DATABASES & LEGAL RESOURCES
TMEP
The Trademark Manual of Examining Procedure is the handbook examining attorneys work from. When an Office Action cites “TMEP § 1207.01” or similar, that citation points at the manual rather than the statute — it is guidance on how the Office applies the law, not binding law itself.
Why the manual matters to you
It tells you in advance exactly what an examiner will look for. A response that addresses the standard set out in the relevant manual section tends to move faster than one that merely argues the point, and it is far easier to fix a specimen problem before filing than after the examiner asks for a replacement.
Two honest caveats
- Section numbers shift between editions. The topics below are indexed by search term rather than pinned to numbers that may have moved.
- Guidance is not law. The Board and the courts are not bound by the manual, and the only authoritative check is the statute plus case law.
Use it as a drafting checklist
Before you file, read the manual's own entry on specimens for your kind of goods or services and compare it with what you are about to upload. That one habit avoids a large share of avoidable Office Actions.
| Section | Topic | Search terms | What the section covers |
|---|---|---|---|
| 101 | 101 Trademark Statute and Rules | 101 Trademark Statute and Rules | The federal registration of trademarks is governed by the Trademark Act of 1946, as Amended, 15 U.S.C. §§1051 et seq. (also known as the Lanham Act), and the U.S. Trademark Rules of Practice, 37 C.F.R. pts. 2, 3, 6-7, an |
| 102 | 102 U.S. Patent and Trademark Office Website | 102 U.S. Patent and Trademark Office Website | The USPTO website https://www.uspto.gov includes the trademark electronic filing system, in which applicants, registrants, and parties can electronically file trademark documents with the USPTO, and a wide variety of inf |
| 103 | 103 Trademark Documents | 103 Trademark Documents | Trademark documents must be filed electronically using the trademark electronic filing system, which comprises the Trademark Electronic Application System (TEAS), available at https://www.uspto.gov/trademarks/apply and T |
| 104 | 104 Trademark Search Systems | 104 Trademark Search Systems | XSearch, the USPTO's computerized search system, contains text and images of registered marks, and marks in pending and abandoned applications. XSearch is used by trademark examining attorneys when searching for conflict |
| 105 | 105 General Information About Trademarks | 105 General Information About Trademarks | The USPTO provides the public with general information about trademarks and the federal registration process through resources and materials available on the USPTO website at https://www.uspto.gov/trademarks/basics . The |
| 107 | 107 Trademark Manuals | 107 Trademark Manuals | The following manuals may be downloaded free of charge from the USPTO website: Trademark Manual of Examining Procedure (TMEP) Trademark Trial and Appeal Board Manual of Procedure (TBMP) Acceptable Identification of Goods |
| 108 | 108 Status Inquiries | 108 Status Inquiries | |
| 108.01 | 108.01 Trademark Status and Document Retrieval (TSDR) Database | 108.01 Trademark Status and Document Retrieval (TSDR) Database | The Trademark Status and Document Retrieval (TSDR) database on the USPTO website provides detailed information about the status and prosecution history of trademark applications and registrations. The TSDR database is ge |
| 108.02 | 108.02 Trademark Assistance Center (TAC) | 108.02 Trademark Assistance Center (TAC) | If additional information regarding the status of an application or registration is needed, applicants or registrants may contact the Trademark Assistance Center (TAC) by email at TrademarkAssistanceCenter@uspto.gov or t |
| 108.03 | 108.03 Due Diligence: Duty to Monitor Status | 108.03 Due Diligence: Duty to Monitor Status | 37 C.F.R. Notices issued or actions taken by the USPTO are displayed in the USPTO's publicly available electronic systems. Applicants and registrants are responsible for monitoring the status of their applications and re |
| 109 | 109 Access to Records | 109 Access to Records | 18 U.S.C. §2071 Concealment, removal, or mutilation generally. (a) Whoever willfully and unlawfully conceals, removes, mutilates, obliterates, or destroys, or attempts to do so, or, with intent to do so takes and carries |
| 109.01 | 109.01 Electronic Image Records | 109.01 Electronic Image Records | The public may view and print images of the contents of trademark application and registration records through the Trademark Status and Document Retrieval (TSDR) database on the USPTO. Electronic images of Board proceedi |
| 109.02 | 109.02 Paper Files | 109.02 Paper Files | The USPTO does not create paper files for trademark applications or retain paper copies of trademark-related documents that are submitted to the USPTO in paper or electronic format. See TMEP §402.01 . All documents relat |
| 109.03 | 109.03 Making Copies of Materials in Records | 109.03 Making Copies of Materials in Records | The public may print images of the contents of trademark application, registration, and Board proceeding records through the Trademark Status and Document Retrieval (TSDR) database or TTABVUE on the USPTO website at http |
| 110 | 110 Decisions Available to the Public | 110 Decisions Available to the Public | 37 C.F.R. Decisions of the Director and the Trademark Trial and Appeal Board in applications and proceedings relating thereto are published or available for inspection or publication. Precedential decisions of the Direct |
| 111 | 111 Requests for Copies of Trademark Documents | 111 Requests for Copies of Trademark Documents | Printing from USPTO databases . The public may print images of the contents of trademark application, registration, and Board proceeding records through the Trademark Status and Document Retrieval (TSDR) database or TTAB |
| 112 | 112 Patent and Trademark Resource Centers | 112 Patent and Trademark Resource Centers | The Patent and Trademark Resource Centers Program administers a nationwide network of public, state, and academic libraries designated as Patent and Trademark Resource Centers (PTRCs) authorized by 35 U.S.C. §12 to disse |
| 201 | 201 What Constitutes a Filing Date | 201 What Constitutes a Filing Date | In an application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126 , the filing date of an application is the date on which all the elements set forth in 37 C.F.R. §2.21(a) ( see TMEP §202 ) are received in |
| 201.01 | 201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue | 201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue | The filing date of an application ( see TMEP §201 ) is the same as the effective filing date, except where: (1) the applicant is entitled to priority under 15 U.S.C. §1126(d) or §1141g ( see TMEP §206.02 ); (2) the appli |
| 201.02 | 201.02 Constructive Use Priority | 201.02 Constructive Use Priority | Under 15 U.S.C. §1057(c) and §1141f(b) , filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the mark, provided the application matur |
| 202 | 202 Requirements for Receiving a Filing Date | 202 Requirements for Receiving a Filing Date | The USPTO will grant a filing date to an application under Trademark Act §1 or §44 that is filed through the trademark electronic filing system ( see TMEP §301.01(a) ), is written in the English language, and contains al |
| 202.01 | 202.01 Clear Drawing of the Mark | 202.01 Clear Drawing of the Mark | Under 37 C.F.R. §2.21(a)(3) , a §1 or §44 applicant must submit "a clear drawing of the mark" to receive a filing date, except in applications for registration of sound, scent, and other non-visual marks. See TMEP §807.0 |
| 202.02 | 202.02 Listing of Recognizable Goods or Services | 202.02 Listing of Recognizable Goods or Services | The USPTO will deny a filing date to an application under §1 or §44 of the Trademark Act if the application does not identify recognizable goods or services. See TMEP §1402.02 for further information. |
| 202.03 | 202.03 Filing Fee for at Least One Class of Goods or Services | 202.03 Filing Fee for at Least One Class of Goods or Services | In an application under §1 or §44 of the Trademark Act, the applicant must pay the filing fee for at least one class of goods or services before an application can be given a filing date. 37 C.F.R. §2.21(a)(5) . The fee |
| 202.03(a) | 202.03(a) Fee Payment Refused or Charged Back by Financial Institution | 202.03(a) Fee Payment Refused or Charged Back by Financial Institution | Where an EFT or credit-card payment is refused or charged back by a financial institution, the application is treated as though the fee had never been paid. If the original application was accompanied by an authorization |
| 203 | 203 Review for Compliance with Minimum Requirements | 203 Review for Compliance with Minimum Requirements | In applications under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a) , the IB will determine whether the application complies with §66(a) prior to sending the request for extension of protection of an international reg |
| 204 | 204 Defective or Informal Applications | 204 Defective or Informal Applications | If an application filed under Trademark Act §1 or §44 does not meet the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) ( see TMEP §202 ), the application is void. These applications are |
| 204.01 | 204.01 Filing Date Cancelled if Minimum Filing Requirements Not Met | 204.01 Filing Date Cancelled if Minimum Filing Requirements Not Met | Applications filed under Trademark Act §1 or §44 are initially assigned a filing date and serial number and then reviewed for compliance with the minimum requirements for receipt of a filing date set forth in 37 C.F.R. § |
| 204.02 | 204.02 Resubmission of Applications and Request to Restore Filing Date | 204.02 Resubmission of Applications and Request to Restore Filing Date | If the applicant believes that the USPTO committed an error in denying the application a filing date, the applicant may submit a request to restore the filing date. See TMEP §1711 . Prior to making the request, the appli |
| 204.03 | 204.03 Examining Attorney’s Handling of Applications that Are Erroneously Accorded a Filing Date | 204.03 Examining Attorney’s Handling of Applications that Are Erroneously Accorded a Filing Date | In rare situations, an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R. §2.21(a) for receipt of a filing date may be inadvertently referred to an examining attorney for examination. Ex |
| 205 | 205 Filing Date Is Not Normally Changed | 205 Filing Date Is Not Normally Changed | After an application has been given a filing date, the USPTO will normally not vacate the filing date or alter the designation of the original filing date in the Trademark database unless the application as originally fi |
| 206 | 206 Effective Filing Date | 206 Effective Filing Date | The filing date of an application ( see TMEP §201 ) is also the effective filing date, except in the situations described in the subsections below. In these situations, the USPTO does not alter the original filing date i |
| 206.01 | 206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use | 206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use | An applicant relying on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable amendment t |
| 206.02 | 206.02 Application Claiming Priority under §44(d) or §67 | 206.02 Application Claiming Priority under §44(d) or §67 | When an applicant is entitled to priority based on a foreign application, the effective filing date is the date on which the foreign application was first filed in the foreign country. 15 U.S.C. §§1126(d)(1) , 1141g ; 37 |
| 206.03 | 206.03 Applications Filed before November 16, 1989 that Are Amended to the Supplemental Register on or after November 16, 1989 | 206.03 Applications Filed before November 16, 1989 that Are Amended to the Supplemental Register on or after November 16, 1989 | In an application filed before November 16, 1989, the date of the amendment to the Supplemental Register becomes the effective filing date of the application if: (1) the applicant had not used the mark in commerce for on |
| 206.04 | 206.04 Examining Attorney’s Action after Conducting New Search When the Effective Filing Date Changes to a Later Date | 206.04 Examining Attorney’s Action after Conducting New Search When the Effective Filing Date Changes to a Later Date | When the effective filing date changes to a later date, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the search shows that because of the new, later effective filing date, t |
| 301 | 301 Filing Documents | 301 Filing Documents | |
| 301.01 | 301.01 Electronic Filing Is Mandatory | 301.01 Electronic Filing Is Mandatory | Trademark applicants and registrants must file all trademark submissions electronically using the trademark electronic filing system (see TMEP §301.01(a) ) and provide an email address for receiving United States Patent |
| 301.01(a) | 301.01(a) Trademark Electronic Filing System | 301.01(a) Trademark Electronic Filing System | The USPTO's electronic filing system, comprises the Trademark Electronic Application System (TEAS), available at https://www.uspto.gov/trademarks/apply , and Trademark Center, available at https://trademarkcenter.uspto.g |
| 301.01(b) | 301.01(b) Trademark Electronic Filing System Availability | 301.01(b) Trademark Electronic Filing System Availability | The trademark electronic filing system is generally available 24 hours a day, seven days a week. However, the system is periodically down for scheduled maintenance and unexpected outages. Users should check the “USPTO Sy |
| 301.02 | 301.02 Limited Exceptions for Paper Submissions | 301.02 Limited Exceptions for Paper Submissions | The USPTO will permit paper submissions of forms related to a domestic application or registration, or for filings under the Madrid protocol, and related correspondence only in the limited circumstances discussed below. |
| 301.02(a) | 301.02(a) Treaty-exempt Filers under International Agreements | 301.02(a) Treaty-exempt Filers under International Agreements | The United States is a member of both the Trademark Law Treaty (TLT) and the subsequent Singapore Treaty on the Law of Trademarks (STLT), which constitute two separate international instruments that may be ratified or ac |
| 301.02(b) | 301.02(b) Specimens for Scent, Flavor, or Similar Non-Traditional Marks | 301.02(b) Specimens for Scent, Flavor, or Similar Non-Traditional Marks | A specimen for certain non-traditional marks, such as scent and flavor marks, cannot be submitted electronically. See 37 C.F.R. §2.56(d)(1) ; TMEP §904.03(m) . For example, if the application is for a scent mark, the exa |
| 301.02(c) | 301.02(c) Petition to Accept a Paper Submission | 301.02(c) Petition to Accept a Paper Submission | In certain circumstances, an applicant or registrant may file a petition to the Director under 37 C.F.R. §2.147 to request acceptance of a submission filed on paper. See TMEP §§1709-1709.03 for further information on whe |
| 301.02(d) | 301.02(d) Postal Service Interruption or Emergency | 301.02(d) Postal Service Interruption or Emergency | In the event of a postal-service interruption or emergency related to a natural disaster, the USPTO will continue its prior practice of issuing a notice on the USPTO website that specifies temporary procedures for filing |
| 301.02(e) | 301.02(e) Applications Filed under Trademark Action Section 66(a) | 301.02(e) Applications Filed under Trademark Action Section 66(a) | Trademark Act Section 66(a) applications are initially filed with the International Bureau of the World Intellectual Property Organization (IB) and subsequently transmitted to the USPTO for examination. However, all subs |
| 301.02(f) | 301.02(f) “Grandfathered” Applications and Post-Registration Maintenance Documents | 301.02(f) “Grandfathered” Applications and Post-Registration Maintenance Documents | Under the rules mandating electronic filing, the TEAS RF application filing option was renamed TEAS Standard and the TEAS Regular application filing option was eliminated. Applications filed prior to February 15, 2020 th |
| 302 | 302 Trademark Correspondence - In General | 302 Trademark Correspondence - In General | The USPTO requires all trademark correspondence be filed through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23(a) ; TMEP §§301.01 , 301 |
| 302.01 | 302.01 Duplicate Documents Should Not Be Filed | 302.01 Duplicate Documents Should Not Be Filed | 37 C.F.R. Separate copies for separate files. Parties should not file duplicate copies of documents in a single application, registration, or proceeding file, unless the Office requires the filing of duplicate copies. As |
| 302.02 | 302.02 Identifying the Type of Document Filed | 302.02 Identifying the Type of Document Filed | |
| 302.02(a) | 302.02(a) Correspondence Pertaining to Trademark Applications | 302.02(a) Correspondence Pertaining to Trademark Applications | Documents filed through the trademark electronic filing system or the Board's electronic filing system are identified according to their type and require an application serial or proceeding number in order to relate the |
| 302.02(b) | 302.02(b) Correspondence Pertaining to Trademark Registrations | 302.02(b) Correspondence Pertaining to Trademark Registrations | Documents filed through the trademark electronic filing system or the Board’s electronic filing system are identified according to their type and require a registration or proceeding number in order to relate the filing |
| 303 | 303 Filing Date of Trademark Correspondence | 303 Filing Date of Trademark Correspondence | 37 C.F.R. Filing date of trademark correspondence. The filing date of trademark correspondence is determined as follows: (a) Electronic submissions. The filing date of an electronic submission is the date the Office rece |
| 303.01 | 303.01 Filing Date for Electronic Submissions | 303.01 Filing Date for Electronic Submissions | Trademark correspondence transmitted electronically using the trademark electronic filing system is considered filed on the date the USPTO receives the submission, in Eastern Time (ET), regardless of whether that date is |
| 303.02 | 303.02 Acknowledgment of Receipt by USPTO | 303.02 Acknowledgment of Receipt by USPTO | |
| 303.02(a) | 303.02(a) Trademark Electronic Filing System Submission Confirmation Page | 303.02(a) Trademark Electronic Filing System Submission Confirmation Page | When a document is filed electronically, the USPTO generally receives it within seconds after it has been submitted. Upon successful submission, the trademark electronic filing system almost immediately displays a page t |
| 303.02(b) | 303.02(b) Permitted Paper Filings: USPTO “Mail Room Date” Label Showing Receipt | 303.02(b) Permitted Paper Filings: USPTO “Mail Room Date” Label Showing Receipt | The USPTO places a label indicating the date of receipt on every application, part of an application, amendment, letter, or other permitted paper filing ( see TMEP §301.02 ). The label is referred to as the “Mail Room Da |
| 303.02(c) | 303.02(c) Permitted Paper Filings: Filer-provided Postcard Receipt | 303.02(c) Permitted Paper Filings: Filer-provided Postcard Receipt | For documents permitted to be filed on paper ( see TMEP §301.02 ), a party may obtain a receipt by enclosing a self-addressed, stamped postcard identifying the document. The USPTO will place a label indicating the receip |
| 304 | 304 Email | 304 Email | |
| 304.01 | 304.01 Informal Communication Acceptable via Email | 304.01 Informal Communication Acceptable via Email | Applicants and registrants may use email only to conduct informal communications with the USPTO regarding a particular application or registration as an alternative to telephone communications. See TMEP §§709.04 , 709.05 |
| 304.02 | 304.02 Formal Communications Not Acceptable via Email | 304.02 Formal Communications Not Acceptable via Email | Email may not be used to file applications for registration of marks, responses to Office actions or requests for an extension of time to respond, pre- or post-publication amendments to an application, changes of corresp |
| 304.03 | 304.03 Official Email Correspondence from the USPTO | 304.03 Official Email Correspondence from the USPTO | The USPTO will send official correspondence concerning an application or registration by email from the “uspto.gov” domain to the applicant, registrant, or qualified U.S. attorney under 37 C.F.R. §11.14 , unless the appl |
| 305 | 305 Permitted Paper Filings: Mailing Documents to the USPTO | 305 Permitted Paper Filings: Mailing Documents to the USPTO | |
| 305.01 | 305.01 Mailing Addresses | 305.01 Mailing Addresses | Paper trademark documents – general. Except for documents sent to the Assignment Recordation Branch for recordation, requests for copies of trademark documents, specimens for scent, flavor, or similar non-traditional mar |
| 305.02 | 305.02 Certificate of Mailing Procedure | 305.02 Certificate of Mailing Procedure | 37 C.F.R. Certificate of mailing. (a) The filing date of correspondence submitted under this section is the date of deposit with the USPS if the correspondence: (1) Is addressed as set out in § 2.190 and deposited with t |
| 305.02(a) | 305.02(a) When Certificate of Mailing Procedure May Be Used | 305.02(a) When Certificate of Mailing Procedure May Be Used | The certificate of mailing procedure may be used for any trademark correspondence that may be filed on paper. See TMEP §301.02 regarding the limited exceptions when paper submissions may be submitted. |
| 305.02(b) | 305.02(b) Mailing Requirements | 305.02(b) Mailing Requirements | The correspondence must be properly addressed (see TMEP §305.01 for mailing addresses), and must be deposited with the U.S. Postal Service (USPS) with sufficient postage as first-class mail. 37 C.F.R. §2.197(a)(1) . Sinc |
| 305.02(c) | 305.02(c) Location and Form of Certificate | 305.02(c) Location and Form of Certificate | The certificate of mailing must provide the following for each piece of correspondence submitted: (1) attest to the mailing and the address used; (2) include the name of the document and the application serial or registr |
| 305.02(d) | 305.02(d) Wording of Certificate of Mailing | 305.02(d) Wording of Certificate of Mailing | The following wording is suggested for a certificate of mailing for a paper trademark document. See TMEP §305.01 regarding the mailing address for this type of document and others. |
| 305.02(e) | 305.02(e) Effect of Certificate of Mailing | 305.02(e) Effect of Certificate of Mailing | The filing date assigned to paper correspondence submitted with a certificate of mailing is the date of its deposit with the USPS when filed pursuant to the requirements of 37 C.F.R. §2.197 . 37 C.F.R. §2.195(b)(2) . If |
| 305.02(f) | 305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197 but Not Received by USPTO | 305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §2.197 but Not Received by USPTO | If permitted paper correspondence ( see TMEP §301.01 ) mailed with a certificate of mailing is not received by the USPTO, the party who mailed the correspondence may file a petition to the Director under 37 C.F.R. §2.146 |
| 305.02(g) | 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(g) Correspondence Deposited as First-class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service | Correspondence must be deposited with the USPS as first-class mail in compliance with any and all applicable requirements of the USPS to be considered “[d]eposited with the USPS,” within the meaning of 37 C.F.R. §2.197(a |
| 305.02(h) | 305.02(h) Certificate of Mailing Requirements Strictly Enforced | 305.02(h) Certificate of Mailing Requirements Strictly Enforced | The requirements of 37 C.F.R. §2.197 are strictly enforced, and the USPTO denies petitions to consider a document timely filed as of the date on the certificate if a party fails to comply with these requirements. A party |
| 305.03 | 305.03 Priority Mail Express® | 305.03 Priority Mail Express® | 37 C.F.R. Filing of correspondence by Priority Mail Express®. (a) The filing date of correspondence submitted under this section is the date of deposit with the USPS, as shown by the “date accepted” on the Priority Mail |
| 305.03(a) | 305.03(a) Filing Date When Priority Mail Express® Is Used | 305.03(a) Filing Date When Priority Mail Express® Is Used | For permitted paper filings ( see TMEP §301.02 ), Trademark Rule 2.198 provides a procedure for obtaining a filing date as of the date that correspondence is deposited as Priority Mail Express® with the USPS, as shown by |
| 305.03(b) | 305.03(b) Discrepancy between Filing Date and “Date Accepted” | 305.03(b) Discrepancy between Filing Date and “Date Accepted” | If there is a discrepancy between the filing date given by the USPTO to the correspondence and the “date accepted,” the party who submitted the correspondence may file a petition to the Director under 37 C.F.R. §2.146(a) |
| 305.03(c) | 305.03(c) Incorrectly Entered “Date Accepted” | 305.03(c) Incorrectly Entered “Date Accepted” | If the party who submitted the correspondence can show that the “date accepted” was incorrectly entered or omitted by the USPS, the party may file a petition to the Director under 37 C.F.R. § 2.146(a)(2) to have the corr |
| 305.03(d) | 305.03(d) Correspondence Not Received by the USPTO | 305.03(d) Correspondence Not Received by the USPTO | If correspondence is properly addressed to the USPTO pursuant to 37 C.F.R. §2.190 (see TMEP §305.01 ) and deposited with sufficient postage in the Priority Mail Express® Post Office to Addressee service of the USPS, but |
| 305.03(e) | 305.03(e) Certificate of Mailing under 37 C.F.R. §2.197 for Documents Sent by Priority Mail Express® | 305.03(e) Certificate of Mailing under 37 C.F.R. §2.197 for Documents Sent by Priority Mail Express® | The certificate of mailing procedure of 37 C.F.R. §2.197 may be used for documents sent by Priority Mail Express® as well as documents sent by first-class mail. Correspondence sent by Priority Mail Express® is deemed to |
| 305.04 | 305.04 Interruptions in U.S. Postal Service | 305.04 Interruptions in U.S. Postal Service | 35 U.S.C. 21(a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the Unite |
| 306 | 306 Facsimile (Fax) Submissions | 306 Facsimile (Fax) Submissions | Trademark documents may not be filed by fax and, if submitted, will not be processed or accorded a date of receipt. 37 C.F.R. §§2.62(c) , 2.195(c) ; see also 37 C.F.R. §2.2(s) (indicating that the term “electronic submis |
| 307 | 307 Hand Delivery | 307 Hand Delivery | Hand delivery is available only for documents that are permitted to be filed on paper. See 37 C.F.R. §2.190(a) . See TMEP §301.02 regarding the limited exceptions when paper submissions may be submitted. Trademark Operat |
| 308 | 308 Period Ending on Saturday, Sunday, or Federal Holiday | 308 Period Ending on Saturday, Sunday, or Federal Holiday | 35 U.S.C. §21(b). When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, t |
| 309 | 309 Unscheduled Closings of the U.S. Patent and Trademark Office | 309 Unscheduled Closings of the U.S. Patent and Trademark Office | When the USPTO is officially closed by executive order of the President or by the Office of Personnel Management for an entire day because of an unscheduled event, such as adverse weather conditions, the USPTO will consi |
| 310 | 310 Computing Period for Response to Office Action or Notice | 310 Computing Period for Response to Office Action or Notice | The deadline for responding to an Office action, notice of allowance, or other notice issued by the USPTO is computed from the date the USPTO issues the action or notice to the date the response is received in the USPTO. |
| 401 | 401 Processing New Applications | 401 Processing New Applications | Upon receipt in the U.S. Patent and Trademark Office (USPTO), trademark applications filed under §1 or §44 of the Trademark Act are given a date of receipt and reviewed for compliance with the minimum requirements for re |
| 401.01 | 401.01 Filing Receipts | 401.01 Filing Receipts | Electronic Applications Filed Under §1 or §44 An application filed electronically via the trademark electronic filing system is generally received by the USPTO within seconds after filing. Upon successful submission, the |
| 401.02 | 401.02 Application Serial Numbers | 401.02 Application Serial Numbers | Each application for registration is assigned an eight-digit serial number comprised of a two-digit series code and six additional numbers assigned by order of filing within the series code. To ensure that a communicatio |
| 401.03 | 401.03 Creation of Application Records | 401.03 Creation of Application Records | The USPTO maintains an electronic record for each application that contains all documents comprising the official administrative record. See TMEP §402 ; see generally 5 U.S.C. §§556 , 557 , 706 ; 15 U.S.C. §1071(a)(4) . |
| 402 | 402 Electronic Application and Registration Records | 402 Electronic Application and Registration Records | The USPTO maintains an internal database that includes images of the contents of trademark application and registration records. The public may view and print images of the contents of trademark application and registrat |
| 402.01 | 402.01 USPTO Does Not Create Paper Copies of Trademark-Related Documents | 402.01 USPTO Does Not Create Paper Copies of Trademark-Related Documents | Effective April 12, 2004, the USPTO stopped generating paper file copies of trademark-related documents that are submitted to the USPTO in electronic format. Furthermore, the USPTO does not generate paper copies of certa |
| 403 | 403 USPTO Correspondence Returned as Undeliverable | 403 USPTO Correspondence Returned as Undeliverable | USPTO error . If the USPTO issued correspondence to the wrong address (e.g., if the USPTO entered the correspondence address of record incorrectly or did not enter a proper previously filed request to change the correspo |
| 404 | 404 Documents Not Returnable | 404 Documents Not Returnable | 37 C.F.R. Documents not returnable. Except as provided in § 2.27(e), documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed. Documents filed in |
| 405 | 405 Fees | 405 Fees | 37 C.F.R. Methods of payment. (a) All payments of money required in trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be |
| 405.01 | 405.01 Credit Cards | 405.01 Credit Cards | Under 37 C.F.R. §2.207(b) , the USPTO accepts payment of fees by credit card, subject to actual collection of the fee. A form for authorizing charges to a credit card can be accessed through the trademark electronic fili |
| 405.02 | 405.02 Checks | 405.02 Checks | The trademark electronic filing system does not accept fee payments in the form of checks. It only accepts payment by credit card, deposit account, or electronic funds transfer. Permitted Paper filings . Trademark Rule 2 |
| 405.03 | 405.03 Deposit Accounts | 405.03 Deposit Accounts | 37 C.F.R. Deposit accounts. (a) For the convenience of attorneys, and the general public in paying any fees due, in ordering copies of records, or services offered by the Office, deposit accounts may be established in th |
| 405.04 | 405.04 Refunds | 405.04 Refunds | 37 C.F.R. Refunds. (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a trademark application, appe |
| 405.05 | 405.05 Electronic Funds Transfer | 405.05 Electronic Funds Transfer | The Electronic Funds Transfer (EFT) payment method allows customers to send a payment over the Internet as easily as writing a check. In general, the Automated Clearing House performs EFT transactions through the Federal |
| 405.06 | 405.06 Payments Refused or Charged Back by Financial Institutions | 405.06 Payments Refused or Charged Back by Financial Institutions | If a check is returned unpaid (for permitted paper filings ( see TMEP §301.01 )), or an EFT or credit card is refused or charged back by a financial institution, the document that accompanied the payment is processed as |
| 501 | 501 Assignment of Marks | 501 Assignment of Marks | |
| 501.01 | 501.01 Assignability of Marks in Applications and Registrations | 501.01 Assignability of Marks in Applications and Registrations | 15 U.S.C. §1060(a) (1) A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will |
| 501.01(a) | 501.01(a) Assignability of Intent-to-Use Applications | 501.01(a) Assignability of Intent-to-Use Applications | In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b) , the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C |
| 501.01(b) | 501.01(b) Assignability of Extensions of Protection of International Registrations to the United States | 501.01(b) Assignability of Extensions of Protection of International Registrations to the United States | Under §72 of the Trademark Act, 15 U.S.C. §1141l , an extension of protection to the United States may be assigned, together with the good will associated with the mark, only to a person who is a national of, is domicile |
| 501.02 | 501.02 Assignments Must Be in Writing | 501.02 Assignments Must Be in Writing | 15 U.S.C. §1060(a)(3) (Extract) Assignments shall be by instruments in writing duly executed. *** |
| 501.03 | 501.03 Effect of Failure to Record Assignment | 501.03 Effect of Failure to Record Assignment | 15 U.S.C. §1060(a)(3) (Extract) (3) * **Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent |
| 501.04 | 501.04 Foreign Assignee May Designate Domestic Representative | 501.04 Foreign Assignee May Designate Domestic Representative | 15 U.S.C. §1060(b) An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom |
| 501.05 | 501.05 Assignee Stands in Place of Applicant or Registrant | 501.05 Assignee Stands in Place of Applicant or Registrant | 15 U.S.C. §1127 (Extract) The terms “applicant” and “registrant” embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant. 37 C.F.R. Trademarks. The assignee of a trademark |
| 501.06 | 501.06 Partial Assignments | 501.06 Partial Assignments | A trademark may be owned by two or more persons ( see TMEP §803.03(d) ), and a co-owner may assign their interest in a mark. Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of their inter |
| 501.07 | 501.07 Assignment of Extension of Protection of International Registration to the United States | 501.07 Assignment of Extension of Protection of International Registration to the United States | 15 U.S.C. §1141l Assignment of an Extension of Protection: An extension of protection may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a |
| 502 | 502 Establishing Ownership of Applications or Registrations | 502 Establishing Ownership of Applications or Registrations | 37 C.F.R. (Extract) * * * The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment. Section 1 or § 44 Applications. In an application or registration ba |
| 502.01 | 502.01 Establishing the Right to Take Action in Application or Registration | 502.01 Establishing the Right to Take Action in Application or Registration | 37 C.F.R. ***** (b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The |
| 502.02 | 502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name | 502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name | |
| 502.02(a) | 502.02(a) Applications Under Trademark Act §1 and §44 | 502.02(a) Applications Under Trademark Act §1 and §44 | 37 C.F.R. Issue of registration to assignee. The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trade |
| 502.02(b) | 502.02(b) Applications Under Trademark Act §66(a) | 502.02(b) Applications Under Trademark Act §66(a) | Change of Owner Request Must Be Recorded with the International Bureau (IB) Using IB eMadrid Portal. In an application under Trademark Act §66(a), a new owner must request to record a change in ownership in the internati |
| 502.02(c) | 502.02(c) Examining Attorney’s Action Regarding Assignment | 502.02(c) Examining Attorney’s Action Regarding Assignment | Check Trademark Database. If, prior to approval for publication for opposition or registration on the Supplemental Register in an application under §1 or §44, or prior to acceptance of a statement of use in an applicatio |
| 502.03 | 502.03 Issuance of New Certificate to Assignee of Registrant | 502.03 Issuance of New Certificate to Assignee of Registrant | Registrations Under Trademark Act §1 and §44 . In registrations that issued based on applications under Trademark Act §1 or §44, the USPTO will issue a new certificate of registration of the mark for the unexpired part o |
| 503 | 503 Recording with Assignment Recordation Branch | 503 Recording with Assignment Recordation Branch | |
| 503.01 | 503.01 Effect of Recording a Document | 503.01 Effect of Recording a Document | 37 C.F.R. Effect of recording. The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, |
| 503.01(a) | 503.01(a) Recording May Not Update Ownership Information | 503.01(a) Recording May Not Update Ownership Information | Recording a document with the Assignment Recordation Branch does not necessarily change or update the ownership of record shown in the Trademark database. There are circumstances in which the Trademark database will be u |
| 503.01(b) | 503.01(b) Recording Does Not Update Correspondence Address in Trademark Database | 503.01(b) Recording Does Not Update Correspondence Address in Trademark Database | The USPTO will only communicate with the applicant or registrant, if unrepresented, or the applicant’s or registrant’s qualified U.S. attorney, if represented, at the correspondence address listed in the Trademark databa |
| 503.01(c) | 503.01(c) Recording Is Not a Determination of Validity | 503.01(c) Recording Is Not a Determination of Validity | The act of recording a document is a ministerial act, and not a determination of the document’s validity or of its effect on title to an application or registration. The Assignment Recordation Branch does not examine the |
| 503.01(d) | 503.01(d) Recording Does Not Constitute Response to Office Action | 503.01(d) Recording Does Not Constitute Response to Office Action | Recording a document with the Assignment Recordation Branch does not constitute a response to an outstanding Office action. |
| 503.01(e) | 503.01(e) Conditional Assignment | 503.01(e) Conditional Assignment | If an assignment is conditional on a given act or event at the time of its execution, the USPTO will view the submission of the assignment for recordation as an indication that the act or event has occurred. See 37 C.F.R |
| 503.02 | 503.02 Documents that the Office Will Record | 503.02 Documents that the Office Will Record | 37 C.F.R. Documents which will be recorded. (a) Assignments of applications, patents, and registrations, accompanied by completed cover sheets as specified in §§3.28 and 3.31, will be recorded in the Office. Other docume |
| 503.03 | 503.03 Requirements for Recording | 503.03 Requirements for Recording | |
| 503.03(a) | 503.03(a) Formal Requirements for Recording Documents | 503.03(a) Formal Requirements for Recording Documents | Applications and Registrations Based on §1 and §44 of the Trademark Act . All documents submitted for recording must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31 . See 37 C.F.R. §3.28 ; |
| 503.03(b) | 503.03(b) Supporting Documents | 503.03(b) Supporting Documents | General Requirements. To record an assignment document or other document affecting title to a trademark application or registration, a legible cover sheet and one of the following must be submitted: (1) A copy of the ori |
| 503.03(c) | 503.03(c) English Language Requirement | 503.03(c) English Language Requirement | The USPTO will not record a document that is not in the English language, unless it is accompanied by an English translation that is signed by the translator. 37 C.F.R. §3.26 . |
| 503.03(d) | 503.03(d) Fee for Recording | 503.03(d) Fee for Recording | All requests to record documents with the Assignment Recordation Branch must be accompanied by the appropriate fee. A fee is required for each application and registration against which a document is recorded, as identif |
| 503.03(e) | 503.03(e) Cover Sheet | 503.03(e) Cover Sheet | Cover Sheet Required. Each document submitted for recording in the Assignment Recordation Branch must be accompanied by a cover sheet that meets the requirements of 37 C.F.R. §3.31 . Only one set of documents and cover s |
| 503.04 | 503.04 Mailing Address for Submitting Paper Documents for Recording | 503.04 Mailing Address for Submitting Paper Documents for Recording | Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be sent to the following address per 37 C.F.R. §§2.190(c) , 3.27 : Mail Stop Assignment Recordation Services Branch Director of |
| 503.05 | 503.05 Recording Procedure and Recordation Date | 503.05 Recording Procedure and Recordation Date | Applications and Registrations Under §1 and §44 of the Trademark Act . The recording of documents in the Assignment Recordation Branch of the USPTO is governed by 37 C.F.R. Part 3. The date of recordation is the date tha |
| 503.06 | 503.06 Correction of Errors in Cover Sheet or Recorded Document | 503.06 Correction of Errors in Cover Sheet or Recorded Document | 37 C.F.R. Correction of cover sheet errors. (a) An error in a cover sheet recorded pursuant to §3.11 will be corrected only if: (1) The error is apparent when the cover sheet is compared with the recorded document to whi |
| 503.06(a) | 503.06(a) Typographical Errors in Cover Sheet | 503.06(a) Typographical Errors in Cover Sheet | A party may correct typographical errors on a previously recorded cover sheet by submitting the following to the Assignment Recordation Branch: (1) a completed new cover sheet containing the correct information; (2) a co |
| 503.06(b) | 503.06(b) Typographical Errors in Recorded Assignment Document | 503.06(b) Typographical Errors in Recorded Assignment Document | If there is a typographical error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for the erroneous document (e.g., the assignor) must either |
| 503.06(c) | 503.06(c) Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration | 503.06(c) Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration | When the owner of an application or registration discovers that another party has improperly recorded an assignment, name change, or other interest against the owner’s application or registration, the owner should initia |
| 503.06(d) | 503.06(d) Owner Must Notify Trademark Operation of Correction | 503.06(d) Owner Must Notify Trademark Operation of Correction | Recording a corrective document with the Assignment Recordation Branch generally does not change or update the information to be corrected in the Trademark database. The owner must also separately notify the Trademark Op |
| 503.06(e) | 503.06(e) Recorded Documents Not Removed from Assignment Records | 503.06(e) Recorded Documents Not Removed from Assignment Records | Except in situations where typographical errors have been corrected following the procedures set forth in TMEP §503.06(c) , once an assignment or other document is recorded against an application or registration, the Ass |
| 503.06(f) | 503.06(f) Petitions to Correct or “Expunge” Assignment Records | 503.06(f) Petitions to Correct or “Expunge” Assignment Records | To correct an error in a recorded document, the owner of an application or registration should record corrective documents with the Assignment Recordation Branch, in accordance with the procedures outlined in TMEP §503.0 |
| 503.07 | 503.07 “Indexing” Against Recorded Document Not Permitted | 503.07 “Indexing” Against Recorded Document Not Permitted | The USPTO does not process requests for “indexing” or “cross-referencing” additional trademark registration numbers or application serial numbers against a document previously recorded in the Assignment Recordation Branc |
| 503.08 | 503.08 Accessibility of Assignment Records | 503.08 Accessibility of Assignment Records | The Assignment Recordation Branch of the USPTO maintains separate records for patents and trademarks. 15 U.S.C. §1060(a)(5) ; 37 C.F.R. §2.200(a)(1) . The public can search the trademark assignment records of the Assignm |
| 503.08(a) | 503.08(a) Trademark Assignment Abstracts of Title | 503.08(a) Trademark Assignment Abstracts of Title | Members of the public may obtain trademark assignment abstracts of title to particular registrations or applications from the Patent and Trademark Copy Fulfillment Branch of the USPTO, upon payment of the fee required by |
| 504 | 504 Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database | 504 Automatic Updating of Ownership of Trademark Applications and Registrations in Trademark Database | Except in the limited circumstances set forth in TMEP §504.01 , the USPTO will automatically update the ownership information in the Trademark database of registrations and pending applications when one of the following |
| 504.01 | 504.01 Circumstances in Which Trademark Database Will Not Be Automatically Updated | 504.01 Circumstances in Which Trademark Database Will Not Be Automatically Updated | In the circumstances discussed below, the USPTO will not automatically update the Trademark database to show the change in ownership. In these situations, the applicant must separately notify the Trademark Operation in w |
| 504.02 | 504.02 Processing Time for Automatic Updating | 504.02 Processing Time for Automatic Updating | Recording a change of ownership does not simultaneously and automatically update the Trademark database with the new owner information. The process for automatically updating the Trademark database requires that the Assi |
| 504.03 | 504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title | 504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title | In the situations set forth in TMEP §504 , the Trademark database will be automatically updated to show the last recorded owner regardless of whether the Assignment database shows that the last recorded owner has clear c |
| 504.04 | 504.04 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection | 504.04 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection | The procedures discussed in TMEP §504.01 through §504.03 do not apply to §66(a) applications and registered extensions of protection of international registrations to the United States. Changes of ownership, including a |
| 505 | 505 Requesting Update of Ownership Information When the Trademark Database Does Not Automatically Update After a Document Is Recorded | 505 Requesting Update of Ownership Information When the Trademark Database Does Not Automatically Update After a Document Is Recorded | As noted in TMEP §504.01 , in certain cases, the recordation of a document with the Assignment Recordation Branch does not automatically update the ownership information in the Trademark database. Therefore, the new owne |
| 505.01 | 505.01 Request to Update Ownership Information in Pending Application | 505.01 Request to Update Ownership Information in Pending Application | Prior to registration, a request to update the ownership information in the Trademark database should be made in writing and directed to the examining attorney. To notify the Trademark Operation of a request before an ap |
| 505.02 | 505.02 Request to Update Ownership Information After Registration | 505.02 Request to Update Ownership Information After Registration | If the new owner does not identify the assignment conveyance document properly (see TMEP §504 ), or in the situations described in TMEP §504.01 , the Trademark database will not automatically update to show the changes i |
| 601 | 601 Requirement for Representation Based on Domicile of Mark Owner | 601 Requirement for Representation Based on Domicile of Mark Owner | 37 C.F.R. Requirement for representation. (a) An applicant, registrant, or party to a proceeding whose domicile is not located within the United States or its territories must be represented by an attorney, as defined in |
| 601.01 | 601.01 Determining an Owner’s Domicile | 601.01 Determining an Owner’s Domicile | For a natural person, domicile is the permanent legal place of residence, which is the place the person resides and intends to be the person's principal home. 37 C.F.R. §2.2(o) . For a juristic entity, domicile is the pr |
| 601.01(a) | 601.01(a) Owners with a Non-U.S. Domicile | 601.01(a) Owners with a Non-U.S. Domicile | Examination and post-registration . If a submission lists a foreign address (i.e., any street address that is located outside of the United States and its territories) as the applicant’s or registrant’s domicile, and the |
| 601.01(b) | 601.01(b) Owners with a U.S. Domicile | 601.01(b) Owners with a U.S. Domicile | If a U.S. address (i.e., any street address that is located within the United States and its territories) is listed as the applicant’s or registrant’s domicile in any submission, an applicant or registrant may, but gener |
| 601.01(c) | 601.01(c) Examination Procedures for Reviewing Domicile Addresses | 601.01(c) Examination Procedures for Reviewing Domicile Addresses | |
| 601.01(d) | 601.01(d) Domicile Address Must Be Kept Current | 601.01(d) Domicile Address Must Be Kept Current | 37 C.F.R. Requirement to provide domicile address. An applicant or registrant must provide and keep current the address of its domicile, as defined in § 2.2(o). An applicant or registrant must provide and keep current it |
| 601.01(e) | 601.01(e) Hiding the Domicile Address | 601.01(e) Hiding the Domicile Address | Most forms in the trademark electronic filing system allow an applicant or registrant to specify the owner’s mailing address, which is publicly viewable, and a separate domicile address, which is masked or hidden from pu |
| 601.02 | 601.02 Communications with Applicant or Registrant Who Is Represented by an Attorney | 601.02 Communications with Applicant or Registrant Who Is Represented by an Attorney | 37 C.F.R. If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney, except as set forth in paragraphs (a)(2)(i) through (iv) of this section. A request |
| 602 | 602 Persons Authorized to Practice Before USPTO in Trademark Matters | 602 Persons Authorized to Practice Before USPTO in Trademark Matters | 37 C.F.R. Authority to practice in trademark cases. Only an individual qualified to practice under §11.14 of this chapter may represent an applicant, registrant, or party to a proceeding before the Office in a trademark |
| 602.01 | 602.01 Attorneys Licensed to Practice in the United States | 602.01 Attorneys Licensed to Practice in the United States | An attorney who is an active member in good standing of the bar of the highest court of a U.S. state (which includes the District of Columbia and any U.S. Commonwealth or territory) may practice before the USPTO in trade |
| 602.01(a) | 602.01(a) Attorney Identification Information Required | 602.01(a) Attorney Identification Information Required | 37 C.F.R. Recognition for representation. (b)(3) Bar information required. A practitioner qualified under § 11.14(a) of this chapter will be required to provide the name of a State, as defined in § 11.1 of this chapter, |
| 602.01(b) | 602.01(b) Invalid Attorney Identification Information | 602.01(b) Invalid Attorney Identification Information | If a submission includes clearly invalid attorney identification information (e.g., John Doe, a series of question marks or letters/numerals, a single name, or the word “test”), the listed attorney does not appear to be |
| 602.02 | 602.02 Non-Attorneys | 602.02 Non-Attorneys | 37 C.F.R. Non-lawyers. A non-lawyer may not act as a representative except in the limited circumstances set forth in §11.14(b) of this chapter. Before any non-lawyer who meets the requirements of §11.14(b) of this chapte |
| 602.03 | 602.03 Foreign Attorneys and Agents | 602.03 Foreign Attorneys and Agents | 37 C.F.R. Recognition for representation. (e) Foreign attorneys and agents. Recognition to practice before the Office in trademark matters is governed by §11.14(c) of this chapter. 37 C.F.R. Foreigners. (1) Any foreign a |
| 602.03(a) | 602.03(a) Canadian Trademark Attorneys and Agents | 602.03(a) Canadian Trademark Attorneys and Agents | Currently, Canadian trademark attorneys or agents who are registered and active members in good standing with the trademark branch of the Canadian Intellectual Property Office are the only foreign attorneys or agents who |
| 602.03(b) | 602.03(b) Documents Filed by Foreign Attorneys and Agents Not Reciprocally Recognized | 602.03(b) Documents Filed by Foreign Attorneys and Agents Not Reciprocally Recognized | A foreign attorney or agent who is not reciprocally recognized under 37 C.F.R. §11.14(c) by the USPTO ( see TMEP §602.03 ) is not authorized to practice before the USPTO under 37 C.F.R. §11.14 and thus may not prepare an |
| 602.03(c) | 602.03(c) Representatives of Holders of International Registrations | 602.03(c) Representatives of Holders of International Registrations | In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141f(a) , known in the United States as a request for extension of protection, the applicant’s appointed representative, as communicated from the Inte |
| 603 | 603 Standards of Conduct | 603 Standards of Conduct | 37 C.F.R. Refusal to recognize a practitioner. Any practitioner authorized to appear before the Office may be suspended, excluded, or reprimanded in accordance with the provisions of this Part. Any practitioner who is su |
| 604 | 604 Recognition as a Representative | 604 Recognition as a Representative | |
| 604.01 | 604.01 Three Ways to Be Recognized as a Representative | 604.01 Three Ways to Be Recognized as a Representative | 37 C.F.R. (1) Recognition of practitioner as representative. To be recognized as a representative in a trademark case, a practitioner qualified under § 11.14 of this chapter may: (i) File a power of attorney that meets t |
| 604.02 | 604.02 Attorney Bar Information Required | 604.02 Attorney Bar Information Required | 37 C.F.R. Recognition for representation. (b)(3) Bar information required. A practitioner qualified under §11.14(a) of this chapter will be required to provide the name of a State, as defined in §11.1 of this chapter, in |
| 604.03 | 604.03 Duration of Recognition | 604.03 Duration of Recognition | 37 C.F.R. Duration of recognition. (1) The Office considers recognition as to a pending application to end when the mark registers, when ownership changes, or when the application is abandoned. (2) The Office considers r |
| 604.04 | 604.04 Change of Attorney | 604.04 Change of Attorney | Once the USPTO recognizes a qualified U.S. attorney as the representative of an applicant or registrant, a new qualified U.S. attorney from a different firm is not permitted to represent the applicant or registrant until |
| 605 | 605 Powers of Attorney | 605 Powers of Attorney | |
| 605.01 | 605.01 Requirements for Power of Attorney | 605.01 Requirements for Power of Attorney | 37 C.F.R. Requirements for power of attorney. A power of attorney must: (1) Designate by name at least one practitioner meeting the requirements of §11.14 of this chapter; and (2) Be signed by the individual applicant, r |
| 605.02 | 605.02 Power of Attorney Relating to More than One Application or Registration | 605.02 Power of Attorney Relating to More than One Application or Registration | 37 C.F.R. Power of attorney relating to multiple applications or registrations. The owner of an application or registration may appoint a practitioner(s) qualified to practice under §11.14 of this chapter to represent th |
| 605.03 | 605.03 Associate Powers of Attorney | 605.03 Associate Powers of Attorney | 37 C.F.R. Once the applicant, registrant, or party has designated a practitioner(s) qualified to practice under §11.14 of this chapter, that practitioner may sign an associate power of attorney appointing another qualifi |
| 605.04 | 605.04 Power of Attorney Filed After Registration | 605.04 Power of Attorney Filed After Registration | For purposes of recognition as a representative, the USPTO considers recognition as to a pending application to end with registration, when the application is abandoned, or when ownership changes. 37 C.F.R. §2.17(g)(1) . |
| 606 | 606 Revocation of Power of Attorney | 606 Revocation of Power of Attorney | 37 C.F.R. Revocation. (1) Authority to represent an applicant, registrant or party to a proceeding before the Office may be revoked at any stage in the proceedings of a trademark case, upon written notification signed by |
| 607 | 607 Withdrawal of Attorney of Record | 607 Withdrawal of Attorney of Record | 37 C.F.R. Revocation or withdrawal of attorney. * * * * * (b) Withdrawal of attorney. If the requirements of § 11.116 of this chapter are met, a practitioner authorized to represent an applicant, registrant, or party to |
| 608 | 608 Unauthorized Practice | 608 Unauthorized Practice | |
| 608.01 | 608.01 Actions by Unauthorized Persons Not Permitted | 608.01 Actions by Unauthorized Persons Not Permitted | 37 C.F.R. Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a tradem |
| 608.02 | 608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO | 608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO | The Director of the USPTO may suspend or exclude a practitioner from practice before the USPTO. 35 U.S.C. §32 ; 37 C.F.R. §§11.20 , 11.56 . A suspended or excluded practitioner is not a qualified U.S. attorney and may no |
