The term "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 1300
regarding the examination of applications for different types of marks.
A single-class application limits the goods or services for which registration is sought to goods or services in 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.
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.
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 U.S. registration with the U.S. 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 U.S. 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.
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 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).
Applications under §66(a) of the Trademark Act will be 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, or on the USPTO's pre-printed scannable form. The applicant may obtain the USPTO's form by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.
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. §2.32(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.
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 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.
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 NASA 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 in the state in which he or she is domiciled, then 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 their status as a parent or legal guardian. If the record indicates that an application has been filed in the name of a minor, the examining attorney should 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, and require correction of the entity statement, if necessary.
See
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).
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.
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 record is ambiguous as to whether a corporation or an individual owns the mark, the examining attorney must require the applicant to clarify the record regarding ownership. However, in view of the broad definition of a "person properly authorized to sign on behalf of an 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 ambiguity 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.
See
TMEP §§803.06
and
1201.02(c)
regarding Office policies regarding correction of an applicant's name and entity.
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 partnership or firm has not been organized under a business name, then 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.
See
TMEP §803.03(b)
for information about identifying a partnership or joint venture as a legal entity.
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 the preamble 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 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.
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 an 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 Office will accept the identification of an applicant's entity depends on whether that entity is recognized by the applicant's state of domicile.
If other material in the record shows a different type of entity than is set out in the written application, the examining attorney should 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 an 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 Office policies governing correction of an applicant's name.
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.
An applicant may identify itself as a sole proprietorship. If an applicant does so, the applicant must also indicate the state where the sole proprietorship is organized, in addition to the name and 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 without further action. 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.
The application of a partnership or a joint venture, after setting forth the applicant's name and entity, 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, the applicant should set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture. 37 C.F.R. §2.32(a)(3)(iii). 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 ______________."
In the case of a 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 Office 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 the principal partners exceed ten, 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 death or dissolution of a partner or other change in the members that compose a partnership, that legal entity ceases to exist and any subsequent arrangement constitutes a new entity, unless the partnership 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 term "firm" is not an acceptable designation of the applicant's entity because it does not have a universally understood meaning. The examining attorney should require a definite term such as "partnership" or "joint venture" when it is necessary to identify these entities.
In the United States, the term "corporation" is proper for juristic entities that are incorporated under the laws of the various states or under special federal statutes. Likewise, "association" is a proper term for juristic entities organized under state laws or federal statutes that govern this form of organization. The term "company" is indefinite for describing a United States entity because it does not have a specific meaning as indicating a particular type of 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)
regarding foreign companies.
In addition to specifying that an applicant is a corporation, the application must specify the applicant's state or country of incorporation. 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 is given for an applicant corporation, or the incorrect state or country of incorporation is given, this defect may be corrected by amendment. The amendment does not have to be verified.
For an association, the application must specify the state or country under whose laws the applicant is organized or exists. The applicant should also indicate whether the association is incorporated or unincorporated. If a corporation or association exists by virtue of a specific state or federal statute, this should be stated. Verification is not required.
An application may be filed in the name 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).
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 Office 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). See
TMEP §804.04
regarding persons authorized to sign a verification on behalf of an applicant, and
TMEP §712.01(a)(i)
regarding the proper party to sign a response to an Office action filed by joint applicants who are not represented by an attorney.
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.
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 U.S. 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 U.S. citizen.
The Executors of the John Smith estate, a New York estate, the executors comprising Mary Smith and James Smith, U.S. citizens.
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 Office must 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 U.S. citizen, and the PDQ Corporation, a Delaware corporation.
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.
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.
Again, these examples are not exhaustive of the entity designations that are acceptable.
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.
Pathway Financial, a federally chartered savings and loan association.
This is not an exhaustive listing of acceptable entity designations.
Most of the states have amended their laws to recognize an entity
commonly identified as a “limited liability company.” The entity
has attributes of both a corporation and a partnership. Therefore, the Office
must accept the entity designation “limited liability company,”
or any appropriate variation provided for under relevant state law. The applicant
should indicate the state under whose laws the limited liability company is
established. For the purpose of service of process, the limited liability
company is like a corporation. Therefore, it is not necessary to list the
“members” or owners of the limited liability company when identifying
the entity.
See
TMEP §712.01(a)(vii)
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.
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" is used, no inquiry is needed. In any other case, the examining attorney must clarify what type of entity is applying.
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. The examining attorney should inquire further into the specific nature of a foreign legal entity if it is not clear that it is in fact a designation of legal entity in the particular country. The examining attorney may request a description of the nature of the foreign entity, if necessary.
Listed below are common terms used by several foreign countries to identify commercial entities.
France
A "Société anonyme" (S.A.) is a joint stock company whose capital is divided into shares. An S.A. is similar to a corporation.
A "Société a responsabilité limitée" (S.A.R.L.) is a limited liability company. The S.A.R.L. is analogous to a small closely held American corporation.
A "Société en nom collectif" is a general partnership. Each partner represents the firm and their liability is unlimited.
A "Société en commandite simple" is a special partnership very similar to an American limited partnership.
A "Société en commandite par actions" is a special partnership by shares and occupies a position between a limited partnership (société en commandite simple) and corporation (société anonyme).
A Société par actions simplifée (SAS) is a simplified stock company with limited liability, which has the legal status of a corporation, with a more flexible structure for management and administration than the S.A.
Germany
The "Aktiengesellschaft" (A.G.) is a joint stock company, which can also be loosely described as a corporation.
The "Gesellschaft mit beschrankter Haftung" (G.m.b.H.) is a company with limited liability.
The "Kommanditgesellschaft" (K.G.) is a limited partnership whose entity survives even though the partners might change. It is not necessary to list the names of the partners.
The "Offene Handelsgellschaft" (O.H.G.) is a type of German partnership that is comparable to a United States partnership. Thus, all relevant information with respect to the partnership must be provided.
German law permits a business to be conducted by an individual with the assets of the business held by the "company" in the name of the company, not by the proprietor as an individual. This form of business is generally referred to as a "Firma." However, "Firma" is a broad term that may also connote other situations and the examining attorney should ascertain, if there is any doubt, that a sole proprietorship form of business is intended when the term "Firma" is used.
The "Stiftung" is a foundation having some attributes of a corporation but being more in the nature of a trust. It is governed by a Board of Management, two members of which are denominated Mandatory and Deputy Mandatory. See Carl Zeiss Stiftung v. VEB Carl Zeiss Jena, 433 F.2d 686, 167 USPQ 641, 642 n.6 (2d Cir. 1970), cert. denied, 403 U.S. 905, 170 USPQ 1 (1971).
Italy
A "Societa per azioni" is analogous to an American corporation.
A "Societa a responsabilita limitata" is the equivalent of a joint stock company with limited liability.
A "Societa in nome collettivo" is a general partnership whose members have unlimited liability for all its obligations.
A "Societa semplice" is a simple partnership. This form of partnership need not be made public as long as there is an agreement between the partners.
"Societa cooperativa" is a cooperative society. This type of entity may be incorporated with either limited or unlimited liability, but the society's name must bear a qualification as to whether it is a limited or unlimited cooperative.
