof of acquired distinctiveness, the §2(f) claim does not have to be verified. Therefore, an applicant or an applicant’s attorney may authorize amendment of an application to add such a claim through an examiner’s amendment, if otherwise appropriate.
1212.05 Five Years of Use as Proof of Distinctiveness
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness as used with the applicant’s goods or services in commerce. See also 37 C.F.R. §2.41(b).
The Trademark Act previously required that the relevant five-year period precede the filing date of the application. The Trademark Law Revision Act of 1988, Public Law 100-667, 102 Stat. 3935, revised §2(f) of the Act to provide for a prima facie showing of acquired distinctiveness based on five years’ use running up to the date the claim is made. Under the revised provision, any five-year claim submitted on or after November 16, 1989, is subject to the new time period. This applies even if the application was filed prior to that date.
Section 2(f) of the Act and 37 C.F.R. §2.41(b) state that reliance on a claim of five years’ use to establish acquired distinctiveness “may” be acceptable in “appropriate cases.” The USPTO may, at its option, require additional evidence of distinctiveness. Whether a claim of five years’ use will be deemed acceptable to establish that the mark has acquired distinctiveness depends largely on the nature of the mark in relation to the specified goods or services.
The following are general guidelines regarding the statutorily suggested proof of five years’ use as a method of establishing acquired distinctiveness.
1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark
For most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness.
The amount of evidence necessary to establish secondary meaning varies – “the greater the degree of description a term has, the heavier the burden to prove it has attained secondary meaning.” In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
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Accordingly, for marks refused under §2(e)(1) or §2(e)(2), whether the statement of five years’ use is sufficient in and of itself to establish acquired distinctiveness depends on the degree to which the mark is descriptive or misdescriptive. If the mark is highly descriptive or misdescriptive of the goods or services named in the application, the statement of five years’ use alone will be deemed insufficient to establish acquired distinctiveness. See In re Noon Hour Food Products, Inc., 88 USPQ2d 1172 (TTAB 2008) (despite applicant’s claim of use in commerce for almost one hundred years, as well as an “inadvertently cancelled” seventy-year old registration for the mark BOND-OST for cheese, the Board deemed current evidence clearly showed the mark was generic for the goods, and assuming arguendo that BOND-OST is not generic, that applicant had failed to establish acquired distinctiveness of the highly descriptive mark); In re Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) (applicant’s evidence of acquired distinctiveness included a claim of use since 1990, sales of more than 7,650,000,000 units of its goods, extensive display of its mark CRYSTAL GEYSER ALPINE SPRING WATER on advertising and delivery trucks and promotional paraphernalia, held insufficient to establish that the highly descriptive phrase ALPINE SPRING WATER had acquired distinctiveness for applicant’s bottled spring water); In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989) (applicant’s sole evidence of acquired distinctiveness, a claim of use since 1975, held insufficient to establish that the highly descriptive, if not generic, designation RADIO CONTROL BUYERS GUIDE had become distinctive of applicant’s magazines); In re Gray Inc., 3 USPQ2d 1558, 1559 (TTAB 1987) (“[T]o support registration of PROTECTIVE EQUIPMENT [for burglar and fire alarms and burglar and fire alarm surveillance services] on the Principal Register a showing considerably stronger than a prima facie statement of five years’ substantially exclusive use is required.”). Cf. In re Synergistics Research Corp., 218 USPQ 165 (TTAB 1983) (applicant’s declaration of five years’ use held sufficient to support registrability under §2(f) of BALL DARTS for equipment sold as a unit for playing a target game, in view of lack of evidence that the term is highly descriptive (e.g., no dictionary evidence of any meaning of BALL DARTS and no evidence of use of the term by competitors or the public)).
For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product container shapes, overall color of a product, mere ornamentation, and sounds for goods that make the sound in their normal course of operation), evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods or services would be required to establish distinctiveness. See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009) (the Board noting that
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“the evidence required is in proportion to the degree of nondistinctiveness of the mark at issue” in relation to a sound mark emitted by cellular telephones in their normal course of operation); In re ic! berlin brillen GmbH, 85 USPQ2d 2021 (TTAB 2008) (configuration of an earpiece for frames for sunglasses and spectacles comprised of three “fingers” near the hinge); In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) (applicant successfully established acquired distinctiveness for the design of a key head for key blanks and various metal door hardware, where evidence submitted in support thereof included over eleven years of use in commerce and significant evidence regarding industry practice, such that the evidence showed that “it is common for manufacturers of door hardware to use key head designs as source indicators…”); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress (white circle surrounded by blue border) for ear plugs); In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters).
1212.05(b) “Substantially Exclusive and Continuous”
The five years of use does not have to be exclusive, but may be “substantially” exclusive. This makes allowance for use by others that may be inconsequential or infringing, which does not necessarily invalidate the applicant’s claim. L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 USPQ2d 1307 (Fed. Cir. 1999).
The existence of other applications to register the same mark, or other known uses of the mark, does not automatically eliminate the possibility of using this method of proof, but the examining attorney should inquire as to the nature of such use and be satisfied that it is not substantial or does not nullify the claim of distinctiveness. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.”); Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009) (opposer’s contemporaneous use of the mark in connection with services closely related to applicant’s goods rose to the level necessary to rebut applicant’s contention of substantially exclusive use); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1682-83 (TTAB 2007) (Substantial use of mark by opposer’s parent company and additional use of mark by numerous third parties “seriously undercuts if not nullifies applicant’s claim of acquired distinctiveness.”); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1357-58 (TTAB 1989) (“[T]he existence of numerous third party users
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of a mark, even if junior, might well have a material impact on the Examiner’s decision to accept a party’s claim of distinctiveness.”); Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) (“[L]ong and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive.”).
The use of the mark during the five years must be continuous, without a period of “nonuse” or suspension of trade in the goods or services in connection with which the mark is used.
1212.05(c) Use “as a Mark”
The substantially exclusive and continuous use must be “as a mark.” 15 U.S.C. §1052(f). See In re Craigmyle, 224 USPQ 791 (TTAB 1984) (registrability under §2(f) not established by sales over a long period of time where there was no evidence that the subject matter had been used as a mark); In re Kwik Lok Corp., 217 USPQ 1245, 1248 (TTAB 1983) (declarations as to sales volume and advertising expenditures held insufficient to establish acquired distinctiveness. “The significant missing element in appellant’s case is evidence persuasive of the fact that the subject matter has been used as a mark.”).
1212.05(d) Form of the Proof of Five Years’ Use
If the applicant chooses to seek registration under §2(f), 15 U.S.C. §1052(f), by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness that reads as follows, if accurate:
The mark has become distinctive of the goods (or services) through the applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.
The claim of five years of use is generally required to be supported by an affidavit or declaration under 37 C.F.R. §2.20, signed by the applicant. See 37 C.F.R. §2.41(b). The affidavit or declaration can be signed by a person properly authorized to sign on behalf of applicant under 37 C.F.R. §2.33(a). See TMEP §611.03(a).
The following are guidelines regarding the form and language appropriate for a claim of five years of use:
(1) Use of the precise statutory wording is desirable, but variations may be accepted if they do not affect the essential allegations.
(2) The wording “substantially exclusive and continuous use in commerce” is essential.
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(3) It must be clear from the record that the five years of use has been in commerce that may lawfully be regulated by Congress. See Blanchard & Co., Inc. v. Charles Gilman & Son, Inc., 145 USPQ 62 (D. Mass. 1965), aff’d, 353 F.2d 400, 147 USPQ 263 (1st Cir. 1965), cert. denied 383 U.S. 968, 149 USPQ 905 (1966).
(4) The use of the mark must cover the five years before the date of the statement of five years’ use. Thus, wording that indicates that the use referred to is before the date of the statement is essential. Its omission can only be excused if the facts in the record clearly show that the use includes the five years before the date of the statement.
(5) The affidavit or declaration should include a statement that the mark has become distinctive or that the applicant believes that the mark has become distinctive, but absence of this statement is not fatal. See TMEP §1212.07 for examples of various ways in which an applicant may assert a §2(f) claim.
(6) The affidavit or declaration should contain a reference to distinctiveness as applied to the applicant’s goods or services, or to use with the applicant’s goods or services, because the distinctiveness created by the five years’ use must relate to the goods or services specified in the application. If there is doubt that the distinctiveness pertains to either all or any of the goods or services specified in the application, the examining attorney should inquire regarding that issue. While a clarifying response does not have to be verified, a substitute statement must be verified, i.e., supported by an affidavit or a declaration under 37 C.F.R. §2.20, signed by the applicant.
1212.06 Establishing Distinctiveness by Actual Evidence
Under Trademark Rule 2.41(a), 37 C.F.R. §2.41(a), an applicant may submit affidavits, declarations under 37 C.F.R. §2.20, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce that may lawfully be regulated by Congress, advertising expenditures in connection with such use, letters, or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services.
Establishing acquired distinctiveness by actual evidence was explained as follows in In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985):
An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of
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such use to cause the purchasing public to identify the mark with the source of the product.
The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services depends on the nature of the mark and the circumstances surrounding the use of the mark in each case. Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Capital Formation Counselors, Inc., 219 USPQ 916 (TTAB 1983).
In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public, not whether the mark is capable of becoming distinctive. Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009); In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335 (TTAB 1959).
The following sections provide examples of different types of evidence that have been used, alone or in combination, to establish acquired distinctiveness. No single evidentiary factor is determinative. The value of a specific type of evidence and the amount necessary to establish acquired distinctiveness will vary according to the facts of the specific case.
1212.06(a) Long Use of the Mark in Commerce
Long use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness. See In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986) (§2(f) claim of acquired distinctiveness of SPRAYZON for “cleaning preparations and degreasers for industrial and institutional use” found persuasive where applicant had submitted declaration of its president supporting sales figures and attesting to over eighteen years of substantially exclusive and continuous use); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984) (evidence submitted by applicant held insufficient to establish acquired distinctiveness of PACKAGING SPECIALISTS, INC., for contract packaging services, notwithstanding, inter alia, continuous and substantially exclusive use for sixteen years, deemed “a substantial period but not necessarily conclusive or persuasive”).
To support a §2(f) claim, use of the mark must be use in commerce, as defined in 15 U.S.C. §1127. See TMEP §§901 et seq. as to what constitutes use in commerce.
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1212.06(b) Advertising Expenditures
Large-scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used. However, proof of an expensive and successful advertising campaign is not in itself enough to prove secondary meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual sales under the mark of approximately eighty-five million dollars, and annual advertising expenditures in excess of ten million dollars – two million of which were spent on promotions and promotional items which included the phrase THE BEST BEER IN AMERICA – found insufficient to establish distinctiveness, in view of the highly descriptive nature of the proposed mark); Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357, 361, 221 USPQ 302, 305 n.2 (2d Cir. 1983).
The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source. The examining attorney must examine the advertising material to determine how the term is being used, the commercial impression created by such use, and what the use would mean to purchasers. Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009) (opposition sustained on the ground that sound mark had not acquired distinctiveness in part because applicant failed to provide evidence corroborating that the mark was used in advertisements in such a way that it would be recognized as a source identifier for cellular telephones); In re Redken Laboratories, Inc., 170 USPQ 526, 529 (TTAB 1971) (evidence adduced by applicant pursuant to §2(f) held insufficient to establish acquired distinctiveness of THE SCIENTIFIC APPROACH, for lectures concerning hair and skin treatment, notwithstanding ten years of use, over $500,000 in promotion and sponsorship expenses, and the staging of over 300 shows per year). See also In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008) (refusal to register product configuration for spectacles and sunglasses affirmed as the applicant had failed to prove acquired distinctiveness chiefly because of the “absence of evidence of the advertising and/or promotion by the applicant of the earpiece design as a trademark”); In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (refusal to register OFFICE MOVERS, INC., for moving services, affirmed notwithstanding §2(f) claim based on, inter alia, evidence of substantial advertising expenditures. “There is no evidence that any of the advertising activity was directed to creating secondary meaning in applicant’s highly descriptive trade name.”); In re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983) (evidence held insufficient to establish acquired distinctiveness for configuration of bag closures made of plastic, notwithstanding applicant’s statement that advertising of the closures involved several hundred thousands of dollars, where there was no evidence that the advertising had any impact on purchasers in perceiving the configuration as a mark). Cf. In re Haggar Co., 217 USPQ 81, 84 (TTAB 1982) (background design of a black
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swatch held registrable pursuant to §2(f) for clothing where applicant had submitted, inter alia, evidence of “very substantial advertising and sales,” the Board finding the design to be, “because of its serrated left edge, something more than a common geometric shape or design”).
If the applicant prefers not to specify the extent of its expenditures in promoting and advertising goods and services under the mark because this information is confidential, the applicant may indicate the types of media through which the goods and services have been advertised (e.g., national television) and how frequently the advertisements have appeared.
1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator
Affidavits or declarations that assert recognition of the mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the affidavits or declarations depends on the statements made and the identity of the affiant or declarant. In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988) (conclusionary declaration from applicant’s vice-president held insufficient without the factual basis for the declarant’s belief that the design had become distinctive). Proof of distinctiveness also requires more than proof of the existence of a relatively small number of people who associate a mark with the applicant. In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings.”). See also In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB 1987) (affidavit of applicant’s counsel expressing his belief that the mark has acquired secondary meaning accorded “no probative value whatsoever” because, among other reasons, the statement is subject to bias); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (declarations from customers which stated that designs used by applicant indicate to the declarant that the applicant is the source of the goods, but which did not refer to or identify the designs with any specificity, not considered persuasive); In re Bose Corp., 216 USPQ 1001, 1005 (TTAB 1983), aff’d, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (retailer’s statement that he has been in contact with many purchasers of loudspeaker systems of whom a substantial number would recognize depicted design as originating with applicant deemed competent evidence of secondary meaning); In re Flex-O-Glass, Inc., 194 USPQ 203, 206 (TTAB 1977) (“[T]he fact that the affidavits may be similar in format and expression is of no particular significance ... since the affiants have sworn to the statements contained therein.”).
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1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies
Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness and secondary meaning. Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 37, 59 USPQ2d 1720, 1730 (1st Cir. 2001) (“Although survey evidence is not required, ‘it is a valuable method of showing secondary meaning,’” citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 42, 49 USPQ2d 1225, 1235 (1st Cir. 1998)).
To show secondary meaning, the survey must show that the public views the proposed mark as an indication of the source of the product or service. Boston Beer Co. L.P. v. Slesar Bros. Brewing Co., Inc., 9 F.3d 175, 28 USPQ2d 1778 (1st Cir. 1993) (survey found insufficient to establish acquired distinctiveness where survey demonstrates product-place association rather than product-source association); Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009). The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (applicant’s Internet poll on name recognition deemed unreliable, where the poll did not attempt to prevent visitors from voting more than once or to prevent interested parties such as friends or associates or employees of the applicant from voting multiple times, and the poll results did not indicate the number of actual participants); In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (“[T]he survey asked the wrong question. The issue is not whether the term ‘Office Movers’ identifies a specific company. Rather, it is whether the term ‘OFFICE MOVERS, INC.’ identifies services which emanate from a single source.”); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990, 994 n.7 (TTAB 1984) (“[W]here ... [reports of market research, consumer reaction studies] have been conducted for marketing reasons rather than directly to assist in resolving the issues in proceedings before us, their value will almost always depend on interpretations of their significance by witnesses or other evidence.”); Specialty Brands, Inc. v. Spiceseas, Inc., 220 USPQ 73, 74 n.4 (TTAB 1983) (testimony concerning survey results, unsupported by documentation, considered unreliable hearsay).
1212.06(e) Miscellaneous Considerations Regarding Evidence Submitted to Establish Distinctiveness
1212.06(e)(i) First or Only User
When the applicant is the only source of the goods or services, use alone does not automatically represent trademark recognition and acquired distinctiveness. See, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437, 126 USPQ 362 (C.C.P.A. 1960); In re Mortgage Bankers Ass’n of
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America, 226 USPQ 954 (TTAB 1985); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983); In re Meier’s Wine Cellars, Inc., 150 USPQ 475 (TTAB 1966); In re G. D. Searle & Co., 143 USPQ 220 (TTAB 1964), aff’d, 360 F.2d 650, 149 USPQ 619 (C.C.P.A. 1966).
1212.06(e)(ii) State Trademark Registrations
State trademark registrations are of relatively little probative value. See, e.g., In re Vico Products Mfg. Co., Inc., 229 USPQ 364, 370 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986) (“While applicant’s design may be registrable under the provisions of California trademark law, it is the federal trademark statute and the cases interpreting it by which we must evaluate the registrability of applicant’s asserted mark.”); In re Craigmyle, 224 USPQ 791, 794 (TTAB 1984).
1212.06(e)(iii) Design Patent
The fact that a device is the subject of a design patent does not, without more, mean that it functions as a mark or has acquired distinctiveness. See, e.g., In re Vico Products Mfg. Co., Inc., 229 USPQ 364, 370 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986).
1212.06(e)(iv) Acquiescence to Demands of Competitors
Acquiescence to demands of competitors to cease use of a term can be equally viewed as simply a desire to avoid litigation. See, e.g., In re Wella Corp., 565 F.2d 143, 144 n.2, 196 USPQ 7, 8 n.2 (C.C.P.A. 1977); In re Consolidated Cigar Corp., 13 USPQ2d 1481 (TTAB 1989).
1212.07 Form of Application Asserting Distinctiveness
To base a registration on acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), an applicant must indicate its intent to do so.
The indication of the applicant’s intent to rely on §2(f) can take a variety of forms, for example, a statement that registration is requested under §2(f); a statement that the mark has become distinctive, or that the applicant believes the mark has become distinctive of the goods or services in commerce; the statement relating to five years’ use in commerce as suggested in §2(f); or a statement that evidence is being submitted in support of acquired distinctiveness.
If it is unclear from the application whether a claim of distinctiveness under §2(f) has been made, the examining attorney should inquire whether the applicant is seeking registration under §2(f). See TMEP §1212.02(d) concerning unnecessary §2(f) claims.
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If the statement requesting registration under §2(f) and the evidence submitted to establish acquired distinctiveness are in the application when filed, the §2(f) statement and proof are supported by the verification of the application.
If a claim of distinctiveness pursuant to §2(f) is submitted as an amendment, or if additional evidence is added in an amendment, the nature of the proof submitted to establish acquired distinctiveness determines whether a verification is necessary.
A claim of ownership of one or more prior registrations as proof of distinctiveness does not have to be verified. See TMEP §1212.04(e).
If the applicant claims that the mark has become distinctive of the applicant’s goods/services through substantially exclusive and continuous use of the mark in commerce by the applicant for the five years before the date on which the claim of distinctiveness is made, the applicant must submit this claim in the form of an affidavit, or a declaration in accordance with 37 C.F.R. §2.20, signed by the applicant. 15 U.S.C. §1052(f); 37 C.F.R. §2.41(b); TMEP §1212.05(d). See 37 C.F.R. §2.33(a) and TMEP §611.03(a) regarding persons properly authorized to sign on behalf of applicant.
If an application is amended to add a §2(f) claim relying on other types of evidence, there may be considerable flexibility as to form. While statements by the applicant regarding advertising or sales figures or other facts that may show acquired distinctiveness would normally be presented in the form of affidavits, or declarations under 37 C.F.R. §2.20, signed by the applicant, verification may not be required for other types of evidence. The examining attorney will determine whether the evidence relied on is of a nature that requires that it be verified by the applicant.
1212.08 Section 44 and §66(a) Applications and Distinctiveness
In applications based on §44(d), §44(e), or §66(a) of the Trademark Act, registration may be sought under §2(f) on a showing that the mark has acquired distinctiveness in commerce that may lawfully be regulated by Congress. See In re Etablissements Darty et Fils, 759 F.2d 15, 18, 225 USPQ 652, 654 (Fed. Cir. 1985). Dates of first use do not have to be stated in an application based solely on §44 or §66(a). However, reference to length of use or information as to specific dates of use will be important as part of the evidence presented in support of the claim of acquired distinctiveness.
The applicant may not rely on use other than use in commerce that may be regulated by the United States Congress in establishing acquired distinctiveness. Evidence of use solely in a foreign country, or between two foreign countries, is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741 (TTAB 1999).
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1212.09 Section 1(b) Applications and Distinctiveness
1212.09(a) Section 2(f) Claim Requires Prior Use
Section 2(f), 15 U.S.C. §1052(f), is limited by its terms to “a mark used by the applicant.” A claim of distinctiveness under §2(f) is normally not filed in a §1(b) application before the applicant files an amendment to allege use or a statement of use, because a claim of acquired distinctiveness, by definition, requires prior use.
However, an intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under §2(f) before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of the applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
The required showing is essentially twofold. First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce. All of the rules and legal precedent pertaining to such a showing in a use-based application are equally applicable in this context.... Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to- use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use.
In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).
To satisfy the first element, the applicant must establish acquired distinctiveness as to the other goods or services by appropriate evidence, such as ownership of a prior registration for the same mark for related goods or services (see TMEP §§1212.04 et seq.), a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods or services (see TMEP §§1212.05 et seq.), or actual evidence of acquired
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distinctiveness for the same mark with respect to the other goods or services (see TMEP §§1212.06 et seq.).
To satisfy the second element, applicant must show “the extent to which the goods or services in the intent-to-use application are related to the goods or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods or services when use in commerce occurs.” Rogers, 53 USPQ2d at 1745.
The showing necessary to establish relatedness will vary from case to case, depending on the nature of the goods or services involved and the language used to identify them. There is no absolute rule that applicant must submit extrinsic evidence to support its contention that the goods are related in every case. Kellogg Co. v. General Mills, Inc., 82 USPQ2d 1766 (TTAB 2007) (close relationship between cereal and food bars derived from cereal deemed “self evident from the respective identifications of goods”).
The fact that a mark is famous in connection with certain goods or services does not necessarily lead to the conclusion that, upon use, distinctiveness will transfer to use of the mark in connection with unrelated goods or services in an intent-to-use application. In Rogers, the Board stated that:
The owner of a famous mark must still establish a strong likelihood of transference of the trademark function to the goods or services identified in the intent-to-use application. This factually-based determination will still involve establishing some degree of relationship between the goods or services for which the mark is famous and the goods or services in the intent-to-use application.
53 USPQ2d at 1745-1746.
An applicant whose application is based on use in commerce under 15 U.S.C. §1051(a) may also base a claim of acquired distinctiveness under §2(f) on long use of the mark on related goods or services, if the applicant meets the requirements set forth above.
1212.09(b) Claim of §2(f) “in Part” in §1(b) Application
An intent-to-use applicant may also file a claim of acquired distinctiveness under §2(f) of the Trademark Act as to part of a mark before filing an acceptable amendment to allege use or statement of use. The claim must indicate that the applicant has already used the relevant part of the mark in commerce on or in connection with the specified goods or services, or related goods or services as discussed above. See TMEP §§1212.02(f) et seq. regarding claims of §2(f) distinctiveness “in part.”
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Evidence in support of such a claim may consist of: (1) ownership of a prior registration covering the relevant part of the mark and the same or related goods or services (see TMEP §§1212.04 et seq.); (2) a prima facie showing of distinctiveness based on five years’ use of the relevant part of the mark with the same or related goods or services (see TMEP §§1212.05 et seq.); or (3) actual evidence of acquired distinctiveness of the relevant part of the mark with respect to the same or related goods or services (see TMEP §§1212.06 et seq.). The examining attorney should consider the claim in the same manner as any other claim under §2(f).
If the examining attorney determines that the applicant has established acquired distinctiveness as to the relevant part of the mark, the examining attorney should withdraw any refusal related to the nondistinctive character of that part of the mark.
1212.10 Printing “§2(f)” Notations
Currently, when a mark is registered under §2(f), the USPTO prints a “2(f)” notation in the Official Gazette and on the certificate of registration. The examining attorney must ensure that the §2(f) claim has been entered into the TRAM database, so that it will be printed in the Official Gazette and on the certificate of registration. See TMEP §817 regarding preparation of an application for publication or issuance.
There was a period of time in the past when the USPTO did not print §2(f) notations. Therefore, the absence of a “§2(f)” notation on an older registration does not necessarily mean that the mark was registered without resort to §2(f).
1213 Disclaimer of Elements in Marks
15 U.S.C. §1056. Disclaimers.
(a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
(b) No disclaimer, including those made under subsection (e) of section 7 of this Act, shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.
A disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark in a trademark application or registration. A disclaimer may be included in an
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application as filed or may be added by amendment, e.g., to comply with a requirement by the examining attorney.
The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant’s right with respect to certain elements in the mark. As stated in Horlick’s Malted Milk Co. v. Borden Co., 295 F. 232, 234, 1924 C.D. 197, 199 (D.C. Cir. 1924):
[T]he fact that a mark contains descriptive words is not enough to warrant a refusal to register it. Unless it consists only of such words, it may not be refused a place on the registry of the Patent Office.
The significance of a disclaimer is conveyed in the following statement:
As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.
Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954).
A disclaimer may be limited to pertain to only certain classes, or to only certain goods or services.
1213.01 History of Disclaimer Practice
There was no statutory authority for disclaimer prior to 1946. As various court decisions were rendered, USPTO practice fluctuated from, first, registering the composite mark without a qualifying statement; later, requiring a statement in the application disclaiming the unregistrable matter in the mark; and, finally, requiring removal of the unregistrable matter from the mark on the drawing. This fluctuation ended with the decision of Estate of P.D. Beckwith v. Comm’r of Pats., 252 U.S. 538, 1920 C.D. 471 (1920), in which the United States Supreme Court held that to require the removal of descriptive matter from a composite mark was erroneous, and commended the practice of a statement of disclaimer. Thus, the practice of disclaimer was established officially in the USPTO, although still without statutory support.
The Trademark Act of 1946 created a statutory basis for the practice of disclaimer in §6, 15 U.S.C. §1056.
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1213.01(a) Discretion in Requiring Disclaimer
When first incorporated in the Trademark Act in 1946, §6 stated that the Director shall require unregistrable matter to be disclaimed. Under the impetus of the mandatory word “shall,” it became customary to require a disclaimer for every occurrence, in any type of combination, of every term or symbol which by itself might be refused registration in the first instance under the 1946 Act.
In 1962, §6 was amended to state that the Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. The change from “shall” to “may” justifies the exercise of greater discretion by examining attorneys in determining whether a disclaimer is necessary.
Examining attorneys should keep in mind the basic purpose of disclaimers, which is to indicate in the record that a significant element of a composite mark is not being appropriated apart from the composite. The examining attorney should not require that an element of a mark be disclaimed when a disclaimer would be unnecessary, e.g., when the form or degree of integration of an element in the composite makes it obvious that no claim is being made in any element apart from the composite.
1213.01(b) Refusal to Register Because of Failure to Disclaim
Failure to comply with a requirement to disclaim was held to be a basis for refusal to register before the Act of 1946. See In re American Cyanamid & Chemical Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938). Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953). Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording “may require the applicant to disclaim,” registration may be refused if an applicant does not comply with a requirement for a disclaimer made by the examining attorney. See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
If an applicant fails to comply with the examining attorney’s requirement for a disclaimer, the examining attorney should make the requirement final if the application is otherwise in condition for a final action.
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1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), was amended in 1962 to add the sentence, “An applicant may voluntarily disclaim a component of a mark sought to be registered.” Disclaimers volunteered by applicants generally should conform to the guidelines set forth in this Manual. See TMEP §§1213.08 et seq.
In In re MCI Communications Corp., 21 USPQ2d 1534 (Comm’r Pats. 1991), the Commissioner held that §6 of the Act permits an applicant to disclaim matter voluntarily, regardless of whether the matter is registrable or unregistrable. The Commissioner specifically overruled all previous USPTO authority holding otherwise. (Previous practice prohibited the entry of disclaimers of registrable components of marks.) Therefore, if an applicant offers a disclaimer of any matter in a mark, the USPTO will accept the disclaimer.
The MCI decision states emphatically that the entry of a voluntary disclaimer does not render registrable a mark that is otherwise unregistrable under relevant sections of the Trademark Act, such as §2(d) or §2(e). See In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008) (voluntary disclaimer of “RSI” has no legal effect on the issue of likelihood of confusion because it is not a weak term). The examining attorney must evaluate the entire mark, including any disclaimed matter, to determine registrability. Furthermore, the decision states that the applicant may not disclaim the entire mark. See TMEP §1213.06.
An applicant may volunteer a disclaimer in the mistaken belief that a disclaimer would be required when, in fact, USPTO policy would not require a disclaimer. If this appears to be the case, the examining attorney should offer the applicant the opportunity to withdraw the disclaimer. If it is necessary to communicate with the applicant about another matter, the examining attorney should state in the Office action that the disclaimer appears to be unnecessary, and inquire as to whether the applicant wants to withdraw the disclaimer. If it is otherwise unnecessary to communicate with the applicant, the inquiry may be made by telephone or e-mail. If the applicant wants to delete the disclaimer, this may be done by examiner’s amendment. If the applicant does not respond promptly to the telephone or e-mail message (applicant should be given at least a week), the examining attorney should enter a note in the “Notes-to-the-File” section of the record and approve the application for publication or registration on the Supplemental Register without deleting the disclaimer.
1213.02 “Composite” Marks
A “composite” mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word
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elements; or it may consist solely of separable design elements. An unregistrable component of a composite mark is subject to disclaimer. However, if a composite mark (or portion thereof) is “unitary,” an individual component of the mark (or of the unitary portion) that would otherwise be unregistrable need not be disclaimed. See TMEP §§1213.05 et seq.
The same principles apply to disclaimer of an unregistrable component of a composite mark, whether the mark is a combination of wording and designs or consists entirely of wording or entirely of designs.
1213.03 Disclaimer of Unregistrable Components of Marks
1213.03(a) “Unregistrable Components” in General
Estate of P.D. Beckwith v. Comm’r of Pats., 252 U.S. 538, 1920 C.D. 471 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter. Section 6 of the Act referred initially to “unregistrable matter” and, since the 1962 amendment, now refers to “an unregistrable component.”
Typically, an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, matter that is merely descriptive or deceptively misdescriptive of the goods or services, or matter that is primarily geographically descriptive of the goods or services.
Office practice does not require disclaimer of a surname. Ex parte Norquist Products, Inc., 109 USPQ 399 (Comm’r Pats. 1956) (disclaimer of “NORQUIST” found unnecessary in application to register mark comprising “NORQUIST CORONET” on an oval background featuring a coronet, for tables and chairs). In that decision, the Commissioner stated as follows:
Section [2(e)(4)] of the statute does not contemplate the dissection of a composite mark to determine whether a word which constitutes an integral part of the mark is primarily merely a surname. Rather, it contemplates an examination of the mark in its entirety and an evaluation of the commercial impression created by the entire mark. A word which is primarily merely a surname may lose that significance when it appears in a distinctive composite.
Id., at 400. The addition of other registrable matter creates a composite mark with an overall impression that is not primarily merely that of a surname. If the additional matter is minimal or unregistrable, then the mark is primarily merely a surname and refusal under §2(e)(4) of the Act, 15 U.S.C. §1052(e)(4) (formerly §2(e)(3), 15 U.S.C. §1052(e)(3)), should be made. See In re E. Martinoni Co., 189 USPQ 589 (TTAB 1975). See TMEP §§1211.01(b) et seq. regarding the combination of a surname with additional matter.
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In cases where registration of a mark is barred under the Trademark Act (e.g., under §§2(a), 2(b), 2(c), 2(d), and 2(e)(3)), a disclaimer of an unregistrable component will not render the mark registrable. See, e.g., American Speech- Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) (“While the disclaimer is appropriate to indicate that respondent claims no proprietary right in the disclaimed words, the disclaimer does not affect the question of whether the disclaimed matter deceives the public, since one cannot avoid the Section 2(a) deceptiveness prohibition by disclaiming deceptive matter apart from the mark as a whole.”). See TMEP §1213.10 concerning disclaimers with regard to likelihood of confusion, and TMEP §§1210.06(a) and (b) regarding disclaimer of geographic terms in composite marks.
1213.03(b) Generic Matter and Matter Which Does Not Function as a Mark
If a mark is comprised in part of matter that, as applied to the goods/services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register. If, however, matter that would otherwise be generic or would not function as a mark is part of a unitary mark or part of a separable unitary element of a mark, the examining attorney should not require a disclaimer of the matter. See TMEP §1213.05.
See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). See also In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766, 768 (TTAB 1986) (“[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).”).
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (“Section 6 is equally applicable to the Supplemental Register.”); In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of “BALSAM,” found registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) (“Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.”).
1213.03(c) Pictorial Representations of Descriptive Matter
An accurate pictorial representation of descriptive matter is equivalent to the written expression and, therefore, must be disclaimed pursuant to the same
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rules applicable to merely descriptive wording. See Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504 (TTAB 1978) (thistle design found synonymous to the word “thistle,” which is used in a descriptive sense to designate a class of sailboats).
A properly worded disclaimer would read as follows:
No claim is made to the exclusive right to use the design of “____” apart from the mark as shown.
No disclaimer of highly stylized pictorial representations of descriptive matter should be required because the design element creates a distinct commercial impression. See In re LRC Products Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (outline of two gloved hands held arbitrary and fanciful), and cases cited therein.
1213.03(d) Entity Designations
Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) or the familial business structure of an entity (e.g., “& Sons” or “Bros.”) must be disclaimed because an entity designation has no source-indicating capacity. In re Piano Factory Group, Inc., 85 USPQ2d 1522 (TTAB 2006) (holding VOSE & SONS primarily merely a surname); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (“PRESS,” as applied to a printing or publishing establishment, “is in the nature of a generic entity designation which is incapable of serving a source-indicating function”); In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“’PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company”); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) (“the element ‘INC.’ [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark evaluation, to have no source indication or distinguishing capacity”); Further, such designations must also be disclaimed in marks seeking registration on the Principal Register under §2(f) or on the Supplemental Register.
The only exception to this practice is where the entity designation is used in an arbitrary manner (e.g., “THE LTD.” or “KIDS INC.” for clothing or CHUCKLE BROS. for a comic strip). In this case, the term has trademark significance and a disclaimer should not be required.
1213.04 Trade Names
Unregistrable components of trade names or company names shall be disclaimed pursuant to the same rules that apply generally to trademarks. See In re Martin’s Famous Pastry Shoppe, Inc., 221 USPQ 364 (TTAB 1984), aff’d on other grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
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1213.05 “Unitary” Marks
A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. That is, the elements are so merged together that they cannot be divided to be regarded as separable elements. If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required.
The examining attorney must consider a number of factors in determining whether matter is part of a single or unitary mark: whether it is physically connected by lines or other design features; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).
For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning. An example is the term “Black Magic,” which has a distinct meaning of its own as a whole. The word “black” is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.
In the following cases, marks were considered unitary: B. Kuppenheimer & Co., Inc. v. Kayser-Roth Corp., 326 F.2d 820, 822, 140 USPQ 262, 263 (C.C.P.A. 1964) (KUPPENHEIMER and SUP-PANTS combined so that they shared the double “P,” making “an indivisible symbol rather than two divisible words”); In re Hampshire-Designers, Inc., 199 USPQ 383 (TTAB 1978) (DESIGNERS PLUS+ for sweaters held unitary; thus, no disclaimer of “DESIGNERS” deemed necessary); In re J.R. Carlson Laboratories, Inc., 183 USPQ 509 (TTAB 1974) (E GEM for bath oil containing vitamin E held unitary; thus, no disclaimer of “E”).
In the following cases, marks were found not to be unitary: In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006) (trade dress for clothing consisting of a label with the words “FLASH DARE!” in a V-shaped background and cut-out areas located on each side of the label, with the cut- out areas consisting of a hole in a garment and a flap attached to the garment with a closure device held not unitary); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007) (ZOGGS TOGGS for clothing not unitary; requirement for disclaimer of “TOGGS” affirmed); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006) (GALA ROUGE for wine not unitary; requirement for disclaimer of “ROUGE” affirmed); Dena Corp., supra (EUROPEAN FORMULA above a circular design on a dark square or background considered not unitary); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (LEAN LINE for low calorie foods considered not unitary; requirement for
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disclaimer of “LEAN” held proper); In re IBP, Inc., 228 USPQ 303 (TTAB 1985) (IBP SELECT TRIM for pork considered not unitary; refusal of registration in the absence of a disclaimer of “SELECT TRIM” affirmed); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (UNIROYAL STEEL/GLAS for vehicle tires considered not unitary; requirement for disclaimer of “STEEL/GLAS” deemed appropriate); In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (PHACTS POCKET PROFILE, for personal medication history summary and record forms, considered not unitary; refusal to register in the absence of a disclaimer of “POCKET PROFILE” affirmed. “A disclaimer of a descriptive portion of a composite mark is unnecessary only where the form or degree of integration of that element in the composite makes it obvious that no claim other than of the composite would be involved. That is, if the elements are so merged together that they cannot be regarded as separable elements, the mark is a single unitary mark and not a composite mark and no disclaimer is necessary.”); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) (PRESTO BURGER for electrical cooking utensils not unitary; requirement for disclaimer of “BURGER” affirmed).
The examining attorney must exercise discretion in determining whether a mark or portion of a mark is unitary, in which case a disclaimer of a nondistinctive component should not be required. It is not always easy to articulate why matter is unitary. However, if one cannot spell out exactly why a mark is unitary, then the mark is probably not unitary and nondistinctive elements within the mark must be disclaimed. In general, a mark is unitary if the whole is something more than the sum of its parts.
See TMEP §§1213.05(a) et seq. for examples of different types of unitary marks.
1213.05(a) Compound Word Marks
A compound word mark is comprised of two or more distinct words (or words and syllables) that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, and PULSAIR).
If a compound word mark consists of an unregistrable component and a registrable component combined into a single word, no disclaimer of the unregistrable component of the compound word will be required.
If a composite mark consists of a compound word combined with arbitrary matter, and the compound word is unregistrable, a disclaimer of the compound word may be required. The form of the disclaimer of the compound word – i.e., whether the disclaimed portion of the mark appears as one compound word or as two or more distinct words – should be consistent with the evidence of descriptiveness. If the compound word itself (with no spaces) is used descriptively, it should be disclaimed in that form. Otherwise, the disclaimed portion should appear as two or more distinct words,
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separated by spaces. See TMEP §1213.08(c) regarding disclaimer of misspelled words.
See TMEP §807.12(e) regarding drawings of compound word marks.
1213.05(a)(i) Telescoped Words
A telescoped mark is one that comprises two or more words that share letters (e.g., HAMERICAN, ORDERECORDER, SUPERINSE, VITAMINSURANCE, and POLLENERGY). See TMEP §807.12(e) regarding drawings for telescoped marks.
A telescoped word is considered unitary. Therefore, no disclaimer of an individual portion of a telescoped word is required, regardless of whether the mark is shown in a standard character or special form drawing.
However, if a telescoped word is itself unregistrable, a disclaimer of the telescoped word may be required. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for banking services in the absence of a disclaimer of “FIRST TIER,” in view of evidence that the term describes a class of banks). See TMEP §1213.08(c) regarding disclaimers of misspelled words, in general.
1213.05(a)(ii) Compound Words Formed with Hyphen or Other Punctuation
When a compound word is formed by hyphenating two words or terms, one of which would be unregistrable alone, no disclaimer is necessary. “X” Laboratories, Inc. v. Odorite Sanitation Service of Baltimore, Inc., 106 USPQ 327, 329 (Comm’r Pats. 1955) (requirement for a disclaimer of “TIRE” deemed unnecessary in application to register TIRE-X for a tire cleaner).
Word marks consisting of two terms joined by an asterisk (e.g., RIB*TYPE), a slash (e.g., RIB/TYPE) or a raised period (e.g., RIB°TYPE) are analogous to hyphenated words. Therefore, no disclaimer of portions of marks formed by asterisks, slashes, or raised periods is necessary.
If a hyphenated term comprising part of a mark is unregistrable, then a disclaimer of the hyphenated term may be required. See TMEP §1209.03(d) regarding determinations of whether a composite comprising two descriptive terms is itself descriptive. In this situation, the examining attorney should require a disclaimer of the words in the correct spelling. Cf. TMEP §1213.08(c) regarding disclaimer of misspelled words.
Example 1: If the mark includes the term SOFT-TOYS for stuffed animals, the applicant must disclaim the two separate words “SOFT TOYS” apart from the mark as shown.
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Example 2: If the mark includes the term OVER-COAT for winter coats, the applicant must disclaim the compound word “OVERCOAT,” because this is how the term is commonly spelled.
1213.05(b) Slogans
A registrable slogan is one that is used in a trademark sense. A registrable slogan is considered unitary and should not be broken up for purposes of requiring a disclaimer.
If an unregistrable slogan is a component of a registrable mark, then the examining attorney should require that the slogan be disclaimed.
If a mark consists entirely of a slogan that is merely descriptive or that is not being used as a mark, then registration should be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM for flavored ices, etc., held incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE! held to be an unregistrable common commercial phrase).
1213.05(c) “Double Entendre”
A “double entendre” is a word or expression capable of more than one interpretation. For trademark purposes, a “double entendre” is an expression that has a double connotation or significance as applied to the goods or services. The mark that comprises the “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services.
A true “double entendre” is unitary by definition. An expression that is a “double entendre” should not be broken up for purposes of requiring a disclaimer. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), where the Board found inappropriate a requirement for a disclaimer of “LIGHT” apart from the mark “LIGHT N’ LIVELY” for reduced calorie mayonnaise, stating as follows:
The mark “LIGHT N’ LIVELY” as a whole has a suggestive significance which is distinctly different from the merely descriptive significance of the term “LIGHT” per se. That is, the merely descriptive significance of the term “LIGHT” is lost in the mark as a whole. Moreover, the expression as a whole has an alliterative lilting cadence which encourages persons encountering it to perceive it as a whole.
See also In re Symbra’ette, Inc., 189 USPQ 448 (TTAB 1975) (SHEER ELEGANCE for panty hose held to be a registrable unitary expression; thus, no disclaimer of “SHEER” considered necessary).
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The multiple interpretations that make an expression a “double entendre” must be associations that the public would make fairly readily, and must be readily apparent from the mark itself. See In re The Place, Inc., 76 USPQ2d 1467, 1470 (TTAB 2005) (THE GREATEST BAR held laudatory and merely descriptive of restaurant and bar services; the Board stating that “[i]f the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of the applicant’s trade dress, advertising materials or other matter, then the mark is not a double entendre”); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE held merely descriptive for banking services, despite applicant’s argument that the term also connotes the Pony Express, the Board finding that, in the relevant context, the public would not make that association). See also In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156 (TTAB 2003) (ETHNIC ACCENTS held merely descriptive of “entertainment in the nature of television programs in the field of home décor,” because the meaning in the context of the services is home furnishings or decorations which reflect or evoke particular ethnic traditions or themes, which identifies a significant feature of applicant’s programs; viewers of applicant’s programs deemed unlikely to discern a double entendre referring to a person who speaks with a foreign accent).
If all meanings of a “double entendre” are merely descriptive in relation to the goods, then the mark comprising the “double entendre” should be refused registration as merely descriptive.
The following cases illustrate situations where marks were considered to be “double entendres” and, therefore, registrable unitary marks: In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE for bakery products); In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008) (THE FARMACY held registrable for retail store services featuring natural herbs and organic products and related health and information services relating to dietary supplements and nutrition); In re Simmons Co., 189 USPQ 352 (TTAB 1976) (THE HARD LINE for mattresses and bed springs); In re Delaware Punch Co., 186 USPQ 63 (TTAB 1975) (THE SOFT PUNCH for noncarbonated soft drink); In re National Tea Co., 144 USPQ 286 (TTAB 1965) (NO BONES ABOUT IT for fresh pre-cooked ham).
1213.05(d) Incongruity
If two or more terms are combined in a mark to create an incongruity (e.g., URBAN SAFARI, MR. MICROWAVE, and DR. GRAMMAR), the mark is unitary and no disclaimer of nondistinctive individual elements is necessary.
1213.05(e) Sound Patterns
At times, a mark will form a unitary whole through a rhyming pattern, use of alliteration or some other use of sound that creates a distinctive impression. In such a case, the mark is regarded as unitary and individual elements
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should not be disclaimed. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) (LIGHT N’ LIVELY found to be a unitary term not subject to disclaimer, because the mark as a whole “has a suggestive significance which is distinctly different from the merely descriptive significance of the term 'LIGHT' per se" and that "the merely descriptive significance of the term 'LIGHT' is lost in the mark as a whole."). However, alliterative or repeated wording does not in itself make a mark unitary. In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007) (the rhyming quality of the words ZOGGS TOGGS “does not infuse TOGGS with any separate and distinct meaning apart from its generic meaning”); In re Lean Line, Inc., 229 USPQ 781, 782 (TTAB 1986) (LEAN LINE not considered unitary; “there is nothing in the record to suggest that the mere fact that both words which form the mark begin with the letter ‘L’ would cause purchasers to miss the merely descriptive significance of the term ‘LEAN’ or consider the entire mark to be a unitary expression.”)
1213.05(f) Display of Mark
The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary. See, e.g., In re Texsun Tire and Battery Stores, Inc., 229 USPQ 227, 229 (TTAB 1986) (“[T]he portion of the outline of the map of Texas encircled as it is with the representation of a tire and surrounded by a rectangular border results in a unitary composite mark which is unique and fanciful.”); cf. In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006) (trade dress configuration of product design consisting of a label with the words “FLASH DARE!” in a V-shaped background, and cut-out areas located on each side of the label, with the cut-out areas consisting of a hole in a garment and a flap attached to the garment with a closure device held not to be unitary where applicant owned separate registrations for some of the elements and in view of the separate locations of the words and design elements).
1213.06 Entire Mark May Not Be Disclaimed
An entire mark may not be disclaimed. If a mark is not registrable as a whole, a disclaimer will not make it registrable. There must be something in the combination of elements in the mark, or something of sufficient substance or distinctiveness over and above the matter being disclaimed, that would make the composite registrable. See In re Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984); Ex parte Ste. Pierre Smirnoff Fls, Inc., 102 USPQ 415 (Comm’r Pats. 1954). This includes marks that are comprised entirely of generic wording, and either the entire mark or some of the terms are the phonetic equivalent of the generic wording. Such marks cannot be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).
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In Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991), the Court of Appeals for the Federal Circuit stated as follows:
[U]nder traditional disclaimer practice, an applicant could not disclaim all elements of a composite mark. Section 1056(a) codified this policy. A mark which must be entirely disclaimed has no ‘unregistrable component,’ but is instead entirely nonregistrable. In other words, a mark which must be entirely disclaimed has no ‘otherwise registrable’ parts. Therefore, such marks do not qualify as composite marks for which the Commissioner may require a disclaimer.
1213.07 Removal Rather than Disclaimer
When it is not clear that matter forms part of a mark, the examining attorney must consider whether it is appropriate for the applicant to amend the drawing of the mark to remove the matter, rather than to disclaim it. See TMEP §807.14(a) regarding deletion of matter from the mark on a drawing. An applicant may not amend the drawing if the amendment would constitute a material alteration of the mark. 37 C.F.R. §2.72; TMEP §§807.14 et seq.
There are circumstances under which the applicant may omit or remove matter from the mark shown in the drawing, if the overall commercial impression is not altered. See Institut Nat’l Des Appellations D’Origine v. Vintners Int’l Co. Inc., 958 F.2d 1574, 1582, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950). However, matter may not be omitted from the drawing if the omission would result in an incomplete representation of the mark, sometimes referred to as “mutilation.” See TMEP §807.12(d). In other words, the matter presented for registration must convey a single distinct commercial impression. If a mark is not unitary in this sense, it cannot be registered. Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991).
1213.08 Form of Disclaimers
1213.08(a) Wording of Disclaimer
1213.08(a)(i) Standardized Printing Format for Disclaimer
Since November 9, 1982, disclaimers for marks published for opposition and those registered on the Supplemental Register are printed in a standardized form in the Official Gazette, regardless of the text submitted. Disclaimers are in the standardized format in certificates of registration on the Supplemental Register issued as of that date. Disclaimers are in the standardized format in certificates of registration on the Principal Register issued as of February 1, 1983. The disclaimed matter is taken from the disclaimer of record and
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inserted into the standardized disclaimer format for printing and database purposes. The standardized disclaimer text is as follows:
No claim is made to the exclusive right to use ____________, apart from the mark as shown.
See notice at 1022 TMOG 44 (September 28, 1982). See also In re Owatonna Tool Co., 231 USPQ 493, 495 (Comm’r Pats. 1983) (“[T]he use of the standardized form is solely for the purpose of printing and database purposes, not for the limitation of registrant’s rights.”).
For the record only, examining attorneys will accept disclaimers with additional statements pertaining to reservation of common law rights, although §6 of the Trademark Act of 1946 states that no disclaimer shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter. Disclaimers with these additional statements can be entered by examiner’s amendment. The examining attorney must inform the applicant or attorney who authorizes the amendment that the disclaimer will be printed in the standardized format.
Where non-adjacent components of a mark, or adjacent components that do not form a grammatically or otherwise unitary expression must be disclaimed, the following format is suggested:
No claim is made to the exclusive right to use ________ or ________, apart from the mark as shown.
While the “or” connector is preferred, the USPTO will also accept a statement that “no claim is made to the exclusive right to use ________ and ________ apart from the mark as shown.”
See TMEP §1213.08(b) regarding the disclaimer of unregistrable matter in its entirety.
1213.08(a)(ii) Unacceptable Wording for Disclaimer
Wording that claims matter, rather than disclaims it, is not acceptable. A disclaimer should be no more than a statement that identifies matter to which the applicant may not have exclusive rights apart from what is shown on the drawing.
Therefore, statements that the applicant “claims” certain matter in the association shown are not acceptable. The examining attorney must require correction of this wording and of variations that amount to the same thing. Likewise, a statement that the mark is “not claimed except in the association shown,” or similar wording, is not acceptable, and the examining attorney must require correction. See Textron Inc. v. Pilling Chain Co., Inc., 175 USPQ 621, 622 (TTAB 1972), concerning an application which included the statement, “The mark is not to be claimed except in the setting presented.”
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The Board found this wording unacceptable, noting, “The alleged disclaimer filed by applicant is in such vague terms that it actually disclaims nothing.”
1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety
Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms that form a grammatically or otherwise unitary expression (e.g., “SHOE FACTORY, INC.”), the examining attorney must require that they be disclaimed in their entirety. See, e.g., In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992) (MEDICAL DISPOSABLES is a unitary expression that must be disclaimed as a composite); In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats. 1987) (denying petitioner’s request to substitute separate disclaimers of “GLASS” and “TECHNOLOGY” for the disclaimer of “GLASS TECHNOLOGY” in its registration of GT GLASS TECHNOLOGY in stylized form, the Commissioner finding “GLASS TECHNOLOGY” to be a unitary expression and noting, “Disclaimers of individual components of complete descriptive phrases are improper.”); American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984) (“CERTIFIED HEARING AID AUDIOLOGIST” found to be “a unitary expression that should be disclaimed in its entirety”); In re Surelock Mfg. Co., Inc., 125 USPQ 23, 24 (TTAB 1960) (proposed disclaimer of “THE” and “RED” and “CUP” held unacceptable to comply with requirement for disclaimer of “THE RED CUP,” the Board concluding, “A disclaimer of the individual components of the term ‘THE RED CUP,’ under the circumstances, is meaningless and improper”).
However, separate disclaimers of adjacent components of a mark may be accepted where they do not form a grammatically or otherwise unitary expression, and each component retains its separate descriptive significance. In re Grass GmbH, 79 USPQ2d 1600 (TTAB 2006) (Board reversed requirement for unitary disclaimer of “SNAP ON 3000,” and accepted separate disclaimers of “SNAP ON” and “3000.”)
1213.08(c) Disclaimer of Misspelled Words
Marks often comprise words that may be characterized as “misspelled.” For example, marks may comprise terms that are “telescoped” (see TMEP §1213.05(a)(i)) or terms that are phonetic equivalents of particular words but spelled in a manner that varies from the ordinary spelling of such words.
If a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the examining attorney should require disclaimer of the word or words in the correct spelling. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Newport Fastener Co. Inc., 5 USPQ2d 1064, 1067 n.4 (TTAB 1987). However, the entry of a disclaimer does not render registrable a mark that is otherwise unregistrable. For example, if a mark is comprised
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entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).
If the examining attorney has not required any disclaimer of misspelled wording because a disclaimer is not necessary under USPTO policy, the applicant may provide a disclaimer of the wording as spelled in the mark or in its correct spelling voluntarily. In such a case, the examining attorney should accept the disclaimer. Again, the disclaimer does not necessarily render an otherwise unregistrable mark registrable. The examining attorney must consider the entire mark, including the disclaimed matter, to determine whether the entire mark is registrable.
1213.08(d) Disclaimer of Non-English Words
Non-English wording that comprises an unregistrable component of a mark is subject to disclaimer. See Bausch & Lomb Optical Co. v. Overseas Finance & Trading Co. Inc., 112 USPQ 6, 8 (Comm’r Pats. 1956) (noting that “Kogaku,” the transliteration of the Japanese word for “optical,” was properly disclaimed).
If translated non-English wording must be disclaimed, the actual non-English wording should be disclaimed, not the English translation. The applicant must disclaim the wording that actually appears in the mark, not the translated version. For non-Latin characters, the following format is suggested:
No claim is made to the exclusive right to use the non-Latin characters that transliterate to “[specify Latin character transliteration]” apart from the mark as shown.
See TMEP §§809 et seq. regarding translation of non-English wording in marks.
1213.09 Mark of Another May Not Be Registered with Disclaimer
Normally, a mark that includes a mark registered by another person must be refused registration under 15 U.S.C. §1052(d) based on likelihood of confusion. A refusal of registration under §2(d) may not be avoided by disclaiming the mark of another. Cf. In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662 (C.C.P.A. 1979) (permitting disclaimer of informational phrase indicating that applicant’s employees are represented by certain labor organizations). See TMEP §1213.10 regarding disclaimer in relation to likelihood of confusion.
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1213.10 Disclaimer in Relation to Likelihood of Confusion
A disclaimer does not remove the disclaimed matter from the mark. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965); In re MCI Communications Corp., 21 USPQ2d 1534, 1538-39 (Comm’r Pats. 1991).
Typically, disclaimed matter will not be regarded as the dominant, or most significant, feature of a mark. However, since the Trademark Act permits an applicant to voluntarily disclaim registrable matter (see TMEP §1213.01(c)), disclaimed matter may be dominant or significant in some cases. As noted in MCI Communications Corp., 21 USPQ2d at 1539, “Examining Attorneys will continue to consider the question of likelihood of confusion, under Section 2(d) of the statute, in relation to the marks as a whole, including any voluntarily disclaimed matter.”
1213.11 Acquiring Rights in Disclaimed Matter
In Estate of P.D. Beckwith v. Comm’r of Pats., 252 U.S. 538, 545, 1920 C.D. 471, 477 (1920), the United States Supreme Court stated, regarding registration of a mark with a disclaimer, that “the registrant would be precluded by his disclaimer from setting up in the future any exclusive right to the disclaimed part of it.” Subsequently, that principle was applied literally; registrants were prohibited from asserting that disclaimed matter had acquired secondary meaning. See Shaler Co. v. Rite-Way Products, Inc., 43 USPQ 425 (6th Cir. 1939).
The situation was changed by the Trademark Act of 1946, which provided that “disclaimer shall not prejudice or affect the applicant’s or owner’s rights then existing or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant’s or owner’s rights of registration on another application of later date if the disclaimed matter has become distinctive of the applicant’s or owner’s goods or services.” In 1962, the statutory provision was amended to read, “No disclaimer ... shall prejudice or affect the applicant’s or registrant’s rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.” 15 U.S.C. §1056(b).
It is now clear that, aside from generic matter, disclaimed matter is not forever barred from registration, and it can subsequently be considered for registration on either the Principal Register or the Supplemental Register. When an application is filed seeking registration of matter previously
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disclaimed, it should be examined in the same manner as other applications. See Quaker Oil Corp. v. Quaker State Oil Refining Corp., 161 USPQ 547 (TTAB 1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (C.C.P.A. 1972); Victor Tool & Machine Corp. v. Sun Control Awnings, Inc., 299 F. Supp. 868, 162 USPQ 389 (E.D. Mich. 1968), aff’d, 411 F.2d 792, 162 USPQ 387 (6th. Cir. 1969).
Whether or not previously disclaimed matter has become eligible for registration depends on the circumstances and the evidence adduced in the examination process. Helena Rubinstein, Inc. v. Ladd, 219 F. Supp. 259, 138 USPQ 106 (D.D.C. 1963), aff’d, 141 USPQ 623 (D.C. Cir. 1964); Roux Distributing Co., Inc. v. Duart Mfg. Co. Ltd., 114 USPQ 511 (Comm’r Pats. 1957).
1214 “Phantom” Elements in Marks
In some applications, the applicant seeks to register a “phantom” element (i.e., a word, alpha-numeric designation, or other component that is subject to change) as part of a mark. The applicant represents the changeable or “phantom” element by inserting a blank, or by using dots, dashes, underlining, or a designation such as “XXXX.”
Examples include marks incorporating a date (usually a year), a geographic location, or a model number that is subject to change. While these are some of the most common examples of the types of elements involved, there are many variations.
1214.01 Single Application May Seek Registration of Only One Mark
Where an applicant seeks registration of a mark with a changeable or “phantom” element, the examining attorney should refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark. See In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Primo Water Corp., 87 USPQ2d 1376 (TTAB 2008); Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres Inc., 56 USPQ2d 1538 (TTAB 2000).
In International Flavors, the applicant filed three applications to register the designations “LIVING xxxx,” “LIVING xxxx FLAVOR,” and “LIVING xxxx FLAVORS,” for essential oils, flavor substances, and fragrances. Each application included a statement that “[t]he meaning of ‘xxxx’ is for a specific herb, fruit, plant or vegetable.” In upholding the refusal of registration, the Federal Circuit noted that under §22 of the Trademark Act, 15 U.S.C. §1072, registration serves as constructive notice to the public of the registrant’s ownership of the mark and, therefore, precludes another user from claiming
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innocent misappropriation as a trademark infringement defense. To make this constructive notice meaningful, the mark as registered must accurately reflect the mark that is used in commerce, so that someone who searches the register for a similar mark will locate the registration. The court stated that “phantom marks” with missing elements “encompass too many combinations and permutations to make a thorough and effective search possible” and, therefore, the registration of these marks does not provide adequate notice to competitors and the public. International Flavors, 51 USPQ2d at 1517-18.
In Primo Water, the Board affirmed a refusal of registration of a mark comprising the “placement and orientation of identical spaced indicia” on either side of the handle of a water bottle in inverted orientation, where the description of the mark indicated that the “indicia” can be “text, graphics or a combination of both.” The Board noted that the varying indicia must be viewed by consumers before they can perceive the repetition and inversion elements of the mark, and that marks with changeable or “phantom” elements do not provide proper notice to other trademark users. The Board also noted that the only issue on appeal was whether applicant seeks to register more than one mark, and that this issue is separate from the question of whether the proposed mark is distinctive and functions as a mark.
See also In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001) (hologram used on trading cards in varying shapes, sizes, contents, and positions constitutes more than one “device” as contemplated by §45 of the Trademark Act).
See also TMEP §807.01 regarding the requirement that an application be limited to one mark.
1214.02 Agreement of Mark on Drawing With Mark on Specimens or Foreign Registration
Where an applicant seeks registration of a “phantom mark,” the examining attorney should also consider whether the mark on the drawing is a substantially exact representation of the mark as used on the specimen in a use-based application, or the mark in the home country registration in an application based on Trademark Act §44, 15 U.S.C. §1126. See TMEP §§807.12 et seq.
The applicant may amend the mark to overcome a refusal on the ground that the mark on the drawing does not agree with the mark as used on the specimen, or with the mark in the foreign registration, if the amendment is not a material alteration of the mark. See TMEP §§807.14 et seq. regarding material alteration.
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1214.03 “Phantom Marks” in §1(b) Applications
In an intent-to-use application for which no allegation of use has been filed, it may be unclear whether the applicant is seeking registration of a mark with a changeable element. If an intent-to-use application indicates that the applicant is seeking registration of a “phantom mark” (e.g., if the application includes a statement that “the blank line represents a date that is subject to change”), the examining attorney should issue a refusal of registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark, as discussed above. If it is unclear whether an applicant is seeking registration of a “phantom” mark, the examining attorney should advise the applicant that if the specimen filed with an amendment to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c), or a statement of use under §1(d) of the Act, 15 U.S.C. §1051(d), shows that applicant is seeking registration of a mark with a changeable element, registration will be refused on the ground that the application seeks registration of more than one mark. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided before the applicant files an allegation of use, the USPTO is not precluded from refusing registration on this basis.
1214.04 “Phantom Marks” in §44 and §66(a) Applications
The refusal should be made in applications under §§44 and 66(a) as well as §1 of the Trademark Act.
1215 Marks Composed, in Whole or in Part, of Domain Names
1215.01 Background
A domain name is part of a Uniform Resource Locator (“URL”), which is the address of a site or document on the Internet. In general, a domain name is comprised of a second-level domain, a “dot,” and a top-level domain (“TLD”). The wording to the left of the “dot” is the second-level domain, and the wording to the right of the “dot” is the TLD.
Example: If the domain name is “ABC.com,” the term “ABC” is a second-level domain and the term “com” is a TLD.
A domain name is usually preceded in a URL by “http://www.” The “http://” refers to the protocol used to transfer information, and the “www” refers to World Wide Web, a graphical hypermedia interface for viewing and exchanging information.
Generic TLDs. The following are examples of generic TLDs that are designated for use by the public:
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.com commercial, for-profit organizations
.edu 4-year, degree-granting colleges/universities
.gov U.S. federal government agencies
.int international organizations
.mil U.S. military organizations, even if located outside the U.S.
.net network infrastructure machines and organizations
.org miscellaneous, usually non-profit organizations and individuals
Each of the above TLDs is intended for use by a certain type of organization. For example, the TLD “.com” is for use by commercial, for-profit organizations. However, the administrator of the .com, .net, .org, and .edu TLDs does not check the requests of parties seeking domain names to ensure that such parties are a type of organization that should be using those TLDs. On the other hand, .mil, .gov, and .int TLD applications are checked, and only the U.S. military, the U.S. government, or international organizations are allowed in the respective domain space.
Country Code TLDs. Country code TLDs are for use by each individual country. For example, the TLD “.ca” is for use by Canada, and the TLD “.jp” is for use by Japan. Each country determines who may use their code. For example, some countries require that users of their code be citizens or have some association with the country, while other countries do not.
See www.icann.org for additional information about other generic TLDs and TMEP §1209.03(m).
1215.02 Use as a Mark
Generally, when a trademark, service mark, collective mark, or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (“http://www.”) nor the TLD have any source-indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. Advertisements for all types of products and services routinely include a URL for the website of the advertiser, and the average person familiar with the Internet recognizes the format for a domain name and understands that “http,” “www,” and a TLD are a part of every URL.
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1215.02(a) Use Applications
A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimen must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Roberts, 87 USPQ2d 1474 (TTAB 2008) (irestmycase does not function as mark for legal services, where it is used only as part of an address by means of which one may reach applicant’s website, or along with applicant’s other contact information on letterhead); In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).
In Eilberg, the Trademark Trial and Appeal Board held that a term that only serves to identify the applicant’s domain name or the location on the Internet where the applicant’s website appears, and does not separately identify applicant’s services, does not function as a service mark. The applicant’s proposed mark was WWW.EILBERG.COM, and the specimen showed that the mark was used on letterhead and business cards in the following manner:
(The specimen submitted was the business card of William H. Eilberg, Attorney at Law, 820 Homestead Road, P.O. Box 7, Jenkintown, Pennsylvania 19046, 215-855-4600, email whe@eilberg.com.)
The Board affirmed the examining attorney’s refusal of registration on the ground that the matter presented for registration did not function as a mark, stating that:
[T]he asserted mark, as displayed on applicant’s letterhead, does not function as a service mark identifying and distinguishing applicant’s legal services and, as presented, is not capable of doing so. As shown, the asserted mark identifies applicant’s Internet domain name, by use of which one can access applicant’s Web site. In other words, the asserted mark WWW.EILBERG.COM merely indicates the location on the Internet where applicant’s Web site appears. It does not
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separately identify applicant’s legal services as such. Cf. In re The Signal Companies, Inc., 228 USPQ 956 (TTAB 1986).
This is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or [service marks]. For example, if applicant’s law firm name were, say, EILBERG.COM and were presented prominently on applicant’s letterheads and business cards as the name under which applicant was rendering its legal services, then that mark may well be registrable.
49 USPQ2d at 1957.
The examining attorney must review the specimen in order to determine how the proposed mark is actually used. It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark, not the applicant’s intent, hope, or expectation that it does so. See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960).
If the proposed mark is used in a way that would be perceived as nothing more than an Internet address where the applicant can be contacted, registration must be refused. Examples of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address, or a domain name displayed merely as part of the information on how to contact the applicant.
Example: The mark is WWW.ABC.COM for online ordering services in the field of clothing. A specimen consisting of an advertisement that states “visit us on the web at www.ABC.com” does not show service mark use of the proposed mark.
Example: The mark is ABC.COM for financial consulting services. A specimen consisting of a business card that refers to the service and lists a telephone number, fax number, and the domain name sought to be registered does not show service mark use of the proposed mark.
If the specimen fails to show use of the domain name as a mark and the applicant seeks registration on the Principal Register, the examining attorney must refuse registration on the ground that the matter presented for registration does not function as a mark. The statutory bases for the refusals are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, for trademarks; and §§1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks.
If the applicant seeks registration on the Supplemental Register, the examining attorney must refuse registration under Trademark Act §23, 15 U.S.C. §1091.
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1215.02(b) Advertising One’s Own Products or Services on the Internet is not a Service
Advertising one’s own products or services is not a service. In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970). See TMEP §§1301.01(a)(ii) and 1301.01(b)(i). Therefore, businesses that create a website for the sole purpose of advertising their own products or services cannot register a domain name used to identify that activity. In examination, the issue usually arises when the applicant describes the activity as a registrable service, e.g., “providing information about [a particular field],” but the specimen of use makes it clear that the website merely advertises the applicant’s own products or services. In this situation, the examining attorney must refuse registration because the mark is used to identify an activity that does not constitute a “service” within the meaning of the Trademark Act. Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
1215.02(c) Agreement of Mark on Drawing with Mark on Specimens of Use
In viewing a domain name mark (e.g., ABC.COM or HTTP://WWW.ABC.COM), consumers look to the second-level domain name for source identification, not to the top-level domain (TLD) or the terms “http://www.” or “www.” Therefore, it is usually acceptable to depict only the second-level domain name on the drawing page, even if the specimen shows a mark that includes the TLD or the terms “http://www.” or “www.” Cf. Institut Nat’l des Appellations D’Origine v. Vintners Int’l Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) (CHABLIS WITH A TWIST held to be registrable separately from CALIFORNIA CHABLIS WITH A TWIST as shown on labels); In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989) (refusal to register TINEL-LOCK based on specimen showing “TRO6AI-TINEL-LOCK- RING” reversed). See also 37 C.F.R. §§2.51(a) and (b), and TMEP §§807.12 et seq.
Example: The specimen shows the mark HTTP://WWW.ABC.COM. The applicant may elect to depict only the term “ABC” on the drawing.
Sometimes the specimen fails to show the entire mark sought to be registered (e.g., the drawing of the mark is HTTP://WWW.ABC.COM, but the specimens only show ABC). If the drawing of the mark includes a TLD, or the terms “http://www.,” or “www.,” the specimen must also show the mark used with those terms. Trademark Act §1(a)(3)(C), 15 U.S.C. §1051(a)(3)(C).
Example: If the drawing of the mark is ABC.COM, a specimen that only shows the term ABC is unacceptable.
See TMEP §§807.14 et seq. and 1215.08 et seq. regarding material alteration.
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1215.02(d) Marks Comprised Solely of TLDs for Domain Name Registry Services
If a mark is composed solely of a TLD for “domain name registry services” (e.g., the services of registering .com domain names), registration should be refused under Trademark Act §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, on the ground that the TLD would not be perceived as a mark. The examining attorney should include evidence from the LexisNexis® database, the Internet, or other sources to show that the proposed mark is currently used as a TLD or is under consideration as a new TLD.
If the TLD merely describes the subject or user of the domain space, registration should be refused under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the TLD is merely descriptive of the registry services.
1215.02(e) Section 1(b) Applications
A refusal of registration on the ground that the matter presented for registration does not function as a mark relates to the manner in which the asserted mark is used. Generally, in an intent-to-use application, a mark that includes a domain name will not be refused on this ground until the applicant has submitted specimen(s) of use with an allegation of use under §1(c) or §1(d) of the Act, 15 U.S.C. §1051(c) or (d). The specimen provides a better record upon which to determine the registrability of the mark. However, the examining attorney should include an advisory note in the first Office action that registration may be refused if the proposed mark, as used on the specimen, identifies only an Internet address. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant prior to the filing of the allegation of use, the USPTO is not precluded from refusing registration on this basis.
1215.02(f) Section 44 and §66(a) Applications
If the record indicates that the proposed mark would be perceived as merely an informational indication of the domain name address used to access a website rather than an indicator of source, the examining attorney should refuse registration in an application under §44 or §66(a) of the Trademark Act, on the ground that the subject matter does not function as a mark.
1215.03 Surnames
If a mark is composed of a surname and a non-source-identifying TLD, the examining attorney must refuse registration because the mark is primarily merely a surname under Trademark Act §2(e)(4), 15 U.S.C. §1052(e)(4), absent a showing of acquired distinctiveness under Trademark Act §2(f), 15 U.S.C. §1052(f). If the TLD has no trademark significance, and the primary
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significance of a term is that of a surname, adding the TLD to the surname does not alter the primary significance of the mark as a surname. Cf. In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953) (S. SEIDENBERG & CO’S. held primarily merely a surname); In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993) (HAMILTON PHARMACEUTICALS for pharmaceutical products held primarily merely a surname); In re Cazes, 21 USPQ2d 1796 (TTAB 1991) (BRASSERIE LIPP held primarily merely a surname where “brasserie” is a generic term for applicant’s restaurant services). See also TMEP §1211.01(b)(vi) regarding surnames combined with additional wording.
1215.04 Descriptiveness
If a proposed mark is composed of a merely descriptive term(s) combined with a non-source-identifying TLD, in general, the examining attorney should refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on the ground that the mark is merely descriptive. This applies to trademarks, service marks, collective marks, and certification marks.
The TLD will be perceived as part of an Internet address, and typically does not add source-identifying significance to the composite mark. In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”); In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 1177, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of “computer software for managing a database of records and for tracking the status of the records by means of the Internet”); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for “provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment...”); In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, sold via the Internet); In re Microsoft Corp., 68 USPQ2d 1195, 1203 (TTAB 2003) (“The combination of the specific term and TLD at issue, i.e., OFFICE and .NET, does not create any double entendre, incongruity, or any other basis upon which we can find the composite any more registrable than its separate elements. The combination immediately informs prospective purchasers that the software includes ‘office suite’ type software and is from an Internet business, i.e., a
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‘.net’ type business”); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792 (TTAB 2002) (“The public would not understand BONDS.COM to have any meaning apart from the meaning of the individual terms combined”); In re Martin Container, Inc., 65 USPQ2d 1058, 1060 (TTAB 2002) (“[T]o the average customer seeking to buy or rent containers, “CONTAINER.COM” would immediately indicate a commercial web site on the Internet which provides containers.”).
However, there is no bright-line, per se rule that the addition of a non-source- identifying TLD to an otherwise descriptive mark will never under any circumstances operate to create a registrable mark. The Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a TLD such as “.com” or “.net.” In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (STEELBUILDING.COM highly descriptive, but not generic, for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems”), citing Oppedahl & Larson, 373 F.3d at 1175-1176, 71 USPQ2d at 1373.
Thus, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole to determine whether the composite mark conveys any distinctive source-identifying impression apart from its individual components. The examining attorney should introduce evidence as to the significance of the individual components, including the TLD, but must also consider the significance of the composite term (e.g., “Sportsbetting” in the mark SPORTSBETTING.COM), to determine whether the addition of a TLD has resulted in a mark that conveys a source-identifying impression.
See also TMEP §1215.05.
1215.05 Generic Refusals
If a mark is composed of a generic term(s) combined with a non-source- identifying TLD, in general, the examining attorney should refuse registration on the ground that the mark is generic and the TLD has no trademark significance. In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”); In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, sold via the Internet); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM held generic for providing information regarding financial products and services and electronic commerce services rendered via the Internet, where bonds was the name of one of the financial products offered
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under the mark); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) (CONTAINER.COM held generic for “retail store services and retail services offered via telephone featuring metal shipping containers” and “rental of metal shipping containers”). Marks comprised of generic terms combined with TLDs are not eligible for registration on the Supplemental Register, or on the Principal Register under Trademark Act §2(f), 15 U.S.C. §1052(f). This applies to trademarks, service marks, collective marks, and certification marks.
However, there is no per se rule that the addition of a non-source-identifying TLD to an otherwise generic term can never under any circumstances operate to create a registrable mark. The Court of Appeals for the Federal Circuit has held that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a TLD such as “.com” or “.net” that will render it “sufficiently distinctive for trademark registration.” In re Steelbuilding.com, 415 F.3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005), citing In re Oppedahl & Larson LLP, 373 F.3d 1171, 1177, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004).
In Steelbuilding, vacating the Board’s determination that STEELBUILDING.COM was generic for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems,” the Court criticized the Board for considering STEELBUILDING and .COM separately, holding that “[i]n this unusual case, the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. Specifically, the TLD expanded the mark to include internet services that include ‘building’ or designing steel structures on the web site and then calculating an appropriate price before ordering the unique structure.” 415 F.3d at 1299, 75 USPQ2d at 1423. The Court also criticized the Board for relying on evidence that “steel building” or “steel buildings” is generic, where there was an alternative meaning of the composite term STEELBUILDING as denoting the act of building steel structures. However, the Court held that the term STEELBULDING.COM was highly descriptive and unregistrable on the Principal Register under §2(e)(1), absent “a concomitantly high level of secondary meaning.” 415 F.3d at 1301, 75 USPQ2d at 1424.
Thus, each case must be decided on its own facts. To establish that a mark comprising a generic term with a non-source-identifying TLD is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance. See In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM held generic for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services,” where the record included pages from applicant’s website showing that applicant’s services include providing information about lawyers and assistance in selecting a lawyer, and pages from eight other websites
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containing “lawyer.com” or “lawyers.com”); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for “provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a website on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment...,” where the record included multiple examples of use of the terms “sports betting” and “sportsbetting,” by both applicant and its competitors, to refer to both sports wagering and providing information about sports wagering, and there was no indication of a realistic alternative connotation of the compound term.).
The examining attorney generally should not issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services, unless the applicant asserts that the mark has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Absent a claim of acquired distinctiveness, the examining attorney should issue a refusal on the ground that the mark is merely descriptive of the goods or services under §2(e)(1), 15 U.S.C. §1052(e)(1), and provide an advisory statement that the matter sought to be registered appears to be a generic name for the goods/services. See TMEP §§1209.02 et seq.
See TMEP §1209.01(c)(i) regarding the test for establishing that a term is generic.
1215.06 Marks Containing Geographical Matter
The examining attorney should examine marks containing geographic matter in the same manner that any mark containing geographic matter is examined. See generally TMEP §§1210 et seq. Depending on the manner in which it is used on or in connection with the goods or services, a proposed domain name mark containing a geographic term may be primarily geographically descriptive under §2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), deceptive under §2(a) of the Trademark Act, 15 U.S.C. §1052(a), and/or merely descriptive or deceptively misdescriptive under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
When a geographic term is used as a mark for services that are provided on the Internet, the geographic term sometimes describes the subject of the service rather than the geographic origin of the service. Usually this occurs when the mark is composed of a geographic term that describes the subject matter of information services (e.g., NEW ORLEANS.COM for “providing vacation planning information about New Orleans, Louisiana by means of the global computer network”). In these cases, the examining attorney should
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refuse registration under §2(e)(1) because the mark is merely descriptive of the services. See TMEP §1210.02(b)(iii).
1215.07 Disclaimers
Trademark Act §6(a), 15 U.S.C. §1056(a), provides for the disclaimer of “an unregistrable component of a mark otherwise registrable.” The guidelines on disclaimer discussed in TMEP §§1213 et seq. apply to domain name mark applications.
If a composite mark includes a domain name composed of unregistrable matter (e.g., a merely descriptive or generic term and a non-source-identifying TLD), disclaimer is required.
If a disclaimer is required and the domain name includes a misspelled or telescoped word, the correct spelling must be disclaimed. See TMEP §§1213.05(a)(i) and 1213.08(c).
A compound term composed of arbitrary or suggestive matter combined with a “dot” and a non-source-identifying TLD is considered unitary, and, therefore, no disclaimer of the TLD is required. See examples below and TMEP §§1213.05 et seq. regarding unitary marks.
Mark Disclaimer
ABC BANK.COM BANK.COM ABC FEDERALBANK.COM FEDERAL BANK.COM ABC GROCERI STOR.COM GROCERY STORE.COM ABC.COM no disclaimer ABC.BANK.COM no disclaimer ABCBANK.COM no disclaimer
1215.08 Material Alteration
Amendments may not be made to the drawing of the mark if the character of the mark is materially altered. 37 C.F.R. §2.72. In determining whether an amendment is a material alteration, the controlling question is always whether the new and old forms of the mark create essentially the same commercial impression. See TMEP §§807.14 et seq. In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) (the mark on the specimen (“UPPER 90°”) was not a substantially exact representation of the mark on the drawing (“UPPER 90”); In re Innovative Companies, LLC, 88 USPQ2d 1095 (TTAB 2008) (the proposed amendment of the drawing from FREEDOMSTONE to FREEDOM STONE not material alteration of the mark); Paris Glove of Canada, LTD, v. SBC/Sporto Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (in an application to renew a registration, the old and new specimens were deemed to be
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substantially the same because “mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark.”).
1215.08(a) Adding or Deleting TLDs in Domain Name Marks
Generally, an applicant may add or delete a non-source-identifying TLD to/from the drawing of a domain name mark (e.g., COOPER amended to COPPER.COM, or COOPER.COM amended to COOPER) without materially altering the mark. Although a mark that includes a TLD will be perceived by the public as a domain name, while a mark without a TLD will not, if the TLD merely indicates the type of entity using the domain name, the essence of the mark is created by the second-level domain name, not the TLD. Thus, the commercial impression created by the second-level domain name usually remains the same whether the TLD is present or not. If the TLD does function as a source indicator, its deletion from the domain name mark may constitute a material alteration of the mark.
Example: Amending a mark from PETER to PETER.COM would not materially change the mark because the essence of both marks is still PETER, a person’s name.
Example: Amending a mark from ABC.PETER to ABC would materially change the mark because the essence of the original mark is created by both the second-level domain and the TLD.
Similarly, substituting one non-source-identifying TLD for another in a domain name mark, or adding or deleting a “dot” or “http://www.” or “www.” to a domain name mark is generally permitted.
Example: Amending a mark from ABC.ORG to ABC.COM would not materially change the mark because the essence of both marks is still ABC.
Example: Amending a mark from ABC.COM to ABC.PETER would materially change the mark because the essence of the mark original mark was ABC and the proposed mark now includes a source-identifying TLD.
1215.08(b) Adding or Deleting TLDs in Other Marks
If a mark that is not used as an Internet domain name includes a TLD, adding or deleting the TLD may be a material alteration.
Example: Deleting the term .COM from the mark “.COM ☼” used on sports magazines would materially change the mark.
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1215.09 Likelihood of Confusion
When analyzing whether a domain name mark is likely to cause confusion with another pending or registered mark, the examining attorney must consider the marks as a whole, but generally should accord little weight to a non-source-identifying TLD portion of the mark. Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393 (TTAB 2007). See TMEP §1207.01(b)(iii).
1215.10 Marks Containing the Phonetic Equivalent of a Top- Level Domain
Marks that contain the phonetic equivalent of a non-source-identifying TLD (e.g., ABC DOTCOM) are treated in the same manner as marks composed of the TLD itself. If a disclaimer is necessary, the disclaimer must be in the form of the TLD and not the phonetic equivalent. See TMEP §1213.08(c) regarding disclaimer of misspelled words.
Example: The mark is INEXPENSIVE RESTAURANTS DOT COM for providing information about restaurants by means of a global computer network. Registration should be refused because the mark is merely descriptive of the services under 15 U.S.C. §1052(e)(1).
Example: The mark is ABC DOTCOM. The applicant must disclaim the TLD “.COM” rather than the phonetic equivalent “DOTCOM.”
1216 Effect of Applicant’s Prior Registrations
1216.01 Decisions Involving Prior Registrations Not Controlling
Trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence of record that exist at the time registration is sought. In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001); In re Styleclick.com Inc., 58 USPQ2d 1523 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000).
Each case must be decided on its own facts. The USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (Examining attorney’s requirement for amendment of the term “chronographs” in the identification of goods upheld, notwithstanding applicant’s ownership of several registrations in which this term appears without further qualification in the identification); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141
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(Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT ACCOUNT for credit card services did not automatically entitle applicant to registration of the same mark for broader financial services); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (examining attorney could properly refuse registration on ground that mark DURANGO for chewing tobacco is primarily geographically deceptively misdescriptive, even though applicant owned incontestable registration of same mark for cigars); In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN held generic for “providing information in the field of health and diet via a web site on the Internet,” notwithstanding applicant’s claims of ownership of six prior registrations on the Supplemental Register that included the term “bulletin” in the mark for related goods and services (e.g., “Weight-Loss Bulletin,” “Sex Bulletin,” “Muscle Bulletin,” and “Nutrition Bulletin”)); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (applicant’s ownership of registration for the mark BEST! did not preclude the examining attorney from requiring a disclaimer of “Best” in applications seeking registration of BEST! SUPPORT PLUS and BEST! SUPPORT PLUS PREMIER for the same services plus additional services); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) (examining attorney not precluded from refusing registration of ULTRA for “gasoline, motor oil, automotive grease, general purpose grease, machine grease and gear oil,” even though applicant owned registrations of same mark for “motor oil” and “gasoline for use as automotive fuel, sold only in applicant’s automotive service stations”); In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992) (disclaimer of the unitary term “MEDICAL DISPOSABLES” required, notwithstanding applicant’s ownership of a prior registration in which a piecemeal disclaimer of the words “MEDICAL” and “DISPOSABLES” was permitted); In re Perez, 21 USPQ2d 1075 (TTAB 1991) (likelihood of confusion between applicant’s EL GALLO for fresh tomatoes and peppers and the previously registered mark ROOSTER for fresh citrus fruit, notwithstanding applicant’s ownership of an expired registration of the same mark for the same goods); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (LEAN found merely descriptive of low-calorie foods, even though applicant had registered the term for other goods and services and a third party had registered the term “LEAN CUISINE” with no disclaimer); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (Board not bound to allow registration of APPLE PIE TREE for restaurant services merely because applicant had succeeded in registering the character and name as trademarks and the character as a service mark); In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS incapable of distinguishing the services of arranging and conducting seminars in the field of business law, notwithstanding applicant’s ownership of a registration on the Supplemental Register for the same mark for books, pamphlets, and monographs); In re Local Trademarks, Inc., 220 USPQ 728 (TTAB 1983) (refusal of registration on the ground that WHEN IT’S TIME TO ACT did not identify advertising services upheld; Board not bound to allow registration simply because applicant owned registrations bearing similar
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recitations of services); In re Pilon, 195 USPQ 178 (TTAB 1977) (title of chapter or section of book not registrable, even though applicant owned prior registrations of marks comprising chapter titles). See also In re Wilson, 57 USPQ2d 1863 (TTAB 2001) (“Reasoned decisionmaking” doctrine, which prohibits a federal agency from creating conflicting lines of precedent governing identical situations, did not entitle applicant to registration of PINE CONE BRAND for packaged fresh citrus fruit, even though USPTO issued registration for similar PINE CONE mark in 1933 despite then-existing registration for PINE CONE mark that was cited against applicant).
1216.02 Effect of “Incontestability” in Ex Parte Examination
Section 15 of the Trademark Act, 15 U.S.C. §1065, provides a procedure by which a registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become incontestable. See TMEP §§1605 et seq. for information about the requirements for filing an affidavit of incontestability under §15.
In Park ‘N Fly v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327 (1985), the Supreme Court held that the owner of a registered mark may rely on incontestability to enjoin infringement, and that an incontestable registration, therefore, cannot be challenged on the ground that the mark is merely descriptive.
In In re American Sail Training Ass’n, 230 USPQ 879 (TTAB 1986), the Trademark Trial and Appeal Board held that an examining attorney could not require a disclaimer of “TALL SHIPS” in an application for registration of the mark RETURN OF THE TALL SHIPS, where the applicant owned an incontestable registration for the mark TALL SHIPS for the identical services. This would be a collateral attack on an incontestable registration. However, this applies only where both the marks and the goods or services are identical. In American Sail Training, the Board noted that the matter required to be disclaimed was “identical to the subject matter of applicant’s incontestable registration,” and that “the services described in applicant’s application are identical to those recited in the prior incontestable registration.” 230 USPQ at 880.
Ownership of an incontestable registration does not give the applicant a right to register the same mark for different goods or services, even if they are closely related to the goods or services in the incontestable registration. See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001) (applicant’s ownership of incontestable registration of the word mark SAVE VENICE for newsletters, brochures, and fundraising services did not preclude examining attorney from refusing registration of a composite mark consisting of the phrases THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark for different goods; “[a] registered mark is incontestable only in the form registered and for
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the goods or services claimed.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT ACCOUNT for credit card services did not automatically entitle applicant to registration of the same mark for broader financial services); In re Bose Corp., 772 F.2d 866, 873 n.5, 227 USPQ 1, 7 n.5 (Fed. Cir. 1985) (incontestable status of registration for one speaker design did not establish non-functionality of another speaker design with shared feature); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (examining attorney could properly refuse registration on ground that mark DURANGO for chewing tobacco is primarily geographically deceptively misdescriptive, even though applicant owned incontestable registration of same mark for cigars); In re Best Software Inc., 63 USPQ2d 1109, 1113 (TTAB 2002) (applicant’s ownership of incontestable registration for the mark BEST! did not preclude the examining attorney from requiring a disclaimer of “BEST” in applications seeking registration of BEST! IMPERATIV HRMS “for goods which, although similar, are nevertheless somewhat different”); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (applicant’s ownership of incontestable registration for the mark BEST! did not preclude the examining attorney from requiring a disclaimer of “BEST” in applications seeking registration of BEST! SUPPORT PLUS and BEST! SUPPORT PLUS PREMIER for the same services plus additional services); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989) (examining attorney could properly refuse registration on the ground that a mark is primarily merely a surname even if applicant owned incontestable registration of same mark for unrelated goods); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (examining attorney could refuse registration of the mark BANK OF AMERICA for computerized financial data processing services under §§2(e)(1) and 2(e)(2), despite applicant’s ownership of incontestable registrations of the same mark for related services).
1217 Res Judicata, Collateral Estoppel, and Stare Decisis
A prior adjudication against an applicant may be dispositive of a later application for registration of the same mark on the basis of the same facts and issues, under the doctrine of res judicata, collateral estoppel, or stare decisis. Prior adjudications include decisions of the Trademark Trial and Appeal Board or any of the reviewing courts.
Res Judicata. Res judicata, or claim preclusion, protects against relitigation of a previously adjudicated claim between the same parties or their privies based on the same cause of action. In re Bose Corp., 476 F.3d 1331, 81 USPQ2d 1748 (Fed. Cir. 2007) (application for registration of speaker design barred by the Federal Circuit’s 1985 decision affirming refusal of registration of the same mark for the same goods on the ground that the proposed mark was functional). A plaintiff is barred by res judicata from bringing a second action if: (1) there is identity of parties (or their privies); (2) there has been an
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earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first. Sharp Kabushiki Kaisha v. ThinkSharp, Inc., 448 F.3d 1368, 1370, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006); Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 1232, 76 USPQ2d 1310, 1312 (Fed. Cir. 2005); Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 1362, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000). A defendant in an earlier proceeding is precluded from bringing a later action if: (1) the claim or defense asserted in the second action was a compulsory counterclaim that the defendant failed to assert; or (2) the claim or defense represents what is essentially a collateral attack on the first judgment. Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 1324, 86 USPQ2d 1369, 1372 (Fed. Cir. 2008) (cancellation petitioner was barred from challenging the validity of the subject registration where the petitioner could have asserted, but did not assert, a claim of invalidity in an earlier infringement action, the Court finding that the cancellation petition amounted to an attack on the district court’s judgment).
Identity of Parties. The examining attorney should not invoke res judicata based on an inter partes case or a federal court proceeding involving the applicant, since there is no identity of parties. In this situation, the examining attorney may rely on stare decisis. In re Alfred Dunhill Ltd., 224 USPQ 501, 503 n.7 (TTAB 1984); In re Multivox Corp. of America, 209 USPQ 627 (TTAB 1981); In re Bordo Products Co., 188 USPQ 512 (TTAB 1975). Collateral estoppel may be invoked even where identity of parties is lacking, if the other prerequisites for applying the doctrine are met.
Same Set of Transactional Facts. Even when there is an identity of parties, a claim for trademark infringement is not the same as an inter partes claim for opposition or cancellation of the registration of a mark. The Court of Appeals for the Federal Circuit has warned that the USPTO should use caution in applying res judicata based on an infringement action, because infringement actions and Board proceedings are “different causes of action [that] may involve different sets of transactional facts, different proofs, different burdens and different public policies. Registrability is not at issue in infringement litigation, and although the likelihood of confusion analysis presents a ‘superficial similarity,’ differences in transactional facts will generally avoid preclusion.” Mayer/Berkshire, 424 F.3d at 1232, 76 USPQ2d at 1313, citing Jet, 223 F.3d at 1364-65, 55 USPQ2d at 1857. See also Nasalok, 522 F.3d at 1324, 86 USPQ2d at 1372.
Collateral Estoppel. In the absence of res judicata, the related principle of collateral estoppel or issue preclusion can also bar relitigation of the same issue in a second action. Collateral estoppel applies where: (1) there was an identical issue in a prior proceeding; (2) the issue was actually litigated; (3) determination of the issue was necessary to the judgment in the prior proceeding; and (4) the party defending against preclusion had a full and fair opportunity to litigate the issue in the prior proceeding. Mayer/Berkshire, 424
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F.3d at 1232, 76 USPQ2d at 1313; Jet, Inc. v. Sewage Aeration Systems, 223 F.3d at 1366, 55 USPQ2d at 1859. In Lukens Inc. v. Vesper Corp., 1 USPQ2d 1299, 1301 (TTAB 1986), aff’d unpub. opin., 831 F.2d 306 (Fed. Cir. 1987), the Board applied collateral estoppel in an opposition proceeding based on a prior judgment in an ex parte proceeding in 1957, because the applicant had appealed the decision to federal district court and as such had the opportunity to introduce new evidence and had a “full and fair opportunity” to litigate the issue of functionality. On the other hand, in Flowers Industries, Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1584 (TTAB 1987), the Board refused to apply collateral estoppel, distinguishing Lukens and noting that “the absence of a prior resort to [trial de novo in federal court] in the present case weighs heavily against the application of issue preclusion.” In Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009), the Board found issue preclusion and entered judgment in favor of opposer on the issue of whether applicant’s 911 Hz chirp sound functioned as a mark for applicant’s two-way radios, based on an earlier opposition proceeding involving the same parties and nearly the same proposed mark, but found issue preclusion inapplicable as to other goods that were not at issue in the earlier proceeding. In Daimler Chrysler Corp. v. Maydak, 86 USPQ2d 1945 (TTAB 2008), the Board held that it did not need to decide a collateral estoppel claim where a permanent injunction issued during civil litigation between the parties prohibits the applicant from using or registering the mark for any products or services, therefore making its registration by the applicant “a legal impossibility.”
Stare Decisis. Stare decisis provides that when a court has once laid down a principle of law as applicable to a certain set of facts, it will adhere to that principle, and apply it to all future cases, where the facts are substantially the same, regardless of whether the parties and properties are the same. In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988).
Changed Circumstances. All these doctrines are discretionary and will not be applied where circumstances relating to trademark use and consumer recognition have changed since the prior judgment was rendered. See In re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988) (res judicata did not preclude application for registration of a configuration of a circular thermostat cover based on prior decisions holding the design functional, where the marks were somewhat different, and the applicant presented evidence that conditions in the marketplace had changed in the seventeen years since the record in its prior application closed); In re Johanna Farms, supra (stare decisis did not preclude registration of LA YOGURT for yogurt under §2(f) based on a prior decision holding the mark unregistrable on the Supplemental Register, where applicant submitted additional evidence in the nature of a survey and consumer letters dealing with the question of how purchasers perceive the proposed mark); Flowers Industries, supra (application for registration of HONEY WHEAT for bread under §2(f) not precluded by a forty-year old Commissioner’s decision affirming a refusal of registration of the same mark
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on the same grounds, because the applicant had now used the proposed mark for more than fifty years, whereas its predecessor had used it for only ten years at the time of the earlier decision); Bordo, supra (Board held that application for registration of BORDO for pitted dates was not precluded by decision in an opposition by the owner of the cited registration against applicant’s earlier application for the same mark for the same goods, finding changed circumstances based on affidavits that the goods move through different channels of trade, evidence of contemporaneous use for over fifty years with no known actual confusion, and the failure of the owner of the cited registration to take steps to enjoin applicant from using the mark).
In Bose, supra, the applicant argued that facts and circumstances had changed since the prior decision in that: (1) the Court did not explicitly consider the “curved front edge” of the design in the prior decision; (2) there had been a change in the legal standard for functionality, in view of the Supreme Court’s decision in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); and (3) applicant had presented “additional evidence, such as the absence of promotional material that ‘touts’ the utilitarian aspects of the mark.” The Court rejected these arguments, noting that it had acknowledged in the prior decision that the design includes a “bowed front edge,” and “bowed” is simply another term for “curved;” that TrafFix does not affect the prior functionality analysis and provides further support for finding that Bose’s design is functional; and that the focus on advertising materials which do not promote the utilitarian aspects of the curved front edge is not relevant, because the proposed mark was an entire pentagonal-shaped design and not merely the curved front edge, and the promotional advertisements submitted in the earlier case “did clearly promote the functional reason for the overall design.”
Slight differences in a mark or in an identification of goods/services will not avoid application of these doctrines. In re Orion Research Inc., 669 F.2d 689, 205 USPQ 688 (C.C.P.A. 1980); Miller Brewing Co. v. Coy Int’l Corp., 230 USPQ 675 (TTAB 1986).
See also MasterCard Int’l Inc. v. American Express Co., 14 USPQ2d 1551 (TTAB 1990) (applicant barred by collateral estoppel from litigating the issue of descriptiveness or genericness of the proposed mark as used on the services that were the subject of the prior proceeding, but may go forward with respect to use of the mark on other services).
Final Decision Required. These doctrines should be invoked only after the time for further court review has expired and no such review has been sought or, if sought, the review action has been terminated. If a proceeding is pending, the examining attorney may suspend action on the application pending termination, once all other matters are in condition for publication or final refusal. See TMEP §716.02(d) regarding suspension.
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Examining Attorney Should Issue Appropriate Refusals. The examining attorney should issue refusals based on res judicata, collateral estoppel, or stare decisis, as appropriate, but should not rely exclusively on such doctrines. Even if the examining attorney believes that registration is barred by one of these doctrines, he or she must also issue and provide full evidentiary support for any relevant substantive refusals.
Chapter 1300 Service Marks, Collective Marks, and
Certification Marks
1301 Service Marks
1301.01 What Is a Service?
1301.01(a) Criteria for Determining What Constitutes a Service
1301.01(a)(i) Performance of a Real Activity
1301.01(a)(ii) For the Benefit of Others
1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services
1301.01(b) Whether Particular Activities Constitute “Services”
1301.01(b)(i) Contests and Promotional Activities
1301.01(b)(ii) Warranty or Guarantee of Repair
1301.01(b)(iii) Publishing One’s Own Periodical
1301.01(b)(iv) Soliciting Investors
1301.01(b)(v) Informational Services Ancillary to the Sale of Goods
1301.02 What Is a Service Mark
1301.02(a) Matter That Does Not Function as a Service Mark
1301.02(b) Names of Characters or Personal Names as Service Marks
1301.02(c) Three-Dimensional Service Marks
1301.02(d) Titles of Radio and Television Programs
1301.02(e) Process, System, or Method
1301.02(f) Computer Software
1301.03 Use of Service Mark in Commerce
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1301.03(a) Use of Service Mark in Advertising to Identify Services
1301.03(b) Rendering of Service in Commerce Regulable by Congress
1301.04 Specimens of Use for Service Marks
1301.04(a) Specimens Must Show Use as a Service Mark
1301.04(b) Association Between Mark and Services
1301.04(c) Letterhead
1301.04(d) Specimens for Entertainment Services
1301.05 Identification and Classification of Services
1302 Collective Marks Generally
1302.01 History of Collective Marks
1303 Collective Trademarks and Collective Service Marks
1303.01 Use of Collective Trademark and Collective Service Mark Is By Members
1303.02 Examination of Collective Trademark and Collective Service Mark Applications
1303.02(a) Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications
1303.02(b) Specimens of Use for Collective Trademark and Collective Service Mark Applications
1303.02(c) Special Elements of Collective Trademark and Collective Service Mark Applications
1303.02(c)(i) Manner of Control
1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause
1304 Collective Membership Marks
1304.01 History of Membership Marks
1304.02 Purpose of Membership Mark
1304.03 Use of Membership Mark Is by Members
1304.04 Who May Apply to Register Membership Mark
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1304.05 Who May Own Membership Mark
1304.06 Nature of the Collective Group
1304.07 Character of the Mark
1304.08 Examination of Collective Membership Mark
1304.08(a) Matter That Does Not Function as a Membership Mark
1304.08(a)(i) Degree or Title Designations Contrasted to Membership Marks
1304.08(b) Likelihood of Confusion
1304.08(c) Classification in Membership Mark Applications
1304.08(d) Identifications in Membership Mark Applications
1304.08(e) Specimens of Use for Membership Marks
1304.08(f) Special Elements of Applications for Collective Membership Marks
1304.08(f)(i) Exercise of Control
1304.08(f)(ii) Manner of Control
1304.08(f)(iii) Use by Members Indicated in Dates-of-Use Clause
1305 Trademarks and Service Marks Used by Collective Organizations
1306 Certification Marks
1306.01 Definition of Certification Mark
1306.01(a) Use Is by Person Other than Owner
1306.01(b) Purpose Is to Certify, Not to Indicate Source
1306.02 Certification Marks That Are Indications of Regional Origin
1306.02(a) Indicating the Region
1306.02(b) Authority to Control a Geographical Term
1306.02(c) A Government Entity as Applicant for a Geographical Certification Mark
1306.03 Certification Marks Certifying that Labor Was Performed by Specific Group or Individual
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1306.04 Ownership of Certification Marks
1306.05 Characteristics of Certification Marks
1306.05(a) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark
1306.05(b) Cancellation of Applicant’s Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa
1306.06 Examination of Certification Mark Applications
1306.06(a) The Mark on the Drawing
1306.06(b) Specimens of Use for Certification Marks
1306.06(c) Relation Between Certification Mark and Trademark or Service Mark on Specimens
1306.06(d) Classification of Goods and Services in Certification Mark Applications
1306.06(e) Identification of Goods and Services in Certification Mark Applications
1306.06(f) Special Elements of Certification Mark Applications
1306.06(f)(i) Statement of What the Mark Certifies
1306.06(f)(ii) Standards
1306.06(f)(iii) Exercise of Control
1306.06(f)(iv) Use by Others Indicated in Dates-of-Use Clause
1306.06(f)(v) Statement That Mark is Not Used by Applicant
1306.06(f)(vi) Amendment to Different Type of Mark
1306.07 Relationship of §14 (Cancellation) to Examination of Certification Mark Applications
1306.08 Registration of Certification Mark on Basis of Foreign Registration
1306.09 Uncertainty Regarding Type of Mark
1306.09(a) Distinction Between Certification Mark and Collective Mark
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1306.09(b) Distinguishing Certification Mark Use from Related- Company Use of Trademark or Service Mark
1306.09(c) Patent Licenses
1307 Registration as Correct Type of Mark
The Trademark Act of 1946 provides for registration of trademarks, service marks, collective trademarks, and service marks, collective membership marks, and certification marks. 15 U.S.C. §§1051, 1053, and 1054. The language of this Manual is generally directed to trademarks. Procedures for trademarks usually apply to other types of marks, unless otherwise stated. This chapter is devoted to special circumstances relating to service marks, collective marks, collective membership marks, and certification marks.
1301 Service Marks
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “service mark” as follows:
The term “service mark” means any word, name, symbol, or device, or any combination thereof--
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act],
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
Therefore, to be registrable as a service mark, the asserted mark must function both to identify the services recited in the application and distinguish them from the services of others, and to indicate the source of the recited services, even if that source is unknown. The activities recited in the identification must constitute services as contemplated by the Trademark Act. See TMEP §§1301.01 et seq.
If a proposed mark does not function as a service mark for the services recited, or if the applicant is not rendering a registrable service, the statutory
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basis for refusal of registration on the Principal Register is §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, and 1127.
See TMEP §1303 concerning collective service marks.
1301.01 What Is a Service?
A service mark can only be registered for activities that constitute services as contemplated by the Trademark Act. 15 U.S.C. §§1051, 1052, 1053, and 1127. The Trademark Act defines the term “service mark,” but it does not define what constitutes a service. Many activities are obviously services (e.g., dry cleaning, banking, shoe repairing, transportation, and house painting).
1301.01(a) Criteria for Determining What Constitutes a Service
The following criteria have evolved for determining what constitutes a service: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service. In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).
1301.01(a)(i) Performance of a Real Activity
A service must be a real activity. A mere idea or concept, e.g., an idea for an accounting organizational format or a recipe for a baked item, is not a service. Similarly, a system, process, or method is not a service. In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); In re Citibank, N.A., 225 USPQ 612 (TTAB 1985); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979); In re McCormick & Co., Inc., 179 USPQ 317 (TTAB 1973). See TMEP §1301.02(e) regarding marks that identify a system or process.
The commercial context must be considered in determining whether a real service is being performed. For example, at one time the activities of grocery stores, department stores, and similar retail stores were not considered to be services. However, it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitutes the performance of a service.
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1301.01(a)(ii) For the Benefit of Others
To be a service, an activity must be primarily for the benefit of someone other than the applicant. While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970). See TMEP §1301.01(b)(i). Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.
The controlling question is who primarily benefits from the activity for which registration is sought. If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); In re Alaska Northwest Publishing Co., 212 USPQ 316 (TTAB 1981).
Collecting information for the purpose of publishing one’s own periodical is not a service, because it is done primarily for the applicant’s benefit rather than for the benefit of others. See TMEP §1301.01(b)(iii).
Offering shares of one’s own stock for investment is not a service, because these are routine corporate activities that primarily benefit the applicant. See TMEP §1301.01(b)(iv). On the other hand, offering a retirement income plan to applicant’s employees was found to be a service, because it primarily benefits the employees. American Int’l Reinsurance Co., Inc. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), cert. denied 439 U.S. 866, 200 USPQ 64 (1978).
Licensing intangible property has been recognized as a separate service, analogous to leasing or renting tangible property, that primarily benefits the licensee. In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986).
1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Provision of Goods or Performance of Other Services
In determining whether an activity is sufficiently separate from an applicant’s principal activity to constitute a service, the examining attorney should first ascertain the nature of the applicant’s principal activity under the mark in question (i.e., the performance of a service or the provision of a tangible product). The examining attorney must then determine whether the activity identified in the application is in any material way a different kind of economic
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activity than what any provider of that particular product or service normally provides. In re Landmark Communications, Inc., 204 USPQ 692, 695 (TTAB 1979).
For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.
Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service. See TMEP §1301.01(b)(v).
Conducting a contest to promote the sale of one’s own goods or services is usually not considered a service, because it is an ordinary and routine promotional activity. See TMEP §1301.01(b)(i).
While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods normally does not constitute a separate service, because that activity is ancillary to and normally expected in the trade. See TMEP §1301.01(b)(ii).
However, the fact that an activity is ancillary to a principal service or to the sale of goods does not in itself mean that it is not a separately registrable service. The statute makes no distinction between primary, incidental, or ancillary services. In re Universal Press Syndicate, 229 USPQ 638 (TTAB 1986) (licensing cartoon character found to be a separate service that was not merely incidental or necessary to larger business of magazine and newspaper cartoon strip); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984) (chemical manufacturer’s feed, delivery, and storage of liquid chemical products held to constitute separate service, because applicant’s activities extend beyond routine sale of chemicals); In re Congoleum Corp., 222 USPQ 452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from distributors held to be sufficiently separate from the sale of goods to constitute a service rendered to distributors, because it confers a benefit on distributors that is not normally expected by distributors in the relevant industry); In re C.I.T. Financial Corp., 201 USPQ 124 (TTAB 1978) (computerized financial data-processing services rendered to applicant’s loan customers held to be a registrable service, since it provides benefits that were not previously available, and is separate and distinct from the primary service of making consumer loans); In re U.S. Home Corp. of Texas, 199 USPQ 698 (TTAB 1978) (planning and laying out residential communities for others was found to be a service, because it goes above and beyond what the average individual would do in constructing and selling a home on a piece of land that he or she has purchased); In re John Breuner Co., 136 USPQ 94 (TTAB 1963) (credit services provided by a retail store constitute a separate service, since extension of credit is neither mandatory nor required in the operation of a retail establishment).
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The fact that the activities are offered only to purchasers of the applicant’s primary product or service does not necessarily mean that the activity is not a service. In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982) (quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment); In re John Breuner Co., supra (credit services offered only to customers of applicant’s retail store found to be a service).
The fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of applicant’s primary product or service is also a factor to be considered. In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990).
Another factor to be considered in determining whether an activity is a registrable service is the use of a mark different from the mark used on or in connection with the applicant’s principal product or service. See In re Mitsubishi Motor Sales of America Inc., 11 USPQ2d 1312 (TTAB 1989); In re Universal Press Syndicate, supra; In re Congoleum Corp., supra; In re C.I.T. Financial Corp., supra. However, an activity that is normally expected or routinely done in connection with sale of a product or another service is not a registrable service even if it is identified by a different mark. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971). Moreover, the mark identifying the ancillary service does not have to be different from the mark identifying the applicant’s goods or primary service. Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953).
1301.01(b) Whether Particular Activities Constitute “Services”
1301.01(b)(i) Contests and Promotional Activities
It is well settled that the promotion of one’s own goods is not a service. In re Radio Corp. of America, 205 F.2d 180, 98 USPQ 157 (C.C.P.A. 1953) (record manufacturer who prepares radio programs primarily designed to advertise and sell records is not rendering a service); In re SCM Corp., 209 USPQ 278 (TTAB 1980) (supplying merchandising aids and store displays to retailers does not constitute separate service); Ex parte Wembley, Inc., 111 USPQ 386 (Comm’r Pats. 1956) (national advertising program designed to sell manufacturer’s goods to ultimate purchasers is not service to wholesalers and retailers, because national product advertising is normally expected of manufacturers of nationally distributed products, and is done in furtherance of the sale of the advertised products).
However, an activity that goes above and beyond what is normally expected of a manufacturer in the relevant industry may be a registrable service, even if it also serves to promote the applicant’s primary product or service. In re U.S. Tobacco Co., 1 USPQ2d 1502 (TTAB 1986) (tobacco company’s participating
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in auto race held to constitute an entertainment service, because participating in an auto race is not an activity that a seller of tobacco normally does); In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971) (applicant’s free hairstyling instructional parties found to be a service separate from the applicant’s sale of wigs, because it goes beyond what a seller of wigs would normally do in promoting its goods); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953) (clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing).
Conducting a contest to promote the sale of one’s own goods is usually not considered a service, even though benefits may accrue to the winners of the contest. Such a contest is usually ancillary to the sale of goods or services, and is nothing more than a device to advertise the applicant’s products or services. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Loew’s Theatres, Inc., 179 USPQ 126 (TTAB 1973); In re Johnson Publishing Co., Inc., 130 USPQ 185 (TTAB 1961). However, a contest that serves to promote the sale of the applicant’s goods may be registrable if it operates in a way that confers a benefit unrelated to the sale of the goods, and the benefit is not one that is normally expected of a manufacturer in that field. In re Congoleum Corp., 222 USPQ 452 (TTAB 1984).
A mark identifying a beauty contest is registrable either as a promotional service, rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service. In re Miss American Teen-Ager, Inc., 137 USPQ 82 (TTAB 1963). See TMEP §1402.11.
See TMEP §1301.01(b)(iii) regarding the providing of advertising space in a periodical.
1301.01(b)(ii) Warranty or Guarantee of Repair
While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods does not normally constitute a separate service, because that activity is ancillary to and normally expected in the trade. In re Orion Research Inc., 669 F.2d 689, 205 USPQ 688 (C.C.P.A. 1980) (guarantee of repair or replacement of applicant’s goods that is not separately offered, promoted, or charged for is not a service); In re Lenox, Inc., 228 USPQ 966 (TTAB 1986) (lifetime warranty that is not separately offered, promoted, or charged for is not a service).
However, a warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service. In re Mitsubishi Motor Sales of America, Inc., 11 USPQ2d 1312 (TTAB 1989) (comprehensive automobile vehicle preparation, sales, and service program held to be a service, where applicant’s package included features that were unique and would not normally be expected in the
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industry); In re Sun Valley Waterbeds Inc., 7 USPQ2d 1825 (TTAB 1988) (retailer’s extended warranty for goods manufactured by others held to be a service, where the warranty is considerably more extensive than that offered by others); In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982) (non- mandatory quality control and quality assurance services held to constitute a registrable service even though the services were limited to applicant’s own equipment, where the services were separately charged for, the goods were offered for sale without services, and the services were not merely a time limited manufacturer’s guarantee).
Providing warranties to consumers and retailers on power-operated outdoor products was held to be a registrable service where the warranty covered goods manufactured by applicant but sold under the marks of third-party retailers. Noting that none of applicant’s trademarks appeared on the goods or identified applicant as the source of the goods, the Board found that the third-party retailers rather than applicant would be regarded as the manufacturer of the products. Because purchasers would make a distinction between the provider of the warranty and the provider of the goods, applicant’s warranty service would not be regarded as merely an inducement to purchase its own goods. The Board also noted that applicant’s activities constitute a service to the third-party retailers, because applicant’s provision of warranties avoids the need of the retailer itself to provide a warranty. In re Husqvarna Aktiebolag, 91 USPQ2d 1436 (TTAB 2009).
For the “warranty” service to be considered a separate service, the identification of services should include the word “extended” or other similar terminology (i.e., words that recognize the fact that the service is “qualitatively different” from anything normally done in connection with the sale of the applicant’s goods/services). The identification should also specify the item(s) that the extended warranty covers, e.g., “providing extended warranties on television sets.”
Extended warranty services are classified in Class 36.
1301.01(b)(iii) Publishing One’s Own Periodical
The publication of one’s own periodical is not a service, because it is done primarily for applicant’s own benefit and not for the benefit of others. In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (activities of collecting, distributing, and soliciting information relating to billfishing tournaments for a periodical publication not a separate service, because these are necessary preliminary activities that a publisher must perform prior to publication and sale of publication); In re Alaska Northwest Publishing Co., 212 USPQ 316 (TTAB 1981) (title of magazine section not registrable for magazine publishing services, because the activities and operations associated with designing, producing, and promoting applicant’s own product are ancillary activities that would be expected by purchasers and readers of any
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magazine); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979) (title of newspaper section not registrable as service mark for educational or entertainment service, because collected articles, stories, reports, comics, advertising, and illustrations are indispensable components of newspapers without which newspapers would not be sold); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971) (calculating advertising rates for a trade publication not a registrable service, because this is an integral part of the production or operation of any publication).
However, providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities. In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994) (“providing advertising space in a periodical” held to be a registrable service, where the advertising services were rendered to a different segment of the public under a different mark than the mark used to identify applicant’s magazines); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990) (real estate advertising services rendered by soliciting advertisements and publishing a guide comprising the advertisements of others held to be a registrable service, where advertising was found to be the applicant’s primary activity, and the customers who received the publication were not the same as those to whom the advertising services were rendered).
1301.01(b)(iv) Soliciting Investors
Offering shares of one’s own stock for investment and reinvestment, and publication of reports to one’s own shareholders, are not services, because these are routine corporate activities that primarily benefit the applicant. In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985). Similarly, soliciting investors in applicant’s own partnership is not a registrable service. In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983) (syndicating investment partnerships did not constitute a service within the meaning of the Trademark Act, because there was no evidence that the applicant was in the business of syndicating the investment partnerships of others; rather, the applicant partnership was engaged only in syndication of interests in its own organization). On the other hand, investing the funds of others is a registrable service that primarily benefits others. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985) (investment of funds of institutional investors and providing capital for management found to be a registrable service).
In Canadian Pacific, 224 USPQ at 974, the court noted that since shareholders are owners of the corporation, an applicant who offers a reinvestment plan to its stockholders is essentially offering the plan to itself and not to a segment of the buying public. The court distinguished American Int’l Reinsurance Co., Inc. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (C.C.P.A. 1978), cert. denied 439 U.S. 866, 200 USPQ 64 (1978), in which
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offering an optional retirement plan to applicant’s employees was found to be a registrable service that primarily benefits the employees.