| 609 | 609 Correspondence, with Whom Held | 609 Correspondence, with Whom Held | 37 C.F.R. Correspondence, with whom held. (a) Establishing the correspondent. The Office will send correspondence as follows: (1) If an attorney is not recognized as a representative pursuant to § 2.17(b)(1), the Office |
| 609.01 | 609.01 Establishing the Correspondence Address | 609.01 Establishing the Correspondence Address | The correspondent in an application or registration is the appointed qualified U.S. attorney, if any. If a qualified U.S. attorney is not appointed, the correspondent is the applicant or registrant. See 37 C.F.R. §2.18(a |
| 609.01(a) | 609.01(a) Correspondence in Section 66(a) Applications and Registrations | 609.01(a) Correspondence in Section 66(a) Applications and Registrations | Application Filing Receipt Sent Directly to Applicant . The application filing receipt is not routed to the International Bureau (IB). The USPTO will send the application filing receipt to the applicant. The USPTO will n |
| 609.02 | 609.02 Changing the Correspondence Address | 609.02 Changing the Correspondence Address | Once the correspondence address is established, the USPTO will send correspondence to that address, if appropriate, until a written request to change the address is submitted, properly signed and transmitted by a qualifi |
| 609.02(a) | 609.02(a) When the Correspondence Address May be Changed Without Using the Change of Address or Representation Form | 609.02(a) When the Correspondence Address May be Changed Without Using the Change of Address or Representation Form | Generally, a request to change the address for correspondence must be in writing and filed using the trademark electronic filing system's Change Address or Representation (CAR) form. See TMEP §609.02(b) . However, the US |
| 609.02(b) | 609.02(b) Requirements for Request to Change Correspondence Address | 609.02(b) Requirements for Request to Change Correspondence Address | A request to change the correspondence address must be made in writing and be properly signed. See 37 C.F.R. §§2.18(c) , 2.193(e)(9) . Generally, the request must be filed using the trademark electronic filing system's C |
| 609.02(c) | 609.02(c) Processing Requests to Change the Correspondence Address Before Registration | 609.02(c) Processing Requests to Change the Correspondence Address Before Registration | Once the correspondence address is established for a particular application, the USPTO will generally not change it unless there is a properly signed written request to do so, submitted via the trademark electronic filin |
| 609.02(d) | 609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations | 609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations | The trademark electronic filing system's Change Address or Representation form can be used to change the primary email address for correspondence in more than one application or registration by changing the attorney emai |
| 609.02(e) | 609.02(e) Changing the Correspondence Address After Registration | 609.02(e) Changing the Correspondence Address After Registration | If an attorney is not currently recognized, the USPTO reestablishes the correspondence address upon the examination of an affidavit under Trademark Act §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, |
| 609.02(f) | 609.02(f) Correspondence After Recordation of Change of Ownership | 609.02(f) Correspondence After Recordation of Change of Ownership | The USPTO considers the recognition of a qualified U.S. attorney to end when ownership changes. 37 C.F.R. §2.17(g)(1) ; TMEP §604.03 . Additionally, the USPTO will only communicate with the applicant or registrant, if un |
| 609.03 | 609.03 Applicant and Registrant Have Duty to Maintain Current and Accurate Correspondence Address | 609.03 Applicant and Registrant Have Duty to Maintain Current and Accurate Correspondence Address | 37 C.F.R. Maintaining and changing the correspondence addresses. The applicant, registrant, or party to a proceeding must maintain current and accurate correspondence addresses, as required by §2.23, for itself and its a |
| 610 | 610 Designation of Domestic Representative by Parties Not Domiciled in the United States | 610 Designation of Domestic Representative by Parties Not Domiciled in the United States | 37 C.F.R. Designation and revocation of domestic representative by foreign applicant. (a) An applicant or registrant that is not domiciled in the United States may designate a domestic representative (i.e., a person resi |
| 611 | 611 Signature on Correspondence Filed in the United States Patent and Trademark Office | 611 Signature on Correspondence Filed in the United States Patent and Trademark Office | |
| 611.01 | 611.01 Signature and Certificate | 611.01 Signature and Certificate | |
| 611.01(a) | 611.01(a) Signature as Certificate | 611.01(a) Signature as Certificate | 37 C.F.R. Signature as certification. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by any person, whether a practitioner or non-practitioner, constitutes a |
| 611.01(b) | 611.01(b) Requirements for Signature | 611.01(b) Requirements for Signature | All correspondence that requires a signature must bear either a handwritten signature personally signed in permanent ink by the person named as the signatory, or an “electronic signature” that meets the requirements of 3 |
| 611.01(c) | 611.01(c) Signature of Documents Filed Electronically | 611.01(c) Signature of Documents Filed Electronically | 37 C.F.R. Trademark correspondence and signature requirements. ... (c) Requirements for electronic signature. A person signing a document electronically must: (1) Personally enter any combination of letters, numbers, spa |
| 611.02 | 611.02 Signatures by Authorized Parties Required | 611.02 Signatures by Authorized Parties Required | All documents filed in the USPTO must be properly signed. The USPTO staff must review the application or registration record to determine whether the applicant or registrant is represented by a qualified U.S. attorney, a |
| 611.02(a) | 611.02(a) Signature Radio Buttons in Electronic Forms | 611.02(a) Signature Radio Buttons in Electronic Forms | On most electronic forms in the trademark electronic filing system, the person signing the submission must confirm that the person is authorized to sign the document by clicking one of three buttons indicating that the p |
| 611.03 | 611.03 Proper Person to Sign | 611.03 Proper Person to Sign | This section provides guidelines as to the proper person to sign verifications and various other submissions. Unless otherwise specified by law, the following guidelines should be followed. Note that if an application or |
| 611.03(a) | 611.03(a) Verification | 611.03(a) Verification | A verification must be sworn to or supported by a declaration signed by the owner of the application or registration or a person properly authorized to verify facts on behalf of the owner. See 37 C.F.R. §2.2(n) . A perso |
| 611.03(b) | 611.03(b) Responses, Amendments to Applications, Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide | 611.03(b) Responses, Amendments to Applications, Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide | Responses, amendments to applications, requests for express abandonment, requests for reconsideration of final actions, and requests to divide must be signed in accordance with the following guidelines: If the applicant |
| 611.03(c) | 611.03(c) Powers of Attorney and Revocations of Powers of Attorney | 611.03(c) Powers of Attorney and Revocations of Powers of Attorney | Powers of attorney and revocations of powers of attorney must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant. In the case of joint applicant |
| 611.03(d) | 611.03(d) Petitions to Revive | 611.03(d) Petitions to Revive | A petition to revive under 37 C.F.R. §2.66 must be signed by someone with firsthand knowledge of the facts regarding unintentional delay. 37 C.F.R. §§2.66(b)(2) , (c)(2) , 2.193(e)(4) ; TMEP §1714.01(e) . See TMEP §611.0 |
| 611.03(e) | 611.03(e) Petitions to the Director | 611.03(e) Petitions to the Director | A petition to the Director under 37 C.F.R. §2.146 or §2.147 must be signed in accordance with the following guidelines: If the petitioner is represented by a qualified U.S. attorney, the attorney must sign the petition. |
| 611.03(f) | 611.03(f) Amendment, Correction, or Surrender of Registration | 611.03(f) Amendment, Correction, or Surrender of Registration | All requests for amendment, correction, or surrender of a registration must be properly signed (i.e., include a submission signature) in accordance with the following guidelines: If the owner is represented by a qualifie |
| 611.03(g) | 611.03(g) Renewal Applications | 611.03(g) Renewal Applications | A renewal application must be signed by the registrant or the registrant’s representative. 37 C.F.R. §§2.183(a) , 2.193(e)(7) . See TMEP §1606.06 and §1606.07 regarding filing and execution of renewal applications. |
| 611.03(h) | 611.03(h) Designations and Revocations of Domestic Representative | 611.03(h) Designations and Revocations of Domestic Representative | Designation. The designation of a domestic representative must be signed in accordance with the following guidelines: If the applicant or registrant is represented by a qualified U.S. attorney, the attorney must sign; or |
| 611.03(i) | 611.03(i) Requests to Change Correspondence Address in an Application or Registration | 611.03(i) Requests to Change Correspondence Address in an Application or Registration | A request to change the correspondence address in an application or registration must be signed in accordance with the following guidelines: If the applicant or registrant is represented by a qualified U.S. attorney, the |
| 611.04 | 611.04 Examples of Authorized and Potentially Unauthorized Signatories | 611.04 Examples of Authorized and Potentially Unauthorized Signatories | Set forth below is a list of examples of parties who are authorized and potentially unauthorized to sign responses, petitions to the Director under 37 C.F.R. §§2.146 or 2.147 , amendments, requests for express abandonmen |
| 611.05 | 611.05 Processing Documents Signed by an Improper Party | 611.05 Processing Documents Signed by an Improper Party | When examining a document filed in connection with a trademark application or registration, the USPTO staff must ensure that all documents are signed by a proper party. See TMEP §611.02 . Responses in examination. When i |
| 611.05(a) | 611.05(a) Notice of Incomplete Response when Authority of Person Signing Response Is Unclear | 611.05(a) Notice of Incomplete Response when Authority of Person Signing Response Is Unclear | If it appears that a response to an examining attorney’s Office action is signed by an improper party, and the applicant is not required to be represented by a qualified U.S. attorney, the examining attorney must treat t |
| 611.05(b) | 611.05(b) Replying to a Notice of Incomplete Response | 611.05(b) Replying to a Notice of Incomplete Response | If the individual whose name appears beneath the signature is an authorized signer, and the applicant is not represented by a qualified U.S. attorney or required to be represented by a qualified U.S. attorney, the indivi |
| 611.05(c) | 611.05(c) Unsatisfactory Response or Failure to Respond | 611.05(c) Unsatisfactory Response or Failure to Respond | Pending Applications. If there is an unsatisfactory response or no response is received to the notice of incomplete response issued in connection with the application, the USPTO will abandon the application for incomplet |
| 611.06 | 611.06 Guidelines on Persons with Legal Authority to Bind Certain Juristic Entities | 611.06 Guidelines on Persons with Legal Authority to Bind Certain Juristic Entities | When a document must be signed by a person with “legal authority to bind a juristic entity,” the signatory must be someone who has the authority to bind that entity to any obligation and/or agreement whatsoever, and not |
| 611.06(a) | 611.06(a) Joint Owners | 611.06(a) Joint Owners | Joint owners are individual parties and not a single entity. Where a document must be signed by someone with legal authority to bind joint owners, the document must be signed by all the owners. See 37 C.F.R. §§2.193(e)(2 |
| 611.06(b) | 611.06(b) Signature by Partnership | 611.06(b) Signature by Partnership | Where a document must be signed by someone with legal authority to bind a partnership, a general partner must sign. Signature by all the general partners is not necessary. If the partnership comprises general partners wh |
| 611.06(c) | 611.06(c) Signature by Joint Venture | 611.06(c) Signature by Joint Venture | Where a document must be signed by someone with legal authority to bind a joint venture, each party to the venture must sign. Although a joint venture has many attributes of a partnership, it is a special partnership, wh |
| 611.06(d) | 611.06(d) Signature by Corporation | 611.06(d) Signature by Corporation | Where a document must be signed by someone with legal authority to bind a corporation, a corporate officer must sign. An officer is a person who holds an office established in the articles of incorporation or corporate b |
| 611.06(e) | 611.06(e) Signature by Foreign Companies and Corporations | 611.06(e) Signature by Foreign Companies and Corporations | There are significant differences between the legal entities established under the laws of the United States and legal entities established and recognized under the laws of foreign countries, and the titles and duties of |
| 611.06(f) | 611.06(f) Signature by Unincorporated Association | 611.06(f) Signature by Unincorporated Association | For organizations that are less formally organized than corporations (e.g., fraternal societies, unions, unincorporated associations, and governmental bodies), the titles for officers are less standardized. These organiz |
| 611.06(g) | 611.06(g) Signature by Limited Liability Company | 611.06(g) Signature by Limited Liability Company | A limited liability company (“LLC”) has attributes of both a corporation and a partnership. See TMEP §803.03(h) . Generally, a signatory identified as “manager,” “member,” “principal,” or “owner” may be presumed to have |
| 611.06(h) | 611.06(h) Signature by Limited Liability Partnership | 611.06(h) Signature by Limited Liability Partnership | A limited liability partnership (“LLP”) has attributes of both a partnership and a corporation. See TMEP §803.03(k) . Laws vary to some extent as to the authority conferred on various partners associated with the limited |
| 701 | 701 Statutory Authority for Examination | 701 Statutory Authority for Examination | 15 U.S.C. §1062 Publication. (a) Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who |
| 702 | 702 Order of Work | 702 Order of Work | |
| 702.01 | 702.01 Order of Examination | 702.01 Order of Examination | In general, applications are assigned for examination in the order in which they are received in the U.S. Patent and Trademark Office (USPTO), unless the application is made “special.” See TMEP §702.02 regarding “special |
| 702.02 | 702.02 “Special” Applications | 702.02 “Special” Applications | While the USPTO normally processes applications in the order in which they are received, there are two procedures whereby an application can be made “special,” so that initial examination will be expedited. Request to Ma |
| 702.03 | 702.03 Related Applications | 702.03 Related Applications | |
| 702.03(a) | 702.03(a) Companion Applications | 702.03(a) Companion Applications | The term “companion applications” or “copending applications” refers to pending applications filed by the same applicant. An application is pending until it registers or abandons. Pending applications include application |
| 702.03(b) | 702.03(b) Conflicting Applications | 702.03(b) Conflicting Applications | The term “conflicting applications” refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. §1052 |
| 703 | 703 USPTO Does Not Issue Duplicate Registrations | 703 USPTO Does Not Issue Duplicate Registrations | The USPTO will not issue two or more identical registrations on the same register. If two applications on the same register would result in registrations that are exact duplicates, the USPTO will permit only one applicat |
| 704 | 704 Initial Examination | 704 Initial Examination | |
| 704.01 | 704.01 Initial Examination Must Be Complete | 704.01 Initial Examination Must Be Complete | 37 C.F.R. 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 |
| 704.02 | 704.02 Examining Attorney’s Search | 704.02 Examining Attorney’s Search | If the examining attorney finds no conflicting marks, but must write to the applicant about other matters, the examining attorney must inform the applicant that no conflicting marks have been found. This is commonly call |
| 704.03 | 704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney | 704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney | When a non-signatory examining attorney examines an application, a supervisory examining attorney must thoroughly review the action. The usual procedure is for the non-signatory examining attorney to explain relevant inf |
| 705 | 705 The Examining Attorney’s Letter or Action | 705 The Examining Attorney’s Letter or Action | If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by email or telephone commun |
| 705.01 | 705.01 Language in Examining Attorney’s Letter | 705.01 Language in Examining Attorney’s Letter | The examining attorney must indicate the status of the application at the beginning of each letter. In first actions, this may be done by stating that the examining attorney has reviewed the application and made the dete |
| 705.02 | 705.02 Examining Attorneys Should Not Volunteer Statements | 705.02 Examining Attorneys Should Not Volunteer Statements | In Office actions, and email and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in a |
| 705.03 | 705.03 Citation of Conflicting Marks | 705.03 Citation of Conflicting Marks | When refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) , based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and atta |
| 705.04 | 705.04 Reference to Matter in Printed or Online Publications | 705.04 Reference to Matter in Printed or Online Publications | When the examining attorney refers to matter in a printed publication, the examining attorney must provide the citation for the publication, and include the relevant material with the Office action. It is not necessary t |
| 705.05 | 705.05 Citation of Decisions, Orders, and USPTO Publications | 705.05 Citation of Decisions, Orders, and USPTO Publications | In addition to the Trademark Act of 1946, as amended, and the Trademark Rules of Practice, examination is also governed by precedential decisions in prior cases. See TBMP §§101.01 , 101.03 . These decisions include those |
| 705.06 | 705.06 Reviewing and Signing of Letters | 705.06 Reviewing and Signing of Letters | Examining attorneys must review and sign every Office action using an electronic signature. The signature block should include the name, title, law office, telephone number, and email address of the examining attorney. T |
| 705.07 | 705.07 Processing Outgoing Office Actions | 705.07 Processing Outgoing Office Actions | Except for first Office actions in a §66(a) application, a date is placed on Office actions when they are issued. See TMEP §1904.02(h) . For outgoing email communications, including electronically issued Office actions, |
| 705.08 | 705.08 Response Clause | 705.08 Response Clause | Each Office action must set forth the deadline for response, if applicable. 37 C.F.R. §2.62(a) . Generally, the examining attorney’s letter or Office action will include a “response clause” notifying the applicant that t |
| 706 | 706 New Matter Raised by Examining Attorney After First Action | 706 New Matter Raised by Examining Attorney After First Action | If in the first Office action an examining attorney inadvertently failed to refuse registration on a clearly applicable ground or to make a necessary requirement, the examining attorney must take appropriate action to co |
| 706.01 | 706.01 Clear Error | 706.01 Clear Error | The term “clear error” refers to an administrative internal guideline used by the USPTO to determine whether an examining attorney should issue a refusal or requirement that could or should have been raised in a previous |
| 707 | 707 Examiner’s Amendment | 707 Examiner’s Amendment | An examiner’s amendment should be used whenever appropriate to expedite prosecution of an application. An examiner’s amendment is a communication to the applicant in which the examining attorney states that the applicati |
| 707.01 | 707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney | 707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney | Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only a |
| 707.02 | 707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney | 707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney | Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified U.S. attorney (sometimes referred to as a “no-call” examiner’s am |
| 707.03 | 707.03 Form of the Examiner’s Amendment | 707.03 Form of the Examiner’s Amendment | An examiner’s amendment should include the following information: the name, law office, telephone number, and email address of the examining attorney; the name of the person interviewed; the date of the interview; the ac |
| 708 | 708 Priority Action | 708 Priority Action | |
| 708.01 | 708.01 Priority Action Defined | 708.01 Priority Action Defined | A “priority action” is an Office action that is issued following a telephone conversation, personal interview, or email communication in which the examining attorney and the individual applicant, someone with legal autho |
| 708.02 | 708.02 Discussion of Issues and Agreements | 708.02 Discussion of Issues and Agreements | An examining attorney must discuss the issues with the proper person. If the applicant is represented by a qualified U.S. attorney , the examining attorney must speak directly to the attorney. See TMEP §§602–602.03(e) fo |
| 708.03 | 708.03 Form of the Priority Action | 708.03 Form of the Priority Action | The priority action should reference the date of the telephone call, email message, or other communication, and the name and title (where appropriate) of the person who authorized the priority action. See TMEP §708.02 fo |
| 708.04 | 708.04 Refusal of Registration in Priority Action | 708.04 Refusal of Registration in Priority Action | Priority actions are generally used when there are no statutory refusals. However, if there is sufficient evidence to support a statutory refusal, and the examining attorney believes that an amendment or explanation will |
| 708.05 | 708.05 Combined Examiner’s Amendment and Priority Action | 708.05 Combined Examiner’s Amendment and Priority Action | An examining attorney may issue an Office action that combines an examiner’s amendment and priority action, if the requirements for both have been met. The examiner’s-amendment portion reflects the authorized amendments, |
| 709 | 709 Interviews | 709 Interviews | |
| 709.01 | 709.01 Interviews with Examining Attorneys | 709.01 Interviews with Examining Attorneys | A discussion between the applicant or applicant’s qualified U.S. attorney and the examining attorney in which the applicant presents matters for the examining attorney’s consideration is considered an interview. An inter |
| 709.02 | 709.02 Persons With Whom the Examining Attorney May Discuss the Application in an Interview | 709.02 Persons With Whom the Examining Attorney May Discuss the Application in an Interview | In general, interviews are not granted to persons who lack proper authority from the applicant. See TMEP §§602–602.03(c) regarding persons who may represent an applicant before the USPTO in a trademark matter, and TMEP § |
| 709.03 | 709.03 Making Substance of Interview of Record | 709.03 Making Substance of Interview of Record | The substance of an interview must always be made of record in the application, since the action of the USPTO is based exclusively on the written record. 37 C.F.R. §2.191 . This should be done promptly after the intervie |
| 709.04 | 709.04 Telephone and Email Communications | 709.04 Telephone and Email Communications | Examining attorneys should initiate telephone or email communications (i.e., informal communications) whenever possible to expedite prosecution of an application. Similarly, applicants, qualified U.S. attorneys, and reco |
| 709.05 | 709.05 Informal Communications | 709.05 Informal Communications | An applicant may conduct informal communications with an examining attorney regarding a particular application by telephone or email ( see TMEP §§304.01–304.02 , 709.04 ). Informal communications should be conducted only |
| 709.06 | 709.06 Interviews Prior to Filing Application | 709.06 Interviews Prior to Filing Application | No interviews are permitted before the filing of an application. If a party has general questions about how to file an application, the party can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. |
| 709.07 | 709.07 Decorum Required in Communications with the Office | 709.07 Decorum Required in Communications with the Office | An applicant, registrant, attorney, or party is required to conduct their business before the Office with decorum and courtesy. See 37 C.F.R. §2.192 . The Office will review all oral or written communications received, b |
| 710 | 710 Evidence | 710 Evidence | |
| 710.01 | 710.01 Evidence Supporting Refusal or Requirement | 710.01 Evidence Supporting Refusal or Requirement | In general, the examining attorney's refusal or requirement must ultimately be supported with relevant evidence. The examining attorney must ensure that an Office action makes proper citations to any supporting evidence. |
| 710.01(a) | 710.01(a) Evidence from Research Database | 710.01(a) Evidence from Research Database | If evidence is obtained from a research database, the record should include an indication of the specific search that was conducted. The record should indicate the libraries and/or files that were searched and the result |
| 710.01(b) | 710.01(b) Internet Evidence | 710.01(b) Internet Evidence | Articles obtained from the Internet, websites, and blog posts are "admissible as evidence of information available to the consuming public and of the way in which a term is being used or would be understood by the releva |
| 710.01(c) | 710.01(c) Record Must Be Complete Prior to Appeal | 710.01(c) Record Must Be Complete Prior to Appeal | The record in the application should be complete prior to appeal. 37 C.F.R. §2.142(d) ; In re Jimenez , Ser. No. 97551823, 2025 TTAB LEXIS 441, at *5 (2025); In re Weiss , Ser. No. 88621608, 2024 TTAB LEXIS 277, at *4 (2 |
| 710.02 | 710.02 Search for Evidence Indicating No Refusal or Requirement Necessary | 710.02 Search for Evidence Indicating No Refusal or Requirement Necessary | USPTO practice is to indicate the results of a search for evidence when the examining attorney considers an issue and determines that no action will be taken on it. This information is helpful for internal review. A Note |
| 710.03 | 710.03 Evidence of Third-Party Registrations | 710.03 Evidence of Third-Party Registrations | The Trademark Trial and Appeal Board (Board) does not take judicial notice of registrations or the contents of application and registration files, and the submission of a list of registrations does not make these registr |
| 711 | 711 Deadline for Response to Office Action | 711 Deadline for Response to Office Action | Section 1 and/or 44 Applications – Three-month Response Period, With an Option to Extend the Time to Respond . For §1 and/or §44 applications, the response period for an examining attorney’s Office action is three months |
| 711.01 | 711.01 Request for Extension of Time to Respond | 711.01 Request for Extension of Time to Respond | Before filing a response, an applicant may request one three-month extension of the time to respond or to appeal, subject to payment of the applicable fee. 37 C.F.R. §2.62(a)(2) . If granted, the response deadline, inclu |
| 711.01(a) | 711.01(a) Requirements for Request for Extension of Time to Respond | 711.01(a) Requirements for Request for Extension of Time to Respond | A complete request for an extension of time to respond must include: (1) a written request for an extension from the applicant, filed before the expiration of the three-month response period; and (2) payment of the fee r |
| 711.01(b) | 711.01(b) Time for Filing a Request for Extension of Time to Respond | 711.01(b) Time for Filing a Request for Extension of Time to Respond | To be considered timely, a complete request for an extension of time to respond must be received by the USPTO on or before the end of the three-month response period. 37 C.F.R. §2.62(a)(2) . In addition, the request for |
| 711.02 | 711.02 Time May Run from Previous Action | 711.02 Time May Run from Previous Action | In most cases, the period to respond to an Office action runs from the issuance date of the Office action. In some situations, the examining attorney’s Office action does not re-start the beginning of a new response peri |
| 711.03 | 711.03 Supplemental Office Action Resetting Response Period | 711.03 Supplemental Office Action Resetting Response Period | Sometimes the examining attorney must issue a supplemental Office action that resets the period for response. If the examining attorney discovers after issuing an action that a refusal or requirement that should have bee |
| 712 | 712 Signature on Response to Office Action | 712 Signature on Response to Office Action | A response to an Office action must be personally signed by the proper party; that is, a qualified U.S. attorney or, if the applicant is neither represented by a qualified attorney nor required to be represented by one, |
| 712.01 | 712.01 Persons Who May Sign Response | 712.01 Persons Who May Sign Response | The response must be properly signed in accordance with the guidelines in TMEP §611.03(b) . See TMEP §§611.06-611.06(h) for persons with legal authority to bind various types of juristic entities and §§602-602.03(c) rega |
| 712.02 | 712.02 Unsigned Response | 712.02 Unsigned Response | The examining attorney should treat an unsigned response as an incomplete response, and should either call the applicant to obtain permission to enter an examiner’s amendment from an authorized party (if appropriate), or |
| 712.03 | 712.03 Response Signed by an Improper Person | 712.03 Response Signed by an Improper Person | Notice of Incomplete Response. When it appears that a response to an Office action was signed by an improper party (e.g., a foreign attorney who is not authorized to practice before the USPTO, a corporate employee who do |
| 713 | 713 Examination of Amendments and Responses to Office Actions | 713 Examination of Amendments and Responses to Office Actions | 37 C.F.R. Repeated non-final refusal or requirement. After response by the applicant, the examining attorney will review all statutory refusals and/or requirement(s) in light of the response. (1) If, after review of the |
| 713.01 | 713.01 Previous Action by Different Examining Attorney | 713.01 Previous Action by Different Examining Attorney | When assigned to act on an application that was previously handled by a different examining attorney, the examining attorney should act consistently with the prior examining attorney, unless it would be clear error ( see |
| 713.02 | 713.02 Noting All Outstanding Refusals or Requirements | 713.02 Noting All Outstanding Refusals or Requirements | Every refusal or requirement made in a prior Office action that is still outstanding must be referenced in any subsequent action, including Notices of Suspension. In addition, when a particular refusal or requirement has |
| 713.03 | 713.03 Response to Applicant’s Arguments in Nonfinal Actions | 713.03 Response to Applicant’s Arguments in Nonfinal Actions | When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments. See TMEP §718.02(a) for an examining attorney’s response to an appli |
| 714 | 714 Final Action | 714 Final Action | 37 C.F.R. Final refusal or requirement. Upon review of a response, the examining attorney may state that any refusal to register or requirement is final. (1) If the examining attorney issues a final action that maintains |
| 714.01 | 714.01 Not Permissible on First Action | 714.01 Not Permissible on First Action | A first action by an examining attorney may not be a final action. An applicant is entitled to at least one opportunity to reply to any refusal(s) or requirement(s) raised by the examining attorney. |
| 714.02 | 714.02 Not Permissible on Suspension | 714.02 Not Permissible on Suspension | A letter of suspension cannot be made final. See TMEP §§716–716.06 regarding suspension. |
| 714.03 | 714.03 When Final Action is Appropriate | 714.03 When Final Action is Appropriate | Final action is appropriate when a clear issue has been developed between the examining attorney and the applicant, i.e., the examining attorney has previously raised all outstanding issues and the applicant has had an o |
| 714.04 | 714.04 Form of the Final Action | 714.04 Form of the Final Action | When making an action final, the examining attorney must restate any substantive refusals or requirements that remain outstanding, and must cite the rule(s) and/or statute(s) that provide the basis for these refusals or |
| 714.05 | 714.05 Delineating New Issues Requiring Issuance of Nonfinal Action | 714.05 Delineating New Issues Requiring Issuance of Nonfinal Action | It is sometimes difficult to determine what constitutes a new issue requiring a new nonfinal action, rather than a final action, after receipt of a response. See TMEP §§714.05(a) – 714.05(f) regarding the propriety of is |
| 714.05(a) | 714.05(a) When an Amendment Proposed By Applicant Requires a New Nonfinal Action | 714.05(a) When an Amendment Proposed By Applicant Requires a New Nonfinal Action | If an applicant submits an unacceptable amendment in response to a refusal or requirement issued by the examining attorney, the amendment generally does not raise a new issue that requires a nonfinal action. However, if |
| 714.05(b) | 714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application that Has Matured Into Registration | 714.05(b) Section 2(d) Refusal Based on Earlier-Filed Application that Has Matured Into Registration | The examining attorney must issue a new nonfinal action when first refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) , as to an earlier-filed application that has registered, even if the applican |
| 714.05(c) | 714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement | 714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement | Except as provided in TMEP §714.05(a)(ii) , an advisory statement in an Office action indicating that a refusal or requirement will be issued if specified circumstances arise cannot serve as the foundation for issuing a |
| 714.05(d) | 714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal | 714.05(d) Submission of Consent Agreement or Assertion of Unity of Control in Response to §2(d) Refusal | Consent Agreement. If an applicant files a consent agreement in response to a nonfinal refusal under §2(d) of the Trademark Act, and the examining attorney finds the consent agreement insufficient to overcome the refusal |
| 714.05(e) | 714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce | 714.05(e) Submission of Substitute Specimen in Response to Refusal for Failure to Show Use of the Mark in Commerce | If the applicant responds to an Office action refusing registration by submitting a substitute specimen that does not show use of the mark in commerce for the same or a different “use-in-commerce” reason, the examining a |
| 714.05(f) | 714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark | 714.05(f) Submission of Substitute Specimen in Response to Refusal for Failure to Show the Applied-For Mark Functioning as a Mark | Because the examining attorney has advised the applicant of the appropriate response options, which may include the general requirements for a substitute specimen, if the applicant responds to a failure-to-function refus |
| 714.06 | 714.06 Applicant’s Recourse When Final Action is Premature | 714.06 Applicant’s Recourse When Final Action is Premature | If an applicant believes that a refusal to register or a requirement has been made final prematurely, the applicant must raise the issue while the application is still pending before the examining attorney. It is not a g |
| 715 | 715 Action After Issuance of Final Action | 715 Action After Issuance of Final Action | |
| 715.01 | 715.01 Proper Response to Final Action | 715.01 Proper Response to Final Action | An applicant must timely respond to a final action to avoid abandonment. 15 U.S.C. §1062(b) ; 37 C.F.R. §2.62(a) . See TMEP §711 for the deadline for response to an Office action and §711.01 regarding requests for an ext |
| 715.02 | 715.02 Action After Final Action | 715.02 Action After Final Action | Once an action has been properly made final, the examining attorney normally should not change their position. However, this does not mean that an applicant’s amendment or argument will not be considered after final acti |
| 715.03 | 715.03 Request for Reconsideration After Final Action | 715.03 Request for Reconsideration After Final Action | Under 37 C.F.R. §2.63(b)(3) , the applicant may file a request for reconsideration before the deadline for filing an appeal to the Board or petition to the Director. However, filing a request for reconsideration does not |
| 715.03(a) | 715.03(a) Examining Attorney’s Action When No New Issue or No Significantly Different Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed | 715.03(a) Examining Attorney’s Action When No New Issue or No Significantly Different Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed | If a request for reconsideration presents no new issues or no new evidence significantly different from that previously submitted and the applicant has not filed a notice of appeal, the examining attorney must consider w |
| 715.03(b) | 715.03(b) Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed | 715.03(b) Examining Attorney’s Action When New Issue or New Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed | If the request for reconsideration includes an amendment that presents a new issue, whether related to the final refusal or not, the examining attorney must issue a nonfinal action with a response clause that addresses t |
| 715.03(c) | 715.03(c) Time for Appeal Runs from Issue Date of Final Action | 715.03(c) Time for Appeal Runs from Issue Date of Final Action | Filing a request for reconsideration does not stay or extend the time for responding to a final refusal. See 15 U.S.C. §1062(b) ; 37 C.F.R. §§2.63(b)(3) , 2.142(a) . If the examining attorney denies an applicant’s reques |
| 715.04 | 715.04 Request for Reconsideration Filed in Conjunction with Notice of Appeal | 715.04 Request for Reconsideration Filed in Conjunction with Notice of Appeal | The Board has jurisdiction over an application upon the filing of a notice of appeal. In response to a request from an applicant, the Board may remand an application to the examining attorney for consideration of specifi |
| 715.04(a) | 715.04(a) Examining Attorney's Action When No New Issue Is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed | 715.04(a) Examining Attorney's Action When No New Issue Is Presented in Request for Reconsideration and Notice of Appeal Has Been Filed | If the request for reconsideration does not overcome or resolve the issues on appeal, and no new issue, or no new evidence significantly different from that previously submitted, is presented therein, the examining attor |
| 715.04(b) | 715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed | 715.04(b) Examining Attorney's Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed | If the request for reconsideration includes an amendment that presents a new issue, the examining attorney must issue a new nonfinal Office action with a response clause that addresses the new issue and maintains the ref |
| 716 | 716 Suspension of Action by USPTO | 716 Suspension of Action by USPTO | 37 C.F.R. Suspension of action by the Patent and Trademark Office. Action by the Office may be suspended for a reasonable time for good and sufficient cause. The fact that a proceeding is pending before the Office or a c |
| 716.01 | 716.01 Form of Suspension Notice | 716.01 Form of Suspension Notice | In a suspension notice, the examining attorney must specifically state that action is suspended and must omit any reference to a response period. If the application is in condition for a final action but for the matter n |
| 716.02 | 716.02 Circumstances Under Which Action May Be Suspended | 716.02 Circumstances Under Which Action May Be Suspended | Under 37 C.F.R. §2.67 , an examining attorney has the discretion to suspend an application “for good and sufficient cause.” The most common reasons for suspension of an application are discussed below. As a general rule, |
| 716.02(a) | 716.02(a) Applicant’s Petition to Cancel Cited Registration | 716.02(a) Applicant’s Petition to Cancel Cited Registration | If the examining attorney refuses registration under §2(d) of the Trademark Act in view of the mark in a prior registration, the applicant may file a petition to cancel the registration under 15 U.S.C. §1064 and, within |
| 716.02(b) | 716.02(b) Submission of Copy of Foreign Registration in §44(d) Application | 716.02(b) Submission of Copy of Foreign Registration in §44(d) Application | When an applicant who claims the benefit of a prior foreign application under §44(d) of the Act, 15 U.S.C. §1126(d) , is required to submit a copy of a foreign registration, the applicant may respond to the requirement b |
| 716.02(c) | 716.02(c) Conflicting Marks in Pending Applications | 716.02(c) Conflicting Marks in Pending Applications | When there are conflicting marks in pending applications, action on the application with the later effective filing date will be suspended (if the application appears to be otherwise in condition for publication or issue |
| 716.02(d) | 716.02(d) Inter Partes or Court Proceeding | 716.02(d) Inter Partes or Court Proceeding | If an examining attorney learns of a proceeding pending before the Trademark Trial and Appeal Board (Board) or a court that may result in a decision that supports a refusal of registration of an applicant’s mark, the exa |
| 716.02(e) | 716.02(e) Pending Cancellation or Expiration of Cited Registration | 716.02(e) Pending Cancellation or Expiration of Cited Registration | When the owner of a registration submits a timely affidavit or declaration of continued use or excusable nonuse under 15 U.S.C. §1058 (§8 affidavit) or §1141k (§71 affidavit) or an application for renewal under 15 U.S.C. |
| 716.02(f) | 716.02(f) Pending Expiration of “Insurance” Extension Request | 716.02(f) Pending Expiration of “Insurance” Extension Request | When the applicant files a timely “insurance” extension request (i.e., in conjunction with the statement of use or within the same six-month period that the statement of use is filed; see TMEP §§1108.03–1108.03(a) , 1109 |
| 716.02(g) | 716.02(g) Pending Receipt of a Correction, Limitation, Assignment, or other Change to the International Record from the International Bureau | 716.02(g) Pending Receipt of a Correction, Limitation, Assignment, or other Change to the International Record from the International Bureau | All changes to the international registration (e.g., corrections to the international registration, assignments, cancellations, and changes to the holder’s name and mailing address) must be filed directly with the Intern |
| 716.02(h) | 716.02(h) Pending Recordation of an Assignment Document | 716.02(h) Pending Recordation of an Assignment Document | During initial examination, the examining attorney should not suspend action or delay issuance of a final action to await recordation of a document. However, in an application under §1 or §44, if the applicant states tha |
| 716.02(i) | 716.02(i) Pending Registry Agreement with ICANN for Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services | 716.02(i) Pending Registry Agreement with ICANN for Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services | With regard to an application for a mark composed solely of a gTLD for domain registry operator and domain name registrar services, the examining attorney may issue an information request under Trademark Rule 2.61(b), 37 |
| 716.02(j) | 716.02(j) Pending Disposition of Expungement or Reexamination Proceedings | 716.02(j) Pending Disposition of Expungement or Reexamination Proceedings | A pending trademark application may be suspended pending the disposition of an expungement or reexamination proceeding. See 37 C.F.R. §§2.67 , 2.117(a) . The fact that an expungement or reexamination proceeding is pendin |
| 716.02(k) | 716.02(k) Pending Disposition of Post Registration Audit | 716.02(k) Pending Disposition of Post Registration Audit | The USPTO conducts random audits of §8 and §71 affidavits or declarations in which the mark is registered for more than one good or service per class under 37 C.F.R. §2.161(b) . TMEP §1604.22 and §1613.22 . When a regist |
| 716.02(l) | 716.02(l) Pending Decision on a Petition to Waive the Domicile Address Requirement | 716.02(l) Pending Decision on a Petition to Waive the Domicile Address Requirement | An applicant may file a petition to the Director to waive the domicile address requirement of Trademark Rule 2.189 when an extraordinary situation exists that would justify waiving the rule. See 37 C.F.R. §§2.146(a)(5) , |
| 716.03 | 716.03 Applicant’s Arguments Against Suspension | 716.03 Applicant’s Arguments Against Suspension | If an examining attorney suspends action on an application, and the applicant believes the suspension is improper, the applicant may file a request to remove the application from suspension. The applicant should state th |
| 716.04 | 716.04 Suspended Docket Checked | 716.04 Suspended Docket Checked | The suspended docket is reviewed at least every six months to determine whether continued suspension is appropriate. If the application should remain suspended, the suspension check is reported in the Trademark database. |
| 716.05 | 716.05 Inquiry by Examining Attorney Regarding Suspended Application | 716.05 Inquiry by Examining Attorney Regarding Suspended Application | In certain circumstances, if the application has been suspended for six months or more, the examining attorney will issue an Office action inquiring as to the status of the matter on which suspension was based. For examp |
| 716.06 | 716.06 Suspension After Final Action | 716.06 Suspension After Final Action | If the examining attorney determines that action on an application should be suspended after issuance of a final refusal, the examining attorney must issue a suspension notice. This may occur, for example, when the appli |
| 717 | 717 Reissuing an Office Action | 717 Reissuing an Office Action | USPTO error . If the USPTO issued an Office action to the wrong email address (e.g., if the USPTO entered the correspondence address of record incorrectly or did not enter a proper previously filed request to change the |
| 717.01 | 717.01 Email Notice of Office Action Undeliverable | 717.01 Email Notice of Office Action Undeliverable | If an email transmission fails for any reason, the USPTO will not attempt to contact the correspondent by any other means. Thus, if an emailed notification of an issued Office action is returned as undeliverable, the USP |
| 717.02 | 717.02 Permitted Paper Filings: Non-Receipt of Mailed Office Action | 717.02 Permitted Paper Filings: Non-Receipt of Mailed Office Action | If an applicant notifies the USPTO that the applicant did not receive a mailed Office action, either before or after the expiration of the response period, the examining attorney must check to determine whether the actio |
| 718 | 718 Abandonment | 718 Abandonment | An abandoned application is an application for registration that is removed from the USPTO docket of pending applications because of express abandonment or because the applicant failed to take appropriate action within t |
| 718.01 | 718.01 Express Abandonment by Applicant or Applicant’s Attorney | 718.01 Express Abandonment by Applicant or Applicant’s Attorney | 37 C.F.R. An application will be abandoned if an applicant expressly abandons the application pursuant to § 2.68. 37 C.F.R. Express abandonment (withdrawal) of application. (a) Written document required. An applicant may |
| 718.02 | 718.02 Failure by Applicant to Take Required Action During the Relevant Response Period | 718.02 Failure by Applicant to Take Required Action During the Relevant Response Period | 15 U.S.C. §1062(b) (1) If the applicant is found not entitled to registration, the examiner shall notify the applicant thereof and of the reasons therefor. The applicant may reply or amend the application, which shall th |
| 718.02(a) | 718.02(a) Partial Abandonment | 718.02(a) Partial Abandonment | General Rule . Trademark Rule 2.65(a)(1), 37 C.F.R. §2.65(a)(1) , provides that if all refusals and/or requirements are expressly limited to certain goods/services, and the applicant fails to respond, or to respond compl |
| 718.03 | 718.03 Incomplete Response | 718.03 Incomplete Response | 37 C.F.R. An application will be abandoned if an applicant fails to respond to an Office action, or to respond completely, within the relevant time period for response under § 2.62(a)(1), including any granted extension |
| 718.03(a) | 718.03(a) Holding of Abandonment for Failure to Respond Completely | 718.03(a) Holding of Abandonment for Failure to Respond Completely | Generally, an examining attorney must not hold an application abandoned when an applicant timely files a properly signed but incomplete response to a nonfinal action (i.e., the response does not address one or more of th |
| 718.03(b) | 718.03(b) Granting Additional Time to Perfect Response | 718.03(b) Granting Additional Time to Perfect Response | Under 37 C.F.R. §2.65(a)(2) , the examining attorney has discretion to grant an applicant 30 days, or to the end of the response period for the previous Office action, whichever is longer, to perfect the response if: (1) |
| 718.04 | 718.04 Failure to File Statement of Use | 718.04 Failure to File Statement of Use | Under 15 U.S.C. §1051(d)(4) , an application under §1(b) of the Act is abandoned if the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use. 37 C.F.R. §§2.65(c |
| 718.05 | 718.05 Failure to Perfect Appeal | 718.05 Failure to Perfect Appeal | An application may become abandoned because of withdrawal of, or failure to prosecute, an appeal to the Trademark Trial and Appeal Board. See 15 U.S.C. §1062(b) ; TBMP §1203.02(a) ; TMEP §1501. An application may also be |
| 718.06 | 718.06 Notice of Abandonment for Failure to Respond | 718.06 Notice of Abandonment for Failure to Respond | If no response is received by the USPTO within the relevant response period ( see TMEP §711 ), including an extended response period after the grant of an extension of time to respond under 37 C.F.R. §2.62(a)(2) ( see TM |
| 718.07 | 718.07 Revival or Reinstatement of Abandoned Application - New Search Required | 718.07 Revival or Reinstatement of Abandoned Application - New Search Required | When an application listed as abandoned in the USPTO's Trademark database is revived or reinstated, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the new search shows that a |
| 719 | 719 Non-Responsive Communications | 719 Non-Responsive Communications | An inquiry or a communication on a matter unrelated to the outstanding Office action should be treated as a “non-responsive communication,” not as an incomplete response to an outstanding Office action. In addition, a re |
| 720 | 720 Fraudulent Filings | 720 Fraudulent Filings | Matters involving fraudulent filings fall under the authority of the Trademark Register Protection Office (RPO). Under no circumstances should any USPTO communication pertaining to suspected fraud be made, either orally |
| 801 | 801 Types of Applications | 801 Types of Applications | The wording “type of application” refers to the kind of application by which registration is requested, e.g., whether the application is a single-class application or a multiple-class application, whether the mark is for |
| 801.01 | 801.01 Single or Combined Application | 801.01 Single or Combined Application | |
| 801.01(a) | 801.01(a) Single (Single-Class) Application | 801.01(a) Single (Single-Class) Application | A single-class application limits the goods or services for which registration is sought to goods or services in only one of the classes in the classification schedules. The application may recite more than one item, if |
| 801.01(b) | 801.01(b) Combined (Multiple-Class) Application | 801.01(b) Combined (Multiple-Class) Application | A combined or multiple-class application is an application to register the same mark for goods, services, and/or a collective membership organization in multiple classes in a single application. See 37 C.F.R. §2.86(a) , |
| 801.02 | 801.02 Principal Register or Supplemental Register | 801.02 Principal Register or Supplemental Register | |
| 801.02(a) | 801.02(a) Act of 1946, Principal Register | 801.02(a) Act of 1946, Principal Register | The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register (15 U.S.C. §§1051–1072). When a mark has been registered on the Principal Register, the mark is entitled t |
| 801.02(b) | 801.02(b) Act of 1946, Supplemental Register | 801.02(b) Act of 1946, Supplemental Register | Certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, may be registered on the Supplemental Register. Sections 23 through 28 o |
| 802 | 802 Application Form | 802 Application Form | The USPTO requires that applicants filing applications under Trademark Act §1 or §44 use the trademark electronic filing system. 37 C.F.R. §2.21(a) ; TMEP §§301.01 , 301.01(a) . Before January 18, 2025, applicants had tw |
| 803 | 803 Applicant | 803 Applicant | |
| 803.01 | 803.01 Who May Apply | 803.01 Who May Apply | An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application under 15 U.S.C. §1051(b) , by the person who has a bona fide intention to use the mark in commerce. |
| 803.02 | 803.02 Name of Applicant | 803.02 Name of Applicant | The name of the applicant should be set out in its correct legal form. See 37 C.F.R. §§2.22(a)(1) , 2.32(a)(2) . For example, a corporate applicant should be identified by the name set forth in the articles of incorporat |
| 803.02(a) | 803.02(a) Individual | 803.02(a) Individual | If the applicant is an individual person who is doing business under an assumed business name, the individual’s name should be set forth, followed by an assumed name designation (e.g., d.b.a., a.k.a., or t.a.) and by the |
| 803.02(b) | 803.02(b) Partnership, Joint Venture, or Other “Firm” | 803.02(b) Partnership, Joint Venture, or Other “Firm” | If a partnership, joint venture, or other “firm” has been organized under a particular business name, the application should be filed in that name. See 37 C.F.R. §2.32(a)(2) . If the partnership or firm has not been orga |
| 803.02(c) | 803.02(c) Corporation and Association | 803.02(c) Corporation and Association | If the applicant is a corporation, the official corporate name must be set out as the applicant’s name. See 37 C.F.R. §2.32(a)(2) . Listing an assumed business name is optional. The name of a division of the applicant sh |
| 803.03 | 803.03 Legal Entity of Applicant | 803.03 Legal Entity of Applicant | Immediately after the applicant’s name, the application should set out the applicant’s form of business, or legal entity, for example, partnership, joint venture, corporation, association, or sole proprietorship. 37 C.F. |
| 803.03(a) | 803.03(a) Individual or Sole Proprietorship | 803.03(a) Individual or Sole Proprietorship | Individual . For an individual applicant, it is not necessary to specify “individual,” but it is acceptable to do so. The applicant may state that the applicant is doing business under a specified assumed company name. T |
| 803.03(b) | 803.03(b) Partnership, Joint Venture, or Other “Firm” | 803.03(b) Partnership, Joint Venture, or Other “Firm” | After setting forth the applicant’s name and legal entity type, the application of a partnership or a joint venture should specify the state or country under whose laws the partnership or joint venture is organized. 37 C |
| 803.03(c) | 803.03(c) Corporation, Association, Organization, and Company | 803.03(c) Corporation, Association, Organization, and Company | Corporation. In the United States, the term “corporation” is proper for juristic entities incorporated under the laws of the various states or under special federal statutes. In addition to specifying that an applicant i |
