Chapter 100 - General Information
101 Trademark Statute and
Rules
102 United States Patent and
Trademark Office World Wide Web Page
103 Trademark Forms
104 Trademark Searching
105 General Information
Booklet Concerning Trademarks
106 The Official Gazette
107 Trademark Manuals
108 Status Inquiries
108.01 Internet Information
108.02 Personal Telephone Assistance
108.03 Due Diligence: Duty to Monitor
Status
109 Access to Files
109.01 Electronic Image Files
109.02 Paper Files
109.03 Making Copies of Materials in
Files
110 Decisions Available to
the Public
111 Requests for Copies of
Trademark Documents
112 Patent and Trademark
Depository Libraries
Chapter 200 - Application Filing Date
201 What Constitutes Filing
Date
201.01 Effective Filing Date Controls
for Purposes of Determining Priority for Publication or Issue
201.02 Constructive Use Priority
202 Requirements for
Receiving a Filing Date
202.01 Clear Drawing of the Mark
202.02 Listing of Recognizable Goods
or Services
202.03 Filing Fee for At Least One
Class of Goods or Services
202.03(a) Fee Payment Refused or Charged
Back By Financial Institution
202.03(a)(i) Processing Fee for Payment
Refused or Charged Back By Financial Institution
203 Review for Compliance
With Minimum Requirements
204 Defective or Informal
Applications
204.01 Filing Date Cancelled if
Minimum Filing Requirements not Met
204.02 Resubmission of Defective
Papers
204.03 Examining Attorney’s Handling
of Applications That Are Erroneously Accorded a Filing Date
205 Filing Date Is Not
Normally Changed
206 Effective Filing Date
206.01 Amendment of §1(b) Application
from Principal Register to Supplemental Register upon Filing of Allegation of
Use
206.02 Application Claiming Priority
under §44(d) or §67
206.03 Applications Filed Before
November 16, 1989, That Are Amended to the Supplemental Register on or After
November 16, 1989
Chapter 300 - Filing and Receipt of Documents
301 Trademark Electronic
Application System
302 Trademark Correspondence
and Signature Requirements - In General
302.01 Original Documents Generally
Not Required
302.02 Multiple Copies of Papers
Should Not Be Filed
302.03 Identifying the Nature of
Papers Filed
302.03(a) Correspondence Pertaining to
Trademark Applications
302.03(b) Correspondence Pertaining to
Trademark Registrations
303 Receipt of Documents by
the Office
303.01 Date of Receipt
303.02 Acknowledgment of Receipt
303.02(a) Electronic Mail Confirmation of
Receipt of TEAS Document
303.02(b) “Office Date” Label Showing
Receipt
303.02(c) Postcard Receipt
303.02(c)(i) Postage on Return Receipt
Postcards
304 Electronic Mail
304.01 Communications Acceptable Via
Electronic Mail
304.02 Communications Not Acceptable
Via Electronic Mail
304.03 Authorization of Electronic
Mail Communications From the USPTO
304.04 Filing Date of Electronic Mail
304.05 Certificate of Transmission by
Electronic Mail
304.06 Outgoing Electronic Mail
304.07 Signature of Electronic Mail
304.08 E-Mail Addresses for
Correspondence With the Office
304.09 Paper “Confirmation” Copies of
E-Mail Communications Should Not Be Sent to the Office
305 Mailing Documents to the
Office
305.01 Mailing Addresses
305.02 Certificate of Mailing
Procedure
305.02(a) When Certificate of Mailing
Procedure May Not Be Used
305.02(b) Mailing Requirements
305.02(c) Location and Form of Certificate
305.02(d) Wording of Certificate of Mailing
305.02(e) Effect of Certificate of Mailing
305.02(f) Correspondence Mailed Pursuant
to 37 C.F.R. §2.197 But Not Received by Office
305.02(g) Correspondence Deposited as First
Class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service
305.02(h) Certificate of Mailing
Requirements Strictly Enforced
305.03 “Express Mail”
305.04 Interruptions in U.S. Postal
Service
306 Facsimile Transmission
(Fax)
306.01 Documents That May Not Be Filed
by Facsimile Transmission
306.02 Fax Machines Designated to
Accept Relevant Trademark Documents
306.03 Effect of Filing by Fax
306.04 Procedure for Filing by Fax
306.05 Certificate of Transmission
Procedure
306.05(a) Location and Form of Certificate
of Transmission
306.05(b) Wording of Certificate of
Transmission
306.05(c) Effect of Certificate of
Transmission
306.05(d) Correspondence Transmitted by Fax
Pursuant to 37 C.F.R. §2.197 But Not Received by Office
306.06 Requirements for Certificate of
Transmission Strictly Enforced
307 Hand Delivery
308 Period Ending on
Saturday, Sunday or Federal Holiday
309 Unscheduled Closings of
the United States Patent and Trademark Office
310 Computing Period for
Response to Office Action or Notice
Chapter 400 - Processing Documents and Fees
401 Processing New
Applications
401.01 Filing Receipts
401.02 Serial Numbers and Series Codes
401.03 Data Entry
401.04 Creation of Application Files
402 Electronic Application
and Registration Files
402.01 USPTO No Longer Creates Paper
Copies of Certain Trademark-Related Documents
403 Correspondence Returned
as Undeliverable
404 Papers Not Returnable
405 Fees
405.01 Credit Cards
405.02 Checks
405.02(a) Personal Checks
405.03 Deposit Accounts
405.04 Refunds
405.05 Electronic Funds Transfer
405.06 Payments Refused or Charged
Back By Financial Institutions
Chapter 500 - Change of Ownership
501 Assignment of Marks
501.01 Assignability of Marks in
Applications and Registrations
501.01(a) Assignability of Intent-to-Use
Applications
501.01(b) Assignability of Extensions of
Protection of International Registrations to the United States
501.02 Assignments Must Be in Writing
501.03 Effect of Failure to Record
Assignment
501.04 Foreign Assignee May Designate
Domestic Representative
501.05 Assignee Stands in Place of
Applicant or Registrant
501.06 Partial Assignments
501.07 Assignment of Extension of
Protection of International Registration to the United States
502 Establishing Ownership of
Applications or Registrations
502.01 Establishing The Right to Take
Action in Application or Registration
502.02 Pending Applications - Issuance
of Registration Certificate in Name of Assignee or in Applicant’s New Name
502.02(a) Applications Under §1 and §44 of
the Trademark Act
502.02(b) Applications Under §66(a) of the
Trademark Act
502.02(c) Examining Attorney’s Action
Regarding Assignment
502.03 Issuance of New Certificate to
Assignee of Registrant
503 Recording in Assignment
Services Division
503.01 Effect of Recording a Document
503.02 Documents That the Office Will
Record
503.03 Requirements for Recording
503.03(a) Formal Requirements for Documents
503.03(b) Supporting Documents
503.03(c) English Language Requirement
503.03(d) Fee for Recording
503.03(e) Cover Sheet
503.04 Address for Submitting
Documents for Recording
503.05 Recording Procedure and
Recordation Date
503.06 Correction of Errors in Cover
Sheet or Recorded Document
503.06(a) Typographical Errors in Cover
Sheet
503.06(a)(i) Typographical Errors in Cover
Sheet That Do Not Affect Title to Application or Registration
503.06(a)(ii) Typographical Errors in Cover
Sheet That Do Affect Title to Application or Registration
503.06(b) Typographical Errors in Recorded
Assignment Document
503.06(c) Assignment or Change of Name Improperly
Filed and Recorded By Another Person Against Owner’s Application or
Registration
503.06(d) Owner Must Notify Trademark
Operation of Correction
503.06(e) Recorded Documents Not Removed
From Assignment Records
503.06(f) Petitions to Correct or “Expunge”
Assignment Records
503.07 “Indexing” Against Recorded
Document Not Permitted
503.08 Accessibility of Assignment
Records
503.08(a) Abstracts of Title
504 Automatic Updating
Ownership of Trademark Applications and Registrations in Trademark Databases
504.01 Circumstances in Which
Trademark Database Will Not be Automatically Updated
504.02 Processing Time for Automatic
Updating
504.03 Correction to Automatic Update
- Last Recorded Owner Does Not Have Clear Chain of Title
504.04 Automatic Updating Does Not
Apply to Requests for Recordation Filed Before November 2, 2003
504.05 Automatic Updating Does Not
Apply to International Applications and Registrations Under the Madrid Protocol
Chapter 600 - Attorney or Representative
601 Applicant May Be
Represented by Attorney at Law
601.01 Office Cannot Aid in Selection
of Attorney
602 Persons Who May Practice
Before Office in Trademark Matters
602.01 Powers of Attorney
602.01(a) Power of Attorney Relating to
More Than One Application or Registration
