U. S. TRADEMARK LAW RULES OF PRACTICE & FEDERAL STATUTES U. S. PATENT & TRADEMARK OFFICE July 11, 2015 TABLE OF CONTENTS 37 C.F.R. PART 2-RULES OF PRACTICE IN TRADEMARK CASES RULES APPLICABLE TO TRADEMARK CASES § 2.1 [Reserved] § 2.2 Definitions. § 2.6 Trademark fees. § 2.7 Fastener Recordal Fees. REPRESENTATION BY ATTORNEYS OR OTHER AUTHORIZED PERSONS § 2.11 Applicants may be represented by an attorney. § 2.17 Recognition for representation. § 2.18 Correspondence, with whom held. § 2.19 Revocation or withdrawal of attorney. DECLARATIONS § 2.20 Declarations in lieu of oaths. APPLICATION FOR REGISTRATION § 2.21 Requirements for receiving a filing date. § 2.22 Requirements for a TEAS Plus application. § 2.23 Requirements for a TEAS RF application. § 2.24 Designation and revocation of domestic representative by foreign applicant. § 2.25 Documents not returnable. § 2.26 [Removed] § 2.27 Pending trademark application index; access to applications. § 2.32 Requirements for a complete trademark or service mark application. § 2.33 Verified statement for a trademark or service mark. § 2.34 Bases for filing a trademark or service mark application. § 2.35 Adding, deleting, or substituting bases. § 2.36 Identification of prior registrations. § 2.37 Description of mark. § 2.38 Use by predecessor or by related companies. § 2.41 Proof of distinctiveness under section 2(f). § 2.42 Concurrent use. § 2.43 Service mark. § 2.44 Requirements for a complete collective mark application. § 2.45 Requirements for a complete certification mark application; restriction on certification mark application. § 2.46 Principal Register. § 2.47 Supplemental Register. § 2.48 Office does not issue duplicate registrations. DRAWING § 2.51 Drawing required. § 2.52 Types of drawings and format for drawings. § 2.53 Requirements for drawings filed through the TEAS. § 2.54 Requirements for drawings submitted on paper. -3- July 11, 2015 SPECIMENS § 2.56 Specimens. § 2.59 Filing substitute specimen(s). EXAMINATION OF APPLICATION AND ACTION BY APPLICANTS § 2.61 Action by examiner. § 2.62 Procedure for filing response. § 2.63 Action after response. § 2.64 [Removed and Reserved] § 2.65 Abandonment. § 2.66 Revival of abandoned applications. § 2.67 Suspension of action by the Patent and Trademark Office. § 2.68 Express abandonment (withdrawal) of application. § 2.69 Compliance with other laws. AMENDMENT OF APPLICATION § 2.71 Amendments to correct informalities. § 2.72 Amendments to description or drawing of the mark. § 2.73 Amendment to recite concurrent use. § 2.74 Form and signature of amendment. § 2.75 Amendment to change application to different register. § 2.76 Amendment to allege use. § 2.77 Amendments between notice of allowance and statement of use. PUBLICATION AND POST PUBLICATION § 2.80 Publication for opposition. § 2.81 Post publication. § 2.82 Marks on Supplemental Register published only upon registration. § 2.83 Conflicting marks. § 2.84 Jurisdiction over published applications. CLASSIFICATION § 2.85 Classification schedules. § 2.86 Multiple-class applications. § 2.87 Dividing an application. POST NOTICE OF ALLOWANCE § 2.88 Statement of use after notice of allowance. § 2.89 Extensions of time for filing a statement of use. INTERFERENCES AND CONCURRENT USE PROCEEDINGS § 2.91 Declaration of interference. § 2.92 Preliminary to interference. § 2.93 Institution of interference. § 2.96 Issue; burden of proof. § 2.98 Adding party to interference. § 2.99 Application to register as concurrent user. -4- July 11, 2015 OPPOSITION § 2.101 Filing an opposition. § 2.102 Extension of time for filing an opposition. § 2.104 Contents of opposition. § 2.105 Notification to