| 803.03(d) | 803.03(d) Joint Applicants | 803.03(d) Joint Applicants | An application may be filed in the names of joint applicants or joint owners. Ex parte Pac. Intermountain Express Co ., 111 USPQ 187, 187 (Comm’r Pats. 1956); Ex parte Taylor , 18 USPQ 292, 293 (Comm’r Pats. 1933). The t |
| 803.03(e) | 803.03(e) Trusts, Conservatorships, and Estates | 803.03(e) Trusts, Conservatorships, and Estates | If a domestic trust is the owner of a mark in an application, the examining attorney must ensure that the trustee(s) is identified as the applicant. 37 C.F.R. §2.32(a)(2)-(a)(3)(i) . Thus, the examining attorney must req |
| 803.03(f) | 803.03(f) Governmental Bodies and Universities | 803.03(f) Governmental Bodies and Universities | It is difficult to establish any rigid guidelines for designating the entity of a governmental body. Due to the variety in the form of these entities, the examining attorney must consider each case on an individual basis |
| 803.03(g) | 803.03(g) Banking Institutions | 803.03(g) Banking Institutions | The nature of banking institutions is strictly regulated and, thus, there are a limited number of types of banking entities. Some banking institutions are federally chartered while others are organized under state law. T |
| 803.03(h) | 803.03(h) Limited Liability Companies | 803.03(h) Limited Liability Companies | Most states recognize an entity commonly identified as a “limited liability company” or “LLC.” The entity has attributes of both a corporation and a partnership. Therefore, the USPTO will accept “limited liability compan |
| 803.03(i) | 803.03(i) Common Terms Designating Entity of Foreign Applicants | 803.03(i) Common Terms Designating Entity of Foreign Applicants | In designating the legal entity type of foreign applicants, acceptable terminology is not always the same as for U.S. applicants. The word “corporation” as used in the United States is not necessarily equivalent to juris |
| 803.03(j) | 803.03(j) Federally Recognized Indian Tribe | 803.03(j) Federally Recognized Indian Tribe | A federally recognized Indian tribe, organized under the laws of the United States, is an acceptable designation of an applicant’s entity. |
| 803.03(k) | 803.03(k) Limited Liability Partnerships | 803.03(k) Limited Liability Partnerships | Most states recognize an entity commonly identified as a “limited liability partnership” (“LLP”). An LLP is separate and distinct from a limited partnership, and is more closely associated with a limited liability compan |
| 803.04 | 803.04 Citizenship of Applicant | 803.04 Citizenship of Applicant | An application for registration must specify the applicant’s citizenship or the state or nation under whose laws the applicant is organized. 37 C.F.R. §2.32(a)(3)(i)-(ii) . If ambiguous terms are used, the examining atto |
| 803.05 | 803.05 Domicile and Email Addresses of Applicant | 803.05 Domicile and Email Addresses of Applicant | The application must specify the applicant’s domicile and email addresses. 37 C.F.R. §2.32(a)(2) ; In re Chestek PLLC , 92 F.4th 1105, 1113, 2024 USPQ2d 297, at *8 (Fed. Cir. 2024) (domicile address requirement affirmed) |
| 803.05(a) | 803.05(a) Domicile Address | 803.05(a) Domicile Address | Applicants must provide and keep current the address of their domicile. 37 C.F.R. §§2.32(a)(2) , 2.189 ; In re Chestek PLLC , 92 F.4th 1105, 1113, 2024 USPQ2d 297, at *8 (Fed. Cir. 2024) (domicile address requirement aff |
| 803.05(b) | 803.05(b) Email Address | 803.05(b) Email Address | Applicants must provide and maintain a valid email address. See 37 C.F.R. §§2.23(b) , 2.32(a)(2) . The applicant’s email address is a filing-date requirement and is required even if the applicant has appointed a qualifie |
| 803.06 | 803.06 Applicant May Not Be Changed | 803.06 Applicant May Not Be Changed | While an application can be amended to correct an inadvertent error in the manner in which an applicant’s name is set forth, an application cannot be amended to substitute another entity as the applicant. 37 C.F.R. §2.71 |
| 804 | 804 Verification and Signature | 804 Verification and Signature | An application must include a statement that is verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. 15 U.S.C. §1051(a)(3) , (b)(3) ; 37 C.F.R. §§2.32(b) , 2.33(a) , 2.193( |
| 804.01 | 804.01 Form and Wording of Verification in §1 or §44 Application | 804.01 Form and Wording of Verification in §1 or §44 Application | Applications filed using the trademark electronic filing system include a declaration under 37 C.F.R. §2.20 as the form of verification. See TMEP §804.01(b) for more information about declarations. For an application tha |
| 804.01(a) | 804.01(a) Verification with Oath | 804.01(a) Verification with Oath | The verification is placed at the end of the application. It should first set forth the venue; followed by the signer’s name (or the words “the undersigned”); then the necessary statements ( TMEP §804.02 ); concluding wi |
| 804.01(b) | 804.01(b) Declaration in Lieu of Oath | 804.01(b) Declaration in Lieu of Oath | Under 35 U.S.C. §25 , the USPTO is authorized to accept a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath. These declarations can be used whenever the Act or rules require that a document be verif |
| 804.02 | 804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application | 804.02 Averments Required in Verification of Application for Registration - §1 or §44 Application | The requirements for the verified statement in applications under §1 or §44 of the Trademark Act are set forth in §§1(a)(3), 1(b)(3), and 44 of the Trademark Act, 15 U.S.C. §§1051(a)(3) , (b)(3) , 1126 , and 37 C.F.R. §§ |
| 804.03 | 804.03 Time Between Execution and Filing of Documents - §1 or §44 Application | 804.03 Time Between Execution and Filing of Documents - §1 or §44 Application | Documents Must Be Filed Within a Reasonable Time After Execution All applications, written statements, and documents that require a signature or signed declaration must be filed within a reasonable time after their execu |
| 804.04 | 804.04 Persons Authorized to Sign Verification or Declaration | 804.04 Persons Authorized to Sign Verification or Declaration | 37 C.F.R. The term verified statement, and the terms verify, verified, or verification as used in this part refers to a statement that is sworn to, made under oath or in an affidavit, or supported by a declaration under |
| 804.05 | 804.05 Verification of §66(a) Application | 804.05 Verification of §66(a) Application | In trademark and service mark applications under §66(a) of the Act, the request for extension of protection to the United States must include a declaration alleging that the applicant/holder has a bona fide intention to |
| 805 | 805 Identification and Classification of Goods and Services | 805 Identification and Classification of Goods and Services | An application for a trademark or service mark must include a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. 37 C.F.R. §2.32(a)(6) . See TMEP §1402 |
| 806 | 806 Filing Basis | 806 Filing Basis | A filing basis is the statutory basis for filing an application for registration of a mark in the United States. An applicant must specify and meet the requirements of one or more bases in a trademark or service mark app |
| 806.01 | 806.01 Requirements for Establishing a Basis | 806.01 Requirements for Establishing a Basis | The requirements for establishing a basis for trademark or service mark applications are set forth in TMEP §§806.01(a)-806.01(e) . |
| 806.01(a) | 806.01(a) Use in Commerce - §1(a) | 806.01(a) Use in Commerce - §1(a) | Under 15 U.S.C. §1051(a) and 37 C.F.R. §2.34(a)(1) , to establish a basis under §1(a) of the Trademark Act, the applicant must: (1) Submit a verified statement that the mark is in use in commerce. 15 U.S.C. §1051(a)(3)(C |
| 806.01(b) | 806.01(b) Intent-to-Use - §1(b) | 806.01(b) Intent-to-Use - §1(b) | In a trademark or service mark application based on 15 U.S.C. §1051(b) and 37 C.F.R. §2.34(a)(2) , the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce. |
| 806.01(c) | 806.01(c) Foreign Priority - §44(d) | 806.01(c) Foreign Priority - §44(d) | Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplem |
| 806.01(d) | 806.01(d) Foreign Registration - §44(e) | 806.01(d) Foreign Registration - §44(e) | Under 15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3) , the requirements for establishing a basis for registration of a trademark or service mark under §44(e), relying on a registration granted by the applicant’s country of |
| 806.01(e) | 806.01(e) Extension of Protection of International Registration - §66(a) | 806.01(e) Extension of Protection of International Registration - §66(a) | Section 66(a) of the Act, 15 U.S.C. §1141f(a) , provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.34(a)(5) . The request must include a verified st |
| 806.02 | 806.02 Multiple Bases | 806.02 Multiple Bases | |
| 806.02(a) | 806.02(a) Procedure for Asserting More Than One Basis | 806.02(a) Procedure for Asserting More Than One Basis | In a §66(a) application, the applicant may not claim more than one basis. 37 C.F.R. §2.34(b) . In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfi |
| 806.02(b) | 806.02(b) Applicant May File Under Both §1(a) and §1(b) in the Same Application | 806.02(b) Applicant May File Under Both §1(a) and §1(b) in the Same Application | An applicant may rely on both §1(a) and §1(b) of the Trademark Act in the same trademark or service mark application, but not for identical goods or services. 37 C.F.R. §§2.34(b) ; 2.86(c) . However, the applicant may as |
| 806.02(c) | 806.02(c) Examination of Specimens of Use in a Multiple-Basis Application | 806.02(c) Examination of Specimens of Use in a Multiple-Basis Application | If the applicant claims use in commerce in addition to another basis, but does not specify which goods/services/classes are covered by which basis, the USPTO may defer examination of the specimens until the applicant ide |
| 806.02(d) | 806.02(d) Abandonment of Multiple-Basis Applications | 806.02(d) Abandonment of Multiple-Basis Applications | In general, an application becomes abandoned if the applicant fails to take required action during the relevant statutory period. 15 U.S.C. §§1051(d)(4) , 1062(b)(2) , 37 C.F.R. §2.65(a) , (c) . In certain situations, if |
| 806.02(e) | 806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application Is Based on Both §44 and §1(a) | 806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application Is Based on Both §44 and §1(a) | Any application filed under §44(d) or §44(e) must include a verified statement that the applicant has a bona fide intention to use the mark in commerce even if §1(a) (use in commerce) is asserted as an additional filing |
| 806.02(f) | 806.02(f) Section 44(d) Combined With Other Bases | 806.02(f) Section 44(d) Combined With Other Bases | If an applicant properly claims priority under §44(d), 15 U.S.C. §1126(d) , in addition to a §1 basis, the applicant may elect not to perfect the §44(e) basis (based on the foreign registration that will issue from the a |
| 806.02(g) | 806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application | 806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application | If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce. Therefore, when an applicant adds or substitutes §1 |
| 806.03 | 806.03 Amendments to Add or Substitute a Basis | 806.03 Amendments to Add or Substitute a Basis | |
| 806.03(a) | 806.03(a) When Basis Can be Changed | 806.03(a) When Basis Can be Changed | Section 1 or §44 Application - Before Publication. The applicant may add or substitute a basis before publication, provided that the applicant meets all requirements for the new basis. 37 C.F.R. §2.35(b)(1) . Section 1 o |
| 806.03(b) | 806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period | 806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period | An applicant may add or substitute a §44(d) basis only during the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5) . See TMEP §806.02(f) regarding §44(d) combined with |
| 806.03(c) | 806.03(c) Amendment From §1(a) to §1(b) | 806.03(c) Amendment From §1(a) to §1(b) | In an application filed under §1(a), if the §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1( |
| 806.03(d) | 806.03(d) Amendment From §44 to §1(b) | 806.03(d) Amendment From §44 to §1(b) | An applicant may amend the basis from §44 to §1(b). The USPTO will presume that the applicant had a continuing valid basis, unless there is contradictory evidence in the record, because the applicant had a bona fide inte |
| 806.03(e) | 806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a) | 806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a) | An applicant who claims a §1(b) basis for any or all of the goods or services may not amend the application to seek registration under §1(a) of the Act for those goods or services, unless the applicant files an allegatio |
| 806.03(f) | 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(f) Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application | An applicant may add or substitute a basis only if the applicant meets all the requirements for the new basis. 37 C.F.R. §2.35(b)(1) . Therefore, an applicant may not amend a §44 application to claim a §1(a) basis unless |
| 806.03(g) | 806.03(g) Amendment From §1(b) to §44 | 806.03(g) Amendment From §1(b) to §44 | An applicant may amend the basis from §1(b) to §44, if the applicant meets the requirements of §44 as of the filing date of the amendment. It is not necessary to submit a new verification of the applicant’s bona fide int |
| 806.03(h) | 806.03(h) Effect of Substitution of Basis on Application Filing Date | 806.03(h) Effect of Substitution of Basis on Application Filing Date | When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis. The applicant will retain the original filing date, provided that the applicant had a continuing valid bas |
| 806.03(i) | 806.03(i) Verification of Amendment Required | 806.03(i) Verification of Amendment Required | An applicant who adds or substitutes use in commerce under §1(a) as a basis in a trademark or service mark application must verify that the mark is in use in commerce on or in connection with the goods/services covered b |
| 806.03(j) | 806.03(j) Petition to Amend Basis After Publication - §1 or §44 Application | 806.03(j) Petition to Amend Basis After Publication - §1 or §44 Application | 37 C.F.R. After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, but only with the express permi |
| 806.03(k) | 806.03(k) Basis May Not Be Changed in §66(a) Application | 806.03(k) Basis May Not Be Changed in §66(a) Application | In a §66(a) application, the applicant may not change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c) , and 37 C.F.R. §7.31 . 37 C.F.R. §2. |
| 806.03(l) | 806.03(l) §66(a) Basis May Not Be Added to §1 or §44 Application | 806.03(l) §66(a) Basis May Not Be Added to §1 or §44 Application | Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. Such basis may not be added or substituted as a basis in an application originally filed under §1 or §44. |
| 806.04 | 806.04 Deleting a Basis | 806.04 Deleting a Basis | If an applicant claims more than one basis, the applicant may delete a basis at any time, before or after publication. 37 C.F.R. §2.35(b)(1) . No petition to the Director is required to delete a basis from a multiple-bas |
| 806.04(a) | 806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance | 806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance | If all of the goods/services/classes in an application are based on §1(b) and §44(e), the applicant may file a request to delete the §1(b) basis by amendment at any time, except as set forth below. 37 C.F.R. §2.35(b)(1) |
| 806.04(b) | 806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis | 806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis | If an applicant properly claims §44(d) in addition to another basis, the applicant may elect not to perfect a §44(e) basis and still retain the §44(d) priority filing date. 37 C.F.R. §§2.35(b)(3) - (4) ; TMEP §§806.01(c) |
| 806.05 | 806.05 Review of Basis Prior to Publication or Issue | 806.05 Review of Basis Prior to Publication or Issue | If an application claims more than one basis, the examining attorney must ensure that the record clearly and accurately shows which goods are covered by which basis before approving the application for publication for op |
| 807 | 807 Drawing | 807 Drawing | The drawing shows the mark sought to be registered. 37 C.F.R. §2.52 . An application must include a clear drawing of the mark sought to be registered to receive a filing date, except applications seeking registration of |
| 807.01 | 807.01 Drawing Must Show Only One Mark | 807.01 Drawing Must Show Only One Mark | An application must be limited to only one mark. 15 U.S.C. §1051(a)(1) ; 37 C.F.R. §2.52 . See In re Int'l Flavors & Fragrances Inc. , 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999) Under 37 C.F.R. §2.21(a)(3 |
| 807.02 | 807.02 Drawing Must Be Limited to Mark | 807.02 Drawing Must Be Limited to Mark | The drawing allows the USPTO to properly code and index the mark for search purposes, indicates what the mark is, and provides a means for reproducing the mark in the Trademark Official Gazette and on the certificate of |
| 807.03 | 807.03 Standard Character Drawings | 807.03 Standard Character Drawings | 37 C.F.R. Standard character (typed) drawing. Applicants who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color must submit a standard characte |
| 807.03(a) | 807.03(a) Requirements for Standard Character Drawings | 807.03(a) Requirements for Standard Character Drawings | A standard character drawing must show the mark in black on a white background. An applicant may submit a standard character drawing if: The mark does not include a design element; All letters and words in the mark are d |
| 807.03(b) | 807.03(b) List of Standard Characters | 807.03(b) List of Standard Characters | The USPTO has created a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing. The standard character set is available on the USPTO |
| 807.03(c) | 807.03(c) Drawings Containing Both a Standard Character Claim and Designs or Other Elements | 807.03(c) Drawings Containing Both a Standard Character Claim and Designs or Other Elements | If the application contains a standard character claim, but the mark includes a design element, color, a claim of a particular style or size of lettering, or other elements such that the mark does not meet the requiremen |
| 807.03(d) | 807.03(d) Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration | 807.03(d) Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration | A special form drawing containing a design element, color, a claim to a particular style or size of lettering, or other distinctive elements cannot be amended to a standard character drawing, unless the examining attorne |
| 807.03(e) | 807.03(e) Standard Character Drawing and Specimen of Use | 807.03(e) Standard Character Drawing and Specimen of Use | When the applicant submits a standard character drawing, the mark shown in the drawing does not necessarily have to appear in the same font style, size, or color as the mark shown on the specimen of use. However, the exa |
| 807.03(f) | 807.03(f) Standard Character Drawing and Foreign Registration | 807.03(f) Standard Character Drawing and Foreign Registration | In a §44 application, if the applicant claims standard characters, the examining attorney must ensure that the foreign registration also claims standard characters. See 37 C.F.R. §2.51(c) ; TMEP §807.12(b) . If the forei |
| 807.03(g) | 807.03(g) Drawings in “Typed” Format With No Standard Character Claim | 807.03(g) Drawings in “Typed” Format With No Standard Character Claim | Section 1 Applications . If the application does not include a standard character claim, but the mark is shown in a format that would have been considered “typed” prior to November 2, 2003 (i.e., the mark is shown in cap |
| 807.03(h) | 807.03(h) Drawings Where the Format Is Unclear | 807.03(h) Drawings Where the Format Is Unclear | Section 1 Applications . When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification. For example, |
| 807.03(i) | 807.03(i) Typed Drawings | 807.03(i) Typed Drawings | Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. The mark on a typed drawing page had to be typed entirely in capital letters. A typed drawing is the legal equivalent of a standard |
| 807.04 | 807.04 Special Form Drawings | 807.04 Special Form Drawings | 37 C.F.R. (Extract) 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 s |
| 807.04(a) | 807.04(a) Characteristics of Special Form Drawings | 807.04(a) Characteristics of Special Form Drawings | A “special form drawing” is a drawing that presents a mark comprised, in whole or in part, of special characteristics such as elements of design or color, style(s) of lettering, or unusual form(s) of punctuation. All spe |
| 807.04(b) | 807.04(b) When Special Form Drawing Is Required | 807.04(b) When Special Form Drawing Is Required | A special form drawing is required if words, letters, or numerals are presented in a distinctive form that engenders an uncommon or “special” commercial impression that would be altered or lost were registration to issue |
| 807.05 | 807.05 Drawings in Electronic Applications | 807.05 Drawings in Electronic Applications | The drawing in an electronic application must meet the requirements of 37 C.F.R. §§2.52-2.53 . The USPTO has waived the requirement of 37 C.F.R. §2.53(c) that drawings have a length and width of no less than 250 pixels a |
| 807.05(a) | 807.05(a) Standard Character Drawings in Electronic Applications | 807.05(a) Standard Character Drawings in Electronic Applications | If an applicant is filing a standard character drawing, the applicant must enter the mark in the "Mark" field. The applicant must also submit a standard character claim, which is automatically generated once the applican |
| 807.05(b) | 807.05(b) Special Form Drawings in Electronic Applications | 807.05(b) Special Form Drawings in Electronic Applications | If the mark is in special form, the applicant must attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c) to the “Mark” field in the electronic application. See TMEP §807.05(c) regarding t |
| 807.05(c) | 807.05(c) Requirements for Digitized Images | 807.05(c) Requirements for Digitized Images | The mark image must be in .jpg format, and should be scanned at no less than 300 dots per inch and no more than 350 dots per inch, to produce the highest quality image. All lines must be clean, sharp, and solid; must not |
| 807.06 | 807.06 Paper Drawings | 807.06 Paper Drawings | 37 C.F.R. Paper drawings. A paper drawing must meet the requirements of §2.54. 37 C.F.R. Requirements for drawings submitted on paper. The drawing must meet the requirements of §2.52. In addition, in a paper submission, |
| 807.06(a) | 807.06(a) Type of Paper and Size of Mark | 807.06(a) Type of Paper and Size of Mark | Size of Mark . The mark on the drawing should be no larger than 3.15 inches high by 3.15 inches wide (8 cm high by 8 cm wide). 37 C.F.R. §2.54(b) . The USPTO will create a digitized image of all drawings submitted on pap |
| 807.06(b) | 807.06(b) Long Marks in Standard Character Drawings | 807.06(b) Long Marks in Standard Character Drawings | Because all standard character drawings are stored in USPTO systems as an image, a standard character drawing must meet the 3.15 inch (8 cm) by 3.15 inch (8 cm) requirement of 37 C.F.R. §2.54(b) . If the mark is too long |
| 807.07 | 807.07 Color in the Mark | 807.07 Color in the Mark | 37 C.F.R. 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 t |
| 807.07(a) | 807.07(a) Requirements for Color Drawings | 807.07(a) Requirements for Color Drawings | For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings with a color claim, or drawings that show color by use of lining patterns. See 37 C.F.R. §2.52(b)(1) . If the mark i |
| 807.07(b) | 807.07(b) Color Drawings Filed Without a Color Claim | 807.07(b) Color Drawings Filed Without a Color Claim | If the applicant submits a color drawing but does not include a color claim in the application, and if the color is a material element of the mark, the examining attorney must require the applicant to submit a claim that |
| 807.07(c) | 807.07(c) Color Drawings Filed With an Incorrect Color Claim | 807.07(c) Color Drawings Filed With an Incorrect Color Claim | When the color shown on the digitized image of the drawing in an electronic application, or on the drawing page of a permitted paper application, is inconsistent with the color claimed in the written application (e.g., t |
| 807.07(d) | 807.07(d) Color Drawings that Contain Black, White, or Gray | 807.07(d) Color Drawings that Contain Black, White, or Gray | When color is claimed as a feature of the mark, the applicant must submit a color claim that identifies each color and a separate color location statement describing where each color appears in the mark. 37 C.F.R. §2.52( |
| 807.07(e) | 807.07(e) Black-and-White Drawings and Color Claims | 807.07(e) Black-and-White Drawings and Color Claims | If an applicant submits a black-and-white drawing that is lined for color ( see TMEP §808.01(b) ), or if the applicant submits a black-and-white drawing with an application that includes a color claim, the examining atto |
| 807.07(f) | 807.07(f) Black-and-White Drawings that Contain Gray or Black-and-White Drawings with a Mark Description that Refers to Black, White, or Gray | 807.07(f) Black-and-White Drawings that Contain Gray or Black-and-White Drawings with a Mark Description that Refers to Black, White, or Gray | |
| 807.07(g) | 807.07(g) Drawings in Applications Filed Before November 2, 2003 | 807.07(g) Drawings in Applications Filed Before November 2, 2003 | Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s) and where the |
| 807.08 | 807.08 Broken Lines to Show Placement | 807.08 Broken Lines to Show Placement | 37 C.F.R. Broken lines to show placement. If necessary to adequately depict the commercial impression of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the |
| 807.09 | 807.09 “Drawing” of Sound, Scent, or Non-Visual Mark | 807.09 “Drawing” of Sound, Scent, or Non-Visual Mark | 37 C.F.R. Sound, scent, and non-visual marks. An applicant is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant |
| 807.10 | 807.10 Three-Dimensional Marks | 807.10 Three-Dimensional Marks | 37 C.F.R. Three dimensional marks. If the mark has three-dimensional features, the drawing must depict a single rendition of the mark, and the applicant must indicate that the mark is three-dimensional. If the mark is th |
| 807.11 | 807.11 Marks with Motion | 807.11 Marks with Motion | 37 C.F.R. Motion marks. If the mark has motion, the drawing may depict a single point in the movement, or the drawing may depict up to five freeze frames showing various points in the movement, whichever best depicts the |
| 807.12 | 807.12 Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration | 807.12 Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration | 37 C.F.R. Drawing required. (a) In an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services |
| 807.12(a) | 807.12(a) Applications Under Trademark Act §1 | 807.12(a) Applications Under Trademark Act §1 | For applications under §1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match. See 37 C.F.R. §2.51(a)–(b) . The first step is to analyze whether the mark in |
| 807.12(b) | 807.12(b) Applications Under Trademark Act §44 | 807.12(b) Applications Under Trademark Act §44 | In an application under Trademark Act §44, 15 U.S.C. §1126 , the drawing of the mark must be “a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly r |
| 807.12(c) | 807.12(c) Applications Under Trademark Act §66(a) | 807.12(c) Applications Under Trademark Act §66(a) | In an application under §66(a) of the Trademark Act, the drawing of the mark must be "a substantially exact representation of the mark as it appears in the international registration." 37 C.F.R. §2.51(d) . The IB will in |
| 807.12(d) | 807.12(d) Mutilation or Incomplete Representation of Mark | 807.12(d) Mutilation or Incomplete Representation of Mark | In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute the complete mark, it is sometimes |
| 807.12(e) | 807.12(e) Compound Word Marks and Telescoped Marks | 807.12(e) Compound Word Marks and Telescoped Marks | Like any other drawing, a drawing of a compound word mark or telescoped mark must be a substantially exact representation of the mark as it appears on the specimen in a §1 application or on the foreign registration in a |
| 807.13 | 807.13 Amendment of Mark | 807.13 Amendment of Mark | 37 C.F.R. Amendments to description or drawing of the mark. (a) In an application based on use in commerce under section 1(a) of the Act, the applicant may amend the description or drawing of the mark only if: (1) The sp |
| 807.13(a) | 807.13(a) Amendment of Mark in Applications Under §1 and §44 | 807.13(a) Amendment of Mark in Applications Under §1 and §44 | Section 1(a) Application . The mark in an application under §1(a) of the Trademark Act can be amended if the specimen supports the amendment and the amendment does not materially alter the mark. 37 C.F.R. §2.72(a) . See |
| 807.13(b) | 807.13(b) Mark in §66(a) Application Cannot be Amended | 807.13(b) Mark in §66(a) Application Cannot be Amended | The Madrid Protocol and the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks do not permit amendment of the mark in an international registration. If the |
| 807.14 | 807.14 Material Alteration of Mark | 807.14 Material Alteration of Mark | Trademark Rule 2.72, 37 C.F.R. §2.72 , prohibits any amendment of the mark or mark description in an application under §1 or §44 of the Trademark Act that materially alters the mark as originally filed. A determination o |
| 807.14(a) | 807.14(a) Removal or Deletion of Matter from Drawing | 807.14(a) Removal or Deletion of Matter from Drawing | An applicant may request deletions from the mark on the drawing, and the examining attorney may approve the request if the examining attorney believes the deletions are appropriate and would not materially alter the mark |
| 807.14(b) | 807.14(b) Addition or Deletion of Previously Registered Matter | 807.14(b) Addition or Deletion of Previously Registered Matter | Addition . An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted. The rationale is that “[t]he addition of applicant’s well-known registered mark to t |
| 807.14(c) | 807.14(c) Addition or Deletion of Punctuation | 807.14(c) Addition or Deletion of Punctuation | Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark. See, e.g., In re Litehouse, Inc. , 82 USPQ2d 1471, 1474 |
| 807.14(d) | 807.14(d) Amendments to Correct “Internal Inconsistencies” | 807.14(d) Amendments to Correct “Internal Inconsistencies” | The USPTO will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application. 37 C.F.R. §2.72(a)(2) , |
| 807.14(e) | 807.14(e) Amendments to Color Features of Marks | 807.14(e) Amendments to Color Features of Marks | If a proposed amendment to a color feature of a mark does not change the commercial impression of the mark, the amendment is unlikely to have an adverse impact on public notice. In such cases, the mark need not be republ |
| 807.14(f) | 807.14(f) Material Alteration: Case References | 807.14(f) Material Alteration: Case References | Proposed amendments to marks were found to be material alterations in the following decisions: In re Thrifty, Inc. , 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (finding amendment describing a mark as the color blue a |
| 807.15 | 807.15 Substitute Drawings | 807.15 Substitute Drawings | When requiring a substitute drawing, the examining attorney must inform the applicant of the specific reason for rejecting the existing drawing and explain what type of amendment is needed to comply with the rules. If th |
| 807.16 | 807.16 Amendment of Drawings by the USPTO | 807.16 Amendment of Drawings by the USPTO | If the examining attorney requires correction of a standard character drawing, the applicant may submit a substitute drawing ( see TMEP §807.15 ), or may request that the USPTO amend the drawing. If only a minor correcti |
| 807.17 | 807.17 Procedures for Processing Unacceptable Amendments to Drawings | 807.17 Procedures for Processing Unacceptable Amendments to Drawings | If an applicant submits an amendment to the drawing and the examining attorney determines that the amendment is unacceptable, the examining attorney must issue an Office action refusing to accept the amendment and advisi |
| 807.18 | 807.18 Mark Drawing Code | 807.18 Mark Drawing Code | Standard Character Drawings . Standard character drawings are coded in the USPTO’s automated system as mark drawing code 4. Prior to November 2, 2003, typed drawings ( see TMEP §807.03(i)) were coded as mark drawing code |
| 808 | 808 Description of Mark | 808 Description of Mark | 37 C.F.R. A description of the mark must be included if the mark is not in standard characters. In an application where the mark is in standard characters, a description may be included and must be included if required b |
| 808.01 | 808.01 Guidelines for Requiring Description | 808.01 Guidelines for Requiring Description | For applications filed on or after May 13, 2008, a description of the mark is required for any mark not in standard characters. Therefore, the examining attorney must require a description of the mark if: the applicant i |
| 808.01(a) | 808.01(a) Meaning of Term in Mark | 808.01(a) Meaning of Term in Mark | A statement that a term has no meaning in the relevant industry should not be entered as a description of the mark, nor should it be published. If such a statement is entered as a description of the mark, the examining a |
| 808.01(b) | 808.01(b) Lining and Stippling Statements for Drawings | 808.01(b) Lining and Stippling Statements for Drawings | Current Practice . For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings lined for color. 37 C.F.R. §2.52(b)(1) ; TMEP §807.07(a) . Thus, the examining attorney should no |
| 808.02 | 808.02 Description Must Be Accurate and Concise | 808.02 Description Must Be Accurate and Concise | If a description of a mark is placed in the record, the description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission. Sta |
| 808.03 | 808.03 Examination Procedure for Descriptions | 808.03 Examination Procedure for Descriptions | After having determined that a description of the mark is required because the mark is not in standard characters, the examining attorney must then consider whether the description should be published in the Trademark Of |
| 808.03(a) | 808.03(a) Accurate and Complete Descriptions | 808.03(a) Accurate and Complete Descriptions | If the application contains an accurate and complete description of the mark, no further action regarding the description is necessary and it will be published in the Trademark Official Gazette and included on the certif |
| 808.03(b) | 808.03(b) No Description in Application | 808.03(b) No Description in Application | If the description is not submitted with the initial application, the examining attorney must ensure that a description is included in the record. Applications that include vague statements such as “the mark contains wor |
| 808.03(c) | 808.03(c) Accurate but Incomplete Description in Application or Amendment | 808.03(c) Accurate but Incomplete Description in Application or Amendment | If the description accurately describes some elements of the proposed mark but does not describe other elements, the USPTO will require amendment to complete the description only if the description will be published in t |
| 808.03(d) | 808.03(d) Inaccurate Description in Application or Amendment | 808.03(d) Inaccurate Description in Application or Amendment | If the examining attorney determines that the description misdescribes some element of the mark, such that the description is inconsistent with the mark shown on the drawing, the examining attorney must require the appli |
| 808.03(e) | 808.03(e) Amending Descriptions | 808.03(e) Amending Descriptions | Generally, amending the description of the mark is liberally permitted, so long as the drawing supports the description. In rare cases where the amendment of the description constitutes a material alteration of the mark |
| 808.03(f) | 808.03(f) Updating Design Coding | 808.03(f) Updating Design Coding | Particularly when a description is not included in the initial application, the examining attorney must ensure that the design coding is updated in accordance with the description, where appropriate and necessary. The ex |
| 808.03(g) | 808.03(g) Unacceptable Statements in Mark Descriptions | 808.03(g) Unacceptable Statements in Mark Descriptions | A statement that purports to limit a mark by excluding color(s) or other features that do not appear in a mark is not appropriate for inclusion in a description of a mark. Statements regarding any purported “exclusion” u |
| 809 | 809 Translation and Transliteration of Non-English Wording and Non-Latin Characters in Mark | 809 Translation and Transliteration of Non-English Wording and Non-Latin Characters in Mark | An application to register a mark that includes non-English wording must include an English translation of that wording. 37 C.F.R. §§2.32(a)(9) , 2.44(a)(1) , 2.45(a)(1) ; see In re Advanced New Techs. Co. , Ser. No. 868 |
| 809.01 | 809.01 Examining Applications for Marks Comprising Non-English Wording or Non-Latin Characters that Do Not Include an Accurate Translation or Transliteration | 809.01 Examining Applications for Marks Comprising Non-English Wording or Non-Latin Characters that Do Not Include an Accurate Translation or Transliteration | To properly examine applications with non-English wording or non-Latin characters in the mark, the translation of the non-English wording or transliteration of the non-Latin characters must be determined prior to perform |
| 809.01(a) | 809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language | 809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language | If it is necessary to make a separate inquiry regarding the meaning of non-English wording, the examining attorney should provide the applicant with the correct format for a translation or transliteration statement. See |
| 809.01(b) | 809.01(b) Limited Exceptions to Translation Requirement | 809.01(b) Limited Exceptions to Translation Requirement | There are three limited exceptions to the general rule requiring that all foreign wording be translated. See TMEP §§809.01(b)(i)–809.01(b)(iii) . |
| 809.02 | 809.02 Equivalency in Translation | 809.02 Equivalency in Translation | The translation that should be relied upon in examination is the English meaning that has significance in the United States as the equivalent of the meaning in the non-English language. The following are examples of equi |
| 809.03 | 809.03 Printing of Translations and Transliterations | 809.03 Printing of Translations and Transliterations | Generally, non-English wording in a mark must be translated into English and the translation (and transliteration, if applicable) must be published in the Trademark Official Gazette and included on the registration certi |
| 810 | 810 Filing Fee | 810 Filing Fee | An application under Trademark Act §1 or §44 must include a filing fee for each class of goods or services. 15 U.S.C. §§1051(a)(1) , 1051(b)(1) , and 1126(a) . The required filing fee for at least one class of goods or s |
| 810.01 | 810.01 Collection of Fees for Multiple Classes | 810.01 Collection of Fees for Multiple Classes | A filing fee is required for each class in a multiple-class application under §1 or §44 of the Trademark Act. 37 C.F.R. §2.86(a)(2) , (b)(2) . The USPTO has established the following policy to ensure the collection of ap |
| 810.02 | 810.02 Refunds | 810.02 Refunds | Only money paid by mistake or in excess (when a fee is not required by the statute or rules, or is not required in the amount paid) may be refunded. 37 C.F.R. §2.209(a) . A mere change of purpose after the payment of mon |
| 811 | 811 Attorney Identification Information and Designation of Domestic Representative | 811 Attorney Identification Information and Designation of Domestic Representative | |
| 811.01 | 811.01 Attorney Identification Information Required for Complete Application | 811.01 Attorney Identification Information Required for Complete Application | If the applicant is represented by an attorney qualified under 37 C.F.R. §11.14 , or is required to appoint such an attorney due to its foreign domicile, a Section 1 and/or 44 application must include the individual atto |
| 811.02 | 811.02 Designation of a Domestic Representative | 811.02 Designation of a Domestic Representative | An applicant not domiciled in the United States may file a document designating the name, email address, and postal address of a person residing in the United States on whom may be served notices or process in proceeding |
| 812 | 812 Identification of Prior Registrations of Applicant | 812 Identification of Prior Registrations of Applicant | 37 C.F.R. Identification of prior registrations. Prior registrations of the same or similar marks owned by the applicant should be identified in the application if the owner(s) last listed in Office records of the prior |
| 812.01 | 812.01 Proving Ownership of Prior Registrations | 812.01 Proving Ownership of Prior Registrations | If an applicant includes a claim of ownership of a prior registration, or a pending application, in the application as filed, the examining attorney must accept the claim without further proof of ownership and must not c |
| 813 | 813 Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark | 813 Consent to Register by Particular Living Individual Whose Name or Likeness Appears in the Mark | When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered only with the written consent |
| 813.01(a) | 813.01(a) Name or Likeness Is that of a Living Individual | 813.01(a) Name or Likeness Is that of a Living Individual | If a mark comprises the name or likeness of a living individual and consent to register is of record, a statement to that effect must be published in the Trademark Official Gazette and included on the registration certif |
| 813.01(b) | 813.01(b) Name or Likeness Is Not that of a Living Individual | 813.01(b) Name or Likeness Is Not that of a Living Individual | If a name or likeness that could reasonably be perceived as that of a living individual is not that of a specific living individual, a statement to that effect must be published in the Trademark Official Gazette and incl |
| 813.01(c) | 813.01(c) Updating the Trademark Database | 813.01(c) Updating the Trademark Database | All statements in the Trademark database as to whether a mark comprises the name, portrait, or signature of a living individual whose consent is of record will automatically be published in the Trademark Official Gazette |
| 814 | 814 Requesting Additional Information | 814 Requesting Additional Information | Sometimes, it is necessary for the examining attorney to request such additional information from an applicant as may be "reasonably necessary" to examine the application properly, pursuant to 37 C.F.R. §2.61(b) . This r |
| 815 | 815 Application Filed on Supplemental Register | 815 Application Filed on Supplemental Register | Sections 23 through 28 of the Trademark Act, 15 U.S.C. §§1091–1096, provide for registration on the Supplemental Register. Certain marks that are not eligible for registration on the Principal Register, but are capable o |
| 815.01 | 815.01 Marks Eligible for Principal Register Not Registrable on Supplemental Register | 815.01 Marks Eligible for Principal Register Not Registrable on Supplemental Register | A mark that is clearly eligible for the Principal Register may not be registered on the Supplemental Register. Nazon v. Ghiorse, 119 USPQ2d 1178, 1182 (TTAB 2016); see In re U.S. Catheter & Instrument Corp., 158 USPQ 53, |
| 815.02 | 815.02 Elements Required | 815.02 Elements Required | To seek registration on the Supplemental Register, an applicant should so state in the application or a subsequent request. TMEP §§815 , 816.01 . If no register is specified, the USPTO will assume that the applicant is r |
| 815.03 | 815.03 Filing on Supplemental Register Is Not an Admission that the Mark Has Not Acquired Distinctiveness | 815.03 Filing on Supplemental Register Is Not an Admission that the Mark Has Not Acquired Distinctiveness | Under 15 U.S.C. §1095 , registration of a mark on the Supplemental Register does not constitute an admission that the mark has not acquired distinctiveness. However, seeking registration on the Supplemental Register is a |
| 815.04 | 815.04 Basis for Refusal of Registration of Matter that Is Incapable | 815.04 Basis for Refusal of Registration of Matter that Is Incapable | When the examining attorney refuses registration on the Supplemental Register on the ground that the proposed mark is incapable of distinguishing the applicant’s goods or services, the examining attorney must cite §§23(c |
| 816 | 816 Amending Application to Supplemental Register | 816 Amending Application to Supplemental Register | |
| 816.01 | 816.01 How to Amend | 816.01 How to Amend | If an application meets the requirements noted in TMEP §815.02 , the application may be amended by requesting that the words “Principal Register” be changed to “Supplemental Register,” or that “the application is amended |
| 816.02 | 816.02 Effective Filing Date | 816.02 Effective Filing Date | Intent-to-Use Applications As noted in TMEP §815.02 , an intent-to-use applicant may file an amendment to the Supplemental Register only after the applicant has begun using the mark and filed an acceptable allegation of |
| 816.03 | 816.03 Amendment to Different Register | 816.03 Amendment to Different Register | Although there is no restriction on the number of times an applicant may amend from one register to another, one amendment is usually sufficient, and subsequent amendments should be avoided except for unusual circumstanc |
| 816.04 | 816.04 Amendment After Refusal | 816.04 Amendment After Refusal | In an application under §1 or §44 of the Trademark Act, the applicant may amend to the Supplemental Register after a refusal to register on the Principal Register, including a final refusal. If the final refusal was unde |
| 816.05 | 816.05 Amendment After Decision on Appeal | 816.05 Amendment After Decision on Appeal | An applicant may not amend to the Supplemental Register after the Trademark Trial and Appeal Board has affirmed a refusal of registration on the Principal Register. 37 C.F.R. §2.142(g) . After having elected one of the r |
| 817 | 817 Preparation of Application for Publication or Registration | 817 Preparation of Application for Publication or Registration | When an application is ready to be approved for publication or registration, the examining attorney must carefully review the application record to ensure the accuracy of the information contained therein and to ensure t |
| 818 | 818 Application Checklist (§1 and §44) | 818 Application Checklist (§1 and §44) | This section may be used to determine whether materials submitted as a trademark or service mark application are complete, and to ensure that appropriate requirements and refusals are made. See 37 C.F.R. §2.21 and TMEP § |
| 819 | 819 Base Application Requirements and Additional Fees | 819 Base Application Requirements and Additional Fees | On January 18, 2025, the TEAS Standard and TEAS Plus filing options were discontinued and replaced with a single electronic base application where additional fees apply if the application does not meet the base applicati |
| 819.01 | 819.01 Base Application Requirements for Determining Additional Fees | 819.01 Base Application Requirements for Determining Additional Fees | The requirements for a base application are as follows: Applicant’s Name and Domicile Address ; Applicant’s Legal Entity and Citizenship (or state or country of incorporation or organization of each juristic applicant), |
| 819.02 | 819.02 Insufficient Information Fee | 819.02 Insufficient Information Fee | The applicant must pay an insufficient information fee, per class, if any of the following base application requirements are not met: Applicant’s Name and Domicile Address ; Applicant’s Legal Entity and Citizenship (or s |
| 819.02(a) | 819.02(a) Applicant’s Name and Domicile Address | 819.02(a) Applicant’s Name and Domicile Address | The application must include the applicant’s name and domicile address. 37 C.F.R. §2.22(a)(1) ; In re Chestek PLLC , 92 F.4th 1105, 1113 (Fed. Cir. 2024) (domicile address requirement affirmed). See TMEP §601.01 and §803 |
| 819.02(b) | 819.02(b) Applicant’s Legal Entity and Citizenship | 819.02(b) Applicant’s Legal Entity and Citizenship | The application must include the applicant’s legal entity. 37 C.F.R. §2.22(a)(2) ; see TMEP §803.03 . The application must also set forth the citizenship of an individual applicant, or the state or country of incorporati |
| 819.02(c) | 819.02(c) Basis or Bases for Filing | 819.02(c) Basis or Bases for Filing | The application must include at least one basis for filing under Trademark Act §1 and/or §44 that meets the requirements of 37 C.F.R. §§2.34 (for trademarks and service marks), 2.44 (for collective trademarks, collective |
| 819.02(d) | 819.02(d) Multiple-Class Applications | 819.02(d) Multiple-Class Applications | If the application contains goods/services in more than one class, the application must meet the requirements of 37 C.F.R. §2.86 . 37 C.F.R. §2.22(a)(7) . Trademarks and Service Marks . The application must include: (1) |
| 819.02(e) | 819.02(e) Filing Fee | 819.02(e) Filing Fee | The application must include a filing fee for each class of goods/services, as required by 37 C.F.R. §2.6(a)(1)(iii) . 37 C.F.R. §2.22(a)(8) . The trademark electronic filing system will require all known filing fees at |
| 819.02(f) | 819.02(f) Verification | 819.02(f) Verification | For trademark and service mark applications, the application must include a verified statement that meets the requirements of 37 C.F.R. §2.33 , dated and signed by a person properly authorized to sign on behalf of the ap |
| 819.02(g) | 819.02(g) Drawing | 819.02(g) Drawing | The application must include a clear drawing of the mark comprising either: (1) a claim of standard characters and the mark is comprised only of characters in the USPTO's standard character set, typed in the appropriate |
| 819.02(h) | 819.02(h) Color Claim | 819.02(h) Color Claim | As noted above, if the mark includes color, the drawing must show the mark in color. 37 C.F.R. §2.22(a)(10) . In addition, the application must include: (1) a claim that the color(s) is a feature of the mark; and (2) a s |
| 819.02(i) | 819.02(i) Description of the Mark | 819.02(i) Description of the Mark | If the mark is not in standard characters, the application must include a description of the mark. 37 C.F.R. §§2.22(a)(13) , 2.37 . The applicant must enter the description in the “Description of the Mark” field of the e |
| 819.02(j) | 819.02(j) Translation and/or Transliteration | 819.02(j) Translation and/or Transliteration | If the mark includes non-English wording, the application must include an English translation of that wording. 37 C.F.R. §2.22(a)(14) . If the mark includes non-Latin characters, the application must include a transliter |
| 819.02(k) | 819.02(k) Consent to Registration of Name or Portrait | 819.02(k) Consent to Registration of Name or Portrait | If the mark includes a name or portrait that could reasonably be perceived as the name or portrait of a particular living individual ( see TMEP §§813–813.01(c) , 1206–1206.05 ), the application must include either: (1) a |
| 819.02(l) | 819.02(l) Prior Registration of the Same Mark | 819.02(l) Prior Registration of the Same Mark | If the applicant owns one or more registrations for the same (i.e., identical) mark as of the application filing date, and the last listed owner(s) of the prior registration(s) differs from the owner of the application, |
| 819.02(m) | 819.02(m) Concurrent Use Applications | 819.02(m) Concurrent Use Applications | If the applicant seeks concurrent use registration, the application must comply with the requirements of 37 C.F.R. §2.42 . 37 C.F.R. §2.22(a)(18) . That is, the applicant must, to the extent of the applicant’s knowledge, |
| 819.02(n) | 819.02(n) Qualified U.S. Attorney Required for Applicant with Foreign Domicile | 819.02(n) Qualified U.S. Attorney Required for Applicant with Foreign Domicile | If the applicant’s domicile is located outside the United States or its territories, the applicant must be represented before the USPTO by a qualified U.S. attorney. 37 C.F.R. §2.22(a)(19) . See TMEP §601.01 and §803.05( |
| 819.03 | 819.03 Free-form Text ID Fee | 819.03 Free-form Text ID Fee | To meet the base application requirement set forth in 37 C.F.R. §2.22(a)(20) , all goods and/or services in the application must be taken directly from the USPTO’s Acceptable Identification of Goods and Services Manual ( |
| 819.04 | 819.04 Excess Character ID Fee | 819.04 Excess Character ID Fee | The excess character ID fee applies to any class in which: (1) the applicant uses a free-form text ID entry (i.e., any entry that does not use the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual |
| 819.05 | 819.05 Fee Considerations and Procedures | 819.05 Fee Considerations and Procedures | |
| 819.05(a) | 819.05(a) Payment of All Fees Required at Filing | 819.05(a) Payment of All Fees Required at Filing | The trademark electronic filing system will require all filing fees and any applicable additional fees known at the time of filing. All filing fees and additional fees that are required at filing must be paid in order to |
| 819.05(b) | 819.05(b) Same Fee Paid at Filing May Not be Required for Same Classes During Examination | 819.05(b) Same Fee Paid at Filing May Not be Required for Same Classes During Examination | If the insufficient information fee or free-form text ID fee is paid at filing for each class, the examining attorney will not require the same fee for those classes even if additional deficiencies are found during exami |
| 819.05(c) | 819.05(c) Different Fees for Same Application | 819.05(c) Different Fees for Same Application | Different fees may apply to the same application, and all three additional fees may be required in the same application. Example : The application is for Classes 9 and 25. Free-form text ID entries are only used in Class |
| 819.05(d) | 819.05(d) Examiner’s Amendments and Priority Actions | 819.05(d) Examiner’s Amendments and Priority Actions | Examiner’s Amendment . If all remaining issues can be handled through a telephone or email conversation with the applicant or the applicant’s qualified U.S. attorney, and a deposit account is used to pay the fee or an au |
| 819.06 | 819.06 TEAS Standard, TEAS RF, and TEAS Plus Applications | 819.06 TEAS Standard, TEAS RF, and TEAS Plus Applications | As of January 18, 2025, the TEAS Standard fee under previous 37 C.F.R. §2.6(a)(1)(iii) , TEAS Plus application and processing fees under previous 37 C.F.R. §2.6(a)(1)(iv) , (v) , and the TEAS Standard and TEAS Plus filin |
| 819.06(a) | 819.06(a) TEAS Standard and TEAS RF Applications | 819.06(a) TEAS Standard and TEAS RF Applications | TEAS Standard and TEAS RF applications are not subject to the insufficient information fee, free-form text ID fee, or excess character ID fee. Examining attorneys must not require these additional fees for TEAS Standard |
| 819.06(b) | 819.06(b) TEAS Plus Applications | 819.06(b) TEAS Plus Applications | On and after January 18, 2025, any pending TEAS Plus applications that would have been subject to the TEAS Plus processing fee is subject to the insufficient information fee if the application fails to satisfy any of the |
| 901 | 901 Use in Commerce | 901 Use in Commerce | In a trademark or service mark application based on use in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a) , the mark must be in use in commerce on or in connection with all the goods and services listed in |
| 901.01 | 901.01 Definitions | 901.01 Definitions | The power of the federal government to register marks comes from the commerce clause of the Constitution. Section 1 of the Trademark Act, 15 U.S.C. §1051 , permits application for registration of “a trademark used in com |
| 901.02 | 901.02 Bona Fide Use in the Ordinary Course of Trade | 901.02 Bona Fide Use in the Ordinary Course of Trade | The definition of use in commerce ( TMEP §901.01 ) was amended by the Trademark Law Revision Act of 1988 (TLRA), Public Law 100-667, 102 Stat. 3935, to add the phrase “the bona fide use of a mark in the ordinary course o |
| 901.03 | 901.03 Commerce That May Be Lawfully Regulated By Congress | 901.03 Commerce That May Be Lawfully Regulated By Congress | The scope of federal trademark jurisdiction is commerce that may be regulated by the U.S. Congress.15 U.S.C. §1127; see Christian Faith Fellowship Church v. Adidas AG ,841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir.2016) |
