Miscellaneous Changes to Trademark Rules of Practice, 33356-33372 [E8-12909]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 73, Number 114 (Thursday, June 12, 2008)]
[Proposed Rules]
[Pages 33356-33372]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-12909]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2, 3, 6 and 7

[Docket No. PTO-T-2005-0018]
RIN 0651-AB89


Miscellaneous Changes to Trademark Rules of Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTIONS: Proposed rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'') 
proposes to amend the Trademark Rules of Practice to clarify certain 
requirements for applications, intent to use documents, amendments to 
classification, requests to divide, and Post Registration practice; to 
modernize the language of the rules; and to make other miscellaneous 
changes. For the most part, the proposed rule changes are intended to 
codify existing practice, as set forth in the Trademark Manual of 
Examining Procedure (``TMEP'').

DATES: Comments must be received by August 11, 2008 to ensure 
consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic 
mail message to TMRules@uspto.gov. Written comments may also be 
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery to 
the Trademark Assistance Center, Concourse Level, James Madison 
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention 
Mary Hannon; or by electronic mail message via the Federal eRulemaking 
Portal. See the Federal eRulemaking Portal Web site (https://
www.regulations.gov) for additional instructions on providing

[[Page 33357]]

comments via the Federal eRulemaking Portal. The comments will be 
available for public inspection on the Office's Web site at https://
www.uspto.gov, and will also be available at the Office of the 
Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany 
Street, Alexandria, Virginia.

FOR FURTHER INFORMATION CONTACT: Mary Hannon, Office of the 
Commissioner for Trademarks, by telephone at (571) 272-9569.

SUPPLEMENTARY INFORMATION: References below to ``the Act,'' ``the 
Trademark Act,'' or ``the statute'' refer to the Trademark Act of 1946, 
15 U.S.C. 1051 et seq., as amended. References to ``TMEP'' or 
``Trademark Manual of Examining Procedure'' refer to the 5th edition, 
September 2007. References to the Trademark Trial and Appeal Board 
Manual of Procedure refer to the 2nd edition, Rev. 1, March 12, 2004.
    Where appropriate, the Office proposes to reword or reorganize the 
rules for clarity, and to add headings to make it easier to navigate 
through the rules.

Applications for Registration

    The Office proposes to amend Sec.  2.21(a) to require that an 
application must be in the English language to receive a filing date.
    The Office proposes to amend Sec.  2.23(a)(2), which requires that 
a TEAS Plus applicant continue to receive communications from the 
Office by electronic mail during the pendency of the application, to 
add a requirement that a TEAS Plus applicant maintain a valid e-mail 
correspondence address in order to maintain TEAS Plus status. If the e-
mail address changes, the applicant must notify the Office of the new 
e-mail address. If applicant chooses to receive correspondence on 
paper, applicant will have to pay the processing fee required by 
Sec. Sec.  2.6(a)(1)(iv) and 2.23(b).
    The Office proposes to amend Sec.  2.32(a)(3)(iii) to indicate that 
the requirement for inclusion of the names and citizenship of the 
general partners in an application by a partnership applies only to 
domestic partnerships. Because the Office does not track the varying 
legal effects of partnership status in foreign countries, and the 
relevance of this additional information has not been established, this 
requirement does not apply to foreign partnerships. This is consistent 
with TMEP section 803.03(b).
    The Office proposes to add new Sec.  2.32(a)(3)(iv) to provide that 
if the applicant is a domestic joint venture, the application must 
include the names and citizenship of all active members of the joint 
venture. This is consistent with TMEP section 803.03(b).
    The Office proposes to amend Sec. Sec.  2.32(a)(7) and (a)(8) to 
change periods to semi-colons.
    The Office proposes to add new Sec.  2.32(a)(9), providing that if 
a mark includes non-English wording, the applicant must submit an 
English translation of that wording; and new Sec.  2.32(a)(10), 
providing that if the mark includes non-Latin characters, the applicant 
must submit a transliteration of those characters and either a 
translation of the corresponding non-English word(s) or a statement 
that the transliterated term has no meaning in English. This is 
consistent with the long-standing practice of the Office. TMEP sections 
809 et seq.
    The Office proposes to amend Sec.  2.33(b)(1) to remove the 
requirement that an application include a verified statement that the 
applicant ``has adopted'' the mark. This language is not required by 
statute and is deemed unnecessary.
    The Office proposes to amend Sec. Sec.  2.34(a)(1)(i), (a)(2), 
(a)(3)(i), and (a)(4)(ii) to change ``must allege'' to ``must also 
allege.'' This makes it clear that the requirement for an allegation of 
current use or bona fide intention to use the mark in commerce, applies 
to verifications filed after the application filing date.
    The Office proposes to add new Sec.  2.34(a)(1)(v) to provide that 
if more than one item of goods or services is specified in a section 
1(a) application, the dates of use need be for only one of the items 
specified in each class, provided that the particular item to which the 
dates apply is designated. This requirement for section 1(a) 
applications previously appeared in Sec.  2.33(a)(2), but was 
inadvertently removed effective October 30, 1999, by the final rule 
published at 64 FR 48900 (Sept. 8, 1999). This requirement is 
consistent with the requirements for allegations of use under 
Sec. Sec.  2.76(c) and 2.88(c).
    The Office proposes to amend Sec. Sec.  2.44(b) and 2.45(b), which 
pertain to collective and certification marks, to add a reference to 
section 66(a) applications. This corrects an oversight.
    The Office proposes to amend Sec.  2.47(a) to remove the 
requirement for a specific allegation that a mark has been in 
``lawful'' use in commerce in an application for registration on the 
Supplemental Register. Because the definition of ``commerce'' in 
section 45 of the Trademark Act is ``all commerce which may lawfully be 
regulated by Congress,'' the Office presumes that an applicant who 
alleges that ``the mark is in use in commerce,'' is claiming lawful 
use. The Office generally questions the lawfulness of the alleged use 
in commerce only where the record shows a clear violation of law, such 
as the sale or transportation of a controlled substance. TMEP section 
907.
    The Office proposes to add new Sec.  2.48 to provide that the 
Office does not issue duplicate registrations. If two applications on 
the same register would result in registrations that are exact 
duplicates, the Office will permit only one application to mature into 
registration, and will refuse registration in the other application. 
This codifies the long-standing practice of the Office. TMEP section 
703. The Office will normally refuse registration in the later-filed 
application. The applicant may overcome the refusal by abandoning the 
earlier-filed application or surrendering the registration.
    The Office proposes to amend Sec.  2.52(b) to provide that special 
form drawings of marks that do not include color ``should'' show the 
mark in black on a white background, rather than that the drawing 
``must'' show the mark in black on a white background. This gives 
examining attorneys discretion to accept a drawing that shows the mark 
in white on a black background, if this will more accurately depict the 
mark.
    The Office proposes to amend Sec.  2.52(b)(1) to change the heading 
``Color marks'' to ``Marks that include color.'' This corrects an 
error. Color marks are marks that consist solely of one or more colors 
used on particular objects, and Sec.  2.52(b)(1) applies to all marks 
that include color.
    The Office proposes to amend Sec.  2.53(a) to remove the reference 
to submission of a digitized image of a standard character mark as a 
drawing in an application filed via the Trademark Electronic 
Application System (``TEAS''). This is no longer an option. An 
applicant who wants to apply for a standard character mark through TEAS 
must enter the mark in the appropriate field on the TEAS form, and 
check the box to claim that the mark consists of standard characters. 
TEAS generates the drawing. The Office also proposes to combine 
Sec. Sec.  2.53(a)(1) and (2), because the requirements for standard 
character drawings in TEAS and TEAS Plus applications are now the same.
    The Office proposes to amend Sec.  2.56(b)(1) to add a reference to 
``displays associated with the goods.'' This makes the rule consistent 
with the definition of ``use in commerce'' in section 45 of the Act.
    The Office proposes to amend Sec.  2.56(d)(2) to add a provision 
that