Japan
A "Kabushiki Kaisha" most closely resembles a United States joint stock corporation. This type of entity is incorporated and will issue shares.
A "Yugen Kaisha" is similar to a United States closely held corporation. It is a small corporation that may not surpass certain specified capitalization or numbers of members.
A "Gomer Kaisha" is an entity that is established by formal legal documents. However, all members are jointly and severally liable for the obligations of the firm in the event of bankruptcy, similar to a United States partnership.
A "Goshi Kaisha" is similar to the "Gomer Kaisha" listed above. It differs to the extent that members may have either unlimited or limited liability for the corporate obligations.
Spain
A "Sociedad regular colectina" is a regular collective company and is similar to an American partnership.
A "Sociedad de responsabilidad limitada" is a limited liability company and may be identified as a joint stock company with limited liability.
A "Sociedad anonima" is a joint stock corporation and may be identified as a corporation.
United Kingdom and Other Commonwealth Countries
The word "company" is commonly used in the United Kingdom to identify juristic entities (similar to United States corporations) organized under the law of that country, and thus the word "company" is an acceptable entity designation for applicants from that country.
The same is true for other Commonwealth countries, such as Canada and Australia.
There are two types of limited liability companies in Great Britain: (1) public limited companies, which would be indicated by using "PLC," "plc" or "Public Limited Company;" and (2) private limited companies that use the designation "Limited" or "Ltd." A public limited company in Wales uses the designation "Cwmni & Cyfyngedig Cyhoeddus" or "CCC."
A federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant's entity.
Under 37 C.F.R. §2.32(a)(3), an application for registration must specify the applicant's citizenship or the state or nation under whose laws the applicant is organized. 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.
If an applicant asserts dual citizenship, the applicant must choose which citizenship will be printed in the Official Gazette and on the registration certificate. It is Office policy to print only one country of citizenship for each person in the Official Gazette and on the registration certificate, and the automated records of the Office will indicate only one country of citizenship for each person.
For a corporation, the application must set forth the state or country of incorporation. 37 C.F.R. §2.32(a)(3)(ii).
For an association, the application must set forth the state or country under whose laws the association is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii).
For a partnership or other firm, the application must set forth the state or country under which the partnership is organized, and 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.
For joint applicants or a joint venture, the application should set forth the citizenship or state or country of organization of each party.
The written application must specify the applicant's address. 37 C.F.R. §2.32(a)(4). Addresses should include United States post office ZIP code numbers or their foreign equivalents. The applicant's address may include 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 §§603
et seq.
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); 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 Corporation of America v. Edwin Crutcher, 35 USPQ 98 (Comm'r Pats. 1937). The Office 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 (including a 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 (including a filing fee) at that time.
See
TMEP §1201.02(c)
for examples of correctable and non-correctable errors in identifying the applicant, 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.
An application must include a statement that is verified by the applicant. 15 U.S.C. §§1051(a)(3) and 1051(b)(3); 37 C.F.R. §2.32(b).
In applications under 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 §804.06.
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)).
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 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.
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, 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), Spain, Suriname, Swaziland, Switzerland, The Isle of Man Jersey, 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 U.S. diplomatic or consular officer, 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.
Under 35 U.S.C. §25, the Office 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). 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)
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 United States Patent and Trademark Office 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), overruled on other grounds 47 USPQ2d 1762, 1763 (1997) (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); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968 (TTAB 1986); In re Laboratories Goupil, S.A., 197 USPQ 689 (Comm'r Pats. 1977).
If a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 is not dated, the examining attorney should 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 to the file.
See
TMEP §804.02
regarding the essential allegations required to verify an application for registration of a mark.
The requirements for the verified statement in applications under application 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 §804.06
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." 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 allege that the mark was in use in commerce on or in connection with the goods or services 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 allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services 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 Office 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, 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.
Affirmative, Unequivocal Averments Required
The verification must include affirmative, unequivocal averments that meet the requirements of the Act and the rules. Statements to the effect that "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.
Papers Must Be Filed Within a Reasonable Time After Execution
All applications and papers 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 Office 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 allegations of use and requests for extensions of time to file a statement of use are 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 Office considers one year between execution and filing as reasonable for all applicants and all papers. No new verification should be required if the paper 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 papers 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.
Papers 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.
Extract from 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 §10.1(c) of this chapter who has an actual or implied written or verbal power of attorney from the applicant.
Effective October 30, 1999, 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 an 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, requests for amendment or correction of registrations under 15 U.S.C. §1057, and designations of domestic representative.
Generally, the Office 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 Office presumes that papers are properly signed. In view of the broad definition of a "person properly authorized to sign on behalf of an 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 Office will presume that XYZ Company, Inc. is a related company properly authorized to sign on behalf of ABC Company, Inc. The Office will not ask the applicant to explain how the person has authority to sign.
It is not necessary to set forth the title of the person signing the verification or to 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 than the juristic applicant, the Office will not question whether the proper party is listed as the applicant.
Example: If the applicant is Mary Smith, an individual, and the application is signed by John Smith, the Office will not question whether the proper party is listed as applicant.
Example: If the applicant is John Smith, an individual, and the application is signed by John Smith, President, XYZ, Inc., the Office will not question whether the proper party is listed as applicant.
If an attorney signs a verification on behalf of an applicant, the Office will not require a power of attorney or other documentation stating that the attorney 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 an applicant" in 37 C.F.R. §2.33(a) applies only to verifications of facts by the applicant and designations of domestic representatives. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, or consent agreements.
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. Authorizing an amendment to an application, or submitting legal arguments in response to an examining attorney's requirement or refusal of registration, constitutes representation of the applicant in a trademark matter. Under 5 U.S.C. §500(d) and 37 C.F.R. §10.14(e), non-attorneys may not represent a party in a trademark proceeding before the USPTO. See
TMEP §§712
et seq. regarding signature of responses to Office actions.
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 will have established that the international registration includes a properly signed declaration before it sends the request for extension of protection to the USPTO. 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.
In a document filed through TEAS or the Electronic System for Trademark Trials and Appeals ("ESTTA"), the party filing the document does not apply a conventional signature. Instead, the filer does one of the following:
(1) The filer enters a "symbol" that the filer has adopted as a signature. The USPTO will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash ("/") symbols. 37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii). Examples of acceptable signatures include /john doe/, /drl/, and /544-4925/; or
(2) The document is completed online, printed in text form, and given or sent to the signatory. The signatory signs the document in the traditional pen-and-ink manner. An image file of the signed document is then transmitted electronically through TEAS or ESTTA. This method of signature is used primarily by attorneys who complete a document online, print it, and mail or fax it to the client for signature in text form. The client signs the document and returns it to the attorney. The attorney scans the returned document to create a .jpg image file, and files the document through TEAS or ESTTA with the .jpg attachment.
These principles apply to the signature of all documents filed electronically, e.g., amendments to allege use, statements of use, requests for extension of time to file a statement of use, responses to Office action, affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, affidavits or declarations of incontestability under 15 U.S.C. §1065; combined filings under 15 U.S.C. §§1058 and 1059, petitions for cancellation under 15 U.S.C. §1064, notices of opposition and requests for extensions of time to oppose under 15 U.S.C. §1063.