| 901.04 | 901.04 Inquiry Regarding Use in Commerce | 901.04 Inquiry Regarding Use in Commerce | It is the responsibility of the applicant and the applicant’s attorney to determine whether an assertion of use in commerce is supported by the relevant facts. The validity of an applicant’s assertion of use in commerce |
| 902 | 902 Allegations of Use for §1(b) Applications | 902 Allegations of Use for §1(b) Applications | Section 1(b) of the Trademark Act permits the filing of an application to register a trademark or service mark on the basis of the applicant’s bona fide intention to use the mark in commerce for the identified goods or s |
| 903 | 903 Dates of Use | 903 Dates of Use | When asserting use of a mark in commerce in a trademark or service mark application, an applicant must specify the date of first use anywhere and the date of first use in commerce, either in an original application under |
| 903.01 | 903.01 Date of First Use Anywhere | 903.01 Date of First Use Anywhere | In a trademark or service mark application, the date of first use anywhere is the date when the goods were first sold or transported, or the services were first rendered, under the mark, if such use is bona fide and in t |
| 903.02 | 903.02 Date of First Use in Commerce | 903.02 Date of First Use in Commerce | In a trademark or service mark application, the date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may |
| 903.03 | 903.03 Relation Between the Two Dates of Use | 903.03 Relation Between the Two Dates of Use | The application or allegation of use must specify both the date of first use anywhere and the date of first use in commerce. If the date of first use anywhere was also in a type of commerce that may be regulated by the U |
| 903.04 | 903.04 Amending Dates of Use | 903.04 Amending Dates of Use | Any change to the dates of use must be supported by an affidavit or declaration under 37 C.F.R. §2.20 . 37 C.F.R. §2.71(c) . The affidavit or declaration must be signed by someone properly authorized to sign on behalf of |
| 903.05 | 903.05 First Use by Predecessor or Related Company | 903.05 First Use by Predecessor or Related Company | If the first use anywhere or the first use in commerce was by a predecessor in title to the applicant, or by a related company of the applicant ( see 15 U.S.C. §§1055 , 1127 ), and the use inures to the benefit of the ap |
| 903.06 | 903.06 Indefinite Dates of Use | 903.06 Indefinite Dates of Use | In specifying the dates of first use, the applicant should provide dates that are as definite as possible. The only date that will be recognized for USPTO proceedings is the latest definite date specified by the applican |
| 903.06(a) | 903.06(a) Apparent Discrepancies Between Dates of Use and Date of Execution | 903.06(a) Apparent Discrepancies Between Dates of Use and Date of Execution | Because an application based on §1(a) or an allegation of use under §1(c) or §1(d) must properly allege current use of the mark, an applicant must attest to dates of use in the application or allegation of use that are o |
| 903.07 | 903.07 Dates of Use in Another Form | 903.07 Dates of Use in Another Form | If the mark in the application is a composite mark, the applicant may specify dates of first use of a separable element of the composite mark. These dates will be printed on the certificate of registration for general in |
| 903.08 | 903.08 More than One Item of Goods or Services | 903.08 More than One Item of Goods or Services | If more than one item of goods or services is specified in a particular class, the date of first use anywhere and date of first use in commerce do not have to pertain to every item in the class. It might be that the mark |
| 904 | 904 Specimens | 904 Specimens | Specimens are required because they show the manner in which the mark is seen by the public. Specimens also provide supporting evidence of facts recited in the application. A trademark or service mark application for reg |
| 904.01 | 904.01 Number of Specimens | 904.01 Number of Specimens | One specimen for each class is required in an application for registration under §1(a) of the Trademark Act, or in an allegation of use in an application under §1(b). 37 C.F.R. §2.56(a) . If a single specimen supports mu |
| 904.01(a) | 904.01(a) More than One Item Specified in a Class | 904.01(a) More than One Item Specified in a Class | Generally, if more than one item of goods, or more than one service, is specified in one class in an application, the applicant normally need not provide a specimen for each good or service. The examining attorney may re |
| 904.01(b) | 904.01(b) Combined or Multiple-Class Applications | 904.01(b) Combined or Multiple-Class Applications | A combined or multiple-class application is a request to register the same mark for goods, services, and/or a collective membership organization in multiple classes in a single application. See 37 C.F.R. §2.86(a) , (b) . |
| 904.02 | 904.02 Physical Form of Specimens | 904.02 Physical Form of Specimens | |
| 904.02(a) | 904.02(a) Electronically Filed Specimens | 904.02(a) Electronically Filed Specimens | In an application, allegation of use, affidavit of use under 15 U.S.C. §1058 or §1141k of the Trademark Act (§8 affidavit or §71 affidavit), or response to an Office action, the specimens must generally be submitted thro |
| 904.02(b) | 904.02(b) Permitted Paper-Filed Specimens | 904.02(b) Permitted Paper-Filed Specimens | If a specimen is filed in connection with a permitted paper filing ( see TMEP §301.01 ), the specimen(s) should be flat and no larger than 8½ inches wide by 11 inches long. The USPTO may create a photocopy or other repro |
| 904.02(c) | 904.02(c) Additional Requirements | 904.02(c) Additional Requirements | |
| 904.03 | 904.03 Material Appropriate as Specimens for Trademarks | 904.03 Material Appropriate as Specimens for Trademarks | 37 C.F.R. (b)(1) A trademark specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. To constitute a d |
| 904.03(a) | 904.03(a) Labels and Tags | 904.03(a) Labels and Tags | In most cases, if a trademark is ordinarily applied to the goods or the containers for the goods by means of labels, a label affixed to the goods is an acceptable specimen. However, if a mark is merely informational or i |
| 904.03(b) | 904.03(b) Stampings | 904.03(b) Stampings | Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark affixation. See In re Crucible Steel Co. of Am. , 150 USPQ 757 (TTAB 1966). T |
| 904.03(c) | 904.03(c) Commercial Packaging | 904.03(c) Commercial Packaging | The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal co |
| 904.03(d) | 904.03(d) Electronic and Digital Media Specimens for Permitted Paper Filings | 904.03(d) Electronic and Digital Media Specimens for Permitted Paper Filings | If submission on paper is permitted ( see TMEP §301.01 ), the USPTO will accept specimens saved on conventional portable digital media carriers such as flash drives, compact discs (CDs), and digital video discs (DVDs). F |
| 904.03(e) | 904.03(e) Specimens for Trademarks Identifying Downloadable or Recorded Computer Programs, Movies, and Videos, or Audio Recordings | 904.03(e) Specimens for Trademarks Identifying Downloadable or Recorded Computer Programs, Movies, and Videos, or Audio Recordings | The computer program, video, and movie industries have adopted the practice of applying trademarks that are visible when the goods, that is, downloadable or recorded computer programs or movies, are displayed on a screen |
| 904.03(f) | 904.03(f) Specimens for Sound Marks | 904.03(f) Specimens for Sound Marks | To show that a sound mark actually identifies and distinguishes the goods/services/collective membership organization and indicates their source, an applicant must submit a specimen that contains a sufficient portion of |
| 904.03(g) | 904.03(g) Displays Associated with Goods | 904.03(g) Displays Associated with Goods | A specimen comprising a display associated with the goods (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1) . It must bear the trad |
| 904.03(h) | 904.03(h) Catalogs | 904.03(h) Catalogs | In appropriate cases, catalogs are acceptable as a display associated with the goods ( see TMEP §904.03(g) ). See Lands’ End Inc. v. Manbeck , 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). In that case, the applicant |
| 904.03(i) | 904.03(i) Electronic Displays | 904.03(i) Electronic Displays | A web page that displays a product can constitute a “display associated with the goods” ( see TMEP §904.03(g) ) if it: (1) contains a picture, photograph, or textual description of the identified goods; (2) shows the mar |
| 904.03(j) | 904.03(j) Manuals | 904.03(j) Manuals | If printed matter included with the goods functions as a part of the goods, such as a manual that is part of a kit for assembling the product, then placement of the mark on that printed matter does show use on the goods. |
| 904.03(k) | 904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays | 904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays | The USPTO may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging, or displays associated with the goods. 15 U.S.C. §1127 (definition o |
| 904.03(l) | 904.03(l) Specimens for Motion Marks | 904.03(l) Specimens for Motion Marks | To show that a motion mark actually identifies and distinguishes the goods or services and indicates their source, an applicant must submit a specimen that depicts the motion sufficiently to show how the mark is used on |
| 904.03(m) | 904.03(m) Specimens for Scent and Flavor Marks or Similar Non-traditional Marks | 904.03(m) Specimens for Scent and Flavor Marks or Similar Non-traditional Marks | For an application under §1(a), as well as a response, statement of use/amendment to allege use, petition, or registration maintenance/renewal filing in which a specimen for a scent, flavor, or similar non-traditional ma |
| 904.04 | 904.04 Material Not Appropriate as Specimens | 904.04 Material Not Appropriate as Specimens | |
| 904.04(a) | 904.04(a) Drawing or Image of the Mark; Digitally Created/Altered or Mockup Specimens | 904.04(a) Drawing or Image of the Mark; Digitally Created/Altered or Mockup Specimens | 37 C.F.R. Specimens . . . (c)…An artist's rendering, a printer's proof, a computer illustration, digital image, or similar mockup of how the mark may be displayed, or a photocopy of the drawing required by § 2.51, are no |
| 904.04(b) | 904.04(b) Advertising Material as Specimens for Goods | 904.04(b) Advertising Material as Specimens for Goods | Advertising material is generally not acceptable as a specimen for goods. In re MN Apparel LLC , 2021 USPQ2d 535, at *15 (TTAB 2021) (citing In re Siny Corp. , 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. |
| 904.04(c) | 904.04(c) Package Inserts as Specimens for Goods | 904.04(c) Package Inserts as Specimens for Goods | If material inserted in a package with the goods is merely advertising material, then it is not acceptable as a specimen of use on or in connection with the goods. Material that is only advertising does not necessarily c |
| 904.05 | 904.05 Affidavit Supporting Substitute Specimens | 904.05 Affidavit Supporting Substitute Specimens | If the examining attorney determines that the specimen is not acceptable, the examining attorney will require the applicant to submit a substitute specimen. Generally, when submitting a substitute specimen, the applicant |
| 904.06 | 904.06 Translation of Matter on Specimens | 904.06 Translation of Matter on Specimens | If there is matter printed on a specimen that is not in English and that is necessary to permit proper examination, the examining attorney must either include a translation of this matter in the record or require that th |
| 904.07 | 904.07 Requirements for Substitute Specimens and Statutory Refusals | 904.07 Requirements for Substitute Specimens and Statutory Refusals | |
| 904.07(a) | 904.07(a) Whether the Specimen Shows the Mark as Actually Used in Commerce | 904.07(a) Whether the Specimen Shows the Mark as Actually Used in Commerce | A §1(a) application for registration or an allegation of use submitted in a §1(b) application for a trademark or service mark must include one specimen per class, showing the applied-for mark as actually used in commerce |
| 904.07(b) | 904.07(b) Whether the Specimen Shows the Applied-for Mark Functioning as a Mark | 904.07(b) Whether the Specimen Shows the Applied-for Mark Functioning as a Mark | In a §1(a) application for registration or an allegation of use submitted in a §1(b) application for a trademark or service mark, the examining attorney must also evaluate the specimen to determine whether the applied-fo |
| 905 | 905 Method of Use | 905 Method of Use | The applicant is not required to specify the method or intended method of use of a mark. However, the examining attorney has the discretion under 37 C.F.R. §2.61(b) to inquire as to the method or intended method of use o |
| 906 | 906 Federal Registration Notice | 906 Federal Registration Notice | The owner of a mark registered in the United States Patent and Trademark Office may give notice that the mark is registered by displaying with the mark the words “Registered in United States Patent and Trademark Office,” |
| 906.01 | 906.01 Foreign Countries That Use Registration Symbol ® | 906.01 Foreign Countries That Use Registration Symbol ® | In addition to the United States, several countries recognize use of the symbol ® to designate registration. When a foreign applicant’s use of the symbol on the specimens is based on a registration in a foreign country, |
| 906.02 | 906.02 Improper Use of Registration Symbol | 906.02 Improper Use of Registration Symbol | Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See TMEP §906.04 . However, misunderstandings about use of federal registration symbols are more |
| 906.03 | 906.03 Informing Applicant of Apparent Improper Use | 906.03 Informing Applicant of Apparent Improper Use | If a specimen in an application shows the federal registration symbol used with the mark that is the subject of the application, or with any portion of this mark, the examining attorney must determine from USPTO records |
| 906.04 | 906.04 Fraud | 906.04 Fraud | Improper use of the federal registration symbol, ®, that is deliberate and intends to deceive or mislead the public or the USPTO is fraud. See Copelands’ Enters. Inc. v. CNV Inc. , 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir |
| 907 | 907 Compliance with Other Statutes | 907 Compliance with Other Statutes | 37 C.F.R. Compliance with other laws. When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropr |
| 1001 | 1001 Section 44 Applications - General | 1001 Section 44 Applications - General | The United States has assumed certain obligations from agreements adopted at the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to these agreements. The United States is also |
| 1002 | 1002 Eligible Applicants Under §44 | 1002 Eligible Applicants Under §44 | |
| 1002.01 | 1002.01 Eligible Applicants Under §44(e) | 1002.01 Eligible Applicants Under §44(e) | To be eligible for registration under §44(e), an applicant must meet the following requirements: (1) The applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for reg |
| 1002.02 | 1002.02 Eligible Applicants Under §44(d) | 1002.02 Eligible Applicants Under §44(d) | To be eligible for a priority filing date under §44(d), an applicant must meet the following requirements: (1) The applicant’s country of origin must be a party to an international treaty or agreement with the United Sta |
| 1002.03 | 1002.03 Establishing Entitlement Under a Treaty or Foreign Law | 1002.03 Establishing Entitlement Under a Treaty or Foreign Law | In a Trademark Act §44 application, the examining attorney must confirm that: (1) both the applicant’s country of origin and the country where the applicant has filed the application or obtained registration are (a) part |
| 1002.04 | 1002.04 Establishing Country of Origin | 1002.04 Establishing Country of Origin | To obtain registration under §44(e), the applicant must be the owner of a valid registration from the applicant’s country of origin. Kallamni v. Khan , 101 USPQ2d 1864 (TTAB 2012) (finding that registrant’s shipment of p |
| 1002.05 | 1002.05 U.S. Applicants | 1002.05 U.S. Applicants | Section 44(b) of the Trademark Act provides that, “Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to |
| 1003 | 1003 Section 44(d) - Priority Filing Date Based on a Foreign Application | 1003 Section 44(d) - Priority Filing Date Based on a Foreign Application | Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d) , provides for a priority filing date to eligible applicants ( see TMEP §1002.02 ) who have filed an application in a treaty country as defined by §44(b) ( see TMEP |
| 1003.01 | 1003.01 The “First-Filed” Requirement | 1003.01 The “First-Filed” Requirement | The application relied upon under §44(d) must be the applicant’s first application filed in any treaty country for the same mark and for the same goods or services. The USPTO will presume that the application identified |
| 1003.02 | 1003.02 Priority Claim Must Be Filed Within Six Months of Foreign Filing | 1003.02 Priority Claim Must Be Filed Within Six Months of Foreign Filing | An applicant must file a claim of priority within six months after the filing date of the foreign application. 15 U.S.C. §1126(d)(1) ; 37 C.F.R. §§2.34(a)(4)(i) , 2.35(b)(5) ; Paris Convention Article 4(C)(3). The applic |
| 1003.03 | 1003.03 Basis for Registration Required | 1003.03 Basis for Registration Required | Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before an application may be approved for publication, or allowed for registration on the |
| 1003.04 | 1003.04 Suspension Awaiting a Foreign Registration | 1003.04 Suspension Awaiting a Foreign Registration | |
| 1003.04(a) | 1003.04(a) Applications Based Solely on Section 44 | 1003.04(a) Applications Based Solely on Section 44 | In a §44(d) application filed via the trademark electronic filing system, the applicant is asked to specifically indicate that it does not intend to rely on §44(e) as a basis for registration, but wishes only to assert a |
| 1003.04(b) | 1003.04(b) Multiple-Basis Applications | 1003.04(b) Multiple-Basis Applications | If an applicant properly claims §44(d) as a basis for receipt of a priority filing date and asserts §1 as a second basis, the applicant may elect not to perfect the §44 basis and still retain the priority filing date. 37 |
| 1003.04(c) | 1003.04(c) Periodic Inquiries Issued as to Status of Foreign Application | 1003.04(c) Periodic Inquiries Issued as to Status of Foreign Application | Examining attorneys must issue inquiries as to the status of the foreign application in applications that have been suspended for more than six months. See TMEP §716.05 . If the applicant does not respond or request an e |
| 1003.05 | 1003.05 Section 44(d) and Priority for Publication | 1003.05 Section 44(d) and Priority for Publication | To determine priority for publication under 37 C.F.R. §2.83 , an application filed in the United States under §44(d) will be treated as if it were filed in the United States on the same date as the filing in the foreign |
| 1003.06 | 1003.06 Applicants May File Under both §44(d) and §44(e) | 1003.06 Applicants May File Under both §44(d) and §44(e) | In some cases, a §44 applicant may have already received, before filing in the USPTO, a foreign registration as a result of the same foreign application upon which the applicant relies for priority under §44(d). This may |
| 1003.07 | 1003.07 Application May Be Based on More than One Foreign Application | 1003.07 Application May Be Based on More than One Foreign Application | An applicant may file an application in the United States based on more than one foreign application for different goods or services, or for different classes, if the applicant meets the requirements of §44(d) with respe |
| 1003.08 | 1003.08 Abandonment of the Foreign Application | 1003.08 Abandonment of the Foreign Application | If the foreign application relied on under §44(d) is abandoned during the prosecution of the U.S. application, the applicant may amend the application to rely on another basis. See TMEP §806.03 . If the applicant met the |
| 1004 | 1004 Applications Based on Foreign Registrations Under §44(e) | 1004 Applications Based on Foreign Registrations Under §44(e) | If an eligible applicant ( see TMEP §1002.01 ) owns a valid registration from the applicant’s country of origin, the applicant may base its U.S. application on that foreign registration under §44(e). A §44(e) application |
| 1004.01 | 1004.01 Copy of Foreign Registration Required | 1004.01 Copy of Foreign Registration Required | Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e) , requires “a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant.” If a copy of the foreign r |
| 1004.01(a) | 1004.01(a) Status of the Foreign Registration | 1004.01(a) Status of the Foreign Registration | The foreign registration must be in force at the time the United States issues the registration based on that foreign registration. In re Societe D’Exploitation de la Marque Le Fouquet’s , 67 USPQ2d 1784 (TTAB 2003) ; Ma |
| 1004.01(b) | 1004.01(b) Translation of the Foreign Registration or Renewal Document | 1004.01(b) Translation of the Foreign Registration or Renewal Document | If the foreign registration, certificate of renewal, or other certification of renewal from the intellectual property office of the foreign country is not in English, the applicant must provide a translation. 37 C.F.R. § |
| 1004.02 | 1004.02 Application May Be Based on More than One Foreign Registration | 1004.02 Application May Be Based on More than One Foreign Registration | A U.S. application may be based on more than one foreign registration. The applicant must meet all requirements of the Trademark Act and rules for each foreign registration upon which the U.S. application is based, and m |
| 1005 | 1005 Ownership of the Foreign Application or Registration | 1005 Ownership of the Foreign Application or Registration | Section 44 Claimed in Original Application If an applicant claims §44 as the filing basis in the original U.S. application, or if the applicant omits the basis from the original U.S. application and subsequently claims § |
| 1006 | 1006 Assignment of §44 Applications | 1006 Assignment of §44 Applications | A §44 applicant may assign the foreign application or registration and/or the U.S. application from the original applicant to another party. Assignee Must Be Eligible for the Benefits of §44 To continue to claim the bene |
| 1007 | 1007 Standards for Registration Under Section 44 | 1007 Standards for Registration Under Section 44 | Although §44 exempts eligible applicants from the use requirements of §1 of the Trademark Act, §44 applicants must meet all other requirements for registration set forth in the Trademark Act and relevant rules. Registrat |
| 1008 | 1008 Bona Fide Intention to Use the Mark in Commerce | 1008 Bona Fide Intention to Use the Mark in Commerce | A trademark or service mark application filed under §44(d) or §44(e) on either the Principal or the Supplemental Register must include a verified statement that the applicant has a bona fide intention to use the mark in |
| 1009 | 1009 Allegation of Use and Specimen of Use Not Required Prior to Registration | 1009 Allegation of Use and Specimen of Use Not Required Prior to Registration | Although §44 applicants must assert a bona fide intention to use the mark in commerce, §44 applicants are not required to allege use or provide specimens or dates of use prior to registration on either the Principal or S |
| 1010 | 1010 Proof of Acquired Distinctiveness in §44 Applications | 1010 Proof of Acquired Distinctiveness in §44 Applications | A §44 applicant may assert that a mark has acquired distinctiveness under 15 U.S.C. §1052(f) if the applicant establishes that the mark has become distinctive of applicant's goods or services in commerce in the same mann |
| 1011 | 1011 Drawings | 1011 Drawings | Applicants filing under §44 must comply with the drawing requirements of 37 C.F.R. §2.51 through §2.54 . See TMEP §§807-807.18 regarding drawings. |
| 1011.01 | 1011.01 Substantially Exact Representation of Mark in Foreign Registration | 1011.01 Substantially Exact Representation of Mark in Foreign Registration | The drawing of the mark must be “a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the applicant's country of origin.” 37 C.F.R. §2 |
| 1011.02 | 1011.02 One Mark Per Application | 1011.02 One Mark Per Application | If the foreign application or registration covers a series of distinct marks, the applicant must file separate applications in the United States to register each of the marks the applicant wishes to register in the Unite |
| 1011.03 | 1011.03 Amendment of Drawing | 1011.03 Amendment of Drawing | Section 44 applicants often try to amend the mark in the U.S. application to overcome an objection that the mark in the drawing does not agree with the mark in the foreign registration. Amendments to drawings in §44 appl |
| 1011.04 | 1011.04 Drawings and Descriptions of Three-Dimensional, Multimedia and Non-Visual Marks | 1011.04 Drawings and Descriptions of Three-Dimensional, Multimedia and Non-Visual Marks | If the foreign application or registration depicts several views of a three-dimensional mark, the examining attorney must require the applicant to comply with 37 C.F.R. §2.52(b)(2) and submit an acceptable drawing that d |
| 1012 | 1012 Identification of Goods and Services | 1012 Identification of Goods and Services | The identification of goods and services in a §44 application must comply with the same standards that govern other applications. See TMEP §1402.01(b) for more information about the identification of goods or services in |
| 1013 | 1013 Requirement for Representation of Applicants Not Domiciled in the United States | 1013 Requirement for Representation of Applicants Not Domiciled in the United States | Requirement for Representation of Non-U.S.-domiciled Applicants. An applicant whose domicile is not located within the United States or its territories must be represented before the USPTO by an attorney who is an active |
| 1014 | 1014 Section 44 Applications and the Supplemental Register | 1014 Section 44 Applications and the Supplemental Register | If an application is based solely on Trademark Act §44, an applicant may amend the application from the Principal Register to the Supplemental Register without filing any allegation of use. 15 U.S.C. §1126 . It is not ne |
| 1015 | 1015 Section 44 Registration Independent of Underlying Foreign Registration | 1015 Section 44 Registration Independent of Underlying Foreign Registration | Once issued, the U.S. registration issuing from a §44 application exists independent of the underlying foreign registration and is subject to all provisions of the Trademark Act that apply to all other registrations, suc |
| 1016 | 1016 International Registration As Basis for Section 44 Application | 1016 International Registration As Basis for Section 44 Application | An international registration issued by the International Bureau of the World Intellectual Property Organization (IB) can be the basis for a §44(e) application only if the international registration shows that there is a |
| 1101 | 1101 Bona Fide Intention to Use the Mark in Commerce | 1101 Bona Fide Intention to Use the Mark in Commerce | Trademarks and Service Marks Trademark Act Section 1(b)(1), 15 U.S.C. §1051(b)(1) , provides that an applicant may file a trademark or service mark application based on a bona fide intention to use a mark in commerce “un |
| 1102 | 1102 Initial Examination of Intent-to-Use Applications | 1102 Initial Examination of Intent-to-Use Applications | In an intent-to-use application, the examining attorney will potentially examine the application twice: first, when the trademark or service mark application is initially filed based on a bona fide intention to use the m |
| 1102.01 | 1102.01 Substantive Refusals | 1102.01 Substantive Refusals | To the fullest extent possible, the examining attorney will examine an intent-to-use application for registrability under Trademark Act §1 and §2(a) through (e), 15 U.S.C. §§1051 , 1052(a) – (e) , according to the same p |
| 1102.02 | 1102.02 Drawings | 1102.02 Drawings | The examination of the drawing during initial examination, before submission of an allegation of use and specimen, will focus primarily on the form of the drawing and compliance with 37 C.F.R. §§2.52 , 2.53 , and 2.54 . |
| 1102.03 | 1102.03 Intent-to-Use Applications and the Supplemental Register | 1102.03 Intent-to-Use Applications and the Supplemental Register | A mark in an intent-to-use application under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable allegation of use (i.e., either an amendment t |
| 1102.04 | 1102.04 Claims of Acquired Distinctiveness under §2(f) | 1102.04 Claims of Acquired Distinctiveness under §2(f) | See TMEP §§1212.09–1212.09(b) regarding claims of distinctiveness under §2(f), 15 U.S.C. §1052(f) , in intent-to-use applications. [top] |
| 1103 | 1103 Allegations of Use | 1103 Allegations of Use | While §1(b) of the Trademark Act provides for filing a trademark or service mark application based on the applicant’s bona fide intention to use the mark in commerce (or the applicant’s bona fide intention, and entitleme |
| 1104 | 1104 Amendment to Allege Use Under §1(c) of the Act | 1104 Amendment to Allege Use Under §1(c) of the Act | As previously stated, an intent-to-use applicant under 15 U.S.C. §1051(b) must file either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) before issuance of the registr |
| 1104.01 | 1104.01 Minimum Filing Requirements for an Amendment to Allege Use | 1104.01 Minimum Filing Requirements for an Amendment to Allege Use | The amendment to allege use must include the following minimum elements before it will be referred to the examining attorney for examination on the merits: (1) the prescribed fee for at least one class; (2) one specimen |
| 1104.01(a) | 1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements | 1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements | A legal instruments examiner (LIE) will conduct a preliminary review of an amendment to allege use to determine whether it is timely and complies with the minimum filing requirements of 37 C.F.R. §2.76(c) . If so, the LI |
| 1104.01(b) | 1104.01(b) Processing an Amendment to Allege Use that Does Not Meet Minimum Filing Requirements | 1104.01(b) Processing an Amendment to Allege Use that Does Not Meet Minimum Filing Requirements | If an amendment to allege use is timely, but does not comply with the minimum filing requirements of 37 C.F.R. §2.76(c) ( see TMEP §1104.01 ), the LIE will advise the applicant in writing of the deficiency. The applicant |
| 1104.01(c) | 1104.01(c) Processing Defective Amendment to Allege Use Filed with Other Amendments | 1104.01(c) Processing Defective Amendment to Allege Use Filed with Other Amendments | After the LIE has taken appropriate action on a defective amendment to allege use ( see TMEP §1104.01(b) ), the LIE will process any other amendments filed with the amendment to allege use and refer the application to th |
| 1104.02 | 1104.02 Form of Amendment to Allege Use | 1104.02 Form of Amendment to Allege Use | Applicants must file an amendment to allege use through the trademark electronic filing system, unless an exception to the requirement to file documents electronically applies. See 37 C.F.R. §2.23(a) ; TMEP §§301.01 , 30 |
| 1104.03 | 1104.03 Time for Filing Amendment to Allege Use | 1104.03 Time for Filing Amendment to Allege Use | An applicant may file an amendment to allege use at any time between the application filing date and the date the examining attorney approves the mark for publication. 37 C.F.R. §2.76(a)(1) . An amendment to allege use m |
| 1104.03(a) | 1104.03(a) Use on All Goods/Services Required Before Filing | 1104.03(a) Use on All Goods/Services Required Before Filing | An applicant may not file an amendment to allege use until the mark has been in use in commerce on or in connection with all goods/services for which the applicant seeks registration under §1(b), unless the applicant fil |
| 1104.03(b) | 1104.03(b) The “Blackout Period” | 1104.03(b) The “Blackout Period” | Under 37 C.F.R. §2.76(a)(1) , the USPTO will not review an amendment to allege use filed after the date that the application is approved for publication by the examining attorney. Under 37 C.F.R. §2.88(a)(1) , the USPTO |
| 1104.03(c) | 1104.03(c) Processing Amendment to Allege Use Filed During the Blackout Period | 1104.03(c) Processing Amendment to Allege Use Filed During the Blackout Period | An applicant will not be permitted to electronically file an amendment to allege use or statement of use during the blackout period using the trademark electronic filing system. If the applicant attempts to do so, the ap |
| 1104.04 | 1104.04 Processing Timely Amendment to Allege Use Discovered After Publication | 1104.04 Processing Timely Amendment to Allege Use Discovered After Publication | If an amendment to allege use is timely ( see TMEP §1104.03 ) and complies with the minimum filing requirements such that it may be examined on the merits ( see TMEP §1104.01 ), but the mark was published for opposition |
| 1104.05 | 1104.05 Amendment to Allege Use Filed in Conjunction with Application | 1104.05 Amendment to Allege Use Filed in Conjunction with Application | If an applicant files an intent-to-use application under 15 U.S.C. §1051(b) , and, at the same time, files an amendment to allege use asserting dates of use before the filing date of the application, the applicant will b |
| 1104.06 | 1104.06 Processing Amendment to Allege Use Received Before Application Is Assigned to an Examining Attorney | 1104.06 Processing Amendment to Allege Use Received Before Application Is Assigned to an Examining Attorney | If an amendment to allege use is received before an application has been assigned to an examining attorney, the LIE will review the amendment to allege use to determine whether it complies with the minimum filing require |
| 1104.07 | 1104.07 Amendments to Allege Use and Ex Parte Appeals | 1104.07 Amendments to Allege Use and Ex Parte Appeals | An amendment to allege use may be filed together with a notice of appeal to the Trademark Trial and Appeal Board, or it may be filed while an appeal is pending. Once the appeal is filed, the Board has jurisdiction over t |
| 1104.08 | 1104.08 Requirements for a Complete Amendment to Allege Use | 1104.08 Requirements for a Complete Amendment to Allege Use | Trademarks and Service Marks The requirements for a complete amendment to allege use are: (1) a verification or declaration properly signed (see TMEP §611.03(a) regarding who may sign a verification) and stating that the |
| 1104.09 | 1104.09 Acceptance of Amendment to Allege Use that Meets Minimum Filing Requirements by Examining Attorney | 1104.09 Acceptance of Amendment to Allege Use that Meets Minimum Filing Requirements by Examining Attorney | At the outset, the examining attorney must accept the submission of the amendment to allege use if it is timely filed and meets the minimum filing requirements, unless (1) USPTO records show title in a party other than t |
| 1104.10 | 1104.10 Examination of Amendment to Allege Use on the Merits for Compliance with Statutory Requirements | 1104.10 Examination of Amendment to Allege Use on the Merits for Compliance with Statutory Requirements | After accepting an amendment to allege use that meets the requirements discussed above ( see TMEP §§1104.01 , 1104.03–1104.03(c), 1104.09) , the examining attorney will then examine it on the merits to determine complian |
| 1104.10(a) | 1104.10(a) Issuance of Office Action Related to Amendment to Allege Use | 1104.10(a) Issuance of Office Action Related to Amendment to Allege Use | If, after examination on the merits, the examining attorney determines that the amendment to allege use necessitates any refusals or requirements, an Office action must be issued. Before issuing the Office action, the ex |
| 1104.10(b) | 1104.10(b) Common Examination Issues Related to Amendments to Allege Use | 1104.10(b) Common Examination Issues Related to Amendments to Allege Use | The following sections represent the most common issues to be considered during examination of an amendment to allege use. These sections do not exhaust all possible grounds for issuing a refusal or making a requirement. |
| 1104.11 | 1104.11 Amendment and Withdrawal of Amendment to Allege Use | 1104.11 Amendment and Withdrawal of Amendment to Allege Use | The applicant may amend the amendment to allege use to correct deficiencies or errors, to overcome a refusal, or to comply with a requirement. The applicant may withdraw the amendment to allege use at any time before app |
| 1105 | 1105 Publication of Intent-to-Use Applications for Opposition | 1105 Publication of Intent-to-Use Applications for Opposition | If an amendment to allege use has been submitted and accepted, the intent-to-use application is processed as a use application. If the examining attorney determines that the mark is entitled to registration, the examinin |
| 1106 | 1106 Notice of Allowance | 1106 Notice of Allowance | |
| 1106.01 | 1106.01 Issuance of the Notice of Allowance | 1106.01 Issuance of the Notice of Allowance | Section 13(b)(2) of the Trademark Act, 15 U.S.C. §1063(b)(2) , provides for issuance of a notice of allowance if a §1(b) application is published for opposition and is not successfully opposed. The notice of allowance in |
| 1106.02 | 1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance | 1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance | If, after issuance of the notice of allowance but before submission of the statement of use, the USPTO determines that a clear error ( see TMEP §706.01 ) was made in approving the mark for publication, the USPTO will can |
| 1106.03 | 1106.03 Cancellation of Notice of Allowance | 1106.03 Cancellation of Notice of Allowance | If the USPTO cancels the notice of allowance before the filing or examination of the statement of use, the USPTO will refund any fees paid in conjunction with a statement of use or request(s) for extension(s) of time to |
| 1106.04 | 1106.04 Correction of Errors in Notice of Allowance | 1106.04 Correction of Errors in Notice of Allowance | When the applicant receives a notice of allowance, the applicant should check the accuracy of the information. If there are any errors in the notice of allowance, the applicant should notify the ITU/Divisional Unit of th |
| 1107 | 1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use | 1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use | Generally, the only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods or services, or the e |
| 1107.01 | 1107.01 Examination of Amendment Filed After the Notice of Allowance Issues but Before a Statement of Use Is Filed | 1107.01 Examination of Amendment Filed After the Notice of Allowance Issues but Before a Statement of Use Is Filed | As noted in TMEP §1107 , an applicant may file a petition to the Director under 37 C.F.R. §2.146 to permit an amendment to be entered (other than an amendment deleting a basis or deleting specified goods/services) during |
| 1108 | 1108 Requests for Extensions of Time to File the Statement of Use | 1108 Requests for Extensions of Time to File the Statement of Use | Section 1(d) of the Trademark Act, 15 U.S.C. §1051(d) , requires that a statement of use be filed within six months after the issuance of the notice of allowance, or before the expiration of a previously granted extensio |
| 1108.01 | 1108.01 Time for Filing 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 | Under 15 U.S.C. §1051(d) , the applicant must file an extension request within six months of the issuance date of the notice of allowance, or before the expiration of a previously granted extension; otherwise the applica |
| 1108.02 | 1108.02 Requirements for Request for an Extension of Time to File a Statement of Use | 1108.02 Requirements for Request for an Extension of Time to File a Statement of Use | First Extension Request The first request for an extension of time to file a statement of use must include: (1) a written extension request from the applicant, before expiration of the six-month period following issuance |
| 1108.02(a) | 1108.02(a) Ownership | 1108.02(a) Ownership | The party filing the extension request must be the owner of the application, i.e., the person or entity who is entitled to use or exercise legitimate control over the use of the mark, at the time of filing. See 15 U.S.C. |
| 1108.02(b) | 1108.02(b) Verification and Date of Execution | 1108.02(b) Verification and Date of Execution | The verification must be properly signed. See 37 C.F.R. §2.89(a)(3) , (b)(3) . See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding who may sign a verification. If the extension request is unsigned or signed by the w |
| 1108.02(c) | 1108.02(c) Fees | 1108.02(c) Fees | A filing fee sufficient to cover at least one class must be submitted within the statutory time for filing the extension request, or the request will be denied. 37 C.F.R. §2.89(a)(2) , (b)(2) . In a multiple-class applic |
| 1108.02(d) | 1108.02(d) Identification of Goods/Services | 1108.02(d) Identification of Goods/Services | In an extension request, the applicant must identify or reference the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. 15 U.S.C. §1051(d)(2) ; 3 |
| 1108.02(e) | 1108.02(e) Bona Fide Intention to Use the Mark in Commerce | 1108.02(e) Bona Fide Intention to Use the Mark in Commerce | Trademarks and Service Marks A request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention to use the mark in commerce on or in con |
| 1108.02(f) | 1108.02(f) Good Cause Required for Extensions Beyond the First Six-month Extension –Trademarks and Service Marks | 1108.02(f) Good Cause Required for Extensions Beyond the First Six-month Extension –Trademarks and Service Marks | No showing of good cause is required in a first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2) ; 37 C.F. |
| 1108.02(g) | 1108.02(g) Good Cause Required for Extensions Beyond the First Six-month Extension – Collective Marks | 1108.02(g) Good Cause Required for Extensions Beyond the First Six-month Extension – Collective Marks | No showing of good cause is required in a first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2) ; 37 C.F. |
| 1108.02(h) | 1108.02(h) Good Cause Required for Extensions Beyond the First Six-month Extension – Certification Marks | 1108.02(h) Good Cause Required for Extensions Beyond the First Six-month Extension – Certification Marks | No showing of good cause is required in a first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2) ; 37 C.F. |
| 1108.03 | 1108.03 Only One Extension Request May Be Filed with or After a Statement of Use – “Insurance” Extension Request | 1108.03 Only One Extension Request May Be Filed with or After a Statement of Use – “Insurance” Extension Request | An applicant may file a request for an extension of time to file a statement of use with a statement of use, or after filing the statement of use if there is time remaining in the existing six-month period in which the s |
| 1108.03(a) | 1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney | 1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney | Under 37 C.F.R. §2.89(e)(1) , an applicant may file a request for an extension of time to file a statement of use after filing a statement of use if: (1) there is time remaining in the existing six-month period in which |
| 1108.04 | 1108.04 Recourse After Denial of Extension Request | 1108.04 Recourse After Denial of Extension Request | If an extension request is denied, the applicant will be notified of the reason(s) for the denial. To avoid abandonment of the application, the applicant must meet the minimum requirements for filing the extension reques |
| 1108.05 | 1108.05 Petitions from Denial of Request for an Extension of Time to File a Statement of Use | 1108.05 Petitions from Denial of Request for an Extension of Time to File a Statement of Use | If an extension request is denied, and there is no time remaining in the statutory filing period, the application is abandoned. Applicant’s recourse is as follows: Petition to Revive Under 37 C.F.R. §2.66 . If the applic |
| 1109 | 1109 Statement of Use Under §1(d) of the Trademark Act | 1109 Statement of Use Under §1(d) of the Trademark Act | An intent-to-use applicant must file an allegation of use to obtain a registration. See TMEP §1103 . See TMEP §§1104–1104.11 regarding amendments to allege use. Under 15 U.S.C. §1051(d) , a statement of use must be filed |
| 1109.01 | 1109.01 Minimum Filing Requirements for a Statement of Use | 1109.01 Minimum Filing Requirements for a Statement of Use | The statement of use must meet the following minimum filing requirements before it may be referred to an examining attorney for examination on the merits: (1) the prescribed fee for at least one class; (2) one specimen o |
| 1109.02 | 1109.02 Review for Compliance with Minimum Filing Requirements | 1109.02 Review for Compliance with Minimum Filing Requirements | Statements of use are reviewed by the ITU/Divisional Unit to determine whether they are timely under 37 C.F.R. §2.88(a)(1) and in compliance with the minimum filing requirements listed in 37 C.F.R. §2.88(c) . If the stat |
| 1109.02(a) | 1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements | 1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements | If the ITU staff determines that a statement of use does not meet the minimum filing requirements of 37 C.F.R. §2.88(c) , and there is no time remaining in the statutory filing period, the application is abandoned. The a |
| 1109.03 | 1109.03 Use on All Goods/Services Required Before Filing | 1109.03 Use on All Goods/Services Required Before Filing | The applicant may file a statement of use only when the mark has been in use in commerce on or in connection with all the goods/services specified in the notice of allowance, unless the applicant files a request to divid |
| 1109.04 | 1109.04 Time for Filing Statement of Use | 1109.04 Time for Filing Statement of Use | The statement of use must be filed within six months after the issuance date of the notice of allowance or within a previously granted extension of time for filing a statement of use. 37 C.F.R. §2.88(a)(1) ; see 15 U.S.C |
| 1109.05 | 1109.05 Form of Statement of Use | 1109.05 Form of Statement of Use | Applicants must file a statement of use through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23(a) ; TMEP §§301.01 , 301.01(a) . See TMEP |
| 1109.06 | 1109.06 Requirements for a Complete Statement of Use | 1109.06 Requirements for a Complete Statement of Use | Trademarks and Service Marks A complete statement of use must include the following elements: (1) a verification or declaration properly signed (see TMEP §611.03(a) regarding who may sign a verification) and stating that |
| 1109.07 | 1109.07 Examination of the Statement of Use — In General | 1109.07 Examination of the Statement of Use — In General | If the statement of use is timely and complies with the minimum filing requirements of 37 C.F.R. §2.88(c) , the ITU staff will refer it to the examining attorney for examination on the merits. If available, the same exam |
| 1109.08 | 1109.08 Examination of the Statement of Use – New Requirements and Refusals | 1109.08 Examination of the Statement of Use – New Requirements and Refusals | Generally, in examining the statement of use, the USPTO will issue only requirements or refusals concerning matters related to the statement of use. The examining attorney should not make a requirement or refusal concern |
| 1109.09 | 1109.09 Use in Commerce | 1109.09 Use in Commerce | A verified statement that “the mark is in use in commerce” is a minimum requirement that must be satisfied before the expiration of the statutory period for filing the statement of use. 15 U.S.C. §1051(d)(1) ; 37 C.F.R. |
| 1109.09(a) | 1109.09(a) Dates of Use | 1109.09(a) Dates of Use | The statement of use must include the dates of first use of the mark and first use of the mark in commerce on or in connection with the goods/services/collective membership organization specified in the notice of allowan |
| 1109.09(b) | 1109.09(b) Specimens | 1109.09(b) Specimens | The examining attorney must examine the specimens to confirm that they show use of the subject matter as a mark on or in connection with the goods/services identified in the statement of use. See TMEP §§1202–1202.17(e)(v |
| 1109.10 | 1109.10 Ownership | 1109.10 Ownership | Review by the ITU/Divisional Unit Section 1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1) , requires that “the applicant shall file ... a verified statement that the mark is in use in commerce ...” within six months |
| 1109.11 | 1109.11 Verification and Execution | 1109.11 Verification and Execution | The requirement that a statement of use include a signed verification or declaration is a minimum filing requirement. 15 U.S.C. §1051(d)(1) ; 37 C.F.R. §2.88(e)(3) ; In re Kinsman , 33 USPQ2d 1057 (Comm’r Pats. 1993). If |
| 1109.11(a) | 1109.11(a) Authority of Signatory | 1109.11(a) Authority of Signatory | The verification must be properly signed. See 37 C.F.R. §2.88(b)(1) . See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding who may sign a verification. Anyone who can verify the initial application may verify the sta |
| 1109.11(b) | 1109.11(b) Verification of Essential Elements | 1109.11(b) Verification of Essential Elements | The examining attorney must review the verified statement of use to confirm that it conforms to the requirements of the Act and the rules. The verified statement must include an allegation that the applicant believes it |
| 1109.11(c) | 1109.11(c) Date of Execution | 1109.11(c) Date of Execution | If the statement of use was executed before the stated dates of use, the examining attorney must require that the statement be re-executed. See TMEP §903.06(a) regarding apparent discrepancies between dates of use and ex |
| 1109.11(d) | 1109.11(d) Signature of Electronically Transmitted Statement of Use | 1109.11(d) Signature of Electronically Transmitted Statement of Use | See TMEP §611.01(c) regarding signature of documents filed electronically through the trademark electronic filing system. |
| 1109.12 | 1109.12 Drawing | 1109.12 Drawing | Under 37 C.F.R. §2.51(b) , the drawing in an intent-to-use application must be a substantially exact representation of the mark as intended to be used and as actually used upon filing the allegation of use. An applicant |
| 1109.13 | 1109.13 Identification of Goods/Services in Statement of Use | 1109.13 Identification of Goods/Services in Statement of Use | The statement of use must either list or incorporate by reference the goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce. 15 U.S.C. §1051(d)(1) ; 37 C.F.R. § |
| 1109.14 | 1109.14 Classification | 1109.14 Classification | If the mark published in the wrong class of the goods/services, the examining attorney must ensure that the classification is corrected. This may be done in an examiner’s amendment without prior approval by the applicant |
| 1109.15 | 1109.15 Fees | 1109.15 Fees | Payment of the filing fee for at least a single class within the statutory time for filing the statement of use is a minimum filing requirement. See 37 C.F.R. §2.88(b)(3) , (e)(i) ; In re L.R. Sport Inc ., 25 USPQ2d 1533 |
| 1109.15(a) | 1109.15(a) Processing Deficient Fees | 1109.15(a) Processing Deficient Fees | If the filing fee for at least a single class is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, o |
| 1109.16 | 1109.16 Correcting Defects in Statement of Use | 1109.16 Correcting Defects in Statement of Use | The applicant must comply with the statutory requirements for filing a statement of use ( 37 C.F.R. §2.88(b) ) before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuanc |
| 1109.16(a) | 1109.16(a) Statutory Requirements that Must Be Met Within Statutory Filing Period | 1109.16(a) Statutory Requirements that Must Be Met Within Statutory Filing Period | The applicant must comply with the statutory requirements for filing a statement of use ( 37 C.F.R. §2.88(b) ) before expiration of the period for filing the statement of use (i.e., within six months of the issuance date |
| 1109.16(b) | 1109.16(b) Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Statutory Requirements | 1109.16(b) Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Statutory Requirements | When the examining attorney determines that the applicant did not meet the statutory requirements within the period for filing the statement of use, the examining attorney must issue an Office action refusing registratio |
| 1109.16(c) | 1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Statutory Filing Requirements | 1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Statutory Filing Requirements | In limited circumstances, an applicant may file a request for an extension of time to file a statement of use after filing a statement of use, in order to gain more time to comply with the statutory requirements for fili |
| 1109.16(d) | 1109.16(d) Timely Response to Office Action Required Regardless of Expiration Date of Period for Filing the Statement of Use | 1109.16(d) Timely Response to Office Action Required Regardless of Expiration Date of Period for Filing the Statement of Use | In limited circumstances, when the applicant files a timely “insurance” extension request in conjunction with or after filing a statement of use ( see TMEP §§1108.03–1108.03(a) , 1109.16(c) ) and the examining attorney h |
| 1109.16(e) | 1109.16(e) Applicant’s Recourse After Refusal of Registration | 1109.16(e) Applicant’s Recourse After Refusal of Registration | If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use within the time permitted, as set forth in 37 C.F.R. §2.88(e) ( see TMEP §1109.01 ), the applicant may file a petition |
| 1109.17 | 1109.17 Withdrawal of the Statement of Use Prohibited | 1109.17 Withdrawal of the Statement of Use Prohibited | Once an applicant has filed a statement of use, the applicant may not withdraw the statement of use, even if the USPTO determines that the statement of use does not comply with the minimum filing requirements. 37 C.F.R. |
| 1109.18 | 1109.18 Approval of the Statement of Use | 1109.18 Approval of the Statement of Use | Approval of the statement of use indicates that the mark is eligible for registration. If the examining attorney determines that the application is in condition for registration, the examining attorney will approve the m |
| 1110 | 1110 Request to Divide an Application | 1110 Request to Divide an Application | 37 C.F.R. Dividing an application. (a) Application may be divided. An application may be divided into two or more separate applications upon the payment of a fee for each new application created and submission by the app |
| 1110.01 | 1110.01 Application May Be Divided | 1110.01 Application May Be Divided | Under 37 C.F.R. §2.87(a) , an applicant may divide the application into two or more separate applications upon payment of the applicable fees. When dividing an application, the applicant preserves the filing date for all |
| 1110.02 | 1110.02 Fees for Filing Request to Divide | 1110.02 Fees for Filing Request to Divide | Request to Divide Out One or More Entire Classes . With a request to divide out one or more entire classes from an application, only the fee for dividing the application (divisional fee), as set forth in 37 C.F.R. §2.6(a |
| 1110.03 | 1110.03 Time for Filing Request to Divide | 1110.03 Time for Filing Request to Divide | An applicant may file a request to divide at any time between the filing of the application and the date the examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference |
| 1110.04 | 1110.04 Form and Processing of Request to Divide | 1110.04 Form and Processing of Request to Divide | Applicants must file a request to divide through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23(a) ; TMEP §301.01 . See TMEP §301.02 reg |
| 1110.05 | 1110.05 Outstanding Time Periods Apply to Newly Created Applications | 1110.05 Outstanding Time Periods Apply to Newly Created Applications | Any outstanding deadline in effect at the time an application is divided applies not only to the original application, but also to each separate new application created by the division of the application, except in the f |
| 1110.06 | 1110.06 Signature of Request to Divide | 1110.06 Signature of Request to Divide | A request to divide must be signed in accordance with the guidelines in TMEP §611.03(b) . The ITU/Divisional Unit must ensure that the request to divide is signed by a proper party. See TMEP §§611.06–611.06(h) for more i |
| 1110.07 | 1110.07 Dividing an Application when Statement of Use Is Due | 1110.07 Dividing an Application when Statement of Use Is Due | Filing a request to divide does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use. Any outstanding deadline in effect at the time the application is divi |