1301.01(b)(v) Informational Services Ancillary to the Sale of Goods
Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate informational service. In re Moore Business Forms Inc., 24 USPQ2d 1638 (TTAB 1992) (paper manufacturer who rates the recycled content and recyclability of its own products is merely providing information about its goods, not rendering a service to others); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) (“promoting the sale and use of chemicals” is not a registrable service, where applicant is merely providing “technical bulletins” that contain information about its own products); Ex parte Armco Steel Corp., 102 USPQ 124 (Comm’r Pats. 1954) (analyzing the needs of customers is not registrable as a consulting service, because it is an ordinary activity that is normally expected of a manufacturer selling goods); Ex parte Elwell-Parker Electric Co., 93 USPQ 229 (Comm’r Pats. 1952) (providing incidental instructions on the efficient use of applicant’s goods not a service). However, an applicant’s free hairstyling instructional “parties” were found to be a service, because conducting parties goes beyond what a seller of wigs would normally do in promoting its goods. In re Heavenly Creations, Inc., 168 USPQ 317 (TTAB 1971).
1301.02 What Is a Service Mark
Not every word, combination of words, or other designation used in the performance or advertising of services is registrable as a service mark. To function as a service mark, the asserted mark must be used in a way that identifies and distinguishes the source of the services recited in the application. Even if it is clear that the applicant is rendering a service (see TMEP §§1301.01 et seq.), the record must show that the asserted mark actually identifies and distinguishes the source of the service recited in the application. In re Advertising and Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987) (stationery specimen showed use of THE NOW GENERATION as a mark for applicant's advertising or promotional services as well as to identify a licensed advertising campaign, where the recited services were specified in a byline appearing immediately beneath the mark).
The fact that the proposed mark appears in an advertisement or brochure in which the services are advertised does not in itself show use as a mark. The record must show that there is a direct association between the mark and the service. See In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identifies only a process does not function as a service mark, even where services are advertised in the same specimen brochure in which the name of the process is used); In re Duratech Industries
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Inc., 13 USPQ2d 2052 (TTAB 1989) (term used on bumper sticker with no reference to the services does not function as a mark); Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985) (term PEOPLEWARE used within a byline on calling card specimen does not constitute service mark usage of that term, even if specimen elsewhere shows that applicant provides the recited services); In re J.F. Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979) (proposed mark used only to identify a liquefaction process in brochure advertising the services does not function as a mark, because there is no direct association between the mark and the offering of services). See TMEP §1301.04(b).
The question of whether a designation functions as a mark that identifies and distinguishes the recited services is determined by examining the specimen(s) and any other evidence in the record that shows how the designation is used. In re Morganroth, 208 USPQ 284 (TTAB 1980); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977). It is the perception of the ordinary customer that determines whether the asserted mark functions as a service mark, not the applicant’s intent, hope, or expectation that it do so. In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960). Factors that the examining attorney should consider in determining whether the asserted mark functions as a service mark include whether the wording claimed as a mark is physically separate from textual matter, whether a term is displayed in capital letters or enclosed in quotation marks, and the manner in which a term is used in relation to other material on the specimen.
While a service mark does not have to be displayed in any particular size or degree of prominence, it must be used in a way that makes a commercial impression separate and apart from the other elements of the advertising matter or other material upon which it is used, such that the designation will be recognized by prospective purchasers as a source identifier. In re C.R. Anthony Co., 3 USPQ2d 1894 (TTAB 1987); In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985). The proposed mark must not blend so well with other matter on specimen that it is difficult or impossible to discern what the mark is. In re McDonald's Corp., 229 USPQ 555 (TTAB 1985); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982); In re Republic of Austria Spanische Reitschule, supra; Ex parte Nat’l Geographic Society, 83 USPQ 260 (Comm’r Pats. 1949). On the other hand, the fact that the proposed mark is prominently displayed does not in and of itself make it registrable, if it is not used in a manner that would be perceived by consumers as an indicator of source. In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984). The important question is not how readily a mark will be noticed but whether, when noticed, it will be understood as identifying and indicating the origin of the services. In re Singer Mfg. Co., 255 F.2d 939, 118 USPQ 310 (C.C.P.A. 1958).
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The presence of the “SM” symbol is not dispositive of the issue of whether matter sought to be registered is used as a service mark. In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983).
See TMEP §1301.02(a) for further information about matter that does not function as a service mark, TMEP §§1301.01 et seq. regarding what constitutes a service, and TMEP §§1301.04 et seq. regarding service mark specimens.
1301.02(a) Matter That Does Not Function as a Service Mark
To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application.
Use of a designation or slogan to convey advertising or promotional information, rather than to identify and indicate the source of the services, is not service mark use. See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960) (GUARANTEED STARTING found to be ordinary words that convey information about the services, not a service mark for the services of “winterizing” motor vehicles); In re Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS found to be informational phrase that does not function as a mark for retail store services); In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A DAY, A WEEK, A MONTH OR MORE so highly descriptive and informational in nature that purchasers would be unlikely to perceive it as an indicator of the source of hotel services); In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE found to be a common commercial phrase that does not serve to identify grocery store services); In re Gilbert Eiseman, P.C., 220 USPQ 89 (TTAB 1983) (IN ONE DAY not used as source identifier but merely as a component of advertising matter that conveyed a characteristic of applicant’s plastic surgery services); In re European-American Bank & Trust Co., 201 USPQ 788 (TTAB 1979) (slogan THINK ABOUT IT found to be an informational or instructional phrase that would not be perceived as a mark for banking services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant’s franchisees does not serve to identify franchising services). Cf. In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985) (the designation QUALITY SHOWS, set off from text of advertising copy in extremely large typeface and reiterated at the conclusion of the narrative portion of the ad, held to be a registrable service mark for applicant’s real estate management and leasing services, because it was used in a way that made a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier). See also TMEP §1202.04 regarding informational matter that does not function as a trademark.
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A term that is used only to identify a product, device, or instrument sold or used in the performance of a service rather than to identify the service itself does not function as a service mark. See In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) (“Aaa,” as used on the specimen, found to identify the applicant’s ratings instead of its rating services); In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT only identifies pizza, and does not function as a service mark to identify grocery store services); In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983) (term that identifies a seat in the first-class section of an airplane does not function as mark for air transportation services); In re Editel Productions, Inc., 189 USPQ 111 (TTAB 1975) (MINI-MOBILE identifies only a vehicle used in rendering services and does not serve to identify the production of television videotapes for others); In re Oscar Mayer & Co. Inc., 171 USPQ 571 (TTAB 1971) (WIENERMOBILE does not function as mark for advertising and promoting the sale of wieners, where it is used only to identify a vehicle used in rendering claimed services).
Similarly, a term that only identifies a process, style, method, or system used in rendering the services is not registrable as a service mark, unless it is also used to identify and distinguish the service. See TMEP §1301.02(e) and cases cited therein.
A term that only identifies a menu item does not function as a mark for restaurant services. In re El Torito Restaurant Inc., 9 USPQ2d 2002 (TTAB 1988).
The name or design of a character or person does not function as a service mark, unless it identifies and distinguishes the services in addition to identifying the character or person. See TMEP §1301.02(b) and cases cited therein.
A term used only as a trade name is not registrable as a service mark. See In re The Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where words appeared only in small, subdued typeface underneath the address and telephone number of applicant’s subsidiary). See TMEP §1202.01 for additional information about matter used solely as a trade name.
Matter that is merely ornamental in nature does not function as a service mark. See In re Tad’s Wholesale, Inc., 132 USPQ 648 (TTAB 1962) (wallpaper design not registrable as a service mark for restaurant services). See TMEP §§1202.03 et seq. for additional information about ornamentation.
See TMEP §1202.02(a)(vii) regarding functionality and service marks, and TMEP §1202.02(b)(ii) regarding trade dress.
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1301.02(b) Names of Characters or Personal Names as Service Marks
Under 15 U.S.C. §1127, a name or design of a character does not function as a service mark, unless it identifies and distinguishes services in addition to identifying the character. If the name or design is used only to identify the character, it is not registrable as a service mark. In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053 (TTAB 1991) (design of dog appearing in advertisement does not function as mark for retail hardware and housewares services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE does not function as mark for restaurant services, where the specimen shows use of mark only to identify one character in a procession of characters); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) (design of zoo animal character distributed to restaurant customers in the form of an iron-on patch not used in a manner that would be perceived as an indicator of source); In re Burger King Corp., 183 USPQ 698 (TTAB 1974) (fanciful design of king does not serve to identify and distinguish restaurant services). See TMEP §1202.10 regarding the registrability of the names and designs of characters in creative works.
Similarly, personal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group. In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions); In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him); In re Generation Gap Products, Inc., 170 USPQ 423 (TTAB 1971) (GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group).
The name of a character or person is registrable as a service mark if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the character or person. In re Florida Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE CLOWN used on handbills found to function as a mark to identify live performances by a clown, where the mark was used to identify not just the character but also the act or entertainment service performed by the character); In re Carson, 197 USPQ 554 (TTAB 1977) (individual’s name held to function as mark, where specimen showed use of the name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places where tickets could be purchased); In re Ames, 160 USPQ 214 (TTAB 1968) (name of musical group functions as mark, where name was used on advertisements that prominently featured a photograph of the group and gave the name, address, and
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telephone number of the group’s booking agent); In re Folk, 160 USPQ 213 (TTAB 1968) (THE LOLLIPOP PRINCESS functions as a service mark for entertainment services, namely, telling children’s stories by radio broadcasting and personal appearances).
See TMEP §§1202.09(a) et seq. regarding the registrability of the names and pseudonyms of authors and performing artists, and TMEP §1202.09(b) regarding the registrability of the names of artists used on original works of art.
1301.02(c) Three-Dimensional Service Marks
The three-dimensional configuration of a building is registrable as a service mark only if it is used in such a way that it is or could be perceived as a mark. Evidence of use might include menus or letterhead that show promotion of the building’s design, or configuration, as a mark. See In re Lean-To Barbecue, Inc., 172 USPQ 151 (TTAB 1971); In re Master Kleens of America, Inc., 171 USPQ 438 (TTAB 1971); In re Griffs of America, Inc., 157 USPQ 592 (TTAB 1968). Cf. Fotomat Corp. v. Cochran, 437 F. Supp. 1231, 194 USPQ 128 (D. Kan. 1977); Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F. Supp. 693, 193 USPQ 342 (D.N.J. 1977).
A three-dimensional costume design may function as a mark for entertainment services. See In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984).
Generally, a photograph is a proper specimen of use for a three-dimensional mark. However, photographs of a building are not sufficient to show use of the building design as a mark for services performed in the building if they only show the building in which the services are performed. The specimen must show that the proposed mark is used in a way that would be perceived as a mark.
See 37 C.F.R. §2.52(b)(2) and TMEP §807.10 regarding drawings of three- dimensional marks.
When examining a three-dimensional mark, the examining attorney must determine whether the proposed mark is inherently distinctive. See TMEP §1202.02(b)(ii).
1301.02(d) Titles of Radio and Television Programs
The title of a continuing series of presentations (e.g., a television or movie “series,” a series of live performances, or a continuing radio program), may constitute a mark for either entertainment services or educational services. However, the title of a single creative work, that is, the title of one episode or event presented as one program, does not function as a service mark. In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (term that identifies title of a play
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not registrable as service mark for entertainment services). The record must show that the matter sought to be registered is more than the title of one presentation, performance, or recording. See TMEP §§1202.08 et seq. and cases cited therein for further information regarding the registrability of the title of a single creative work.
Specimens that show use of a service mark in relation to television programs or a movie series may be in the nature of a photograph of the video or film frame when the mark is used in the program.
Service marks in the nature of titles of entertainment programs may be owned by the producer of the show, by the broadcasting system or station, or by the author or creator of the show, depending upon the circumstances. Normally, an applicant’s statement that the applicant owns the mark is sufficient; the examining attorney should not inquire about ownership, unless information in the record clearly contradicts the applicant’s verified statement that it is the owner of the mark.
1301.02(e) Process, System, or Method
A term that only identifies a process, style, method, system, or the like is not registrable as a service mark. A system or process is only a way of doing something, not a service. The name of a system or process does not become a service mark, unless it is also used to identify and distinguish the service. In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term not registrable as service mark where the specimen shows use of the term only as the name of a process, even though applicant is in the business of rendering services generally and the services are advertised in the same specimen brochure in which the name of the process is used); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984) (term does not function as service mark where it only identifies a photochemical process used in rendering service); In re Turbine Metal Technology, Inc., 219 USPQ 1132 (TTAB 1983) (term that merely identifies a coating material does not function as mark for repair and reconstruction services); In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni Nauchoissledovatelsky Gorno- Metallurgichesky Institut Tsvetnykh Mettalov “Vnitsvetmet”, 219 USPQ 69 (TTAB 1983) (KIVCET identifies only a process and plant configuration, not engineering services); In re Scientific Methods, Inc., 201 USPQ 917 (TTAB 1979) (term that merely identifies educational technique does not function as mark to identify educational services); In re J.F. Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979) (term used only to identify liquefaction process does not function as mark to identify design and engineering services); In re Produits Chimiques Ugine Kuhlmann Societe Anonyme, 190 USPQ 305 (TTAB 1976) (term that merely identifies a process used in rendering the service does not function as service mark); In re Lurgi Gesellschaft Fur Mineraloltechnik m.b.H., 175 USPQ 736 (TTAB 1972) (term that merely identifies process for recovery of high-purity aromatics from
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hydrocarbon mixtures does not function as service mark for consulting, designing, and construction services); Ex parte Phillips Petroleum Co., 100 USPQ 25 (Comm’r Pats. 1953) (although used in advertising of applicant’s engineering services, CYCLOVERSION was only used in the advertisements to identify a catalytic treating and conversion process).
If the term is used to identify both the system or process and the services rendered by means of the system or process, the designation may be registrable as a service mark. See Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979), in which the Board found that the mark LIQWACON identified both a waste treatment and disposal service and a chemical solidification process.
The name of a system or process is registrable only if: (1) the applicant is performing a service (see TMEP §§1301.01 et seq.); and (2) the designation identifies and indicates the source of the service. In determining eligibility for registration, the examining attorney must carefully review the specimen, together with any other information in the record, to see how the applicant uses the proposed mark. The mere advertising of the recited services in a brochure that refers to the process does not establish that a designation functions as a service mark; there must be some association between the offer of services and the matter sought to be registered. In re Universal Oil Products Co., supra; In re J.F. Pritchard & Co., supra.
1301.02(f) Computer Software
A term that only identifies a computer program does not become a service mark, unless it is also used to identify and distinguish the service. In re Walker Research, Inc., 228 USPQ 691 (TTAB 1986) (term that merely identifies computer program used in rendering services does not function as a mark to identify market analysis services); In re Information Builders Inc., 213 USPQ 593 (TTAB 1982) (term identifies only a computer program, not the service of installing and providing access to a computer program); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals). However, it is important to review the record carefully to determine the manner of use of the mark and the impression it is likely to make on purchasers. The Trademark Trial and Appeal Board has noted that:
[I]n today’s commercial context if a customer goes to a company’s website and accesses the company’s software to conduct some type of business, the company may be rendering a service, even though the service utilizes software. Because of the ... blurring between services and products that has occurred with the development and growth of web-based products and services, it is important to review all the information in the record to
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understand both how the mark is used and how it will be perceived by potential customers.
In re Ancor Holdings, 79 USPQ2d 1218, 1221 (TTAB 2006) (INFOMINDER found to identify reminder and scheduling services provided via the Internet, and not just software used in rendering the services).
1301.03 Use of Service Mark in Commerce
1301.03(a) Use of Service Mark in Advertising to Identify Services
In examining an application under 15 U.S.C. §1051(a), an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d), the examining attorney ordinarily should refuse registration if the record shows that the services advertised have not been rendered. For example, the use of a mark in the announcement of a future service does not constitute use as a service mark. Aycock Engineering v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301 (Fed. Cir. 2009) (advertisement and actual use of the mark in commerce are required; mere preparations to use a mark sometime in the future does not constitute use in commerce); In re Port Authority of New York, 3 USPQ2d 1453 (TTAB 1987) (advertising and promoting telecommunications services before the services were available insufficient to support registration); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) (advertising of OCEANA marine entertainment park, which was not yet open, held not a valid basis for registration); In re Nationwide Mutual Ins. Co., 124 USPQ 465 (TTAB 1960) (stickers placed on policies, bills, and letters announcing prospective name change is mere adoption, not service mark use).
See TMEP §806.03(c) regarding amendment of the basis to intent-to-use under 15 U.S.C. §1051(b) when a §1(a) basis fails; TMEP §1104.10 regarding withdrawal of an amendment to allege use, and TMEP §§1109.16 et seq. regarding the time limits for correcting deficiencies in a statement of use.
1301.03(b) Rendering of Service in Commerce Regulable by Congress
In an application under §1(a) or §1(b) of the Trademark Act, 15 U.S.C. §1051(a) or §1051(b), the applicant must use the mark in commerce before a registration may be granted. Section 45 of the Act, 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” See TMEP §§901.01 and 901.03.
The following are three examples of how a service may be rendered in commerce: (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees who use the mark
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are located in more than one state. See TMEP §901.03 and cases cited therein.
1301.04 Specimens of Use for Service Marks
A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application. 37 C.F.R. §2.56(b)(2). Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like. However, printer’s proofs for advertisements, press releases to news media, or printed articles resulting from such releases are not accepted because they do not show use of the mark by the applicant in the rendering or advertising of the services. See TMEP §1301.04(b). Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services. See TMEP §1301.04(c).
See 37 C.F.R. §2.59 and TMEP §§904.05 and 904.07 et seq. regarding substitute specimens.
1301.04(a) Specimens Must Show Use as a Service Mark
To show service mark usage, the specimen must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source. In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identified only a process held not registrable as service mark, even though applicant was rendering services and the name of the process appeared in the same brochure in which the services were advertised); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART perceived as informational matter rather than as service mark for art dealership services, where the term was displayed inconspicuously in the specimen brochure, in the same size and font as other informational matter); In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) (“Aaa,” as used on the specimen, found to identify the applicant’s ratings instead of its rating services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE did not function as mark for restaurant services, where the specimen showed use of mark only to identify one character in a procession of characters, and the proposed mark was no more prominent than anything else on specimen); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where the words appeared only in small, subdued typeface underneath the address and telephone number of applicant's subsidiary); In re Republic of Austria Spanische Reitschule, 197
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USPQ 494 (TTAB 1977) (use of mark as one of many pictures in applicant’s brochure would not be perceived as an indication of the source of the services); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (business progress reports directed to potential investors do not show service mark use for medical services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant’s franchisees does not identify franchising services); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely to advertise chemicals do not show use as a service mark for consulting services). Cf. In re ICE Futures U.S., Inc., 85 USPQ2d 1664,1670 (TTAB 2008) (SUGAR NO. 11, SUGAR NO. 14 and COTTON NO. 2 functioned as service marks for futures exchange and related commodity trading services, where the specimens showed the marks directly with the wording “futures contract”; Board found that “the connection between the marks and services is evident and need not be stated explicitly....").
See TMEP §1301.02(a) regarding matter that does not function as a service mark.
1301.04(b) Association Between Mark and Services
Where the mark is used in advertising the services, the specimen must show an association between the mark and the services for which registration is sought. A specimen that shows only the mark, with no reference to the services, does not show service mark usage. In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) (specimen comprising a packaging label affixed to boxes being mailed to customers, on which the proposed mark was used as part of a return address, held unacceptable because it did not show a connection between the mark and the services); In re Adair, 45 USPQ2d 1211 (TTAB 1997) (tags affixed to decorated Christmas tree that bear the mark “TREE ARTS CO. and design” and the applicant’s location, but make no reference to services, fail to show use for “design services in the nature of designing handcrafted, permanently decorated Christmas and designer trees”); In re Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB 1994) (labels affixed to packaging of valves do not show use of mark for custom manufacture of valves); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (bumper stickers showing only the mark do not show use to identify “association services, namely promoting the interests of individuals who censor the practice of drinking and driving”); In re Riddle, 225 USPQ 630 (TTAB 1985) (cutouts showing mark with no reference to the services held unacceptable for automotive service center); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980) (iron-on transfer clothing patches in the form and shape of a cartoon animal mark, distributed as free promotional items to restaurant customers at counters, held insufficient to identify restaurant services). See also TMEP §1301.04(c) and cases cited therein.
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A specimen that shows the mark as used in the course of rendering or performing the services is generally acceptable. Where the record shows that the mark is used in performing (as opposed to advertising) the services, a reference to the services on the specimen itself may not be necessary. In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) (computer printouts showing mark GLOBAL GATEWAY found acceptable to show use of mark to identify data transmission services accessed via computer, because they show use of mark as it appears on computer terminal in the course of rendering the services); In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986) (photograph of rented fence held acceptable for rental of chain link fences, since it shows use of distinctive color scheme in the rendering services); In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (photograph of costume worn by performer during performance of entertainment services held to be an acceptable specimen). In Johnson Controls, 33 USPQ2d at 1320, the Board distinguished Metriplex and Eagle Fence, noting that the labels were not used in the rendering of the services, as the custom manufacturing services were complete before purchasers ever see the mark.
In determining whether a specimen is acceptable evidence of service mark use, the examining attorney may consider applicant’s explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used. See In re International Environmental Corp., 230 USPQ 688 (TTAB 1986), in which a survey distributed to potential customers of applicant’s heating and air conditioning distributorship services was held to be an acceptable specimen even though it did not specifically refer to the services, where the applicant stated that the sale of its services involved ascertaining the needs of customers serviced, and the record showed that the surveys were directed to potential customers and were the means by which applicant offered its distributorship services to the public.
1301.04(c) Letterhead
Letterhead stationery, business cards, or invoices bearing the mark may be accepted if they create an association between the mark and the services. To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services. A general reference to the industry may be acceptable. In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000) (letterhead and business cards showing the word “Design” are acceptable evidence of use of mark for commercial art design services); In re Southwest Petro-Chem, Inc., 183 USPQ 371 (TTAB 1974) (use of mark on letterhead next to the name SOUTHWEST PETRO-CHEM, INC. found to be sufficient to show use of the mark for “consulting and advisory services relating to the making and using of lubricating oils and greases,” when used for letters in correspondence with customers).
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Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (unless the mark itself has a descriptive portion that refers to the service), because they do not show that the mark is used in the sale or advertising of the particular services recited in the application. In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999) (letterhead specimen showing the mark MONOGRAMS AMERICA and the wording “A Nationwide Network of Embroidery Stores” held insufficient to support registration for consulting services for embroidery stores).
If the letterhead itself does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used. In Monograms America, the Board indicated that the letterhead specimen might have been accepted if the applicant had submitted a copy of a letter to a store owner describing the services. 51 USPQ2d at 1319.
1301.04(d) Specimens for Entertainment Services
For live entertainment services, acceptable specimens include a photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band. For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimen must show that the mark is used to identify and distinguish the services recited in the application, not just the performer. See In re Ames, 160 USPQ 214 (TTAB 1968) (advertisements for records show use of the mark for entertainment services rendered by a musical group, where the advertisements prominently feature a photograph of musical group and give the name, address, and telephone number of a booking agent).
A designation that identifies only the performer is not registrable as a service mark. See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks, and TMEP §§1202.09(a) et seq. regarding the registrability of names and pseudonyms of performing artists.
1301.05 Identification and Classification of Services
See TMEP §§1402.11 et seq. regarding identification of services, and TMEP §§1401 et seq. regarding classification.
1302 Collective Marks Generally
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “collective mark” as follows:
The term “collective mark” means a trademark or service mark--
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(1) used by the members of a cooperative, an association, or other collective group or organization, or
(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this [Act], and includes marks indicating membership in a union, an association or other organization.
Under the Trademark Act, a collective mark must be owned by a collective entity even though the mark is used by the members of the collective. There are basically two types of collective marks: (1) collective trademarks or collective service marks; and (2) collective membership marks. The distinction between these types of collective marks is explained in Aloe Creme Laboratories, Inc. v. American Society for Aesthetic Plastic Surgery, Inc., 192 USPQ 170, 173 (TTAB 1976), as follows:
A collective trademark or collective service mark is a mark adopted by a “collective” (i.e., an association, union, cooperative, fraternal organization, or other organized collective group) for use only by its members, who in turn use the mark to identify their goods or services and distinguish them from those of nonmembers. The “collective” itself neither sells goods nor performs services under a collective trademark or collective service mark, but the collective may advertise or otherwise promote the goods or services sold or rendered by its members under the mark. A collective membership mark is a mark adopted for the purpose of indicating membership in an organized collective group, such as a union, an association, or other organization. Neither the collective nor its members uses the collective membership mark to identify and distinguish goods or services; rather, the sole function of such a mark is to indicate that the person displaying the mark is a member of the organized collective group.
See also In re International Institute of Valuers, 223 USPQ 350 (TTAB 1984). See TMEP §1303 concerning collective trademarks and service marks; TMEP §1304 concerning collective membership marks; and TMEP §1305, which distinguishes collective trademarks or service marks from trademarks and service marks used by collective organizations.
1302.01 History of Collective Marks
Section 4 of the Trademark Act of 1946, 15 U.S.C. §1054, provides for registration of both collective marks and certification marks, without distinguishing between them, but §45 of the Act, 15 U.S.C. §1127, defines collective marks and certification marks separately, as distinctly different types of marks. (See TMEP §§1306 et seq. regarding certification marks.)
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A brief history will serve to put these sections in perspective. The earlier statutory provision, out of which §4 and the accompanying definitions in §45 grew, was the June 10, 1938 amendment of the Trademark Act of 1905. Under the Act of 1905, registration could be based only on a person’s own use of a mark. The purpose of the 1938 amendment was to provide for registration of a mark by an owner who “exercises legitimate control over the use of a collective mark.” “Collective marks,” however, were not defined under the Act of 1905, as amended. Section 45 of the Act of 1946 defined the separate types of marks.
See TMEP §1304.01 for additional history relating to collective membership marks.
1303 Collective Trademarks and Collective Service Marks
Collective trademarks and collective service marks indicate commercial origin of goods or services, but as collective marks they indicate that the party providing the goods or services is a member of a certain group and meets its standards for admission. The mark is used by all members of the group; therefore, no one member can own the mark, and the collective organization holds the title to the collectively used mark for the benefit of all members of the group.
The collective organization itself neither sells goods nor performs services under the mark, but may advertise to publicize the mark and promote the goods or services sold by its members under the mark. For example, an agricultural cooperative of produce sellers does not sell its own goods or render services, but promotes the goods and services of its members.
A specimen of use of a collective trademark or service mark must show use of the mark by a member on the member’s goods or in the sale or advertising of the member’s services. 37 C.F.R. §2.56(b)(3); TMEP §1303.02(b).
1303.01 Use of Collective Trademark and Collective Service Mark Is By Members
Applications for registration of collective trademarks and collective service marks are different in form from applications for registration of other trademarks and service marks, because of the difference in ownership and use of collective marks.
Under the definition of “collective mark” in §45 of the Trademark Act, 15 U.S.C. §1127, a collective mark must be owned by a collective entity. The use of a collective trademark or collective service mark is by members of the collective. Therefore, in an application based on use in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a), the applicant must assert that the applicant is exercising legitimate control over the use of the mark in commerce by its members.
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In an application based on §1(b), §44, or §66(a) of the Act, 15 U.S.C. §1051(b), 15 U.S.C. §1126, or 15 U.S.C. §1141f(a), the applicant must assert that the applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. In a §1(b) application, before the mark can register, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c), or a statement of use under 15 U.S.C. §1051(d)), alleging that the applicant is exercising legitimate control over the use of the mark in commerce by its members.
In certain situations, notwithstanding the use of a collective trademark or collective service mark by the members of the collective, the collective itself may also use the same mark as a trademark for the goods or services covered by the collective trademark or service mark registration. See TMEP §1305. The “anti-use-by-owner rule” of §4 of the Trademark Act, 15 U.S.C. §1054, does not apply to collective marks. See Roush Bakery Products Co. v. F.R. Lepage Bakery Inc., 4 USPQ2d 1401 (TTAB 1987), aff’d, 851 F.2d 351, 7 USPQ2d 1395 (Fed. Cir. 1988), withdrawn, vacated and remanded, 863 F.2d 43, 9 USPQ2d 1335 (Fed. Cir. 1988), vacated and modified, 13 USPQ2d 1045 (TTAB 1989). The Trademark Law Revision Act of 1988, which became effective on November 16, 1989, amended §4 to indicate that the “anti-use-by-owner rule” in that section applies specifically to certification marks.
The same mark may not be used both as a collective mark and as a certification mark. TMEP §1306.05(a).
1303.02 Examination of Collective Trademark and Collective Service Mark Applications
The examination of applications to register collective trademarks and collective service marks is conducted in a manner similar to the examination of applications to register regular trademarks and service marks, using most of the same criteria of registrability. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers. However, use and ownership requirements are slightly different due to the nature of collective marks. See TMEP §§1303.02(c) et seq. See TMEP §§1304 et seq. regarding examination of applications to register collective membership marks.
1303.02(a) Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications
The goods and services recited in collective trademark and collective service mark applications are assigned to the same classes that are appropriate for those goods and services in general, according to the classification schedules set forth in 37 C.F.R. §§6.1 and 6.2. See TMEP §§1401 et seq. regarding classification.
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1303.02(b) Specimens of Use for Collective Trademark and Collective Service Mark Applications
A specimen of use of a collective trademark or service mark should show use of the mark by a member on the member’s goods or in the sale or advertising of the member’s services. 37 C.F.R. §2.56(b)(3).
The specimen should show use of the mark to indicate that the party providing the goods or services is a member of a certain group. The manner of use required is similar to trademark or service mark use. For example, collective trademark specimens should show the mark used on the goods or packaging for the goods; collective service mark specimens should show the mark used in advertising for the services or in the rendering of the services.
The purpose of the mark must be to indicate that the product or service is provided by a member of a collective group. However, the specimen itself does not have to state that purpose explicitly. The examining attorney should accept the specimen if the mark is used on the specimen to indicate the source of the product or service, and there is no information in the record that is inconsistent with the applicant's averments that the mark is a collective mark owned by a collective group and used by members of the group.
1303.02(c) Special Elements of Collective Trademark and Collective Service Mark Applications
1303.02(c)(i) Manner of Control
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(a) of the Act must specify the class of persons entitled to use the mark, indicating their relationship to the applicant, and the nature of the applicant’s control over the use of the mark. 37 C.F.R. §2.44(a).
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(b), §44, or §66(a) of the Act must specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant will be, and the nature of the control the applicant intends to exercise over the use of the mark. See 37 C.F.R. §2.44(b).
The following language may be used for the above purpose:
Applicant controls (or, if the application is being filed under §1(b), §44, or §66(a), applicant intends to control) the use of the mark by the members in the following manner: [specify].
A statement that the applicant’s bylaws or other written provisions specify the manner of control, or intended manner of control, will be sufficient.
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1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause
When setting out dates of use of a collective mark on goods or in connection with services, in either a §1(a) application or an allegation of use filed in connection with a §1(b) application, the applicant must state that the mark was first used by members (or a member) of the applicant.
1304 Collective Membership Marks
1304.01 History of Membership Marks
Section 4 of the Trademark Act of 1946, 15 U.S.C. §1054, provides that collective marks shall be registrable by persons exercising legitimate control over their use, even though not possessing an industrial or commercial establishment, and the definition of a collective mark in §45, 15 U.S.C. §1127, encompasses marks that indicate membership in a union, association, or other organization.
The Trademark Act of 1905 prohibited registration by anyone of symbols of collective groups. The Act of 1946, however, contains no prohibition and thus permits registration by the owners of collective marks, including those used to indicate membership.
Membership marks are not trademarks or service marks in the ordinary sense; they are not used in business or trade, and they do not indicate commercial origin of goods or services. Registration of these marks fills the need of collective organizations who do not use the symbols of their organizations on goods or services but who wish to protect their marks to prevent their use by others. See Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm’r Pats. 1956), regarding the rationale for registration of collective membership marks.
1304.02 Purpose of Membership Mark
The sole purpose of a collective membership mark is to indicate that the user of the mark is a member of a particular organization.
1304.03 Use of Membership Mark Is by Members
Registration of a membership mark is based on actual use of the mark by the members of a collective organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members. See In re Triangle Club of Princeton University, 138 USPQ 332 (TTAB 1963) (collective membership mark registration denied because specimen did not show use of mark by members). See also TMEP §1304.08(e).
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Nothing in the Trademark Act prohibits the use of the same mark as a membership mark by members and, also, as a trademark or a service mark by the parent organization (see TMEP §1303.01), but the same mark may not be used both as a membership mark and as a certification mark. TMEP §1306.05(a).
1304.04 Who May Apply to Register Membership Mark
Application to register a membership mark must be made by the organization that controls or intends to control the use of the mark and, therefore, owns or is entitled to use the mark. Application may not be made by a member. Before a registration may be issued, however, the mark must have been used by members. See American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984); Constitution Party of Texas v. Constitution Ass’n USA, 152 USPQ 443 (TTAB 1966).
1304.05 Who May Own Membership Mark
The owner of a collective membership mark is normally the collective organization whose members use the mark. The organization is usually an association, either incorporated or unincorporated, but is not limited to being an association and may have some other form.
A collective membership mark may be owned by someone other than the collective organization whose members use the mark, and the owner might not itself be a collective organization. An example is a business corporation who forms a club for persons meeting certain qualifications, and arranges to retain control of the group and of the mark used by the members of the group. The corporation that has retained control over the use of the mark is the owner of the mark, and is entitled to apply to register the mark. In re Stencel Aero Engineering Corp., 170 USPQ 292 (TTAB 1971).
1304.06 Nature of the Collective Group
Under the definition of “collective mark” in §45 of the Trademark Act, 15 U.S.C. §1127, only a “cooperative, an association or other collective group or organization” can become the owner of a collective mark. However, there is great variety in the organizational form of collective groups whose members use membership marks. The terms “group” and “organization” are broad enough to cover all groups of persons who are brought together in an organized manner such as to justify their being called “collective.”
In order to apply to register a collective membership mark, the collective organization who owns the mark must be a person capable of suing and being sued in a court of law. See 15 U.S.C. §1127. See TMEP §§803.01 et seq.
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The persons who compose a collective group may be either natural or juristic persons.
1304.07 Character of the Mark
A collective membership mark may be a letter or letters, a word or words, a design alone, a name or nickname, or other matter that identifies the collective organization or indicates its purpose. A membership mark may, but need not, include the term “member” or the equivalent.
In addition to being printed (the most common form), a membership mark may consist of an object, such as a flag, or may be a part of articles of jewelry, such as pins or rings. See TMEP §§1304.03 and 1304.08(e) regarding use of membership marks and acceptable specimens.
1304.08 Examination of Collective Membership Mark
An application to register a collective membership mark on the Principal Register must meet all the criteria for registration of other marks on the Principal Register. 15 U.S.C. §1054. See 37 C.F.R. §2.46. Likewise, when determining the registrability of a collective membership mark on the Supplemental Register, the same standards are used as are applied to other types of marks. See 37 C.F.R. §2.47.
The examination of collective membership mark applications is conducted in the same manner as the examination of applications to register trademarks and service marks, using the same criteria of registrability. Thus, the same standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness or disclaimers. See Racine Industries Inc. v. Bane-Clene Corp., 35 USPQ2d 1832, 1837 (TTAB 1994); In re Association of Energy Engineers, Inc., 227 USPQ 76, 77 (TTAB 1985). However, use and ownership requirements are slightly different due to the nature of collective membership marks.
1304.08(a) Matter That Does Not Function as a Membership Mark
Whether matter functions as a collective membership mark is determined by the specimen and evidence of record. It is the use of the mark to indicate membership, rather than the character of the matter composing the mark, that determines whether a term or other designation is a collective membership mark. See Ex parte Grand Chapter of Phi Sigma Kappa, 118 USPQ 467 (Comm’r Pats. 1958), which held that Greek letter abbreviations are not collective membership marks indicating membership in Greek letter societies simply because some people apply them to athletic jerseys, and In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967), which held that the design on a jewelry pin indicated longevity rather than membership in an organization. If a proposed mark does not function as a mark indicating
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membership, the examining attorney should refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127. See TMEP §1304.08(a)(i) as to degrees or titles.
1304.08(a)(i) Degree or Title Designations Contrasted to Membership Marks
Professional, technical, educational, and similar organizations often adopt letters or similar designations to be used by persons to indicate that the persons have passed certain tests or completed certain courses of instruction that are specified by the organization, or have demonstrated a degree of proficiency to the satisfaction of the organization. When such a symbol is used solely as a personal title or degree for an individual (i.e., it is used in a manner that identifies only a title or degree conferred on this individual), then it does not serve to indicate membership in an organization, and registration as a membership mark must be refused. In re International Institute of Valuers, 223 USPQ 350 (TTAB 1984) (registration properly refused where use of the mark on specimen indicated award of a degree or title, and not membership in collective entity). See also In re National Society of Cardiopulmonary Technologists, Inc., 173 USPQ 511 (TTAB 1972). Cf. In re Thacker, 228 USPQ 961 (TTAB 1986); In re National Ass’n of Purchasing Management, 228 USPQ 768 (TTAB 1986); In re Mortgage Bankers Ass’n of America, 226 USPQ 954 (TTAB 1985).
If the proposed mark functions simply as a degree or title, the examining attorney should refuse registration under §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127, on the ground that the matter does not function as a membership mark. See TMEP §1304.08(a).
1304.08(b) Likelihood of Confusion
Likelihood of confusion may arise from the contemporaneous use of a collective membership mark on the one hand and a trademark or service mark on the other. The same standards used to determine likelihood of confusion between trademarks and service marks also apply to collective membership marks. See 15 U.S.C. §1052(d); In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); Allstate Life Ins. Co. v. Cuna Int’l, Inc., 169 USPQ 313 (TTAB 1971), aff’d, 487 F.2d 1407, 180 USPQ 48 (C.C.P.A. 1973); Boise Cascade Corp. v. Mississippi Pine Manufacturers Assn., 164 USPQ 364 (TTAB 1969).
The finding of likelihood of confusion between a collective membership mark and a trademark or service mark is not based on confusion as to the source of any goods or services which happen to be provided by the members of the collective organization. Rather, the question is whether relevant persons are likely to believe that the trademark owner’s goods or services emanate from, are endorsed by, or are in some way associated with the collective
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organization. In re Code Consultants Inc., 60 USPQ2d 1699, 1701 (TTAB 2001).
1304.08(c) Classification in Membership Mark Applications
Section 1 and §44 Applications. In applications under §§1 and 44 of the Trademark Act, collective membership marks are classified in Class 200. 37 C.F.R. §6.4. Class 200 was established as a result of the decision in Ex parte Supreme Shrine of the Order of the White Shrine of Jerusalem, 109 USPQ 248 (Comm’r Pats. 1956). Before this decision, there was no registration of membership insignia as such on the theory that all collective marks were either collective trademarks or collective service marks. Some marks that were actually membership marks were registered under the Act of 1946 as collective service marks, and a few were registered as collective trademarks. That practice was discontinued upon the clarification of the basis for registration of membership marks and the creation of Class 200.
Section 66(a) Applications. In a §66(a) application (i.e., a request for extension of protection of an international registration to the United States under the Madrid Protocol), classification is determined by the International Bureau of the World Intellectual Property Organization (“IB”), in accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”). Class 200 comes from the old United States classification system (see TMEP §1401.02) and is not included in the international classification system. In a §66(a) application, the international classification of goods/services cannot be changed from the classification given to the goods/services by the IB. See TMEP §1401.03(d). Accordingly, if the mark in a §66(a) application is identified as a collective membership mark, or appears to be a collective membership mark, the United States Patent and Trademark Office (“USPTO”) will not reclassify it into Class 200. However, the examining attorney must ensure that the applicant complies with all other United States requirements for collective membership marks, regardless of the classification chosen by the IB.
1304.08(d) Identifications in Membership Mark Applications
An identification of goods or services is not appropriate in connection with a collective membership mark. The purpose of a collective membership mark is to indicate membership in an organization. Appropriate identification language would be, “indicating membership in an organization (association, club or the like) ...,” followed by a phrase indicating the nature of the organization or association, e.g., “indicating membership in an organization of computer professionals.”
The nature of an organization can be indicated by specifying the area of activity of its members (e.g., they may sell lumber, cosmetics, or food, or may
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deal in chemical products or household goods, or provide services as fashion designers, engineers, or accountants). If goods or services are not directly involved, the nature of an organization can be indicated by specifying the organization’s type or purpose (such as a service or social club, a political society, a trade association, a beneficial fraternal organization, or the like). Detailed descriptions of an organization’s objectives or activities are not necessary. It is sufficient if the identification indicates broadly either the field of activity as related to the goods or services, or the general type or purpose of the organization.
1304.08(e) Specimens of Use for Membership Marks
The owner of a collective membership mark exercises control over the use of the mark but does not itself use the mark to indicate membership. Therefore, a proper specimen of use of a collective membership mark must show use by members to indicate membership in the collective organization. 37 C.F.R. §2.56(b)(4). In re International Ass’n for Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983); In re Triangle Club of Princeton University, 138 USPQ 332 (TTAB 1963). See also TMEP §1304.03.
The most common type of specimen is a membership card. Membership certificates are also acceptable. The applicant may submit a blank or voided membership card or certificate.
For trade or professional associations, decals bearing the mark for use by members on doors or windows in their establishments, wall plaques bearing the mark, or decals or plates for use, e.g., on members’ vehicles, are satisfactory specimens. If the members are in business and place the mark on their business stationery to show their membership, pieces of such stationery are acceptable. Flags, pennants, and banners of various types used in connection with political parties, club groups, or the like could be satisfactory specimens.
Many associations, particularly fraternal societies, use jewelry such as pins, rings, or charms to indicate membership. See In re Triangle Club of Princeton University, supra. However, not every ornamental design on jewelry is necessarily an indication of membership. The record must show that the design on a piece of jewelry is actually an indication of membership before the jewelry can be accepted as a specimen of use. See In re Institute for Certification of Computer Professionals, 219 USPQ 372 (TTAB 1983) (in view of contradictory evidence in record, lapel pin with nothing more than CCP thereon was not considered evidence of membership); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967) (design on pin did not indicate membership in organization, but merely showed length of service).
Shoulder, sleeve, pocket, or similar patches, whose design constitutes a membership mark and which are authorized by the parent organization for use by members on garments to indicate membership, are normally
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acceptable as specimens. Clothing authorized by the parent organization to be worn by members may also be an acceptable specimen.
A specimen that shows use of the mark by the collective organization itself, rather than by a member, is not acceptable. Collective organizations often publish various kinds of printed material, such as catalogs, directories, bulletins, newsletters, magazines, programs, and the like. Placement of the mark on these items by the collective organization represents use of the mark as a trademark or service mark to indicate that the collective organization is the source of the material. The mark is not placed on these items by the parent organization to indicate membership of a person in the organization.
1304.08(f) Special Elements of Applications for Collective Membership Marks
1304.08(f)(i) Exercise of Control
An application to register a collective membership mark must accurately convey the use or intended use of the mark with appropriate language, as follows.
In an application based on use in commerce under §1(a) of the Trademark Act, the applicant must assert that the applicant is exercising legitimate control over the use of the mark in commerce by its members.
In an application based on §1(b), §44, or §66(a) of the Act, the applicant must assert that the applicant has a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. In a §1(b) application, before the mark can register, the applicant must file an allegation of use alleging that the applicant is exercising legitimate control over the use of the mark in commerce by its members.
1304.08(f)(ii) Manner of Control
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(a) of the Act must specify the class of persons entitled to use the mark, indicating their relationship to the applicant and the nature of the applicant’s control over the use of the mark. 37 C.F.R. §2.44(a).
In addition to specifying and containing all elements that are applicable for trademarks, an application for registration of a collective mark under §1(b), §44, or §66(a) of the Act must specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant will be, and the nature of the control the applicant intends to exercise over the use of the mark. 37 C.F.R. §2.44(b).
The following language may be used for the above purpose:
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Applicant controls (or, if the application is being filed under §1(b), §44, or §66(a), applicant intends to control) the use of the mark by the members in the following manner: [specify].
A statement that the applicant’s bylaws or other written provisions specify the manner of control, or intended manner of control, will be sufficient.
1304.08(f)(iii) Use by Members Indicated in Dates-of-Use Clause
When setting out dates of use of a collective membership mark, the application or allegation of use must state that the mark was first used by members of the applicant rather than by the applicant, and that the mark was first used on a specified date to indicate membership rather than first used on goods or in connection with services.
1305 Trademarks and Service Marks Used by Collective Organizations
A collective organization may itself use trademarks and service marks to identify its goods and services, as opposed to collective trademarks and service marks or collective membership marks used by the collective’s members. See B.F. Goodrich Co. v. National Cooperatives, Inc., 114 USPQ 406 (Comm’r Pats. 1957) (mark used to identify tires made for applicant cooperative and sold by its distributors is a trademark, not a collective mark that identifies goods of applicant’s associated organizations; applicant alone provides specifications and other instructions and applicant alone is responsible for faulty tires).
The examination of applications to register trademarks and service marks used or intended to be used by collective organizations is conducted in the same manner as for other trademarks and service marks, using the same criteria of registrability.
The form of the application used by collective organizations is the same as for those used or intended to be used by other applicants. The collective organization should be listed as the applicant, because it uses or intends to use the mark itself. The specimen submitted must be material applied by the collective organization to its goods or used in connection with its services.
1306 Certification Marks
1306.01 Definition of Certification Mark
Section 4 of the Trademark Act, 15 U.S.C. §1054, provides for the registration of “certification marks, including indications of regional origin.” Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “certification mark” as follows:
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The term “certification mark” means any word, name, symbol, or device, or any combination thereof--
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this [Act],
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
A certification mark “is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark....” In re Florida Citrus Commission, 160 USPQ 495, 499 (TTAB 1968).
There are generally three types of certification marks. First, there are certification marks that certify that goods or services originate in a specific geographic region (e.g., ROQUEFORT for cheese). See Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962); State of Florida, Department of Citrus v. Real Juices, Inc., 330 F. Supp. 428, 171 USPQ 66 (M.D. Fla. 1971) (SUNSHINE TREE for citrus from Florida); Bureau Nat’l Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (COGNAC for distilled brandy from a region in France). See TMEP §§1306.02 et seq.
Second, there are certification marks that certify that the goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories). See Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990) (UL certifies, among other things, representative samplings of electrical equipment meeting certain safety standards); In re Celanese Corp. of America, 136 USPQ 86 (TTAB 1962) (CELANESE certifies plastic toys meeting certifier’s safety standards).
Third, certification marks may certify that the work or labor on the products or services was performed by a member of a union or other organization, or that the performer meets certain standards. See TMEP §1306.03 and cases cited therein for further information.
There are two characteristics that differentiate certification marks from trademarks or service marks. First, a certification mark is not used by its owner and, second, a certification mark does not indicate commercial source or distinguish the goods or services of one person from those of another person. See TMEP §1306.09(a) for a discussion of the distinction between a certification mark and a collective trademark, collective service mark, or collective membership mark.
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See Holtzman, Certification Marks: An Overview, 81 Trademark Rep. 180 (1991).
1306.01(a) Use Is by Person Other than Owner
A certification mark may not be used, in the trademark sense of “used,” by the owner of the mark; it may be used only by a person or persons other than the owner of the mark. That is, the owner of a certification mark does not apply the mark to his or her goods or services and, in fact, usually does not attach or apply the mark at all. The mark is generally applied by other persons to their goods or services, with authorization from the owner of the mark.
The owner of a certification mark does not produce the goods or perform the services in connection with which the mark is used, and thus does not control their nature and quality. Therefore, it is not appropriate to inquire about control over the nature and quality of the goods or services. What the owner of the certification mark does control is use of the mark by others on their goods or services. This control consists of taking steps to ensure that the mark is applied only to goods or services that contain the characteristics or meet the requirements that the certifier/owner has established or adopted for the certification. See TMEP §1306.06(f)(ii) regarding submission of the standards established by the certifier to determine whether the certification mark may be used in relation to the goods and/or services of others.
1306.01(b) Purpose Is to Certify, Not to Indicate Source
The purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person. A certification mark does not indicate origin in a single commercial or proprietary source. In certifying, the same mark is used on the goods or services of many different producers.
The message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, using methods determined by the certifier/owner. The placing of the mark on goods, or its use in connection with services, thus constitutes a certification by someone other than the producer that the prescribed characteristics or qualifications of the certifier for those goods or services have been met.
1306.02 Certification Marks That Are Indications of Regional Origin
A geographical term may be used, either alone or as a portion of a composite mark, to certify that the goods originate in the particular geographical region
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identified by the term. As noted in Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 497, 133 USPQ 633, 635 (2d Cir. 1962):
A geographical name does not require a secondary meaning in order to qualify for registration as a certification mark. It is true that section 1054 provides that certification marks are “subject to the provisions relating to the registration of trademarks, so far as they are applicable....” But section 1052(e)(2), which prohibits registration of names primarily geographically descriptive, specifically excepts “indications of regional origin” registrable under section 1054. Therefore, a geographical name may be registered as a certification mark even though it is primarily geographically descriptive.
When a geographical term is used in a composite certification mark to certify regional origin, the examining attorney should not require a disclaimer or refuse registration of the composite mark on the ground that the mark is primarily geographically descriptive. However, when a geographical term used in a composite certification mark is not used to certify regional origin (e.g., “California” used to certify that fruit is organically grown), the examining attorney should refuse registration or require a disclaimer, as appropriate.
Marks that may be used to certify regional origin are not necessarily limited to terms that comprise precise geographical terminology. A distortion of a geographical term, an abbreviation of a geographical term, or a combination of geographical terms can be used as, or in, a certification mark indicating regional origin. It is also possible for a term that is not technically geographical to have significance as an indication of origin solely in a particular region.
The issue in determining whether a designation is registrable as a regional certification mark is whether the public understands that goods bearing the mark come only from the region named in the mark, not whether the public is expressly aware of the certification function of the mark per se. If use of the designation in fact is controlled by the certifier and limited to products meeting the certifier’s standards of regional origin, and if purchasers understand the designation to refer only to products produced in the particular region and not to products produced elsewhere, then the designation functions as a regional certification mark. Institut Nat’l Des Appellations D’Origine v. Brown-Forman Corp., 47 USPQ2d 1875 (TTAB 1998).
A mark that is geographically deceptive may not be registered as a certification mark of regional origin. See TMEP §§1210.05 et seq. regarding geographically deceptive marks.
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1306.02(a) Indicating the Region
The examining attorney should examine the specimen of use and evidence in the record to determine whether the geographical term is being used as a certification mark to indicate the regional origin of the goods upon which it is used. If the record or other evidence available to the examining attorney indicates that the proposed mark has a principal significance as a generic term denoting a type of goods, registration should be refused. In re Cooperativa Produttori Latte E Fontina Valle D'Acosta, 230 USPQ 131 (TTAB 1986) (FONTINA held a generic name of a type of cheese rather than a certification mark indicating regional origin, in view of the fact that non- certified producers outside that region use the term to identify non-certified cheeses). However, a certification mark used to certify regional origin will be deemed to have become a generic term as applied to particular goods only if it has lost its significance as an indication of regional origin of those goods. See Tea Board of India v. The Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006) (applicant failed to establish that the term DARJEELING had become generic due to opposer’s alleged failure to control the use of the mark to certify origin in the Darjeeling region of India), and cases cited therein. The basis for refusal of registration on the Principal Register is 15 U.S.C. §§1052(e)(1), 1054, and 1127, and the basis for refusal of registration on the Supplemental Register is 15 U.S.C. §§1054, 1091, and 1127 (see TMEP §§1209.02 et seq).
When a geographic term is being used as a certification mark to indicate regional origin, the application should define the regional origin that the mark certifies.
1306.02(b) Authority to Control a Geographical Term
When a certification mark consists solely, or essentially, of a geographical term, the examining attorney should inquire as to the authority of the applicant to control the use of the term, if the authority is not obvious. Normally, the entity that has authority to exercise control over the use of a geographical term as a certification mark is a governmental body or a body operating with governmental authorization. The right that a private person can acquire in a geographical term is usually a trademark right, on the basis of exclusive use resulting in the term becoming distinctive of that person’s goods. When, however, circumstances make it desirable or necessary for many or all persons in a region to use the name of the region to indicate the origin of their goods, there would be no opportunity for the name to become distinctive for only one person. The term would be used by all persons in the region, not as a trademark indicating commercial origin, but as a certification mark indicating regional origin.
When a geographical term is used as a certification mark, two elements are of basic concern: first, preserving the freedom of all persons in the region to use
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the term and; second, preventing abuses or illegal uses of the mark that would be detrimental to all those entitled to use the mark. Normally, a private individual is not in the best position to fulfill these objectives. The government of a region would be the logical authority to control the use of the name of the region. The government, either directly or through a body to which it has given authority, would have power to preserve the right of all persons entitled to use the mark and to prevent abuse or illegal use of the mark.
1306.02(c) A Government Entity as Applicant for a Geographical Certification Mark
The applicant may be the government itself (such as the government of the United States, a state, or a city), one of the departments of a government, or a body operating with governmental authorization that is not formally a part of the government. There may be an interrelationship between bodies in more than one of these categories and the decision as to which is the appropriate body to apply depends on which body actually conducts the certification program or is most directly associated with it. The examining attorney should not question the identity of the applicant, unless the record indicates that the entity identified as the applicant is not the certifier.
1306.03 Certification Marks Certifying that Labor Was Performed by Specific Group or Individual
A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization, or by a person who meets certain standards and tests of competency set by the certifier. 15 U.S.C. §1127. The certifier does not certify the quality of the work being performed, but only that the work was performed by a member of the union or group, or by someone who meets certain standards. In re National Institute for Automotive Service Excellence, 218 USPQ 744, 747 (TTAB 1983). See also American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984). Used in this manner, the mark certifies a characteristic of the goods or services. Whether or not specific matter functions as a certification mark depends on whether the matter is used in connection with the goods or services in such a manner that the purchasing public will recognize it, either consciously or otherwise, as a certification mark.
Occasionally, it is not clear whether a term is being used to certify that work or labor relating to the goods or services was performed by someone meeting certain standards or by members of a union or other organization to indicate membership, or whether the term is merely being used as a title or a degree of the performer to indicate professional qualifications. Matter that might appear to be simply a title or a degree may function as a certification mark if used in the proper manner. See In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007) (CRNA functions as certification
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mark used to certify that anesthesia services are being performed by a person who meets certain standards and tests of competency); In re Software Publishers Ass’n, 69 USPQ2d 2009 (TTAB 2003) (CERTIFIED SOFTWARE MANAGER used on certificate merely indicates that holder of the certificate has been awarded a title or degree, and is not likely to be perceived as certification mark); In re National Ass’n of Purchasing Management, 228 USPQ 768 (TTAB 1986) (C.P.M. used merely as title or degree, not as certification mark); In re National Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983) (PROFESSIONAL LEGAL SECRETARY not used on the specimen in such a way as to indicate certification significance); In re National Institute for Automotive Service Excellence, supra (design mark not used simply as a degree or title, but to certify that the performer of the services had met certain standards); In re Institute of Certified Professional Business Consultants, 216 USPQ 338 (TTAB 1982) (CPBC not used as a certification mark for business consulting services, but only as a title or degree); In re Professional Photographers of Ohio, Inc., 149 USPQ 857 (TTAB 1966) (CERTIFIED PROFESSIONAL PHOTOGRAPHER used only as the title of a person, not as a certification mark). Cf. In re University of Mississippi, 1 USPQ2d 1909 (TTAB 1987) (use of university seal on diplomas did not represent use as a certification mark).
See TMEP §1306.09(a) regarding the difference between a certification mark and a collective mark.
1306.04 Ownership of Certification Marks
The owner of a certification mark is the party responsible for the certification that is conveyed by the mark. The party who affixes the mark, with authorization of the certifier, does not own the mark; nor is the mark owned by someone who merely acts as an agent for the certifier, for example, an inspector hired by the certifier. The certifier, as owner, is the only person who may file an application for registration of a certification mark. See In re Safe Electrical Cord Committee, 125 USPQ 310 (TTAB 1960).
Certification is often the sole activity for the owner of a certification mark. However, a person is not necessarily precluded from owning a certification mark because he or she also engages in other activities, including the sale of goods or the performance of services. However, the certification mark may not be the same mark that the person uses as a trademark or service mark on goods or services. See TMEP §1306.05(a).
Examples of organizations which conduct both types of activities are trade associations and other membership or “club” types of businesses, such as automobile associations. These organizations may perform services for their members, and sell various goods to their members and others, as well as conduct programs in which they certify characteristics or other aspects of
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goods or services, especially of kinds which relate to the main purpose of the association.
Manufacturing or service companies that do not certify the goods or services of members may nonetheless engage in certification programs under proper circumstances. For example, a manufacturer of chemical wood preservatives might conduct a program certifying certain characteristics of wood or wood products that are treated and sold by others. Among the characteristics or circumstances certified could be the fact that a preservative produced by this manufacturer under a specified trademark was used in the treatment.
As another example, a magazine publisher may conduct a certification program relating to goods or services that are advertised in or have some relevance to the interest area of the magazine.
The certifier/owner determines the requirements for the certification. The standards do not have to be original with the certifier/owner, but may be standards established by another person, such as specifications promulgated by a government agency, or standards developed through research of a private research organization. See TMEP §1306.06(f)(ii) regarding the standards for certification. However, if the name of the organization that developed the standards is part of the mark, an issue could arise as to whether the mark is deceptively misdescriptive under 15 U.S.C. §1052(e)(1) (see TMEP §1209.04) or falsely suggests a connection with persons, institutions, beliefs, or national symbols under 15 U.S.C. §1052(a) (see TMEP §1203.03(e)).
1306.05 Characteristics of Certification Marks
The Trademark Act does not require that a certification mark be in any specific form or include any specific wording. A certification mark can be wording only, design only, or a combination of wording and design. In other words, there is no particular way that a mark must look in order to be a certification mark.
A certification mark often includes wording such as “approved by,” “inspected,” “conforming to,” “certified,” or similar wording, which is natural since certification (or approval) is practically the only significance the mark is to have when it is used on goods or in connection with services. However, this wording is not required, and a mark that entirely lacks this wording can perform the function of certification.
The examining attorney must look to the facts disclosed in the record to determine whether the mark is used in certification activity and is in fact a certification mark.
It is not necessary to show that the mark is instantly recognizable as a certification mark, or that the mark has already become well known to the
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public as a certification mark. However, it should be clear from the record that the circumstances surrounding the use or promotion of the mark will give certification significance to the mark in the marketplace. See Ex parte Van Winkle, 117 USPQ 450 (Comm’r Pats. 1958).
1306.05(a) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark
Trademarks or service marks and certification marks are different and distinct types of marks, which serve different purposes. A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose.
Section 4 of the Trademark Act, 15 U.S.C. §1054, prohibits the registration of a certification mark “when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used;” and §14(5)(B) of the Act, 15 U.S.C. §1064(5)(B), provides for the cancellation of a registered certification mark where the registrant engages in the production or marketing of any goods or services to which the certification mark is applied. See TMEP §1306.07 regarding §14(5) of the Act. Thus, if a party owns a registration as a trademark or service mark for any goods or services, he or she may not register the same mark as a certification mark for those goods or services. Conversely, a registration as a certification mark precludes registration of the same mark by its owner as a trademark or service mark for any goods or services to which the certification mark applies. The owner of a certification mark may seek registration of the same mark as a trademark or service mark for goods or services other than those to which the certification mark is applied. However, the application for a certification mark must be filed separately from the application for a trademark or service mark, because the purpose and use of a trademark or service mark differ from those of a certification mark as do the allegations and claims made in support of a certification mark.
The prohibition against registration both as a trademark or service mark and as a certification mark applies to marks that are identical or so similar as to constitute essentially the same mark. Variations in wording or design, even though small, can, if meaningful, create different marks. On the other hand, inconsequential differences, such as the style of lettering or the addition of wording of little importance, normally would not prevent marks from being regarded as the same. See In re 88Open Consortium Ltd., 28 USPQ2d 1314 (TTAB 1993), in which the mark 88OPEN COMPATIBILITY CERTIFIED and
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design was found registrable as a certification mark even though applicant owned six registrations for the marks 88OPEN in typed and stylized form as trademarks, service marks, and collective membership marks. The Board noted that the words COMPATIBILITY CERTIFIED served to inform those seeing the mark that it is functioning as a certification mark, and that the certification mark included a design feature not found in the previously registered marks. See also TMEP §§1306.04, 1306.06(c), and 1306.09.
1306.05(b) Cancellation of Applicant’s Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa
The nature of the activity in which the mark is used or intended to be used may change from use to certify characteristics of goods or services to use on the party’s own goods or services, or on goods or services produced for the party by related companies. The change might also be the other way around, from trademark or service mark use to certification mark use.
If there is already a registration as one type of mark and the registrant files an application for registration of the mark as the other type, the applicant must surrender the previous registration under §7(e) of the Trademark Act, 15 U.S.C. §1057(e), before the examining attorney approves the new application for publication for opposition or issuance of a registration on the Supplemental Register. See 37 C.F.R. §2.172 and TMEP §1608 regarding surrender. The registration certificate for the new application should not issue until the prior registration actually has been cancelled.
In examining the new application, the examining attorney must carefully review the application to ensure that the facts of record support the new application.
1306.06 Examination of Certification Mark Applications
The same standards are used to determine the registrability of certification marks that are used for other types of marks. Thus, the standards generally applicable to trademarks and service marks are used in considering issues such as descriptiveness, disclaimers, and likelihood of confusion. (But see TMEP §§1306.02 et seq. regarding certification marks indicating regional origin only.)
Regarding the application of §2(e) of the Trademark Act, 15 U.S.C. §1052(e), to certification marks, see Community of Roquefort v. Santo, 443 F.2d 1196, 170 USPQ 205 (C.C.P.A. 1971); In re National Ass’n of Legal Secretaries (Int’l), 221 USPQ 50 (TTAB 1983).
Regarding the application of §2(d), 15 U.S.C. §1052(d), to certification marks, see Procter & Gamble Co. v. Cohen, 375 F.2d 494, 153 USPQ 188 (C.C.P.A. 1967); Tea Board of India v. The Republic of Tea, Inc., 80 USPQ2d 1881
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(TTAB 2006); Stabilisierrungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073 (TTAB 1988). See also E.I. duPont de Nemours & Co. v. Yoshida Int’l, Inc., 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975).
A refusal to register because the subject matter does not function as a certification mark is predicated on §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1054, and 1127. For example, educational or other degrees or titles awarded to individuals, and used only as personal titles or degrees, are not certification marks. So used, titles and degrees indicate qualifications or attainments of the person; they do not pertain to or certify services that have been performed by the person. See TMEP §1306.03.
1306.06(a) The Mark on the Drawing
The drawing in the application must include the entire certification mark, but it should not include anything that is not part of the mark. The examining attorney must refer to the specimen to determine what constitutes the mark. See In re National Institute for Automotive Service Excellence, 218 USPQ 744 (TTAB 1983). In evaluating the drawing, the same standards used in relation to trademark and service mark drawings apply to certification marks (see TMEP §§807 et seq.).
1306.06(b) Specimens of Use for Certification Marks
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. 37 C.F.R. §2.56(b)(5). See In re Council on Certification of Nurse Anesthetists, 85 USPQ2d 1403 (TTAB 2007).
Although a certification mark performs a different function from a trademark or a service mark, it is used in a manner analogous to that of a trademark or a service mark (i.e., on a label, tag, or container for the goods, a display associated with the goods, or in the performance or advertising of services). Thus, materials that bear the mark, and are actually attached or applied to the goods or used in relation to the services by the persons authorized to use the mark, constitute proper specimens.
Sometimes, the owner/certifier prepares tags or labels that bear the certification mark and that are supplied to the authorized users to attach to their goods or use in relation to their services. See Ex parte Porcelain Enamel Institute, Inc., 110 USPQ 258 (Comm’r Pats. 1956). These tags or labels are acceptable specimens.
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The same standards used to evaluate the acceptability of trademark and service mark specimens also apply to certification marks. See TMEP §§904 et seq.
1306.06(c) Relation Between Certification Mark and Trademark or Service Mark on Specimens
It is customary for trademarks or service marks to be placed on goods or used with services in conjunction with certification marks. However, it is also possible for a certification mark to be the only mark used on goods or with services. Some producers market their goods or services without using a trademark or service mark, yet these producers may be authorized to use a certification mark and, as a result, the certification mark would be the only mark on the goods or services. In these situations, the significance of the mark might not be readily apparent and the examining attorney should request an explanation of the circumstances to ascertain whether the mark is a certification mark rather than a trademark or service mark. See also TMEP §1306.09.
When a trademark or a service mark appears on the specimen in addition to a certification mark, the certification mark can be on a separate label, or can be included on a single label along with the user’s own trademark or service mark.
A composite certification mark may include a trademark or service mark, provided the composite mark functions to certify, with the trademark or service mark serving only to inform, or to suggest the certification program, rather than to indicate origin of the goods or services with which the mark is used. These situations usually are created when a company that produces goods or performs services wants to develop a program and a mark to certify characteristics of the goods or services of others that are related to the producer’s own goods or services. See the examples in TMEP §1306.04.
The trademark or service mark must be owned by the same person who owns the certification mark. A party may not include the trademark or service mark of another in a certification mark, even with a disclaimer. If the examining attorney believes that a trademark or service mark included in a certification mark is owned by another, the examining attorney should refuse registration of the certification mark.
1306.06(d) Classification of Goods and Services in Certification Mark Applications
Section 1 and §44 Applications
In applications to register certification marks, all goods are classified in Class A and all services are classified in Class B. 37 C.F.R. §6.3. Both Classes A
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and B (but not any other classes) may be included in one application. See TMEP §§1403 et seq. regarding multiple-class applications.
NOTE: When the Trademark Act of 1946 went into effect, the goods and services for which certification marks were registered were classified in the regular classes for goods and services. It was later concluded that this was not reasonable, because a certification mark is commonly used on a great variety of goods and services, and the specialized purpose of these marks makes it unrealistic to divide the goods and services into the competitive groups that the regular classes represent. The change to classification in Classes A and B for certification marks was made by amendment of the Trademark Rules on August 15, 1955.
Section 66(a) Applications
In a §66(a) application, classification is determined by the IB, in accordance with the Nice Agreement. Classes A and B come from the old United States classification system (see TMEP §1401.02) and are not included in the international classification system. In a §66(a) application, the international classification of goods/services cannot be changed from the classification given to the goods/services by the IB. See TMEP §1401.03(d). Accordingly, if the mark in a §66(a) application is identified as a certification mark, or appears to be a certification mark, the USPTO will not reclassify it into Class A or B. However, the examining attorney must ensure that the applicant complies with all other United States requirements for certification marks, regardless of the classification chosen by the IB.
1306.06(e) Identification of Goods and Services in Certification Mark Applications
The identification of goods or services in a certification mark application must describe the goods and/or services of the party who will receive the certification, not the activities of the certifier/owner of the certification mark. This is consistent with the requirement that the owner of a certification mark not produce the goods or perform the services in connection with which the mark is used. The certification activities of the certifier are described in the certification statement, not in the identification of goods/services. For an explanation of the certification statement, see TMEP §1306.06(f)(i).
In a certification mark application, the goods or services that are certified may be identified less specifically than in an application for registration of a trademark or service mark. Ordinarily, it is only necessary to indicate general kinds of goods and services, such as food, agricultural commodities, electrical products, textile materials, printed material, insurance agency services, machinery repair, or restaurant services. However, if the certification program itself is limited to specific goods or services, for example, wine, wood doors,
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or bakery machinery, then the identification in the application must also reflect this limitation.
The identification should be limited to the goods or services. The terms “certification,” “certify,” or “certifies” should not be included.
1306.06(f) Special Elements of Certification Mark Applications
1306.06(f)(i) Statement of What the Mark Certifies
The application must contain a statement of the characteristic, standard, or other feature that is certified or intended to be certified by the mark. The statement should begin with wording, “The certification mark, as used (or intended to be used) by authorized persons, certifies (or is intended to certify) . . . .” See 37 C.F.R. §2.45.
All of the characteristics or features that the mark certifies should be included. A mark does not have to be limited to certifying a single characteristic or feature.
The characteristics or features that the mark certifies should be explained in reasonable detail, so that they are clear. The broad suggestive terms of the statute, such as quality, material, mode of manufacture, are generally not satisfactory by themselves, because they do not accurately reveal the nature of the certification. How specific the statement should be depends in part on the narrowness or breadth of the certification. For example, “quality” would not inform the public of the meaning of the certification where the characteristic being certified is limited, for example, to the strength of a material, or the purity of a strain of seed.
The statement of certification in the application is printed on the registration certificate. For that reason, it should be reasonably specific but does not have to include the details of the specifications of the characteristic being certified. If practicable, however, more detailed specifications should be made part of the application file record.
The statement of what the mark certifies is separate from the identification of goods and/or services.
1306.06(f)(ii) Standards
The applicant (certifier) must submit a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services. 37 C.F.R. §2.45. For an intent-to- use application, under §1(b) of the Act, 15 U.S.C. §1051(b), the standards are submitted with the allegation of use (i.e., either the amendment to allege use or the statement of use). 37 C.F.R. §2.45(b).
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The standards do not have to be original with the applicant. They may be standards established by another party, such as specifications promulgated by a government agency, or standards developed through research of a private research organization.
1306.06(f)(iii) Exercise of Control
In an application based on use in commerce under §1(a) of the Trademark Act, the applicant must assert that the applicant is exercising legitimate control over the use of the certification mark in commerce. 37 C.F.R. §2.45(a).
In an application based on §1(b), §44, or §66(a) of the Act, the applicant must assert that the applicant has a bona fide intention to exercise legitimate control over the use of the certification mark in commerce. See 37 C.F.R. §2.45(b). In a §1(b) application, before the mark can register, the applicant must file an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d), alleging that the applicant is exercising legitimate control over the use of the certification mark in commerce.
If there is doubt as to the existence or nature of such control by the applicant, the examining attorney should require an explanation and sufficient disclosure of facts, or the filing of appropriate documents, to support the applicant’s statement regarding the exercise of control over the use of the mark, pursuant to 37 C.F.R. §2.61(b).
1306.06(f)(iv) Use by Others Indicated in Dates-of-Use Clause
When specifying the dates of first use, the applicant must indicate that the certification mark was first used under the authority of the applicant, or by persons authorized by the applicant, because a certification mark is not used by the applicant itself.
1306.06(f)(v) Statement That Mark is Not Used by Applicant
The application must contain a statement that the applicant is not engaged in (or, if the application is filed under §1(b), §44, or §66(a) of the Act, will not engage in) the production or marketing of the goods or services to which the mark is applied. See 37 C.F.R. §2.45. This statement does not have to be verified, and can, therefore, be entered by examiner’s amendment.
1306.06(f)(vi) Amendment to Different Type of Mark
If an application is filed to register a mark as a certification mark and the mark is actually another type of mark, or if an application is filed to register a mark as another type when it is actually a certification mark, the application may be amended to request registration as the proper type of mark. It is preferred
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that the applicant completely rewrite the application to provide a clean copy, rather than amend the original documents. Also, the application should be re- executed because some essential allegations differ for the different types of marks.
Applications for certification marks, collective marks, and collective membership marks cannot be filed using TEAS Plus. 37 C.F.R. §2.22(c). Therefore, in a TEAS Plus application, an additional TEAS Plus processing fee will be required if the mark is amended to a collective, collective membership, or certification mark. See TMEP §819.01(a).
1306.07 Relationship of §14 (Cancellation) to Examination of Certification Mark Applications
Extract from 15 U.S.C. §1064. Cancellation. A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this [Act], or under the Act of March 3, 1881, or the Act of February 20, 1905....
. . . (5) At any time in the case of a certification mark on the ground that the
registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies....
. . . Nothing in paragraph (5) shall be deemed to prohibit the registrant from
using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.
Section 14 of the Trademark Act, 15 U.S.C. §1064, provides for petitions to cancel registrations. Subsection (5) lists specific circumstances when petitions to cancel certification marks may be filed. The provisions of §14(5) are applicable in ex parte examination as follows:
Subsection A: In an application, the applicant states under oath or declaration that the applicant is exercising, or has a bona fide
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intention to exercise, legitimate control over the use of the certification mark. TMEP §1306.06(f)(iii). Such statement is accepted, unless the examining attorney has knowledge of facts indicating that it should not be accepted.
Subsection B: The applicant is required to state, as appropriate, that he or she is not engaged in, or will not engage in, the production or marketing of any goods or services to which the certification mark is applied. TMEP §1306.06(f)(v). Such statement is accepted, unless the examining attorney has knowledge of facts indicating the contrary.
Subsection C: This subsection concerns whether a party permits use of the certification mark for purposes other than to certify. No statements are required in the application specifically on this point. The existence of unauthorized or illegal uses by others without the applicant’s authorization is not within the examining attorney’s province and cannot be used as a basis for refusal to register, provided that use authorized by the applicant, as supported by the record, is proper certification use.
Subsection D: This subsection relates to the obligation of the owner not to discriminately refuse to certify. This subject is not mentioned in §4 or §45, 15 U.S.C. §1054 or §1127. The Office has never undertaken to evaluate, in ex parte examination, whether the standards or characteristics which the mark certifies, as set out by the applicant, are discriminatory per se; nor is it in the province of ex parte procedure to investigate or police how the certification is practiced.
1306.08 Registration of Certification Mark on Basis of Foreign Registration
A certification mark may be registered in the United States under §44 of the Trademark Act, on the basis of a foreign registration. However, whether a particular foreign registration is acceptable as the basis for a United States registration depends on the scope of the foreign registration.
A person may not obtain a registration in the United States that is broader in scope than the foreign registration on which the United States application is based. See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972); TMEP §1402.01(b). Therefore, a registration as a certification mark in the United States may not be based on a foreign registration that is actually a trademark registration, i.e., a registration that is based on the registrant’s placement of the mark on his or her own goods as a trademark. The scope of the registration, i.e., the nature of the registration right, would not be the same.
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The scope and nature of the registration right is not always immediately apparent from a foreign registration certificate. Foreign registration certificates are not always labeled as pertaining to a trademark, service mark, collective mark, or certification mark and, when they are labeled, the significance of the term is not always clear. For example, the designation “collective” represents a different concept in some foreign countries than it does in the United States. Moreover, while a certificate printed on a standardized form may be headed with the designation “trademark,” the body of the certificate might contain language to the contrary.
Since certification is an exception in the larger world of trademarks, an indication of certification in the registration certificate would normally represent a conscious decision that a certification situation exists. Therefore, if a foreign registration certificate has a heading that designates the mark as a certification mark, or if the body of the foreign certificate contains language indicating that the registration is for certification, the foreign registration normally may be accepted to support registration in the United States as a certification mark.
Whenever there is ambiguity about the scope or nature of the foreign registration, or whenever the examining attorney believes that the foreign certificate may not reflect the actual registration right, the examining attorney should inquire regarding the basis of the foreign registration, pursuant to 37 C.F.R. 2.61(b).
1306.09 Uncertainty Regarding Type of Mark
When the facts in the application are insufficient to provide an adequate basis for determining whether the mark is functioning as a trademark or service mark or as a certification mark, the examining attorney should ask for further explanation as to the activities in which the mark is used and should require a sufficient disclosure of the facts to enable a proper examination to be made, pursuant to 37 C.F.R. §2.61(b). The manner in which the activities associated with a mark are conducted is the main factor that determines the type of mark. The conduct of parties involved with the mark evidences the relationship between the parties, and the responsibilities of each to the goods or services and to the mark.
1306.09(a) Distinction Between Certification Mark and Collective Mark
A collective trademark or collective service mark indicates origin of goods or services in the members of a group. A collective membership mark indicates membership in an organization. A certification mark certifies characteristics or features of goods or services. See American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798, 806-808 (TTAB 1984),
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for a discussion of the distinction between collective marks and certification marks.
Both collective marks and certification marks are used by more than one person, but only the users of collective marks are related to each other through membership in a collective group. The collective mark is used by all members and the collective organization holds the title to the collective mark for the benefit of all members.
A certification mark may be used to certify that the work or labor on the goods or services was performed by a member of a union or other organization. See TMEP §1306.03. Used in this manner, the certification mark certifies not that the user is a member of an organization but that the labor on the user’s goods or services was performed by a member of an organization.
An application to register a mark that is used or intended to be used by members of a collective group must be scrutinized carefully to determine the function of the mark. If the mark is used or intended to be used by the members as a trademark on goods they produce or as a service mark for services they perform, then the mark is a collective trademark or collective service mark. If the mark is used or intended to be used by members to indicate membership in an organization, then the mark is a collective membership mark. However, if use of the mark is or will be authorized only under circumstances designated by the organization to certify characteristics or features of the goods or services, the mark is a certification mark.
1306.09(b) Distinguishing Certification Mark Use from Related- Company Use of Trademark or Service Mark
Sometimes, an application requests registration of a certification mark, but there is a contractual relationship in the nature of a franchise or license between the applicant and the user of the mark, whereby the applicant, as the franchisor or licensor, specifies the nature or quality of the goods produced (or of the services performed) under the contract. These situations require care in examination because they usually indicate trademark or service mark use (through related companies) rather than certification mark use, because the applicant, as franchisor or licensor, controls the nature of the goods or services and has the responsibility for their quality.
The key distinction between use of subject matter as a certification mark and use as a trademark or service mark through a related company is the purpose and function of the mark in the market place, and the significance that it would have to the relevant purchasing public. A trademark or service mark serves to indicate the origin of goods or services, whereas a certification mark serves to guarantee certain qualities or characteristics. See In re Monsanto Co., 201 USPQ 864, 870 (TTAB 1978); In re Celanese Corp. of America, 136 USPQ 86 (TTAB 1962).
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Furthermore, the owner of a certification mark must permit use of the mark if the goods or services meet the certifier’s standard, whereas a trademark owner may, but is not obligated to, license use of its mark to third parties. Monsanto, 201 USPQ at 870.
1306.09(c) Patent Licenses
Sometimes, the owner of a patent asserts ownership of the mark that is applied to goods that are manufactured under license from the patent owner, in accordance with the terms and specifications of the patent. In most cases, these marks have been registered as trademarks, on the basis of related- company use. Generally, the patent owner’s purpose, in arranging for the application of a mark to the goods manufactured under his or her license, would be to identify and distinguish those goods whose nature and quality the patent owner controls through the terms and specifications of the patent. Therefore, registration as a trademark (on the basis of related-company use) rather than registration as a certification mark would be appropriate.
1307 Registration as Correct Type of Mark
The examining attorney should take care to ascertain the correct type of mark during examination, and to require amendment if necessary. If a registration is issued for the wrong type of mark, it may be subject to cancellation. See National Trailways Bus System v. Trailway Van Lines, Inc., 269 F. Supp. 352, 155 USPQ 507 (E.D.N.Y. 1965); American Speech-Language-Hearing Ass’n v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984).
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Chapter 1400 — Classification and Identification of Goods and Services
1401 Classification
1401.01 Statutory Authority
1401.02 International Trademark Classification Adopted
1401.02(a) Headings of International Trademark Classes
1401.02(b) Short Titles for International Trademark Classes
1401.02(c) International Alphabetical List
1401.03 Designation of Class
1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44
1401.03(b) Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44
1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44
1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications
1401.04 Classification Determines Number of Fees
1401.04(a) Prior United States Classification System
1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid
1401.05 Criteria on Which International Classification Is Based
1401.05(a) Identification and Classification of Kits and Gift Baskets
1401.05(b) Medical vs. Non-Medical Goods
1401.06 Specimen(s) as Related to Classification
1401.06(a) Specimen Discloses Special Characteristics
1401.07 Classification and Plurality of Uses
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1401.08 Classification and the Identification of Goods and Services
1401.09 Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement
1401.09(a) Elimination of “Miscellaneous Class Designation”
1401.10 General Summary of Major Changes in Practice Based on the 9th Edition of the Nice Agreement
1401.10(a) Legal Services Transferred to International Class 45
1401.10(b) Goods Made of Precious Metal are Classified According to Their Function
1401.10(c) Transfer of Aquaria and Related Items
1401.11 Implementation of Changes to the Nice Agreement
1401.12 Effective Date of Changes to USPTO ID Manual
1402 Identification of Goods and Services
1402.01 Specifying the Goods and/or Services - in General
1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services
1402.01(b) Identification of Goods and Services in a §44 Application
1402.01(c) Identification of Goods and Services in a §66(a) Application
1402.01(d) Location of “Identification of Goods and Services”
1402.01(e) Responsibilities of Examining Attorney as to Identification
1402.02 Entitlement to Filing Date With Respect to Identification of Goods and Services
1402.03 Specificity of Terms Used in Identifying Goods and Services
1402.03(a) Inclusive Terminology
1402.03(b) House Marks
1402.03(c) Marks for a “Full Line of …”
1402.03(d) Identifying Computer Programs with Specificity
1402.03(e) Identifying Publications with Specificity
1402.04 Acceptable Identification of Goods and Services Manual
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1402.05 Accuracy of Identification
1402.05(a) Goods That Are Components or Ingredients
1402.05(b) Material Composition
1402.06 Amendments Permitted to Clarify or Limit Identification
1402.06(a) Limiting the Identification of Goods and Services
1402.06(b) Clarifying the Identification of Goods and Services
1402.07 Scope of Identification of Goods and Services for Purposes of Amendment
1402.07(a) The “Ordinary-Meaning” Test
1402.07(b) Ambiguous Identifications
1402.07(c) Unambiguous Identifications
1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable
1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Accepted
1402.08 Moving Goods and Services Between Companion Applications
1402.09 Use of Registered Marks Inappropriate in Identifications
1402.10 Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications
1402.11 Identification of Services
1402.11(a) Computer Services
1402.11(b) Information Services
1402.11(c) Association Services and “Promoting the Interest of” Services
1402.11(d) Charitable Services, Other than Monetary
1402.11(e) Consulting Services
1402.11(f) Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Items
1402.11(g) Recorded Entertainment Services
1402.11(h) Identification of “Bonus Programs”
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1402.11(i) Recognition of Industry Terms
1402.11(j) Issuing Awards
1402.12 Parentheses and Brackets Should Not be Used in Identifications of Goods and Services
1402.13 Requirement For Amendment of Portion of Identification of Goods/Services
1402.14 Identification of Goods/Services Must Conform to Rules and Policies in Effect at the Time Registration is Sought
1402.15 Procedures for Processing Unacceptable Amendments to Identifications
1403 Combined or Multiple-Class Application
1403.01 Requirements for Combined or Multiple-Class Application
1403.02 Amendment of Combined or Multiple-Class Application
1403.02(a) Deletion of Classes
1403.02(b) Correction of Classification
1403.02(c) Addition of Classes
1403.03 Dividing of Combined or Multiple-Class Application
1403.04 Combined or Multiple-Class Marks in Official Gazette
1403.05 Refusals and Oppositions as to Less Than All the Classes in a Multiple Class Application
1403.06 Fees for Action After Filing, Multiple Classes
1403.07 Surrender or Amendment in Multiple-Class Registrations
1401 Classification
1401.01 Statutory Authority
Section 30 of the Trademark Act, 15 U.S.C. §1112, provides authority for establishing a classification system. That section states, in part, as follows:
The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.
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1401.02 International Trademark Classification Adopted
As of September 1, 1973, the international classification of goods and services is the primary classification used by the United States, and it applies to all applications filed on or after September 1, 1973, and their resulting registrations, for all statutory purposes. See 37 C.F.R. §2.85(a). Unless otherwise indicated, references in this manual to class refer to the international class.
Prior to September 1, 1973, the United States used its own classification of goods and services, which is different from the international classification. The prior United States classification continues to govern for all statutory purposes for trademark applications filed on or before August 31, 1973, and all registrations issued on the basis of an application filed on or before August 31, 1973, unless the owner of the registration amends the registration to adopt international classification. 37 C.F.R. §2.85(b).
If a registration issued under the United States classification system, the owner of the registration may voluntarily amend to reclassify under the international classification system, pursuant to §7(e) of the Trademark Act, 15 U.S.C. §1057(e), if the owner pays the required fee. 37 C.F.R. §§2.6 and 2.85(e)(3). See TMEP §1609.04.
Classification schedules are set forth in Part 6 of the Trademark Rules of Practice. See 37 C.F.R. §6.1 for the international classification schedule for goods and services, 37 C.F.R. §6.2 for the prior United States classification schedule for goods and services, 37 C.F.R. §6.3 for certification marks, and 37 C.F.R. §6.4 for collective membership marks.
1401.02(a) Headings of International Trademark Classes
International trademark classification, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks (9th ed. 2006), published by the World Intellectual Property Organization (“WIPO”). See TMEP §1401.02(c) for further information.
The general remarks, class numbers, class headings, and explanatory notes for each international trademark class are as follows. (The word or words in parentheses following the class numbers are short titles for the classes that are used exclusively in the United States Patent and Trademark Office (“USPTO”) and are not part of the official text of the Nice Union classes. See TMEP §1401.02(b).)
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GENERAL REMARKS
The indications of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong. The Alphabetical List should therefore be consulted in order to ascertain the exact classification of each individual product or service.
Goods
If a product cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:
(a) A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
(b) A finished product which is a multipurpose composite object (e.g., clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes. If those functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, are to be applied.
(c) Raw materials, unworked or semi-worked, are in principle classified according to the material of which they consist.
(d) Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.
(e) When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is in principle classified according to the material which predominates.
(f) Cases adapted to the product they are intended to contain are in principle classified in the same class as the product.
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Services
If a service cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:
(a) Services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes or, if not specified, by analogy with other comparable services indicated in the Alphabetical List.
(b) Rental services are in principle classified in the same classes as the services provided by means of the rented objects (e.g., Rental of telephones, covered by Cl. 38).
(c) Services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation, e.g., transportation consultancy (Cl. 39), business management consultancy (Cl. 35), financial consultancy (Cl. 36), beauty consultancy (Cl. 44). The rendering of the advice, information or consultancy by electronic means (e.g., telephone, computer) does not affect the classification of these services.
GOODS
CLASS 1
(Chemicals)
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Explanatory Note
Class 1 includes mainly chemical products used in industry, science and agriculture, including those which go to the making of products belonging to other classes.
This Class includes, in particular:
• compost; • salt for preserving other than for foodstuffs.
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This Class does not include, in particular:
• raw natural resins (Cl. 2); • chemical products for use in medical science (Cl. 5); • fungicides, herbicides and preparations for destroying vermin (Cl. 5); • adhesives for stationery or household purposes (Cl. 16); • salt for preserving foodstuffs (Cl. 30); • straw mulch (Cl. 31).
CLASS 2
(Paints)
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Explanatory Note
Class 2 includes mainly paints, colorants and preparations used for the protection against corrosion.
This Class includes, in particular:
• paints, varnishes and lacquers for industry, handicrafts and arts; • dyestuffs for clothing; • colorants for foodstuffs and beverages.
This Class does not include, in particular:
• unprocessed artificial resins (Cl. 1); • laundry blueing (Cl. 3); • cosmetic dyes (Cl. 3); • paint boxes (articles for use in school) (Cl. 16); • insulating paints and varnishes (Cl. 17).
CLASS 3
(Cosmetics and cleaning preparations)
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Explanatory Note
Class 3 includes mainly cleaning preparations and toilet preparations.
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This Class includes, in particular:
• deodorants for personal use; • sanitary preparations being toiletries.
This Class does not include, in particular:
• chemical chimney cleaners (Cl. 1); • degreasing preparations for use in manufacturing processes (Cl. 1); • deodorants other than for personal use (Cl. 5); • sharpening stones and grindstones (hand tools) (Cl. 8).
CLASS 4
(Lubricants and fuels)
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Explanatory Note
Class 4 includes mainly industrial oils and greases, fuels and illuminants.
This Class does not include, in particular:
• certain special industrial oils and greases (consult the Alphabetical List of Goods).
CLASS 5
(Pharmaceuticals)
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Explanatory Note
Class 5 includes mainly pharmaceuticals and other preparations for medical purposes.
This Class includes, in particular:
• sanitary preparations for personal hygiene, other than toiletries; • deodorants other than for personal use; • cigarettes without tobacco, for medical purposes.
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This Class does not include, in particular:
• sanitary preparations being toiletries (Cl. 3); • deodorants for personal use (Cl. 3); • supportive bandages (Cl. 10).
CLASS 6
(Metal goods)
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Explanatory Note
Class 6 includes mainly unwrought and partly wrought common metals as well as simple products made of them.
This Class does not include, in particular:
• bauxite (Cl. 1); • mercury, antimony, alkaline and alkaline-earth metals (Cl. 1); • metals in foil and powder form for painters, decorators, printers and
artists (Cl. 2).
CLASS 7
(Machinery)
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Explanatory Note
Class 7 includes mainly machines, machine tools, motors and engines.
This Class includes, in particular:
• parts of motors and engines (of all kinds); • electric cleaning machines and apparatus.
1400-10 October 2009
This Class does not include, in particular:
• certain special machines and machine tools (consult the Alphabetical List of Goods);
• hand tools and implements, hand-operated (Cl. 8); • motors and engines for land vehicles (Cl. 12).
CLASS 8
(Hand tools)
Hand tools and implements (hand-operated); cutlery; side arms; razors.
Explanatory Note
Class 8 includes mainly hand-operated implements used as tools in the respective professions.
This Class includes, in particular:
• cutlery of precious metals; • electric razors and clippers (hand instruments).
This Class does not include, in particular:
• certain special instruments (consult the Alphabetical List of Goods); • machine tools and implements driven by a motor (Cl. 7); • surgical cutlery (Cl. 10); • paper knives (Cl. 16); • fencing weapons (Cl. 28).
CLASS 9
(Electrical and scientific apparatus)
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
1400-11 October 2009
Explanatory Note
This Class includes, in particular:
• apparatus and instruments for scientific research in laboratories; • apparatus and instruments for controlling ships, such as apparatus and
instruments for measuring and for transmitting orders; • the following electrical apparatus and instruments:
(a) certain electrothermic tools and apparatus, such as electric soldering irons, electric flat irons which, if they were not electric, would belong to Class 8;
(b) apparatus and devices which, if not electrical, would be listed in various classes, i.e., electrically heated clothing, cigar-lighters for automobiles;
• protractors; • punched card office machines; • amusement apparatus adapted for use with an external display screen
or monitor; • all computer programs and software regardless of recording media or
means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network.
This Class does not include, in particular:
• the following electrical apparatus and instruments:
(a) electromechanical apparatus for the kitchen (grinders and mixers for foodstuffs, fruit presses, electrical coffee mills, etc.), and certain other apparatus and instruments driven by an electrical motor, all coming under Class 7;
(b) electric razors and clippers (hand instruments) (Cl. 8);
(c) electric toothbrushes and combs (Cl. 21);
(d) electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (Cl. 11);
• clocks and watches and other chronometric instruments (Cl. 14); • control clocks (Cl. 14).
1400-12 October 2009
CLASS 10
(Medical apparatus)
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Explanatory Note
Class 10 includes mainly medical apparatus, instruments and articles.
This Class includes, in particular:
• special furniture for medical use; • hygienic rubber articles (consult the Alphabetical List of Goods); • supportive bandages.
CLASS 11
(Environmental control apparatus)
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Explanatory Note
This Class includes, in particular:
• air conditioning apparatus; • bedwarmers, hot water bottles, warming pans, electric or non-electric; • electrically heated cushions (pads) and blankets, not for medical
purposes; • electric kettles; • electric cooking utensils.
This Class does not include, in particular:
• steam producing apparatus (parts of machines) (Cl. 7); • electrically heated clothing (Cl. 9).
CLASS 12
(Vehicles)
Vehicles; apparatus for locomotion by land, air or water.
1400-13 October 2009
Explanatory Note
This Class includes, in particular:
• motors and engines for land vehicles; • couplings and transmission components for land vehicles; • air cushion vehicles.
This Class does not include, in particular:
• certain parts of vehicles (consult the Alphabetical List of Goods); • railway material of metal (Cl. 6); • motors, engines, couplings and transmission components other than
for land vehicles (Cl. 7); • parts of motors and engines (of all kinds) (Cl. 7).
CLASS 13
(Firearms)
Firearms; ammunition and projectiles; explosives; fireworks.
Explanatory Note
Class 13 includes mainly firearms and pyrotechnical products.
This Class does not include, in particular:
• matches (Cl. 34).
CLASS 14
(Jewelry)
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Explanatory Note
Class 14 includes mainly precious metals, goods in precious metals not included in other classes and, in general jewellery, clocks and watches.
This Class includes, in particular:
• jewellery (i.e., imitation jewelry and jewelry of precious metal and stones);
• cuff links, tie pins.
1400-14 October 2009
This Class does not include, in particular:
• goods in precious metals classified according to their function or purpose, for example, metals in foil and powder form for painters, decorators, printers and artists (Cl. 2), amalgam of gold for dentists (Cl. 5), cutlery (Cl. 8), electric contacts (Cl. 9), pen nibs of gold (Cl. 16), teapots (Cl. 21), gold and silver embroidery (Cl. 26), cigar boxes (Cl. 34);
• objects of art not of precious metals (classified according to the material of which they consist).
CLASS 15
(Musical Instruments)
Musical instruments.
Explanatory Note
This Class includes, in particular:
• mechanical pianos and their accessories; • musical boxes; • electrical and electronic musical instruments.
This Class does not include, in particular:
• apparatus for the recording, transmission, amplification and reproduction of sound (Cl. 9).
CLASS 16
(Paper goods and printed matter)
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.
Explanatory Note
Class 16 includes mainly paper, goods made from that material and office requisites.
This Class includes, in particular:
• paper knives; • duplicators;
1400-15 October 2009
• plastic sheets, sacks and bags for wrapping and packaging.
This Class does not include, in particular:
• certain goods made of paper and cardboard (consult the Alphabetical List of Goods);
• colours (Cl. 2); • hand tools for artists (for example, spatulas, sculptors’ chisels) (Cl. 8).
CLASS 17
(Rubber goods)
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Explanatory Note
Class 17 includes mainly electrical, thermal and acoustic insulating materials and plastics, being for use in manufacture in the form of sheets, blocks and rods.
This Class includes, in particular:
• rubber material for recapping tyres; • padding and stuffing materials of rubber or plastics; • floating anti-pollution barriers.
CLASS 18
(Leather goods)
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Explanatory Note
Class 18 includes mainly leather, leather imitations, travel goods not included in other classes and saddlery.
This Class does not include, in particular:
• clothing, footwear, headgear (consult the Alphabetical List of Goods).
1400-16 October 2009
CLASS 19
(Nonmetallic building materials)
Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Explanatory Note
Class 19 includes mainly non-metallic building materials.
This Class includes, in particular:
• semi-worked woods (for example, beams, planks, panels); • veneers; • building glass (for example, floor slabs, glass tiles); • glass granules for marking out roads; • letter boxes of masonry.
This Class does not include, in particular:
• cement preservatives and cement-waterproofing preparations (Cl. 1); • fireproofing preparations (Cl. 1).
CLASS 20
(Furniture and articles not otherwise classified)
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Explanatory Note
Class 20 includes mainly furniture and its parts and plastic goods, not included in other classes.
This Class includes, in particular:
• metal furniture and furniture for camping; • bedding (for example, mattresses, spring mattresses, pillows); • looking glasses and furnishing or toilet mirrors; • registration number plates not of metal; • letter boxes not of metal or masonry.
1400-17 October 2009
This Class does not include, in particular:
• certain special types of mirrors, classified according to their function or purpose (consult the Alphabetical List of Goods);
• special furniture for laboratories (Cl. 9); • special furniture for medical use (Cl. 10); • bedding linen (Cl. 24); • eiderdowns (Cl. 24).
CLASS 21
(Housewares and glass)
Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Explanatory Note
Class 21 includes mainly small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain.
This Class includes, in particular:
• utensils and containers for household and kitchen use, for example, kitchen utensils, pails, pans of iron, of aluminum, of plastics or of other materials, small hand-operated apparatus for mincing, grinding, pressing, etc.;
• electric combs; • electric toothbrushes; • dish stands and decanter stands.
This Class does not include, in particular:
• certain goods made of glass, porcelain and earthenware (consult the Alphabetical List of Goods);
• cleaning preparations, soaps, etc. (Cl. 3); • small apparatus for mincing, grinding, pressing, etc., driven by
electricity (Cl. 7); • razors and shaving apparatus, clippers (hand instruments), metal
implements and utensils for manicure and pedicure (Cl. 8); • cooking utensils, electric (Cl. 11); • toilet mirrors (Cl. 20). •
1400-18 October 2009
CLASS 22
(Cordage and fibers)
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Explanatory Note
Class 22 includes mainly rope and sail manufacture products, padding and stuffing materials and raw fibrous textile materials.
This Class includes, in particular:
• cords and twines in natural or artificial textile fibres, paper or plastics.
This Class does not include, in particular:
• certain nets, sacks and bags (consult the Alphabetical List of Goods); • strings for musical instruments (Cl. 15).
CLASS 23
(Yarns and threads)
Yarns and threads, for textile use.
CLASS 24
(Fabrics)
Textiles and textile goods, not included in other classes; bed and table covers.
Explanatory Note
Class 24 includes mainly textiles (piece goods) and textile covers for household use.
This Class includes, in particular:
• bedding linen of paper.
This Class does not include, in particular:
• certain special textiles (consult the Alphabetical List of Goods); • electrically heated blankets, for medical purposes (Cl. 10) and not for
medical purposes (Cl. 11); • table linen of paper (Cl. 16);
1400-19 October 2009
• horse blankets (Cl. 18).
CLASS 25
(Clothing)
Clothing, footwear, headgear.
Explanatory Note
This Class does not include, in particular:
• certain clothing and footwear for special use (consult the Alphabetical List of Goods).
CLASS 26
(Fancy goods)
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Explanatory Note
Class 26 includes mainly dressmakers’ articles.
This Class includes, in particular:
• slide fasteners.
This Class does not include, in particular:
• certain special types of hooks (consult the Alphabetical List of Goods); • certain special types of needles (consult the Alphabetical List of
Goods); • yarns and threads for textile use (Cl. 23).
CLASS 27
(Floor coverings)
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
Explanatory Note
Class 27 includes mainly products intended to be added as furnishings to previously constructed floors and walls.
This Class does not include, in particular:
1400-20 October 2009
• wooden flooring (Cl. 19)
CLASS 28
(Toys and sporting goods)
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Explanatory Note
This Class includes, in particular:
• fishing tackle; • equipment for various sports and games.
This Class does not include, in particular:
• Christmas tree candles (Cl. 4); • diving equipment (Cl. 9); • amusement apparatus adapted for use with an external display screen
or monitor (Cl. 9); • electrical lamps (garlands) for Christmas trees (Cl. 11); • fishing nets (Cl. 22); • clothing for gymnastics and sports (Cl. 25); • confectionery and chocolate decorations for Christmas trees (Cl. 30).
CLASS 29
(Meats and processed foods)
Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
Explanatory Note
Class 29 includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.
This Class includes, in particular:
• milk beverages (milk predominating).
This Class does not include, in particular:
• certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
1400-21 October 2009
• baby food (Cl. 5); • dietetic substances adapted for medical use (Cl. 5); • salad dressings (Cl. 30); • fertilised eggs for hatching (Cl. 31); • foodstuffs for animals (Cl. 31); • live animals (Cl. 31).
CLASS 30
(Staple foods)
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Explanatory Note
Class 30 includes mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food.
This Class includes, in particular:
• beverages with coffee, cocoa or chocolate base; • cereals prepared for human consumption (for example, oat flakes and
those made of other cereals).
This Class does not include, in particular:
• certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
• salt for preserving other than for foodstuffs (Cl. 1); • medicinal teas and dietetic substances adapted for medical use (Cl. 5); • baby food (Cl. 5); • raw cereals (Cl. 31); • foodstuffs for animals (Cl. 31).
CLASS 31
(Natural agricultural products)
Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
1400-22 October 2009
Explanatory Note
Class 31 includes mainly land products not having been subjected to any form of preparation for consumption, live animals and plants as well as foodstuffs for animals.
This Class includes, in particular:
• raw woods; • raw cereals; • fertilised eggs for hatching; • mollusca and crustacea (live).
This Class does not include, in particular:
• cultures of micro-organisms and leeches for medical purposes (Cl. 5); • semi-worked woods (Cl. 19); • artificial fishing bait (Cl. 28); • rice (Cl. 30); • tobacco (Cl. 34).
CLASS 32
(Light beverages)
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Explanatory Note
Class 32 includes mainly non-alcoholic beverages, as well as beer.
This Class includes, in particular:
• de-alcoholised drinks.
This Class does not include, in particular:
• beverages for medical purposes (Cl. 5); • milk beverages (milk predominating) (Cl. 29); • beverages with coffee, cocoa or chocolate base (Cl. 30).
CLASS 33
(Wine and spirits)
Alcoholic beverages (except beers).
1400-23 October 2009
Explanatory Note
This Class does not include, in particular:
• medicinal drinks (Cl. 5); • de-alcoholised drinks (Cl. 32).
CLASS 34
(Smokers’ articles)
Tobacco; smokers' articles; matches.
Explanatory Note
This Class includes, in particular:
• tobacco substitutes (not for medical purposes).
This Class does not include, in particular:
• cigarettes without tobacco, for medical purposes (Cl. 5);
SERVICES
CLASS 35
(Advertising and business)
Advertising; business management; business administration; office functions.
Explanatory Note
Class 35 includes mainly services rendered by persons or organizations principally with the object of:
(1) help in the working or management of a commercial undertaking, or
(2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise,
as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.
This Class includes, in particular:
• the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by
1400-24 October 2009
means of electronic media, for example, through web sites or television shopping programmes.
• services consisting of the registration, transcription, composition, compilation, or systematization of written communications and registrations, and also the compilation of mathematical or statistical data;
• services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This Class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio.
This Class does not include, in particular:
• services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise (consult the Alphabetical List of Services).
CLASS 36
(Insurance and financial)
Insurance; financial affairs; monetary affairs; real estate affairs.
Explanatory Note
Class 36 includes mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds.
This Class includes, in particular:
• services relating to financial or monetary affairs comprise the following:
(a) services of all the banking establishments, or institutions connected with them such as exchange brokers or clearing services;
(b) services of credit institutions other than banks such as co- operative credit associations, individual financial companies, lenders, etc.;
(c) services of “investment trusts,” of holding companies;
(d) services of brokers dealing in shares and property;
(e) services connected with monetary affairs vouched for by trustees;
(f) services rendered in connection with the issue of travellers’ cheques and letters of credit;
1400-25 October 2009
• services of realty administrators of buildings, i.e., services of letting or valuation, or financing;
• services dealing with insurance such as services rendered by agents or brokers engaged in insurance, services rendered to insured, and insurance underwriting services.
CLASS 37
(Building construction and repair)
Building construction; repair; installation services.
Explanatory Note
Class 37 includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties.
This Class includes, in particular:
• services relating to the construction of buildings, roads, bridges, dams or transmission lines and services of undertakings specializing in the field of construction such as those of painters, plumbers, heating installers or roofers;
• services auxiliary to construction services like inspections of construction plans;
• services of shipbuilding; • services consisting of hiring of tools or building materials; • repair services, i.e., services which undertake to put any object into
good condition after wear, damage, deterioration or partial destruction (restoration of an existing building or another object that has become imperfect and is to be restored to its original condition);
• various repair services such as those in the fields of electricity, furniture, instruments, tools, etc.;
• services of maintenance for preserving an object in its original condition without changing any of its properties (for the difference between this Class and Class 40 see the Explanatory Note of Class 40).
This Class does not include, in particular:
• services consisting of storage of goods such as clothes or vehicles (Cl. 39);
• services connected with dyeing of cloth or clothes (Cl. 40).
1400-26 October 2009
CLASS 38
(Telecommunications)
Telecommunications.
Explanatory Note
Class 38 includes mainly services allowing at least one person to communicate with another by a sensory means. Such services include those which:
(1) allow one person to talk to another,
(2) transmit messages from one person to another, and
(3) place a person in oral or visual communication with another (radio and television).
This Class includes, in particular:
• services which consist essentially of the diffusion of radio or television programmes.
This Class does not include, in particular:
• radio advertising services (Cl. 35).
CLASS 39
(Transportation and storage)
Transport; packaging and storage of goods; travel arrangement.
Explanatory Note
Class 39 includes mainly services rendered in transporting people or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding.
This Class includes, in particular:
• services rendered by companies exploiting stations, bridges, rail-road ferries, etc., used by the transporter;
• services connected with the hiring of transport vehicles; • services connected with maritime tugs, unloading, the functioning of
ports and docks and the salvaging of wrecked ships and their cargoes; • services connected with the functioning of airports;
1400-27 October 2009
• services connected with the packaging and parcelling of goods before dispatch;
• services consisting of information about journeys or the transport of goods by brokers and tourist agencies, information relating to tariffs, timetables and methods of transport;
• services relating to the inspection of vehicles or goods before transport.
This Class does not include, in particular:
• services relating to advertising transport undertakings such as the distribution of prospectuses or advertising on the radio (Cl. 35);
• services relating to the issuing of travellers’ cheques or letters of credit by brokers or travel agents (Cl. 36);
• services relating to insurances (commercial, fire or life) during the transport of persons or goods (Cl. 36);
• services rendered by the maintenance and repair of vehicles, nor the maintenance or repair of objects connected with the transport of persons or goods (Cl. 37);
• services relating to reservation of rooms in a hotel by travel agents or brokers (Cl. 43).
CLASS 40
(Treatment of materials)
Treatment of materials.
Explanatory Note
Class 40 includes mainly services not included in other classes, rendered by the mechanical or chemical processing or transformation of objects or inorganic or organic substances.
For the purposes of classification, the mark is considered a service mark only in cases where processing or transformation is effected for the account of another person. A mark is considered a trade mark in all cases where the substance or object is marketed by the person who processed or transformed it.
This Class includes, in particular:
• services relating to transformation of an object or substance and any process involving a change in its essential properties (for example, dyeing a garment); consequently, a maintenance service, although usually in Class 37, is included in Class 40 if it entails such a change (for example, the chroming of motor vehicle bumpers);
1400-28 October 2009
• services of material treatment which may be present during the production of any substance or object other than a building; for example, services which involve cutting, shaping, polishing by abrasion or metal coating.
This Class does not include, in particular:
• repair services (Cl. 37).
CLASS 41
(Education and entertainment)
Education; providing of training; entertainment; sporting and cultural activities.
Explanatory Note
Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.
This Class includes, in particular:
• services consisting of all forms of education of persons or training of animals;
• services having the basic aim of the entertainment, amusement or recreation of people;
• presentation of works of visual art or literature to the public for cultural or educational purposes.
CLASS 42
(Computer and scientific)
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Explanatory Note
Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.
This Class includes, in particular:
• the services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields;
1400-29 October 2009
• scientific research services for medical purposes.
This Class does not include, in particular:
• business research and evaluations (Cl. 35); • word processing and computer file management services (Cl. 35); • financial and fiscal evaluations (Cl. 36); • mining and oil extraction (Cl. 37); • computer (hardware) installation and repair services (Cl. 37); • services provided by the members of professions such as medical
doctors, veterinary surgeons, psychoanalysts (Cl. 44); • medical treatment services (Cl. 44); • garden design (Cl. 44); • legal services (Cl. 45).
CLASS 43
(Hotels and restaurants)
Services for providing food and drink; temporary accommodation.
Explanatory Note
Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation.
This Class includes, in particular:
• reservation services for travellers’ accommodation, particularly through travel agencies or brokers;
• boarding for animals.
This Class does not include, in particular:
• rental services for real estate such as houses, flats, etc., for permanent use (Cl. 36);
• arranging travel by tourist agencies (Cl. 39); • preservation services for food and drink (Cl. 40); • discotheque services (Cl. 41); • boarding schools (Cl. 41); • rest and convalescent homes (Cl. 44).
1400-30 October 2009
CLASS 44
(Medical, beauty & agricultural)
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Explanatory Note
Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry.
This Class includes, in particular:
• medical analysis services relating to the treatment of persons (such as x-ray examinations and taking of blood samples);
• artificial insemination services; • pharmacy advice; • animal breeding; • services relating to the growing of plants such as gardening; • services relating to floral art such as floral compositions as well as
garden design.
This Class does not include, in particular:
• vermin exterminating (other than for agriculture, horticulture and forestry) (Cl. 37);
• installation and repair services for irrigation systems (Cl. 37); • ambulance transport (Cl. 39); • animal slaughtering services and taxidermy (Cl. 40); • timber felling and processing (Cl. 40); • animal training services (Cl. 41); • health clubs for physical exercise (Cl. 41); • scientific research services for medical purposes (Cl. 42); • boarding for animals (Cl. 43); • retirement homes (Cl. 43).
CLASS 45
(Personal)
Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
1400-31 October 2009
Explanatory Note
This Class includes, in particular:
• services rendered by lawyers to individuals, groups of individuals, organizations and enterprises;
• investigation and surveillance services relating to the safety of persons and entities;
• services provided to individuals in relation with social events, such as social escort services, matrimonial agencies, funeral services.
This Class does not include, in particular:
• professional services giving direct aid in the operations or functions of a commercial undertaking (Cl. 35);
• services relating to financial or monetary affairs and services dealing with insurance (Cl. 36);
• escorting of travellers (Cl. 39); • security transport (Cl. 39); • services consisting of all forms of education of persons (Cl. 41); • performances of singers and dancers (Cl. 41); • computer services for the protection of software (Cl. 42); • services provided by others to give medical, hygienic or beauty care for
human beings or animals (Cl. 44); • certain rental services (consult the Alphabetical List of Services and
General Remark (b) relating to the classification of services).
1401.02(b) Short Titles for International Trademark Classes
The USPTO associates the following word titles with the respective international trademark class numbers:
GOODS
1. Chemicals 2. Paints 3. Cosmetics and cleaning preparations 4. Lubricants and fuels 5. Pharmaceuticals 6. Metal goods 7. Machinery 8. Hand tools 9. Electrical and scientific apparatus 10. Medical apparatus 11. Environmental control apparatus 12. Vehicles 13. Firearms
1400-32 October 2009
14. Jewelry 15. Musical instruments 16. Paper goods and printed matter 17. Rubber goods 18. Leather goods 19. Non-metallic building materials 20. Furniture and articles not otherwise classified 21. Housewares and glass 22. Cordage and fibers 23. Yarns and threads 24. Fabrics 25. Clothing 26. Fancy goods 27. Floor coverings 28. Toys and sporting goods 29. Meats and processed foods 30. Staple foods 31. Natural agricultural products 32. Light beverages 33. Wines and spirits 34. Smokers’ articles
SERVICES
35. Advertising and business 36. Insurance and financial 37. Building construction and repair 38. Telecommunications 39. Transportation and storage 40. Treatment of materials 41. Education and entertainment 42. Computer and scientific 43. Hotels and restaurants 44. Medical, beauty and agricultural 45. Personal and legal
These short titles are not an official part of the international classification. Their purpose is to provide a means to quickly identify the general content of numbered international classes. By their nature, these titles will not necessarily disclose the classification of specific items. The titles are not designed to be used for classification, but only as information to assist in the identification of numbered classes. To determine the classification of particular goods and services, it is necessary to refer to the Alphabetical List of Goods and Services, the class headings of the international classes, and Explanatory Notes in the International Classification of Goods and Services for the Purposes of the Registration of Marks (9th ed. 2006), published by WIPO. The full names of international classes are set forth in 37 C.F.R. §6.1.
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The short titles are printed in the Official Gazette in association with the international class numbers under MARKS PUBLISHED FOR OPPOSITION, Sections 1 and 2; TRADEMARK REGISTRATIONS ISSUED, PRINCIPAL REGISTER, Section 1; TRADEMARK REGISTRATIONS ISSUED UNDER SECTION 1(d), Sections 1 and 2; and SUPPLEMENTAL REGISTER, Sections 1 and 2.
The international trademark classification was adopted by the United States as its system of classification as of September 1, 1973. See 911 TMOG 210 (June 26, 1973). The use of short titles was announced in a notice at 924 TMOG 155 (July 16, 1974).
1401.02(c) International Alphabetical List
Additional general guidance concerning identifications may be found in the “Alphabetical List” of goods and services appearing in the International Classification of Goods and Services for the Purposes of the Registration of Marks Under the Nice Agreement-Part I (9th ed. 2006), published by the World Intellectual Property Organization, 34, chemin des Colombettes, 1211 Geneva 20 Switzerland. (Specify the English edition when ordering.) The International Classification is available at http://www.wipo.int/classifications/en/index.html. However, because the international list was developed to classify goods and services and not to identify specific goods and services, most entries will not be sufficiently definite to use in an identification of goods and/or services. If such entries are provided as identifications, the USPTO exercises its discretion to require greater particularity. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).
The USPTO’s Acceptable Identification of Goods and Services Manual (“USPTO ID Manual”) should be used to determine whether an identification is sufficiently definite. See TMEP §1402.04.
1401.03 Designation of Class
In an application for registration of a mark, the applicant should designate the international class number(s) that are appropriate for the identified goods and/or services whenever the information is known. 37 C.F.R. §2.32(a)(7). See TMEP §1401.02(a) for the international classification schedule with explanatory notes.
In an application under §1 or §44, incorrect classification will be corrected by amendment. See TMEP §1401.03(b).