The Trademark Trial and Appeal Board has held that an electronic signature on an electronic transmission pertains to all the attachments to the transmission. PPG Industries, Inc. v. Guardian Industries Corp., 73 USPQ2d 1926(TTAB 2005).
If the signatory's name is not set forth in a TEAS document, the examining attorney should require that it be stated for the record. The examining attorney can enter this information through a note to the file.
See
TMEP §301
for more information about electronic filing.
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) an attorney as defined in 37 C.F.R. §10.1 who is authorized to practice before the USPTO 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 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 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.
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 more 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. 37 C.F.R. §2.32(a)(7). See
TMEP §§1401
et seq. for more information about classification.
A filing basis is the statutory basis for filing an application to obtain registration of a mark in the United States. An applicant must specify and meet the requirements of one or more filing bases before the mark will be approved for publication for opposition or registration on the Supplemental Register. 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 for 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. 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.
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.
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. 15 U.S.C. §1051(a)(3)(C). If this verified statement is not filed with the initial application, the verified statement must also state 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 International, 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 Office may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed.
TMEP §806.02(c).
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 state that the applicant had a bona fide intention to use the mark in commerce on or in 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
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.
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).
(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). 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 state 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).
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 (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.
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.
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 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 state 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).
(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.
The scope of the goods covered by the §44 basis in the United States application 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).
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.
Section 66(a) of the Act 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 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. The examining attorney should 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 §804.06.
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.
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 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).
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.
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).
An applicant may rely on both §1(a) and §1(b) in a single application. The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in a single 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 multi-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 Office 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 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).
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 Office 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.
If an applicant fails to respond to an Office action or notice of allowance pertaining to only one basis of a multi-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 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.
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.
If an applicant properly claims a §44(d) basis in addition to a §1 basis, the applicant may elect not to perfect a §44(e) basis and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4).
If an applicant claims §44(d) in addition to another basis, 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 application on which the applicant relied for priority). The examining attorney should advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and ask the applicant whether it wishes to perfect the §44(e) basis. This inquiry should be made in the first Office action, or by telephone if no Office action is issued. If the examining attorney is unable to reach the applicant by telephone, the examining attorney should issue an Office action requiring a copy of the foreign registration, advising applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquiring as to whether the applicant wishes to retain §44(e) as a second basis for registration.
If the applicant does not intend to assert a dual basis for registration, this should be indicated in an examiner's amendment and the mark should be approved for publication or issuance of a registration on the Supplemental Register, if appropriate. See
TMEP §806.04(b)
regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis.
If the applicant wishes to perfect the §44 basis, the examining attorney cannot approve the mark for publication for opposition or registration on the Supplemental Register until the applicant files a copy of the foreign registration. Therefore, if all issues are resolved or in condition for final action, the examining attorney must suspend action pending receipt of the foreign certificate.
TMEP §1003.04.
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.
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 and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a);
TMEP §806.03(k).
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.
If a §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 Office 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. 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 had a bona fide intention to use the mark in commerce on or in connection with the goods/services since the application filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2).
See
TMEP §806.03(j)
regarding amendment of the basis after publication.
Once an applicant has filed a statement of use in a §1(b) application, the applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g);
TMEP §1109.17.
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). 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.
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 under §1(c) or §1(d) of the Trademark Act. 37 C.F.R. §2.35(b)(8). See
TMEP §§1103
,
1104
and
1109
et seq. regarding allegations of use.
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 applicant may not amend a §44 application to claim a §1(a) basis unless the applicant (1) verifies that the mark has been in use in commerce since 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)(i), 2.34(a)(1)(ii), 2.34(a)(1)(iii), and 2.59(a); 2.71(c)(1);
TMEP §§806.01(a)
,
806.03(i)
,
903.01
,
903.02
,
903.05
and
904.09.
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.
An applicant may amend the basis from §1(b) to §44. 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 §44(d) as a basis 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.
When the applicant substitutes one basis for another, the applicant will retain the original filing date, provided that the applicant has had a continuing valid basis for registration since the application filing date. Unless there is contradictory evidence in the record, the Office will presume that there was a continuing valid basis for registration. 37 C.F.R. §2.35(b)(3).
If the applicant properly asserts a §44(d) basis during the six-month priority period, the applicant will retain the priority filing date, no matter which basis for registration is established, provided that the applicant has had a continuing valid basis for registration. 37 C.F.R. §2.35(b)(3) and (4);
TMEP §806.02(f).
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 Office will not refund the filing fee. See
TMEP §205.
An applicant who adds or substitutes use in commerce under §1(a) as a basis must verify that the mark has been in use in commerce on or in connection with the goods/services covered by the §1(a) basis since 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 had a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application since 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).
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 amendments to 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 allowance, which is not permitted under §1(d) of the Act.
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.
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 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. If the Director grants the petition and the examining attorney accepts the §44 basis, the examining attorney will (1) ensure that the §1(b) basis is deleted from the Trademark Reporting and Monitoring ("TRAM") System; and (2) 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 basis, the examining attorney will ensure that the §1(b) basis is deleted from TRAM; and (2) 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 and retain the §1(b) basis. If the Director grants the petition and the examining attorney accepts the §44 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 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); or
(3) Applicant may add §44 and request that the §1(b) basis be deleted if the examining attorney accepts the §44 basis. If the Director grants the petition and the examining attorney accepts the §44 basis, the examining attorney will (1) ensure that the §1(b) basis is deleted from TRAM; and (2) 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 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).
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 a §44 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 delete the §1(b) basis. The applicant has three options:
(1) The applicant may delete the §1(b) basis and substitute §44. If the petition is granted, the notice of allowance will be cancelled, the §1(b) basis will be deleted from the application, and the application will be sent to the examining attorney for examination of the §44 basis. If the examining attorney accepts the §44 basis, the mark will be republished and, if registration of the mark is not 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 and perfect the §1(b) basis by filing a statement of use with the petition. If the petition is granted, the examining attorney will examine the §44 basis during examination of the statement of use; or
(3) An applicant does not have the option of adding §44 and maintaining a dual basis. However, the applicant may add a §44 basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44 basis. If the Director grants the petition and the examining attorney accepts the §44 basis, the examining attorney will (1) ensure that the §1(b) basis is deleted from TRAM; and (2) 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 basis, the §1(b) basis will be maintained. The examining attorney will call the applicant and notify the applicant that the §44 basis is unacceptable and that an Office action will issue during examination of the statement of use. An appropriate note to the file must be made. The application will then await the filing of the statement of use.
The Director will not grant a petition to add §44 and retain the §1(b) basis unless a statement of use is filed with the petition, because examination of the §44 basis could substantially delay prosecution of the application. If the examining attorney found the §44 basis unacceptable, the notice of allowance would have to be cancelled in order to issue an Office action. The notice of allowance cannot be cancelled or reissued 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.
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 a request to divide out the goods/services to which the amendment applies. See
TMEP §§1110
et seq. regarding requests to divide.
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 and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a). See
TMEP §1904.09
regarding transformation.