parties of opposition proceeding(s). § 2.106 Answer. § 2.107 Amendment of pleadings in an opposition proceeding. CANCELLATION § 2.111 Filing petition for cancellation. § 2.112 Contents of petition for cancellation. § 2.113 Notification of cancellation proceeding. § 2.114 Answer. § 2.115 Amendment of pleadings in a cancellation proceeding. PROCEDURE IN INTER PARTES PROCEEDINGS § 2.116 Federal Rules of Civil Procedure. § 2.117 Suspension of proceedings. § 2.118 Undelivered Office notices. § 2.119 Service and signing of papers. § 2.120 Discovery. § 2.121 Assignment of times for taking testimony. § 2.122 Matters in evidence. § 2.123 Trial testimony in inter partes cases. § 2.124 Depositions upon written questions. § 2.125 Filing and service of testimony. § 2.126 Form of submissions to the Trademark Trial and Appeal Board. § 2.127 Motions. § 2.128 Briefs at final hearing. § 2.129 Oral argument; reconsideration. § 2.130 New matter suggested by the trademark examining attorney. § 2.131 Remand after decision in inter partes proceeding. § 2.132 Involuntary dismissal for failure to take testimony. § 2.133 Amendment of application or registration during proceedings. § 2.134 Surrender or voluntary cancellation of registration. § 2.135 Abandonment of application or mark. § 2.136 Status of application on termination of proceeding. APPEALS § 2.141 Ex parte appeals from action of trademark examining attorney. § 2.142 Time and manner of ex parte appeals. § 2.144 Reconsideration of decision on ex parte appeal. § 2.145 Appeal to court and civil action. PETITIONS AND ACTION BY THE DIRECTOR § 2.146 Petitions to the Director. § 2.148 Director may suspend certain rules. -5- July 11, 2015 CERTIFICATE § 2.151 Certificate. PUBLICATION OF MARKS REGISTERED UNDER 1905 ACT § 2.153 Publication requirements. § 2.154 Publication in Official Gazette. § 2.155 Notice of publication. § 2.156 Not subject to opposition; subject to cancellation. REREGISTRATION OF MARKS REGISTERED UNDER PRIOR ACTS § 2.158 Reregistration of marks registered under Acts of 1881, 1905, and 1920. CANCELLATION FOR FAILURE TO FILE AFFIDAVIT OR DECLARATION § 2.160 Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration. § 2.161 Requirements for a complete affidavit or declaration of continued use or excusable nonuse. § 2.162 Notice to registrant. § 2.163 Acknowledgment of receipt of affidavit or declaration. § 2.164 Correcting deficiencies in affidavit or declaration. § 2.165 Petition to Director to review refusal. § 2.166 Affidavit of continued use or excusable nonuse combined with renewal application. AFFIDAVIT OR DECLARATION UNDER SECTION 15 § 2.167 Affidavit or declaration under section 15. § 2.168 Affidavit or declaration under section 15 combined with affidavit or declaration under sections 8 or 71, or with renewal application. CORRECTION, DISCLAIMER, SURRENDER, ETC. § 2.171 New certificate on change of ownership. § 2.172 Surrender for cancellation. § 2.173 Amendment of registration § 2.174 Correction of Office mistake. § 2.175 Correction of mistake by owner. § 2.176 Consideration of above matters. TERM AND RENEWAL § 2.181 Term of original registrations and renewals. § 2.182 Time for filing renewal application. § 2.183 Requirements for a complete renewal application. § 2.184 Refusal of renewal. § 2.185 Correcting deficiencies in renewal application. § 2.186 Petition to Director to review refusal of renewal. GENERAL INFORMATION AND CORRESPONDENCE IN TRADEMARK CASES § 2.188 [Reserved] § 2.189 [Reserved] -6- July 11, 2015 § 2.190 Addresses for trademark correspondence with the United States Patent and Trademark Office. § 2.191 Business to be transacted in writing. § 2.192 