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1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44
Sometimes, a product could be classified in more than one class. Some products are classified differently depending on the type of material of which the product is composed, or a particular use of the product. For example, plastic statuettes are in Class 20 while glass statuettes are in Class 21; reagents for research purposes are in Class 1 while reagents for medical use are in Class 5. Generally, in applications under §1 or §44 of the Trademark Act, prior to their assignment to an examining attorney, the USPTO retains the class number designated by the applicant, in the absence of any information clearly contradicting that classification. The applicant may be asked for further clarification for classification of goods of this type during the examination of the application. If the wording in the identification is broad enough to encompass more than one class, amendment will be required. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (“chronographs” held indefinite because it includes both time recording devices in Class 9 and watches in Class 14). Also, if the examining attorney determines that the class designated by the applicant is incorrect, the examining attorney will require reclassification.
1401.03(b) Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44
In an application under §1 or §44 of the Trademark Act, if the applicant does not designate a class number(s), the USPTO will do so. If the class number(s) indicated by the applicant is clearly wrong (e.g., goods are classified in a service class), the USPTO will change the classification, either prior to or during examination.
Upon examination, the classification must be amended if the class numbers are incorrect. When the examining attorney requires or recommends an amendment of the identification of goods and/or services that would necessitate an amendment of the classification, the examining attorney should also require the applicant to amend the classification.
If an incorrect class number was designated by the Pre-Examination Section, and the examining attorney must issue an Office action, he or she must also inform the applicant of the correct class number for the identified goods and/or services, and require amendment of the classification. If it is unnecessary to issue an Office action, the examining attorney must ensure that the correct classification is entered into the electronic records of the USPTO.
The examining attorney may amend or correct classification through an examiner’s amendment, without prior authorization by the applicant.
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Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm’r Pats. 1999). See TMEP §707.02.
Before approving an application for publication, the examining attorney must check to make sure that the properly assigned class is reflected in the electronic records of the USPTO.
1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44
The applicant should make an initial effort at classification, using the Alphabetical List of Goods and Services. In an application under §1 or §44 of the Trademark Act, when an application and fee is filed for a single class, but the identification lists a large number of items that obviously involve many classes, the examining attorney will require the applicant to properly classify the items. Class designations must be determined and fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes. See TMEP §810.01.
1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications
37 C.F.R. §2.85(d). Section 66(a) applications and registered extensions of protection. In an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization, unless the International Bureau corrects the classification. Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.
In an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), i.e., a request for protection of an international registration to the United States pursuant to the Madrid Protocol, the International Bureau of the World Intellectual Property Organization (“IB”) controls classification. Article 3(2) of the Protocol. The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration. Therefore, the international classification of goods and/or services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB, even if the IB’s classification of goods/services in the §66(a) application is different from the classification set forth in the USPTO ID Manual. Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application. 37 C.F.R. §2.85(d).
Accordingly, if the mark in a §66(a) application appears to be a certification or collective membership mark, the USPTO will not reclassify it into United
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States Class A, B, or 200. However, the applicant must comply with all other United States requirements for certification and collective membership marks, regardless of the classification chosen by the IB. See TMEP §§1304 et seq., regarding collective membership marks, TMEP §§1306 et seq. regarding certification marks, and TMEP §§1904.02(d) regarding §66(a) applications for these types of marks.
For purposes of identification of goods or services, the examining attorney will examine a §66(a) application according to the same standards of specificity used in examining applications under §§1 and 44 of the Trademark Act. That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO ID Manual whenever possible. See TMEP §§1904.02(c) et seq.
See also TMEP §§1402.01(c) and 1904.02(b).
1401.04 Classification Determines Number of Fees
Extract from 15 U.S.C. §1112. *** The applicant may apply to register a mark for any or all of the goods or services on or in connection with which he or she is using or has a bona fide intention to use the mark in commerce: Provided, That if the Director by regulation permits the filing of an application for the registration of a mark for goods or services which fall within a plurality of classes, a fee equaling the sum of the fees for filing an application in each class shall be paid, and the Director may issue a single certificate of registration for such mark.
Classification is the basis for determining the number of fees that must be paid. In an application under §1 or §44 of the Trademark Act, a fee is required for each class.
In an application under §1 or §44, if the application sets forth goods or services in more than one class and pays insufficient fees to cover all the classes, the applicant must either amend the application to restrict the goods or services to the number of classes for which the fee has been paid, or submit additional fees to cover all the goods or services set forth in the identification. The fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes. TMEP §810.01.
If, with the original application, the applicant submits fees for more classes than are validly represented in the application, the fees that have been overpaid in error will be refunded. See TMEP §405.04 regarding refunds.
In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO pursuant to the provisions of the Madrid Protocol and the Common Regulations Under the
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Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”). The examining attorney will not question the sufficiency of the filing fee in a §66(a) application. The classification in a §66(a) application cannot be changed, and classes cannot be added. See TMEP §1401.03(d) for further information.
1401.04(a) Prior United States Classification System
Prior to the adoption of the International Classification in 1973, the United States Classification was the primary classification used in the USPTO. After adoption of the International Classification, the United States Classification became a secondary classification system. United States classes are still assigned to all applications by a computerized system. Each international class is coordinated with the United States classes that are most frequently associated with it. Neither examining attorneys nor any other USPTO personnel have the authority or capability of altering these automatically assigned secondary United States Classification designations.
1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid
An application may list, in connection with each international class number designated, only goods or services that fall within that class. An applicant may apply to register a mark for any or all of the goods and/or services on or in connection with which the applicant is using or has a bona fide intent to use the mark in commerce, if the applicant submits a filing fee for each class. See 15 U.S.C. §1112; 37 C.F.R. §2.86(a). An application that includes more than one class of goods or services is called a combined or multiple-class application. See TMEP §§1403 et seq.
The applicant should designate only the number of classes for which a filing fee is submitted and should limit the specified goods and services to those within the particular class(es) designated. Thus, if a single filing fee is submitted, the applicant should designate only one class and should limit the goods or services specified in the identification to items in that class.
The examining attorney must require any necessary amendments to ensure that the classification is correct for the specified goods or services. In an application under §1 or §44 of the Trademark Act, if the applicant identifies goods or services that are classified in a greater number of classes than the classes for which filing fees have been paid, the examining attorney must require that the applicant either: (1) pay the additional fees; or (2) amend the identification to restrict the application to the number of classes for which fees have already been paid. See TMEP §§810.01 and 1403.02(c).
In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO, pursuant to the
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provisions of the Madrid Protocol and the Common Regs. The examining attorney will not question the sufficiency of the filing fee in a §66(a) application. The classification in a §66(a) application cannot be changed, and classes cannot be added. See TMEP §1401.03(d).
1401.05 Criteria on Which International Classification Is Based
The Alphabetical List of Goods and Services according to the International Classes contains information about the appropriate class for particular products and services. See TMEP §1401.02(c). See also the Explanatory Notes at the end of each class heading of goods or services. TMEP §1401.02(a). These notes explain the principles and differentiating lines on which the international classes are based.
Some general criteria have been formulated for placing goods or services in the international classes:
• A finished product is, in principle, classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
• A finished product which is a multipurpose composite object (e.g., clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes. If those functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, are to be applied.
• Raw materials, unworked or semi-worked, are classified, in principle, according to the material of which they consist.
• Goods intended to form part of another product are, in principle, classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.
• When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is, in principle, classified according to the material which predominates.
• Cases adapted to the product they are intended to contain are, in principle, classified in the same class as the product.
• Services are, in principle, classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes or, if not specified, by analogy with other comparable services indicated in the Alphabetical List.
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• Rental services are, in principle, classified in the same classes as the services provided by means of the rented objects (e.g., Rental of telephones, in Cl. 38).
• Services that provide advice, information, or consultation are, in principle, classified in the same classes as the services that correspond to the subject matter of the advice, information, or consultation, for example, transportation consultancy in Class 39, business management consultancy in Class 35, financial consultancy in Class 36, and beauty consultancy in Class 44. The rendering of the advice, information, or consultancy by electronic means (such as telephone or computer) does not affect the classification of these services. See TMEP §§1402.11(b) and (e).
See TMEP §1401.02(a).
As indicated above, in the international classification, considerable weight is given to the material of which goods are made.
A product may comprise items that are sold as a unit and that, if sold separately, would be classified in different classes. The identification in such cases should include wording to indicate that the goods are “sold as a unit.” The predominant elements should be listed first and the item will be classified accordingly.
Example - Computer software is classified in Class 9. Instructional manuals are classified in Class 16. The item “Computer software for investment management and instructional manuals related thereto, sold as a unit” would be classified in Class 9. “Instructional manuals in the field of investment management and computer software relating thereto, sold as a unit” would be classified in Class 16.
1401.05(a) Identification and Classification of Kits and Gift Baskets
The USPTO permits registration of a kit or gift basket in a single international class, even if the identification of goods lists items that are classified in other classes. Generally, kits are identified and classified in two ways. If the kit is for the purpose of making a single object, it would be classified by the item it is intended to make (e.g., kits for making bird feeders would be classified in Class 21, even though the individual components would be classified in other classes). If the applicant is willing to call its kit a "hobby craft kit" and indicate its purpose (e.g., hobby craft kit for making pot holders), the item can be classified in Class 28 as a kind of toy or amusement product.
If the kit is a combination of a number of items around a theme (e.g., first-aid kits, nail care kits, student "survival" kits), the class that includes the majority of individual items in the kit controls the classification for the entire kit. Thus,
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a first-aid kit comprising primarily bandages for skin wounds, antiseptic, and aspirin is classified in Class 5 even if it also includes tweezers (Class 8) and an instruction manual (Class 16). In such cases, the identification must indicate the type of kit and list the components, with the items in the predominant class listed first. If the components of the kit do not appear to have a predominant class (e.g., the kit contains two or three items, each in a different class), the applicant may elect which class(es) the kit should be in, but the identification must still list the goods that control the class first in the list of components. A few specific types of kits are listed in the USPTO ID Manual; other kits are classified on a case-by-case basis.
The same criteria are applied to the classification of gift baskets.
1401.05(b) Medical vs. Non-Medical Goods
It is sometimes difficult to determine whether certain pieces of apparatus are classified in Class 9 or Class 10. Class 9 goods include those used for scientific research or industrial purposes, while Class 10 goods are used for medical treatment or diagnostic purposes. This distinction may mean that the same goods could be classified in either class depending upon their use. However, even if the goods perform the same function, they are often different in nature, depending on whether they are for industrial or research use, or for medical treatment or diagnostic use. For example, a thermometer for medical use is in Class 10, while thermometers other than for medical use are in Class 9. While both items measure temperature, they are usually very different in nature.
Some goods are classified in Class 10 when they are for medical use and in another class when they are not for medical use. An item should be specified as being for medical use if it could be in a class other than Class 10 when not for medical use. For example, lasers for medical use are in Class 10, while lasers not for medical use are in Class 9. Items for use by invalids or handicapped individuals are also classified in Class 10. Thus, toilets adapted for handicapped persons are in Class 10, while toilets (without any further specification) are in Class 11. Finally, if an item is normally not classified in Class 10 (see the Class 11 example above), it is not necessary to specify that it is not for medical use when it is classified in its normal class. When that item is used for medical purposes, the medical use must be specified in order to justify its classification in Class 10. If it is possible for an item to be commonly used for medical or non-medical purposes, its purpose must be specified in the identification in order for it to be classified appropriately (see the example regarding lasers above).
1401.06 Specimen(s) as Related to Classification
As a general rule, the specimen(s) in an application under §1 of the Trademark Act helps to determine the correct classification. The examining
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attorney should carefully review the specimen to ensure that the identification and classification of the goods and/or services is accurate. If the information on the specimen and the wording of the identification differ, or if some significant characteristic shown in the specimen is omitted from the identification, the assigned class number may be incorrect. See TMEP §1402.05. However, the examining attorney must remember that, generally, a specimen need only support use of the mark on one item in each class of goods or services set forth in an application. See TMEP §904.01(a).
1401.06(a) Specimen Discloses Special Characteristics
The classification of goods could be affected if the specimen shows that the mark identifies a composition, an ingredient, or a part that exists in the market only as a component of another product, but the identification does not reveal that the item exists only as a component of a specified product.
If the specimen indicates that the goods are promoted for industrial use only, this should be reflected in the identification when it affects the designation of the correct class. For example, detergents for use in industrial and manufacturing processes are classified in Class 1, not in Class 3 where other detergents are classified.
If the specimen shows that the mark identifies a structural part of a machine, this should be reflected in the identification, because parts for machines are generally classified with the machine if the part has no applicability elsewhere.
If the mark is used or intended to be used on raw materials such as plastics or resins which may be marketed in a variety of forms (such as sheets, powders, or solutions, or as materials that may be either natural or synthetic), these facts should be indicated in the identification of the goods. This is important because some raw materials are classified in several international classes; for example, plastic in sheet form is in a different class from plastic in powder or pellet form, and synthetic materials are in a different class from those that are natural. Usually, a specimen will disclose these characteristics of raw materials.
If the specimen indicates that a product is made of a particular material, the identification should specify the material, because many finished products are classified on the basis of the material composition of the article. Generally, if a classification is dedicated to a particular type of goods, the material composition for those goods does not have to be indicated in the identification. For example, Class 20 is the proper class for furniture. This is true even when the furniture is made of metal. Metal furniture is not classified in Class 6 with other metal products because there is an acceptable class (Class 20) for all furniture regardless of material composition. On the other hand, ladders do not have a specifically designated class, and therefore they
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are classified by material composition: metal ladders are in Class 6; wood or plastic ladders are in Class 20; and rope ladders are in Class 22.
1401.07 Classification and Plurality of Uses
A product or service that has a plurality of uses or aspects is ordinarily classified in a single class. Ex parte Schatz, 87 USPQ 374 (Comm’r Pats. 1950). However, if it can be shown that a product or service has a plurality of uses or aspects so that two or more classes apply, multiple classification may be permissible. However, identical language cannot be used as the identification of goods in more than one class. The identification must clearly indicate the basis for multiple classification with language that is appropriate for the respective classes. For example, the USPTO will not accept the identification “clock radios,” because it is unclear what the goods are and in which class the goods fall—Class 9 for radios or Class 14 for clocks. However, the applicant may adopt either or both of the following identifications-- “radios incorporating clocks” in Class 9 or “clocks incorporating radios” in Class 14.
In an application under §1 of the Trademark Act, the specimen(s) should reflect acceptable use of the mark for each of the specified classes or should be of a general utility nature (e.g., labels for goods). In the case of general- utility specimens, there must be nothing in the record indicating only one use or aspect. See The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re International Salt Co., 166 USPQ 215 (TTAB 1970); Mead Johnson Co. v. Watson, 112 USPQ 284 (D.D.C. 1957), aff’d 253 F.2d 862, 117 USPQ 13 (D.C. Cir. 1958).
Where a single product or service is classified in more than one class, the applicant must file an acceptable specimen for each class with an application under §1(a) of the Act, or an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d)) in an application under §1(b). However, where a single specimen supports multiple classes, the examining attorney need not require multiple copies of the specimen. See TMEP §904.01.
Where a single product or service is classified in more than one class, the applicant must also comply with all other requirements for multiple-class applications. See TMEP §1403.01.
If an item is consistently classified in a particular class, the applicant cannot obtain registration in another class by adding language that indicates the other class.
Example - Essential oils are classified in Class 3. This item cannot be classified in Class 1 with an indication that it is used in the manufacture of other finished products. Raw or unfinished
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materials that are used in the manufacture of other finished products may be classified in Class 1. However, an item like essential oils, which is always classified in Class 3 regardless of its ultimate use, cannot be transferred to Class 1 by adding Class 1 qualifying language.
1401.08 Classification and the Identification of Goods and Services
The items listed in the identification of goods and services must be limited to those on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce. The entire contents of a class, as represented by the short title of the class, should not be set forth as the identification of goods or services. The short titles of the classes indicate the general scope of the classes and are generally too broad and inclusive to be used to identify particular goods or services.
1401.09 Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement
Effective January 1, 2002, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) was amended to add three new service classes (Classes 43 through 45). These new classes arose from the extensive restructuring of Class 42. In the course of that restructuring, many activities were removed from Class 42 and placed in one of the three new classes.
The purpose of the Nice Classification is to group, as much as possible, like goods or services in a single class. Generally, the system is successful in achieving that purpose. However, over the years, it became apparent that Class 42 included many disparate services. This was due in large part to the inclusion of the language “services that cannot be classified in other classes” in the class heading for Class 42. This language allowed services as different as “chemical research” and “horoscope casting” to be included in the class. Therefore, after much study and discussion, the Committee of Experts for the Nice Agreement approved the restructuring of Class 42. The restructuring amended Class 42 by limiting the scope of the services included in this class to computer, scientific, and legal services, and created three additional classes that grouped services previously classified in Class 42 into new classes that kept like services grouped together. See TMEP §1401.02(a); see also TMEP §1410.01(a) regarding later reclassification of legal services to Class 45.
Effective January 1, 2002, the language “services that cannot be classified in other classes,” which previously appeared in the class heading of Class 42, was eliminated. See TMEP §1401.09(a).
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1401.09(a) Elimination of “Miscellaneous Class Designation”
Prior to January 1, 2002, the language “services that cannot be classified in other classes” appeared in the class heading of Class 42. Effective January 1, 2002, this language no longer appears in any of the class headings or explanatory notes of the Nice Agreement. The Committee of Experts found that the revision of the Nice Agreement created an adequate number of well- defined classes so that this language was no longer necessary. Services must now be identified with sufficient clarity and precision to allow for appropriate classification in one of the eleven service classes.
See TMEP §§1402.11 et seq. for further information about the changes in identification and classification of services.
1401.10 General Summary of Major Changes in Practice Based on the 9th Edition of the Nice Agreement
Effective January 1, 2007, the Nice Agreement was amended. The requirements of the 9th edition of the Nice Agreement apply only to applications filed on or after January 2, 2007. The most notable changes are: the transfer of all legal services from Class 42 to Class 45; the determination that items made of precious metals should be classified according to their function rather than in Class 14 merely because they are made of precious metal; and the transfer of aquaria and related items from Class 16 to Class 21. These changes are discussed below.
1401.10(a) Legal Services Transferred to International Class 45
Effective January 1, 2007, legal services were transferred from Class 42 to Class 45. Class 42 is now limited to purely computer, scientific, technological, engineering, and design services.
In 2002, when the Nice Agreement was amended to add three new service classes, Class 42 was restructured, but legal services remained in Class 42. However, over the five-year revision period that led to the 9th edition, it became apparent that Class 42 was not the most appropriate class for these services. The ultimate decision to include these services in Class 45 was based on an item in the class heading for Class 45 - “security services for the protection of property and individuals.” The Committee of Experts reasoned that legal services are an extension of the security services already in Class 45. Security services provide for the protection of property and individuals, and the enforcement of that security is in the hands of the legal profession.
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1401.10(b) Goods Made of Precious Metal are Classified According to Their Function
Class 14 went through the most extensive revision of all of the classes in the 9th edition of the Nice Agreement. The Committee of Experts decided that items made of precious metal that were classified in other classes based on their function when not made of precious metal, should also be classified in those classes. Goods made of precious metal that are not classified by function, but rather by material composition, e.g., statues, figurines, and key holders, are still classified in Class 14. This decision eliminated much of the confusion in this class caused by some goods being listed in Class 14 when made of precious metal and in other classes when not made of precious metal, while other goods were classified according to function without reference to any particular material composition. For example, nutcrackers were classified in Class 14 when made of precious metal and in Class 8 when not made of precious metal. However, cutlery, namely forks, knives, and spoons were classified only in Class 8, even if made of precious metal, even though it is not uncommon for cutlery to be made of precious metal. The changes in the 9th edition were intended to eliminate this inconsistency.
1401.10(c) Transfer of Aquaria and Related Items
Indoor aquaria, its related accessory aquarium hoods, and indoor terrariums [vivariums] were previously classified in Class 16 because they were considered educational. This may have been true when they were first introduced into the Nice Agreement list, but that is a minimal or secondary use today. Most often, these goods are found in homes or offices as hobby or decorative items. They are traditionally made of glass so that the contents are visible. Therefore, they were transferred to Class 21, the main class for other glass items. Other aquarium items with specific uses or functions remain in their 8th edition classes. These items include aerating pumps for aquaria in Class 7, aquarium gravel and sand in Class 19, and aquarium lights, heaters, and filtering apparatus in Class 11. However, large public aquaria that are, in fact, structures are classified in Class 19, since they are made primarily from nonmetallic materials. The aquaria transferred from Class 16 to Class 21 are those that may be found in homes or offices and would not be considered structures in the nature of a building.
1401.11 Implementation of Changes to the Nice Agreement
When the Nice Agreement changes, the new requirements apply only to applications filed on or after the effective date of the change. 37 C.F.R. §2.85(e)(1). In a §1 or §44 application filed before the effective date of the change, the examining attorney may give the applicant the option of remaining in compliance with the edition of the Nice Agreement that was in effect on the application filing date, or amending the application to comply with the requirements of the current edition. The applicant may, of its own
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accord, submit an amendment to its application that brings it into compliance with the current edition of the Nice Agreement. However, if an applicant chooses to comply with the current edition, the applicant must comply with the current edition for all the goods and/or services in the application, and the applicant must pay the fees for any added class(es) resulting from changes in the current edition. 37 C.F.R. §2.85(e)(2). An applicant cannot choose to have some items comply with the current edition and other items comply with the requirements of a previous edition.
1401.12 Effective Date of Changes to USPTO ID Manual
The “Effective Date” field in the USPTO ID Manual indicates the date of the status of a particular entry. In a §1 or §44 application, if an Office action is issued on or before that date and the action is inconsistent with the new or modified entry, the applicant should be given the choice to either keep the existing identification and/or class or amend to the new identification and/or class. If an Office action is issued after the status date, any amendment to the identification or classification must comply with the new or modified entry.
1402 Identification of Goods and Services
1402.01 Specifying the Goods and/or Services - in General
A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6). To “specify” means to name in an explicit manner. The identification should set forth common names, using terminology that is generally understood. For products or services that do not have common names, the applicant should use clear and succinct language to describe or explain the item. Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.
The language used to describe goods and/or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.
The identification of goods and/or services must be specific, definite, clear, accurate, and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical
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Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).
The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).
Terminology that includes items in more than one class is considered indefinite. See id. (“chronographs” held indefinite because it includes both time recording devices in Class 9 and watches in Class 14).
Example: “Blankets” is not acceptable without qualifying wording because it is not particular enough to identify the kind of blanket on which the mark is used, e.g., fire blankets (Class 9), electric blankets (Class 11), horse blankets (Class 18), and bed blankets (Class 24).
However, the conclusion that a term would clearly include items classified in more than one class should not be drawn unless reasonable, in light of the evidence of record. See In re Thor Tech, Inc., 85 USPQ2d 1474 (TTAB 2007) (“park trailer” held to be an acceptable identification, where the applicant’s evidence showed that it is a term of art generally understood by those in the industry and by consumers as a designation for a type of recreational vehicle, which unambiguously places it in Class 12; Board was not persuaded by the examining attorney’s argument that the identification was indefinite because it could also encompass mobile homes in Class 19.).
The accuracy of identification language in the original application is important because the identification cannot later be expanded. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07 et seq.; In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).
See TMEP §1306.06(e) regarding the identification of goods and services in certification mark applications.
1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services
With few exceptions, an identification of goods and services will be considered acceptable if it:
• Describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even if the grammar or phrasing is not optimal;
• Meets the standards (not necessarily the language) set forth in the USPTO ID Manual;
• Is not a class heading; and
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• Is in the correct class, i.e., there is no language in the identification that makes classification difficult or ambiguous; each class lists goods or services that are clearly in a single class.
Deference should be given to the language set forth by the applicant in the original application. Obvious spelling errors in an identification may be corrected by examiner’s amendment without contacting the applicant. See TMEP §707.02.
1402.01(b) Identification of Goods and Services in a §44 Application
The identification of goods and services in an application based on §44 of the Trademark Act, 15 U.S.C. §1126, must comply with the same standards that govern other applications. The applicant must identify the goods and services specifically, to enable the USPTO to classify the goods and services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).
Foreign registrations often include broad statements identifying the goods and services. In many cases, the identification is merely a repetition of the entire general class heading for a given class. These broad identifications are generally unacceptable in United States applications. The identification of goods and/or services in the United States application must be definite and specific even if the foreign registration includes an overly broad identification. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (noting that the USPTO has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of Goods and Services); In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
Furthermore, in an application based on §44 of the Trademark Act, the identification of goods and services covered by the §44 basis in the United States application may not exceed the scope of the goods and services identified in the foreign registration. Marmark Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843 (TTAB 1989); In re Löwenbräu München, 175 USPQ 178 (TTAB 1972). However, if the applicant also relies on use in commerce under §1(a) or intent-to-use in commerce under §1(b) as a filing basis, the identification may include goods or services not listed in the foreign registration, if the applicant specifically limits the §44 basis to the goods and/or services covered by the foreign registration. 37 C.F.R. §2.32(a)(6). See TMEP §§806.02 et seq. regarding multiple-basis applications.
If a foreign registration in a single class includes a broad statement identifying the goods or services and the USPTO determines that the goods or services identified are in more than one class, the applicant may rely on the same
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foreign registration to cover the additional classes in the United States application, provided that the identification in the foreign registration encompasses all goods and/or services identified in the United States application and the applicant pays the fees to add the additional classes in the United States application. See TMEP §§1403 et seq. regarding multiple- class applications.
1402.01(c) Identification of Goods and Services in a §66(a) Application
The examining attorney will examine the identification of goods and/or services in a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods and/or services in accordance with the USPTO ID Manual, whenever possible.
However, the international classification of goods and/or services in a §66(a) application cannot be changed from the classification assigned by the IB. If the IB’s classification of goods or services in the §66(a) application is different from the classification set forth in the USPTO ID Manual, the examining attorney will not request an amendment of the classification. The goods or services cannot be moved to another class identified in the application. 37 C.F.R. §2.85(d); TMEP §§1401.03(d) and 1904.02(b).
See also TMEP §§1904.02(c) et seq. regarding the examination of the identification of goods and services in a §66(a) application.
1402.01(d) Location of “Identification of Goods and Services”
Paper Application. If the applicant submits a separate drawing page in a paper application, this page is considered part of the written application and not a separate element. Any goods or services listed on the drawing in a paper application will be considered part of the “identification of goods and services,” even if they do not appear within the body of the application.
There is no requirement that goods or services be listed in any particular place within the body of a written paper application. See In re Atlantic Scientific Corp., 47 USPQ2d 1959 (Comm'r Pats. 1998). However, goods or services referenced only on the specimen(s) are not considered part of the identification.
TEAS or TEAS Plus Application. In a TEAS or TEAS Plus application, only goods and/or services listed in the proper field will be considered part of the identification.
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1402.01(e) Responsibilities of Examining Attorney as to Identification
It is the applicant’s duty and prerogative to identify the goods and services. However, the examining attorney may require amendment of the identification of goods and/or services to ensure that it is clear and accurate and conforms to the requirements of the statute and rules. The examining attorney should explain clearly and concisely the reason for requiring an amendment.
Under 37 C.F.R. §2.61(b), the examining attorney may require information and evidence, if necessary, to ascertain the nature of the goods and/or services or otherwise permit proper examination of the application. See TMEP §814.
When requiring amendment to the identification, the examining attorney should advise the applicant that goods or services deleted by amendment may not be reinserted at a later point in prosecution. See TMEP §§1402.06(a) and 1402.07(e). Examining attorneys should take particular care to ensure that pro se applicants are aware of the restrictions on amendments to the identification of goods and services.
If an examining attorney is uncertain as to the acceptability of the language in an identification, he or she should consult with a senior or managing attorney. If still unresolved, questions about an identification of goods or services should be referred to the Administrator for Trademark Identifications, Classification and Practice.
The examining attorney has the discretion to issue a final refusal based on a requirement to amend the identification of goods and/or services. Examining attorneys should make every effort to resolve these issues, and should suggest an acceptable identification, if possible. The appropriate senior or managing attorney must approve the final action if the examining attorney does not have full signatory authority. The Administrator for Trademark Identifications, Classification and Practice should be consulted whenever necessary, and copies of appeal briefs that involve an issue of identification of goods or services should be sent to the Administrator for monitoring purposes.
1402.02 Entitlement to Filing Date With Respect to Identification of Goods and Services
An application under §1 or §44 must include an identification of goods or services to receive a filing date. 37 C.F.R. §2.21(a)(4).
Effective October 30, 1999, any goods or services listed on the drawing page of a paper application are considered part of the “identification of goods and services.” However, only goods and/or services listed in the proper field on a
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TEAS or TEAS Plus application will be considered for determining whether the application meets the requirements for receipt of a filing date.
If the application does not identify any recognizable goods or services, the USPTO will deny a filing date. For example, a filing date will be denied if the identification of goods or services is blank or recites only the following:
(1) the mark itself;
(2) a class number;
(3) wording such as “company name,” “corporate name,” or “company logo;”
(4) “Internet services” or “e-commerce services;”
(5) “business” or “business services;”
(6) “miscellaneous” or “miscellaneous services;” or
(7) “personal services.”
These examples fail to meet the minimum requirements necessary to receive a filing date under 37 C.F.R. §2.21(a)(4), because they do not provide adequate notice to third parties as to the nature of the goods or services.
In an application under §1 or §44, if an examining attorney finds that the application fails to specify any recognizable goods or services, the examining attorney should have the filing date cancelled for failure to specify recognizable goods or services, under 37 C.F.R. §2.21(a)(4).
If the identification language includes wording that would not be sufficient and other wording that, by itself, would be specific enough to entitle the application to a filing date, the USPTO will grant the application a filing date. However, any wording that would not otherwise be sufficient for a filing date will not be considered part of the application, and will be disregarded for the purpose of determining the scope of permissible amendments. For example, if the applicant uses “e-commerce services” along with definite language, such as “on-line retail store services featuring clothing,” the identification of services may only be amended to identify services within the scope of the definite language, e.g., “on-line retail store services featuring clothing,” and may not include services within the scope of “e-commerce services.” Or, if the applicant uses “advertising and business,” the USPTO will disregard “business,” and the identification may only be amended to services within the scope of the term “advertising.” See TMEP §§1402.07 et seq. regarding the scope of an identification for purposes of amendment.
The fact that goods or services are referenced on the specimen(s) does not satisfy the requirement for an “identification of goods or services.” In a paper application, the application documents themselves (i.e., the written application
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and/or separate drawing page) must contain a reference to the goods and/or services. In a TEAS or TEAS Plus application, the identification of goods and/or services must appear in the proper field. See TMEP §1402.01(d) regarding the location of the identification of goods and/or services.
The USPTO will not deny a filing date if the applicant uses the language of an international class heading or indicates that the mark is used on all goods or services in a certain class. However, the USPTO strongly discourages the use of the language of the international class headings or statements that the mark is used on all goods or services in a class to identify the goods or services for which registration of the mark is sought, and will require amendment of any such identification.
Note also that an applicant is required to submit a verified statement that the applicant is either using the mark in commerce or has a bona fide intention to use the mark in commerce on or in connection with all the goods and/or services set forth in the identification. It is unlikely that any applicant is using or intends to use a mark on all goods or services within a certain class. If an applicant claims use or asserts a bona fide intention to use the mark on all goods/services in a particular class but only uses or intends to use the mark on some of those goods/services, the registration that results could be void. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986).
1402.03 Specificity of Terms Used in Identifying Goods and Services
Applicants frequently use broad terms to identify the goods or services in an application. In applications based solely on §1(a), 15 U.S.C. §1051(a), the applicant must have used the mark in commerce on all of the goods and/or services as of the application filing date. See First Int’l Services Corp. v. Chuckles, Inc., 5 USPQ2d 1628 (TTAB 1987). In applications filed under §1(b), 15 U.S.C. §1051(b), and §44, 15 U.S.C. §1126, the applicant must assert a bona fide intent to use the mark in commerce on or in connection with the specified goods and/or services as of the application filing date. The requirement for use or a bona fide intent to use is not necessarily violated by broad identifying terms. When a mark is used on a number of items that make up a homogeneous group, a term that identifies the group as a whole would be understood as encompassing products of the same general type that are commercially related.
As long as a broad term identifies the goods or services that are intended to be covered with reasonable certainty, it will be reasonable, from a commercial viewpoint, to consider that the mark has been used for all the related goods or services that fall in the designated group. See In re Dynamit Nobel AG, 169 USPQ 499 (TTAB 1971) (“ammunition” permitted because its scope was assumed to be understood); In re Port Huron Sulphite & Paper Co., 120
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USPQ 343 (TTAB 1959) (“paper other than board papers” approved because of evidence of actual use on various types of paper).
Where an applicant has identified its goods or services very broadly but does not use the mark on a substantial number of related goods/services encompassed by the identification language, the USPTO may require further specificity.
The examining attorney must consider the following guidelines:
(1) A term that clearly includes particular items that are classified in more than one class (e.g., “artists’ materials”) is not acceptable. Other examples are “blankets,” which include such diverse and differently classified types as bed blankets in Class 24, fire blankets in Class 9, and horse blankets in Class 18; “boxes,” which include set top boxes and junction boxes in Class 9, music boxes in Class 15, and boxes for holding things, which are classified according to their material compositions; and “sports equipment,” because the nature of the equipment will determine the class, i.e., a football helmet would be in 9; the football uniform would be in Class 25, and the football padding equipment in Class 28. However, the conclusion that a term would clearly include items classified in more than one class should not be drawn unless reasonable, in light of the evidence of record. See In re Thor Tech, Inc., 85 USPQ2d 1474 (TTAB 2007) (“park trailer” held to be an acceptable identification, where the applicant’s evidence showed that it is a term of art generally understood by those in the industry and by consumers as a designation for a type of recreational vehicle, which unambiguously places it in Class 12; Board was not persuaded by the examining attorney’s argument that the identification was indefinite because it could also encompass mobile homes in Class 19).
See TMEP §1402.05(b) regarding goods that may be classified in more than one class depending on their material composition.
(2) Some terminology is sufficient for purposes of according a filing date but too indefinite to enable proper examination (e.g., “metallic parts”). For example, in In re Societe Des Parfums Schiaparelli, S.A., 122 USPQ 349, 350 n.4 (TTAB 1959), clarification of the term “beauty products” was held to be necessary because the term does not have a particular commercial meaning. In such a situation the examining attorney may seek further information under 37 C.F.R. §2.61(b). See TMEP §814.
(3) In rare instances, an identification may include a term that has multiple, entirely different meanings. If the meaning of such a term can be understood when read in association with the title of the class in which it is placed, and if the term is otherwise satisfactory, the
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examining attorney need not require amendment to further qualify the term. For example, “mufflers” in the clothing class would not require further modification to indicate that articles of clothing are intended, rather than automotive mufflers. The limited number of items to which this applies, however, represents a narrow exception to the general rule that an identification must itself provide a clear indication of the nature of the goods or services, without reference to the class. See TMEP §§1402.01 and 1402.05(b). The title of a class cannot be used to define the nature of the goods when the same item could be classified in more than one class depending on its function, material composition, or field of use. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (“chronographs” held indefinite because it includes both chronographs that function as time recording devices in Class 9 and chronographs that function as watches in Class 14). For example, tools are classified in Class 7 if they are power driven or Class 8 if they are not power driven. The identification must indicate whether the tools should be classified in Class 7 or 8 (powered or non-powered). In this situation, the class title cannot be used to justify the appropriate classification.
(4) The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services. A basic and widely available dictionary should be consulted to determine the definition or understanding of a commonly used word.
(5) Many goods are commonly understood to move in a particular channel of trade or have particular attributes. When those goods are classified in the class that is appropriate for that common understanding, often no further specification as to the nature of those goods is necessary. However, when the goods have a special use or attributes that are not typically associated with those particular goods that would cause it to be classified in a different class, that use or attribute should be indicated in the identification in order to justify the classification. For example, “skin lotion” usually refers to a cosmetic product - one that is not medicated. For that reason, it can be classified in Class 3 without further specification. However, a skin lotion that is medicated should be classified in Class 5, and the identification should indicate that the product is medicated in order to justify its classification in Class 5 rather than in the more commonly understood and assigned Class 3.
With broad identifications, as with any identification that includes more than one item, the amount of proof (normally by way of specimens) necessary to assure the examining attorney that the mark has been used on “all” the items in the application will vary. See TMEP §904.01(a). The USPTO does not require specimens showing use of the mark for every item set forth in an
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application. However, if an identification is so broad that it encompasses a wide range of products or services, the applicant must submit evidence that it actually uses the mark on a wide range of products or services to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976). See TMEP §1402.05 regarding accuracy of the identification.
The examining attorney should consider: the degree of commercial relationship between the products; the fact that the applicant has claimed use of the mark, or an intention to use the mark, in regard to all goods specified in the application; and the fact that the applicant has stated that the facts set forth in the application are true. For a closely related group, a specimen showing use of the mark on one item of the group is sufficient. As the closeness of the relationship becomes less certain, specimens of use on more than one item might be necessary to show generalized use. The nature of the mark may also be considered. “House” marks are placed on all the goods that a company produces, whereas a “product” mark that is appropriate only for a specific commodity is used only on that commodity. See TMEP §1402.03(b) regarding house marks, and TMEP §1402.03(c) regarding identifications that refer to “a full line of” a genre of products.
The appropriateness of any broad identification depends on the facts in the particular case. The examining attorney should permit applicants to adopt terms that are as broad as the circumstances justify.
1402.03(a) Inclusive Terminology
The identification should state common names for goods or services, be as complete and specific as possible, and avoid indefinite words and phrases. The terms “including,” “comprising,” “such as,” “and the like,” “and similar goods,” “products,” “concepts,” “like services” and other indefinite terms and phrases are almost always unacceptable.
The terms “namely,” “consisting of,” “particularly,” and “in particular” are definite and are preferred whenever setting forth an identification that requires greater particularity. The examining attorney will require that vague terminology be replaced by these terms.
In limited situations for closely related goods, certain indefinite terms may be used in explanatory phrases that follow a definite term -- for example, “fabric suitable for making coats, suits, and the like.” See Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).
“Parts therefor,” as related to machinery, is acceptable when it follows a definite identification. “Accessories therefor” is usually considered indefinite, but it has been allowed in some cases, particularly in the toy field. Identifications such as “dolls and accessories therefor” and “toy vehicles and accessories therefor” are acceptable because all goods that fall within that
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broad designation would be classified in Class 28 with the dolls or toy vehicles and could be the basis for a refusal of registration under 15 U.S.C. §1052(d). However, this phrase should only be used in a situation where it is clear that the goods encompassed by the phrase relate closely to the primary goods and would all be classified in the same class as the primary goods.
1402.03(b) House Marks
House marks are marks used by an entity on a wide range of goods. Marks of this type are often used in the chemical, pharmaceutical, and food fields. A house mark is different from a product mark that is used on a specific item or closely related items. A product may bear both a product mark and a house mark.
Under certain limited circumstances, an applicant may apply to register a mark as a house mark. In an application for registration of a house mark, the identification of goods may include wording such as “a house mark for....” As with other applications, these applications must define the type of goods with sufficient particularity to permit proper classification and to enable the USPTO to make necessary determinations under §2(d) of the Trademark Act, 15 U.S.C. §1052(d).
In an application to register a mark as a house mark based on use in commerce, the applicant must demonstrate that the mark is, in fact, used as a house mark. The examining attorney should require that the applicant provide catalogues showing broad use of the mark or similar evidence to substantiate this claim.
An intent-to-use applicant who wishes to register a mark as a house mark must clearly indicate its intention to register the mark as a house mark during initial examination, and the circumstances must establish that the applicant’s proposed use of the mark as a house mark is credible. The nature of the mark and the capacity of the applicant to use the mark as asserted should be considered in determining whether the claim that the mark is to be used as a house mark is credible. If the applicant indicates such an intention, the examining attorney should advise the applicant that, upon filing of the allegation of use, the applicant will be required to provide evidence to substantiate use as a house mark. If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.
The USPTO will register a mark as a house mark only in the limited circumstances where the mark is actually used as a house mark. Therefore, if an applicant seeks to register a house mark in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence that the mark is in fact used as a house mark. This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a house mark. 37 C.F.R. §2.61(b). If the
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applicant cannot do so, the identification of goods must be amended to conform to the usual standards for specificity.
1402.03(c) Marks for a “Full Line of …”
In rare circumstances, the USPTO may accept an identification of goods that refers to “a full line of” a genre of products. To qualify for the use of such terminology, the line of products must be in one class. The most commonly accepted situation is “a full line of clothing.” While there may be some rare exceptions, all clothing is classified in Class 25. Another example would be pharmaceuticals, which are almost all classified in Class 5. Therefore, so long as the specimens and/or other evidence show use of the mark on virtually all of these goods, the “full line of” language may be used. It may not be used in a situation such as “a full line of hand tools.” Even though Class 8 is the general class for hand tools, a number of items that might be considered hand tools are classified in other classes (e.g., a non-electric egg beater is in Class 21 but could be considered to fall within the broad category of “hand tools”).
The “full line of” language may be used only in appropriate situations and the circumstances and specimens or other evidence of record should be analyzed carefully to ensure that an applicant who does not in fact use a particular mark on a sufficient number or variety of products in its line does not receive a trademark registration that could potentially bar the registration of another applicant who uses a similar mark on different products. See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products).
In this limited situation, the USPTO permits the applicant to use broad language to identify the genre of products that constitute the full line (i.e., clothing or pharmaceuticals), because the applicant is committing to virtually all the goods described by the broad language and the validity of the registration depends on the applicant’s statement that it is using the mark on all the goods and the evidence of such use as a “full line.” Therefore, while the USPTO will accept “a full line of clothing” as a sufficient identification, the USPTO will not accept an identification of goods as merely “clothing.” In the latter situation, the applicant must identify the items of the clothing by their common commercial name since the applicant is not likely using the mark for all items of clothing and the registration should be limited to only those items of clothing on which the applicant is actually using the mark.
In some cases, it may be more appropriate to indicate that the applicant is providing a full line of a subset of a genre of products (e.g., “a full line of sports clothing” or “a full line of anti-viral and cardiovascular pharmaceuticals”). As with any identification that refers to a full line of a genre of products, all of the products must be classifiable in one class and the
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specimens and/or other evidence must show use of the mark on virtually all of the relevant goods.
An intent-to-use applicant who wishes to register a mark for a full line of a genre of products must clearly indicate an intention to register the mark for a full line during initial examination, and the circumstances must establish that the applicant’s proposed use of the mark for a full line of products is credible. The nature of the mark and the capacity of the applicant to use the mark as asserted should be considered in determining whether the claim that the mark is to be used for a full line of products is credible. If the applicant indicates such an intention, the examining attorney should advise the applicant that, upon filing of the allegation of use, the applicant will be required to provide evidence to substantiate use for a full line of products. If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.
The USPTO will register a mark for a “full line of” a genre of products only in the limited circumstances where the mark is actually used as such. If an applicant seeks to register a mark for a “full line of” a genre of products in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence to substantiate use for a full line of products. This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a mark for a “full line of” a genre of products. 37 C.F.R. §2.61(b). If the applicant cannot do so, the identification of goods must be amended to conform to the usual standards for specificity.
1402.03(d) Identifying Computer Programs with Specificity
Any identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Due to the proliferation and degree of specialization of computer programs, broad specifications such as “computer programs in the field of medicine” or “computer programs in the field of education” will not be accepted, unless the particular function or purpose of the program in that field is indicated. For example, “computer programs for use in cancer diagnosis” or “computer programs for use in teaching children to read” would be acceptable.
Typically, indicating only the intended users, field, or industry will not be deemed sufficiently definite to identify the nature of a computer program. However, this does not mean that user, field, or industry indications can never be sufficient to specify the nature of the computer program adequately. For example, “computer programs in the field of geographical information
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systems” would be acceptable. Geographical information systems, also known in the industry as GIS, are well-defined computer applications that do not need further definition. If the identification in the application does not adequately specify the nature of a computer program, further information may be requested. Any questions concerning the recognition of a term of art for a computer program should be discussed with senior attorneys, managing attorneys, or other examining attorneys who are knowledgeable in the computer field.
If an applicant asserts that the computer programs at issue serve a wide range of diverse purposes, the applicant must submit appropriate evidence to substantiate such a broad identification of goods. See 37 C.F.R. §2.61(b); TMEP §§1402.03(b) and (c).
Generally, an identification for “computer software” will be acceptable as long as both the function/purpose and the field are set forth. Some general wording is allowed. The following wording is acceptable:
(1) Computer game software.
(2) Computer operating programs or computer operating systems: Software under this category comprises master control programs that run the computer itself. They are the first programs loaded when the computer is turned on and set the standards for the application programs that run in the operating system or operating program.
(3) Computer utility programs: These programs must be designed to perform maintenance work on a computer system or components thereof, such as file management (sorting, copying, comparing, listing, and searching files), as well as diagnostic and measurement routines that check the health and performance of the computer system. Beware of identifications that read “Computer utility programs, namely, business software.” - This is NOT a utility program.
(4) Software development tools: These programs are designed to create other computer programs. This is one of the few exceptions in which use of the term “tools” is acceptable.
(5) Database management software [indicate for general use or specific field]: Software that controls the organization, storage, retrieval, security, and integrity of data in a database (an electronically stored collection of data). For example:
• General purpose database management software.
• Database management software for use by financial advisors.
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• Database management software in the field of baseball cards.
(6) Spreadsheet software [indicate for general use or specific field]: Software that simulates a paper spreadsheet, or worksheet, in which columns or individual cells of numbers are summed, subtracted, multiplied, or divided with the contents of other columns or cells for budgets and plans. For example:
• General purpose spreadsheet software.
• Spreadsheet software for use by budget analysts.
(7) Word processing programs [indicate for general use or specific field]: Software used to create text documents.
(8) Computer aided design (CAD) software [indicate for general use or specific field]: Computer Aided Design software is generally used to design products. CAD software is available for generic design or specialized uses, such as architectural, electrical, and mechanical design. For example:
• Computer aided design (CAD) software for general use.
• Computer aided design (CAD) software used for designing integrated circuits.
• Computer aided design (CAD) software for architectural use.
(9) Computer aided manufacturing (CAM) software [indicate for general use or specific field]: Computer Aided Manufacturing software automates manufacturing systems and techniques, including numerical control, process control, robotics, and materials requirements planning. For example:
• Computer aided manufacturing (CAM) software for general use.
• Computer aided manufacturing (CAM) software used in the manufacture of airplane components.
• Computer aided manufacturing (CAM) software for integrated circuits.
(10) CAD/CAM software [indicate for general use or specific field]: Computer Aided Design/Computer Aided Manufacturing software integrates functions of CAD and CAM software in that products designed by the CAD systems are directly inputted into the CAM systems for manufacture.
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Examples of indefinite and unacceptable wording include the following:
(1) Computer programs featuring multimedia (unless the applicant specifies the content, e.g., motion pictures in the field of [specify], recorded on computer media).
(2) Computer firmware (unless the applicant specifies the function/purpose of the program, and, if the program is content or field specific, the field of use).
(3) Computer devices (must specify the common commercial name therefor).
(4) Computer accessories (must specify the common commercial name therefor).
See TMEP §1402.11(a) regarding identification and classification of computer services.
1402.03(e) Identifying Publications with Specificity
When the goods are publications, the identification must indicate both the specific physical nature and the literary subject matter of the publication.
Example - “Magazine devoted to medicine” is acceptable.
Example - “Television programming newsletter” is acceptable.
In the case of printed matter of a specialized nature, the identification should describe the goods by specific names or wording that explains their specialized nature.
Example - “Children’s storybooks” is acceptable.
Even if the mark itself indicates the subject of a publication, the identification must specify the subject matter.
As a general rule, “books” should be described by subject matter or class of purchasers. In the case of a mark used by a publishing house on books, a general identification, such as “a house mark for books” or “a full line of books” is sufficient if supported by the record. However, if the goods are restricted to certain types of literature, such as science fiction, engineering, romance, or poetry, the identification should so indicate. The applicant may also indicate the channels of trade or groups of purchasers for the goods.
When the subject matter is not a significant aspect of a publication, such as with in-house newsletters, the identification may merely give an indication of the general character or type of the publication.
Example - “Employee newspaper” may be accepted.
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See TMEP §1402.11(a) regarding online publications.
1402.04 Acceptable Identification of Goods and Services Manual
The USPTO maintains a listing of acceptable identifications of goods and services compiled by the Administrator for Trademark Identifications, Classification and Practice. The USPTO ID Manual contains identifications of goods and services and their classifications that are acceptable in the USPTO without further inquiry by an examining attorney (provided such identification and classification is supported by the specimens of record). This Manual is updated periodically, and the entries in it are more extensive and specific than the Alphabetical List of Goods and Services that is published by WIPO. The listing is not exhaustive, but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
Using identification language from the Manual enables trademark owners to avoid objections by examining attorneys concerning indefinite identifications of goods or services; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. Therefore, even if the identification is definite, examining attorneys may inquire as to whether the identification chosen accurately describes the applicant’s goods or services (see TMEP §1402.05 regarding accuracy of identifications).
No listing could include all possible identifications for the multitude of products and services for which marks may be registered. Therefore, a primary use of the Manual’s listings, in addition to indicating precise identifications that will be accepted, is to indicate by analogy and example the kinds of identifications that will be acceptable for products and services not covered by the existing listings.
Any identification of goods and services in the Manual that has a letter "T" in the Trilateral column indicates that the identification is acceptable in the USPTO, the Japanese Patent Office (“JPO”), and the European Trademark Office (“OHIM,” the Office of Harmonization in the Internal Market).
In a TEAS Plus application, the application must include correctly classified goods and/or services, with an identification of goods and/or services taken directly from the USPTO ID Manual. 37 C.F.R. §2.22(a)(8); TMEP §819.01(g).
The USPTO ID Manual can be downloaded free of charge from the USPTO website at http://www.uspto.gov, and it is accessible from within TEAS.
1402.05 Accuracy of Identification
An identification is unacceptable if it is inconsistent with the goods or services indicated by the specimens, or if the ordinary meaning of the identification
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language is at variance with the goods or services evidenced by the specimens or any other part of the record. For example, the term “posters” would be an unacceptable identification when specimens show use of the mark for “decalcomanias.”
The examining attorney may require an amendment of the identification language to accurately describe the goods or services. In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1335 (TTAB 2009) (Board stating that “[t]he Office’s requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear.”); In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979) (examining attorney has discretion to require applicant to state whether goods are packaged in container to which mark refers); Kiekhaefer Corp. v. Willys- Overland Motors, Inc., 236 F.2d 423, 111 USPQ 105 (C.C.P.A. 1956) (requirement to amend “internal combustion engines for industrial use” to “outboard motors” considered proper); In re Opryland USA Inc., 1 USPQ2d 1409, 1410 (TTAB 1986) (noting that specimens showed use of the mark for “television broadcasting services” and/or “cable television transmission services” rather than “television production services”); In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976) (acceptance of identification of goods as “catalysts,” which could include large number of catalysts that applicant does not manufacture, would give applicant a scope of protection to which it was not entitled); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505, 509 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974) (noting that, in view of specimens, greater specificity should have been required in identifying registrant’s detergent product); In re Toro Mfg. Corp., 174 USPQ 241 (TTAB 1972) (noting that use on “grass-catcher bags for lawn-mowers” did not justify the broad identification “bags,” which would encompass goods diverse from and commercially unrelated to applicant’s specialized article); Ex parte Consulting Engineer Publishing Co., 115 USPQ 240 (Comm’r Pats. 1957) (amendment of “periodical” to “monthly news bulletin” required); Merchandising Promotions v. Hastings & Co., Inc., 110 USPQ 256 (Comm’r Pats. 1956) (amendment of “gold stamping foil” to “cellophane folders with pressure-sensitive gold foil strip attached for personalizing articles” required).
In Petroglyph Games, 91 USPQ2d at 1336, the Board addressed the question of whether the identification “computer game software” was accurate for the mark BATTLECAM if the mark was being used only for a feature of a computer game. The Board found that the subsets of computer code identified by the mark, which the specimen indicated supported only particular aspects or features of the computer game, could also be accurately identified as “computer game software,” noting that although “there is a market for selling or distributing to computer game players all the software that allows a game to be played in its entirety, there may also be a market for computer game software related to only certain game features, perhaps among game developers or producers who might want to include a particular feature in a
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complete game, or perhaps among players seeking after-market add-ons or enhancements for existing games.” Therefore, it would not be inaccurate to identify such software simply as “computer game software.”
An identification cannot be amended to accurately describe the goods or services if the amendment would add to or expand the scope of the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07 et seq.
1402.05(a) Goods That Are Components or Ingredients
When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification should precisely set forth the component or ingredient. In other words, when the specimen or other material in the record clearly indicates that the mark relates only to a distinguishable part, component, or ingredient of a composite or finished product, then the application should identify that component or ingredient as the goods. The identification should leave no doubt that the mark refers only to one part and not to the entire product. Also, the identification should indicate the types of finished products of which the identified components or ingredients form a part, e.g., “liposomes for use as an ingredient in face creams.” See Ex parte The Joseph & Feiss Co., 114 USPQ 463 (Comm’r Pats. 1957); Ex parte Palm Beach Co., 114 USPQ 463 (Comm’r Pats. 1957); Mercantile Stores Co., Inc. v. The Joseph & Feiss Co., 112 USPQ 298 (Comm’r Pats. 1957); In re Libbey-Owens-Ford Glass Co., 75 USPQ 202 (Comm’r Pats. 1947).
If the mark does not pertain solely to a component or ingredient rather than the finished or composite product, the identification should not specify the component or ingredient as the goods.
When classifying component or ingredient marks, a distinction should be made between marks that identify products sold as separate ingredients or components and ingredients used to make the finished product, and marks that identify components or ingredients sold as part of the finished product. In the first situation, the goods are classified in the class of the component or ingredient since it has not yet been transformed into the finished product. In the second, the goods are classified in the class of the finished product, since the component or ingredient has now been incorporated into other finished goods. In these situations, the examining attorney should examine the specimen to determine whether it shows use of the mark to identify the separate component or ingredient or the finished product in its entirety.
The same rules of language construction for purposes of amendment, as set forth in TMEP §§1402.01 et seq., 1402.06 et seq., and 1402.07 et seq., apply to amendments of identifications to indicate components or ingredients. Thus, whether an identification may be amended will depend on the particular circumstances of each application.
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Example - The indefinite term “fabric” may be amended to the definite identification “fabric for use in the manufacture of slacks” but may not be amended to “slacks,” which is beyond the scope of the identification.
See TMEP §1402.05 regarding accuracy of the identification.
1402.05(b) Material Composition
If an identification of goods is specific, but the goods could be classified in more than one class depending on the material composition, then the material composition must be indicated in the identification of the goods.
Example - “Statues” refers to specific items; however, the classification depends on the material composition. “Statues of non-precious metal” are classified in Class 6; “statues of precious metal” are classified in Class 14; “statues of wax, wood, plaster, or plastic” are classified in Class 20; and “statues of glass or porcelain” are classified in Class 21.
However, in certain situations, because of the nature of the particular industry and the knowledge that the items are made out of different materials and are classified accordingly, an indication of the material composition in the identification may be unnecessary. See TMEP §§1401.06(a) and 1402.03 for further explanation.
1402.06 Amendments Permitted to Clarify or Limit Identification
Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Section 7(c) of the Trademark Act, 15 U.S.C. §1057(c), provides that filing an application for registration on the Principal Register establishes constructive use and nationwide priority, contingent on issuance of the registration (see TMEP §201.02). Therefore, the identification of goods and/or services in an application defines the scope of those rights established by the filing of an application for registration on the Principal Register.
1402.06(a) Limiting the Identification of Goods and Services
As noted above, the rules permit amendments to limit the identification of goods and services.
Deletions from the identification of goods and services are also permitted. “Deletion” means the elimination of an existing item in an identification of goods and services in its entirety. If the applicant wishes to amend the
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identification of goods and services to delete one or more items, the examining attorney should accept the amendment, if it is timely and otherwise proper. However, once the applicant has expressly amended the identification of goods and services to delete an item, it may not be reinserted in a later amendment.
If the applicant wishes to amend the identification of goods and services to restrict one or more of the items by inserting qualifying language or substituting more specific language, the examining attorney should accept the amendment, if it is timely and otherwise proper. Qualifying language, however, may not be deleted from an identification.
Example - If the applicant initially identifies the goods as “publications,” the applicant may amend to substitute one or more terms that fall under the definition of publications. Likewise, if an applicant identifies its goods as “pamphlets,” the applicant may amend to include “brochures,” because these terms are generally equivalent and interchangeable. In either case, the applicant must specify the subject matter.
Example - If the applicant initially identifies the goods as “football uniforms,” the applicant may amend to indicate football uniforms in Class 25, football helmets in Class 9, and shoulder pads in Class 28. These goods are logically included within the initial identification. Footballs, however, could not be added, because this would add an item not logically included within the original identification.
Example - If the applicant initially identifies the services as “prepaid medical services” and wishes to amend to “underwriting prepaid medical plans and health care services in the nature of a health maintenance organization,” the amendment should be permitted. Both specific services are logically included under prepaid medical services.
Example - If the applicant initially identifies the goods as “cooking utensils sold to restaurants,” the applicant cannot delete the language “sold to restaurants,” because this would broaden the identification.
If an applicant wishes to amend the identification of goods and services to insert an item that is equivalent to or logically encompassed by an item already included in the identification of goods and services, the examining attorney should permit the amendment, if it is timely and otherwise proper.
On the other hand, an applicant may not amend an identification of goods/services to add or substitute a term that is not logically included within
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the scope of the terms originally identified or that is otherwise qualitatively different from the goods and services as originally identified.
Example - If the applicant identifies the goods as “computer programs,” the applicant may not add or substitute computers or other items of computer hardware to the listing.
Example - If the applicant initially identifies the goods as “hats,” the applicant may not add or substitute “scarves.” Likewise, the applicant may not add or substitute “shirts” for “slacks.”
Example - If the applicant identifies its services as “ophthalmologist’s services,” the applicant may not amend the identification to “medical services,” because the amendment would expand the identification to include services beyond the scope of those identified initially.
The scope of the goods and services, as originally identified or as amended by an express amendment, establishes the outer limit for any later amendments. See TMEP §§1402.07 et seq.
Under 37 C.F.R. §2.71(a), there is no general prohibition against specific types of limitations in identifications of goods and services, such as the use of negatives, exceptions, or similar language. Limitations on identifications phrased in the negative or as exceptions are acceptable, if they are otherwise proper.
Because 37 C.F.R. §2.71(a) precludes additions to the identification, examining attorneys should not require or suggest unduly restrictive identifications. See In re Sentry Chemical Co., 230 USPQ 556 (TTAB 1986). Once the identification has been limited, it cannot be expanded later. See In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991). Also, when requiring amendments to the identification, examining attorneys must advise applicants that additions to the identification are not permitted.
1402.06(b) Clarifying the Identification of Goods and Services
Under 37 C.F.R. §2.71(a), an applicant may amend “to clarify” the identification of goods and/or services. The applicant may clarify an identification that is indefinite or overly broad, to identify goods and/or services that are within the scope of the goods and services in the identification. As noted in TMEP §1402.06, filing an application for registration on the Principal Register establishes a constructive date of first use in commerce, contingent on issuance of the registration. 15 U.S.C. §1057(c). Accordingly, the applicant may not expand those rights through an amendment that broadens the identification of goods and/or services.
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Thus, the applicant may amend from the more general to the specific, but the applicant may not amend from the specific to the more general. The scope of the goods/services identified initially, or as limited by an express amendment, establishes the outer limit for permissible amendments. See TMEP §§1402.07 et seq.
In an application under §1 or §44 of the Trademark Act, classification may provide some guidance in determining whether an amendment exceeds the scope of the goods/services identified initially, but it is not controlling. In an application under §1 or §44, the examining attorney may suggest and accept amendments to the identification that result in a change of class, if the amended identification does not exceed the scope of the original identification.
Example - If an applicant has erroneously identified its goods and services as “menus” but, in fact, the applicant intends to register the mark for restaurant services, the applicant may not amend the identification of goods to “restaurant services.” In such a case, the original identification, which is specific and narrow in scope, may not be expanded to services beyond the scope of that identification.
Example - If an applicant has erroneously identified its goods and services as “bottles for salad dressing” but, in fact, the applicant intends to register the mark for salad dressing, the applicant may not amend the identification to “salad dressing.” However, if an applicant identifies its goods and services as “bottles of salad dressing,” the applicant may amend the identification to “salad dressing.” As above, where the original language is specific and narrow in scope, the identification may not be expanded to goods beyond that scope.
Example - If an applicant has erroneously identified its goods and services either as “packaging and labels” or as “packaging and labels for toys” but, in fact, the applicant intends to register the mark for toys, the applicant may not amend to correct the identification, because “toys” is not within the scope of the initial identification.
In a §66(a) application, classification is assigned by the IB and cannot be changed. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c) regarding §66(a) applications.
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1402.07 Scope of Identification of Goods and Services for Purposes of Amendment
1402.07(a) The “Ordinary-Meaning” Test
In applications under §1 or §44, for the purpose of determining the scope of an identification, the examining attorney should consider the ordinary meaning of the wording apart from the class designation. The class designation (see TMEP §§1401.03 et seq.), whether inserted by the applicant or the USPTO, does not limit the scope of permissible amendments. 37 C.F.R. §2.85(f). If the applicant designates the class, this information may be weighed with other factors for the benefit of the applicant in determining the scope of permissible amendments.
However, if the applicant does not merely designate the class but expressly limits the goods or services recited to those that are within one or more classes, the applicant may not amend to specify items not in those classes.
In many cases, the identification is merely a repetition of the entire general class heading for a given class. In this situation, the USPTO will look to the ordinary meaning of the words for the purposes of determining the scope of the identification. The USPTO will not permit the applicant to amend to include any item that falls in the class, unless the item falls within the ordinary meaning of the words identified. As noted in TMEP §1402.01(b), class headings are generally unacceptable to identify goods/services in United States applications, even if the class heading is used as the identification in the foreign registration.
In §66(a) applications, the classification assigned by the IB cannot be changed, so the scope of the identification for purposes of permissible amendments is limited by the class. 37 C.F.R. §2.85(f). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(c).
1402.07(b) Ambiguous Identifications
An applicant may amend an ambiguous identification of goods or services (i.e., an identification that fails to indicate a type of goods or services) in order to specify definite goods or services within the scope of the indefinite terminology.
Example - “Food” is indefinite, and may be amended to “fresh fruit” (Class 31), or “processed fruit” (Class 29), or “dog food” (Class 31). However, “food” may not be amended to “whiskey” (Class 33).
Example - “Metallic parts” is indefinite, and may be amended to “metal thread fasteners” (Class 6), or “metal drive gears for machines” (Class 7). However, “metallic parts” may not be amended to “automobile chassis” (Class 12).
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Likewise, if the applicant includes wording in an indefinite identification of goods or services that, in context, is obviously superfluous, the applicant may amend the identification to specify goods or services within the scope of the indefinite terminology. In many cases, the superfluous wording will not restrict the range of permissible amendments.
Example - If the applicant begins an indefinite identification of goods with superfluous wording such as “sale of . . .,” “advertising of . . .,” “manufacture of . . .,” or similar wording, the applicant may amend to specify either goods or services within the scope of the existing identification. However, the specific terms used to preface the goods do establish some limitation as to scope. “Sale of” may justify an amendment to retail or mail order services for specific goods, or to the goods themselves, but not to custom manufacturing or advertising agency services related to those goods.
The policy permitting applicants to amend to specify either goods or services should be construed narrowly. The applicant should only be permitted to amend from goods to services, or vice versa, when the existing identification of goods and services fails to specify a definite type of goods or services and when the existing identification provides reasonable notice to third parties that the applicant may be providing either goods or services within the scope of the existing identification.
1402.07(c) Unambiguous Identifications
An applicant may amend an unambiguous identification of goods that indicates a specific type of goods to specify definite and acceptable identifications of goods within the scope of the existing terminology.
An applicant may amend an unambiguous identification of services that indicates a specific type of service to specify definite and acceptable identifications of services within the scope of the existing terminology.
An applicant may not amend a definite identification of goods to specify services, or vice versa, except that if the goods are of a type that are available in more than one medium, and the applicant does not specify the medium in the identification of goods, the applicant will be allowed to amend to any medium, even if one of the mediums is classified as a service.
Example - If the applicant specifies “newsletters in the field of accounting,” the applicant may amend to “printed newsletters in the field of accounting (Class 16),” “downloadable newsletters in the field of accounting (Class 9),” “providing online newsletters in the field of accounting (Class 41),” or “newsletters in the field of accounting, recorded on DVDs (Class 9).” See TMEP §1402.11(a) regarding online publications.
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Example - If the applicant specifies “computer programs in the field of accounting,” the applicant may only amend to specify computer programs within the scope specified, i.e., those concerning accounting. The applicant may not amend to any service, other than “providing temporary use of non-downloadable computer programs in the field of accounting.” The applicant may not amend from “providing temporary use of non-downloadable computer programs in the field of accounting” to “computer programs in the field of accounting,” because “computer programs” are broader in scope than “non-downloadable computer programs.” Neither may the applicant amend to any goods outside the scope of those already identified.
Example - If the applicant identifies the goods as “computer programs” without specifying the field, the applicant is limited to specific types of computer programs for the purposes of amendment. The applicant has identified a definite type of goods, but USPTO policy requires further specificity as to the purpose or function of the goods. An applicant who had identified its goods as “clothing” would likewise be limited to goods within the scope of the term “clothing.”
Example - If the applicant specified “retail store services,” the applicant would be limited to amendments within the scope of this service. Although USPTO policy requires further specificity as to field, the applicant has identified a definite type of service.
Example - If the applicant identifies its goods as “stationery,” “wine labels,” or “menus,” the applicant is restricted, in any amendments, to goods within the scope of the type indicated. The applicant could not amend to specify other types of goods or services, such as “wine” or “restaurant services.”
1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable
If the applicant proposes an amendment to the identification of goods and services, and the examining attorney determines that the amendment is unacceptable, the examining attorney should refer to the identification of goods before the proposed amendment to determine whether any later amendment is within the scope of the identification. In such a case, the applicant is not bound by the scope of the language in the proposed amendment but, rather, by the language of the identification before the proposed amendment.
If the applicant submits an amendment to the identification of goods and services, and the examining attorney determines that it is unacceptable, in whole or in part, the examining attorney must advise the applicant of the item
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or items that are unacceptable. For those items which are unacceptable, the examining attorney should also advise the applicant that the previous items listed in the existing identification (not the unacceptable substitute) remain operative for purposes of future amendment. If portions of an amended identification are accepted, those items may not be further amended to exceed the scope of the accepted amendment. See TMEP §1402.07(e).
If the applicant submitted the amendment in response to a requirement, the examining attorney must issue a final requirement for amendment of the identification, if the proposed amendment raises no new issues and the application is otherwise in condition for a final action. See TMEP §714.05(a)(ii).
1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Accepted
Once an applicant amends the identification of goods and/or services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that of the amended language. Further amendments that would add to or expand the scope of the recited goods or services, as amended, will not be permitted. In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991). The applicant may not amend the identification to reinsert goods or services that were omitted or deleted from the identification of goods or services, except in the following limited circumstances:
(1) Where, before publication or within six months of the issuance of an examiner’s amendment (see TMEP §§707 et seq.), whichever is earlier, the applicant objects to an amendment of the identification of goods or services in the examiner’s amendment on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney; or
(2) Where the applicant inadvertently omits goods or services from a paper amendment to allege use and has not specifically indicated an intention to delete those goods or services (see TMEP §1104.09(c)).
In contrast to situation (2), set out above, if, in a statement of use or request for an extension of time to file a statement of use, the applicant inadvertently omits particular goods or services when specifying the goods and services on or in connection with which it has used or has a continued bona fide intention to use the mark in commerce, those items may not later be reinserted. 37 C.F.R. §§2.88(i)(2) and 2.89(f); TMEP §§1108.02(d) and 1109.13.
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1402.08 Moving Goods and Services Between Companion Applications
If an applicant has filed separate applications to register the same mark, the applicant may amend to move items of goods or services from one application to another, if the application from which the item is to be moved was filed on or before the filing date of the application to which it is to be moved. Moving goods between applications in this way may only be done when the applications involved have not yet been published in the Official Gazette. Items of goods/services can be moved between applications only in applications filed under §1 or §44 of the Trademark Act. The applicant cannot amend to move items of goods/services to or from a §66(a) application.
The applicant should file the request in the form of an amendment in the application to which the goods/services are to be moved, requesting that the identification be amended to include goods/services from the application from which the goods/services are to be moved, and specifying the serial number. The examining attorney must ensure that the USPTO automated records are updated to reflect the changes in both applications.
An applicant may file a request to move all the goods/services from one application to another, if the applicant meets the requirements set forth above. The USPTO will construe such a request as a request to expressly abandon the application from which the goods/services are moved. If the request to move all the goods/services is granted, and no goods or services remain in the application from which the goods/services are moved, the USPTO will abandon the application. The USPTO will not refund the application filing fee. See TMEP §718.01 regarding express abandonment.
1402.09 Use of Registered Marks Inappropriate in Identifications
If a trademark or a service mark that is registered to an entity other than the applicant is used in the identification of goods or services, the examining attorney should require that it be deleted and that generic wording be substituted. It is inappropriate to use a registered mark to identify a kind of product or a service, because such a mark indicates origin in only one party and cannot be used to define goods that originate in a party other than the registrant. Camloc Fastener Corp. v. Grant, 119 USPQ 264, 265 n.1 (TTAB 1958). In place of the mark, a generic term must be used.
However, an applicant may use its own registered mark in an identification of goods or services in its own application. The applicant should be careful to use the registered mark as an adjective and to follow it with the generic name of the goods or services offered under its mark. The words “applicant” or “registrant” should not appear in the identification of goods. Before registration, use of the term “registrant” is inaccurate, and, after registration, use of the term “applicant” is inaccurate.
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If the examining attorney issues a nonfinal action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but is unacceptable because it includes a registered trademark or service mark, this is not considered a new issue, and the examining attorney must issue a final requirement for amendment of the identification. However, if the examining attorney issues a final action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but includes a registered mark, the examining attorney should treat the response as incomplete, and grant the applicant additional time to cure this deficiency, pursuant to 37 C.F.R. §2.65(b). See TMEP §718.03(b) for further information about granting an applicant additional time to perfect an incomplete response. Examining attorneys are encouraged to try to resolve this issue by examiner’s amendment.
1402.10 Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications
See TMEP §1104.09(c) regarding examination of the identification of goods or services in an amendment to allege use; TMEP §1108.02(d) regarding the identification of goods or services in a request for an extension of time to file a statement of use; and TMEP §1109.13 regarding examination of the identification of goods or services in a statement of use.
1402.11 Identification of Services
This section addresses identifications of particular types of services.
The major requirements for an acceptable identification of services are: (1) the identification must be definite; (2) it must use the common name or terminology for the services, so as to be readily understandable; (3) it must accurately describe the services; and (4) it must specify the services, and not merely refer to “collateral or related activities associated with rendering the services.”
Example - Where a mark identifies checking account services, the identification “banking services in the nature of a checking account” is more accurate than the general identification “banking services,” which is inclusive of services that may not be associated with the mark. The former identification is more definite, and clearly stated. On the other hand, if a service mark identifies a bank’s many services, then the more general identification “banking services” would be appropriate. Thus, either of these identifications could be accepted depending on the particular circumstances, including the nature of the mark and its use or intended use. In both cases, the services would be classified in Class 36.
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Example - “Radio broadcasting services” (Class 38) would be an appropriate identification when a radio station uses a mark, such as call letters, to indicate the source of its broadcasting services generally. On the other hand, if an applicant is using the name of a weekly comedy television show as a mark, “television broadcasting services” would not be appropriate because the mark does not serve to identify and distinguish the electrical transmission of the program. Instead, the applicant should identify the services as “television entertainment services in the nature of a series of comedy programs” (Class 41).
Generally, the identification of a service should not emphasize the method or manner by which the service is provided. However, in some circumstances, it may be helpful to include such information in a trailing phrase.
Example - “Accounting services” (Class 35) is an acceptable identification of services; thus, whether this type of service is rendered by use of computers or other means need not be mentioned.
Example - “Dinner theater services” (Class 41) emphasizes the entertainment aspect associated with theater generally. The fact that dinner is also served at the theater performance is ancillary to the primary service of presenting the theatrical production.
For franchise services (rendered by a franchisor as distinguished from a franchisee), the identification should include an indication of the type of franchise.
Example - “franchising services, namely, offering technical assistance in the establishment and/or operation of restaurants” (Class 35).
A mark identifying a beauty contest is classified either as a promotional service rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service. When the record shows that the primary purpose of conducting such a pageant is to promote the sale of goods or services of the sponsors, the service should be recited as “promoting the goods or services of others by means of a beauty contest,” in Class 35. Where the beauty contest is presented primarily as entertainment for the general public (such as beauty contests offered in theaters or amusement parks), the service should be identified as, “entertainment services in the nature of beauty contests,” in Class 41.
The activities recited in the identification must constitute services as contemplated by the Trademark Act. See TMEP §§1301.01 et seq. as to what constitutes a registrable service. For example, “sales” cannot be listed
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as the primary activity in an identification, because the sale of one’s own goods is not a registrable service.
See also TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.
1402.11(a) Computer Services
Services Classified in Classes 35, 36, 37, 39, 40, 41, 44, and 45
Any activity consisting of a service that ordinarily falls in these classes (e.g., real estate agency services, banking services, dating services), and that happens to be provided over the Internet, is classified in the class where the underlying service is classified. For example, banking services are in Class 36 whether provided in a bank or online.
The following are examples of some acceptable identifications:
• “Providing banking services via the Internet, in Class 36.” • “Arranging travel tours via the Internet, in Class 39.” • “Promoting the goods and services of others by preparing and placing
advertisements on websites accessed through the Internet, in Class 35.”
• “Electronic payment, namely, electronic processing and transmission of bill payment data, in Class 36.”
• “Providing social introduction services by means of an Internet website, in Class 45.”
Content Providers
The service of providing information via the Internet is classified in the class of the information subject. Entities that provide these services by computer are considered to be “content providers,” that is, they provide the informational or substantive content of a website and/or home page. If an entity provides information in a wide variety of fields, the applicant must select the subject matter to be protected and classify the services accordingly (e.g., banking information in Class 36, business information in Class 35, home repair information in Class 37). See TMEP §1402.11(b) regarding information services.
Some acceptable identifications:
• “Providing information in the field of banking via websites on the Internet, in Class 36.”
• “Providing a website featuring information in the field of banking, in Class 36.” This is purely an information provision service and should be treated accordingly. Note: The identification “providing a website in the field of _________” is not acceptable because there is no
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indication of what the services are, e.g., providing information, online retail store services.
• “Providing information in the field of travel destinations, in Class 39.”
Class 38: Provision of Telecommunications Connections to the Internet
These services primarily involve providing telecommunication connections such as those provided by AT&T® and Verizon®. Telecommunication connections are the technical means by which one computer can communicate with another. A telecommunications provider is NOT providing the computer technology that transfers the data; rather, it provides the means by which that data or information is transferred. This service connects the user to the website itself.
Remember: Just because the applicant is conducting an activity that may involve transmission of data on the Internet does not mean the applicant’s service is a Class 38 service. For example, an applicant who merely has a website is not conducting “electronic transmission of messages and data,” in Class 38. The companies providing the Internet connections are conducting the actual transmissions; the applicant is merely making the information available.
“Online bulletin boards” and “chat rooms” are classified in Class 38 regardless of the content or subject matter. The rationale for this stems from the fact that these services allow individuals to communicate with each other, like other Class 38 services.
“Providing multiple-user access to the Internet,” is classified in Class 38. Note: This identification covers those services provided by Internet Service Providers (“ISPs”), such as Cox®, AOL®, Comcast®, and AT&T®. They provide the computer connection (often using the Class 38 telecommunications services of other entities) that enables a computer user to access the databases and websites of others via the Internet. These entities are considered “access providers” in that they provide the computer connection needed for a computer user to access a content provider. The word “access” should be limited to these services and should not be used in describing the services of a content provider.
Some acceptable identifications:
• “Provision of telecommunications connections to the Internet, in Class 38.”
• “Electronic mail services, in International Class 38.” • “Broadcasting television or radio programs via the Internet, in Class
38.” • “Webcasting audio/visual programming via the Internet, in Class 38.” • “Video and audio teleconferencing via the Internet, in Class 38.” • “Providing an online bulletin board in the field of medicine, in Class 38.”
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• “Providing online chat rooms for transmission of messages among computer users concerning teen topics, in Class 38.”
• “Providing multiple-user access to the Internet, in Class 38.” Many ISPs, such as AOL®, have expanded their services to encompass content-based services for their subscribers. The “providing multiple- user access” identification only covers the ISP services. If the applicant wishes to protect its “content-based” services, it must identify those services with specificity and pay the appropriate fees therefor, if applicable.
Office-Function-Type Computer Services
These services are essentially office function services (e.g., filing and record keeping) that happen to be conducted with the use of a computer:
• “Data processing services, in Class 35.” • “Computer data entry and data retrieval services, in Class 35.”
Computer Installation and Repair Services
The applicant must distinguish between computer hardware and computer software. For example:
• “Installation, maintenance, and repair of computer hardware systems, in Class 37.”
• “Installation, maintenance, and updating of computer software systems, in Class 42.”
If the installation and maintenance services refer to networks or systems, the service should be classified in Class 37. For example:
“Installation, maintenance, and repair of computer systems, in Class 37.”
If the applicant applies for “technical support services,” the examining attorney should suggest both of the following two identifications:
• “Installation and maintenance services in either Class 37 or 42 (depending on whether the subject matter is hardware or software);” and
• “Technical support services, namely, troubleshooting of computer hardware and software problems in Class 42.”
Computer Retail Services
Retail (and distributorship) services are classified in Class 35 no matter how the services are conducted. Either of the following identifications is acceptable:
• “Computerized online retail store services in the field of [specify], in Class 35.”
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• “Providing a website used to place online orders in the field of [specify], in Class 35.”
Computer Entertainment Services
Generally, entertainment services are classified in Class 41. The difficulty is trying to figure out what entertainment activity the applicant is conducting. Therefore, the identification “providing a website featuring entertainment” is not acceptable. Instead, one of the following may be more appropriate:
If the services comprise an “online game:”
• “Entertainment services, namely, providing a multiple-user online computer game, in Class 41.”
• “Providing a computer game that may be accessed network-wide by network users, in Class 41.”
If the services involve “chat rooms:” “Providing online chat rooms for transmission of messages among computer users concerning [indicate field or subject of chat room], in Class 38.”
If the services involve providing content: “Providing a website featuring information in the field of computer gaming entertainment, in Class 41.” See TMEP §1402.11(b).
If the services involve providing a website from which a user can receive “webcasted” transmissions over the Internet: “Broadcasting (radio programs, television programs, multimedia programming, etc.) via the Internet, in Class 38.”
If the services consist of providing a particular online show “webcasted” over the Internet: “Entertainment, namely a continuing [indicate type, e.g., variety, news, comedy] show broadcasted over the Internet, in Class 41.”
Computer Design and Development Services
Generally, these services are in Class 42. It is important to remember that these services must be performed for the benefit of others. If an applicant is developing its own software, it is not engaging in a recognized service. (See TMEP §§1301.01 et seq. regarding activities that do not constitute services.) If the services are identified as “computer design and development services,” the specimens must show that the applicant provides these services for other parties. Some acceptable identifications are:
• “Computer software design and development services for others, in Class 42.”
• “Computer services, namely, creating and maintaining websites for others, in Class 42.”
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• “Duplication of computer programs, in Class 42.”
Database Services
Prior to January 1, 2002, the service of providing an online database via the Internet was classified in Class 42 if the database included a wide variety of subject matter. However, effective January 1, 2002, the subject matter or content of the online database now governs the classification of the services. Applicants must now separate the subject matter or content of the databases into their appropriate individual international classes. Acceptable identifications include:
• “Providing an online electronic database on the Internet in the field of banking, in Class 36.”
• “Providing an online electronic database on the Internet in the field of business evaluations of automobile companies, in Class 35.”
• “Providing an online electronic database on the Internet in the field of computer programming, in Class 42.”
• “Providing an online electronic database on the Internet in the field of cosmetology, in Class 44.”
In determining whether the specimens support “database provision services,” look for the following clues:
• See if the specimens use words like “to access our database,” “our database includes…”, etc.
• Confirm that the information provided online is capable of being searched, sorted, re-arranged, and indexed like a traditional database.
• If the specimens consist of merely a series of web pages, this is NOT a database. A more appropriate identification would be “providing a website on the Internet featuring information in the fields of ________, in Class ___ (class dependent on the content).”
Other common database services include the following:
• “Database development services, in Class 42.” • “Computerized database management services, in Class 35.”
See TMEP §1402.11(b) regarding information services.
Miscellaneous Computer Services
Occasionally, an applicant applies for an identification such as “electronic storage and retrieval of information, in Class 35.” This identification is no longer acceptable. The examining attorney should suggest wording such as: “electronic storage (or archiving) for others of [indicate subject matter, e.g., messages, data], in Class 39.”
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Do not use the term “data warehouse” to describe these services. A “data warehouse” is a very large database designed for fast processing of queries, projections, and data summaries, normally used by a large organization.
Online Publications
All online publications are classified in Class 41 no matter what the subject matter. An acceptable identification would be:
“Computer services, namely providing online [indicate specific nature of publications, e.g., magazines or newsletters] in the field of [indicate subject matter of publication], in Class 41.”
A column or section of an online publication would be identified as “computer services, namely, providing a [column or section] in an online [indicate type of publication] in the field of [indicate subject matter of publication],” in Class 41.
The examining attorney should verify from the specimens that the information is presented in a “publication” format. An online magazine in Class 41 must really look and act like a magazine, i.e., contain monthly or periodic articles, sections, features, advertisements, credits, etc. If it does not, a more appropriate identification would be “providing a website on the Internet featuring information in the field of ________, in Class ___” (classification dependent on the content).
If an applicant identifies its goods as “publications, namely ...,” and it becomes apparent during examination that the goods are in fact online publications, the applicant may amend the identification to indicate that the goods are online publications in Class 41, since the term “publications” is broad enough to encompass both printed and online publications. On the other hand, if the applicant identifies its goods as “printed publications...,” the identification cannot be amended to indicate that the goods are “online publications,” because this would exceed the scope of the original identification. 37 C.F.R. §2.71(a).
1402.11(b) Information Services
Prior to January 1, 2002, the identification “providing information in a wide variety of fields” was an acceptable identification of services, particularly in the context of Internet websites. The only caveat was to make sure that the website or information services did provide information in a wide variety of fields.
Effective January 1, 2002, the “miscellaneous” phrase has been eliminated from the heading of Class 42 (see TMEP §1401.09(a)). Therefore, the examining attorney must require that the applicant indicate the fields in which it is providing information so that the service can be accurately classified.
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The fields may be listed somewhat broadly, but with enough specificity to allow classification. “Bundling” of the fields of information (that is, listing all fields of information but allowing the dominant or most significant field to control the classification with the other fields simply “along for the ride”) is no longer acceptable.
Since information services must now be classified according to the subject matter of the information, the nature or subject matter of the information provided must be specified to allow for proper classification. For example, “information in the field of automobiles” is not sufficiently definite to allow for proper classification. If the information pertains to purchasing an automobile, then the service is classified in Class 35. If the information pertains to the care and maintenance of automobiles, the service is classified in Class 37. If the service involves insurance or financing of automobiles, then Class 36 is the proper class. Perhaps the best way to ensure that the information is classified correctly is to identify the subject matter of the service. For example, “information in the field of automobile financing” is adequate to classify the service in Class 36. Another way to clarify the classification of information services is to characterize the information itself. Thus, “providing financing information in the field of automobiles” clearly puts the service in Class 36. As with many other service identifications that require an indication of the subject matter or field, the subject matter or field does not have to be as specific as would be required if that were the service itself. However, an indication of the nature of the information must be included, either by reference to the type of information or the subject matter of the information provided, to allow for proper classification of the activity.
An applicant is not required to register in all classes in which it provides information, but may instead choose to register only the classes of the fields that are most important to it. The examining attorney will ask the applicant to indicate the fields of information to assist in classification. The applicant must decide if it wishes to: (1) go forward and register the information services in all of the appropriate classes; or (2) choose the class(es) that are most important to its business, and amend the identification to delete reference to fields of information that fall into other classes. See TMEP §1401.04(b).
1402.11(c) Association Services and “Promoting the Interest of” Services
The classification of services rendered by associations was affected by the reorganization of Class 42 (see TMEP §§1401.09 et seq.). Prior to January 1, 2002, the Explanatory Notes regarding this topic for the old Class 42 included the language “services (not included in other classes) rendered by associations to their own members.” This language in the old Class 42 allowed identifications of services such as “association services, namely, promoting the interest of lawyers” to be accepted in Class 42. Effective January 1, 2002, there is no reference to “services rendered by an
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association” in the Class Heading or Explanatory Notes for any of the service classes.
Most activities rendered by associations are easily classified in other classes, e.g., insurance services (Class 36), business services (Class 35), travel arrangements (Class 39), training and entertainment (Class 41).
Effective January 1, 2002, lobbying services and activities related or similar to lobbying activities provided by an association are classified in Class 35, because they further the business interests of the group represented by the association. Even non-business interests such as those that promote reading skills or environmental protection have a “business interest” in promoting their concerns.
1402.11(d) Charitable Services, Other than Monetary
Prior to January 1, 2002, non-monetary charitable services were classified in Class 42, regardless of the type of service being provided by the charity. Effective January 1, 2002, services are classified by the nature of the service provided, e.g., “charitable services, namely, providing shelter for the homeless” are in Class 43, like other temporary accommodation services; “charitable services, namely, providing tutoring for underprivileged students” are classified in Class 41 like other educational services. See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.
1402.11(e) Consulting Services
Prior to January 1, 2002, all consulting services were classified in Class 42 except those relating to business (Class 35) and financial or insurance (Class 36). Effective January 1, 2002, consulting services are classified in the class of the subject matter of the service. This includes technical consulting services. Technical consulting is like any other consultation service; it just focuses more on how things work. Thus, the type of consultation or subject matter of the consultation must be set forth with adequate specificity to allow for accurate classification. It should be noted that “technology consulting” is in Class 42 because it encompasses consulting about the information technology related to the subject matter given.
Some Acceptable Identifications:
• “Consulting in the field of telecommunication services, namely, transmission of voice, data, and documents via telecommunications networks, in Class 38.”
• “Consulting in the field of telecommunications technology, in Class 42.”
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• “Consulting in the field of maintenance and repair of telecommunications networks, apparatus, and instruments, in Class 37.”
• “Consulting in the field of environmental protection, namely, detection of contaminants in water, in Class 42.”
• “Technical consulting related to the installation of oil and gas equipment, control systems, and machinery, in Class 37.”
• “Technical consulting related to the manufacturing of oil and gas equipment, control systems, and machinery, in Class 40.”
• “Technical consulting, namely, troubleshooting the technology that controls gas equipment, control systems, and machinery, in Class 42.”
• Technical consulting in the field of environmental science, in Class 42.”
See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.
1402.11(f) Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Items
The services of production and distribution of motion pictures and television programs are classified in Class 41. This service involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. In this service, the ownership of the physical product does not leave the producer. The movie theatre or television stations ”lease” (in a sense) the film or tape for a period of time and then return it to the producer. This is not the case when distribution relates to videotapes, audiotapes, or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer. The ownership of the physical product is transferred to the purchaser just as it is with clothing, toys, food products, or computers. For this reason, the identification “distribution of videotapes, audiotapes, videodiscs, etc.” should not be accepted as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in that class. It is possible that such distribution could be considered a distributorship service in Class 35, but that must be determined on a case-by-case basis. Distribution of one‘s own goods is not a service; it is merely a necessary part of doing business. However, if the applicant
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distributes the videotapes, audiotapes, etc. of others as well as those it has produced, it may be identified as a distributorship service in Class 35.
See TMEP §§1301.01 et seq. regarding the criteria for determining whether an activity constitutes a service.
1402.11(g) Recorded Entertainment Services
For entertainment services such as those rendered by a musical group, the performance must be live. The recording of a live concert or studio performance is not considered a service of the performing group. Similarly, performances for the sole purpose of recording are not considered services. The production by another entity of a performance by a musical group for recordation would be a service, but an identification such as "live and recorded performances by a musical group" could not be accepted as a valid service identification unless the words "and recorded" were deleted.
Recorded entertainment usually takes the form of goods in Class 9, such as videotapes, audio cassettes, DVDs, CD-ROMs, etc. This is consistent with the treatment of "distribution" of these products as goods and not services as discussed in §1402.11(f).
See TMEP §§1301.01 et seq. regarding the criteria for determining whether an activity constitutes a service.
1402.11(h) Identification of “Bonus Programs”
Many businesses offer "bonus programs" or "frequent patron programs" to encourage patronage of that business. However, promotion of one’s own goods or services is not considered a service under the Lanham Act since the beneficiary of such an activity is the business itself and not a third party. See TMEP §1301.01(b)(i). These special programs do confer some benefit to the customers who participate in the program, but this benefit flows directly from use of the trademark owner’s goods or services. Thus, a frequent flyer program provided by an airline to encourage use of its own air transportation services would be identified as "air transportation services featuring a frequent flyer bonus program" and it would be classified in Class 39. Similarly, a retail store that has a program through which patrons earn points that result in discounts on future purchases at that store would be identified as "retail store services in the field of [indicate field] featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases." This service would be in Class 35 because it is primarily a retail store service. It should be noted that organizing and conducting a program of this type for a third party is a promotion/advertising service and would be classified in Class 35 and identified with language such as "promoting the goods and services of others by means of a point
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accumulation program with points used for discounts on future purchases of those goods and services" (or whatever the details of the program may be.)
1402.11(i) Recognition of Industry Terms
Industry terminology should be recognized as sufficient to identify the services when supported by two or three references in dictionaries related to that industry or other similar resource books. Examples of acceptable terminology are "telecommunications services, namely, personal communications services" and "telecommunications services, namely, ISDN services." If there is any question, a brief explanation of the activity may be included in the identification, but the accepted industry terminology may remain part of the identification as well.
1402.11(j) Issuing Awards
Services that involve the issuance of awards are usually classified in Classes 35 and 41. Classification depends upon the purpose of the award program. If the award program is an employee incentive rewarding excellence in job- related performance that actually furthers the business of an employer (e.g., safety, quality, productivity, customer service), then the service is classified in Class 35. If the award program is to recognize excellence or achievement that may or may not be related to the participants’ business or professional endeavors (e.g., achievements in community service, excellence in country music performance), then the service should be classified in Class 41. The distinction is that Class 35 award programs do further the business interests of an employer by encouraging positive business-related performance, while Class 41 award programs reward excellence for endeavors that do not further the business interests of an employer.
1402.12 Parentheses and Brackets Should Not be Used in Identifications of Goods and Services
Generally, parentheses and brackets should not be used in identifications of goods and services. The Post Registration Section of the USPTO uses single brackets to indicate that goods/services have been deleted from a registration either by amendment under 15 U.S.C. §1057, filing of a partial affidavit of continued use under 15 U.S.C. §1058 or 15 U.S.C. §1141k, or filing of a partial renewal application under 15 U.S.C. §1059. The Post Registration Section also uses double parentheses to indicate that certain goods or services are not claimed in an affidavit of incontestability under 15 U.S.C. §1065. See TMEP Chapter 1600 regarding affidavits of continued use or excusable nonuse, renewal applications, affidavits of incontestability, and amendment of registrations.
Therefore, to avoid confusion, applicants should not use parentheses and brackets in the identification of goods or services in an application. The only
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time parentheses may be used in an identification is when the parentheses merely explain or translate the matter preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification.
For example, “bags (tote)” in Class 18 would not be an acceptable use of parentheses. If the identification were misinterpreted to mean that “tote” was no longer part of the identification of goods (due to an amendment of the goods, or filing of a partial affidavit of continued use or renewal application, the item would merely read “bags.” That would create an ambiguity within Class 18, since it could refer to any type of bag – from an all-purpose sports bag to an evening bag – and it would make a determination of likelihood of confusion difficult. Also, some bags are in classes other than Class 18. Without an indication of the type of bag, classification of the goods is problematic.
However, an identification of goods such as “obi (Japanese sash)” in Class 25 would be acceptable because the parenthetical phrase merely provides further information about the goods.
1402.13 Requirement For Amendment of Portion of Identification of Goods/Services
If a requirement for an amendment of the identification of goods and/or services is expressly limited to only certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services, if it is otherwise in condition for approval for publication. 37 C.F.R. §2.65(a); TMEP §718.02(a).
Accordingly, when the identification of goods/services includes some terminology that is indefinite and some terminology that is acceptable, the examining attorney should specify which terminology is indefinite, suggest amended language if possible, and indicate that the rest of the identification is acceptable.
When an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, and the application is otherwise in condition for approval for publication, the examining attorney should issue an examiner’s amendment that clearly sets forth the changes that will be made to the identification of goods/services. No prior authorization from the applicant is needed to issue an examiner’s amendment in this situation. See TMEP §707.02 regarding examiner’s amendments without prior authorization by the applicant.
1402.14 Identification of Goods/Services Must Conform to Rules and Policies in Effect at the Time Registration is Sought
The question of whether an identification of goods/services is acceptable must be determined on the basis of the facts and evidence that exist at the
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time registration is sought, that is, at the time of filing. Cf. TMEP §1216.01. The international classification system and USPTO policy on acceptable identifications change periodically (see, e.g., TMEP §§1401.09 et seq. regarding the restructuring of international class 42). Therefore, the fact that an identification of goods or services was accepted in an earlier-filed application or prior registration does not necessarily mean it is controlling in a later-filed application. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (examining attorney’s requirement for amendment of the term “chronographs” in the identification of goods upheld, notwithstanding applicant’s ownership of several registrations in which this term appears without further qualification in the identification).
1402.15 Procedures for Processing Unacceptable Amendments to Identifications
If an applicant submits an amendment to the identification of goods/services and the examining attorney determines that the amendment is unacceptable, the examining attorney must issue an action refusing to accept the amendment. If an unacceptable amendment was entered into the automated records of the USPTO, and an acceptable amendment was subsequently submitted, the examining attorney must ensure that the automated records are modified to reflect the acceptable identification prior to approving the mark for publication.
If the applicant later submits arguments in support of acceptance of the amendment and the examining attorney determines that the amendment is still unacceptable, the examining attorney must issue a final refusal of the amendment, if the application is otherwise in condition for final action.
1403 Combined or Multiple-Class Application
37 C.F.R. §2.86. Application may include multiple classes.
(a) In a single application, an applicant may apply to register the same mark for goods and/or services in multiple classes. The applicant must:
(1) Specifically identify the goods or services in each class;
(2) Submit an application filing fee for each class, as set forth in §2.6(a)(1); and
(3) Include either dates of use (see §§2.34(a)(1)(ii) and (iii)) and one specimen for each class, or a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class. 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.
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(b) An amendment to allege use under §2.76 or a statement of use under §2.88 must include, for each class, the required fee, dates of use, and one specimen. The applicant may not file the amendment to allege use or statement of use until the applicant has used the mark on all the goods or services, unless the applicant files a request to divide. See §2.87 for information regarding requests to divide.
(c) The Office will issue a single certificate of registration for the mark, unless the applicant files a request to divide. See §2.87 for information regarding requests to divide.
1403.01 Requirements for Combined or Multiple-Class Application
Goods and/or services that fall in more than one class may be included in one application, called a “combined” or “multiple-class” application.
A multiple-class application may be viewed as a group of applications for registration of a mark in connection with goods or services in each class, combined into one application. Each class of goods or services must be considered separately. See G&W Laboratories, Inc. v. G W Pharma Ltd., 89 USPQ2d 1571 (TTAB 2009).
A multiple-class application may pertain to only one mark, and to only one register. A single certificate of registration will be issued, unless the application is divided. See TMEP §§1110 et seq. regarding division of an application.
A multiple-class application must contain the following:
(1) The class numbers for which registration is sought, and the goods or services appropriately classified in each class. The classes must be set forth in consecutive numerical order beginning with the lowest number, and the goods or services must be listed in association with their class numbers. Setting the classes and the goods or services out in tabulated form rather than narrative form is desirable because it usually adds clarity. 37 C.F.R. §§2.32(a)(6) and (7).
(2) A filing fee for each class. 37 C.F.R. §§2.6(a)(1), 2.32(d), and 2.86(a)(2). See TMEP §§810.01 and 1403.06.
(3) The dates of first use and first use in commerce for each class, in an application under §1(a) of the Act. 37 C.F.R. §2.86(a)(3). If the dates are the same for all classes, the dates may be stated once, with the statement that the mark was first used on said dates on the goods or services in all the classes. If the dates of use differ for different classes, the appropriate dates for each class must be specified separately. The dates may be set forth in separate clauses,
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sentences, or paragraphs, or in tabular form, whichever will give complete information in the clearest way under the circumstances.
(4) One specimen supporting use of the mark on goods or services in each class, in an application under §1(a) of the Act. 37 C.F.R. §2.86(a)(3). If a single specimen supports multiple classes, the applicant may so indicate, and the examining attorney need not require multiple copies of the specimen. The examining attorney should make a note, in the “Notes-to-the-File” section of the record, indicating which classes the specimen supports.
(5) Only one drawing may be included, because there may be only one mark per application. See TMEP §807.01.
Prior to registration, an intent-to-use applicant must file an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d) which: states that the applicant is using the mark in commerce on or in connection with the goods or services; includes dates of use and a filing fee for each class; and includes one specimen evidencing use of the mark for each class. 37 C.F.R. §2.86(b). See 37 C.F.R. §2.76 and TMEP §§1104 et seq. regarding amendments to allege use, and 37 C.F.R. §2.88 and TMEP §§1109 et seq. regarding statements of use.
1403.02 Amendment of Combined or Multiple-Class Application
An application under §1 or §44 of the Trademark Act may be amended during prosecution to delete, correct, or add classes, when appropriate.
In a §66(a) application, classes may be deleted, but classes cannot be added, and goods/services cannot be moved to another class. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c).
1403.02(a) Deletion of Classes
An applicant may delete a class or classes and prosecute the application only in the remaining class or classes. Normally, the filing fee is not refunded when a class is deleted. 37 C.F.R. §2.209; TMEP §§405.04 and 810.02.
If the applicant designates the classes incorrectly and there are actually no goods in one of the classes designated in a multiple class application, the fee for that class may be refunded.
1403.02(b) Correction of Classification
In an application under §1 or §44 of the Trademark Act, improper classification can be corrected by switching goods/services by amendment from one to another of the classes originally set forth, or by changing the class designations, as long as the number of classes is not increased.
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The examining attorney may correct classification through an examiner’s amendment, without prior authorization by the applicant. See TMEP §707.02.
When more than one item of goods or services are listed in a class, the specimen and dates of use given do not necessarily apply to all the items listed. If the item to which the specimen and/or dates pertain is removed from the identification by amendment, the applicant must submit a new specimen and/or dates of use for that class. If the new dates differ from the dates originally set forth, the additional dates must be supported by an affidavit or declaration by the applicant. 37 C.F.R. §2.71(c). See TMEP §903.04 regarding permissible amendment of dates of use.
In a §66(a) application, classes cannot be added, and goods/services cannot be moved to another class. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c).
1403.02(c) Addition of Classes
In an application under §1 or §44 of the Trademark Act, class(es) may be added if any of the items originally recited are properly classified in class(es) not originally designated. The applicant must pay an additional fee for each new class.
The amount of the fee varies depending on the method used to file the original application and the amendment adding classes, as follows:
• If the original application was filed through TEAS Plus and the amendment is filed through TEAS (either as a preliminary amendment or a response to an examining attorney’s Office action) or entered by examiner’s amendment, then the fee for adding a class is the same as the TEAS Plus application filing fee per class (37 C.F.R. §2.6(a)(1)(iii)).
• If the original application was not filed through TEAS Plus, and the amendment is filed through TEAS or entered by examiner’s amendment, then the fee for adding a class is the same as the TEAS application filing fee per class (37 C.F.R. §2.6(a)(1)(ii)).
• If the amendment is filed on paper, then the fee for adding a class is the same as the fee per class for filing an application on paper (37 C.F.R. §2.6(a)(1)(i)), regardless of how the original application was filed.
The current fee schedule is available on the USPTO website at http://www.uspto.gov.
If dates of use for a class that is added are different from dates previously set forth, the applicant must submit an affidavit or declaration under 37 C.F.R.
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§2.20 to support the dates. 37 C.F.R. §2.71(c). See TMEP §903.04 regarding permissible amendment of dates of use.
An additional specimen that is not identical to a specimen originally filed must be supported by an affidavit or declaration attesting to its use as of an appropriate date. 37 C.F.R. §2.59; TMEP §904.05.
If an intent-to-use application is amended to add class(es), the applicant must submit, for each added class, the basic application fee and fees for the allegation of use (i.e., either the amendment to allege use or the statement of use), and any extension request(s) granted in the interim. This applies even if the classes are added after the amendment to allege use or statement of use is filed, or the extension request(s) is granted.
In a §66(a) application, classes cannot be added, and goods/services cannot be moved to another class. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c).
1403.03 Dividing of Combined or Multiple-Class Application
A delay in registration of one class in a multiple-class application will mean delay for the entire application. In such a situation, upon payment of the applicable fee, the applicant may file a request to physically divide the original application into separate applications. These new applications are assigned new serial numbers and cross-referenced with the original application. The additional separate applications are given the same filing date as the original application.
The following are examples of situations when an applicant may want to have class(es) divided out into one or more separate applications:
(1) Registration is refused in less than all the classes;
(2) A notice of opposition is filed against goods or services in less than all the classes; or
(3) The applicant in a §1(b) application begins using the mark in commerce on goods or services in less than all the classes.
When a multiple-class application is divided, the application is separated or divided into individual applications. See TMEP §§1110 et seq. for information about dividing an application.
1403.04 Combined or Multiple-Class Marks in Official Gazette
The marks in multiple-class applications appear in the Official Gazette in a separate section from the marks in single-class applications. Therefore, it is necessary to look in more than one place in the Official Gazette to make a complete review of published marks.
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1403.05 Refusals and Oppositions as to Less Than All the Classes in a Multiple Class Application
A refusal to register or a requirement may be made for less than all the classes in an application. Whether it is appropriate to make a refusal or requirement with regard to less than all classes must be considered on a case-by-case basis.
When issuing a refusal or requirement pertaining to less than all the classes, the examining attorney must expressly state that the refusal or requirement that applies only to certain class(es), and indicate the class(es) to which the refusal or requirement pertains. If an applicant fails to file a complete response to a refusal or requirement that was expressly limited to certain class(es), the application shall be abandoned only as to those class(es) if it is otherwise in condition for approval for publication. 37 C.F.R. §2.65(a). See TMEP §718.02(a).
When an opposition is sustained only as to some of the class(es) in a multiple-class application, the application is returned to the examining attorney. The examining attorney must perform the proper TRAM transaction to ensure issuance of registration for only the proper class(es).
1403.06 Fees for Action After Filing, Multiple Classes
In a multiple-class application or registration, a fee for each class must be paid when filing an allegation of use or request for extension of time to file a statement of use for applications under §1(b) of the Trademark Act; ex parte appeal to the Trademark Trial and Appeal Board; affidavit or declaration under §8 or §71 of the Act; affidavit of incontestability under §15 of the Act; application for renewal of a registration under §9 of the Act, opposition, or petition for cancellation of a registration under §14 of the Act. 15 U.S.C. §§1051, 1058, 1059, 1063, 1064, 1065, and 1141k.
In these situations, when a party submits a fee that does not cover all the classes in the application or registration, the party should state that action is sought only for the number of classes equal to the number of fees submitted, and should specify the classes for which action is being sought. This may avoid an unnecessary inquiry by the USPTO.
See TMEP §1403.02(c) regarding the amount of the fee(s) for adding class(es) to an application.
1403.07 Surrender or Amendment in Multiple-Class Registrations
In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire
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class constitutes a surrender of the registration for cancellation as to the class deleted. 37 C.F.R. §2.172; TMEP §1609.03.
Chapter 1500 Post-Examination Procedures
1501 Appeal to Trademark Trial and Appeal Board
1501.01 Appealable Matter
1501.02 Appeal Briefs
1501.02(a) Applicant’s Appeal Brief
1501.02(b) Examining Attorney’s Appeal Brief
1501.02(c) Reply Briefs in Ex Parte Appeals
1501.03 Withdrawal of Refusal or Requirement After Appeal
1501.04 Fee for Appeal
1501.05 Amendment During Appeal
1501.06 Amendment After Decision on Appeal
1501.07 Examining Attorney’s Request for Reconsideration
1502 Publication in Trademark Official Gazette
1502.01 Notification of Clerical Errors in Trademark Official Gazette
1503 Opposition
1503.01 Filing a Notice of Opposition
1503.02 Joining Persons in an Opposition
1503.03 Time for Opposing
1503.04 Extension of Time to Oppose
1503.05 Opposition to §66(a) Applications
1504 Jurisdiction over Application
1504.01 Jurisdiction of Examining Attorney
1504.02 Jurisdiction of Trademark Trial and Appeal Board
1504.03 Action By Examining Attorney After Publication
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1504.04 Restoration of Jurisdiction to Examining Attorney by Director
1504.04(a) Request for Jurisdiction
1504.05 Remand to Examining Attorney by Trademark Trial and Appeal Board
1504.05(a) Request for Remand
1505 Amendments Filed by Applicants After Publication
1505.01 Procedures for Processing Amendments Filed by the Applicant After Publication
1505.01(a) Form and Timing of Amendments
1505.01(b) Processing Amendments to §§1(a), 44, and 66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued
1505.01(b)(i) Acceptable Amendments
1505.01(b)(ii) Unacceptable Amendments
1505.01(c) Processing Amendments to §1(b) Applications In Cases Where No Opposition Has Been Filed and No Notice of Allowance Has Issued
1505.01(c)(i) Acceptable Amendments
1505.01(c)(ii) Unacceptable Amendments
1505.01(d) Processing Amendments Filed Between Issuance of the Notice of Allowance and Filing of Statement of Use
1505.01(e) Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted
1505.01(f) Processing Amendments in Cases Where an Opposition Has Been Filed
1505.02 Types of Amendments After Publication
1505.02(a) Amendments to the Identification of Goods or Services
1505.02(b) Amendments to Classification
1505.02(c) Amendments to Marks
1505.02(d) Amendments to the Dates of Use
1505.02(e) Amendments Adding or Deleting Disclaimers
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1505.02(f) Amendment of the Basis
1505.02(g) Amendments to the Applicant’s Name, Citizenship, or Entity Type
1505.03 Republication for Opposition
1505.03(a) When Republication is Required
1505.03(b) When Republication is Not Required
1506 Concurrent Use Registration Proceeding
1507 Interference
1501 Appeal to Trademark Trial and Appeal Board
15 U.S.C. §1070. An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks upon the payment of the prescribed fee.
37 C.F.R. §2.141 Ex parte appeals from action of trademark examining attorney.
(a) An applicant may, upon final refusal by the trademark examining attorney, appeal to the Trademark Trial and Appeal Board upon payment of the prescribed fee for each class in the application for which an appeal is taken, within six months of the date of issuance of the final action. A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.
(b) The applicant must pay an appeal fee for each class from which the appeal is taken. If the applicant does not pay an appeal fee for at least one class of goods or services before expiration of the six-month statutory filing period, the application will be abandoned. In a multiple-class application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken. If the applicant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant may either pay the additional fees or specify the class(es) being appealed. If the applicant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.
An appeal from an examining attorney’s action is taken to the Trademark Trial and Appeal Board (“Board”), not to a court. An appeal is taken by filing a
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notice of appeal and paying the appeal fee within six months of the date of issuance of the action from which the appeal is taken. 15 U.S.C. §1070; 37 C.F.R. §2.142(a). See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §1202.03.
The Trademark Act gives applicants a right to appeal to the Board after a final action by an examining attorney. 15 U.S.C. §1070. Under 37 C.F.R. §2.141(a), a second refusal on the same grounds or a repeated requirement is considered a final action for purposes of appeal as long as all refusals or requirements are repeated in that action. Appeal from a first refusal or requirement, however, is premature.
The applicant must file the notice of appeal and appeal fee within six months of the date of issuance of the final refusal. 37 C.F.R. §2.142(a); TBMP §1202.02. To expedite processing, the United States Patent and Trademark Office (“USPTO”) strongly recommends that applicants file notices of appeal through the Electronic System for Trademark Trials and Appeals ("ESTTA") at http://estta.uspto.gov. If filing on paper, the applicant may use a certificate of mailing or transmission to avoid lateness. See 37 C.F.R. §§2.197 and 2.198, and TMEP §§305.02 et seq., 305.03, and 306.05 et seq. regarding certificate of mailing, “Express Mail,” and certificate of transmission procedures. If the applicant does not timely file a notice of appeal and appeal fee, the application is abandoned. 15 U.S.C. §1062(b). If the applicant’s failure to file a proper notice of appeal was unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66 (see TMEP §§1714 et seq.). Note: The unintentional delay standard of 37 C.F.R. §2.66 does not apply to applications that are abandoned due to an incomplete response e.g., a request for reconsideration that is not accompanied by a notice of appeal). See TMEP §§715.03 et seq. regarding requests for reconsideration, and TMEP §1714.01(f)(ii) regarding situations where the unintentional delay standard does not apply.
In appropriate circumstances, after an appeal is filed either the applicant or the examining attorney can request a remand, or the Board may remand the application to the examining attorney. See TBMP §§1209 et seq. regarding remand during an appeal. See also TMEP §§1504.05 et seq. for further information.
See, generally, 37 C.F.R. §§2.142 and 2.144 and TBMP Chapter 1200 for further information about ex parte appeals to the Board, and 15 U.S.C. §1071, 37 C.F.R. §2.145, and TBMP Chapter 900 regarding appeal to a court from a decision of the Board.
1501.01 Appealable Matter
An applicant who wishes to contest a refusal based on a matter of substance (e.g., a matter arising under §§2, 3, 4, 5, 6, or 23 of the Act of 1946,
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15 U.S.C. §§1052, 1053, 1054, 1055, 1056, or 1091), should file an appeal to the Board, not a petition to the Director.
If the only issue in dispute is a question regarding the applicant’s compliance with a technical provision of the Trademark Act or Trademark Rules of Practice, the applicant may file a petition to the Director rather than an appeal. See 37 C.F.R. §§2.63 and 2.146. See also TMEP §1704 and TBMP §1201.05 regarding petitionable matter versus appealable matter.
An examining attorney’s requirement that is the subject of a petition decided on the merits by the Director may not subsequently be the subject of an appeal to the Board. 37 C.F.R. §2.63(b).
1501.02 Appeal Briefs
1501.02(a) Applicant’s Appeal Brief
The applicant must file an appeal brief within 60 days of the date of the appeal, or the Board may dismiss the appeal. 37 C.F.R. §2.142(b)(1). See In re Live Earth Products Inc., 49 USPQ2d 1063 (TTAB 1998). If the appeal is dismissed, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief. Applicant may also file a motion to accept a late-filed brief when the time for filing the brief has expired but the Board has not yet issued an order dismissing the appeal. If the Board denies the motion, the applicant may file a petition to the Director under 37 C.F.R. §2.146, asking the Director to review the Board’s action. The Director will reverse the Board’s action only if the Board clearly erred or abused its discretion. An applicant should not file a petition to the Director until it has first filed a request/motion to accept the late-filed brief with the Board, and the Board has denied the request/motion. TBMP §1203.02(a). The applicant may not file a petition to revive under 37 C.F.R. §2.66 when an appeal is dismissed for failure to file a brief. TMEP §1714.01(f)(ii).
The date of appeal for purposes of calculating the due date of the appeal brief is the date on which the notice of appeal and filing fee is received by the USPTO. If the applicant has also filed a request for reconsideration under 37 C.F.R. §2.64, the Board will acknowledge receipt of the appeal and request, suspend further proceedings (including applicant’s time for filing its appeal brief), and remand the application to the examining attorney. See TBMP §§1203.02(a) and 1204 for further information. The filing of a request for reconsideration within six months of a final Office action will automatically result in a suspension of the appeal, and an applicant need not file either its appeal brief or a request for an extension of time to file the brief. See TBMP §1204.
The applicant’s brief may not exceed twenty-five double-spaced pages in length, and should meet the requirements of 37 C.F.R. §2.126. 37 C.F.R.
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§2.142(b)(2); TBMP §1203.01. See In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant’s 29-page brief).
1501.02(b) Examining Attorney’s Appeal Brief
After the applicant’s brief has been filed, the Board will send a notice to the examining attorney. The examining attorney has sixty days from the date of the Board’s notice to file a responsive brief with the Board and send a copy to the applicant. 37 C.F.R. §2.142(b)(1). See TBMP §1203.02(b).
The examining attorney’s appeal brief should be concise and contain a complete statement of reasons for the refusal(s) or requirement(s) and supporting facts.
Examining attorneys should use the format shown in Appendix A as a model when preparing an appeal brief. The purpose of this format is to promote consistency and to provide content guidelines. The substance of the appeal brief is a matter of individual discretion.
The brief may not exceed twenty-five double-spaced pages in length. 37 C.F.R. §2.142(b)(2); TBMP §1203.01. See In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board refused to consider applicant’s 29-page brief).