| 1110.08 | 1110.08 Dividing an Application when Response to Office Action Is Due | 1110.08 Dividing an Application when Response to Office Action Is Due | Filing a request to divide is not a proper response to an Office action and does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action. Any outstanding dead |
| 1110.09 | 1110.09 Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board | 1110.09 Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board | A request to divide may be filed during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board. 37 C.F.R. §2.87(c) . When an application is the subject of a |
| 1110.10 | 1110.10 Dividing a §44 Application | 1110.10 Dividing a §44 Application | When the applicant divides an application that includes a claim of priority under §44(d), the separate new (child) application(s) created through the division retain the priority filing date, provided that each new appli |
| 1110.11 | 1110.11 Dividing a §66(a) Application | 1110.11 Dividing a §66(a) Application | If ownership of an international registration changes for some but not all of the goods/services, the USPTO will not divide a §66(a) application unless the International Bureau of the World Intellectual Property Organiza |
| 1110.11(a) | 1110.11(a) Dividing a §66(a) Application After Change of Ownership with Respect to Some but Not All of the Goods/Services | 1110.11(a) Dividing a §66(a) Application After Change of Ownership with Respect to Some but Not All of the Goods/Services | When ownership of an international registration changes for some but not all of the goods/services for all designated Contracting Parties, the International Bureau of the World Intellectual Property Organization (IB) wil |
| 1110.12 | 1110.12 Division of Registrations | 1110.12 Division of Registrations | See TMEP §§1615–1615.02 regarding division of registrations. [top] |
| 1201 | 1201 Ownership of Mark | 1201 Ownership of Mark | Under §1(a)(1) of the Trademark Act, 15 U.S.C. §1051(a)(1) , a trademark or service mark application based on use in commerce must be filed by the owner of the mark. A §1(a) application must include a verified statement |
| 1201.01 | 1201.01 Claim of Ownership May Be Based on Use By Related Companies | 1201.01 Claim of Ownership May Be Based on Use By Related Companies | In an application under §1 of the Trademark Act, 15 U.S.C. §1051 , an applicant may base its claim of ownership of a mark on: (1) its own exclusive use of the mark; (2) use of the mark solely by a related company whose u |
| 1201.02 | 1201.02 Identifying the Applicant in the Application | 1201.02 Identifying the Applicant in the Application | |
| 1201.02(a) | 1201.02(a) Identifying the Applicant Properly | 1201.02(a) Identifying the Applicant Properly | The applicant may be any person or entity capable of suing and being sued in a court of law. See TMEP §§803-803.03(k) for the appropriate format for identifying the applicant and setting forth the relevant legal entity. |
| 1201.02(b) | 1201.02(b) Application Void if Wrong Party Identified as the Applicant | 1201.02(b) Application Void if Wrong Party Identified as the Applicant | An application must be filed by the party who is the owner of (or has a bona fide intention to use in commerce) the mark on the application filing date. See TMEP §1201 . When an application is filed in the name of the wr |
| 1201.02(c) | 1201.02(c) Correcting Errors in How the Applicant Is Identified | 1201.02(c) Correcting Errors in How the Applicant Is Identified | If the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be corrected by amendm |
| 1201.02(d) | 1201.02(d) Operating Divisions | 1201.02(d) Operating Divisions | An operating division that is not a legal entity that can sue and be sued does not have standing to own a mark or to file an application to register a mark. The application must be filed in the name of the company of whi |
| 1201.02(e) | 1201.02(e) Changes in Ownership After Application Is Filed | 1201.02(e) Changes in Ownership After Application Is Filed | See TMEP Chapter 500 regarding changes of ownership and changes of name subsequent to filing an application for registration, and TMEP §§502.02–502.02(b) regarding the procedure for requesting that a certificate of regis |
| 1201.03 | 1201.03 Use by Related Companies | 1201.03 Use by Related Companies | Section 5 of the Trademark Act, 15 U.S.C. §1055 , states, in part, as follows: Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the be |
| 1201.03(a) | 1201.03(a) No Explanation of Use of Mark by Related Companies or Applicant’s Control Over Use of Mark by Related Companies Required | 1201.03(a) No Explanation of Use of Mark by Related Companies or Applicant’s Control Over Use of Mark by Related Companies Required | The USPTO does not require an application to specify if the applied-for mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under §5 |
| 1201.03(b) | 1201.03(b) Wholly Owned Related Companies | 1201.03(b) Wholly Owned Related Companies | Frequently, related companies comprise parent and wholly owned subsidiary corporations. Either a parent corporation or a subsidiary corporation may be the proper applicant, depending on the facts concerning ownership of |
| 1201.03(c) | 1201.03(c) Common Stockholders, Directors, or Officers | 1201.03(c) Common Stockholders, Directors, or Officers | Corporations are not "related companies" within the meaning of §5 of the Trademark Act, 15 U.S.C. §1055 , merely because they have the same stockholders, directors, or officers, or because they occupy the same premises. |
| 1201.03(d) | 1201.03(d) Sister Corporations | 1201.03(d) Sister Corporations | The fact that two sister corporations are controlled by a single parent corporation does not mean that they are related companies. Where two corporations are wholly owned subsidiaries of a common parent, use by one siste |
| 1201.03(e) | 1201.03(e) License and Franchise Situations | 1201.03(e) License and Franchise Situations | The USPTO accepts applications by parties who claim to be owners of marks through use by controlled licensees, pursuant to a contract or agreement. Pneutek, Inc. v. Scherr, 211 USPQ 824, 833 (TTAB 1981). A controlled lic |
| 1201.04 | 1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record | 1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record | The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s v |
| 1201.05 | 1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use | 1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use | An applicant’s claim of ownership of a mark may be based on the applicant’s own use of the mark, even though there is also use by a related company. The applicant is the owner by virtue of the applicant’s own use, and th |
| 1201.06 | 1201.06 Special Situations Pertaining to Ownership | 1201.06 Special Situations Pertaining to Ownership | |
| 1201.06(a) | 1201.06(a) Applicant Is Merely Distributor or Importer | 1201.06(a) Applicant Is Merely Distributor or Importer | A distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade. S |
| 1201.06(b) | 1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located | 1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located | Where a specimen indicates that the goods are manufactured in a country other than the applicant’s home country, the examining attorney normally should not inquire whether the mark is used by a foreign manufacturer. If, |
| 1201.06(c) | 1201.06(c) Applicant Using Designation of a U.S. Government Agency or Instrumentality | 1201.06(c) Applicant Using Designation of a U.S. Government Agency or Instrumentality | For a mark that would otherwise be subject to a refusal under §2(a) because it falsely suggests a connection with a designation of a U.S. government agency, instrumentality, or program, such as names, acronyms, titles, t |
| 1201.07 | 1201.07 Related Companies and Likelihood of Confusion | 1201.07 Related Companies and Likelihood of Confusion | |
| 1201.07(a) | 1201.07(a) “Single Source” – “Unity of Control” | 1201.07(a) “Single Source” – “Unity of Control” | Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) , requires that the examining attorney refuse registration when an applicant’s mark, as applied to the specified goods or services, so resembles a registered mark as |
| 1201.07(b) | 1201.07(b) Appropriate Action with Respect to Assertion of Unity of Control | 1201.07(b) Appropriate Action with Respect to Assertion of Unity of Control | First, it is important to note that analysis under Wella is not triggered until an applicant affirmatively asserts that a §2(d) refusal is inappropriate because the applicant and the registrant, though separate legal ent |
| 1202 | 1202 Use of Subject Matter as Trademark | 1202 Use of Subject Matter as Trademark | In an application under Trademark Act §1, 15 U.S.C. §1051, the examining attorney must determine whether the subject matter for which registration is sought is used as a trademark by reviewing the specimens and any other |
| 1202.01 | 1202.01 Refusal of Matter Used Solely as a Trade Name | 1202.01 Refusal of Matter Used Solely as a Trade Name | The name of a business or company is a trade name. The Trademark Act distinguishes trade names from trademarks and service marks by definition. While a trademark is used to identify and distinguish the trademark owner’s |
| 1202.02 | 1202.02 Registration of Trade Dress | 1202.02 Registration of Trade Dress | Trade dress constitutes a "symbol" or "device" within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052 . Wal-Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, 209-10, 54 USPQ2d 1065, 1065-66 (2000). Trade dress or |
| 1202.02(a) | 1202.02(a) Functionality of Trade Dress | 1202.02(a) Functionality of Trade Dress | In general terms, trade dress is functional, and cannot serve as a trademark, if a feature of that trade dress is "essential to the use or purpose of the article or if it affects the cost or quality of the article." Traf |
| 1202.02(b) | 1202.02(b) Distinctiveness of Trade Dress | 1202.02(b) Distinctiveness of Trade Dress | Regardless of whether a proposed trade dress mark is refused as functional under §2(e)(5), the examining attorney must also examine the mark for distinctiveness. Trade dress that is not inherently distinctive and that ha |
| 1202.02(c) | 1202.02(c) Drawings, Descriptions, and Disclaimers in Trade Dress Applications | 1202.02(c) Drawings, Descriptions, and Disclaimers in Trade Dress Applications | Applicants often submit drawings and descriptions of marks depicting trade dress and containing matter that is: (1) not part of the mark; (2) functional; (3) nondistinctive and incapable; (4) nondistinctive and capable; |
| 1202.02(d) | 1202.02(d) Trade Dress in §1(b) Applications | 1202.02(d) Trade Dress in §1(b) Applications | Distinctiveness and Product Design A product design trade dress mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, |
| 1202.02(e) | 1202.02(e) Trade Dress in §44 and §66(a) Applications | 1202.02(e) Trade Dress in §44 and §66(a) Applications | Distinctiveness and Product Design A product design trade dress mark can never be inherently distinctive and is registrable only upon a showing of secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, |
| 1202.02(f) | 1202.02(f) Identification of Goods/Services in Trade Dress Applications | 1202.02(f) Identification of Goods/Services in Trade Dress Applications | |
| 1202.03 | 1202.03 Refusal on Basis of Ornamentation | 1202.03 Refusal on Basis of Ornamentation | Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade d |
| 1202.03(a) | 1202.03(a) Commercial Impression | 1202.03(a) Commercial Impression | The examining attorney must determine whether the overall commercial impression of the proposed mark is that of a trademark. Matter that is purely ornamental or decorative does not function as a trademark and is unregist |
| 1202.03(b) | 1202.03(b) Practices of the Trade | 1202.03(b) Practices of the Trade | In determining whether a proposed mark is inherently distinctive, factors to be considered include whether the subject matter is unique or unusual in a particular field, as opposed to a mere refinement of a commonly adop |
| 1202.03(c) | 1202.03(c) “Secondary Source” | 1202.03(c) “Secondary Source” | To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark |
| 1202.03(d) | 1202.03(d) Evidence of Distinctiveness | 1202.03(d) Evidence of Distinctiveness | As noted above, even if a proposed mark is not inherently distinctive, it may nevertheless be registered on the Principal Register under §2(f), 15 U.S.C. §1052(f) , if it becomes distinctive of the applicant’s goods in c |
| 1202.03(e) | 1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a) Applications | 1202.03(e) Ornamentation with Respect to §1(b), §44, and §66(a) Applications | Generally, the issue of ornamentation is tied to the use of the proposed mark as evidenced by the specimen. Therefore, unless the ornamental nature of the mark is clearly apparent from the drawing and description of the |
| 1202.03(f) | 1202.03(f) Ornamentation: Case References | 1202.03(f) Ornamentation: Case References | The following cases show the various ways in which ornamental matter was found not to function as a mark. |
| 1202.03(g) | 1202.03(g) Ornamentation Cases and Acquired Distinctiveness | 1202.03(g) Ornamentation Cases and Acquired Distinctiveness | In the following cases, subject matter sought to be registered was found to have acquired distinctiveness as a trademark: In re Jockey Int’l, Inc ., 192 USPQ 579 (TTAB 1976) (inverted Y design used on underwear found to |
| 1202.04 | 1202.04 Informational Matter | 1202.04 Informational Matter | Merely informational matter fails to function as a mark to indicate source and thus is not registrable because consumers would perceive such matter as merely conveying general information about the goods or services or a |
| 1202.04(a) | 1202.04(a) General Information About the Goods or Services | 1202.04(a) General Information About the Goods or Services | Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark. This matter is not registrable because consu |
| 1202.04(b) | 1202.04(b) Widely Used Messages | 1202.04(b) Widely Used Messages | Matter that merely conveys ordinary, familiar, or generally understood concepts or sentiments, as well as social, political, religious, or similar informational messages in common use, would not be perceived as indicatin |
| 1202.04(c) | 1202.04(c) Matter from Religious Texts | 1202.04(c) Matter from Religious Texts | Some proposed marks comprise direct quotations, passages, or citations from religious texts, such as the Bible, Quran, Torah, or Diamond Sutra. These quotations, passages, or citations are often used by the providers of |
| 1202.04(d) | 1202.04(d) Response Options | 1202.04(d) Response Options | An applicant may respond to a merely informational failure-to-function refusal by submitting evidence demonstrating that the matter is perceived as indicating a single source for the identified goods or services. See In |
| 1202.05 | 1202.05 Color as a Mark | 1202.05 Color as a Mark | Color marks are marks that consist solely of one or more colors used on particular objects. For marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on |
| 1202.05(a) | 1202.05(a) Color Marks Generally Not Inherently Distinctive | 1202.05(a) Color Marks Generally Not Inherently Distinctive | Color marks generally are not inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, 211-12 (2000) (citing Qualitex Co. v. Jacobson Prods. Co. , 514 U.S. 159, 162-63 (1995)); In re Thrifty, Inc., 2 |
| 1202.05(b) | 1202.05(b) Functional or Generic Color(s) Not Registrable | 1202.05(b) Functional or Generic Color(s) Not Registrable | Functionality refusal . A color mark is not registrable on the Principal Register under Trademark Act §2(f), or the Supplemental Register, if the color or colors are functional. See Qualitex Co. v. Jacobson Prods. Co., 5 |
| 1202.05(c) | 1202.05(c) Color as a Separable Element | 1202.05(c) Color as a Separable Element | As with all trademarks and service marks, a color mark may contain only those elements that make a separable commercial impression. See TMEP §807.12(d) . Accordingly, an applicant may not seek to register the color of th |
| 1202.05(d) | 1202.05(d) Drawings of Color Marks Required | 1202.05(d) Drawings of Color Marks Required | All marks, other than sound and scent marks, require a drawing. TMEP §807 . An application for a color mark that is filed without a drawing will be denied a filing date. 37 C.F.R. §2.21(a)(3) . Similarly, an application |
| 1202.05(e) | 1202.05(e) Written Descriptions of Color Marks | 1202.05(e) Written Descriptions of Color Marks | The drawing of a proposed color mark must be supplemented with: (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the "Description of the Mark" field naming the color(s) and describing where |
| 1202.05(f) | 1202.05(f) Specimens for Color Marks | 1202.05(f) Specimens for Color Marks | An application under §1 of the Trademark Act must be supported by a specimen that shows use of the proposed mark depicted on the drawing. Therefore, an applicant who applies to register a color mark must submit a specime |
| 1202.05(g) | 1202.05(g) Special Considerations for Service Mark Applications | 1202.05(g) Special Considerations for Service Mark Applications | Although the applicant in In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001), argued that it applied for the color blue per se as a service mark, the Court determined that the drawing controlled, such th |
| 1202.05(h) | 1202.05(h) Color Marks in §1(b) Applications | 1202.05(h) Color Marks in §1(b) Applications | A color mark generally is not inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, 211-12 (2000) (citing Qualitex Co. v. Jacobson Prods. Co. , 514 U.S. 159, 162-63 (1995)); TMEP §1202.05(a) . But |
| 1202.05(i) | 1202.05(i) Color Marks in §44 or §66(a) Applications | 1202.05(i) Color Marks in §44 or §66(a) Applications | A color mark generally is not inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros. , 529 U.S. 205, 211-12 (2000) (citing Qualitex Co. v. Jacobson Prods. Co. , 514 U.S. 159, 162-63 (1995)); TMEP §1202.05(a) . But |
| 1202.06 | 1202.06 Goods in Trade | 1202.06 Goods in Trade | Section 45 of the Trademark Act defines a "trademark" as a "word, name, symbol, or device, or any combination thereof" that is used or intended to be used in commerce "to identify and distinguish his or her goods ." 15 U |
| 1202.06(a) | 1202.06(a) Goods Must Have Utility to Others | 1202.06(a) Goods Must Have Utility to Others | Affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on "goods." While a formal sale is not always necessary, items sold or transported in commerce are not |
| 1202.06(b) | 1202.06(b) Registration Must Be Refused if Trademark Not Used on Goods in Trade | 1202.06(b) Registration Must Be Refused if Trademark Not Used on Goods in Trade | If the specimen, identification of goods, or other evidence in the record indicate that the applicant uses the proposed mark only on items incidental to conducting its own business, as opposed to items intended to be use |
| 1202.06(c) | 1202.06(c) Goods in Trade in §1(b), §44, and §66(a) Applications | 1202.06(c) Goods in Trade in §1(b), §44, and §66(a) Applications | In an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b) , the question of whether a proposed mark is used on goods in trade usually does not arise until the applicant files an allegation of u |
| 1202.07 | 1202.07 Marks That Identify Columns, Sections, and Supplements of Publications | 1202.07 Marks That Identify Columns, Sections, and Supplements of Publications | |
| 1202.07(a) | 1202.07(a) Marks That Identify Columns, Sections, and Supplements of Printed, Downloadable, or Recorded Publications in §1(a) Applications | 1202.07(a) Marks That Identify Columns, Sections, and Supplements of Printed, Downloadable, or Recorded Publications in §1(a) Applications | Columns, sections, and supplements of a publication that are printed, downloadable, or recorded on electronic media are normally not considered to be separate "goods" or "goods in trade," unless they are sold, syndicated |
| 1202.07(b) | 1202.07(b) Marks That Identify Columns and Sections of Online Publications | 1202.07(b) Marks That Identify Columns and Sections of Online Publications | Providing an online non-downloadable publication is considered a service rather than a good. Therefore, refusal of registration on the ground that the proposed mark is not used on "goods in trade" is inappropriate. An on |
| 1202.08 | 1202.08 Title of a Single Creative Work | 1202.08 Title of a Single Creative Work | The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051 , 1052 , and 1127 , unless the title has been used on a series of cre |
| 1202.08(a) | 1202.08(a) What Constitutes a Single Creative Work | 1202.08(a) What Constitutes a Single Creative Work | Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. Materials such as books, sound recordings, downloadable songs, downloadable ring to |
| 1202.08(b) | 1202.08(b) What Does Not Constitute a Single Creative Work | 1202.08(b) What Does Not Constitute a Single Creative Work | Generally, any creative work will not be considered a single creative work if evidence exists that it is part of a series (e.g., the work is labeled "volume 1," "part 1," or "book 1") or is a type of work in which the co |
| 1202.08(c) | 1202.08(c) Complete Title of the Work – Evidence of a Series | 1202.08(c) Complete Title of the Work – Evidence of a Series | The name of a series of books or other creative works may be registrable if it serves to identify and distinguish the source of the goods. An applicant must submit evidence that the title is used on at least two differen |
| 1202.08(d) | 1202.08(d) Portion of a Title of the Work | 1202.08(d) Portion of a Title of the Work | A portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria: (1) It creates a separate commercial impression apart from the |
| 1202.08(e) | 1202.08(e) Identification of Goods/Services | 1202.08(e) Identification of Goods/Services | Identification Need Not Reflect Use on a Series . The identification of goods/services need not reflect that the applicant is using the title on a series of works (either written or recorded). It is sufficient that the r |
| 1202.08(f) | 1202.08(f) Title of a Single Work in §1(b), §44, and §66(a) Applications | 1202.08(f) Title of a Single Work in §1(b), §44, and §66(a) Applications | The issue of whether a proposed mark is the title of a single creative work usually is tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use applicatio |
| 1202.09 | 1202.09 Names of Artists and Authors | 1202.09 Names of Artists and Authors | |
| 1202.09(a) | 1202.09(a) Names and Pseudonyms of Authors and Performing Artists | 1202.09(a) Names and Pseudonyms of Authors and Performing Artists | Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051 , 1052 , and |
| 1202.09(b) | 1202.09(b) Names of Artists Used on Original Works of Art | 1202.09(b) Names of Artists Used on Original Works of Art | An artist’s name or pseudonym affixed to an original work of art may be registered on the Principal Register without a showing that the name identifies a series. Original works of art includes paintings, murals, sculptur |
| 1202.10 | 1202.10 Characters in Creative Works | 1202.10 Characters in Creative Works | Marks that merely identify a character in a creative work, whether used in a series or in a single work , are not registrable. In re Stallard , 2023 USPQ2d 1009, at *1-2 (TTAB 2023) (holding an image of the head of a fem |
| 1202.10(a) | 1202.10(a) Characters in Creative Works in §1(b), §44, or §66(a) Applications | 1202.10(a) Characters in Creative Works in §1(b), §44, or §66(a) Applications | The issue of whether a proposed mark identifies only the name or design of a particular character is tied to use of the mark, as evidenced by the specimen. Therefore, unless the record, even without a specimen, reflects |
| 1202.11 | 1202.11 Background Designs and Shapes | 1202.11 Background Designs and Shapes | Common geometric shapes and background designs that are not sufficiently distinctive to create a commercial impression separate from the word and/or design marks with which they are used, are not regarded as indicators o |
| 1202.12 | 1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants) | 1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants) | Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or seed by which such variety is known to the U.S |
| 1202.13 | 1202.13 Scent, Fragrance, or Flavor | 1202.13 Scent, Fragrance, or Flavor | Scent . The scent of a product may be registrable if it is used in a nonfunctional manner. See In re Clarke , 17 USPQ2d 1238, 1239-40 (TTAB 1990) (holding that the scent of plumeria blossoms functioned as a mark for "sew |
| 1202.14 | 1202.14 Holograms | 1202.14 Holograms | A hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as a trademark. See In re Upper Deck Co. , 59 USPQ2d 1688, 1692-93 (TTAB 2001), where the Board hel |
| 1202.15 | 1202.15 Sound Marks | 1202.15 Sound Marks | A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they "assume a definitive shape or arrangement" and "create in the hea |
| 1202.16 | 1202.16 Model or Grade Designations | 1202.16 Model or Grade Designations | Model designations appear in connection with a wide variety of products, such as table saws, retaining rings, hand tools, and pens, to identify a specific style, type, or design of a product within a particular line of g |
| 1202.16(a) | 1202.16(a) General Information About Marks with Model and Grade Designations | 1202.16(a) General Information About Marks with Model and Grade Designations | A trademark comprises a word, name, symbol, device, or combination thereof that is used to identify the goods of an applicant, to distinguish them from the goods of others, and to indicate the source of the goods. 15 U.S |
| 1202.16(b) | 1202.16(b) Identifying Model and Grade Designations in Marks | 1202.16(b) Identifying Model and Grade Designations in Marks | |
| 1202.16(c) | 1202.16(c) Procedures for Examining Marks with Model and Grade Designations | 1202.16(c) Procedures for Examining Marks with Model and Grade Designations | |
| 1202.17 | 1202.17 Universal Symbols in Marks | 1202.17 Universal Symbols in Marks | The term "universal symbol" refers to a design, icon, or image that is commonly used in an informational manner and conveys a widely recognized or readily understood meaning when displayed in its relevant context. See We |
| 1202.17(a) | 1202.17(a) Relevance of Universal Symbols to Examination | 1202.17(a) Relevance of Universal Symbols to Examination | Universal symbols may appear as one element of a mark, or they may form an entire mark. The informational aspect of these symbols is often at odds with the functions of trademarks and service marks: to identify and disti |
| 1202.17(b) | 1202.17(b) Reviewing Marks Containing Symbols | 1202.17(b) Reviewing Marks Containing Symbols | For each application, the examining attorney must determine whether the mark contains a universal symbol. Some universal symbols, such as the recycling symbol, are immediately identifiable. Others may not be, and applica |
| 1202.17(c) | 1202.17(c) Failure to Function | 1202.17(c) Failure to Function | The USPTO will not register an applied-for designation unless it functions as a mark. See 15 U.S.C. §§1051 , 1052 , 1053 , 1127 ; In re Team Jesus LLC , 2020 USPQ2d 11489, at *2 (TTAB 2020) (quoting In re Standard Oil Co |
| 1202.17(d) | 1202.17(d) Other Relevant Refusals | 1202.17(d) Other Relevant Refusals | The examining attorney should also consider the following potential grounds for refusal when reviewing a mark featuring a universal symbol. In addition to those discussed below, the examining attorney should determine wh |
| 1202.17(e) | 1202.17(e) Universal Symbols Commonly Appearing in Marks | 1202.17(e) Universal Symbols Commonly Appearing in Marks | The universal symbols discussed below frequently appear in applied-for marks. Some of these symbols are so widely used and well known that they will have only non-trademark significance when used with almost any good or |
| 1202.18 | 1202.18 Hashtag Marks | 1202.18 Hashtag Marks | A "hashtag" is a form of metadata consisting of a word or phrase prefixed with the symbol "#" (e.g., #chicago, #sewing, and #supremecourtdecisions). Hashtags are often used on social-networking sites to identify or facil |
| 1202.18(a) | 1202.18(a) Disclaiming HASHTAG or Hash Symbol | 1202.18(a) Disclaiming HASHTAG or Hash Symbol | A mark may be registrable with a disclaimer of the wording HASHTAG or the hash symbol in cases where they are separable from other registrable matter. Therefore, if a mark consists of the hash symbol or the term HASHTAG |
| 1202.18(b) | 1202.18(b) Marks Consisting Solely of HASHTAG or Hash Symbol | 1202.18(b) Marks Consisting Solely of HASHTAG or Hash Symbol | Sometimes, marks that consist solely of variants of the term HASHTAG or the hash symbol may function as a mark, such as when the mark will be used in connection with goods or services that do not relate to social network |
| 1202.19 | 1202.19 Repeating-Pattern Marks | 1202.19 Repeating-Pattern Marks | A repeating-pattern mark is a mark composed of a single repeated element or a repeated combination of designs, numbers, letters, or other characters, forming a pattern that is displayed on the surface of goods, on produc |
| 1202.19(a) | 1202.19(a) Drawing Requirements for Repeating-Pattern Marks | 1202.19(a) Drawing Requirements for Repeating-Pattern Marks | The drawing for a repeating-pattern mark must be a substantially exact representation of the mark. See 37 C.F.R. §2.51 ; TMEP §§807.12–807.12(d) . The impression created by a repeating pattern may change depending on a n |
| 1202.19(b) | 1202.19(b) Mark Descriptions for Repeating-Pattern Marks | 1202.19(b) Mark Descriptions for Repeating-Pattern Marks | The mark description must accurately describe the mark. See TMEP §808.02 . Thus, the description for a repeating-pattern mark must indicate that the mark consists of a pattern. Although the description must identify the |
| 1202.19(c) | 1202.19(c) Material Alteration of Repeating-Pattern Marks | 1202.19(c) Material Alteration of Repeating-Pattern Marks | |
| 1202.19(d) | 1202.19(d) Specimens for Repeating-Pattern Marks | 1202.19(d) Specimens for Repeating-Pattern Marks | As with other types of marks, the specimen of use for a repeating-pattern mark must show use of the mark as depicted in the drawing and described in the mark description. See TMEP §§904 , 904.07(a) , 1301.04(g)(i) . When |
| 1202.19(e) | 1202.19(e) Failure-to-Function Refusal – Mark Not Inherently Distinctive | 1202.19(e) Failure-to-Function Refusal – Mark Not Inherently Distinctive | The USPTO will not register an applied-for mark unless it functions as a mark. See 15 U.S.C. §§1051 , 1052 , 1053 , 1127 ; In re Bose Corp. , 192 USPQ 213, 215 (C.C.P.A. 1976) ("Before there can be registration, there mu |
| 1202.19(f) | 1202.19(f) Failure-to-Function Refusal – Inconsistent Goods or Services | 1202.19(f) Failure-to-Function Refusal – Inconsistent Goods or Services | When the drawing shows the repeating pattern appearing on an item, the examining attorney must determine whether all of the identified goods or services are consistent with the item depicted, such that the mark shown acc |
| 1202.19(g) | 1202.19(g) Refusal – Application Seeks Registration of More than One Mark | 1202.19(g) Refusal – Application Seeks Registration of More than One Mark | As explained in TMEP §1202.19(a)(iii) , a swatch-type drawing is acceptable only if the applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of th |
| 1202.19(h) | 1202.19(h) Refusals in Applications Based on Section 1(b), Section 44, or Section 66(a) | 1202.19(h) Refusals in Applications Based on Section 1(b), Section 44, or Section 66(a) | The refusals discussed in TMEP §§1202.19(e)–(g)(ii) may also apply to applications based on Trademark Act §1(b), §44, or §66(a) if the information in the application or any other available evidence indicates that the app |
| 1202.19(i) | 1202.19(i) Functional Repeating Patterns | 1202.19(i) Functional Repeating Patterns | It is possible, although rare, that a repeating pattern applied to the surface of an item will serve a functional purpose. This could be a utilitarian function, which is essential to the use of the item or affects the co |
| 1202.19(j) | 1202.19(j) Random Patterns | 1202.19(j) Random Patterns | The foregoing guidance on repeating patterns also generally applies to marks consisting of random or fractal patterns, that is, patterns in which the relevant elements are not repeated in a set or easily recognized way. |
| 1202.19(k) | 1202.19(k) Examples of Repeating-Pattern Marks | 1202.19(k) Examples of Repeating-Pattern Marks | Registered Repeating-Pattern Marks Example 1 U.S. Registration No. 3826587 (Supplemental Register) Mark Specimen Mark Description: "The mark consists of a repeating pattern of hexagonal shapes printed or stitched on the |
| 1203 | 1203 Refusal on Basis of Deceptive Matter and Matter which May Falsely Suggest a Connection | 1203 Refusal on Basis of Deceptive Matter and Matter which May Falsely Suggest a Connection | 15 U.S.C. §1052 (Extract) No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it– (a) Con |
| 1203.01 | 1203.01 Other Refusals Under 15 U.S.C. §1052(a) No Longer Valid | 1203.01 Other Refusals Under 15 U.S.C. §1052(a) No Longer Valid | Until June 19, 2017, the USPTO examined applications pursuant to the provision in Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) , that prohibited the registration of a mark that consists of or comprises matter th |
| 1203.02 | 1203.02 Deceptive Matter | 1203.02 Deceptive Matter | Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) , is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matt |
| 1203.02(a) | 1203.02(a) Types of Deceptive Marks | 1203.02(a) Types of Deceptive Marks | A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements ( see In re White Jasmine LLC , 1 |
| 1203.02(b) | 1203.02(b) Elements of a §2(a) Deceptiveness Refusal | 1203.02(b) Elements of a §2(a) Deceptiveness Refusal | The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter: (1) Is the term misdescriptive of the character, quality, function, compositio |
| 1203.02(c) | 1203.02(c) Distinction Between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1)) | 1203.02(c) Distinction Between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1)) | If the first two inquiries set forth by the Federal Circuit in In re Budge Manufacturing Co. , 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods or services and |
| 1203.02(d) | 1203.02(d) Determining Materiality | 1203.02(d) Determining Materiality | To establish a prima facie case of deceptiveness, the examining attorney must provide sufficient evidence that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a signi |
| 1203.02(e) | 1203.02(e) Procedures for Issuing §2(a) Deceptive Refusals | 1203.02(e) Procedures for Issuing §2(a) Deceptive Refusals | |
| 1203.02(f) | 1203.02(f) Responding to a §2(a) Deceptiveness Refusal | 1203.02(f) Responding to a §2(a) Deceptiveness Refusal | |
| 1203.02(g) | 1203.02(g) Deceptive Matter: Case References | 1203.02(g) Deceptive Matter: Case References | In the following cases, proposed marks were determined to be deceptive, under §2(a): In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987) (holding LOVEE LAMB deceptive for s |
| 1203.03 | 1203.03 Matter That May Falsely Suggest a Connection | 1203.03 Matter That May Falsely Suggest a Connection | Trademark Act §2(a), 15 U.S.C. §1052(a) , bars the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter which, with regard to persons, institutions, beli |
| 1203.03(a) | 1203.03(a) Definitions | 1203.03(a) Definitions | |
| 1203.03(b) | 1203.03(b) False Suggestion of a Connection | 1203.03(b) False Suggestion of a Connection | Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols. See TMEP §1203.03(a)(i) regarding per |
| 1204 | 1204 Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation | 1204 Refusal on Basis of Flag, Coat of Arms, or Other Insignia of United States, State or Municipality, or Foreign Nation | 15 U.S.C. §1052 (Extract) No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (b |
| 1204.01 | 1204.01 Flags and Simulations of Flags | 1204.01 Flags and Simulations of Flags | |
| 1204.01(a) | 1204.01(a) Flags and Simulations of Flags Are Refused | 1204.01(a) Flags and Simulations of Flags Are Refused | Registration must be refused under §2(b) if the design sought to be registered includes a true representation of the flag of the United States, any state, municipality, or foreign nation, or is a simulation thereof. A re |
| 1204.01(b) | 1204.01(b) Stylized Flag Designs Are Not Refused Under §2(b) | 1204.01(b) Stylized Flag Designs Are Not Refused Under §2(b) | Marks containing elements of flags in a stylized or incomplete form are not refused under §2(b). The mere presence of some significant elements of flags, such as stars and stripes (U.S. flag) or a maple leaf (Canadian fl |
| 1204.01(c) | 1204.01(c) Case Law Finding No Simulation of a Flag | 1204.01(c) Case Law Finding No Simulation of a Flag | In certain cases, the Trademark Trial and Appeal Board found that the flag design was not a simulation of a particular national flag. In re Am. Red Magen David for Israel , 222 USPQ 266, 267 (TTAB 1984) ("As to the State |
| 1204.01(d) | 1204.01(d) Description of the Mark | 1204.01(d) Description of the Mark | The description of the mark should make it clear that the design is a stylized version of the national flag, if accurate. For example, a statement that "the mark consists of the stylized American flag" or "the mark consi |
| 1204.01(e) | 1204.01(e) Flags Not Presently Used as National Flags | 1204.01(e) Flags Not Presently Used as National Flags | Flags of former countries, states, or municipalities are not refused under §2(b). For example, the flags of now non-existent countries such as the German Democratic Republic (East Germany) or Yugoslavia are not refused. |
| 1204.02 | 1204.02 Government Insignia | 1204.02 Government Insignia | |
| 1204.02(a) | 1204.02(a) Designs that are Insignia Under §2(b) Must Be Refused | 1204.02(a) Designs that are Insignia Under §2(b) Must Be Refused | Flags and coats of arms are specific designs formally adopted to serve as emblems of governmental authority. The wording "other insignia" should not be interpreted broadly, but should be considered to include only those |
| 1204.02(b) | 1204.02(b) Examples of Insignia That Should Be Refused Under §2(b) | 1204.02(b) Examples of Insignia That Should Be Refused Under §2(b) | Examples : The following are examples of insignia that should be refused under §2(b): Great Seal of the United States Seal of The President of The United States The Official Seal of a Government Agency |
| 1204.02(c) | 1204.02(c) Examples of Designs That Should Not Be Refused Under §2(b) | 1204.02(c) Examples of Designs That Should Not Be Refused Under §2(b) | Designs that do not rise to the level of being emblems of national authority, or emblems of state or municipal authority, should not be refused. Exception: As a result of the enactment of Public Law 98 525 on October 19, |
| 1204.02(d) | 1204.02(d) Case Law Interpreting Insignia Under §2(b) | 1204.02(d) Case Law Interpreting Insignia Under §2(b) | The following cases provide examples of matter that was held not to be government insignia under §2(b): (1) Department insignia that shows a service or facility of a federal department are not refused registration under |
| 1204.03 | 1204.03 Other Refusals May be Appropriate | 1204.03 Other Refusals May be Appropriate | Marks that are not barred by §2(b) may be refused if prohibited by other sections of the Trademark Act. For example, a design may not be an insignia under §2(b) but may be refused under §2(a). See, e.g., In re Brumberger |
| 1204.04 | 1204.04 Responding to §2(b) Refusal | 1204.04 Responding to §2(b) Refusal | |
| 1204.04(a) | 1204.04(a) Absolute Bar to Registration | 1204.04(a) Absolute Bar to Registration | Because §2(b) provides an absolute bar to registration, a disclaimer of the prohibited flag or insignia or an amendment to seek registration under §2(f) or on the Supplemental Register will not overcome a refusal. The st |
| 1204.04(b) | 1204.04(b) Deletion of §2(b) Matter | 1204.04(b) Deletion of §2(b) Matter | Section 1 Applications . The deletion of the unregistrable §2(b) matter, which no party can have trademark rights in, will not be considered a material alteration if the matter is separable from the other elements in the |
| 1204.05 | 1204.05 Resources | 1204.05 Resources | Internet Evidence : Many useful websites present images of national and state flags, government insignia, and coats of arms: Flags of Foreign Nations: https://www.crwflags.com/fotw/flags/ https://en.wikipedia.org/wiki/Ga |
| 1205 | 1205 Refusal on Basis of Matter Protected by Statute or Convention | 1205 Refusal on Basis of Matter Protected by Statute or Convention | |
| 1205.01 | 1205.01 Statutory Protection | 1205.01 Statutory Protection | Various federal statutes and regulations prohibit or restrict the use of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, and medals adopted by the United States gover |
| 1205.01(a) | 1205.01(a) Examination Procedures for Marks Comprising a Red Crystal or Red Crescent on a White Background, or the Phrases “Red Crescent” or “Third Protocol Emblem” | 1205.01(a) Examination Procedures for Marks Comprising a Red Crystal or Red Crescent on a White Background, or the Phrases “Red Crescent” or “Third Protocol Emblem” | On December 8, 2005, the United States signed the Third Protocol Additional to the 1949 Geneva Conventions relating to the Adoption of an Additional Distinctive Emblem (the "Protocol"). The Protocol creates two new disti |
| 1205.01(b) | 1205.01(b) Examination Procedures for Marks Comprising Matter Related to the United States Olympic Committee or the Olympics | 1205.01(b) Examination Procedures for Marks Comprising Matter Related to the United States Olympic Committee or the Olympics | Following passage of the Amateur Sports Act of 1978, 36 U.S.C. §380, unauthorized use of words and symbols associated with the United States Olympic Committee ("USOC") or the Olympics subjected the user to civil actions |
| 1205.01(c) | 1205.01(c) Examination Procedures for Marks Containing Greek Red Cross or the Phrases “Red Cross” or “Geneva Cross” | 1205.01(c) Examination Procedures for Marks Containing Greek Red Cross or the Phrases “Red Cross” or “Geneva Cross” | Federal law prohibits anyone other than the American National Red Cross and its duly authorized employees and agents and the sanitary and hospital authorities of the armed forces of the United States from using the Greek |
| 1205.01(d) | 1205.01(d) Examination Procedures for Marks Containing the Swiss Confederation Coat of Arms or Flag | 1205.01(d) Examination Procedures for Marks Containing the Swiss Confederation Coat of Arms or Flag | The Trademark Act bars registration of trademarks or service marks containing the coat of arms or flag of the Swiss Confederation, commonly known as Switzerland. See 15 U.S.C. §§1052(a) , 1052(b) , 1052(e)(2) , 1052(e)(3 |
| 1205.02 | 1205.02 Article 6ter of the Paris Convention | 1205.02 Article 6ter of the Paris Convention | The United States is a member of the Paris Convention for the Protection of Industrial Property, as revised at Stockholm on July 14, 1967, the members of which constitute a Union for the protection of industrial property |
| 1205.03 | 1205.03 Native American Tribal Insignia | 1205.03 Native American Tribal Insignia | Various federally and state-recognized Native American tribes have identified a particular insignia as their official tribal insignia. When a federally or state-recognized Native American tribe submits its official insig |
| 1206 | 1206 Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent | 1206 Refusal on Basis of Name, Portrait, or Signature of Particular Living Individual or Deceased U.S. President Without Consent | 15 U.S.C. §1052 (Extract) No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (c |
| 1206.01 | 1206.01 Name, Portrait, or Signature of Particular Living Individual | 1206.01 Name, Portrait, or Signature of Particular Living Individual | Trademark Act §2(c), 15 U.S.C. §1052(c) , explicitly pertains to any name, portrait, or signature that identifies a particular living individual, or a deceased president of the United States during the life of the presid |
| 1206.02 | 1206.02 Connection with Goods or Services | 1206.02 Connection with Goods or Services | Whether consent to registration is required depends on whether the public would recognize and understand the mark as identifying a particular living individual. A consent is required only if the individual bearing the na |
| 1206.03 | 1206.03 When Inquiry is Required | 1206.03 When Inquiry is Required | Generally, if a mark comprises a name, portrait, or signature that could reasonably be perceived as identifying a particular living individual, and the applicant does not state whether the name or likeness does in fact i |
| 1206.04 | 1206.04 Consent of Individual or President’s Widow | 1206.04 Consent of Individual or President’s Widow | |
| 1206.04(a) | 1206.04(a) Consent Statement Must Be Written Consent to Registration | 1206.04(a) Consent Statement Must Be Written Consent to Registration | Must Be Personally Signed . When a name, portrait, or signature in a mark identifies a particular living individual, or a deceased president of the United States during the life of his widow, the mark can be registered o |
| 1206.04(b) | 1206.04(b) Consent May Be Presumed From Signature of Application | 1206.04(b) Consent May Be Presumed From Signature of Application | When a particular individual identified in a mark is also the person who signed the application, the individual's consent to registration will be presumed. Alford Mfg. Co. v. Alfred Elecs. , 137 USPQ 250, 250 (TTAB 1963) |
| 1206.04(c) | 1206.04(c) New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant | 1206.04(c) New Consent Not Required if Consent is of Record in Valid Registration Owned by Applicant | An applicant does not have to submit a new consent if a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signat |
| 1206.04(d) | 1206.04(d) Implicit Consent | 1206.04(d) Implicit Consent | Consent may sometimes be inferred from the actions of the individual. In re D.B. Kaplan Delicatessen , 225 USPQ 342, 344 (TTAB 1985) (finding consent to the use and registration of the mark D. B. KAPLAN’S DELICATESSEN im |
| 1206.05 | 1206.05 Names and Likenesses That Do Not Identify a Particular Living Individual | 1206.05 Names and Likenesses That Do Not Identify a Particular Living Individual | If it appears that a name, portrait, or signature in a mark may identify a particular living individual but, in fact, the applicant devised the matter as fanciful, or believes it to be fanciful, the applicant may be requ |
| 1207 | 1207 Refusal on Basis of Likelihood of Confusion, Mistake, or Deception | 1207 Refusal on Basis of Likelihood of Confusion, Mistake, or Deception | 15 U.S.C. §1052 Extract No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (d) |
| 1207.01 | 1207.01 Likelihood of Confusion | 1207.01 Likelihood of Confusion | In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney’s conclusion that the applicant’s mark, as used on or in connection with the specified goods or se |
| 1207.01(a) | 1207.01(a) Relatedness of the Goods or Services | 1207.01(a) Relatedness of the Goods or Services | In assessing the relatedness of the goods or services, the more similar the marks at issue, the less similar the goods or services need to be to support a finding of likelihood of confusion. In re Shell Oil Co. , 992 F.2 |
| 1207.01(b) | 1207.01(b) Similarity of the Marks | 1207.01(b) Similarity of the Marks | Under In re E. I. du Pont de Nemours & Co. , 476 F.2d 1357, 1361 (C.C.P.A. 1973), the first factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connot |
| 1207.01(c) | 1207.01(c) Design Marks | 1207.01(c) Design Marks | When the marks at issue are both design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. E.g. , In re ATV Network Ltd. , 552 F.2d 925, 927 (C.C.P.A. 1977) ; In re Vienna Sau |
| 1207.01(d) | 1207.01(d) Miscellaneous Considerations | 1207.01(d) Miscellaneous Considerations | |
| 1207.02 | 1207.02 Marks That Are Likely to Deceive | 1207.02 Marks That Are Likely to Deceive | In addition to referring to a mark that so resembles another mark as to be likely to cause confusion or mistake, §2(d) refers to a mark being likely "to deceive." As a practical matter, this provision is rarely applied i |
| 1207.03 | 1207.03 Marks Previously Used in United States but Not Registered | 1207.03 Marks Previously Used in United States but Not Registered | As a basis for refusal, §2(d) refers not only to registered marks but also to "a mark or trade name previously used in the United States by another and not abandoned." Refusal on the basis of an unregistered mark or trad |
| 1207.04 | 1207.04 Concurrent Use Registration | 1207.04 Concurrent Use Registration | |
| 1207.04(a) | 1207.04(a) Concurrent Use – In General | 1207.04(a) Concurrent Use – In General | Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) , contains a proviso under which an eligible applicant may request issuance of a registration based on rights acquired by concurrent use of its mark, either with the |
| 1207.04(b) | 1207.04(b) Filing Basis of Application Seeking Concurrent Use Registration | 1207.04(b) Filing Basis of Application Seeking Concurrent Use Registration | Before seeking concurrent use, an applicant must assert use in commerce in its application and include in the application all the application requirements for a trademark, service mark, collective mark, or certification |
| 1207.04(c) | 1207.04(c) Criteria for Requesting Concurrent Use Registration | 1207.04(c) Criteria for Requesting Concurrent Use Registration | An applicant is eligible to request a registration subject to concurrent use if it meets one or more of the following criteria: (1) The concurrent use request is sought pursuant to a decree of a court of competent jurisd |
| 1207.04(d) | 1207.04(d) Requirements for All Concurrent Use Applications | 1207.04(d) Requirements for All Concurrent Use Applications | An application for registration as a lawful concurrent user is generally examined in the same manner as any other application for registration. 37 C.F.R. §2.99(a) . The examining attorney must examine the application to |
| 1207.04(e) | 1207.04(e) Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board | 1207.04(e) Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board | Ordinarily, the examining attorney should not require an applicant for concurrent use registration to submit evidence in support of its claim to concurrent rights. However, the examining attorney should refuse registrati |
| 1207.04(f) | 1207.04(f) Application for Concurrent Use Registration Pursuant to Court Decree | 1207.04(f) Application for Concurrent Use Registration Pursuant to Court Decree | The USPTO may issue a concurrent use registration pursuant to the final determination of a court of competent jurisdiction that more than one person is entitled to use the same or similar marks in commerce. 15 U.S.C. §10 |
| 1207.04(g) | 1207.04(g) Application for Concurrent Use Registration Based on Final Board Decision in Prior Concurrent Use Proceeding | 1207.04(g) Application for Concurrent Use Registration Based on Final Board Decision in Prior Concurrent Use Proceeding | A concurrent use registration may also be based on a final determination by the Trademark Trial and Appeal Board, in a prior concurrent use proceeding, that applicant is entitled to a concurrent use registration of its m |
| 1208 | 1208 Conflicting Marks in Pending Applications | 1208 Conflicting Marks in Pending Applications | 37 C.F.R. Conflicting marks. (a) Whenever an application is made for registration of a mark which so resembles another mark or marks pending registration as to be likely to cause confusion or mistake or to deceive, the m |
| 1208.01 | 1208.01 Priority for Publication or Issue Based on Effective Filing Date | 1208.01 Priority for Publication or Issue Based on Effective Filing Date | In ex parte examination, priority among conflicting pending applications is determined based on the effective filing dates of the applications, without regard to whether the dates of use in a later-filed application are |
| 1208.01(a) | 1208.01(a) What Constitutes Conflict Between Pending Applications | 1208.01(a) What Constitutes Conflict Between Pending Applications | Marks in applications filed by different parties are in conflict when the registration of one of the marks would be a bar to the registration of the other under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) . Therefore, |
| 1208.01(b) | 1208.01(b) What Constitutes Effective Filing Date | 1208.01(b) What Constitutes Effective Filing Date | The filing date of an application under §1 or §44 of the Trademark Act is the date when all the elements designated in 37 C.F.R. §2.21(a) are received at the USPTO. TMEP §201 . In an application under §66(a) of the Trade |
| 1208.01(c) | 1208.01(c) Change in Effective Filing Date During Examination | 1208.01(c) Change in Effective Filing Date During Examination | If the effective filing date in an application containing a conflicting mark changes, the examining attorney should review all the application(s) involved to determine which application has the earliest effective filing |
| 1208.01(d) | 1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival | 1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival | When an application listed as abandoned in the USPTO’s Trademark database is revived or reinstated ( see TMEP §§1712.01 , 1713 , and 1714 ), the examining attorney must conduct a new search to determine whether any later |
| 1208.02 | 1208.02 Conflicting Applications Examination Procedure | 1208.02 Conflicting Applications Examination Procedure | |
| 1208.02(a) | 1208.02(a) Examination of Application with Earliest Effective Filing Date | 1208.02(a) Examination of Application with Earliest Effective Filing Date | When the application with the earliest effective filing date is first reviewed for action, the examining attorney should approve the application for publication or for issuance of a registration on the Supplemental Regis |
| 1208.02(b) | 1208.02(b) Action on Later-Filed Application: Giving Notice of the Earlier Application or Applications | 1208.02(b) Action on Later-Filed Application: Giving Notice of the Earlier Application or Applications | If, when the later-filed conflicting application is first reviewed for action, it is not in condition for publication or issue, the examining attorney should, in addition to treating other matters, send with the Office a |
| 1208.02(c) | 1208.02(c) Suspension of Later-Filed Application | 1208.02(c) Suspension of Later-Filed Application | When the later-filed application is in condition for publication or issue except for the conflicting mark in an earlier-filed application, either because no action was necessary on the application as filed or because exa |
| 1208.02(d) | 1208.02(d) Action on Later-Filed Application upon Disposition of the Earlier Application or Applications | 1208.02(d) Action on Later-Filed Application upon Disposition of the Earlier Application or Applications | If all conflicting earlier-filed applications have either matured into registrations or become abandoned, and there are no other grounds for suspension, the examining attorney should remove the later-filed application fr |
| 1208.02(e) | 1208.02(e) Applicant’s Argument on Issues of Conflict | 1208.02(e) Applicant’s Argument on Issues of Conflict | If an applicant with a later-filed application files a request to remove the later-filed application from suspension ( see TMEP §716.03 ), arguing that there is no conflict in relation to the application with the earlier |
| 1208.02(f) | 1208.02(f) Conflicting Mark Mistakenly Published or Approved for Issuance on the Supplemental Register | 1208.02(f) Conflicting Mark Mistakenly Published or Approved for Issuance on the Supplemental Register | If a later-filed conflicting mark is mistakenly published for opposition, it may be necessary for the assigned examining attorney to obtain jurisdiction of the application to take appropriate action. See TMEP §§1504.03-1 |
| 1208.03 | 1208.03 Procedure Relating to Possibility of Interference | 1208.03 Procedure Relating to Possibility of Interference | Section 16 of the Trademark Act, 15 U.S.C. §1066 , states that, upon petition showing extraordinary circumstances, the Director may declare that an interference exists when application is made for the registration of a m |