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). When the applicant deletes a basis, the applicant must also delete any goods or services covered solely by the deleted basis. 37 C.F.R. §2.35(b)(7).
To expedite processing, the Office recommends that a request to delete a §1(b) basis from a multi-basis application be filed through TEAS, at http://www.uspto.gov/teas/index.html.
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. 37 C.F.R. §2.35(b)(1). No petition is required to delete the §1(b) basis after publication. To expedite processing, the Office recommends that any request to delete a §1(b) basis be filed through TEAS, at http://www.uspto.gov/teas/index.html.
If a notice of allowance has issued, the request must be filed within six months of the mailing date of the notice of allowance, or within a previously-granted extension of time to file a statement of use. 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 directed to the Photocomposition Coordinators in the Publication and Issue Section of the Office. They will delete the §1(b) basis, and issue the registration.
If an applicant properly claims a §44(d) basis 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).
When a §44(d) applicant elects not to proceed to registration under §44(e), the Office does not delete the §44(d) filing basis from the TRAM database. Both the §44(d) filing basis 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 Office 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 USPTO.
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 Office records for conflicting marks.
If an application claims more than one basis, the examining attorney must ensure that the file 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.
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
TMEP §807.09
regarding "drawings" in applications for registration of non-visual marks. The drawing is used to reproduce the mark in the Trademark Official Gazette and on the registration certificate.
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
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.
An application must be limited to only one mark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.52.
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.).
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. However, if an applicant submits a separate drawing page (or a digitized image of a separate drawing page in a TEAS 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). See Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004).
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.
For example, when the drawing consists of a photocopy of the specimen showing spatially separate elements, the examining attorney must determine whether this constitutes more than one 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).
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.
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).
The drawing allows the Office 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. The drawing should 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.
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 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).
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. 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.
The drawing must be in black and white.
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.
The Office 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 Office's website at http://www.uspto.gov/teas/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 (2004).
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; and (2) require that the applicant delete the standard character claim from the record. In addition, the examining attorney must ensure that the appropriate mark drawing code is entered into the TRAM database. See
TMEP §807.18
concerning mark drawing codes.
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 non-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 non-material. 37 C.F.R. §2.72. See
TMEP §§807.14
et seq. regarding material alteration.
If the applicant submits a claim of standard character format, 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 special form 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).
The examining attorney may delete the standard character claim by examiner's amendment after obtaining approval from the applicant or applicant's attorney. 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.
In a §44 application, if the applicant claims standard characters, the examining attorney must ensure that the foreign registration also claims standard characters. 37 C.F.R. §2.51(c);
TMEP §807.12(b).
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. The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the 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 to the File, if there are no other outstanding issues.
The examining attorney may delete the standard character claim by examiner's amendment after obtaining approval from the applicant or applicant's attorney. 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.
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 all 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 shall treat the drawing of the mark as a standard character drawing, and ensure that a standard character claim is entered into the record.
If the application is ready to be published for opposition, the examining attorney should enter the standard character claim by 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 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 will indicate whether there is a standard character claim in the international registration. If there is no standard character claim in the international registration, the applicant cannot add a standard character claim.
Section 1 Applications. Where it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, then 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 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).
Section 66(a) Applications. In a §66(a) application, the request for extension of protection forwarded by the IB will indicate whether there is a standard character claim in the international registration. If there is no standard character claim in the international registration, the applicant cannot add a standard character claim.
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.
For applications filed before November 2, 2003, that are still pending after November 2, 2003, the applicant has the option of submitting a typed drawing in all uppercase letters under the old rules, or a standard character drawing under the new rules. If the drawing of record does not meet the requirements for a typed drawing under the old rules (e.g., the drawing shows the mark in both upper and lower case letters), the examining attorney must require a new drawing. In response, the applicant may submit either (1) a claim of standard characters to convert the drawing to a standard character drawing, or (2) a new drawing in all uppercase letters to comply with the old rules for typed drawings. The examining attorney may enter the standard character claim by an examiner's amendment, if appropriate.
If the typed drawing in the application is acceptable under the old rules, no action by the examining attorney is required regarding the drawing. However, the applicant may voluntarily amend the typed drawing to a standard character drawing by submitting a claim of standard characters. Voluntary amendments are not permitted in the period between approval for publication and issuance of a registration or notice of allowance, or in the period between approval for registration and issuance of a registration.
If the applicant amends to a standard character drawing, either voluntarily or in response to the examining attorney's requirement, the examining attorney must have Office records updated to change the mark drawing code to 4. See
TMEP §807.18
concerning mark drawing codes. When amending a typed drawing to a standard character drawing, the examining attorney must also create a new drawing page, with the caption "DRAWING" at the top of the page, and have the new drawing page scanned.
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 must show the mark in black on a white background, unless the mark includes color.
* * * * *
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, styles of lettering, or unusual forms 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 Program Control.
Pasted material, taped material, and correction fluid is not acceptable because it does not reproduce satisfactorily.
See
TMEP §807.18
concerning mark drawing codes.
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 the 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 Oroweat Baking Co., 171 USPQ 168 (TTAB 1971) (requirement for special form drawing to register OROWEAT displayed with wheat designs in the letter "O" held improper); In re Electronic Representatives Association, 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)
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 should ensure that the mark drawing code is changed. See
TMEP §807.18
concerning mark drawing codes.
37 C.F.R. §2.52(c). TEAS drawings. A drawing filed through TEAS must meet the requirements of §2.53.
37 C.F.R. §2.53. Requirements for drawings filed through the TEAS.
The drawing must meet the requirements of §2.52. In addition, in a TEAS submission, the drawing must meet the following requirements:
(a) Standard character drawings: If an applicant is filing a standard character drawing, the applicant must enter the mark in the appropriate field or attach a digitized image of the mark to the TEAS submission that meets the requirements of paragraph (c) of this section.
(b) Special form drawings: If an applicant is filing a special form drawing, the applicant must attach a digitized image of the mark to the TEAS submission that meets the requirements of paragraph (c) of this section.
(c) Requirements for digitized image: The image must be in .jpg format and scanned at no less than 300 dots per inch and no more than 350 dots per inch with a length and width of no less than 250 pixels and no more than 944 pixels. All lines must be clean, sharp and solid, not fine or crowded, and produce a high quality image when copied.
The drawing in a TEAS application must meet the requirements of 37 C.F.R. §§2.52 and 2.53.
The Office 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.
If an applicant is filing a standard character drawing, the applicant must either enter the mark in the appropriate data field or attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c). The applicant must also submit a standard character claim. 37 C.F.R. §2.52(a)(1);
TMEP §807.03(a).
If a standard character drawing 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 Office's standard character set. See
TMEP §807.03(b)
regarding the standard character set.
The standard character set includes two lists: supported characters and unsupported characters. An applicant may submit a standard character claim for a mark that includes characters in the "unsupported character" list; however, TEAS currently cannot create the required .jpg image file. Therefore, if any of the characters in the mark are not in the "supported character" list, the applicant must: (1) attach a digitized image that meets the requirements of 37 C.F.R. §2.53(c), (2) check the box on the form to claim that the mark consists of standard characters, and (3) enter the standard character statement by checking the appropriate box. In this situation, the examining attorney will determine whether the claim to standard characters is appropriate.