Because the record must be complete prior to appeal, the Board will normally not consider evidence submitted with the applicant's or examining attorney's brief. However, if the applicant does submit such evidence, the examining attorney should specifically object to such evidence if he or she does not want it to be considered. If the examining attorney does not object to the evidence, and discusses it in his or her brief or elsewhere in the record, the Board will treat it as of record. 37 C.F.R. §2.142(d); TBMP §1207.03; TMEP §710.01(c). See In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).
If, during the preparation of the appeal brief, the examining attorney determines that jurisdiction should be restored for further examination (e.g., to make a new refusal, to correct informalities, or to suspend), the examining attorney should submit a request for remand instead of an appeal brief. See TMEP §1504.05(a). If the Board grants the examining attorney’s request, the Board will stay further proceedings in connection with the appeal. If the Board denies the request, it will reset the time for submission of the examining attorney’s appeal brief.
1501.02(c) Reply Briefs in Ex Parte Appeals
The applicant may file a brief in reply to the examining attorney’s appeal brief. Reply briefs must be filed within twenty days of the date of issuance of the examining attorney’s brief. 37 C.F.R. §2.142(b)(1). The examining attorney may not file a written response to the reply brief. However, in the oral
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argument (if the applicant requests an oral argument), the examining attorney should respond to any significant issues raised in the applicant’s reply brief.
1501.03 Withdrawal of Refusal or Requirement After Appeal
If, after considering the applicant’s brief or reply brief, the examining attorney believes that the requirement or refusal should be withdrawn, the examining attorney should withdraw the requirement or refusal and approve the application for publication or issue, if it is otherwise in condition for such action. The examining attorney should notify the applicant by telephone or e-mail that the requirement or refusal is withdrawn, and should make an appropriate note in the “Notes-to-the-File” section of the record. This may be done at any time before the Board’s decision on appeal. It is not necessary to notify the Board that the refusal or requirement has been withdrawn.
If there is more than one ground of refusal and one ground should be withdrawn, that refusal should be withdrawn and the appeal should go forward on the remaining ground(s). The following language should be included in the examining attorney’s brief, informing the applicant of the withdrawal of the refusal or requirement:
The examining attorney acknowledges receipt of the applicant’s appeal brief. The examining attorney has withdrawn [specify the refusal or requirement].
1501.04 Fee for Appeal
When filing an ex parte appeal to the Board from the refusal of the examining attorney to register a mark, the applicant must pay a fee for each class in the application for which the appeal is taken. 37 C.F.R. §2.141(b).
The fee for at least one class of goods/services must be paid before expiration of the six-month statutory filing period, or the application is abandoned. If the fee filed with the appeal is sufficient for at least one class of goods/services but insufficient for all the classes in a multiple-class application, and the applicant has not specified the class(es) to which the fee applies, the Board will notify the applicant of the defect, and will set a time limit in which the applicant may either pay the additional fee(s), or limit the appeal to the number of classes for which the fee(s) have been paid. If the applicant does not submit the required fee(s) or specify the class(es) to which the fee applies within the time set in the notice, the fee submitted will be applied to the classes in ascending order, beginning with the lowest- numbered class and including the number of classes in the application for which sufficient fees have been submitted. See 37 C.F.R. §2.141(b); TBMP §1202.04.
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1501.05 Amendment During Appeal
If the applicant files an amendment after filing a timely notice of appeal, the examining attorney may not act on it without authorization from the Board, because jurisdiction over the application is with the Board after a notice of appeal is filed. In appropriate cases, the Board may remand the case to the examining attorney to consider the matter presented in the document, with appropriate instructions to the examining attorney regarding consideration of the document and disposition of the case after such consideration. TBMP §1205.
If an application is remanded to the examining attorney to consider an amendment, and the examining attorney determines that the amendment places the application in condition for publication or issue, the examining attorney should notify the applicant by telephone or e-mail that the amendment has been entered, and that the amendment renders the appeal moot. It is not necessary to notify the Board.
1501.06 Amendment After Decision on Appeal
An examining attorney may not take action in an application after the Board has rendered a decision on appeal, because the examining attorney does not have jurisdiction over the application. See In re U.S. Catheter & Instrument Corp., 158 USPQ 54, 55 n.3 (TTAB 1968). After a decision on appeal, the applicant may petition the Director under 37 C.F.R. §2.142(g) to reopen prosecution of the application. If the petition is granted, jurisdiction is restored to the examining attorney to take the specified action.
A petition to reopen prosecution of the application could be granted if the appeal involved the applicant’s compliance with a requirement rather than a refusal based on the nature of the mark. See In re Hickory Mfg. Co., 183 USPQ 789 (Comm’r Pats. 1974). However, the Director will deny a petition to reopen prosecution if granting the petition would require further examination (e.g., to consider a claim of acquired distinctiveness under 15 U.S.C. §1052(f) or an amendment to the Supplemental Register). See In re Petite Suites Inc., 21 USPQ2d 1708 (Comm’r Pats. 1991); In re Vycom Electronics Ltd., 21 USPQ2d 1799 (Comm’r Pats. 1986); In re Mack Trucks, Inc., 189 USPQ 642 (Comm’r Pats. 1976). See also TBMP §1218 and cases cited therein.
1501.07 Examining Attorney’s Request for Reconsideration
In In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992), recon. denied, 24 USPQ2d 1061 (TTAB 1992), an augmented panel of the Board expressly overruled prior precedent and held that an examining attorney may request reconsideration of a Board decision reversing the examining attorney in an ex parte appeal.
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The examining attorney’s request must be filed within one month from the date of the Board’s decision. 37 C.F.R. §2.144. No new evidence can be introduced with the request. The request should point out any errors of fact or law in the Board’s decision.
To request reconsideration, the examining attorney must prepare a request and a supporting brief and submit the request to the managing attorney for concurrence in the decision to seek reconsideration. If the managing attorney concurs, the managing attorney will submit the request for reconsideration and brief to the Administrator for Trademark Policy and Procedure for approval.
If the Administrator approves the request, the examining attorney will file the request with the Board and send a copy to the applicant. The Board will set an appropriate time for the applicant to respond to the request. The examining attorney may not file a reply brief in response to the applicant’s brief.
1502 Publication in Trademark Official Gazette
After examination of an application is completed and the examining attorney determines that the mark is entitled to registration on the Principal Register, the mark is published in the Official Gazette of the USPTO for opposition. 15 U.S.C. §1062; 37 C.F.R. §2.80. Any notice of opposition must be filed within thirty days after the date of publication, or within an extension of time granted by the Board for filing an opposition. 15 U.S.C. §1063(a); 37 C.F.R. §2.101(c); TMEP §1503.03. See TMEP §1503.01 for further information about filing a notice of opposition.
Marks that are found to be registrable on the Supplemental Register are registered when printed in the Official Gazette. Marks registered on the Supplemental Register cannot be opposed, but are subject to cancellation under 15 U.S.C. §1064. 15 U.S.C. §1094.
In addition, marks registered on the Principal Register under the intent-to-use provisions of §1(d) of the Act are printed in the Official Gazette on the date of issuance of the registration. These marks were previously published for opposition, and are not subject to opposition again. See TMEP §1105 regarding the publication of intent-to-use applications for opposition.
1502.01 Notification of Clerical Errors in Trademark Official Gazette
To correct a clerical error in the publication of a mark in the Trademark Official Gazette, the applicant or applicant's attorney must file a written request. This request should include the applicant's or attorney's telephone number and e-mail address, and should be e-mailed to
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TMPostPubQuery@uspto.gov. The request should be filed within one week after the date of publication in the Official Gazette.
Only purely clerical errors (e.g., a typographical error or omission, drawing printed upside down, or incorrectly stated data) can be corrected by a request(s) sent to this e-mail address. The paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy will review the applicant's request to verify the existence of the clerical error and determine whether the error can be corrected without jurisdiction being restored to the examining attorney or republication being required.
See TMEP §§1505 et seq. for information concerning post-publication amendments and when republication is required.
1503 Opposition
1503.01 Filing a Notice of Opposition
Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication, or within an extension period granted by the Board for filing an opposition. See 15 U.S.C. §1063; 37 C.F.R. §§2.101 through 2.107; TBMP §§303 et seq.
The notice of opposition must include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition. 37 C.F.R. §2.104(a); TBMP §§309.01 et seq.
A notice of opposition to an application based on §1 or §44 of the Trademark Act may be filed either on paper or through ESTTA at http://estta.uspto.gov/. 37 C.F.R. §2.101(b)(1). A notice of opposition to an application based on §66(a) of the Act must be filed through ESTTA. 37 C.F.R. §2.101(b)(2). See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).
A notice of opposition does not have to be verified, and it may be signed by either the opposer or the opposer’s attorney. 37 C.F.R. §2.101(b); TBMP §309.02(b).
1503.02 Joining Persons in an Opposition
Two or more persons may join in an opposition. TBMP §303.06. Related companies are separate persons for the purpose of filing an opposition.
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1503.03 Time for Opposing
An opposition must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. 15 U.S.C. §1063(a); 37 C.F.R. §2.101(c); TBMP §§306 et seq. The time within which to file an opposition is set by statute and may not be extended or waived. In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477 (Comm'r Pats. 1994); In re Cooper, 209 USPQ 670 (Comm’r Pats. 1980).
When a registration is issued, inadvertently, from an application that was the subject of a timely filed notice of opposition, the Board is without authority to cancel the registration and restore it to application status. In this situation, the Board will refer the registration file to the Office of the Deputy Commissioner for Trademark Examination Policy for appropriate action. See TBMP §216. See also TMEP §1609.10(a) regarding correction of USPTO errors.
1503.04 Extension of Time to Oppose
Requests for extensions of time to oppose are handled by the Board. See TBMP Chapter 200.
A request for an extension of time must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. 15 U.S.C. §1063(a); 37 C.F.R. §2.102(c); TBMP §§202 et seq. The time within which to file a request for extension of time to oppose is set by statute and may not be extended or waived. In re Kabushiki Kaisha Hitachi Seisakusho, 33 USPQ2d 1477 (Comm'r Pats. 1994); In re Cooper, 209 USPQ 670 (Comm’r Pats. 1980).
A request for extension of time to oppose an application based on §1 or §44 of the Trademark Act may be filed either on paper or through ESTTA, at http://estta.uspto.gov/. 37 C.F.R. §2.102(a)(1). A request for extension of time to oppose a §66(a) application must be filed through ESTTA. 37 C.F.R. §2.102(a)(2). See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).
For additional information regarding filing a request for an extension of time to oppose, see TBMP Chapters 200 and 300.
When a registration is issued, inadvertently, from an application that was the subject of an unexpired extension of time to oppose on the date of registration, the Board is without authority to cancel the registration and restore it to application status. See TBMP §216. In this situation, a request to have the registration cancelled as inadvertently issued should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy. See TMEP §1609.10(a) regarding correction of USPTO errors.
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1503.05 Opposition to §66(a) Applications
Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act, 15 U.S.C. §1063. The USPTO must notify the International Bureau of the World Intellectual Property Organization (“IB”) within 18 months of the date the IB sends the request for extension of protection to the USPTO of: (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period. See TMEP §§1904.03 et seq. and 1904.04.
An opposition to a §66(a) application, or a request for extension of time to oppose a §66(a) application, must be filed through ESTTA. 37 C.F.R. §§2.101(b)(2) and 2.102(a)(2). See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005).
Once filed, an opposition to a §66(a) application may not be amended to add to the grounds for opposition or to add to the goods or services opposed. 37 C.F.R. §2.107(b).
1504 Jurisdiction over Application
1504.01 Jurisdiction of Examining Attorney
As a general rule, until publication of the mark in the Official Gazette, the examining attorney has jurisdiction over the application and can issue a refusal or a requirement without the approval of the Director. See TMEP §1504.03 regarding action by the examining attorney after publication.
In addition, for applications under §1(b) of the Act, 15 U.S.C. §1051(b), the examining attorney has jurisdiction after issuance of the notice of allowance under §13(b) of the Trademark Act, 15 U.S.C. §1063(b). 37 C.F.R. §2.84(a). See TMEP §1107 regarding amendment of a §1(b) application during the period between issuance of a notice of allowance and filing of a statement of use.
There is a time period during which an examining attorney cannot issue an action in an application because the USPTO is unable to withdraw the mark from its scheduled publication in the Official Gazette. The USPTO is generally unable to withdraw a mark within the twenty-day period before the scheduled publication date. See TMEP §§1505 et seq. regarding the processing of amendments filed during this period.
1504.02 Jurisdiction of Trademark Trial and Appeal Board
The Board has jurisdiction over an application upon the filing of the notice of appeal. The Board may, in response to an examining attorney’s request or on its own initiative, suspend the appeal and remand the case to the
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examining attorney. If an examining attorney wants to issue a new refusal or requirement during an appeal, the examining attorney must file a request for remand with the Board. 37 C.F.R. §2.142(f)(6). See TBMP §§1209.01 and 1209.02; TMEP §1504.05(a).
The Board also has jurisdiction over any application in which a notice of opposition has been filed. The Board will approve or disapprove any amendments proposed during an opposition proceeding. See 37 C.F.R. §2.133; TMEP §1505.01(f); TBMP §§514 et seq.
In an application under §1 or §44 of the Act, if an examining attorney wants to issue a new refusal or requirement during an opposition, the examining attorney must file a request for remand with the Board. In a §66(a) application, the examining attorney may not request a remand during an opposition. 37 C.F.R. §2.130; TMEP §1504.05(a).
A request for an extension of time to file an opposition does not vest jurisdiction in the Board. In this situation, any request by the examining attorney for jurisdiction should be addressed to the Director. See TMEP §§1504.03 and 1504.04(a).
1504.03 Action By Examining Attorney After Publication
If it is found necessary, e.g., through internal quality review, for an examining attorney to refuse registration or to make a requirement after a mark has been published for opposition, jurisdiction over the application must be restored to the examining attorney.
With the exception of applications that are the subject of inter partes proceedings before the Board (see TMEP §1504.05(a)), the examining attorney can telephone an applicant and issue an examiner’s amendment without restoration of jurisdiction. However, if the examining attorney issues an Office action, even if merely asking for additional information, the examining attorney must request jurisdiction, because the request for additional information is a “requirement.”
If it is necessary to issue an Office action after publication, the examining attorney must check the status of the application to determine whether the Board has received a notice of opposition. If the Board has not received a notice of opposition, the examining attorney should prepare a request to restore jurisdiction, directed to the Director. See TMEP §1504.04(a). If a notice of opposition has been filed, jurisdiction is with the Board, and the examining attorney should file a request for remand, directed to the Board. See TMEP §1504.05(a).
If a request for an extension of time to file an opposition has been filed, the Board does not have jurisdiction, so the examining attorney must file a request for jurisdiction addressed to the Director.
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See TMEP §§1505 et seq. regarding amendments proposed by applicants after publication.
1504.04 Restoration of Jurisdiction to Examining Attorney by Director
If it is necessary to refuse registration or to make a requirement after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take the specified action on the application. See TMEP §1106.02 regarding action by the examining attorney after issuance of a notice of allowance.
Normally, the Director will restore jurisdiction to the examining attorney only if there has been a clear error (see TMEP §706.01). After publication of a mark, a restoration of jurisdiction to the examining attorney is possible only in the case of an application for registration on the Principal Register. A mark found registrable on the Supplemental Register is not published for opposition but is published only when it has registered.
The examining attorney does not have to request jurisdiction to act in a §1(b) application after issuance of the notice of allowance. If, after the notice of allowance issues, the examining attorney determines that he or she must issue a new refusal or requirement, the examining attorney must request cancellation of the notice of allowance. However, the examining attorney should not make a refusal or requirement that could or should have been made during initial examination of the application unless the initial failure to make the refusal or requirement was a clear error, and must consult with the managing attorney or senior attorney before taking the action. See TMEP §706.01 regarding “clear error” and TMEP §§1106.02 and 1106.03.
The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act. 37 C.F.R. §2.84. However, when deciding whether to grant requests for jurisdiction of §66(a) applications, the Director must consider the time limits for notifying the IB of a refusal of a §66(a) application, set forth in Article 5(2) of the Madrid Protocol and §68(c) of the Trademark Act, 15 U.S.C. §1141h(c). See TMEP §1904.03(a) for further information.
1504.04(a) Request for Jurisdiction
The examining attorney’s request for jurisdiction should be in the form of a memorandum to the Director, accompanied by the Office action that the examining attorney proposes to send to the applicant. The request should be signed by the examining attorney, the managing attorney, and the Administrator for Trademark Policy and Procedure.
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In the Office action, the examining attorney should apologize for the untimeliness of the action because, at this point, except for possible opposition issues, the applicant is expecting issuance of a registration or notice of allowance. The action should provide a detailed explanation of the basis for the refusal or requirement, citing appropriate case law, even when addressing basic and well-established propositions.
1504.05 Remand to Examining Attorney by Trademark Trial and Appeal Board
The Board, on its own initiative or in response to a request, may remand an application to the examining attorney for consideration of specific facts or issues. See TBMP §§1209 et seq. regarding remand during an appeal, and TBMP §515 regarding remand during an inter partes proceeding. A request for remand by the examining attorney to submit additional evidence must include a showing of good cause (which may take the form of a satisfactory explanation as to why the evidence was not filed prior to appeal), and be accompanied by the additional evidence sought to be introduced. See TBMP §1207.02. Absent a remand, no evidence should be submitted to the Board following a notice of appeal, except with or in response to an applicant’s timely filed request for reconsideration. 37 C.F.R. §2.142(d); TBMP §1207.01. See TBMP §1207.04 and TMEP §715.03 regarding the submission of evidence with or in response to a request for reconsideration.
On remand, the examining attorney may address only those issues for which the application was remanded. Issues other than those for which the application was remanded may be considered only if the examining attorney requests and is granted an expanded remand. TBMP §1209.02.
The following are examples of circumstances when the Board may remand an application to the examining attorney during an ex parte appeal:
(1) When evidence that the applicant or the examining attorney wants to include in the record was not previously available (e.g., a recent article, newly issued registration, or recent decision);
(2) When a new attorney for the applicant, or a new examining attorney, wants to supplement the record made by his or her predecessor;
(3) When the applicant and the examining attorney agree to a remand; or
(4) When the examining attorney requests a remand to issue a new requirement or new ground for refusal of registration. See TBMP §1209.02 and TMEP §1504.05(a) regarding an examining attorney’s request for remand.
See also TBMP §1207.02.
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Where the Board initiates a remand, the examining attorney must take action upon the remanded issue within thirty days of the Board’s remand order. 37 C.F.R. §2.142(f)(1); TBMP §1209.01.
1504.05(a) Request for Remand
If it is found necessary to issue a new requirement or new ground for refusal of registration during an ex parte appeal, the examining attorney must request the Board to remand the application so that the examining attorney may take the specified action. 37 C.F.R. §2.142(f)(6); TBMP §1209.02.
In an application under §1 or §44 of the Trademark Act, if it is found necessary to refuse registration or to make a requirement or refusal during an inter partes proceeding before the Board, the examining attorney must request the Board to remand the application so that the examining attorney may take the specified action. 37 C.F.R. §2.130. In a §66(a) application, the examining attorney may not request a remand during an inter partes proceeding.
A request for remand should succinctly explain the specific reasons why remand is requested. That is, the request should be a brief statement of the reason for the request and an explanation of the action the examining attorney intends to take.
1505 Amendments Filed by Applicants After Publication
Applicants sometimes submit amendments after publication. For processing purposes, an “amendment after publication” includes any amendment filed during the time period in which the USPTO is unable to withdraw a mark from its scheduled publication in the Official Gazette, or from the scheduled issuance of its registration. The USPTO is generally unable to withdraw a mark unless the amendment is received and processed at least twenty days before the scheduled publication date or registration issue date.
The following sections discuss the USPTO’s procedures and policies for the disposition of amendments after publication.
1505.01 Procedures for Processing Amendments Filed by the Applicant After Publication
1505.01(a) Form and Timing of Amendments
All amendments filed after publication must be submitted in writing. Unless a notice of opposition has been filed, amendments filed after publication but before issuance of a registration or notice of allowance should be faxed to Post Publication Amendments/Corrections at 571-270-9007, unless the
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amendment includes a special form drawing. An amendment that includes a special form drawing should be mailed to the following address:
Commissioner for Trademarks Petitions Office P.O. Box 1451 Alexandria, Virginia 22313-1451
Requests to correct minor typographical errors entered by the USPTO, inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a pending post-publication amendment can be e-mailed to TMPostPubQuery@uspto.gov.
Any amendment filed during the pendency of an inter partes opposition proceeding should be filed directly with the Board. See 37 C.F.R. §2.133 and TMEP §1505.01(f).
The USPTO cannot process any amendment filed during the time periods in which the mark cannot be withdrawn from publication in the Official Gazette or from issuance of a registration. If a request for amendment relates to a mark that cannot be withdrawn from publication, it will be processed in accordance with the procedures set forth in TMEP §§1505.01(b) through 1505.02(f). If a request for amendment relates to a mark that cannot be withdrawn from issuance of a registration, or that has already registered, the applicant will be instructed to resubmit its request to the Post Registration Section as a request to amend or correct the registration under §7 of the Trademark Act. 15 U.S.C. §1057; 37 C.F.R. §§2.6, 2.173(a), 2.174, and 2.175.
See TMEP §§1107 and 1107.01 regarding amendments to a §1(b) application filed between the issuance of a notice of allowance and the submission of a statement of use, and TMEP §§1609 et seq. regarding amendment of a registration under §7(e) of the Trademark Act.
1505.01(b) Processing Amendments to §§1(a), 44, and 66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued
Amendments filed after publication will be reviewed by paralegal specialists in the Office of the the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure that the mark does not register before the amendment has been considered. The paralegal specialists will consult with an attorney, if necessary.
1505.01(b)(i) Acceptable Amendments
If an amendment is acceptable and does not require republication of the mark, the paralegal specialist will enter the amendment and the mark will
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continue on to the scheduled issue date. See TMEP §1505.03(b) for examples of amendments that do not require republication.
If the amendment is acceptable and republication is required, the paralegal specialist must telephone or e-mail the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark. If the applicant wishes to pursue the request, the paralegal specialist must make a note in the “Notes-to-the-File” section of the record that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication. The paralegal specialist will then enter the amendment and set a new publication date. A new notice of publication will be issued. See TMEP §1505.03(a) for examples of amendments that require republication.
1505.01(b)(ii) Unacceptable Amendments
If the paralegal specialist determines that an amendment is unacceptable, the paralegal specialist must provide written notification to the applicant, explaining why the amendment is unacceptable and advising the applicant that: (1) the application will be returned to processing without entry of the requested amendment; and (2) applicant’s only recourse is to file a petition to the Director requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment. 37 C.F.R. §§2.84 and 2.146. Any petition to the Director must be filed within six weeks of the publication date to ensure that it is timely processed. Thereafter, any request for amendment must be filed pursuant to §7 of the Trademark Act, 15 U.S.C. §1057.
1505.01(c) Processing Amendments to §1(b) Applications In Cases Where No Opposition Has Been Filed and No Notice of Allowance Has Issued
Amendments filed after publication and before issuance of a notice of allowance will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure that the notice of allowance does not issue before the amendment has been considered.
1505.01(c)(i) Acceptable Amendments
If the amendment is acceptable and republication is not required, the paralegal specialist will enter the amendment and schedule the mark for issuance of a notice of allowance. See TMEP §1505.03(b) for examples of amendments that do not require republication.
If the amendment is acceptable and republication is required, a paralegal specialist must telephone or e-mail the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark. If the
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applicant wishes to pursue the request, the paralegal specialist must make a note in the “Notes-to-the-File” section of the record indicating that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication. The paralegal specialist will then enter the amendment and set a new publication date. A new notice of publication will be issued. See TMEP §1505.03(a) for examples of amendments that require republication.
1505.01(c)(ii) Unacceptable Amendments
If the paralegal specialist determines that the amendment is unacceptable, the paralegal specialist must provide written notification to the applicant explaining why the amendment is unacceptable and advising the applicant that: (1) the request to amend the application may be resubmitted with the statement of use; or (2) the applicant may file a petition to the Director under 37 C.F.R. §§2.84 and 2.146 requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment.
See TMEP §§1107 et seq. regarding amendments after issuance of the notice of allowance but before the filing of the statement of use.
1505.01(d) Processing Amendments Filed Between Issuance of the Notice of Allowance and Filing of Statement of Use
The only amendments that will be entered in a §1(b) application between the issuance of a notice of allowance and the submission of a statement of use are those outlined in TMEP §1107. See 37 C.F.R. §2.77. All other amendments will be placed in the record for consideration by the examining attorney during examination of the statement of use. An applicant may file a petition to the Director under 37 C.F.R. §2.146 to waive 37 C.F.R. §2.77 to permit the examining attorney to examine the amendment prior to the filing of a statement of use. See TMEP Chapter 1700 regarding petitions and TMEP §§1107 et seq. for further information about amendments filed between the issuance of a notice of allowance and the submission of a statement of use.
1505.01(e) Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted
An amendment of an application that is under an extension of time to file an opposition should be processed in accordance with the procedures set forth in TMEP §§1505.01(b) through (d). The Director retains jurisdiction of such an application until an opposition is actually filed.
It is not necessary for the paralegal specialist to notify the Board of the action taken on the amendment.
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The Board will not suspend the potential opposer's time to file a notice of opposition in this situation. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).
1505.01(f) Processing Amendments in Cases Where an Opposition Has Been Filed
If the applicant files an amendment after a notice of opposition has been filed, the Board will act on the amendment under 37 C.F.R. §2.133. The Board has jurisdiction over any application in which an opposition has been filed. See TBMP §§514 et seq. for further information about amendment of an application during an opposition.
1505.02 Types of Amendments After Publication
The following subsections discuss the most common types of amendments after publication. Note that there are some restrictions on amendments to §66(a) applications, as discussed below. In addition, only certain amendments are permitted in §1(b) applications between the issuance of the notice of allowance and filing of the statement of use. See 37 C.F.R. §2.77; TMEP §§1107 and 1107.01.
1505.02(a) Amendments to the Identification of Goods or Services
If an applicant proposes to amend the identification of goods/services after publication by restricting or deleting items in the existing identification, and the amendment is otherwise proper, the USPTO will approve the amendment, and the mark will not be republished. Amendments to add goods/services or to broaden the scope of an identification are not permitted at any time. See 37 C.F.R. §2.71(a); TMEP §§1402.07 et seq.
1505.02(b) Amendments to Classification
In an application under §1 or §44, if the applicant proposes to amend the classification after publication, and the amendment is consistent with the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, the USPTO will approve the amendment. Republication is not required.
The international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB. 37 C.F.R. §2.85(d). See TMEP §1401.03(d).
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1505.02(c) Amendments to Marks
In an application under §1 or §44, if the applicant proposes to amend the mark after publication, the amendment is not a material alteration of the mark, and the specimen of record or foreign registration (if applicable) supports use of the mark as amended, the USPTO will approve the amendment and will not republish the mark. If the applicant proposes to amend the mark and the amendment represents a material alteration to the mark, the USPTO will not approve the amendment. See 37 C.F.R. §2.72; TMEP §§807.13 et seq. and 807.14 et seq.
The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
1505.02(d) Amendments to the Dates of Use
If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is after the filing date of the application, the USPTO will not approve the amendment. See 37 C.F.R. §2.71(c)(1). If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is later than the date originally stated, but before the application filing date, the USPTO will approve the amendment and will republish the mark to provide notice to parties who may have commenced use of a similar mark during the intervening period. If the applicant proposes to amend the dates of use to adopt a date that is before the date originally stated, the USPTO will approve the amendment and will not republish the mark. See TMEP §903.04 for further information about amending the dates of use in a pending application, and TMEP §1609.07 regarding amendment of the dates of use after registration.
1505.02(e) Amendments Adding or Deleting Disclaimers
If an applicant proposes to amend an application after publication to insert a disclaimer, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark. Likewise, if the USPTO requests the insertion of a disclaimer after publication and the applicant agrees to the disclaimer, the USPTO will enter the disclaimer and will not republish the mark.
If an applicant proposes to amend the application to delete a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the USPTO determines that the amendment is acceptable, the USPTO will approve the amendment in accordance with the procedures in TMEP §1505.01(c)(i), and will republish the mark. If the amendment deleting the disclaimer is unacceptable, the USPTO will follow the procedures in TMEP §1505.01(c)(ii). The applicant may then resubmit the amendment with the statement of use, or petition the Director to restore jurisdiction of the application to the examining attorney to consider the amendment. See 37
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C.F.R. §2.84(a). If the examining attorney eventually approves the amendment, the USPTO will republish the mark.
Republication is generally required when a disclaimer is deleted after publication (e.g., if printed through a clerical error or originally required by the examining attorney and later determined to be unnecessary).
Exception: If the applicant proposes to amend the mark after publication to delete matter that was the subject of a disclaimer (e.g., generic wording), the USPTO determines that the amendment is not a material alteration of the mark, and the applicant also requests that the disclaimer be deleted, the USPTO will approve the amendment and will not republish the mark.
1505.02(f) Amendment of the Basis
In an application that is not the subject of an inter partes proceeding before the Board, if an applicant wants to add or substitute a basis after publication, the applicant must petition the Director to allow the examining attorney to consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j). See TMEP §§806.03 et seq. regarding amendment of the basis. See 37 C.F.R. §2.133(a) and TBMP §514 regarding the amendment of the basis of an application that is the subject of an inter partes proceeding before the Board.
In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a). See TMEP §§1904.09 et seq. regarding transformation.
In a multiple-basis application, the applicant may delete a basis at any time prior to registration. 37 C.F.R. §2.35(b)(1). No petition is required. See TMEP §806.04(a) regarding the deletion of a §1(b) basis after publication or issuance of the notice of allowance.
1505.02(g) Amendments to the Applicant’s Name, Citizenship, or Entity Type
If an applicant proposes to amend an application after publication to correct an inadvertent error in the manner in which its name, entity type, or citizenship is set forth, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark. See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the applicant.
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1505.03 Republication for Opposition
The following sections list examples of post-publication amendments that require republication of the mark and those that do not require republication. If a mark that is the subject of a request for an extension of time to oppose will be republished, the paralegal specialist or the examining attorney who orders the republication must notify the Board that the mark will be republished. See TBMP §214 regarding the effect of republication on marks that are republished during the original thirty-day opposition period or within a granted extension period.
1505.03(a) When Republication is Required
Republication is required after entry of any acceptable post-publication amendment that expands the applicant’s rights or would otherwise require notice to third parties. The following list, though not exhaustive, provides examples of amendments that would require republication of the mark:
• Amendment adds or substitutes a basis (37 C.F.R. §2.35(b)(2));
• Unnecessary §2(f) claim is deleted;
• Unnecessary disclaimer is deleted;
• A product, service, or class was deleted by USPTO error and is reinserted into the application;
• A product, service, or class was deleted due to partial abandonment (see TMEP §718.02(a)) and is reinserted upon granting of petition to revive;
• Identification of goods/services is amended to an identification that is narrower in scope than the published identification, but results in a material difference in the nature of the goods or services (e.g., the mark published for “shoes” in Class 25 and the applicant then amends to “orthopedic shoes” in Class 10);
• An incorrect mark was published due to USPTO error;
• The effective filing date (see TMEP §§206 et seq.) changes to a later date;
• In a §1(a) application, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the filing date of the application);
• In a §1(b) application for which an amendment to allege use has been filed, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s)
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stated (but earlier than the filing date of the amendment to allege use);
• Application is amended to indicate which goods/services are based on §1(a) and which are based on §1(b) in a multiple-basis application that published without such an indication;
• Application is amended to the Principal Register from the Supplemental Register.
1505.03(b) When Republication is Not Required
Republication is not required after entry of acceptable post-publication amendments in the following situations:
• The mark is amended, and the USPTO determines that the amendment is not a material alteration of the mark;
• A multiple-basis application is amended to delete a §1(b) basis;
• Identification of goods/services is amended to adopt an identification that is narrower in scope than the published identification and there is no material difference in the nature of the goods or services (e.g., republication is not required if the mark published for “shoes” in Class 25 and the applicant amends to “shoes, namely, running shoes” in Class 25);
• An application that published on the Principal Register is amended to the Supplemental Register;
• The filing date (see TMEP §§206 et seq.) is amended to an earlier date (Note: The filing date change must be approved by the Office of the Deputy Commissioner for Trademark Examination Policy.);
• The date(s) of first use or date(s) of first use in commerce is amended to adopt a date(s) that is earlier than the date(s) originally stated;
• The goods/services were published in the wrong class;
• A disclaimer is added;
• The applicant’s name, citizenship, or entity type is amended to correct an inadvertent error;
• In a §1(b) application for which a statement of use has been filed, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the statutory deadline for filing the statement of use);
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• A statement of concurrent use is added.
1506 Concurrent Use Registration Proceeding
A concurrent use registration proceeding is an inter partes proceeding in which the Board determines whether one or more applicants are entitled to concurrent registration. A concurrent registration is one with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods/services on or in connection with which the mark is used. The Board conducts these proceedings after the mark has been published, and the Board determines whether or not concurrent use registrations should issue. See TBMP Chapter 1100.
See TMEP §§1207.04 et seq. regarding the procedure to be followed by examining attorneys in relation to concurrent use.
1507 Interference
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations that are in conflict) is entitled to registration. See 15 U.S.C. §§1066 and 1068.
An interference can be declared only upon petition to the Director. However, the Director will grant such a petition only if the petitioner can show extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 37 C.F.R. §2.91(a). The availability of an opposition or cancellation proceeding ordinarily precludes the possibility of undue prejudice to a party. Thus, a petitioner must show that there is some extraordinary circumstance that would make the remedy of opposition or cancellation inadequate or prejudicial to the party’s rights. Interferences are generally limited to situations where a party would otherwise be required to engage in successive or a series of opposition or cancellation proceedings, and where the issues are substantially the same. See In re Family Inns of America, Inc., 180 USPQ 332 (Comm'r Pats. 1974).
The following matters are not subject to interference: (1) registrations on the Supplemental Register; (2) applications for registration on the Supplemental Register; (3) registrations under the Act of 1920; and (4) registrations of marks that have become incontestable. 37 C.F.R. §2.91(b).
See TMEP §§1208.03 et seq. and TBMP Chapter 1000 for more information about interferences.
Chapter 1600 Registration and Post Registration
Procedures
1601 Types of Registrations
1601.01 Registrations Now Being Issued
1601.01(a) Certificate of Registration
1601.01(b) Duplicate Certificate of Registration
1601.01(c) Registered Extension of Protection of International Registration to the United States
1601.02 Repeal of Prior Acts
1601.03 Additional Registration under Act of 1946
1601.04 1881 and 1905 Act Registrations
1601.05 1920 Act Registrations
1601.06 Registrations Issued Under Prior Classification Systems
1601.07 Form of Copies of Registrations
1602 Duration and Maintenance of Registrations
1602.01 Act of 1946
1602.02 Acts of 1881 and 1905
1602.03 Act of 1920
1602.04 Trademark Law Treaty Implementation Act Changes
1603 Bringing Prior Act Registrations Under 1946 Act, §12(c)
1603.01 Notification and Printing of Mark in Official Gazette
1603.02 Cancellation and Incontestability
1603.03 Affidavits of Use in Commerce Required
1604 Affidavit of Use or Excusable Nonuse of Mark in Commerce under §8
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1604.01 Registrations to Which §8 Affidavit Pertains
1604.02 Notice of When Affidavit Is Due
1604.03 Form for Filing §8 Affidavit
1604.04 Time for Filing §8 Affidavit
1604.04(a) Premature Filing of §8 Affidavit
1604.04(b) Registrations in Twenty-Year Terms
1604.05 Requirements for §8 Affidavit or Declaration of Use or Excusable Nonuse
1604.06 Fees for §8 Affidavit
1604.06(a) Filing Fee for Affidavit or Declaration
1604.06(b) Grace Period Surcharge and Deficiency Surcharge
1604.06(c) Processing Affidavit or Declaration Filed With Insufficient Fees
1604.07 Ownership, and Who May File §8 Affidavit
1604.07(a) Affidavit or Declaration Must be Filed by Owner
1604.07(b) Establishing Ownership
1604.07(c) Acceptance Notice Issued in Name of Owner of Record
1604.07(d) Changes of Legal Entity
1604.07(e) Changes of Name
1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner
1604.08 Execution of Affidavit or Declaration
1604.08(a) Persons Who May Sign Affidavit or Declaration
1604.08(b) Date of Execution of Affidavit or Declaration
1604.08(c) Signature of Electronically Transmitted Affidavit or Declaration
1604.08(d) Form and Wording of Verification
1604.09 Goods and/or Services Set Forth in §8 Affidavit or Declaration
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1604.09(a) Goods and/or Services Must be Specified or Expressly Incorporated by Reference
1604.09(b) Deletion of Goods and/or Services
1604.09(c) Failure to List All Goods and/or Services Recited in Registration
1604.09(d) New Goods and/or Services Cannot be Added
1604.10 Use in Commerce
1604.11 “Excusable Nonuse” of Mark
1604.12 Specimen Showing Current Use of Mark in Commerce
1604.12(a) Specimen for Each Class Required
1604.12(b) Specimens in Electronically Filed Affidavits
1604.12(c) Substitute Specimens
1604.13 Differences in the Mark as Used on the Specimen and the Mark as Registered
1604.13(a) Possible Amendment of Mark in Registration
1604.14 Designation of Domestic Representative by Foreign Owner
1604.15 Office Actions and Notices Regarding Affidavit
1604.16 Response to Office Action
1604.17 Correction of Deficiencies in §8 Affidavit
1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act
1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period
1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period
1604.18 Petition Under 37 C.F.R. §2.146
1604.18(a) Response to Examiner’s Refusal Required Before Petition
1604.18(b) Decision on Petition is Final Action of the USPTO
1604.18(c) Request for Reconsideration of Denial of Petition
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T1604.18(d) Appeal to Federal Court
1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application
1605 Affidavit of Incontestability Under §15
1605.01 Registrations to Which §15 Affidavit Pertains
1605.02 Form for Filing Affidavit of Incontestability
1605.03 Time for Filing Affidavit of Incontestability
1605.04 Requirements for Affidavit or Declaration of Incontestability
1605.05 Combining §15 Affidavit with §8 Affidavit
1605.06 TSection 14 Limitation is Independent of §15 Affidavit
1606 Renewal of Registration Under Trademark Act §9
1606.01 Which Registrations Must be Renewed Under §9
1606.01(a) TRegistrations Based on Applications Under §1 or §44 Must Be Renewed Under §9
1606.01(b) Section 9 Does Not Apply to Extensions of Protection of International Registrations to the United States
1606.01(c) Renewal of Registrations Issued Under Prior U.S. Trademark Acts Must Be Renewed Under §9
1606.02 Requirements for Renewal Under §9
1606.03 Time for Filing §9 Renewal Application
1606.03(a) Premature Filing of §9 Renewal Application
1606.04 Form for Filing §9 Renewal Application
1606.05 Fees for §9 Renewal Applications
1606.05(a) Fee for Filing Application for Renewal Under §9
1606.05(b) Grace Period Surcharge and Deficiency Surcharge
1606.05(c) Processing §9 Renewal Application Filed with Insufficient Fees
1606.06 Ownership, and Who May File §9 Renewal Application
1606.07 Execution of §9 Renewal Application
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1606.08 Goods and/or Services Set Forth in §9 Renewal Application
1606.08(a) Listing of Goods and/or Services Required Only for Partial Renewal
1606.08(b) No Goods or Services Listed
1606.08(c) Some Goods and/or Services Listed
1606.08(d) Goods and/or Services Not Listed in Registration May Not Be Listed in Renewal Application
1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required
1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal Under §9
1606.11 Office Actions and Notices Regarding §9 Renewal Application
1606.12 Response to Office Action
1606.13 Correction of Deficiencies in §9 Renewal Applications
1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration
1606.13(b) TCorrecting Deficiencies in Renewal Applications Filed During the Grace Period
1606.13(c) Late Filing Cannot be Cured
1606.14 Petition Under 37 C.F.R. §2.146
1606.14(a) Response to Examiner’s Refusal Required Before Petition
1606.14(b) Decision on Petition is Final Action of the USPTO
1606.14(c) Request for Reconsideration of Denial of Petition
1606.14(d) Appeal to Federal Court
1606.15 Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse
1607 Cancellation of Registrations Under §§14 and 37 of the Trademark Act
1608 Surrender of Registration for Cancellation
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1609 Amendment and Correction of Registrations
1609.01 Amendment of Registration - In General
1609.01(a) Limited Amendments to Registered Extension of Protection
1609.01(b) Amendment of Registration Resulting From §1 or §44 Application
1609.02 Amendment of Mark
1609.02(a) Determining What Constitutes Material Alteration of Mark
1609.02(b) New Drawing Required
1609.02(c) Supporting Specimen and Declaration
1609.02(d) Conforming Amendments
1609.02(e) Amendment of Black-and-White Drawing of Mark for Which Color is Claimed to Substitute Color Drawing
1609.02(f) Amendment of Black-and-White Drawing to Color Drawing
1609.02(g) Amendment to Special Form Drawing Containing Black, White, and/or Gray
1609.03 Amendment of Identification of Goods or Services
1609.04 Amendment of Classification
1609.05 Disclaimer of Mark
1609.06 Territorial Restrictions
1609.07 Dates of Use
1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration
1609.09 Amendment from Supplemental to Principal Register Not Permitted
1609.10 Correction of Mistake in Registration
1609.10(a) Correction of USPTO Error
1609.10(b) Correction of Owner’s Error
1609.11 Change of Owner’s Address Can Be Filed Through TEAS
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1610 Court Orders Concerning Registrations
1611 Updating Automated Records to Show the Status of Registrations
1612 Powers of Attorney and Designations of Domestic Representative Filed After Registration
1613 Affidavit of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act
1614 Renewal of Registered Extension of Protection
1615 Division of Registrations
1615.01 Division of Registration Based on Application Under §1 or §44 of the Trademark Act
1615.02 Division of Registered Extension of Protection
1616 Replacement
1601 Types of Registrations
1601.01 Registrations Now Being Issued
Currently, the United States Patent and Trademark Office (“USPTO”) issues registrations only under the Trademark Act of 1946, 15 U.S.C. §§1051 et seq. These are either Principal Register registrations or Supplemental Register registrations. See TMEP §801.02(a) regarding the Principal Register, and TMEP §801.02(b) regarding the Supplemental Register.
1601.01(a) Certificate of Registration
The USPTO issues registration certificates for all registrations resulting from applications based on §§1, 44, and 66(a) of the Trademark Act, 15 U.S.C. §§1051, 1126, and 1141f(a). The registration certificate includes the owner’s name and address, the mark, the goods/services, and the international class(es). The certificate is signed by the Director and issued under the seal of the USPTO. 15 U.S.C. §§1057(a) and 1093; 37 C.F.R. §2.151. See Notice of Reformatted Trademark Registration Certificate at 74 Fed. Reg. 34559 (July 16, 2009).
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1601.01(b) Duplicate Certificate of Registration
If the owner of the registration does not receive the original certificate of registration, the USPTO will issue a duplicate certificate if the owner files a written request within one year of the registration date, stating that the registration certificate was never received.
Likewise, if the USPTO issues a corrected, amended, or new certificate of registration and the owner of the registration does not receive the certificate, the USPTO will issue a duplicate certificate if the owner files a written request within one year of the issue date of the corrected, amended, or new certificate, stating that the registration certificate was never received.
Any request for a duplicate registration certificate should be faxed to the Trademark Assistance Center at (571) 273-9250.
The owner of a registration may obtain a certified copy of the registration from the Document Services Branch of the Public Records Division of the USPTO for a fee (see TMEP §111).
1601.01(c) Registered Extension of Protection of International Registration to the United States
Effective November 2, 2003, §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), permits the holder of an international registration to file a request for extension of protection of the international registration to the United States. See TMEP §§1904 et seq.
Unless the request for extension of protection is refused under §68 of the Trademark Act, 15 U.S.C. §1141h, the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Official Gazette. Section 69(a) of the Trademark Act, 15 U.S.C. §1141i(a). The certificate of registration will look the same as the certificates issued for registrations resulting from applications based on §§1 and 44 of the Act. From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register. Section 69(b) of the Trademark Act, 15 U.S.C. §1141i(b).
Under §66(b), 15 U.S.C. §1141f(b), unless the extension of protection is refused, the proper filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c) of the Trademark Act, 15 U.S.C. §1057(c), as of the earliest of the following:
(1) The international registration date, if the request for extension of protection was made in the international application;
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(2) The date of recordal of the subsequent designation requesting an extension of protection to the United States, if the request for extension of protection to the United States was made in a subsequent designation; or
(3) The date of priority claimed pursuant to §67 of the Trademark Act, 15 U.S.C. §1141g.
Upon registration, the USPTO will refer to an extension of protection to the United States as a “registration” or a “registered extension of protection.” 37 C.F.R. §7.25(c).
A registered extension of protection remains part of the international registration after registration in the United States. See 15 U.S.C. §1141j, 37 C.F.R. §7.30, and TMEP §1904.08 for information about the dependence of the extension of protection on the underlying international registration. In this respect, the registered extension of protection differs from a registration issuing from a §44 application, which exists independent of the underlying foreign registration, pursuant to §44(f), 15 U.S.C. §1126(f).
See TMEP §1609.01(a) regarding amendment of registered extensions of protection under §7 of the Trademark Act, 15 U.S.C. §1057.
1601.02 Repeal of Prior Acts
The Act of 1946 became effective on July 5, 1947. Most Acts relating to trademarks that existed prior to the Act of 1946 were repealed as of the effective date of the Act of 1946. Repealed Acts include the Act of 1881, the Act of 1905, the Act of 1920, and the amendment entitled “Act of June 10, 1938.” The repeal did not affect the validity of registrations granted under prior Acts. Trademark Act §46(a), 15 U.S.C. §1051 note.
1601.03 Additional Registration under Act of 1946
Marks that were registered under any previous Act may be registered again, under the Act of 1946, if the mark meets the requirements of the Act of 1946. Trademark Act §46(b), 15 U.S.C. §1051 note.
However, the USPTO will not issue duplicate registrations for marks that are registered under the 1946 Act. §2.48. See TMEP §703.
1601.04 1881 and 1905 Act Registrations
Registrations that were issued under the Acts of 1881 and 1905 may be renewed under §9 of the Act of 1946, 15 U.S.C. §1059. These registrations are subject to, and entitled to the benefits of, the provisions of the Act of 1946 as though registered on the Principal Register of the Act, except with certain limitations that are set out in §46(b), 15 U.S.C. §1051 note. Some of these
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limitations can be removed if the registrant claims the benefits of the Act of 1946 under §12(c), 15 U.S.C. §1062(c). See TMEP §1603.
Marks registered under the “10-year proviso” of §5 of the Act of 1905 are deemed to have become distinctive of the goods or services under §2(f) of the Act of 1946, 15 U.S.C. §1052(f). Trademark Act §46(b), 15 U.S.C. §1051 note.
See TMEP §1602.02 regarding the duration of and requirements for maintaining registrations issued under the Acts of 1881 and 1905.
1601.05 1920 Act Registrations
Registrations under the Act of 1920 are subject to, and entitled to the benefits of, the provisions of the Act of 1946 relating to marks registered on the Supplemental Register, and may not be renewed, unless renewal is required to support a foreign registration. Trademark Act §46(b), 15 U.S.C. §1051 note.
See TMEP §1602.03 regarding the duration of and requirements for maintaining registrations issued under the Act of 1920.
1601.06 Registrations Issued Under Prior Classification Systems
Prior to September 1, 1973, the United States used its own system for the classification of goods and services, which is different from the international classification system. For all registrations issued on the basis of an application filed on or before August 31, 1973, the classification under which the registration issued governs for all statutory purposes, including affidavits under §8, 15 U.S.C. §1058, and renewal applications under §9, 15 U.S.C. §1059. See 37 C.F.R. §§2.85(b) and 2.183(f).
As of September 1, 1973, the international system for classification of goods and services is the primary classification system used by the United States, and it applies to all applications filed on or after September 1, 1973, and their resulting registrations, for all statutory purposes. See TMEP §1401.02; 37 C.F.R. §2.85(a).
A registrant whose registration issued under the United States classification system may voluntarily amend the registration under §7 of the Trademark Act, 15 U.S.C. §1057, to adopt the international classification set forth in the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”). The registrant must pay the filing fee required for §7 amendments under 37 C.F.R. §2.6. See 37 C.F.R. §2.84(e)(3) and TMEP §1609.04.
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1601.07 Form of Copies of Registrations
Before August 24, 1920, the name of the Act under which a registration was issued was not designated on the copy of the registration on file in the Trademark Search Library. Beginning with registrations issued on August 24, 1920, each registration includes in the heading either the words “Act of Feb. 20, 1905” or the words “Act of Mar. 19, 1920.” The first registrations under the Act of 1920 apparently were issued on August 24, 1920.
Registrations under the Act of 1881 range from Number 8,191, issued on May 17, 1881, through Number 44,357, issued on March 28, 1905. No registrations were issued between March 28, 1905, and July 4, 1905. On July 4, 1905, the first registration under the Act of 1905 was issued as Number 44,358.
The Act of 1946 provides that the certificates of registration for marks registered on the Supplemental Register shall be conspicuously different from certificates issued for marks registered on the Principal Register. Trademark Act §25, 15 U.S.C. §1093. Certificates issued under the 1946 Act are clearly marked either “Principal Register” or “Supplemental Register,” with the date the application was filed.
1602 Duration and Maintenance of Registrations
The Trademark Act of 1946, 15 U.S.C. §§1051 et seq., became effective on July 5, 1947, and as of that date the Trademark Acts of 1881, 1905, and 1920 were repealed insofar as they were inconsistent with the Act of 1946. Trademark Act §46(a), 15 U.S.C. §1051 note.
The duration of registrations has varied, depending upon the Act under which the registration was issued. See TMEP §§1602.01, 1602.02, 1602.03, and 1614.
1602.01 Act of 1946
Registrations Resulting From Applications Under §§1 and 44
The Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935, which took effect on November 16, 1989, amended §9 of the Trademark Act of 1946 to reduce both the duration of registration and the term of renewal from twenty to ten years. All registrations issued or renewed on or after November 16, 1989 are issued or renewed for a ten-year period.
Thus, registrations issued under the Act of 1946 on or after November 16, 1989, remain in force for ten years, provided that affidavits of use or excusable nonuse under §8 of the Act are filed. 37 C.F.R. §2.181(a)(2). See 37 C.F.R. §2.160(a) and TMEP §1604.04 regarding the due dates for affidavits of use or excusable nonuse. Registrations issued under the Act of
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1946 before November 16, 1989 remain in force for twenty years, provided that an affidavit or declaration of use or excusable nonuse was filed during the sixth year after the date of registration. 37 C.F.R. §2.181(a)(1). See TMEP §§1604 et seq. regarding affidavits of use under §8 of the 1946 Act.
Effective November 16, 1989, registrations under the Act of 1946 may be renewed for periods of ten years from the end of the expiring period. 37 C.F.R. §2.181(a). Before November 16, 1989, registrations under the Act of 1946 were renewed for twenty-year periods. The applicable term for renewals that were processed during the transition depends on whether the USPTO granted renewal before or after November 16, 1989. If the USPTO granted renewal before November 16, 1989, the renewal term is twenty years; if the USPTO granted renewal on or after November 16, 1989, the renewal term is ten years, regardless of the date on which the renewal application was filed. In re Maytag Corp., 21 USPQ2d 1615 (Comm’r Pats. 1991). See TMEP §§1606 et seq. regarding renewal under §9 of the 1946 Act.
Registered Extensions of Protection
Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States. Renewal of an international registration and its corresponding extension of protection to the United States must be made at the International Bureau of the World Intellectual Property Organization (“IB”), in accordance with Article 7 of the Madrid Protocol. 37 C.F.R. §7.41(a). See TMEP §1614 for further information about renewal of international registrations.
Section 71 of the Act, 15 U.S.C. §1141k, requires the periodic filing of affidavits of use in commerce or excusable nonuse for registered extensions of protection. See TMEP §1613 regarding due dates and requirements for §71 affidavits.
1602.02 Acts of 1881 and 1905
Registrations under the Act of 1905 were issued for an original term of twenty years, and were renewable for twenty-year periods. Registrations under the Act of 1881 were issued for an original term of thirty years, and were renewable under the Act of 1905 for twenty-year periods.
Effective November 16, 1989, registrations issued under the 1905 Act and the 1881 Act are renewable under the 1946 Act for periods of ten years. Before November 16, 1989, registrations issued under the 1905 Act and the 1881 Act were renewable under the 1946 Act for periods of twenty years. Trademark Act §46(b), 15 U.S.C. §1051 note; 37 C.F.R. §2.181(b).
A registrant under the 1905 Act or the 1881 Act may file an affidavit or declaration under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), to claim
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the benefits of the 1946 Act, without affecting the term of the registration. See TMEP §1603. Under §8(a)(2) of the 1946 Act, 15 U.S.C. §1058(a)(2), if the registrant claims the benefits of the 1946 Act, the registrant must file an affidavit or declaration of use or excusable nonuse within the sixth year after publication of the notice of the §12(c) claim in the Official Gazette, to avoid cancellation. See TMEP §§1604 et seq. regarding affidavits or declarations of use or excusable nonuse.
Section 8(a)(3) of the 1946 Act, 15 U.S.C. §1058(a)(3), requires that owners of marks registered under the Acts of 1905 and 1881 file affidavits of use or excusable nonuse at the end of each successive ten-year period following the date of registration, even if the registrant does not claim the benefits of the 1946 Act under §12(c) of the Act. However, this requirement does not apply to a registration renewed for a twenty-year term (i.e., a registration renewed prior to November 16, 1989) until a renewal application is due. See TMEP §1604.04(b).
1602.03 Act of 1920
The Act of 1920 did not specify any term of registration. However, the Act of 1946 provided that 1920 Act registrations would expire six months after July 5, 1947 (the effective date of the 1946 Act), or twenty years from the date of registration, whichever was later. A 1920 Act registration may not be renewed, unless renewal is required to support a foreign registration. In that instance, the registration may be renewed on the Supplemental Register for a ten-year period, in the same manner as a registration issued under the 1946 Act. Trademark Act §46(b), 15 U.S.C. §1051 note; 37 C.F.R. §2.181(c). See TMEP §§1606 et seq. regarding renewal.
The requirement that renewal be necessary to support a foreign registration applies to all renewals of a 1920 Act registration, not just the first renewal. Ex parte U.S. Steel Corp., 157 USPQ 435 (Comm’r Pats. 1968).
The application for renewal of a 1920 Act registration should identify the foreign registration(s) that the renewal is needed to support, the country, the name of the present owner, the registration number, and the date of registration, and must show that the foreign registration(s) is currently in force.
Under §8(a)(3) of the 1946 Act, 15 U.S.C. §1058(a)(3), an affidavit or declaration of use or excusable nonuse under §8 is also required at the end of each successive ten-year period following the date of registration. However, this requirement does not apply to a registration renewed for a twenty-year term (i.e., a registration renewed prior to November 16, 1989) until a renewal application is due. See TMEP §1604.04(b).
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1602.04 Trademark Law Treaty Implementation Act Changes
The Trademark Law Treaty Implementation Act of 1998 (“TLTIA”), Pub. L. No. 105-330, 112 Stat. 3064, changed the requirements for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavits”), and renewal applications under 15 U.S.C. §1059 (“§9 renewal applications”), effective October 30, 1999. See Post Registration: Changes to Requirements for Maintaining Trademark Registrations, at 1228 TMOG 187 (Nov. 30, 1999), for a discussion of these changes.
TLTIA did not change the duration of registrations. See TMEP §§1602 et seq. regarding the term of registrations.
1603 Bringing Prior Act Registrations Under 1946 Act, §12(c)
Owners of marks registered under the Acts of 1905 or 1881 may claim the benefits of the Act of 1946, but are not required to do so. Trademark Act §12(c), 15 U.S.C. §1062(c). The 1946 Act refers to a “registrant” claiming the benefits of the Act. The term “registrant” includes both the original registrant and a person who has acquired ownership through proper transfer of title. See 15 U.S.C. §1127. The claim must be made by the person who owns the mark at the time the claim is made.
To claim the benefits of the Act of 1946, the owner of the registration must file an affidavit or a declaration under 37 C.F.R. §2.20. The affidavit or declaration must: (1) set forth those items listed in the registration on which the mark is currently in use in commerce; (2) state that the benefits of the Act of 1946 are claimed for the mark; (3) be accompanied by the fee required by 37 C.F.R. §2.6; and (4) be filed by the owner and signed by a person properly authorized to sign on behalf of the owner. 37 C.F.R. §2.153. No specimen is required. Goods or services not listed in the affidavit will be deleted from the registration. The affidavit or declaration under §12(c) of the Act may be filed at any time during the life of the registration.
A claim of the benefits of the 1946 Act does not affect or alter the term of the 1905 or 1881 Act registration. These registrations still remain in force for the times indicated in TMEP §1602.02, subject to cancellation if acceptable affidavits of use or excusable nonuse are not filed under 15 U.S.C. §1058. The deadline for renewal (and the affidavit of use or excusable nonuse required during the year before the end of every ten-year period after the date of the registration) is calculated from the date of issue of the registration, not from the date of publication of the notice of the registrant’s claim of the benefits of the 1946 Act.
1603.01 Notification and Printing of Mark in Official Gazette
If the affidavit or declaration claiming the benefits of the Act of 1946 is acceptable, the mark and accompanying notice of the claim of benefits of the
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1946 Act are printed in the Official Gazette under the heading “Registrations Published Under Sec. 12(c).” 37 C.F.R. §2.154. The USPTO notifies the registrant of the printing of the mark in the Official Gazette, and also informs the registrant of the requirement for filing affidavits of use or excusable nonuse under 15 U.S.C. §1058. 37 C.F.R. §2.155.
If an affidavit or declaration claiming the benefits of the Act of 1946 is unacceptable, the USPTO notifies the registrant of the defect.
These marks are not subject to opposition on their appearance in the Official Gazette. 37 C.F.R. §2.156.
1603.02 Cancellation and Incontestability
If the benefits of the Act of 1946 are claimed, registrants under the Acts of 1905 and 1881 may subsequently file affidavits (or declarations) under §15 of the Act of 1946, 15 U.S.C. §1064, whereby the marks shall be incontestable. See TMEP §§1605 et seq.
Once the registrant claims the benefits of the Act of 1946, registrations under the 1905 and 1881 Acts are subject to cancellation under §14 of the Act of 1946, 15 U.S.C. §1064. See TMEP §1607.
1603.03 Affidavits of Use in Commerce Required
After the benefits of the Act of 1946 are claimed for a registration issued under the Act of 1881 or the Act of 1905, the registrant must file an affidavit or declaration of use or excusable nonuse during the sixth year after the date of publication of the notice of the registrant’s claim of the benefits of the 1946 Act in the Official Gazette, or within the six-month grace period after expiration of the sixth year, to avoid cancellation under §8(a)(2) of the Act. 15 U.S.C. §§1058(a)(2) and 1058(c)(1); 37 C.F.R. §2.160(a)(1)(ii).
An affidavit of use or excusable nonuse must also be filed within one year before the end of every ten-year period after the date of the registration, or within the six-month grace period thereafter. 15 U.S.C. §1058(a)(3); 37 C.F.R. §2.160(a)(2).
See TMEP §§1604 et seq. for further information about affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058.
1604 Affidavit of Use or Excusable Nonuse of Mark in Commerce under §8
15 U.S.C. §1058. Duration. (a) Each registration shall remain in force for 10 years, except that the
registration of any mark shall be canceled by the Director for failure to comply
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with the provisions of subsection (b) of this section, upon the expiration of the following time periods, as applicable:
(1) For registrations issued pursuant to the provisions of this Act, at the end of 6 years following the date of registration.
(2) For registrations published under the provisions of section 12(c), at the end of 6 years following the date of publication under such section.
(3) For all registrations, at the end of each successive 10-year period following the date of registration.
(b) During the 1-year period immediately preceding the end of the applicable time period set forth in subsection (a), the owner of the registration shall pay the prescribed fee and file in the Patent and Trademark Office--
(1) an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce and such number of specimens or facsimiles showing current use of the mark as may be required by the Director; or
(2) an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is not in use in commerce and showing that any such nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.
(c)(1) The owner of the registration may make the submissions required under this section within a grace period of 6 months after the end of the applicable time period set forth in subsection (a). Such submission is required to be accompanied by a surcharge prescribed by the Director.
(2) If any submission filed under this section is deficient, the deficiency may be corrected after the statutory time period and within the time prescribed after notification of the deficiency. Such submission is required to be accompanied by a surcharge prescribed by the Director.
(d) Special notice of the requirement for affidavits under this section shall be attached to each certificate of registration and notice of publication under section 12(c).
(e) The Director shall notify any owner who files 1 of the affidavits required by this section of the Director’s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.
(f) If the registrant is not domiciled in the United States, the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark,
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such notices or process may be served on the Director.
Under 15 U.S.C. §1058, the owner of a registration must periodically file affidavits or declarations of use or excusable nonuse of the mark. The purpose of the affidavit or declaration of use or excusable nonuse (“§8 affidavit”) is to remove marks that are no longer being used in commerce from the register.
1604.01 Registrations to Which §8 Affidavit Pertains
Registered Extensions of Protection
Section 8 of the Trademark Act applies only to registrations resulting from applications under §1 or §44 of the Trademark Act. However, §71 of the Act, 15 U.S.C. §1141k, requires periodic affidavits of use or excusable nonuse in registered extensions of protection of international registrations to the United States. See TMEP §1613 for further information about §71 affidavits.
Six-Year Section 8 Affidavits for Registrations Resulting From Applications Under §1 or §44
Under §8(a)(1) of the Trademark Act, an affidavit or declaration under §8 of the Act is required during the sixth year after the date of registration for registrations issued on either the Principal Register or the Supplemental Register, or within the six-month grace period after expiration of the sixth year. 15 U.S.C. §§1058(a)(1) and 1058(c)(1); 37 C.F.R. §2.160(a)(1)(i).
Under §8(a)(2) of the Act, an affidavit or declaration under §8 is required during the sixth year after the date of publication under §12(c) for registrations issued under the Acts of 1881 and 1905 for which the owner has claimed the benefits of the Act of 1946 under §12(c), or within the six-month grace period after the end of the sixth year. 15 U.S.C. §§1058(a)(2) and 1058(c)(1); 37 C.F.R. §2.160(a)(1)(ii); TMEP §1603.03.
Ten-Year Section 8 Affidavits Required for All Registrations Resulting From Applications Under §1 or §44
Section 8(a)(3) of the Trademark Act requires an affidavit or declaration of use or excusable nonuse at the end of each successive ten-year period following the date of registration, or within the six-month grace period after the end of the ten-year period. However, the provisions of §8(a)(3) of the Act, requiring the filing of a §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 until a renewal application is due. See TMEP §1604.04(b).
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1604.02 Notice of When Affidavit Is Due
A statement noting the requirement for filing the affidavits or declarations of use or excusable nonuse under §8 of the Act is included on each certificate of registration as originally issued. 15 U.S.C. §1058(d). This is the only notice that the USPTO provides regarding this requirement. The owner must file the affidavit or declaration within the time periods required by §8 of the Act regardless of whether the owner receives the notice. 37 C.F.R. §2.162. The USPTO does not provide any reminder of the due date(s) of the affidavits.
1604.03 Form for Filing §8 Affidavit
To expedite processing, it is recommended that the owner file the §8 affidavit through the Trademark Electronic Application System (“TEAS”). See TMEP §301 for more information about electronic filing. Forms for filing affidavits of use or excusable nonuse under §8, combined affidavits of use and incontestability under §§8 and 15 (see TMEP §1605.05), and §8 affidavits combined with renewal applications under §9 of the Act (see TMEP §1604.19) are available through TEAS at http://www.uspto.gov/teas/index.html. Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered to the USPTO.
See TMEP §1604.04 regarding the deadline for filing the affidavit, and TMEP §1604.05 regarding the requirements for filing the affidavit.
1604.04 Time for Filing §8 Affidavit
37 C.F.R. §2.160(a). During the following time periods, the owner of the registration must file an affidavit or declaration of continued use or excusable nonuse, or the registration will be cancelled:
(1)(i) For registrations issued under the Trademark Act of 1946, on or after the fifth anniversary and no later than the sixth anniversary after the date of registration; or
(ii) For registrations issued under prior Acts, on or after the fifth anniversary and no later than the sixth anniversary after the date of publication under section 12(c) of the Act; and
(2) For all registrations, within the year before the end of every ten-year period after the date of registration.
(3) The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (a)(1) and (a)(2) of this section, with payment of the grace period surcharge required by section 8(c)(1) of the Act and §2.6.
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Under §§8(a) and (b) of the Trademark Act, the owner of the registration must file an affidavit or declaration of use or excusable nonuse:
(1) on or after the fifth anniversary and no later than the sixth anniversary of the date of registration or date of publication under §12(c) of the Act; and
(2) within the year before the end of every ten-year period after the date of registration. 37 C.F.R. §2.160(a).
See TMEP §1604.04(b) regarding registrations in twenty-year terms.
Under §8(c)(1) of the Act, 15 U.S.C. §1058(c)(1), the owner may file the affidavit or declaration within a grace period of six months after the expiration of the deadline set forth in §8(a) of the Act, 15 U.S.C. §1058(a), with an additional grace period surcharge.
Affidavits may be filed on the registration anniversary dates at the end of the fifth and sixth years, or at the end of the ninth and tenth years.
Example: For a registration issued on Nov. 1, 2005, a six-year affidavit may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period.
A §8 affidavit or declaration filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(2).
Section 8 affidavits or declarations filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197. See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.
If the owner of the registration does not file an affidavit or declaration of use or excusable nonuse before the end of the grace period, the registration will be cancelled. 37 C.F.R. §§2.160(a) and 2.164(b). See TMEP §1604.07 regarding who may file a §8 affidavit.
The Director has no authority to waive the deadline for filing a proper affidavit of use of a registered mark under 15 U.S.C. §1058. See Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents and Trademarks., 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit, Congress made no exception for the innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case.”); In re Mother Tucker's
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Food Experience (Canada) Inc., 925 F.2d 1402, 1405, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991) (“It was not within the Commissioner's discretionary authority to waive this requirement.”); cf. In re Holland American Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) (“Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.”).
1604.04(a) Premature Filing of §8 Affidavit
The affidavit cannot be filed before the periods specified in §§8(a) and (b) of the Act. The purpose of the affidavit is to show that the mark is still in use in commerce within the relevant period, which cannot be done by an affidavit filed before that period. Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). If an affidavit is filed before the period specified in §§8(a) and (b) of the Act, the USPTO will issue a notice advising the owner: (1) that the affidavit is premature; (2) of the appropriate time for filing the affidavit; (3) that the fee(s) submitted will be held; and (4) that the owner may file a new affidavit at the appropriate time or may request a refund at any time. There is no deficiency surcharge. The prematurely filed affidavit will remain in the record for informational purposes only. The owner of the registration must file a newly executed affidavit or declaration before the end of the grace period, or the registration will be cancelled and the USPTO will refund the fees.
See TMEP §1604.08(b) regarding the date of execution of a §8 affidavit.
1604.04(b) Registrations in Twenty-Year Terms
As noted in TMEP §1604.04, §8(a)(3) of the Trademark Act, 15 U.S.C. §1058(a)(3), requires an affidavit or declaration of use or excusable nonuse at the end of each successive ten-year period following the date of registration for all registrations. However, this requirement does 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. See notice at 1228 TMOG 187, 189 (Nov. 30, 1999).
Example: If a registration was issued or renewed on November 15, 1989, no §8(a)(3) affidavit is due between November 15, 1998 and November 15, 1999. Section 8(a)(3) of the Act does not apply until the renewal application is due, i.e., between November 15, 2008 and November 15, 2009.
1604.05 Requirements for §8 Affidavit or Declaration of Use or Excusable Nonuse
37 C.F.R. §2.161. Requirements for a complete affidavit or declaration of continued use or excusable nonuse
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A complete affidavit or declaration under section 8 of the Act must: (a) Be filed by the owner within the period set forth in §2.160(a); (b) Include a statement that is signed and verified (sworn to) or supported
by a declaration under §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. The verified statement must be executed on or after the beginning of the filing period specified in §2.160(a). A person who is 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 §11.1(c) of this chapter who has an actual or
implied written or verbal power of attorney from the owner. (c) Include the registration number; (d)(1) Include the fee required by §2.6 for each class of goods or services
that the affidavit or declaration covers; (2) If the affidavit or declaration is filed during the grace period under
section 8(c)(1) of the Act, include the late fee per class required by §2.6; (3) If at least one fee is submitted for a multi-class registration, but the
class(es) to which the fee(s) should be applied 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. Additional fee(s) may be submitted if the requirements of §2.164 are met. 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;
(e)(1) Specify the goods or services for which the mark is in use in commerce, and/or the goods or services for which excusable nonuse is claimed under §2.161(f)(2);
(2) If the affidavit or declaration covers less than all the goods or services, or less than all the classes in the registration, specify the goods or services being deleted from the registration;
(f)(1) State that the registered mark is in use in commerce on or in connection with the goods or services in the registration; or
(2) If the registered mark is not in use in commerce on or in connection with all the goods or services in the registration, set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume; and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark;
(g) Include a specimen showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed under §2.161(f)(2).
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The specimen must: (1) Show the mark as actually used on or in connection with the goods or in
the sale or advertising of the services. A photocopy or other reproduction of the specimen showing the mark as actually used is acceptable. However, a photocopy that merely reproduces the registration certificate is not a proper specimen;
(2) Be flat and no larger than 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen 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 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and put it in the record. In the absence of non-bulky alternatives, the Office may accept an audio or video cassette tape recording, CD-ROM, or a specimen in another appropriate medium.
(3) Be a digitized image in .jpg or .pdf format, if transmitted through TEAS.
1604.06 Fees for §8 Affidavit
1604.06(a) Filing Fee for Affidavit or Declaration
Under 15 U.S.C. §1058(b) and 37 C.F.R. §2.161(d)(1), an affidavit or declaration of use or excusable nonuse must include the fee required by 37 C.F.R. §2.6 for each class of goods or services that the affidavit or declaration covers. See TMEP §§1401.02, 1401.04 et seq., and 1601.06 regarding use of international classification or prior United States classification to calculate fees due.
1604.06(b) Grace Period Surcharge and Deficiency Surcharge
If the affidavit or declaration is filed during the grace period under §8(c)(1) of the Act, 15 U.S.C. §1058(c)(1), it must include the grace period surcharge per class required by 37 C.F.R. §2.6. 37 C.F.R. §2.161(d)(2).
Section 8(c)(2) of the Trademark Act 15 U.S.C. §1058(c)(2), requires a “deficiency surcharge” for correcting deficiencies in the affidavit or declaration after expiration of the deadlines specified in §8. See TMEP §§1604.17 et seq. regarding the deadlines and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one §8 affidavit or one combined filing under §§8 and 9. See TMEP §1604.19 regarding combined filings under §§8 and 9.
The grace period surcharge applies only where no filing was made during the sixth year after the date of registration (or date of publication under §12(c) of the Act), or within the year before the end of any ten-year period after the
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date of registration. An owner who files within these periods, but corrects a deficiency after these periods have expired, will be subject to the deficiency surcharge only. On the other hand, someone who files during the grace period and cures deficiencies after expiration of the grace period will be subject to both the grace period surcharge (for the ability to file the affidavit during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the end of the grace period). H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).
1604.06(c) Processing Affidavit or Declaration Filed With Insufficient Fees
An affidavit or declaration that does not include a fee, or does not include sufficient fees for all the classes to which the affidavit pertains (and the grace period surcharge, where applicable), is deficient. Fee deficiencies may be cured before expiration of the deadlines set forth in §8 of the Act, 15 U.S.C. §1058, without payment of a deficiency surcharge, or after expiration of the deadlines set forth in §8 of the Act with the deficiency surcharge required by §8(c)(2) of the Act. See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the affidavit or declaration was filed without sufficient fee(s), but the affidavit or declaration included an authorization to charge deficient fees to a USPTO deposit account (37 C.F.R. §2.208), the required fee(s) (and grace period surcharge, where applicable) will be charged to the deposit account. If the deposit account authorization was included with the affidavit or declaration as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.
An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.
If a check submitted as payment of a filing fee for an affidavit of use or excusable nonuse is returned unpaid, or an electronic funds transfer (“EFT”) or credit card payment is refused or charged back by a financial institution, this is regarded as a deficiency. In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused. 37 C.F.R. §2.6(b)(12). See TMEP §405.06 for additional information.
If at least one fee is submitted for a multiple-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue an Office action requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied. If the owner does not submit the required fee(s) or specify the class(es) to which the original fee(s) should be applied, the USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class and will delete any unpaid class(es). 37 C.F.R.
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§2.161(d)(3). See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §8 affidavit.
1604.07 Ownership, and Who May File §8 Affidavit
1604.07(a) Affidavit or Declaration Must be Filed by Owner
The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration. Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8(a) of the Act, 15 U.S.C. §1058(a), (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within the year before the end of every ten-year period after the date of registration), or within the six-month grace period after expiration of these deadlines. 37 C.F.R. §2.164(b).
If it is unclear whether the party who filed the affidavit is the present owner, the Post Registration staff will issue an Office action requiring the party to establish its ownership. If the party who filed the affidavit was the owner of the registration at the time of filing, the owner may file evidence to establish ownership, even if the filing period set forth in §8 of the Act has expired. There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership. See TMEP §1604.07(b).
If the affidavit or declaration was filed in the name of the wrong party, and there is time remaining in the statutory filing period (which includes the grace period), the true owner must file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §2.6, and, if applicable, a specimen of use for each class. If the new affidavit or declaration is filed during the grace period, the owner must include the grace period surcharge per class with the new affidavit or declaration.
If the affidavit or declaration was filed in the name of the wrong party, and there is no time remaining in the grace period, the registration will be cancelled. 15 U.S.C. §1058; 37 C.F.R. §2.164(b). Filing in the name of another entity is not a deficiency that can be corrected after the expiration of the grace period. See In re Precious Diamonds, Inc., 635 F.2d 845, 208 USPQ 410 (C.C.P.A. 1980); In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002); In re ACE III Communications Inc., 62 USPQ2d 1049 (Dir USPTO 2001); In re Caldon Co. Ltd. Partnership, 37 USPQ2d 1539 (Comm’r Pats. 1995); In re Weider, 212 USPQ 947 (Comm’r Pats. 1981).
See also TMEP §1604.07(f) regarding mistakes in setting forth the name of the owner.
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1604.07(b) Establishing Ownership
When the affidavit is filed by someone other than the original owner of the registration, the USPTO cannot accept the affidavit unless there is a clear chain of title from the original owner to the party who filed the affidavit. 37 C.F.R. §3.73(b); TMEP §502.01.
When the affidavit is filed, the Post Registration staff will check the records of the Assignment Services Branch of the USPTO, available at http://assignments.uspto.gov/assignments. If the records of the Assignment Services Branch show a clear chain of title in the party who filed the affidavit, no inquiry will be issued. The Post Registration staff will enter the change of ownership into the automated records of the Trademark Operation (i.e., the Trademark Reporting and Monitoring (“TRAM”) System and Trademark Applications and Registrations Retrieval (“TARR”) database), if necessary.
If the records of the Assignment Services Branch do not show a clear chain of title in the party who filed the affidavit, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration. To establish ownership, the party must: (1) record documents in the Assignment Services Branch of the USPTO that show each change of ownership, and include a statement in the response to the Office action that the documents have been recorded; or (2) submit documentary evidence of a chain of title from the original owner to the party who filed the affidavit. 37 C.F.R. §3.73(b)(1); TMEP §502.01.
“Documentary evidence of a chain of title from the original owner to the assignee” (37 C.F.R. §3.73(b)(1)(i)) normally consists of the same type of documents that would be recorded in the Assignment Services Branch, e.g., assignment documents, certificates of merger, or certificates of change of name. In the alternative, an affidavit or declaration containing sufficient facts to support the transfer of title may be accepted.
The owner may submit evidence of ownership even if the filing period set forth in §8 of the Act has expired. If the party who filed the affidavit was the owner of the registration at the time of filing, there is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.
1604.07(c) Acceptance Notice Issued in Name of Owner of Record
The notification of acceptance of a §8 affidavit is issued in the name of the owner of record, as shown in TRAM and TARR.
When a party other than the original owner files a §8 affidavit, the USPTO will accept the affidavit if the new owner submits documentary evidence of the chain of title (see TMEP §1604.07(b)), even if the new owner does not record the documents of ownership in the Assignment Services Branch. 37 C.F.R.
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§3.73. However, the USPTO will not issue the notice of acceptance of the §8 affidavit in the name of the new owner unless the new owner: (1) records the appropriate document in the Assignment Services Branch; and (2) notifies the Post Registration staff that the document has been recorded. 37 C.F.R. §3.85.
See TMEP §§504 et seq. regarding the circumstances in which the “Ownership” field in TRAM and TARR will be automatically updated after recordation of a document with the Assignment Services Branch, even if the new owner does not notify the Post Registration staff that the document has been recorded. See also TMEP §505.02 regarding requests to update ownership information after registration, TMEP §609.02(f) regarding correspondence after recordation of a change of ownership, TMEP §502.01 regarding establishing ownership of a registration, and TMEP §502.03 regarding issuance of a new certificate in the name of a new owner.
1604.07(d) Changes of Legal Entity
The procedures for establishing ownership, as discussed in TMEP §1604.07(b), also apply to changes of name and changes of legal entity. See TMEP §1604.07(e) regarding changes of name.
A change in the state of incorporation is a change of legal entity, creating a new party.
The death of a partner, or other change in the membership of a partnership, creates a change in legal entity unless the partnership agreement provides for continuation of the partnership and the relevant state law permits this.
A merger of companies into a new company normally constitutes a change of legal entity.
Affidavits may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person’s authority to act on behalf of the present owner. If there is a court order, a copy of the order should be submitted.
1604.07(e) Changes of Name
A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §8 affidavit. Therefore, if the owner records a change of name with the Assignment Services Branch and subsequently files the §8 affidavit in its former name, the USPTO will not issue an inquiry regarding ownership.
However, if it is unclear from the records of the Assignment Services Branch whether the party who filed the affidavit is the owner of record, the owner must either record evidence of the change of name in the Assignment
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Services Branch or submit proof of the change of name. See 37 C.F.R. §3.73(b) and TMEP §1604.07(b). For a corporation, this is done by recording or submitting a certificate of change of name issued by the Secretary of State (or other authorized body) of the state of incorporation.
See TMEP §1604.07(c) regarding issuance of the notice of acceptance of the affidavit in the name of the new owner.
1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner
If the affidavit or declaration was filed by the owner of the registration, but there is a mistake in the manner in which the name of the owner is set out in the affidavit, the mistake can be corrected. In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm’r Pats. 1990). No deficiency surcharge is required in this situation.
However, if the affidavit or declaration was mistakenly filed in the name of a person or existing legal entity who did not own the mark as of the filing date, a new affidavit or declaration cannot be filed in the name of the true owner unless there is time remaining in the grace period. See TMEP §1604.07(a); In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002); In re ACE III Communications Inc., 62 USPQ2d 1049 (Dir USPTO 2001).
See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
1604.08 Execution of Affidavit or Declaration
1604.08(a) Persons Who May Sign Affidavit or Declaration
Under 37 C.F.R. §2.161(b), the §8 affidavit or declaration must include a statement that is signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner. A “person who is properly authorized to sign on behalf of the owner” is: (1) a person with legal authority to bind the owner; (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 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
Generally, the USPTO does not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §611.03(a).
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1604.08(b) Date of Execution of Affidavit or Declaration
Under 37 C.F.R. §2.161(b), the verified statement must be executed on or after the beginning of the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058, (i.e., on or after the fifth anniversary of the date of registration or publication under §12(c), or on or after the beginning of the one-year period before the end of each ten-year period after the date of registration). Because the purpose of the affidavit is to attest to the use or excusable nonuse of the mark within the time periods specified in §8 of the Act, the affidavit cannot be executed before these time periods begin.
An affidavit filed within the period specified in §8 of the Act, but executed before that period, is deficient. The owner of the registration will be required to submit a substitute or supplemental affidavit or declaration attesting to use in commerce (or excusable nonuse) on or in connection with the goods or services within the relevant period specified in §8 of the Act.
If the prematurely executed §8 affidavit was filed during the relevant period specified in §8(a) or §8(b) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute affidavit may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c)(2) of the Act. If the prematurely executed §8 affidavit was filed during the grace period, the substitute affidavit may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1604.04 regarding the deadlines for filing §8 affidavits, and TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
Date of Execution Omitted. If the §8 affidavit is signed, but the date of execution is omitted, the Post Registration staff must require that the owner of the registration set forth the date of execution for the record. If the affidavit was executed within the relevant filing period, no deficiency fee is required. If there are no other outstanding issues, the owner may provide the Post Registration staff with the date by telephone or e-mail and the Post Registration staff must make a note in the “Notes-to-the-File” section of the record. If the affidavit was not executed within the relevant filing period, the affidavit is deficient, and the owner must submit a substitute or supplemental affidavit, as discussed above.
1604.08(c) Signature of Electronically Transmitted Affidavit or Declaration
See TMEP §611.01(c) regarding signature of an affidavit or declaration filed through TEAS.
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1604.08(d) Form and Wording of Verification
The format of the verification may be: (1) the classical form for verifying, which includes an oath (jurat) (see TMEP §804.01(a)); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath (see TMEP §804.01(b)).
1604.09 Goods and/or Services Set Forth in §8 Affidavit or Declaration
1604.09(a) Goods and/or Services Must be Specified or Expressly Incorporated by Reference
Under 15 U.S.C. §1058(b) and 37 C.F.R. §2.161(e)(1), the affidavit or declaration must specify the goods/services recited in the registration on or in connection with which the mark is in use in commerce, and/or the goods/services for which excusable nonuse is claimed. See TMEP §1604.10 regarding use in commerce, and TMEP §1604.11 regarding excusable nonuse. The affidavit or declaration may incorporate by reference the identification set forth in the registration certificate (e.g., “all goods/services listed in the registration” or “all goods/services listed in the registration except... [specifying the goods/services not covered by the affidavit or declaration]”). Incorporation by reference is recommended, to avoid inadvertent omissions.
If the owner is alleging use with respect to some of the goods/services and excusable nonuse for other goods/services, the owner must clearly indicate which goods/services are in use and which goods/services are not in use.
1604.09(b) Deletion of Goods and/or Services
If the owner of the registration intends to delete goods/services from the registration, this should be expressly stated in the affidavit or declaration. 37 C.F.R. §2.161(e)(2).
1604.09(c) Failure to List All Goods and/or Services Recited in Registration
An affidavit or declaration that fails to list or incorporate by reference all the goods/services recited in the registration, and does not include a statement of intent to delete the omitted goods/services, is deficient. The Post Registration staff will issue an Office action requiring the party to either file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services or state that the omitted goods/services should be deleted.
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If the owner files a substitute or supplemental affidavit or declaration adding the omitted goods/services, the owner must verify that the mark was in use in commerce on or in connection with the goods/services during the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058. This substitute affidavit may be filed before expiration of the relevant deadline set forth in §8 of the Act for no fee, or after expiration of the deadline set forth in §8 of the Act with the deficiency surcharge required by §8(c)(2) of the Act. See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the owner does not file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services within the period for response to the Office action (see TMEP §1604.16), the omitted goods/services will be deleted from the registration.
1604.09(d) New Goods and/or Services Cannot be Added
Goods and/or services that are not listed in the registration may not be set forth in the §8 affidavit.
1604.10 Use in Commerce
The §8 affidavit must state that the mark is in use in commerce on or in connection with the goods and/or services listed in the registration, unless excusable nonuse is claimed. 37 C.F.R. §2.161(f)(1). See TMEP §1604.11 regarding excusable nonuse. The §8 affidavit does not have to specify the type of commerce (e.g., interstate) in which the mark is used. The USPTO presumes that someone 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, unless there is contradictory evidence in the record.
A §8 affidavit that does not state that the mark is in use in commerce is deficient. The owner must submit a substitute affidavit or declaration stating that the mark was in use in commerce on or in connection with the goods and/or services listed in the registration during the relevant period specified in §8 of the Trademark Act, 15 U.S.C. §1058, as follows:
(1) If the §8 affidavit was filed during the sixth year after the date of registration or publication under §12(c) of the Act, the substitute affidavit must state that the mark was in use in commerce on or in connection with the goods/services before the expiration of the sixth year after the date of registration or publication under §12(c), if accurate; or
(2) If the §8 affidavit was filed within one year before the end of any ten-year period after the date of registration, the substitute affidavit must state that the mark was in use in commerce on or in connection
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with the goods/services within one year before the end of the ten-year period after the date of registration, if accurate; or
(3) If the §8 affidavit was filed during the grace period, the substitute affidavit must state that the mark was in use in commerce on or in connection with the goods/services before the expiration of the grace period, if accurate.
If the §8 affidavit was filed during the relevant period specified in §8(a) or §8(b) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Act, or within one year before the end of any ten-year period after the date of registration), the substitute affidavit may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c)(2) of the Act. If the §8 affidavit was filed during the grace period, the substitute affidavit may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1604.04 regarding the deadlines for filing §8 affidavits, and TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
While a substitute affidavit may be filed after the expiration of the period specified in §8 of the Act, the substitute affidavit must attest to use within the time period specified in §8 of the Act. Therefore, if the substitute affidavit does not state that the mark was in use in commerce on or in connection with the goods/services within the relevant period specified in §8 of the Act, the USPTO will not accept the §8 affidavit, and the registration will be cancelled.
1604.11 “Excusable Nonuse” of Mark
Extract from 37 C.F.R. §2.161. A complete affidavit or declaration under section 8 of the Act must:
. . . (f) . . . (2) If the registered mark is not in use in commerce on or in connection with
all the goods or services in the registration, set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume; and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark[.]
The purpose of Section 8 of the Trademark Act is to remove from the register those registrations that have become deadwood. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969). It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of
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the owner of the registration. In re Moorman Mfg. Co., 203 USPQ 712 (Comm’r Pats. 1979). Thus, if the mark is not in use in commerce but the owner believes the registration should not be cancelled, the owner may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark. 15 U.S.C. §1058(b)(2). Ex parte Kelley-How-Thomson Co., 118 USPQ 40 (Comm’r Pats. 1958).
Requirements for Affidavit
Since "showing" implies proof, merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient. In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993); In re Moorman Mfg. Co., supra; Ex parte Astra Pharmaceutical Products, Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chemical Mfg. Co., 118 USPQ 106 (Comm’r Pats. 1958). The affidavit must state when use in commerce stopped and give the approximate date when use is expected to resume. 37 C.F.R. §2.161(f)(2). It should also specify the reason for nonuse, the specific steps being taken to put the mark back in use, and any other relevant facts.
Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the owner's control or "forced by outside causes." In re Conusa Corp., supra; In re Moorman Mfg. Co., supra; Ex parte Kelley-How-Thomson Co., supra.
The goods/services for which excusable nonuse is claimed must be specified. See TMEP §§1604.09 et seq. regarding proper specification of the goods and services.
In a multiple-class registration, there must be a recitation of facts as to nonuse for each class to which the affidavit pertains, or it must be clear that the facts recited apply to all the classes.
Presumption of Abandonment
If the mark has not been in use for three consecutive years and the owner has done nothing to try to resume use of the mark, the Office may presume that the owner has abandoned the mark. 15 U.S.C. §1127. See Imperial Tobacco Ltd. v. Phillip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997).
Examples of Special Circumstances That Do and Do Not Excuse Nonuse
In addition to a showing that there is no intention to abandon the mark, the owner must show that nonuse is due to special circumstances beyond the owner's control that excuse nonuse. The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:
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• Business Decision. Nonuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.
• Decreased Demand. Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse. The purpose of the affidavit requirement is to eliminate registrations of marks that are in nonuse due to ordinary changes in social or economic conditions. See In re Conusa Corp., supra; In re Parmalat S.p.A., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharmaceutical Products, Inc., supra; Ex parte Denver Chemical Mfg. Co., supra.
• Trade Embargo or Other Circumstance Beyond Owner’s Control. Nonuse may be considered excusable where the owner of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
• Sale of a Business. Temporary nonuse due to the sale of a business might be considered excusable.
• Retooling. The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time. However, nonuse due to retooling is excusable only if the owner shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market. In re New England Mutual Life Insurance Co., 33 USPQ2d 1532 (Comm’r Pats. 1991).
• Orders on Hand. If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
• Illness, Fire, and Other Catastrophes. Illness, fire, and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use. Such nonuse is often excusable. However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse; the owner must show that the business is an operation that could not continue without his or her presence. New England Mutual Life Insurance, supra.
• Negotiations with Distributors. A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but
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does not establish the existence of special circumstances that excuse the nonuse. In re Parmalat, supra; In re Moorman, supra.
• Use in Foreign Country. Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress. In re Conusa, supra.
• Use of Mark on Different Goods/Services. Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark. Ex parte Kelley-How-Thomson Co., supra.
• Use of Mark in Another Form. Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue. In re Continental Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958).
Supplementary Evidence or Explanation of Nonuse
If the USPTO determines that the facts set forth do not establish excusable nonuse, the owner may file supplementary evidence or explanation, within the response period set forth in the Office action. If the affidavit included a claim of excusable nonuse when filed, no deficiency surcharge will be required for supplementing this claim with additional evidence or an explanation.
Substitute Affidavit Claiming Use
If the owner responds to the Office action by submitting a substitute affidavit with a claim of use and there is time remaining in the statutory period for filing the affidavit, the USPTO will examine the substitute use affidavit. However, if there is no time remaining in the statutory filing period, the substitute affidavit of use is non-responsive to the Office action requesting support for a claim of nonuse, and it cannot be accepted. In this case, the registration will be cancelled and any fee submitted with the untimely affidavit of use will be refunded.
1604.12 Specimen Showing Current Use of Mark in Commerce
1604.12(a) Specimen for Each Class Required
A §8 affidavit must include a specimen or facsimile showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed. 15 U.S.C. §1058(b); 37 C.F.R. §2.161(g).
See TMEP §§904.03 et seq. regarding trademark specimens, and TMEP §§1301.04 et seq. regarding service mark specimens.
The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the
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goods/services listed in the registration. A specimen that shows use of a materially different mark (see TMEP §1604.13), or shows use of the mark on other goods or services, is unacceptable. An affidavit or declaration that does not include an acceptable specimen for each class of goods/services is deficient. See 37 C.F.R. §2.161(g).
If a single specimen supports multiple classes, the owner may so indicate, and the Post Registration staff need not require multiple copies of the specimen. The Post Registration staff should make a note in the “Notes-to- the-File” section of the record indicating which classes the specimen supports.
Under 37 C.F.R. §2.161(g)(2), the specimen must be flat and no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen exceeds these size requirements, the USPTO will create a facsimile of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8½ inches wide by 11.69 inches long), put it in the record, and destroy the original bulky specimen. If the copy of the specimen created by the USPTO does not adequately depict the mark, the Post Registration staff will require a substitute specimen that meets the size requirements of the rule, and an affidavit or declaration verifying the use of the substitute specimen.
If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act. See 37 C.F.R. §2.164; see also TMEP §1604.12(c) regarding substitute specimens.
The USPTO will not return specimens filed with a §8 affidavit or declaration.
1604.12(b) Specimens in Electronically Filed Affidavits
If the owner files the §8 affidavit through TEAS, the owner must submit a digitized image in .jpg or .pdf format. 37 C.F.R. §2.161(g)(3).
Sometimes, there is no visible specimen in the record due to a technical problem. In this situation, the Post Registration staff should ask the owner to submit by mail or fax: (1) the specimen (or a facsimile of the specimen) that was attached to the original electronically filed affidavit; and (2) a statement by the person who transmitted the affidavit to the USPTO that the specimen being submitted by mail or fax is a true copy of the specimen submitted with the electronically filed affidavit. This statement does not have to be verified. Alternatively, the owner may submit a new specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services during the relevant period specified in §8 of the Act. No deficiency surcharge is required. See TMEP
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§1604.12(c) regarding the requirements for an affidavit supporting use of substitute specimens.
1604.12(c) Substitute Specimens
If a specimen for any class is omitted or is deficient, the owner must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act, 15 U.S.C. §1058, as follows:
(1) If the §8 affidavit was filed during the sixth year after the date of registration or publication under §12(c) of the Act, 15 U.S.C. §1062(c), the affidavit supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the sixth year after the date of registration or publication under §12(c), if accurate; or
(2) If the §8 affidavit was filed within one year before the end of any ten-year period after the date of registration, the affidavit supporting use of the substitute specimen must state that the substitute specimen was in use in commerce within one year before the end of the ten-year period after the date of registration, if accurate; or
(3) If the §8 affidavit was filed during the grace period, the affidavit supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the grace period, if accurate.
If the §8 affidavit was filed during the relevant period specified in §8(a) or §8(b) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute specimen may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c)(2) of the Act. If the §8 affidavit was filed during the grace period, the substitute specimen may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1604.04 regarding the deadlines for filing §8 affidavits, and TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
While a substitute specimen and supporting affidavit may be filed after the expiration of the period specified in §8 of the Act, the supporting affidavit must attest to use of the specimen within the time period specified in §8 of the Act. Therefore, if the affidavit supporting the substitute specimen does not state that the specimen was in use in commerce prior to the end of the relevant period specified in §8 of the Act, the USPTO will not accept the affidavit, and
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the registration will be cancelled as to any class for which no proper specimen was submitted.
1604.13 Differences in the Mark as Used on the Specimen and the Mark as Registered
The mark to which the §8 affidavit pertains must be essentially the same as the mark that appears in the registration. Where the specimen reflects a change in the mark since the registration issued, acceptance of the affidavit will depend on the degree of change. A material alteration of the mark will result in refusal of the affidavit on the ground that the registered mark is no longer in use. In re Int’l Nickel Co., Inc., 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Continental Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967). See also Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).
Mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953) (change in matter determined to be mere background and type face held not a material alteration of “PETER PAN” mark). Whether the change in a mark as used on the specimen is a material change is a question of fact that the Post Registration staff must determine on a case-by-case basis.
Generally, the standard used to determine whether a change is material under §8 is the same as the standard used to determine whether the mark in a registration may be amended under 15 U.S.C. §1057(e). If the mark could be amended under §7(e) because the character of the mark had not been materially altered, then the specimen filed with the §8 affidavit should be accepted. In determining whether a change constitutes a material alteration, the USPTO will always compare the mark in the specimen to the mark as originally registered. See TMEP §§807.14 et seq. and 1609.02(a) for additional information about material alteration.
However, where the registered mark is currently used as one of several elements in a composite mark, the decision as to whether to accept the specimen requires consideration of whether the registered mark makes an impression apart from the other elements of the composite mark. If the display of the composite is such that the essence of the registered mark makes a separate impression, then the specimen may be sufficient for purposes of the §8 requirement. In many cases, word elements are severable from design elements, because words tend to dominate in forming a commercial impression. In re DeWitt Int’l Corp., 21 USPQ2d 1620 (Comm’r Pats. 1991). If the mark, as used on the §8 specimen, creates a separate
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impression apart from any other material on the specimen, then the specimen may be accepted as evidence of current use of the registered mark.
If the USPTO determines that the mark on the specimen is a material alteration of the registered mark, the owner may file a substitute specimen. If the owner files a substitute specimen after expiration of the relevant filing period specified in §8 of the Act, the owner must pay the deficiency surcharge required by §8(c)(2) of the Act, 15 U.S.C. §1058(c)(2), and 37 C.F.R. §2.6. See TMEP §1604.12(c) regarding substitute specimens, and 37 C.F.R. §2.164 and TMEP §§1604.17 et seq. regarding the procedures for correcting deficiencies in a §8 affidavit.
1604.13(a) Possible Amendment of Mark in Registration
If the USPTO accepts the §8 affidavit, and there is a difference between the mark on the specimen filed with the affidavit and the mark in the registration, the mark as originally registered remains the mark of record. If the owner wants to change the mark in the registration to agree with the mark currently used, the owner must file a separate request for amendment under §7(e) of the Act, 15 U.S.C. §1057(e), and pay the fee required by 37 C.F.R. §2.6. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953). See TMEP §§1609.02 et seq. regarding amendment of a registered mark under §7(e).
However, amending the mark in a registration under §7(e) to agree with the mark as shown on a §8 specimen is not mandatory.
1604.14 Designation of Domestic Representative by Foreign Owner
Under 15 U.S.C. §1058(f), if the owner of the registration is not domiciled in the United States, the affidavit or declaration may include the name and address of a United States resident upon whom notices or process in proceedings affecting the registration may be served. The USPTO encourages parties who do not reside in the United States to designate domestic representatives. To expedite processing, the USPTO recommends that designations of domestic representative be filed through TEAS, at http://www.uspto.gov/teas/index.html. See TMEP §610.
The designation should be signed by the individual owner, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 (“qualified practitioner”). In the case of joint owners who are not represented by a qualified practitioner, all should sign. TMEP §611.03(h).
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1604.15 Office Actions and Notices Regarding Affidavit
Upon receipt of a §8 affidavit, the USPTO updates the prosecution history of the registration in TRAM and TARR to indicate that the affidavit has been filed.
When a §8 affidavit is filed electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the affidavit, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.
If a §8 affidavit is filed on paper, no acknowledgment of receipt of the affidavit is sent before it is examined, unless the applicant includes a stamped, self- addressed postcard with the affidavit (see TMEP §303.02(c) et seq.).
If, upon examination, the USPTO determines that the affidavit or declaration is acceptable, the USPTO sends a notice of acceptance. If the affidavit or declaration is not acceptable, the USPTO issues an action stating the reasons for refusal. 37 C.F.R. §2.163.
The propriety of the original registration is not re-examined in connection with the affidavit under §8.
1604.16 Response to Office Action
Deadline. Under 37 C.F.R. §2.163(b), the owner must file a response to a refusal within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) or §8(b) of the Act, whichever is later. If no response is received within that time, the registration will be cancelled, unless time remains in the grace period under §8(c)(1) of the Act, 15 U.S.C. §1058(c)(1). If time remains in the grace period, the owner may file a complete new affidavit, with a new fee. 37 C.F.R. §2.163(c).
The owner may file a petition to the Director under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive 37 C.F.R. §2.163(b) so that a late response to an Office action can be accepted. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. See TMEP §1708. The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.163(b). The “unintentional delay” standard of 37 C.F.R. §2.66 does not apply to the failure to respond to an Office action issued in connection with a §8 affidavit. TMEP §1714.01(f)(ii).
Signature. The response must be signed by a qualified practitioner, or by the owner of the registration or someone with legal authority to bind the owner. If the owner is represented by a qualified practitioner, the practitioner must sign.
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37 C.F.R. §11.18(a). If the owner is not represented by a qualified practitioner, the individual owner or someone with legal authority to bind a juristic owner must sign. 37 C.F.R. §§2.163(b) and 11.14(e); TMEP §611.03(b). In the case of joint owners who are not represented by a qualified practitioner, all should sign. See TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq. regarding persons who are qualified to represent others before the USPTO in trademark cases.
When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must treat the response as incomplete and follow the procedures in TMEP §§611.05 et seq.
Correction of Deficiencies. See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
1604.17 Correction of Deficiencies in §8 Affidavit
37 C.F.R. §2.164. Correcting deficiencies in affidavit or declaration. (a) If the owner of the registration files an affidavit or declaration within the
time periods set forth in section 8 of the Act, deficiencies may be corrected, as follows:
(1) Correcting deficiencies in affidavits or declarations timely filed within the periods set forth in sections 8(a) and 8(b) of the Act. If the owner timely files the affidavit or declaration within the relevant filing period set forth in section 8(a) or section 8(b) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge. Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 8(c)(2) of the Act and §2.6.
(2) Correcting deficiencies in affidavits or declarations filed during the grace period. If the affidavit or declaration is filed during the six-month grace period provided by section 8(c)(1) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 8(c)(2) of the Act and §2.6.
(b) 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.
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1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act
If the owner of the registration timely files the affidavit or declaration during the periods set forth in §§8(a) and 8(b) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), deficiencies may be corrected within the relevant period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the relevant period with payment of the deficiency surcharge required by §8(c)(2) of the Act, 15 U.S.C. §1058(c)(2). 37 C.F.R. §2.164(a)(1).
Any deficiency must be cured within the set period for response to the Office action, i.e., within six months of the issuance date of the action, or before the end of the relevant filing period set forth in §8 of the Act, whichever is later. 37 C.F.R. §2.163(b). If no response is filed within this time period, the registration will be cancelled, unless time remains in the grace period. If time remains in the grace period, the owner may file a complete new affidavit, with a new fee. 37 C.F.R. §2.163(c). See TMEP §1604.16.
1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period
If the owner of the registration files the affidavit or declaration during the six- month grace period under §8(c)(1) of the Act, 15 U.S.C. §1058(c)(1), deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §8(c)(2) of the Act, 15 U.S.C. §1058(c)(2). 37 C.F.R. §2.164(a)(2).
Deficiencies must be cured within six months of the issuance date of the Office action. 37 C.F.R. §2.163(b). See TMEP §1604.16.
1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period
The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed within the time period set forth in §8 of the Act (including the grace period), or if the affidavit or declaration is filed by someone other than the current owner of the registration. 37 C.F.R. §2.164(b). Untimely filing and filing in the name of the wrong party cannot be cured after expiration of the grace period, even with a deficiency surcharge. In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002); In re ACE III Communications Inc., 62 USPQ2d 1049 (Dir USPTO 2001). See TMEP
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§1604.04 regarding the deadline for filing the affidavit, and TMEP §§1604.07 et seq. regarding ownership.
1604.18 Petition Under 37 C.F.R. §2.146
The action of the Post Registration staff on a §8 affidavit may not be appealed to the Trademark Trial and Appeal Board, but the owner may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 2.165(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c). See TMEP Chapter 1700 regarding petitions.
1604.18(a) Response to Examiner’s Refusal Required Before Petition
A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. 37 C.F.R. §2.165(a).
If the Post Registration staff continues the refusal to accept the affidavit or declaration, the owner may file a petition for review of the action under 37 C.F.R. §2.146(a)(2) within six months of the issuance date. If the owner does not file a petition within six months, the registration will be cancelled. 37 C.F.R. §2.165(b).
1604.18(b) Decision on Petition is Final Action of the USPTO
The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration (see TMEP §1604.18(c)), or an appeal to an appropriate court (see TMEP §1604.18(d)) within two months of the issuance date of the decision on petition, the registration will be cancelled.
1604.18(c) Request for Reconsideration of Denial of Petition
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid with the request for reconsideration. See TMEP §1705.08 regarding requests for reconsideration of petition decisions.
1604.18(d) Appeal to Federal Court
The owner of the registration may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition. 15 U.S.C. §§1071(a)(1) and (b)(1); 37 C.F.R. §§2.145(a) and 2.145(c).
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The deadline for filing an appeal or commencing a civil action is two months from the issuance date of the decision on petition. 15 U.S.C. §§1071(a)(2) and (b)(1); 37 C.F.R. §2.145(d)(1). Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.
Under 37 C.F.R. §2.165(c), a decision on petition is necessary before the owner can file an appeal or commence a civil action in any court.
1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application
A §8 affidavit and a §9 renewal application may be combined into a single document, if the document meets the requirements of both §§8 and 9 of the Act. 37 C.F.R. §2.166.
The filing fee for the combined §8 and §9 filing is the sum of the cost of the individual filings. For example, if the filing fee for the §8 affidavit is $100 per class, and the filing fee for the renewal application is $400 per class, then the filing fee for the combined §8 and §9 document is $500 per class.
If the combined §8 and §9 document is filed during the grace period, the filing fees per class and the grace period surcharge per class must be paid for both the §8 affidavit and the §9 renewal application.
Example: The period for filing a §8 affidavit and §9 renewal application expires on November 19, 2009. A combined §8 and §9 document is filed November 21, 2009, during the six-month grace period. The proper fees are as follows: (1) filing fee for the §8 affidavit, per class; (2) grace period surcharge for the §8 affidavit, per class; (3) filing fee for the §9 renewal application, per class; and (4) grace period surcharge for the §9 renewal application, per class.
Failure to include the proper fees is a deficiency that may require a deficiency surcharge. See TMEP §§1604.17 et seq. and 1606.13 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for curing one or more deficiencies in a combined §8 and §9 filing, even if both the §8 affidavit and the §9 renewal application are deficient. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one document.
To expedite processing, it is recommended that the combined §8 and §9 filing be submitted through TEAS, at http://www.uspto.gov/teas/index.html. When the combined filing is submitted electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage.
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TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.
Alternatively, the owner of the registration can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered to the USPTO.
See TMEP §1605.05 regarding a combined filing under §§8 and 15 of the Act.
1605 Affidavit of Incontestability Under §15
Section 15 of the Trademark Act, 15 U.S.C. §1065, provides a procedure by which the exclusive right to use a registered mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” if the owner of the registration files an affidavit stating that the mark has been in continuous use in commerce for a period of five years after the date of registration. To expedite processing, it is recommended that the owner file the §15 affidavit through TEAS, available at http://www.uspto.gov. See TMEP §1605.02.
Under §33(b) of the Act, 15 U.S.C. §1115(b), if the right to use the mark has become incontestable under §15, then the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions. Sections 15 and 33(b) apply only to registrations issued on the Principal Register.
Filing an affidavit of incontestability under §15 of the Trademark Act (“§15 affidavit”) is optional. An eligible registrant may choose to claim the benefits of incontestability and file an appropriate affidavit, or may elect to retain the registration without those benefits. The requirements for maintaining and renewing a federal registration are not affected.
The USPTO does not “accept” §15 affidavits. Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 n.2. (TTAB 1982). Rather, the USPTO reviews the affidavit to determine whether it is consistent with the requirements of the statute and rules (e.g., whether it is signed, whether it was filed at an appropriate time, and whether the §15 claims are properly set forth).
When a §15 affidavit complies with the requirements of the statute and rules, the USPTO updates its records to acknowledge receipt of the affidavit and sends a notice of acknowledgment to the owner of the registration. Acknowledging receipt of the affidavit provides notice to the public that an affidavit of incontestability has been filed; it is not a determination by the USPTO that the registration is in fact incontestable. The question of whether
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the registration is incontestable arises and is determined by a court if there is a proceeding involving the mark.
If the §15 affidavit does not comply with the statute and rules, the USPTO issues a written action notifying the owner of any inconsistency or error, but does not require correction. The USPTO does not update its records to acknowledge receipt of a noncompliant affidavit. The owner may file a new §15 affidavit, with a new filing fee.
A fee is required for each class in the registration to which the §15 affidavit or declaration pertains. 37 C.F.R. §§2.6 and 2.167(g). If insufficient fees are included with the affidavit, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees. 37 C.F.R. §2.167(g).
The limitation of grounds that a third party can raise in a petition to cancel a registered mark under 15 U.S.C. §1064 filed more than five years from the date of registration does not depend on the filing of a §15 affidavit. TMEP §1605.06.
See TMEP §1605.05 regarding a combined affidavit or declaration under §§8 and 15 of the Act, and TMEP §1216.02 regarding the effect of “incontestability” in ex parte examination.
1605.01 Registrations to Which §15 Affidavit Pertains
The provisions of §15 of the Trademark Act apply only to registrations issued on the Principal Register under the Act of 1946 and to registrations issued under the Acts of 1905 and 1881 that have been “published” under §12(c) of the Act, 15 U.S.C. §1062(c). See TMEP §1603 regarding §12(c).
A §15 affidavit may be filed for a registered extension of protection of an international registration to the United States. Section 73 of the Trademark Act, 15 U.S.C. §1141m.
Section 15 affidavits may not be filed for marks registered on the Supplemental Register of the Act of 1946, marks registered under the Act of 1920, or marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have not been claimed under §12(c). If a §15 affidavit is filed for a registration that is not eligible for the benefits of §15, the USPTO will not review it and will refund the filing fee.
1605.02 Form for Filing Affidavit of Incontestability
To expedite processing, it is recommended that the owner file the §15 affidavit through TEAS, available at http://www.uspto.gov/teas/index.html. When the affidavit is submitted electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of
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filing should any question arise as to the filing date of the affidavit, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.
Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered to the USPTO.
1605.03 Time for Filing Affidavit of Incontestability
The owner may not file a §15 affidavit until the federally registered mark has been in continuous use in commerce for at least five consecutive years after the date of registration. This may be any five-year period after the date of registration for marks registered under the Act of 1946, or after the date of publication under §12(c) for marks registered under the Acts of 1905 and 1881.
The owner may file the affidavit within one year after the five-year period that is selected. 37 C.F.R. §2.167(f). The affidavit must be both executed and filed within that one-year period. If the affidavit is filed too early, the USPTO will not review it and will refund the filing fee. The owner may file a new affidavit, with a fee, during the statutory filing period.
An affidavit filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(2).
Section 15 affidavits filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197. See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.
See TMEP §1605.05 regarding a combined affidavit under §§8 and 15 of the Act.
1605.04 Requirements for Affidavit or Declaration of Incontestability
Section 15 of the Act refers to the affidavit or declaration merely as “setting forth” the specified information. See 15 U.S.C. §1065(3). Therefore, no showing or proof beyond the owner’s verified statement is required.
Must be Filed by Owner. In order to be effective, the §15 affidavit or declaration must be filed by the person who is the owner of the registration at
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the time the affidavit is filed. 37 C.F.R. §2.167(a). If the affidavit was filed by the wrong party, the true owner may file a new affidavit, with a new filing fee.
Fee. A fee is required for each class in the registration to which the §15 affidavit or declaration pertains. See 37 C.F.R. §§2.6 and 2.167(g). If insufficient fees are included with the affidavit, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees. 37 C.F.R. §2.167(g).
Goods/Services Must be Recited. The §15 affidavit must specify the goods or services recited in the registration on or in connection with which the mark has been in continuous use for the five-year period after the date of registration or publication under §12(c), and is still in use in commerce. 15 U.S.C. §1065(3); 37 C.F.R. §2.167(c). More than one affidavit may be filed at different times for different goods/services in the same registration.
Mark Must be in Use in Commerce. Regardless of the basis for registration, the use on which the §15 affidavit is based must be use in commerce. This applies to both foreign and domestic registrants. It is not necessary to specify the type of commerce (e.g., interstate) in which the mark is used. The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the United States Congress can regulate, unless there is contradictory evidence in the record. See TMEP §§901 et seq. regarding use in commerce.
No Adverse Decision or Pending Proceeding Involving Rights in the Mark. The §15 affidavit must state that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods or services, or to the owner’s right to register the mark or to keep the mark on the register. It must also state that there is no proceeding involving these rights pending in the USPTO or in a court and not finally disposed of. 15 U.S.C. §§1065(1) and (2); 37 C.F.R. §§2.167(d) and (e). If the USPTO finds facts contrary to either of the foregoing statements, the USPTO will not acknowledge receipt of the §15 affidavit. See TMEP §1605. (The USPTO does not consider a proceeding involving the mark in which the owner is the plaintiff, where there is no counterclaim involving the owner’s rights in the mark, to be a “proceeding involving these rights” that would preclude the filing or acknowledgment of a §15 affidavit.)
If the USPTO finds that there is a proceeding pending that involves the owner’s right to register the mark or to keep the mark on the register, the USPTO will not acknowledge the affidavit, even if the proceeding was instituted after the owner filed the §15 affidavit but before the affidavit was reviewed by the USPTO. If a pending proceeding is later dismissed, the owner may file a new affidavit, with a new filing fee.
Verification. The §15 affidavit must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by the owner of the
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registration or a person properly authorized to sign on behalf of the owner of the registration. 37 C.F.R. §2.167(a). A “person who is properly authorized to sign on behalf of the owner” is: (1) a person with legal authority to bind the owner; (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 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the owner. Generally, the USPTO does not question the authority of the person who signs a §15 affidavit, unless there is an inconsistency in the record as to the signatory’s authority to sign. TMEP §611.03(a).
See TMEP §611.01(c) regarding signature of electronically filed affidavits or declarations.
1605.05 Combining §15 Affidavit with §8 Affidavit
A §15 affidavit may be combined with a §8 affidavit, if the combined affidavit or declaration meets the requirements of both §§8 and 15.
The filing fee for a combined §8 and §15 affidavit is the sum of the cost of the individual filings. For example, if the filing fee for the §8 affidavit is $100 per class, and the filing fee for the §15 affidavit is $200 per class, then the filing fee for the combined affidavit or declaration under §§8 and 15 is $300 per class.
If the combined §8 and §15 affidavit is filed during the §8 grace period, the grace period surcharge per class for the §8 affidavit must be paid. There is no grace period surcharge for a §15 affidavit.
If a combined §8 and §15 affidavit is filed, and the §8 affidavit is deficient, the deficiency may be corrected before expiration of the relevant deadline set forth in §8 of the Act for no fee, or after expiration of the relevant deadline with the deficiency surcharge required by §8(c)(2) of the Act, 15 U.S.C. §1058(c)(2). See TMEP §§1604.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies in a §8 affidavit. There is no deficiency surcharge for a §15 affidavit.
To expedite processing, it is recommended that the owner file the combined §8 and §15 affidavit through TEAS, available at http://www.uspto.gov/teas/index.html. When the combined affidavit is submitted electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the affidavit, and it may be printed or copied-and- pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information. Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered to the USPTO.