602.01(b) Associate Powers of Attorney
602.01(c) Powers of Attorney Filed After
Registration
602.02 Standards of Conduct
602.02(a) Signature and Certificate for
Correspondence filed in the United States Patent and Trademark Office
602.03 Papers Filed by Unauthorized
Persons
602.04 Revocation of Power of Attorney
602.05 Permissive Withdrawal of
Attorney of Record
603 Correspondence, With Whom
Held
603.01 Establishing the Correspondence
Address
603.01(a) Correspondence in §66(a)
Applications
603.02 Changing the Correspondence
Address
603.02(a) Changing the Correspondence
Address Before Registration
603.02(b) Changing the Correspondence
Address in Multiple Applications or Registrations
603.02(c) Changing the Correspondence
Address After Registration
603.03 Applicant Has Duty to Maintain
Current and Accurate Correspondence Address
603.04 Processing Correspondence
Signed by Someone Other Than the Applicant or the Applicant’s Designated
Attorney
603.05 Correspondence with Parties Not
Domiciled in the United States
604 Designation of Domestic
Representative by Parties Not Domiciled in the United States
Chapter 700 - Procedure for Examining Applications
701 Statutory Authority for
Examination
702 Order of Work
702.01 Order of Examination
702.02 “Special” Applications
702.03 Related Applications
702.03(a) Companion Applications
702.03(a)(i) Companion Applications for the
Same or Similar Marks
702.03(a)(ii) Companion Applications for
Different Marks
702.03(a)(iii) Companion Registrations
702.03(a)(iv) Classification and Identification in
Companion Applications That Have Registered or Been Published for Opposition
702.03(b) Conflicting Applications
703 Office Does Not Issue
Duplicate Registrations
704 Initial Examination
704.01 Initial Examination Should be
Complete
704.02 Examining Attorney’s Search
704.03 Supervisory Examining Attorney
May Indicate Action for Non-Signatory Examining Attorney
705 The Examining Attorney’s
Letter or Action
705.01 Language in Examining
Attorney’s Letter
705.02 Examining Attorneys Should Not
Volunteer Statements
705.03 Citation of Reference Marks
705.04 Reference to Matter in Printed
Publications
705.05 Citation of Decisions and
Office Publications
705.06 Reviewing and Signing of
Letters
705.07 Processing Outgoing Office
Actions
705.08 Six-Month Response Clause
706 New Matter Raised by
Examining Attorney After First Action
707 Examiner’s Amendment
707.01 Approval of Examiner’s
Amendment by Applicant or Applicant’s Attorney
707.02 Examiner’s Amendment Without
Prior Authorization by Applicant or Applicant’s Attorney
707.03 Form of the Examiner’s
Amendment
708 Priority Action
708.01 Priority Action Defined
708.02 Discussion of Issues and
Agreements
708.03 Form of the Priority Action
708.04 Refusal of Registration in
Priority Action
708.05 Combined Examiner’s Amendment/Priority
Action
709 Interviews
709.01 How Interviews are Conducted
709.02 Persons Who May Represent
Applicant in an Interview
709.03 Making Substance of Interview
of Record
709.04 Telephone Communications
709.05 Informal Submissions
709.06 Interviews Prior to Filing
Application
710 Evidence
710.01 Evidence Supporting Refusal or
Requirement
710.01(a) Evidence From Research Database
710.01(b) Internet Evidence
710.01(c) Record Must Be Complete Prior to
Appeal
710.02 Evidence Indicating No Refusal
or Requirement Necessary
710.03 Evidence of Third-Party
Registrations
711 Deadline for Response to
Office Action
711.01 Time May Run from Previous
Action
711.02 Supplemental Office Action
Resetting Response Period
712 Signature of Response to
Office Action
712.01 Persons Who Can Sign Response
712.01(a) Guidelines on Who Should Sign
Response to Office Action
712.01(a)(i) Signature By Joint Applicants
712.01(a)(ii) Signature By Partnership
712.01(a)(iii) Signature By Joint Venture
712.01(a)(iv) Signature By Corporation
712.01(a)(v) Signature By Foreign Companies and
Corporations
712.01(a)(vi) Signature By Unincorporated
Association
712.01(a)(vii) Signature By Limited Liability Company
712.02 Unsigned Response
712.03 Response
Signed by an Unauthorized Person
713 Examination of Amendments
and Responses to Office Actions
713.01 Previous Action by Different
Examining Attorney
713.02 Noting All Outstanding
Requirements
713.03 Response to Applicant’s
Arguments
714 Final Action
714.01 Not Permissible on First Action
714.02 Not Permissible on Suspension
714.03 When Final Action is
Appropriate
714.04 Form of the Final Action
714.05 Delineating New Issues
Requiring Issuance of Nonfinal Action
714.05(a) Unacceptable Amendment Proposed
By Applicant
714.05(a)(i) Amendment to Supplemental
Register or Submission of Claim of Acquired Distinctiveness
714.05(a)(ii) Amendment of Identification of
Goods and Services
714.05(b) Section 2(d) Refusal Based on
Prior-Filed Application That Has Matured Into Registration
714.05(c) Advisory Statement Cannot Serve
as Foundation for Final Refusal or Requirement
714.06 Applicant’s Recourse When Final
Action is Premature
715 Action After Issuance of
Final Action
715.01 Proper Response to Final Action
715.02 Action After Final Action
715.03 Request for Reconsideration
After Final Action
715.03(a) Examining Attorney’s Action After
Request for Reconsideration
715.03(b) Examining Attorney Must Issue New
Nonfinal Action If New Issue Presented in Request for Reconsideration
715.03(c) Time for Appeal Runs from Mailing
Date of Final Action if No New Issue Is Presented and Requirement(s) or
Refusal(s) Is Not Withdrawn
715.04 Request for Reconsideration
Filed In Conjunction With Notice of Appeal
716 Suspension of Action by
Office
716.01 Form of Suspension Notice
716.02 Circumstances Under Which
Action May Be Suspended
716.02(a) Applicant’s Petition to Cancel
Cited Registration
716.02(b) Submission of Copy of Foreign
Registration in §44(d) Application
716.02(c) Conflicting Marks in Pending
Applications
716.02(d) Inter Partes or Court
Proceeding
716.02(e) Suspension Pending Cancellation
or Expiration of Cited Registration
716.03 Applicant’s Request to Remove
Application from Suspension
716.04 Suspended Docket Checked by
Examining Attorney
716.05 Inquiry by Examining Attorney
Regarding Suspended Application
716.06 Suspension After Final Action
717 Remailing of Office
Action
717.01 Returned Office Action
717.02 Non-Receipt of Office Action
718 Abandonment
718.01 Express Abandonment by Applicant
or Applicant’s Attorney
718.02 Failure by Applicant to Take
Required Action During Statutory Period
718.02(a) Partial Abandonment
718.03 Incomplete Response
718.03(a) Holding of Abandonment for
Failure to Respond Completely
718.03(b) Granting Additional Time to
Perfect Response
718.03(c) Reconsideration of Holding of
Abandonment
718.04 Failure to File Statement of
Use
718.05 Failure to Perfect Appeal
718.06 Notice by Office of Abandonment
for Failure to Receive a Response
718.07 Ordering Abandoned Application
Files
718.08 Revival or Reinstatement of
Abandoned Application - New Search Required
719 Non-Responsive
Communications
720 Fraud Upon the Office
Chapter 800 - Application Requirements
801 Types of Applications
801.01 Single or Combined Application
801.01(a) Single (Single-Class) Application
801.01(b) Combined (Multiple-Class)
Application
801.02 Principal Register or
Supplemental Register
801.02(a) Act of 1946, Principal Register
801.02(b) Act of 1946, Supplemental
Register
802 Application Form
803 Applicant
803.01 Who May Apply
803.02 Name of Applicant
803.02(a) Individual
803.02(b) Partnership, Joint Venture or
Other “Firm”
803.02(c) Corporation and Association
803.03 Legal Entity of Applicant
803.03(a) Individual or Sole Proprietorship
803.03(b) Partnership, Joint Venture or
Other “Firm”
803.03(c) Corporation and Association
803.03(d) Joint Applicants
803.03(e) Trusts, Conservatorships and
Estates
803.03(e)(i) Business Trusts
803.03(f) Governmental Bodies and
Universities
803.03(g) Banking Institutions
803.03(h) Limited Liability Companies
803.03(i) Common Terms Designating Entity
of Foreign Applicants
803.03(j) Federally
Recognized Indian Tribe
803.04 Citizenship of Applicant
803.05 Address of Applicant
803.06 Applicant May Not Be Changed
804 Verification and
Signature
804.01 Form and Wording of
Verification in §1 or §44 Application
804.01(a) Verification, with Oath
804.01(a)(i) Verification Made in Foreign
Country
804.01(b) Declaration in Lieu of Oath