If all the characters in the mark are in the "supported character" list, the Office 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 Office has created the image. If the Office created the digitized image, the examining attorney need not check the standard character drawing against the standard character set during examination.
If the Office did not create the digitized image, the examining attorney must check the standard characters in the drawing against the standard character set. If the characters are not in the set, the examining attorney must process the drawing as a special form drawing, require the applicant to delete the standard character claim, and ensure that the mark drawing code is changed. See
TMEP §807.18
concerning mark drawing codes.
As noted in
TMEP §807.05(a)
, when an applicant is filing a standard character drawing, the applicant must either enter the mark in the appropriate data field or attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c).
If the applicant enters a mark that exceeds 19 characters into the standard character word mark field, the USPTO's automated system will automatically break the mark, so that it fits into the Official Gazette; however, no break will be made in the middle of a recognized word. If the applicant has a preference as to where the mark will be broken, the applicant must 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 mark is in special form, the applicant must attach to the electronic submission a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c). See
TMEP §807.05(c).
The image must be in .jpg format; scanned at no less than 300 dots per inch and no more than 350 dots per inch. 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 drawings 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 Office'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 Office, examining attorneys and legal instruments examiners should view the mark on the Publication Review program available on the Office's internal computer network.
Where the mark is depicted in black and white, the image must include only the colors 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 should 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.
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).
The drawing must meet the requirements of 37 C.F.R. §§2.52 and 2.54.
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 Office 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 Office'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).
Standard Character Drawings
Because all standard character drawings (see
TMEP §807.03)
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 should view the mark on the Publication Review program available on the Office's internal computer network. If the mark is not legible, the examining attorney should require a new drawing that meets the requirements of 37 C.F.R. §§2.52 and 2.54.
Typed Drawings In Applications Filed Before November 2, 2003
If the mark on a typed drawing in an application filed before November 2, 2003 (see
TMEP §807.03(i))
, exceeds the width of a column in the Official Gazette (approximately 18 characters), the USPTO's automated system will automatically break the mark, so that it fits into the Official Gazette. If the applicant has a preference as to where the mark will be broken, the applicant must submit a special form drawing.
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. The drawing might appear in the heading or in 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.
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 controls for purposes of determining what the mark is. See
TMEP §807.01.
37 C.F.R. §2.52(b)(1). Color marks. 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 an applicant uses color in a mark, the applicant generally has the option of applying to register the mark either in black and white or in the color(s) shown on the specimen. If the applicant applies to register the mark in black and white, the applicant must submit a black and white drawing. If the applicant applies to register the mark in color, the applicant must submit a color drawing.
See
TMEP §§1202.05
et seq. regarding the registration of marks that consist solely of one or more colors used on particular objects.
For applications filed on or after November 2, 2003, the Office 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).
Color drawings must be accompanied by the following: (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 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 statement describing the color(s).
If an applicant submits a color drawing, the applicant must claim color as a feature of the mark. 37 C.F.R. §2.52(b)(1). A properly worded color claim would read as follows:
The color(s) <name the color(s)> are claimed as a feature of the mark.
If the color claim is unclear or ambiguous, the examining attorney must require clarification.
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.
If an applicant submits a color drawing, the applicant must name the colors and describe where they appear on the mark. 37 C.F.R. §2.52(b)(1). A properly worded description would read as follows:
The color(s) <name the color(s)> appear in <specify portion of mark on which color(s) appear>.
If the description is unclear or ambiguous, the examining attorney must require clarification.
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.
The applicant may supplement the required written description of the color contained in a mark with a reference to a commercial color identification system. The Office does not endorse or recommend any one commercial color identification system. The written description of the mark must include a generic description of the color, in addition to the reference to the commercial color identification system.
See
TMEP §1202.05(e)
for additional information regarding the requirement for a written explanation of a mark consisting solely of color.
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 color claim naming the color(s) that are a feature of the mark, and a separate statement describing where the color(s) appear on the mark.
In an application under §1 or §44, 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.
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).
Therefore, if the mark in the international registration is in color, the applicant may not substitute a black and white drawing. The applicant must submit a color claim.
Where the color shown in the drawing page in a paper application, or in the digitized image of the drawing page 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), then 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.
If an applicant submits a black and white drawing that is lined for color (see
TMEP §808.01(d))
, or if the applicant submits a black and white drawing with an application that includes a color claim, the examining attorney must require that applicant submit a color drawing, a color claim naming the color(s) that are a feature of the mark, and a separate statement describing where the color(s) 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.
The Office now accepts drawings that contain the color gray, or stippling that produces gray tones. Unless an applicant claims the color gray, color will not be considered to be a feature of the mark and the drawing will be processed as a black and white drawing. If the applicant claims the color gray, the drawing will be processed like any other color drawing (see
TMEP §§807.07(a)
through (c)), and the color claim will be printed in the Official Gazette and on the certificate of registration.
If the drawing contains the color gray, or stippling that produces gray tones, and the record is unclear as to whether applicant is claiming color, the examining attorney must require the applicant to clarify the ambiguity. Even if the applicant is not claiming color, the Office will accept a drawing that contains gray tones or stippling. A mark with gray tones or stippling will not be considered a color drawing unless the applicant claims color.
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(d)
regarding stippling statements.
In applications filed before November 2, 2003, if the drawing of record does not meet the requirements for claiming color under the old rules, the examining attorney must require a new drawing. In response, the applicant may submit either (1) a black and white drawing that meets the requirements for claiming color under the old rules, or (2) a color drawing with the required statements for claiming color under the new rules (
TMEP §807.07(a)).
If the drawing in an application filed before November 2, 2003 is acceptable under the old rules, no action by the examining attorney is required. However, 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 new rules, with the requisite color claim and a separate description of the color(s) in the mark. Voluntary amendments are not permitted in the period between approval for publication and issuance of a registration or notice of allowance, or in the period between approval for registration and issuance of the registration.
Similarly, 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(d).
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, indicating that the matter shown by the dotted 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).
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 applicant's mark consists solely of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant must submit a detailed written description of the mark that clearly explains the sound or scent. 37 C.F.R. §2.52(e).
In a paper application, the applicant should submit a page that indicates "NO DRAWING" in the place where the mark would otherwise appear. Likewise, in a TEAS application, the applicant should create a digitized image in .jpg format that meets the requirements of 37 C.F.R. §2.53(c) (see
TMEP §807.05(c))
, with the indication "NO DRAWING" in the place where the mark would otherwise appear. Then, in the description of the mark field (under "Additional Statements" in the TEAS form), the applicant must set forth a detailed written description of the mark.
Non-visual marks are coded under mark drawing code 6 in the automated search system.
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.
If the mark comprises music or words set to music, the applicant may submit the musical score for the record. In a TEAS application, the musical score should be submitted in .wav format. However, a .wav file cannot be sent as an attachment to a TEAS filing, because all TEAS attachments must be in .jpg format. Therefore, the Office has developed a special procedure for handling .wav files. The .wav file must be sent after the application is filed, as an attachment to an e-mail message directed to PrinTEAS@uspto.gov, with clear instructions that the .wav file should be associated with "the application filed under Serial No. <specify>." See
TMEP §1202.15
regarding sound 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 the mark in three dimensions. In re Schaefer Marine, Inc., 223 USPQ 170, 175 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 must 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.