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1605.06 Section 14 Limitation is Independent of §15 Affidavit
Section 14 of the Trademark Act, 15 U.S.C. §1064, limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years from the date of registration or publication under §12(c). This limitation of grounds does not depend on the filing of a §15 affidavit. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §307.02(b).
1606 Renewal of Registration Under Trademark Act §9
15 U.S.C. §1059. Renewal of registration. (a) Subject to the provisions of section 8, each registration may be renewed
for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application, in such form as may be prescribed by the Director. Such application may be made at any time within 1 year before the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a grace period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor. If any application filed under this section is deficient, the deficiency may be corrected within the time prescribed after notification of the deficiency, upon payment of a surcharge prescribed therefor.
(b) If the Director refuses to renew the registration, the Director shall notify the registrant of the Director’s refusal and the reasons therefor.
(c) If the registrant is not domiciled in the United States the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.
1606.01 Which Registrations Must be Renewed Under §9
1606.01(a) Registrations Based on Applications Under §1 or §44 Must Be Renewed Under §9
Section 9 of the Trademark Act, 15 U.S.C. §1059, requires that registrations resulting from applications based on §1 or §44 of the Trademark Act be
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renewed periodically. See TMEP §§1606.02 et seq. for information about the requirements for renewal under §9.
1606.01(b) Section 9 Does Not Apply to Extensions of Protection of International Registrations to the United States
Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States. Renewal of international registrations must be made at the IB, in accordance with Article 7 of the Madrid Protocol. 37 C.F.R. §7.41(a). See TMEP §1614 for further information about renewal of international registrations.
1606.01(c) Renewal of Registrations Issued Under Prior U.S. Trademark Acts Must Be Renewed Under §9
An application for renewal of a registration issued under a prior Act, where required, must meet all the requirements of § 9 of the Act and 37 C.F.R. §2.183. See TMEP §1602.02 regarding the renewal of registrations issued under the Acts of 1881 and 1905, and TMEP §1602.03 regarding the renewal of registrations issued under the Act of 1920.
1606.02 Requirements for Renewal Under §9
37 C.F.R. §2.183. Requirements for a complete renewal application. A complete renewal application must include: (a) A request for renewal of the registration, signed by the registrant or the
registrant’s representative; (b) The fee required by §2.6 for each class; (c) The additional fee required by §2.6 for each class if the renewal
application is filed during the six-month grace period set forth in section 9(a) of the Act;
(d) If the renewal application covers less than all the goods or services in the registration, a list of the particular goods or services to be renewed.
(e) If at least one fee is submitted for a multi-class registration, but the class(es) to which the fee(s) should be applied 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. Additional fee(s) may be submitted if the requirements of §2.185 are met. 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.
(f) Renewals of registrations issued under a prior classification system will be processed on the basis of that system, unless the registration has been amended to adopt international classification pursuant to §2.85(e)(3).
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1606.03 Time for Filing §9 Renewal Application
The application for renewal must be filed within one year before the expiration of the registration, or within the six-month grace period after the expiration of the registration with an additional grace period surcharge. If no renewal application is filed before the end of the grace period, the registration will expire. 15 U.S.C. §1059(a); 37 C.F.R. §2.182. See TMEP §§1602 et seq. as to the term of a registration.
A renewal application may be filed on the anniversary dates of the statutory period.
Example: For a registration issued on November 5, 1998, an application for renewal may be filed as early as November 5, 2007, and as late as November 5, 2008, before entering the six-month grace period.
Under 37 C.F.R. §2.195(a)(2), a renewal application filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. When the renewal application is submitted electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the application, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.
An application for renewal of a registration filed on paper is considered timely if it is received in the USPTO by the due date or if it is mailed or transmitted by the due date with a certificate of mailing or facsimile transmission in accordance with 37 C.F.R. §2.197. See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.
The Director has no authority to waive the deadline for filing a proper §9 renewal application. See In re Holland American Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) (“Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.”). Cf. Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents and Trademarks., 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit [under 15 U.S.C. §1058], Congress made no exception for the innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case”); In re Mother Tucker's Food Experience (Canada) Inc., 925 F.2d 1402, 1405-06, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991).
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1606.03(a) Premature Filing of §9 Renewal Application
A renewal application may not be filed before the period specified in §9 of the Act. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). If an application for renewal is filed more than one year before the expiration date of the registration, the USPTO will advise the registrant: (1) that the renewal application is premature; (2) of the appropriate time period for filing a renewal application; (3) that the fees submitted will be held; and (4) that the registrant may file a new renewal application at the appropriate time or may request a refund at any time. The prematurely filed renewal application will be placed in the record for informational purposes only. A timely renewal application must be filed before the end of the grace period, or the registration will expire and the fees will be refunded. There is no deficiency surcharge for filing a timely substitute renewal application.
1606.04 Form for Filing §9 Renewal Application
To expedite processing, it is recommended that the owner file the renewal application through TEAS.
Because the deadlines for filing renewal applications coincide with the deadlines for filing affidavits of use or excusable nonuse under 15 U.S.C. §1058(a)(3) at the end of each ten-year period following the date of registration, the USPTO has created a form for filing a §8 affidavit combined with a §9 renewal application. See TMEP §1604.19 for more information about combined filings under §§8 and 9 of the Act.
The form for the combined filing is available through TEAS at http://www.uspto.gov/teas/index.html. Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered.
The USPTO’s §9 renewal form cannot be used to renew an international registration. See TMEP §1614 for information about renewal of international registrations.
1606.05 Fees for §9 Renewal Applications
1606.05(a) Fee for Filing Application for Renewal Under §9
A renewal application must include the fee required by 37 C.F.R. §2.6 for each class of goods/services for which renewal is sought. 15 U.S.C. §1059(a); 37 C.F.R. §2.183(b). See TMEP §§1401.02, 1401.04, and 1601.06 regarding use of international classification or prior United States classification for calculation of fees due. See TMEP §1606.05(c) regarding renewal applications filed with insufficient fees.
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1606.05(b) Grace Period Surcharge and Deficiency Surcharge
If the renewal application is filed during the six-month grace period, there is an additional grace period surcharge for each class for which renewal is sought. 15 U.S.C. §1059(a); 37 C.F.R. §§2.6 and 2.183(c).
Under §9(a) of the Trademark Act, a deficiency surcharge is required for correcting a deficiency after expiration of the relevant deadline specified in §9 of the Act. If the renewal application is filed within one year before the expiration of the registration, a deficiency surcharge is required for correcting deficiencies after the expiration date of the registration. If the renewal application is filed during the grace period, a deficiency surcharge is required for correcting deficiencies after expiration of the grace period. See TMEP §§1606.13 et seq. for further information regarding the procedures, deadlines, and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one renewal application or one combined filing under §§8 and 9. See TMEP §1604.19 regarding combined filings under §§8 and 9.
The grace period surcharge applies only if no filing was made within the year before the expiration of the registration. Someone who files within one year before the expiration of the registration, but corrects a deficiency after expiration of the registration, will be subject to the deficiency surcharge only. On the other hand, someone who files during the grace period and cures a deficiency after the grace period expires will be subject to both the grace period surcharge (for the ability to file the renewal application during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the expiration of the grace period). H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).
1606.05(c) Processing §9 Renewal Application Filed with Insufficient Fees
A §9 renewal application that does not include sufficient fees to cover the filing fee for all the classes to which the application pertains (and the grace period surcharge, where applicable), is deficient. If the renewal application is filed within one year before the expiration date of the registration, the deficiency may be corrected before the expiration date of the registration for no fee, or after the expiration date of the registration with the deficiency surcharge required by §9(a) of the Act, 15 U.S.C. §1059(a). If the renewal application is filed during the grace period, the deficiency may be corrected before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge required by §9(a) of the Act. See TMEP §§1606.13 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
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If the renewal application was filed without sufficient fee(s), but included an authorization to charge additional fees to a USPTO deposit account, the required fee (and grace period surcharge, where applicable) will be charged to the deposit account. If the deposit account authorization was included with the renewal application as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.
An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.
If a check submitted as payment of a filing fee for a renewal application is returned unpaid, or an EFT or credit card payment is refused or charged back by a financial institution, this is also regarded as a deficiency. In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused. 37 C.F.R. §2.6(b)(12). See TMEP §405.06.
If at least one fee is submitted for a multiple-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff 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. 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 USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class and will delete any unpaid classes. 37 C.F.R. §2.183(e). See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §9 renewal application.
1606.06 Ownership, and Who May File §9 Renewal Application
The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be filed by the owner of the registration.
Therefore, if the renewal applicant is not the owner of record, the USPTO does not require that the renewal applicant show continuity of title from the original registrant before granting renewal.
However, registrations are renewed in the name of the party who is the owner of record of the registration, as shown in TRAM and TARR. The registration will be renewed in the name of a new owner only if the owner: (1) records an assignment or other document of title with the Assignment Services Branch; and (2) notifies the Post Registration staff at the time the renewal application is filed that the document has been recorded with the Assignment Services Branch. See TMEP §§504 et seq. regarding the circumstances in which the “Ownership” field in TRAM and TARR will be automatically updated after recordation of a document with the Assignment Services Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.
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See TMEP §502.03 regarding issuance of a new certificate in the name of a new owner.
1606.07 Execution of §9 Renewal Application
Under 37 C.F.R. §2.183(a), a renewal application must be signed by “the registrant or the registrant’s representative.” Verification is not required.
Generally, the USPTO does not question the authority of the person who signs a renewal application, unless there is an inconsistency in the record as to the signatory’s authority to sign.
The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be executed within any particular time period. Therefore, the USPTO will accept undated renewal applications, and will not issue any inquiry or requirement regarding the date of execution of a renewal application.
See TMEP §1606.12 regarding signature of a response to an Office action issued in connection with a renewal application.
1606.08 Goods and/or Services Set Forth in §9 Renewal Application
1606.08(a) Listing of Goods and/or Services Required Only for Partial Renewal
Neither the Trademark Act nor the Trademark Rules of Practice requires a listing of the goods/services in the registration, if the renewal application covers all the goods/services in the registration. However, if the renewal application covers less than all the goods/services, the renewal application must include a list of the goods/services for which renewal is sought. 37 C.F.R. §2.183(d).
1606.08(b) No Goods or Services Listed
If no goods or services are specified in the renewal application, it will be presumed that renewal is sought for all the goods/services in the registration.
1606.08(c) Some Goods and/or Services Listed
If the renewal application lists only some of the goods/services set forth in the registration, it will be presumed that renewal is sought for only the goods/services listed, and the goods/services omitted from the renewal application will be deleted from the registration.
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1606.08(d) Goods and/or Services Not Listed in Registration May Not Be Listed in Renewal Application
Goods/services that are not listed in the registration may not be listed in the renewal application.
1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required
The Trademark Act does not require that a renewal application include an affidavit or declaration of use in commerce, a specimen of use, or a showing that any nonuse is due to special circumstances that excuse the nonuse, and not due to any intention to abandon the mark. See notice at 1228 TMOG 187 (Nov. 30, 1999). See also TMEP §§1604 et seq. regarding affidavits of use or excusable nonuse under 15 U.S.C. §1058.
1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal Under §9
A renewal applicant who is not domiciled in the United States may set forth the name and address of a United States resident on whom notices or process in proceedings affecting the registration may be served. The USPTO encourages parties who do not reside in the United States to designate domestic representatives. 15 U.S.C. §1059(c). See TMEP §610.
The designation should be signed by the individual registrant, someone with legal authority to bind a juristic registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. In the case of joint owners who are not represented by a qualified practitioner, all should sign. TMEP §611.03(h).
1606.11 Office Actions and Notices Regarding §9 Renewal Application
Upon receipt of a §9 renewal application, the prosecution history of the registration in TRAM and TARR are updated to show that the renewal application has been filed.
When a renewal application is filed electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information. For renewal applications filed on paper, no acknowledgment of receipt of the application is sent before it is examined.
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If the renewal application is examined and found acceptable, the USPTO sends the registrant a notice that renewal has been granted. The USPTO does not issue an Updated Registration Certificate (“URC”) for renewed registrations.
If the renewal application is not acceptable, the USPTO issues an action stating the reasons for refusal. 15 U.S.C. §1059(b); 37 C.F.R. §2.184(a).
The propriety of the original registration is not re-examined on renewal.
1606.12 Response to Office Action
Deadline. If the renewal application is not acceptable, the USPTO will notify the renewal applicant of the reason(s) for refusal. 15 U.S.C. §1059(b); 37 C.F.R. §2.184(a). The registrant must file a response to a refusal of renewal within six months of the issuance date of the Post Registration Office action, or before the expiration date of the registration, whichever is later. If no response is filed within this time period, the registration will expire, unless time remains in the grace period under §9(a) of the Act, 15 U.S.C. §1059(a). If time remains in the grace period, the registrant may file a complete new renewal application, with a new fee. 37 C.F.R. §2.184(b)(1).
The registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive 37 C.F.R. §2.184(b)(1) and accept a late response to an Office action. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. See TMEP §1708. The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.184(b). The “unintentional delay” standard of 37 C.F.R. §2.66 does not apply to a registrant’s failure to respond to an Office action issued in connection with a renewal application. TMEP §1714.01(f)(ii).
Signature. The response must be signed by a qualified practitioner, or by the registrant or someone with legal authority to bind the registrant. If the registrant is represented by a qualified practitioner, the practitioner must sign. 37 C.F.R. §11.18(a). If the registrant is not represented by a qualified practitioner, the individual owner or someone with legal authority to bind a juristic owner must sign. 37 C.F.R. §§2.184(b)(2) and 11.14(e); TMEP §611.03(b). In the case of joint registrants who are not represented by a qualified practitioner, all should sign. See TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq. regarding persons who are qualified to represent others before the USPTO in trademark cases.
When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must treat the response as incomplete and follow the procedures in TMEP §§611.05 et seq.
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Correction of Deficiencies. The renewal applicant may correct deficiencies, if the requirements of 37 C.F.R. §2.185 are met. See TMEP §§1606.13 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.
1606.13 Correction of Deficiencies in §9 Renewal Applications
37 C.F.R. §2.185. Correcting deficiencies in renewal application. (a) If the renewal application is filed within the time periods set forth in
section 9(a) of the Act, deficiencies may be corrected, as follows: (1) Correcting deficiencies in renewal applications filed within one year
before the expiration date of the registration. If the renewal application is filed within one year before the expiration date of the registration, deficiencies may be corrected before the expiration date of the registration without paying a deficiency surcharge. Deficiencies may be corrected after the expiration date of the registration with payment of the deficiency surcharge required by section 9(a) of the Act and §2.6.
(2) Correcting deficiencies in renewal applications filed during the grace period. If the renewal application is filed during the six-month grace period, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 9(a) of the Act and §2.6.
(b) 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.
1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration
If the renewal application is filed within one year before the expiration date of the registration, deficiencies may be corrected before the expiration date without paying a deficiency surcharge, or after the expiration date with payment of the deficiency surcharge required by §9(a) of the Act. 37 C.F.R. §2.185(a)(1).
Any deficiency must be cured within the set period for response to the Office action, i.e., within six months of the issuance date of the action, or before the expiration date of the registration, whichever is later. If no response is filed within this time period, the registration will expire, unless time remains in the grace period. If time remains in the grace period, the registrant may file a complete new renewal application, with a new fee. 37 C.F.R. §2.184(b). See TMEP §1606.12.
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1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period
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, or after the expiration of the grace period with the deficiency surcharge required by §9(a) of the Act. 37 C.F.R. §2.185(a)(2).
Deficiencies must be cured within six months of the issuance date of the Office action. 37 C.F.R. §2.184(b). See TMEP §1606.12.
1606.13(c) Late Filing Cannot be Cured
If the renewal application is not filed within the statutory filing period (which includes the grace period), the registration will expire. Filing after the expiration of the grace period is not a deficiency that can be cured, even with a deficiency surcharge. 37 C.F.R. §§2.182 and 2.185(b).
1606.14 Petition Under 37 C.F.R. §2.146
The action of the Post Registration staff on a §9 renewal application may not be appealed to the Trademark Trial and Appeal Board, but the registrant may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 2.186(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c). See TMEP Chapter 1700 regarding petitions.
1606.14(a) Response to Examiner’s Refusal Required Before Petition
A response to the initial refusal to accept a renewal application is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. 37 C.F.R. §2.186(a).
If the Post Registration staff continues the refusal of the renewal application, the registrant may file a petition for review of the action under 37 C.F.R. §2.146(a)(2), within six months of the issuance date of the action continuing the refusal. If the registrant does not file a petition within six months of the issuance date, the registration will expire. 37 C.F.R. §2.186(b).
1606.14(b) Decision on Petition is Final Action of the USPTO
The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration of the decision (see TMEP §1606.14(c)), or an appeal to federal court (see TMEP §1606.14(d)) within two months of the issuance date of the decision on petition, the registration will expire.
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1606.14(c) Request for Reconsideration of Denial of Petition
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid with the request for reconsideration. See TMEP §1705.08 regarding requests for reconsideration of petition decisions.
1606.14(d) Appeal to Federal Court
The registrant may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on petition. 15 U.S.C. §§1071(a)(1) and (b)(1); 37 C.F.R. §§2.145(a) and 2.145(c).
The deadline for filing an appeal or commencing a civil action is two months from the issuance date of the decision on petition. 15 U.S.C. §§1071(a)(2) and (b)(1); 37 C.F.R. §2.145(d)(1). Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.
Under 37 C.F.R. §2.186(c), a decision on petition is necessary before the registrant can file an appeal or commence a civil action in any court.
1606.15 Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse
A §9 renewal application and a §8 affidavit may be combined into a single document, if the document meets the requirements of both §§8 and 9 of the Act. 37 C.F.R. §2.166. See TMEP §1604.19 for further information about combined filings under §§8 and 9.
1607 Cancellation of Registrations Under §§14 and 37 of the Trademark Act
A petition to cancel a registration owned by another party may be filed with the Trademark Trial and Appeal Board under §14 of the Trademark Act, 15 U.S.C. §1064. See TBMP §§303, 307, 308, and 309, for the requirements and fees for filing a petition to cancel a registration. The cancellation petition can be filed through the Electronic System for Trademark Trials and Appeals (“ESTTA”) at http://estta.uspto.gov/.
See TMEP §1608 regarding the voluntary surrender of one’s own registration for cancellation.
Registrations can also be cancelled under §37 of the Trademark Act, 15 U.S.C. §1119, pursuant to the final order of the court in an action involving a registered mark. The party who has prevailed in the civil action must submit
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a certified copy of the court order or decree to the Office of the Solicitor of the USPTO. See TMEP §1610.
1608 Surrender of Registration for Cancellation
The owner of a registration may voluntarily surrender his or her registration for cancellation, under §7(e) of the Trademark Act, 15 U.S.C. §1057(e). There is no fee.
A request to surrender a registration must be signed by the owner or by a qualified practitioner. 37 C.F.R. §2.172.
Filing a §8 affidavit or §9 renewal application for fewer than the total number of classes in the registration is regarded as a surrender of the registration as to the class(es) that are omitted.
Unless the registration is the subject of a cancellation proceeding before the Trademark Trial and Appeal Board, a request for surrender is handled by the Post Registration Section. See TBMP §602.02(a) as to the voluntary surrender of a registration that is the subject of a cancellation proceeding before the Board.
If the registration is surrendered in its entirety, the USPTO updates its records accordingly, and sends the owner of record a notice that the registration is cancelled.
If fewer than all classes are surrendered, the USPTO enters a notation in the record, and updates TRAM and TARR to indicate that specified classes have been cancelled under §7(e) of the Act. A certified copy of the updated registration certificate may be obtained from the Document Services Branch of the Public Records Division for a fee. See TMEP §111.
A request to surrender a registered extension of protection of an international registration to the United States may be filed either directly with the IB or with the USPTO. If it is filed with the USPTO, the USPTO will notify the IB of the cancellation of the request for extension of protection to the United States. See TMEP §§1906.01 et seq. regarding requests to record changes at the IB, and TMEP §1906.01(e) regarding renunciation, limitation, or cancellation of an international registration.
1609 Amendment and Correction of Registrations
1609.01 Amendment of Registration - In General
1609.01(a) Limited Amendments to Registered Extension of Protection
An extension of protection of an international registration remains part of (and dependent on) the international registration even after registration in the
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United States. 15 U.S.C. §1141j; 37 C.F.R. §7.30; TMEP §§1601.01(c) and 1904.08. All requests to record changes to an international registration must be filed at the IB.
Accordingly, the holder of a registered extension of protection may file a request for amendment under §7 of the Trademark Act with the USPTO only in limited circumstances, where the change will affect only the extension of protection to the United States. For example, a holder may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark that was provided during examination in the USPTO, or to limit or partially surrender goods/services/classes. If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States.
The USPTO will not accept an amendment of a registered extension of protection involving the holder’s name or address that has not been recorded with the IB. 37 C.F.R. §7.22; TMEP §1906.01(c).
The mark in a registered extension of protection cannot be amended. See TMEP §§1609.02 and 1906.01(i).
See TMEP §§1904.13 et seq. regarding amendment and correction of registered extensions of protection, and 1906.01 et seq. regarding requests to record changes at the IB.
1609.01(b) Amendment of Registration Resulting From §1 or §44 Application
Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended “for good cause.” Any request for amendment of a mark must be accompanied by the required fee. 15 U.S.C. §1057(e); 37 C.F.R. §§2.6 and 2.173(b)(1). Original certificates of registration are not required for requests for amendment under §7, and owners are strongly discouraged from submitting them. If original certificates are submitted, they will be scanned into TICRS and discarded. See notice at 69 FR 51362 (Aug. 19, 2004), removing the requirement that a section 7 request include the original certificate.
The request for amendment must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.173(b)(2). See TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq. regarding persons who are qualified to represent others before the USPTO in trademark cases.
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Requests to amend registrations are handled by the Post Registration Section, unless the registration is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board. 37 C.F.R. §2.173(a).
Requests to amend registrations that are the subject of inter partes proceedings before the Trademark Trial and Appeal Board are handled by the Board. See 37 C.F.R. §2.133; TBMP §§514 et seq. If a request to amend a registration that is the subject of an inter partes proceeding is filed with the Post Registration Section, the Post Registration staff will deny the request, and advise the owner to file a motion to amend pursuant to 37 C.F.R. §2.133. See TBMP §§502 et seq. for further information about filing motions with the Board.
If the request for amendment is granted, the USPTO sends an updated registration certificate showing the amendment to the owner of record, and updates USPTO records accordingly.
1609.02 Amendment of Mark
Mark in Registered Extension of Protection Cannot be Amended
The holder of a registered extension of protection of an international registration to the United States cannot file a request to amend the mark under §7 of the Trademark Act. A registered extension of protection remains part of the international registration, and all requests to record changes to such a registration must be filed at the IB. However, the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”) do not permit amendment of the mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The IB’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2008) (“Guide to International Registration”), Para. B.II.69.02, provides as follows:
[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time. If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application. This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration....
Therefore, the mark in a registered extension of protection cannot be amended.
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Amendment of Mark in Registration Based on §1 or §44 Application
Under 15 U.S.C. §1057(e), upon application by the owner and payment of the prescribed fee, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause, if the amendment does not materially alter the character of the mark. 37 C.F.R. §2.173(d). See TMEP §§807.14 et seq. and 1609.02(a) regarding material alteration.
1609.02(a) Determining What Constitutes Material Alteration of Mark
Section 7(e) of the Trademark Act, 15 U.S.C. §1057(e), prohibits an amendment that materially alters the character of the mark. “Material alteration” is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration. See 37 C.F.R. §§2.72 and 2.173(d); TMEP §§807.14 et seq.
In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.
The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition. If republication would be required, the amendment is a material alteration.
An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark. In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996). For example, in marks consisting of wording combined with a design, if the word is the essence of the mark and the design is merely background embellishment or display that is not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953). On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark. See In re Dillard Department Stores, Inc., 33 USPQ2d 1052 (Comm’r Pats. 1993) (proposed deletion of highly stylized display features of mark “IN•VEST•MENTS” held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm’r Pats. 1948) (proposed amendment of “BLUE BONNET” mark to delete a star design and to change the picture of the girl held a material alteration).
When a mark is solely a picture or design, an alteration must be evaluated by determining whether the new form has the same commercial impression as the original mark, i.e., whether the form as altered would be likely to be
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recognized as the same mark. See Ex parte Black & Decker Mfg. Co., 136 USPQ 379 (Comm’r Pats. 1963) (proposed amendment to delete circle found to be a material alteration, where the circle was determined to be a prominent element of a design mark).
Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark. See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm’r Pats. 1949) (amendment from block lettering to script not a material alteration). However, changing from special form to standard characters, or the reverse, may be a material alteration. TMEP §807.03(d).
A generic or purely informational term may be deleted if the essence of the mark in appearance or meaning is not changed, but a word or feature that is necessary to the significance of the mark may not be deleted. Likewise, a unique or prominent design feature may not be deleted. See In re Richards- Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974), overruled on other grounds, In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996) (proposed amendment to block lettering from mark comprising a diamond design surrounding the word “FYER-WALL” with an inverted channel bracket around the letters “RW” held a material alteration). See also TMEP §807.14(a) regarding amendments deleting matter from a mark.
1609.02(b) New Drawing Required
When applying for an amendment to a registration that involves a change in the mark, the owner of the registration must submit a new drawing displaying the amended mark. 37 C.F.R. §2.173(b)(3). See TMEP §§807 et seq. regarding drawings.
1609.02(c) Supporting Specimen and Declaration
The owner of the registration must submit one specimen showing use of the proposed mark as amended on or in connection with the goods or services, and must include an affidavit or a declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce at least as early as the date the §7 amendment was filed. 37 C.F.R. §2.173(b)(3).
The owner of the registration must submit a specimen showing use of the proposed mark as amended for each class of goods or services specified in the registration, and must include an affidavit or a declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce at least as early as the date on which the §7 amendment was filed. 37 C.F.R. §2.173(b)(3). If a single specimen supports multiple classes, the owner may so indicate, and the Post Registration staff need not require multiple copies of the specimen.
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The Post Registration staff should make a note in the “Notes-to-the-File” section of the record indicating which classes the specimen supports.
A request to amend a registration under §7 must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.173(b)(2); TMEP §§611.03(f) and 1609.01(b). If the affidavit or a declaration supporting use of the substitute specimen is submitted in a separate document, it must be signed by a person properly authorized to sign a verification on behalf of the owner. See TMEP §611.03(a) as to persons properly authorized to verify facts on behalf of an owner.
A specimen showing use of the proposed mark as amended on or in connection with the goods or services is required, even if the mark originally registered based on a foreign registration under §44 of the Trademark Act, 15 U.S.C. §1126(e). See TMEP §1015 regarding the independence of a §44 registration from the underlying foreign registration.
See also TMEP §§904 et seq. regarding specimens.
1609.02(d) Conforming Amendments
If a registration includes a disclaimer, description of the mark, and/or other miscellaneous statement (e.g., lining or stippling statement (see TMEP §808.01(b)), translation, transliteration, or color claim), any request to amend the registration must also include a request to make any necessary conforming amendments to the disclaimer, description, and/or miscellaneous statement. 37 C.F.R. §2.173(f). For example, if the mark is “XYZ INC.,” with a disclaimer of the entity designator “INC.,” and the owner of the registration proposes to amend the mark to remove “INC.,” the proposed amendment should also request that the disclaimer be deleted.
If a proposed amendment does not include all necessary conforming amendment(s), the Post Registration staff will issue an Office action requiring the amendment(s).
1609.02(e) Amendment of Black-and-White Drawing of Mark for Which Color is Claimed to Substitute Color Drawing
Prior to November 2, 2003, the USPTO did not publish marks or issue registrations in color. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s). See TMEP §807.07(g). Effective November 2, 2003, the USPTO accepts color drawings. Black-and-white drawings with a color claim, or drawings that show color by use of lining patterns, are no longer permitted. Color drawings must be accompanied by a color claim naming the color(s)
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that are a feature of the mark, and a separate statement specifying where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
In a registration based on an application filed before November 2, 2003, if the application included a black-and-white drawing with a statement claiming color, the owner may file a request under §7 of the Trademark Act to substitute a color drawing for the black-and-white drawing. The request must include: (1) a color drawing showing the same colors claimed in the registration; (2) a color claim naming the color(s) that are a feature of the mark; (3) a description of where the color(s) appear(s) in the mark; and (4) the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.173(a). No specimen is required if the owner is merely substituting a color drawing for a legally equivalent black-and-white drawing, and is not amending the mark.
1609.02(f) Amendment of Black-and-White Drawing to Color Drawing
A special form drawing registered in black-and-white may be amended under §7(e) to include a claim of color, as long as the amendment does not constitute a material alteration. Requests to amend the mark to color must include: (1) a color drawing; (2) a color claim naming the color(s) that are a feature of the mark; (3) a statement specifying where the color(s) appear(s) in the mark; (4) a specimen showing the mark as depicted on the amended drawing; and (5) the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.173(b)(2). See TMEP §§807.07 et seq. regarding requirements for color drawings, and TMEP §§807.14(e) et seq. regarding amendments to color features of marks.
1609.02(g) Amendment to Special Form Drawing Containing Black, White, and/or Gray
When a mark shown in special form is amended under §7(e), and the mark shown on the new drawing page contains gray, or the description of the mark refers to black, white, and/or gray, the owner must clarify whether the mark is in color. Specifically, the record must contain either: (1) a statement that the mark is not in color; or (2) a statement that the colors black, white, and/or gray are features of the mark and a statement specifying the location of the colors. If not all are claimed as colors, the color location statement must specify that the black/white/gray is not claimed as color and represents background, outlining, shading, and/or transparent areas.
Likewise, if the §7(e) amendment includes a statement that color is claimed as a feature of the mark and the drawing contains black, white, and/or gray, the record must contain one of the following: (1) a statement that the color(s) black, white, and/or gray are features of the mark and statement specifying the location of the colors; or (2) a statement that the black/white/gray represents background, outlining, shading, and/or transparent areas and is
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not a part of the mark. No statement regarding a white background is required if the background of the drawing is white and it is clear that the white background is not part of the mark.
See TMEP §§807.07(f) et seq. regarding requirements for drawings containing black, white, and/or gray.
1609.03 Amendment of Identification of Goods or Services
Identification of Goods/Services in Registered Extension of Protection
The identification of goods/services in a registered extension of protection of an international registration to the United States can be amended only in limited circumstances that will affect only the extension of protection to the United States. TMEP §1609.01(a). Specifically, the holder of a registered extension of protection may file a request with the USPTO to amend the registered extension of protection to limit or partially surrender goods and/or services. If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States. See TMEP §1904.13(a).
All requests to record changes to an international registration must be filed at the IB. See TMEP §§1906.01 et seq. regarding requests to record changes at the IB. Note that the IB does not permit amendments that expand the list of goods/services in an international registration. See TMEP §1906.01(i).
See also TMEP §1904.15 regarding a notification of limitation in the list of goods/services in a registered extension of protection
Amendment of Registration Based on §1 or §44 Application
In registrations based on applications under §§1 and 44 of the Trademark Act, amendments may be made to the identification of goods/services to restrict the identification or otherwise to change it in ways that would not require republication of the mark. However, goods/services may not be added to a registration by amendment. See 37 C.F.R. §2.173(e). Changed circumstances (e.g., new technology) will not render acceptable an amendment that is not otherwise permissible. See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993); In re Fortex Industries, Inc., 18 USPQ2d 1224 (Comm’r Pats. 1990); In re Carter Hawley Hale Stores, Inc., 200 USPQ 179 (Comm’r Pats. 1978). For example, if the goods in the registration are identified as “phonograph records,” the identification of goods cannot be amended to “compact discs.”
In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire class constitutes a surrender of the registration for cancellation as to the class deleted. See 37 C.F.R. §2.172. See TMEP §1608 regarding surrender.
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1609.04 Amendment of Classification
Classification of Goods/Services in Registered Extension of Protection Cannot be Amended Under §7
The classification of goods/services in a registered extension of protection of an international registration to the United States cannot be amended under §7 of the Trademark Act. 37 C.F.R. §2.85(d); TMEP §§1401.03(d) and 1609.01(a). However, the holder of a registered extension of protection may request to amend the registered extension of protection to surrender class(es). See TMEP §1904.13(a).
Amendment of Registration Based on §1 or §44 Application
In a registration that issued based on an application under §1 or §44 of the Trademark Act, the classification of the goods/services may be amended under §7 of the Trademark Act, if the requested international classification is consistent with the current version of the Nice Agreement. 37 C.F.R. §2.85(e)(3). In such a case, the USPTO will amend the international classification of goods/services and issue an updated registration certificate with the new classification noted.
The owner of a registration may reclassify registrations from multiple United States classes into a single international classification. For example, goods in United States classes 21 and 26 often fall into only International Class 9. Hence, an owner can request an amendment from United States classes 21 and 26 into International Class 9. If the owner reclassifies any of the goods/services in this manner, the owner must reclassify all the goods/services in the registration to the international classification system. 37 C.F.R. §2.85(e)(3).
The amendment must include the fee required by 37 C.F.R. §2.6 for §7 amendments.
1609.05 Disclaimer of Mark
A registered mark may be amended to disclaim part of the mark. 37 C.F.R. §2.173(a). However, no amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought. 37 C.F.R. §2.173(g). This exception to the general prohibition against amendments to delete disclaimers applies in the limited situation where the mark is amended to delete the disclaimed matter. See TMEP §1609.02(d) regarding conforming amendments.
An amended registration must still contain registrable matter, and the mark as amended must be registrable as a whole. 37 C.F.R. §2.173(c).
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1609.06 Territorial Restrictions
A registration cannot be restricted territorially by amendment under §7(e) of the Act. In re Forbo, 4 USPQ2d 1415 (Comm’r Pats. 1984). Generally, a concurrent use restriction cannot be removed from a registration by an amendment under §7(e), except where an entity that was the only exception to the owner’s right to exclusive use of its registered mark assigns its rights in the mark to the owner of the registration, so that all rights in the mark are merged in the owner. In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm’r Pats. 1987); TBMP §§1101.02 and 1114.
1609.07 Dates of Use
The USPTO will accept an amendment changing the dates of use, even if the amended dates are later than the dates originally set forth in the registration. See In re Pamex Foods, Inc., 209 USPQ 275 (Comm’r Pats. 1980); Grand Bag & Paper Co., Inc. v. Tidy-House Paper Products, Inc., 109 USPQ 395 (Comm’r Pats. 1956). However, the USPTO will not enter an amendment if the amended dates are later than the dates that would have been accepted during examination. Therefore, the USPTO will not enter the following amendments:
• If the application for the registration was based on use in commerce under 15 U.S.C. §1051(a), the registration cannot be amended to specify a date of use that is later than the application filing date (see 37 C.F.R. §2.71(c)(1));
• If the application for the registration was based on intent-to-use under 15 U.S.C. §1051(b) in which a statement of use was filed under 15 U.S.C. §1051(d), the registration cannot be amended to specify a date of use that is later than the statutory deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use) (see 37 C.F.R. §2.71(c)(2));
• If the application for the registration was based on intent-to-use under 15 U.S.C. §1051(b) in which an amendment to allege use was filed under 15 U.S.C. §1051(c), the registration cannot be amended to specify a date of use that is later than the filing date of the amendment to allege use (see TMEP §903.04); and
• The date of first use in commerce may not be earlier than the date of first use anywhere (see TMEP §903.03).
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1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration
Section 14 of the Trademark Act, 15 U.S.C. §1064, limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years after the date of registration.
Ordinarily, the five-year period runs from the date of the registration of the mark for a registration issued on the Principal Register under the Act of 1946, and from the date of publication under §12(c) of the Act for registrations issued under prior Acts and published under §12(c) of the Act of 1946, 15 U.S.C. §1062(c).
However, when a registration has been amended, the five-year period runs from the date of the amendment, to the extent that the amendment of the registration has in any way enlarged the owner’s rights, as though the registration had issued on the date of the amendment. See TBMP §307.02(c)(2).
1609.09 Amendment from Supplemental to Principal Register Not Permitted
A registration on the Supplemental Register may not be amended to the Principal Register. If the owner of a registration wishes to seek registration on the Principal Register of a mark for which it owns a registration on the Supplemental Register, the owner must file a new application. Under 15 U.S.C. §1062(a), a mark must be published for opposition before it can be registered on the Principal Register.
1609.10 Correction of Mistake in Registration
The USPTO may make a correction to a registration in appropriate cases, upon written request by the owner of the registration. See §7(g) of the Trademark Act, 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding correction of USPTO errors; and §7(h) of the Act, 37 C.F.R. §2.175, and TMEP §1609.10(b) regarding correction of errors by the owner of a registration. Original certificates of registration need not be submitted with requests for correction under §7, and owners are strongly discouraged from submitting them. If original certificates are submitted, they will be scanned into TICRS and discarded. See notice at 69 FR 51362 (Aug. 19, 2004), removing the requirement that a section 7 request include the original certificate.
Requests for correction of registrations are handled by the Post Registration Section.
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If the request for correction is granted, the USPTO sends an updated registration certificate to the owner of record, and updates USPTO records to show the correction.
1609.10(a) Correction of USPTO Error
Registered Extension of Protection
If USPTO records show that a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge. See TMEP §1904.14 regarding a notification of correction in the international register with respect to a registered extension of protection.
Registration Based on Application under §1 or §44
If a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge. 15 U.S.C. §1057(g); 37 C.F.R. §2.174. Section 7(g) gives the Director the discretion to issue a certificate of correction of the existing registration, or to issue a new certificate of registration without charge.
The owner of the registration should submit a written request, specifying the error to be corrected. This request should be signed by the individual owner of the registration, someone with legal authority to bind a juristic owner, or the owner’s qualified practitioner, and directed to the Post Registration Section.
The USPTO will issue a certificate of correction if the change is non-material, such as a slight misspelling in the mark or the identification of goods/services, or an error in entering the owner’s name or address.
A USPTO error in classification may be corrected if the requested classification is consistent with the current version of the Nice Agreement. Republication is not required.
If correction of a USPTO error would result in a material change (e.g., a material change of the mark or a broadening of the identification of goods/services), the USPTO will not issue a certificate of correction under §7(g). Section 12(a) of the Trademark Act, 15 U.S.C. §1062(a), requires examination and publication prior to registration. Therefore, if the error results in a material change to the registration, the error can be corrected only by cancelling the registration as inadvertently issued and republishing it with the correct information. The USPTO will give the owner the option of either: (1) keeping the registration as issued; or (2) having the registration cancelled as inadvertently issued and republished. If the owner chooses to have the mark republished, and registration is not successfully opposed, the USPTO will issue a new certificate of registration with a new registration date.
In some cases, further examination may be required to correct a USPTO error that would materially change the registration, e.g., where a proposed
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amendment to the mark or the identification of goods/services was filed prior to registration, but not timely made of record and reviewed by the examining attorney. In this situation, the registration will be cancelled as inadvertently issued and returned to examination. The examining attorney will examine the amendment using standard examination procedures. If the examining attorney approves the amendment, the mark will be republished.
A request to have a registration cancelled as inadvertently issued should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.
1609.10(b) Correction of Owner’s Error
Registered Extension of Protection
Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even after registration in the United States. However, in the limited circumstance where the holder of an international registration makes a mistake in a document filed during prosecution in the USPTO that affects only the extension of protection to the United States, the registrant may request correction of the error pursuant to 37 C.F.R. §2.175. See TMEP §1904.13(b).
See TMEP §§1906 and 1906.01 et seq. regarding requests to record changes at the IB, and TMEP §1904.14 regarding a notification of correction in the International Register with respect to a registered extension of protection.
Registration Based on Application under §1 or §44
Under §7(h) of the Trademark Act, 15 U.S.C. §1057(h), if a mistake in a registration occurs in good faith through the fault of the owner of the registration, the Director may correct the error upon written request and payment of the fee required by 37 C.F.R. §2.6, provided the correction does not result in a change that would require republication of the mark.
The owner of the registration must file a written request specifying the error, explaining how the error occurred, and showing that it occurred in good faith. The request must be verified by the individual owner, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.175(b)(2). The request for correction should be directed to the Post Registration Section. See TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq. regarding persons who are qualified to represent others before the USPTO in trademark cases.
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As noted above, the owner of a registration cannot correct a mistake if the changes would require republication of the mark. 15 U.S.C. §1057(h); 37 C.F.R. §2.175(a). Thus, a correction cannot be made if it would materially alter the mark, or broaden the identification of goods/services. See TMEP §§807.14 and 1609.02(a) regarding material alteration, and TMEP §1609.03 regarding changes to the identification of goods/services.
A registration can be corrected to cure an inadvertent error in the manner in which the owner’s name is set forth. However, the registration cannot be corrected to substitute another entity as the owner. See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the owner of an application or registration.
Section 7(h) gives the Director the discretion to issue either a certificate of correction of the existing registration or a new certificate of registration. See In re Pamex Foods, Inc., 209 USPQ 275, 277-78 (Comm’r Pats. 1980). In either case, if the mistake was made by the owner of the registration, a fee is required. See 15 U.S.C. §1057(h); 37 C.F.R. §§2.6 and 2.175(b)(3).
1609.11 Change of Owner’s Address Can Be Filed Through TEAS
It is not necessary to file a §7 amendment to change the address of the owner of a registration. This can be done through TEAS, at www.uspto.gov/teas/index.html.
Note: The owner’s address often differs from the correspondence address. The correspondence address can also be changed through TEAS, using a different form. See TMEP §609.02(e) for information about changing the correspondence address after registration.
1610 Court Orders Concerning Registrations
The USPTO must rectify the register and make appropriate entry upon its records in response to a court order certified to the USPTO pursuant to 15 U.S.C. §1119. That section provides:
In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.
Any such order affecting a registration must be certified to the USPTO, and should be addressed to the Office of the Solicitor, Mail Stop 8, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
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Virginia 22313-1450. 37 C.F.R. §1.1(a)(3)(iii). An uncertified copy of the court order is unacceptable. If the registration affected by the order is the subject of a pending or suspended inter partes proceeding at the Trademark Trial and Appeal Board, that fact should be noted in a cover letter to the Office of the Solicitor. Once the USPTO receives the certified order, appropriate action will typically be taken by the USPTO without the necessity of any submission by an interested party. However, if it would be helpful for purposes of determining the scope or effect of an order, the USPTO may, at the Director’s discretion, issue a show cause order directing the registrant and parties to the action from which the order arose to respond and provide information or arguments regarding the order.
1611 Updating Automated Records to Show the Status of Registrations
USPTO records will be automatically updated to indicate the status of registrations as follows:
(1) When the owner of a registration timely files a §8 affidavit and/or §9 renewal application, USPTO records are updated to indicate receipt of the document and the action taken on it. This information appears in TRAM and TARR.
(2) If no §8 affidavit is filed before the end of the grace period (see TMEP §1604.04 regarding the deadline for filing a §8 affidavit), USPTO records are automatically updated to indicate that the registration is cancelled, and this information appears in TRAM and TARR. However, USPTO records are not updated to show that the registration is cancelled until 30 days after the expiration of the grace period.
(3) If no §9 renewal application is filed before the end of the grace period (see TMEP §1606.03 regarding the deadline for filing a renewal application), USPTO records are automatically updated to indicate that the registration is expired, and this information appears in TRAM and TARR. However, USPTO records are not updated to show that the registration is expired until 30 days after the expiration of the grace period.
The reason the USPTO waits until 30 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired is to avoid inadvertent cancellation or expiration of a registration due to a delay in entering a timely filed §8 affidavit or §9 renewal application into USPTO records.
If the owner of a registration who has not timely filed a §8 affidavit or §9 renewal application wants to expedite cancellation or expiration of its own registration, the owner may request in writing that the USPTO expedite the
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processing of the cancellation or expiration of the registration. The request should be signed by the owner, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner, and should specifically state that no §8 affidavit or renewal application was filed on or before the end of the grace period. Such a request should be directed to the Post Registration Section; if it is sent to the examining attorney, the examining attorney should forward it to the Supervisor of the Post Registration Section.
See TMEP §716.02(e) regarding suspension of an application for a conflicting mark pending cancellation of the cited registration under §8 of the Act or expiration of the cited registration for failure to renew under §9 of the Act.
1612 Powers of Attorney and Designations of Domestic Representative Filed After Registration
To expedite processing, the USPTO recommends that powers of attorney, requests to revoke powers of attorney, requests to withdraw as attorney, and designations of domestic representative be filed through TEAS, at http://www.uspto.gov/teas/index.html. When these documents are filed through TEAS, the data is automatically entered into TRAM and TARR.
The USPTO considers a power of attorney to end with registration. See TMEP §604.02.
When the owner of a registration files a new power of attorney or designation of domestic representative on paper, the USPTO scans an image of the power or designation into the record, but does not update TRAM and TARR, unless the owner concurrently takes an action such as filing a §8 or §15 affidavit, §9 renewal application, or request to amend or correct a registration under §7 of the Trademark Act. Likewise, when the owner of a registration files a paper request to revoke a power of attorney, or a qualified practitioner files a request to withdraw, the USPTO scans an image of the document into the record but does not change the “Attorney” field in TRAM and TARR.
When the owner of a registration files a §8 or §15 affidavit, §9 renewal application, or request to amend or correct a registration through a qualified practitioner, the USPTO will update TRAM and TARR to indicate the name of the practitioner who filed the document, and any designation of domestic representative. If the owner does not have a qualified practitioner, the USPTO will update TRAM and TARR to indicate the owner’s address as shown in the affidavit, renewal application, or amendment.
See TMEP §§605 et seq. regarding powers of attorney, TMEP §610 regarding designations of domestic representative by parties not domiciled in the United States, TMEP §607 regarding withdrawal of attorney, and TMEP §609.02(e) regarding changes of correspondence address filed after registration.
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1613 Affidavit of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act
Under §71 of the Trademark Act, 15 U.S.C. §1141k, a registered extension of protection to the United States will be cancelled unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse (“§71 affidavits”). The affidavits must include: (1) a verified statement by the holder that the mark is in use in commerce, and a specimen of use; or (2) a verified statement setting forth that any nonuse is due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. These affidavits must be filed:
(1) Between the fifth and sixth year after the date on which the USPTO issues the certificate of extension of protection; and
(2) Within the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a three-month grace period with an additional surcharge.
Section 71(a); 37 C.F.R. §7.36 (b). Section 71 provides a three-month grace period for filing the ten-year §71 affidavit with an additional surcharge. There is no grace period for filing the six-year §71 affidavit. Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period. The requirements for a §71 affidavit are set forth in 37 C.F.R. §7.37.
1614 Renewal of Registered Extension of Protection
The holder of a registered extension of protection of an international registration to the United States must renew the international registration with the IB. 37 C.F.R. §7.41(a). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regs. See TMEP §1905.
Under §70(b) of the Trademark Act, 15 U.S.C. §1141j(b), and Article 3ter(2) of the Protocol, if the international registration is not renewed, the IB will notify the USPTO that the registration has expired. The corresponding extension of protection to the United States will expire as of the expiration date of the international registration. The USPTO will cancel the extension of protection.
Section 9 of the Trademark Act, 15 U.S.C. §1069, does not require renewal of a registered extension of protection with the USPTO. However, the holder must file affidavits of use or excusable nonuse under §71 of the Trademark Act, 15 U.S.C. §1141k. See TMEP §1613.
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1615 Division of Registrations
37 C.F.R. §2.171(b). Partial change of ownership. (1) In a registration resulting from an application based on section 1 or 44 of the Act, if ownership of a registration has changed with respect to some but not all of the goods and/or services, the owner(s) may file a request that the registration be divided into two or more separate registrations. The assignment or other document changing title must be recorded in the Office. The request to divide must include the fee required by §2.6(a)(8) for each new registration created by the division, and be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under §11.14 of this chapter.
(2)(i) When the International Bureau of the World Intellectual Property Organization notifies the Office that an international registration has been divided as the result of a change of ownership with respect to some but not all of the goods or services, the Office will construe the International Bureau’s notice as a request to divide. The Office will record the partial change of ownership in the Assignment Services Branch, and divide out the assigned goods/services from the registered extension of protection (parent registration), issue an updated certificate for the parent registration, and publish notice of the parent registration in the Official Gazette.
(ii) The Office will create a new registration number for the child registration, and enter the information about the new registration in its automated records. The Office will notify the new owner that the new owner must pay the fee required by §2.6 to obtain a new registration certificate for the child registration. It is not necessary for the new owner to file a separate request to divide.
(iii) The Office will not divide a registered extension of protection unless the International Bureau notifies the Office that the international registration has been divided.
A registration can be divided only if ownership of the registration has changed with respect to some, but not all, of the goods/services. 37 C.F.R. §2.171(b). Requests to divide registrations are processed in the Post Registration Section.
See TMEP §1615.01 regarding division of registrations based on applications under §§1 and 44 of the Trademark Act, and TMEP §1615.02 regarding division of registered extensions of protection.
1615.01 Division of Registration Based on Application Under §1 or §44 of the Trademark Act
If ownership of a registration has changed with respect to some but not all of the goods/services, the owner is strongly encouraged to file a request that a
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registration be divided into two or more separate registrations, to ensure that USPTO records will accurately reflect current ownership information.
A party requesting division of a registration must: (1) record the change of ownership with the Assignment Services Branch of the USPTO; (2) file a request to divide; and (3) pay the fee required by 37 C.F.R. §2.6(a)(8) for each new registration created by the division. 37 C.F.R. §2.171(b)(1). The request must be signed by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.171(b)(1); TMEP §611.03(b). If the request does not meet these requirements, the Post Registration staff will issue an Office action granting the party who filed the request six months in which to comply with the requirements of the rule. If there is no response, the request to divide will be dismissed.
A party who requests division of a registration issued under the old United States classification system (see TMEP §1401.02) must agree to adopt the international classification system for both the parent and child registration. See TMEP §1609.04 regarding amendment of classification.
Once the registration is divided, the USPTO will: (1) create a new registration number for the child registration and update the information about the parent and child registration in its automated records; (2) issue a new registration certificate for the child registration and an amended registration certificate for the parent registration; (3) publish notice of both the parent and child registrations in the Official Gazette and scan both the child and amended parent registration certificates into TICRS; and (4) send a registration certificate for the child registration to the new owner. The USPTO will not send an amended registration certificate for the parent registration to the owner of the parent registration unless the owner submits a request and pays the fee required by 37 C.F.R. §2.6(a)(8).
A registration may be divided more than once.
1615.02 Division of Registered Extension of Protection
When ownership of an international registration changes with respect to some but not all of the goods/services for all designated Contracting Parties, the IB will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to International Registration, Para. B.II.65.01.
When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods/services, the USPTO will construe the IB’s notice as a request to divide. The USPTO will record the partial change of ownership in the Assignment Services Branch, divide out the assigned goods/services from the registered extension of protection (parent registration), issue an updated
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certificate for the parent registration, and publish notice of the parent registration in the Official Gazette. 37 C.F.R. §2.171(b)(2)(i).
The USPTO will create a new registration number for the child, and enter the information about the new registration into TRAM and TARR. The USPTO will notify the new owner that the new owner must pay the fee required by 37 C.F.R. §2.6(a)(8) to obtain a new registration certificate for the child registration. It is not necessary for the new owner to file a separate request to divide. 37 C.F.R. §2.171(b)(2)(ii). If the new owner does not respond to the notice, the child registration will remain active, as long as the owner files the necessary maintenance documents, but the USPTO will not issue a new registration certificate for the child registration, or publish notice of the child registration in the Official Gazette.
The USPTO will not divide a registered extension of protection to the United States unless the IB notifies the USPTO that the international registration has been divided. 37 C.F.R. §2.171(b)(2)(iii).
A registration may be divided more than once.
See TMEP §1110.11 regarding division of a pending §66(a) application after ownership has changed with respect to some but not all of the goods/services, and TMEP §501.07 regarding assignment of extensions of protection.
1616 Replacement
If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States are (1) owned by the same person, (2) identify the same mark, and (3) list the same goods or services, the extension of protection shall have the same rights as those accrued to the United States national registration at the time the certificate of extension of protection issues. Section 74 of the Trademark Act, 15 U.S.C. §1141n; 37 C.F.R. §7.28(a); Article 4bis. See TMEP §1904.12 for further information on requests to note replacement of a United States national registration with a registered extension of protection. All requests to note replacements should be directed to the Madrid Processing Unit.
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Chapter 1700 Petitions, Requests for Reinstatement,
and Other Matters Submitted to Director
1701 Statutory Authority of Director
1702 Petitions to the Director Under 37 C.F.R. §2.146 - In General
1703 Specific Types of Petitions
1704 Petitionable Subject Matter
1705 Petition Procedure
1705.01 Standing
1705.02 Petition Fee
1705.03 Evidence and Proof of Facts
1705.04 Timeliness
1705.05 Due Diligence
1705.06 Stay or Suspension of Pending Matters
1705.07 Signature of Petition
1705.08 Request for Reconsideration of Denial of Petition
1705.09 Appeal to Federal Court
1706 Standard of Review on Petition
1707 Director’s Supervisory Authority Under 37 C.F.R. §2.146(a)(3)
1708 Waiver of Rules
1709 Matters Delegated by Director
1710 Petition to Make Special
1710.01 Basis for Granting or Denying Petition
1710.02 Processing Petition
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1710.03 Submitting Petition
1711 Review of Denial of Filing Dates
1712 Reinstatement of Applications and Registrations
1712.01 Reinstatement of Applications Abandoned Due to Office Error
1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error
1712.02(a) Request for Reinstatement
1712.02(b) Formal Petition
1713 Petition to Reverse Holding of Abandonment for Incomplete Response
1713.01 Standard of Review
1713.02 Nonreceipt of Action Granting Additional Time to Perfect Response
1714 Petition to Revive Abandoned Application
1714.01 Procedural Requirements for Filing Petition to Revive
1714.01(a) Failure to Timely Respond to an Examining Attorney’s Office Action
1714.01(a)(i) Response to Nonfinal Office Action
1714.01(a)(ii) Response to Final Office Action
1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received
1714.01(b)(i) Applicant Must File Statement of Use or Further Extension Requests During Pendency of a Petition
1714.01(c) Notice of Allowance Not Received
1714.01(d) Timeliness and Diligence
1714.01(e) Signed Statement That Delay Was Unintentional
1714.01(f) Applicability of Unintentional Delay Standard
1714.01(f)(i) Situations Where the Unintentional Delay Standard Applies
1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does Not Apply
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1714.01(g) Request for Reconsideration of Denial of Petition to Revive
1715 Letters of Protest in Pending Applications
1715.01 Appropriate and Inappropriate Subjects to be Raised in Letter of Protest
1715.01(a) Issues Appropriate as Subject of Letter of Protest
1715.01(b) Issues Inappropriate as Subject of Letter of Protest
1715.02 Letter of Protest Filed Before Publication
1715.02(a) Standard of Review for Letter of Protest Filed Before Publication
1715.02(b) Action by Examining Attorney Before Publication
1715.03 Letters of Protest Filed After Publication
1715.03(a) Standard of Review for Letters of Protest Filed After Publication
1715.03(b) Timely Filing of Letter of Protest
1715.03(c) Jurisdiction of Application When a Letter of Protest Is Granted After Publication
1715.03(d) Action by Examining Attorney After Publication
1715.03(e) Letter of Protest Does Not Stay or Extend Opposition Period
1715.04 Information for Parties Filing Letter of Protest
1715.04(a) Submitting Letter of Protest
1715.04(b) Tracking of Letters of Protest by the Protestor
1715.05 Requests for Copies of Letters of Protest
1715.06 Recourse After Denial of Letter of Protest
1701 Statutory Authority of Director
The United States Patent and Trademark Office (“USPTO”) is led by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“Director”). The Commissioner for Trademarks oversees the staff and operations of the USPTO with regard
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to trademark matters. 35 U.S.C. §3(b)(2). See TMEP §1709 regarding delegation of duties by the Director.
The Patent and Trademark Office Efficiency Act, Subtitle G of the American Inventors Protection Act of 1999, Pub. L. 106-113, 113 Stat. 1501A-572, amended Title 35 of the United States Code to reorganize the USPTO as a performance-based organization within the Department of Commerce. See Reestablishment of the Patent and Trademark Office as the United States Patent and Trademark Office, 1234 TMOG 41 (May 9, 2000). Section 4732(b)(1)(B) of the Patent and Trademark Office Efficiency Act, 113 Stat. 1501A-583, amended the Trademark Act of 1946, 15 U.S.C. 1051 et seq. (except for §17) to strike “Commissioner” in each place that it appears and substitute “Director.” Section 4741(b) of the Patent and Trademark Office Efficiency Act, 113 Stat. 1501A-586, provides that:
Any reference in any other Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Patent and Trademark Office-
(1) to the Commissioner of Patents and Trademarks is deemed to refer to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office; [and]
* * *
(3) to the Assistant Commissioner for Trademarks is deemed to refer to the Commissioner for Trademarks.
Under 15 U.S.C. §1123 and 35 U.S.C. §2(b)(2), the Director may establish regulations for the conduct of proceedings in the USPTO.
Citation to issued by the Director on petition on or after March 29, 2000 should include a parenthetical reference to “(Dir USPTO <specify year>).” Citation to decisions issued by the Commissioner for Patents and Trademarks prior to March 29, 2000 should reference “(Comm’r Pats. <specify year>).”
See TMEP §1709 regarding delegation of the Director’s authority.
1702 Petitions to the Director Under 37 C.F.R. §2.146 - In General
37 C.F.R. §2.146 Petitions to the Director. (a) Petition may be taken to the Director: (1) From any repeated or final
formal requirement of the examiner in the ex parte prosecution of an application if permitted by §2.63(b); (2) in any case for which the Act of 1946, or Title 35 of the United States Code, or this Part of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined directly or reviewed by the Director; (3) to invoke the supervisory authority of the
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Director in appropriate circumstances; (4) in any case not specifically defined and provided for by this Part of Title 37 of the Code of Federal Regulations; (5) in an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.
(b) Questions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Director.
(c) Every petition to the Director must include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the fee required by §2.6. Any brief in support of the petition should be embodied in or accompany the petition. The petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of §11.14 of this chapter must sign the petition. When facts are to be proved on petition, the petitioner must submit proof in the form of affidavits or declarations in accordance with §2.20, signed by someone with firsthand knowledge of the facts to be proved, and any exhibits.
(d) A petition must be filed within two months of the date of issuance of the action from which relief is requested, unless a different deadline is specified elsewhere in this chapter.
(e)(1) A petition from the grant or denial of a request for an extension of time to file a notice of opposition must be filed within fifteen days from the date of issuance of the grant or denial of the request. A petition from the grant of a request must be served on the attorney or other authorized representative of the potential opposer, if any, or on the potential opposer. A petition from the denial of a request must be served on the attorney or other authorized representative of the applicant, if any, or on the applicant. Proof of service of the petition must be made as provided by §2.119. The potential opposer or the applicant, as the case may be, may file a response within fifteen days from the date of service of the petition and must serve a copy of the response on the petitioner, with proof of service as provided by §2.119. No further document relating to the petition may be filed.
(2) A petition from an interlocutory order of the Trademark Trial and Appeal Board must be filed within thirty days after the date of issuance of the order from which relief is requested. Any brief in response to the petition must be filed, with any supporting exhibits, within fifteen days from the date of service of the petition. Petitions and responses to petitions, and any documents accompanying a petition or response under this subsection must be served on every adverse party pursuant to §2.119.
(f) An oral hearing will not be held on a petition except when considered necessary by the Director.
(g) The mere filing of a petition to the Director will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board nor stay the period for replying to an Office action in an
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application except when a stay is specifically requested and is granted or when §§2.63(b) and 2.65 are applicable to an ex parte application.
(h) Authority to act on petitions, or on any petition, may be delegated by the Director.
(i) Where a petitioner seeks to reactivate an application or registration that was abandoned, cancelled or expired because documents were lost or mishandled, the Director may deny the petition if the petitioner was not diligent in checking the status of the application or registration. To be considered diligent, a petitioner must:
(1) During the pendency of an application, check the status of the application every six months between the filing date of the application and issuance of a registration;
(2) After registration, check the status of the registration every six months from the filing of an affidavit of use or excusable nonuse under section 8 or 71 of the Act, or a renewal application under section 9 of the Act, until the petitioner receives notice that the affidavit or renewal application has been accepted; and
(3) If the status check reveals that the Office has not received a document filed by the petitioner, or that the Office has issued an action or notice that the petitioner has not received, the petitioner must promptly request corrective action.
(j) If the Director denies a petition, the petitioner may request reconsideration, if the petitioner:
(1) Files the request within two months of the date of issuance of the decision denying the petition; and
(2) Pays a second petition fee under §2.6.
Applicants, registrants, and parties to inter partes proceedings before the Trademark Trial and Appeal Board (“Board”) who believe they have been injured by certain adverse actions of the USPTO, or who believe that they cannot comply with the requirements of the Trademark Rules of Practice (37 C.F.R. Parts 2, 3, 6, and 7) because of an extraordinary situation, may seek equitable relief by filing a petition under 37 C.F.R. §2.146.
Under 37 C.F.R. §2.146(a)(1), an applicant may file a petition to review an examining attorney’s formal requirement if permitted by 37 C.F.R. §2.63(b). Under 37 C.F.R. §2.63(b)(1), a petition from a requirement that is repeated but not made final is permitted if the subject matter of the requirement is appropriate for petition. Under 37 C.F.R. §2.63(b)(2), a petition from a final requirement is permitted only if the final action is limited to subject matter appropriate for petition. See TMEP §1704 regarding petitionable subject matter. If a petition under 37 C.F.R. §2.146(a)(1) is denied, the applicant has six months from the issuance date of the Office action that repeated the requirement or made it final, or thirty days from the date of the decision on the petition, whichever is later, to comply with the requirement. 37 C.F.R. §2.63(a).
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Under 37 C.F.R. §2.146(a)(2), a petition may be filed in any case for which the Trademark Act, Trademark Rules of Practice, or Title 35 of the United States Code specifies that the matter is to be determined directly or reviewed by the Director. This includes petitions to review the actions of the Post Registration staff under 15 U.S.C. §§1057, 1058, 1059, and 1141k.
Under 35 U.S.C. §2 and 37 C.F.R. §2.146(a)(3), the Director may invoke supervisory authority in appropriate circumstances. See TMEP §1707.
Under 37 C.F.R. §2.146(a)(5), a party may petition the Director to suspend or waive any requirement of the rules that is not a requirement of the statute, in an extraordinary situation, where justice requires and no other party is injured thereby. See TMEP §1708.
See TMEP §1703 for a list of issues that often arise on petition, and TMEP §§1705 et seq. regarding petition procedure.
1703 Specific Types of Petitions
A variety of issues may be reviewed on petition. The following is a list of issues that commonly arise:
Petitions to Restore an Application Filing Date. See TMEP §1711.
Petitions to Make Special. See TMEP §1710.
Petitions to Reverse an Examining Attorney’s Holding of Abandonment for Failure to File a Complete Response to an Office Action are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1713.
Petitions to Revive an Application Abandoned Due to Unintentional Delay in Responding to an Office Action or Notice of Allowance are considered under 37 C.F.R. §2.66. See TMEP §§1714 et seq.
Petitions to Restore Jurisdiction to the Examining Attorney may be filed by the applicant under 37 C.F.R. §2.84, when the examining attorney does not have jurisdiction to review an amendment to the application. See TMEP §1504 et seq.
Petitions to Review the Action of an Examining Attorney. A petition to review an examining attorney’s formal requirement may be filed under 37 C.F.R. §§2.63(b) and 2.146(a)(1), if the requirement is repeated or made final and the subject matter is appropriate for petition. See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review.
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Petitions to Review the Action of the Post Registration Staff may be filed if an affidavit of use or excusable nonuse is refused under 15 U.S.C. §1058 or §1141k, a renewal application is refused under 15 U.S.C. §1059, or a proposed amendment or correction is refused under 15 U.S.C. §1057. See 37 C.F.R. §§2.165, 2.176, and 2.186; TMEP §§1604.18 and 1606.14.
Petitions to Review the Refusal of the Madrid Processing Unit to Certify an Application for International Registration are reviewed under 37 C.F.R. §2.146(a)(3). See TMEP §1902.03(a).
Petitions to Reverse a Nonfinal Decision of the Trademark Trial and Appeal Board (37 C.F.R. §2.146(e)(2)) are reviewed under the standard of clear error or abuse of discretion, if the subject matter is appropriate for consideration on petition. Riko Enterprises, Inc. v. Lindsley, 198 USPQ 480 (Comm’r Pats. 1977). See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §§901.02(a) and 905.
Petitions to Review a Decision to Deny or Grant a Request for an Extension of Time to Oppose (37 C.F.R. §2.146(e)(1)) are reviewed to determine whether the Board correctly applied 37 C.F.R. §§2.101 and 2.102.
Petitions to Add or Substitute a Basis After Publication are reviewed under 37 C.F.R. §2.146(a)(2). See 37 C.F.R. §2.35(b)(2); TMEP §806.03(j).
See TMEP §1607 and TBMP §§303, 307, 308, and 309 regarding petitions to cancel registrations under 15 U.S.C. §1064, which are handled by the Board.
1704 Petitionable Subject Matter
Ex Parte Examination
Under 37 C.F.R. §2.63(b), an applicant may petition the Director to review an examining attorney’s repeated or final requirement if the subject matter of the requirement is appropriate for petition. However, under 37 C.F.R. §2.146(b), “[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions....”
Procedural issues reviewable on petition include: whether a disclaimer was properly printed in standardized format; whether an examining attorney acted properly in suspending an application; whether an examining attorney acted properly in holding an application abandoned for failure to file a complete
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response to an Office action (see TMEP §1713); and whether it was premature for an examining attorney to issue a final action.
Substantive issues that arise in ex parte examination are not proper subject matter for petition, and may be reviewed only by the Trademark Trial and Appeal Board on appeal. See TMEP §§1501 et seq. regarding appeal procedure. For example, an examining attorney’s requirement for a special form drawing that agrees with the mark shown on the specimen(s) of record may not be reviewed on petition, because it requires an analysis of the commercial impression of the mark. In re Hart, 199 USPQ 585 (Comm’r Pats. 1978). An examining attorney’s requirement for a disclaimer of a feature of a mark is also improper subject matter for petition. Ex parte Florida Citrus Canners Cooperative, 37 USPQ 463 (Comm’r Pats. 1938); Ex parte Kleen-O- Dent Laboratories, Inc., 37 USPQ 232 (Comm’r Pats. 1938). The question of whether an amendment to a drawing is a material alteration of the mark is not petitionable, but the question of whether USPTO practice permits an applicant to correct an allegedly obvious typographical error on a drawing was found to be reviewable on petition. In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm’r Pats. 1990). The determination of what is appealable and what is petitionable is made on a case-by-case basis.
Some issues that arise in ex parte examination may be reviewed by either petition or appeal. For example, the question of who is a proper signatory of a statement of use or other verification of facts on behalf of an applicant may be reviewed by either petition or appeal. In re Dermahose Inc., 82 USPQ2d 1793 (TTAB 2007).
A requirement for amendment of an identification of goods/services may also be reviewed by either petition or appeal. In re Stenographic Machines, Inc., 199 USPQ 313 (Comm’r Pats. 1978). On the other hand, a requirement for amendment of the classification is a procedural matter that may only be reviewed on petition. In re Tee-Pak, Inc., 164 USPQ 88 (TTAB 1969).
If an applicant files a petition from an examining attorney’s formal requirement, the applicant may not subsequently appeal the requirement to the Board. 15 U.S.C. §1070; 37 C.F.R. §2.63(b).
See TBMP §1201.05 for further information about appealable versus petitionable subject matter in examination.
Post Registration
Trademark Rule 2.146(b) applies only to questions of substance that arise during ex parte examination of applications for registration. The Director considers questions of substance, such as whether a proposed amendment materially alters a registered mark or whether a specimen supports use of a registered mark, when reviewing the action of the Post Registration staff in connection with a proposed amendment filed under 15 U.S.C. §1057 (“§7
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amendment”), or an affidavit of use under 15 U.S.C. §1058 or §1141k (“§8 affidavit” or “§71 affidavit”). The decisions of Post Registration staff under 15 U.S.C. §§1057, 1058, 1059, and 1141k may not be appealed to the Board.
Inter Partes Proceedings Before Trademark Trial and Appeal Board
In an inter partes proceeding before the Trademark Trial and Appeal Board, a party may petition the Director to review an order or decision of the Board that concerns a matter of procedure and does not put an end to the litigation before the Board. See TBMP §§901.02(a) and 905.
1705 Petition Procedure
A petition should include a verified statement of the relevant facts, the points to be reviewed, the requested action or relief, and the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.146(c). The petition should be accompanied by a supporting brief and any evidence to be considered.
1705.01 Standing
A person must have standing to file a petition. See Ex parte Lasek, 115 USPQ 145 (Comm’r Pats. 1957).
There is no provision in the Trademark Act or Rules of Practice for intercession by a third party in an ex parte matter. Accordingly, petitions by third parties to review actions taken in ex parte matters are denied.
1705.02 Petition Fee
A petition must be accompanied by the fee required by 37 C.F.R. §2.6.
Any petition that is not accompanied by the required fee is incomplete. A staff attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner in writing that the petition is incomplete and grant the petitioner 30 days to submit the fee. If the fee is not submitted within the time allowed, the petition is denied without consideration on the merits, because the petitioner has not met the requirements for filing a petition. 37 C.F.R. §2.146(c).
A petition fee will be waived only in an extraordinary situation (see TMEP §1708), or if the record clearly shows that the petition was the result of a USPTO error. When requesting waiver of a fee, it is recommended that the petitioner submit the fee, but include a request that the fee be refunded because the petition was the result of a USPTO error. This will expedite consideration of the petition if the request for waiver of the petition fee is denied.
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If a check submitted as a petition fee is returned to the USPTO unpaid, or an electronic funds transfer or credit card is refused or charged back by a financial institution, the petitioner must resubmit the petition fee, along with a fee for processing the payment that was refused or charged back, before the petition will be considered on the merits. 37 C.F.R. §2.6(b)(12). See TMEP §405.06.
1705.03 Evidence and Proof of Facts
A petition should include a statement of the relevant facts, and should be accompanied by any evidence to be considered. Under 37 C.F.R. §2.146(c), when facts are to be proved, the petitioner must submit proof in the form of an affidavit or declaration under 37 C.F.R. §2.20.
An affidavit or declaration supporting a petition should be based on firsthand knowledge. For example, if the petition arises from the loss or misplacement of a document submitted to the USPTO, it should be accompanied by the affidavit or declaration of the person who sent the document, attesting to the date of submission and identifying the document filed with the petition as a true copy of the document previously filed.
When a petition includes an unverified assertion that is not supported by evidence, a staff attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner that an affidavit or declaration is required, and grant the petitioner 30 days to submit the necessary verification. If the petitioner does not submit a verification within the time allowed, the petition will be denied, or, in appropriate cases, a decision on petition will be rendered based on the information in the record, without consideration of the unverified assertion.
This procedure is also followed with respect to physical evidence. If physical evidence is available, such as a postcard receipt that shows the date of actual receipt of a document in the USPTO (see TMEP §303.02(c)), or a copy of a cancelled check that shows receipt of the filing fee for a missing document, the petitioner should include the evidence with the initial petition. However, if the evidence is omitted from the initial filing, the USPTO will give the petitioner an opportunity to supplement the petition within a specified time limit, normally 30 days.
1705.04 Timeliness
To avoid prejudicing the rights of third parties, petitions must be filed within a reasonable time after the disputed event. In many cases, deadlines for filing petitions are expressly stated in the rules. The following petition deadlines run from the issuance date of the action or order of which the petitioner seeks review:
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• Denial of a request for an extension of time to file a notice of opposition -- 15 days (37 C.F.R. §2.146(e)(1));
• Interlocutory order of the Trademark Trial and Appeal Board -- 30 days (37 C.F.R. §2.146(e)(2));
• Final decision of the Trademark Trial and Appeal Board -- two months (37 C.F.R. §2.146(d));
• Denial of a request for an extension of time to file a statement of use -- two months (37 C.F.R. §2.89(g));
• Section 7 rejection -- six months from date of issuance of Office action refusing to enter an amendment or correction (37 C.F.R. §2.176);
• Section 8 rejection -- six months from date of issuance of Office action refusing the affidavit (37 C.F.R. §2.165(b); see TMEP §§1604.18 et seq.);
• Section 9 rejection -- six months from date of issuance of Office action refusing renewal (37 C.F.R. §2.186(b); see TMEP §§1606.14 et seq.);
• Petition to revive -- two months from date of issuance of notice of abandonment (37 C.F.R. §2.66(a); see TMEP §§1714 et seq.);
• Examining attorney’s formal requirement -- six months from date of issuance (15 U.S.C. §1062(b); 37 C.F.R. §§2.62 and 2.63(b));
• Request for reconsideration of decision on petition -- two months from date of issuance (37 C.F.R. §§2.66(f)(1) and 2.146(j)(1)).
If the rules do not provide an express deadline, the petition must be filed within two months of the date of issuance of the action from which relief is requested, under 37 C.F.R. §2.146(d).
If there is no “issuance of an action,” the two-month “catchall deadline” of 37 C.F.R. §2.146(d) runs from the date of actual knowledge, or the date of the phone call or other communication that prompts the filing of the petition. The two-month deadline of 37 C.F.R. §2.146(d) also applies where the petition alleges that the petitioner did not receive the action that prompts the filing of the petition, running from the date of the petitioner’s actual knowledge of said action.
The time limits set forth in the rules are strictly enforced. Petitions filed after the expiration of the deadlines are denied as untimely. If the petitioner can show that extraordinary circumstances caused the delay in filing the petition,
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the petitioner may request waiver of these time limits, pursuant to 37 C.F.R. §§2.146(a)(5) and 2.148. See TMEP §1708 regarding waiver of rules.
The petition fee is refunded when a petition is denied as untimely.
Petitions filed using the certificate of mailing and certificate of transmission procedures of 37 C.F.R. §2.197 will be considered timely if mailed or transmitted to the USPTO by the due date, with a certificate that meets the requirements of 37 C.F.R. §2.197(a)(1) (see TMEP §§305.02 and 306.05 et seq.).
See TMEP §1705.05 regarding the duty to exercise due diligence in monitoring the status of pending matters.
1705.05 Due Diligence
Applicants and registrants are responsible for tracking the status of matters pending before the USPTO. When a petitioner seeks to reactivate an application or registration that was abandoned, cancelled, or expired due to the loss or mishandling of documents sent to or from the USPTO, the USPTO may deny the petition if the petitioner was not diligent in checking the status of the application or registration, even if the petitioner can show that the USPTO actually received documents, or declares that a notice from the USPTO was never received by the petitioner. 37 C.F.R. §2.146(i).
The required showing of diligence is necessary to protect third parties who may be harmed by the removal and later reinsertion of an application or registration into the USPTO’s database. For example, a third party may have searched USPTO records and begun using a mark because the search showed no earlier-filed conflicting marks, or an examining attorney may have searched USPTO records and approved a later-filed application for a conflicting mark because the examining attorney was unaware of the earlier- filed application.
The USPTO generally processes applications, responses, and other documents in the order in which they are received. Since it is reasonable to expect some notice from the USPTO about a pending matter within six months of the filing or receipt of a document, a party who has not received the expected written action or telephone call from the USPTO within that time frame should be on notice that the filing may have been lost. The party awaiting notification has the burden of inquiring as to the cause of the delay, and requesting corrective action in writing when necessary.
To be considered diligent, a petitioner must:
• Check the status of a pending application every six months between the filing date of the application and issuance of a registration;
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• Check the status of a registration every six months after filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Trademark Act (“§9 renewal application”), until the petitioner receives notice that the affidavit or renewal application has been accepted; and
• Promptly request corrective action in writing where necessary.
37 C.F.R. §2.146(i). See notice at 68 FR 55748 (Sept. 26, 2003).
Applicants and registrants should check the status on each six-month anniversary of the filing of an application for registration, §8 or §71 affidavit, or §9 renewal application to avoid abandonment or cancellation and to ensure that they meet the diligence requirement. For example, if an application was filed on October 1, 2009, the applicant should check the status on May 1, 2010, November 1, 2010, and on each six-month anniversary thereafter, until a registration is issued.
However, to provide applicants, registrants, and their attorneys with flexibility in docketing deadlines for both responses and status checks, an applicant or registrant will meet the diligence requirement if the applicant or registrant checks the status within six months of the filing or receipt of a document for which further action by the USPTO is expected.
Applicants and registrants can check the status of an application or registration through the Trademark Applications and Registrations Retrieval (“TARR”) database on the USPTO website at http://tarr.uspto.gov, which is available 24 hours a day, seven days a week. The party should print the TARR screen and place it in the party’s own file, in order to have a record of the status inquiry and the information learned.
A party who does not have access to the Internet can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to determine the status. After making a telephone status inquiry, a party should make a note in the party’s own file as to the date of the status inquiry and the information learned. No further documentation is required to establish that the status inquiry was made. Written status inquiries are discouraged, because they may delay processing of the application or registration.
If a status inquiry reveals that a document sent to the USPTO was not received, that an Office action or notice was issued but not received by the applicant or registrant, that an application has been abandoned or a registration cancelled or expired, or that some other problem exists, corrective action should be promptly requested in writing. 37 C.F.R. §2.146(i)(3). Petitions should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy. Requests for reinstatement should be directed to the paralegals in the Office of the Deputy Commissioner for Trademark Examination Policy, the supervisory legal instruments examiner in
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the law office, or the supervisor of the ITU/Divisional Unit or Post Registration Section. See TMEP §§1712 et seq. regarding requests for reinstatement.
Where a registrant has proof that a USPTO error caused a registration to expire or be cancelled due to failure to file a §8 affidavit, §71 affidavit, §9 renewal application, or a response to an examiner’s Office action refusing to accept an affidavit of use or excusable nonuse or a renewal application, the registrant may file a request for reinstatement. See TMEP §1712.02(a) regarding the types of proof of USPTO error that will support a request for reinstatement. Generally, where there is proof that a registration was cancelled solely due to a USPTO error, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status of the §8 affidavit or renewal application. However, if a registrant receives a written notice of cancellation, or has actual notice that a registration was cancelled, the USPTO will deny the request for reinstatement as untimely if it was not filed: (1) within two months of the issuance date of the cancellation notice; or (2) within two months of actual notice of cancellation; if the registrant did not receive a written cancellation notice. 37 C.F.R. §2.146(d).
A request to reinstate an application abandoned due to USPTO error (see TMEP §1712.01) must be timely (see TMEP §1705.04) and may be denied if the applicant was not diligent in monitoring the status of the application. 37 C.F.R. §§2.66(a)(2) and 2.146(i).
1705.06 Stay or Suspension of Pending Matters
Extract from 37 C.F.R. §2.146(g). The mere filing of a petition ... will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board nor stay the period for replying to an Office action in an application except when a stay is specifically requested and is granted or when §§2.63(b) and 2.65 are applicable to an ex parte application.
Filing a petition does not stay the period for replying to an Office action, except when a stay is specifically requested and granted under 37 C.F.R. §2.146(g), or when 37 C.F.R. §§2.63(b) and 2.65 are applicable. Any request to stay a deadline for filing a response to an Office action or notice of appeal should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy. If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Deputy Commissioner for Trademark Examination Policy. The examining attorney should not suspend action on an application pending a decision on petition.
A request to suspend a proceeding before the Trademark Trial and Appeal Board pending a decision on petition should be directed to the Board. 37
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C.F.R. §2.117(c); TBMP §510.03(a). See TBMP §§510 et seq. and 1213 regarding suspension of Board proceedings.
Filing a petition to revive an application abandoned for failure to file a proper statement of use or request for an extension of time to file a statement of use does not stay the time for filing a statement of use or further extension request(s). See TMEP §1714.01(b)(i).
1705.07 Signature of Petition
A petition to the Director under 37 C.F.R. §2.146 must be personally signed by the individual petitioner, someone with legal authority to bind a juristic petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 (“qualified practitioner”). 37 C.F.R. §2.146(c). See TMEP §602 regarding persons authorized to represent a party before the USPTO, and TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of legal entities.
Petitions to the Director under 37 C.F.R. §2.146 are often accompanied by separate verifications, signed by someone with firsthand knowledge of the facts to be proved on petition. See TMEP §1705.03. However, the petition itself must be separately signed by a proper party. If the petitioner is represented by a qualified practitioner, the practitioner must sign the petition. 37 C.F.R. §11.18(a). If the petitioner is not represented by a qualified practitioner, the petition must be signed by the petitioner or someone with legal authority to bind the petitioner. 37 C.F.R. §2.146(c); TMEP §611.02. In the case of joint petitioners who are not represented by a qualified practitioner, all should sign.
Petitions to revive under 37 C.F.R. §2.66 (see TMEP §§1714 et seq.) must include a statement that the delay was unintentional, signed by someone with firsthand knowledge. 37 C.F.R. §§2.66(b)(2) and (c)(2); TMEP §1714.01(e). Where a petition to revive under 37 C.F.R. §2.66 consists only of a statement that the delay was unintentional and/or that the applicant did not receive an Office action or notice of allowance, the petition may be signed by someone with firsthand knowledge, and no separate signature by the petitioner, someone with legal authority to bind the petitioner, or a qualified practitioner is required. However, any response to an Office action accompanying the petition (see TMEP §1714.01(a)(i)-(ii)) must be signed by a proper party. 37 C.F.R. §§2.62(b) and 11.18(a); TMEP §712.
If it appears that a petition (or a response accompanying a petition) was signed by an improper party, the staff attorney or paralegal reviewing the petition will follow the procedures in TMEP §§611.05 et seq. for processing documents signed by unauthorized parties.
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See also TMEP 611.01(c) regarding signature of documents filed electronically.
1705.08 Request for Reconsideration of Denial of Petition
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may request reconsideration by: (1) filing the request for reconsideration within two months of the issuance date of the decision denying the petition; and (2) paying a second petition fee under 37 C.F.R. §2.6.
If the petitioner presents new facts that warrant equitable relief, the request for reconsideration may be granted. Any request for reconsideration that merely reiterates or expands on arguments previously presented will be denied.
Since contested matters must be brought to a conclusion within a reasonable time, a second request for reconsideration of a decision on petition will be granted only in rare situations, when the petitioner presents significant facts or evidence not previously available. In re American National Bank and Trust Co. of Chicago, 33 USPQ2d 1535 (Comm’r Pats. 1993).
1705.09 Appeal to Federal Court
Under 15 U.S.C. §1071(a)(1) and 37 C.F.R. §2.145(a), a registrant who is adversely affected by the Director’s decision regarding a §8 affidavit, §71 affidavit, or §9 renewal application may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on petition. 15 U.S.C. §§1071(a)(1) and (b)(1); 37 C.F.R. §§2.145(a) and 2.145(c).
Other types of Director’s decisions are not subject to appeal. See In re Marriott-Hot Shoppes, Inc., 411 F.2d 1025, 162 USPQ 106 (C.C.P.A. 1969).
The deadline for filing an appeal or commencing a civil action is two months from the issuance date of the decision. 37 C.F.R. §2.145(d)(1). Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.
1706 Standard of Review on Petition
The standard of review on petition depends on the particular section of the rules under which the petition is filed.
In review of an examining attorney’s formal requirement under 37 C.F.R. §§2.63(b) and 2.146(a)(1), the standard of review is whether the examining attorney’s judgment was correct, the same standard that the Trademark Trial and Appeal Board would use if it were considering the requirement on appeal. In re Du Pont Merck Pharmaceutical Co., 34 USPQ2d 1778 (Comm’r Pats.
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1995); In re Stenographic Machines, Inc., 199 USPQ 313 (Comm’r Pats. 1978). However, in review of an examining attorney’s action under 37 C.F.R. §2.146(a)(3), the Director will reverse the examining attorney only upon a finding of clear procedural error or abuse of discretion (see TMEP §706.01). In re GTE Education Services, 34 USPQ2d 1478 (Comm’r Pats. 1994); In re Direct Access Communications (M.C.G.) Inc., 30 USPQ2d 1393 (Comm’r Pats. 1993). See 37 C.F.R. §2.146(b) and TMEP §1704 regarding petitionable subject matter.
The Director reviews the actions of the Post Registration staff on §8 affidavits, §71 affidavits, §9 renewal applications, and §7 amendments, to determine whether the judgment of the examiner was correct. See In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996) (announcing change in standard of review of petitions to review Post Registration decisions on §7 amendments).
The Director will reverse an action of the Board on petition under 37 C.F.R. §2.146(a)(3) only for clear error or abuse of discretion. Riko Enterprises, Inc. v. Lindsley, 198 USPQ 480 (Comm’r Pats. 1977).
The Director reviews the denial of an application filing date to determine whether the denial was correct. See TMEP §204.02.
1707 Director’s Supervisory Authority Under 37 C.F.R. §2.146(a)(3)
Under 35 U.S.C. §2 and 37 C.F.R. §2.146(a)(3), the Director may exercise supervisory authority on petition in appropriate circumstances. As noted in TMEP §1706, the Director may review the actions of an examiner or paralegal under 37 C.F.R. §2.146(a)(3) for clear procedural error or abuse of discretion.
In some cases, the Director will exercise supervisory authority under 37 C.F.R. §2.146(a)(3) even where there has been no clear procedural error or abuse of discretion, if a petitioner can show that it has substantially complied with the requirements of the statute or rules. See In re Carnicon Development Co., 34 USPQ2d 1541 (Comm’r Pats. 1992) (assertion of verified date of first use, coupled with statement of current method of use, interpreted as substantially in compliance with minimum filing requirement of 37 C.F.R. §2.88(e)(3) for an allegation in a statement of use that the “mark is in use in commerce.”).
The Director may also exercise supervisory authority under 37 C.F.R. §2.146(a)(3) to make changes to USPTO practice. See, e.g., In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Comm'r Pats. 2001); In re Slack, 54 USPQ2d 1504 (Comm'r Pats. 2000); In re Moisture Jamzz, Inc., 47 USPQ2d 1762 (Comm'r Pats. 1997); In re El Taurino Restaurant, Inc., 41 USPQ2d 1220 (Comm'r Pats. 1996); In re Umax Data System, Inc., 40
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USPQ2d 1539 (Comm’r Pats. 1996); In re Monte Dei Maschi Di Siena, 34 USPQ2d 1415 (Comm'r Pats. 1995).
1708 Waiver of Rules
Under 37 C.F.R. §§2.146(a)(5) and 2.148, the Director may waive any provision of the rules that is not a provision of the statute, when: (1) an extraordinary situation exists; (2) justice requires; and (3) no other party is injured.
All three of the above conditions must be satisfied before a waiver will be granted, and the burden is on the petitioner to show that the situation is extraordinary. Disasters like fires, hurricanes, and snowstorms are considered to be extraordinary situations. Extraordinary circumstances have also been found in certain cases where a petitioner avers by affidavit or declaration that it did not receive an Office action issued regarding a §8 affidavit or §9 renewal application.
On the other hand, oversights and inadvertent errors that could have been avoided with the exercise of reasonable care are not considered to be extraordinary situations. In re Universal Card Group, Inc., 25 USPQ2d 1157 (Comm’r Pats. 1992) (docketing error not extraordinary situation); In re Merck & Co., Inc., 24 USPQ2d 1317 (Comm’r Pats. 1992) (inadvertent misidentification of serial number in request for extension of time to oppose not extraordinary situation); In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm’r Pats. 1990) (typographical error not extraordinary situation).
A change of attorneys is not considered to be an extraordinary situation, In re Unistar Radio Networks, Inc., 30 USPQ2d 1390 (Comm’r Pats. 1993), nor is a misunderstanding or lack of awareness of the requirements of the Trademark Rules of Practice considered extraordinary. In re Buckhead Marketing & Distribution, Inc., 71 USPQ2d 1620 (Dir USPTO 2004) (applicant’s lack of knowledge of application filing fee increase not extraordinary situation); B and E Sales Co. Inc. v. Andrew Jergens Co., 7 USPQ2d 1906 (Comm’r Pats. 1988); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pats. 1985). Errors by attorneys are imputed to the client and the client is bound by the consequences. In re Sotheby’s Inc., 18 USPQ2d 1969 (Comm’r Pats. 1989).
Mail delays are not considered extraordinary, because the Trademark Rules of Practice provide procedures designed to avoid lateness due to mail delay. In re Sportco, Inc., 209 USPQ 671 (Comm’r Pats. 1980); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pats. 1978). See 37 C.F.R. §2.197 regarding certificates of mailing.
A party will not be excused from compliance with the rules because the results in a particular case may be harsh. See Buckhead, 71 USPQ2d at 1623 (rejecting petitioner’s argument that “justice requires” waiver of the filing
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date requirements of 37 C.F.R. §2.21 to prevent the loss of priority relative to a conflicting application).
The Director has no authority to waive a statutory requirement, such as the deadline for filing a proper §8 affidavit or §9 renewal application. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).
1709 Matters Delegated by Director
Pursuant to 35 U.S.C. §3(a) and (b), the Director has delegated the authority to the Commissioner for Trademarks to decide trademark-related petitions filed under 37 C.F.R. §§2.66 and 2.146, and to exercise supervisory authority in trademark-related matters pursuant to 35 U.S.C. §2.
Under 35 U.S.C. §3(b)(3)(B) and 37 C.F.R. §2.146(h), the Commissioner for Trademarks may delegate this authority to the Deputy Commissioner for Trademark Examination Policy or the Deputy Commissioner for Trademark Operations, who may further delegate the authority.
Authority to decide trademark-related petitions filed under 37 C.F.R. §2.146 has been delegated to the Deputy Commissioner for Trademark Examination Policy, who has further delegated authority to appropriate officials within the Office of Petitions.
1710 Petition to Make Special
The USPTO generally examines applications in the order in which they are received. A petition to make “special” is a request to advance the initial examination of an application out of its regular order.
A petition to make “special” must be accompanied by: (1) the fee required by 37 C.F.R. §2.6; (2) an explanation of why special action is requested; and (3) a statement of facts that shows that special action is justified. The statement of facts should be supported by an affidavit or declaration under 37 C.F.R. §2.20.
When a new application for registration is accompanied by a petition to make “special,” the USPTO will give the application a serial number and process the fees before routing the application to the Office of the Deputy Commissioner for Trademark Examination Policy for a decision on the petition.
An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon applicant’s request. No petition is required in this situation. However, the applicant must be the owner of the cancelled or expired registration, the mark in the new application must be identical to the mark in the cancelled or
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expired registration, and the goods or services in the new application must be identical to or narrower than the goods or services in the cancelled or expired registration. See TMEP §702.02.
1710.01 Basis for Granting or Denying Petition
Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights. A petition to make “special” is denied when the circumstances would apply equally to a large number of other applicants.
The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants.
The most common reasons for granting petitions to make “special” are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.
1710.02 Processing Petition
Each petition to make “special,” together with the petition decision, is made part of the record. If the petition is granted, the prosecution history of the application in the Trademark Reporting and Monitoring (“TRAM”) System will reflect that the petition for “special” handling has been granted.
1710.03 Submitting Petition
Petitions to make “special” are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy. In order to ensure their proper routing and processing, petitions to make “special” and requests for “special” handling should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number: 571-273-0032. It is recommended that the petitioner first file the application using the Trademark Electronic Application System (“TEAS”). Then, the petitioner should fax the petition or request for special handling, referencing the newly assigned serial number.
Alternatively, if the petition to make “special” or request for “special” handling is submitted by mail, the filing should be submitted separately from the application, to ensure proper routing and processing.
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1711 Review of Denial of Filing Dates
If an application is denied a filing date and the applicant wants the filing date restored, the usual procedure is to file a petition under 37 C.F.R. §2.146.
However, in the limited circumstances listed below, the applicant may request restoration of the filing date without a formal petition:
(1) The USPTO has no record of receipt of the application, but the applicant presents proof that a complete application was filed through the Trademark Electronic Application System (“TEAS”), in the form of a copy of a TEAS “Success” page confirming receipt of the application (see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) The USPTO has no record of receipt of the application, but the applicant presents proof of actual receipt in the form of evidence that a USPTO employee signed for or acknowledged the envelope containing the application (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(3) A filing date was denied, but the application itself clearly shows on its face that the applicant met all relevant filing date requirements on the filing date being requested. If the application was filed on paper, the applicant must resubmit any returned documents showing the cancelled filing date.
(4) A filing date was denied to a paper application due to the omission of an element, such as a drawing, but the element was in fact included in the application as originally submitted, and the applicant submits all of the following: (a) a return postcard indicating that the USPTO specifically acknowledged receipt of the element in question (see TMEP §303.02(c)); (b) a substitute to replace the lost element; (c) the application documents that were returned; and (d) a copy of the Notice of Incomplete Trademark Application.
(5) Applicant provides evidence that applicant attempted to file the application through TEAS, but TEAS was unavailable due to technical problems (e.g., a computer screen printout showing receipt of a “Fatal Error - Access Denied” error message, or a copy of an e-mail message from the TEAS Help Desk stating that the TEAS application forms were temporarily unavailable). See In re Henkel Loctite Corp., 69 USPQ2d 1638 (Dir USPTO 2003).
In the above situations, a staff attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy may restore the
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original filing date without a formal petition or a petition fee. In all other circumstances, the applicant must file a formal petition, including the petition fee required by 37 C.F.R. §2.6.
Procedure for Filing Request. In any request to restore an application filing date, the applicant should first refile the application, with the application filing fee required by 37 C.F.R. §2.6(a)(1)(i), (ii), or (iii), as appropriate. The USPTO recommends using TEAS at http://www.uspto.gov/teas/index.html. The application filing fee must be included even if the applicant has not yet received a refund of the fee previously paid.
After the applicant receives a new serial number, the applicant should fax the request to restore the original filing date to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950. This request should: (1) be captioned as a “Request for Restoration of the Filing Date;” (2) state the reason(s) why the applicant believes the filing date was denied in error; (3) include the new serial number; and (4) include a copy of any Notice of Incomplete Trademark Application received from the USPTO. See TMEP §204.02.
Time for Filing Request. All requests to restore filing dates, whether made by formal petition or informal request, must be filed promptly. If the USPTO issues a notice advising the applicant of the denial or cancellation of the filing date, the request to restore the filing date must be filed within two months of the issuance date of the action, or it will be denied as untimely. 37 C.F.R. §2.146(d). Although applicants have two months from the issuance date of this notice to file a request to restore the original filing date, it is recommended that an applicant promptly refile the application, and file the request to restore the filing date immediately upon receipt of the new serial number, to minimize the delay in receiving a filing date, and to reduce the impact on third parties who may rely on the current filing date information in the trademark database.
Furthermore, applicants must exercise due diligence in monitoring the status of applications. 37 C.F.R. §2.146(i); TMEP §1705.05. To be considered diligent, an applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. §2.146(i)(1).
Evidence of Missing Element Required. If the USPTO denies a filing date due to the omission of an element required by 37 C.F.R. §2.21, and the applicant declares that the missing element was in fact included with the application as filed, the Director will not grant a petition to restore or reinstate the filing date unless: (1) the applicant provides evidence that the element was received in the USPTO on the requested filing date; or (2) there is an image of the element in the USPTO’s Trademark Image Capture and Retrieval System (“TICRS”) database.
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The USPTO scans images of applications almost immediately after they are received in the USPTO and uploads these scanned images into TICRS. Because very little time passes between receipt of the application and creation of the scanned image, it is highly likely that the TICRS file of an application will be an exact copy of what was received in the USPTO. Accordingly, if TICRS does not include an image of a missing element that a petitioner declares was submitted with the application, the Director will not grant the petition unless there is evidence to corroborate the petitioner’s declaration. An example of corroborating evidence is a postcard submitted with the original application that bears: (1) a USPTO date stamp; and (2) an itemized list of materials submitted that includes the missing element. In re Group Falck A/S, 62 USPQ2d 1797, 1798 (Dir USPTO 2002).
1712 Reinstatement of Applications and Registrations
1712.01 Reinstatement of Applications Abandoned Due to Office Error
If an applicant has proof that an application was inadvertently abandoned due to a USPTO error, an applicant may file a request to reinstate the application, instead of a formal petition to revive. There is no fee for a request for reinstatement. Such a request should be captioned as a “Request for Reinstatement.” Requests for reinstatement are handled by the paralegals in the Office of the Deputy Commissioner for Trademark Examination Policy, or by the supervisory legal instruments examiners in the ITU/Divisional Unit or the Examination Support Unit.
The following are examples of situations where the USPTO may reinstate an application that was held abandoned for failure to timely file a statement of use or response to an Office action:
(1) The applicant presents proof that a response to an Office action, statement of use, or request for extension of time to file a statement of use was timely filed through TEAS, in the form of a copy of a TEAS “Success” page confirming receipt of the application (see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) There is an image of the timely filed response, statement of use, or extension request in TICRS.
(3) The timely filed document is found in the USPTO.
(4) The applicant supplies a copy of the document and proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
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(5) The applicant supplies a copy of the document and proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of facsimile transmission requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
(6) The applicant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or label, on which the applicant specifically refers to the document at issue (see TMEP §303.02(c)).
(7) The applicant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The request for reinstatement must include an affidavit or declaration under 37 C.F.R. §2.20 that attests to the contents of the filing.
(9) The USPTO sent an Office action or notice of allowance to the wrong address due to a USPTO error, i.e., the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the issuance date of the action or notice. See TMEP §609.03 regarding the applicant’s duty to notify the USPTO when the correspondence address changes.
A request for reinstatement must be filed within two months of the issuance date of the notice of abandonment or, if the applicant has not received a notice of abandonment, within two months of the date the applicant had actual knowledge that the application was abandoned. 37 C.F.R. §2.146(d).
If the applicant did not receive a notice of abandonment, the applicant must have been duly diligent in monitoring the status of the application, or the request for reinstatement may be denied. To be duly diligent, the applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. §2.146(i)(1); TMEP §1705.05.
When an application is reinstated, a computer-generated notice of reinstatement is sent to the correspondence address of record. The TRAM System and TARR database are updated accordingly.
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If the applicant is not entitled to reinstatement, a request for reinstatement may be considered as a petition to revive. Any petition to revive must meet all the requirements of 37 C.F.R. §2.66. See TMEP §§1714 et seq.
1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error
1712.02(a) Request for Reinstatement
A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that a USPTO error caused a registration to be cancelled or expired due to failure to file a §8 affidavit, §71 affidavit, §9 renewal application, or a response to an examiner’s Office action refusing to accept an affidavit or renewal application. There is no fee for a request for reinstatement. A request that the USPTO reinstate a registration that has been cancelled or expired due to USPTO error should be captioned as a “Request for Reinstatement of Registration,” and should be directed to the Supervisor of the Post Registration Section.
The following are examples of situations where the USPTO may reinstate a cancelled or expired registration:
(1) The registrant presents proof that a proper affidavit or renewal application was timely filed through TEAS, in the form of a copy of a TEAS “Success” page confirming receipt of the document (see TMEP §303.02(a)) or a copy of an e-mail confirmation issued by the USPTO that includes the date of receipt and a summary of the TEAS submission.
(2) There is an image of a timely filed affidavit, renewal application, or response to Office action in TICRS.
(3) The timely filed affidavit, renewal application, or response to Office action is found in the USPTO.
(4) The registrant supplies a copy of the affidavit, renewal application, or response to Office action, with proof that it was timely mailed to the USPTO in accordance with the certificate of mailing requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §305.02(f)).
(5) The registrant supplies a copy of the affidavit, renewal application, or response to Office action, with proof that it was timely transmitted to the USPTO by fax in accordance with the certificate of transmission requirements of 37 C.F.R. §2.197 (for the specific requirements for providing proof, see TMEP §306.05(d)).
(6) The registrant presents proof of actual receipt in the USPTO in the form of a return postcard showing a timely USPTO date stamp or
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label, on which the registrant specifically refers to the §8 affidavit, §71 affidavit, §9 renewal application, or response (see TMEP §303.02(c)).
(7) The registrant presents proof of actual receipt in the USPTO in the form of evidence that a USPTO employee signed for or acknowledged the envelope (e.g., a certified mail receipt that bears a USPTO date stamp or label, or the signature of a USPTO employee), accompanied by an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the envelope.
(8) The document that became lost was accompanied by a fee, and there is proof that the USPTO processed the fee (e.g., a cancelled check). The registrant must submit an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the original filing.
(9) The USPTO sent an Office action to the wrong address due to a USPTO error, i.e., the USPTO either entered the correspondence address incorrectly or failed to enter a proper notice of change of address filed before the issuance date of the action.
(10) The registrant supplies a copy of a response to a Post Registration Office action, with proof that it was timely transmitted to the USPTO by Internet e-mail and accompanied by a certificate of transmission under 37 C.F.R. §2.197. See notice at 64 Fed. Reg. 33056, 33063 (June 21, 1999). NOTE: Section 8 affidavits, §71 affidavits, and §9 renewal applications cannot be filed by e-mail. TMEP §304.02.
Generally, where there is proof that a registration was cancelled solely due to USPTO error, a request for reinstatement will not be denied solely because the registrant was not diligent in monitoring the status of the affidavit or renewal application. However, if a registrant receives a written notice of cancellation, or has actual notice that a registration was cancelled, the USPTO will deny the request for reinstatement as untimely if it was not filed: (1) within two months of the issuance date of the cancellation notice; or (2) within two months of actual notice of cancellation, if the registrant did not receive a written cancellation notice. 37 C.F.R. §2.146(d). See TMEP §1705.04 regarding timeliness.
Please note that the Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059 or affidavit of use of a registered mark under 15 U.S.C. §1058. Checkers Drive-In Restaurants Inc. v. Commissioner of Patents and Trademarks., 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995); In re Mother Tucker's Food Experience (Canada) Inc., 925 F.2d 1402, 1406, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991); In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). Therefore, if the registrant did not timely file a §8
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affidavit, §71 affidavit, or §9 renewal application, a request to reinstate a cancelled or expired registration will be denied, regardless of the reason for the delay.
1712.02(b) Formal Petition
If a registrant failed to timely respond to an examiner’s Office action refusing to accept a §8 affidavit, §71 affidavit, or §9 renewal application due to an extraordinary situation, but the registrant does not have the proof of USPTO error that would support a request for reinstatement, the registrant may file a formal petition under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive a rule and accept a late response. Pursuant to 37 C.F.R. §2.146(d), the petition must be filed within two months of the cancellation notice. If the registrant did not receive the cancellation notice, the petition must be filed within two months of the date of actual notice of the cancellation, and the record must show that the registrant was diligent in monitoring the status of the registration, pursuant to 37 C.F.R. §2.146(i). See TMEP §§1705.04 and 1705.05 regarding timeliness and diligence.
The unintentional delay standard of 37 C.F.R. §2.66 does not apply to registered marks. TMEP §1714.01(f)(ii). Under 37 C.F.R. §§2.146(a)(5) and 2.148, the Director may waive any provision of the rules that is not a provision of the statute, only when an extraordinary situation exists, justice requires, and no other party is injured. See TMEP §1708. The failure to receive an Office action is considered an extraordinary situation that justifies a waiver of a rule. Therefore, if the registrant did not receive an examiner’s Office action refusing to accept an affidavit or renewal application, but the registrant does not have proof that non-receipt was due to USPTO error (see TMEP §1712.02(a), paragraph 9), the registrant may file a formal petition under 37 C.F.R. §2.146.
As noted in TMEP §1708, the Director has no authority to waive a statutory requirement, such as the deadline for filing a proper renewal application under 15 U.S.C. §1059 or affidavit of use of a registered mark under 15 U.S.C. §1058. Therefore, if the registrant did not timely file a §8 affidavit, §71 affidavit, §9 renewal application, a petition to extend or waive the statutory deadline will be denied, regardless of the reason for the delay.
If a registrant contends that a proper affidavit or renewal application was timely filed, but the registrant does not have proof that the affidavit or renewal application was received in the USPTO before the due date, the Director will not grant a petition to accept the affidavit or renewal application.
Similarly, if a registrant files a premature affidavit or renewal application, and does not file a newly executed affidavit or renewal application within the statutory filing period (which includes the grace period), the Director will not grant a petition to accept the premature affidavit or renewal application. See TMEP §§1604.04(a) and 1606.03(a).
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1713 Petition to Reverse Holding of Abandonment for Incomplete Response
1713.01 Standard of Review
Under 37 C.F.R. §2.65(a), an application may become abandoned when an applicant’s response, although received within the six-month response period, is incomplete. See TMEP §§718.03 et seq. regarding incomplete responses.
When an examining attorney holds an application abandoned because the applicant’s response is incomplete (see TMEP §718.03(a)), the applicant may petition the Director to reverse the holding under 37 C.F.R. §2.146. However, the Director will reverse the examining attorney’s holding of abandonment only if there is clear procedural error or abuse of discretion (see TMEP §706.01). In re GTE Education Services, 34 USPQ2d 1478 (Comm’r Pats. 1994); In re Legendary, Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992). Note: The “unintentional delay” standard for reviving abandoned applications pursuant to 37 C.F.R. §2.66(a) does not apply to applications held abandoned because a response was deemed incomplete under 37 C.F.R. §2.65(a). See TMEP §1714.01(f)(ii).
1713.02 Nonreceipt of Action Granting Additional Time to Perfect Response
If an examining attorney issues an Office action granting an applicant additional time to complete a response under 37 C.F.R. §2.65(b) (see TMEP §718.03(b)), and the applicant does not receive the action, or if the applicant is unable to respond to the action due to some extraordinary circumstance, the applicant may file a petition to the Director. If the petition is granted, the USPTO will send a notice to the applicant directing the applicant to view the action on the Trademark Document Retrieval (“TDR”) portal on the USPTO website at http://www.uspto.gov, and providing the applicant with a new 30- day period in which to perfect the response. This does not extend the time for filing a notice of appeal or filing a petition to review the examining attorney’s action under 37 C.F.R. §2.63(b). 15 U.S.C. §1062(b); 37 C.F.R. §2.142(a).
1714 Petition to Revive Abandoned Application
37 C.F.R. §2.66. Revival of abandoned applications. (a) The applicant may file a petition to revive an application abandoned
because the applicant did not timely respond to an Office action or notice of allowance, if the delay was unintentional. The applicant must file the petition:
(1) Within two months of the date of issuance 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
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diligent in checking the status of the application every six months in accordance with §2.146(i).
(b) The requirements for filing a petition to revive an application abandoned because the applicant did not timely respond to an Office action are:
(1) The petition fee required by §2.6; (2) A statement, signed by someone with firsthand knowledge of the facts,
that the delay in filing the response on or before the due date was unintentional; and
(3) Unless the applicant alleges that it did not receive the Office action, the proposed response.
(c) The requirements for filing a petition to revive an application abandoned because the applicant did not timely respond to a notice of allowance are:
(1) The petition fee required by §2.6; (2) A statement, signed by someone with firsthand knowledge of the facts,
that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional;
(3) Unless the applicant alleges that it did not receive the notice of allowance and requests cancellation of the notice of allowance, the required fees for the number of requests for extensions of time to file a statement of use that the applicant should have filed under §2.89 if the application had never been abandoned;
(4) Unless the applicant alleges that it did not receive the notice of allowance and requests cancellation of the notice of allowance, either a statement of use under §2.88 or a request for an extension of time to file a statement of use under §2.89; and
(5) Unless a statement of use is filed with or before the petition, or the applicant alleges that it did not receive the notice of allowance and requests cancellation of the notice of allowance, the applicant must file any further requests for extensions of time to file a statement of use under §2.89 that become due while the petition is pending, or file a statement of use under §2.88.
(d) In an application under section 1(b) of the Act, the Director will not grant the petition if this would permit the filing of a statement of use more than 36 months after the date of issuance of the notice of allowance under section 13(b)(2) of the Act.
(e) The Director will grant the petition to revive if the applicant complies with the requirements listed above and establishes that the delay in responding was unintentional.
(f) If the Director denies a petition, the applicant may request reconsideration, if the applicant:
(1) Files the request within two months of the date of issuance of the decision denying the petition; and
(2) Pays a second petition fee under §2.6.
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Upon proper submission of a petition to revive, an abandoned application may be revived under 37 C.F.R. §2.66 if the delay in responding to an Office action or notice of allowance was unintentional. 15 U.S.C. §§1051(d)(4) and 1062(b). Petitions filed under 37 C.F.R. §2.66 are handled by the paralegals in the Office of the Deputy Commissioner for Trademark Examination Policy. See TMEP §1709 regarding the delegation of authority to decide petitions.
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
1714.01 Procedural Requirements for Filing Petition to Revive
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s Office action are set forth in 37 C.F.R. §2.66(b). See TMEP §1714.01(a) et seq. The procedural requirements for filing a petition to revive an application abandoned for failure to timely file a statement of use or request for extension of time to file a statement of use are set forth in 37 C.F.R. §2.66(c). See TMEP §§1714.01(b) and (c).
When a petition does not meet the procedural requirements of 37 C.F.R. §2.66, a paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner that the petition does not meet the requirements of the rule, and grant the petitioner 30 days to supplement the petition by submitting the missing element(s). If the petitioner does not submit the necessary information or fees within the time allowed, the petition will be denied.
If a petition to revive filed through TEAS is automatically granted by the electronic system and it is subsequently determined that the petition does not meet the procedural requirements of 37 C.F.R. §2.66, a paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the petitioner that the granting of the petition has been rescinded because the petition does not meet the requirements of the rule. The petitioner will be granted 30 days to supplement the petition by submitting the missing element(s). If the petitioner does not submit the necessary information or fee(s) within the time allowed, the petition will be denied.
1714.01(a) Failure to Timely Respond to an Examining Attorney’s Office Action
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
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1714.01(a)(i) Response to Nonfinal Office Action
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s nonfinal Office action are listed in 37 C.F.R. §2.66(b). The petition must include all of the following:
(1) The petition fee required by 37 C.F.R. §2.6;
(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional. The statement does not have to be verified; and
(3) Unless the applicant alleges that it did not receive the Office action, the applicant’s proposed response to the Office action. 37 C.F.R. §2.66(b)(3).
If the petition states that applicant did not receive the Office action, and the petition is granted, the USPTO will issue a new Office action and provide the applicant with a new response period, or, if all issues previously raised remain the same, after reviving the application, the USPTO will send a notice to the applicant directing the applicant to view the previously issued Office action on the TDR portal on the USPTO website at http://www.uspto.gov, and provide the applicant with a new six-month period in which to file a response.
1714.01(a)(ii) Response to Final Office Action
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s final Office action are the same as listed in TMEP §1714.01(a)(i) above. See 37 C.F.R. §2.66(b). However, where a final action has issued, the petition must include a proper response, as defined in 37 C.F.R. §2.64(a).
In general, the only proper response to a final action is a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501 et seq.), a petition to the Director if permitted under 2.63(b), or compliance with any requirement made by the examining attorney. 37 C.F.R. §2.64(a). See TMEP §715.01. In some cases, after a final refusal of registration on the Principal Register, an amendment requesting registration on the Supplemental Register or registration under 15 U.S.C. §1052(f) may also be a proper response. See TMEP §§714.05(a)(i), 816.04, and 1212.02(h). A request for reconsideration is not a proper response to a final action, unless it is accompanied by a notice of appeal to the Board, or satisfies all outstanding requirements and overcomes all outstanding refusals. See TMEP §§715.03 and 1714.01(f)(ii).
If a petition does not include a proper response to a final action or claim that the final action was not received, the petition will be treated as incomplete. The applicant will be given an opportunity to perfect the petition by submitting
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the required response (e.g., a notice of appeal) or claim of non-receipt. If the applicant does not submit a proper response or claim of non-receipt within the time allowed, the petition will be denied.
If the petition states that applicant did not receive the final action, and the petition is granted, the USPTO will issue a new final action and provide the applicant with a new response period. If all issues previously raised remain the same, the USPTO will send a notice to the applicant directing the applicant to view the previously issued final action on the TDR portal on the USPTO website at http://www.uspto.gov, and provide the applicant with a new six-month period in which to file a response.
If the applicant received the Office action, and no response was filed within the statutory response period, a late notice of appeal may be submitted with the petition.
Filing a request for reconsideration or incomplete response does not extend the time for filing a notice of appeal to the Board or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(b). See TMEP §§715.03(c) and 718.03(b). Therefore, if the applicant timely filed a request for reconsideration or a response to the Office action that does not overcome all outstanding refusals and satisfy all outstanding requirements, a late appeal will not be accepted on petition.
The unintentional delay standard of 37 C.F.R. §2.66 does not apply to applications that are abandoned due to an incomplete response to an examining attorney’s Office action. TMEP §§1713 and 1714.01(f)(ii).
See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.
1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c). If the applicant received the notice of allowance, the petition must include all of the following:
(1) The petition fee required by 37 C.F.R. §2.6;
(2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date
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was unintentional (37 C.F.R. §2.66(c)(2)). The statement does not have to be verified;
(3) Either a statement of use under 37 C.F.R. §2.88 or a request for an extension of time to file a statement of use under 37 C.F.R. §2.89 (37 C.F.R. §2.66(c)(4));
(4) The required fees for the number of extension requests that the applicant should have filed if the application had never been abandoned (37 C.F.R. §2.66(c)(3));
Example 1: If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned. If a petition to revive is filed July 23, 2009, with a statement of use, the petition must include: (1) the fee for the statement of use; (2) the fee for the extension request that was due July 14, 2009; and (3) the petition fee.
Example 2: If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned. If a petition to revive is filed January 23, 2010, without a statement of use, the petition must be accompanied by: (1) the second extension request that was due January 14, 2010, with the filing fee therefor; (2) the fee for the first extension request that was due July 14, 2009; and (3) the petition fee. If the petition is granted, a statement of use or third extension request will be due July 14, 2010.