[[Page 33358]]

where an applicant files a paper specimen that exceeds the size 
requirements of paragraph (d)(1), and the Office creates a digital 
facsimile copy of the specimen, the Office will destroy the original 
bulky specimen. This is consistent with current practice. TMEP section 
904.02(b).
    The Office proposes to amend Sec.  2.56(d)(4) to provide that 
specimens filed through TEAS may be in .pdf format. This provides TEAS 
filers with an additional option for filing specimens, and is 
consistent with current practice.
    The Office proposes to amend Sec.  2.62 and its heading to add a 
requirement that a response to an Office action be signed by the 
applicant, someone with legal authority to bind the applicant (e.g., a 
corporate officer or general partner of a partnership), or a 
practitioner who meets the requirements of Sec.  10.14 (``qualified 
practitioner''). This is consistent with TMEP section 712.01.
    The Office proposes to amend Sec.  2.64(c)(1) to state that the 
filing of an amendment to allege use does not extend the deadline for 
filing a response to an outstanding Office action, appeal to the 
Trademark Trial and Appeal Board, or petition to the Director. This is 
consistent with current practice. TMEP section 1104.
    The Office proposes to amend Sec.  2.65(a) to add a reference to a 
notice of appeal as a response that avoids abandonment of an 
application. This is consistent with section 12(b) of the Act.
    The Office proposes to revise Sec.  2.73 to provide that only an 
application that includes section 1(a) of the Trademark Act as a filing 
basis, or for which an acceptable allegation of use under Sec.  2.76 or 
Sec.  2.88 has been filed, may be amended to seek concurrent use 
registration. The rule currently provides that applications under 
section 44 or section 66(a) of the Act may be amended to recite 
concurrent use. However, because section 2(d) of the Act requires 
concurrent lawful use in commerce by the parties to a concurrent use 
proceeding, the Office deems it inappropriate to allow amendment to 
seek concurrent use absent allegations and evidence of use in commerce. 
The Office also proposes to add a statement to Sec.  2.99(g) that 
applications based solely on section 44 or section 66(a) are not 
subject to concurrent use registration proceedings.
    The Office proposes to revise Sec.  2.74 to modernize the language, 
and to add a provision that an amendment to an application must be 
signed by the applicant, someone with legal authority to bind the 
applicant (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. This is consistent with TMEP 
section 605.02.

Intent To Use

    The Office proposes to amend Sec.  2.76(d) to provide that an 
amendment to allege use (``AAU'') should be captioned ``Allegation of 
Use'' rather than ``amendment to allege use.'' This is consistent with 
the language on the Office's TEAS form. The term ``allegation of use'' 
encompasses both AAUs under Sec.  2.76 and statements of use (``SOUs'') 
under Sec.  2.88. The principal difference between AAUs and SOUs is the 
time of filing, and the same TEAS form is used for both filings. The 
proposed rule merely sets forth the preferred title. The Office will 
still accept documents titled ``amendment to allege use'' or 
``statement of use.''
    The Office proposes to amend Sec.  2.77 to add a provision that 
amendments deleting a basis in a multiple-basis application, notices of 
change of attorney, and notices of change of address can be entered in 
a section 1(b) application during the period between the issuance of 
the notice of allowance and the submission of a statement of use. This 
is consistent with current practice. TMEP section 1107.
    The Office proposes to amend Sec.  2.88(b)(1)(ii) to make it 
clearer that the dates of use specified in a statement of use must 
pertain to the goods or services identified in the notice of allowance.
    The Office proposes to amend Sec.  2.88(b)(3) to provide that the 
applicant must pay a filing fee sufficient to cover at least one class 
within the statutory time for filing the statement of use, or the 
application will be abandoned. If the applicant submits a fee 
insufficient to cover all the classes in a multiple-class application, 
the applicant must specify the classes to be abandoned. If the 
applicant submits a fee sufficient to pay for at least one class, but 
insufficient to cover all the classes, and the applicant has not 
specified the class(es) to which the fee applies, the Office will issue 
a notice granting the applicant additional time to submit the fee(s) 
for the remaining classes, or specify the class(es) to be abandoned. If 
the applicant does not submit the required fee(s) or specify the 
class(es) to be abandoned within the set time period, the Office will 
apply the fees paid to the lowest numbered class(es) in ascending 
order, and will delete the goods/services in the higher class(es) from 
the application. This is consistent with current practice.
    The Office proposes to amend Sec.  2.88(d) to provide that an SOU 
should be captioned ``Allegation of Use'' rather than ``statement of 
use.'' This is consistent with the proposed amendment to Sec.  2.76(d), 
discussed above.
    The Office proposes to amend Sec.  2.88(i)(2) to remove the 
provision that if any goods or services specified in the notice of 
allowance are omitted from the identification of goods or services in 
the SOU, the examining attorney will inquire about the discrepancy and 
permit the applicant to reinsert the omitted goods/services, and 
substitute a provision that the Office will delete the omitted goods/
services from the application and will not permit the applicant to 
reinsert them. Currently, if goods/services identified in the 
application are omitted from a paper SOU, but the applicant has not 
indicated an intention to delete those goods/services from the 
application or filed a request to divide the application, the examining 
attorney will contact the applicant to confirm that the applicant 
intends to delete the omitted goods/services, and will permit the 
applicant to amend the SOU to claim use on or in connection with the 
omitted goods/services. However, when an SOU is filed electronically, 
the TEAS form requires the applicant to expressly indicate an intention 
to delete a class, or to delete goods/services within a class. 
Therefore, if any of the goods/services identified in the application 
do not appear in the identification of goods/services in a TEAS SOU, 
the examining attorney does not inquire about the discrepancy and the 
applicant may not reinsert the omitted goods/services. TMEP section 
1109.13. There have been cases in which these inquiries concerning 
paper SOUs caused unnecessary delay in applications after the applicant 
intentionally omitted goods/services. Therefore, the Office is changing 
its practice with paper SOUs, and will discontinue issuing inquiries 
about omitted goods/services. Under the proposed rule, the practice 
with paper SOUs would be consistent with the current practice for 
electronically filed SOUs. Applicants are responsible for setting forth 
(or incorporating by reference) the goods/services on or in connection 
with which the mark is in use. This is consistent with the Office's 
long-standing practice with respect to requests for extensions of time 
to file a statement of use, set forth in Sec.  2.89(f).
    The Office proposes to revise Sec. Sec.  2.89(a)(2) and (b)(2) to 
add a provision that if an applicant timely submits a fee sufficient to 
pay for at least one class, but insufficient to cover all the classes, 
and the applicant has not