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).
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.
(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.
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 or 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 or 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).
Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols "TM" or "SM," the registration notice Ò, the top level domain indicator ".com," or informational matter such as net weight or contents) need not be shown on the drawing. See
TMEP §807.14(a)
regarding deletion of non-distinctive matter.
When the mark on the drawing does not agree with the mark on the specimen, the applicant cannot amend the drawing if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §§2.72(a) and (b);
TMEP §§807.14
et seq.
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.
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 §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.
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.
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. 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.
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 "mutilation." This term indicates that essential and integral subject matter is missing from the drawing. An incomplete mark may not be registered.
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.
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 In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999); In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989); In re Sperouleas, 227 USPQ 166 (TTAB 1985); In re Volante International Holdings, 196 USPQ 188 (TTAB 1977); In re Library Restaurant, Inc., 194 USPQ 446 (TTAB 1977); In re Semans, 193 USPQ 727 (TTAB 1976); In re Mango Records, 189 USPQ 126 (TTAB 1975).
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 the mark is refused registration 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
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).
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 certificate 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 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).
A compound word mark may be presented as one unitary term (e.g., BOOKCHOICE) or as two words (e.g., BOOK CHOICE) on the drawing. The examining attorney should determine whether the mark may be presented as separate words based on its commercial impression, taking into account any specimen(s) of record.
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, (for example, SUPERINSE, not SUPE RINSE or SUPER RINSE).
See
TMEP §§1213.05(a)
et seq. regarding disclaimers in these types of marks.
37 C.F.R. §2.72.
(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.
(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.
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 (2004), 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....
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).
Similarly, after registration, a registrant cannot amend a mark in a registered extension of protection under §7 of the Trademark Act. TMEP§§1609.01(a) and 1609.02.
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 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 International Service Association v. Life-Code Systems, Inc., 220 USPQ 740,743-44 (TTAB 1983). This test applies to an amendment of the description of a mark as well as to 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, and
TMEP §§1215.08
et seq. regarding material alteration in marks comprised, in whole or in part, of domain names.
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, the deletion of nondistinctive matter may 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 commercial impression. In some circumstances, descriptive or other types of 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 (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 ® should 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.
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, 1527 (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.").
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.
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 expressly 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 typographical error" that materially altered mark on original drawing page).
If an applicant submits a separate drawing page (or a digitized image of 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. The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing page. See
TMEP §§202.01
and
807.01.
Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004); In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001).
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 International Corp., 25 USPQ2d 1159 (TTAB 1990) (mark comprised of design of blue star found to be material alteration of typed words DESIGN OF BLUE STAR).
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 International 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 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 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 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 International Service Association v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983) (amendment inverting the design portion of the mark held not a material alteration).
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 cancelled and the substitute drawing substituted. The examining attorney should ensure that the automated records of the Office reflect the amended mark, and have the TRAM database corrected, if necessary. The original drawing remains in the record.
The examining attorney should also ensure that the mark drawing code is changed, if necessary. See
TMEP §807.18
concerning mark drawing codes.
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 Office 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, with the caption "DRAWING" at the top of the page, and have the new drawing page scanned. The examining attorney must also ensure that the word mark field in TRAM is corrected.
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 should ensure that the drawing is scanned, and that TRAM is corrected, if necessary.
The examining attorney should also ensure that the mark drawing code is changed, if necessary. See
TMEP §807.18
concerning mark drawing codes.
If an applicant submits an amendment to the drawing and the examining attorney determines that the amendment is unacceptable, the examining attorney should issue an action refusing to accept the amendment and advising the applicant that it will not be entered. The examining attorney should ensure that the unacceptable amendment has not been entered into the automated records of the Office.
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 should issue a final refusal of the amendment, if the application is otherwise in condition for final action.
Standard Character Drawings. Standard character drawings are coded in the Office'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 no longer 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.
37 C.F.R. §2.26. Use of old drawing in new application. In an application filed in place of an abandoned or rejected application, or in an application for reregistration (§2.158), a new complete application is required, but the old drawing, if suitable, may be used. The application must be accompanied by a request for the transfer of the drawing, and by a permanent photographic copy, or an order for such copy, of the drawing to be placed in the original file. A drawing so transferred, or to be transferred, cannot be amended.
An old drawing cannot be transferred to a TEAS application.
In a paper application, a drawing from an abandoned application may be transferred to and used in a new application, if the file has not been destroyed. A drawing from a pending application may be transferred only if there is evidence in the application file that the application will become abandoned before the new application will mature into registration.
In a paper application, a drawing from an expired or cancelled registration may be transferred to and used in a new application, if the registration file has not been destroyed.
Transfers of drawings from files of active registrations are not permitted.
Transfers may be made only if the original mark is identical to the mark in the new application and if the drawing meets all requirements of 37 C.F.R. §§2.51 and 2.52.
To avoid the erroneous denial of a filing date, it is advisable at the time of filing to include a drawing page and, in the place where the mark would otherwise appear, a notation that the applicant requests transfer of a drawing under 37 C.F.R. §2.26 and the registration number or serial number of the file from which the applicant requests that the drawing be transferred.
The USPTO destroys abandoned paper application files and cancelled or expired paper registration files two years after they become abandoned, cancelled or expired. See
TMEP §§109.02
and
718.07.
Therefore, an applicant should not request transfer of a drawing from a file that has been abandoned, cancelled or expired for more than two years. If an applicant does request the transfer of a drawing from a file that has been destroyed, the application will be denied a filing date for failure to comply with 37 C.F.R. §2.21(a)(3) (clear drawing of the mark required for receipt of a filing date).
37 C.F.R. §2.37. Description of mark. A description of the mark may be included in the application and must be included if required by the trademark examining attorney.
37 C.F.R. §2.52(b)(5). Description of mark. If a drawing cannot adequately depict all significant features of the mark, the applicant must also describe the mark.
The examining attorney should require a description of the mark if:
• a significant element of a mark is unclear or ambiguous;
• the mark is three-dimensional, or a configuration of the goods or packaging (
TMEP §§807.10
and
1202.02(d))
;
• 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(d))
;
• the mark includes color (
TMEP §§807.07(a)
and
1202.05(e))
;
• the mark includes motion (
TMEP §807.11)
; or
• the mark is a sound, scent or non-visual mark.
The applicant may not amend the description of the mark if the amendment is a material alteration of the mark on the drawing or description filed with the original application. 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.
If a mark is composed of easily recognized letters or numerals, it is not necessary to include a description of the letters or numerals, even if they are presented in an unusual or stylized form. "Describing" letters or numerals merely as being "in stylized form" or as being a "fanciful representation" adds nothing that cannot be observed directly. On the other hand, if letters or numerals of a mark are displayed in a manner that makes it difficult to ascertain what they are, then the examining attorney should require a description.
Designs or figurative elements generally do not require a description. Objects like trees, leaves and flowers, animals and people, buildings and scenery, manufactured products, etc., usually can be identified without explanation.