(5) Unless a statement of use is filed with or before the petition, the applicant must file any further requests for extension of time to file a statement of use that become due while the petition is pending, or file a statement of use (37 C.F.R. §2.66(c)(5)). See TMEP §1714.01(b)(i).
Example: If a notice of allowance was issued January 14, 2009, and the applicant did not file a statement of use or extension request by July 14, 2009, the application becomes abandoned. If a petition to revive is filed January 2, 2010, without a statement of use, the petition must include: (1) the first extension request that was due July 14, 2009, with the filing fee therefor; and (2) the petition fee. In addition, if the petition is pending, the applicant must submit by January 14, 2010 either: (1) a statement of use (with the required fee), or (2) a second extension request (with the required fee) before the petition can be granted.
The USPTO will not grant a petition to revive an intent-to-use application if granting the petition would extend the period for filing the statement of use
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beyond thirty-six months after the issuance date of the notice of allowance. 15 U.S.C. §§1051(d)(1) and (2); 37 C.F.R. §2.66(d). In these cases, the petition will be denied, and the petition fee will be refunded.
NOTE: Multiple Basis Applications. In a multiple-basis application, if in response to a notice of abandonment the applicant elects to delete the intent- to-use basis and only keep the basis or bases to which the notice of allowance does not pertain, then the applicant does not have to file a statement of use or extension request with the petition, or file any further extension requests while the petition is pending. Instead, applicant may submit with the petition a request to delete the intent-to-use basis and proceed to registration on the alternative basis for registration.
See TMEP §§1705.04 and 1714.01(d) regarding petition timeliness, and TMEP §1705.05 regarding due diligence in monitoring the status of an application.
1714.01(b)(i) Applicant Must File Statement of Use or Further Extension Requests During Pendency of a Petition
Filing a petition to revive does not stay the time for filing a statement of use or further request(s) for extension of time to file a statement of use. When a petition is granted, the term of the six-month extension that was the subject of the petition runs from the date of the expiration of the previously existing deadline for filing a statement of use. 37 C.F.R. §2.89(g). Thus, a petitioner must either file a statement of use or file additional extension requests as they become due during the pendency of a petition.
If the applicant fails to file a statement of use or further request(s) for extension of time to file the statement of use while the petition is pending, the USPTO will give the applicant an opportunity to perfect the petition by paying the fees for each missed extension request and filing a copy of the last extension request, or statement of use, that should have been filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762 (Comm’r Pats. 1997).
Please note that an applicant may file a petition to revive and an extension request through TEAS. However, a statement of use cannot be filed through TEAS until the extension request submitted with the petition is granted. If an applicant wants to file a statement of use after filing the petition, the applicant may contact the ITU/Divisional Unit and request that examination of the extension request be expedited. See TMEP §§1108 et seq. regarding extension requests, and TMEP §§1109 et seq. regarding statements of use.
1714.01(c) Notice of Allowance Not Received
To expedite processing, the USPTO recommends that all petitions to revive be filed through TEAS, at http://www.uspto.gov/teas/index.html.
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The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c). If the applicant did not receive the notice of allowance, the petition must include the following:
(1) The petition fee required by 37 C.F.R. §2.6; and
(2) A statement, signed by someone with firsthand knowledge of the facts, that the applicant did not receive the notice of allowance, and that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional. The statement does not have to be verified.
If the applicant did not receive the notice of allowance, it is not necessary to file a statement of use or request for an extension of time to file a statement of use, or the fees for the number of extension requests that would have been due if the application had never been abandoned. 37 C.F.R. §§2.66(c)(3) and (4). If the petitioner files an extension request with a petition that alleges nonreceipt of the notice of allowance, the USPTO will cancel the notice of allowance, refund the filing fee for the extension request, and forward the file to the Office of Trademark Program Control to reissue the notice of allowance.
If the petitioner files a statement of use with a petition that alleges nonreceipt of the notice of allowance, the USPTO will give the petitioner the option of: (1) having the notice of allowance cancelled and reissued, and the filing fee for the statement of use refunded; or (2) paying the additional filing fees for the extension requests that would have been due if the application had never been abandoned, so that the statement of use can be processed.
1714.01(d) Timeliness and Diligence
Under 37 C.F.R. §2.66(a), a petition to revive an abandoned application must be filed: (1) within two months of the issuance 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. See TMEP §1705.04 regarding petition timeliness, and TMEP §1705.05 regarding an applicant’s duty to exercise due diligence in monitoring the status of an application. If a petition is untimely, or if the applicant was not diligent, the USPTO will deny the petition and refund the petition fee. To be considered diligent, the applicant must check the status of a pending application every six months between the filing date of the application and issuance of a registration. 37 C.F.R. §§2.66(a)(2) and 2.146(i)(1).
The applicant may file a petition to revive before the applicant receives the notice of abandonment.
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1714.01(e) Signed Statement That Delay Was Unintentional
Under 37 C.F.R. §§2.66(b)(2) and (c)(2), a petition to revive must include a statement, signed by someone with firsthand knowledge of the facts, that the delay in responding to the Office action or notice of allowance was unintentional. This statement does not have to be verified.
Except when alleging non-receipt of an Office action or notice of allowance, it is not necessary to explain the circumstances that caused the unintentional delay. If the applicant did not receive the Office action or notice of allowance, this should be stated; no further explanation is necessary.
The USPTO will generally not question the applicant’s assertion that the delay in responding to an Office action or notice of allowance was unintentional, unless there is information in the record indicating that the delay was in fact intentional. An example of an intentional delay is when an applicant intentionally decides not to file a response or intent-to-use document because it no longer wishes to pursue registration of the mark, but later changes its mind and decides that it does wish to pursue registration.
The person signing the statement must have firsthand knowledge of the facts, but it is not necessary to specifically state in the petition that the signatory has firsthand knowledge. Generally, the USPTO will not question the signatory’s authority to sign the statement. However, any response to an Office action accompanying the petition (see TMEP §1714.01(a)(i)-(ii)) must be signed by a qualified practitioner, or by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) if the applicant is not represented by a qualified practitioner. 37 C.F.R. §§2.62(b) and 11.18(a). See TMEP §§611.03(b) and 712 et seq.. regarding signature of responses to Office actions, TMEP §602 regarding persons authorized to represent a party before the USPTO, and TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of legal entities.
See also TMEP §1705.07 regarding signature of petitions, and TMEP §611.01(c) regarding signature of documents filed through TEAS.
1714.01(f) Applicability of Unintentional Delay Standard
1714.01(f)(i) Situations Where the Unintentional Delay Standard Applies
The unintentional delay standard of Trademark Rule 2.66 applies only to the “failure” to respond to an examining attorney’s Office action or a notice of allowance. 15 U.S.C. §§1051(d)(4) and 1062(b). This includes the failure to meet minimum filing requirements for a statement of use or request for an extension of time to file a statement of use.
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The minimum filing requirements for a statement of use are listed in 37 C.F.R. §2.88(e): (1) the fee for at least a single class of goods or services; (2) at least one specimen or facsimile of the mark as used in commerce; and (3) a verification or declaration signed by the applicant stating that the mark is in use in commerce.
The minimum filing requirements for a request for extension of time to file a statement of use are: (1) a verified statement that the applicant has a continued bona fide intention to use the mark in commerce; (2) a specification of the goods or services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. TMEP §1108.04. See In re El Taurino Restaurant, Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996).
An applicant who fails to meet the minimum filing requirements for a statement of use or request for an extension of time to file a statement of use has, in effect, not filed the statement of use or extension request. Therefore, if the failure to meet the minimum filing requirements was unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66.
An applicant may also file a petition to revive under 37 C.F.R. §2.66 if the applicant timely files a notice of appeal from an examining attorney’s final refusal, but unintentionally fails to include the appeal fee required by 15 U.S.C. §1070.
1714.01(f)(ii) Situations Where the Unintentional Delay Standard Does Not Apply
The unintentional delay standard of Trademark Rule 2.66 applies only to the failure to respond to an examining attorney’s Office action or a notice of allowance. 15 U.S.C. §§1051(d)(4) and 1062(b).
Examining Attorney’s Holding of Abandonment for Failure to File Complete Response to Office Action - 37 C.F.R. §2.65(a)
The unintentional delay standard of 37 C.F.R. §2.66 does not apply to an incomplete response to an examining attorney’s Office action. Incomplete responses to examining attorneys’ Office actions are governed by 37 C.F.R. §2.65(b), which gives the examining attorney discretion to grant an applicant additional time to respond if the applicant’s failure to file a complete response is inadvertent. If the examining attorney holds the application abandoned for failure to file a complete response to an Office action, the applicant may file a petition to the Director to review the examining attorney’s action under 37 C.F.R. §2.146. The Director will reverse the examining attorney’s action only if there is clear procedural error (see TMEP §706.01) or abuse of discretion. See TMEP §1713.
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A request for reconsideration of a final refusal (see TMEP §§715.03 et seq.) that is not accompanied by a proper notice of appeal will be treated as an incomplete response to the final Office action. If the examining attorney denies the request for reconsideration, the time for filing a notice of appeal runs from the issuance date of the final action. TMEP §715.03(c). If the time for appeal has expired, the applicant may not file a petition to revive under 37 C.F.R. §2.66.
Examining Attorney’s Refusal of Registration on Ground That Applicant Did Not Meet Statutory Requirements Before Expiration of Deadline For Filing Statement of Use
If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use, as set forth in 37 C.F.R. §2.88(e), the applicant may file a petition to revive under 37 C.F.R. §2.66. However, the applicant may not file a petition to revive under 37 C.F.R. §2.66 if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(e), but the examining attorney later refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use (15 U.S.C. §1051(d); 37 C.F.R. §2.88(b)) on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use). The applicant may appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board. See TMEP §1109.16(a) regarding the requirements that must be met within the statutory period for filing the statement of use.
Goods/Services Omitted from Statement of Use or Request for Extension of Time to File a Statement of Use
If the applicant lists the goods/services in a statement of use or request for an extension of time to file a statement of use, and omits any goods or services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted. The applicant may not thereafter request that the goods/services be reinserted in the application. 37 C.F.R. §§2.88(i)(2) and 2.89(f); TMEP §§1108.02(d) and 1109.13. In these situations, the applicant may not file a petition under 37 C.F.R. §2.66 claiming unintentional delay in filing a statement of use or extension request for the omitted goods/services.
Registered Marks
Trademark Rule 2.66 applies only to abandoned applications, not to registered marks. If a registrant fails to timely respond to an Office action regarding a §8 affidavit, §71 affidavit, or §9 renewal application, the registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(3) and 2.146(a)(5) to waive a rule and accept a late response. However, the Director will waive a rule only in an extraordinary situation, where justice requires, and
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no other party is injured. The Director has no authority to waive a statutory requirement. See TMEP §1708 regarding the waiver of rules.
See TMEP §§1712.02 et seq. regarding requests to reinstate cancelled or expired registrations.
Dismissal of Appeal for Failure to File a Brief
An applicant cannot file a petition to revive under 37 C.F.R. §2.66 if an application is abandoned because the Board dismisses an appeal for failure to file a brief. In this situation, the applicant may file a motion with the Board to set aside the dismissal and accept a late-filed brief. See TBMP §1203.02(a). If the Board denies this motion, the applicant may file a petition to the Director under 37 C.F.R. §2.146, asking the Director to reverse the Board’s order. The petition must be filed within thirty days of the issuance date of the Board’s order. 37 C.F.R. §2.146(e)(2). The Director will reverse the Board’s action only if the Board clearly erred or abused its discretion.
1714.01(g) Request for Reconsideration of Denial of Petition to Revive
Under 37 C.F.R. §2.66(f), if a petition to revive is denied, the applicant may request reconsideration by: (1) filing the request for reconsideration within two months of the issuance date of the decision denying the petition; and (2) paying a second petition fee under 37 C.F.R. §2.6. See TMEP §1705.08.
1715 Letters of Protest in Pending Applications
A letter of protest is an informal procedure created by and existing at the discretion of the USPTO, whereby third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark. The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the ex parte examination process. See In re BPJ Enterprises, Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988); In re Pohn, 3 USPQ2d 1700 (Comm'r Pats. 1987).
Letters of protest are reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”) to determine whether the submitted information should be given to the examining attorney for consideration. To preserve the integrity and objectivity of the ex parte examination process, the letter of protest never becomes part of the application file and the Deputy Commissioner acts on the letter of protest without consulting with the examining attorney. The Deputy Commissioner considers only the record in the application and the evidence submitted by the protestor. BPJ Enterprises, 7 USPQ2d at 1378.
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If a third party attempts to contact an examining attorney regarding a letter of protest, the examining attorney will refer the third party to the Deputy Commissioner’s Office. If an examining attorney receives a letter of protest, the letter will be referred to the Deputy Commissioner’s Office for consideration. If the letter of protest is mistakenly entered in the record as a document received from the applicant, all evidence of that receipt will be expunged from the application record.
The Deputy Commissioner will grant a letter of protest filed before publication where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination. The Deputy Commissioner will grant a letter of protest filed after publication only if the protestor submits prima facie evidence supporting a refusal of registration, such that publication of the mark without consideration of the issue and evidence presented in the letter of protest was a clear error (see TMEP §706.01) by the USPTO. See TMEP §§1715.02 and 1715.03 et seq.
1715.01 Appropriate and Inappropriate Subjects to be Raised in Letter of Protest
It is inappropriate to use the letter of protest procedure to delay registration or to present purely adversarial arguments. The USPTO denies letters of protest that merely present adversarial arguments that registration should be refused. Adversarial arguments in letters of protest are not sent to the examining attorney. These objections to registration should be made in an opposition proceeding after publication or, in the case of the Supplemental Register, a cancellation proceeding after registration. The letter of protest procedure may not be used to circumvent the requirements for filing an opposition.
1715.01(a) Issues Appropriate as Subject of Letter of Protest
Appropriate subjects for letters of protest concern issues that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties. The following are examples of the most common areas of protest:
(1) A third party files an objection to the registration of a term because it is allegedly generic or descriptive. The objection must be accompanied by evidence of genericness or descriptiveness. The evidence should be objective, independent, and factual evidence that the examining attorney may use to support the suggested refusal. Personal opinions are subjective and may be self-serving, and are not forwarded to the examining attorney. If the letter of protest is granted, the examining attorney is informed that an objection to registration has been filed on the ground that the mark is generic or
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descriptive, and is given a copy of any factual evidence submitted with the letter of protest.
(2) A third party notifies the USPTO of the existence of a federally registered mark or prior-pending application and alleges that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. If the letter of protest is granted, the examining attorney is notified that an objection to the registration of the mark has been made on the ground of an alleged likelihood of confusion with a registered mark or prior- pending application, and is referred to the registration or application information as it appears in the automated records of the USPTO.
(3) A third party files a request that prosecution of an application be suspended because of pending litigation claiming infringement based on the applicant’s use of the applied-for mark. The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed. The litigation must involve a federally registered mark or prior-pending application of the protestor, and the protestor must allege that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. If the letter of protest is granted, the examining attorney is informed that a request for suspension has been received based on an alleged likelihood of confusion with a registered mark or prior-pending application that is the subject of pending litigation. Copies of the relevant pleadings are placed in the record.
(4) Registered marks are being used inappropriately in identifications of goods and services for particular applications. (See TMEP §1402.09.)
1715.01(b) Issues Inappropriate as Subject of Letter of Protest
The following are examples of issues that are not appropriate to raise in letters of protest:
(1) A third party claims earlier common-law use of a trademark but does not have a federal registration or previously filed pending application for that mark. The examining attorney can only consider registrations and prior-pending applications when determining likelihood of confusion. Earlier common-law use, state registrations, and other claims based on evidence other than federal registrations and prior- pending applications for federal registration are not appropriate for presentation to examining attorneys during ex parte examination.
(2) A third party claims that the applicant is not the proper owner of the mark. This issue requires proof that is beyond the scope of authority
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of an examining attorney to require during ex parte examination. In re Apple Computer, Inc., 57 USPQ2d 1823 (Comm'r Pats. 1998).
(3) Numerous third parties set forth the opinion that the mark should not register, but do not offer any evidence or legal reason to support the refusal. The letter of protest procedure should not be used as a means for expressing public opinion about a particular mark. The trademark registration process is governed by statutory laws and federal regulations. Public opinion may not be used to influence the application process; therefore, mass mailings by special-interest groups will not be made part of the record. Letters of protest that raise the same objection to registration submitted by five or more different parties will be considered a mass mailing.
1715.02 Letter of Protest Filed Before Publication
1715.02(a) Standard of Review for Letter of Protest Filed Before Publication
The Deputy Commissioner will grant a letter of protest filed before publication in all cases where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination. The letter of protest will be reviewed and decided upon even if the examining attorney has not yet taken a first action in the application that is the subject of the letter of protest. Upon granting a letter of protest, the Deputy Commissioner will forward the relevant evidence (but not the letter of protest itself) to the examining attorney. Letters of protest filed before publication will be denied if they merely present purely adversarial arguments, or are otherwise inappropriate.
A letter of protest filed before publication but reviewed by the Deputy Commissioner after publication will be reviewed under the pre-publication standard. See TMEP §1715.02(b).
A letter of protest filed before publication will be dismissed as moot when the issue raised has already been considered by the examining attorney unless: (1) the evidence provided by the protestor is significant additional evidence not currently of record in the application; or (2) the examining attorney clearly erred in his or her consideration of the issue and such error would result in the issuance of a registration in violation of the Trademark Act or applicable rules. See TMEP §706.01 regarding clear error.
1715.02(b) Action by Examining Attorney Before Publication
Under the new standard for granting a pre-publication letter of protest, the examining attorney is not required to issue a refusal as a result of the grant. The examining attorney is required only to consider the evidence and make an independent determination whether to issue the requirement or refusal
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requested in the letter of protest. The examining attorney need not inform the applicant that a letter of protest was granted unless he or she is issuing a refusal based upon the information provided with the letter of protest. The prosecution history of the application will reflect the grant of a letter of protest and a memorandum granting the protest and all relevant evidence will become part of the official record. If the examining attorney decides against issuing the requirement or refusal, a note in the in the “Notes-to-the-File” section of the record must be entered indicating that the evidence was reviewed.
Letters of Protest Filed Before Publication but Granted After Publication
In certain circumstances, a letter of protest filed before publication may not be reviewed by the Deputy Commissioner until after publication or during the period when the USPTO cannot withdraw the mark from publication. Such letters are reviewed under the pre-publication standard. If granted and referred to the examining attorney after publication, the examining attorney is not required to issue a refusal or requirement as a result of the grant. However, the examining attorney should consult with his or her managing attorney to determine whether a refusal or requirement is warranted.
If it is determined that a refusal or requirement must be made after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Director restore jurisdiction so that the examining attorney may take action on the application. See TMEP §1504.04. If a notice of opposition has been filed, the examining attorney must request that the Board remand the application so that the examining attorney may take the specified action. See TMEP §1504.05(a).
If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction over the application. 37 C.F.R. §2.84(a). If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and a statement of use has not been filed, before issuing an Office action, he or she must contact the ITU/Divisional Unit to cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use. See TMEP §1106.03.
If the letter of protest concerns a mark for which a statement of use has been filed, the examining attorney has jurisdiction over the application. If the examining attorney determines, after consulting with his or her managing attorney, that a refusal or requirement must be made, and no action has been taken on the statement of use, he or she should review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest. If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusal(s) or requirement(s) resulting from the letter of
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protest and incorporating by reference or restating any other outstanding refusal(s) or requirement(s).
1715.03 Letters of Protest Filed After Publication
1715.03(a) Standard of Review for Letters of Protest Filed After Publication
The procedure concerning letters of protest filed after publication remains unchanged. When a letter of protest is filed more than 30 days after the date of publication, the letter of protest will generally be denied as untimely. See TMEP §1715.03(b).
When a letter of protest is filed within 30 days after the date of publication, the letter of protest will be granted only where publication of the mark constituted clear error, because the evidence establishes a prima facie case for refusal of registration. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988). See TMEP §706.01 regarding clear error.
1715.03(b) Timely Filing of Letter of Protest
The most appropriate time for filing a letter of protest is before publication of a mark, because the purpose of the letter of protest is to assist the USPTO in the examination of an application for registration. However, circumstances may preclude filing during that period in certain cases. For example, the protestor may not be aware of an application until publication, or the evidence relevant to registrability may not be available until after publication.
Letters of protest filed more than 30 days after publication are generally denied as untimely, because a letter of protest filed after publication may delay the registration process significantly. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm’r Pats. 1988). This applies to all applications, including intent-to-use applications under 15 U.S.C. §1051(b). In re G. Heileman Brewing Co., Inc., 34 USPQ2d 1476 (Comm’r Pats. 1994).
Exceptions to the 30-day rule are made only in special circumstances, where the protestor could not earlier have obtained the information provided in the letter. In re Pohn, 3 USPQ2d 1700 (Comm’r Pats. 1987).
Filing a request for extension of time to oppose does not extend the 30-day deadline for filing a letter of protest.
The letter of protest procedure applies only to pending applications. The Director has no authority to cancel a registration in order to consider a letter of protest. Therefore, a letter of protest will be denied as untimely if the mark registers before issuance of the decision on the letter. Once the mark has registered, the protestor’s remedy is to file a petition to cancel with the Board.
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1715.03(c) Jurisdiction of Application When a Letter of Protest Is Granted After Publication
As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application. TMEP §1504.04. Therefore, upon granting a letter of protest filed after publication and before issuance of the registration or notice of allowance, the Commissioner for Trademarks will restore jurisdiction of the application to the examining attorney. The Commissioner also will restore jurisdiction when a letter of protest is granted and an extension of time to file an opposition has been filed. However, if an opposition has been instituted, the Board has jurisdiction over the application. TMEP §1504.02. Therefore, upon request, the Board will generally restore jurisdiction and remand the application to the examining attorney. See TBMP §215 for further information concerning the effect of a letter of protest when an opposition or request for extension of time to oppose has been filed.
If the letter of protest concerns a mark in an intent-to-use application where a notice of allowance has issued, the examining attorney has jurisdiction. 37 C.F.R. §2.84(a). If the Deputy Commissioner determines that the letter of protest should be granted and a statement of use has not been filed, the USPTO will cancel the notice of allowance and refund any fees paid for requests for an extension of time to file a statement of use. Formal restoration of jurisdiction by the Commissioner is unnecessary. TMEP §1106.03. Furthermore, if a statement of use has been filed, the examining attorney has jurisdiction and should review the statement of use and include any issues relevant to the statement of use in the Office action resulting from the letter of protest. If an Office action regarding the statement of use has already issued, the examining attorney must issue a supplemental action regarding the refusals or requirements resulting from the letter of protest and incorporating by reference or restating any other outstanding refusals or requirements.
1715.03(d) Action by Examining Attorney After Publication
If the USPTO grants a letter of protest filed after publication, the examining attorney must issue the refusal or requirement, except in unusual circumstances. The examining attorney should inform the applicant that a letter of protest was granted. If the notice of allowance was cancelled, the examining attorney should so inform the applicant. Before issuing the Office action with the refusal or requirement, the examining attorney must have the action reviewed by his or her managing attorney.
However, the granting of the letter of protest is not a final determination by the USPTO that registration must be refused. In unusual circumstances, the examining attorney may discover additional evidence that would justify approval of the application for registration after the grant of a letter of protest, or the applicant may overcome the refusal or satisfy the requirement. If a
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letter of protest is granted after publication and the examining attorney later determines that the mark should be approved for issuance of a registration or notice of allowance, the examining attorney must obtain permission from the Administrator for Trademark Policy and Procedure (“Administrator”) before approving the application for issue. After conferring with the Administrator, an appropriate note must be entered in the “Notes-to-the-File” section of the record.
1715.03(e) Letter of Protest Does Not Stay or Extend Opposition Period
Filing a letter of protest does not stay or extend the opposition period. Therefore, a party who files a letter of protest after publication should also file a timely request(s) for extension of time to oppose (15 U.S.C. §1063) with the Trademark Trial and Appeal Board. See TBMP §215 for further information. The Board will not suspend a potential opposer’s time to file a notice of opposition because a letter of protest has been filed. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).
1715.04 Information for Parties Filing Letter of Protest
Third parties who object to the registration of a mark in a pending application should never contact an examining attorney directly, either orally or in writing. Instead, they may submit a request in writing to the USPTO entitled “LETTER OF PROTEST,” protesting registration of a particular trademark based on factual, objective evidence that is relevant to the examination of the mark. If the objection applies to more than one pending application, separate letters should be sent for each application with relevant evidence accompanying each individual letter. Every letter of protest must include the name and address of the protestor in order for a response to be sent.
1715.04(a) Submitting Letter of Protest
Because letters of protest are not made an official part of the application record, it is important that they be properly designated and submitted to the USPTO. In order to insure their proper routing and processing, letters of protest should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy to the following fax number: 571-273-0032. This is the only fax number that may be used. Failure to submit the letter of protest properly may result in it being considered untimely.
Letters of protest with significant amounts of evidence should be sent via the United States Postal Service as first class mail, and addressed as follows:
Letter of Protest ATTN: Deputy Commissioner for Trademark Examination Policy 600 Dulany Street
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Alexandria, VA 22314-5793
Submissions relating to a letter of protest, including requests for copies of letters of protest (see TMEP §1715.05), should not include a request for a return receipt. If a protestor hand delivers the letter of protest or uses a private courier service, the letter of protest must be delivered to the attention of the Deputy Commissioner for Trademark Examination Policy at the Trademark Assistance Center, James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, and be clearly identified as a letter of protest.
1715.04(b) Tracking of Letters of Protest by the Protestor
A protestor will always receive a response from the Deputy Commissioner granting, denying, or holding moot the letter of protest, and should generally receive the response within 60 days of filing the letter. The protestor should monitor the application status by checking the TARR database at http://tarr.uspto.gov to determine whether an action granting the letter of protest has been taken. This information will be in the public record only if the letter of protest is granted. If a protestor has not received a response within six months of submitting a letter of protest, the protestor should contact the Office of the Deputy Commissioner to confirm receipt of the letter of protest.
Protestors should continue to monitor the status of the application being protested because the application may be approved for publication, republication, or issuance of a registration even after a letter of protest is granted. Ongoing monitoring will ensure protestors the opportunity to take other action (such as filing a notice of opposition) if the refusal or requirement raised as a result of the letter of protest is successfully overcome by the applicant. A protestor may file a second letter of protest after publication only if a substantially different basis for filing the letter of protest is raised or significant additional evidence is provided that clearly establishes a prima facie case for refusal of registration.
1715.05 Requests for Copies of Letters of Protest
Any party who requests a copy of a letter of protest should mail the request to the Office of the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451. All requests should be directed to the attention of the Deputy Commissioner for Trademark Examination Policy. Upon review of the letter of protest material, the Deputy Commissioner will usually forward a copy of the letter of protest and its attachment to the requester. The Deputy Commissioner will deny the request for a copy of the letter of protest only if the letter of protest itself or its attachments contain material that would potentially be exempt from disclosure under the Freedom of Information Act (“FOIA”). If, in the opinion of the Deputy Commissioner, any part of the letter of protest or its attachments should be exempt from disclosure under FOIA,
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the matter will be forwarded to the Office of General Counsel of the USPTO for further review.
1715.06 Recourse After Denial of Letter of Protest
If the Deputy Commissioner denies a letter of protest, the protestor may pursue remedies otherwise available, such as an opposition proceeding, if the protestor complies with all relevant requirements and deadlines. Filing a letter of protest does not stay or extend the time for filing a notice of opposition. TMEP §1715.03(b).
The protestor may not file a request for reconsideration of the denial of the letter of protest with the Deputy Commissioner, because the request would unduly delay final disposition of the application. In re BPJ Enterprises Ltd., 7 USPQ2d 1375 (Comm'r Pats. 1988). However, the protester may petition the Director to review the Deputy Commissioner’s decision to deny the letter of protest under 37 C.F.R. §2.146(a)(3).
The Deputy Commissioner has broad discretion in determining whether to grant a letter of protest. In any petition to review the denial of a letter of protest, the Deputy Commissioner’s action will be reversed only where there has been a clear error or abuse of this broad discretion. In re Pohn, 3 USPQ2d 1700, 1702 (Comm’r Pats. 1987).
The protestor may not present additional evidence with the petition. On petition, the Director will consider only the evidence that was properly before the Deputy Commissioner in acting on the letter of protest. In re BPJ Enterprises, supra.
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Chapter 1800 — Public Inquiries About Applications and Registrations
1801 Office Personnel May Not Express Opinion on Validity of Registered Trademark
1801.01 Office Personnel Cannot Testify
1802 Congressional Inquiries
1803 Freedom of Information Act Requests
1804 Inquiries from Members of the Press
1805 General Inquiries from the Public
1806 Contacts With Third Parties Regarding Ex Parte Matters
1807 United States Patent and Trademark Office World Wide Web Page
1801 Office Personnel May Not Express Opinion on Validity of Registered Trademark
A certificate of registration of a mark on the Principal Register is prima facie evidence of the validity of the registration. 15 U.S.C. §1057(b). Public policy demands that every employee of the United States Patent and Trademark Office (“USPTO”) refuse to express to any person any opinion as to the validity of any registered mark, except to the extent necessary to carry out inter partes proceedings at the Trademark Trial and Appeal Board in cancellation and similar proceedings authorized by law.
The question of the validity of a registered mark is otherwise exclusively a matter to be determined by a court. Members of the Trademark Examining Operation are cautioned to be especially wary of any inquiry from any person outside the USPTO, including an employee of another Government agency, the answer to which might indicate that a particular registration should not have been published or issued.
An employee of the USPTO, particularly a trademark examining attorney who examined an application, should not discuss or answer inquiries from any person outside the USPTO as to whether a certain registration or particular evidence was considered during the examination of the application, or
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whether a mark would have been published or registered if the registration or other evidence had been considered during the examination. Likewise, employees should not answer any inquiry concerning any entry in a registration file, including the extent of the field of search. The record of the file of a registration or inter partes proceeding before the Trademark Trial and Appeal Board must speak for itself.
Employees should refuse to discuss these matters with members of the public, and this refusal should not be considered discourteous. Practitioners should not make improper inquiries of members of the Trademark Examining Operation.
See TMEP §1806 regarding contacts with third parties about ex parte matters.
1801.01 Office Personnel Cannot Testify
37 C.F.R. Part 104.
Subpart A--General Provisions
37 C.F.R. §104.1 Definitions. Demand means a request, order, or subpoena for testimony or documents
for use in a legal proceeding. Director means the Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office (see §1.9(j)). Document means any record, paper, and other property held by the Office,
including without limitation, official letters, telegrams, memoranda, reports, studies, calendar and diary entries, maps, graphs, pamphlets, notes, charts, tabulations, analyses, statistical or informational accumulations, any kind of summaries of meetings and conversations, film impressions, magnetic tapes, and sound or mechanical reproductions.
Employee means any current or former officer or employee of the Office. Legal proceeding means any pretrial, trial, and posttrial stages of existing or
reasonably anticipated judicial or administrative actions, hearings, investigations, or similar proceedings before courts, commissions, boards or other tribunals, foreign or domestic. This phrase includes all phases of discovery as well as responses to formal or informal requests by attorneys or others involved in legal proceedings.
Office means the United States Patent and Trademark Office, including any operating unit in the United States Patent and Trademark Office, and its predecessors, the Patent Office and the Patent and Trademark Office.
Official business means the authorized business of the Office. General Counsel means the General Counsel of the Office.
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Testimony means a statement in any form, including personal appearances before a court or other legal tribunal, interviews, depositions, telephonic, televised, or videotaped statements or any responses given during discovery or similar proceedings, which response would involve more than the production of documents, including a declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.
United States means the Federal Government, its departments and agencies, individuals acting on behalf of the Federal Government, and parties to the extent they are represented by the United States.
37 C.F.R. §104.2 Address for mail and service; telephone number. (a) Mail under this part should be addressed to General Counsel, United States Patent and Trademark Office, P.O. Box 15667, Arlington, VA
22215. (b) Service by hand should be made during business hours to the Office of the General Counsel, 10B20, Madison Building East, 600 Dulany
Street, Alexandria, Virginia. (c) The Office of the General Counsel may be reached by telephone at 571-
272-7000 during business hours. 37 C.F.R. §104.3 Waiver of rules. In extraordinary situations, when the interest of justice requires, the General
Counsel may waive or suspend the rules of this part, sua sponte or on petition of an interested party to the Director, subject to such requirements as the General Counsel may impose. Any petition must be accompanied by a petition fee of $130.00.
37 C.F.R. §104.4 Relationship of this Part to the Federal Rules of Civil or Criminal Procedure.
Nothing in this part waives or limits any requirement under the Federal Rules of Civil or Criminal Procedure.
Subpart B--Service of Process
37 C.F.R. §104.11 Scope and purpose. (a) This subpart sets forth the procedures to be followed when a summons
and complaint is served on the Office or on the Director or an employee in his or her official capacity.
(b) This subpart is intended, and should be construed, to ensure the efficient administration of the Office and not to impede any legal proceeding.
(c) This subpart does not apply to subpoenas, the procedures for which are set out in subpart C.
(d) This subpart does not apply to service of process made on an employee personally on matters not related to official business of the Office or to the official responsibilities of the employee.
37 C.F.R. §104.12 Acceptance of service of process. (a) Any summons and complaint to be served in person or by registered or
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certified mail or as otherwise authorized by law on the Office, on the Director, or on an employee in his or her official capacity, shall be served as indicated in §104.2.
(b) Any employee of the Office served with a summons and complaint shall immediately notify, and shall deliver the summons and complaint to, the Office of the General Counsel.
(c) Any employee receiving a summons and complaint shall note on the summons and complaint the date, hour, and place of service and whether service was by hand or by mail.
(d) When a legal proceeding is brought to hold an employee personally liable in connection with an action taken in the conduct of official business, rather than liable in an official capacity, the employee by law is to be served personally with process. See Fed. R. Civ. P. 4(e). An employee sued personally for an action taken in the conduct of official business shall immediately notify and deliver a copy of the summons and complaint to the General Counsel.
(e) An employee sued personally in connection with official business may be represented by the Department of Justice at its discretion (28 CFR 50.15 and 50.16).
(f) The Office will only accept service of process for an employee in the employee’s official capacity.
Subpart C--Employee Testimony and Production of Documents in Legal Proceedings
37 C.F.R. §104.21 Scope and purpose. (a) This subpart sets forth the policies and procedures of the Office regarding
the testimony of employees as witnesses in legal proceedings and the production or disclosure of information contained in Office documents for use in legal proceedings pursuant to a demand.
(b) Exceptions. This subpart does not apply to any legal proceeding in which:
(1) An employee is to testify regarding facts or events that are unrelated to official business; or
(2) A former employee is to testify as an expert in connection with a particular matter in which the former employee did not participate personally while at the Office.
37 C.F.R. §104.22 Demand for testimony or production of documents. (a) Whenever a demand for testimony or for the production of documents is
made upon an employee, the employee shall immediately notify the Office of the General Counsel at the telephone number or addresses in §104.2 and make arrangements to send the subpoena to the General Counsel promptly.
(b) An employee may not give testimony, produce documents, or answer inquiries from a person not employed by the Office regarding testimony or
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documents subject to a demand or a potential demand under the provisions of this subpart without the approval of the General Counsel. The General Counsel may authorize the provision of certified copies not otherwise available under Part 1 of this title subject to payment of applicable fees under §1.19.
(c)(1) Demand for testimony or documents. A demand for the testimony of an employee under this subpart shall be addressed to the General Counsel as indicated in §104.2.
(2) Subpoenas. A subpoena for employee testimony or for a document shall be served in accordance with the Federal Rules of Civil or Criminal Procedure or applicable state procedure, and a copy of the subpoena shall be sent to the General Counsel as indicated in §104.2.
(3) Affidavits. Except when the United States is a party, every demand shall be accompanied by an affidavit or declaration under 28 U.S.C. 1746 or 35 U.S.C. 25(b) setting forth the title of the legal proceeding, the forum, the requesting party’s interest in the legal proceeding, the reason for the demand, a showing that the desired testimony or document is not reasonably available from any other source, and, if testimony is requested, the intended use of the testimony, a general summary of the desired testimony, and a showing that no document could be provided and used in lieu of testimony.
(d) Failure of the attorney to cooperate in good faith to enable the General Counsel to make an informed determination under this subpart may serve as a basis for a determination not to comply with the demand.
(e) A determination under this subpart to comply or not to comply with a demand is not a waiver or an assertion of any other ground for noncompliance, including privilege, lack of relevance, or technical deficiency.
(f) Noncompliance. If the General Counsel makes a determination not to comply, he or she will seek Department of Justice representation for the employee and will attempt to have the subpoena modified or quashed. If Department of Justice representation cannot be arranged, the employee should appear at the time and place set forth in the subpoena. In such a case, the employee should produce a copy of these rules and state that the General Counsel has advised the employee not to provide the requested testimony nor to produce the requested document. If a legal tribunal rules that the demand in the subpoena must be complied with, the employee shall respectfully decline to comply with the demand....
37 C.F.R. §104.23 Expert or opinion testimony. (a)(1) If the General Counsel authorizes an employee to give testimony in a
legal proceeding not involving the United States, the testimony, if otherwise proper, shall be limited to facts within the personal knowledge of the employee. Employees, with or without compensation, shall not provide expert testimony in any legal proceedings regarding Office information, subjects, or activities except on behalf of the United States or a party represented by the United States Department of Justice.
(2) The General Counsel may authorize an employee to appear and give the
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expert or opinion testimony upon the requester showing, pursuant to §104.3 of this part, that exceptional circumstances warrant such testimony and that the anticipated testimony will not be adverse to the interest of the Office or the United States.
(b)(1) If, while testifying in any legal proceeding, an employee is asked for expert or opinion testimony regarding Office information, subjects, or activities, which testimony has not been approved in advance in writing in accordance with the regulations in this subpart, the witness shall:
(i) Respectfully decline to answer on the grounds that such expert or opinion testimony is forbidden by this subpart;
(ii) Request an opportunity to consult with the General Counsel before giving such testimony; and
(iii) Explain that upon such consultation, approval for such testimony may be provided.
(2) If the tribunal conducting the proceeding then orders the employee to provide expert or opinion testimony regarding Office information, subjects, or activities without the opportunity to consult with the General Counsel, the employee shall respectfully refuse to provide such testimony....
(c) If an employee is unaware of the regulations in this subpart and provides expert or opinion testimony regarding Office information, subjects, or activities in a legal proceeding without the aforementioned consultation, the employee shall, as soon after testifying as possible, inform the General Counsel that such testimony was given and provide a written summary of the expert or opinion testimony provided.
(d) Proceeding where the United States is a party. In a proceeding in which the United States is a party or is representing a party, an employee may not testify as an expert or opinion witness for any party other than the United States.
37 C.F.R. §104.24 Demands or requests in legal proceedings for records protected by confidentiality statutes.
Demands in legal proceedings for the production of records, or for the testimony of employees regarding information protected by the confidentiality provisions of the Patent Act (35 U.S.C. 122), the Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or any other confidentiality statute, must satisfy the requirements for disclosure set forth in those statutes and associated rules before the records may be provided or testimony given.
Subpart D--Employee Indemnification
37 C.F.R. §104.31 Scope. The procedure in this subpart shall be followed if a civil action or proceeding
is brought, in any court, against an employee (including the employee’s estate) for personal injury, loss of property, or death, resulting from the employee’s activities while acting within the scope of the employee’s office or employment. When the employee is incapacitated or deceased, actions required of an
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employee should be performed by the employee’s executor, administrator, or comparable legal representative.
37 C.F.R. §104.32 Procedure for requesting indemnification. (a) After being served with process or pleadings in such an action or
proceeding, the employee shall within five (5) calendar days of receipt, deliver to the General Counsel all such process and pleadings or an attested true copy thereof, together with a fully detailed report of the circumstances of the incident giving rise to the court action or proceeding.
(b)(1) An employee may request indemnification to satisfy a verdict, judgment, or award entered against that employee only if the employee has timely satisfied the requirements of paragraph (a) of this section.
(2) No request for indemnification will be considered unless the employee has submitted a written request through the employee’s supervisory chain to the General Counsel with:
(i) Appropriate documentation, including copies of the verdict, judgment, appeal bond, award, or settlement proposal;
(ii) The employee’s explanation of how the employee was acting within the scope of the employee’s employment; and
(iii) The employee’s statement of whether the employee has insurance or any other source of indemnification.
Subpart E--Tort Claims
37 C.F.R. §104.41 Procedure for filing claims. Administrative claims against the Office filed pursuant to the administrative
claims provision of the Federal Tort Claims Act (28 U.S.C. 2672) and the corresponding Department of Justice regulations (28 CFR Part 14) shall be filed with the General Counsel as indicated in §104.2.
37 C.F.R. §104.42 Finality of settlement or denial of claims. Only a decision of the Director or the General Counsel regarding settlement
or denial of any claim under this subpart may be considered final for the purpose of judicial review.
It is the policy of the USPTO that its employees, including trademark examining attorneys, will not appear as witnesses or give testimony in legal proceedings, except under the conditions specified in 37 C.F.R. Part 104. Any employee who testifies contrary to this policy will be dismissed or removed.
Whenever an employee of the USPTO, including a trademark examining attorney, is asked to testify or receives a subpoena, the employee shall immediately notify the Office of the General Counsel. Inquiries requesting testimony should also be referred immediately to the Office of the General Counsel.
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Trademark examining attorneys and other USPTO employees who perform or assist in the performance of quasi-judicial functions, are forbidden to testify as experts or to express opinions as to the validity of any registration.
Any individual desiring the testimony of an employee of the USPTO, including the testimony of a trademark examining attorney or other quasi-judicial employee, must comply with the provisions of 37 C.F.R. Part 104.
A request for testimony of an employee of the USPTO should be made to the Office of the General Counsel at least ten working days prior to the date of the expected testimony.
If an employee is authorized to testify, the employee will be limited to testifying about facts within the employee’s personal knowledge. Employees are prohibited from giving expert or opinion testimony. Fischer & Porter Co. v. Corning Glass Works, 61 F.R.D. 321, 181 USPQ 329 (E.D. Pa. 1974). Likewise, employees are prohibited from answering hypothetical or speculative questions. Shaffer Tool Works v. Joy Mfg. Co., 167 USPQ 170 (S.D. Tex. 1970) (deposition of examiner should be limited to matters of fact and must not go into hypothetical or speculative areas or the bases, reasons, mental processes, analyses, or conclusions of the examiner); In re Mayewsky, 162 USPQ 86, 89 (E.D. Va. 1969) (deposition of an examiner must be restricted to relevant matters of fact and must avoid any hypothetical or speculative questions or conclusions). Employees will not be permitted to give testimony with respect to subject matter that is privileged. Several court decisions limit testimony with respect to quasi-judicial functions performed by employees. U.S. v. Morgan, 313 U.S. 409, 422 (1941) (improper to inquire into mental processes of quasi-judicial officer or to examine the manner and extent to which the officer considered an administrative record); Western Electric Co., Inc. v. Piezo Technology, Inc., 860 F.2d 428, 8 USPQ2d 1853 (Fed. Cir. 1988) (patent examiner may not be compelled to answer questions that probe the examiner’s technical knowledge of the subject matter of a patent); In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988) (technical or scientific qualifications of examiners-in-chief are not legally relevant in appeal under 35 U.S.C. §134 since board members need not be skilled in the art to render obviousness decision); McCulloch Gas Processing Co. v. Department of Energy, 650 F.2d 1216, 1229 (Temp. Emer. Ct. App. 1981) (discovery of degree of expertise of individuals performing governmental functions not permitted); Lange v. Commissioner, 352 F. Supp. 116, 176 USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in- chief not relevant in Sec. 145 action).
In view of the discussion above, if an employee is authorized to testify in connection with the employee’s involvement or assistance in a quasi-judicial proceeding that took place before the USPTO, the employee will not be permitted to give testimony in response to questions that seek:
(1) Information about that employee’s:
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(A) Background.
(B) Expertise.
(C) Qualifications to examine or otherwise consider a particular patent or trademark application.
(D) Usual practice or whether the employee followed a procedure set out in any USPTO manual of practice (including the MPEP or TMEP) in a particular case.
(E) Consultation with another USPTO employee.
(F) Understanding of:
(i) A patented invention, an invention sought to be patented, or patent application, patent, reexamination or interference file.
(ii) Prior art.
(iii) Registered subject matter, subject matter sought to be registered, or a trademark application, registration, opposition, cancellation, interference or concurrent use file.
(iv) Any USPTO manual of practice.
(v) USPTO regulations.
(vi) Patent, trademark, or other law.
(vii) The responsibilities of another USPTO employee.
(G) Reliance on particular facts or arguments.
(2) To inquire into the manner in and extent to which the employee considered or studied material in performing the quasi-judicial function.
(3) To inquire into the bases, reasons, mental processes, analyses, or conclusions of that USPTO employee in performing the quasi-judicial function.
Any request for testimony addressed or delivered to the Office of the General Counsel must comply with 37 C.F.R. §104.22(c). All requests must be in writing. The need for a subpoena may be obviated where the request complies with 37 C.F.R. §104.22(c) only if the party requesting the testimony meets the following conditions:
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(1) The party requesting the testimony identifies the civil action or other legal proceeding for which the testimony is being taken. The identification shall include:
(A) the style of the case,
(B) the civil action number,
(C) the district in which the civil action is pending,
(D) the judge assigned to the case, and
(E) the name, address, and telephone number of counsel for all parties in the civil action.
(2) The party agrees not to ask questions seeking information that is precluded by 37 C.F.R. §104.23.
(3) The party must comply with applicable provisions of the Federal Rules of Civil Procedure, including Rule 30, and give ten working days notice to the Office of the General Counsel prior to the date a deposition is desired. Fifteen working days notice is required for any deposition that is desired to be taken between November 15 and January 15.
(4) The party agrees to notice the deposition at a place convenient to the USPTO. The Conference Room in the Office of the General Counsel is deemed to be a place convenient to the USPTO.
(5) The party agrees to supply a copy of the transcript of the deposition to the USPTO for its records.
Absent a written agreement meeting the conditions specified in paragraphs (1) through (5), a party must comply with the specific terms of 37 C.F.R. §104.22(c), and the USPTO will not permit a deposition without issuance of a subpoena.
See notice at 1099 TMOG 44 (February 28, 1989).
1802 Congressional Inquiries
Inquiries from congressional offices should be directed to the Office of Congressional Relations in the Office of External Affairs at (571) 272-9300.
1803 Freedom of Information Act Requests
Freedom of Information Act (“FOIA”) requests should be sent by e-mail to efoia@uspto.gov, or by mail to the following address:
USPTO FOIA Officer
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United States Patent and Trademark Office P.O. Box 1450 Alexandria, Virginia 22313-1450
Such requests may be addressed to the attention of the Freedom of Information Act/Privacy Act Officer.
Copies of final agency decisions of the USPTO and our most frequently requested FOIA documents are available on the USPTO website at http://www.uspto.gov.
1804 Inquiries from Members of the Press
Inquiries from members of the press should be directed to the Office of Public Affairs, at (571) 272-8400.
1805 General Inquiries from the Public
USPTO employees will gladly answer questions about the procedures for obtaining and maintaining a registration. For general information, callers may telephone the Trademark Assistance Center at (571) 272-9250 or (800) 786- 9199. See TMEP §108.02.
However, USPTO employees cannot:
• Comment on the validity of registered marks (see TMEP §1801);
• Provide a legal opinion on whether a particular mark or type of mark is eligible for registration; or
• Offer legal advice or opinions about common law rights in a mark, state registrations, or trademark infringement claims.
For a legal opinion about a trademark matter, a party must consult a private trademark attorney. The USPTO cannot aid in the selection of an attorney. 37 C.F.R. §2.11. Private trademark attorneys are generally listed in the yellow pages under the heading “Lawyers, Patent and Trademark,” or “Lawyers, Trademark.”
See TMEP §104 regarding trademark searches.
See TMEP §1806 regarding contacts with third parties about ex parte matters.
1806 Contacts With Third Parties Regarding Ex Parte Matters
An examining attorney or other USPTO employee may not discuss the merits of any particular application or registration with a third party. If a third party attempts to contact an examining attorney about an ex parte matter, either
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orally or in writing, the examining attorney should refer the third party to the Office of the Deputy Commissioner for Trademark Examination Policy. See TMEP §§1715 et seq. regarding letters of protest.
An examining attorney may contact those in the relevant trade to obtain generally available information about an industry and its marketing practices, but the inquiry must be limited to eliciting factual information. It is inappropriate to discuss or request opinions about the registrability of a particular mark. See In re Lutron Electronics Co. Inc., 8 USPQ2d 1701 (Comm'r Pats. 1988).
1807 United States Patent and Trademark Office World Wide Web Page
The USPTO has a website at www.uspto.gov that provides access to a wide variety of information about trademarks and offers electronic filing of trademark applications and other trademark documents. See TMEP §102 for further information.
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Chapter 1900 Madrid Protocol
1901 Overview of the Madrid System of International Registration
1902 International Application Originating From the United States
1902.01 Who Can File
1902.02 Minimum Requirements for Date of Receipt of International Application in USPTO
1902.02(a) Form of International Application
1902.02(b) Basic Application or Registration Number
1902.02(c) Name and Address of Applicant
1902.02(d) Reproduction (Drawing) of Mark
1902.02(e) Color Claim
1902.02(f) Identification of Goods/Services
1902.02(g) Classification in International Applications
1902.02(g)(i) Reclassifying Goods/Services
1902.02(g)(ii) United States Classes A, B and 200
1902.02(g)(iii) Kits and Gift Baskets
1902.02(h) List of Contracting Parties
1902.02(i) Fees
1902.02(j) Statement of Entitlement
1902.02(k) Description of Mark
1902.02(l) Indication of Type of Mark
1902.02(m) E-Mail Address
1902.03 Certification of International Application by USPTO
1902.03(a) Petition to Review Refusal to Certify
1902.04 Date of International Registration
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1902.05 IB Requirements for Complete International Application
1902.06 Examination of Application by IB
1902.07 Irregularities in International Application
1902.07(a) Irregularities that Must Be Remedied by the USPTO
1902.07(b) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB
1902.07(b)(i) Fee Irregularities
1902.07(c) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO
1902.07(c)(i) Classification of Goods/Services
1902.07(c)(ii) Identification of Goods/Services
1902.07(d) Other Irregularities that Must Be Remedied By Applicant – Applicant May Respond Directly to the IB or Through the USPTO
1902.07(e) Filing Response Directly With the IB
1902.07(f) Responding to Notice of Irregularity Through the USPTO
1902.08 Subsequent Designation - Request for Extension of Protection Subsequent to International Registration
1902.08(a) USPTO Requirements
1902.08(b) Form for Filing Subsequent Designation Through the USPTO
1902.08(c) Fees for Subsequent Designation
1902.08(d) IB Requirements for Subsequent Designation
1902.08(e) Irregularities in Subsequent Designation
1902.09 Dependence and “Central Attack”: Restriction, Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years
1902.10 Transformation When the USPTO is the Office of Origin
1902.11 Representative
1902.12 USPTO Must Notify IB of Division or Merger of Basic Application or Registration
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1903 Payment of Fees
1903.01 Payment of USPTO Fees
1903.02 Payment of International Fees
1904 Request for Extension of Protection of International Registration to the United States
1904.01 Filing Request for Extension of Protection to United States
1904.01(a) Section 66(a) Basis
1904.01(b) Filing Date
1904.01(c) Declaration of Intent to Use Required
1904.01(d) Use Not Required
1904.01(e) Priority
1904.01(f) Filing Fee
1904.01(g) Constructive Use
1904.01(h) Cannot be Based on USPTO Basic Application or Registration
1904.02 Examination of Request for Extension of Protection to the United States
1904.02(a) Examined as Regular Application
1904.02(b) Examination of Classification of Goods/Services in §66(a) Applications
1904.02(c) Examination of Identification of Goods/Services in §66(a) Applications
1904.02(c)(i) Acceptable Identifications of Goods/Services
1904.02(c)(ii) Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class
1904.02(c)(iii) Indefinite Identification of Goods/Services that Does not Include any Goods/Services Within the Class
1904.02(c)(iv) Examination of Proposed Amendments and Issuance of Final Requirements For an Acceptable Identification
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1904.02(c)(v) Effect of Indicated Classes – No Precedential Value on Later-Filed Applications
1904.02(d) Certification and Collective Marks
1904.02(e) Corrections and Limitations to the International Registration
1904.02(e)(i) Corrections
1904.02(e)(ii) Limitations
1904.02(e)(iii) Limitations vs. Amendments
1904.02(f) Mark Must Be Registrable on Principal Register
1904.02(g) Refusal Must Be Made Within 18 Months
1904.02(h) Issuing Office Actions
1904.02(i) Correspondence Address
1904.02(j) Mark Cannot Be Amended
1904.02(k) Drawings and Descriptions of the Mark
1904.02(l) Jurisdiction
1904.03 Notice of Refusal
1904.03(a) Notice Must be Sent Within 18 Months
1904.03(b) Requirements for Notice of Refusal
1904.03(c) §66(a) Applicant Must Respond to Notification of Refusal
1904.03(d) Refusal Pertaining to Less Than All the Goods/Services
1904.03(e) Confirmation or Withdrawal of Provisional Refusal
1904.03(f) Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection
1904.03(g) Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection
1904.04 Opposition
1904.05 Certificate of Extension of Protection
1904.06 Assignment of Extension of Protection to the United States
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1904.07 Invalidation of Protection in United States
1904.08 Cancellation of International Registration By IB
1904.09 Transformation to Application Under §1 or §44
1904.09(a) Requirements for Transformation
1904.09(b) Examination of Transformed Application
1904.10 Affidavits of Use or Excusable Nonuse Required
1904.11 Incontestability
1904.12 Replacement
1904.13 Amendment and Correction of Registered Extension of Protection to the United States
1904.13(a) Limited Amendments to Registered Extension of Protection
1904.13(b) Corrections to Registered Extensions of Protection
1904.14 Notification of Correction in the International Register with Respect to Registered Extension of Protection
1904.15 Notification of Limitation of the List of Goods/Services with Respect to Registered Extension of Protection
1905 Renewal of International Registrations
1906 Communications With International Bureau Regarding International Registrations
1906.01 Recording Changes in International Register
1906.01(a) Change in Ownership of International Registration
1906.01(a)(i) Requirements for Submitting Changes in Ownership of International Registration Through the USPTO
1906.01(a)(ii) International Fees for Recording Changes of Ownership of International Registration
1906.01(a)(iii) Effect of Change of Ownership of International Registration
1906.01(a)(iv) Dividing an International Registration After Change of Ownership With Respect to Some But Not All of the Goods/Services
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1906.01(b) Restriction of Holder’s Rights of Disposal
1906.01(c) Change of the Holder’s Name or Address
1906.01(d) Change of Name or Address of Representative
1906.01(e) Limitation, Renunciation, or Cancellation of International Registration
1906.01(f) Correction of Errors in International Registration
1906.01(g) Merger of International Registrations
1906.01(h) License
1906.01(i) Changes That Cannot Be Made to International Registration
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) is an international treaty that allows a trademark owner to seek registration in any of the countries or intergovernmental organizations that have joined the Madrid Protocol by submitting a single application, called an international application. The international registration system is administered by the International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”), in Geneva, Switzerland.
The Madrid Protocol became effective in the United States on November 2, 2003. The Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”) amended the Trademark Act to provide that: (1) the owner of a United States application and/or registration may seek protection of its mark in any of the countries or intergovernmental organizations party to the Madrid Protocol by submitting a single international application to the IB through the United States Patent and Trademark Office (“USPTO”); and (2) the holder of an international registration may request an extension of protection of the international registration to the United States. A notice of final rulemaking amending the Trademark Rules of Practice to incorporate the MPIA was published at 68 Fed. Reg. 55748 (Sept. 26, 2003).
The Madrid Protocol, Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”), Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (“Guide to International Registration”), Administrative Instructions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto (“Admin. Instrs.”) are available on the IB’s website, at http://www.wipo.int/madrid/en/. The Common Regs. are the procedures agreed to by the parties to the Madrid Protocol regarding the
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administration of the Madrid Protocol, pursuant to Madrid Protocol Article (“Article”) 10(2)(iii).
References below to the Common Regs., Guide to the International Registration, and Admin. Instrs. refer to the September 2008 editions.
1901 Overview of the Madrid System of International Registration
The Madrid system of international registration is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. The United States is party only to the Protocol, not to the Agreement.
The Madrid system is administered by the IB. To apply for an international registration under the Madrid Protocol, an applicant must be a national of, be domiciled in, or have a real and effective industrial or commercial establishment in one of the countries or intergovernmental organizations that are members of the Protocol (“Contracting Parties”). The application must be based on one or more trademark application(s) filed in, or registration(s) issued by, the trademark office of one of the Contracting Parties (“basic application(s)” or “basic registration(s)”). The international application must be for the same mark and include a list of goods/services that is identical to or narrower than the list of goods/services in the basic application and/or registration. The international application must designate one or more Contracting Parties in which an extension of protection of the international registration is sought.
The applicant must submit the international application through the trademark office of the Contracting Party in which the basic application and/or registration is held (“Office of Origin”). The Office of Origin must certify that the information in the international application corresponds with the information in the basic application and/or registration, and then forward the international application to the IB. If the IB receives the international application within two months of the date of receipt in the Office of Origin, the date of the international registration is the date of receipt in the Office of Origin. If the IB does not receive the international application within two months of the date it was received by the Office of Origin, the date of the international registration is the date on which the international application is received by the IB. See TMEP §1902.04 for information regarding filing requirements that may affect the international registration date.
The international registration is dependent on the basic application and/or registration for five years from the international registration date. If the basic application and/or registration is abandoned, cancelled, or expired, in whole
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or in part, during this five-year period, the IB will cancel the international registration accordingly. See TMEP §1902.09 for further information.
The holder of an international registration may request protection in additional Contracting Parties by submitting a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of the registration to additional Contracting Parties.
Each Contracting Party designated in an international application or subsequent designation will examine the request for extension of protection as a national trademark application under its domestic laws. Under Article 5 and Common Regs. 16 and 17, there are strict time limits (a maximum of 18 months) for the trademark office of a Contracting Party to refuse a request for extension of protection. If the Contracting Party does not notify the IB of a refusal within this time period, the mark is automatically protected. However, the extension of protection may be invalidated in accordance with the same procedures for invalidating a national registration, e.g., by cancellation.
The Madrid Protocol may apply to the USPTO in three ways:
• Office of Origin. The USPTO is the Office of Origin if an international application and/or registration is based on an application pending in or a registration issued by the USPTO. Common Reg. 1(xxvi). See TMEP §§1902 et seq.
• Office of a Designated Contracting Party. The USPTO is the office of a designated Contracting Party if the holder of an international registration requests an extension of protection of that registration to the United States. Common Regs. 1(xvi) and (xxv). See TMEP §§1904 et seq.
• Office of the Contracting Party of the Holder. If the holder of an international registration is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States, the holder can file certain requests with the IB through the USPTO, such as requests to record changes of ownership (see TMEP §1906.01(a)(i)) and restrictions on the holder’s right to dispose of an international registration (see TMEP §1906.01(b)). The expression “Contracting Party of the Holder” includes the “Office of Origin,” as well as any other Contracting Party in which a holder is a national, is domiciled, or has a real and effective industrial or commercial establishment. Common Reg. 1(xxvibis).
1902 International Application Originating From the United States
This section covers international applications and registrations originating from the United States, i.e., international registrations based on an application
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pending in the USPTO and/or a registration issued by the USPTO. See TMEP §§1904 et seq. for information about requests for extension of protection to the United States by the holder of an international registration originating in another country. International applications originating from the United States are processed by the USPTO’s Madrid Processing Unit (“MPU”).
1902.01 Who Can File
Under 15 U.S.C. §1141a and Article 2(1), a qualified owner of a basic application pending in the USPTO or a qualified owner of a basic registration issued by the USPTO may file an application for international registration through the USPTO. To qualify, the international applicant must:
(1) Be a national of the United States;
(2) Be domiciled in the United States; or
(3) Have a real and effective industrial or commercial establishment in the United States.
If joint applicants file, each applicant must meet at least one of these requirements. Common Reg. 8(2).
1902.02 Minimum Requirements for Date of Receipt of International Application in USPTO
The minimum requirements for accordance of a date of receipt of an international application in the USPTO are set forth in 37 C.F.R. §7.11.
§7.11 Requirements for international application originating from the United States.
(a) The Office will grant a date of receipt to an international application that is either filed through TEAS, or typed on the official paper form issued by the International Bureau. The international application must include all of the following:
(1) The filing date and serial number of the basic application and/or the registration date and registration number of the basic registration;
(2) The name and entity of the international applicant that is identical to the name and entity of the applicant or registrant in the basic application or basic registration, and the applicant’s current address;
(3) A reproduction of the mark that is the same as the mark in the basic application and/or registration and that meets the requirements of §2.52 of this title.
(i) If the mark in the basic application and/or registration is depicted in black and white and the basic application or registration does not include a color claim, the reproduction of the mark in the international application must be black and
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white. (ii) If the mark in the basic application or registration is depicted in black and
white and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark.
(iii) If the mark in the basic application and/or registration is depicted in color, the reproduction of the mark in the international application must be in color.
(iv) If the international application is filed on paper, the mark must be no more than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide, and must appear in the box designated by the International Bureau on the International Bureau's official form;
(4) A color claim as set out in §7.12, if appropriate; (5) A description of the mark that is the same as the description of the mark in
the basic application or registration, as appropriate; (6) An indication of the type of mark if the mark in the basic application and/or
registration is a three-dimensional mark, a sound mark, a collective mark or a certification mark;
(7) A list of the goods and/or services that is identical to or narrower than the list of goods and/or services in each claimed basic application or registration and classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
(8) A list of the designated Contracting Parties. If the goods and/or services in the international application are not the same for each designated Contracting Party, the application must list the goods and/or services in the international application that pertain to each designated Contracting Party;
(9) The certification fee required by §7.6; (10) If the application is filed through TEAS, the international application fees
for all classes, and the fees for all designated Contracting Parties identified in the international application (see §7.7);
(11) A statement that the applicant is entitled to file an international application in the Office, specifying that applicant: is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where an applicant's address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment; and
(12) If the international application is filed through TEAS, an e-mail address for receipt of correspondence from the Office.
(b) For requirements for certification, see §7.13.
1902.02(a) Form of International Application
Trademark Rule 7.11(a), 37 C.F.R. §7.11(a), requires that an international application be filed either through the Trademark Electronic Application System (“TEAS”), or on the official paper form issued by the IB.
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TEAS Form
TEAS will require the applicant to select between two different forms, a prepopulated form or a free-text form. The applicant should use the prepopulated form if: (1) the international application is based on a single basic application or registration; and (2) applicant’s changes to the international application are limited to:
• Narrowing the list of goods or services;
• Changing the classification;
• Changing the applicant’s address; and/or
• Attaching a color reproduction of the mark where the mark in the basic application or registration is in black and white with a color claim (see TMEP §§1902.02(d) and 1902.02 (e)).
The prepopulated form will automatically display the exact information that is in the USPTO database for one specific U.S. serial number or registration number. However, if the international application is based on a newly filed application that has not yet been uploaded into the USPTO’s automated records, the TEAS form will instruct the applicant to either wait for the USPTO to upload the data or use the free-text form. It normally takes 48 to 72 hours for the USPTO to upload a newly filed application. To determine whether the basic application data has been entered, the applicant should check the Trademark Applications and Registrations Retrieval (“TARR”) database on the USPTO website at: http://tarr.uspto.gov.
The applicant should use the free-text form if the applicant wishes to change other data in the international application, or if the international application is based on more than one basic application and/or registration.
Paper Form
When filing on paper, applicants must submit the official international application form issued by the IB, the MM2 form, to the USPTO. This form is available on the IB website at http://www.wipo.int/madrid/en/. The IB will not accept paper applications that are not presented on the official IB form. Article 3(1); Common Regs. 9(2)(a) and 11(4)(a)(i); Madrid Admin. Instr. §2. The form cannot be handwritten. Madrid Admin. Instr. §6(a). The applicant should complete the MM2 form online, print the completed form, and submit it to the USPTO by mail.
The applicant may mail the completed paper application form to the following address, using the First Class Mail Service of the United States Postal Service (“USPS”):
Madrid Processing Unit
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600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, the international applicant may deliver the application by hand or courier to the Trademark Assistance Center (“TAC”), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. 37 C.F.R. §7.4(c). TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
If an international application is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the application was received in the USPTO on the day it was deposited with the USPS, provided that the applicant complies with the requirements of 37 C.F.R. §2.198 for correspondence sent by Express Mail. See TMEP §305.03 regarding Express Mail. The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 do not apply to international applications. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).
The IB’s Guide to International Registration contains instructions for completing the international application form.
The applicant should include a self-addressed, stamped postcard with the international application. Upon receipt of the international application, the USPTO will place a control number and a label indicating the receipt date on the documents and return the postcard to the applicant. The applicant should reference the control number whenever contacting the USPTO about the application.
International applications cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(1).
1902.02(b) Basic Application or Registration Number
The international application must include the filing date and serial number of the basic application, or the registration date and registration number of the basic registration. 37 C.F.R. §7.11(a)(1). The USPTO will not certify the international application if this information is incorrect or is omitted.
The international application must be based on an active application and/or registration. It cannot be based on an abandoned application, or on a cancelled or expired registration.
An international application may be based on multiple basic applications and/or basic registrations. The relevant dates and numbers of each application and/or registration must be included. The USPTO will not certify the international application if any of this information is incorrect or is omitted.
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If a basic application and/or registration has been divided, each serial number and/or registration number must be identified. See TMEP §§1110 et seq. regarding division of U.S. applications and TMEP §§1615 et seq. regarding division of U.S. registrations.
1902.02(c) Name and Address of Applicant
Only the owner of the basic application and/or registration can file an international application. 15 U.S.C. §1141a(a). The international application must include the name and current address of the applicant. The name and entity of the international applicant must be identical to the name and entity of the applicant/registrant in the basic application and/or registration. 37 C.F.R. §7.11(a)(2).
On the prepopulated TEAS form, the applicant’s name cannot be changed, so the international applicant’s name will always be identical to the name of the owner of record for the basic application and/or registration.
When the applicant submits a paper form or a free-text TEAS form, an MPU trademark specialist will check the Trademark Reporting and Monitoring (“TRAM”) System to verify that the name of the international applicant is identical to the name of the owner of the basic application and/or registration.
If the names are not identical, the trademark specialist will check the Assignment Services Branch’s database to determine whether an assignment or other document affecting title that is not reflected in TRAM has been recorded. If assignment records do not show a clear chain of title to the international applicant, the USPTO will notify the applicant that the application cannot be certified. If the records of the Assignment Services Branch do show a clear chain of title, the trademark specialist will update the “Ownership” field in TRAM.
Because a delay in certifying and forwarding an international application to the IB may affect the date of the international registration, any request to record a change in ownership of a U.S. basic application and/or registration should be filed well in advance of the filing of the international application, to allow sufficient processing time. The USPTO strongly recommends use of the Electronic Trademark Assignment System (“ETAS”), at http://etas.uspto.gov. Assignments filed electronically are recorded much faster than assignments filed on paper. If there is an unrecorded change in ownership, and the international applicant does not use ETAS to record the change, the USPTO may be unable to certify or forward the international application to the IB within two months after the application is received in the USPTO. In this situation, the date of the international registration will be the date of receipt of the application in the IB. See TMEP §1902.04.
Applicants can search the Assignment Services Branch’s database at http://assignments.uspto.gov/assignments/ to determine whether an
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assignment or other document of title has been recorded, and can search the TARR database at http://tarr.uspto.gov/ to determine whether the ownership information in the Trademark databases has been updated. See TMEP §§504 et seq. regarding automatic updating of ownership information in the TRAM and TARR databases.
If an international applicant is relying on an assignment (or other document transferring title) that has recently been filed for recordation but has not yet been recorded by the Assignment Services Branch, the applicant should include a copy of the assignment with the international application.
If an international application is denied certification because the applicant is not the same party as the owner named in the basic application(s) and/or registration(s), the applicant may petition the Director to review the refusal to certify. See TMEP §1902.03(a) regarding petitions to review refusal to certify.
1902.02(d) Reproduction (Drawing) of Mark
An international application must include a reproduction of the mark that (1) is the same as the mark in the basic application and/or registration; and (2) meets the requirements of 37 C.F.R. §2.52. 37 C.F.R. §7.11(a)(3).
For paper filers, the mark must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide and must be placed in the box designated by the IB on the MM2 form. 37 C.F.R. §§2.52(d) and 2.54(b); Common Reg. 9(4)(a)(v); Guide to International Registration, Paras. B.II.14.01 et seq. For international applications filed electronically, an image of the mark taken from TRAM will appear automatically on the prepopulated TEAS form. If an applicant uses the free-text TEAS form, the applicant must either type the mark in the appropriate field, or attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c).
Standard Character Reproductions. If the mark in the basic application and/or registration is in standard characters, the reproduction of the mark in the international application must be in standard characters. To claim standard characters, an applicant must check the appropriate box on the IB’s official application form MM2, or on the TEAS form. The applicant may not claim standard characters in the international application unless the mark in the basic application and/or registration is in standard character (or typed) format. See TMEP §§807.03 et seq. for information about standard character drawings in applications for registration of marks in the United States. The USPTO’s standard character chart is posted on the USPTO website at http://teas.uspto.gov/standardCharacterSet.html.
Special Form Reproductions. If the mark in the basic application or registration is in special form, the reproduction of the mark in the international application must be in special form. See TMEP §807.04(a) for characteristics
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of special form drawings in applications for registration of marks in the United States.
Use of Color. If the mark in the basic application or registration is depicted in black and white and does not include a color claim, the reproduction of the mark in the international application must be black and white. See TMEP §1902.02(e) regarding color claims. If the mark in the basic application or registration is in color, the reproduction of the mark in the international application must be in color. If the mark in the basic application or registration is depicted in black and white, and the basic application or registration includes a color claim, the international application must include both a black- and-white reproduction of the mark and a color reproduction of the mark that meet the requirements of 37 C.F.R. §2.52. 37 C.F.R. §7.11(a)(3); Common Reg. 9(4)(a)(vii). For example, if the basic application and/or registration includes a color claim and a black-and-white drawing that depicts the color by the use of color lining or by a statement describing the color (see Note in TMEP §1902.02(e) regarding color drawings in United States basic applications or registrations), the applicant must include both a color reproduction of the mark showing the claimed colors and a black-and-white reproduction of the mark that corresponds to the mark as it appears in the basic application and/or registration. See the note regarding color drawings in United States basic applications or registrations in TMEP §1902.02(e). If filing on paper, the applicant must place the drawings in the appropriate boxes designated by the IB on the MM2 form. If using the TEAS prepopulated form, the black-and-white drawing will automatically prepopulate the form, and the applicant must attach the color reproduction of the mark. For the TEAS free-text form, however, the applicant must attach a digitized image of both the black-and-white reproduction of the mark and the color reproduction of the mark. See TMEP §§807 et seq. for general information about the requirements for drawings in applications for registration of marks in the United States.
1902.02(e) Color Claim
If color is claimed as a feature of the mark in the basic application and/or registration, the international application must include a statement that color is claimed as a feature of the mark, and set forth the same name(s) of the color(s) claimed in the basic application and/or registration. 37 C.F.R. §§7.11(a)(4) and 7.12(a).
If the basic application and/or registration includes a black-and-white reproduction of the mark with a description of the mark indicating that color is used on the mark, or a reproduction that is lined for color (see Note below), the USPTO will presume that color is a feature of the mark, unless the basic application and/or registration includes a statement that “no claim is made to color” or “color is not a feature of the mark.” Thus, the basic application and/or registration will be presumed to have a color claim.
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If color is not claimed as a feature of the mark in the basic application and/or registration, an applicant may not claim color as a feature of the mark in the international application. 37 C.F.R. §7.12(b).
Note Regarding Color Drawings in United States Basic Applications or Registrations: Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark had to submit a black-and-white drawing, with a statement identifying the color(s) and describing where it/they appeared in the mark. Alternatively, the applicant could submit a black-and-white drawing that showed color by using a lining system that previously appeared in 37 C.F.R. §2.52 but was deleted from the rule effective October 30, 1999. See notice at 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999). It was presumed that color was claimed as a feature of the mark, unless the applicant specifically stated that no claim was made to color, or that color was not claimed as a feature of the mark. The USPTO began accepting color drawings on November 2, 2003. Effective November 2, 2003, the USPTO no longer accepts black-and-white drawings with a color claim, or drawings that show color by use of lining patterns. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07 et seq. regarding the current color requirements.
1902.02(f) Identification of Goods/Services
An international application must include a list of goods/services that is identical to or narrower than the goods/services in the basic application and/or registration. 37 C.F.R. §7.11(a)(7). If the applicant makes any change that broadens the scope of the identification of goods/services, the USPTO will not certify the international application.
The prepopulated TEAS form will include the listing of goods/services in the USPTO’s electronic records for the basic application or registration as of the time the form is generated. An applicant may edit the list of goods/services by either deleting particular goods/services or revising the wording in the identification. On the MM2 paper form and the free-text TEAS form, the applicant must enter the goods/services manually and may omit goods or services, or revise the wording in the identification.
If the list of goods/services in an international application is not identical to the list of goods/services in the basic application and/or registration at the time the international application is reviewed, the MPU trademark specialist must determine whether the applicant has identified any goods/services that are broader than the goods/services covered in the basic application and/or registration.
When the MPU trademark specialist reviews an international application based on a basic application and/or registration that has been amended during the course of its examination, the list of goods/services in the international application must be within the scope of the goods/services in the
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basic application and/or registration as amended, and not as set forth in the original basic application and/or registration.
1902.02(g) Classification in International Applications
The goods/services should be classified according to the version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) that is in effect as of the filing date of the international application. 37 C.F.R. §7.11(a)(7). Both the prepopulated and the free-text TEAS forms will allow an applicant to change the classification of goods/services in an international application.
The MPU does not certify classification of the goods/services in an international application. Therefore, the owner of the United States application or registration need not classify the goods/services in the international application in the same class(es) in which they are classified in the United States basic application and/or registration. However, failure to properly classify goods or services in an international application according to the international classification system will result in an IB notice of irregularity. Because the final decision on the classification of the goods/services in an international application rests with the IB, the USPTO will not reclassify or give advice in response to specific inquiries regarding the reclassification of particular goods/services. The IB provides guidance on its website, at http://www.wipo.int/classifications/en/. See TMEP §§1401.02 et seq. for further information about the international classes, and TMEP §§1902.07 et seq. for further information about irregularities in the international application.
1902.02(g)(i) Reclassifying Goods/Services
If the goods or services in the basic application and/or registration are classified under the old U.S. classification system (see TMEP §1401.02), it is advisable to reclassify the goods/services into international classes in the international application, to avoid issuance of a notice of irregularity by the IB. Applicants using the prepopulated TEAS form must reclassify such goods/services into international classes because the form does not recognize U.S. class designations.
See TMEP §1902.02(g)(ii) regarding reclassification of goods/services in U.S. Classes A, B, or 200.
It is also advisable to reclassify the goods when the identification of goods in the basic application and/or registration comprises kits or gift baskets. See TMEP §1902.02(g)(iii) for further information.
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1902.02(g)(ii) United States Classes A, B and 200
Classes A, B, and 200 are classes from the old United States classification system that are still used in the United States to classify certification marks for goods (Class A), certification marks for services (Class B), and collective membership marks (Class 200). These classes are not included in the international classes under the Nice Agreement. Therefore, an international application based on a U.S. application or registration in U.S. Classes A, B, or 200 should be reclassified based on the nature of the goods or services being certified or the area of activity of the members of the collective. If the applicant does not reclassify its goods or services into the proper international class, the IB will issue a notice of irregularity.
Amendment of the classification in the corresponding basic U.S. application and/or registration is not permitted.
United States Classes A and B
It has been the longstanding practice in the United States to accept identifications of goods or services for Classes A, B, and 200 that are broader than those that would be accepted in applications for goods/services in other classes. See TMEP §§ 1304.08(d) and 1306.06(e). In many situations, it will be difficult to reclassify these broad identifications into appropriate international classes. For example, a goods certification mark in U.S. Class A for “remanufactured, refurbished and reconditioned electrical equipment” could include goods in International Classes 7, 9, and/or 11, and possibly others. In such situations, the U.S. applicant should specify the type of electrical equipment that is being certified, and either apply and pay the fees for all appropriate classes, or limit the specification of “electric equipment” to cover goods in one class only.
In some certification mark applications/registrations, the goods/services will be easily classified in one class of the international classification system. For example, a services certification mark for “testing laboratory and calibration laboratory accreditation services” would be classified in International Class 42. However, it is important to be aware that multiple classes may be required when reclassifying goods/services from U.S. Classes A and B.
United States Class 200
Class 200 presents a similar problem and a similar solution. A broad identification of the subject organization in a collective membership mark application or registration is difficult to reclassify. For example, the wording “indicating membership in a conservative youth organization” is too broad and vague for classification in an international class. On the other hand, “indicating membership in an organization of consulting communications engineers” is easily classified in International Class 42. As with the certification marks, an applicant may have to clarify, specify, or narrow the
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description of the organization in the international application in order to classify the organization in an international class.
1902.02(g)(iii) Kits and Gift Baskets
The USPTO policy regarding the identification and classification of kits and gift baskets differs from the policy of the IB regarding the classification of these goods.
The USPTO permits registration of a kit or gift basket in a single international class, even if the identification of goods lists items that are classified in other classes. The IB and most foreign countries will not accept an identification of goods in a particular class that includes a reference to goods that are classified in other classes. If an international application includes kits and/or gift baskets, and the identification of goods refers to items classified in more than one class, the IB is likely to issue a notice of irregularity requiring the applicant to separate the goods into their respective classes and to pay additional fees for added classes. To avoid issuance of a notice of irregularity by the IB, an international applicant may wish to either narrow the identification to refer only to items in a single international class, or submit additional fees for multiple international classes.
1902.02(h) List of Contracting Parties
An international application must list at least one Contracting Party (i.e., country or intergovernmental organization party to the Madrid Protocol) to which the applicant seeks an extension of protection of the international registration. If the goods/services in the international application are not the same for all designated Contracting Parties, the application must include a list of the goods/services in the international application that pertain to each designated Contracting Party. 37 C.F.R. §7.11(a)(8).
An international applicant designating the European Community for an extension of protection may claim seniority of one or more earlier registrations in or for a Member State of the European Community for the same mark covering the same goods or services in the international application. Common Reg. 9(5)(g)(i). See TMEP §1902.05 for further information about “seniority.”
For international applications filed through TEAS, the online form enables applicants designating the European Community to claim seniority based upon registrations issued by Member States. The applicant must indicate: (1) the name of the Member State in or for which the earlier mark is registered; (2) the date from which the registration was effective; (3) the registration number; and (4) the goods and/or services covered by the earlier registration. Common Reg. 9(5)(g)(i).
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For international applications filed on paper using form MM2, a claim of seniority must be presented on the IB’s official form, MM17, and annexed to the international application. Common Reg. 9(5)(g)(i). The applicant must complete both the MM2 and the MM17 forms, and mail them to the USPTO.
An international applicant may not designate the United States as a Contracting Party. 15 U.S.C. §1141e(b); Article 3bis; TMEP §1904.01(h).
1902.02(i) Fees
USPTO Certification Fee. An international application must include the USPTO certification fee for each class of goods/services for which international registration is sought, or it will not be certified. The certification fee per class increases if the international application is based on more than one basic application or registration. 37 C.F.R. §§7.6(a) and 7.11(a)(9).
International Fees. If an international application is submitted through TEAS, the international fees for all classes and all designated Contracting Parties must be paid at the time of submission. 37 C.F.R. §7.11(a)(10). International fees for paper applications must be paid directly to the IB, and may be paid either before or after the international application is submitted to the USPTO. 37 C.F.R. §7.7(c). However, international fees paid after the IB receives the international application could result in a notice of irregularity issued by the IB (see TMEP §1902.07(b)(i)).
See also TMEP §1903.02 regarding payment of international fees.
1902.02(j) Statement of Entitlement
An international application must include a statement that the applicant is entitled to file an international application, specifying that the applicant: (1) is a national of the United States; (2) has a domicile in the United States; or (3) has a real and effective industrial or commercial establishment in the United States. Where an applicant’s address is not in the United States, the applicant must provide the address of the United States domicile or establishment. 15 U.S.C. §1141a; 37 C.F.R. §7.11(a)(11).
For joint applicants, the application must include a statement of entitlement for each applicant.
1902.02(k) Description of Mark
If the basic application or registration includes a description of the mark, an international application must include the same description. 37 C.F.R. §7.11(a)(5). The applicant cannot include a description of the mark in the international application if the basic application or registration does not
1900-20 September 2009
contain a description of the mark. Guide to International Registration, Para. B.II.15.07.
If an international application is based on more than one basic application and/or registration, any description of the mark must be the same in each basic application and/or registration. If the descriptions are not the same, certification will be denied. 37 C.F.R. §§7.11(a)(5) and 7.13(a).
If the basic application or registration has been amended during the course of its examination, the description in the international application must be identical to the description in the basic application or registration as amended, not as set forth in the original basic application or registration.
1902.02(l) Indication of Type of Mark
If the mark in the basic application or registration is a three-dimensional mark, a sound mark, a collective mark, or a certification mark, the international application must include an indication of the type of mark. 37 C.F.R. §7.11(a)(6). Such an indication may be given only if it appears in the basic application or registration. Common Regs. 9(4)(a)(viii)-(x).
1902.02(m) E-Mail Address
An international application must include an e-mail address for receipt of correspondence from the USPTO, if the international application is filed through TEAS. 37 C.F.R. §7.11(a)(12). Applicants submitting international applications on paper are encouraged to include an e-mail address on the form.
1902.03 Certification of International Application by USPTO
If the information contained in an international application corresponds to the information in the basic application or basic registration, the USPTO will certify the international application and forward it to the IB. 15 U.S.C. §1141b.
If an applicant uses the prepopulated TEAS form without changing any of the information (see TMEP §1902.02(a)), the international application will be certified and forwarded to the IB without review by the MPU. In all other cases, an MPU trademark specialist must review the data in the international application to determine whether such data corresponds to the basic application or basic registration.
Under Article 3(1) and Common Reg. 9(5)(d), the USPTO must sign the international application and certify:
• The date on which the USPTO received the international application (Common Reg. 9(5)(d)(i));
1900-21 September 2009
• That the mark in the international application is the same as the mark in the basic application or registration (Common Reg. 9(5)(d)(iv));
• That the applicant is the same person or entity listed as the owner of the basic application or registration (Common Reg. 9(5)(d)(ii));
• That the goods/services identified in the international application are covered by the basic application or registration (Common Reg. 9(5)(d)(vi));
• That the applicant is qualified to file an international application under §61 of the Trademark Act and Article 2(1);
• That, if the international application includes a description of the mark, the description is consistent with the basic application or registration (Common Regs. 9(4)(a)(xi) and 9(5)(d)(iii));
• That, if the international application indicates that the mark consists of a color or combination of colors, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viibis) and 9(5)(d)(iii));
• That, if color is claimed as a feature of the mark in the basic application or registration, the same claim is included in the international application (Common Reg. 9(5)(d)(v));
• That, if the international application indicates that the mark is three-dimensional, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viii) and 9(5)(d)(iii));
• That, if the international application indicates that the mark is a sound mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(ix) and 9(5)(d)(iii));
• That, if the international application indicates that the mark is a collective or certification mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(x) and 9(5)(d)(iii)).
If the international application meets the requirements of 37 C.F.R. §7.11(a), the USPTO will certify the application and send it to the IB. 37 C.F.R. §7.13(a). The MPU will send a notice of certification to the applicant.
If the application does not meet the requirements of 37 C.F.R. §7.11(a), the USPTO will not certify the application or forward it to the IB. The USPTO will notify the applicant of the reason(s) why the application cannot be certified. The USPTO will refund any international fees paid through TEAS. The USPTO certification fee will not be refunded. 37 C.F.R. §7.13(b).
1900-22 September 2009
An applicant should periodically check the status of the international application online, using TARR. If the applicant does not receive a notice of certification or refusal within two months of filing, the applicant should contact the MPU. However, once an international application is certified and forwarded to the IB, questions concerning the international application should be directed to the IB rather than the USPTO. See TMEP §1906 for information on contacting the IB. The USPTO will update TARR when the IB issues a certificate of international registration or a notice of irregularity concerning the international application. See TMEP §1902.06 regarding the IB’s examination of international registrations.
1902.03(a) Petition to Review Refusal to Certify
If an applicant believes that a refusal to certify an international application was erroneous, the applicant may file a petition to the Director to review the refusal. The petition should refer to the USPTO control number, and include the petition fee required by 37 C.F.R. §2.6. If the denial of certification was due to USPTO error, the USPTO will grant the petition and refund the petition fee. In all other cases, whether the petition is granted or denied, the petition fee is not refundable, unless the petition is withdrawn before a decision issues. The petition should be filed immediately. If the international application is not certified within two months of the date of receipt of the application in the USPTO, the date of international registration will be affected. Article 3(4); Common Reg. 15. See TMEP §1902.04.
The petition should be mailed using the First Class Service of the USPS to:
Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b). If the applicant is paying the petition fee using a USPTO deposit account, the applicant may e-mail the request to madridpetitions@uspto.gov, with an authorization to charge the petition fee to a deposit account. See TMEP Chapter 1700 for further requirements for petitions to the Director.
Alternatively, the applicant may use a courier service or hand-deliver the petition to the Trademark Assistance Center at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).
1900-23 September 2009
1902.04 Date of International Registration
If the IB receives an international application within two months of the date of receipt in the USPTO, the date of the international registration is the date of receipt in the USPTO. If the IB does not receive the international application within two months of the date of receipt in the USPTO, the date of the international registration is the date of receipt in the IB. Article 3(4); Common Reg. 15.
Common Reg. 15 sets forth the IB’s minimum requirements that may affect the date of the international registration:
• Adequate identification of the applicant, with sufficient information to contact the applicant or the applicant’s representative;
• Reproduction of the mark;
• Indication of the goods or services; and
• Designation of Contracting Party or Parties for which extension of protection is sought.
If any of these elements is omitted from the international application, the IB will notify both the applicant and the USPTO. If the missing element(s) is received in the IB within two months of the date of receipt of the international application in the USPTO, the international registration will bear the date of receipt of the international application in the USPTO. If the missing element(s) is not received in the IB within two months of the date of receipt of the international application in the USPTO, the date of the international registration is the date of receipt of the last of the missing elements in the IB. In either case, the missing element(s) must be received in the IB on or before the deadline specified in the notice of irregularity. Article 3(4); Common Reg. 15(1).
See TMEP §§1902.07 et seq. for information about correcting irregularities in an international application.
1902.05 IB Requirements for Complete International Application
The requirements for an international application are set forth in Article 3 and Common Reg. 9. If the application meets the minimum requirements set forth in 37 C.F.R. §7.11(a) (see TMEP §§1902.02 et seq.), the USPTO will certify the application and send it to the IB. The USPTO will not examine the international application to determine whether it is complete. Only the IB will examine it for completeness. The requirements for a complete international application originating from the United States are:
• Name and Address. The name and address of the applicant;
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• Basic Application(s) or Registration(s). The serial number(s) and filing date(s) of the basic application(s), and/or the registration number(s) and registration date(s) of the basic registration(s). The international application may be based on more than one basic application or registration;
• Entitlement to File. An indication that the applicant: (1) is a national of the United States; (2) is domiciled in the United States; or (3) has a real and effective industrial or commercial establishment in the United States (Common Reg. 9(5)(b));
• Fees. The international application must include the basic filing fee charged by the IB; the supplementary fee for each class of goods or services beyond 3 classes; the complementary fee for designation of each country to which extension of the international registration is sought; and the transmittal fee that the USPTO charges to process the international application. Articles 8(1) and 8(2); Common Regs. 9(4)(a)(xiv), 10(2) and 34;
• Goods/Services. A list of the goods or services on or in connection with which the applicant seeks international registration (Article 3(2); Common Reg. 9(4)(a)(xiii));
• Class(es). The international class(es) of goods or services, if known (Article 3(2); Common Reg. 9(4)(a)(xiii));
• Contracting Parties. The name(s) of the Contracting Party or Parties in which an applicant seeks protection (Common Reg. 9(4)(a)(xv));
• Declaration of Intent to Use. A verified statement that applicant 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 any of the Contracting Parties designated in the international application require such a declaration (Common Reg. 9(5)(f)). Under Common Reg. 7(2), a Contracting Party may notify the IB that it requires a signed declaration of intention to use the mark;
• Reproduction (Drawing) of Mark. A clear reproduction of the mark that is no more than 8 cm high by 8 cm wide. Common Reg. 9(4)(a)(v). The mark must be the same as the mark in the basic application or registration. If the mark in the basic application or registration has color, the mark in the international application must be in color. If the mark in the basic application or registration is black and white, the mark in the international application must be in black and white. If the mark in the basic application or registration is depicted in black and white, but contains a claim of color as a feature of the mark (see Note in TMEP §1902.02(e) regarding color drawings in United States basic applications or registrations), the applicant
1900-25 September 2009
must submit both: (1) a black-and-white image that is the same as the mark in the basic application or registration; and (2) a color reproduction depicting the color(s) claimed. Common Reg. 9(4)(a)(vii);
• Color. If color is claimed as a distinctive feature of the mark in the basic application or registration, the international application must include an indication to that effect, and must set forth the name of the color(s) (Article 3(3); Common Reg. 9(4)(a)(vii)). If the mark in the basic application or registration consists of a color or a combination of colors, the international application must include a statement to that effect (Common Reg. 9(4)(a)(viibis)) (see TMEP §§1202.05 et seq. regarding color as a mark);
• Transliteration. If the mark consists of or contains non-Latin characters or numerals other than Arabic or Roman numerals, a transliteration of that matter in Latin characters and Arabic numerals (Common Reg. 9(4)(a)(xii));
• Signature. The USPTO must sign the international application. The IB does not require the applicant’s signature (Common Reg. 9(2)(b)) (Note: Signature may be replaced with seal or other mode of identification determined by the IB (see Admin. Instr. §7);
• Three-Dimensional Mark. If the mark is three-dimensional, the indication “three-dimensional mark” (Common Reg. 9(4)(a)(viii));
• Sound Mark. If the mark is a sound mark, the indication “sound mark” (Common Reg. 9(4)(a)(ix));
• Collective or Certification Mark. If the mark is a collective mark or a certification mark, an indication to that effect (Common Reg. 9(4)(a)(x));
• Standard Characters. If the mark is a standard character mark, an indication to that effect (Common Reg. 9(4)(a)(vi));
• Description of Mark. If there is a description of the mark in the basic application or registration, the international application must include the same description. 37 C.F.R. §7.11(a)(5) and Common Reg. 9(4)(a)(xi);
• Language. International applications originating from the United States must be in English. 37 C.F.R. §7.3; Common Regs. 6(1) and 6(2)(iii);
• Indication of Second Language. If an applicant designates the European Community as a Contracting Party, applicant is required to
1900-26 September 2009
indicate a second language, in addition to the language in the international application (Common Reg. 9(5)(g)(ii)).
Additional Elements That May Be Included in International Application
The following elements may also be included, but are not mandatory under the Common Regulations:
• Translation. If the mark consists of or contains non-English wording, an English translation (Common Reg. 9(4)(b)(iii));
• Citizenship/State of Incorporation or Organization (Common Regs. 9(4)(b)(i) and (ii)). The citizenship of the applicant(s); or if the applicant is a juristic person, the state or nation under the laws of which the applicant is organized;
• Disclaimer. If an applicant wishes to disclaim any element of the mark, the applicant may do so (Common Reg. 9(4)(b)(v));
• Representative. See TMEP §1902.11;
• Priority. An international applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if: (1) the international application contains a claim of priority; and (2) the filing date of the application that forms the basis of the priority claim (within the meaning of Article 4 of the Paris Convention) was not more than six months before the date of the international registration. Article 4(2); Common Regs. 9(4)(a)(iv) and 14(2)(i). The applicant must specify the serial number (if available), filing date, and country of the earlier filing. If the earlier filing does not relate to all the goods/services listed in the international application, the applicant must set forth the goods/services to which it does relate. NOTE: If the applicant is claiming priority based upon the basic application, the applicant must list the United States application serial number and filing date in both the “Basic Application” and the “Priority Claimed” sections of the form;
• Seniority. An applicant designating the European Community may claim seniority of one or more earlier registrations in or for a Member State of the European Community for the same mark covering the same goods or services in the international application by indicating the following four elements: (1) each Member State in or for which the earlier mark is registered; (2) the date from which the registration was effective; (3) the registration number; and (4) the goods/services covered by the earlier registration (Common Reg. 9(5)(g)(i)). For international applications submitted on paper using the IB’s official form MM2, this information must be submitted on the IB’s official
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MM17 form. The MM17 form should be annexed to the international application form.
1902.06 Examination of Application by IB
Upon certification, the USPTO forwards the international application to the IB. If the international application meets the applicable requirements for a complete international application (see TMEP §1902.05), the IB will immediately register the mark and publish the registration in the WIPO Gazette of International Marks. The IB will send the certificate to the holder and notify the Office of Origin and the Offices of the designated Contracting Parties to which extension of the registration is sought. Article 3(4); Common Reg. 14(1). If an international application is unacceptable, the IB will notify both the applicant and the USPTO of the “irregularity” (see TMEP §§1902.07 et seq.)
1902.07 Irregularities in International Application
If an international application is unacceptable, the IB will notify both the applicant and the USPTO of the “irregularity.” Some types of irregularities must be remedied by the USPTO, some must be remedied by the applicant, and some may be remedied by either the applicant or the USPTO. See 37 C.F.R. §7.14 and Common Reg. 11.
The MPU trademark specialists review all incoming notices of irregularities. If the irregularity is one that must be remedied by the USPTO (see TMEP §1902.07(a)), the trademark specialist will respond to the notice and send the applicant a copy of the response.
If the irregularity is not one that must be remedied by the USPTO, the USPTO will note receipt of the notice of irregularity in its automated records, but will not take any other action. The USPTO will not respond to the notice on behalf of the applicant. The USPTO will not send a copy of the notice to the applicant, because the IB has already notified the applicant of the irregularity. A copy of the notice will be placed in the electronic record of the international application. The notice can be reviewed using the Trademark Document Retrieval (“TDR”) system on the USPTO website, by entering the control number assigned to the international application by the USPTO.
Applicants must file responses to irregularities in classification and identification of goods/services through the USPTO (see TMEP §§1902.07(c) et seq.). Fees for correcting irregularities in international applications must be paid directly to the IB in Swiss currency (see TMEP §1902.07(b)(i)). Responses to all other types of irregularities may be filed either directly at the IB or through the USPTO.
To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in
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the IB’s notice. Receipt of the response in the USPTO does not satisfy this requirement.
For responses to IB notices of irregularities that may be submitted through the USPTO, applicants may file the response either through TEAS or on paper. When correcting irregularities through the USPTO, the applicant should submit the response as soon as possible, and at least one month before the end of the response deadline set forth in the IB’s notice. The USPTO will not process any response filed after the IB response deadline. 37 C.F.R. §7.14(e). See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.
1902.07(a) Irregularities that Must Be Remedied by the USPTO
The following irregularities must be remedied by the USPTO within three months of the date of notification of the irregularity:
• Application is not presented on the official form or is not typed;
• Omission of reproduction of mark;
• Omission of list of goods/services;
• Omission of designation of Contracting Party or Parties;
• Insufficient identification of applicant;
• Irregularities relating to the entitlement of the applicant to file an international application (see TMEP §1902.02(j));
• Application not signed by USPTO (Note: Signature may be replaced with seal or other mode of identification determined by the IB. See Admin. Instr. §7);
• Certification by USPTO is defective;
• Omission of date and number of basic application or registration.
Common Regs. 11(4) and 15(1); Guide to International Registration, Para. B.II.25.03.
If the USPTO does not cure the irregularity within three months, the international application is abandoned. Common Regs. 11(4)(b) and 11(5).
When responding to a notice of an irregularity that must be remedied by the USPTO, the MPU trademark specialist will send the applicant a copy of the response.
1900-29 September 2009
1902.07(b) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB
1902.07(b)(i) Fee Irregularities
Where international fees for the international application are insufficient, the IB will notify both the applicant and the USPTO of the deficiency. The USPTO will not respond to the notice on behalf of applicant even if the international application fees were paid through TEAS.
Fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency, even if the applicant is filing a response to correct other irregularities through the USPTO. 37 C.F.R. §7.14(c). If any fees for correcting irregularities are submitted to the USPTO, the USPTO will return the fees to the applicant. The USPTO will not forward the fees to the IB. If the fees are not received by the IB on or before the deadline set forth in the IB’s notice of irregularity, the international application may be abandoned. See TMEP §1903.02 for information about the payment of fees to the IB.
1902.07(c) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO
1902.07(c)(i) Classification of Goods/Services
If the IB finds an irregularity in classification, it will make a proposal and send it to both the applicant and the USPTO. The notice will state whether any additional fees are due. Common Reg. 12(1). The USPTO will neither respond to the notice on behalf of applicant nor advise the applicant as to how to reclassify the goods/services.
If an irregularity notice indicates that the failure to resolve the irregularity will result in the abandonment of the international application, the applicant must respond and/or pay the necessary fees to avoid abandonment. If the irregularity notice merely indicates that “if no response, WIPO proceeds,” the applicant need not respond if applicant agrees to the proposal by WIPO.
The applicant cannot send its response directly to the IB. The applicant must submit the response through the USPTO. The IB must receive the response within 3 months of the date of the IB notification. 37 C.F.R. §7.14(b); Common Reg. 12(2). See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.
An MPU trademark specialist will review the applicant’s response, but only to ensure that the response consists solely of an amendment to classification and that no amendments to the identification of the goods or services have been proposed. So long as the only proposed change is to classification, and such change in classification does not expand the listing of goods/services to
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exceed the scope of the underlying basic application or registration, the USPTO will forward it to the IB and notify the applicant accordingly. See TMEP §1902.07(c)(ii) regarding proposed amendments to the identification of goods/services.
If additional fees are due as a result of reclassification of goods/services, the applicant must pay the fees directly to the IB in Swiss currency. See TMEP §1903.02 for further information about the payment of fees to the IB.
Under Article 3(2), the IB controls classification and has the final say on classification of goods/services. The IB may modify, withdraw, or maintain its proposal after reviewing the applicant’s response. Common Reg. 12.
See also TMEP §1401.03(d).
1902.07(c)(ii) Identification of Goods/Services
If the IB determines that the identification of goods/services is too vague or is incomprehensible or linguistically incorrect, it will notify both the applicant and the USPTO. Common Reg. 13. The IB may include a suggested amendment in the notification. The USPTO will not respond to the notice on behalf of applicant or advise the applicant as to how to identify the goods/services.
The applicant cannot send a response directly to the IB. Any response regarding the identification of goods/services must be sent through the USPTO. The IB must receive the response within 3 months of the date of the IB notification. 37 C.F.R. §§7.14(a) and 7.14(b); Common Reg. 13(2). See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.
An MPU trademark specialist will review the applicant’s response to ensure that the goods/services identified in the response are within the scope of the identification in the basic application and/or registration at the time the response is filed. If an amendment to the goods/services in the basic application and/or registration has been entered into the trademark database since the date the international application was submitted to the USPTO, the goods/services in the response to the IB notice must be within the scope of the amended goods/services. If the goods/services in the response exceed the scope of the goods/services in the basic application and/or registration as amended, the trademark specialist will notify the applicant that the proposed amendment to the goods/services does not conform to the goods/services as identified in the basic application and/or registration and that the response will not be forwarded to the IB. If there is time remaining in the IB response period, the applicant may submit a corrected response. If the goods/services in the corrected response do not exceed the scope of the goods/services in the basic application or registration as amended, and the IB response period has not expired, the MPU will forward the response to the IB.
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If no proposal acceptable to the IB for remedying the irregularity is made within 3 months, and all other requirements have been met, the IB will either: (1) include the term in the international registration with an indication that the IB considers the term to be unacceptable, provided that the class of the vague term was specified in the application; or (2) if the class was not specified, delete the term and notify both the USPTO and the applicant accordingly. Common Reg. 13(2)(b).
1902.07(d) Other Irregularities that Must Be Remedied By Applicant – Applicant May Respond Directly to the IB or Through the USPTO
Other irregularities to be remedied by applicant include, but are not limited to, insufficient information about the applicant’s representative; missing transliteration; insufficient information about a priority claim; unclear reproduction of the mark; and color claim with no color reproduction. The applicant must remedy any irregularities within three months of the date of the notification, or the international application may be abandoned. Common Reg. 11(2)(b). See Guide to International Registration, Para. B.II.25.07, for further information.
An applicant may file the response to these irregularities either directly with the IB, or through the USPTO, either electronically or on paper. To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IB’s notice. Receipt in the USPTO does not fulfill this requirement.
If the response is filed through the USPTO, the USPTO will not review the response to the irregularity but will forward the response to the IB, and notify the applicant accordingly. See TMEP §1902.07(f) for information about responding to a notice of irregularity through the USPTO.
1902.07(e) Filing Response Directly With the IB
Information about filing responses directly with the IB is available on the WIPO website, currently at http://www.wipo.int/madrid/en/. An applicant may contact the IB by mail to 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland; by telephone at 41 22 338 9111; by fax to 41 22 740 1429; or by e-mail to intreg.mail@wipo.int.
1902.07(f) Responding to Notice of Irregularity Through the USPTO
Under Trademark Rule 7.14(e), 37 C.F.R. §7.14(e), an applicant may file a response to an IB notice of irregularity through the USPTO for forwarding to the IB before the IB’s response deadline. The response may be filed electronically or on paper. However, receipt in the USPTO does not fulfill the requirement that the response be received by the IB before the IB
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response deadline. Therefore, applicants should submit responses to the USPTO as soon as possible, and at least one month before the end of the IB response period. The USPTO will not process any response received after the IB response deadline.
The IB does not have a form for responses to irregularity notices. Applicants are strongly encouraged to use the TEAS form for responses to notices of irregularity. Applicants submitting paper responses to the USPTO for forwarding to the IB should include with the response: (1) the USPTO control number (U.S. Reference No.) assigned to the international application; and (2) a copy of the IB’s irregularity notice. The applicant may include a self- addressed, stamped postcard with the response. Upon receipt, the USPTO will place a label indicating the receipt date on the documents, and return the postcard to the applicant. However, to be considered timely, the response must be received by the IB before the end of the response period set forth in the IB’s notice, and receipt in the USPTO does not fulfill the IB deadline requirement.
Applicants submitting responses on paper should mail the document to the following address, using the First Class Service of the USPS:
Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, the response may be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c). The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 and Express Mail provisions of 37 C.F.R. §2.198 do not apply to responses to notices of irregularity. 37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2), and 7.4(e).
Please note that fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency, even if the applicant is filing a response to correct irregularities through the USPTO. 37 C.F.R. §7.14(c). See TMEP §1903.02 for further information about the payment of fees to the IB.
Responses to notices of irregularity cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(3).
The USPTO will not process any response filed after the IB response deadline. 37 C.F.R. §7.14(e).
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1902.08 Subsequent Designation - Request for Extension of Protection Subsequent to International Registration
A subsequent designation is a request by the holder of an international registration for an extension of protection of the international registration to additional Contracting Parties, made after the IB registers the mark. The requirements for a subsequent designation are set forth in Article 3ter(2) and Common Reg. 24. The holder may file the subsequent designation directly with the IB. There is a form for filing a subsequent designation, the MM4 form, on the IB website at http://www.wipo.int/madrid/en/.
A holder may file a subsequent designation through the USPTO if: (1) the international registration is based on a basic application filed with the USPTO and/or a basic registration issued by the USPTO; and (2) the holder is a national of, is domiciled in, or has a real and effective business or commercial establishment in the United States. 15 U.S.C. §1141d; 37 C.F.R. §§7.21(a) and (b).
1902.08(a) USPTO Requirements
The minimum requirements for a date of receipt of a subsequent designation in the USPTO are set forth in 37 C.F.R. §7.21(b), and are reproduced below:
• The international registration number;
• The serial number of the U.S. application and/or the registration number of the U.S. registration that formed the basis of the international registration;
• The name and address of the holder of the international registration;
• A statement that the holder is entitled to file a subsequent designation through the USPTO, specifying that the holder: (1) is a national of the United States; (2) has a domicile in the United States; or (3) has a real and effective industrial or commercial establishment in the United States. If a holder’s address is not in the United States, the holder must provide the address of its United States domicile or establishment;
• A list of goods/services that is identical to or narrower than the goods/services in the international registration;
• A list of the Contracting Parties designated for an extension of protection;
• The USPTO transmittal fee;
• The international fees required by the IB, if the subsequent designation is filed through TEAS; and
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• An e-mail address for receipt of correspondence from the USPTO, if the subsequent designation is filed through TEAS.
See TMEP §1902.08(b) regarding the form for filing a subsequent designation through the USPTO, and TMEP §1902.08(c) regarding the international fees for a subsequent designation.
The USPTO does not certify subsequent designations. If a subsequent designation meets the requirements set forth in 37 C.F.R. §7.21(b), the USPTO will forward it to the IB. 37 C.F.R. §7.21(c). If the subsequent designation does not meet these requirements, the USPTO will not forward the subsequent designation, and will notify the holder of the reasons. The USPTO transmittal fee is nonrefundable. 37 C.F.R. §7.21(d).
If the subsequent designation meets the requirements of Common Reg. 24, the IB will record it and notify both the USPTO and the holder of the recordation. Common Reg. 24(8). The subsequent designation will bear the date of receipt in the USPTO, provided that the IB receives it within two months of that date. If the IB does not receive the subsequent designation within two months of the date of receipt in the USPTO, the subsequent designation will bear the date of receipt in the IB. Common Reg. 24(6)(b).
1902.08(b) Form for Filing Subsequent Designation Through the USPTO
The holder of an international registration submitting a subsequent designation through the USPTO may file either through TEAS or on the official paper form issued by the IB. 37 C.F.R. §7.21(b).
When filing through TEAS, the holder must enter the required information in the data fields of the free-text TEAS form. Holders filing subsequent designations on paper through the USPTO should use the official IB form MM4 posted on the IB website at http://www.wipo.int/madrid/en/. The IB will not accept paper applications that are not presented on the official IB form. The form cannot be handwritten. Article 3ter(2); Common Reg. 24(2)(b); Madrid Admin. Instrs. §§2 and 6(a). The holder should complete the MM4 form online, print the completed form, and submit it to the USPTO via mail, hand delivery or courier service.
The IB’s Guide to International Registration, available on the IB’s website at www.wipo.int/madrid/en, contains instructions for completing the subsequent designation form, at B.II.43.01-44.03.
The subsequent designation form may be mailed to the USPTO at the following address, using the First Class Service of the USPS.
Madrid Processing Unit 600 Dulany Street
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MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, subsequent designations may also be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).
If a subsequent designation is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the subsequent designation was submitted on the day it was deposited as Express Mail, provided that the holder complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding Express Mail. The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 do not apply to subsequent designations. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).
When submitting a paper subsequent designation, a holder should include a self-addressed, stamped postcard. Upon receipt of the subsequent designation, the USPTO will place a label indicating the receipt date on the documents, and return the postcard to the holder.
Subsequent designations cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(2).
1902.08(c) Fees for Subsequent Designation
USPTO Transmittal Fee. The subsequent designation must include the USPTO transmittal fee, or the USPTO will not forward it to the IB. 37 C.F.R. §7.21(a)(7).
International Fees. If the subsequent designation is filed through TEAS, all international fees for the subsequent designation must be paid at the time of submission. 37 C.F.R. §7.21(b)(8). International fees for subsequent designations filed on paper must be paid directly to the IB in Swiss currency, either before or after submission of the subsequent designation. However, international fees paid after the IB receives the subsequent designation could result in a notice of irregularity issued by the IB.
See TMEP §1903.02 regarding payment of international fees.
1902.08(d) IB Requirements for Subsequent Designation
The requirements for a subsequent designation are set forth in Article 3ter and Common Reg. 24. If the subsequent designation meets the minimum requirements for a date of receipt set forth in 37 C.F.R. §7.21(b) (see TMEP
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§1902.08(a)), the USPTO will forward the subsequent designation to the IB. The USPTO will not examine it to determine whether it is complete. The IB will examine it for completeness.
If the subsequent designation meets the applicable requirements, the IB will record it in the International Register and notify the holder and the Offices of the designated Contracting Parties. The IB will also notify the USPTO, if the subsequent designation was submitted through the USPTO. Common Reg. 24(8).
1902.08(e) Irregularities in Subsequent Designation
If a subsequent designation is sent to the IB through the USPTO, the IB will notify both the holder and the USPTO of any irregularity. Common Reg. 24(5)(a). Corrections of any irregularity in a subsequent designation must be sent directly to the IB, even if the subsequent designation was sent through the USPTO. 37 C.F.R. §7.21(e). The USPTO will make note of receipt of the notice of irregularity in its automated records, but will not take any other action.
1902.09 Dependence and “Central Attack”: Restriction, Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years
For a period of 5 years from the date of the international registration, the registration is dependent on the basic application or basic registration. Article 6(3). Under §63 of the Trademark Act, 15 U.S.C. §1141c, and Article 6(4), the USPTO must notify the IB if the basic application and/or registration is restricted, abandoned, cancelled, or expired with respect to some or all of the goods/services listed in the international registration:
(1) Within five years after the international registration date; or
(2) More than five years after the international registration date if the restriction, abandonment, or cancellation of the basic application or basic registration resulted from an action that began before the end of the five-year period.
The IB will cancel (or restrict) the international registration accordingly. Article 6(4); Common Reg. 22(2)(b). This is sometimes called “central attack.”
The USPTO must notify the IB if there is an appeal, opposition, or cancellation proceeding (or a court proceeding, if the USPTO is aware of the proceeding) pending at the end of the five-year period. The USPTO must notify the IB of the final decision once the proceeding is concluded. Common Regs. 22(1)(b) and (c). The IB will record this notice in the International Register and notify the holder and the designated Contracting Parties.
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In view of the above notification requirements, applicants and registrants are encouraged to exercise diligence in monitoring the status of their basic application and/or basic registration (see TMEP §1705.05). Once the IB cancels or restricts an international registration, it cannot be reinstated. If a problem arises with the basic application and/or registration, or a status inquiry reveals that the basic application and/or registration has become improperly abandoned or cancelled, the applicant or registrant should promptly take corrective action. See TMEP §§1712 et seq. for information regarding reinstatement of abandoned applications and cancelled registrations; and TMEP §§1714 et seq. regarding petitions to revive abandoned applications.
1902.10 Transformation When the USPTO is the Office of Origin
If the IB cancels an international registration as a result of the cancellation or restriction of the USPTO basic application and/or USPTO basic registration under Article 6(4) (see TMEP §1902.09), the holder may “transform” the international registration into national applications in the offices of the Contracting Parties that were designated for extension(s) of protection in the international registration. Transformation must be requested within three months from the date of cancellation of the international registration. Article 9quinquies. The filing date for the new national application(s) that results from the transformation of an extension of protection will be the international registration date (or the date of recordal of the subsequent designation requesting an extension of protection to that Contracting Party).
The goods/services in the national application(s) must have been covered by the cancelled international registration. Transformation may be requested for some or all of the goods/services that are cancelled or restricted from an international registration. Transformation may not be requested for goods/services that exceed the scope of those cancelled or restricted from the international registration.
Transformation of an extension of protection may take place only if the IB cancels or restricts the international registration at the request of the USPTO, due to cancellation of the USPTO basic application or USPTO basic registration. It is not available if the international registration is cancelled at the request of the holder, or expires for failure to renew. Transformation is not available at the Office of Origin.
The request for transformation must be filed directly with the designated Contracting Party, and will be examined as a national application under the laws of that Contracting Party. The USPTO and the IB are not involved.
See TMEP §§1904.09 et seq. regarding transformation of a request for extension of protection to the United States into an application under §1 or §44 of the Trademark Act.
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1902.11 Representative
An applicant for or holder of an international registration may appoint a representative to represent the applicant or holder before the IB by indicating the representative’s name in the appropriate box on the international application or subsequent designation form. Common Reg. 3(2)(a). The applicant/holder may also appoint a representative in a subsequent communication submitted to the IB (see TMEP §1906.01(d)). Common Reg. 3(2)(b). Form MM12, for appointing a representative, may be found on the IB website at http://www.wipo.int/madrid/en/.
1902.12 USPTO Must Notify IB of Division or Merger of Basic Application or Registration
Under Common Reg. 23, an Office of Origin must notify the IB if the basic application or registration is divided into several applications or registrations, or if several applications or registrations are merged into a single application or registration, within 5 years after the date of the international registration. See TMEP §§1110 et seq. regarding division of a United States application and TMEP §§1615 et seq. regarding division of a United States registration.
1903 Payment of Fees
1903.01 Payment of USPTO Fees
The fees required by the USPTO for processing correspondence relating to international applications and registrations under the Madrid Protocol are set forth in 37 C.F.R. §7.6. The USPTO charges a fee for processing the following Madrid-related documents:
• International applications under 37 C.F.R. §7.11;
• Subsequent designations under 37 C.F.R. §7.21;
• Requests to record assignments, restrictions, or release of restrictions of an international registration under 37 C.F.R. §§7.23 and 7.24;
• Notices of replacement under 37 C.F.R. §7.28; and
• Affidavits under §71 of the Act (see 37 C.F.R. §7.36).