[[Page 33359]]

specified the class(es) to which the fee applies, the Office will issue 
a notice granting the applicant additional time to submit the fee(s) 
for the remaining classes, or specify the class(es) to be abandoned. If 
the applicant does not submit the required fee(s) or specify the 
class(es) to be abandoned within the set time period, the Office will 
apply the fees paid to the lowest numbered class(es) in ascending 
order, and will delete the goods/services in the higher class(es) from 
the application. This is consistent with current practice. TMEP section 
1108.02(c).

Amendments to Classification

    The Office proposes to amend Sec.  2.85(a) to add a reference to 
amendments to adopt international classification.
    The Office proposes to combine Sec. Sec.  2.85(b) and (c), 
pertaining to the United States classification, and to add a reference 
to amendments to adopt international classification.
    The Office proposes to redesignate Sec.  2.85(f), pertaining to 
certification marks and collective membership marks, as Sec.  2.85(c), 
and to add a statement that the classes set forth in Sec. Sec.  6.3 and 
6.4 do not apply to applications based on section 66(a) of the 
Trademark Act and registered extensions of protection. This is 
consistent with current practice. TMEP section 1904.02(b). Classes A, 
B, & 200 are classes from the old United States classification system 
that are still used in the United States to classify certification and 
collective membership marks, but are not included in the international 
classes under the Nice Agreement Concerning the International 
Classification of Goods and Services for the Purposes of the 
Registration of Marks (``Nice Agreement''). Therefore, they do not 
apply to section 66(a) applications and registered extensions of 
protection, in which classification is determined by the International 
Bureau of the World Intellectual Property Organization (``IB''). The 
Office proposes to make conforming amendments to Sec. Sec.  6.3 and 
6.4, indicating that these sections apply only to applications based on 
sections 1 and 44 of the Trademark Act and registrations resulting from 
such applications.
    The Office proposes to redesignate Sec.  2.85(d), which now 
provides that renewals filed on registrations issued under a prior 
classification system will be processed on the basis of that system, as 
Sec.  2.183(f), and amend it to add an exception for registrations that 
have been amended to adopt international classification pursuant to 
Sec.  2.85(e)(3).
    Proposed Sec.  2.85(d) provides that in an application under 
section 66(a) of the Act or registered extension of protection, the 
classification cannot be changed from the classification assigned by 
the IB; classes cannot be added; and goods or services cannot be 
transferred from one class to another in a multiple-class application. 
This is consistent with current practice. TMEP sections 1401.03(d) and 
1904.02(b). Under Article 3(2) of the Madrid Protocol, the IB controls 
classification. A section 66(a) application and any resulting 
registration remains part of the international registration, and a 
change of classification in the United States would have no effect on 
the international registration.
    The Office proposes to remove Sec.  2.85(e), which now pertains to 
appeal and renewal fee deficiencies in multiple-class applications and 
registrations, and move the provisions on appeal fees to Sec.  
2.141(b). Procedures for processing renewal fee deficiencies in 
multiple-class registrations are already covered in Sec.  2.183(e).
    Proposed Sec.  2.85(e) provides for changes in classification 
pursuant to the Nice Agreement. The international classification 
changes periodically, and these changes are listed in the International 
Classification of Goods and Services for the Purposes of the 
Registration of Marks, which is published by the World Intellectual 
Property Organization. The Nice Agreement edition currently in effect 
is the 9th edition, 2006, which became effective January 1, 2007.
    Proposed Sec.  2.85(e)(1) provides that when international 
classification changes, the new requirements apply only to applications 
filed on or after the effective date of the change.
    Proposed Sec.  2.85(e)(2) provides that in section 1 and 44 
applications filed before the effective date of a change in 
classification, and registrations resulting from such applications, the 
applicant or registrant may reclassify the goods or services in 
accordance with the current edition, upon payment of the required fees. 
Proposed Sec.  2.85(e)(3) sets forth the requirements for amendment of 
a pending application, and proposed Sec.  2.85(e)(4) sets forth the 
requirements for amendment of a registration to reclassify the goods or 
services in accordance with the current edition of the Nice Agreement. 
This is consistent with current practice, set forth in TMEP sections 
1401.11 and 1609.04.
    The Office proposes to redesignate Sec.  2.85(g), which provides 
that classification schedules shall not limit or extend the applicant's 
rights, as Sec.  2.85(f), and amend it to note an exception that in 
section 66(a) applications, the scope of the identification of goods or 
services for purposes of permissible amendments is limited by the 
class, because the classification assigned by the IB cannot be changed. 
This is consistent with TMEP section 1402.07(a).

Requests To Divide

    The Office proposes to break the current Sec.  2.87(c) into 
subsections 2.87(c)(1) and (c)(2).
    The Office proposes to add new Sec.  2.87(c)(3) to provide that an 
applicant may file a request to divide out one or more bases of a 
multiple-basis application during the period between the issuance of 
the notice of allowance under section 13(b)(2) of the Act and the 
filing of a statement of use under Sec.  2.88. This is consistent with 
current practice.
    The Office proposes to add Sec.  2.87(e) to provide that any 
outstanding time period for action by the applicant in the original 
application at the time of the division will be applicable to each new 
separate application created by the division. This provision appeared 
in Sec.  2.87(a) when the rule was first enacted in 1989, but was 
inadvertently removed when the rules were amended to adjust application 
filing fees on January 19, 2005. See notices at 54 FR 37562 (Sept. 11, 
1989) and 70 FR 2952 (Jan. 19, 2005). The Office proposes to add 
certain specified exceptions, consistent with current practice, as set 
forth in TMEP sections 1110.04 and 1110.05.
    The Office proposes to add new Sec.  2.87(f) to add a requirement 
that a request to divide be signed by the applicant, someone with legal 
authority to bind the applicant (e.g., a corporate officer or general 
partner of a partnership), or a qualified practitioner. This is 
consistent with TMEP section 1110.
    The Office proposes to add new Sec.  2.87(g), setting forth the 
procedures for division of a section 66(a) application after a change 
in ownership with respect to some, but not all, of the goods or 
services. This incorporates existing practice, set forth in TMEP 
section 1110.08.
    The Office proposes to add Sec.  2.171(b)(2), providing for 
division of registered extensions of protection upon notification by 
the IB that ownership of an international registration has changed with 
respect to some, but not all, of the goods or services. This reflects 
current practice. TMEP section 1615.02.