804.02 Averments Required in
Verification of Application for Registration - §1 or §44 Application
804.03 Time Between Execution and
Filing of Papers - §1 or §44 Application
804.04 Persons Authorized to Sign
Verification or Declaration
804.05 Signature of Electronically
Transmitted Documents
804.06 Verification of §66(a)
Application
805 Identification and
Classification of Goods and Services
806 Filing Basis
806.01 Requirements for Establishing a
Basis
806.01(a) Use in Commerce - §1(a)
806.01(b) Intent-to-Use - §1(b)
806.01(c) Foreign Priority - §44(d)
806.01(d) Foreign Registration — §44(e)
806.01(e) Extension of Protection of
International Registration - §66(a)
806.02 Multiple Bases
806.02(a) Procedure for Asserting More Than
One Basis
806.02(b) Applicant May File Under Both
§1(a) and §1(b) in a Single Application
806.02(c) Examination of Specimens of Use
in a Multi-Basis Application
806.02(d) Abandonment of Multi-Basis
Applications
806.02(e) Allegation of Bona Fide Intention
to Use Mark in Commerce Even if Application is Based on Both §44 and §1
806.02(f) Section 44(d) Combined With
Other Bases
806.02(g) Not Necessary to Repeat
Allegation of Bona Fide Intention to Use Mark in Commerce in Multi-Basis
Application
806.03 Amendments to Add or Substitute
a Basis
806.03(a) When Basis Can be Changed
806.03(b) Applicant May Add or Substitute a
§44(d) Basis Only Within Six-Month Priority Period
806.03(c) Amendment From §1(a) to §1(b)
806.03(d) Amendment From §44 to §1(b)
806.03(e) Allegation of Use Required to
Amend From §1(b) to §1(a)
806.03(f) Use in Commerce as of
Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44
Application
806.03(g) Amendment From §1(b) to §44
806.03(h) Effect of Substitution of Basis
on Application Filing Date
806.03(i) Verification of Amendment
Required
806.03(j) Petition to Amend Basis After
Publication - §1 or §44 Application
806.03(j)(i) Amending the Basis of a §1(b)
Application After Publication But Before Issuance of Notice of Allowance
806.03(j)(ii) Amending the Basis of a §1(b)
Application Between Issuance of Notice of Allowance and Filing of Statement of
Use
806.03(k) Basis Cannot be Changed in §66(a)
Application
806.04 Deleting a Basis
806.04(a) Deletion of §1(b) Basis After
Publication or Issuance of the Notice of Allowance
806.04(b) Retention of §44(d) Priority
Filing Date Without Perfecting §44(e) Basis
806.05 Review of Basis Prior to
Publication or Issue
807 Drawing
807.01 Drawing Must Show Only One Mark
807.02 Drawing Must Be Limited to Mark
807.03 Standard Character Drawings
807.03(a) Requirements for Standard
Character Drawings
807.03(b) List of Standard Characters
807.03(c) Drawings Containing Both a
Standard Character Claim and Designs or Other Elements
807.03(d) Changing From Special Form
Elements to Standard Characters, or the Reverse, May be a Material Alteration
807.03(e) Standard Character Drawing and
Specimen of Use
807.03(f) Standard Character Drawing and
Foreign Registration
807.03(g) Drawings in “Typed” Format With
No Standard Character Claim
807.03(h) Drawings Where The Format Is
Unclear
807.03(i) Drawings in Applications Filed
Before November 2, 2003
807.04 Special Form Drawings
807.04(a) Characteristics of Special Form
Drawings
807.04(b) When Special Form Drawing is
Required
807.05 Electronically Submitted
Drawings
807.05(a) Standard Character Drawings
Submitted Electronically
807.05(a)(i) Long Marks in Standard Character
Drawings
807.05(b) Special Form Drawings Submitted
Electronically
807.05(c) Requirements for Digitized Images
807.06 Paper Drawings
807.06(a) Type of Paper and Size of Mark
807.06(b) Long Marks in Standard Character
or Typed Drawings
807.06(c) Separate Drawing Page Preferred
807.07 Color in the Mark
807.07(a) Requirements for Color Drawings
807.07(a)(i) Color Must Be Claimed as a
Feature of the Mark
807.07(a)(ii) Applicant Must Name and Describe
Colors
807.07(b) Color Drawings Filed Without a
Color Claim
807.07(c) Color Drawings Filed With an
Incorrect Color Claim
807.07(d) Black and White Drawings and
Color Claims
807.07(e) Gray Tones in Drawings
807.07(f) Drawings in Applications Filed
Before November 2, 2003
807.08 Broken Lines to Show Placement
807.09 “Drawing” of Sound, Scent, or
Non-Visual Mark
807.10 Three Dimensional Marks
807.11 Marks With Motion
807.12 Mark on Drawing Must Agree with
Mark on Specimen or Foreign Registration
807.12(a) Applications Under §1 of the
Trademark Act
807.12(b) Applications Under §44 of the
Trademark Act
807.12(c) Applications Under §66(a) of the
Trademark Act
807.12(d) Mutilation or Incomplete
Representation of Mark
807.12(e) Compound Word Marks and
Telescoped Marks
807.13 Amendment of Mark
807.13(a) Amendment of Mark in Applications
Under §§1 and 44
807.13(b) Mark in §66(a) Application Cannot
be Amended
807.14 Material Alteration of Mark
807.14(a) Removal or Deletion of Matter
from Drawing
807.14(b) Addition or Deletion of
Previously Registered Matter
807.14(c) Amendments to Correct “Internal
Inconsistencies”
807.14(d) Material Alteration: Case
References
807.15 Substitute Drawings
807.16 Amendment of Drawings by the
Office
807.17 Procedures for Processing
Unacceptable Amendments to Drawings
807.18 Mark Drawing Code
807.19 Use of Old Drawing in New
Application
808 Description of Mark
808.01 Guidelines for Requiring
Description
808.01(a) Letters and Numerals
808.01(b) Designs or Figurative Elements
808.01(c) Meaning of Term in Mark
808.01(d) Lining and Stippling Statements
for Drawings
808.02 Description Must Be Accurate
and Concise
808.03 Printing Description of Mark
809 Translation and
Transliteration of Non-English Wording in Mark
809.01 Equivalency in Translation
809.02 Printing of Translations and
Transliterations
810 Filing Fee
810.01 Collection of Fees for Multiple
Classes
810.02 Refunds
811 Designation of Domestic
Representative
812 Identification of Prior
Registrations of Applicant
812.01 Proving Ownership of Prior
Registrations
813 Consent to Register by
Living Individual Depicted in Mark
814 Requesting Additional
Information
815 Supplemental Register,
Application Filed on
815.01 Marks Eligible for Principal
Register Not Registrable on Supplemental Register
815.02 Elements Required
815.03 Examining Attorney Approves
Mark for Issue
815.04 Filing on Supplemental Register
is Not an Admission That the Mark Has Not Acquired Distinctiveness
815.05 Basis for Refusal of
Registration of Matter That is Incapable
816 Supplemental Register,
Amending Application to
816.01 How to Amend
816.02 Effective Filing Date
816.03 Amendment to Different Register
816.04 Amendment After Refusal
816.05 Amendment After Decision on
Appeal
817 Preparation of Case for
Publication or Registration
818 Application Checklist
Chapter 900 - Use in Commerce
901 Use in Commerce
901.01 Definitions
901.02 Bona Fide Use in the Ordinary
Course of Trade
901.03 Commerce That May Be Lawfully
Regulated By Congress
901.04 Inquiry Regarding Use in
Commerce
901.05 Use Only by Related Company
902 Allegations of Use for
§1(b) Applications
903 Dates of Use
903.01 Date of First Use Anywhere
903.02 Date of First Use in Commerce
903.03 Type of Commerce
903.04 Relation Between the Two Dates
of Use
903.05 Amending Dates of Use
903.06 First Use by Predecessor or
Related Company
903.07 Indefinite Dates of Use
903.07(a) Apparent Discrepancies Between
Dates of Use and Date of Execution
903.08 Dates of Use in Another Form
903.09 More than One Item of Goods or
Services
904 Specimens
904.01 Number of Specimens
904.01(a) More than One Item Specified in a
Class
904.01(b) In Combined or Multiple-Class
Applications
904.02 Physical Form of Specimens
904.02(a) Electronically Filed Specimens
904.02(b) Paper Specimens
904.02(c) Specimens for Marks Comprising
Color
904.02(d) Marks Used on Publications
904.03 Bulky Specimens
904.04 Material Appropriate as
Specimens for Trademarks
904.04(a) Labels and Tags
904.04(b) Stampings
904.04(c) Commercial Packaging
904.04(d) Specimens for Trademarks
Identifying Computer Programs, Movies or Video Tapes
904.05 Material Not Appropriate as
Specimens for Trademarks
904.06 Displays as Specimens for
Trademarks
904.06(a) Catalogs as Specimens for Trademarks
904.06(b) Electronic Displays as Specimens
for Trademarks
904.07 Package Inserts as Specimens
for Trademarks
904.08 Facsimiles as Specimens
904.09 Affidavit Supporting Substitute
Specimens