These fees must be paid in United States dollars at the time of submission, regardless of whether the document is submitted electronically or on paper.
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1903.02 Payment of International Fees
In addition to the fees required by the USPTO, there are international fees for processing international applications and registrations required by the IB. For international applications, subsequent designations, and requests to record changes of ownership of international registrations that are filed through TEAS, fees may be paid either directly to the IB or through the USPTO. 37 C.F.R. §7.7(a). Applicants/holders filing on paper must pay all international fees directly to the IB in Swiss currency. 37 C.F.R. §7.7(c); see Common Regs. 34 to 38 regarding payment of fees. There is a fee calculator and a schedule of fees on the IB website at http://www.wipo.int/madrid/en/.
The IB will accept the following forms of payment:
• Debit to a current account established with the IB;
• Payment into the Swiss postal check account or to any of the specified bank accounts of the IB; and
• Credit card where, in the context of an electronic communication, an electronic interface for online payment has been made available by the IB.
See Guide to International Registration, Para. B.I.08.05. Admin. Instr. §19.
Effective January 1, 2008, the IB does not accept banker’s checks as a mode of payment. See Change in Practice Regarding Acceptance by USPTO of Bank Checks for Fees Payable to the International Bureau, 1328 OG 199 (March 25, 2008). See also IB Information Notice No. 20/2007, on the IB website at http://www.wipo.int/edocs/madrdocs/en/2007/madrid_2007_20.doc.
The conditions for opening, using, and closing a current account with the IB are posted on the IB website at http://www.wipo.int/madrid/en/guide/part_d/pdf/account.pdf. The IB has introduced an e-payment service on its website for payment of fees notified in irregularity notices and other WIPO communications concerning the Madrid System. Users are invited to make payments by credit card (American Express,® Mastercard, ® Visa®) or through a WIPO Current Account. See the WIPO website at https://webaccess.wipo.int/epayment/ for further information about e-payment.
Questions concerning payment of international fees should be directed to the IB by mail to the World Intellectual Property Organization, 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland; by telephone at 41 22 338 9111; by fax to 41 22 740 1429; or by e-mail to intreg.mail@wipo.int. The USPTO cannot assist applicants/holders in calculating the appropriate international fees or in selecting a method of payment of fees to the IB.
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Failure to send a fee to the IB before the IB receives a form could result in issuance of a notice of irregularity by the IB. See TMEP §§1902.02(i), 1902.08(c), and 1906.01(a)(ii).
1904 Request for Extension of Protection of International Registration to the United States
1904.01 Filing Request for Extension of Protection to United States
The holder of an international registration may file a request for extension of protection of that registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a). The request for extension of protection to the United States may be included in the international application, or in a subsequent designation made after the IB registers the mark. The IB will transmit the request for extension of protection to the United States to the USPTO electronically. The USPTO refers to a request for extension of protection to the United States as a “§66(a) application.” 37 C.F.R. §7.25(b).
1904.01(a) Section 66(a) Basis
Section 66(a) of the Trademark Act provides a basis for filing in the United States. See 37 C.F.R. §2.34(a)(5). A basis under §66(a) cannot be combined with any other basis. 37 C.F.R. §2.34(b)(3). A §66(a) applicant may not change the basis unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c). 37 C.F.R. §2.35(a). See TMEP §1904.09 regarding transformation.
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO and cannot be added or substituted as a basis in an application originally filed under §1 or §44.
1904.01(b) Filing Date
If a request for extension of protection of an international registration to the United States is made in an international application, the filing date of the §66(a) application is the international registration date. If a request for extension of protection to the United States is made in a subsequent designation, the filing date of the §66(a) application is the date on which the subsequent designation was recorded by the IB. 15 U.S.C. §1141f(b); 37 C.F.R. §7.26.
1904.01(c) Declaration of Intent to Use Required
Section 66(a) of the Trademark Act requires that a request for extension of protection to the United States include a declaration that the applicant has a bona fide intention to use the mark in commerce that can be controlled by the
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United States Congress. The declaration must include a statement that the person making the declaration believes the applicant to be entitled to use the mark in commerce; and that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. §1141(5).
The declaration must be signed by: (1) a person with legal authority to bind the applicant; (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 authorized to practice before the USPTO under 37 C.F.R. §11.14 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant. 37 C.F.R. §2.33(a).
The USPTO has provided the IB with wording for the declaration of the applicant’s bona fide intention to use the mark in commerce, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18). Instructions as to who is a proper party to sign the declaration have also been provided to the IB.
The IB will check to ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO. The IB does not send the verified statement to the USPTO.
The verified statement remains part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The examining attorney will not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of the application on file with the IB. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration. See TMEP §804.05 for further information about declarations in §66(a) applications.
1904.01(d) Use Not Required
Use in commerce prior to registration is not required. Section 68(a)(3) of the Trademark Act, 15 U.S.C. §1141h(a)(3). However, after registration, periodic affidavits of use or excusable nonuse are required to maintain a registered extension of protection. Section 71 of the Trademark Act, 15 U.S.C. §1141k. See TMEP §1613 for information about these affidavits.
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1904.01(e) Priority
A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
(1) The request for extension of protection contains a claim of priority;
(2) The request for extension of protection specifies the filing date, serial number, and country of the application that forms the basis for the claim of priority; and
(3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).
Section 67 of the Trademark Act, 15 U.S.C. §1141g; Article 4(2). See also Paris Convention Article 4(D).
To be eligible for a claim of priority in a §66(a) application, the holder must file the request for extension of protection to the United States within 6 months of the date of the filing that forms the basis of the priority claim. If the United States is designated for an extension of protection in an international application, the international registration date cannot be later than 6 months after the date of the filing that formed the basis of the priority claim. If a request for extension of protection to the United States is made in a subsequent designation, the date of recordal of the subsequent designation cannot be later than 6 months after the date of the filing that formed the basis of the priority claim.
1904.01(f) Filing Fee
The filing fee for a §66(a) application will be sent to the USPTO by the IB. The examining attorney should not require additional filing fees during examination, except where the application is divided due to a change in ownership with respect to some but not all of the goods/services. See Article 8 and Common Regs. 34 through 38 regarding international fees, and TMEP §1110.11 regarding dividing a §66(a) application.
1904.01(g) Constructive Use
Under §66(b) of the Trademark Act, unless extension of protection is refused, the filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c) of the Trademark Act, 15 U.S.C. §1057(c), as of the earliest of the following:
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(1) The international registration date, if the request for extension of protection to the United States was filed in the international application;
(2) The date of recordal of the subsequent designation requesting extension of protection, if the request for extension of protection to the United States was made after the international registration date; or
(3) The date of priority claimed pursuant to §67 of the Trademark Act.
1904.01(h) Cannot be Based on USPTO Basic Application or Registration
An international registration in which the United States is the Office of Origin (i.e., an international registration based on a basic application pending in the USPTO or a basic registration issued by the USPTO) cannot be used to obtain an extension of protection to the United States. 15 U.S.C. §1141e(b); Article 3bis. The IB will not send a request for extension of protection to the United States if the international registration is based on a USPTO basic application and/or registration.
1904.02 Examination of Request for Extension of Protection to the United States
1904.02(a) Examined as Regular Application
Under §68(a) of the Trademark Act, a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register. 15 U.S.C. §1141h. It is unnecessary for the examining attorney to review the international registration on file at the IB, since the IB will forward all the necessary information with the request for extension of protection or in subsequent notifications, such as notices of correction, limitation, or change to the name or address of the holder or holder’s representative.
Except for 37 C.F.R. §§2.22-2.23, 2.130-2.131, 2.160-2.166, 2.168, 2.173, 2.181-2.186, and 2.197, all rules in 37 C.F.R. Part 2 apply to a request for extension of protection of an international registration to the United States, including sections related to proceedings before the Trademark Trial and Appeal Board, unless stated otherwise. All rules in 37 C.F.R. Parts 10 and 11 relating to representation of others before the USPTO also apply to requests for extension of protection. 37 C.F.R. §7.25(a).
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1904.02(b) Examination of Classification of Goods/Services in §66(a) Applications
In a §66(a) application, the IB controls the classification. Article 3(2). The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration. Any classification change made during examination would ultimately be refused by the IB upon notification of the final grant of protection.
Therefore, in a §66(a) application, the following types of amendments are prohibited:
• Changing the classification of goods/services from the classification assigned by the IB;
• Adding a class to the application that is not the subject of the request for extension of protection to the United States; or
• Transferring goods/services between classes in a multiple-class application.
37 C.F.R. §2.85(d). See TMEP §1401.03(d).
The only instance in which classification in a §66(a) application can be altered is upon the receipt of a correction from the IB. See TMEP §1904.02(e)(i) regarding IB corrections.
If the classification of a §66(a) application is inadvertently changed during examination, the USPTO will issue corrections to the holder and to the IB.
1904.02(c) Examination of Identification of Goods/Services in §66(a) Applications
Although the IB determines classification of the goods/services, for purposes of identification, the examining attorney will examine the identification of goods/services in a §66(a) application according to the same standards of specificity used in examining applications under §§1 and 44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. Specifically, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO’s Acceptable Identification of Goods and Services Manual (“USPTO ID Manual”) whenever possible. However, with respect to requests for extension of protection to the U.S., the assigned classes define the scope of the goods/services for the purpose of determining the extent to which the identification may be amended in accordance with 37 C.F.R. §2.71.
Accordingly, if the initial identification of goods/services in the §66(a) application is definite, but misclassified under United States standards, the
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examining attorney must accept the identification, and cannot change the classification. If the initial identification of goods/services is not definite, the classification cannot be changed and the scope of the identification for purposes of permissible amendment is limited by the IB-assigned classification. See TMEP §§1401.03(d), 1402.01(c), and 1402.07(a). Because the international registration is limited to those classes assigned by the IB, the identification includes only those products or services falling within the identified classes. To propose an amendment outside of the scope of the classes would result in the lack of a basis for registration of such goods/services under U.S. law.
If a §66(a) applicant wants to seek registration for goods, services, or class(es) which are included in the international registration but were not originally included in the request for extension of protection to the United States, the §66(a) applicant must file a subsequent designation with the IB. Article 3ter(2); Guide to International Registration, B.II.38.03. To seek registration for good/services not within the scope of the international registration, the applicant may file a separate application for the same mark under §1 and/or §44.
The identification of goods/services must be specific, definite, clear, accurate, and concise. See TMEP §1402.01 and cases cited therein. The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods or services covered by the mark. In re Omega SA, 494 F.3d 1363, 83 USPQ2d 1541 (Fed. Cir. 2007) (noting that the USPTO has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of Goods and Services).
Generally, there are three types of identifications: (1) acceptable identifications of goods/services; (2) indefinite identifications of goods/services with acceptable options within the scope of the class; and (3) indefinite identifications of goods/services that do not include any goods/services in the designated class.
1904.02(c)(i) Acceptable Identifications of Goods/Services
When the identification of goods/services is definite in accordance with USPTO policies, the identification is acceptable, regardless of the class assigned. If the goods/services are classified in accordance with the current edition of the Nice Agreement, no further requirements are necessary.
An international registration may encompass goods/services that were classified under an earlier version of the Nice Agreement. If the IB’s classification of goods/services in the §66(a) application is different from the classification currently set forth in the USPTO ID Manual, the examining attorney will not require amendment of the classification. However, the examining attorney should notify the Administrator for Trademark Identifications, Classification and Practice (“Administrator”) of the serial
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number, using the internal TM Madrid ID/Class mailbox. The goods/services cannot be moved to another class identified in the application. 37 C.F.R. §2.85(d).
With respect to acceptable goods/services that appear to be misclassified, if the examining attorney determines that the class would be proper were the goods/services amended with further clarifying language, the examining attorney may require an amendment for further specificity to limit the identification to goods/services that are in the class indicated in the international registration.
Examples:
• The goods are identified as “footwear” in Class 25. The wording is definite and the IB has assigned the correct class. No action necessary.
• The services are identified as “legal services,” but the IB has assigned Class 42. The wording is definite, but the class is not consistent with the current edition of the Nice Agreement. No action is necessary. The examining attorney should notify the Administrator of the serial number.
• The goods are identified as “tobacco,” but the IB has assigned Class 35. The Alphabetical List of the Nice Agreement classifies such goods in Class 34. The examining attorney will accept the goods in the assigned class. The examining attorney should notify the Administrator of the serial number.
• The goods are identified as “pasta,” but the IB has assigned Class 3. The Alphabetical List of the Nice Agreement classifies such goods in Class 30. The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.
1904.02(c)(ii) Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class
When the identification of goods/services is unacceptable as indefinite, and more specific language that identifies goods/services in the class can be suggested, the examining attorney must require amendment of the wording and advise the applicant that any proposed amendment must be within the scope of the class of the international registration. The examining attorney should suggest acceptable identification(s) within the class. Any proposed amendment must also be within the scope of the wording of the identification as originally written (37 C.F.R. §2.71(a)).
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Examples:
• The goods are identified as “headgear” in Class 25. A requirement for greater specificity is issued, offering suggestions for more narrowly identified goods in Class 25, such as “headgear, namely hats, beanies, bathing caps.” The examining attorney should not suggest items within the scope of “headgear” that are not in Class 25, such as “helmets” in Class 9 or “headgear for orthodontic appliances” in Class 10. The Office action must include an advisory that only goods within the scope of the IB-assigned class will be accepted.
• The services are identified as “consultation services” in Class 36. A requirement for more specificity is issued, offering suggestions for more narrowly recited services in Class 36, such as “banking consultation,” “credit consultation,” or “financial consultation.” The Office action must include an advisory that only services within the scope of the IB-assigned class will be accepted.
• The goods are identified as “video games” in Class 28. The examining attorney may suggest that the applicant adopt “hand held unit for playing video games” or “stand alone video game machines” or “arcade-type electronic video games” in Class 28. Any proposed amendment including goods in the nature of “video game software” or “video game machines for use with external display screens” (both of which are Class 9 items under the current edition of the Nice Agreement) would be outside of the scope of the goods covered by the international registration, and such an amendment must be refused. The Office action must include an advisory that amendments may only include goods within the scope of the class assigned by the IB.
1904.02(c)(iii) Indefinite Identification of Goods/Services that Does not Include any Goods/Services Within the Class
In the rare situation where the identification is indefinite, and there appear to be no goods/services that are within the scope of the identification as presently worded that are properly classified in the indicated class, the examining attorney must nevertheless require the applicant to submit an acceptably definite identification. To be acceptable, any submitted amendment must be within the scope of the wording of the original goods/services.
The examining attorney should explain that he/she is unable to suggest substitute wording. The examining attorney may offer the applicant the option of deleting the unacceptable language from the application, but must not issue a requirement for the applicant to do so.
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Examples:
• The services are identified as “food services” in Class 36. The identification is too broad to be acceptable, yet does not encompass any services that currently would be properly classified in Class 36, as restaurant services and other similar food and beverage services are in Class 43. The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the recitation within the scope of services properly classified in Class 36 in accordance with the current edition of the Nice Agreement, and notify the Administrator of the serial number.
• The goods are identified as “engine pumps” in Class 12. The identification is too broad to be acceptable, yet does not encompass any goods that currently would be properly classified in Class 12, as water and oil pumps for land vehicle engines are in Class 7. The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the identification within the scope of goods properly classified in Class 12 in accordance with the current edition of the Nice Agreement, and notify the Administrator of the serial number.
1904.02(c)(iv) Examination of Proposed Amendments and Issuance of Final Requirements For an Acceptable Identification
If, in response to the Office action, an applicant proposes an amendment that: (1) remains unacceptably indefinite; (2) is beyond the scope of the original wording; or (3) is beyond the scope of the class, the examining attorney must refuse to accept the amendment. If the proposed amendment raises no new issues and the application is otherwise in condition for a final action, the examining attorney must issue a final requirement for an acceptable identification.
The basis for refusing an unacceptably indefinite identification is the requirement for a list of “particular goods and services” in a complete application. 37 C.F.R. §2.32(a)(6). Trademark Rule 2.71(a) provides the basis for refusal of a proposed amendment that exceeds the scope of the originally identified goods/services, including wording beyond the scope of the class of the international registration. The applicant is not bound by the scope of the language in the unacceptable amendment but, rather, by the language of the identification before the proposed amendment. See TMEP §1402.07(d). The examining attorney should also advise the applicant that the previous items listed in the existing identification (not the unacceptable substitute) remain operative for purposes of future amendment. Once an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, the amendment replaces all previous
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identifications, and thus restricts the scope of goods/services to that amended language. See TMEP 1402.07(e).
The examining attorney may suggest – but must not require – that the applicant delete an unacceptable term or phrase or proposed goods/services entry that fall outside the scope of the class. However, if deletion of an unacceptable identification would result in deletion of all goods/services from the §66(a) application, the examining attorney must not suggest that the applicant delete the unacceptable wording. Instead, the examining attorney must continue to require an acceptable amendment, making the requirement final if appropriate. If the application contains acceptable goods/services that can be approved for publication, and would otherwise be in condition for a partial abandonment advisory, the examining attorney should indicate that if an acceptable response is not received, the unacceptable goods/services will be abandoned and the application will proceed with the acceptable items only. See TMEP §718.02(a) regarding partial abandonment.
If it appears that there is an error in classification, the examining attorney may suggest the applicant contact the IB to request correction of or a limitation to the international registration. The USPTO will not suspend prosecution of the application unless the applicant requests suspension in a timely response to an Office action and supports the request with a copy of the request for correction filed with the IB. The applicant may also appeal the final identification requirement to the Trademark Trial and Appeal Board, or petition to the Director to review the requirement, if permitted by 37 C.F.R. §2.63.
1904.02(c)(v) Effect of Indicated Classes – No Precedential Value on Later-Filed Applications
Because the IB determines classification assigned to goods and services encompassed by the international registration, and because registered extensions of protection may be based upon international registrations issued under previous editions of the Nice Agreement, the assigned classes in registered extensions of protection will not be considered as controlling in any later-filed U.S. applications to the extent such classification is contrary to USPTO policy. The classification of goods/services in registered extensions of protection and published applications under §66(a) is only relevant to the particular goods and services identified therein, and should not be relied upon in other applications to support classification or identification of goods or services that are otherwise unacceptable under current USPTO practice. See TMEP §1402.14.
1904.02(d) Certification and Collective Marks
Classes A, B, and 200 are classes from the old United States classification system that are still used in the United States to classify certification marks for
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goods (Class A), certification marks for services (Class B), and collective membership marks (Class 200). These classes are not included in the international classification system under the Nice Agreement.
However, a §66(a) application may indicate that the mark is a “Collective, Certificate or Guarantee Mark.” In such a case, the examining attorney will require the applicant to clarify for the record the type of mark for which it seeks protection. The examining attorney must also require the applicant to comply with the requirements for the particular type of mark, i.e., collective trademark, collective service mark, collective membership mark, or certification mark. See TMEP §§1303 et seq. regarding collective trademarks and collective service marks, TMEP §§1304 et seq. regarding collective membership marks, and TMEP §§1306 et seq. regarding certification marks.
If a §66(a) applicant indicates that the mark is a certification mark or collective membership mark, the USPTO will not reclassify it into United States Class A, B, or 200. However, the examining attorney must ensure that the applicant complies with all other United States requirements for certification or collective membership marks. See TMEP §§1304 et seq. and §§1306 et seq.
1904.02(e) Corrections and Limitations to the International Registration
1904.02(e)(i) Corrections
When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio. Requests for correction may be submitted to the IB by the holder (i.e., a §66(a) applicant seeking protection in U.S.), the Office of Origin of the international application, or in some cases by the USPTO Administrator for Trademark Identifications, Classification and Practice.
Corrections that merely reclassify the originally identified goods/services may be accepted; however, any indefinite wording of the identification of such goods/services that was acceptably amended during the course of USPTO examination will remain as amended, that is, the amended wording is not affected or changed by the correction issued by the IB. When an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, including voluntary deletion of goods/services, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that amended language. See TMEP 1402.07(e).
1904.02(e)(ii) Limitations
The holder of an international registration may record a limitation of the good/services, which may affect some or all of the designated Contracting Parties. Article 9bis(iii). Upon recordation, the IB will notify the USPTO if the U.S. is affected by the limitation. The recording of a limitation does not
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remove the goods/services concerned from the international registration, but simply narrows the goods/services for which the holder seeks protection in the particular countries affected.
A limitation may set forth particular goods/services narrower in scope than the goods/services as identified in the international registration. For example, if the international registration covers “clothing,” the holder may limit the goods to “sweaters and pants” with respect to the U.S. Upon notification by the IB, if the examining attorney considers that the change requested is not in fact a limitation but an expansion of the list of goods/services, or is otherwise unacceptable, then the USPTO may declare that the limitation has no effect in the United States. Common Regs. 27(5)(a)-(c). For example, if the goods are identified as “clothing” in the international registration, and the limitation specifies “sweaters and hair bows,” the examining attorney must refuse to apply the “hair bows” portion of the limitation to the request for extension of protection to the United States because it expands, rather than limits, the scope of the goods of the international registration.
See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB; TMEP §1904.03(g) regarding limitations in pending §66(a) applications; and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States.
1904.02(e)(iii) Limitations vs. Amendments
To the extent that an amendment of the identification in a §66(a) application narrows or restricts the goods/services, an amendment is comparable to a limitation affecting only the United States. A limitation filed at the IB by the applicant clarifying the nature of the goods/services may render the identification of goods/services in the §66(a) application sufficiently definite. Nevertheless, if the examining attorney has issued an Office action requiring amendment of the identification of goods/services, a proper response to the Office action must be received in the allowed time period. Simply recording a limitation with the IB is not a response to an Office action. The applicant must file a response with the USPTO within six months of the date on which the USPTO issued the Office action, stating that the applicant has recorded a limitation that will resolve the outstanding issue(s).
See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB; TMEP §1904.03(g) regarding limitations in pending §66(a) applications; and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States.
1904.02(f) Mark Must Be Registrable on Principal Register
There is no provision in the Trademark Act for registration of a mark in a request for an extension of protection on the Supplemental Register. If the
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proposed mark is not registrable on the Principal Register, the extension of protection must be refused. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
1904.02(g) Refusal Must Be Made Within 18 Months
Under §68(c) of the Trademark Act and Article 5 of the Protocol, the USPTO must notify the IB of any refusal entered in a §66(a) application within 18 months of the date the IB transmits the request for extension of protection to the USPTO. See TMEP §1904.03(a).
The TRAM database tracks the period of time within which the USPTO must notify the IB of a refusal of protection. This information appears in the §66(a) International Registration data field “Auto Protection Date.” If a refusal is not received by the IB as of this date, the mark receives automatic protection under Article 5(5) of the Protocol.
1904.02(h) Issuing Office Actions
The USPTO will send the first Office action in a §66(a) application to the IB. The first Office action is known as a provisional refusal and must be reviewed by the IB. If the provisional refusal meets the applicable requirements (see TMEP §§1904.03 et seq.), the IB will process the refusal and send it to the holder (i.e., the §66(a) applicant). The IB notifies the USPTO of the date on which it processed the refusal, and the USPTO updates the TRAM database with this information. A response to the Office action issued by the USPTO is due within six months of the date on which the USPTO sent the action to the IB, not the date on which the refusal was processed by the IB.
An examiner’s amendment or a combined examiner’s amendment/priority action (see TMEP §§707 et seq. and 708.05) may not be issued as a first Office action because the IB will not accept such amendments. Examiner’s amendments and combined examiner’s amendments/priority actions may be issued as second and subsequent actions if authorized by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 (“qualified practitioner”). See TMEP §§602 et seq. regarding persons who are authorized to represent applicants, registrants, and parties to proceedings before the USPTO.
The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO. See TMEP §§609.01(a) and 1904.02(i) regarding correspondence in §66(a) applications.
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1904.02(i) Correspondence Address
The address of the international registration holder’s designated representative is treated as the correspondence address, unless a change of correspondence address is filed in the USPTO.
The USPTO will send second and subsequent Office actions, and other notices, directly to the §66(a) applicant’s correspondence address of record.
In a §66(a) application or a registered extension of protection, the USPTO will accept a notice of change of the correspondence address, signed by the applicant or registrant, someone with legal authority to bind the applicant/registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner, and will send correspondence to the new address. See TMEP §§609 et seq. regarding the procedures for establishing and changing the correspondence address in the USPTO.
A change of the correspondence address in the USPTO records will not affect the address of the holder’s representative designated in the international registration, to which the IB sends correspondence. A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. See TMEP §1906.01(d). There are forms for changing the name or address of the representative on the IB website at http://www.wipo.int/madrid/en/. See also Common Reg. 36(i).
See TMEP §§602.03 et seq. regarding foreign attorneys and agents, TMEP §609.01(a) regarding correspondence in §66(a) applications, and TMEP §609.04 regarding correspondence with parties not domiciled in the United States.
1904.02(j) Mark Cannot Be Amended
The Madrid Protocol and the Common Regulations do not permit amendment of a mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The IB’s Guide to International Registration, Para. B.II.69.02, provides as follows:
[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time. If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application. This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be....
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Accordingly, because an application under §66(a) is a request to extend protection of the mark in an international registration to the United States, the Trademark Rules of Practice make no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit such amendments. See 37 C.F.R. §2.72; TMEP §807.13(b). However, the applicant still must comply with the United States requirements regarding drawings and descriptions of the mark. See TMEP §1904.02(k).
1904.02(k) Drawings and Descriptions of the Mark
Though the mark in a §66(a) application cannot be amended, the applicant must comply with the United States requirements regarding drawings of the mark. 15 U.S.C. §1141h(a); 37 C.F.R. §§2.52 and 7.25(a).
If the drawing does not meet United States requirements (e.g., due to the improper inclusion of the federal registration symbol ® or the unacceptable reproductive quality of the image), the examining attorney will require a substitute drawing. Furthermore, if the reproduction of the mark in the international registration consists of multiple renditions of a three-dimensional mark, the applicant will be required to either: (1) comply with the United States requirement to depict the mark in a single rendition, 37 C.F.R. §2.52(b)(2); or (2) petition the Director to waive this requirement. See TMEP Chapter 1700 regarding petitions, and TMEP §807.10 regarding drawings of three-dimensional marks.
If the international registration contains no color claim, but there is a color drawing in the international registration, the applicant must either: (1) submit a claim of the color(s) featured in the mark and describe their location; or (2) state for the record that no claim of color is made with respect to the international registration, and submit a black-and-white reproduction of the same mark depicted in the international registration. See TMEP §807.07(b).
A §66(a) applicant must also comply with United States requirements regarding descriptions of the mark. 37 C.F.R. §§2.37, 2.52(b)(5), and 7.25(a).
With respect to sound marks and other non-visual marks, if the international registration contains a visual depiction of some kind, such as a musical staff corresponding to the notes of a sound mark, the applicant will be required to comply with the United States requirements for a detailed description of the mark. See TMEP §807.09.
1904.02(l) Jurisdiction
The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act. 37 C.F.R. §2.84. However, when deciding whether to grant a request to restore jurisdiction in a §66(a) application, the Director must also
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consider the time limits for notifying the IB of a refusal, set forth in Article 5(2) of the Protocol and §68(c) of the Trademark Act, 15 U.S.C. §1141h(c).
1904.03 Notice of Refusal
1904.03(a) Notice Must be Sent Within 18 Months
Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit:
(1) A notification of refusal based on examination;
(2) A notification of refusal based on the filing of an opposition; or
(3) A notification of the possibility that an opposition may be filed after expiration of the 18-month period. If the USPTO notifies the IB of the possibility of opposition, it must send the notification of refusal within 7 months after the beginning of the opposition period, or within one month after the end of opposition period, whichever is earlier.
Section 68(c) of the Trademark Act, 15 U.S.C. §1141h(c); Article 5.
If the USPTO does not send a notification of refusal of the request for extension of protection to the IB within 18 months, the request for extension of protection cannot be refused. Section 68(c)(4) of the Trademark Act; Article 5(5); Common Reg. 17(2)(iv). If the USPTO sends a notification of refusal, no grounds of refusal other than those set forth in the notice can be raised more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. Section 68(c)(3) of the Trademark Act.
If upon re-examination the examining attorney determines a new ground of refusal exists, a second Office action raising this new ground may be issued only if time remains in the 18-month period. In such a case, the examining attorney must contact the MPU upon issuance of the Office action, so that a notification of the new ground of refusal can be sent to the IB.
1904.03(b) Requirements for Notice of Refusal
A final decision is not necessary; a provisional refusal is sufficient to meet the 18-month requirement. Under Common Reg. 17, a notice of provisional refusal must be dated and signed by the USPTO and must contain:
• The number of the international registration, preferably accompanied by an indication of the mark;
• All grounds of refusal;
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• If there is a conflicting mark, the filing date, serial number, priority date (if any), registration date and number (if available), name and address of the owner, reproduction of the conflicting mark, and list of goods/services;
• A statement that the provisional refusal affects all the goods/services, or a list of the goods/services affected;
• The procedures and time limit for contesting the refusal, i.e., period for response or appeal of the refusal, and the authority with which an appeal can be filed;
• If the refusal is based on an opposition, the name and address of the opposer.
Common Reg. 17(2).
The IB will record the provisional refusal in the International Register and transmit it to the holder of the registration. Article 5(3); Common Reg. 17(4).
1904.03(c) §66(a) Applicant Must Respond to Notification of Refusal
A holder of an international registration who applies for an extension of protection to the United States will receive an initial notification of refusal through the IB. The holder must respond directly to the USPTO. The holder may be represented by an attorney, but only if such attorney meets the requirements of 37 C.F.R. §11.14 (see TMEP §§602 et seq.). Standard examination procedures are used to examine §66(a) applications. 15 U.S.C. §1141h.
A foreign attorney who does not meet the requirements of 37 C.F.R. §11.14 cannot represent the applicant before the USPTO or sign a response to an Office action on behalf of the applicant. 37 C.F.R. §11.5(b)(2). See TMEP §§602.03 et seq., 611.02, 712.01, and 712.03.
1904.03(d) Refusal Pertaining to Less Than All the Goods/Services
If a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark may be protected for the remaining goods/services, even if the holder does not respond to the notification of refusal. Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C. §§1141h(c) and 1141i(a), provide that an application under §66(a) of the Trademark Act is automatically protected with respect to any goods or services for which the USPTO has not timely notified the IB of a refusal by either ex officio examination or opposition.
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Accordingly, 37 C.F.R. §2.65(a) provides that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to file a complete response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services. See TMEP §718.02(a) for further information about partial abandonment.
1904.03(e) Confirmation or Withdrawal of Provisional Refusal
If the USPTO has sent a notice of provisional refusal, once the procedures regarding the refusal are complete, the USPTO must notify the IB that:
(1) protection is refused for all goods/services;
(2) the mark is protected for all goods/services; or
(3) the mark is protected for some specified goods/services.
Common Reg. 17(5). The IB will record this notice and send it to the holder.
1904.03(f) Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection
When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio. The IB will also correct an error at the request of the holder or the Office of Origin. Common Reg. 28(1). If the IB notifies the USPTO of a correction with regard to an international registration, the USPTO may declare in a notification to the IB that protection cannot, or can no longer, be granted to the international registration as corrected. Such a declaration must be sent to the IB within 18 months of notification of the correction. This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international registration as originally notified to the USPTO. Common Reg. 28(3).
If the MPU determines that a correction does have effect in the United States and does not require review by the examining attorney, the correction will be entered into the USPTO’s database. The MPU trademark specialist will update the prosecution history in TRAM to reflect that the processing of the correction has been completed.
If the MPU determines that review by the examining attorney is required, the MPU will notify the examining attorney of the correction and the examining attorney will determine whether the correction raises any new grounds for refusal. If the examining attorney determines that the correction raises a new ground for refusal, he or she must issue an Office action refusing registration for the relevant goods/services or making the necessary requirements regarding such goods/services, and indicating the reasons why, supported by
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evidence, where appropriate. The examining attorney must also notify the MPU that a new refusal has been made, and the MPU will ensure that the IB is notified of the new grounds for refusal. The applicant may argue against the refusal, and, if such refusal is made final, file an appeal to the Trademark Trial and Appeal Board or petition to the Director pursuant to 37 C.F.R. §2.146.
See also TMEP §1904.14 regarding corrections to registered extensions of protection, and TMEP §1906.01(f) for information about filing requests for correction with the IB.
1904.03(g) Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection
Upon receipt of notification from the IB that a limitation of the list of goods/services may affect an extension of protection to the United States, the USPTO may declare that the limitation has no effect. Such a declaration must be sent to the IB within 18 months of notification of the limitation. The USPTO will indicate the reasons why the limitation has no effect, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal. Common Regs. 27(5)(a)-(c).
If the MPU determines that a limitation does have effect in the U.S., the limitation shall be entered into the trademark database with respect to the goods/services as identified at the time of receipt of the notification of limitation.
If the MPU determines that review by the examining attorney is required, the MPU will notify the examining attorney, and the examining attorney will determine whether the limited goods/services are within the scope of the identification of goods/services as presently identified in the §66(a) application. If the examining attorney determines that the limitation is not acceptable (e.g., because he or she determines that the change requested results in an extension rather than a limitation of the goods/services), he or she must issue an Office action refusing the limitation and indicating the reasons why the limitation is unacceptable. The examining attorney must also notify the MPU that a new refusal has been made, and the MPU will ensure that the IB is notified that the limitation has no effect in the United States. The applicant may argue against the refusal of the limitation, and, if such refusal is made final, file an appeal to the Trademark Trial and Appeal Board or petition to the Director pursuant to 37 C.F.R. §2.63(b).
If a limitation results in the deletion of all goods/services identified in the §66(a) application, the application will be abandoned.
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See also TMEP §1906.01(e) for information about filing requests to record limitations with the IB, and TMEP §1904.15 regarding limitations in the list of goods/services in registered extensions of protection.
1904.04 Opposition
Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act. As noted above, the USPTO must notify the IB within 18 months of the date the IB sends the request for extension of protection to the USPTO of: (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period.
The notice must state the dates on which the opposition period begins and ends, if known. If the dates are unknown, the USPTO must communicate them to the IB “at the latest at the same time as any notification of a provisional refusal based on an opposition.” Common Reg. 16(1)(b).
Any notification of refusal on the basis of opposition must be received by the IB within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier. 15 U.S.C. §11411h(c)(2); Article 5(2)(c)(ii).
An opposition to a §66(a) application must be filed through the Electronic System for Trademark Trials and Appeals (“ESTTA”). 37 C.F.R. §2.101(b)(2). In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005). The notice of opposition must include all fees for each party opposer to oppose the registration in all classes specified in the opposition. 37 C.F.R. §2.101(d)(2). Once filed, an opposition to a §66(a) application may not be amended to change or add to the grounds for opposition, or to add to the goods or services opposed. 37 C.F.R. §2.107(b).
Request for Extension of Time to Oppose. A request for extension of time to oppose a §66(a) application must be filed through ESTTA. 37 C.F.R. §2.102(a)(2).
No more than three requests to extend the time for filing an opposition may be filed. The time for filing an opposition may not be extended beyond 180 days from the date of publication. 37 C.F.R. §2.102(c).
See TMEP §§1503 et seq. for further information about oppositions.
1904.05 Certificate of Extension of Protection
If the mark in a §66(a) application is published for opposition and is not opposed, or survives all oppositions filed, the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Official
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Gazette. Section 69(a) of the Trademark Act, 15 U.S.C. §1141i(a). From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register. Section 69(b) of the Trademark Act, 15 U.S.C. §1141i(b). The certificate of registration will look the same as the certificate issued for registrations resulting from applications under §§1 and 44 of the Trademark Act (see TMEP §1601.01(a)).
Upon registration, the USPTO will refer to an extension of protection to the United States as a “registration,” “registered extension of protection,” or a “§66(a) registration.” 37 C.F.R. §7.25(c).
A registered extension of protection always remains part of and dependent upon the international registration. In this respect, a registered extension of protection differs from a §44 registration, which is independent from the underlying foreign registration, pursuant to 15 U.S.C. §1126(f).
See TMEP §§1613 and 1904.10 regarding the requirement for an affidavit of use or excusable nonuse under §71 of the Trademark Act, 15 U.S.C. §1141k; TMEP §1905 regarding renewal and expiration of international registrations in general; and TMEP §1614 for information about renewal of registered extensions of protection.
1904.06 Assignment of Extension of Protection to the United States
Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is either: (1) party to the Madrid Protocol, or (2) a member of an intergovernmental organization that is a party to the Madrid Protocol.
Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB. A holder or assignee cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Services Branch of the USPTO. The USPTO will record only those assignments (or other documents transferring title) that have been recorded with the IB. The IB will notify the USPTO of any changes in ownership recorded in the International Register, and the USPTO will automatically update the trademark database and the assignment database to reflect the change(s). See TMEP §501.07.
See TMEP §§1906.01 et seq. regarding requests to record a change of ownership in the International Register.
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Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to §66(a) applications or registered extensions of protection. 37 C.F.R. §7.22.
1904.07 Invalidation of Protection in United States
An extension of protection to the United States may be invalidated in an administrative or judicial proceeding governed by United States law, such as a cancellation proceeding before the Trademark Trial and Appeal Board or a federal court proceeding. The USPTO must notify the IB if an extension of protection to the United States is invalidated. Article 5(6). The requirements for a notice of invalidation are set forth in Common Reg. 19.
1904.08 Cancellation of International Registration By IB
If the IB notifies the USPTO that an international registration has been cancelled with respect to some or all of the goods/services, the USPTO will cancel the extension of protection of that international registration to the United States with respect to such goods/services as of the date on which the IB cancelled the international registration. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30.
See TMEP §1905 regarding renewal of international registrations in general, and TMEP §1614 for information about renewal of registered extensions of protection to the United States.
1904.09 Transformation to Application Under §1 or §44
An international registration is dependent on the basic application and/or basic registration for five years after the date of the international registration. Article 6(3). If the basic application or registration is restricted, abandoned, cancelled, or expired with respect to some or all of the goods or services listed in the international registration, the Office of Origin will notify the IB, and the IB will cancel or restrict the international registration and notify the USPTO of the cancellation or restriction. Article 6(4). See TMEP §1902.09. The USPTO will cancel, in whole or in part, the corresponding §66(a) application or registered extension of protection.
In this situation, the holder of the international registration may “transform” the cancelled §66(a) application or registered extension of protection into an application under §1 or §44 of the Trademark Act for registration of the same mark for any or all of the cancelled goods/services that were covered by the extension of protection. 15 U.S.C. §1141j; Article 9quinquies.
A §66(a) application can be transformed only if the international registration is cancelled or restricted at the request of the Office of Origin under Article 6(4), due to the cancellation of the basic application and/or registration. It is not available if the international registration expires for failure to renew, is
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cancelled or restricted at the request of the holder, or is cancelled or restricted for any other reason. Article 9quinquies; 15 U.S.C. §1141j(c); 37 C.F.R. §7.31. See TMEP 1904.09(a) for the requirements for transformation.
1904.09(a) Requirements for Transformation
A request for transformation must be filed within three months after the date on which the international registration was cancelled, in whole or in part. Article 9quinquies(i); 15 U.S.C. §1141j(c). The request must include:
(1) The serial number or registration number of the extension of protection to the United States (i.e., the §66(a) application or registered extension of protection);
(2) The name and address of the holder of the international registration;
(3) The domestic application filing fee required by 37 C.F.R. §2.6(a)(1) for at least one class of goods or services; and
(4) An e-mail address for receipt of correspondence from the USPTO.
37 C.F.R. §7.31(a).
The holder must file the request for transformation directly with the USPTO, and the transformed application will be examined as a domestic application.
Under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and Article 9quinquies, transformation may take place only if the international registration is cancelled or restricted at the request of the Office of Origin under Article 6(4), due to the cancellation of the basic application and/or registration. It is not available if the international registration expires for failure to renew, is cancelled or restricted at the request of the holder, or is cancelled or restricted for any other reason.
The request for transformation should be mailed using the First Class Service of the USPS to the following address:
Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, the request may be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c). The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 and Express Mail provisions of 37 C.F.R.
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§2.198 do not apply to requests for transformation. 37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2), and 7.4(e).
Requests for transformation cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(6).
1904.09(b) Examination of Transformed Application
A “transformed” application under §1 or §44 of the Trademark Act resulting from the transformation of a cancelled extension of protection must comply with all the requirements of the Trademark Act and Trademark Rules of Practice. 37 C.F.R. §7.31(c). The USPTO will assign a new serial number, and will link the prosecution history of the cancelled extension of protection to the new “transformed” application. A notation of the serial number to which the cancelled extension of protection is transformed appears in the electronic record of the cancelled extension of protection, under “Other Information” in the TRAM database (in the “Transformed To” field). Similarly, a notation of the serial number of the cancelled request for extension of protection appears in the TRAM record for the new transformed application (in the “Transformed From” field).
The “transformed” application will have the same filing date as the cancelled extension of protection, that is: (1) the international registration date, if the request for extension of protection to the United States was made in the international application; or (2) the date of recordal of the subsequent designation with the IB, if the request for extension of protection to the United States was made in a subsequent designation. If the extension of protection was entitled to priority under §67 of the Trademark Act, 15 U.S.C. §1141g, the new application is entitled to the same priority.
If an examining attorney has already searched USPTO records for conflicting marks, the examining attorney assigned to the transformed application does not have to conduct a new search, since the effective filing date will not change. The examining attorney must either ensure that a copy of the search statement is placed in the electronic record of the transformed application, or make a note, in the “Notes-to-the-File” section of the record, indicating the date on which the search was conducted and the serial number of the §66(a) application in which the search statement is of record.
The examining attorney must require the applicant to submit a verified statement in support of the application that relates back to the filing date of the transformed application. See TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark under §1 or §44, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.
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If it is unclear from the transformation request, the examining attorney must require the holder to clarify whether the holder seeks registration for all of the goods/services that were covered by the cancelled extension of protection.
Even if the mark in the extension of protection was already published or registered, republication will be required, due to the substitution of a new basis for registration. 37 C.F.R. §2.35(b)(2).
Generally, in examining a “transformed” application where the extension of protection was published or registered, the USPTO will only issue requirements or refusals related to the new §1 or §44 basis. However, in some cases, where a significant length of time has elapsed since the initial examination of the request for extension of protection, refusal of registration may be appropriate due to changed circumstances. For example, the mark may have become descriptive or generic as applied to the goods/services.
1904.10 Affidavits of Use or Excusable Nonuse Required
Under §71 of the Trademark Act, 15 U.S.C. §1141k, a registered extension of protection to the United States will be cancelled if the holder of the international registration fails to periodically file affidavits of use in commerce or excusable nonuse. See TMEP §1613 for further information.
1904.11 Incontestability
Under §73 of the Trademark Act, 15 U.S.C. §1141m, if a holder files an affidavit that meets the requirements of §15 of the Trademark Act, a registered extension of protection to the United States may become “incontestable”. The period of continuous use on which an affidavit of incontestability may be based may begin no earlier than the date of issuance of the registered extension of protection, unless the holder owns a prior U.S. registration of the same mark for the same goods/services. 15 U.S.C. §1141m-n. See TMEP §§1605 et seq. regarding the requirements for an affidavit of incontestability under §15 of the Trademark Act.
1904.12 Replacement
If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States are: (1) owned by the same person; (2) identify the same mark; and (3) list the same goods/services, then the extension of protection shall have the same rights as those accrued to the United States national registration at the time the certificate of extension of protection issues. Section 74 of the Trademark Act, 15 U.S.C. §1141n; 37 C.F.R. §7.28(a); Article 4bis.
Legally, replacement takes place automatically, by operation of law. However, the USPTO will note the replacement in its records (and notify the
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IB accordingly) only if the holder of a registered extension of protection files a request that it do so. A request to note replacement of a United States national registration with a registered extension of protection must include:
(1) The serial number or registration number of the extension of protection to the United States (i.e., the §66(a) application or registered extension of protection);
(2) The registration number of the replaced United States registration; and
(3) The fee required by 37 C.F.R. §7.6.
37 C.F.R. §7.28(b).
The holder cannot file the request to note replacement of the United States national registration until the registration based on the request for extension of protection issues.
“Replacement” does not invalidate the United States national registration. The United States national registration remains on the register, with all the rights attaching to such a registration, as long as the holder renews the registration under §9 of the Trademark Act and files the necessary affidavits of use or excusable nonuse under §8 of the Trademark Act. 37 C.F.R. §7.29. It is up to the holder to decide whether to maintain the replaced United States national registration.
1904.13 Amendment and Correction of Registered Extension of Protection to the United States
All requests to record changes to an international registration and associated extensions of protection must be filed at the IB. Accordingly, the holder of a registered extension of protection of an international registration to the United States may file a request for amendment or correction under §7 of the Trademark Act with the USPTO only in limited circumstances, where the change will affect only the extension of protection to the United States. See TMEP §§1609.01(a), 1609.02, 1904.13(a), and 1904.13(b) for further information.
1904.13(a) Limited Amendments to Registered Extension of Protection
The holder of a registered extension of protection may request certain changes under §7 of the Trademark Act, 15 U.S.C. §1057, that will affect only the extension of protection in the U.S. For example, an applicant may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark as provided during examination, or to limit or partially delete goods, services, or classes. TMEP
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§1609.01(a). If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States.
The USPTO will not accept an amendment of a registered extension of protection involving the holder’s name or address that has not been recorded with the IB. 37 C.F.R. §7.22; TMEP §1906.01(c).
The mark in a registered extension of protection cannot be amended. See TMEP §§1609.02 and 1906.01(i).
See also TMEP §§1906.01 et seq. regarding requests to record changes at the IB.
1904.13(b) Corrections to Registered Extensions of Protection
Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even after registration in the United States. However, in the limited circumstance where the holder of an international registration makes a mistake in a document filed during prosecution in the USPTO that affects only the extension of protection to the United States, the registrant may request correction of the error pursuant to 37 C.F.R. §2.175. For example, if there was a minor typographical error in an amendment to the identification of goods in a §66(a) application, and the mark registered with such an error, the owner of the registration could request correction. If the USPTO grants the request, the USPTO will notify the IB of the change to the extension of protection to the United States.
If a clerical error occurred through the fault of the USPTO, which is apparent from a review of USPTO records, the USPTO will correct the error without charge. See TMEP §1609.10(a) for procedures for requesting correction of a USPTO error and §1609.10(b) regarding correction of a registrant’s error.
1904.14 Notification of Correction in the International Register with Respect to Registered Extension of Protection
When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio. The IB will also correct errors at the request of the holder or the Office of Origin. Common Reg. 28(1). See TMEP §1906.01(f). If the IB notifies the USPTO of a correction of an international registration, the USPTO may declare in a notification to the IB that protection cannot, or can no longer, be granted to the international registration as corrected. This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international registration as originally notified to the USPTO. Common Reg. 28(3).
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Upon receipt of a notification of correction in a registered extension of protection, the MPU shall determine whether the correction would require republication of the mark. If republication would not be required, the MPU will enter the correction in the trademark database and ensure that a certificate of correction is issued to the holder.
If the MPU trademark specialist determines that protection can no longer be granted to the international registration as corrected, the MPU trademark specialist will issue a post registration refusal, by sending a declaration to the IB within 18 months of the IB’s notification of the correction.
See also TMEP §1904.03(f) regarding corrections to pending §66(a) applications, and TMEP §1906.01(f) for information about filing a request for correction with the IB.
1904.15 Notification of Limitation of the List of Goods/Services with Respect to Registered Extension of Protection
Upon receipt of notification from the IB that a limitation of the list of goods/services affects the United States, the USPTO may declare that the limitation has no effect. Such a declaration must be sent to the IB within 18 months of notification of the limitation. The USPTO will indicate the reasons for which the limitation has no effect, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal. Common Regs. 27(5)(a)-(c).
If the MPU trademark specialist determines that the limitation has no effect in the United States (e.g., because he or she determines that the change requested results in an extension rather than a limitation of the goods/services), the MPU trademark specialist will issue a post-registration refusal of the limitation, by sending a declaration to the IB within 18 months of the date of the IB’s notification of the limitation.
If the MPU trademark specialist determines that the limitation does have effect in the United States, the MPU trademark specialist will enter the limitation into the trademark database and ensure that an updated registration certificate is issued to the holder.
If a limitation results in the deletion of all goods/services identified in the registered extension of protection, the registration will be cancelled.
See also TMEP §1904.03(g) regarding limitations of the goods/services in pending §66(a) applications, and TMEP §1906.01(e) for information about filing a request to record a limitation with the IB.
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1905 Renewal of International Registrations
The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1) and 7(1). Renewal of international registrations must be made at the IB, in accordance with Article 7 and Common Regs. 29 - 31. There is a renewal form, form MM11, on the IB website at http://www.wipo.int/madrid/en/.
The USPTO will not process a request to renew an international registration nor forward it to the IB. 37 C.F.R. §7.41.
See TMEP §1614 regarding renewal of a registered extension of protection to the United States.
1906 Communications With International Bureau Regarding International Registrations
Information about communicating directly with the IB is available on the WIPO website at http://www.wipo.int/madrid/en/. The IB can be contacted by mail to 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland; by telephone at 41 22 338 9111; by fax to 41 22 740 1429; or by e-mail to intreg.mail@wipo.int.
1906.01 Recording Changes in International Register
The IB will record changes and other matters concerning international registrations in the International Register. Such requests are governed by Articles 9 and 9bis and Common Reg. 25. Some of the changes that can be recorded in the International Register are:
• Change in ownership of the registration;
• Change of holder’s name and address;
• Change in name or address of holder’s representative;
• Limitation, renunciation, or cancellation of international registration.
Most requests to record changes must be filed with the IB on the IB’s forms, available on the IB website at http://www.wipo.int/madrid/en/. There are only two limited situations in which a request to record a change may be filed with the IB through the USPTO:
(1) an assignment that meets the requirements of 37 C.F.R. §7.23(a) (see TMEP §1906.01(a)(i)); or
(2) a security interest or other restriction of a holder’s right to dispose of an international registration (or the release of such a restriction) that
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meets the requirements of 37 C.F.R. §§7.24(a) and (b) (see TMEP §1906.01(b)).
37 C.F.R. §7.22.
1906.01(a) Change in Ownership of International Registration
The IB will record a change in ownership by assignment, merger, court decision, or operation of law at the request of the holder, the Contracting Party of the holder, or an interested person. Article 9; Common Reg. 25(1)(a)(i). The change may relate to some or all of the goods/services in some or all of the designated Contracting Parties. A fee is required.
Most requests to record changes of ownership must be filed directly with the IB. 37 C.F.R. §§7.22 and 7.23. Form MM5 is available on the IB website at http://www.wipo.int/madrid/en/ for that purpose. The IB does not require copies of assignments or other supporting documents. See TMEP §1906.01(a)(i) regarding the limited circumstances in which a request to record a change in ownership may be filed with the IB through the USPTO.
1906.01(a)(i) Requirements for Submitting Changes in Ownership of International Registration Through the USPTO
The USPTO will accept for submission and forward to the IB a request to record a change of ownership only if all of the following conditions have been met:
(1) the assignee cannot obtain the assignor’s signature on the request to record the change;
(2) the assignee is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States; and
(3) the assigned goods/services applies to the designation to the United States.
37 C.F.R. §7.23.
No other requests to record changes of ownership can be filed through the USPTO. 37 C.F.R. §§7.22 and 7.23.
A request to record a change of ownership filed through the USPTO must also include:
• The international registration number;
• The name and address of the holder of the international registration;
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• The name and address of the assignee of the international registration;
• A statement that the assignee: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States. Where an assignee’s address is not in the United States, the assignee must provide the address of its United States domicile or establishment;
• A statement that the assignee could not obtain the assignor’s signature for the request to record the assignment;
• An indication that the assignment applies to the designation to the United States;
• A statement that the assignment applies to all the goods/services in the international registration, or if less, a list of the goods/services in the international registration that have been assigned that pertain to the designation to the United States; and
• The USPTO transmittal fee required by 37 C.F.R. §7.6.
37 C.F.R. §7.23(a).
The USPTO currently does not have a TEAS form available for requests to record a change of ownership of an international registration. A holder must use the official IB form MM5 available on the IB website at: http://www.wipo.int/madrid/en. The IB will not accept paper requests that are not presented on the official IB form. The form cannot be handwritten. Comm Reg. 25(1)(a); Madrid Admin. Instr. §6(a). The holder should complete the form online, print the completed form and submit it to the USPTO by mail, hand delivery, or courier service.
The completed form submitted through the USPTO must be mailed using the First Class Service of the USPS to:
Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, requests to record changes of ownership may be delivered by hand or courier to the Trademark Assistance Center at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).
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Requests to record changes of ownership cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(4).
If a request to record a change of ownership is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the request to record was submitted on the day it was deposited as Express Mail, provided that the holder complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding Express Mail.
The holder should include a self-addressed, stamped postcard with the paper-filed request to record a change of ownership. Upon receipt, the USPTO will place a label indicating the receipt date on the postcard and return it to the holder.
If the request meets the requirements of 37 C.F.R. §7.23(a), the USPTO will forward it to the IB. 37 C.F.R. §7.23(b). If the request does not meet these requirements, the USPTO will not forward the request to the IB, and will notify the holder of the reasons. The USPTO will not refund the transmittal fee. 37 C.F.R. §7.23(c).
If the IB determines that a request to record a change sent through the USPTO is irregular, the IB will notify both the USPTO and the holder. Common Reg. 26(1). The holder must file a response to any notice of irregularity with the IB; the response cannot be filed through the USPTO. 37 C.F.R. §7.23(d).
Occasionally, extraordinary circumstances render the assignee of an international registration for which the USPTO was the Office of Origin unable to secure the signature of the holder of that registration. In that instance, the assignee may petition the Director to waive the requirements of 37 C.F.R. §§7.23(a)(6) and (7), pursuant to 37 C.F.R. §2.146. See TMEP Chapter 1700 regarding petitions to the Director.
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. §7.22.
1906.01(a)(ii) International Fees for Recording Changes of Ownership of International Registration
The international fee for a request to record a change of ownership must be paid directly to the IB in Swiss currency, and may be paid either before or after submission of the request to record. 37 C.F.R. §7.7(c). However, fees paid after the document is received by the IB could result in a notice of irregularity. See TMEP §1903.02 regarding payment of international fees to the IB.
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1906.01(a)(iii) Effect of Change of Ownership of International Registration
The validity of a change in ownership with respect to a particular Contracting Party is governed by the law of that Contracting Party. The office of a designated Contracting Party may declare that a change in ownership has no effect in its territory. The declaration must be sent to the IB within 18 months of the date of IB’s notification of the change. Common Reg. 27(4).
1906.01(a)(iv) Dividing an International Registration After Change of Ownership With Respect to Some But Not All of the Goods/Services
When ownership of an international registration changes with respect to some but not all of the goods/services for all designated Contracting Parties, the IB will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to International Registration, Para. B.II.65.01.
When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods or services, the USPTO will construe the IB’s notice as a request to divide. See 37 C.F.R. §§2.87(g) and 2.171(b)(2).
See TMEP §1110.11 regarding division of a pending §66(a) application after a partial change of ownership, TMEP §1615.02 regarding division of a registered extension of protection after a partial change of ownership, and TMEP §501.07 regarding assignment of extensions of protection.
1906.01(b) Restriction of Holder’s Rights of Disposal
Under Common Reg. 20(1)(a), a holder of an international registration or a Contracting Party of the holder (i.e., a Contracting Party in which the holder is a national, is domiciled, or has a real and effective business or commercial establishment) may inform the IB that the holder’s right to dispose of the international registration has been restricted in whole or in part. Also, under Common Reg. 20(1)(b), the office of any designated Contracting Party may inform the IB that the holder’s right of disposal has been restricted in the territory of that Contracting Party. Examples of restrictions on the holder’s right to dispose are security interests and court orders concerning the disposal of the assets of the holder.
The USPTO will accept for submission and forward to the IB a request to record a restriction of a holder’s right to dispose of an international registration, or the release of such a restriction, only if all of the following conditions have been met:
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(1) (i) the restriction is the result of a court order; or (ii) the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder’s right of disposal, and the signature of the holder of the international registration cannot be obtained;
(2) the party who obtained the restriction is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States;
(3) the restriction or release applies to the holder’s right to dispose of the international registration in the United States; and
(4) the restriction or release applies to the designation to the United States.
37 C.F.R. §7.24(a).
All other requests to record restrictions must be filed with the IB. 37 C.F.R. §§7.22 and 7.24(a).
A request to record a restriction filed through the USPTO must include:
• The international registration number;
• The name and address of the holder of the international registration;
• The name and address of the party who obtained the restriction;
• A statement that the party who submitted the request: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States. Where a party’s address is not in the United States, the party must provide the address of its United States domicile or establishment;
• A statement that (i) the restriction is the result of a court order, or (ii) where the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder’s right of disposal, a statement that the signature of the holder of the international registration could not be obtained for the request to record the restriction or release of the restriction;
• A summary of the main facts concerning the restriction;
• An indication that the restriction, or the release of the restriction, of the holder’s right to dispose of the international registration applies to the designation to the United States; and
• The United States transmittal fee required by 37 C.F.R. §7.6.
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37 C.F.R. §7.24(b).
A request to record a restriction or release submitted through the USPTO must be mailed using the First Class Service of the USPS to:
Madrid Processing Unit 600 Dulany Street MDE-7B87 Alexandria, Virginia 22314-5793
37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, requests to record restrictions or releases may be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).
Requests to record restrictions or releases cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(5).
If a request to record a restriction or release is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the request was submitted on the day it was deposited as Express Mail, provided that the holder complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding Express Mail.
If the request meets the requirements of 37 C.F.R. §7.24(b), the USPTO will forward it to the IB. 37 C.F.R. §7.24(c). If the request does not meet these requirements, the USPTO will refuse to forward the request to the IB, and will notify the holder of the reasons. The USPTO will not refund the transmittal fee. 37 C.F.R. §7.24(d).
If the IB determines that a request to record a restriction sent through the USPTO is irregular, the IB will notify both the USPTO and the holder. Common Reg. 26(1). The holder must file a response to any notice of irregularity with the IB; the response cannot be filed through the USPTO. 37 C.F.R. §7.24(e).
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to restrictions of a holder’s right to dispose of an international registration. 37 C.F.R. §7.22.
1906.01(c) Change of the Holder’s Name or Address
A request to record a change of the holder’s name or address must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22. Form MM9 is available for this purpose on the IB website at http://www.wipo.int/madrid/en/. Article 9bis; Common Reg. 25(2).
1900-75 September 2009
1906.01(d) Change of Name or Address of Representative
A request to record a change of the representative’s name or address must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22. Form MM10 is available for such requests on the IB website at http://www.wipo.int/madrid/en/. See also Common Reg. 36(i).
See TMEP §§609.01(a) and 1904.02(i) regarding the correspondence address in a request for extension of protection to the United States.
1906.01(e) Limitation, Renunciation, or Cancellation of International Registration
Requests to record a limitation, renunciation or cancellation of an international registration must be filed with the IB; they cannot be filed through the USPTO. 37 C.F.R. §7.22. There are forms for such requests on the IB website at http://www.wipo.int/madrid/en/forms. Under Article 9bis, a holder may record the following restrictions:
• Limitation of the list of goods/services with respect to some or all of the designated Contracting Parties (Common Reg. 25(1)(a)(ii));
• Cancellation of the international registration with respect to all the designated Contracting Parties for some or all of the goods/services (Common Reg. 25(1)(a)(v));
• Renunciation with respect to some but not all of the designated Contracting Parties for all the goods/services (Common Reg. 25(1)(a)(iii)).
The office of a designated Contracting Party may declare that a limitation has no effect in its territory, e.g., because it determines that the change requested results in an extension rather than a limitation. Such declaration must be sent to the IB within 18 months of the date of the IB’s notification of the limitation. Common Reg. 27(5).
See TMEP §1904.03(g) regarding limitations in pending §66(a) applications, and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States. See also TMEP §1904.02(e)(ii).
1906.01(f) Correction of Errors in International Registration
The IB will correct errors in an international registration at the request of the holder or the Office of Origin. Common Reg. 28(1). Requests to correct errors in international registrations in which the USPTO was the Office of Origin must be filed directly with the IB, unless the error was made by the USPTO.
1900-76 September 2009
The office of a designated Contracting Party may declare in a notification of provisional refusal that protection can no longer be granted to an international registration as corrected. A new refusal period under Article 5 of the Protocol and Common Regs. 16-17 starts to run from the date of the correction, but only in respect to grounds that did not exist prior to the correction. Common Reg. 28(3).
See TMEP §1904.03(f) regarding corrections to §66(a) applications, and TMEP §1904.14 regarding corrections to registered extensions of protection.
1906.01(g) Merger of International Registrations
Where the same party is the holder of two or more international registrations of the same mark due to a partial change in ownership, that party may request the IB to record a merger of the registrations. Common Reg. 27(3). The request must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22.
1906.01(h) License
Under Common Reg. 20bis(1), a holder may file a request to record a license, a request for amendment of the recording of a license, or a request for cancellation of the recording of a license. Requests to record a license, or to cancel or amend the recording of a license, cannot be filed through the USPTO. 37 C.F.R. §7.22. There are forms for these requests on the IB website at http://www.wipo.int/madrid/en/. A designated Contracting Party may declare that the recording of a license has no effect in its territory. The declaration must be sent within 18 months of the IB’s notification of recording of the license. Common Reg. 20bis(5).
1906.01(i) Changes That Cannot Be Made to International Registration
Mark in International Registration Cannot Be Changed. There is no provision for a mark to be amended in any way, at any time, even if the mark in the basic application or basic registration changes. Guide to International Registration, Para. B.II.69.02.
Goods/Services in International Registration Cannot be Expanded. It is not possible to expand the list of goods/services, even if the added goods/services were listed in the basic application or registration. Guide to International Registration, Para. B.II.69.03.
1900-77 September 2009
APPENDIX A
EXAMINING ATTORNEYS’ APPEAL BRIEFS
The following format should be used by examining attorneys when preparing an appeal brief in an appeal before the Trademark Trial and Appeal Board. The purpose of this format is to promote uniformity in the manner in which appeal briefs are presented and to suggest content guidelines. The substance of the appeal brief is a matter of individual effort within this format.
If, at the time an application file is sent to an examining attorney for preparation of the appeal brief, the examining attorney determines that jurisdiction should be restored to him or her for further examination (e.g., to make a new refusal, to correct informalities or to suspend), this request should be submitted in lieu of the appeal brief. This request would usually be entitled “Request for Remand to Examining Attorney.” The request should be a brief statement of the reason for the request and an explanation of what action the examining attorney intends to take. The filing of such a request should be approved by the managing attorney.
If the examining attorney’s request is granted, the Trademark Trial and Appeal Board will stay further proceedings in connection with the appeal. If the request is denied, the Trademark Trial and Appeal Board will reset the time for submission of the examining attorney’s appeal brief.
The brief may not exceed twenty-five (25) double-spaced pages. TMEP §1501.02.
Because the record must be complete prior to appeal, the Board will normally not consider evidence submitted with the applicant's or examining attorney's brief. If the applicant does submit such evidence, the examining attorney should specifically object to such evidence if he or she does not want it to be considered. If the examining attorney does not object to the evidence, and discusses it in his or her brief or elsewhere in the record, the Board will treat it as of record. Id.
FORM FOR EXAMINING ATTORNEY’S APPEAL BRIEF
UNITED STATES PATENT AND TRADEMARK OFFICE
Serial No.: : BEFORE THE Mark: : TRADEMARK TRIAL Attorney: : AND Address: : APPEAL BOARD Applicant: : ON APPEAL
EXAMINING ATTORNEY’S APPEAL BRIEF
The first paragraph should be an introduction, similar to the “Question Presented” section in a memo, e.g.:
A-1 September 2009
The applicant has appealed the trademark examining attorney’s refusal to register the trademark ____________________ on the ground that it is merely descriptive within the meaning of §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
FACTS
This section should be a brief recital of the facts, such as what mark and goods were applied for, what refusal was made and the basis for it, summary of any evidence submitted by either party, etc. Since the examining attorney is an advocate at this stage of the proceeding, the appeal brief should be written in a style that will make his or her position convincing to the Board.
ARGUMENT
The argument presented in this section should be complete. The examining attorney should clearly and concisely present each substantive argument in support of his or her position and address all of the applicant’s arguments and distinguish any significant cases cited. Reference should not be made to earlier correspondence such as the final refusal. If appropriate, arguments that were made in earlier Office actions may be repeated in whole or in part in this section of the appeal brief.
The following format for organizing arguments under sub-headings is recommended:
(1) A sub-heading or sub-headings should be used. If there is only one issue with one point, one sub-heading should be used, e.g.:
THE MARK IS MERELY DESCRIPTIVE BECAUSE IT DESCRIBES A CHARACTERISTIC OF THE GOODS.
(2) If there is one issue with several points, use additional sub-headings, e.g.:
____________________ IS LIKELY TO CAUSE CONFUSION WITH _________________.
A. ________________________ is visually similar to _______________________.
(argument)
B. ________________________ is phonetically similar to ___________________.
(argument)
C. ETC.
(3) If there is more than one issue, each issue should head a separate section, and be identified by Roman numerals, e.g.:
ARGUMENTS
I. _______________ IS LIKELY TO CAUSE CONFUSION . . . .
(See (2) for example)
A-2 September 2009
II. _______________ IS PRIMARILY MERELY A SURNAME.
(argument)
CONCLUSION
Reiterate the main reasons, if necessary. If not, end with a sentence such as the following:
For the foregoing reasons, the refusal to register on the basis of §_________ of the Trademark Act, 15 U.S.C. §_________, for the reason that _____________, should be affirmed.
Respectfully submitted,
___________________________ Trademark Examining Attorney (_________________, Managing Attorney) Law Office _____ (571) 272-______
A-3 September 2009
APPENDIX B
MEMBERS OF INTERNATIONAL TRADEMARK AGREEMENTS
The following is a list of members of international trademark agreements to which the United States is also a party.
If there is a discrepancy between the expiration of a foreign registration as listed here and the date listed on the foreign registration, the date listed on the foreign registration will be controlling.
Paris Convention for the Protection of Industrial Property
Under the Paris Convention, foreign applicants may seek U.S. registration, based on either (a) a valid registration, or (b) an application to register in any of the member countries listed below, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the foreign application. For updates to the list below, see the World Intellectual Property Organization’s home page at http://www.wipo.int/treaties/en/ip/paris/index.html.
Country Term of Registration (in years) Renewal Period (in years)
ALBANIA 10 (from date of application) 10 ALGERIA 10 (from date of application) 10 ANDORRA 10 (from date of registration) 10 ANGOLA 10 (from date of application) 10 ANTIGUA and BARBUDA 10 (from date of application) 10 ARGENTINA 10 (from date of registration) 10 ARMENIA (Russian Federation)
10 (from date of application) 10
AUSTRALIA 10 (from date of application) 10 AUSTRIA 10 (from end of month in which mark is
registered) 10
AZERBAIJAN (Russian Federation)
10 (from date of application) 10
BAHAMAS 14 (from date of application) 14 BAHRAIN 10 (from date of application) 10 BANGLADESH 7 (from date of application) 15 BARBADOS 10 (from date of application) 10 BELARUS (Russian Federation)
10 (from date of application) 10
BELGIUM (Benelux Nations) 10 (from date of application) (1 to 10 years for service marks)
10
BELIZE 10 (from date of application) 10
B-1 September 2009
Country Term of Registration (in years) Renewal Period (in years)
BENIN (African Union Nations) (OAPI)
10 (from date of application) 10
BHUTAN 10 (from date of application) 10 BOLIVIA 10 (from date of registration) 10 BOSNIA and HERZEGOVINA
10 (from date of application) 10
BOTSWANA 10 (from date of application) 10 BRAZIL 10 (from date of registration) 10 BULGARIA 10 (from date of application) 10 BURKINA FASO (OAPI) 10 (from date of application) 10 BURUNDI Unlimited (from date of application) CAMBODIA 10 (from date of application) 10 CAMEROON (OAPI) 10 (from date of application) 10 CANADA 15 (from date of registration) 15 CENTRAL AFRICAN REPUBLIC (OAPI)
10 (from date of application) 10
CHAD (OAPI) 10 (from date of application) 10 CHILE 10 (from date of registration) 10 CHINA (PEOPLE’S REPUBLIC)
10 (from date of registration) 10
COLOMBIA 10 (from date of registration) 10 COMOROS CONGO, DEMOCRATIC REPUBLIC OF
10 (from date of application) 10
CONGO (OAPI) 10 (from date of application) 10 COSTA RICA 10 (from date of registration) 10 CÔTE D’IVOIRE (OAPI) 10 (from date of application) 10 CROATIA 10 (from date of application) 10 CUBA 10 (from date of application) 10 CYPRUS 7 (from date of application) 14 CZECH REPUBLIC 10 (from date of application) 10 DENMARK 10 (from date of registration) 10 DJIBOUTI 10 (from date of registration) 10 DOMINICA 14 (from date of application) 14 DOMINICAN REPUBLIC 10 (from date of registration) 10 ECUADOR 10 (from date of registration) 10 EGYPT 10 (from date of application) 10 EL SALVADOR 10 (from date of registration) 10 EQUATORIAL GUINEA (OAPI)
10 (from date of application) 10
ESTONIA 10 (from date of application) 10 FINLAND 10 (from date of registration) 10 FRANCE (including Overseas Departments and Territories)
10 (from date of application) 10
GABON (OAPI) 10 (from date of application) 10 GAMBIA 14 (from date of application) 14 GEORGIA 10 (from date of registration) 10 GERMANY 10 (starts on application date, ends after
10 years, on last day of the month of the application date)
10
GHANA 10 (from date of application) 10
B-2 September 2009
Country Term of Registration (in years) Renewal Period (in years)
GREECE 10 (from day following application date) 10 GRENADA Term dependent on United Kingdom
registration Renewal dependent on United Kingdom registration
GUATEMALA 10 (from date of registration) 10 GUINEA (OAPI) 10 (from date of application) 10 GUINEA-BISSAU (OAPI) 10 (from date of application) 10 GUYANA 7 (from date of application) 14 HAITI 10 (from date of registration) 10 HOLY SEE (Italy) 10 (from date of application) 10 HONDURAS 10 (from date of registration) 10 HUNGARY 10 (from date of application) 10 ICELAND 10 (from date of application) 10 INDIA 10 (from date of application) 10 INDONESIA 10 (from date of application) 10 IRAN 10 (from date of application) 10 IRAQ 10 (from date of application) 10 IRELAND 10 (from date of application) 10 ISRAEL 7 (from date of application for marks
applied for on or before August 6, 2003);10 (from date of application for marks applied for after August 6, 2003)
10
ITALY 10 (from date of application) 10 IVORY COAST See CÔTE D’IVOIRE JAMAICA 10 (from date of application) 10 JAPAN 10 (from date of registration) 10 JORDAN 10 (from date of application) 10 KAZAKHSTAN (Russian Federation)
10 (from date of application) 10
KENYA 7 (from date of application) 14 KOREA, NORTH (DEMOCRATIC PEOPLE’S REPUBLIC OF KOREA)
10 (from date of application) 10
KOREA, SOUTH (REPUBLIC OF KOREA)
10 (from date of registration) 10
KYRGYZSTAN (Russian Federation)
10 (from date of application) 10
LAOS 10 (from date of application) 10 LATVIA 10 (from date of application) 10 LEBANON 15 (from date of application) 15 LESOTHO 10 (from date of application) 10 LIBERIA 15 (from date of registration) 15 LIBYA 10 (from date of application) 10 LIECHTENSTEIN 10 (from date of application) 10 LITHUANIA 10 (from date of application) 10 LUXEMBOURG (Benelux Nations)
10 (from date of application) (1 to 10 years for service marks)
10
MADAGASCAR1 10 (from date of application) 10 MALAWI 7 (from date of application) 14 MALAYSIA 10 (from date of application) 10
B-3 September 2009
Country Term of Registration (in years) Renewal Period (in years)
MALI (OAPI) 10 (from date of application) 10 MALTA 10 (from date of registration) 10 MAURITANIA (OAPI) 10 (from date of application) 10 MAURITIUS 7 (from date of application) 14 MEXICO 10 (from date of application) 10 MOLDOVA (REPUBLIC OF) (Russian Federation)
10 (from date of application) 10
MONACO 10 (from date of application) 10 MONGOLIA 10 (from date of application) 10 MONTENEGRO 10 (from date of application) 10 MOROCCO 10 (from date of application) 10 MOZAMBIQUE 10 (from date of application) 10 NAMIBIA 10 (from date of registration) 10 NEPAL 7 (from date of registration) 7 NETHERLANDS (Benelux Nations)
10 (from date of application) (1 to 10 years for service marks)
10
NEW ZEALAND 10 (from date of application) 10 NICARAGUA 10 (from date of registration) 10 NIGER (OAPI) 10 (from date of application) 10 NIGERIA 7 (from date of application) 14 NORWAY 10 (from date of registration) 10 OMAN 10 (from date of application) 10 PAKISTAN 10 (from date of application) 10 PANAMA 10 (from date of application) 10 PAPUA NEW GUINEA 10 (from date of application) 10 PARAGUAY 10 (from date of registration) 10 PERU 10 (from date of registration) 10 PHILIPPINES 10 (from date of registration) 10 POLAND 10 (from date of application) 10 PORTUGAL 10 (from date of registration) 10 QATAR 10 (from date of application) 10 ROMANIA 10 (from date of application) 10 RUSSIAN FEDERATION 10 (from date of application) 10 RWANDA Unlimited SAINT KITTS and NEVIS 10 (from date of application) 10 SAINT LUCIA 10 (from date of application) 10 SAINT VINCENT and the GRENADINES
10 (from date of application) 10
SAN MARINO2 10 (from date of application) 10 SAO TOME AND PRINCIPE 10 10 SAUDI ARABIA 10 Hejira years, which is approximately
9 yr 8 mo (from date of application) 10 Hejira years
SENEGAL (OAPI) 10 (from date of application) 10 SERBIA 10 (from date of application) 10 SEYCHELLES 7 (from date of application) 14 SIERRA LEONE 14 (from date of application) 14 SINGAPORE 10 (from date of application) 10 SLOVAKIA 10 (from date of application) 10 SLOVENIA 10 (from date of application) 10 SOUTH AFRICA 10 (from date of application) 10 SPAIN 10 (from date of application) 10
B-4 September 2009
Country Term of Registration (in years) Renewal Period (in years)
SRI LANKA 10 (from date of application) 10 SUDAN 10 (from date of application) 10 SURINAME 10 (from date of registration) 10 SWAZILAND 10 (from date of registration) 10 SWEDEN 10 (from date of registration) 10 SWITZERLAND 10 (from date of application) 10 SYRIA 10 (beginning on filing date of
application and ending the last day of the month in which the application had been filed)
10
TAJIKISTAN (Russian Federation)
10 (from date of application) 10
TANZANIA (UNITED REPUBLIC OF) - TANGANYIKA
7 (from date of registration) 10
TANZANIA (UNITED REPUBLIC OF) - ZANZIBAR
14 (from date of application) 14
THAILAND 10 (from date of registration) 10 TOBAGO See TRINIDAD and TOBAGO TOGO (OAPI) 10 (from date of application) 10 TONGA Term dependent on United Kingdom
registration Renewal dependent on United Kingdom registration
TRINIDAD and TOBAGO 10 (from date of registration) 10 TUNISIA 10 (from date of application) 10 TURKEY 10 (from date of application) 10 TURKMENISTAN (Russian Federation)
10 (from date of registration) 10
UGANDA 7 (from date of application) 14 UKRAINE 10 (from date of application) 10 UNITED ARAB EMIRATES 10 (from date of application) 10 UNITED KINGDOM 10 (from date of application) 10 URUGUAY 10 (from date of registration) 10 UZBEKISTAN (Russian Federation)
10 (from date of application) 10
VENEZUELA 10 (from date of registration) 10 VIETNAM 10 (from date of application) 10 YEMEN 10 (from date of application) 10 YUGOSLAV REPUBLIC OF MACEDONIA, FORMER
10 (from date of application) 10
ZAMBIA 7 (from date of application) 14 ZIMBABWE 10 (from date of application) 10
Inter-American Convention
Under the Inter-American Convention for Trademarks and Commercial Protection (also known as the “Pan-American Convention”), foreign applicants may seek U.S. registration, based on either (a) a valid registration, or (b) an
B-5 September 2009
application to register in any of the member countries listed below, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the foreign application. See Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320 (TTAB 2007); British-American Tobacco Co., Ltd. v. Phillip Morris, Inc., 55 USPQ2d 1585 (TTAB 2000).
Country Term of Registration (in years)
Renewal Period (in years)
COLOMBIA 10 (from date of registration) 10 CUBA 10 (from date of application) 10 GUATEMALA 10 (from date of registration) 10 HAITI 10 (from date of registration) 10 HONDURAS 10 (from date of registration) 10 NICARAGUA 10 (from date of registration) 10 PANAMA 10 (from date of application) 10 PARAGUAY 10 (from date of registration) 10 PERU 10 (from date of registration) 10
Buenos Aires Convention
Under the Buenos Aires Convention for the Protection of Trade Marks and Commercial Names, foreign applicants may seek registration based on a valid registration from a member country but not based on an application in the foreign country.
Country Term of Registration (in years) Renewal Period (in years)
BOLIVIA 10 (from date of registration) 10 BRAZIL 10 (from date of registration) 10 COSTA RICA 10 (from date of registration) 10 CUBA 10 (from date of application) 10 DOMINICAN REPUBLIC 10 (from date of registration) 10 ECUADOR 10 (from date of registration) 10 GUATEMALA 10 (from date of registration) 10 HAITI 10 (from date of registration) 10 HONDURAS 10 (from date of registration) 10 NICARAGUA 10 (from date of registration) 10 PARAGUAY 10 (from date of registration) 10 URUGUAY 10 (from date of registration) 10
European Community Trademark
On December 20, 1993, the European Council issued Regulation No. 40/94, establishing a single system of trademark registration, known as the Community Trade Mark (“CTM”), which is alternative to the various registration systems of each nation within the European Union (“EU”), formerly known as the European Community (EC) or European Economic Community (EEC). A foreign applicant may seek registration in the United
B-6 September 2009
States based on either (a) a valid CTM registration, or (b) a CTM application, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the CTM application. European Union countries include all countries which are members of the European Union namely; Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the United Kingdom of Great Britain and Northern Ireland. A CTM is registered for a period of 10 years, running from the date of filing, and may be renewed for 10 years. CTM registrations are issued by the Office for Harmonization in the Internal Market (“OHIM”). For further information about the CTM, see OHIM’s website at http://oami.europa.eu/en/default.htm. For an updated listing of members of the EU, see the EU website at http://userpage.chemie.fu- berlin.de/adressen/eu.html.
World Trade Organization
The World Trade Organization (“WTO”), established on January 1, 1995, is the embodiment of the results of the Uruguay Round trade negotiations and the successor to the General Agreement on Tariffs and Trade (“GATT”). Article 4 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”) contains a most-favored-nation clause under which any advantage a member gives to the nationals of another member must normally be extended to the nationals of all members. Section 44(b) of the Trademark Act, 15 U.S.C. §1126(b), provides that any person whose country of origin is a party to any convention or treaty to which the United States is a member is entitled to the benefits of §44. Accordingly, foreign applicants may seek U.S. registration, based on either (a) a valid registration, or (b) an application to register in any of the member countries listed below, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the foreign application. The WTO Agreement entered into force in the United States on January 1, 1996. The benefits accorded to nationals under this agreement by the United States date from January 1, 1996. The following is a list of WTO members who are not currently members of the Paris Convention. WTO members who are also members of the Paris Convention are not set forth in the list below because nationals from these countries have been able to base their U.S. registration on their home country application or registration since the date of the country’s accession to the Paris Convention. For updates to the list of member below, see WTO’s home page at http://www.wto.org.
Country Effective Date of Membership
Term of Registration (in years)
Renewal Period (in years)
BRUNEI DARUSSALAM
Jan. 1, 1995 10 (from date of application)
10
B-7 September 2009
Country Effective Date of Membership
Term of Registration (in years)
Renewal Period (in years)
EUROPEAN UNION Jan. 1, 1995 10 (from date of application)
10
FIJI Jan. 14, 1996 14 (from date of application)
14
HONG KONG Jan. 1, 1995 10 (from date of application)
10
KUWAIT Jan. 1, 1995 10 (from date of application)
10
MACAO Jan. 1, 1995 7 (from date of application)
7
MALDIVES3 May 31, 1995 MYANMAR Jan. 1, 1995 Unlimited (from date of
first use) SOLOMON ISLANDS July 26, 1996 Term dependent on
United Kingdom registration
Renewal dependent on United Kingdom registration
Memorandum of Understanding Between United States and Taiwan
On the basis of a Memorandum of Understanding signed on April 10, 1996, between the American Institute in Taiwan and the Taipei Economic and Cultural Representative Office in the United States, a foreign applicant may seek U.S. registration based on either (a) a valid registration, or (b) an application filed in Taiwan, and may claim a right of priority if the United States application is filed within 6 months of the date of the first filing of the application in Taiwan. See notice at 1186 TMOG 50 (May 7, 1996). A registration in Taiwan is valid for 10 years from the date of registration, and may be renewed for 10 years.
Other Countries Offering Reciprocal Registration Rights to United States Applicants
Applicants from countries that are not members of international trademark agreements to which the United States is also a party may register in the United States based upon their home country registration if their home country provides reciprocal registration rights to U.S. applicants. Following is a partial list of such countries. A claim of priority based on a foreign-filed application (15 U.S.C. §1126(d)) is not usually available to these applicants.
If the country is not on the following list, the examining attorney should require an English copy of the foreign trademark statute providing for reciprocal registration rights to U.S. applicants based on a U.S. registration.
Country Term of Registration (in years) Renewal Period (in years)
B-8 September 2009
Country Term of Registration (in years) Renewal Period (in years)
TUVALU Term dependent on United Kingdom registration
Renewal dependent on United Kingdom registration
Additional Resources For Information About International Treaties and the Trademark Laws of Foreign Countries
For further information about the trademark laws of foreign countries, see Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2nd ed. 2008).
The United States Department of State puts out a list of members of treaties currently in force, available at http://www.state.gov/s/l/treaty/treaties/2007/.
Information about the United Nations treaty collection is available at http://untreaty.un.org/English/treaty.asp.
There is a directory of intellectual property offices on the World Intellectual Property Organization’s website at http://www.wipo.int/directory/en/urls.jsp.
There are links to websites of foreign countries at http://www.uspto.gov/web/menu/other.html.
1 A new industrial property law covering patents, trademarks and designs was promulgated in Madagascar on July 31, 1989. Certain regulations have been promulgated, notably those covering the appointment of local trademark agents. In addition, due to Madagascar's prior involvement in OAPI, trademark owners can claim rights in OAPI registrations filed before December 31, 1976. December 9, 1994 was the cut-off date for filing Maintenance in Vigour applications. Because rights in Madagascar are acquired on a first-to-file basis, trademark registration applications should be filed as soon as is possible. Trademarks may be protected through publication of cautionary notices. Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008). 2 San Marino has no trademark law. However, trademark protection obtained in Italy applies here by virtue of the Pact Of Amity And Good Neighborhood, dated March 31, 1939. Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008). 3 There is no trademark law in effect in the Republic of Maldives, whose closest financial ties are with India. The only means of obtaining protection is by publishing a cautionary note in the English section of a Maldives newspaper. Trademarks Throughout the World (Anne- Laure Covin, 5th ed. 2008).
B-9 September 2009
APPENDIX C
NOTES OF OTHER STATUTES
SOME U.S. CODE (AND C.F.R.) SECTIONS PROTECTING SPECIFIC NAMES, TERMS AND MARKS
(This is a partial listing of some of the names, terms, initials and marks which are protected under the United States Code (and Code of Federal Regulations). Almost all of these sections protect symbols, emblems, seals, insignia and badges, as well as the referenced name. Many sections also protect other names and initials. Some sections protect characters in addition to names. See the sections for specific information. See also the next listing which provides other important Code sections, many of which also protect certain names, terms, initials and marks, e.g. 18 U.S.C. §709. For further information on other sections, see the Index to the United States Code, and the Index to the Code of Federal Regulations, especially under the terms “decorations, medals and badges,” “coats of arms,” “character,” “insignia,” “names,” “seals” and “symbols.” Other sections also exist which are not indexed under these terms.)
• American Ex-Prisoners of War, 36 U.S.C. §20907 • American Legion, 36 U.S.C. §21705 • The American National Theater and Academy, 36 U.S.C. §21904 • American Symphony Orchestra League, 36 U.S.C. §22306 • American Veterans, 36 U.S.C. §22706 • American War Mothers, 36 U.S.C. §22505 • AMVETS (see American Veterans) • Big Brothers [and other names], 36 U.S.C. §30106 • Big Sisters [and other names], 36 U.S.C. §30106 • Blinded Veterans Association, 36 U.S.C. §30306 • Blue Star Mothers of America, Inc., 36 U.S.C. §30507 • Board for Fundamental Education, 36 U.S.C. §30706 • Boy Scouts of America, 36 U.S.C. §30905 • Centers for Medicare and Medicaid Services (see Social Security) • Central Intelligence Agency, 50 U.S.C. §403m • Central Liquidity Facility, 18 U.S.C. §709 • CIA (see Central Intelligence Agency) • Citius Altius Fortius (see Olympic) • Civil Air Patrol, 36 U.S.C. §40306 • CMS (see Social Security) • Coast Guard [and other names], 14 U.S.C. §639 • Commodity Credit Corporation, 15 U.S.C. §714m • DEA (see Drug Enforcement Administration) • Department of Housing & Urban Development [and other names],18 U.S.C. §709 • Disabled American Veterans, 36 U.S.C. §50305 • Drug Enforcement Administration, 18 U.S.C. §709 • Fastener Quality Act, 15 U.S.C. §§5401 et seq.
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• FFA (see Future Farmers of America) • The Foundation of the Federal Bar Association, 36 U.S.C. §70506 • 4-H Club [also specific reference to emblem consisting of a green four-leaf clover
with stem and the letter H in white or gold on each leaflet], 18 U.S.C. §707 • F.B.I. (see Federal Bureau of Investigation) • Federal Bureau of Investigation, 18 U.S.C. §709 • Federal Deposit Insurance Corporation [and other names], 18 U.S.C. §709 • Federal Home Loan Mortgage Corporation, 12 U.S.C. §1457 • Future Farmers of America, 36 U.S.C. §70907 • Geneva Cross (see Red Cross) • Girl Scouts of America, 36 U.S.C. §80305 • Give a Hoot, Don’t Pollute (see Woodsy Owl) • The Golden Eagle [also specific reference to insignia of an American Golden
Eagle (colored gold) and a family group (colored midnight blue) enclosed within a circle (colored white with a midnight blue border)], 18 U.S.C. §715
• Government National Mortgage Association, 12 U.S.C. §1723a; 18 U.S.C. §709 • HUD (See Department of Housing & Urban Development) • United States Olympic Committee (see Olympic) • Now “CMS” • Now “Centers for Medicare and Medicaid Services Ladies of the Grand Army of
the Republic, 36 U.S.C. §130106 • Life Saving Service (see Coast Guard), • Lighthouse Service (see Coast Guard), • Little League; Little Leaguer, 36 U.S.C. §130506 • Marine Corps, 10 U.S.C. §7881 • Medicaid (see Social Security) • Medicare (see Social Security) • The Military Chaplains Association of the United States of America, 36 U.S.C.
§140304 • NASA (see National Aeronautics and Space Administration) • National Aeronautics and Space Administration [also flags, logo, seal], 42 U.S.C.
§2459b; 14 C.F.R. §§1221.101, 1221.107 • National Conference of State Societies, Washington, District of Columbia, 36
U.S.C. §150507 • National Conference on Citizenship, 36 U.S.C. §150707 • National Credit Union [and other names and acronyms], 18 U.S.C. §709 • National Music Council, 36 U.S.C. §152306 • National Safety Council, 36 U.S.C. §152506 • National Society, Daughters of the American Colonists, 36 U.S.C. §152907 • National Society of the Daughters of the American Revolution, 36 U.S.C.
§153104 • National Women’s Relief Corps, Auxiliary of the Grand Army of the Republic, 36
U.S.C. §153706 • Naval Sea Cadet Corps, 36 U.S.C. §154106, • NCOA (see Non Commissioned Officers Association of the United States of
America) • Non Commissioned Officers Association of the United States of America [and
other names], 36 U.S.C. §154707 • Olympiad (see Olympic)
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• Olympic [and other names] [also specific reference to (1) the symbol of the International Olympic Committee, consisting of five interlocking rings, and (2) the emblem consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with five interlocked rings displayed on the chief], 36 U.S.C. §220506
• OPIC (see Overseas Private Investment) • Overseas Private Investment, 18 U.S.C. §709 • Paralyzed Veterans of America, 36 U.S.C. §170105 • Pearl Harbor Survivors Association, 36 U.S.C. §170307 • Peace Corps, 22 U.S.C. §2518 • Red Crescent emblem, or the designation “Red Crescent,” 18 U.S.C. §706a • Red Cross [and other names] [also specific reference to the emblem of the Greek
red cross on a white ground], 18 U.S.C. §706 • Reserve Officers Association of the United States, 36 U.S.C. §190106 • SSA (see Social Security) • Secret Service [and other names], 18 U.S.C. §709 • Smokey Bear, 18 U.S.C. §711; 16 U.S.C. §580p; 36 C.F.R. §261.22 • Social Security [and other names, symbols and emblems], 42 U.S.C. §1320b-10 • Sons of Union Veterans of the Civil War, 36 U.S.C. §200306 • Swiss Confederation [with specific reference to the coat of arms, consisting of an
upright white cross with equal arms and lines on a red ground], 18 U.S.C. §708 • Third Protocol Emblem, 18 U.S.C. §706a • U.D. (see Secret Service) • USCG (see Coast Guard) • USCGR (see Coast Guard) • USMC (see Marine Corps) • USO (see United Service Organizations, Incorporated) • U.S.S.S. (see Secret Service) • United Service Organizations, Incorporated, 36 U.S.C. §220106 • United States Capitol Historical Society, 36 U.S.C. §220306 • United States Mint, 18 U.S.C. §709 • United States Railway Association, 45 U.S.C. §711 • United States Coast Guard (see Coast Guard) • United States Olympic Committee (see Olympic) • 369th Veterans Association, 36 U.S.C. §210307 • Veterans of Foreign Wars of the United States, 36 U.S.C. §230105 • Veterans of World War I of the United States of America, Incorporated, 36 U.S.C.
§230306 • Vietnam Veterans of America [and other names], 36 U.S.C. §230507 • Woodsy Owl, 18 U.S.C. §711a, 16 U.S.C. §580p; 36 C.F.R. §261.22
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SOME SECTIONS OF THE UNITED STATES CODE WHICH RELATE TO TRADEMARKS
(This is a partial listing of sections relating to trademarks.)
• 7 U.S.C. §136, The Federal Insecticide, Fungicide and Rodenticide Act, relating to the requirements for labeling of economic poisons.
• 7 U.S.C. §§1551-1610, The Federal Seed Act, relating to requirements for labeling of seeds in interstate commerce.
• 15 U.S.C. §1, Sherman Act (Sec. 1), as amended by Miller-Tydings Act, relating to restraint of trade.
• 15 U.S.C. §45, relating to unfair methods of competition. • 15 U.S.C. §52, relating to false advertisements. • 15 U.S.C. §68, The Wool Products Labeling Act, relating to the labeling of wool
products. • 15 U.S.C. §69, The Fur Products Labeling Act, relating to the labeling of fur and
fur products. • 15 U.S.C. §70, the Textile Fiber Products Identification Act, relating to the use of
trademarks and names in the advertising or labeling of textile fiber products. • 15 U.S.C. §297, relating to use of marks, trade names, words and labeling in
connection with the importation, exportation or carriage in interstate commerce of merchandise made of gold or silver or their alloys.
• 15 U.S.C. §§1261-1273, relating to the labeling of hazardous substances. • 15 U.S.C. §1511, relating to jurisdiction of Department of Commerce over Patent
and Trademark Office. • 15 U.S.C. §§5401 et seq., relating to the recordation of insignia of manufacturers
and private label distributors to ensure the traceability of a fastener to its manufacturer or private label distributor. (See notice at 1192 TMOG 19 (Nov. 5, 1996)).
• 18 U.S.C. §701, relating to use of insignia of departments and independent offices of the United States.
• 18 U.S.C. §704, relating to decorations or medals authorized by Congress for the armed forces of the United States.
• 18 U.S.C. §705, relating to the unauthorized use on merchandise of any badge, medal, emblem, or other insignia or any colorable imitation thereof of any veteran’s organization incorporated by enactment of Congress or of any organization formally recognized by any such veteran’s organization as an auxiliary thereof.
• 18 U.S.C. §709, relating to false advertising or misuse of names to indicate Federal agency. Also, prohibitions against using certain terms and initials within the financial, insurance, agricultural, housing, protection, investigatory and other fields.
• 18 U.S.C. §712, relating to misuse by collecting agencies or private detective agencies of names, emblems, and insignia to indicate Federal agency.
• 18 U.S.C. §713, relating to the use of likenesses of the great seal of the United States, and of the seals of the President and Vice President.
• 18 U.S.C. §1001, relating to statements, representations, writings or documents made to any department or agency of the United States.
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• 18 U.S.C. §1158, relating to counterfeiting or imitating Government trademarks for Indian products.
• 18 U.S.C. §2320, relating to criminal penalties for trafficking in counterfeit goods and services.
• 19 U.S.C. §1337(a), Tariff Act of 1930, relating to unfair practices in import trade. • 19 U.S.C. §1526(a), Tariff Act of 1930, barring importation into the United States
of merchandise of foreign manufacture bearing a trademark registered in the Patent and Trademark Office by a person domiciled in the United States if copy of the registration certificate has been filed with the Secretary of the Treasury unless written consent of the trademark owner has been secured.
• 19 U.S.C. §2111 et seq., providing authority for trade agreements and also annual reports to Congress on barriers to trade include the treatment of intellectual property rights among acts, policies, and practices that constitute barriers to trade.
• 19 U.S.C. §2411, relating to foreign countries’ provision for adequate and effective protection of the intellectual property rights of U.S. nationals.
• 19 U.S.C. §2462(c), relating to the consideration of intellectual property rights as a factor for foreign countries to receive benefits under the Generalized System of Preferences (GSP).
• 21 U.S.C. §§603-623, The Meat Inspecting Act, relating to the inspection and labeling of meat and products.
• 21 U.S.C. §§301, 321-392, The Federal Food, Drug, and Cosmetic Act, relating to the requirements for labeling of food, drugs, and cosmetics; avoiding trademarks in establishing official names.
• 21 U.S.C. §457, Poultry Products Inspection Act, relating to requirements for labeling of poultry products in interstate commerce.
• 27 U.S.C. §§201-219a, The Federal Alcohol Administration Act, relating to certificates of label approval of alcoholic beverages.
• 28 U.S.C. §1254, relating to review of cases by the Supreme Court. • 28 U.S.C. §1295, relating to jurisdiction of United States Court of Appeals for the
Federal Circuit. • 28 U.S.C. §1338, relating to jurisdiction of District Courts in trademark suits. • 29 U.S.C. §§655, 657, 665, Williams-Steiger Occupational Safety and Health Act
of 1970, relating to letters OSHA. • 42 U.S.C. §1320b-10, relating to misuse of Social Security or Medicare names,
symbols, emblems. • 48 U.S.C. §734, Puerto Rico, relating to statutes applicable to. • 48 U.S.C. §§1405(q), 1574(c) and 1643, Virgin Islands, relating to statutes
applicable to, and to the non-applicability of certain provisions of the Trademark Act to the Virgin Islands.
• 48 U.S.C. §1421(c), Guam, relating to statutes applicable to (see also Public Law 87-845, October 18, 1962, 4-CZC-471, Canal Zone Code, relating to the application of U.S. patent, trademark and copyright laws in the Canal Zone.)
• 50 U.S.C. Appendix 43, Trading with the Enemy Act, amending, providing for disposition of vested trademarks.
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District of Columbia Code
Section 22-3401, relating to use of District of Columbia and other related names and initials used in connection with investigatory or collection services. (Oct. 16, 1962, 76 Stat. 1071)
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APPENDIX D
FOREIGN ENTITIES
This table lists common terms and abbreviations used by various foreign countries to identify legal commercial entities. If a designation or its abbreviation appears in the table below, the examining attorney may accept the entity designation without further inquiry. See TMEP §803.03(i) for further information.
Abbr. Country Description
A. en P. Mexico Asociación en Participación. Joint venture.
AB Sweden Aktiebolag. Joint Stock Company, equivalent to a corporation.
A.C. Mexico Asociación Civil. Civil Association of a non-commercial nature.
ACE Portugal Agrupamento Complementar de Empresas. Association of businesses.
AD Bulgaria Aktzionero Druzhestvo. Limited Liability Company.
AE Greece Anonymos Etairia. Joint Stock Company, equivalent to a corporation.
AG Austria Aktiengesellschaft. Joint Stock Company, equivalent to a corporation.
AG Germany Aktiengesellschaft. Joint Stock Company, equivalent to a corporation.
AG Switzerland Aktiengesellschaft. Joint Stock Company, equivalent to a corporation.
AL Norway Andelslag. Cooperative society.
AmbA Denmark Andelsselskab. Limited Liability Cooperative.
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Abbr. Country Description
ANS Norway Ansvarlig selskap. Trading partnership.
Apb Sweden Publikt Aktiebolag. Public Stock Corporation.
ApS Denmark Anpartsselskab. Private Limited Company.
ApS & Co. K/S
Denmark Similar to a general partnership, but the entity with unlimited liability is a company (ApS) instead of an individual.
AS Norway Aksjeselskap. Stock Company, equivalent to a corporation.
A/S Denmark Aktieselskap. Stock Company, equivalent to a corporation.
A.S. Czech Republic Akciova Spolecnost. Joint Stock Company, equivalent to a corporation.
A.S. Estonia Aktsiaselts. Joint Stock Company, equivalent to a corporation.
A.S. Slovakia Akciova Spolecnost. Joint Stock Company, equivalent to a corporation.
A.S. Turkey Anonim Sirketi. Joint Stock Company, equivalent to a corporation.
ASA Norway Allmennaksjeselskap. Public stock corporation.
Association/ Associazion e
Switzerland/France/Italy Association.
AVV France/Switzerland Aruba Vrijgestelde Vennootschap. Aruba Exempt Company.
BM or B.M. Israel Be'eravon Mugbal. Limited Company.
BK or CC South Africa Beslote Korporasie. Close Corporation.
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Abbr. Country Description
Bt Hungary Betiti társaság. Limited Liability Partnership.
B.V. Belgium Besloten Vennootschap. Limited Liability Company.
B.V. Netherlands Besloten Vennootschap. Limited Liability Company.
B.V. Netherlands Antilles Besloten Vennootschap. Limited Liability Company.
BVBA Belgium Besloten Vennootschap met Beperkte Aansprakelijkheid. Flemish language equivalent of the SPRL -- means that the company is a private limited company.
CA Ecuador Compania Anonima. Public Limited Company.
c.c.c. Wales Cwmni Cyfyngedig Cyhoeddus. Public Limited Company, Welsh language equivalent to PLC.
Co. Commonwealth countries
Company. Acceptable to identify entities that are equivalent or analogous to United States corporations or associations.
C.V. Netherlands Commanditaire Vennootschap. Limited Partnership.
CVA Belgium Commanditaire Vennootschap op Aandelen. Limited partnership, with shares. Flemish language equivalent to the French language SCA.
CVoA Netherlands Commanditaire Vennootschap op Andelen. Limited Partnership, with shares.
Cyf. Wales Cyfyngedig. Private Limited Company, Welsh language equivalent to Ltd.
DA Norway Selskap med delt ansar. Limited Partnership.
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Abbr. Country Description
d.d. Croatia Dionicko Drustvo. Joint stock company.
d.d. Slovenia Delniska Druzba. Stock company
DI Italy/Switzerland Ditta individuale. Sole Proprietorship.
d.n.o. Slovenia Druzba z neomejeno odgovornostjo. Partnership, all partners have unlimited liability.
d.o.o. Croatia Drustvo s Ogranicenom Odgovornoscu. Limited Liability Company.
d.o.o. Slovenia Druzba z Omejeno Odgovornostjo. Limited Liability Company.
EE Greece Eterrorrythmos. Limited liability partnership.
EEG Austria Eingetragene Erwerbsgesellschaft. Professional Partnership.
EIRL Peru Empresa Individual de Responsabilidad Limitada. Personal business with limited liability.
EG Switzerland Einfache Gesellschaft. Simple Partnership.
ELP Bahamas Exempted Limited Partnership. Has one or more limited partners, and one general partner, which must be a resident of the Bahamas or a company incorporated in the Bahamas.
EOOD Bulgaria Ednolichno Druzhestvo s Ogranichena Otgovornost. Limited liability company.
EPE Greece Etairia periorismenis efthinis. Limited liability company.
EURL France Entreprise Unipersonnelle à Responsabilité Limitée. Incorporated sole proprietorship with limited liability.
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Abbr. Country Description
e.V. Germany Eingetragener Verein. Non-profit society/association.
Einzelfirma Germany/Swiss Einzelfirma. Sole Proprietorship.
Fondation/ Fondazione
Switzerland/France/Italy Foundation. Foundation having some attributes of a corporation.
GbR Germany Gesellschaft burgerlichen Rechts. Partnership without a legal name.
GCV Belgium Gewone Commanditaire Vennootschap. Limited Partnership. Flemish language equivalent to the French language SCS.
G.K. Japan Godo kaisha or Godokaisha. A variant of the American limited liability company.
Gen Switzerland Genossenschaft. Cooperative Society.
GesBR Austria Bürgerlich rechtliche Erwerbsgesellschaft. Joint venture.
GesmbH Austria Limited Liability Company. This abbreviation is only used in Austria (not Germany or Switzerland).
GIE France Groupement d'intéret économique. Economic Grouping of Interest. Two or more persons or entities form an alliance with the goal of facilitating or developing economic activity of the members.
GmbH & Co. KG
Germany Like a KG, but the entity with unlimited liability is a GmbH instead of a person. (See the KG entry for more information).
GmbH Austria Gesellschaft mit beschränkter Haftung. Limited Liability Company.
GmbH Germany Gesellschaft mit beschränkter Haftung. Limited Liability Company.
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Abbr. Country Description
GmbH Switzerland Gesellschaft mit beschränkter Haftung. Limited Liability Company.
Gomei Kaisha
Japan Gomei Kaisha. Similar to an American general partnership.
Goshi Kaisha
Japan Goshi Kaisha or Goshikaisha. Similar to an American limited partnership.
HB Sweden Handelsbolag. Trading Partnership.
hf Iceland Hlutafelag. Limited liability company.
I/S Denmark Interessentskab. General partnership.
j.t.d. Croatia Javno Trgovacko Drustvo. Unlimited liability company.
KA/S Denmark Kommanditaktieselskab. Limited partnership with share capital.
KAG Switzerland Kommandit-Aktiengesellschaft. Limited partnership with shares.
Kb Sweden Kommanditbolag. Limited partnership.
KD Bulgaria Komanditno Drushestwo. Partnership.
k.d. Croatia Komanditno Drustvo. Limited Partnership.
k.d. Slovenia Komanditna Druzba. Limited Partnership
KDA Bulgaria Komanditno drushestwo s akzii. Partnership with shares.
k.d.d. Slovenia Komanditna delniska druzba. Limited Partnership with shares.
KEG Austria Kommanditerwerbsgesellschaft. Limited Registered Partnership.
Kft Hungary Korlátolt Felelősségű Társaság.
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Abbr. Country Description
Limited liability company.
KG Austria Kommanditgesellschaft. A limited partnership under a legal name whose entity survives even though the partners might change.
KG Germany Kommanditgesellschaft. A limited partnership under a legal name whose entity survives even though the partners might change.
KG Switzerland Kommanditgesellschaft. A limited partnership under a legal name whose entity survives even though the partners might change.
KGaA Germany Kommanditgesellschaft auf Aktien. A limited partnership with shares.
K.K. Japan Kabushiki Kaisha. Joint Stock Company.
Kkt Hungary Közkereseti Társaság, General Partnership.
KolG Switzerland Kollektivgesellschaft. General Partnership.
Kol. SrK Turkey Kollektiv Sirket. Unlimited liability partnership.
Kom. SrK Turkey Komandit Sirket. Limited liability partnership.
k.s. Czech Republic Komanditni Spolecnost. Limited partnership.
K/S Denmark Kommanditselskab. Limited partnership.
KS Norway Kommandittselskap. Limited partnership.
Kv Hungary Közös vállalat. Joint Venture.
Ky Finland Kommandiittiyhtiö. Limited Partnership.
Lda Portugal Sociedade por Quotas Limitada. Similar to an American Limited
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Abbr. Country Description
Liability Company.
LDC Bahamas Limited Duration Company. A company, but it has a life of 30 years or less.
Ltd. Commonwealth countries; China
Limited Company. Indicates that a company is incorporated and that the owners have limited liability
Ltda Brazil Sociedade por Quotas de Responsabilidade Limitada. Similar to a limited liability company.
NV Netherlands Naamloze Vennootschap. Public limited liability company, equivalent to a corporation.
NV Belgium Naamloze Vennootschap. Public limited liability company, equivalent to a corporation.
NV Netherlands Antilles Naamloze Vennootschap. Public limited liability company, equivalent to a corporation.
NV Suriname Naamloze Vennootschap. Public limited liability company, equivalent to a corporation.
OE Greece Omorrythmos. Partnership.
OEG Austria Offene Erwerbsgesellschaft. Open Trading Partnership, General Registered Partnership or General Professional Partnership.
OHG Austria Offene Handelsgesellschaft. Partnership.
OHG Germany Offene Handelsgesellschaft. Partnership.
OOD Bulgaria Druzhestvo s Ogranichena Otgovornost. Limited Liability Company.
OAO Russian Federation Otkrytoe Aktsionernoe Obshchestvo. Joint Stock Company.
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Abbr. Country Description
OOO Russian Federation Obschestvo s ogranichennoy otveststvennostyu. Limited Liability Company.
OÜ Estonia Osaühing. Private limited liability company.
Oy Finland Osakeyhtiö. Corporation.
OYJ Finland Julkinen Osakeyhtiö. Public limited company.
P/L or Pty. Ltd.
Australia Proprietary Limited Company.
PC Ltd Australia Public Company Limited by Shares.
PLC UK & Ireland Public Limited Company.
PMA Indonesia Penanaman Modal Asing. Foreign joint venture company.
PMDN Indonesia Penanaman Modal Dalam Negeri. Domestic Capital investment company.
PrC Ireland Private Company limited by shares.
Prp. Ltd. Botswana Private company limited by shares.
PT Indonesia Perseroan Terbuka. Limited company.
PT Tbk Indonesia Perseroan Terbatas, Terbuka. Stock corporation.
Pty. Australia Proprietary Company.
RI Switzerland Raison individuelle. Sole Proprietorship.
RAS Estonia Riiklik Aktsiaselts. State (owned) Joint Stock company.
Rt Hungary Részvénytársaság. Stock Company.
S. de R.L. Mexico Sociedad de Responsabilidad Limitada. Limited Liability Company.
S. en C. Colombia & Peru Sociedad en Comandita. Limited
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Abbr. Country Description
Partnership.
S.N.C. Mexico Sociedad en Nombre Colectivo. General Partnership.
S/A Brazil Sociedade Anônima. Joint stock company, equivalent to a corporation.
SA Argentina Sociedad Anonima. Joint stock company, equivalent to a corporation.
SA Belgium Société Anonyme. Joint stock company, equivalent to a corporation.
SA France/Switzerland Société Anonyme. Joint stock company, equivalent to a corporation.
SA Ivory Coast Société Anonyme. Joint stock company, equivalent to a corporation.
SA Luxembourg Société Anonyme. Joint stock company, equivalent to a corporation.
SA Mexico Sociedad Anónima. Joint stock company, equivalent to a corporation.
SA Morocco Société Anonyme. Joint stock company, equivalent to a corporation.
SA Poland Spółka Akcyjna. Joint stock company, equivalent to a corporation.
SA Portugal Sociedad Anónima. Joint stock company, equivalent to a corporation.
SA Romania Societate pe actiuni. Joint stock company, equivalent to a corporation.
SA Spain Sociedad Anonima. Joint stock company, equivalent to a
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Abbr. Country Description
corporation.
S.A. Brazil Sociedade por Ações. Privately- held company.
SA de CV Mexico Sociedad Anonima. Joint stock company, with variable capital
SAFI Uruguay Sociedad Anonima Financiera de Inversion. Offshore company.
Sagl Switzerland Società a garanzia limitata. Limited Liability Company.
S.A.I.C.A. Venezuela Sociedad Anónima Inscrita de Capital Abierto. Open Capital Company .
SApA Italy/Switzerland Societa in Accomandita per Azioni. Limited partnership with shares.
Sarl France & Other Société à responsabilité limitée. Limited Liability Company. Used in France and other French speaking countries.
Sarl Luxembourg Société à Responsabilité Limitée. Limited Liability Company.
SAS France Société par Actions Simplifiée. Simplified Stock Corporation which has the legal status of a corporation. Note, however, that "societe par action" by itself is not an official French entity designation.
SAS Italy Societá in Accomandita Semplice. Limited Partnership.
SC France/Switzerland Société en commandite. Partnership with limited and general partners.
SC France Société civile. Partnership with full liability.
SC Poland Spólka prawa cywilnego. Partnership with all partners having unlimited liability.
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Abbr. Country Description
SC Italy/Switzerland Societa cooperativa. Cooperative society. This type of entity may be incorporated with either limited or unlimited liability.
SCOP France/Switzerland Société Coopérative. Cooperative society. This type of entity may be incorporated with either limited or unlimited liability.
S.C. Spain Sociedad en Commandita. General Partnership.
SCA France/Belgium/ Switzerland
Société en commandite par actions. Limited partnership with share capital, occupies a position between a limited partnership and a corporation.
SCA Romania Societate in còmandita pe actiuni. Limited liability partnership with shares.
SCP Brazil Sociedade em Conta de Participacão. Partnership where there is one partner assumed responsible for running the business.
SCS Belgium & France Société en Commandite Simple. A special partnership very similar to an American limited partnership
S.C.S. Brazil Sociedade em Comandita Simples. Limited Partnership.
SCS Mexico Sociedad en Comandita Simple. Limited Partnership.
SCS Romania Societate in comandita simpla. Limited liability partnership.
Sdn Bhd Malaysia Sendirian Berhad. Limited Liability Company.
SE European Union Societas Europae. European Company. A Public Limited Company, equivalent to a corporation.
SENC Luxembourg Société en Nom Collectif. General
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Abbr. Country Description
Partnership.
SGPS Portugal Sociedade gestora de participações socialis. Holding Enterprise.
SK Poland Spólka komandytowa. Limited liability partnership.
SL Spain Sociedad de Responsabilidad Limitada. Limited liability company, may be identified as a joint stock company with limited liability.
SLNE Spain Sociedad Limitada Nueva Empresa. Limited Liability New Business, a modified Limited Liability Company.
SNC France/Switzerland Société en nom collectif. General Partnership.
SNC Italy/Switzerland Società in Nome Collettivo. General Partnership.
SNC Romania Societate in Nume Colectiv. General Partnership.
SNC Spain Sociedad en Nombre Colectivo. General Partnership.
SOPARFI Luxembourg Société de Participation Financière. Holding company.
SP France Société en participation. Undisclosed partnership.
SpA Italy Società per Azioni. Limited share company, or joint-stock company, equivalent to a corporation.
spol s.r.o. Czech Republic Spolecnost S Rucenim Omezenym. Limited Liability Company.
SPRL Belgium Société Privée à Responsabilité Limitée. French language equivalent to a private limited liability company.
SRC Spain Sociedad Regular Colectiva. A regular collective company, similar to a partnership.
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Abbr. Country Description
Sp. z.o.o. Poland Spólka z ograniczona odpowiedzialnoscia. Limited liability company, privately-held.
Srl Chile Sociedad de responsabilidad limitada. Limited Liability company.
Srl Italy Società a Responsabilità Limitata. Limited liability (joint stock) company.
Srl Romania Societate cu Raspundere Limitata. Limited-liability company, privately- held.
SS Italy/Switzerland Società Semplice. Simple Partnership.
SS Switzerland Société Simple. Simple Partnership
Stiftung Germany/Swiss Stiftung. Foundation having some attributes of a corporation.
td Slovenia Tiha druzba. Sole proprietorship.
TLS Turkey Türk Limited Şirketi. Private Limited Liability Company.
Verein Switzerland Verein. Association.
VOF Netherlands Vennootschap onder firma. General partnership.
v.o.s. Czech Rep Verejna Obchodni Spolecnost. General partnership.
YK Japan Yugen Kaisha. Limited company, similar to an American closely held corporation. Abolished in 2006 and replaced with the Godo Kaisha.
D-14 September 2009
APPENDIX E
COUNTRIES THAT HAVE STANDARD CHARACTER MARKS OR THE EQUIVALENT
Purpose: The purpose of this appendix is to assist in determining for which countries it is unnecessary to inquire whether and/or confirm that the mark as registered in the foreign registration is in standard characters or the equivalent.