Post Registration

    The Office proposes to amend Sec.  2.153 to remove the requirement 
for specification of the type of commerce in

[[Page 33360]]

an affidavit claiming the benefits of section 12(c) of the Trademark 
Act of 1946 for a registration issued under the Trademark Acts of 1881 
or 1905. Because the definition of ``commerce'' in section 45 of the 
Act is ``all commerce which may lawfully be regulated by Congress,'' 
the Office presumes that a registrant who alleges that the mark is in 
use in commerce is alleging that the mark is in use in a type of 
commerce that Congress can regulate. The Office amended the Trademark 
Rules of Practice to remove the requirement for a specification of the 
type of commerce in applications for registration under section 1(a) of 
the Act, allegations of use in applications under section 1(b) of the 
Act, and affidavits under sections 8 and 15 of the Act, effective 
October 30, 1999 (see notice at 64 FR 48900 (Sept. 8, 1999)), but 
inadvertently overlooked Sec.  2.153.
    The Office proposes to amend the center heading immediately after 
Sec.  2.158 to delete the wording ``DURING SIXTH YEAR.'' This corrects 
an oversight. The heading covers rules pertaining to affidavits or 
declarations under section 8 of the Act (``section 8 affidavits''). 
Effective October 30, 1999, such affidavits must be filed every tenth 
year after registration as well as during the sixth year.
    The Office proposes to amend Sec.  2.161(g)(3) to provide that 
specimens filed through TEAS may be in .pdf format. This provides TEAS 
filers with an additional option for filing specimens, and is 
consistent with current practice.
    The Office proposes to amend Sec.  2.163(b) to provide that a 
registration will be cancelled for failure to respond to an Office 
action issued in connection with a section 8 affidavit only if there is 
no time remaining in the grace period under section 8(c)(1) of the Act. 
This corrects an oversight in the current rule. It would be 
inappropriate to cancel a registration under section 8 before 
expiration of the grace period. If there is time remaining in the grace 
period, the owner may file a complete new affidavit.
    The Office proposes to amend Sec.  2.167 to provide that an 
affidavit or declaration of incontestability under section 15 of the 
Trademark Act must be filed in the name of the owner of the 
registration, and verified by the owner or a person properly authorized 
to sign on behalf of the owner (Sec.  2.161(b)). This is consistent 
with TMEP section 1605.04.
    The Office proposes to amend Sec.  2.171(a) to remove the 
requirement that a request for a new certificate of registration upon 
change of ownership include the original certificate of registration. 
This is consistent with current practice, and with Office practice in 
connection with requests to amend or correct registrations under 
section 7 of the Trademark Act. See notice at 69 FR 51362 (Aug. 29, 
2004), removing the requirement that the original certificate be 
included with a section 7 request.
    The Office further proposes to add a statement to Sec.  2.171(a) 
that in a registered extension of protection, the assignment must be 
recorded with the IB before it can be recorded in the Office. This is 
consistent with current Sec.  7.22.
    The Office proposes to redesignate Sec.  2.171(b) as (b)(1), and 
amend it to indicate that it applies only to registrations resulting 
from applications based on section 1 or 44 of the Act.
    The Office proposes to add Sec.  2.171(b)(2), providing for 
division of registered extensions of protection upon notification by 
the IB that ownership of an international registration has changed with 
respect to some, but not all, of the goods or services. This reflects 
current practice. TMEP section 1615.02.
    The Office proposes to reorganize Sec.  2.173, pertaining to 
amendment of registrations. The current paragraph (a) is broken into 
proposed paragraphs (a) through (d).
    Proposed Sec.  2.173(a) provides that the owner of a registration 
may file a written request to amend a registration or to disclaim part 
of the mark in the registration; and that if the registration is 
involved in an inter partes proceeding before the Trademark Trial and 
Appeal Board (``TTAB''), the request must be filed by appropriate 
motion to the Board. This is consistent with the current Sec.  2.173(a) 
and TMEP section 1609.01(b).
    The current paragraph (b) is broken into proposed paragraphs (e) 
and (g).
    Proposed Sec.  2.173(b) sets forth the requirements for the request 
for amendment.
    Proposed Sec.  2.173(b)(2) requires that the request be filed by 
the owner and signed by the owner, someone with legal authority to bind 
the owner (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. The requirement for filing 
in the name of the owner is consistent with current practice. However, 
the requirement for signature by someone with legal authority to bind 
the owner or by a qualified practitioner changes current practice 
slightly. TMEP section 1609.01(b) now permits signature by a person 
with firsthand knowledge of the facts and actual or implied authority 
to act on behalf of the owner, which could include someone without 
legal authority to bind the owner. The Office believes that the better 
practice would be to require that a request to amend a registration be 
signed by someone with legal authority to bind the owner or by a 
qualified practitioner.
    Proposed Sec.  2.173(b)(3) provides that an amendment to change the 
mark include: A specimen showing the mark as used on or in connection 
with the goods or services; an affidavit or a declaration under Sec.  
2.20 stating that the specimen was in use in commerce at least as early 
as the filing date of the amendment; and a new drawing of the amended 
mark. This is consistent with current Sec.  2.173(a) and TMEP section 
1609.02(c).
    Proposed Sec.  2.173(c) provides that the registration must still 
contain registrable matter, and proposed Sec.  2.173(d) provides that 
the amendment may not materially alter the mark. This is consistent 
with current Sec.  2.173(a).
    Proposed Sec.  2.173(e) provides that no amendment to the 
identification of goods or services in a registration will be 
permitted, except to restrict the identification or change it in ways 
that would not require republication of the mark. This is consistent 
with current Sec.  2.173(b).
    The Office proposes to add new Sec.  2.173(f) to provide that if 
the registration includes a disclaimer, description of the mark, or 
miscellaneous statement, any amendment must include a request to make 
any necessary conforming amendments to the disclaimer, description, or 
other miscellaneous statements. For example, if the mark is XYZ INC., 
with a disclaimer of the entity designator ``INC.,'' and the owner of 
the registration proposes to amend the mark to remove ``INC.,'' the 
proposed amendment should also request that the disclaimer be deleted. 
If an amendment is filed that does not include all necessary conforming 
amendments, the examiner will issue an Office action requiring the 
amendments.
    Proposed Sec.  2.173(g) provides that an amendment seeking the 
elimination of a disclaimer will not be permitted, unless deletion of 
the disclaimed portion of the mark is also sought. The proposed rule 
provides an exception to the general prohibition against amendments to 
delete disclaimers, currently set forth in Sec.  2.173(b), in the 
limited situation where the mark is amended to delete the disclaimer.
    The Office proposes to amend Sec.  2.175(b)(2) to require that a 
request to correct the owner's error in a registration be filed by the 
owner and signed by the owner, someone with