Marks with designs of symbols that are not well known should be described. Examples are symbols used in astrology; symbols representing mathematical, electrical or other scientific concepts; and legendary or historical symbols used to indicate ideas such as happiness, long life, etc. Designs that present an object in a way that makes it difficult to immediately identify the object should be described. Designs that represent an object that may not commonly be recognized (e.g., a representation of an electrical transformer or a geiger counter) should also be described.
Geometric designs do not have to be described.
Vague descriptions of marks, such as "a design of a two-element circle," should be avoided. Such wording does little to help explain the real nature of the design.
If it is unclear to the examining attorney whether a term in a mark has meaning in the relevant industry, the examining attorney should make an inquiry of the applicant and should also conduct independent research. If the examining attorney determines that the term is arbitrary or fanciful, this may be indicated in notes to the file. A statement that a term has no meaning should not be entered as a description of the mark. 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 to the file. 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.
Current Practice. For applications filed on or after November 2, 2003, the Office 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
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 Office'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 Office 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 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.
If a description of a mark is placed in the record, the description should state accurately what the mark comprises and should not create a misleading impression by either positive statement or omission.
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 mark is intended to convey.
The description of the mark should be concise.
All descriptions in the description of the mark field in the application record will automatically be printed in the Official Gazette and on the certificate of registration.
Accordingly, when an examining attorney determines that a description should not be printed because it is unnecessary, the examining attorney should ensure that the description is deleted from the TRAM database, and enter a note to the file that the description has been deleted. The document containing the information deleted from TRAM will remain of record for informational purposes.
If the description is unsatisfactory or harmful to be in the record, the examining attorney should require that the applicant delete or correct it. This may be done by examiner's amendment.
A statement that a term in a mark has no meaning in the relevant industry should not be printed.
TMEP §808.01(c).
See
TMEP §817
regarding preparation of an application for publication or issuance.
An application to register a mark that includes non-English wording must include a statement translating the wording. 37 C.F.R. §2.32(a). Similarly, an application for a mark that comprises non-Latin characters must include a statement transliterating the characters. For this purpose, a transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. A transliteration is required for a mark that comprises non-Latin characters even if the wording has no English translation. An example of a statement translating and transliterating a word in non-Latin characters is the following:
The non-Latin characters in the mark transliterate to "Asahi," and this means "Rising Sun."
Knowledge of the meaning of non-English words in marks is necessary for proper examination, because a non-English term is regarded in the same way as its English equivalent in determining descriptiveness, requiring disclaimer, and citing marks under §2(d) of the Act (see
TMEP §§1207.01(b)(vi)
and
1209.03(g)).
Therefore, if there is no translation in the record, the examining attorney should ascertain the meaning of non-English wording through sources such as foreign language dictionaries before searching the mark. The examining attorney may also consult the Translations Branch of the USPTO.
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 should require the applicant to submit a statement of translation/transliteration, under 37 C.F.R. §2.61(b). The examining attorney may propose a translation, if appropriate. If the applicant submits a translation that is unacceptable to the examining attorney, the examining attorney should require amendment. The translation can be amended by examiner's amendment.
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 wording in the mark and that reflects the commercial impression made by the entire phrase. See
TMEP §809.01
regarding equivalency in translation.
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."
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 to USPTO 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 current dictionaries or news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
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 Office. See
TMEP §809.02
regarding the printing of the translation/transliteration statement in the Official Gazette and on the registration certificate.
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).
(2) "Mais Oui" - The English equivalent of the phrase "mais oui" is "why, certainly," or "why, of course," and not "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 Translations Branch of the Office.
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), and
TMEP §1209.03(g)
regarding the doctrine of foreign equivalents in determining questions of descriptiveness under 15 U.S.C. §1052(e)(1).
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.
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 §809.01)
should be printed. This normally means only one translation, because the existence of a variety of alternative translations or general explanations usually indicates a lack of a clearly recognized equivalent meaning.
If an applicant submits a translation that is too verbose or vague to be appropriate for printing in the Official Gazette and on the registration certificate, the examining attorney must indicate which translation, if any, is to be printed. The transliteration of non-Latin characters, if any, should be included in the statement to be printed. If necessary, the examining attorney should rewrite the statement and ensure that the TRAM database is updated accordingly. Language such as the following should be used for printing purposes whenever possible:
"The English translation of __________ in the mark is __________," or "The non-Latin characters in the mark transliterate to __________ and this means __________ in English."
All information in the translation/transliteration fields in the application record will automatically be printed in the Official Gazette and on the certificate of registration. Accordingly, when an examining attorney determines that a translation or transliteration should be printed, the examining attorney should ensure that the translation or transliteration is entered into the TRAM database. When an examining attorney determines that a translation or transliteration should not be printed because it is unnecessary, the examining attorney should ensure that the translation or transliteration is deleted from the TRAM database, and enter a note to the file 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.
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) and (b)(1).
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 whether the application (or the amendment adding classes to an existing application) is filed through TEAS or on paper. It is less expensive to file through TEAS. 37 C.F.R. §2.6(a)(1). See notice at 70 Fed. Reg. 2952 (Jan. 19, 2005). The current fee schedule is available on the USPTO website at http://www.uspto.gov.
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. Applicant must pay the higher fee if the applicant files an amendment adding class(es) on paper or authorizes an examining attorney to add class(es) by examiner's amendment.
See
TMEP §§405
et seq. regarding payment of fees to the USPTO. See also
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 Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (April 1, 2004) ("Common Regs."). The examining attorney should not require additional fees during examination.
A filing fee is required for each class in a multi-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 legal instruments examiner ("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 by telephone to secure a written authorization to charge fees to a credit card or deposit account by fax. If this is successful, 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
and
1403.02(c)
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 should issue a written Office action noting the deficiency and requiring either payment of the fees or deletion of classes. In the action, 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 action.
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.
If the entire record indicates a good faith attempt to pay all relevant fees, 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 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 Regs. The examining attorney should not require additional fees during examination. The classification in a §66(a) application cannot be changed. See
TMEP §1401.03(d)
for further information.
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 take the file 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.
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 §604
for further information. The USPTO encourages applicants who do not reside in the United States to designate domestic representatives. To expedite processing, the Office recommends that designations of domestic representative be filed through TEAS, at http://www.uspto.gov/teas/index.html.
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.
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 should ensure that the claim of ownership is deleted from the TRAM database, and enter a note to the file 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.
If the applicant owns numerous prior registrations, it is not necessary to list them all. The applicant should 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), e.g., "the applicant is the owner of Reg. Nos. _____________ and others."
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 as a reference 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 as a reference, 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.
The examining attorney should check the automated records of the Assignment Services Division of the Office 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 Division. 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 as a reference under §2(d) even though it is owned by the applicant. If so, the applicant must: (1) state for the record that the documents have been recorded in the Assignment Services Division for a registration based on an application under §1 or §44 of the Trademark Act, or with the IB for a registered extension of protection of an international registration under §69 of the Trademark Act; (2) submit copies of documents evidencing the chain of title; or (3) submit an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates). See
TMEP §§502
et seq.