Explanation: The Office currently requires examining attorneys to inquire whether a mark in a foreign registration is in standard characters or the equivalent. TMEP §807.03(f). The following list is of countries that have been determined to register marks that are in standard characters or the equivalent. Please note that “country” refers to the country of the foreign registration upon which the applicant relies to obtain registration under §44(e). Thus, for countries on this list, provided that the drawing of the mark in the foreign registration is in block letters or other plain type font, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent.
If the applicant has indicated that the mark is not in standard characters or the equivalent, but the foreign registration is from a country on the list and the mark appears in block letters or other plain type font, the examining attorney must inquire about the discrepancy. In response to the inquiry, the applicant must either amend the application to claim standard characters, or confirm that the mark is not in standard characters or the equivalent. If a particular country is not on this list, the examiner must inquire as to whether the mark in the foreign registration is for a mark in standard characters or the equivalent.
COUNTRY LIST
ALBANIA ARGENTINA AUSTRALIA AUSTRIA BELGIUM (Benelux Nations) BELIZE BRAZIL BURUNDI CANADA CHILE CHINA (PEOPLE’S REPUBLIC OF)* COSTA RICA CUBA
D-1 September 2009
CZECH REPUBLIC DENMARK ECUADOR EL SALVADOR FINLAND FRANCE (including Overseas Departments and Territories) GERMANY GUATEMALA HONG KONG HUNGARY ICELAND INDIA IRELAND JAPAN KOREA, SOUTH (REPUBLIC OF KOREA)* LEBANON LIECHTENSTEIN LUXEMBOURG (Benelux Nations) MEXICO MONACO NETHERLANDS (Benelux Nations) NEW ZEALAND NICARAGUA NORWAY PANAMA PEOPLES REPUBLIC OF CHINA (PRC)* PERU PORTUGAL RUSSIAN FEDERATION SAN MARINO SINGAPORE SOUTH AFRICA SOUTH KOREA (Republic of Korea)* SPAIN SWEDEN SWITZERLAND TAIWAN (Republic of China)(ROC) UNITED KINGDOM
OTHER TYPES OF REGISTRATIONS THAT ARE FOR STANDARD CHARACTER MARKS OR EQUIVALENT
MADRID PROTOCOL (provided that the 79’ series application indicates the mark is in standard characters)
COMMUNITY TRADEMARK (CTM)
D-2 September 2009
Index A
Abandonment of application (see also Abandoned application; Petition to revive abandoned application; Reinstatement of inadvertently abandoned application)
after ex parte appeal—718.05; 1714.01(f)(i) after inter partes proceeding—718.06 defined—718 express—611.02; 718.01 granting additional time to avoid—718.03(b) incomplete response resulting in—718-718.03(c); 1713.01; 1714.01(f)(ii) location of files—109.02 notice of, for failure to respond—718.04; 718.06 of multiple-basis application—806.02(d) of multiple-class application—1403.05 ordering abandoned files—109.02 partial—718.02(a); 1402.13; 1403.05; 1904.03(d) petition from examining attorney’s holding of—1713.01 reconsideration of holding of—718.03(c) through failure to file statement of use—718.04 through failure to prosecute appeal—718.05 through failure to respond to Office action—718.02; 718.03
Abstracts of title—503.08(a) Acceptable Identification of Goods and Services Manual—1402.04 Access by public to files
electronic images—109.01 paper files—109.02
Accessibility of assignment records—503.08 of files held by Office personnel—109
Acquired distinctiveness (§2(f) claim)—1212 et seq. as to a portion of the mark—1212.02(f)(i); 1212.09(b) as to particular goods/services/classes—1212.02(f)(ii) based on five years’ use—1212.05-1212.05(d) based on ownership of prior registrations—1212.04-1212.04(e) concession that matter is not inherently distinctive—1212.02(b) disclaimers in applications claiming §2(f)—1212.02(e) establishing with actual evidence—1212.06-1212.06(e)(iv) evidence submitted to establish—1212.06-1212.06(e) first or only user—1212.06(e)(i) five years of use as proof of—1212.05-1212.05(d) in part—1212.02(f)-1212.02(f)(ii); 1212.09(b) in §1(b) application—1102.04; 1212.09-1212.09(b) in §44 application—1010; 1212.08 in §66(a) application—1212.08 in the alternative—1212.02(c) printing of—817; 1212.10 prior registrations as proof of—1212.04-1212.04(e)
Index-1 October 2009
unnecessary—1212.02(d) with respect to incapable matter—1212.02(i)
Act of 1881—1601.04; 1602.02 Act of 1905—1601.04; 1602.02 Act of 1920—1601.05; 1602.03 Act of 1946 (see Trademark Act of 1946) Action after issuance of notice of allowance and before filing of statement of use—
807.03(j); 1107 Action by affidavit/renewal examiner
upon examination of §8 affidavit—1604.15 upon examination of renewal application—1606.11
Action by examining attorney (see also Examination) after final refusal—715; 715.02; 715.03(a); 715.03(b) after new search—206.04 all arguments by applicant to be addressed in—713.03 all outstanding refusals and requirements to be noted in—713.02 citation of decisions in—705.05 citation of registrations in—705.03 date of—705.07 evidence supporting refusal in—710.01-710.01(c) form paragraphs in—705.01 incomplete response to—611.05(a)-(c); 718.03-718.03(c); 1713.01-1713.02;
1714.01(f)(ii) language in—705.01 non-receipt of—717.02 piecemeal action to be avoided—704.01 raising new issues—706-706.01 returned—403; 717.01 review by supervisory examining attorney—705.06 “search clause” in—704.02 statutory language in—705.01 supplemental action—711.02 to be complete—704.01
Address changing address of owner of registration—1609.11 changing correspondence address—503.01(b); 609.02-609.02(f) correspondence—609-609.04 for communications to the International Bureau—1906 for communications to U.S. Patent and Trademark Office (“USPTO”)—305.01 for electronic mail communications—304.08 for filing documents to be recorded in Assignment Division—503.04 of applicant—803.05 of assignee—502.02(a)-(b)
Advisory statement cannot serve as foundation for final refusal—714.05(c) Aesthetic functionality—1202.02(a)(vi) Affidavit of continued use or excusable nonuse (§8) (See also Affidavit of continued
use or excusable nonuse (§71)) appeal to federal court—1604.18(d) combined with renewal application—1604.19; 1606.15 combined with §15 affidavit—1605.05 change from mark as registered—1604.13
Index-2 October 2009
character of use of mark—1604.10 deficiencies, correction of—1604.06(b); 1604.17-1604.17(c) domestic representative, designation of—1604.14 excusable nonuse—1604.11 execution of—1604.08-1604.08(d) extension of protection to the United States (§71)—1613 fee for filing—1604.06-1604.06(c) form for filing—1604.03 goods and services set forth in—1604.09-1604.09(e) grace period—1604.04; 1604.06(b) nonuse—1604.11 notice on registration certificate—1604.02 Office action upon examination of—1604.15 ownership—1604.07-1604.07(f) petition to Director—1604.18-1604.18(c) premature filing of—1604.04(a) recourse after refusal—1604.18-1604.18(d) response to Office action—1604.16 requirements for—1604.05 registrations in 20-year terms—1604.04(b) signature—1604.08-1604.08(d) specimen(s)—1604.12-1604.12(c) time for filing—1604.04; 1604.17(c) untimely filing cannot be cured—1712.02(a); 1604.17(c) use in commerce—1604.10 who may file—1604.07
Affidavit of continued use or excusable nonuse (§71)—1613 (See also Affidavit of continued use or excusable nonuse (§8))
Affidavit of incontestability (§15)—1605-1605.06 combined with §8 affidavit—1605.05 fee—1605.04 form for filing—1605.02 premature—1605.03 requirements for—1605.04 §14 limitation independent of—1605.06 registered extension of protection of international registration—1605.01; 1904.11 substitute—1605.04 Supplemental Register registrations not eligible—1605.01 time for filing—1605.03
Affidavit of use (see Affidavit of continued use or excusable nonuse) Affidavit under §8 (see Affidavit of continued use or excusable nonuse (§8)) Affidavit under §71 (see Affidavit of continued use or excusable nonuse (§71)) Agents—602.03-602.03(c) Agreement of drawing and foreign registration in §44 application—807.03(f);
807.12(b); 1011.01 Agreement of drawing and specimen—807.12(a)-807.12(a)(iii); 1215.02(c) Allegations of use in §1(b) application (see also Amendment to allege use;
Statement of use)—1103 Alphabetical List, International—1401.02(c) Amendment of application
after decision on appeal—1501.06
Index-3 October 2009
after final action—715; 715.01; 715.02 after publication—806.03(j)-(j)(ii); 1505-1505.02(g) from Principal Register to Supplemental Register in §1(b) application—1102.03 prohibited during period between issuance of notice of allowance and filing of
statement of use, except to delete specified goods or services (§1(b) application)—1107
to add or substitute a basis for registration—806.03-806.03(k) to change filing basis from §1(a) to §1(b)—806.03(c) to change filing basis from §1(b) to §44—806.03(g); 806.03(j)(i)-806.03(j)(iii) to change basis from §44 to §1(b)—806.03(d) to claim priority—806.03(b) to delete §1(b) basis—806.04-806.04(a) to different register—816-816.05; 1014; 1102.03
Amendment of dates of use to reflect a change, must be verified—903.04 upon amendment of identification—903.08
Amendment of mark in registration—1609.02-1609.02(g) drawing—1609.02(b) fee required—1609.02 in registered extension of protection—1609.02; 1904.13 material alteration of mark not permitted—1609.02(a) specimen—1609.02(c) who may request—1609.02
Amendment of mark on drawing—807.15 amendment to cure “internal inconsistency” not permitted—807.14(d) in marks comprising domain names—1215.08-1215.08(b) in registered extension of protection—1609.02; 1904.02(j); 1904.13; 1906.01(i) in registration based on §1 or §44 application—1609.02-1609.02(g) in request for extension of protection of international registration—807.13(b);
1609.02; 1904.02(j); 1904.13; 1906.01(i) in §44 application—1011.03 may not result in material alteration—807.03(d); 807.14-807.14(e); 1609.02-
1609.02(g) must be warranted by specimens or foreign registration—807.12(a)-807.12(a)(iii);
807.12(b); 807.13 not permitted in §66(a) application—807.13(b); 1609.02; 1904.02(j); 1906.01(i) procedures for—807.15; 807.16 processing unacceptable amendments—807.17 to color features—807.14(e)-807.14(e)(iii)
Amendment of registration (see also Amendment of mark in registration)—1609- 1609.09
correction of mistake—1609.10-1609.10(b) dates of use—1609.07 disclaimer—1609.05 effect on limitation of grounds for cancellation—1609.08 fee required—1609.02 from Supplemental to Principal Register not permitted—1609.08 of classification—1609.04 of identification of goods/services—1609.03 of mark—1609.02-1609.02(g) of owner’s address—1609.11
Index-4 October 2009
of registered extension of protection—1609.01; 1609.02; 1609.03; 1609.04; 1904.13; 1906.01-1906.01(i)
of registrations with color claim—1609.02(e) territorial restrictions—1609.06 who may request—1609.01(a); 1609.01(b)
Amendment to allege use—1104-1104.11 approval of—1104.11 blackout period—1103; 1104.03(b); 1104.03(c) dates of use—1104.09(d) drawing—1104.09(f) examination of, by examining attorney—1104.09-1104.09(h) execution of—1104.09(b) ex parte appeals—1104.07 fee for filing—1104.09(g) filed in conjunction with application—1104.05 filing during pendency of ex parte appeal—1104.07 form of—1104.02 identification of goods/services in—1104.09(c) located after publication—1104.04 minimum requirements for—1104.01 ownership—1104.09(a) requirements for—1104.08 review for compliance with minimum filing requirements—1104.01(a)-1104.01(c) specimen—1104.09(e) substantive refusals—1102.01 time for filing—1104.03 use in commerce—1104.09(d) use on all goods/services before filing—1104.03(a) withdrawal of—1104.10
“America” or “American,” marks comprising—1209.03(n); 1210.02(b)(iv) Apostille—804.01(a)(i) Appeal to Trademark Trial and Appeal Board
amendment during—1501.05 amendment after decision on—1501.06 appealable matter—1501.01; 1704 application record must be complete prior to—710.01(c) dismissal of—1501; 1714.01(f)(ii) fee for—1501.04 in general—1501-1501.07 time period for—715.03(c);1501 withdrawal of refusal during—1501.03
Appeal briefs, applicants’—1501; 1501.02(a) Appeal briefs, examining attorneys’
failure to file—1501; 1714.01(f)(ii) format for—1501.02(b); App. A preparation of—1501.02(b)
Appealable matter—1501.01 Applicant
address of—803.05 application void if wrong party identified as—803.06; 1201.02(b) association as—803.03(c)
Index-5 October 2009
banking institution—803.03(a) citizenship of—803.04 communication with applicant who is represented by attorney—601.02 companies—803.03(c) corporation as—803.02(c); 803.03(c) correcting mistake in name of—1201.02(c) eligible under §44—1002-1002.05 Federally recognized Indian tribe—803.03(j) foreign—803.03(i), Appendix D government bodies and universities as—803.03(f) individual as—803.02(a); 803.03(a) joint applicants as—803.03(d) joint venture as—803.02(b); 803.03(b) limited liability companies as—803.03(h) limited liability partnerships as—803.03(k) may not be changed—803.06; 1201.02(b) minor—803.01 must be natural or juristic person—803.01 name of—803.02 operating divisions—1201.02(d) partnership as—803.02(b); 803.03(b) properly identifying the applicant—1201.02(a) sole proprietorship as—803.03(a) trusts, conservatorships and estates as—803.03(e)-803.03(e)(i) verification of—804-804.05 who may apply—803.01
Applicant’s name—803.02 Applicants, joint—611.06(a); 803.03(d) Application checklist—818 Application files
electronic—109.03; 402-402.01 new, processing of—401.04 preparation of, for publication or registration of mark—817 to remain in Office—109
Applications for international registration (see International applications for registration)
Application for registration abandoned (see also Abandoned application; Abandonment of application)—718 “amended”—702.01 approved for publication—1502 basis for (see Filing basis) classification—1401-1401.08 combined (see Combined application) concurrent use (see Concurrent use registration) dates of use—903.01; 903.02 declaration in lieu of oath—804.01(b) defective—204-204.03 establishing ownership of—502-502.03 filing basis (see Filing basis) filing date (see Filing date (application)) form for filing—802
Index-6 October 2009
informal—204-204.03 intent-to-use (see Intent-to-use applications) multiple-class (see Combined application) persons who can sign verification—804.04 priority under §44(d)—806.01(c); 1003-1003.08 should specify register on which registration is sought—801.02(a) signature—804-804.05 specimen—904-904.07(b); 1301.04-1301.04(d) statutory averments—804.02 suspended (see also Suspension of Office action)—716-716.06 TEAS Plus—819-819.04 types of—801-801.02(b) use in commerce—806.01(a) verification made in foreign country—804.01(a)(i) verification with oath—804.01(a)
Application serial number—401.02 Article 6ter of Paris Convention—1205.02 Artist, name of, on original work of art—1202.09(b) Artists and authors, name of, as mark—1202.09-1202.09(b); 1301.02(b) Assignee
entitled to prosecute application or registration—501.05; 502.01 establishing ownership in name of—502-502.03 issuance of new registration certificate to—502.03 issuance of original registration certificate in name of—502.02(a)-(b) not domiciled in United States—501.04 stands in place of applicant or registrant—501.05
Assignment (see also Assignee) accessibility of records—503.08 conditional—503.01(e) definition of—501.01 documents—503.02; 503.03(a) establishing ownership—502-502.03 examining attorney’s action regarding—502.02(c) failure to record—501.03 indexing against recorded document not permitted—503.07 of intent-to-use application—501.01(a) of marks in applications or registrations—501.01 of §1(b) application—501.01(a) of §44 application—501.04; 1006 of §66(a) application—501.01(b); 501.07; 502.01; 502.02(b); 503.05; 503.03(a);
1904.06; 1906.01(a)-1906.01(a)(iii) of extension of protection of international registration—501.01(b); 501.07;
502.01; 502.02(b); 502.03; 503.05; 503.03(a); 1904.06; 1906.01(a)- 1906.01(a)(iii)
partial—501.06; 1110.11; 1615 recordation of (see Assignment, recordation of) records open to public—503.08 searching—104; 503.08 written assignment required—501.02
Assignment, recordation of address for submitting documents—503.04
Index-7 October 2009
automatic updating—504-504.05 correction of errors in—503.06-503.06(f) correspondence address not changed by—503.01(b) cover sheet—503.03(e); 503.06(a)-503.06(a)(ii) date of—503.05 documents eligible for—503.02 electronic filing—503.03(a); 503.03(b); 503.03(e) effect of—503.01-503.01(e) errors, correction of—503.06-503.06(f) fee for—503.03(d) indexing not permitted—503.07 not a determination of validity—503.01(c) of extension of protection of international registration must be filed International
Bureau—503.03(a); 503.05; 503.06; 503.06(b); 504.05; 1904.06 of international registration—1906.01-1906.01(a)(iv) original documents should not be filed—503.03(b) petitions to correct or expunge assignment records—503.06(f) procedure for—503.05 requirements for—503.03-503.03(e) resubmission of documents for—503.05 searching may be done on USPTO website—104; 503.08
Association name of—803.02(c) state or country of organization of—803.04
Assumed business name—803.02; 803.02(a); 803.02(b) Attorney
appearance by—602; 602.01 associate power of—605.03 Canadian—602.03(a) change of—604.03; 609.02; 609.02(a); 609.02(b) communication with—601.02; 604.03; 608.01; 609.01; 609.02; 707.01; 708.02 communication with applicant who is represented by—601.02 correspondence sent to—604.03; 609; 609.01; 609.02(a); 609.02(b) foreign—602; 602.03-602.03(e) Office may not aid in selection of—601.01 powers of (see also Power of attorney)—602.01-605.04 revocation of power of—606 representation of owner of mark by—601-601.02 signature of—611.01(a); 611.02 suspended—608.02 standards of conduct—603 unauthorized practice—608 withdrawal of—607
Author, name of, as mark—1202.09(a)-1202.09(a)(iii) Averments, statutory—804.02
B
Background designs and shapes as mark—1202.11 Banking institution as applicant—803.03(g) Basic Facts About Registering a Trademark—105
Index-8 October 2009
Basis for filing (see Filing basis) Blackout period—1103; 1104.03(b)-1104.03(c) Blinded Veterans Association—1205.01 “Bona fide and effective industrial or commercial establishment”—1002.04 Bona fide intention to use mark in commerce
acceptable language for statement of—1101 application filing basis, under §1(b)—806.01(b) continued—1101; 1108.02 must be asserted in request for extension of time to file statement of use—
1108.02(e) must be asserted in §44 application, even if use has commenced—1008 must be asserted in §66(a) application—804; 804.05; 1904.01(c) must be asserted in written application—806.01(b)-806.01(d); 1101 not necessary to repeat in multiple-basis application—806.02(g)
Bona fides of applicant, in asserting intent to use mark in commerce, not inquired into by examining attorney—1101
Bona fide use in ordinary course of trade—901.02 Buenos Aires Convention—App. B Bulky specimens—904.02(b) Business cards as specimens of service mark use—1301.04(c) Business trusts—803.03(e)(i) Business with Office to be transacted in writing—708.03; 709.03; 709.04; 709.05
C
Canadian attorneys and agents—602.03(a) Cancellation
of inadvertently accorded filing date—204.01 of international registration—1904.08 of notice of allowance—1106.03 of registration for certification mark—1306.05(b); 1306.07 of registration for failure to file affidavit of continued use—1604; 1604.04 of registration under §8—1604; 1604.04 of registrations under §14 or §37—1607 of registrations under §71—1904.10 surrender of registration for—1608
Catalogs as trademark specimens—904.03(h) Certificate of extension of protection of international registration—1904.05 Certificate of mailing procedure
effect of—305.02(e) eligible correspondence—305.02(a) correspondence returned by U.S. Post Office—305.02(g) date used to determine timeliness—305.02(e) location of certificate—305.02(c) mailing requirements and address—305.01 non-receipt of correspondence by PTO—305.02(f) not available for filing international applications—305.02(a) not available for filing requests for transformation—305.02(a) not available for filing requests to record changes to an international
registration—305.02(a) not available for filing responses to IB notices of irregularities—305.02(a)
Index-9 October 2009
not available for filing subsequent designations—305.02(a) not available for filing trademark applications—305.02(a) wording of certificate—305.02(d)
Certificate of registration extension of protection of international registration—1904.05 indication that mark is on Principal Register in—1601.07 indication that mark is on Supplemental Register in—1601.07 issuance in name of assignee—502.02(a)-(b) new, upon change of ownership—502.03
Certificate of transmission (See Facsimile transmission, certificate of) Certification division of USPTO—See Document Services Branch) Certification mark
amendment to different type of mark—1306.06(f)(vi) authority of applicant to control use of geographic term—1306.02(b) based on foreign registration—1306.08 cancellation of registration for—1306.07 cancellation of prior trademark registration as prerequisite to issuance of
certification mark registration—1306.05(b) certification statement in application to register—1306.06(f)(i) certification versus performance of services and sale of goods—1306.04 characteristics of—1306.05 circumstances surrounding use—1306.05 classification of goods/services in application to register—1306.06(d);
1401.03(d); 1902.02(g)(ii); 1904.02(b) collective mark, distinguished from certification mark—1306.09(a) definition of—1306.01 distinguished from other types of marks—1306.01; 1306.09(a); 1306.09(b) drawing requirements—1306.06(a) examination of application to register—1306.06-1306.06(f)(vi) exercise of control—1306.06(f)(iii) foreign registration, basis for registration of certification mark—1306.08 geographic term used to designate regional origin—1210.09; 1306.02-1306.02(c) geographically deceptive term not permitted—1306.02 government as applicant for—1306.02(c) grounds for cancellation under §14, applicability to examination—1306.07 identification of goods or services—1306.06(e) indication of regional origin versus description of goods—1306.02(a) in §66(a) application—1904.02(d) labor performed by specific group or individual, term used to certify that—
1306.03 mark not used by applicant—1306.06(f)(v) may be geographically descriptive—1306.02 not registrable as trademark or service mark—1306.05(a) ownership of—1306.04 patent licenses, use of trademark or service mark by patent licensee
distinguished from—1306.09(c) purpose is to certify, not indicate source—1306.01(b) quality control by owner not a requirement—1306.01(a) related company use of trademark or service mark distinguished from—
1306.09(b) same mark not registrable as other type of mark—1306.05(a); 1306.05(b)
Index-10 October 2009
specimens—1306.06(b); 1306.06(c) standards—1306.06(f)(ii) statement of control over use of mark—1306.06(f)(iii) statement of first use under authority of applicant—1306.06(f)(iv) statement that mark is not used by applicant—1306.06(f)(iv) statement of what mark certifies—1306.06(f)(i) title or degree not a certification mark—1306.03; 1306.06 uncertainty as to type of mark—1306.09 use is by others—1306.01(a); 1306.06(f)(iv); 1306.06(f)(v) verification language in application to register—1306.06(f)(iii)
Certification or certified copy of foreign registration required for §44(e)—1004.01 Chain of title—502.01; 502.02(a); 504.03 Change of attorney—604.03 Change of correspondence address—503.01(b); 609.02-609.02(f) Change of filing date of application—204.03; 205; 1711 Character or person, as mark—1202.09-1202.09(c); 1202.10-1202.10(a); 1301.02(b) Checks, in general—405.02 Check, returned unpaid
affidavit of continued use or excusable nonuse (§8)—405.06; 1604.06(c) amendment to allege use—405.06; 1104.09(g) application filing fee—202.03(a); 405.06 extension of time to file statement of use—405.06; 1108.02(c) renewal fee—405.06; 1606.05(c) statement of use—405.06; 1109.15(a)
Checklist, application—818 Citation of Decisions and USPTO Publications—705.05 Citizenship of applicant—803.04 Claim of priority (see also Priority under §44(d))
amendment to add—806.03(b); 1003.02 form of—806.01(e); 806.01(c); 1003; 1904.01(e) in application for international registration—1902.05 in request for extension of protection of international registration—206.02;
1904.01(e) Claiming benefits of Act of 1946 under §12(c)—1603-1603.03 Class headings—1401.02(a) Classification of goods/services
amendment of—707.02; 1401.03; 1401.03(b); 1401.04(b); 1403.02; 1403.02(b) amendment after publication—707.02; 1109.14; 1505.02(b) amendment after registration—1401.02; 1609.04 amendment from U.S. to international classification system—1401.02; 1601.06;
1609.04 amendment not permitted in §66(a) application—1401.03(d); 1505.02(b);
1609.04; 1904.02(b) cannot be changed in §66(a) application—1401.03(d); 1505.02(b); 1609.04;
1904.02(b) certification mark—1306.06(d); 1401.03(d); 1902.02(g)(ii); 1904.02(b) changes based on 8th and 9th Nice Agreements—1401.09-1401.11 collective mark—1303.02(a) collective membership mark—1304.08(c); 1401.03(d); 1902.02(g)(ii); 1904.02(b) criteria for determining—1401.02(a); 1401.05 designation by applicant normally accepted—1401.03(a)
Index-11 October 2009
designation by International Bureau in §66(a) application controls—1401.03(d); 1904.02(b)
designation by Office—1401.03(b) in application for international registration—1902.02(g)-1902.02(g)(iii) in §66(a) application—1401.03(d); 1505.02(b); 1609.04; 1904.02(b) international system—1401.02-1401.02(c) plurality of uses—1401.07 republication not required after amendment—1505.02(b) services—1401.02(a); 1402.11 short titles of classes—1401.02(b) should be designated by applicant, if known—1401.03 specimens as related to—1401.06 statutory authority for—1401.01
Clear error—706.01; 1109.08 Closings of USPTO, unscheduled—309 Coat of arms, refusal to register mark comprising—1204 Collateral estoppel—1217 Collective mark, in general (see also Collective membership mark; Collective
trademarks and service marks) definition of—1302 history of—1302.01
Collective membership mark classification—1304.08(c); 1401.03(d); 1902.02(g)(ii); 1904.02(b) control over use of—1304.08(f)(i); 1304.08(f)(ii) definition—1302 distinguished from other types of marks—1302; 1304.01; 1304.08(a)(i);
1306.09(a) examination of application to register—1304.08-1304.08(f)(iii) history of—1304.01 identifications—1304.08(d) in §66(a) application—1904.02(d) ownership of—1302; 1304.04; 1304.05 purpose of—1304.02 refusal to register—1304.08-1304.08(f)(iii) special elements of—1304.08(f)(i); 1304.08(f)(iii) specimens for—1304.08(e) title or degree designations compared with—1304.08(a)(i) use is by members—1304.03; 1304.08(f)(iii) who may apply—1304.04
Collective organization nature of collective organization—1304.06 use of collective mark by members of—1302; 1303.01 use of trademark or service mark by—1305
Collective trademarks and service marks control over use of—1303.02(c)(i); 1303.02(c)(ii) classification of—1303.02(a) definition—1302 distinguished from other types of marks—1302; 1303; 1305; 1306.09(a) examination of application to register—1303.02-1303.02(c)(ii) manner of control—1303.02(c)(i) ownership of—1303
Index-12 October 2009
special elements of—1303.02(c)(i); 1303.02(c)(ii) specimens for—1303.02(b) use is by members—1303.01; 1303.02(c)(ii)
Color amendment of color features of mark—807.14(e)-(e)(iii) black, white or gray shown on drawing—807.07(d)-(f) as a mark—1202.05-1202.05(h) as a separable element of a mark—1202.05(c) drawings of—807.07-807.07(e); 1202.05(d)-1202.05(d)(iv) functional color marks not registrable—1202.05(b) gray—807.07(d)-(f) in the mark—807.07-807.07(e); 1202.05-1202.05(h) lining—807.07(g); 808.01(b); 1902.02(e) location statement—807.07(a)(ii) must be claimed as feature of the mark—807.07(a); 807.07(a)(i) specimens for marks comprising—904.02(c)(ii); 1202.05(f) special considerations for color marks—1202.05(g)
Color claim—807.07(a)-807.07(f) Columns or sections of publications, marks that identify—1202.07-1202.07(b) Combined affidavit under §§8 and 15—1605.05 Combined application—1403-1403.05(c)
abandonment of—718.02(a); 1403.05 addition of class number(s) in—1403.02(c) amendment of—1403.02 correction of class(es) in—1403.02(b) deletion of class(es) from—1403.02(a) division of (see also Division of application)—1403.03 filing fees for—810.01; 1401.04; 1403.06 refusal as to fewer than all classes in—1403.05 requirements for—1403.01 single certificate of registration issued, unless application divided—1403.01 specimens for—904.01(b)
Commerce bona fide use in ordinary course of trade—901.02 commerce that may be lawfully regulated by Congress—901.03 definition of—901.01 use in (see Use in commerce) territorial—901.03 type of—901.03 with the United States—901.03
Commercial name—1202.01 Commissioner, change of title—1701 Companion applications and registrations—702.03(a)-702.03(a)(iv) “Company”
does not identify legal entity in the United States—803.03; 803.03(c) used in commonwealth countries to designate legal entity—803.03(i)
Company, related (see Related company) Compliance with other laws—907 Component or ingredient, mark used to identify—1402.05(a) Composition of goods—1402.05(b) Computer programs
Index-13 October 2009
identification of—1402.03(d) specimens for—904.03(e)
Computer services, identification of—1402.11(a) Computer software as service mark—1301.02(f) Computing period for response to action—310 Concurrent use registration—1207.04-1207.04(f)(i)
not permitted in §44 and §66(a) applications—1207.04(b) Conditional assignment—503.01(e) Configuration of goods or packaging—1202.02-1202.02(d) Conflicting applications—702.03(b); 705.03; 718.07; 1207.01(d)(x); 1208-1208.02(f) Conflicting marks—702.03(b); 1207.01(d)(x); 1208-1208.02(f) Congressional inquiry—1802 Consent agreement—714.05(d); 715.03(b); 1207.01(d)(viii) Consent to register by living individual—813-813.01(c); 1206-1206.05
Connection with goods or services—1206.02 Implicit consent—1206.04(d) Must be personally signed—813; 1206.04(a); 1206.04(b) Must be written consent to registration—1206.04(a) Name or likeness is that of living individual—813.01(a); 1206.01 Names and likenesses that do not identify particular living
individual—813.01(b); 1206.05 Presumed from signature of application—1206.04(b) Not required if consent of record in prior registration—1206.04(c) Printing of statement—813.01(a)-813.01(c) Sample statements—813.01(a); 813.01(b) Statement required in TEAS Plus application—813; 819.01(o) Updating TRAM database—813.01(a)-813.01(c) When inquiry required—1206.03 Written consent must be personally signed—813; 1206.04(a);
1206.04(b) Conservatorship as owner of mark—803.03(e) Constructive use—201.02; 1904.01(g) Control over nature and quality of goods/services—1201.01; 1201.03; 1201.03(a) Convention or treaty relating to trademarks—1001; 1002.01; 1002.02; 1900; App. B Copending (companion) applications—702.03(a)-702.03(a)(iv) Copies of documents, when acceptable for filing—302.01 Copies of materials in files, requests for—111 Copies of trademark applications and registrations, requests for—111 Copying materials in files—109.03 Corporation
address of—803.05 name of—803.02 non-profit—803.03(c) signature on behalf of—611.06(d); 804.04 state or country of incorporation—803.04 tax-exempt—803.03(c)
Correction of errors in cover sheet or recorded document—503.06-503.06(f) Correction of errors in international registration—1906.01(f) Correction of mistake in name of applicant—1201.02(c) Correction of mistake in registration—1609.10-1609.10(b) Correction of drawing—807.15-807.16
Index-14 October 2009
Correspondence, returned as undeliverable—403 Correspondence for trademark applications—302.03(a) Correspondence for trademark registrations—302.03(b) Correspondence address—609-609.04
applicant has duty to maintain current correspondence address— 609.03
change of—609.02-609.02(f); 609.04 establishing—609.01 in §66(a) application—609.01(a) signature of request to change—609.02(b); 611.02
Correspondence with applicants not domiciled in United States—609.04 Correspondence, with whom held—609-609.04 Country of origin—1002.04 Courier service, delivery of correspondence by—307 Court orders concerning registrations—1610 Cover sheet required for recording in Assignment Division—503.03(e) Credit card—405.01; 405.06
Charges refused or charged back—202.03(a)-202.03(a)(i); 405.06 Cultivar names—1202.12
D
Date of filing (see Filing date (application); “Office Date” stamp) of first use in commerce—903.02 of first use of mark—903.01 of notarization of application—804.01(a) of receipt stamped on hand-delivered papers—303.01; 303.02(b); 307 of signing of §2.20 declaration in application—804.01(a); 804.01(b); 804.03
Date stamp (see “Office Date” stamp) Dates of use (see also Date of first use in commerce; Date of first use of mark)
amending—903.04 apparent discrepancies in—903.06(a) in allegation of use, may be earlier than application filing date—903 in another form—903.07 indefinite—903.06 must be specified in amendment to allege use—903; 1104.09(d) must be specified in §1(a) application—806.01(a); 903 must be specified in statement of use—903; 1109.09(a) must be verified—903 pertain to at least one item in class—903.08 relation between—903.03
DBA designations—803.02; 803.02(a); 803.02(c) De facto functionality—1202.02(a)(iii)(B) De jure functionality—1202.02(a)(iii)(B) Dead languages, translation of—809; 1207.01(b)(vi); 1209.03(g) Deadline for response, how to compute—310 Deadline for response—711 Deceptive matter—1203; 1203.02-1203.02(g); 1210.05-1210.05(c)(ii)
amending identification of goods or services to overcome §2(a) refusal
Index-15 October 2009
case references—1203.02(g) determining materiality—1203.02(d) distinction between marks comprising deceptive matter and
deceptively misdescriptive marks—1203.02(c) elements of §2(a) deceptiveness refusal—1203.02(b) marks comprising deceptive matter are not registrable—
1203.02(f)(ii) mere personal preference—1203.02(d)(ii) objective criteria—1203.02(d)(i) procedure for issuing §2(a) deceptive refusals—1203.02(e)-
1203.02(e)(ii) types of deceptive marks—1203.02(a)
Deceptively misdescriptive geographic marks—1210.01(b); 1210.06(b); 1210.05(a); 1210.05(c)-1210.05(c)(ii)
basis for refusal—1210.05(a) test—1210.01(b)-1210.01(c)
Deceptively misdescriptive marks—1209.04 Declaration under §8 (see Affidavit of continued use or excusable nonuse (§8)) Declaration under §71 (see Affidavit of continued use or excusable nonuse (§71)) Declaration in lieu of oath—804.01(b) Defective application materials—204-204.03 Degrees or titles—1304.08(a)(i); 1306.03; 1306.06 Delay between execution and filing of papers—804.03; 1104.09(b); 1108.02(b);
1109.11(c) Deletion
of items from identification—1104.09(c); 1107; 1108.02(d); 1109.13; 1402.06(a) of matter from mark on drawing—807.14(a)
Deposit accounts—405.03 Description of mark
accurate but incomplete—808.03(c)-808.03(c)(ii) application submitted without—808.03(b) examination procedure for—808.03 guidelines for requiring—808.01 must be accurate and concise—808.02 of color in mark—807.07(a)(ii); 1202.05(c) of location of mark on goods—808.01 of mark comprising configuration—808.01; 1202.02(c)(ii) of mark in §66(a) application—1904.02(j) of sensory mark—807.09 of significant aspects of the mark—808.02 of three-dimensional mark—807.10; 808.01 printed in Official Gazette—808.03 printed on registration certificate—808.03 printing of—808.03; 817; 1202.02(c)(ii)
Descriptiveness, geographical—1210-1210.09 Descriptiveness, mere—1209; 1209.01-1209.03(s)
“America” or “American”—1209.03(n) combined terms—1209.03(d) design or picture—1209.03(f) domain names—1209.03(m); 1215.04; 1215.05 first user—1209.03(c)
Index-16 October 2009
foreign equivalents—1209.03(g) function or purpose—1209.03(p) incongruity—1209.03(h) intended users—1209.03(i) laudatory terms—1209.03(k) more than one meaning—1209.03(e) “National,” “International,” “Global” and “Worldwide”—1209.03(o) no dictionary listing—1209.03(b) phonetic equivalent—1209.03(j) picture or illustration—1209.03(f) procedure for refusal—1209.02-1209.02(b) punctuation—1209.03(u) repetition of descriptive term—1209.03(t) retail store and distributorship services—1209.03(r) slogans—1209.03(s) source or provider of goods/services—1209.03(q) telephone numbers—1209.03(k) test of descriptiveness/genericness—1209.01(c)(i) third party registrations—1209.03(a)
Destruction of files—109.02 Diligence (see Due diligence in monitoring status of pending matters) Director, statutory authority of—1701 Disclaimer
alliteration—1213.05(e) as to certain classes, or certain goods or services—1213 compound word marks—1213.05(a)-1213.05(a)(ii) display of mark—1213.05(f) double entendre—1213.05(c) form of—1213.08-1213.08(d) history—1213.01 hyphens and other punctuation—1213.05(a)(ii) incongruity—1213.05(d) in relation to likelihood of confusion—1213.09; 1213.10 of domain name—1215.07 of entire mark not permitted—1213.06 of entity designations or the familial structure of an entity—1213.03(d) of foreign words—1213.08(d) of generic matter—1213.03(b) of geographic terms—1210.06(a)l 1210.06(b) of misspelled words—1213.08(c) of pictorial representations of descriptive matter—1213.03(c) of unregistrable matter in its entirety—1213.08(b) piecemeal disclaimer not permitted—1213.08(b) refusal to register because of failure to disclaim—1213.01(b) removal rather than—1213.07 slogan not subject to—1213.05(b) sound patterns—1213.05(e) standardized printing format for—1213.08(a)(i) telescoped words—1213.05(a)(i) trade names—1213.04 unitary mark not subject to—1213.05-1213.05(f)
Index-17 October 2009
voluntary—1213.01(c) with respect to unitary marks—1213.05-1213.05(f)
Disparagement—1203.03-1203.03(d) Disrepute-1203; 1203.03-1203.03(f) Distinctiveness of trade dress—1202.02(b) Distinctiveness of product design—1202.02(b)(i) Distinctiveness of product packaging—1202.02(b)(ii) Distinctiveness under §2(f) (see Acquired distinctiveness (§2(f)) claim) Division
fee for—1110.02 of application—1110-1110.12 of application subject to Board proceeding—1110.09 of application under §44—1110.10 of application under §66(a)—1110.11 of international registration—1906.01(a)(iv) of multiple class application—1403.03 of registration—1615-1615.02 time for filing—1110.03 when statement of use is due—1110.07 when response to Office action is due—1110.08
Divisions, operating or unincorporated—803.01; 1201.02(d) Document Services Branch, Public Records Division—111 Documents not returned to filer—404 Documents that the Office will record—503.02 Domain names, marks comprising—1209.03(m); 1215-1215.10
adding or deleting TLDs—1215.08(a)-(b) agreement of mark on drawing with mark on specimen—1215.02(c); 1215.08-
1215.08(b) combined with geographic matter—1215.06 combined with surname—1211.01(b)(vii); 1215.03 descriptiveness—1209.03(m); 1215.04; 1215.05 disclaimer of—1215.07 effect of prior applicant’s registration—1216 effect of incontestability in ex parte examination—1216.02 for domain name registry services—1215.02(d) generic refusals—1209.03(m); 1215.05 intent-to-use applications—1215.02(e) likelihood of confusion—1215.09 material alteration—1215.08-1215.08(b) phonetic equivalent of TLD—1215.10 use as a mark—1215.02-1215.02(e) use applications—1215.02(a) §44 and 66(a) applications—1215.02(f) Surnames—1215.03
Domestic representative (of party not domiciled in United States) designation by applicant—610; 811; 1013 designation by assignee—501.04 designation by renewal applicant—1606.10 mailing of correspondence to—609.04 with respect to affidavits under §8—1604.14 with respect to proceedings before Trademark Trial and Appeal Board—610
Index-18 October 2009
Drawing(s) (see also Special form drawing; Standard character drawing) agreement with foreign registration in §44 application—807; 807.03(f); 807.12(b);
1011.01 agreement with specimens—807; 807.12(a)-807.12(a)(iii); 1215.02(c) amendments (see Amendment of mark on drawing) broken lines on—807.08; 1202.02(c)(i) clear drawing of—202.01 code—807.18 color—807.07-807.07(d)(iii); 1202.05(d)-1202.05(d)(iv) color lining—807.07(g); 808.01(b); 1902.02(e) deletion of matter from—807.14(a) determining when special form exists—807.04-807.04(b) dotted lines on—807.08; 1202.02(c)(i) electronically filed application—807.05-807.05(c) examination of—1102.02 fax transmission not permitted—306.01 for sensory marks—807.09 gray tones in—807.07(d)-(d)(iii); 807.07(f) in applications filed before November 2, 2003—807.03(i); 807.07(f) in §44 application—807.03(f); 807.129(b); 1011-1011.03 in §66(a) application—807.03(b); 807.03(g); 807.03(h); 807.07(b); 807.07(d)(ii);
807.07(f)(i); 807.12(c); 807.13(b); 1904.02(k) ink (see Special form drawing) limited to mark—807.02 limited to one mark—202.01; 807.01; 1011.02 lining—807.07(g); 808.01(b); 1902.02(e) long marks—807.05(a)(i); 807.06(b) mark drawing code—807.18 mark entered in “Mark” field of TEAS application controls—202.01; 807.01;
807.14(d) mark on separate drawing page controls—202.01; 807.01; 807.14(d) motion, drawing of marks with—807.11 multiple marks—202.01; 807.01 multiple rendition of three dimensional mark—807.10 not required for sound, scent or non-visual mark—807.09 paper—807.06-807.06(c); 807.07(f) purpose of—807 punctuation, role of—807.12(a)(i)-807.12(a)(iii); 807.14(c) required for marks other than sound and scent—807 separate drawing page—807.06(b) showing position of mark—807.08 size of—807.06(a) special form (see Special form drawing) standard character—807.03-807.03(i) substitute—807.15 three-dimensional marks—807.10; 1202.02(c)(iv) type of paper for—807.06(a) typed (see Standard character drawing)
Dual citizenship asserted by applicant—803.04 Due diligence in monitoring status of pending matters—108.03; 1705.05; 1712.01;
1714.01(d)
Index-19 October 2009
Duplicate registrations not issued—703 Duration of registration—1602-1602.04
E
Educational institution as owner of mark—803.03(f) Effective date
of Madrid Protocol Implementation Act—1900 (introductory text) of Trademark Act of 1946—1601.02 of Trademark Law Revision Act of 1988—1602.01 of Trademark Law Treaty Implementation Act—1602.04
Effective filing date of application—206-206.02 Electronic filing through TEAS—301; 303.02(a)
confirmation of receipt of—303.02(a) drawings—807.05 et seq. signature—301; 611.01(c) specimens—904.02(a)
Electronic funds transfer—405; 406 Electronic image files—109.01; 402 Electronic mail—304-304.10
address for correspondence by—304.08 attachments must be in .jpg or .pdf format—304.01; 304.07 authorization of—304.03 cannot be used to respond to examining attorneys’ Office actions—304.02 communications that may be filed by—304.01; 304.02 filing date of—304.04 outgoing, 304.06; 403; 717.01 procedure—709.04 signature of—304.07; 611.01(c)
Electronic signature—611.01(c) English, application must be in—802 Enrollment and Discipline, Office of—602.03; 602.03(a); 602.03(b); 602.08; 720 Entity, legal—803.03-803.03(k); Appendix D Entity of foreign applicants, common terms designating—803.03(i); 803.04; Appendix
D Equivalents, foreign—1207.01(b)(vi)-1207.01(b)(vi)(C); 1209.03(g); 1211.01(a)(vii) Errors in cover sheet or recorded document, correction of—503.06-503.06(f) Establishing ownership of applications or registrations—502-502.03 Estate as owner of mark—803.03(e) European Community Trademark—App. B Evidence with respect to refusal or requirement—710-710.03
from Internet—710.01(b) from research database—710.01(a) indicating no refusal or requirement necessary—710.02 of third party registration—710.03 record must be complete prior to appeal—710.01(c); 1501.02(b) remand for introduction of new evidence—1504.05; 1504.05(a)
Examination checklist—818 initial (see also Intent-to-use applications, initial examination of)—704.01; 1102-
1102.04
Index-20 October 2009
of related applications—702.03-702.03(b) of §66(a) application—1904.02-1904.09(b) order of—702.01 procedure—704-704.03 search—704.02; 718.07 “second” examination (see Statement of use, examination of) “special” applications—702.02; 1710-1710.03 statutory authority for—701 suspended applications—716-716.06
Examiner’s amendment approval of—707.01 combined with priority action—708.05 form of—707.03 may not be issued as first action in §66(a) application—707 paralegal cannot authorize—608.01; 707.01 objection to amendment of identification of goods/services—1402.07(e) to charge fee—405.03; 810.01 to enter standard character claim—707.02 when appropriate—707.01; 707.02 without prior authorization—707.02
Examining attorneys’ appeal briefs (see Appeal briefs, examining attorneys’) Ex parte, contacts with third parties regarding ex parte matters—1806 Express abandonment of application—608.01, 611.02; 718.01 “Express Mail,” filing of correspondence by—305.03 Extension of protection of international registration to the United States (see also
Registered extension of protection; Section 66(a)) affidavit of continued use or excusable nonuse—1613; 1904.11 affidavit of incontestability—1605.01; 1904.11 amendments to—1904.13(a) amendment to Supplemental Register not permitted—801.02(b);
815; 816.01; 816.04; 1904.02(f) amendment of identification of goods/services—1402.01(c);
1609.01; 1904.02(c)-(c)(v); 1906.01(i) amendment of mark not permitted—807.13(b); 1609.02;
1904.02(j); 1906.01(i) assignability of—501.01(b) assignee, issuance of registration certificate in name of—
502.02(b); 502.03 assignment of—501.01(b); 501.07; 502.01; 502.02(b); 502.03;
503.05; 503.03(a); 1904.06; 1906.01(a)-1906.01(a)(iii) basis—806.01(e); 806.03(k); 1505.02(f); 1904.01(a) cancellation of, by IB—1904.08 can be amended under §7 only in limited circumstances—
1609.01(a) cannot be based on USPTO application—1904.01(h) certificate of registration—1904.05 certificate of registration, issuance in name of new owner—
502.02(b); 502.03 claim of acquired distinctiveness—1212.08
Index-21 October 2009
classification of goods and services—1401.03(d); 1403.02; 1403.02(b); 1403.02(c); 1505.02(b); 1609.04; 1904.02(b); 1904.02(c)-(c)(v)
concurrent use registration not permitted—1207.04(b) constructive use—1904.01(g) correction of errors—1904.02(e)(i); 1904.03(f); 1904.13(b);
1904.13; 1904.14; 1906.01(f) correspondence address—609.01(a); 1904.02(i) declaration of intent to use required—804.05; 1904.01(c) dividing—1110.11; 1615.02 drawing—807.03(b); 807.03(g); 807.03(h); 807.07(b);
807.07(d)(iii); 807.07(f); 807.12(c); 807.13(b); 1904.02(k) establishing right to take action—502.01 examination of—1904.02-1904.09(b) express abandonment of—608.01, 611.02; 718.01 filing basis—806.01(e); 806.03(k); 1505.02(f); 1904.01(a) filing date—201; 202; 203; 1904.01(b) filing fee—202.03; 810; 810.01; 1401.05(b); 1904.01(f) filing receipt—401.01 identification of goods and services—1402.01(c); 1609.01;
1904.02(c)-(c)(v); 1906.01(i) incontestability, affidavit of—1605.01; 1904.11 invalidation of—1904.07 issuance of registration certificate in name of new owner—
502.02(b); 502.03 jurisdiction—1504.04; 1904.02(l) limitation in list of goods/services—1904.02(e)(ii); 1904.03(g);
1904.15; 1906.01(e) mark cannot be amended—807.13(b); 1609.02; 1904.02(j);
1906.01(i) must be filed by holder of international registration—1201 notice of refusal—1904.03-1904.03(g); 1904.04 Office actions, issuing—1904.02(h) opposition—1503.01; 1503.05; 1504.02; 1504.05(a); 1904.04 ownership, in general—501; 502; 1201; 1904.06 ownership, change of—501.01(b); 501.07; 502.01; 502.02(b);
502.03; 503.05; 503.03(a); 1904.06; 1906.01(a)-1906.01(a)(iii) priority claim—206.02; 1904.01(e) recording change of ownership—503.05; 1904.06; 1906.01(a)-
1906.01(a)(iii) remains part of international registration—1904.05 remand—1504.02; 1504.04;1504.05(a) refusal of—711.02; 714.05(b); 1904.03; 1904.03(g); 1904.04 renewal of—1602.01; 1606.01(b); 1614; 1905 replacement—1616; 1904.12 signature—804.04; 804.05; 1904.01(c) Supplemental Register, amendment to not a new issue—
714.05(a)(i) Supplemental Register, not registrable on—801.02(b); 815;
816.01; 816.04; 1904.02(f) transformation of—1904.09-1904.09(b)
Index-22 October 2009
use not required—901; 1904.01(d) verification—804; 804.04; 804.05; 1904.01(c)
Extension of time to file statement of use (see Request for extension of time to file statement of use)
Extension of time to oppose—1503.04
F
Facsimile transmission, certificate of (see also Facsimile transmission, filing of correspondence by)
effect of—306.05(c) eligible correspondence—306.01 non-receipt of correspondence by PTO—306.05(d) not available for filing international applications—306.01 not available for filing requests for transformation—306.01 not available for filing requests to record changes to an international
registration—306.01 not available for filing responses to IB notices of irregularities—306.01 not available for filing subsequent designations—306.01 not available for filing trademark applications—306.01 requirements for—306.05-306.05(c) wording of certificate—306.05(b)
Facsimile transmission, filing of correspondence by (see also Facsimile transmission, certificate of)
documents excluded—306.01 documents included—306.01 effect of—306.03 not available for filing applications—306.01 procedure for—306.04; 306.05
False suggestion of connection—1203; 1203.03-1203.03(f); 1203.03(f) Family of marks—1207.01(d)(xi) Fax copies of documents, filing of—302.01 Fax transmission (see Facsimile transmission) Federal holiday, response period ending on—308 Fee(s)
for correcting irregularities in international application—1902.07(b)(i) electronic funds transfer—405.05 for filing amendment to allege use—1104.09(g) for filing application—202.03; 810-810.02; 1401.04; 1403.01; 1403.05(b) for filing ex parte appeal—1501.04 for filing international application—1902.02(i); 1903.02 for filing petition to revive abandoned application—1714-1714.01(b) for filing request for transformation—1904.09 for filing request to record changes to an international registration—1906.01(a)(i) for filing subsequent designation—1902.08(c) for filing multiple-class application—810; 810.01; 1401.04; 1403.01; 1403.05(b) for filing notice of opposition—1503.01 for filing request for extension of time to file statement of use—1108.02(c) for filing statement of use—1109.15 for recording document in Assignment Division—503.03(d) for request to divide—1110.02
Index-23 October 2009
international, payment of—1903.02 method of payment of—405 number of—810; 810.01; 1401.04; 1403.01; 1403.05(b) refund of (see Refund of fees) refused by financial institution—405.06 returned check—202.03(a)-202.03(a)(i); 405.06; 1104.09(g); 1108.02(c);
1109.15(a); 1604.06(c); 1606.05(c) Files, access to—109-109.03 Files, destruction of—109.02 Files, electronic—109.03; 402-402.01 Filing basis
abandonment of multiple-basis application—806.02(d) amendment after publication—806.03(j)-806.03(j)(ii); 1505.02(f) amendment, effect on filing date—806.03(h); 806.04(b) amendment from §1(a) to §1(b)—806.03(c) amendment from §1(b) to §44—806.03(g) amendment from §44 to §1(b)—806.03(d) amendment of §66(a) basis not permitted—806.03(k); 806.03(n( � 1505.02(f);
1904.01(a) amendment, verification of—806.02(e); 806.03(i) bona fide intention to use mark in commerce—806.01(b)-806.01(d); 806.02(e);
807.02(g) changing—806.03-806.03(k) changing after publication—806.03(j)-806.03(j)(ii) claim of priority under §44(d)—806.01(c); 806.02(f); 806.03(b); 806.04(b); 1003 combining §1(a) and §1(b)—806.02(a); 806.02(b); 806.03(c) combining §1 and §44—806.02(e); 806.02(f); 807.02(g); 806.03(d); 806.03(f);
806.04(b) deletion of, in general—806.04 deletion of §1(b) basis—806.04-806.04(b) extension of protection of international registration under §66(a)—806.01(e);
1904.01(a) foreign registration under §44(e)—806.01(d); 806.02(e); 1004 intent-to-use—806.01(b); 806.02(b); 806.03(c); 806.03(d); 806.03(e); 806.03(g);
806.04(a) multiple—806.02-806.02(f) must be stated in written application—806 requirements for establishing—806.01-806.01(d) review prior to publication or issue—806.05 specimen, deferral of examination in multiple-basis application—806.02(c) use in commerce—806.01(a); 806.02(b); 806.03(c) when basis can be changed—806.03(a)
Filing date, application cancelled if minimum requirements not met—204.01 change of—204.03; 205; 1711 denial of—204-204.03; 1711 effective—206-206.02 in extension of protection of international registration—1904.01(b) minimum requirements for—202 of §66(a) application—1904.01(b) priority—206.02; 806.01(c); 1003-1003.02; 1003.05
Index-24 October 2009
request for restoration of—1711 requirements for receiving—202-202.03 restoration of—1711 review for compliance with minimum requirements—203 review of denial of—1711 section 66(a) application—1904.01(b) what constitutes—201
Filing date, for correspondence (in general)—205; 303.01; 304.04 Filing date, for correspondence filed via electronic mail—304.04 Filing date label—303.02(b) Filing fee, application—202.03; 810-810.02; 1403.01; 1403.05(b)
in §66(a) application—202.03; 810; 810.01; 1904.01(f) varies depending on whether application filed on paper or through
TEAS—202.03; 810; 1110.02; 1403.02(c) Filing of correspondence with USPTO—305.01
by courier or delivery service—307 by “Express Mail”—305.03 by fax (see Facsimile transmission, filing of certain papers and fee authorizations
by) by hand delivery—307 by mail—305-305.03 by unauthorized individual—608.01; 611.05-611.05(c) certificate of mailing procedure for (see Certificate of mailing procedure) certificate of transmission procedure for (See Facsimile transmission, certificate
of) time between execution and—804.03; 1104.09(b); 1108.02(b); 1109.11(c)
Filing of correspondence with International Bureau—1906-1906.01(i) Filing receipt—401.01 Final refusal
action after—715-715.04 for failure to provide information requested by examining attorney—814 issuance of, after removal of application from suspension—716.06 new issues requiring issuance of nonfinal action—714.05-714.05(c); 715.03(b) not permissible on first action—714.01 not permissible on suspension—714.02 pertaining to identification—714.05(a)(ii) pertaining to proposed amendment of drawing—714.05(a); 807.17 premature—714.06 proper response to—715.01 request for reconsideration after—715.03-715.04(b); 1714.01(a)(ii); 1714.01(f)(ii) statement of grounds of—714.04 time for appeal runs from date of—715.03(c) when appropriate—714.03; 714.05-714.05(c) with respect to §2(f) claim—714.05(a)(i); 1212.02(h) with respect to amendment to Supplemental Register—714.05(a)(i) with respect to submission of consent agreement—714.05(d) with respect to submission of substitute specimen—714.05(e)-(f)
“Firm”—803.02(b) Flag, refusal to register mark comprising—1204; 1204.01-1204.01(e); 1204.03 Flavor as mark—904.03(m); 1202.13 Foreign applicant
Index-25 October 2009
common terms designating entity of—803.03(i); Appendix D signature on behalf of—611.06(e); 804.04
Foreign attorney—(See Attorney, foreign) Foreign equivalents, doctrine of—1207.01(b)(vi); 1209.03(g); 1210.10 Foreign priority (see Priority under §44(d), application claiming) Foreign registration, application based on ownership of—1005
assignment of home country application or registration—1006 based on registration issued by a “common office of several states”—1002.03 bona fide intention to use mark in commerce—806.01(d); 806.02(e); 807.02(g);
1004; 1008 certification or certified copy of foreign registration required—806.01(d); 1004.01 country of origin—1002.04 dividing—1110.10 drawing—807.03(f); 807.12(b); 1011-1011.04 establishing entitlement under a treaty—1002.01; 1002.03 from applicant’s country of origin—1002.04 identification of goods/services—1012; 1402.01(b) international registration as basis for §44 application—1016 may not be filed before foreign registration has issued—1004 must be in force—1004.01(a) one mark per registration—1011.02 ownership of foreign registration—1005 requirements for receiving a filing date—202-202.03 requirements for §44(e) basis—806.01(d); 1002.01; 1004 specimen not required—1009 standard character claim in—807.03(f); 1011.01 status of foreign registration—1004.01(a) suspension pending receipt of copy of foreign registration not permitted except in
extraordinary situation—1004.01 translation of—1004.01(b) use not required—1009
“Foreign” commerce—901.03 Form paragraphs—705; 705.01 Forms, trademark—103; 301; 802 Fragrance as mark—807.09; 1202.13 Franchisees, use of mark by—1201.03(f) Fraud—720-720.01; 906.04 Freedom of Information Act requests—1803
for copies of letters of protest—1715.05 Functionality—1202.02(a)-1202.02(a)(v)(iii)
G
General information booklet about trademarks—105 Generic terms—1209.01(c)-1209.01(c)(iii); 1215.05 Geographical indications used on wine or spirits—1210.08-1210.08(c) Geographic terms
“America” and “American”—1210.02(b)(iv) arbitrary, fanciful or suggestive composite—1210.02(c)(iii) arbitrary use of—1210.04(d) as certification marks—1210.09; 1306.02-1306.02(c)
Index-26 October 2009
combined with additional matter—1210.02(c)-1210.02(c)(iii); 1210.06-1210.06(b) combined with domain name—1215.06 disclaimer of—1210.06(a); 1210.06(b); 1210.06(b) geographic locations—1210.02(a) goods/place association—1210.04; 1210.04(a) misleading indication of origin of wines/spirits—1210.08 more than one location with same name—1210.02(b)(ii) non-geographic characteristics—1210.02(b)(iii) obscure or remote—1210.04(c) origin of goods or services—1210.03 other meanings—1210.02(b)(i)-(i)(A) primary geographic significance—1210.02 registrability on Supplemental Register—1210.07(a) registrability under §2(f)—1210.07(b) registration of, under §2(f)—1210.07(b) services/place association—1210.04; 1210.04(b) two geographic terms combined—1210.02(c)(i) used as certification mark to designate regional origin—1306.02 with surname significance—1210.02(b)(i)(A)
Geographical marks, deceptive (See also Geographically deceptively misdescriptive marks)—1203.02(c); 1210.01(b); 1210.01(c); 1210.05-1210.05(c)(ii)
basis for refusal—1210.04(a) case references—1210.05(e) disclaimer—1210.06(b) elements of—1210.05(b) materiality of deception—1210.05(c)-1210.05(c)(ii) neither applicant nor goods/services come from the place named—1210.05(d) procedures for issuing refusal—1210.05(d) registrability on Supplemental Register—1210.07(a) registrability under §2(f)—1210.07(b) test—1210.01(c) used on wines and spirits—1210.08
Geographically deceptively misdescriptive marks (See also Geographical marks, deceptive)—1210.01(b); 1210.05(a)-1210.05(e); 1210.06(b)
basis for refusal—1210.04(a) disclaimer—1210.06(b) materiality of deception—1210.05(c)-1210.05(c)(ii) registrability on Supplemental Register—1210.07(a) registrability under §2(f)—1210.07(b) test—1210.01(b)
Geographically descriptive marks—1210.01(a); 1210-1210.09 combined with additional matter—1210.06-1210.06(b) disclaimer—1210.06(a) registrability on Supplemental Register—1210.07(a) registrability under §2(f)—1210.07(b) test—1210.01(a)
Geometric shapes—1202.11 Gift baskets, identification and classification—1401.05(a); 1902.02(g)(iii) Good cause, showing of, in request for second or subsequent extension of time to
file statement of use—1108.02(f) Goods (see Identification of goods/services; Classification of goods/services)
Index-27 October 2009
Goods/place association—1210.04-1210.04(d) Goods in trade—1202.06-1202.06(c) Government insignia—1204; 1204.02-1204.02(d); 1204.03 Governmental body as owner of mark—803.03(f) Grade designation—1202.16 Gray tones in drawings—807.07(d)-(d)(iii) Greek cross—1205.01
H
Hague convention—804.01(a)(i) Hand delivery of correspondence to USPTO—307 Hand delivery of correspondence relating to Madrid applications—1900 Heading or caption for papers—302.03(a); 302.03(b) Holiday (see Federal holiday, response period ending on) Hologram—807.01; 1202.14 House mark—1402.03(b)
I
Identification of goods/services accuracy of—1402.05 ambiguous—1402.07(b) amendment permitted to clarify or limit—1402.06-1402.06(b) amendment of portion—1402.13 association services—1402.11(c) award programs—1402.11(j) bonus programs—1402.11(h) broad terms in—1402.03; 1402.03(a) certification mark—1306.06(e) charitable services—1402.11(d) clarification of—1402.06-1402.06(b) components or ingredients—1402.05(a) computer programs—1402.03(d) computer services—1402.11(a) consulting services—1402.11(e) date of changes to USPTO ID manual—1401.12 deletion of items from—1104.09(c); 1107; 1108.02(d); 1109.13; 1402.06(a) distribution of video tapes, audio tapes, and videodiscs—1402.11(f) entitlement to filing date with respect to—202.02; 1402.02 final refusal pertaining to—714.05(a)(ii) “full line of”—1402.03(c) general guidelines—1402.01(a) gift baskets—1401.05(a); 1902.02(g)(iii) house mark—1402.03(b) identical language in more than one class not permitted—1401.07 in amendment to allege use—1104.09(c) in international application—1902.02(f) in response to IB notice of irregularity—1902.07(c)(ii) inappropriate in collective membership mark application—1304.08(d) inclusive terminology in—1402.03(a) industry terms—1402.11(i)
Index-28 October 2009
information services—1402.11(b) in request for extension of time to file statement of use—1108.02(d) in §44 application may not exceed scope of those in foreign registration—1012;
1402.01(b) in §66(a) application—1402.01(c); 1904.02(c)-(c)(v) in statement of use—1109.13 kits—1401.05(a); 1902.02(g)(iii) limitation of—1402.06-1402.06(a) location of—1402.01(d) Manual of acceptable identifications—1402.04 medical vs. non-medical goods—1401.05(b) moving goods/services between companion applications—1402.08 negative language in—1402.06(a) online publications—1402.11(a) “ordinary meaning” test for determining scope of—1402.07(a) parenthesis and brackets should not be used in—707.02; 1402.12 printed publications—1402.03(e); 1402.11(a) recorded entertainment services—1402.11(g) registered marks may not be used in—1402.09 required for application to receive a filing date—202.02; 1402.02 services—1402.11 scope of, for amendment purposes—1402.07; 1402.07(d); 1402.07(e) specificity of terms in—1402.01; 1402.03; 1402.03(e) trademarks/service marks inappropriate in—1402.09 unacceptable amendments—1402.15 unambiguous—1402.07(c)
Immoral or scandalous matter—1203.01 Improper use of registration notice—906.02 Inadvertently issued registration—1109.15(a); 1503.04; 1609.10(a) Incomplete application materials—204-204.03 Incomplete response to Office action—611.05(a)-(c); 718.03-718.03(c); 1713.01-
1713.02; 1714.01(f)(ii) Incontestability
affidavit of (§15) (see Affidavit of incontestability) effect in examination—1216.02
Indexing against recorded document not permitted—503.07 Individual as applicant
citizenship of—803.04 doing business under assumed name—803.02; 803.02(a); 803.02(c) name of—803.02(a)
Individual, living, name or likeness of (see Consent to register by living individual) Individuals who may practice before Office in trademark matters—602-602.03(e) Informal application materials—204-204.03 Informal communications with examining attorney—304.01; 709.05 Information, examining attorney’s request for—814 Informational matter
as mark—1202.04; 1301.02(a) on drawing, deletion of—807.14(a)
Initial examination to be complete—704.01; 1102-1102.04 Inquiry
by examining attorney—814
Index-29 October 2009
from Congressional office—1802 from member of press—1804 from third party regarding ex parte matter—1806 general inquiries from public—1805 letter of, with respect to suspended application—716.05 regarding status of pending matters—108-108.03; 1705.05
Insignia, refusal to register mark comprising—1204 Inspection of files on Office premises—109 “Insurance” extension of time to file statement of use—1108.03-1108.03(a);
1109.16(c)-(d) Intent-to-use applications (see also Amendment to allege use; Notice of allowance;
Request for extension of time to file statement of use; Statement of use) allegation of use required prior to registration—1103 assignment of—501.01(a) distinctiveness under §2(f)—1102.04; 1212.09; 1212.09(b) initial examination of: color marks—1202.05(h) configuration—1202.02(d) drawings—1102.02; 1104.09(f); 1109.12 for use as mark—704.01; 1102-1102.04 identification of goods/services—1104.09(c); 1108.02(d); 1109.13 ornamentation—1202.03(e) publication of—1105 under §2(d)—1102.01 under §§1, 2(a), 2(b), 2(c), 2(e)—1102.01 statutory averments—804.02; 806.01(b); 1101 Supplemental Register—1102.03
Inter-American Convention—1001; App. B Interference, petition to declare—1208.03-1208.03(c); 1507 “Internal inconsistencies,” amendment of drawing to cure not permitted—807.14(d) International Alphabetical List—1401.02(c) International applications for registration—1902-1902.07(f)
certification by USPTO—1902.03 classification in—1902.02(g)-1902.02(g)(iii) color claim—1902.02(e) description of mark—1902.02(k) drawing—1902.02(d) examination by IB—1902.06 fee for—1902.02(i) form for filing—1902.02(a) identification of goods and services—1902.02(f) irregularities in—1902.07-1902.07(f) requirements for receipt in USPTO—1902.02 requirements for registration by IB—1902.05 certification of—1902.03
International Bureau—1900 (introductory text) International fees—1903.02 International registrations—1901
application for—1902-1902.07(f) as basis for §44 application—1016 cancellation of, by International Bureau—1904.08; 1906.01(e)
Index-30 October 2009
central attack—1902.09 changes to—1906.01-1906.01(i) correction of—1904.03(f); 1904.14; 1906.01(f) date of—1902.04 dividing—1906.01(a)(iv) in general—1901 invalidation—1904.07 limitation in list of goods/services—1904.03(g); 1904.15;
1906.01(e) renewal of—1905 restriction of holder’s rights of disposal—1906.01(b) who can file—1902.01
International trademark agreements—1001; App. B Internet domain names, marks comprising—1209.03(m); 1215-1215.10 Internet, evidence from—710.01(b) Interruption of U.S. Postal Service—305.04 Interview with applicant or attorney—709-709.06
J
Joint applicants application by—803.03(d) signature by—611.06(a); 804.04
Joint venture name of—803.03(b) setting forth names and citizenship of joint venturers—803.03(b) signature by—611.06(c); 804.04 state or country of organization—803.03(b)
Jurisdiction over application—1504-1504.05(a); 1904.02(l) Jurisdiction, request for—1504.04(a) Juristic person—803.01; 1203.03(a)
K
Kits, identification and classification—1401.05(a); 1902.02(g)(iii)
L
Lanham Act (see Trademark Act of 1946) Laudatory terms in marks—1209.03(k) Legal advice, Office cannot render—108.02; 1801; 1805 Legal entity of applicant set forth in application—803.03; 803.03(i) Letter of inquiry with respect to suspended application—716.05 Letter of protest in pending application (see Protest) Letterhead stationery as specimen of service mark use—1301.04(c) License agreements, recording of—503.02; 1906.01(h) Licensees, use of mark by—1201.03(f) Likelihood of confusion
actual confusion unnecessary—1207.01(d)(ii) attack on registration improper in ex parte proceeding—1207.01(d)(iv) between collective and other marks—1304.08(b) classification not relevant—1207.01(d)(v)
Index-31 October 2009
collateral attack on registration improper in ex parte—1207.01(d)(iv) consent between parties—1207.01(d)(viii) design marks—1207.01(c)-1207.01(c)(iii) doubt resolved in registrant’s favor—1207.01(d)(i) expansion of trade doctrine—1207.01(a)(v) family of marks—1207.01(d)(xi) famous mark—1207.01(d)(ix) foreign equivalents—1207.01(b)(vi) legal equivalents—1207.01(c)(i) meaning, similarity in—1207.01(b)(v) no per se rule—1207.01(a)(iv) parody marks—1207.01(b)(x) past decisions of examining attorneys—1207.01(d)(vi); 1216-1216.02 related companies and—1201.07-1201.07(b)(iv) relatedness of goods and/or services—1207.01(a)-1207.01(a)(vi) reliance on identification of goods/services in application/registration—
1207.01(a)(iii) sophisticated purchasers—1207.01(d)(vii) similarity of—1207.01(b) sound, similarity in—1207.01(b)(iv) similarity of marks—1207.01(b)-1207.01(b)(x) third-party registrations—1207.01(d)(iii) unity of control—1201.07-1201.07(b)(iv) transposition of terms—1207.01(b)(vii) weak marks—1207.01(b)(ix)
Limited liability company—803.03(h) signature by—611.06(g); 804.04
Limited liability corporation—803.03(h) Limited liability partnership—803.03(k)
signature by—611.06(h) Lining statement—808.01(b) Living individual, name or likeness of (see Consent to register by living individual) Loss of papers—305.02(f); 305.03; 1711; 1712.01; 1712.02(a)
M
Madrid Protocol (See also Extension of protection of international registration to the United States; Registered extension of protection; §66(a) application)— Chapter 1900
Mail sent to USPTO related to trademarks—302.03(a); 302.03(b) Maintenance of registration—1602-1602.04 Manner of use of mark (see Method-of-use) Mark drawing code—807.18 Material alteration—807.03(d); 807.14-807.14(f); 1604.13; 1609.02(a) Material difference between mark on drawing and mark in foreign registration—
807.12(a)-807.12(a)(iii); 807.12(b); 1011.01 Meaning of term in mark, inquiry as to—808.01(b); 814 Membership mark (see Collective membership mark) Mere descriptiveness (see Descriptiveness, mere) Merger, documents of—503.02 Method-of-use—905
Index-32 October 2009
Minor as applicant—803.01 “Misspelled” words—1209.03(j); 1213.08(c) Mistake in applicant’s name, correction of—1201.02(c) Mistake in registration, correction of—1609.10-1609.10(b) Model, style or grade designation—1202.16 More than one mark—202.01; 807.01 Motion marks—807.11; 904.03(l) Moving goods/services between companion applications—1402.08 Multiple-class application (see Combined application) Multiple copies of papers should not be filed—302.02 Multiple drawings—202.01; 807.01 Multiple filing bases—806.02-806.02(f) Musical performer/group names—1202.09; 1202.09(a); 1301.02(b) “Mutilation” of mark—807.12(d)
N
NAFTA (see North American Free Trade Agreement) Name of applicant, correcting mistake in—1201.02(c) Names of artists and authors as marks—1202.09-1202.09(c); 1206.01; 1301.02(b) Name, portrait or signature as mark—1206-1206.05 (see also Consent to register by
living individual) National Archives and Records Administration—503.08 National symbols—1203.03; 1203.03(b); 1203.03(c); 1203.03(d) Names of characters, authors and artists as a mark—1202.09-1202.09(b); 1202.10-
1202.10(a) Negative identification language—1402.06(a) New certificate of registration, issuance to assignee—502.03 Nice Agreement—1401.09-1401.11 Non-attorney may not represent parties in the USPTO—602.02;
608.01; 611.02; 707.01; 708.02; 712 Non-English wording in mark, translation of—809-809.02(a) Non-Latin characters in mark, transliteration of—809-809.02(a) Non-lawyers—602.02; 608.01; 611.05-611.05(c); 707.01; 708.02; 712.01 Non-profit corporation—803.03(c) Non-receipt of examining attorney’s Office action—717.02 Non-registration—1205.02 Non-responsive communications—719 Nonuse of registered mark—1604.11 Non-visual marks—807.09 North American Free Trade Agreement (NAFTA)—1210; 1210.01(b); 1210.05(a);
1210.07(a); 1210.07(b); 1211; 1212; 1212.02(a) Notes-to-the-File—709.04; 710.02 Notice of abandonment—718.04; 718.06 Notice of allowance—1106-1106.04
action after issuance of (but before filing of Statement of use)—806.03(j)(ii); 1106.02; 1107
cancellation of—1106.03 correction of errors in—1106.04 information printed on—1106.01 issuance of—1106.01
Index-33 October 2009
non-receipt of—1714.01(c) “Notice of incomplete trademark application”—204.01 Notice of irregularity of international application for registration, issued by the
International Bureau—1902.07-1902.07(f) Notice of publication—704.01 Notice, registration (see Registration notice) Number of specimens—904.01
O
Office action (see also Action by examining attorney; Response to Office action; Provisional refusal)
non-receipt of—717.02 preparation of—705-705.08 remailing of—717 response period—310; 711-711.02 returned as undeliverable—403; 717.01 supplemental Office action—711.02
“Office Date” label—303.02(b) Office personnel
not to express opinion on validity of registered mark—1801 not to give legal advice—108.02 not to testify—1801.01
Official Gazette (see also Trademark Official Gazette)—106; 1502; 1502.01 Old drawing, use in new application—807.19 “Olympic” and other designations protected under Amateur Sports Act of 1978—
1205.01 One mark, application limited to—202.01; 807.01 Operating divisions—803.01 Opinion, Office personnel not to express—1801 Opposition—1503-1503.05
extension of time to file—1503.04 to §66(a) application—1503.05
Order of examination—702.01 Order of work—702-702.02 Ordering abandoned application files—109.02 Original document, filing of—302.01; 503.08 Ornamentation—1202.03-1202.03(g) Other statutes protecting names, initials, marks, etc.—App. C Owner of mark is proper party to apply—803.01; 1201 Ownership of application or registration—1201-1201.07
change of—501-501.06; 1201.02(e) establishing—502-502.03 may be based on use by related companies—1201.01 recording change—503-503.05 §1 application—1201 §44 application—1201 §66(a) application—501.07; 502.02(b); 1201; 1904.06
Ownership of mark (see also Assignment; Applicant; Related Company; Ownership of application or registration)
automatic updating—504-504.05
Index-34 October 2009
change in, after application filed—501-501.06; 1201.02(e) inquiry by examining attorney with respect to—1201.04 refusal on basis of—1201.02(b) related-company use—1201.03-1201.03(f) request to update after recordation of assignment—501.01-501.02
P
Papers not returnable—404 Paralegal may not represent parties in the USPTO—602; 608.01;
611.02; 707.01; 708.02; 712 Paris Convention—1001; 1002.03; 1002.04; 1205.01; App. B
article 6ter—1205.02 Partial abandonment—718.02(a); 1402.13; 1403.05; 1904.03(d) Partial assignment—501.06; 1110.11; 1615 Partners, setting forth names and citizenship of—803.03(b)
in TEAS Plus application—819.01(c) Partnership
address of—803.05 foreign—803.03(b); 803.04 name of—803.02; 803.03(b) signature by—611.06(b); 804.04 state or country of organization—803.02(b); 803.04
Patent and Trademark Depository Libraries—112 Patents, design and utility—1202.02(a)(v)(A) Payment refused or charged back by financial institution—405.06 Performing artist, name of, as mark—1202.09-1202.09(a)(iii); 1301.02(b) Period for response
ending on Saturday, Sunday or federal holiday—308 how computed—310 may run from date of previous action—711.01 reset in examining attorney’s letter correcting error—711.02 statutory—711
Person, defined—1203.03(a) Petition decisions available to public—110 Petition from examining attorney’s holding of abandonment—1713.01 Petition to cancel—1607 Petition to Director—1702; 1703; 1704; 1705-1705.09; 1706; 1707; 1708
after refusal of §8 affidavit—1604.18-1604.18(c); after refusal of renewal—1606.14; 1606.14(c) appeal to federal court from—1705.09 delegation of—1709 diligence—1705.05 evidence and proof of facts—1705.03 fee for—1705.02 petitionable matter—1704 procedure for—1705-1705.09 request for reconsideration of denial of—1705.08 signature of—1705.07 standard of review on—1706 standing—1705.01
Index-35 October 2009
stay of deadlines pending disposition of—1705.06 supervisory authority—1707 timeliness—1705.04 to amend basis after publication—806.03(j)-806.03(j)(ii) to make special (see Petition to make “special”) to reinstate abandoned applications—1712.01 to reinstate cancelled registrations—1712.02(a) to reverse examining attorney’s holding of abandonment—1713.01 to review denial of certification of international application—1902.03(a) to review denial of filing date—1711 to revive (see Petition to revive) to waive rules—1708 types of—1703
Petition to make “special”—702.02; 1710-1710.03 basis for granting or denying—1710.01 fee for—1710 handling of—1710.02 must state facts justifying special action—1710.01 submission of—1710.03
Petition to revive abandoned application (see also Unintentional delay) basis for granting—1714.01(e) diligence with respect to—1705.05; 1714.01(d) fee for—1714-1714.01(b) request for reconsideration of denial of—1714.01(g) requirements for filing—1714.01-1714.01(e) time for filing of—1714.01(d) unintentional delay, statement of—1714.01(e) unintentional delay, where unintentional delay applies—1714.01(f)-1714.01(f)(ii)
Petitionable subject matter—1704 “Phantom” elements in marks—807.01; 1214-1214.04 Photocopies of documents, when acceptable for filing—302.01 Piecemeal action to be avoided—704.01 Portrait as mark— (see Consent to register by living individual) Postal Service, U.S., interruptions of—305.04 Postcard, acknowledgment—303.02(c)-303.02(c)(i) Power of attorney—602.01-605.04
associate—605.03 change of—604.03; 609.02(b) filed after registration—605.04; 1612 relating to multiple application or registration—605.02 revocation—606
Practice before Office in trademark matters—602-602.03(e); 611.02 Predecessor in title, first use of mark by—903.05 Preparation of case for publication or registration—817 President of United States, deceased—1206.02; 1206.03 Press, inquiries from members of—1804 Press releases—904.04(b); 904.04(c); 1301.04 Previous examining attorney, examination approach of—713.01 Principal Register
advantages of registration on—801.02(a) applications for registration on—801.02(a)
Index-36 October 2009
registration on Supplemental Register may not be amended to—1609.09 Printing of information in Official Gazette and on registration certificate—817 Prior registrations of applicant
effect of—1216-1216.02 identification of, in application—812 “incontestability”—1216.02 not controlling—1216.01 printing of claim of—812; 817 proving ownership of—812.01 refusal under §2(d) with respect to—812.01
Prior trademark acts (see also Act of 1881; Act of 1905; Act of 1920) registrations issued under—1601.04; 1601.05; 1602.02; 1602.03 repeal of—1601.02 reregistration of marks registered under—1601.03
Priority action combined with examiner’s amendment—708.05 defined—708.01 discussion of—708.01; 708.03 elements of—708.01 form of—708.03 must include evidence—708.01; 708.03; 708.04 paralegal cannot authorize—608.01; 708.02 when appropriate—708.02
Priority, constructive use—201.02 Priority for publication or issue based on effective filing date—201.01; 1003.05 Priority claim in application for international registration—1902.05 Priority claim in request for protection of international registration to the United
States—206.02; 1904.01(e) Priority claim in §44(d) application
abandonment of foreign application—1003.08 amendment of basis, priority filing date retained—806.03(h); 806.04(b) assignment of §44(d) application—1006 basis for registration required—1003.03 bona fide intention to use mark in commerce must be asserted—806.01(c);
806.02(e); 1003; 1008 combined with other bases—806.02(f); 1003.04(b) country of origin—1002.04 dividing—1110.10 drawing—1011-1011.04 effect of failing to file within six months—1003.02 effective filing date of—206.02; 1003.05 eligible applicants—1002.02 establishing entitlement under a treaty—1002.02; 1002.03; 1002.04 “first-filed” requirement—1003.01 identification of goods/services—1012; 1402.01(b) in multiple-basis applications—1003.04(b) inquiry as to status of foreign application—1003.04(c) may also rely on §44(e)—1003.06 more than one foreign application—1003.07 must be filed within six months of foreign filing—806.03(b); 1003.02 not limited to country of origin—1002.04
Index-37 October 2009
one mark per application—1011.02 ownership of foreign application—1005 priority for publication of—201.01; 1003.05 requirements for §44(d) filing basis—806.01(c) retention of priority filing date without perfect §44(e) basis—806.04(b); 806.03(h) requirements for receiving a filing date—202 suspension pending receipt of foreign registration—716.02(b); 1003.04(a) U.S. applicant—1002.05 use not required—1009 valid basis for registration in United States required—1003.03
Process, system or method—1301.02(e) Protest, Letter of—1715-1715.06
adversarial arguments inappropriate—1715.01 appropriate subjects to be raised—1715.01-1715.01(b) approval of application for publication after grant of—1715.02(b) does not extend opposition period—1715.03(b) filed after publication—1715.03 filed after registration—1715.03(b) filed before publication—1715.02(a)-1715.02(b) petition to review denial of—1715.06 recourse after denial of—1715.06 requests for copies of—1715.05 timely filing of—1715.03(b)
Provisional refusal of 66(a) applications—1904.02(h); 1904.03 PTDL (see Patent and Trademark Depository Libraries) Public Records Division of USPTO—(See Document Services Branch) Publication for opposition
amendments after—806.03(j)-806.03(j)(ii); 1505-1505.02(g) notice of—704.01 of mark in intent-to-use application—1105
Publications, marks for columns or sections, marks that identify—1202.07-1202.07(b) identification of goods—1402.03(e) specimens for—904.02(c)(iii)
Punctuation, addition or deletion of—807.14(c) agreement of drawing and specimen—807.12(a)(i)-807.12(a)(iii);
807.14(c)
R
Reasonable time between signing and filing papers—804.03; 1104.09(b); 1108.02(b); 1109.11(c)
Receipt date placed on all correspondence filed—303.02(b) Receipt, filing—401.01 Receipt, of documents by Office—303-303.02(c) Receipt, postcard—303.02(c) Reciprocal registration rights—1002.03; App. B Recognition as a Representative—604-604.02 Reconsideration after final action—715.03-715.04(b); 1501.02(a)
Index-38 October 2009
Reconsideration of Board decision, request for, by examining attorney—1501.07 Reconsideration of holding of abandonment—718.03(c) Reconsideration of decision on petition—1705.08 Recordation date—503.05 Recorded documents (see also Assignment, recordation of)
automatic update of trademark database after recordation—504-504.05 correction of errors in—503.06-503.06(f) effect of—503.01-503.01(e) indexing against, not permitted—503.07 notifying Trademark Operation of—505 original documents should not be submitted for recording—503.03(b) request to update ownership after recordation—505.01; 505.02 requests for copies of—503.08 requirements—503.03-503.04 searching—104; 503.08
Red Crescent—1205.01(a)-1205.01(a)(vi) Red Cross—1205.01 Red Crystal—1205.01(a)-1205.01(a)(vi) Refund of fees—405.04; 810.02
for informal application—204.01 Refusal, final (see Final refusal) Refusal of registration
amendment to Supplemental Register after—714.05(a)(i); 815.04; 816.04; 1209.02(a)(i)
as to fewer than all classes in combined application—1403.05 based on inadequate response to request for additional information—814 deceptive matter—1203.02-1203.02(g); 1210.05(a)-1210.05(c)(ii); 1210.06(b) descriptiveness—1209.02-1209.02(b) disparagement—1203.03(c); 1203.03(d) duplicate registrations—703 false suggestion of a connection—1203.03(e); 1203.03(f) flag, coat of arms or insignia—1204 functionality—1202.02(a)-1202.02(a)(v)(D) generic names—1209.01(c)-1209.01(c)(iii) geographic descriptiveness—1210-1210.09 geographic misdescriptiveness—1210.01(b); 1210.05(a)-1210.05(c)(ii);
1210.06(b) immoral or scandalous matter—1203.01 incapable matter—805.04 in §66(a) application—711.02; 714.05(b); 1904.03; 1904.03(e); 1904.04 likelihood of confusion (see also Likelihood of confusion)—1207-1207.03 matter protected by statute—1205-1205.02 name, portrait or signature of living individual or deceased United States
president without consent—1206-1206.03 (see also Consent to register by living individual)
nondistinctive configuration—1202.02(b)-1202.02(b)(ii) of request for extension of protection of international registration—711.02;
714.05(b); 1904.03; 1904.03(e); 1904.04 of matter protected by statute or convention—1205 ornamentation—1202.03-1202.03(g) ownership (see Ownership of mark)
Index-39 October 2009
res judicata—1217 surname, primarily merely a—1211-1211.02(b)(vii) trade name—1202.01 use as a service mark—1301.02-1301.02(e) use as a trademark—1202-1202.15 use in commerce—901.04 when specimen unacceptable—904.07-904.07(b)
Register (see Principal Register; Supplemental Register) Register indicated on certificate of registration—1601.07 Registered extension of protection of international registration to the United States
(See also Extension of protection of international registration to the United States; Section 66(a))
affidavit of continued use or excusable nonuse—1613; 1904.11 affidavit of incontestability—1605.01; 1904.11 amendment of identification of goods/services—1402.01(c);
1609.01; 1904.02(c)-(c)(v); 1906.01(i) amendment of mark not permitted—807.13(b); 1609.02;
1904.02(j); 1906.01(i) assignability of—501.01(b) assignee, issuance of registration certificate in name of—503 assignment of—501.01(b); 501.07; 502.01; 502.03; 503.05;
503.03(a); 1904.06; 1906.01(a)-1906.01(a)(iii) cancellation of, by IB—1904.08 can be amended under §7 only in limited circumstances—
1609.01(a) certificate of registration—1904.05 certificate of registration, issuance in name of new owner—
502.02(b); 502.03 claim of acquired distinctiveness—1212.08 classification of goods and services—1401.03(b); 1403.02;
1403.02(b); 1403.02(c); 1505.02(b);1609.04; 1904.02(b); 1904.02(c)-(c)(v)
concurrent use registration not permitted—1207.04(b) constructive use—1904.01(g) correction of errors—1904.03(f); 1904.13; 1904.13(b); 1904.14;
1906.01(f) dividing—1110.11; 1615.02 establishing right to take action—502.01 filing receipt—401.01 identification of goods and services—1402.01(c); 1609.01;
1904.02(c)-(c)(v); 1906.01(i) incontestability, affidavit of—1605.01; 1904.11 invalidation of—1904.07 issuance of registration certificate in name of new owner—
502.02(b); 502.03 jurisdiction—1504.04; 1904.02(l) limitation in list of goods/services—1904.02(e)(ii); 1904.03(a);
1904.15; 1906.01(e) mark cannot be amended—807.13(b); 1609.02; 1904.02(j);
1906.01(i) ownership, in general—501; 502; 1201; 1904.06
Index-40 October 2009
ownership, change of—501.01(b); 501.07; 502.01; 502.02(b); 502.03; 503.05; 503.03(a); 1904.06; 1906.01(a)-1906.01(a)(iii)
priority claim—206.02; 1904.01(e); recording change of ownership—503.05; 1904.06; 1906.01(a)-
1906.01(a)(iii) refusal of—711.02; 714.05; 1904.03-1904.03(g); 1904.04 remains part of international registration—1904.05 remand—1504.02; 1504.04; 1504.05(a) renewal of—1602.01; 1606.01(b); 1614; 1905 replacement—1616; 1904.12 signature—804.04; 804.05; 1904.01(c) Supplemental Register, not registrable on—801.02(b); 815;
806.01; 816.04; 1904.02(f) transformation of—1904.09-1904.09(b) use not required—901; 1904.01(d) verification—804.04; 804.05; 1904.01(c)
Registration, amendment of mark in—1609.02-1609.02(c) Registration as correct type of mark—1307 Registration certificate (see Certificate of registration) Registration, division of—1615-1615.02 Registration notice
improper use of—906.02 provided for in 15 U.S.C. §1111—906 symbolizing foreign registration—906.01
Registration, reinstatement of registration cancelled or expired due to Office error— 1712.02(a)
Reinstatement of inadvertently abandoned application—1712.01 Reinstatement of registrations cancelled or expired due to Office error—1712.02(a) Related applications (see also Companion applications; Conflicting applications)—
702.03-702.03(b) Related company
common stockholders, directors, officers—1201.03(d) control with respect to use by—1201.03 definition of—1201.03 distributor—1201.06(a) first use of mark by—903.05 importer—1201.06(a) licensees and franchisees—1201.03(f) reference to, in §1(b) applicant—1201.03(a) sister corporations—1201.03(e) use by—903.05; 1201.03-1201.03(f) use solely by—1201.03(a) wholly owned—1201.03(c) with respect to likelihood of confusion—1201.07-1201.07(b)(iv)
Remailing of Office action—717-717.02 Remand to examining attorney from Trademark Trial and Appeal Board—1501;
1504.05; 1504.05(a) Renewal (see also Renewal, application for)
of international registrations—1602.01; 1606.01(b); 1614; 1905 of registered extension of protection—1602.01; 1606.01(b); 1614; 1905 of registrations issued under Act of 1920—1602.03; 1606-1606.15
Index-41 October 2009
of registrations issued under Act of 1946—1606-1606.15 of registrations issued under Acts of 1881 and 1905—1602.02; 1606-1606.15
Renewal, application for—1606-1606.15 appeal to federal court—1606.15 by owner of international registration—1602.01; 1606.01(b); 1614; 1905 by registrant not domiciled in United States—1606.10 combined with §8 affidavit—1606.16 deficiencies, correction of—1606.05(b); 1606.13-1606.13(c) domestic representative, designation of—1606.10 execution of—1606.07 fee for filing—1606.05-1606.05(c) form for filing—1606.04 goods and services set forth in—1606.08-1606.08(d) grace period—1606.05(b); 1606.03 Office action upon examination of—1606.11 ownership and who may file—1606.06 petition to Director—1606.14-1606.14(c) premature filing of—1606.03(a) recourse after refusal—1606.14-1606.14(c) requirements for—1606.04 response to Office action—1606.12 signature of—1606.07 specimen not required—1606.09 term of—1602-1602.03 time for filing—1606.03; 1606.03(a) untimely filing cannot be cured—1712.02(a); 1606.13(c) use, declaration of use not required—1606.09 who may file—1606.06
Repeal of prior trademark acts—1601.02 Replacement—1616; 1904.12 Reply brief in ex parte appeal—1501.02(c) Representation by attorney or other authorized individual—602-602.03(e) Reproduction of mark (See Drawing) Republication—1505.03-1505.03(b) Request for extension of protection of international registration to the United States
(See Extension of protection of international registration to the United States; Registered extension of protection of international registration to the United States; Section 66(a))
Request for extension of time to file statement of use—1108-1108.05 bona fide intention to use the mark in commerce—1101; 1108.02(e) fee for filing—1108.02(c) filing in conjunction with or after statement of use—1108.03-1108.03(a) form for filing—1108 good cause for—1108.02(f) hand delivery of—1108 identifying goods/services in—1108.02(d) “insurance” request—1108.03;-1108.03(a) minimum filing requirements—1108.04 ownership—1108.02(a) recourse after denial—1108.04; 1108.05 requirements (of 37 C.F.R. §2.89) for—1108.02-1108.02(f)
Index-42 October 2009
time for filing—1108.01 verification—1108.02(b)
Request for extension of time to oppose—1503.04 Request for information from applicant—814 Request to divide—1110-1110.12
division of application—1110-1110.11(a) division of application subject to Board proceeding—1110.09 division of application under §44—1110.10 division of application under §66(a)—1110.11; 1110.11(a) division of multiple class application—1110.08; 1403.03 division of registration—1615 fee for—1110.02 form and processing of—1110.04 outstanding deadlines apply to applications created by—1110.05 signature of—1110.06 time for filing—1110.03 when statement of use is due—1110.07 when response to Office action is due—1110.05; 1110.08
Requirements for receiving filing date for application—202-202.03 Reregistration of marks registered under prior acts—1601.03 Res judicata—1217 Resignation of examining attorney—702.01 Response to IB notice of irregularity of international application for registration—
1902.07; 1902.07(f) Response to Office action
deadline for—310; 711-711.02 incomplete—611.05(a)-(c); 718.03-718.03(c); 1713.01-1713.02; 1714.01(f)(ii) must be signed—712 persons who can sign—611.03(b); 611.06-611.06(h); 712.01 signed by unauthorized party—608.01; 611.05-611.05(c); 712.03 unsigned—712.02
Restoration of filing date—1711 Restriction of holder’s right to dispose of international registration—1906.01(b) Return of application materials not entitled to a filing date—204.01 Returned correspondence—403; 717.01 Revival (see Petition to revive abandoned application) Revived or reinstated application, examination of—718.07; 1208.01(d) Revocation of power of attorney—606
S
Scandalous matter (see Immoral or scandalous matter) Scent as mark—807.09; 904.03(m); 1202.13 Scope of identification of goods/services for purposes of amendment—1402.07-
1402.07(e) Search, by examining attorney—206.03; 206.04; 704.02; 718.07 “Search clause”—704.02 Search library, trademark—104 Search of trademark applications and registrations—104 Search room, trademark assignment—104; 503.08 Secondary meaning (see Acquired distinctiveness (§2(f) claim)
Index-43 October 2009
Secondary source—1202.03(c) Section 2(f) claim (see Acquired distinctiveness (§2(f) claim) Section 8 affidavit (see Affidavit of continued use or excusable nonuse (§8)) Section 15 affidavit (see Affidavit of incontestability) Section 44 (see also Foreign registration, application based on ownership of; Priority
under §44(d), application claiming) applications for Supplemental Register under—1014 assignment of applications under—1006 claim of acquired distinctiveness in application under—1010 eligible applicants, under—1002-1002.05 international trademark agreements implemented by—1001 sections of publications, marks that identify—1202.07-1202.07(b)
Section 66(a) application (see also Extension of protection of international registration to the United States; Registered extension of protection of international registration to the United States)
amendment to Supplemental Register not permitted—801.02(b); 815; 816.01; 816.04; 1904.02(f)
amendment of identification of goods/services—1402.01(c); 1609.01; 1904.02(c)-(c)(v); 1906.01(i)
amendment of mark not permitted—807.13(b); 1609.02; 1904.02(j); 1906.01(i)
assignability of—501.01(b) assignee, issuance of registration certificate in name of—
502.02(b) assignment of—501.01(b); 501.07; 502.01; 502.02(b); 503.05;
503.03(a); 1904.06; 1906.01(a)-1906.01(a)(iii) basis—806.01(e); 806.03(k); 1505.02(f); 1904.01(a) cancellation of, by IB—1904.08 cannot be based on USPTO application—1904.01(h) certificate of registration—1904.05 certificate of registration, issuance in name of new owner—
502.02(b); 502.03 certification and collective marks—1904.02(d) claim of acquired distinctiveness—1212.08 classification of goods and services—1401.03(d); 1403.02;
1403.02(b); 1403.02(c); 1505.02(b); 1609.04; 1904.02(b) concurrent use registration not permitted—1207.04(b) constructive use—1904.01(g) correction of errors—1904.03(f); 1904.13; 1904.13(b); 1904.14;
1906.01(f) correspondence address—609.01(a); 1904.02(i) declaration of intent to use required—804.05; 1904.01(c) dividing—1110.11; 1615.02 drawing—807.03(b); 807.03(g); 807.03(h); 807.07(b);
807.07(d)(iii); 807.07(f)(i); 807.12(c); 807.13(b); 1904.02(k) description of mark—1904.02(k) establishing right to take action—502.01 examination of—1904.02-1904.09 express abandonment of—718.01 filing basis—806.01(e); 806.03(k); 1505.02(f); 1904.01(a) filing date—201; 202; 203; 1904.01(b)
Index-44 October 2009
filing fee—202.03; 810; 810.01; 1401.05(b); 1904.01(f) filing receipt—401.01 identification of goods and services—1402.01(c); 1609.03;
1904.02(c)-(c)(v); 1906.01(i) invalidation of—1904.07 issuance of registration certificate in name of new owner—
502.02(b); 502.03 jurisdiction—1504.04; 1904.02(l) limitation in list of goods/services—1904.02(e)(ii); 1904.03(g);
1904.15; 1906.01(e) mark cannot be amended—807.13(b); 1904.02(j); 1906.01(i) must be filed by holder of international registration—1201 notice of refusal—1904.03-1904.03(g); 1904.04 Office actions, issuing—1904.02(h) opposition—1503.01; 1503.05; 1504.02; 1504.05(a); 1904.04 ownership, in general—501; 502; 1201; 1904.06 ownership, change of—501.01(b); 501.07; 502.01; 502.02(b);
503.05; 503.03(a); 1904.06; 1906.01(a)-1906.01(a)(iii) priority claim—206.02; 1904.01(e) recording change of ownership—503.05; 1904.06; 1906.01(a)-
1906.01(a)(iii) remains part of international registration—1904.05 remand—1504.02; 1504.04; 1504.05(a) refusal of—711.02; 714.05(b); 1904.03; 1904.03(e); 1904.04 renewal of—1602.01; 1606.01(b); 1614; 1905 replacement—1616; 1904.12 signature—804.04; 804.05; 1904.01(c) Supplemental Register, amendment to not a new issue—
714.05(a)(i) Supplemental Register, not registrable on—801.02(b); 815;
816.01; 816.04; 1904.02(f) transformation of—1904.09-1904.09(b) use not required—901; 1904.01(d) verification—804; 804.04; 804.05; 1904.01(c)
Section 71 affidavit—1613; 1904.11 Security interest agreements, recording of—503.02 Serial number—401.02 Series code—401.02 Service mark
character or personal name—1301.02(b) computer software—1301.02(f) definition of—1301, 1301.02 identification and classification of services—1301.05 informational matter—1301.02(a) matter that does not function as—1301.02(a) menu item for restaurant—1301.02(a) ornamental matter—1301.02(a) process, system or method—1301.02(e) product used in performing service—1301.02(a) radio and television program, title of—1301.02(d) specimens of use—1301.04-1301.04(d)
Index-45 October 2009
system, process or method—1301.02(e) three-dimensional—1301.02(c) use in commerce—1301.03 what is a—1301.02-1301.02(e)
Service, what is a—1301.01-1301.01(b)(v) contests and promotional activities—1301.01(b)(i) criteria for determining what constitutes—1301.01(a)-1301.01(a)(iii) informational services ancillary to sale of goods—1301.01(b)(v) investment, soliciting—1301.01(b)(iv) promotional services—1215.02(b); 1301.01(b)(i) publishing—1301.01(b)(iii) warranty or guarantee of repair—1301.01(b)(ii)
Services identification of—1402.11-1402.11(e) classification of—1401.02(a)
Shape as mark background designs and shapes as mark—1202.11 product and container configurations—1202.02(a)-1202.02(b)(ii)
Signature (see also Verification) as certification—611.01(a) date of—804.03; 1104.09(b); 1108.02(b); 1109.11(c) of applicant (see also Verification of application) by association—611.06(f); 804.04 by corporation—611.06(d); 804.04 by foreign corporate-type entity—611.06(e); 804.04 by joint applicants—611.02, 611.06(a); 804.04 by joint venture—611.06(c); 804.04 by limited liability company—611.06(g); 804.04 by partnership—611.06(b); 804.04 by someone other than applicant or applicant’s attorney—611.05-611.05(c) electronic—611.01(c) examples of authorized and unauthorized signatories—611.04 must be personally signed—611.02; 611.03; 712; 804.01(b); 804.04; 611.01(b);
611.01(c) persons who can sign verification on behalf of applicant—804.04 persons who may sign response – 712.01 of amendments and responses—611.02, 611.03(b), 611.05-611.05(c); 712.01 of application for registration, persons who can sign—804.04 of correction, amendment, or surrender of registration—611.03(f) of correspondence address change request in an application or registration—
611.02; 611.03(i) of documents filed in USPTO—611-611.05(c) of domestic representative designation and representation—611.03(h) of electronically filed documents—611.01(c) of letter of express abandonment—608.01, 611.02; 611.05; 718.01 of petition to Director—611.02; 611.03(e); 1705.07 of petition to revive—611.03(d); 1705.07; 1714.01(e) of powers of attorney and revocations of powers of attorney—611.03(c) of renewal applications—611.03(g) of request to divide—611.02; 611.03(b)
Index-46 October 2009
of response to Office action—608.01; 611.02, 611.03(b); 611.03(b); 611.06(a)- 611.06(h); 712
of TEAS document—611.01(c); 611.02(a) original—302.01 requirements for—611.01(b)
“Single source” (related companies)—1201.07-1201.07(b)(iv) Single creative work, title of—1202.08; 1301.02(d) Size of mark on drawing—807.06(a) Slogans
disclaimers with respect to—1213.05(b) registrability of—1202.03(f)(i); 1202.04
Sole proprietorship as applicant—803.03(a) Sound marks—807.09; 904.03(f); 1202.15 “Special” applications (see also Petition to make “special”)—702.02 Special form drawing—807.04-807.04(b)
also referred to as “ink drawing”—807.04-807.04(b) characteristics of—807.04(a) correction of—807.15; 807.16 size limitations for—807.06(a) when required—807.04(b)
Specimens affidavit of use of—904.05 agreement with mark on drawing—807.12(a)-807.12(a)(iii); 1215.02(c) bulky—904.02(b) catalogs as—904.03(h) certification mark—1306.06(b) collective membership mark—1304.08(e) collective trademark and collective service mark—1303.02(b) commercial packaging—904.03(c) deferral of examination in multiple-basis application—806.02(c) displays—904.03(g) electronic and digital media attachments—904.03(d) electronic displays—904.03(i) electronically transmitted—904.02(a); 1104.09(e); 1109.09(b); 1604.12(b) facsimiles—904.02(b) for amendment to allege use—1104.09(e) for color marks—904.02(c)(ii); 1202.05(f) for combined application—(See Specimen, multiple-class application) for computer programs, movies or videotapes—904.03(e) for downloadable software—904.03(e) for flavor mark—904.03(m) for motion marks—904.03(l) for publications—904.02(c)(iii) for scent mark—904.03(m) for statement of use—1109.09(b) impracticable to place mark on goods, packaging or displays—904.03(k) labels—904.03(a) manuals—904.03(j) multiple-class application—904.01; 904.01(b); 1403.01; 1403.02(b); 1402.03(c) musical score—904.03(f); 1202.15 number of—904.01
Index-47 October 2009
package inserts—904.04(c) paper—904.02(b) parties named on-Office no longer inquires as to relationship with applicant—
1201.04 physical form of—904.02 service mark—1301.04-1301.04(d) sound mark—904.03(f) stampings—904.03(b) statutory refusals—904.07-904.07(b) substitute (see Substitute specimens) trademark—904.03-904.04(c) translation of matter on—904.06 use, affidavit of—904.05
Standard character drawings—807.03-807.03(i) and foreign registration—807.03(f), Appendix E and specimen of use—807.03(e) changing to or from special form may be material alteration—
807.03(d) combined with other elements—807.03(c) format unclear—807.03(h) in §44 application—807.03(f) in §66(a) application—807.03(b); 807.03(g); 807.03(h) list of—807.03(b) requirements for—807.03(a)
Standard character list—807.03(b) Stare decisis—1217 Statement of use
approval of—1109.18 black-out period—1103 classification, amendment of—1109.14 clear-error standard in examining—706.01; 1109.08 correcting defects—1109.16-1109.16(d) date of execution—1109.11(c) dates of use—1109.09(a) drawing—1109.12 examination of—1109.07; 1109.08; 1109.16(b) execution of—1109.11-1109.11(d) extension of time to file (see Request for extension of time to file statement of
use) failure to file within time permitted—718.04; 1109.04 fee for filing—1109.15; 1109.15(a) form of—1109.05 hand delivery of—1109.05 identification of goods/services in—1109.13 may not be withdrawn—806.03(e); 1109.17 minimum requirements for—1109.01 minimum requirements, review for compliance with—1109.02 necessary elements of—1109.06 ownership—1109.10 recourse after refusal—1109.16(e) response to Office action—1109.16(d)
Index-48 October 2009
requirements for—1109.06 signature of—804.04; 1109.11-1109.11(d) specimens for—1109.09(b) time for filing—1109.04 use on all goods/services required before filing—1109.03 use in commerce—1109.09 verification of—804.04; 1109.11-1109.11(c) withdrawal prohibited—1109.17
Status inquiries—108; 1705.05 Internet information—108.01 Personal telephone assistance—108.02
Statutory authority for examination—701 Statutory averments in application for registration—804.02 Stippling on drawing—808.01(b) Subpoena received by Office employee—1801.01 Subsequent designations—1902.08-1902.08(e) Substitute drawing—807.15 Substitute specimens
affidavit supporting—904.05 in response to refusal for failure to show use of the mark in commerce—
714.05(e) in response to refusal for failure to show the applied-for mark functioning as a
mark—714.05(f) for amendment to allege use—1104.09(e) for statement of use—1109.09(b) may require amendment of dates of use—904.05 requirements for substitute specimens and statutory refusals—904.07-904.07(b)
Supervisory authority of Director—1707 Supplemental Register
allegation of use examined before action taken on amendment to—1102.03 amendment of application to—816-816.05 applications for—815-815.04 intent-to-use applications—206.01; 1102.03 marks eligible for Principal Register not registrable on—815.01 not an admission that mark has not acquired distinctiveness—815.03 refusal of incapable matter—815.04 request for extension of protection of international registration, not eligible—
801.02(b); 815; 816.01; 816.04; 1904.02(f) required elements—815.02
Surname, primarily merely a—1211-1211.02(b)(viii) combined with additional matter—1211.01(b)-1211.01(b)(vii) combined with domain name—1211.01(b)(vii); 1215.03 combined with initials—1211.01(b)(iii) combined with legal or familial entity designation—1211.01(b)(viii) combined with title—1211.01(b)(iv) doctrine of foreign equivalents—1211.01(a)(vii) double surname—1211.01(b)(i) evidence supporting refusal—1211.02-1211.02(b)(vii) geographical significance—1211.01(a)(iii) historical place or person—1211.01(a)(iv) “look and feel” of a surname—1211.01(a)(vi)
Index-49 October 2009
negative dictionary evidence—1211.01(a)(vii); 1211.02(b)(vi) non-surname significance—1211.01(a)-1211.01(a)(vi) ordinary language meaning—1211.01(a)(i) phonetic equivalent—1211.01(a)(ii) plural—1211.01(b)(v) possessive—1211.01(b)(v) rare—1211.01(a)(v) stylization—1211.01(b)(ii) telephone directory listings
Surrender of registration for cancellation—1608 Suspended cases checked by examining attorney—716.04 Suspension of action by Office
after final action—716.06 circumstances where appropriate—716.02-716.02(e) letter of inquiry regarding—716.05 notice of—716.01 pending cancellation or expiration of cited registration—716.02(e) pending decision on petition not permitted—716.02; 1705.06 pending disposition of earlier-filed application—716.02(c) pending inter partes or court proceeding—716.02(d) pending receipt of foreign registration—716.02(b); 1003.04(a) pending receipt of proof of renewal of foreign registration—716.02(b); 1004.01(a) request to remove—716.03
Suspension of practitioner from practice before USPTO—608.02 Suspension, removal of application from—716.03; 716.06
T
Taiwan, understanding with the United States—App. B TAC (Trademark Assistance Center)—108.02 TARR database—108.01 Tax-exempt corporation—803.03(c) TDR (Trademark Document Retrieval)—109.01; 402 TEAS (see Electronic filing) TEAS Plus—819-819.04
Adding a class during examination—819.03 Application requirements—819.01-819.01(q) Documents that must be filed through TEAS—819.02(b) Identification of goods and services—1402.01(d); 1402.02 Payment of TEAS Plus processing fee—819.04 Receipt of communications by e-mail—819.02(a) TEAS success page—303.02(a)
Telephone numbers—1209.03(l) Telephone communications—709.04 Telescoped words—1213.05(a)(i) “Ten-year proviso” of §5 of Act of 1905—1601.04 Territorial commerce—901.03 TESS (Trademark Electronic Search System)—104 Testimony, requests for, referred to Office of General Counsel—1801.01 Third parties, inquires from regarding ex parte matters—1806 Third party registrations
Index-50 October 2009
evidence of—710.03 relevance in determining descriptiveness—1209.03(a) relevance in determining likelihood of confusion—1207.01(d)(iii)
Third Protocol—1205.01(a)-1205.01(a)(vi) Three-dimensional marks—807.10; 1202.02-1202.02(d); 1301.02(c) TICRS—109.02; 402 Time between execution and filing—804.03; 1104.09(b); 1108.02(b); 1109.11(c) Title of a single creative work—1202.08-1202.08(f); 1301.02(d) Title or degree—1304.08(a)(i); 1306.03; 1306.06 Trade dress—1202.02; 1202.02(b)-1202.02(e); 1202.03; 1202.03(f)(iii) Trade name—1202.01 Trademark Act of 1946
claiming benefits of, under §12(c)—1603-1603.03 duration of registrations under—1602.01 effective date of—1601.02
Trademark assignment, searching—503.08 Trademark Assistance Center—108.02 Trademark, definition of—1202 Trademark Document Retrieval (TDR)—109.01; 402 Trademark forms—103 Trademark Image Capture and Retrieval System (TICRS)—109.02; 402 Trademark Law Revision Act of 1988—816.02; 901.02; 1303.01; 1602.01 Trademark Law Treaty Implementation Act, changes to requirements for maintaining
a registration—1602.04 Trademark manuals—107 Trademark Official Gazette
contents of—106 notification of clerical errors in—1502.01 publication in—1502
Trademark searching—104 Trademark Trial and Appeal Board
appeal to—1501-1501.04 concurrent proceedings—1506 interference—1507 jurisdiction of—1504.02 opposition proceedings before—1503-1503.05
Trademark website—102 Transformation—1902.10; 1904.09-1904.09(b) Translation
approval of—809.02(a) entry of—809.01(a) equivalency in—809.02 exceptions to rules for translations—809.01(b)-809.01(b)(iii) of dead or obscure languages—809(b)(iii); 1207.01(b)(vi); 1209.03(g) of document submitted for recording in Assignment Division—503.03(c) of foreign articles—809.01(b)(ii) of foreign registration—1004.01(b) of idiomatic expressions—809.01(b) of matter on specimens—904.06 of non-English wording in mark—809-809.02(a) printing of—809.03; 817
Index-51 October 2009
Transliteration of non-Latin characters in mark—809-809.02(a) Treaty or convention relating to trademarks—1001; 1002.03; App. B TRIPs (Trade Related Intellectual Property portions of General Agreement on Tariffs
and Trade)—1210.08; 1210.08(a); App. B Trust as owner of mark—803.03(e); 803.03(e)(i) Type of commerce—901.03 Type of mark, registration in correct category—1307 Types of applications—801-801.02(b) Types of marks—1300 introductory text; 1307 Types of registrations—1601-1601.06
U
U.S. Postal Service, interruptions of—305.04 Unauthorized practice at PTO—608-608.02 Undeliverable correspondence, returned as—403 Unintentional delay
petition based on—1714.01(e); 1714.01(f)-1714.01(f)(ii) statement of—1714.01(e) where unintentional delay applies—1714.01(f)-1714.01(f)(ii)
United States Patent and Trademark Office reorganization of—1701 Website—102
Unity of control—714.05(d); 715.03(b); 1201.07-1201.07(b)(iv) Unpublished decisions—705.05 Unscheduled closing of USPTO—309 Unsigned response to Office action—712.02 Uruguay Round Agreements—1210.08; App. B Use in commerce
assertion of—901 bona fide use in ordinary course of trade—901.02 commerce that may be lawfully regulated by Congress—901.03 current, asserted in §1(a) application—901 date of first—903.02 definition of—901.01 not required in §44 application—901; 1009 not required in §66(a) application—901; 1904.01(d) solely by related company—903.05; 1201.03(a)
Use of mark as a mark—1202 solely as a trade name—1202.01 bona fide use in ordinary course of trade—901.02 by applicant—1201.01 by licensee—1201.03(f) by predecessor in title—903.05 by related company—903.05; 1201.03-1201.03(f) in commerce (see Use in commerce) solely by related company—1201.03(a)
V
Varietal names—1202.12
Index-52 October 2009
Index-53 October 2009
Verification of application (see also Signature)—804-804.05 declaration in lieu of oath—804.01(b) defective—804.01(a); 804.01(b); 804.02 electronic—611.01(c) in a foreign country—804.01(a)(i) must be personally signed—611.03; 804.01(b); 804.04; 611.01(b); 611.01(c) not required for receipt of filing date—804 persons who can sign—611.03(a); 804.04 of §66(a) application—804; 804.05; 1904.01(c) of TEAS document—611.01(c); 611.02(a) under 28 U.S.C. §1746—804.01(b) with oath—804.01(a)
W
Waiver of rules, on petition—1708 Warehouse storage
access by public to files in—109.02 of registration files—109.02
Who may practice before Office in trademark matters—602-602.003(e); 611.02 Wholly owned related companies—1201.03(c) Wines/spirits, misleading indication of origin of—1210.08-1210.08(c) Withdrawal of attorney—607 Withdrawal of authorization to represent—602.07 Withdrawal of refusal or requirement after appeal—1501.03 World Intellectual Property Organization—1401.02(a); 1900 (introductory text) World Trade Organization—App. B Written application, form for filing—802