[[Page 33361]]

legal authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a qualified practitioner. This is 
consistent with proposed Sec.  2.173(b)(2), discussed above.
    The Office proposes to redesignate Sec.  2.184(b) as Sec.  
2.184(b)(1), and amend it to provide that a registration will expire 
for failure to respond to an Office action issued in connection with a 
renewal application only if there is no time remaining in the grace 
period under section 9(a) of the Act. This corrects an oversight in the 
current rule. It would be inappropriate to cancel a registration for 
failure to renew prior to expiration of the renewal grace period. If 
there is time remaining in the grace period, the registrant may file a 
complete new renewal application.
    The Office proposes to add new Sec.  2.183(f) to provide that 
applications for renewal of registrations issued under a prior 
classification system will be processed on the basis of that system, 
except where the registration has been amended to adopt international 
classification. The provision that applications for renewal of 
registrations issued under a prior classification system are processed 
on the basis of that system is currently set forth in Sec.  2.85(d). 
The reference to amendment of classification is consistent with 
proposed Sec.  2.85(e)(3), discussed above.
    The Office proposes to add Sec.  2.184(b)(2), requiring that a 
response to an Office action issued in connection with a renewal 
application be signed by the registrant, someone with legal authority 
to bind the registrant (e.g., a corporate officer or general partner of 
a partnership), or a qualified practitioner. This is consistent with 
TMEP section 1606.12.

Madrid Protocol

    The Office proposes to amend Sec.  7.11(a)(2) to provide that the 
applicant's entity in an application for international registration 
must be identical to the entity listed as owner of the basic 
application or registration. This is consistent with current practice. 
TMEP section 1902.02(c). Under section 61(a) of the Trademark Act, only 
the owner of the basic application or registration can file an 
international application.
    The Office proposes to amend the last sentence of Sec.  7.14(e) to 
change ``submitted to'' to ``received in,'' for clarity.
    The Office proposes to amend Sec.  7.25(a) to remove Sec. Sec.  
2.175 and 2.197 from the list of rules in part 2 that do not apply to 
an extension of protection of an international registration to the 
United States. Section 2.175 pertains to correction of mistakes by a 
registrant. Generally, all requests to record changes to an 
international registration must be filed at the IB, because an 
extension of protection of an international registration remains part 
of the international registration even after registration in the United 
States. However, in the limited circumstance where the holder of an 
international registration makes a mistake in a document filed during 
prosecution in the Office that affects only the extension of protection 
to the United States, the registrant may request correction of the 
error pursuant to Sec.  2.175. For example, if there were a minor 
typographical error in an amendment to the identification of goods in a 
section 66(a) application, and the mark registered, the owner of the 
registration could request correction under Sec.  2.175. If the Office 
grants the request, the Office will notify the IB of the change to the 
extension of protection to the United States.
    Section Sec.  2.197 provides a ``certificate of mailing or 
transmission'' procedure to avoid lateness due to mail delay. This 
procedure may currently be used by section 66(a) applicants during 
prosecution of applications. The procedure may also be available to 
owners of registered extensions of protection who file affidavits of 
use or excusable nonuse under section 71 of the Trademark Act. 
Therefore, its inclusion in Sec.  7.25(a) was an error. Under 
Sec. Sec.  2.197(a)(2)(ii) and 7.4(e), the certificate of mailing or 
transmission procedure remains inapplicable to international 
applications under Sec.  7.11, responses to notices of irregularity 
under Sec.  7.14, subsequent designations under Sec.  7.21, requests to 
record changes of ownership under Sec.  7.23, requests to record 
restrictions of the holder's right of disposal (or the release of such 
restrictions) under Sec.  7.24, and requests for transformation under 
Sec.  7.31. Note: On February 29, 2008, the Office published a notice 
of proposed rulemaking that would prohibit the use of certificates of 
mailing or transmission for certain specified documents for which an 
electronic form is available in the Trademark Electronic Application 
System (``TEAS''). See notice at 73 FR 11079. The Office is currently 
reviewing the comments received in response to this proposal.

Assignment Cover Sheet

    The Office proposes to amend Sec.  3.31 to add a new paragraph 
(a)(8), requiring that a cover sheet submitted with a request to record 
a change of ownership of a trademark application or registration must 
include the citizenship of the party receiving the interest; and that 
if the party receiving the interest is a domestic partnership or 
domestic joint venture, the cover sheet must include the names, legal 
entities, and national citizenship (or state or country of 
organization) of all general partners or active members that compose 
the partnership or joint venture. Currently, Sec.  3.31(f) provides 
that the cover sheet ``should'' include this information, but the 
Office proposes to make it mandatory. This will allow for more 
efficient processing of trademark applications and registrations.
    The applicant's entity and citizenship is required in an 
application for registration under Sec.  2.32(a)(3)(iii) and must be 
submitted before the Office can issue a registration certificate in the 
name of the new owner. It is also required when the new owner of a 
registration wants to change ownership in the trademark database and/or 
obtain a new certificate of registration in the name of the new owner. 
Requiring the information whenever a change of ownership is recorded 
will eliminate the need for the examining attorney or the Post 
Registration examiner to issue an Office action requiring that it be 
submitted, which can cause substantial delay. Furthermore, in many 
cases, having complete information about the receiving party will 
ensure that the trademark database is automatically updated at the time 
of recordation or shortly thereafter. See TMEP sections 504 et seq. 
regarding automatic updating of the trademark database upon recordation 
of a change of ownership. This will often ensure that the original 
certificate of registration issues in the name of the new owner.