| 1208.03(a) | 1208.03(a) Procedures on Request for Interference | 1208.03(a) Procedures on Request for Interference | The request for interference should be in a separate document in the form of a petition, and should be captioned as a petition. The petition fee indicated in 37 C.F.R. §2.6 should accompany the request. A petition to dec |
| 1208.03(b) | 1208.03(b) Decision on Request for Interference | 1208.03(b) Decision on Request for Interference | The Director will declare an interference only upon a showing of extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 15 U.S.C. §1066 . The availability of o |
| 1208.03(c) | 1208.03(c) Procedure When Interference Is to be Declared | 1208.03(c) Procedure When Interference Is to be Declared | If the Director grants a petition requesting an interference, the examining attorney must determine that each mark is registrable but for the interfering mark before the interference will be instituted. All marks must be |
| 1209 | 1209 Refusal on Basis of Descriptiveness | 1209 Refusal on Basis of Descriptiveness | 15 U.S.C. §1052 (Extract) No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e |
| 1209.01 | 1209.01 Distinctiveness/Descriptiveness Continuum | 1209.01 Distinctiveness/Descriptiveness Continuum | With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness |
| 1209.01(a) | 1209.01(a) Fanciful, Arbitrary, and Suggestive Marks | 1209.01(a) Fanciful, Arbitrary, and Suggestive Marks | Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) |
| 1209.01(b) | 1209.01(b) Merely Descriptive Marks | 1209.01(b) Merely Descriptive Marks | To be refused registration on the Principal Register under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1) , a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A m |
| 1209.01(c) | 1209.01(c) Generic Terms | 1209.01(c) Generic Terms | Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp. , 240 F.3d 1341, 1344 (Fed. Cir. 2001); In re |
| 1209.02 | 1209.02 Procedure for Descriptiveness and/or Genericness Refusal | 1209.02 Procedure for Descriptiveness and/or Genericness Refusal | The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co. , 225 USPQ 749, 750 (TTAB 1985). The examining a |
| 1209.02(a) | 1209.02(a) Descriptive Marks – Advisory Statement that Mark Appears to Be Generic | 1209.02(a) Descriptive Marks – Advisory Statement that Mark Appears to Be Generic | A designation that is merely descriptive must be refused registration under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1) . The examining attorney must not initially issue a refusal in an application for registrat |
| 1209.02(b) | 1209.02(b) Descriptive and Possibly Generic Marks – Assertion of §2(f) in Application | 1209.02(b) Descriptive and Possibly Generic Marks – Assertion of §2(f) in Application | If the applicant asserts acquired distinctiveness under §2(f) in the original application and the examining attorney determines that the applied-for mark is a generic name for the applicant’s goods or services, the exami |
| 1209.03 | 1209.03 Considerations Relevant to Determination of Descriptiveness or Genericness | 1209.03 Considerations Relevant to Determination of Descriptiveness or Genericness | The following sections discuss factors and situations that often arise during a determination of whether a mark is descriptive or generic. |
| 1209.03(a) | 1209.03(a) Third-Party Registrations | 1209.03(a) Third-Party Registrations | Third-party registrations are not conclusive on the question of descriptiveness or genericness. Each case must stand on its own merits, and a mark that is merely descriptive or generic does not become registrable simply |
| 1209.03(b) | 1209.03(b) Dictionary Listing | 1209.03(b) Dictionary Listing | The fact that a term is not found in a dictionary is not controlling on the question of registrability if the examining attorney can show that the term has a well understood and recognized meaning. See In re Hikari Sales |
| 1209.03(c) | 1209.03(c) First or Only User | 1209.03(c) First or Only User | The fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Nursecon, LLC , S |
| 1209.03(d) | 1209.03(d) Combined Terms | 1209.03(d) Combined Terms | When two or more descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression |
| 1209.03(e) | 1209.03(e) More than One Meaning | 1209.03(e) More than One Meaning | Descriptiveness must be determined in relation to the goods or services for which registration is sought. In re Omniome, Inc. , Ser. No. 87661190, 2019 TTAB LEXIS 414, at *30-31 (2019) (citing In re Bright-Crest, Ltd. , |
| 1209.03(f) | 1209.03(f) Picture or Illustration | 1209.03(f) Picture or Illustration | A visual representation that consists merely of an illustration of the goods, or of an article that is an important feature or characteristic of the goods or services, is merely descriptive under Trademark Act §2(e)(1), |
| 1209.03(g) | 1209.03(g) Doctrine of Foreign Equivalents | 1209.03(g) Doctrine of Foreign Equivalents | The doctrine of foreign equivalents is used “to ascertain if a non-English word mark is impermissibly generic or descriptive by translating the mark into English and then considering its genericness or descriptiveness.” |
| 1209.03(h) | 1209.03(h) Abbreviations, Acronyms, Initialisms | 1209.03(h) Abbreviations, Acronyms, Initialisms | Descriptive . As a general rule, an abbreviation, acronym, or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the abbreviation, acronym, or |
| 1209.03(i) | 1209.03(i) Intended Users | 1209.03(i) Intended Users | A term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of risk management services i |
| 1209.03(j) | 1209.03(j) Phonetic Equivalent | 1209.03(j) Phonetic Equivalent | A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. See In re Calphalon Corp. , 122 USPQ2d 1153, 1164 (TTAB 2017) (holding SHARPIN, the phonetic equivalent of "sharpen, |
| 1209.03(k) | 1209.03(k) Laudatory Terms | 1209.03(k) Laudatory Terms | Laudatory terms, those that attribute quality or excellence to goods or services, are merely descriptive under §2(e)(1). See Duopross Meditech Corp. v. Inviro Medical Devices, Ltd. , 695 F.3d 1247, 103 USPQ2d 1753, 1759 |
| 1209.03(l) | 1209.03(l) Telephone Numbers | 1209.03(l) Telephone Numbers | If an applicant applies to register a designation that consists of a merely descriptive term with numerals in the form of an alphanumeric telephone number (e.g., 800, 888, or 900 followed by a word), the examining attorn |
| 1209.03(m) | 1209.03(m) Domain Names | 1209.03(m) Domain Names | A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. Portions of the uniform resource locator (URL), includin |
| 1209.03(n) | 1209.03(n) “America” or “American” | 1209.03(n) “America” or “American” | If "AMERICA" or "AMERICAN" appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely descriptive as laudatory or even incapable. In re Boston Beer Co. L.P. , 19 |
| 1209.03(o) | 1209.03(o) “National,” “International,” “Global," and “Worldwide” | 1209.03(o) “National,” “International,” “Global," and “Worldwide” | The terms "NATIONAL" and "INTERNATIONAL" have been held to be merely descriptive of services that are nationwide or international in scope. See In re Chamber of Commerce of the U.S. , 675 F.3d 1297, 102 USPQ2d 1217 (Fed. |
| 1209.03(p) | 1209.03(p) Function or Purpose | 1209.03(p) Function or Purpose | Terms that identify the function or purpose of a product or service may be merely descriptive under 15 U.S.C. §1052(e)(1) or generic. See, e.g., In re Gould Paper Corp. , 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SC |
| 1209.03(q) | 1209.03(q) Provider of Goods or Services | 1209.03(q) Provider of Goods or Services | Terms that describe the provider of a product or service may also be merely descriptive under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1) , or generic of the goods or services. See, e.g., In re Wm. B. Coleman Co., 93 U |
| 1209.03(r) | 1209.03(r) Generic Goods Descriptive of Retail Store/Distributorship Services or Restaurant/Café Services | 1209.03(r) Generic Goods Descriptive of Retail Store/Distributorship Services or Restaurant/Café Services | Retail store and distributorship services A term that is generic for goods is descriptive of retail store services featuring those goods, even when the goods are not a significant item typically sold in the type of store |
| 1209.03(s) | 1209.03(s) Slogans | 1209.03(s) Slogans | Slogans that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable. See |
| 1209.03(t) | 1209.03(t) Repetition of Descriptive or Generic Term | 1209.03(t) Repetition of Descriptive or Generic Term | The mere repetition of a merely descriptive term does not negate the mere descriptiveness of the mark as a whole, unless the combination is such as to create a new and different commercial impression from that which is e |
| 1209.03(u) | 1209.03(u) Punctuation | 1209.03(u) Punctuation | The use of a common punctuation mark is not sufficient to negate the mere descriptiveness of a term. See Duopross Meditech Corp. v. Inviro Medical Devices, Ltd. , 695 F.3d 1247, 103 USPQ2d 1753, 1757-58 (Fed. Cir. 2012) |
| 1209.03(v) | 1209.03(v) Key Aspect or Subcategory of Goods or Services | 1209.03(v) Key Aspect or Subcategory of Goods or Services | A term may be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genus, such as a key product that characterizes a particular genus of retail services or |
| 1209.03(w) | 1209.03(w) Stylization | 1209.03(w) Stylization | Adding stylization to descriptive or generic wording does not render the resulting mark registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression |
| 1209.03(x) | 1209.03(x) Historical Figure Names and Fictional Character Names | 1209.03(x) Historical Figure Names and Fictional Character Names | The determination of whether a mark comprising the name of an historical figure or a fictional character serves as a source identifier or is merely descriptive turns on whether consumers link the mark to a particular com |
| 1209.03(y) | 1209.03(y) Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats | 1209.03(y) Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats | Some applications for marks used in connection with cheeses and processed meats may include geographic wording ("geo-significant wording") that does not indicate geographic origin, but otherwise may be a generic designat |
| 1209.04 | 1209.04 Deceptively Misdescriptive Marks | 1209.04 Deceptively Misdescriptive Marks | Two-part test . Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1) , also prohibits registration of designations that are deceptively misdescriptive of the goods or services to which they are applied. A mark is |
| 1210 | 1210 Refusal on Basis of Geographic Significance | 1210 Refusal on Basis of Geographic Significance | 15 U.S.C. §1052 (Extract) No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it– (a) Con |
| 1210.01 | 1210.01 Elements | 1210.01 Elements | |
| 1210.01(a) | 1210.01(a) Geographically Descriptive Marks – Test | 1210.01(a) Geographically Descriptive Marks – Test | To support a refusal to register a mark as primarily geographically descriptive under Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2) , the examining attorney must show that: (1) the primary significance of the mark |
| 1210.01(b) | 1210.01(b) Geographically Deceptively Misdescriptive Marks – Test | 1210.01(b) Geographically Deceptively Misdescriptive Marks – Test | To support a refusal to register a mark as primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3) , the examining attorney must show that: (1) the primary si |
| 1210.01(c) | 1210.01(c) Geographically Deceptive Marks – Test | 1210.01(c) Geographically Deceptive Marks – Test | As noted in TMEP §1210.05(a) , the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark Act is the same as the test for determining whether a mark is |
| 1210.02 | 1210.02 Primarily Geographic Significance | 1210.02 Primarily Geographic Significance | The significance of a mark is primarily geographic if it identifies a real and significant geographic location and the primary meaning of the mark is the geographic meaning. |
| 1210.02(a) | 1210.02(a) Geographic Locations | 1210.02(a) Geographic Locations | A geographic location may be any term identifying a country, city, state, continent, locality, region, area, or street. Region. A particular, identifiable region (e.g., "Midwest" or "Mid-Atlantic") is a geographic locati |
| 1210.02(b) | 1210.02(b) Primary Significance | 1210.02(b) Primary Significance | To support a refusal to register geographic matter, the Trademark Act requires that the mark be primarily geographic, that is, that its primary significance to the relevant consumers in the United States be that of a geo |
| 1210.02(c) | 1210.02(c) Geographic Terms Combined With Additional Matter | 1210.02(c) Geographic Terms Combined With Additional Matter | A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must determine the primary signi |
| 1210.03 | 1210.03 Geographic Origin of the Goods or Services | 1210.03 Geographic Origin of the Goods or Services | The question of whether a term is primarily geographically descriptive under §2(e)(2) of the Trademark Act, primarily geographically deceptively misdescriptive under §2(e)(3) of the Act, or geographically deceptive under |
| 1210.04 | 1210.04 Goods/Place or Services/Place Association | 1210.04 Goods/Place or Services/Place Association | Refusal of registration under Trademark Act §2(a), 2(e)(2), or 2(e)(3), 15 U.S.C. §1052(a), (e)(2), (e)(3), requires that there be a goods/place or services/place association such that the public is likely to believe tha |
| 1210.04(a) | 1210.04(a) Establishing Goods/Place Association | 1210.04(a) Establishing Goods/Place Association | To establish a goods/place association, it is not necessary to show that the place identified in the mark is well known or noted for the goods. In re Les Halles De Paris J.V. , 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541 ( |
| 1210.04(b) | 1210.04(b) Establishing Services/Place Association | 1210.04(b) Establishing Services/Place Association | It is more difficult, with respect to refusals under §§2(a) and 2(e)(3), to establish a services/place association than a goods/place association. The Court of Appeals for the Federal Circuit has provided the following g |
| 1210.04(c) | 1210.04(c) Obscure or Remote Geographic Marks | 1210.04(c) Obscure or Remote Geographic Marks | Geographic matter may be so obscure or remote that it would not be recognized as an indication of the geographic source of the goods or services. In such a case, the mark is treated as an arbitrary designation because it |
| 1210.04(d) | 1210.04(d) Arbitrary Use of Geographic Terms | 1210.04(d) Arbitrary Use of Geographic Terms | The name of a geographic location that has no significant relation to commercial activities or the production of the relevant goods or services, such as ALASKA for bananas, is treated as an arbitrary mark because it is u |
| 1210.05 | 1210.05 Geographically Deceptive Marks | 1210.05 Geographically Deceptive Marks | |
| 1210.05(a) | 1210.05(a) Basis for Refusal | 1210.05(a) Basis for Refusal | Past Practice. Prior to the amendment of the Trademark Act by the NAFTA Implementation Act, the test for determining whether a mark was primarily geographically deceptively misdescriptive under §2(e)(3) of the Trademark |
| 1210.05(b) | 1210.05(b) Elements of a §2(e)(3) Refusal | 1210.05(b) Elements of a §2(e)(3) Refusal | Accordingly, the elements of a refusal under Trademark Act §2(e)(3) are as follows: (1) The primary significance of the mark is a generally known geographic location; (2) The goods or services do not originate in the pla |
| 1210.05(c) | 1210.05(c) Determining Materiality | 1210.05(c) Determining Materiality | To establish that a geographic term is primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3) or deceptive under §2(a), it must be shown that the goods/place or services/place association made by |
| 1210.05(d) | 1210.05(d) Procedures for Issuing Geographically Deceptive Refusals | 1210.05(d) Procedures for Issuing Geographically Deceptive Refusals | Although the test for determining whether a mark is primarily geographically deceptively misdescriptive under §2(e)(3) is now the same as the test for determining whether a mark is deceptive under §2(a), the statutory pr |
| 1210.05(e) | 1210.05(e) Geographically Deceptive Matter: Case References | 1210.05(e) Geographically Deceptive Matter: Case References | In re Miracle Tuesday LLC , 695 F.3d 1339, 104 USPQ2d 1330 (Fed. Cir. 2012) (affirming the TTAB’s refusal to register JPK PARIS 75 and design as primarily geographically deceptively misdescriptive for fashion accessories |
| 1210.06 | 1210.06 Procedure for Examining Geographic Composite Marks | 1210.06 Procedure for Examining Geographic Composite Marks | A geographic composite mark is one composed of geographic matter coupled with additional matter (e.g., wording and/or a design element). When examining such a mark, the examining attorney must first determine the primary |
| 1210.06(a) | 1210.06(a) Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter | 1210.06(a) Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter | If a composite mark comprises a geographic term that is primarily geographically descriptive of the goods or services under §2(e)(2), and the mark as a whole would be likely to be perceived as indicating the geographic o |
| 1210.06(b) | 1210.06(b) Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter | 1210.06(b) Marks That Include Primarily Geographically Deceptively Misdescriptive and Deceptive Terms Combined With Additional Matter | Geographically deceptive and primarily geographically deceptively misdescriptive matter need not comprise the entire mark, or even the dominant portion of the mark, to form the basis for a refusal under §2(a) or §2(e)(3) |
| 1210.07 | 1210.07 Supplemental Register and §2(f) | 1210.07 Supplemental Register and §2(f) | |
| 1210.07(a) | 1210.07(a) Registrability of Geographic Terms on the Supplemental Register | 1210.07(a) Registrability of Geographic Terms on the Supplemental Register | Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Supplemental Register, if it is not barred by other section(s) |
| 1210.07(b) | 1210.07(b) Registrability of Geographic Terms under §2(f) | 1210.07(b) Registrability of Geographic Terms under §2(f) | Primarily Geographically Descriptive Marks. A term that is primarily geographically descriptive of the goods/services under §2(e)(2) may be registered on the Principal Register if it is shown to have acquired distinctive |
| 1210.08 | 1210.08 Geographical Indications Used on Wines and Spirits | 1210.08 Geographical Indications Used on Wines and Spirits | Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) , prohibits the registration of a designation that consists of or comprises "a geographical indication which, when used on or in connection with wines or spirits, ide |
| 1210.08(a) | 1210.08(a) Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place | 1210.08(a) Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place | In implementing the TRIPs Agreement through the Uruguay Round Agreements Act ("URAA"), Pub. L. No. 103-465, 108 Stat. 4809 (1994), Congress approved a Statement of Administrative Action ("SAA") which provides, in part, t |
| 1210.08(b) | 1210.08(b) Geographical Indications Used on Wines and Spirits That Originate in the Named Place | 1210.08(b) Geographical Indications Used on Wines and Spirits That Originate in the Named Place | If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, a |
| 1210.08(c) | 1210.08(c) Geographical Indications That Are Generic for Wines and Spirits | 1210.08(c) Geographical Indications That Are Generic for Wines and Spirits | When a geographic term or design in the mark is generic for a type of wine or spirit, the examining attorney must refuse registration under §2(e)(1) on the Principal Register or §23 on the Supplemental Register, as appro |
| 1210.09 | 1210.09 Geographic Certification Marks | 1210.09 Geographic Certification Marks | Under certain circumstances, the name of the place from which goods or services originate may function as a certification mark. When geographic terms are used to certify regional origin (e.g., "Idaho" used to certify tha |
| 1210.10 | 1210.10 Doctrine of Foreign Equivalents - Geographic Significance | 1210.10 Doctrine of Foreign Equivalents - Geographic Significance | Under the doctrine of foreign equivalents, non-English wording used as a mark is translated into English and then assessed to determine registrability, including for geographic descriptiveness and misdescriptiveness. See |
| 1211 | 1211 Refusal on Basis of Surname | 1211 Refusal on Basis of Surname | 15 U.S.C. §1052 (Extract) No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e |
| 1211.01 | 1211.01 “Primarily Merely a Surname” | 1211.01 “Primarily Merely a Surname” | The test for determining whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public. Earnhardt v. Kerry Earnhardt, Inc. , 864 F.3d 1374, 1377, 123 USP |
| 1211.01(a) | 1211.01(a) Non-Surname Significance | 1211.01(a) Non-Surname Significance | Often a word will have a meaning or significance in addition to its significance as a surname. The examining attorney must determine the primary meaning of the term to the public. Evidence that a term has no recognized m |
| 1211.01(b) | 1211.01(b) Surname Combined with Additional Matter | 1211.01(b) Surname Combined with Additional Matter | Often a mark will be comprised of a word that, standing by itself, would be primarily merely a surname, coupled with additional matter (e.g., letters, words, or designs). The question remains whether the mark sought to b |
| 1211.02 | 1211.02 Evidence Relating to Surname Refusal | 1211.02 Evidence Relating to Surname Refusal | |
| 1211.02(a) | 1211.02(a) Evidentiary Burden – Generally | 1211.02(a) Evidentiary Burden – Generally | The burden is initially on the examining attorney to establish a prima facie case that a mark is primarily merely a surname. In re J.J. Yeley , 85 USPQ2d 1150, 1151 (TTAB 2007) (citing In re Etablissements Darty et Fils |
| 1211.02(b) | 1211.02(b) Evidentiary Considerations | 1211.02(b) Evidentiary Considerations | In appropriate cases, the examining attorney may present evidence that may appear contrary to their position, with an appropriate explanation as to why, in view of other evidence presented, this evidence was not consider |
| 1212 | 1212 Acquired Distinctiveness or Secondary Meaning | 1212 Acquired Distinctiveness or Secondary Meaning | 15 U.S.C. §1052(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distin |
| 1212.01 | 1212.01 General Evidentiary Matters | 1212.01 General Evidentiary Matters | Whether acquired distinctiveness has been established is a question of fact. Schlafly v. St. Louis Brewery, LLC , 909 F.3d 420, 423 (Fed. Cir. 2018) (citing In re La. Fish Fry Prods., Ltd. , 797 F.3d 1332, 1335 (Fed. Cir |
| 1212.02 | 1212.02 General Procedural Matters | 1212.02 General Procedural Matters | |
| 1212.02(a) | 1212.02(a) Situations in Which a Claim of Distinctiveness Under §2(f) Is Appropriate | 1212.02(a) Situations in Which a Claim of Distinctiveness Under §2(f) Is Appropriate | A claim of distinctiveness by the applicant under §2(f) is usually made either in response to a statutory refusal to register or in anticipation of such a refusal. See TMEP §714.05(a)(i) . A claim of distinctiveness is a |
| 1212.02(b) | 1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive | 1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive | For procedural purposes, a claim of distinctiveness under Trademark Act §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as a concession that the matter to which it pertains |
| 1212.02(c) | 1212.02(c) Claiming §2(f) Distinctiveness in the Alternative | 1212.02(c) Claiming §2(f) Distinctiveness in the Alternative | An applicant may argue the merits of an examining attorney’s refusal and, in the alternative, claim that the matter sought to be registered has acquired distinctiveness under §2(f). Unlike the situation in which an appli |
| 1212.02(d) | 1212.02(d) Unnecessary §2(f) Claims | 1212.02(d) Unnecessary §2(f) Claims | If the applicant specifically requests registration under §2(f), but the examining attorney considers the entire mark to be inherently distinctive and the claim of acquired distinctiveness to be unnecessary, the examinin |
| 1212.02(e) | 1212.02(e) Disclaimers in Applications Claiming Distinctiveness under §2(f) | 1212.02(e) Disclaimers in Applications Claiming Distinctiveness under §2(f) | Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a) , states, in part, "The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." See In re Creative Goldsmiths of W |
| 1212.02(f) | 1212.02(f) Section 2(f) Claim in Part | 1212.02(f) Section 2(f) Claim in Part | |
| 1212.02(g) | 1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or Appropriate Kind/Amount of Evidence | 1212.02(g) Examining Attorney’s Role in Suggesting §2(f) or Appropriate Kind/Amount of Evidence | In a first action refusing registration, the examining attorney should suggest, where appropriate, that the applicant amend its application to seek registration under §2(f). For example, this should be done as a matter o |
| 1212.02(h) | 1212.02(h) Nonfinal and Final Refusals | 1212.02(h) Nonfinal and Final Refusals | If an application is filed under §2(f) of the Trademark Act and the examining attorney determines that (1) the mark is not inherently distinctive, and (2) the applicant’s evidence of secondary meaning is insufficient to |
| 1212.02(i) | 1212.02(i) Section 2(f) Claim with Respect to Incapable Matter | 1212.02(i) Section 2(f) Claim with Respect to Incapable Matter | If matter is generic, functional, or purely ornamental, or otherwise fails to function as a mark, the matter is unregistrable. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed |
| 1212.02(j) | 1212.02(j) Section 2(f) Claim Restricted to Particular Goods/Services/Classes | 1212.02(j) Section 2(f) Claim Restricted to Particular Goods/Services/Classes | An applicant may claim acquired distinctiveness as to certain classes in a multiple-class application, or as to only a portion of the goods/services within a single class. The applicant must clearly identify the goods/se |
| 1212.03 | 1212.03 Three Types of Evidence of Distinctiveness under §2(f) | 1212.03 Three Types of Evidence of Distinctiveness under §2(f) | 37 C.F.R. Proof of distinctiveness under section 2(f). (a) For a trademark or service mark. (1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Princip |
| 1212.04 | 1212.04 Prior Registrations as Proof of Distinctiveness | 1212.04 Prior Registrations as Proof of Distinctiveness | Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1) , provides that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more active prior registration |
| 1212.04(a) | 1212.04(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark | 1212.04(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark | The examining attorney has the discretion to determine whether the nature of the mark sought to be registered is such that a claim of ownership of an active prior registration on the Principal Register for sufficiently s |
| 1212.04(b) | 1212.04(b) “Same Mark” | 1212.04(b) “Same Mark” | A proposed mark is the "same mark" as a previously registered mark for the purpose of 37 C.F.R. §2.41(a)(1) if it is the "legal equivalent" of such a mark. "A mark is the legal equivalent of another if it creates the sam |
| 1212.04(c) | 1212.04(c) Goods or Services Must be “Sufficiently Similar” | 1212.04(c) Goods or Services Must be “Sufficiently Similar” | The examining attorney must determine whether the goods or services identified in the application are "sufficiently similar" to the goods or services identified in the active prior registration(s) on the Principal Regist |
| 1212.04(d) | 1212.04(d) Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905 | 1212.04(d) Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905 | Trademark Rule 2.41(a)(1), 37 C.F.R. §2.41(a)(1) , states that ownership of an active prior registration "on the Principal Register or under the Act of 1905" may be accepted as prima facie evidence of distinctiveness. Th |
| 1212.04(e) | 1212.04(e) Form of §2(f) Claim Based on Ownership of Prior Registrations | 1212.04(e) Form of §2(f) Claim Based on Ownership of Prior Registrations | The following language may be used to claim distinctiveness under §2(f) for a trademark or service mark on the basis of ownership of one or more prior registrations: The mark has become distinctive of the goods and/or se |
| 1212.05 | 1212.05 Five Years of Use as Proof of Distinctiveness | 1212.05 Five Years of Use as Proof of Distinctiveness | Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f) , provides that "proof of substantially exclusive and continuous use" of a designation "as a mark by the applicant in commerce for the five years before the date on w |
| 1212.05(a) | 1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark | 1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark | For most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness. For marks refused under §2(e)(1) or §2(e)(2), the amount of evidence necessary to establish secondary meaning |
| 1212.05(b) | 1212.05(b) “Substantially Exclusive and Continuous” | 1212.05(b) “Substantially Exclusive and Continuous” | The five years of use in commerce does not have to be exclusive, but must be "substantially" exclusive. 15 U.S.C. §1052(f) ; 37 C.F.R. §2.41(a)(2) . This makes allowance for use by others that may be inconsequential or i |
| 1212.05(c) | 1212.05(c) Use “as a Mark” | 1212.05(c) Use “as a Mark” | The substantially exclusive and continuous use must be "as a mark." 15 U.S.C. §1052(f) ; see In re Craigmyle , 224 USPQ 791, 793 (TTAB 1984) (finding registrability under §2(f) not established by sales over a long period |
| 1212.05(d) | 1212.05(d) Form of the Proof of Five Years’ Use | 1212.05(d) Form of the Proof of Five Years’ Use | If the applicant chooses to seek registration under §2(f), 15 U.S.C. §1052(f) , by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness. |
| 1212.06 | 1212.06 Establishing Distinctiveness by Actual Evidence | 1212.06 Establishing Distinctiveness by Actual Evidence | Under Trademark Rule 2.41(a)(3), 37 C.F.R. §2.41(a)(3) , an applicant may submit affidavits, declarations under 37 C.F.R. §2.20 , depositions, or other appropriate evidence showing the duration, extent, and nature of the |
| 1212.06(a) | 1212.06(a) Long Use of the Mark in Commerce | 1212.06(a) Long Use of the Mark in Commerce | Long-term use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness. See , e.g. , In re La. Fish Fry Prods., Ltd. , 797 F.3d 1332, 1336-37 (Fed. Cir. 2015) |
| 1212.06(b) | 1212.06(b) Advertising Expenditures | 1212.06(b) Advertising Expenditures | Large-scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used. However, proof of an expensive and successful adverti |
| 1212.06(c) | 1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator | 1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator | Affidavits or declarations that assert recognition of the mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the affidavits or declarations depends on the statements m |
| 1212.06(d) | 1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies | 1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies | Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness. See In re Hikari Sales USA, Inc. , 2019 USPQ2d 111514, at *14-15 (TTAB 2019) (citing Schlafly v. St. |
| 1212.06(e) | 1212.06(e) Miscellaneous Considerations Regarding Evidence Submitted to Establish Distinctiveness | 1212.06(e) Miscellaneous Considerations Regarding Evidence Submitted to Establish Distinctiveness | |
| 1212.07 | 1212.07 Form of Application Asserting Distinctiveness | 1212.07 Form of Application Asserting Distinctiveness | To base a registration on acquired distinctiveness under §2(f), 15 U.S.C. §1052(f) , an applicant must indicate its intent to do so. The indication of the applicant’s intent to rely on §2(f) can take a variety of forms, |
| 1212.08 | 1212.08 Section 44 and §66(a) Applications and Distinctiveness | 1212.08 Section 44 and §66(a) Applications and Distinctiveness | In applications based on §44(d), §44(e), or §66(a) of the Trademark Act, 15 U.S.C. §1126(d) , §1126(e) , §1141f(a) , registration may be sought under §2(f) as to the entire mark upon showing that the mark has acquired di |
| 1212.09 | 1212.09 Section 1(b) Applications and Distinctiveness | 1212.09 Section 1(b) Applications and Distinctiveness | |
| 1212.09(a) | 1212.09(a) Section 2(f) Claim Requires Prior Use | 1212.09(a) Section 2(f) Claim Requires Prior Use | Section 2(f), 15 U.S.C. §1052(f) , is limited by its terms to "a mark used by the applicant." A claim of distinctiveness under §2(f) is normally not filed in a §1(b) application before the applicant files an allegation o |
| 1212.09(b) | 1212.09(b) Claim of §2(f) “in Part” in §1(b) Applications | 1212.09(b) Claim of §2(f) “in Part” in §1(b) Applications | An intent-to-use applicant may assert a claim of acquired distinctiveness under §2(f) as to part of a mark prior to filing an acceptable allegation of use if the applicant has already used the relevant part of the mark i |
| 1212.10 | 1212.10 Printing §2(f) Notations, §2(f)-in-Part Notations, and Limitation Statements | 1212.10 Printing §2(f) Notations, §2(f)-in-Part Notations, and Limitation Statements | Currently, when a mark is registered under §2(f), the USPTO prints a "2(f)" notation in the Official Gazette and on the certificate of registration. The examining attorney must ensure that the §2(f) claim has been entere |
| 1213 | 1213 Disclaimer of Elements in Marks | 1213 Disclaimer of Elements in Marks | 15 U.S.C. §1056 Disclaimers. (a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be reg |
| 1213.01 | 1213.01 History of Disclaimer Practice | 1213.01 History of Disclaimer Practice | There was no statutory authority for disclaimer prior to 1946. As various court decisions were rendered, USPTO practice fluctuated from, first, registering the composite mark without a qualifying statement; later, requir |
| 1213.01(a) | 1213.01(a) Discretion in Requiring Disclaimer | 1213.01(a) Discretion in Requiring Disclaimer | When first incorporated in the Trademark Act in 1946, §6 stated that the Director shall require unregistrable matter to be disclaimed. Under the impetus of the mandatory word "shall," it became customary to require a dis |
| 1213.01(b) | 1213.01(b) Refusal to Register Because of Failure to Disclaim | 1213.01(b) Refusal to Register Because of Failure to Disclaim | Failure to comply with a requirement to disclaim was held to be a basis for refusal to register before the Act of 1946. See In re Am. Cyanamid & Chem. Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938) . Failure to comply w |
| 1213.01(c) | 1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter | 1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter | Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a) , was amended in 1962 to add the sentence, "An applicant may voluntarily disclaim a component of a mark sought to be registered." Disclaimers volunteered by applicant |
| 1213.01(d) | 1213.01(d) Disclaimer Offered in the Alternative | 1213.01(d) Disclaimer Offered in the Alternative | An applicant may argue the merits of an examining attorney’s requirement for a disclaimer and, in the alternative, consent to entry of the disclaimer. In such circumstances, submission of the disclaimer does not constitu |
| 1213.02 | 1213.02 “Composite” Marks | 1213.02 “Composite” Marks | A "composite" mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. An unreg |
| 1213.03 | 1213.03 Disclaimer of Unregistrable Components of Marks | 1213.03 Disclaimer of Unregistrable Components of Marks | |
| 1213.03(a) | 1213.03(a) “Unregistrable Components” in General | 1213.03(a) “Unregistrable Components” in General | Estate of P.D. Beckwith, Inc. v. Comm’r of Pats. , 252 U.S. 538 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter. Section 6 of the Act referred |
| 1213.03(b) | 1213.03(b) Generic Matter and Matter That Does Not Function as a Mark | 1213.03(b) Generic Matter and Matter That Does Not Function as a Mark | If a mark is comprised in part of matter that, as applied to the goods or services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including reg |
| 1213.03(c) | 1213.03(c) Pictorial Representations of Descriptive Matter | 1213.03(c) Pictorial Representations of Descriptive Matter | An accurate pictorial representation of descriptive matter is equivalent to the written expression and, therefore, must be disclaimed pursuant to the same rules applicable to merely descriptive wording. See Thistle Class |
| 1213.03(d) | 1213.03(d) Entity Designations | 1213.03(d) Entity Designations | Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) or the familial business structure of an entity (e.g., "& Sons" or "Bros.") must be di |
| 1213.04 | 1213.04 Trade Names | 1213.04 Trade Names | Unregistrable components of trade names or company names shall be disclaimed pursuant to the same rules that apply generally to trademarks. See In re Martin’s Famous Pastry Shoppe, Inc. , 221 USPQ 364 (TTAB 1984), aff’d |
| 1213.05 | 1213.05 Unitary Marks | 1213.05 Unitary Marks | A mark or portion of a mark is considered "unitary" when it creates a commercial impression separate and apart from any unregistrable component. The test for unitariness inquires whether the elements of a mark are so int |
| 1213.05(a) | 1213.05(a) Compound Word Marks | 1213.05(a) Compound Word Marks | A compound word mark is comprised of two or more distinct words (or words and syllables) that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, and PULSAIR). If a compound word mark consists of an unre |
| 1213.05(b) | 1213.05(b) Unitary Phrases | 1213.05(b) Unitary Phrases | A phrase is "a word or group of words forming a syntactic constituent with a single grammatical function." https://www.merriam-webster.com/dictionary/phrase (accessed November 11, 2024). Acting as a single idea or a synt |
| 1213.05(c) | 1213.05(c) Double Entendre | 1213.05(c) Double Entendre | A double entendre is a word or expression capable of more than one interpretation. For trademark purposes, a double entendre is an expression that has a double connotation or significance as applied to the goods or servi |
| 1213.05(d) | 1213.05(d) Incongruity | 1213.05(d) Incongruity | If two or more terms are combined in a mark to create an incongruity (e.g., URBAN SAFARI, MR. MICROWAVE, and DR. GRAMMAR), the mark is unitary and no disclaimer of nondistinctive individual elements is necessary. See TME |
| 1213.05(e) | 1213.05(e) Sound Patterns | 1213.05(e) Sound Patterns | Alliterative or repeated wording does not in itself make a mark unitary. In re Ginc UK Ltd. , 90 USPQ2d 1472, 1477 (TTAB 2007) (finding the rhyming quality of the words ZOGGS TOGGS "does not infuse TOGGS with any separat |
| 1213.05(f) | 1213.05(f) Display of Mark | 1213.05(f) Display of Mark | The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary. See , e.g. , In re Lego Juris A/S , 2022 |
| 1213.05(g) | 1213.05(g) Marks with Design Elements Replacing Letters | 1213.05(g) Marks with Design Elements Replacing Letters | Generally, when a design element replaces one or more letters (or a portion of a letter or letters) in a word that is merely descriptive, generic, or geographically descriptive, this combination of word and design elemen |
| 1213.05(h) | 1213.05(h) Unitary Marks: Case References | 1213.05(h) Unitary Marks: Case References | In the following cases, marks were considered unitary: B. Kuppenheimer & Co., v. Kayser-Roth Corp. , 326 F.2d 820, 822, 140 USPQ 262, 263 (C.C.P.A. 1964) (holding that KUPPENHEIMER and SUP-PANTS were combined so that the |
| 1213.06 | 1213.06 Entire Mark May Not Be Disclaimed | 1213.06 Entire Mark May Not Be Disclaimed | An entire mark may not be disclaimed. If a mark is not registrable as a whole, a disclaimer will not make it registrable. There must be something in the combination of elements in the mark, or something of sufficient sub |
| 1213.07 | 1213.07 Removal Rather Than Disclaimer | 1213.07 Removal Rather Than Disclaimer | When it is not clear that matter forms part of a mark, the examining attorney must consider whether it is appropriate for the applicant to amend the drawing of the mark to remove the matter, rather than to disclaim it. S |
| 1213.08 | 1213.08 Form of Disclaimers | 1213.08 Form of Disclaimers | |
| 1213.08(a) | 1213.08(a) Wording of Disclaimer | 1213.08(a) Wording of Disclaimer | |
| 1213.08(b) | 1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety | 1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety | Unregistrable matter must be disclaimed in its entirety. For example, when requiring a disclaimer of terms that form a grammatically or otherwise unitary expression (e.g., "SHOE FACTORY, INC."), the examining attorney mu |
| 1213.08(c) | 1213.08(c) Disclaimer of Misspelled Words | 1213.08(c) Disclaimer of Misspelled Words | Marks often comprise words that may be characterized as "misspelled." For example, marks may comprise terms that are "telescoped" ( see TMEP §1213.05(a)(i)) or terms that are phonetic equivalents of particular words but |
| 1213.08(d) | 1213.08(d) Disclaimer of Non-English Words | 1213.08(d) Disclaimer of Non-English Words | Non-English wording that comprises an unregistrable component of a mark is subject to disclaimer. See Bausch & Lomb Optical Co. v. Overseas Finance & Trading Co. , 112 USPQ 6, 8 (Comm’r Pats. 1956) (noting that "Kogaku," |
| 1213.09 | 1213.09 Mark of Another May Not Be Registered with Disclaimer | 1213.09 Mark of Another May Not Be Registered with Disclaimer | Normally, a mark that includes a mark registered by another person must be refused registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) , based on likelihood of confusion. A refusal of registration under §2( |
| 1213.10 | 1213.10 Disclaimer in Relation to Likelihood of Confusion | 1213.10 Disclaimer in Relation to Likelihood of Confusion | A disclaimer does not remove the disclaimed matter from the mark. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. See , e.g. , In re Charger Ventures |
| 1213.11 | 1213.11 Acquiring Rights in Disclaimed Matter | 1213.11 Acquiring Rights in Disclaimed Matter | In Estate of P.D. Beckwith, Inc. v. Comm’r of Pats. , 252 U.S. 538, 545 (1920), the United States Supreme Court stated, regarding registration of a mark with a disclaimer, that "the registrant would be precluded by his d |
| 1214 | 1214 “Phantom” Elements in Marks | 1214 “Phantom” Elements in Marks | In some applications, the applicant seeks to register a "phantom" element (i.e., a word, alpha-numeric designation, or other component that is subject to change) as part of a mark. The applicant represents the changeable |
| 1214.01 | 1214.01 Single Application May Seek Registration of Only One Mark | 1214.01 Single Application May Seek Registration of Only One Mark | If an application seeks registration of a mark with a significant changeable or "phantom" element, the examining attorney must consider whether the element encompasses so many potential combinations that the drawing woul |
| 1214.02 | 1214.02 Agreement of Mark on Drawing with Mark on Specimens or Foreign Registration | 1214.02 Agreement of Mark on Drawing with Mark on Specimens or Foreign Registration | The examining attorney must also consider whether the "phantom mark" is a substantially exact representation of the mark as used on the specimen in a use-based application, or the mark in the home country registration in |
| 1214.03 | 1214.03 “Phantom Marks” in §1(b) Applications | 1214.03 “Phantom Marks” in §1(b) Applications | In an intent-to-use application for which no allegation of use has been filed, it may be unclear whether the applicant is seeking registration of a mark with a changeable element. In that case, the examining attorney sho |
| 1214.04 | 1214.04 “Phantom Marks” in §44 and §66(a) Applications | 1214.04 “Phantom Marks” in §44 and §66(a) Applications | The "phantom mark" refusal may be issued in applications under §§44 and 66(a) as well as §1 of the Trademark Act. [top] |
| 1215 | 1215 Marks Composed, in Whole or in Part, of Domain Names | 1215 Marks Composed, in Whole or in Part, of Domain Names | |
| 1215.01 | 1215.01 Background | 1215.01 Background | A domain name is part of a Uniform Resource Locator ("URL"), which is the address of a site or document on the Internet. A domain name is usually preceded in a URL by "http://www." The "http://" refers to the protocol us |
| 1215.02 | 1215.02 Use as a Mark | 1215.02 Use as a Mark | Generally, when a trademark, service mark, collective mark, or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL ("http://www.") nor the gTLD has any source-indicatin |
| 1215.02(a) | 1215.02(a) Use Applications | 1215.02(a) Use Applications | A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark, as depicted on the specimen, must be presented in a manner that will be perceived by p |
| 1215.02(b) | 1215.02(b) Advertising One’s Own Products or Services on the Internet is not a Service | 1215.02(b) Advertising One’s Own Products or Services on the Internet is not a Service | Advertising one’s own products or services is not a "service" under the Trademark Act. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970). See TMEP §§1301.01(a)(ii) and 1301.01(b)(i) . Therefore, businesses that crea |
| 1215.02(c) | 1215.02(c) Agreement of Mark on Drawing with Mark on Specimens of Use | 1215.02(c) Agreement of Mark on Drawing with Mark on Specimens of Use | In viewing a domain name mark (e.g., ABC.COM or HTTP://WWW.ABC.COM), consumers generally look to the second-level domain name for source identification, not to the generic top-level domain (gTLD) or the terms "http://www |
| 1215.02(d) | 1215.02(d) Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services | 1215.02(d) Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services | Background . A "registry operator" maintains the master database of all domain names registered in each top-level domain (TLD), and also generates the "zone file," which allows computers to route Internet traffic to and |
| 1215.02(e) | 1215.02(e) Section 1(b) Applications | 1215.02(e) Section 1(b) Applications | A refusal of registration on the ground that the matter presented for registration does not function as a mark relates to the manner in which the asserted mark is used. Generally, in an intent-to-use application filed un |
| 1215.02(f) | 1215.02(f) Section 44 and §66(a) Applications | 1215.02(f) Section 44 and §66(a) Applications | If the record indicates that the proposed mark would be perceived as merely an informational indication of the domain name address used to access a website rather than an indicator of source, the examining attorney must |
| 1215.03 | 1215.03 Surnames | 1215.03 Surnames | If a mark is composed of a surname and a non-source-identifying gTLD, the examining attorney must refuse registration because the mark is primarily merely a surname under Trademark Act §2(e)(4), 15 U.S.C. §1052(e)(4) , a |
| 1215.04 | 1215.04 Descriptiveness | 1215.04 Descriptiveness | If a proposed mark is composed of a merely descriptive term(s) combined with a non-source-identifying gTLD, in general, the examining attorney must refuse registration under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1) |
| 1215.05 | 1215.05 Generic Refusals | 1215.05 Generic Refusals | There is no per se rule that the addition of a generic term to a generic top-level domain (gTLD) (i.e., a "generic.com" term) can never under any circumstances operate to create a registrable mark. USPTO v. Booking.com B |
| 1215.05(a) | 1215.05(a) Genericness Analysis and Relevant Evidence | 1215.05(a) Genericness Analysis and Relevant Evidence | Although the Court in Booking.com rejected a per se rule that generic.com terms are automatically generic, it specifically declined to adopt a rule that these terms are automatically non-generic. See USPTO v. Booking.com |
| 1215.05(b) | 1215.05(b) Procedures for Refusals | 1215.05(b) Procedures for Refusals | Consistent with existing examination procedures, the examining attorney must not initially refuse registration of a generic.com term on the Principal Register as generic, even if there is strong evidence of genericness. |
| 1215.05(c) | 1215.05(c) Generic.com Terms Combined with Other Matter | 1215.05(c) Generic.com Terms Combined with Other Matter | Examining attorneys must follow existing disclaimer policy and procedure when examining proposed marks containing generic.com terms and other matter. See generally TMEP §§1213-1213.11 . If the examining attorney determin |
| 1215.05(d) | 1215.05(d) Failure to Function | 1215.05(d) Failure to Function | Examining attorneys must also consider whether the specimen of use shows the generic.com term being used solely as a website address and not in a trademark or service mark manner. If so, a refusal on the ground that the |
| 1215.05(e) | 1215.05(e) Section 2(d) Considerations | 1215.05(e) Section 2(d) Considerations | In Booking.com , the Supreme Court recognized that registered generic.com terms may be subject to a narrower scope of trademark protection, noting that "[w]hen a mark incorporates generic or highly descriptive components |
| 1215.06 | 1215.06 Marks Containing Geographical Matter | 1215.06 Marks Containing Geographical Matter | The examining attorney should examine marks containing geographic matter along with a gTLD in the same manner that any mark containing geographic matter is examined. See generally TMEP §§1210–1210.10 . Depending on the m |
| 1215.07 | 1215.07 Disclaimers | 1215.07 Disclaimers | Trademark Act §6(a), 15 U.S.C. §1056(a) , provides for the disclaimer of "an unregistrable component of a mark otherwise registrable." The guidelines on disclaimer discussed in TMEP §§1213–1213.11 apply to domain name ma |
| 1215.08 | 1215.08 Material Alteration | 1215.08 Material Alteration | Amendments may not be made to the drawing of the mark if the character of the mark is materially altered. 37 C.F.R. §2.72 . In determining whether an amendment is a material alteration, the controlling question is always |
| 1215.08(a) | 1215.08(a) Adding or Deleting TLDs in Domain Name Marks | 1215.08(a) Adding or Deleting TLDs in Domain Name Marks | Generally, an applicant may add or delete a non-source-identifying gTLD to/from the drawing of a domain name mark (e.g., COOPER amended to COOPER.COM, or COOPER.COM amended to COOPER) that includes an inherently distinct |
| 1215.08(b) | 1215.08(b) Adding or Deleting gTLDs in Other Marks | 1215.08(b) Adding or Deleting gTLDs in Other Marks | If a mark that is not used as an Internet domain name includes a gTLD, adding or deleting the gTLD may be a material alteration. Example : Deleting the term .COM from the mark ".COM ☼" used on printed sports magazines wo |
| 1215.08(c) | 1215.08(c) Adding or Deleting “.” in Marks for Domain Registry Operator or Domain Name Registrar Services | 1215.08(c) Adding or Deleting “.” in Marks for Domain Registry Operator or Domain Name Registrar Services | When used in connection with domain registry operator or domain name registrar services, wording immediately preceded by a dot (".") will likely be viewed by consumers as a gTLD. On the other hand, the same wording, used |
| 1215.09 | 1215.09 Likelihood of Confusion | 1215.09 Likelihood of Confusion | When analyzing whether a domain name mark is likely to cause confusion with another pending or registered mark, the examining attorney must consider the marks as a whole, but generally should accord little weight to a no |
| 1215.10 | 1215.10 Marks Containing the Phonetic Equivalent of a Generic Top-Level Domain | 1215.10 Marks Containing the Phonetic Equivalent of a Generic Top-Level Domain | Marks that contain the phonetic equivalent of a non-source-identifying gTLD (e.g., ABC DOTCOM) are treated in the same manner as marks composed of the gTLD itself. If a disclaimer is necessary, the disclaimer must be in |
| 1216 | 1216 Effect of Applicant’s Prior Registrations | 1216 Effect of Applicant’s Prior Registrations | |
| 1216.01 | 1216.01 Decisions Involving Prior Registrations Not Controlling | 1216.01 Decisions Involving Prior Registrations Not Controlling | Trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence of record that exist at the time registration is sought. In re Morton-Norwich Prods., Inc. , 671 |
| 1216.02 | 1216.02 Effect of “Incontestability” in Ex Parte Examination | 1216.02 Effect of “Incontestability” in Ex Parte Examination | Section 15 of the Trademark Act, 15 U.S.C. §1065 , provides a procedure by which a registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can bec |
| 1217 | 1217 Res Judicata, Collateral Estoppel, and Stare Decisis | 1217 Res Judicata, Collateral Estoppel, and Stare Decisis | A prior adjudication against an applicant may be dispositive of a later application for registration of the same mark on the basis of the same facts and issues, under the doctrine of res judicata, collateral estoppel, or |
| 1301 | 1301 Service Marks | 1301 Service Marks | Section 45 of the Trademark Act, 15 U.S.C. §1127 , defines “service mark” as follows: The term “service mark” means any word, name, symbol, or device, or any combination thereof-- (1) used by a person, or (2) which a per |
| 1301.01 | 1301.01 What Is a Service? | 1301.01 What Is a Service? | A service mark can only be registered for activities that constitute services as contemplated by the Trademark Act. 15 U.S.C. §§1051 - 1053 , 1127 . The Trademark Act defines the term “service mark,” but it does not defi |
| 1301.01(a) | 1301.01(a) Criteria for Determining What Constitutes a Service | 1301.01(a) Criteria for Determining What Constitutes a Service | The following criteria have evolved for determining what constitutes a service: "(1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the appli |
| 1301.01(b) | 1301.01(b) Whether Particular Activities Constitute “Services” | 1301.01(b) Whether Particular Activities Constitute “Services” | |
| 1301.02 | 1301.02 What Is a Service Mark? | 1301.02 What Is a Service Mark? | Not every word, combination of words, or other designation used in the performance or advertising of services performs a service mark function. See In re The Ride, LLC , 2020 USPQ2d 39644, at *6 (TTAB 2020) (quoting Am. |
| 1301.02(a) | 1301.02(a) Matter that Does Not Function as a Service Mark | 1301.02(a) Matter that Does Not Function as a Service Mark | To function as a service mark, a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application. See In re Keep A Breast |
| 1301.02(b) | 1301.02(b) Names of Characters or Personal Names as Service Marks | 1301.02(b) Names of Characters or Personal Names as Service Marks | Under 15 U.S.C. §1127 , a name or design of a character does not function as a service mark, unless it identifies and distinguishes services in addition to identifying the character. If the name or design is used only to |
| 1301.02(c) | 1301.02(c) Three-Dimensional Trade Dress Service Marks | 1301.02(c) Three-Dimensional Trade Dress Service Marks | The three-dimensional trade dress configuration of a building is registrable as a service mark only if it is used in such a way that it is or could be perceived as a mark. See In re Seminole Tribe of Fla. , 2023 USPQ2d 6 |
| 1301.02(d) | 1301.02(d) Titles of Radio and Television Programs | 1301.02(d) Titles of Radio and Television Programs | The title of a continuing series of presentations (e.g., a television or movie “series,” a series of live performances, or a continuing radio program), may constitute a mark for either entertainment services or education |
| 1301.02(e) | 1301.02(e) Process, System, or Method | 1301.02(e) Process, System, or Method | A term that only identifies a process, style, method, system, or the like is not registrable as a service mark. A system or process is only a way of doing something, not a service. The name of a system or process does no |
| 1301.02(f) | 1301.02(f) Computer Software | 1301.02(f) Computer Software | A term that only identifies a computer program does not become a service mark for a separate service activity, unless it is also used to identify and distinguish the service. In re Walker Research, Inc. , 228 USPQ 691 (T |
| 1301.03 | 1301.03 Use of Service Mark in Commerce | 1301.03 Use of Service Mark in Commerce | |
| 1301.03(a) | 1301.03(a) Use of Service Mark in Advertising to Identify Services | 1301.03(a) Use of Service Mark in Advertising to Identify Services | In examining an application under 15 U.S.C. §1051(a) , an amendment to allege use under 15 U.S.C. §1051(c) , or a statement of use under 15 U.S.C. §1051(d) , the examining attorney ordinarily must refuse registration if |
| 1301.03(b) | 1301.03(b) Rendering of Service in Commerce Regulable by Congress | 1301.03(b) Rendering of Service in Commerce Regulable by Congress | In an application under §1(a) or §1(b) of the Trademark Act, 15 U.S.C. §1051(a) or §1051(b) , the applicant must use the mark in the rendering of the services in commerce before a registration may be granted. Couture v. |