See
TMEP §1206
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.
If a mark comprises a name or likeness that could reasonably be perceived as that of a living individual, the examining attorney must inquire whether the name or likeness is that of a specific living individual and must advise the applicant that, if so, the individual's written consent to register the name or likeness must be submitted. The purpose of the inquiry is to avoid the unauthorized registration of an individual's name or likeness. Consent is required for registration of a pseudonym, stage name or nickname if the name identifies a specific living individual. On the other hand, the examining attorney should not make an inquiry when it is clear that the matter identifies a fictitious character (e.g., a name or likeness that is obviously that of a cartoon character).
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 should be printed in the Official Gazette and on the registration certificate. The statement should read as follows:
"__________ does not identify a living individual."
If a mark comprises the name or likeness of a living individual and consent to register is of record, the following statement should be printed in the Official Gazette and on the registration certificate:
"__________ identifies a living individual whose consent is of record."
The individual does not have to express his or her consent in this exact terminology. However, once consent is in the record, the examining attorney should enter the exact statement noted above in the record. A negative statement (advising that a name or likeness that could reasonably be considered to identify a specific living individual does not do so) should also be entered.
The statement of consent to registration of the name or likeness of a living individual must be personally signed by the individual whose name or likeness appears in the mark.
If the applicant is an individual and the mark is comprised, in whole or in part, of his or her name or likeness, consent to register is implicit if the individual whose name or likeness appears in the mark signs the application, either personally or through an authorized signatory. No inquiry should be made and no statement should be entered. See
TMEP §1206.03(b)
regarding implied consent.
Often, the applicant is a corporation whose corporate name includes a name that appears to be that of an individual, and the mark includes that name as well. For example, where the applicant is John Smith, Inc. and the mark is JOHN SMITH, consent to register the name "John Smith" must be obtained from the individual. If, however, the application is signed by the person whose name appears in the mark, either personally or through an authorized signatory, consent to register is implied. The examining attorney should make no further inquiry in that case. The examining attorney must ensure that the consent statement noted above is entered into the TRAM database.
If an applicant submits an unsolicited statement that a particular name or portrait does not identify a living individual, the statement will be printed in the Official Gazette and on the registration certificate only if an inquiry on this issue would have been necessary, i.e., if the name or portrait might reasonably be perceived as that of a specific living individual.
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 should ensure that the statement is deleted from the database, and enter a note to the file 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.
Sometimes it is necessary for the examining attorney to request additional information from an applicant in order to examine the application properly. In re Air Products and Chemicals, Inc., 192 USPQ 157 (TTAB 1976); 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 refusal); 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 refusal); 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).
The examining attorney may request literature, exhibits, and general information concerning circumstances surrounding the mark and, 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.
If applicant wants to provide information from its website in response to the examining attorney's request for information, applicant should print out the information and supply it to the examining attorney. 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 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 a file is not required. Sometimes an explanation will suffice, or material may be shown to the examining attorney without formal filing. Usually a way can be found to give the necessary information to the examining attorney without imposing an undue burden on the applicant.
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.
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).
See
TMEP §§816
et seq. regarding amendments to the 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).
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(a) or §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 may not seek registration on the Supplemental Register until the applicant has timely filed 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 meets minimum filing requirements. (See 37 C.F.R. §2.76(e) and
TMEP §1104.01
and
37
C.F.R. §2.88(e) and
TMEP §1109.01
regarding the minimum filing requirements for a statement of use.) When the applicant amends to the Supplemental Register after filing an acceptable amendment to allege use or statement of use, the effective filing date of the application is the date on which the applicant filed the amendment to allege use or statement of use. 37 C.F.R. §2.75(b). See
TMEP §§816.02
and
1102.03.
If an applicant submits a §1(b) application requesting registration on the Supplemental Register for which no allegation of use has been filed, the examining attorney must refuse registration under §23 of the Act 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. As noted above, the effective filing date of the application will be the date on which the applicant filed the allegation of use.
If the application is based solely on §44, the applicant may seek registration on the Supplemental Register without alleging lawful use in commerce and without alleging 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).
Upon approval of the mark for registration, the examining attorney will indicate in the record that the mark has been "Approved 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.
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.
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).
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."
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 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(d) and 2.75(c).
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 amendment to allege use under §1(c) or statement of use under §1(d) that meets minimum filing requirements. 37 C.F.R. §2.47(d). In such a case, the effective filing date of the application is the date on which the applicant met the minimum filing requirements for the amendment to allege use or statement of use. 37 C.F.R. §2.75(b);
TMEP §1102.03.
See 37 C.F.R. §2.76(e) and
TMEP §1104.01
and
37
C.F.R. §2.88(e) and
TMEP §1109.01
regarding the minimum filing requirements for a statement of use. 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.
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, even if the original application for the Principal Register was filed before November 16, 1989. However, if the application was 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 §§206
et seq. regarding effective filing date.
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.
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, 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 under §2(f) and, in the alternative, on the Supplemental Register. See
TMEP §1212.02(c).
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. See
TMEP §714.05(a)(i).
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 of the Trademark Act, 15 U.S.C. §1091. See
TMEP §714.05(a)(i).
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 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).
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 Office 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, in such a circumstance, file a new application requesting registration on the Supplemental Register.
When a case is ready to be approved for publication or registration, the examining attorney must carefully review the application file 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 (
TMEP §808.01(d))
;
(4) Consent to register a name or portrait and statements that a name or portrait does not identify a living individual (
TMEP §813)
;
(5) Translations of non-English wording and transliterations of non-Latin characters in the mark (
TMEP §809.02)
;
(6) Ownership of related United States registrations (
TMEP §812)
;
(7) Description of mark statements (
TMEP §808)
; and
(8) Use in another form (
TMEP §903.08).
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 should ensure that information about these items that should not be printed (e.g., claims of ownership of unrelated U.S. 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. Images of the documents containing the information deleted from TRAM will remain of record for informational purposes. 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), then the examining attorney should enter a note to the file detailing the information that will not be entered into the database.
In addition, the examining attorney should 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;
(9) In a multi-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 should ensure that the necessary correction(s) are made.
If there has been an assignment, the examining attorney should check the records of the Assignment Services Division of the Office 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).
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 partnership, the names of the applicant's general partners and their citizenship (or state or country of incorporation or organization) (37 C.F.R. §2.32(a)(3)(iii);
TMEP §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 has adopted and is using the mark 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)
;
(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 appropriate (37 C.F.R. §2.37 and 2.52(b)(5);
TMEP §§808
et seq.);
(r) if the mark has 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)
;
(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 §604)
;
(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) 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, in a §44(e) application (15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii);
TMEP §§1004.01
et seq.); and
(6) one specimen for each class, in a §1(a) application (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
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 (see 15 U.S.C. §1051;
TMEP §1201)
;
(2) the subject matter for which registration is sought does not function as a mark (see 15 U.S.C. §§1051, 1052, 1053 and 1127) because, for example, the proposed mark:
(a) is used solely as a trade name (see
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 (see
TMEP §§1202.03
et seq.);
(e) is the generic name for the goods or services (
TMEP §§1209.01(c)
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 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)
;
(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.