References to ``Paper''

    The Office proposes to amend Sec. Sec.  2.6(b)(6), 2.21(b), 
2.21(c), 2.27(d), 2.87(d), 2.146(e)(1), 2.146(e)(2), and 2.146(i) to 
delete references to ``papers'' and substitute ``documents'' where 
appropriate, in order to encompass documents filed or issued 
electronically.
    The Office proposes to amend Sec. Sec.  2.6(a)(19), 2.6(b)(3), and 
2.56(d)(2) to delete references to ``file wrapper'' and substitute 
``record'' or ``official record.'' The Office now maintains electronic 
records of applications and registrations.
    The Office proposes to amend Sec. Sec.  2.62, 2.65(a), 2.66(a)(1), 
2.66(d), 2.66(f)(1), 2.81(b), 2.89(a), 2.89(a)(3), 2.89(g), 2.93, 
2.99(d)(2), 2.146(d), 2.146(e)(1), 2.146(e)(2), 2.146(j)(1), 2.163(b), 
2.165(b), 2.176, 2.184(b), 2.186(b), 7.39(b) and 7.40(b) to change 
references to ``mailing'' to ``issuance,'' to encompass Office actions 
and

[[Page 33362]]

communications that are issued electronically.
    The Office proposes to amend Sec.  2.81(b) to remove the sentence 
stating that ``The mailing date that appears on the notice of allowance 
will be the issue date of the notice of allowance,'' because it is 
unnecessary. The rule already states that the notice of allowance will 
include the issue date.
    The Office proposes to amend Sec. Sec.  2.84(b), 2.173, 2.174, and 
2.175 to delete references to ``printed,'' and substitute ``issued'' 
where appropriate, in order to encompass documents issued 
electronically.
    The Office proposes to amend Sec. Sec.  2.87(d), 2.146(e)(i), and 
2.146(i) to delete references to ``paper'' and to substitute 
``document,'' to encompass documents filed through TEAS.
    The Office proposes to remove the references in Sec.  2.173(c), 
2.174, and 2.175(c) to printed copies of amendments and corrections 
under section 7 of the Act.

Appeal Fees

    The Office proposes to reorganize Sec.  2.141 to move the 
provisions pertaining to appeal fees, some of which were previously set 
forth in Sec.  2.85(e), to Sec.  2.141(b). The proposed rule is 
consistent with current practice, set forth in Trademark Trial and 
Appeal Board Manual of Procedure section 1202.04.

Other Changes

    The Office proposes to amend Sec. Sec.  2.6(a)(12) and (13), 
2.38(b), 2.41(a), 2.44(a) and (b), 2.46, 2.47, 2.61(a), 2.64(c)(1), 
2.65(c), 2.75(a) and (b), 2.81(a) and (b), 2.85(b), 2.88(a), 2.99(g), 
2.146(b), and 2.167, to replace section symbols with the word 
``section.'' This is consistent with references to the statute in other 
rules, and with the format recommended in the Federal Register Document 
Drafting Handbook, National Archives and Records Administration, Office 
of the Federal Register (Oct. 1998). Section symbols are used in rules 
and Federal Register notices only to refer to other sections of the 
CFR.
    The Office proposes to amend Sec.  2.6(a)(8) to delete ``assignee'' 
and substitute ``registrant.'' This makes it clear that any registrant 
can request a new certificate of registration, upon payment of the 
required fee.
    The Office proposes to revise Sec.  2.25 to provide that documents 
filed in the Office by the applicant or registrant become part of the 
official record and will not be returned or removed. The rule currently 
provides only for applications, and the Office proposes to revise it to 
encompass all documents filed in connection with an application or 
registration. This is consistent with current practice. See TMEP 
section 404. The Office proposes to make an exception for documents 
ordered to be filed under seal pursuant to a protective order issued by 
a court or by the TTAB.
    The Office proposes to remove Sec.  2.26, which provides that a 
drawing from an abandoned application may be transferred to and used in 
a new application, if the file has not been destroyed. This rule is no 
longer in use and is deemed unnecessary.
    The Office proposes to amend Sec.  2.32(a)(6) to delete the word 
``and'' after the semicolon, and to amend Sec.  2.32(a)(7) to change a 
period to a semicolon.
    The Office proposes to amend Sec.  2.86(a)(2) to delete the period 
and substitute a semicolon, followed by the word ``and'' (``; and'').
    The Office proposes to amend Sec.  2.146(c) to add a provision that 
a petition to the Director be signed by the petitioner, someone with 
legal authority to bind the petitioner (e.g., a corporate officer or 
general partner of a partnership), or a qualified practitioner. The 
proposed rule further provides that when facts are to be proved on 
petition, the petitioner must submit proof in the form of affidavits or 
declarations in accordance with Sec.  2.20, signed by someone with 
firsthand knowledge of the facts to be proved. This is consistent with 
TMEP sections 1705.03 and 1705.07.
    The Office proposes to amend Sec.  2.195(b) to delete the phrase, 
``In addition to being mailed,'' because it is unnecessary.
    The Office proposes to amend Sec.  2.195(e) to clarify the 
procedures for filing a petition to the Director to consider 
correspondence filed on the date of attempted filing by Express Mail 
during a postal service interruption or emergency within the meaning of 
35 U.S.C. 21(a). Proposed Sec.  2.195(e)(1) provides that a person who 
attempted to file correspondence by Express Mail, but was unable to 
deposit the correspondence with the United States Postal Service due to 
the interruption or emergency, may petition the Director to consider 
the correspondence to have been filed on the date of attempted filing. 
Proposed Sec.  2.195(e)(2) sets forth the requirements for the 
petition. Proposed Sec.  2.195(e)(3) notes that this procedure does not 
apply to correspondence that is excluded from the Express Mail 
procedure pursuant to Sec.  2.198(a)(1). This is consistent with 
current practice.

Rule Making Requirements

    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Administrative Procedure Act: This rule merely involves rules of 
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A). 
Therefore, this rule may be adopted without prior notice and 
opportunity for public comment under 5 U.S.C. 553(b) and (c), or 
thirty-day advance publication under 5 U.S.C. 553(d). However, the 
Office has chosen to seek public comment before implementing the rule.
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 (or any other 
law), neither a regulatory flexibility analysis nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is 
required. See 5 U.S.C. 603.
    The proposed rules clarify certain requirements for trademark 
applications and other trademark-related documents, modernize the 
language of the rules, and make some other miscellaneous procedural 
changes. In large part, the proposed rule changes are intended to 
codify existing practice. Although the proposed rules may affect any 
trademark applicant or registrant, because they would merely codify the 
existing practice of the Office, or concern relatively minor procedural 
matters, the changes proposed in this notice will not have a 
significant economic impact on a substantial number of small entities.
    Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 
U.S.C. 1532, that agencies prepare an assessment of anticipated costs 
and benefits before issuing any rule that may result in expenditure by 
State, local, and tribal governments, in the aggregate, or by the 
private sector, of $100 million or more (adjusted annually for 
inflation) in any given year. This rule would have no such effect on 
State, local, and tribal governments or the private sector.
    Executive Order 13132: This rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Paperwork Reduction Act: This proposed rule involves information 
collection requirements which are subject to review by the Office of 
Management and Budget under the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.). The collections of information in this proposed 
rule have been reviewed and previously approved

[[Page 33363]]

by OMB under control numbers 0651-0009, 0651-0050, 0651-0051, 0651-
0054, 0651-0055, and 0651-0056.
    The United States Patent and Trademark Office is not resubmitting 
any information collection package to OMB for its review and approval 
because the changes in this proposed rule would not affect the 
information collection requirements associated with the information 
collections under the OMB control numbers listed above. The changes in 
this notice are limited to amending the rules of practice to simplify 
and clarify the requirements for amendments to applications and 
registrations, reword and reorganize the rules for clarity purposes, 
and codify current practices and procedures.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reduction of this 
burden to: (1) The Office of Information and Regulatory Affairs, Office 
of Management and Budget, New Executive Office Building, Room 10202, 
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for 
the Patent and Trademark Office; and (2) Commissioner for Trademarks, 
P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 3

    Administrative practice and procedure, Trademarks.