| 1301.04 | 1301.04 Specimens of Use for Service Marks | 1301.04 Specimens of Use for Service Marks | 37 C.F.R. (a) An application under section 1(a) of the Act, an amendment to allege use under §2.76, a statement of use under §2.88, an affidavit or declaration of continued use or excusable nonuse under §2.160, or an aff |
| 1301.04(a) | 1301.04(a) Whether the Specimen Shows the Mark as Actually Used in Commerce by the Applicant in the Sale or Advertising of the Services | 1301.04(a) Whether the Specimen Shows the Mark as Actually Used in Commerce by the Applicant in the Sale or Advertising of the Services | The specimen must show the mark as actually used by the applicant in the sale or advertising of the services. 37 C.F.R. §2.56(b)(2) . Acceptable specimens include newspaper and magazine advertisements, brochures, billboa |
| 1301.04(b) | 1301.04(b) Whether the Identified Services Are Registrable Services | 1301.04(b) Whether the Identified Services Are Registrable Services | A service-mark specimen must show the mark used or displayed in connection with a registrable service offered for the benefit of others. For information regarding activities that constitute registrable services, see TMEP |
| 1301.04(c) | 1301.04(c) Whether the Specimen Shows Use in Connection with All Classes in a Multiple-Class Application | 1301.04(c) Whether the Specimen Shows Use in Connection with All Classes in a Multiple-Class Application | The same specimen may be acceptable for multiple classes if the specimen shows direct association between the mark and at least one of the identified services in each class. See 37 C.F.R. §2.56(b)(2) ; TMEP §1301.04(f)(i |
| 1301.04(d) | 1301.04(d) Whether the Mark Is Used in Connection With the Identified Services | 1301.04(d) Whether the Mark Is Used in Connection With the Identified Services | The specimen must demonstrate the mark serving as a source indicator for the identified services. Therefore, registration must be refused if the specimen shows the mark is used only to promote goods rather than the ident |
| 1301.04(e) | 1301.04(e) Whether the Mark Functions as a Service Mark | 1301.04(e) Whether the Mark Functions as a Service Mark | The proposed mark must actually function as a source-indicating service mark for the services identified in the application to be registrable. Thus, registration must be refused if, for example, the specimen shows the ma |
| 1301.04(f) | 1301.04(f) Elements of an Acceptable Service-Mark Specimen | 1301.04(f) Elements of an Acceptable Service-Mark Specimen | To be acceptable, a service-mark specimen must show the mark sought to be registered used in a manner that demonstrates a direct association between the mark and the services. 37 C.F.R. §2.56(b)(2) . Specimens need not e |
| 1301.04(g) | 1301.04(g) Grounds for Refusal | 1301.04(g) Grounds for Refusal | |
| 1301.04(h) | 1301.04(h) Considerations and Common Issues when Examining Certain Specimens | 1301.04(h) Considerations and Common Issues when Examining Certain Specimens | |
| 1301.04(i) | 1301.04(i) Examples of Acceptable Service-mark Specimens | 1301.04(i) Examples of Acceptable Service-mark Specimens | The following examples in this section would only be accepted by the USPTO if they included the required URL and date accessed or printed. See 37 C.F.R. §2.56(c) . Cloud-Computing Services EXAMPLE 1 Mark : CSC CLOUDLAB R |
| 1301.04(j) | 1301.04(j) Examples of Unacceptable Service-mark Specimens | 1301.04(j) Examples of Unacceptable Service-mark Specimens | EXAMPLE 20 Mark: IObit Services: Computer programming; Computer software design; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data, not physical conversion; |
| 1301.05 | 1301.05 Identification and Classification of Services | 1301.05 Identification and Classification of Services | See TMEP §§1402.11–1402.11(k) regarding identifications of services, and TMEP §1401 regarding classification. [top] |
| 1302 | 1302 Collective Marks Generally | 1302 Collective Marks Generally | Section 45 of the Trademark Act, 15 U.S.C. §1127 , defines “collective mark” as follows: The term “collective mark” means a trademark or service mark-- (1) used by the members of a cooperative, an association, or other c |
| 1302.01 | 1302.01 Brief History of Collective Marks | 1302.01 Brief History of Collective Marks | Under the Trademark Act of 1905, registration could be based only on a person’s own use of a mark. The Act did not permit for registration of collective and certification marks because such marks are generally used by a |
| 1303 | 1303 Collective Trademarks and Collective Service Marks Generally | 1303 Collective Trademarks and Collective Service Marks Generally | Although collective trademarks and collective service marks indicate the commercial origin of goods or services, they also indicate that the party providing the goods or services is a member of a certain group and meets |
| 1303.01 | 1303.01 Application Requirements for a Collective Trademark or Collective Service Mark | 1303.01 Application Requirements for a Collective Trademark or Collective Service Mark | Under 37 C.F.R. §2.44 , a complete application for a collective trademark or collective service mark must include the following: (1) the legal name and physical address of the applicant ( see TMEP §§803.02 , 803.05 ); (2 |
| 1303.01(a) | 1303.01(a) Filing Basis | 1303.01(a) Filing Basis | All applications for registration must include a filing basis, regardless of the type of mark, because this is the statutory basis for filing an application for registration of a mark in the United States. TMEP §806 . Th |
| 1303.01(b) | 1303.01(b) Verification of Certain Statements | 1303.01(b) Verification of Certain Statements | An application must include certain statements that are verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. See 15 U.S.C. §1051(a)(3) , (b)(3) ; 37 C.F.R. §§2.44(a)(4)(i)( |
| 1303.02 | 1303.02 Examination of Collective Trademark and Collective Service Mark Applications | 1303.02 Examination of Collective Trademark and Collective Service Mark Applications | The examination of applications to register collective trademarks and collective service marks is conducted in a manner similar to the examination of applications to register regular trademarks and service marks, using m |
| 1303.02(a) | 1303.02(a) Ownership Considerations | 1303.02(a) Ownership Considerations | Under the definition of “collective mark” in §45 of the Trademark Act, a collective mark must be owned by a collective entity. 15 U.S.C. §1127 . The use of a collective trademark or collective service mark is by members |
| 1303.02(b) | 1303.02(b) Likelihood of Confusion | 1303.02(b) Likelihood of Confusion | Likelihood of confusion may arise from the contemporaneous use, by one party, of a collective trademark or collective service mark on the one hand and a trademark or service mark on the other. The same standards used to |
| 1304 | 1304 Collective Membership Marks | 1304 Collective Membership Marks | |
| 1304.01 | 1304.01 Collective Membership Marks Generally | 1304.01 Collective Membership Marks Generally | The sole purpose of a collective membership mark is to indicate that the user of the mark is a member of a particular organization. See Constitution Party of Tex. v. Constitution Ass’n USA , 152 USPQ 443 (TTAB 1966) (hol |
| 1304.02 | 1304.02 Application Requirements for Collective Membership Marks | 1304.02 Application Requirements for Collective Membership Marks | Under 37 C.F.R. §2.44 , a complete application for a collective membership mark must include the following: (1) the legal name and physical address of the applicant ( see TMEP §§803.02 , 803.05 ); (2) the applicant’s leg |
| 1304.02(a) | 1304.02(a) Filing Basis | 1304.02(a) Filing Basis | See TMEP §1303.01(a) for information regarding an application filing basis for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks. For a list of the requi |
| 1304.02(b) | 1304.02(b) Verification of Certain Statements | 1304.02(b) Verification of Certain Statements | See TMEP §1303.01(b) for information about the verification of certain statements for a collective trademark or collective service mark. These requirements apply similarly to collective membership marks, except for the s |
| 1304.02(c) | 1304.02(c) Identification of Nature of Collective Membership Organization | 1304.02(c) Identification of Nature of Collective Membership Organization | The purpose of a collective membership mark is to indicate membership in an organization; therefore, an identification of goods or services would not be appropriate in connection with a collective membership mark. More a |
| 1304.02(d) | 1304.02(d) Classification | 1304.02(d) Classification | Section 1 and §44 Applications . In applications under §1 or §44 of the Trademark Act, collective membership marks are classified in U.S. Class 200. 37 C.F.R. §6.4 . U.S. Class 200 was established as a result of the deci |
| 1304.03 | 1304.03 Examination of Collective Membership Mark Applications | 1304.03 Examination of Collective Membership Mark Applications | An application to register a collective membership mark on the Principal Register must meet all the criteria for registration of other marks on the Principal Register. 15 U.S.C. §1054 ; see 37 C.F.R. §2.46 . Likewise, wh |
| 1304.03(a) | 1304.03(a) Ownership Considerations | 1304.03(a) Ownership Considerations | Under the definition of “collective mark” in §45 of the Trademark Act, 15 U.S.C. §1127 , only a “cooperative, an association or other collective group or organization” can become the owner of a collective mark. However, |
| 1304.03(b) | 1304.03(b) Specimen Refusals Specific to Collective Membership Marks | 1304.03(b) Specimen Refusals Specific to Collective Membership Marks | |
| 1304.03(c) | 1304.03(c) Likelihood of Confusion | 1304.03(c) Likelihood of Confusion | Likelihood of confusion may arise from the contemporaneous use, by one party, of a collective membership mark on the one hand and a trademark or service mark on the other. The same standards used to determine likelihood |
| 1304.03(d) | 1304.03(d) False Suggestion of a Connection | 1304.03(d) False Suggestion of a Connection | A collective membership mark may be refused under Trademark Act Section 2(a) where “matter … may … falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.” 15 U.S.C. §1052(a |
| 1305 | 1305 Trademarks and Service Marks Used by Collective Organizations | 1305 Trademarks and Service Marks Used by Collective Organizations | A collective organization may itself use trademarks and service marks to identify its goods and services, as opposed to collective trademarks and service marks or collective membership marks used by the collective’s memb |
| 1306 | 1306 Certification Marks | 1306 Certification Marks | |
| 1306.01 | 1306.01 Types of Certification Marks | 1306.01 Types of Certification Marks | Trademark Act §4, provides for the registration of “certification marks, including indications of regional origin,” which are defined in §45 as follows: The term “certification mark” means any word, name, symbol, or devi |
| 1306.01(a) | 1306.01(a) Use Is by Person Other than Owner of Certification Mark | 1306.01(a) Use Is by Person Other than Owner of Certification Mark | A certification mark may not be used, in the trademark sense of “used,” by the owner of the mark; it may be used only by a person or persons other than the owner of the mark. That is, the owner of a certification mark do |
| 1306.01(b) | 1306.01(b) Purpose Is to Certify, Not to Indicate Source | 1306.01(b) Purpose Is to Certify, Not to Indicate Source | A certification mark “is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark . . . .” In re Fla. Citrus Comm’n , 160 USPQ 495, 499 (TTAB 1968). That is, the purp |
| 1306.01(c) | 1306.01(c) Identifying Certification Mark Applications | 1306.01(c) Identifying Certification Mark Applications | If the applicant has used the appropriate application form, the application will clearly indicate that the mark is intended to be a certification mark and should include the required elements. For certification mark appl |
| 1306.02 | 1306.02 Application Requirements for a Certification Mark | 1306.02 Application Requirements for a Certification Mark | Under 37 C.F.R. §2.45 , a complete application for a certification mark must include the following: (1) the legal name and physical address of the applicant ( see TMEP §§803.02 , 803.05 ); (2) the applicant’s legal entit |
| 1306.02(a) | 1306.02(a) Filing Basis | 1306.02(a) Filing Basis | See TMEP §1303.01(a) for information regarding an application filing basis for a collective trademark or collective service mark. These requirements apply similarly to certification marks. For a list of the requirements |
| 1306.02(b) | 1306.02(b) Verification of Certain Statements | 1306.02(b) Verification of Certain Statements | An application must include certain statements that are verified by the applicant or by someone who is authorized to verify facts on behalf of an applicant. 15 U.S.C. §1051(a)(3) , (b)(3) ; 37 C.F.R. §§2.45(a)(4)(i)(F) , |
| 1306.02(c) | 1306.02(c) Identification of Goods and Services of the Authorized Users | 1306.02(c) Identification of Goods and Services of the Authorized Users | The identification of goods or services in a certification mark application must describe the goods and/or services of the party who will receive the certification, not the activities of the certifier/owner of the certif |
| 1306.02(d) | 1306.02(d) Classification | 1306.02(d) Classification | Section 1 and Section 44 Applications In applications to register certification marks, all goods are classified in U.S. Class A and all services are classified in U.S. Class B. 37 C.F.R. §6.3 . Both U.S. Classes A and B |
| 1306.03 | 1306.03 Special Elements of Certification Mark Applications | 1306.03 Special Elements of Certification Mark Applications | |
| 1306.03(a) | 1306.03(a) Certification Statement | 1306.03(a) Certification Statement | The application must contain a statement of the characteristic, standard, or other feature that is certified or intended to be certified by the mark, also known as the certification statement. The certification statement |
| 1306.03(b) | 1306.03(b) Certification Standards – Required for §1(a) Applications and Allegations of Use Only | 1306.03(b) Certification Standards – Required for §1(a) Applications and Allegations of Use Only | The applicant (certifier) must submit a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services. 37 C.F.R. §2.45(a)(4)(i)(B) . |
| 1306.03(c) | 1306.03(c) Statement that Applicant Is Not Engaged in (or Will not Engage in) Production or Marketing of the Goods/Services | 1306.03(c) Statement that Applicant Is Not Engaged in (or Will not Engage in) Production or Marketing of the Goods/Services | For applications based on §1(a) of the Act, the application must contain a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to adver |
| 1306.04 | 1306.04 Examination of Certification Mark Applications | 1306.04 Examination of Certification Mark Applications | Except where specified otherwise, the same procedures are used to determine the registrability of certification marks that are used for other types of marks. Thus, the standards generally applicable to trademarks and ser |
| 1306.04(a) | 1306.04(a) Compare the Mark on the Drawing to the Specimen for §1(a) | 1306.04(a) Compare the Mark on the Drawing to the Specimen for §1(a) | In evaluating the drawing, the same standards used in relation to trademark and service mark drawings apply to certification marks ( see TMEP §§807–807.18 ). For §1(a) applications, the examining attorney must refer to t |
| 1306.04(b) | 1306.04(b) Ownership | 1306.04(b) Ownership | The owner of a certification mark is the party responsible for the certification that is conveyed by the mark. The party who affixes the mark, with authorization of the certifier, does not own the mark; nor is the mark o |
| 1306.04(c) | 1306.04(c) Characteristics of Certification Marks – Specimen Shows Mark Functions as a Certification Mark | 1306.04(c) Characteristics of Certification Marks – Specimen Shows Mark Functions as a Certification Mark | The Trademark Act does not require that a certification mark be in any specific form or include any specific wording. A certification mark may be wording only, design only, or a combination of wording and design. In othe |
| 1306.04(d) | 1306.04(d) Specimen Refusals Specific to Certification Marks | 1306.04(d) Specimen Refusals Specific to Certification Marks | |
| 1306.04(e) | 1306.04(e) Relationship of §14 (Cancellation) | 1306.04(e) Relationship of §14 (Cancellation) | 15 U.S.C. §1064. Cancellation. (Extract) A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is |
| 1306.04(f) | 1306.04(f) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark | 1306.04(f) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark | A trademark or service mark is used by the owner of the mark on the owner's goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish b |
| 1306.05 | 1306.05 Geographic Certification Marks | 1306.05 Geographic Certification Marks | |
| 1306.05(a) | 1306.05(a) Geographic Certification Marks – Generally | 1306.05(a) Geographic Certification Marks – Generally | A geographic certification mark is a word, name, symbol, device, or some combination of these elements, used alone or as a portion of a composite mark, to certify that the goods or services originate in the geographical |
| 1306.05(b) | 1306.05(b) Additional Considerations in Geographic Certification Mark Applications | 1306.05(b) Additional Considerations in Geographic Certification Mark Applications | |
| 1306.05(c) | 1306.05(c) Mark Must Serve to Certify Geographic Origin | 1306.05(c) Mark Must Serve to Certify Geographic Origin | When reviewing an application for a geographic certification mark, the examining attorney must consider the specimen of record and any other available evidence to determine whether the relevant consumers understand the d |
| 1306.05(d) | 1306.05(d) Section 2(e)(2) Does Not Apply to Geographic Certification Marks | 1306.05(d) Section 2(e)(2) Does Not Apply to Geographic Certification Marks | Trademark Act §2(e)(2), 15 U.S.C. §1052(e)(2) , bars registration of primarily geographically descriptive marks, but specifically excludes from this prohibition those marks that serve as indications of regional origin. T |
| 1306.05(e) | 1306.05(e) Geographically Deceptive Marks Not Registrable as Geographic Certification Marks | 1306.05(e) Geographically Deceptive Marks Not Registrable as Geographic Certification Marks | A geographic certification mark that is geographically deceptive may not be registered on either the Principal or Supplemental Register and must be refused under Trademark Act §2(a), 15 U.S.C. §1052(a) , or §2(e)(3), 15 |
| 1306.05(f) | 1306.05(f) Geographic Designations that Do Not Certify Regional Origin | 1306.05(f) Geographic Designations that Do Not Certify Regional Origin | Sometimes, a geographic designation in a certification mark is not used to certify the geographic origin of the goods or services. For example, a certification mark includes the word “California,” but is used to certify |
| 1306.05(g) | 1306.05(g) Likelihood-of-Confusion Search and Analysis | 1306.05(g) Likelihood-of-Confusion Search and Analysis | When comparing marks in a typical Trademark Act §2(d) likelihood-of-confusion analysis, terms that are geographically descriptive of the relevant goods or services are sometimes given less weight. See TMEP §§1207.01(b)(i |
| 1306.05(h) | 1306.05(h) American Viticultural Areas | 1306.05(h) American Viticultural Areas | American Viticultural Areas (AVA) are defined grape-growing regions in the United States, created on petition by interested parties through the federal rulemaking process. AVA designations appear on wine labels and “allo |
| 1306.05(i) | 1306.05(i) Geographic Certification Marks Containing §2(b) Matter | 1306.05(i) Geographic Certification Marks Containing §2(b) Matter | Trademark Act §2(b), 15 U.S.C. §1052(b) , bars the registration of marks that contain the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation. If a geographic cert |
| 1306.05(j) | 1306.05(j) Examples of Geographic Certification Marks | 1306.05(j) Examples of Geographic Certification Marks | Example 1 Mark: IDAHO (typed drawing) Specimen Goods: Potatoes and potato products, namely, fresh, frozen, refrigerated and dehydrated potatoes Certification Statement: “The Certification mark, as used by authorized pers |
| 1306.06 | 1306.06 Uncertainty Regarding Type of Mark | 1306.06 Uncertainty Regarding Type of Mark | When the facts in the application are insufficient to provide an adequate basis for determining whether the mark is functioning as a trademark or service mark or as a certification mark, the examining attorney should ask |
| 1306.06(a) | 1306.06(a) Distinction Between Certification Mark and Collective Mark | 1306.06(a) Distinction Between Certification Mark and Collective Mark | A collective trademark or collective service mark indicates origin of goods or services in the members of a group. A collective membership mark indicates membership in an organization. A certification mark certifies char |
| 1306.06(b) | 1306.06(b) Amendment to Different Type of Mark | 1306.06(b) Amendment to Different Type of Mark | If a certification mark application is filed but the mark is actually another type of mark, or if an application for another type of mark is filed but it is actually a certification mark, the application may be amended t |
| 1306.06(c) | 1306.06(c) Registration as Correct Type of Mark | 1306.06(c) Registration as Correct Type of Mark | The examining attorney should take care to ascertain the correct type of mark during examination, and to require amendment if necessary. If a registration is issued for the wrong type of mark, it may be subject to cancel |
| 1401 | 1401 Classification | 1401 Classification | |
| 1401.01 | 1401.01 Statutory Authority | 1401.01 Statutory Authority | Section 30 of the Trademark Act, 15 U.S.C. §1112 , provides authority for establishing a classification system for goods and services. That section states, in part, as follows: The Director may establish a classification |
| 1401.02 | 1401.02 International Trademark Classification Adopted | 1401.02 International Trademark Classification Adopted | As of September 1, 1973, the international classification of goods and services is the controlling classification used by the United States, and it applies to all applications filed on or after September 1, 1973, and the |
| 1401.02(a) | 1401.02(a) Headings of International Trademark Classes | 1401.02(a) Headings of International Trademark Classes | International trademark classification, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods an |
| 1401.02(b) | 1401.02(b) Short Titles for International Trademark Classes | 1401.02(b) Short Titles for International Trademark Classes | The USPTO associates the following word titles with the respective international trademark class numbers: GOODS 1. Chemicals 2. Paints 3. Cosmetics and cleaning preparations 4. Lubricants and fuels 5. Pharmaceuticals 6. |
| 1401.02(c) | 1401.02(c) International Alphabetical List | 1401.02(c) International Alphabetical List | In addition to the General Remarks, list of international classes, and explanatory notes ( see TMEP §1401.02(a) ), the Nice Classification includes the Alphabetical List of goods and services. The Alphabetical List provi |
| 1401.03 | 1401.03 Designation of Class | 1401.03 Designation of Class | In an application for registration of a mark, the applicant should designate the international class number(s) that are appropriate for the identified goods and/or services whenever the information is known. 37 C.F.R. §2 |
| 1401.03(a) | 1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44 | 1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44 | Generally, in applications under §1 or §44 of the Trademark Act, prior to their assignment to an examining attorney, the USPTO retains the class number designated by the applicant, in the absence of any information clear |
| 1401.03(b) | 1401.03(b) Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44 | 1401.03(b) Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44 | In an application under §1 or §44 of the Trademark Act, if the applicant does not designate a class number(s), the USPTO will do so. If the class number(s) indicated by the applicant is clearly wrong (e.g., goods are cla |
| 1401.03(c) | 1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44 | 1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44 | The applicant should make an initial effort at classification, using the Alphabetical List of goods and services and/or the ID Manual. In an application under Trademark Act §1 or §44, when an application and fee is filed |
| 1401.03(d) | 1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications | 1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications | 37 C.F.R. Section 66(a) applications and registered extensions of protection. In an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classifi |
| 1401.04 | 1401.04 Classification Determines Number of Fees | 1401.04 Classification Determines Number of Fees | 15 U.S.C. §1112. (Extract) *** The applicant may apply to register a mark for any or all of the goods or services on or in connection with which he or she is using or has a bona fide intention to use the mark in commerce |
| 1401.04(a) | 1401.04(a) Prior United States Classification System | 1401.04(a) Prior United States Classification System | Prior to the adoption of the International Classification in 1973, the United States Classification was the controlling classification used in the USPTO. After adoption of the International Classification, the United Sta |
| 1401.04(b) | 1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid | 1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid | An application may list, in connection with each class designated, only goods or services that fall within that class. An applicant may apply to register a mark for the goods and/or services on or in connection with whic |
| 1401.05 | 1401.05 Criteria on Which International Classification Is Based | 1401.05 Criteria on Which International Classification Is Based | The General Remarks of the Nice Classification set forth general criteria for placing goods or services in the international classes. See TMEP §1401.02(a) . The Class Headings of the Nice Classification indicate the type |
| 1401.05(a) | 1401.05(a) Identification and Classification of Kits, Gift Baskets, and Items Sold as a Unit | 1401.05(a) Identification and Classification of Kits, Gift Baskets, and Items Sold as a Unit | The USPTO permits registration in a single international class of a kit or gift basket comprised of goods, even if the identification includes components that are goods classified in other classes. This practice is not r |
| 1401.05(b) | 1401.05(b) Medical vs. Non-Medical Goods | 1401.05(b) Medical vs. Non-Medical Goods | It is sometimes difficult to determine whether certain apparatus and instruments are classified in Class 9 or Class 10. While photographic, optical, measuring, testing, and scientific apparatus and instruments are genera |
| 1401.05(c) | 1401.05(c) Classification and Plurality of Uses | 1401.05(c) Classification and Plurality of Uses | A product that has a plurality of uses or aspects is ordinarily classified in a single class. Ex parte Schatz , 87 USPQ 374 (Comm’r Pats. 1950). However, if it can be shown that a product has a plurality of uses or aspec |
| 1401.05(d) | 1401.05(d) Identification and Classification of “Systems” | 1401.05(d) Identification and Classification of “Systems” | In general, the USPTO will not accept identifications of goods described as “systems.” This terminology fails to satisfy the requirement that the application specify the particular goods on or in connection with which th |
| 1401.05(e) | 1401.05(e) Identification and Classification of “Food Additives” | 1401.05(e) Identification and Classification of “Food Additives” | Under the 10th, 11th, and 12th editions of the Nice Agreement, identifications of goods in the nature of food additives must indicate the generic name of the product (e.g., lecithin, glucose, or pectin) as well as the pu |
| 1401.06 | 1401.06 Specimen(s) as Related to Classification | 1401.06 Specimen(s) as Related to Classification | As a general rule, the specimen(s) in an application under §1 of the Trademark Act helps to determine the correct classification. The examining attorney should carefully review the specimen to ensure that the identificat |
| 1401.07 | 1401.07 Specimen Discloses Special Characteristics | 1401.07 Specimen Discloses Special Characteristics | The classification of goods could be affected if the specimen shows that the mark identifies a composition, an ingredient, or a part that exists in the market only as a component of another product, but the identificatio |
| 1401.08 | 1401.08 Classification and the Identification of Goods and Services | 1401.08 Classification and the Identification of Goods and Services | The items listed in the identification of goods and services must be limited to those on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce. The short title of the cla |
| 1401.09 | 1401.09 Implementation of Changes to the Nice Agreement | 1401.09 Implementation of Changes to the Nice Agreement | When a new edition/version of the Nice Agreement is issued, any changes apply only to applications filed on or after the effective date of the change. 37 C.F.R. §2.85(e)(1) . In a §1 or §44 application filed before the e |
| 1401.10 | 1401.10 Effective Date of Changes to USPTO ID Manual | 1401.10 Effective Date of Changes to USPTO ID Manual | In the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual), the "Effective Date" indicates the date on which the status (i.e., Added, Modified, Example, or Deleted) of a particular entry went into |
| 1401.10(a) | 1401.10(a) Effective Date of USPTO ID Manual Entries for Applications Filed Under §66(a) | 1401.10(a) Effective Date of USPTO ID Manual Entries for Applications Filed Under §66(a) | In a §66(a) application, the IB controls the classification of goods and services. See TMEP §1904.02(b) . The IB uses the edition of the Nice Agreement in effect at the time international registration is sought to classi |
| 1401.11 | 1401.11 Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement | 1401.11 Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement | Effective January 1, 2002, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement") was amended to add three new service classe |
| 1401.11(a) | 1401.11(a) Elimination of “Miscellaneous Class Designation” | 1401.11(a) Elimination of “Miscellaneous Class Designation” | Prior to January 1, 2002, the language "services that cannot be classified in other classes" appeared in the class heading of Class 42. Effective January 1, 2002, this language no longer appears in any of the class headi |
| 1401.12 | 1401.12 General Summary of Major Changes in Practice Based on the 9th Edition of the Nice Agreement | 1401.12 General Summary of Major Changes in Practice Based on the 9th Edition of the Nice Agreement | The requirements of the 9th edition of the Nice Agreement apply to applications filed on or after January 1, 2007. For applications filed under subsequent editions and/or versions of the Nice Agreement, any changes in pr |
| 1401.12(a) | 1401.12(a) Legal Services Transferred to International Class 45 | 1401.12(a) Legal Services Transferred to International Class 45 | Effective January 1, 2007, legal services were transferred from Class 42 to Class 45. Class 42 is now generally limited to computer, scientific, technological, engineering, and design services. In 2002, when the Nice Agr |
| 1401.12(b) | 1401.12(b) Goods Made of Precious Metal are Classified According to Their Function | 1401.12(b) Goods Made of Precious Metal are Classified According to Their Function | Class 14 went through the most extensive revision of all of the classes in the 9th edition of the Nice Agreement. The Committee of Experts decided that items made of precious metal that were classified in other classes b |
| 1401.12(c) | 1401.12(c) Transfer of Aquaria and Related Items | 1401.12(c) Transfer of Aquaria and Related Items | Indoor aquaria, its related accessory aquarium hoods, and indoor terrariums and vivariums were previously classified in Class 16 because they were considered instructional or teaching materials for educational purposes. |
| 1401.13 | 1401.13 General Summary of Major Changes in Practice Based on the 10th Edition of the Nice Agreement | 1401.13 General Summary of Major Changes in Practice Based on the 10th Edition of the Nice Agreement | A number of changes in the international classification of goods and services occurred in connection with the 10th edition of the Nice Classification, which went into effect January 1, 2012. The requirements of the 10th |
| 1401.13(a) | 1401.13(a) Electric/Electrothermic Goods | 1401.13(a) Electric/Electrothermic Goods | Under the 10th edition, a number of electric/electrothermic goods that were previously in Class 9 are now classified in the same class as their non-electric or non-electrothermic counterparts. Electric/electrothermic goo |
| 1401.13(b) | 1401.13(b) Amusement and Game-Playing Apparatus | 1401.13(b) Amusement and Game-Playing Apparatus | Under the 9th edition, "hand-held units for playing electronic games for use with external display screens or monitors" were classified in Class 9, and "hand-held units for playing electronic games other than those for u |
| 1401.13(c) | 1401.13(c) Food Additives | 1401.13(c) Food Additives | Under the 10th edition, food additives are classified in Classes 1, 5, and 29-33 according to their particular purposes. Previously, the Nice Alphabetical List recognized only two types of food additives - those for medi |
| 1401.13(d) | 1401.13(d) Dietetic Substances and Meal Replacements | 1401.13(d) Dietetic Substances and Meal Replacements | The 10th edition amended the Class 5 Explanatory Note to include "meal replacements, dietetic food and beverages, adapted for medical or veterinary use." For classification in Class 5, these three items must be identifie |
| 1401.13(e) | 1401.13(e) Marketing Services | 1401.13(e) Marketing Services | "Marketing" was added to the Nice Alphabetical List, in Class 35, under the 10th edition. The Nice Agreement was previously silent regarding marketing services. The addition of "marketing" reflects the recognition by the |
| 1401.14 | 1401.14 General Summary of Major Changes in Practice Based on the 11th Edition of the Nice Agreement | 1401.14 General Summary of Major Changes in Practice Based on the 11th Edition of the Nice Agreement | The 11th edition of the Nice Classification went into effect January 1, 2017. The requirements of the 11th edition apply only to applications filed on or after January 1, 2017. Any changes under subsequent versions or ed |
| 1401.14(a) | 1401.14(a) Cosmetic and Toiletry Preparations and Soaps | 1401.14(a) Cosmetic and Toiletry Preparations and Soaps | Under the 11th edition of the Nice Classification, cosmetics, toiletry preparations, and soap are classified in Class 3, except when those goods are medicated, are for pharmaceutical purposes, or have antibacterial or di |
| 1401.14(b) | 1401.14(b) Household or Kitchen Serving Utensils and Small Hand-operated Kitchen Apparatus for Mincing, Grinding, Pressing, or Crushing | 1401.14(b) Household or Kitchen Serving Utensils and Small Hand-operated Kitchen Apparatus for Mincing, Grinding, Pressing, or Crushing | Under the 11th edition of the Nice Classification, household or kitchen serving utensils, except for "serving knives," are classified in Class 21. "Serving knives" are classified with all other knives in Class 8 under th |
| 1401.14(c) | 1401.14(c) Dietetic Food and Beverages Adapted for Medical or Veterinary Use | 1401.14(c) Dietetic Food and Beverages Adapted for Medical or Veterinary Use | Under both the 10th (effective January 1, 2012) and 11th (effective January 1, 2017) editions of the Nice Classification, identifications for dietetic foods and dietetic beverages in Class 5 must indicate that the goods |
| 1401.14(d) | 1401.14(d) Nut and Plant Milks; Milk Substitutes | 1401.14(d) Nut and Plant Milks; Milk Substitutes | Under the 10th edition of the Nice Classification, nut or plant milks were generally classified according to their purpose. If the goods were used as milk substitutes or used for culinary purposes, the goods were classif |
| 1401.14(e) | 1401.14(e) Security Services in Class 42 and Class 45 | 1401.14(e) Security Services in Class 42 and Class 45 | Under the 11th edition of the Nice Classification, the Committee of Experts inserted new wording "computer and technology services for securing computer data and personal and financial information and for the detection o |
| 1401.14(f) | 1401.14(f) Ivory, Bone, Whalebone, Horn, Tusks, or Other Items Prohibited under Federal Law | 1401.14(f) Ivory, Bone, Whalebone, Horn, Tusks, or Other Items Prohibited under Federal Law | Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. Thus, the goods or services to which the mark is applied must comply with all applicable federal laws. TMEP §907 . Identi |
| 1401.15 | 1401.15 General Summary of Major Changes in Practice Based on the 12th Edition of the Nice Agreement | 1401.15 General Summary of Major Changes in Practice Based on the 12th Edition of the Nice Agreement | The 12th edition of the Nice Classification went into effect on January 1, 2023. The requirements of the 12th edition apply only to applications filed on or after January 1, 2023. Any changes in practice pursuant to the |
| 1401.15(a) | 1401.15(a) Dispensers | 1401.15(a) Dispensers | Under Nice 12-2023, a framework for classification of dispensers was established and involved a general rule and exceptions. Generally, under Nice 12-2023, dispensers are considered storage containers for holding items a |
| 1401.15(b) | 1401.15(b) Non-fungible Tokens (NFTs) | 1401.15(b) Non-fungible Tokens (NFTs) | The primary meaning of non-fungible token (NFT) is "a unique digital identifier that cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership |
| 1401.15(c) | 1401.15(c) Virtual Services | 1401.15(c) Virtual Services | The term “virtual” is defined as “being on or simulated on a computer or computer network.” https://www.merriam-webster.com/dictionary/virtual (accessed February 27, 2026). Thus, virtual services include both real-world |
| 1401.15(d) | 1401.15(d) Virtual Goods | 1401.15(d) Virtual Goods | Virtual goods are intangible, digital objects used in virtual worlds, virtual environments, and online games. See , e.g. , https://www.pcmag.com/encyclopedia/term/virtual-goods (accessed on February 27, 2026). For exampl |
| 1401.15(e) | 1401.15(e) Biomanufacturing | 1401.15(e) Biomanufacturing | Biomanufacturing is defined as “the use of living organisms and cells to produce molecules or other biological materials for making products such as medicines, food, and drinks.” https://dictionary.cambridge.org/dictiona |
| 1401.16 | 1401.16 General Summary of Major Changes in Practice Based on the 13th Edition of the Nice Agreement | 1401.16 General Summary of Major Changes in Practice Based on the 13th Edition of the Nice Agreement | The 13th edition of the Nice Classification went into effect on January 1, 2026. The requirements of the 13th edition apply only to applications filed on or after January 1, 2026. Any changes in practice pursuant to the |
| 1401.16(a) | 1401.16(a) Eyeglasses, Spectacles, Sunglasses, and Contact Lenses | 1401.16(a) Eyeglasses, Spectacles, Sunglasses, and Contact Lenses | For the 13th edition of the Nice Classification, “eyeglasses,” “spectacles,” “sunglasses,” and “contact lenses” were transferred from Class 9 to Class 10. These goods are used to correct eyesight or to protect the health |
| 1401.16(b) | 1401.16(b) Essential Oils | 1401.16(b) Essential Oils | For the 13th edition, the Committee of Experts determined that essential oils should be classified by function or purpose, in accordance with the Nice Classification General Remarks. Prior to the 13th edition, essential |
| 1401.16(c) | 1401.16(c) Emergency and Rescue Vehicles | 1401.16(c) Emergency and Rescue Vehicles | For the 13th edition, “fire engines,” “fire boats,” “life-saving rafts,” and “lifeboats”, which were previously classified in Class 9, are now classified in Class 12. As a result, all emergency and rescue vehicles are no |
| 1402 | 1402 Identification of Goods and Services | 1402 Identification of Goods and Services | |
| 1402.01 | 1402.01 Specifying the Goods and/or Services - in General | 1402.01 Specifying the Goods and/or Services - in General | A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §1051(a)(2) , (b)(2) ; 37 C. |
| 1402.01(a) | 1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services | 1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services | With few exceptions, an identification of goods and services will be considered acceptable if it: Describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even i |
| 1402.01(b) | 1402.01(b) Identification of Goods and Services in a §44 Application | 1402.01(b) Identification of Goods and Services in a §44 Application | The identification of goods and services in an application based on §44 of the Trademark Act, 15 U.S.C. §1126 , must comply with the same standards that govern other applications. The applicant must identify the goods an |
| 1402.01(c) | 1402.01(c) Identification and Classification of Goods and Services in a §66(a) Application | 1402.01(c) Identification and Classification of Goods and Services in a §66(a) Application | The identification of goods and services in an application based on §66(a) of the Trademark Act, 15 U.S.C. §1141f(a) , must comply with the same standards that govern applications under §1 or §44. The applicant must iden |
| 1402.01(d) | 1402.01(d) Location of “Identification of Goods and Services” | 1402.01(d) Location of “Identification of Goods and Services” | Electronic Application . In an electronic application, only goods and/or services listed in "the proper field (i.e., 'Identification' field) will be considered part of the identification." Fender Musical Instruments Corp |
| 1402.01(e) | 1402.01(e) Responsibilities of Examining Attorney as to Identification | 1402.01(e) Responsibilities of Examining Attorney as to Identification | It is the applicant’s duty and prerogative to identify the goods and services. However, the examining attorney may require amendment of the identification of goods and/or services to ensure that it is clear and accurate |
| 1402.02 | 1402.02 Entitlement to Filing Date With Respect to Identification of Goods and Services | 1402.02 Entitlement to Filing Date With Respect to Identification of Goods and Services | An application under §1 or §44 must include an identification of goods or services to receive a filing date. 37 C.F.R. §2.21(a)(4) . Only goods and/or services listed in the proper field in an electronic application will |
| 1402.03 | 1402.03 Specificity of Terms Used in Identifying Goods and Services | 1402.03 Specificity of Terms Used in Identifying Goods and Services | Applicants frequently use broad terms to identify the goods or services in an application. In applications based solely on §1(a), 15 U.S.C. §1051(a) , the applicant must have used the mark in commerce on all of the goods |
| 1402.03(a) | 1402.03(a) Inclusive Terminology | 1402.03(a) Inclusive Terminology | The identification should state common names for goods or services, or where the goods or services do not have a common name, use clear and succinct language to describe or explain the goods or services. The identificati |
| 1402.03(b) | 1402.03(b) House Marks | 1402.03(b) House Marks | House marks do not identify particular goods or services – rather, they identify the provider of a wide variety of goods or services, with such goods or services often themselves identified by a separate trademark or ser |
| 1402.03(c) | 1402.03(c) Marks for a “Full Line of …” | 1402.03(c) Marks for a “Full Line of …” | In rare circumstances, the USPTO may accept an identification of goods that refers to "a full line of" a genre of goods or services. To qualify for the use of such terminology, the line of goods or services must be in on |
| 1402.03(d) | 1402.03(d) Identifying Recorded or Downloadable Computer Programs and Software | 1402.03(d) Identifying Recorded or Downloadable Computer Programs and Software | Computer programs and computer software are goods classified in International Class 9 if they are recorded on media or are downloadable and thus can be transferred or copied from a remote computer system for use on a lon |
| 1402.03(e) | 1402.03(e) Identifying Printed, Downloadable, or Recorded Publications with Specificity | 1402.03(e) Identifying Printed, Downloadable, or Recorded Publications with Specificity | Identifications for publications must indicate the specific type (e.g., magazines, newsletters, periodicals, etc.) and the literary subject matter of the publications. Additionally, for proper classification, identificat |
| 1402.03(f) | 1402.03(f) Recognition of Industry Terms | 1402.03(f) Recognition of Industry Terms | Widely used industry terminology that is definite and limited to a single class should be recognized as sufficient to identify the goods or services when supported by dictionary definitions or other authoritative referen |
| 1402.03(g) | 1402.03(g) Name and/or Acronym of Trademark Protection System or Scheme for Geographical Indication Appearing in Identification | 1402.03(g) Name and/or Acronym of Trademark Protection System or Scheme for Geographical Indication Appearing in Identification | A geographical indication of origin identifies goods as originating in a territory known for a given quality, reputation, or other characteristic associated with the goods. WTO Agreement on Trade-Related Aspects of Intel |
| 1402.04 | 1402.04 Acceptable Identification of Goods and Services Manual | 1402.04 Acceptable Identification of Goods and Services Manual | The USPTO maintains the Acceptable Identification of Goods and Services Manual (ID Manual) in electronic form. The ID Manual comprises a listing of identifications of goods and services that is compiled by the Office of |
| 1402.05 | 1402.05 Accuracy of Identification | 1402.05 Accuracy of Identification | An identification is unacceptable if it is inconsistent with the goods or services indicated by the specimens or if the ordinary meaning of the identification language is at variance with the goods or services evidenced |
| 1402.05(a) | 1402.05(a) Goods That Are Components or Ingredients | 1402.05(a) Goods That Are Components or Ingredients | When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification must (1) precisely set forth the common name of the component or ingredient, (2) indicate that t |
| 1402.05(b) | 1402.05(b) Material Composition | 1402.05(b) Material Composition | According to the General Remarks of the Nice Classification, unworked or semi-worked raw materials are in principle classified according to their material composition. See TMEP §1401.02(a) . For example, "unworked or sem |
| 1402.06 | 1402.06 Amendments Permitted to Clarify or Limit Identification | 1402.06 Amendments Permitted to Clarify or Limit Identification | Trademark Rule 2.71(a), 37 C.F.R. §2.71(a) , restricts amendments to the identification of goods or services as follows, "The applicant may amend the application to clarify or limit, but not to broaden, the identificatio |
| 1402.06(a) | 1402.06(a) Limiting the Identification of Goods and Services | 1402.06(a) Limiting the Identification of Goods and Services | As noted above, the rules permit amendments to limit the identification of goods and services. Deletions from the identification of goods and services are also permitted. "Deletion" means the elimination of an existing i |
| 1402.06(b) | 1402.06(b) Clarifying the Identification of Goods and Services | 1402.06(b) Clarifying the Identification of Goods and Services | Under 37 C.F.R. §2.71(a) , an applicant may amend "to clarify" the identification of goods and/or services. The applicant may clarify an identification that is indefinite or overly broad to identify goods and/or services |
| 1402.07 | 1402.07 Scope of Identification of Goods and Services for Purposes of Amendment | 1402.07 Scope of Identification of Goods and Services for Purposes of Amendment | |
| 1402.07(a) | 1402.07(a) The Ordinary-Meaning Test | 1402.07(a) The Ordinary-Meaning Test | In applications under §1 or §44, for the purpose of determining the scope of an identification, the examining attorney should consider the ordinary meaning of the wording apart from the class number designation. The clas |
| 1402.07(b) | 1402.07(b) Ambiguous Identifications | 1402.07(b) Ambiguous Identifications | An applicant may amend an ambiguous identification of goods or services (i.e., an identification that fails to indicate a type of goods or services) in order to specify definite goods or services within the scope of the |
| 1402.07(c) | 1402.07(c) Unambiguous Identifications | 1402.07(c) Unambiguous Identifications | An applicant may amend an unambiguous identification of goods that indicates a specific type of goods to specify definite and acceptable identifications of goods within the scope of the existing terminology. An applicant |
| 1402.07(d) | 1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable | 1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable | If the applicant proposes an amendment to the identification of goods or services, and the examining attorney determines that the amendment is unacceptable, the examining attorney should refer to the identification of go |
| 1402.07(e) | 1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Acceptable | 1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Acceptable | Once an applicant amends the identification of goods and/or services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications and restricts the scope of the goods and/ |
| 1402.08 | 1402.08 Moving Goods and Services Between Companion Applications | 1402.08 Moving Goods and Services Between Companion Applications | If an applicant has filed separate applications to register the same mark, the applicant may, in a limited situation, amend to move items of goods or services from one application to another, if the application from whic |
| 1402.09 | 1402.09 Use of Marks or Terms “Applicant” and “Registrant” Inappropriate in Identifications | 1402.09 Use of Marks or Terms “Applicant” and “Registrant” Inappropriate in Identifications | If a mark that is registered to an entity other than the applicant is used in the identification of goods or services, the examining attorney must require that it be deleted and that generic wording be substituted. It is |
| 1402.10 | 1402.10 Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications | 1402.10 Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications | See TMEP §1104.10(b)(iii) regarding examination of the identification of goods or services in an amendment to allege use; TMEP §1108.02(d) regarding the identification of goods or services in a request for an extension o |
| 1402.11 | 1402.11 Identification of Services | 1402.11 Identification of Services | This section addresses identifications of particular types of services. The primary requirements for an acceptable identification of services are: (1) the identification must be definite and limited to services in a sing |
| 1402.11(a) | 1402.11(a) Computer Services | 1402.11(a) Computer Services | |
| 1402.11(b) | 1402.11(b) Information Services | 1402.11(b) Information Services | Prior to January 1, 2002, the identification "providing information in a wide variety of fields" was an acceptable identification of services, particularly in the context of Internet websites. The only caveat being that |
| 1402.11(c) | 1402.11(c) Association Services | 1402.11(c) Association Services | The classification of services rendered by associations was affected by the reorganization of Class 42 ( see TMEP §§1401.11 et seq .). Prior to January 1, 2002, the Explanatory Notes regarding this topic for the old Clas |
| 1402.11(d) | 1402.11(d) Charitable Services, Other than Monetary | 1402.11(d) Charitable Services, Other than Monetary | Prior to January 1, 2002, non-monetary charitable services were classified in Class 42, regardless of the type of service being provided by the charity. Effective January 1, 2002, non-monetary charitable services are cla |
| 1402.11(e) | 1402.11(e) Consulting Services | 1402.11(e) Consulting Services | Prior to January 1, 2002, all consulting services were classified in Class 42 except those relating to business (Class 35) and financial or insurance (Class 36). Effective January 1, 2002, consulting services are classif |
| 1402.11(f) | 1402.11(f) Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Goods | 1402.11(f) Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Goods | The services of production and distribution of motion pictures and television programs are classified in Class 41. This service involves the actual creation of the motion picture or television program and the accompanyin |
| 1402.11(g) | 1402.11(g) Recorded Entertainment Services | 1402.11(g) Recorded Entertainment Services | For entertainment services such as those rendered by a musical group, the performance must be live. The recording of a live concert or studio performance is not considered a service of the performing group. Similarly, pe |
| 1402.11(h) | 1402.11(h) Identification of “Bonus Programs” | 1402.11(h) Identification of “Bonus Programs” | Many businesses offer "bonus programs" or "frequent patron programs" to encourage patronage of that business. However, promotion of one’s own goods or services is not considered a service under the Trademark Act since th |
| 1402.11(i) | 1402.11(i) Marketing Services and Advertising Services | 1402.11(i) Marketing Services and Advertising Services | Effective January 1, 2012, "Marketing" was added to the Nice Alphabetical List. See TMEP §1401.13(e) . As with "Advertising services," the entry is listed in the ID Manual as "Marketing services" to emphasize that the ac |
| 1402.11(j) | 1402.11(j) Issuing Awards | 1402.11(j) Issuing Awards | Services that involve the issuance of awards are usually classified in Classes 35 and 41. Classification depends upon the purpose of the award program. If the award program is an employee incentive rewarding excellence i |
| 1402.11(k) | 1402.11(k) Accreditation- and Certification-Related Services vs. Certification Marks | 1402.11(k) Accreditation- and Certification-Related Services vs. Certification Marks | Service marks are used to identify and distinguish the services of one person from the services of others and to indicate the source of the services. 15 U.S.C. §1127 . For information about what constitutes a service und |
| 1402.12 | 1402.12 Parentheses and Brackets Should Not be Used in Identifications of Goods and Services | 1402.12 Parentheses and Brackets Should Not be Used in Identifications of Goods and Services | Generally, parentheses and brackets must not be used in identifications of goods and services. The Post Registration Section of the USPTO uses single square brackets to indicate that goods/services have been deleted from |
| 1402.13 | 1402.13 Requirement for Amendment of Portion of Identification of Goods/Services | 1402.13 Requirement for Amendment of Portion of Identification of Goods/Services | If a requirement for an amendment of the identification of goods and/or services is expressly limited to only certain goods/services, and the applicant fails to file a response to the refusal or requirement, the applicat |
| 1402.14 | 1402.14 Identification of Goods/Services Must Conform to Rules and Policies in Effect at the Time Registration is Sought | 1402.14 Identification of Goods/Services Must Conform to Rules and Policies in Effect at the Time Registration is Sought | The question of whether the identification and/or classification of goods/services is acceptable must be determined on the basis of the facts and evidence that exist on the application filing date. Cf. TMEP §1216.01 . Th |
| 1402.15 | 1402.15 Procedures for Processing Unacceptable Amendments to Identifications | 1402.15 Procedures for Processing Unacceptable Amendments to Identifications | If an applicant submits an amendment to the identification of goods/services and the examining attorney determines that the amendment is unacceptable, the examining attorney must issue an action refusing to accept the am |
| 1403 | 1403 Combined or Multiple-Class Applications | 1403 Combined or Multiple-Class Applications | 37 C.F.R. Multiple-class applications. (a) In a single application for a trademark, service mark, and/or collective mark, an applicant may apply to register the same mark for goods, services, and/or a collective membersh |