904.10 Translation of Matter on
Specimens
904.11 Requirements for Substitute
Specimens and Statutory Refusals
905 Method of Use
906 Federal Registration
Notice
906.01 Foreign Countries That Use
Registration Symbol ®
906.02 Improper Use of Registration
Symbol
906.03 Informing Applicant of Apparent
Improper Use
906.04 Fraud
907 Compliance with Other
Statutes
Chapter 1000 - Applications Under Section 44
1001 Section 44 Applications -
General
1002 Eligible Applicants Under
§44
1002.01 Eligible Applicants Under §44(e)
1002.02 Eligible Applicants Under §44(d)
1002.03 Establishing Entitlement Under a
Treaty
1002.04 Establishing Country of Origin
1002.05 United States Applicants
1003 Section 44(d) - Priority
Filing Date Based on a Foreign Application
1003.01 The “First-Filed” Requirement
1003.02 Priority Claim Must Be Filed
Within Six Months of Foreign Filing
1003.03 Basis for Registration Required
1003.04 Suspension Awaiting a Foreign
Registration
1003.05 Section 44(d) and Priority for
Publication
1003.06 Applicants May File Under Both
§44(d) and §44(e)
1003.07 Application May be Based on More
Than One Foreign Application
1003.08 Abandonment of the Foreign
Application
1004 Applications Based on
Foreign Registrations under §44(e)
1004.01 Copy of Foreign Registration
Required
1004.01(a) Status of the Foreign Registration
1004.01(b) Translation of the Foreign
Registration
1004.02 Application May be Based on More
Than One Foreign Registration
1005 Ownership of the Foreign
Application or Registration
1006 Assignment of §44
Applications
1007 Standards for Registration
Under Section 44
1008 Bona Fide Intention to Use
the Mark in Commerce
1009 Allegation of Use and
Specimen of Use Not Required Prior to Registration
1010 Proof of Acquired
Distinctiveness in §44 Applications
1011 Drawings
1011.01 Substantially Exact
Representation of Mark in Foreign Registration
1011.02 One Mark Per Application
1011.03 Amendment of Drawing
1012 Identification of Goods
and Services
1013 Designation of Domestic
Representative by Applicants Not Domiciled in the United States
1014 Section 44 Applications for
the Supplemental Register
1015 Section 44 Registration
Independent of Underlying Foreign Registration
1016 International Registration
As Basis for §44 Application
Chapter 1100 — Intent-to-Use Applications and
Requests to Divide
1101 Bona Fide Intention To Use
the Mark In Commerce
1102 Initial Examination of
Intent-to-Use Applications
1102.01 Substantive Refusals
1102.02 Drawings
1102.03 Intent-to-Use Applications and
the Supplemental Register
1102.04 Claims of Acquired
Distinctiveness under §2(f)
1103 Allegations of Use
1104 Amendment to Allege Use
Under §1(c) of the Act
1104.01 Minimum Requirements for Filing
an Amendment to Allege Use
1104.01(a) Review by Legal Instruments
Examiner for Compliance with Minimum Filing Requirements
1104.01(b) Processing an Amendment to Allege
Use That Does Not Meet Minimum Filing Requirements
1104.01(c) Processing Defective Amendment to
Allege Use Filed With Other Amendments
1104.02 Form of Amendment to Allege Use
1104.03 Time for Filing Amendment to
Allege Use
1104.03(a) Use on All Goods Required Before
Filing
1104.03(b) The “Blackout Period”
1104.03(c) Processing Amendments to Allege
Use Filed During the Blackout Period
1104.04 Processing Timely Amendments to
Allege Use Located After Publication
1104.05 Amendments to Allege Use Filed
in Conjunction With Application
1104.06 Processing Amendments to Allege
Use Received Before Application is Assigned to an Examining Attorney
1104.07 Amendments to Allege Use and Ex
Parte Appeals
1104.08 Necessary Elements in a Complete
Amendment to Allege Use
1104.09 Examination of Amendment to
Allege Use by Examining Attorney
1104.09(a) Ownership
1104.09(b) Verification and Date of Execution
1104.09(c) Identification of Goods or
Services
1104.09(d) Use in Commerce and Dates of Use
1104.09(e) Specimen
1104.09(f) Drawing
1104.09(g) Fees
1104.09(h) Issuance of Actions by Examining
Attorney Related to the Amendment to Allege Use
1104.10 Amendment and Withdrawal of
Amendment to Allege Use
1104.11 Approval of Amendment to Allege
Use After Examination
1105 Publication of
Intent-to-Use Applications for Opposition
1106 Notice of Allowance
1106.01 Issuance of the Notice of
Allowance
1106.02 Action by Examining Attorney
After Issuance of the Notice of Allowance
1106.03 Cancellation of Notice of
Allowance
1106.04 Correction of Errors in Notice
of Allowance
1107 Amendment After Issuance
of the Notice of Allowance and Before Filing of the Statement of Use
1107.01 Examination of Amendment Filed
After the Notice of Allowance Issues But Before a Statement of Use is Filed
1108 Requests for Extensions of
Time to File the Statement of Use
1108.01 Time for Filing Requests for
Extensions of Time to File the Statement of Use
1108.02 Requirements for Request For An
Extension of Time to File a Statement of Use
1108.02(a) Ownership
1108.02(b) Verification
1108.02(c) Filing Fee
1108.02(d) Identification of Goods or
Services
1108.02(e) Bona Fide Intention to Use the
Mark in Commerce
1108.02(f) Good Cause Required for
Extensions Beyond the First Six-Month Extension
1108.03 Only One Extension Request May
Be Filed With or After a Statement of Use
1108.03(a) Processing Extension Request Filed
After Statement of Use Has Been Referred to Examining Attorney
1108.04 Recourse After Denial of
Extension Request
1108.05 Petitions From Denial of Request
For An Extension of Time to File Statement of Use
1109 Statement of Use Under
§1(d) of the Trademark Act
1109.01 Minimum Filing Requirements for
a Statement of Use
1109.02 Review for Compliance with
Minimum Filing Requirements
1109.02(a) Petition to Review Refusal Based
on Noncompliance with Minimum Filing Requirements of 37 C.F.R. §2.88(e)
1109.03 Use on All Goods or Services
Required Before Filing
1109.04 Time for Filing Statement of Use
1109.05 Form of Statement of Use
1109.05(a) Papers Prepared for Filing as an
Amendment to Allege Use May Be Filed as a Statement of Use
1109.06 Necessary Elements in a Complete
Statement of Use
1109.07 Examination of the Statement of
Use — In General
1109.08 The “Clear-Error” Standard in
Examination of the Statement of Use
1109.09 Use in Commerce
1109.09(a) Dates of Use
1109.09(b) Specimens
1109.10 Ownership
1109.11 Verification and Execution
1109.11(a) Authority of Signatory
1109.11(b) Verification of Essential Elements
1109.11(c) Date of Execution
1109.11(d) Signature of Electronically
Transmitted Statement of Use
1109.12 Drawing
1109.13 Identification of Goods and
Services in Statement of Use
1109.14 Classification
1109.15 Filing Fees
1109.15(a) Processing Deficient Fees
1109.16 Correcting Defects in Statement
of Use
1109.16(a) Statutory Requirements That Must
Be Met Within Statutory Filing Period
1109.16(b) Issuance of Examining Attorney’s
Office Action Holding that a Statement of Use Does Not Meet the Minimum Filing
Requirements
1109.16(c) Requesting an Extension of Time to
File a Statement of Use for the Purpose of Compliance with Minimum Filing
Requirements
1109.16(d) Response to Office Action Required
Within Six Months of Mailing Date Regardless of Expiration Date of Period for
Filing the Statement of Use
1109.16(e) Applicant’s Recourse After Refusal
of Registration
1109.17 Withdrawal of the Statement of
Use Prohibited
1109.18 Approval of the Statement of Use
1110 Request to Divide an
Application
1110.01 Time for Filing Request to
Divide
1110.02 Fee for Filing Request to Divide
1110.03 Processing Request to Divide
1110.04 Dividing an Application When
Statement of Use is Due
1110.05 Dividing an Application When
Response to Office Action is Due
1110.06 Dividing an Application Subject
to a Proceeding at Trademark Trial and Appeal Board
1110.07 Dividing a §44 Application
1110.08 Dividing a §66(a) Application
After Change of Ownership With Respect to Some But Not All of the Goods
1110.09 Division of Registrations
Chapter 1200 - Substantive Examination of Applications
1201 Ownership of Mark
1201.01 Claim of Ownership May Be Based
on Use By Related Companies
1201.02 Identifying the Applicant in the
Application
1201.02(a) Identifying the Applicant Properly
1201.02(b) Application Void if Wrong Party
Identified as the Applicant
1201.02(c) Correcting Errors in How the
Applicant Is Identified
1201.02(d) Operating Divisions
1201.02(e) Changes in Ownership After