37 CFR Part 6

    Administrative practice and procedure, Trademarks, Classification.

37 CFR Part 7

    Administrative practice and procedure, Trademarks, International 
Registration.

    For the reasons given in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office 
proposes to amend parts 2, 3, 6, and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    1. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

    2. Revise Sec. Sec.  2.6(a)(8), (12), (13) and (19), and Sec. Sec.  
2.6(b)(3) and (6) to read as follows:


Sec.  2.6  Trademark fees.

* * * * *
    (a) * * *
    (8) For issuing a new certificate of registration upon request of 
registrant--$100.00.
* * * * *
    (12) For filing an affidavit under section 8 of the Act, per 
class--$100.00.
    (13) For filing an affidavit under section 15 of the Act, per 
class--$200.00.
* * * * *
    (19) Dividing an application, per new application created--$100.00.
* * * * *
    (b) * * *
    (3) Certified or uncertified copy of a trademark-related official 
record--$50.00.
* * * * *
    (6) For recording each trademark assignment, agreement or other 
document relating to the property in a registration or application.
* * * * *
    3. Revise paragraphs 2.21(a) introductory text, (b), and (c) to 
read as follows:


Sec.  2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application under 
section 1 or section 44 of the Act that is in the English language and 
contains all of the following:
* * * * *
    (b) If the applicant does not submit all the elements required in 
paragraph (a) of this section, the Office will deny a filing date and 
issue a notice explaining why the filing date was denied.
    (c) If the application was filed on paper, the applicant may 
correct and resubmit the application and fee. If the resubmitted papers 
and fee meet all the requirements of paragraph (a) of this section, the 
Office will grant a filing date as of the date the Office receives the 
corrected document.
    4. Revise Sec.  2.23(a)(2) to read as follows:


Sec.  2.23  Additional requirements for TEAS Plus application.

    (a) * * *
    (2) Maintain a valid e-mail correspondence address, and continue to 
receive communications from the Office by electronic mail.
* * * * *
    5. Revise Sec.  2.25 to read as follows:


Sec.  2.25  Documents not returnable.

    Except as provided in Sec.  2.27(e), documents filed in the Office 
by the applicant or registrant become part of the official record and 
will not be returned or removed.
    6. Remove Sec.  2.26.
    7. Revise Sec.  2.27(d) to read as follows:


Sec.  2.27  Pending trademark application index; access to 
applications.

* * * * *
    (d) Except as provided in paragraph (e) of this section, the 
official records of applications and all proceedings relating thereto 
are available for public inspection and copies of the documents may be 
furnished upon payment of the fee required by Sec.  2.6.
* * * * *
    8. Revise Sec. Sec.  2.32(a)(3)(iii), (a)(6), (a)(7), and (a)(8), 
and add new Sec. Sec.  2.32(a)(3)(iv), 2.32(a)(9), and (10) to read as 
follows:


Sec.  2.32  Requirements for a complete application.

    (a) * * *
    (3) * * *
    (iii) If the applicant is a domestic partnership, the names and 
citizenship of the general partners;
    (iv) If the applicant is a domestic joint venture, the names and 
citizenship of the active members of the joint venture;
* * * * *
    (6) A list of the particular goods or services on or in connection 
with which the applicant uses or intends to use the mark. In a United 
States application filed under section 44 of the Act, the scope of the 
goods and/or services covered by the section 44 basis may not exceed 
the scope of the goods and/or services in the foreign application or 
registration;
    (7) The international class of goods or services, if known. See 
Sec.  6.1 of this chapter for a list of the international classes of 
goods and services;
    (8) If the mark is not in standard characters, a description of the 
mark;
    (9) If the mark includes non-English wording, an English 
translation of that wording; and
    (10) If the mark includes non-Latin characters, a transliteration 
of those characters, and either a translation of the transliterated 
term in English, or a statement that the transliterated term has no 
meaning in English.
* * * * *

[[Page 33364]]

    9. Revise Sec.  2.33(b)(1) to read as follows:


Sec.  2.33  Verified statement.

* * * * *
    (b)(1) In an application under section 1(a) of the Act, the 
verified statement must allege:
    That the applicant is using the mark shown in the accompanying 
drawing; that the applicant believes it is the owner of the mark; that 
the mark is in use in commerce; that to the best of the declarant's 
knowledge and belief, no other person has the right to use the mark in 
commerce, either in the identical form or in such near resemblance as 
to be likely, when applied to the goods or services of the other 
person, to cause confusion or mistake, or to deceive; that the specimen 
shows the mark as used on or in connection with the goods or services; 
and that the facts set forth in the application are true.
* * * * *
    10. Revise Sec. Sec.  2.34(a)(1)(i), (a)(2), (a)(3)(i) and 
(a)(4)(ii), and add new Sec.  (a)(1)(v), to read as follows:


Sec.  2.34  Bases for filing.

    (a) (1) * * *
    (i) The trademark owner's verified statement that the mark is in 
use in commerce on or in connection with the goods or services listed 
in the application. If the verification is not filed with the initial 
application, the verified statement must also allege that the mark was 
in use in commerce on or in connection with the goods or services 
listed in the application as of the application filing date;
* * * * *
    (v) If more than one item of goods or services is specified in the 
application, the dates of use required in paragraphs (ii) and (iii) of 
this section need be for only one of the items specified in each class, 
provided that the particular item to which the dates apply is 
designated.
    (2) Intent-to-use under section 1(b) of the Act. In an application 
under section 1(b) of the Act, the applicant must verify that it has a 
bona fide intention to use the mark in commerce on or in connection 
with the goods or services listed in the application. If the 
verification is not filed with the initial application, the verified 
statement must also allege that the applicant had a bona fide intention 
to use the mark in commerce on or in connection with the goods or 
services listed in the application as of the filing date of the 
application.
    (3) * * *
    (i) The applicant's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the 
goods or services listed in the application. If the verification is not 
filed with the initial application, the verified statement must also 
allege that the applicant had a bona fide intention to use the mark in 
commerce as of the filing date of the application.
* * * * *
    (4) (i) * * *
    (ii) 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 
goods or services listed in the application. If the verification is not 
filed with the initial application, the verified statement must also 
allege that the applicant had a bona fide intention to use the mark in 
commerce as of the filing date of the application.
* * * * *
    11. Revise Sec.  2.38(b) to read as follows:


Sec.  2.38  Use by predecessor or by related companies.