Business to be conducted with decorum and courtesy. § 2.193 Trademark correspondence and signature requirements. § 2.194 Identification of trademark application or registration. § 2.195 Receipt of trademark correspondence. § 2.196 Times for taking action: Expiration on Saturday, Sunday or Federal holiday. § 2.197 Certificate of mailing or transmission. § 2.198 Filing of correspondence by Priority Mail Express®. § 2.199 [Reserved] TRADEMARK RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE § 2.200 Assignment records open to public inspection. § 2.201 Copies and certified copies. § 2.202 [Reserved] § 2.203 [Reserved] § 2.204 [Reserved] § 2.205 [Reserved] FEES AND PAYMENT OF MONEY IN TRADEMARK CASES § 2.206 Trademark fees payable in advance. § 2.207 Methods of payment. § 2.208 Deposit accounts. § 2.209 Refunds. 37 C.F.R. PART 3—ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE § 3.1 Definitions DOCUMENTS ELIGIBLE FOR RECORDING § 3.11 Documents which will be recorded. § 3.16 Assignability of trademarks prior to filing of an allegation of use statement. REQUIREMENTS FOR RECORDING § 3.25 Recording requirements for trademark applications and registrations. § 3.26 English language requirement. § 3.27 Mailing address for submitting documents to be recorded. § 3.28 Requests for recording. COVER SHEET REQUIREMENTS § 3.31 Cover sheet content. § 3.34 Correction of cover sheet errors. FEES § 3.41 Recording fees. DATE AND EFFECT OF RECORDING § 3.51 Recording date. -7- July 11, 2015 § 3.54 Effect of recording. § 3.56 Conditional assignments. § 3.58 Governmental registers. DOMESTIC REPRESENTATIVE § 3.61 Domestic representative. ACTION TAKEN BY ASSIGNEE § 3.71 Prosecution by assignee. § 3.73 Establishing right of assignee to take action. ISSUANCE TO ASSIGNEE § 3.85 Issue of registration to assignee. 37 C.F.R. PART 6—CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT § 6.1 International schedule of classes of goods and services. § 6.2 Prior U.S. schedule of classes of goods and services. § 6.3 Schedule for certification marks. § 6.4 Schedule for collective membership marks. 37 C.F.R. PART 7 – RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS SUBPART A -- GENERAL INFORMATION § 7.1 Definitions of terms as used in this part. § 7.2 [Reserved] § 7.3 Correspondence must be in English. § 7.4 Receipt of correspondence. § 7.5 [Reserved] § 7.6 Schedule of U.S. process fees. § 7.7 Payments of fees to International Bureau. SUBPART B -- INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES § 7.11 Requirements for international application originating from the United States. § 7.12 Claim of color. § 7.13 Certification of international application. § 7.14 Correcting irregularities in international application. SUBPART C -- SUBSEQUENT DESIGNATION SUBMITTED THROUGH THE OFFICE § 7.21 Subsequent designation. SUBPART D -- RECORDING CHANGES TO INTERNATIONAL REGISTRATION § 7.22 Recording changes to international registration. § 7.23 Requests for recording assignments at the International Bureau. -8- July 11, 2015 § 7.24 Requests to record security interest or other restriction of holder’s rights of disposal or release of such restriction submitted through the Office. SUBPART E -- EXTENSION OF PROTECTION TO THE UNITED STATES § 7.25 Sections of part 2 applicable to extension of protection. § 7.26 Filing date of extension of protection for purposes of examination in the Office. § 7.27 Priority claim of extension of protection for purposes of examination in the Office. § 7.28 Replacement of U.S. registration by registered extension of protection. § 7.29 Effect of replacement on U.S. registration. § 7.30 Effect of cancellation or