Application Is Filed
1201.03 Use by Related Companies
1201.03(a) Use Solely by Related Company Must
be Disclosed
1201.03(b) No Explanation of Applicant’s
Control Over Use of Mark by Related Companies Required
1201.03(c) Wholly Owned Related Companies
1201.03(d) Common Stockholders, Directors or
Officers
1201.03(e) Sister Corporations
1201.03(f) License and Franchise Situations
1201.04 Inquiry Regarding Parties Named
on Specimens or Elsewhere in Record
1201.05 Acceptable Claim of Ownership
Based on Applicant’s Own Use
1201.06 Special Situations Pertaining to
Ownership
1201.06(a) Applicant Is Merely Distributor or
Importer
1201.06(b) Goods Manufactured in a Country
Other than Where Applicant Is Located
1201.07 Related Companies and Likelihood
of Confusion
1201.07(a) “Single Source” -- “Unity of
Control”
1201.07(b) Appropriate Action with Respect to
Assertion of Unity of Control
1201.07(b)(i) When Either Applicant or Registrant
Owns All of the Other Entity
1201.07(b)(ii) When Either Applicant or Registrant
Owns Substantially All of the Other Entity
1201.07(b)(iii) When the Record Does Not Support a
Presumption of Unity of Control
1201.07(b)(iv) When the Record Contradicts an
Assertion of Unity of Control
1202 Use of Subject Matter as
Trademark
1202.01 Refusal of Matter Used Solely as
a Trade Name
1202.02 Registration of Trade Dress
1202.02(a) Functionality
1202.02(a)(i) Statutory Basis for Functionality
Refusal
1202.02(a)(ii) Purpose of Functionality Doctrine
1202.02(a)(iii) Definitions
1202.02(a)(iii)(A) Functionality
1202.02(a)(iii)(B) “De Jure” and “De Facto”
Functionality
1202.02(a)(iii)(C) Aesthetic Functionality
1202.02(a)(iv) Burden of Proof in Functionality
Determinations
1202.02(a)(v) Evidence and Considerations
Regarding Functionality Determinations
1202.02(a)(v)(A) Advertising, Promotional or
Explanatory Material in Functionality Determinations
1202.02(a)(v)(B) Availability of Alternative Designs in
Functionality Determinations
1202.02(a)(v)(C) Ease or Economy of Manufacture in
Functionality Determinations
1202.02(b) Distinctiveness of Trade Dress
1202.02(b)(i) Distinctiveness and Product Design
Trade Dress
1202.02(b)(ii) Distinctiveness and Product
Packaging Trade Dress for Goods or Services
1202.02(c) Distinctiveness and Functionality
are Separate Issues
1202.02(d) Drawing and Description of Mark in
Trade Dress Applications
1202.02(e) Trade Dress in Intent-to-Use Applications
1202.02(f) Trade Dress in §44 and §66(a)
Applications
1202.03 Refusal on Basis of
Ornamentation
1202.03(a) Commercial Impression
1202.03(b) Practices of the Trade
1202.03(c) “Secondary Source”
1202.03(d) Evidence of Distinctiveness
1202.03(e) Ornamentation with Respect to
Intent-to-Use Applications
1202.03(f) Ornamentation: Case References
1202.03(f)(i) Slogans or Words Used on the
Goods
1202.03(f)(ii) Designs Used on the Goods
1202.03(f)(iii) Trade Dress on the Containers for
the Goods
1202.03(g) Ornamentation Cases and Acquired
Distinctiveness
1202.04 Informational Matter
1202.05 Color as a Mark
1202.05(a) Color Marks Never Inherently
Distinctive
1202.05(b) Functional Color Marks Not
Registrable
1202.05(c) Color as a Separable Element
1202.05(d) Drawings of Color Marks Required
1202.05(d)(i) Drawings of Color Marks in
Trademark Applications
1202.05(d)(ii) Drawings of Color Marks in Service
Mark Applications
1202.05(d)(iii) Drawings for Marks Including Both
Color and Words or Design
1202.05(e) Written Explanation of a Color
Mark
1202.05(f) Specimens for Color Marks
1202.05(g) Special Considerations for Service
Mark Applications
1202.05(h) Applications for Color Marks Based
on Intent-to-Use
1202.05(i) Applications for Color Marks
Based on §44 or §66(a)
1202.06 Goods in Trade
1202.06(a) Goods Must Have Utility to Others
1202.06(b) Registration Must Be Refused if
Trademark Not Used on Goods in Trade
1202.06(c) “Goods in Trade” in Intent-to-Use
Applications
1202.07 Marks That Identify Columns or
Sections of Publications
1202.07(a) Marks That Identify Columns or
Sections of Printed Publications
1202.07(a)(i) Syndicated Columns and Sections
1202.07(a)(ii) Non-Syndicated Columns and Sections
1202.07(a)(iii) Marks That Identify Columns and
Sections of Printed Publications in Intent-to-Use Applications
1202.07(b) Marks That Identify Columns and
Sections of Online Publications
1202.08 Title of a Single Creative Work
1202.09 Names of Artists and Authors
1202.09(a) Names of Performing Artists Used
on Sound Recordings
1202.10 Model or Grade Designations
1202.11 Background Designs and Shapes
1202.12 Varietal and Cultivar Names
(Examination of Applications for Seeds and Plants)
1202.13 Scent or Fragrance
1202.14 Holograms
1202.15 Sound Marks
1203 Refusal on Basis of
Immoral or Scandalous Matter; Deceptive Matter; Matter which May Disparage,
Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.01 Immoral or Scandalous Matter
1203.02 Deceptive Matter
1203.02(a) Distinction between Marks
Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks
(§2(e)(1))
1203.02(b) Deceptive Matter: Case References
1203.03 Matter which May Disparage,
Falsely Suggest a Connection, or Bring into Contempt or Disrepute
1203.03(a) “Persons” Defined
1203.03(b) “National Symbols” Defined
1203.03(c) Disparagement, Bringing into
Contempt and Bringing into Disrepute
1203.03(d) Disparagement, Bringing into
Contempt and Bringing into Disrepute: Case References
1203.03(e) False Suggestion of a Connection
1203.03(f) False Suggestion of a
Connection: Case References
1204 Refusal on Basis of Flag,
Coat of Arms or Other Insignia of United States, State or Municipality, or
Foreign Nation
1205 Refusal on Basis of Matter
Protected by Statute or Convention
1205.01 Statutory Protection
1205.02 Article 6ter of the Paris
Convention
1206 Refusal on Basis of Name,
Portrait or Signature of Particular Living Individual or Deceased U.S.
President Without Consent
1206.01 Name, Portrait or Signature
1206.02 Particular Living Individual or
Deceased U.S. President
1206.03 Consent of Individual or
President’s Widow Required
1206.03(a) Consent Must Be Written Consent to
Registration
1206.03(b) Implicit Consent
1207 Refusal on Basis of
Likelihood of Confusion, Mistake or Deception
1207.01 Likelihood of Confusion
1207.01(a) Relatedness of the Goods or
Services
1207.01(a)(i) Goods or Services Need Not Be
Identical
1207.01(a)(ii) Goods May Be Related to Services
1207.01(a)(ii)(A) Food and Beverage Products Versus
Restaurant Services
1207.01(a)(iii) Reliance on Identification of
Goods/Services in Registration and Application
1207.01(a)(iv) No “Per Se” Rule
1207.01(a)(v) Expansion of Trade Doctrine
1207.01(a)(vi) Evidence Showing Relatedness of
Goods or Services
1207.01(b) Similarity of the Marks
1207.01(b)(i) Word Marks
1207.01(b)(ii) Similarity In Appearance
1207.01(b)(iii) Comparing Marks That Contain
Additional Matter
1207.01(b)(iv) Similarity in Sound – Phonetic
Equivalents
1207.01(b)(v) Similarity in Meaning
1207.01(b)(vi) Doctrine of Foreign Equivalents
1207.01(b)(vii) Transposition of Terms
1207.01(b)(viii) Marks Consisting of Multiple Words
1207.01(b)(ix) Weak or Descriptive Marks
1207.01(b)(x) Parody Marks
1207.01(c) Design Marks
1207.01(c)(i) Legal Equivalents - Comparison of
Words and Their Equivalent Designs
1207.01(c)(ii) Composite Marks Consisting of Both
Words and Designs
1207.01(c)(iii) Comparison of Standard Character
Marks and Special Form Marks
1207.01(d) Miscellaneous Considerations
1207.01(d)(i) Doubt Resolved in Favor of Registrant
1207.01(d)(ii) Absence of Actual Confusion
1207.01(d)(iii) Third-Party Registrations and
Evidence of Third-Party Use
1207.01(d)(iv) Collateral Attack on Registration
Improper in Ex Parte Proceeding
1207.01(d)(v) Classification of Goods/Services
1207.01(d)(vi) Prior Decisions of Examining
Attorneys
1207.01(d)(vii) Sophisticated Purchasers
1207.01(d)(viii) Consent Agreements
1207.01(d)(ix) Fame of Mark
1207.01(d)(x) Conflicting Marks Owned by
Different Parties
1207.02 Marks That Are Likely to Deceive
1207.03 Marks Previously Used in United
States but Not Registered
1207.04 Concurrent Use Registration
1207.04(a) Concurrent Use – In General
1207.04(b) Filing Basis of Application
Seeking Concurrent Use
1207.04(c) Basis for Concurrent Use
Registration
1207.04(d) Determining Eligibility for
Concurrent Use
1207.04(d)(i) Requirements for All Concurrent Use