* * * * *
    (b) If the mark is not being used by the applicant but is being 
used by one or more related companies whose use inures to the benefit 
of the applicant under section 5 of the Act, this must be indicated in 
the application.
* * * * *
    12. Amend Sec.  2.41 by revising the heading and paragraph (a) to 
read as follows:


Sec.  2.41  Proof of distinctiveness under section 2(f).

    (a) When registration is sought of a mark which would be 
unregistrable by reason of section 2(e) of the Act but which is said by 
applicant to have become distinctive in commerce of the goods or 
services set forth in the application, applicant may, in support of 
registrability, submit with the application, or in response to a 
request for evidence or to a refusal to register, affidavits, or 
declarations in accordance with Sec.  2.20, depositions, or other 
appropriate evidence showing duration, extent and nature of use in 
commerce and advertising expenditures in connection therewith 
(identifying types of media and attaching typical advertisements), and 
affidavits, or declarations in accordance with Sec.  2.20, letters or 
statements from the trade or public, or both, or other appropriate 
evidence tending to show that the mark distinguishes such goods.
* * * * *
    13. Revise Sec.  2.44 to read as follows:


Sec.  2.44  Collective mark.

    (a) In an application to register a collective mark under section 
1(a) of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks, 
but shall also specify the class of persons entitled to use the mark, 
indicating their relationship to the applicant, and the nature of the 
applicant's control over the use of the mark.
    (b) In an application to register a collective mark under section 
1(b), section 44 or section 66(a) of the Act, the application shall 
specify and contain all applicable elements required by the preceding 
sections for trademarks, but shall also specify the class of persons 
intended to be entitled to use the mark, indicating what their 
relationship to the applicant will be, and the nature of the control 
applicant intends to exercise over the use of the mark.
    14. Revise Sec.  2.45(b) to read as follows:


Sec.  2.45  Certification mark.

    (a) * * *
    (b) In an application to register a certification mark under 
section 1(b), section 44 or section 66(a) of the Act, the application 
shall include all applicable elements required by the preceding 
sections for trademarks. In addition, the application must: specify the 
conditions under which the certification mark is intended to be used; 
allege that the applicant intends to exercise legitimate control over 
the use of the mark; and allege that the applicant will not engage in 
the production or marketing of the goods or services to which the mark 
is applied. When the applicant files an allegation of use under Sec.  
2.76 or Sec.  2.88, the applicant must submit a copy of the standards 
that determine whether others may use the certification mark on their 
goods and/or in connection with their services.
    15. Revise Sec.  2.46 to read as follows:


Sec.  2.46  Principal Register.

    All applications will be treated as seeking registration on the 
Principal Register unless otherwise stated in the application. Service 
marks, collective marks, and certification marks are registered on the 
Principal Register, if they are registrable in accordance with the 
applicable provisions of section 2 of the Act.
    16. Revise Sec. Sec.  2.47(a), (b), (d) and (e) to read as follows:


Sec.  2.47  Supplemental Register.

    (a) In an application to register on the Supplemental Register 
under section 23 of the Act, the application shall so

[[Page 33365]]

indicate and shall specify that the mark has been in use in commerce, 
specifying the nature of such commerce, by the applicant.
    (b) In an application to register on the Supplemental Register 
under section 44 of the Act, the application shall so indicate. The 
statement of use in commerce may be omitted.
* * * * *
    (d) A mark in an application to register on the Principal Register 
under section 1(b) of the Act is eligible for registration on the 
Supplemental Register only after the applicant files an acceptable 
allegation of use under Sec.  2.76 or Sec.  2.88.
    (e) An application for registration on the Supplemental Register 
must conform to the requirements for registration on the Principal 
Register under section 1(a) of the Act, so far as applicable.
    17. Add new Sec.  2.48, to read as follows:


Sec.  2.48  Office does not issue duplicate registrations.

    If two applications on the same register would result in 
registrations that are exact duplicates, the Office will permit only 
one application to mature into registration, and will refuse 
registration in the other application.
    18. Revise Sec. Sec.  2.52(b) and (b)(1) to read as follows:


Sec.  2.52  Types of drawings and format for drawings.

* * * * *
    (b) Special form drawing. Applicants who seek to register a mark 
that includes a two or three-dimensional design; color; and/or words, 
letters, or numbers or the combination thereof in a particular font 
style or size must submit a special form drawing. The drawing should 
show the mark in black on a white background, unless the mark includes 
color.
    (1) Marks that include color. If the mark includes color, the 
drawing must show the mark in color, and the applicant must name the 
color(s), describe where the color(s) appear on the mark, and submit a 
claim that the color(s) is a feature of the mark.
* * * * *
    19. Revise Sec.  2.53(a) to read as follows:


Sec.  2.53  Requirements for drawings filed through the TEAS.

* * * * *
    (a) Standard character drawings. If an applicant seeks registration 
of a standard character mark, the applicant must enter the mark in the 
appropriate field on the TEAS form, and check the box to claim that the 
mark consists of standard characters.
* * * * *
    20. Revise Sec. Sec.  2.56(b)(1), (d)(2) and (d)(4) to read as 
follows:


Sec.  2.56  Specimens.

* * * * *
    (b)(1) A trademark specimen is a label, tag, or container for the 
goods, or a display associated with the goods. The Office may accept 
another document related to the goods or the sale of the goods when it 
is impracticable to place the mark on the goods, packaging for the 
goods, or displays associated with the goods.
* * * * *
    (d)(1) * * *
    (2) If the applicant files a specimen exceeding these size 
requirements (a ``bulky specimen''), the Office will create a digital 
facsimile of the specimen that meets the requirements of the rule 
(i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by 
11.69 inches (29.7 cm.) long) and put it in the record. The Office will 
destroy the original bulky specimen.
* * * * *
    (4) For a TEAS submission, the specimen must be a digitized image 
in .jpg or .pdf format.
    21. Revise Sec.  2.61(a) to read as follows:


Sec.  2.61  Action by examiner.

    (a) Applications for registration, including amendments to allege 
use under section 1(c) of the Act and statements of use under section 
1(d) of the Act, will be examined and, if the applicant is found not 
entitled to registration for any reason, applicant will be notified and 
advised of the reasons therefor and of any formal requirements or 
objections.
* * * * *
    22. Revise Sec.  2.62 to read as follows:


Sec.  2.62  Procedure for filing response.

    (a) Deadline. The applicant's response to an Office action must be 
received within six months from the date of issuance.
    (b) Signature. The applicant, someone with legal authority to bind 
the applicant (e.g., a corporate officer or genera