expiration of international registration. § 7.31 Requirements for transformation of an extension of protection to the United States into a U.S. application. SUBPART F -- AFFIDAVIT UNDER SECTION 71 OF THE ACT FOR EXTENSION OF PROTECTION TO THE UNITED STATES § 7.36 Affidavit or declaration of use in commerce or excusable nonuse required to avoid cancellation of an extension of protection to the United States. § 7.37 Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse. § 7.38 Notice to holder of extension of protection. § 7.39 Acknowledgment of receipt of and correcting deficiencies in affidavit or declaration of use in commerce or excusable nonuse. § 7.40 Petition to Director to review refusal. SUBPART G--RENEWAL OF INTERNATIONAL REGISTRATION AND EXTENSION OF PROTECTION § 7.41 Renewal of international registration and extension of protection. 37 C.F.R. PART 10 [REMOVED AND RESERVED] 37 C.F.R. PART PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE SUBPART A--GENERAL PROVISIONS GENERAL INFORMATION § 11.1 Definitions. § 11.2 Director of the Office of Enrollment and Discipline. § 11.3 Suspension of rules. SUBPART B--RECOGNITION TO PRACTICE BEFORE THE USPTO PATENTS, TRADEMARKS, AND OTHER NON-PATENT LAW § 11.4 [Reserved] § 11.5 Register of attorneys and agents in patent matters; practice before the Office. § 11.6 Registration of attorneys and agents. § 11.7 Requirements for registration. § 11.8 Oath and registration fee. § 11.9 Limited recognition in patent matters. § 11.10 Restrictions on practice in patent matters. -9- July 11, 2015 § 11.11 Administrative suspension, inactivation, resignation, and readmission. §§ 11.12 - 11.13 [Reserved] § 11.14 Individuals who may practice before the Office in trademark and other non-patent matters. § 11.15 Refusal to recognize a practitioner. §§ 11.16 - 11.17 [Reserved] § 11.18 Signature and certificate for correspondence filed in the Office. SUBPART C – INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS; JURISDICTION, SANCTIONS, INVESTIGATIONS, AND PROCEEDINGS § 11.19 Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status. § 11.20 Disciplinary sanctions; Transfer to disability inactive status. § 11.21 Warnings. § 11.22 Disciplinary investigations. § 11.23 Committee on Discipline. § 11.24 Reciprocal discipline. § 11.25 Interim suspension and discipline based upon conviction of committing a serious crime. § 11.26 Settlement. § 11.27 Exclusion on consent. § 11.28 Incapacitated practitioners in a disciplinary proceeding. § 11.29 Reciprocal transfer or initial transfer to disability inactive status. §§ 11.30 - 11.31 [Reserved] § 11.32 Instituting a disciplinary proceeding. § 11.33 [Reserved] § 11.34 Complaint. § 11.35 Service of complaint. § 11.36 Answer to complaint. § 11.37 [Reserved] § 11.38 Contested case. § 11.39 Hearing officer; appointment; responsibilities; review of interlocutory orders; stays. § 11.40 Representative for OED Director or respondent. § 11.41 Filing of papers. § 11.42 Service of papers. § 11.43 Motions. § 11.44 Hearings. § 11.45 Amendment of pleadings. §§ 11.46 - 11.48 [Reserved] § 11.49 Burden of proof. § 11.50 Evidence. § 11.51 Depositions. § 11.52 Discovery. § 11.53 Proposed findings and conclusions; post-hearing memorandum. § 11.54 Initial decision of hearing officer. § 11.55 Appeal to the USPTO Director. § 11.56 Decision of the USPTO Director. § 11.57 Review of final decision of the USPTO Director. § 11.58 Duties of disciplined or resigned practitioner, or practitioner on disability inactive status. § 11.59 Dissemination of disciplinary and other information. § 11.60 Petition for reinstatement. § 11.61 [Removed and reserved] -10- July 11, 2015