Applications
1207.04(e) Applications Subject to Concurrent
Use Proceeding Before the Trademark Trial and Appeal Board
1207.04(e)(i) Preparing the File for Publication
1207.04(f) Application for Concurrent Use
Registration Pursuant to Court Decree
1207.04(f)(i) Preparing the File for
Publication
1208 Conflicting Marks in
Pending Applications
1208.01 Priority for Publication or
Issue Based on Effective Filing Date
1208.01(a) What Constitutes Conflict Between
Pending Applications
1208.01(b) What Constitutes Effective Filing
Date
1208.01(c) Change in Effective Filing Date
During Examination
1208.01(d) Examination of Conflicting Marks
After Reinstatement or Revival
1208.02 Conflicting Applications
Examination Procedure
1208.02(a) Examination of Application with
Earliest Effective Filing Date
1208.02(b) Action on Later-Filed
Application: Giving Notice of the Earlier Application or Applications
1208.02(c) Suspension of Later-Filed
Application
1208.02(d) Action on Later-Filed Application
upon Disposition of the Earlier Application or Applications
1208.02(e) Applicant’s Argument on Issues of
Conflict
1208.02(f) Conflicting Mark Mistakenly
Published or Approved for Issuance on the Supplemental Register
1208.03 Procedure Relating to
Possibility of Interference
1208.03(a) Procedures on Request for
Interference
1208.03(b) Decision on Request for
Interference
1208.03(c) Procedure When Interference Is to
be Declared
1209 Refusal on Basis of
Descriptiveness
1209.01 Distinctiveness/Descriptiveness
Continuum
1209.01(a) Fanciful, Arbitrary and Suggestive
Marks
1209.01(b) Merely Descriptive Marks
1209.01(c) Generic Terms
1209.01(c)(i) Test
1209.01(c)(ii) Terminology
1209.01(c)(iii) Generic Matter: Case References
1209.02 Procedure for Descriptiveness
and/or Genericness Refusal
1209.03 Considerations Relevant to
Determination of Descriptiveness
1209.03(a) Third-Party Registrations
1209.03(b) No Dictionary Listing
1209.03(c) First or Only User
1209.03(d) Combined Terms
1209.03(e) More Than One Meaning
1209.03(f) Picture or Illustration
1209.03(g) Foreign Equivalents/Dead or
Obscure Languages
1209.03(h) Incongruity
1209.03(i) Intended Users
1209.03(j) Phonetic Equivalent
1209.03(k) Laudatory Terms
1209.03(l) Telephone Numbers
1209.03(m) Domain Names
1209.03(n) “America” or “American”
1209.03(o) “National” or “International”
1209.03(p) Function or Purpose
1209.03(q) Source or Provider of Goods or
Services
1209.03(r) Retail Store and Distributorship
Services
1209.03(s) Slogans
1209.04 Deceptively Misdescriptive Marks
1210 Refusal on Basis of
Geographic Significance
1210.01 Elements
1210.01(a) Geographically Descriptive Marks -
Test
1210.01(b) Geographically Deceptively
Misdescriptive Marks - Test
1210.01(c) Geographically Deceptive Marks -
Test
1210.02 Primarily Geographic
Significance
1210.02(a) Geographic Locations
1210.02(b) Primary Significance
1210.02(b)(i) Other Meanings
1210.02(b)(i)(A) Surname Significance
1210.02(b)(ii) More Than One Geographic Location
With Same Name
1210.02(b)(iii) Non-Geographic Characteristics of
Goods or Services
1210.02(b)(iv) “America” or “American” and Similar
Terms in Marks
1210.02(c) Geographic Terms Combined With
Additional Matter
1210.02(c)(i) Two Geographic Terms Combined
1210.02(c)(ii) Geographic Terms Combined With
Descriptive or Generic Matter
1210.02(c)(iii) Arbitrary, Fanciful or Suggestive
Composites
1210.03 Geographic Origin of the Goods
or Services
1210.04 Goods/Place or Services/Place
Association
1210.04(a) Establishing Goods/Place
Association
1210.04(b) Establishing Services/Place
Association
1210.04(c) Obscure or Remote Geographic Marks
1210.04(d) Arbitrary Use of Geographic Terms
1210.05 Geographically Deceptive Marks
1210.05(a) Basis for Refusal
1210.05(b) Materiality of Deception
1210.05(b)(i) Materiality of Deception In Cases
Involving Goods
1210.05(b)(ii) Materiality of Deception In Cases
Involving Services
1210.06 Procedure for Examining
Geographic Composite Marks
1210.06(a) Marks That Include Primarily
Geographically Descriptive Terms Combined With Additional Matter
1210.06(b) Marks That Include Primarily
Geographically Deceptively Misdescriptive and Deceptive Terms Combined With
Additional Matter
1210.07 Supplemental Register and Section
2(f)
1210.07(a) Registrability of Geographic Terms
on the Supplemental Register
1210.07(b) Registrability of Geographic Terms
Under Section 2(f)
1210.08 Wines and Spirits
1210.09 Geographic Certification Marks
1211 Refusal on Basis of
Surname
1211.01 “Primarily Merely a Surname”
1211.01(a) Non-Surname Significance
1211.01(a)(i) Ordinary Language Meaning
1211.01(a)(ii) Phonetic Equivalent of Term With
Ordinary Language Meaning
1211.01(a)(iii) Geographical Significance
1211.01(a)(iv) Historical Place or Person
1211.01(a)(v) Rare Surnames
1211.01(a)(vi) “Look And Feel” of a Surname
1211.01(b) Surname Combined with Additional
Matter
1211.01(b)(i) Double Surnames
1211.01(b)(ii) Stylization or Design Element
1211.01(b)(iii) Surname Combined with Initials
1211.01(b)(iv) Surname Combined with Title
1211.01(b)(v) Surname in Plural or Possessive
Form
1211.01(b)(vi) Surname Combined with Wording
1211.01(b)(vii) Surname Combined With Domain Name
1211.02 Evidence Relating to Surname
Refusal
1211.02(a) Evidentiary Burden - Generally
1211.02(b) Evidentiary Considerations
1211.02(b)(i) Telephone Directory Listings
1211.02(b)(ii) LEXIS-NEXIS® Research Database
Evidence
1211.02(b)(iii) Surname of Person Associated with
Applicant
1211.02(b)(iv) Specimens Confirming Surname Significance
of Term
1211.02(b)(v) Negative Dictionary Evidence
1211.02(b)(vi) Evidence of Fame of a Mark
1212 Acquired Distinctiveness
or Secondary Meaning
1212.01 General Evidentiary Matters
1212.02 General Procedural Matters
1212.02(a) Situations in which a Claim of
Distinctiveness under §2(f) Is Appropriate
1212.02(b) Section 2(f) Claim Is, for
Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive
1212.02(c) Claiming §2(f) Distinctiveness in
the Alternative
1212.02(d) Unnecessary §2(f) Claims
1212.02(e) Disclaimers in Applications
Claiming Distinctiveness under §2(f)
1212.02(f) Section 2(f) Claim in Part (as to
a Portion of the Mark)
1212.02(g) Examining Attorney’s Role in
Suggesting §2(f) or Appropriate Kind/Amount of Evidence
1212.02(h) Non-Final and Final Refusals
1212.02(i) Section 2(f) Claim with Respect
to Incapable Matter
1212.03 Evidence of Distinctiveness
Under §2(f)
1212.04 Prior Registrations as Proof of
Distinctiveness
1212.04(a) Sufficiency of Claim vis-à-vis
Nature of the Mark
1212.04(b) “Same Mark”
1212.04(c) Relatedness of Goods or Services
1212.04(d) Registration Must Be in Full Force
and Effect and on Principal Register or under Act of 1905
1212.04(e) Form of §2(f) Claim Based on
Ownership of Prior Registrations
1212.05 Five Years of Use as Proof of
Distinctiveness
1212.05(a) Sufficiency of Claim Vis-à-Vis
Nature of the Mark
1212.05(b) “Substantially Exclusive and
Continuous”
1212.05(c) Use “as a Mark”
1212.05(d) Form of the Proof of Five Years’
Use
1212.06 Establishing Distinctiveness by
Actual Evidence
1212.06(a) Long Use of the Mark
1212.06(b) Advertising Expenditures
1212.06(c) Affidavits or Declarations
Asserting Recognition of Mark as Source Indicator
1212.06(d) Survey Evidence, Market Research
and Consumer Reaction Studies
1212.06(e) Miscellaneous Considerations
Regarding Evidence Submitted to Establish Distinctiveness
1212.06(e)(i) First or Only User
1212.06(e)(ii) State Trademark Registrations
1212.06(e)(iii) Design Patent
1212.06(e)(iv) Acquiescence to Demands of
Competitors
1212.07 Form of Application Asserting
Distinctiveness
1212.08 Section 44 and §66(a)
Applications and Distinctiveness
1212.09 Intent-to-Use Applications and
Distinctiveness
1212.09(a) Section 2(f) Claim Requires Prior
Use
1212.09(b) Claim of §2(f) “in Part” in §1(b)
Application
1212.10 Printing “§2(f)” Notations
1213 Disclaimer of Elements in
Marks
1213.01 History of Disclaimer Practice
1213.01(a) Discretion in Requiring Disclaimer
1213.01(b) Refusal to Register Because of
Failure to Disclaim
1213.01(c) Voluntary Disclaimer of
Registrable or Unregistrable Matter
1213.02 “Composite” Marks
1213.03 Disclaimer of Unregistrable
Components of Marks
1213.03(a) “Unregistrable Components” in
General
1213.03(b) Generic Matter and Matter Which
Does Not Function as a Mark
1213.03(c) Pictorial Representations of
Descriptive Matter
1213.03(d) Entity Designations
1213.04 Trade Names
1213.05 “Unitary” Marks
1213.05(a) Compound Word Marks
1213.05(a)(i) Telescoped Words
1213.05(a)(ii) Compound Words Formed with Hyphen
or Other Punctuation
1213.05(b) Slogans
1213.05(c) “Double Entendre”
1213.05(d) Incongruity
1213.05(e) Sound Patterns
1213.05(f) Display of Mark
1213.06 Entire Mark May Not Be
Disclaimed
1213.07 Removal Rather than Disclaimer
1213.08 Form of Disclaimers
1213.08(a) Wording of Disclaimer
1213.08(a)(i) Standardized Printing Format for
Disclaimer
1213.08(a)(ii) Unacceptable Wording for Disclaimer
1213.08(b) Disclaimer of Unregistrable Matter
in Its Entirety
1213.08(c) Disclaimer of Misspelled Words
1213.08(d) Disclaimer of Non-English Words
1213.09 Mark of Another May Not Be
Registered with Disclaimer
1213.10 Disclaimer in Relation to
Likelihood of Confusion
1213.11 Acquiring Rights in Disclaimed
Matter
1214 “Phantom” Elements in
Marks
1214.01 Single Application May Seek
Registration of Only One Mark
1214.02 Agreement of Mark on Drawing
With Mark on Specimens or Foreign Registration
1214.03 “Phantom Marks” in Intent-to-Use
Applications
1214.04 “Phantom Marks” in §44 and
§66(a) Applications
1215 Marks Composed, in Whole
or in Part, of Domain Names
1215.01 Background
1215.02 Use as a Mark
1215.02(a) Use Applications
1215.02(b) Advertising One’s Own Products or
Services on the Internet is not a Service
1215.02(c) Agreement of Mark on Drawing with
Mark on Specimens of Use
1215.02(d) Marks Comprised Solely of TLDs for
Domain Name Registry Services
1215.02(e) Intent-to-Use Applications
1215.02(f) Section 44 and §66(a)
Applications
1215.03 Surnames
1215.04 Descriptiveness
1215.05 Generic Refusals
1215.06 Marks Containing Geographical
Matter
1215.07 Disclaimers
1215.08 Material Alteration
1215.08(a) Adding or Deleting TLDs in Domain
Name Marks
1215.08(b) Adding or Deleting TLDs in Other
Marks
1215.09 Likelihood of Confusion
1215.10 Marks Containing the Phonetic
Equivalent of a Top-Level Domain
1216 Effect of Applicant’s
Prior Registrations
1216.01 Decisions Involving Prior
Registrations Not Controlling
1216.02 Effect of “Incontestability” in
Ex Parte Examination
1217 Res Judicata
Chapter 1300 - Examination of Different Types of
Marks
1301 Service Marks
1301.01 What Is a Service
1301.01(a) Criteria for Determining What
Constitutes a Service
1301.01(a)(i) Performance of a Real Activity
1301.01(a)(ii) For the Benefit of Others
1301.01(a)(iii) Sufficiently Distinct from Activities
Involved in Sale of Goods or Performance of Other Services
1301.01(b) Whether Particular Activities
Constitute “Services”
1301.01(b)(i) Contests and Promotional Activities
1301.01(b)(ii) Warranty or Guarantee of Repair
1301.01(b)(iii) Publishing One’s Own Periodical
1301.01(b)(iv) Soliciting Investors
1301.01(b)(v) Informational Services Ancillary to
the Sale of Goods
1301.02 What Is a Service Mark
1301.02(a) Matter That Does Not Function as a
Service Mark
1301.02(b) Names of Characters or Personal
Names as Service Marks
1301.02(c) Three-Dimensional Service Marks
1301.02(d) Titles of Radio and Television
Programs
1301.02(e) Process, System or Method
1301.03 Use of Service Mark in Commerce
1301.03(a) Use of Service Mark in Advertising
to Identify Services
1301.03(b) Rendering of Service in Commerce
Regulable by Congress
1301.04 Specimens of Use for Service
Marks
1301.04(a) Specimens Must Show Use as a
Service Mark
1301.04(b) Association Between Mark and
Services
1301.04(c) Letterhead
1301.04(d) Specimens for Entertainment
Services
1301.05 Identification and
Classification of Services
1302 Collective Marks Generally
1302.01 History of Collective Marks
1303 Collective Trademarks and
Collective Service Marks
1303.01 Use of Collective Trademark and
Collective Service Mark Is By Members
1303.02 Examination of Collective
Trademark and Collective Service Mark Applications
1303.02(a) Classification of Goods and
Services in Collective Trademark and Collective Service Mark Applications
1303.02(b) Specimens of Use for Collective
Trademark and Collective Service Mark Applications
1303.02(c) Special Elements of Collective
Trademark and Collective Service Mark Applications
1303.02(c)(i) Manner of Control
1303.02(c)(ii) Use by Members Indicated in
Dates-of-Use Clause
1304 Collective Membership
Marks
1304.01 History of Membership Marks
1304.02 Purpose of Membership Mark
1304.03 Use of Membership Mark Is by
Members
1304.04 Who May Apply to Register
Membership Mark
1304.05 Who May Own Membership Mark
1304.06 Nature of the Collective Group
1304.07 Character of the Mark
1304.08 Refusal to Register Membership
Mark
1304.08(a) Matter That Does Not Function as a
Membership Mark
1304.08(b) Likelihood of Confusion
1304.08(c) Degree or Title Designations
Contrasted to Membership Marks
1304.09 Examination of Collective
Membership Mark Applications
1304.09(a) Classification in Membership Mark
Applications
1304.09(b) Identifications in Membership Mark
Applications
1304.09(c) Specimens of Use for Membership
Marks
1304.09(d) Special Elements of Applications
for Collective Membership Marks
1304.09(d)(i) Exercise of Control
1304.09(d)(ii) Manner of Control
1304.09(d)(iii) Use by Members Indicated in
Dates-of-Use Clause
1305 Trademarks and Service
Marks Used by Collective Organizations
1306 Certification Marks
1306.01 Definition of Certification Mark
1306.01(a) Use Is by Person Other than Owner
1306.01(b) Purpose Is to Certify, Not to
Indicate Source
1306.02 Certification Marks That Are
Indications of Regional Origin
1306.02(a) Indicating the Region
1306.02(b) Authority to Control a
Geographical Term
1306.02(c) The Government as Applicant for a
Geographical Certification Mark
1306.03 Certification Marks Certifying
that Labor Was Performed by Specific Group or Individual
1306.04 Ownership of Certification Marks
1306.05 Characteristics of Certification
Marks
1306.05(a) Same Mark Not Registrable as
Certification Mark and as Any Other Type of Mark
1306.05(b) Cancellation of Applicant’s Prior
Registration Required by Change from Certification Mark Use to Trademark or
Service Mark Use, or Vice Versa
1306.06 Examination of Certification
Mark Applications
1306.06(a) Refusal to Register Certification
Mark
1306.06(b) The Mark on the Drawing
1306.06(c) Specimens of Use for Certification
Marks
1306.06(d) Relation Between Certification
Mark and Trademark or Service Mark on Specimens
1306.06(e) Classification of Goods and
Services in Certification Mark Applications
1306.06(f) Identification of Goods and
Services in Certification Mark Applications
1306.06(g) Special Elements of Certification
Mark Applications
1306.06(g)(i) Statement of What the Mark
Certifies
1306.06(g)(ii) Standards
1306.06(g)(iii) Exercise of Control
1306.06(g)(iv) Use by Others Indicated in
Dates-of-Use Clause
1306.06(g)(v) Statement That Mark is Not Used by
Applicant
1306.06(g)(vi) Amendment to Different Type of Mark
1306.07 Relationship of §14
(Cancellation) to Examination of Certification Mark Applications
1306.08 Registration of Certification
Mark on Basis of Foreign Registration
1306.09 Uncertainty Regarding Type of
Mark
1306.09(a) Distinction Between Certification
Mark and Collective Mark
1306.09(b) Distinguishing Certification Mark
Use from Related-Company Use of Trademark or Service Mark
1306.09(c) Patent Licenses
1307 Registration as Correct
Type of Mark
Chapter 1400 —
Classification and Identification of Goods and Services
1401 Classification
1401.01 Statutory Authority
1401.02 International Trademark
Classification Adopted
1401.02(a) Headings of International
Trademark Classes
1401.02(b) Short Titles for International
Trademark Classes
1401.02(c) International Alphabetical List
1401.03 Designation of Class
1401.03(a) Designation of Class by Applicant
Normally Accepted in Applications Under §§1 and 44
1401.03(b) Designation of Class by Office
When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or
§44
1401.03(c) Failure to Classify May Delay
Action in Applications Under §§1 and 44
1401.03(d) Classification Determined by World
Intellectual Property Organization in §66(a) Applications
1401.04 Classification Determines Number
of Fees
1401.04(a) Prior U.S. Classification System
1401.04(b) Limiting Goods and Services to the
Number of Classes for Which Filing Fees Are Paid
1401.05 Criteria on Which International
Classification Is Based
1401.06 Specimens as Related to
Classification
1401.06(a) Specimen Discloses Special
Characteristics
1401.07 Classification and Plurality of
Uses
1401.08 Classification and the
Identification of Goods and Services, In General
1401.09 Changes in Practice Based on the
Restructuring of International Class 42 in the 8th Edition of the Nice
Agreement
1401.09(a) Elimination of “Miscellaneous
Class Designation”
1401.09(b) Implementation of the Changes
1402 Identification of Goods
and Services
1402.01 Specifying the Goods and/or
Services - in General
1402.01(a) General Guidelines for Acceptable
Identifications of Goods or Services
1402.01(b) Identification of Goods and
Services in a §44 Application
1402.01(c) Identification of Goods and
Services in a §66(a) Application
1402.01(d) Location of “Identification of
Goods and Services”
1402.01(e) Responsibilities of Examining
Attorney as to Identification
1402.02 Entitlement to Filing Date With
Respect to Specification of Goods and Services
1402.03 Specificity of Terms Used in
Identifying Goods and Services
1402.03(a) Inclusive Terminology
1402.03(b) House Marks
1402.03(c) Marks for a “Full Line of …”
1402.03(d) Identifying Computer Programs with
Specificity
1402.03(e) Identifying Publications with Specificity
1402.04 Acceptable Identification of
Goods and Services Manual
1402.05 Accuracy of Identification
1402.05(a) Goods That Are Components or
Ingredients
1402.05(b) Material Composition
1402.06 Amendments Permitted to Clarify
or Limit Identification
1402.06(a) Limiting the Identification of
Goods and Services
1402.06(b) Clarifying the Identification of
Goods and Services
1402.07 Scope of Identification of Goods
and Services for Purposes of Amendment
1402.07(a) The “Ordinary-Meaning” Test
1402.07(b) Ambiguous Identifications
1402.07(c) Unambiguous Identifications
1402.07(d) Permissible Scope of
Identification Not Affected by Proposed Amendment That Is Unacceptable
1402.07(e) Permissible Scope of
Identification Affected by Proposed Amendment That Is Accepted
1402.08 Moving Goods and Services
Between Companion Applications
1402.09 Use of Marks Inappropriate in
Identifications
1402.10 Identification of Goods and
Services in Documents Filed in Connection with §1(b) Applications
1402.11 Identification of Services
1402.11(a) Computer Services
1402.11(b) Information Services
1402.11(c) Association Services and
“Promoting the Interest of” Services
1402.11(d) Charitable Services, Other than
Monetary
1402.11(e) Consulting Services
1402.12 Parentheses and Brackets Should
Not be Used in Identifications of Goods and Services
1402.13 Requirement For Amendment of
Portion of Identification of Goods/Services
1402.14 Identification of Goods/Services
Must Conform to Rules and Policies in Effect at the Time of Examination
1403 Combined or Multiple-Class
Application
1403.01 Requirements for Combined or
Multiple-Class Application
1403.02 Amendment of Combined or
Multiple-Class Application
1403.02(a) Deletion of Classes
1403.02(b) Correction of Classification
1403.02(c) Addition of Classes
1403.03 Dividing of Combined or
Multiple-Class Application
1403.04 Combined or Multiple-Class Marks
in Official Gazette
1403.05 Action After Filing, Multiple
Classes
1403.05(a) Fees for Action After Filing,
Multiple Classes
1403.05(b) Surrender or Amendment in
Multiple-Class Registrations
Chapter 1500 - Post-Examination Procedures
1501 Appeal to Trademark Trial
and Appeal Board
1501.01 Appealable Matter
1501.02 Examining Attorney’s Appeal
Brief
1501.02(a) Reply Briefs in Ex Parte Appeals
1501.03 Withdrawal of Refusal or
Requirement After Appeal
1501.04 Fee for Appeal
1501.05 Amendment During Appeal
1501.06 Amendment After Decision on
Appeal
1501.07 Examining Attorney’s Request for
Reconsideration
1502 Publication in Trademark
Official Gazette
1502.01 Notification of Errors in
Trademark Official Gazette
1503 Opposition
1503.01 Filing a Notice of Opposition
1503.02 Joining Persons in an Opposition
1503.03 Time for Opposing
1503.04 Extension of Time to Oppose
1503.05 Opposition Fee
1503.06 Opposition to §66(a)
Applications
1504 Jurisdiction over
Application
1504.01 Jurisdiction of Examining
Attorney
1504.02 Jurisdiction of Trademark Trial
and Appeal Board
1504.03 Action By Examining Attorney
After Publication
1504.04 Restoration of Jurisdiction to
Examining Attorney by Director
1504.04(a) Request for Jurisdiction
1504.05 Remand to Examining Attorney by
Trademark Trial and Appeal Board
1504.05(a) Request for Remand
1505 Amendments Filed by
Applicants After Publication
1505.01 Approval of Amendments After Publication
1505.01(a) Amendments to the Identification
of Goods or Services
1505.01(b) Amendments to Classification
1505.01(c) Amendments to Drawings
1505.01(d) Amendments to the Dates of Use
1505.01(e) Amendments Adding or Deleting
Disclaimers
1505.01(f) Amendment of the Basis
1505.02 Procedures for Processing
Amendments Filed by the Applicant After Publication
1505.02(a) Form and Timing of Amendments
1505.02(b) Processing Amendments in Cases
Where No Opposition Has Been Filed
1505.02(c) Processing Amendments in Cases
Where a Request for Extension of Time to Oppose Has Been Filed or Granted
1505.02(d) Processing Amendments in Cases
Where an Opposition Has Been Filed
1506 Concurrent Use
Registration Proceeding
1507 Interference
Chapter 1600 - Registration and Post Registration
Procedures
1601 Types of Registrations
1601.01 Registrations Now Being Issued
1601.01(a) Certificate of Registration
1601.01(b) Duplicate Certificate of
Registration
1601.01(c) Registered Extension of Protection
of International Registration to the United States
1601.02 Repeal of Prior Acts
1601.03 Additional Registration under
Act of 1946
1601.04 1881 and 1905 Act Registrations
1601.05 1920 Act Registrations
1601.06 Registrations Issued Under Prior
Classification Systems
1601.07 Form of Copies of Registrations
1602 Duration and Maintenance
of Registrations
1602.01 Act of 1946
1602.02 Acts of 1881 and 1905
1602.03 Act of 1920
1602.04 Trademark Law Treaty
Implementation Act Changes
1603 Bringing Prior Act
Registrations Under 1946 Act, §12(c)
1603.01 Notification and Printing of
Mark in Official Gazette
1603.02 Cancellation and
Incontestability
1603.03 Affidavits of Use in Commerce
Required
1604 Affidavit of Use or
Excusable Nonuse of Mark in Commerce under §8
1604.01 Registrations to Which §8
Affidavit Pertains
1604.02 Notice of When Affidavit Is Due
1604.03 Form for Filing §8 Affidavit
1604.04 Time for Filing §8 Affidavit
1604.04(a) Premature Filing of §8 Affidavit
1604.04(b) Registrations in Twenty-Year Terms
1604.05 Requirements for §8 Affidavit or
Declaration of Use or Excusable Nonuse
1604.06 Fees for §8 Affidavit
1604.06(a) Filing Fee for Affidavit or
Declaration
1604.06(b) Grace Period Surcharge and
Deficiency Surcharge
1604.06(c) Processing Affidavit or
Declaration Filed With Insufficient Fees
1604.07 Ownership, and Who May File §8
Affidavit
1604.07(a) Affidavit or Declaration Must be
Filed by Owner
1604.07(b) Establishing Ownership
1604.07(c) Acceptance Notice Issued in Name
of Owner of Record
1604.07(d) Changes of Legal Entity
1604.07(e) Changes of Name
1604.07(f) Correction of Mistake in Setting
Forth the Name of the Owner
1604.08 Execution of Affidavit or
Declaration
1604.08(a) Persons Who May Sign Affidavit or
Declaration
1604.08(b) Date of Execution of Affidavit or
Declaration
1604.08(c) Signature of Electronically
Transmitted Affidavit or Declaration
1604.08(d) Form and Wording of Verification
1604.09 Goods and/or Services Set Forth
in §8 Affidavit or Declaration
1604.09(a) Goods and/or Services Must be
Specified or Expressly Incorporated by Reference
1604.09(b) Deletion of Goods and/or Services
1604.09(c) Failure to List All Goods and/or
Services Recited in Registration
1604.09(d) New Goods and/or Services Cannot
be Added
1604.10 Use in Commerce
1604.11 “Excusable Nonuse” of Mark
1604.12 Specimen Showing Current Use of
Mark in Commerce
1604.12(a) Specimen for Each Class Required
1604.12(b) Specimens in Electronically Filed
Affidavits
1604.12(c) Substitute Specimens
1604.13 Differences in the Mark As Used
on the Specimen and the Mark as Registered
1604.13(a) Possible Amendment of Mark in
Registration
1604.14 Designation of Domestic
Representative by Foreign Owner
1604.15 Office Actions and Notices
Regarding Affidavit
1604.16 Response to O