| 1403.01 | 1403.01 Requirements for Combined or Multiple-Class Applications | 1403.01 Requirements for Combined or Multiple-Class Applications | In addition to the requirements for a trademark, service mark, collective mark, or certification mark application ( see TMEP §§801-806.01(e) , 1303.01 , 1304.02 , 1306.02 ), a multiple-class application must contain the |
| 1403.02 | 1403.02 Amendment of Combined or Multiple-Class Application | 1403.02 Amendment of Combined or Multiple-Class Application | An application under §1 or §44 of the Trademark Act may be amended during prosecution to delete, correct, or add classes, when appropriate. In a §66(a) application, classes may be deleted, but classes may not be added, a |
| 1403.02(a) | 1403.02(a) Deletion of Classes | 1403.02(a) Deletion of Classes | An applicant may delete a class or classes and prosecute the application only in the remaining class or classes. Normally, the filing fee is not refunded when a class is deleted. See 37 C.F.R. §2.209(a) ; TMEP §§405.04 , |
| 1403.02(b) | 1403.02(b) Correction of Classification | 1403.02(b) Correction of Classification | In an application under §1 or §44 of the Trademark Act, improper classification may be corrected by switching goods/services by amendment from one to another of the classes originally set forth, or by changing the class |
| 1403.02(c) | 1403.02(c) Addition of Classes | 1403.02(c) Addition of Classes | In an application under Trademark Act §1 or §44, class(es) may be added if any of the items originally recited are properly classified in class(es) not originally indicated. The applicant must pay the filing fee for each |
| 1403.03 | 1403.03 Dividing of Combined or Multiple-Class Application | 1403.03 Dividing of Combined or Multiple-Class Application | A delay in registration of one class in a multiple-class application will mean delay for the entire application. In such a situation, upon payment of the applicable fee, the applicant may file a request to physically div |
| 1403.04 | 1403.04 Refusals and Oppositions as to Less Than All the Classes in a Multiple-Class Application | 1403.04 Refusals and Oppositions as to Less Than All the Classes in a Multiple-Class Application | A refusal to register or a requirement may be made for less than all the classes in an application. Whether it is appropriate to make a refusal or requirement with regard to less than all classes must be considered on a |
| 1403.05 | 1403.05 Fees for Action After Filing, Multiple Classes | 1403.05 Fees for Action After Filing, Multiple Classes | In a multiple-class application or registration, a fee for each class must be paid when filing an allegation of use or request for extension of time to file a statement of use for applications under §1(b) of the Trademar |
| 1403.06 | 1403.06 Surrender or Amendment in Multiple-Class Registrations | 1403.06 Surrender or Amendment in Multiple-Class Registrations | In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire class constitutes a surrender of the registration for cancellati |
| 1501 | 1501 Appeal to Trademark Trial and Appeal Board | 1501 Appeal to Trademark Trial and Appeal Board | 15 U.S.C. §1070 An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the examiner in charge of the registration of marks or a final decision by an examiner in an ex parte expungement |
| 1501.01 | 1501.01 Appealable Matter | 1501.01 Appealable Matter | An applicant who wishes to contest a refusal based on a matter of substance (e.g., a matter arising under §§2-6, or 23 of the Trademark Act, 15 U.S.C. §§1052 - 1056 , 1091 ), should file an appeal to the Board, not a pet |
| 1501.02 | 1501.02 Appeal Briefs | 1501.02 Appeal Briefs | |
| 1501.02(a) | 1501.02(a) Applicant’s Appeal Brief | 1501.02(a) Applicant’s Appeal Brief | The applicant must file an appeal brief within sixty days of the date of the appeal, or the Trademark Trial and Appeal Board (Board) may dismiss the appeal. 37 C.F.R. §2.142(b)(1) ; see In re Live Earth Prods. Inc. , Ser |
| 1501.02(b) | 1501.02(b) Examining Attorney’s Appeal Brief | 1501.02(b) Examining Attorney’s Appeal Brief | After the applicant’s brief has been filed, the Board will send a notice to the examining attorney. The examining attorney has sixty days from the date of the Board’s notice to file a responsive brief with the Board and |
| 1501.02(c) | 1501.02(c) Reply Briefs in Ex Parte Appeals | 1501.02(c) Reply Briefs in Ex Parte Appeals | The applicant may file a brief in reply to the examining attorney’s appeal brief. Reply briefs must be filed within twenty days of the date of issuance of the examining attorney’s brief. 37 C.F.R. §2.142(b)(1) . The exam |
| 1501.03 | 1501.03 Withdrawal of Refusal or Requirement After Appeal | 1501.03 Withdrawal of Refusal or Requirement After Appeal | If, after considering the applicant’s brief or reply brief, the examining attorney believes that the requirement or refusal should be withdrawn, the examining attorney must withdraw the requirement or refusal and approve |
| 1501.04 | 1501.04 Fee for Appeal | 1501.04 Fee for Appeal | When filing an ex parte appeal to the Board from the refusal of the examining attorney to register a mark, the applicant must pay a fee for each class in the application for which the appeal is taken. 37 C.F.R. §2.141(c) |
| 1501.05 | 1501.05 Amendment During Appeal | 1501.05 Amendment During Appeal | If the applicant files an amendment after filing a timely notice of appeal, the examining attorney may not act on it without authorization from the Board, because jurisdiction over the application is with the Board after |
| 1501.06 | 1501.06 Amendment After Decision on Appeal | 1501.06 Amendment After Decision on Appeal | An examining attorney may not take action in an application after the Board has rendered a decision on appeal, because the examining attorney does not have jurisdiction over the application. See In re U.S. Catheter & Ins |
| 1501.07 | 1501.07 Examining Attorney’s Request for Reconsideration | 1501.07 Examining Attorney’s Request for Reconsideration | In In re Ferrero S.p.A ., 22 USPQ2d 1800 (TTAB 1992), recon. denied , 24 USPQ2d 1061 (TTAB 1992), an augmented panel of the Board expressly overruled prior precedent and held that an examining attorney may request recons |
| 1502.01 | 1502.01 Notification of Clerical Errors in Trademark Official Gazette | 1502.01 Notification of Clerical Errors in Trademark Official Gazette | To request correction of a clerical error made by the USPTO, or a typographical error made by the applicant, that appears in the USPTO electronic record after the mark has been approved for publication or in the Trademar |
| 1503 | 1503 Opposition | 1503 Opposition | |
| 1503.01 | 1503.01 Filing a Notice of Opposition | 1503.01 Filing a Notice of Opposition | Any person who believes that they would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board (Board), and p |
| 1503.02 | 1503.02 Joining Persons in an Opposition | 1503.02 Joining Persons in an Opposition | Two or more persons may join in an opposition. TBMP §303.06. Related companies are separate persons for the purpose of filing an opposition. |
| 1503.03 | 1503.03 Time for Opposing | 1503.03 Time for Opposing | An opposition must be filed within thirty days after the date of publication in the Trademark Official Gazette , or within an extension period granted by the Board. 15 U.S.C. §1063(a) ; 37 C.F.R. §2.101(c) ; TBMP §§306 - |
| 1503.04 | 1503.04 Extension of Time to Oppose | 1503.04 Extension of Time to Oppose | Requests for extensions of time to oppose are handled by the Board. See TBMP Ch. 200 . A request for an extension of time must be filed within thirty days after the date of publication in the Trademark Official Gazette , |
| 1503.05 | 1503.05 Opposition to §66(a) Applications | 1503.05 Opposition to §66(a) Applications | Trademark Act §68(a)(2), 15 U.S.C. §1141h(a)(2) , provides that a request for extension of protection is subject to opposition under Trademark Act §13, 15 U.S.C. §1063 . The USPTO must notify the International Bureau of |
| 1504 | 1504 Jurisdiction over Application | 1504 Jurisdiction over Application | |
| 1504.01 | 1504.01 Jurisdiction of Examining Attorney | 1504.01 Jurisdiction of Examining Attorney | As a general rule, until publication of the mark in the Trademark Official Gazette , the examining attorney has jurisdiction over the application and can issue a refusal or a requirement without the approval of the Direc |
| 1504.02 | 1504.02 Jurisdiction of Trademark Trial and Appeal Board | 1504.02 Jurisdiction of Trademark Trial and Appeal Board | The Board has jurisdiction over an application upon the filing of the notice of appeal. The Board may, in response to an examining attorney’s request, on its own initiative, or upon request from the applicant, suspend th |
| 1504.03 | 1504.03 Action by Examining Attorney After Publication | 1504.03 Action by Examining Attorney After Publication | If it is found necessary (e.g., through internal quality review), for an examining attorney to refuse registration or to make a requirement after a mark has been published for opposition, jurisdiction over the applicatio |
| 1504.04 | 1504.04 Restoration of Jurisdiction to Examining Attorney by Director | 1504.04 Restoration of Jurisdiction to Examining Attorney by Director | If it is necessary to refuse registration or to make a requirement after publication and prior to the filing of a notice of opposition or issuance of a notice of allowance, the examining attorney must request that the Di |
| 1504.04(a) | 1504.04(a) Request for Jurisdiction | 1504.04(a) Request for Jurisdiction | The examining attorney’s request for jurisdiction should be in the form of a memorandum to the Director, accompanied by the Office action that the examining attorney proposes to send to the applicant. The request should |
| 1504.05 | 1504.05 Remand to Examining Attorney by Trademark Trial and Appeal Board | 1504.05 Remand to Examining Attorney by Trademark Trial and Appeal Board | The Board, on its own initiative or in response to a request, may remand an application to the examining attorney for consideration of specific facts or issues. TBMP §1209 . Upon receipt of a remand from the Board, the e |
| 1505 | 1505 Amendments Filed by Applicants After Publication | 1505 Amendments Filed by Applicants After Publication | Applicants sometimes submit amendments to the application after publication. For processing purposes, an “amendment after publication” includes any amendment filed during the time period in which the USPTO is unable to w |
| 1505.01 | 1505.01 Procedures for Processing Amendments Filed by the Applicant After Publication | 1505.01 Procedures for Processing Amendments Filed by the Applicant After Publication | |
| 1505.01(a) | 1505.01(a) Requirement for Representation, and Form and Timing of Amendments | 1505.01(a) Requirement for Representation, and Form and Timing of Amendments | Requirement for Representation of Non-U.S.-domiciled Applicants . An applicant’s domicile will determine whether the applicant is required to be represented before the USPTO by an attorney who is an active member in good |
| 1505.01(b) | 1505.01(b) Processing Amendments to §1(a), §44, and §66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued | 1505.01(b) Processing Amendments to §1(a), §44, and §66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued | Amendments filed after publication will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure |
| 1505.01(c) | 1505.01(c) Processing Amendments to §1(b) Applications in Cases Where No Opposition Has Been Filed and No Notice of Allowance Has Issued | 1505.01(c) Processing Amendments to §1(b) Applications in Cases Where No Opposition Has Been Filed and No Notice of Allowance Has Issued | Amendments filed after publication and before issuance of a notice of allowance will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the appli |
| 1505.01(d) | 1505.01(d) Processing Amendments Filed Between Issuance of the Notice of Allowance and Filing of Statement of Use | 1505.01(d) Processing Amendments Filed Between Issuance of the Notice of Allowance and Filing of Statement of Use | Generally, the only amendments that will be entered in a §1(b) application between the issuance of a notice of allowance and the submission of a statement of use are those outlined in TMEP §1107 . See 37 C.F.R. §2.77(a) |
| 1505.01(e) | 1505.01(e) Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted | 1505.01(e) Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted | An amendment of an application that is under an extension of time to file an opposition should be processed in accordance with the procedures set forth in TMEP §1505.01(b)-(d) . See TBMP §212.01 . The Director retains ju |
| 1505.01(f) | 1505.01(f) Processing Amendments in Cases Where an Opposition Has Been Filed | 1505.01(f) Processing Amendments in Cases Where an Opposition Has Been Filed | If the applicant files an amendment after a notice of opposition has been filed, the Board will act on the amendment under 37 C.F.R. §2.133 . The Board has jurisdiction over any application in which an opposition has bee |
| 1505.02 | 1505.02 Types of Amendments After Publication | 1505.02 Types of Amendments After Publication | The following subsections discuss the most common types of amendments after publication. Note that there are some restrictions on amendments to §66(a) applications, as discussed below. In addition, only certain amendment |
| 1505.02(a) | 1505.02(a) Amendments to the Identification | 1505.02(a) Amendments to the Identification | If an applicant proposes to amend the identification after publication by restricting or deleting items in the existing identification, and the amendment is otherwise proper, the USPTO will approve the amendment, and the |
| 1505.02(b) | 1505.02(b) Amendments to Classification | 1505.02(b) Amendments to Classification | In an application under §1 or §44, if the applicant proposes to amend the classification after publication, and the amendment is consistent with the current version of the Nice Agreement Concerning the International Clas |
| 1505.02(c) | 1505.02(c) Amendments to Marks | 1505.02(c) Amendments to Marks | In an application under §1 or §44, if the applicant proposes to amend the mark after publication, the amendment is not a material alteration of the mark, and the specimen of record or foreign registration (if applicable) |
| 1505.02(d) | 1505.02(d) Amendments to the Dates of Use | 1505.02(d) Amendments to the Dates of Use | If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is after the filing date of the application, the USPTO will not approve the amendment. See 37 C.F.R. §2.71(c |
| 1505.02(e) | 1505.02(e) Amendments Adding or Deleting Disclaimers | 1505.02(e) Amendments Adding or Deleting Disclaimers | If an applicant proposes to amend an application to insert a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the amendment is otherwise proper, the USPTO will |
| 1505.02(f) | 1505.02(f) Amendment of the Basis | 1505.02(f) Amendment of the Basis | In an application that is not the subject of an inter partes proceeding before the Board, if an applicant wants to add or substitute a basis after publication, the applicant must file a Petition to Director in the tradem |
| 1505.02(g) | 1505.02(g) Amendments to the Applicant’s Name, Citizenship, or Entity Type | 1505.02(g) Amendments to the Applicant’s Name, Citizenship, or Entity Type | If an applicant proposes to amend an application after publication to correct an inadvertent error in the manner in which its name, entity type, or citizenship is set forth, and the amendment is otherwise proper, the USP |
| 1505.03 | 1505.03 Republication for Opposition | 1505.03 Republication for Opposition | The following sections list examples of post-publication amendments that require republication of the mark and those that do not require republication. If a mark that is the subject of a request for an extension of time |
| 1505.03(a) | 1505.03(a) When Republication Is Required | 1505.03(a) When Republication Is Required | Republication is required after entry of any acceptable post-publication amendment that expands the applicant’s rights or would otherwise require notice to third parties. The following list, though not exhaustive, provid |
| 1505.03(b) | 1505.03(b) When Republication Is Not Required | 1505.03(b) When Republication Is Not Required | Republication is not required after entry of acceptable post-publication amendments in the following situations: The mark is amended, and the USPTO determines that the amendment is not a material alteration of the mark; |
| 1506 | 1506 Concurrent Use Registration Proceeding | 1506 Concurrent Use Registration Proceeding | A concurrent use registration proceeding is an inter partes proceeding in which the Board determines whether one or more applicants are entitled to concurrent registration. A concurrent registration is one with condition |
| 1507 | 1507 Interference | 1507 Interference | 15 U.S.C. §1066 Interference; declaration by Director. Upon petition showing extraordinary circumstances, the Director may declare that an interference exists when application is made for the registration of a mark which |
| 1601 | 1601 Types of Registrations | 1601 Types of Registrations | |
| 1601.01 | 1601.01 Registrations Now Being Issued | 1601.01 Registrations Now Being Issued | Currently, the United States Patent and Trademark Office (USPTO) issues registrations only under the Trademark Act of 1946, as Amended, 15 U.S.C. §§1051 et seq. These are either Principal Register registrations or Supple |
| 1601.01(a) | 1601.01(a) Certificate of Registration | 1601.01(a) Certificate of Registration | On May 24, 2022, the USPTO began issuing electronic registration certificates for all registrations resulting from applications based on §§1, 44, and 66(a) of the Trademark Act, 15 U.S.C. §§1051 , 1126 , 1141f(a) . See U |
| 1601.01(b) | 1601.01(b) Presentation Copy of Registration Certificate | 1601.01(b) Presentation Copy of Registration Certificate | Trademark owners can order a one-page, condensed, printed copy of the issued registration that is suitable for framing. This document, known as a “presentation” copy, is printed on heavy paper; features a gold foil seal; |
| 1601.01(c) | 1601.01(c) Registered Extension of Protection of International Registration to the United States | 1601.01(c) Registered Extension of Protection of International Registration to the United States | Effective November 2, 2003, §66(a) of the Trademark Act, 15 U.S.C. §1141f(a) , permits the holder of an international registration to file a request for extension of protection of the international registration to the Un |
| 1601.02 | 1601.02 Repeal of Prior Acts | 1601.02 Repeal of Prior Acts | The Act of 1946 became effective on July 5, 1947. Most Acts relating to trademarks that existed prior to the Act of 1946 were repealed as of the effective date of the Act of 1946. Repealed Acts include the Act of 1881, t |
| 1601.03 | 1601.03 Additional Registration Under Act of 1946 | 1601.03 Additional Registration Under Act of 1946 | Marks that were registered under any previous Act may be registered again, under the Act of 1946, if the mark meets the requirements of the Act of 1946. Trademark Act §46(b), 15 U.S.C. §1051 note . However, the USPTO wil |
| 1601.04 | 1601.04 1881 and 1905 Act Registrations | 1601.04 1881 and 1905 Act Registrations | Registrations that were issued under the Acts of 1881 and 1905 may be renewed under §9 of the Act of 1946, 15 U.S.C. §1059 . These registrations are subject to, and entitled to the benefits of, the provisions of the Act |
| 1601.05 | 1601.05 1920 Act Registrations | 1601.05 1920 Act Registrations | Registrations under the Act of 1920 are subject to, and entitled to the benefits of, the provisions of the Act of 1946 relating to marks registered on the Supplemental Register, and may not be renewed, unless renewal is |
| 1601.06 | 1601.06 Registrations Issued Under Prior Classification Systems | 1601.06 Registrations Issued Under Prior Classification Systems | Prior to September 1, 1973, the United States used its own system for the classification of goods and services, which is different from the international classification system. For all registrations issued on the basis o |
| 1601.07 | 1601.07 Form of Copies of Registrations | 1601.07 Form of Copies of Registrations | Before August 24, 1920, the name of the Act under which a registration was issued was not designated on the copy of the registration on file in the Trademark Search Library. Beginning with registrations issued on August |
| 1602 | 1602 Duration and Maintenance of Registrations | 1602 Duration and Maintenance of Registrations | The Trademark Act of 1946, 15 U.S.C. §§1051 et seq. , became effective on July 5, 1947, and as of that date the Trademark Acts of 1881, 1905, and 1920 were repealed insofar as they were inconsistent with the Act of 1946. |
| 1602.01 | 1602.01 Act of 1946, as Amended | 1602.01 Act of 1946, as Amended | Registrations Resulting from Applications Under §1 and §44 The Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935, which took effect on November 16, 1989, amended §9 of the Trademark Act of 1946 to r |
| 1602.02 | 1602.02 Acts of 1881 and 1905 | 1602.02 Acts of 1881 and 1905 | Registrations under the Act of 1905 were issued for an original term of twenty years, and were renewable for twenty-year periods. Registrations under the Act of 1881 were issued for an original term of thirty years, and |
| 1602.03 | 1602.03 Act of 1920 | 1602.03 Act of 1920 | The Act of 1920 did not specify any term of registration. However, the Act of 1946 provided that 1920 Act registrations would expire six months after July 5, 1947 (the effective date of the 1946 Act), or twenty years fro |
| 1602.04 | 1602.04 Trademark Law Treaty Implementation Act Changes | 1602.04 Trademark Law Treaty Implementation Act Changes | The Trademark Law Treaty Implementation Act of 1998 (TLTIA), Pub. L. No. 105-330, 112 Stat. 3064, changed the requirements for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058 (§8 affida |
| 1603 | 1603 Bringing Prior Act Registrations Under 1946 Act, §12(c) | 1603 Bringing Prior Act Registrations Under 1946 Act, §12(c) | Owners of marks registered under the Acts of 1905 or 1881 may claim the benefits of the Act of 1946, but are not required to do so. Trademark Act §12(c), 15 U.S.C. §1062(c) . The 1946 Act refers to a “registrant” claimin |
| 1603.02 | 1603.02 Cancellation and Incontestability | 1603.02 Cancellation and Incontestability | If the benefits of the Act of 1946 are claimed, registrants under the Acts of 1905 and 1881 may subsequently file affidavits or declarations under §15 of the Act of 1946, 15 U.S.C. §1064 , whereby the marks shall be inco |
| 1603.03 | 1603.03 Affidavits or Declarations of Use in Commerce Required | 1603.03 Affidavits or Declarations of Use in Commerce Required | After the benefits of the Act of 1946 are claimed for a registration issued under the Act of 1881 or the Act of 1905, the owner must file an affidavit or declaration of use or excusable nonuse on or after the fifth anniv |
| 1604 | 1604 Affidavit or Declaration of Use or Excusable Nonuse of Mark in Commerce under §8 of the Trademark Act | 1604 Affidavit or Declaration of Use or Excusable Nonuse of Mark in Commerce under §8 of the Trademark Act | 15 U.S.C. §1058. Duration, affidavits and fees. (a) Time Periods for Required Affidavits. Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director u |
| 1604.01 | 1604.01 Registrations to Which §8 Affidavit or Declaration Pertains | 1604.01 Registrations to Which §8 Affidavit or Declaration Pertains | Registered Extensions of Protection Resulting from Applications Under §66(a) Section 8 of the Trademark Act does not apply to registrations resulting from applications under §66(a) of the Trademark Act; it applies only t |
| 1604.02 | 1604.02 Notice of When Affidavit or Declaration Is Due | 1604.02 Notice of When Affidavit or Declaration Is Due | A statement noting the requirements for filing the affidavits or declarations of use or excusable nonuse under §8 of the Act (and applications for renewal under §9 of the Act) is included on each certificate of registrat |
| 1604.03 | 1604.03 Form for Filing §8 Affidavit or Declaration | 1604.03 Form for Filing §8 Affidavit or Declaration | Owners must file the §8 affidavit or declaration through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23(a) ; TMEP §301.01 . See TMEP §30 |
| 1604.04 | 1604.04 Time for Filing §8 Affidavit or Declaration | 1604.04 Time for Filing §8 Affidavit or Declaration | 37 C.F.R. During the following time periods, the owner of the registration must file an affidavit or declaration of continued use or excusable nonuse, or the registration will be cancelled: (1) (i) For registrations issu |
| 1604.04(a) | 1604.04(a) Premature Filing of §8 Affidavit or Declaration | 1604.04(a) Premature Filing of §8 Affidavit or Declaration | The affidavit or declaration cannot be accepted if it is filed before the time periods specified in §8(a) of the Act. The purpose of the affidavit or declaration is to show that the mark is still in use in commerce withi |
| 1604.04(b) | 1604.04(b) Registrations in Twenty-Year Terms | 1604.04(b) Registrations in Twenty-Year Terms | As noted in TMEP §1604.04 , §8(a)(2) of the Trademark Act, 15 U.S.C. §1058(a)(2) , requires an affidavit or declaration of use or excusable nonuse at the end of each successive ten-year period following the date of regis |
| 1604.05 | 1604.05 Requirements for §8 Affidavit or Declaration | 1604.05 Requirements for §8 Affidavit or Declaration | 37 C.F.R. Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse; requirement for the submission of additional information, exhibits, affidavits or declarations, and specimens; and fe |
| 1604.06 | 1604.06 Fees for §8 Affidavit or Declaration | 1604.06 Fees for §8 Affidavit or Declaration | |
| 1604.06(a) | 1604.06(a) Filing Fee for Affidavit or Declaration | 1604.06(a) Filing Fee for Affidavit or Declaration | Under 15 U.S.C. §1058(b) and 37 C.F.R. §2.161(a)(4)(i) , an affidavit or declaration of use or excusable nonuse must include the fee required by 37 C.F.R. §2.6 for each class that the affidavit or declaration covers. See |
| 1604.06(b) | 1604.06(b) Grace Period Surcharge and Deficiency Surcharge | 1604.06(b) Grace Period Surcharge and Deficiency Surcharge | If the affidavit or declaration is filed during the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3) , it must include the grace period surcharge per class required by 37 C.F.R. §2.6 . Section 8(c) of the Tr |
| 1604.06(c) | 1604.06(c) Processing Affidavit or Declaration Filed with Insufficient Fees | 1604.06(c) Processing Affidavit or Declaration Filed with Insufficient Fees | An affidavit or declaration that does not include a fee, or does not include sufficient fees for all the classes to which the affidavit or declaration pertains (and the grace period surcharge, where applicable), is defic |
| 1604.07 | 1604.07 Ownership and Who May File §8 Affidavit or Declaration | 1604.07 Ownership and Who May File §8 Affidavit or Declaration | |
| 1604.07(a) | 1604.07(a) Affidavit or Declaration Must Be Filed by Owner | 1604.07(a) Affidavit or Declaration Must Be Filed by Owner | The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration. Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8 |
| 1604.07(b) | 1604.07(b) Establishing Ownership | 1604.07(b) Establishing Ownership | When the affidavit or declaration is filed by someone other than the original owner of the registration, the USPTO cannot accept the affidavit or declaration unless there is a clear chain of title from the original owner |
| 1604.07(c) | 1604.07(c) Acceptance Notice Issued in Name of Owner of Record | 1604.07(c) Acceptance Notice Issued in Name of Owner of Record | The notification of acceptance of a §8 affidavit or declaration is issued in the name of the owner of record, as shown in the Trademark database. When a party other than the original owner files a §8 affidavit or declara |
| 1604.07(d) | 1604.07(d) Changes of Legal Entity | 1604.07(d) Changes of Legal Entity | The procedures for establishing ownership, as discussed in TMEP §1604.07(b) , also apply to changes of name and changes of legal entity. See TMEP §1604.07(e) regarding changes of name. A change in the state of incorporat |
| 1604.07(e) | 1604.07(e) Changes of Name | 1604.07(e) Changes of Name | A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §8 affidavit or declaration. Therefore, if the owner |
| 1604.07(f) | 1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner | 1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner | If the affidavit or declaration was filed by the owner of the registration, but there is a mistake in the manner in which the name of the owner is set out, the mistake can be corrected. In re Atlanta Blue Print Co. , 19 |
| 1604.08 | 1604.08 Execution of Affidavit or Declaration | 1604.08 Execution of Affidavit or Declaration | |
| 1604.08(a) | 1604.08(a) Persons Who May Sign Affidavit or Declaration | 1604.08(a) Persons Who May Sign Affidavit or Declaration | See TMEP §611.03(a) regarding who may sign the affidavit or declaration. Generally, the USPTO does not question the authority of the person who signs a verification unless there is an inconsistency in the record as to th |
| 1604.08(b) | 1604.08(b) Date of Execution of Affidavit or Declaration | 1604.08(b) Date of Execution of Affidavit or Declaration | Under 37 C.F.R. §2.161(a)(2) , the verified statement must be executed on or after the beginning of the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058 , (i.e., on or after the fifth anniversary of the |
| 1604.08(c) | 1604.08(c) Signature of Electronically Transmitted Affidavit or Declaration | 1604.08(c) Signature of Electronically Transmitted Affidavit or Declaration | See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of an affidavit or declaration filed through the trademark electronic filing system. |
| 1604.08(d) | 1604.08(d) Form and Wording of Verification | 1604.08(d) Form and Wording of Verification | The format of the verification may be: (1) the classical form for verifying, which includes an oath (jurat) ( see TMEP §804.01(a) ); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath ( see |
| 1604.09 | 1604.09 Goods/Services/Classes Set Forth in §8 Affidavit or Declaration | 1604.09 Goods/Services/Classes Set Forth in §8 Affidavit or Declaration | |
| 1604.09(a) | 1604.09(a) Goods/Services/Collective Membership Organization Must Be Specified or Expressly Incorporated by Reference | 1604.09(a) Goods/Services/Collective Membership Organization Must Be Specified or Expressly Incorporated by Reference | Under 15 U.S.C. §1058(b) and 37 C.F.R. §2.161(a)(5)(i) , the affidavit or declaration must specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce and/or |
| 1604.09(b) | 1604.09(b) Deletion of Goods/Services/Classes | 1604.09(b) Deletion of Goods/Services/Classes | If the owner of the registration intends to delete goods/services/classes from the registration, this should be expressly stated in the affidavit or declaration. 37 C.F.R. §2.161(a)(5)(ii) . Once an owner expressly indic |
| 1604.09(c) | 1604.09(c) Failure to List All Goods/Services/Collective Membership Organization in Registration | 1604.09(c) Failure to List All Goods/Services/Collective Membership Organization in Registration | An affidavit or declaration that fails to list or incorporate by reference all goods/services/or the nature of the collective membership organization listed in the registration, and does not include a statement of intent |
| 1604.09(d) | 1604.09(d) New Goods and/or Services Cannot Be Added | 1604.09(d) New Goods and/or Services Cannot Be Added | Goods and/or services that are not listed in the registration may not be set forth in the §8 affidavit or declaration. |
| 1604.10 | 1604.10 Use in Commerce | 1604.10 Use in Commerce | The §8 affidavit or declaration must state that the mark is in use in commerce, unless excusable nonuse is claimed. 37 C.F.R. §2.161(a)(6)(i) . See TMEP §1604.11 regarding excusable nonuse. The use in commerce requiremen |
| 1604.11 | 1604.11 “Excusable Nonuse” of Mark | 1604.11 “Excusable Nonuse” of Mark | 37 C.F.R. (Extract) Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse; requirement for the submission of additional information, exhibits, affidavits or declarations, and specime |
| 1604.12 | 1604.12 Specimen Showing Current Use of Mark in Commerce | 1604.12 Specimen Showing Current Use of Mark in Commerce | |
| 1604.12(a) | 1604.12(a) Specimen for Each Class Required | 1604.12(a) Specimen for Each Class Required | A §8 affidavit or declaration must include a specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed. 15 U.S.C. §1058(b) ; 37 C.F.R. §2.161(a)(7) . When |
| 1604.12(b) | 1604.12(b) Specimen Submission Issues | 1604.12(b) Specimen Submission Issues | Under 37 C.F.R. §2.56(d) , the specimen must generally be submitted through the trademark electronic filing system in a file format that is designated acceptable by the USPTO. See TMEP §904.02(a) for more information reg |
| 1604.12(c) | 1604.12(c) Substitute Specimens | 1604.12(c) Substitute Specimens | If a specimen for any class is omitted or is deficient, the owner must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with th |
| 1604.13 | 1604.13 Differences in the Mark as Used on the Specimen and the Mark as Registered | 1604.13 Differences in the Mark as Used on the Specimen and the Mark as Registered | The mark to which the §8 affidavit or declaration pertains must be essentially the same as the mark that appears in the registration. Where the specimen reflects a change in the mark since the registration issued, accept |
| 1604.13(a) | 1604.13(a) Possible Amendment of Mark in Registration | 1604.13(a) Possible Amendment of Mark in Registration | If the USPTO accepts the §8 affidavit or declaration, and there is a difference between the mark on the specimen filed with the affidavit or declaration and the mark in the registration, the mark as originally registered |
| 1604.14 | 1604.14 Designation of Domestic Representative by Foreign Owner | 1604.14 Designation of Domestic Representative by Foreign Owner | An owner that is not domiciled in the United States may file a document designating the name, email address, and postal address of a person residing in the United States on whom notices or process in proceedings affectin |
| 1604.15 | 1604.15 Office Actions and Notices Regarding Affidavit or Declaration | 1604.15 Office Actions and Notices Regarding Affidavit or Declaration | Upon receipt of a §8 affidavit or declaration, the USPTO updates the prosecution history of the registration in the Trademark database to indicate that the affidavit or declaration has been filed. If the §8 affidavit or |
| 1604.16 | 1604.16 Response to Office Action | 1604.16 Response to Office Action | Deadline . Under 37 C.F.R. §2.163(b) , the owner must file a response to a refusal within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) of the Ac |
| 1604.17 | 1604.17 Correction of Deficiencies in §8 Affidavit or Declaration | 1604.17 Correction of Deficiencies in §8 Affidavit or Declaration | 37 C.F.R. Correcting deficiencies in affidavit or declaration. (a) If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, deficiencies may be corrected after notification from |
| 1604.17(a) | 1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §8(a) of the Act | 1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §8(a) of the Act | If the affidavit or declaration is filed during the periods set forth in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Act, or within one year before the |
| 1604.17(b) | 1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period | 1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period | If the affidavit or declaration is filed during the six-month grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3) , deficiencies may be corrected, after notification from the Office, before the expiration of th |
| 1604.17(c) | 1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period | 1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period | The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed within the time period set forth in §8 of the Act (including the grace period). 15 U.S.C. §1058(a) . Untimely fili |
| 1604.18(a) | 1604.18(a) Response to Examiner’s Refusal Required Before Petition | 1604.18(a) Response to Examiner’s Refusal Required Before Petition | A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. |
| 1604.18(b) | 1604.18(b) Decision on Petition Is Final Action of the USPTO | 1604.18(b) Decision on Petition Is Final Action of the USPTO | The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration ( see TMEP §1604.18(c) ), or an appeal to an appropriate court ( see TMEP §1604.18(d)) w |
| 1604.18(c) | 1604.18(c) Request for Reconsideration of Denial of Petition | 1604.18(c) Request for Reconsideration of Denial of Petition | Under 37 C.F.R. §2.146(j) , if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid w |
| 1604.18(d) | 1604.18(d) Appeal to Federal Court | 1604.18(d) Appeal to Federal Court | The owner of the registration may appeal to the U.S. Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition. 15 U.S.C. §1071(a)(1) , (b)(1) ; 37 C.F.R. §2.145(a) |
| 1604.19 | 1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application | 1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application | A §8 affidavit or declaration and a §9 renewal application may be combined into a single document, if the document meets the requirements of both §8 and §9 of the Act. 37 C.F.R. §2.166 . The filing fee for the combined § |
| 1604.20 | 1604.20 Additional Requirements for §8 Affidavits or Declarations Pertaining to Collective Marks | 1604.20 Additional Requirements for §8 Affidavits or Declarations Pertaining to Collective Marks | In addition to the requirements specified in 37 C.F.R. §2.161(a)(1)-(7) and TMEP §§1604.06–1604.19 , a complete §8 affidavit or declaration pertaining to a collective trademark, collective service mark, or collective mem |
| 1604.20(a) | 1604.20(a) Exercising Legitimate Control | 1604.20(a) Exercising Legitimate Control | If use in commerce is claimed, the owner must submit a verified statement that the owner is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R. §2.161(a)(8)(i) . If this verified statement i |
| 1604.20(b) | 1604.20(b) Manner/Method of Control | 1604.20(b) Manner/Method of Control | If the registration issued from an application based solely on §44 of the Act, the owner must state the nature of the owner’s control over the use of the mark by the members, in the first §8 affidavit or declaration of u |
| 1604.21 | 1604.21 Additional Requirements for §8 Affidavits or Declarations Pertaining to Certification Marks | 1604.21 Additional Requirements for §8 Affidavits or Declarations Pertaining to Certification Marks | In addition to the requirements specified in 37 C.F.R. §2.161(a)(1)-(7) and TMEP §§1604.06–1604.19 , a complete §8 affidavit or declaration pertaining to a certification mark for which use in commerce is claimed must inc |
| 1604.21(a) | 1604.21(a) Certification Standards | 1604.21(a) Certification Standards | Submitting certification standards for the first time . If the registration issued from an application based solely on §44 of the Act, the owner must include a copy of the standards established to determine whether other |
| 1604.21(b) | 1604.21(b) Exercising Legitimate Control | 1604.21(b) Exercising Legitimate Control | If use in commerce is claimed, the owner must submit a verified statement that the owner is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R. §2.161(a)(9)(ii) . If this verified statement |
| 1604.21(c) | 1604.21(c) Certification Statement | 1604.21(c) Certification Statement | If use in commerce is claimed, the §8 affidavit or declaration must include a statement specifying the characteristic, standard, or other feature that is being certified by the mark, also known as the certification state |
| 1604.21(d) | 1604.21(d) Statement that Owner is Not Engaged in Production or Marketing of the Goods/Services | 1604.21(d) Statement that Owner is Not Engaged in Production or Marketing of the Goods/Services | If use in commerce is claimed, the §8 affidavit or declaration must contain a statement that the owner is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advert |
| 1604.22 | 1604.22 Post Registration Audit | 1604.22 Post Registration Audit | To promote the accuracy and integrity of the trademark register and preserve the register as a reliable reflection of marks in use in commerce, the USPTO conducts audits of §8 affidavits or declarations in which the mark |
| 1604.23 | 1604.23 Correction of §8 Affidavit or Declaration | 1604.23 Correction of §8 Affidavit or Declaration | An owner may discover inaccuracies in a §8 affidavit or declaration after submitting the filing to the USPTO. Inaccuracies Discovered Before the Filing Has Been Accepted If an owner discovers inaccuracies in a §8 affidav |
| 1605 | 1605 Affidavit or Declaration of Incontestability Under §15 of the Trademark Act | 1605 Affidavit or Declaration of Incontestability Under §15 of the Trademark Act | Trademark Act §15, 15 U.S.C. §1065 , provides a procedure by which the exclusive right to use a registered mark in commerce on or in connection with the goods or services covered by the registration can become “incontest |
| 1605.01 | 1605.01 Registrations to Which §15 Affidavit or Declaration Pertains | 1605.01 Registrations to Which §15 Affidavit or Declaration Pertains | The provisions of §15 of the Trademark Act apply only to registrations issued on the Principal Register under the Act of 1946 and to registrations issued under the Acts of 1905 and 1881 that have been “published” under § |
| 1605.02 | 1605.02 Form for Filing Affidavit or Declaration of Incontestability | 1605.02 Form for Filing Affidavit or Declaration of Incontestability | Owners must file the §15 affidavit or declaration through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23 ; TMEP §§301.01 , 301.01(a) . S |
| 1605.03 | 1605.03 Time for Filing Affidavit or Declaration of Incontestability | 1605.03 Time for Filing Affidavit or Declaration of Incontestability | The owner may not file a §15 affidavit or declaration until the federally registered mark has been in continuous use in commerce for at least five consecutive years after the date of registration. This may be any five-ye |
| 1605.04 | 1605.04 Requirements for Affidavit or Declaration of Incontestability | 1605.04 Requirements for Affidavit or Declaration of Incontestability | Section 15 of the Act refers to the affidavit or declaration merely as “setting forth” the specified information. 15 U.S.C. §1065(3) . Therefore, no showing or proof beyond the owner’s verified statement is required. Mus |
| 1605.05 | 1605.05 Combining §15 Affidavit or Declaration with §8 Affidavit or Declaration | 1605.05 Combining §15 Affidavit or Declaration with §8 Affidavit or Declaration | A §15 affidavit or declaration may be combined with a §8 affidavit or declaration, if the combined affidavit or declaration meets the requirements of both §8 and §15. The filing fee for a combined §8 and §15 affidavit or |
| 1605.06 | 1605.06 Section 14 Limitation Is Independent of §15 Affidavit or Declaration | 1605.06 Section 14 Limitation Is Independent of §15 Affidavit or Declaration | Trademark Act §14, 15 U.S.C. §1064 , limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years from the date of re |
| 1606 | 1606 Renewal of Registration Under §9 of the Trademark Act | 1606 Renewal of Registration Under §9 of the Trademark Act | 15 U.S.C. §1059. Renewal of registration. (a) Subject to the provisions of section 8, each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registrati |
| 1606.01 | 1606.01 Which Registrations Must Be Renewed Under §9 | 1606.01 Which Registrations Must Be Renewed Under §9 | |
| 1606.01(a) | 1606.01(a) Registrations Based on Applications Under §1 or §44 Must Be Renewed Under §9 | 1606.01(a) Registrations Based on Applications Under §1 or §44 Must Be Renewed Under §9 | Section 9 of the Trademark Act, 15 U.S.C. §1059 , requires that registrations resulting from applications based on §1 or §44 of the Trademark Act be renewed periodically. See TMEP §1606.02 .for information about the requ |
| 1606.01(b) | 1606.01(b) Section 9 Does Not Apply to Extensions of Protection of International Registrations to the United States | 1606.01(b) Section 9 Does Not Apply to Extensions of Protection of International Registrations to the United States | Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States. Renewal of international registrations must be made at the IB, in accordance with |
| 1606.01(c) | 1606.01(c) Renewal of Registrations Issued Under Prior U.S. Trademark Acts Must Be Renewed Under §9 | 1606.01(c) Renewal of Registrations Issued Under Prior U.S. Trademark Acts Must Be Renewed Under §9 | An application for renewal of a registration issued under a prior Act, where required, must meet all the requirements of §9 of the Act and 37 C.F.R. §2.183 . See TMEP §1602.02 regarding the renewal of registrations issue |
| 1606.02 | 1606.02 Requirements for Renewal Under §9 | 1606.02 Requirements for Renewal Under §9 | 37 C.F.R. Requirements for a complete renewal application. A complete renewal application must include: (a) A request for renewal of the registration, signed by the registrant or the registrant’s representative; (b) The |
| 1606.03 | 1606.03 Time for Filing §9 Renewal Application | 1606.03 Time for Filing §9 Renewal Application | The application for renewal must be filed within one year before the expiration of the registration, or within the six-month grace period after the expiration of the registration with an additional grace period surcharge |
| 1606.03(a) | 1606.03(a) Premature Filing of §9 Renewal Application | 1606.03(a) Premature Filing of §9 Renewal Application | A renewal application may not be filed before the period specified in §9 of the Act. In re Holland Am. Wafer Co. , 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). For Permitted Paper Filers . If an application for renewal |
| 1606.04 | 1606.04 Form for Filing §9 Renewal Application | 1606.04 Form for Filing §9 Renewal Application | Owners must file the renewal application through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23 ; TMEP §301.01 . See TMEP §301.02 for th |
| 1606.05 | 1606.05 Fees for §9 Renewal Applications | 1606.05 Fees for §9 Renewal Applications | |
| 1606.05(a) | 1606.05(a) Fee for Filing Application for Renewal Under §9 | 1606.05(a) Fee for Filing Application for Renewal Under §9 | A renewal application must include the fee required by 37 C.F.R. §2.6 for each class for which renewal is sought. 15 U.S.C. §1059(a) ; 37 C.F.R. §2.183(b) . See TMEP §§1401.02 , 1401.04 , and 1601.06 regarding use of int |
| 1606.05(b) | 1606.05(b) Grace Period Surcharge and Deficiency Surcharge | 1606.05(b) Grace Period Surcharge and Deficiency Surcharge | If the renewal application is filed during the six-month grace period, there is an additional grace period surcharge for each class for which renewal is sought. 15 U.S.C. §1059(a) ; 37 C.F.R. §2.183(c) . Under §9(a) of t |
| 1606.05(c) | 1606.05(c) Processing §9 Renewal Application Filed with Insufficient Fees | 1606.05(c) Processing §9 Renewal Application Filed with Insufficient Fees | A §9 renewal application that does not include sufficient fees to cover the filing fee for all the classes to which the application pertains (and the grace period surcharge, where applicable), is deficient. If the renewa |
| 1606.06 | 1606.06 Ownership and Who May File §9 Renewal Application | 1606.06 Ownership and Who May File §9 Renewal Application | The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be filed by the owner of the registration. Therefore, if the renewal applicant is not the owner of record, the USPTO does no |
| 1606.07 | 1606.07 Execution of §9 Renewal Application | 1606.07 Execution of §9 Renewal Application | Under 37 C.F.R. §2.183(a) , a renewal application must be signed by “the registrant or the registrant’s representative.” Verification is not required. Generally, the USPTO does not question the authority of the person wh |
| 1606.08 | 1606.08 Goods/Services/Classes Set Forth in §9 Renewal Application | 1606.08 Goods/Services/Classes Set Forth in §9 Renewal Application | |
| 1606.08(a) | 1606.08(a) Listing of Goods/Services/Classes Required Only for Partial Renewal | 1606.08(a) Listing of Goods/Services/Classes Required Only for Partial Renewal | Neither the Trademark Act nor the Trademark Rules of Practice requires a specific listing of the goods/services/classes in the registration, if the renewal application covers all the goods/services/classes in the registr |
| 1606.08(b) | 1606.08(b) No Goods/Services/Classes Listed | 1606.08(b) No Goods/Services/Classes Listed | If no goods/services/classes are specified in the renewal application, it will be presumed that renewal is sought for all the goods/services/classes in the registration. |
| 1606.08(c) | 1606.08(c) Some Goods/Services/Classes Listed | 1606.08(c) Some Goods/Services/Classes Listed | If the renewal application lists only some of the goods/services/classes set forth in the registration, it will be presumed that renewal is sought for only the goods/services/classes listed, and the goods/services/classe |
| 1606.08(d) | 1606.08(d) Goods/Services/Classes Not Listed in Registration May Not Be Listed in Renewal Application | 1606.08(d) Goods/Services/Classes Not Listed in Registration May Not Be Listed in Renewal Application | Goods/services/classes that are not listed in the registration may not be listed in the renewal application. |
| 1606.09 | 1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required | 1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required | The Trademark Act does not require that a renewal application include an affidavit or declaration of use in commerce, a specimen of use, or a showing that any nonuse is due to special circumstances that excuse the nonuse |
| 1606.10 | 1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal Under §9 | 1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal Under §9 | A renewal applicant who is not domiciled in the United States may file a document designating the name, email address, and postal address of a person residing in the United States on whom notices or process in proceeding |
| 1606.11 | 1606.11 Office Actions and Notices Regarding §9 Renewal Application | 1606.11 Office Actions and Notices Regarding §9 Renewal Application | Upon receipt of a §9 renewal application, the prosecution history of the registration in the Trademark database is updated to show that the renewal application has been filed. In addition, upon successful submission, the |
| 1606.12 | 1606.12 Response to Office Action | 1606.12 Response to Office Action | Deadline . If the renewal application is not acceptable, the USPTO will notify the renewal applicant of the reason(s) for refusal. 15 U.S.C. §1059(b) ; 37 C.F.R. §2.184(a) . The registrant must file a response to a refus |
| 1606.13 | 1606.13 Correction of Deficiencies in §9 Renewal Applications | 1606.13 Correction of Deficiencies in §9 Renewal Applications | 37 C.F.R. Correcting deficiencies in renewal application. (a) If the renewal application is filed within the time periods set forth in section 9(a) of the Act, deficiencies may be corrected after notification from the Of |
| 1606.13(a) | 1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration | 1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration | If the renewal application is filed within one year before the expiration date of the registration, deficiencies may be corrected, after notification from the Office, before the expiration date without paying a deficienc |
| 1606.13(b) | 1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period | 1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period | If the renewal application is filed during the grace period, deficiencies may be corrected, after notification from the Office, before the expiration of the grace period without paying a deficiency surcharge, or after th |
| 1606.13(c) | 1606.13(c) Late Filing Cannot Be Cured | 1606.13(c) Late Filing Cannot Be Cured | If the renewal application is not filed within the statutory filing period (which includes the grace period), the registration will expire. Filing after the expiration of the grace period is not a deficiency that can be |
| 1606.14(a) | 1606.14(a) Response to Examiner’s Refusal Required Before Petition | 1606.14(a) Response to Examiner’s Refusal Required Before Petition | A response to the initial refusal to accept a renewal application is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. 37 C.F |
| 1606.14(b) | 1606.14(b) Decision on Petition is Final Action of the USPTO | 1606.14(b) Decision on Petition is Final Action of the USPTO | The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration of the decision ( see TMEP §1606.14(c) ), or an appeal to federal court ( see TMEP §1606 |
| 1606.14(c) | 1606.14(c) Request for Reconsideration of Denial of Petition | 1606.14(c) Request for Reconsideration of Denial of Petition | Under 37 C.F.R. §2.146(j) , if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid w |
| 1606.14(d) | 1606.14(d) Appeal to Federal Court | 1606.14(d) Appeal to Federal Court | The registrant may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on petition. 15 U.S.C. §§1071(a)(1) , (b)(1) ; 37 C.F.R. §2.145(a) , (c) . The |
| 1606.15 | 1606.15 Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse | 1606.15 Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse | A §9 renewal application and a §8 affidavit or declaration may be combined into a single document, if the document meets the requirements of both §§8 and 9 of the Act. 37 C.F.R. §2.166 . See TMEP §1604.19 for further inf |
| 1607 | 1607 Cancellation of Registrations Under Trademark Act §§14 and 37 | 1607 Cancellation of Registrations Under Trademark Act §§14 and 37 | A petition to cancel a registration owned by another party may be filed with the Trademark Trial and Appeal Board (Board) under Trademark Act §14, 15 U.S.C. §1064 , and 37 C.F.R. §2.111 . See TBMP §§303 , 307 , 308 , and |
| 1608 | 1608 Surrender of Registration for Cancellation | 1608 Surrender of Registration for Cancellation | The owner of a registration may voluntarily surrender their registration for cancellation, under Trademark Act §7(e), 15 U.S.C. §1057(e) . The owner of the registration must submit a Surrender of Registration for Cancell |
| 1609 | 1609 Amendment and Correction of Registrations | 1609 Amendment and Correction of Registrations | |
| 1609.01 | 1609.01 Amendment of Registration - In General | 1609.01 Amendment of Registration - In General | |
| 1609.01(a) | 1609.01(a) Limited Amendments to Registered Extension of Protection | 1609.01(a) Limited Amendments to Registered Extension of Protection | An extension of protection of an international registration remains part of (and dependent on) the international registration even after registration in the United States. 15 U.S.C. §1141j ; 37 C.F.R. §7.30 ; TMEP §§1601 |
| 1609.01(b) | 1609.01(b) Amendment of Registration Resulting from §1 or §44 Application | 1609.01(b) Amendment of Registration Resulting from §1 or §44 Application | Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended “for good cause.” Any request for amendment of a mark must be accompanied by the required fee. |
| 1609.02 | 1609.02 Amendment of Mark | 1609.02 Amendment of Mark | Mark in Registered Extension of Protection Cannot Be Amended The holder of a registered extension of protection of an international registration to the United States cannot file a request to amend the mark under §7 of th |
| 1609.02(a) | 1609.02(a) Determining What Constitutes Material Alteration of Mark | 1609.02(a) Determining What Constitutes Material Alteration of Mark | Section 7(e) of the Trademark Act, 15 U.S.C. §1057(e) , prohibits an amendment that materially alters the character of the mark. “Material alteration” is the standard for evaluating amendments to marks at all relevant st |
| 1609.02(b) | 1609.02(b) New Drawing Required | 1609.02(b) New Drawing Required | When applying for an amendment to a registration that involves a change in the mark, the owner of the registration must submit a new drawing displaying the amended mark. 37 C.F.R. §2.173(b)(3) . See TMEP §§807-807.18 reg |
| 1609.02(c) | 1609.02(c) Supporting Specimens and Declaration | 1609.02(c) Supporting Specimens and Declaration | The owner of the registration must submit a specimen showing use of the proposed mark as amended for each class specified in the registration, and must include an affidavit or a declaration under 37 C.F.R. §2.20 stating |
| 1609.02(d) | 1609.02(d) Conforming Amendments | 1609.02(d) Conforming Amendments | If a registration includes a disclaimer, description of the mark, and/or other miscellaneous statement (e.g., lining or stippling statement ( see TMEP §808.01(b) ), translation, transliteration, or color claim), any requ |
| 1609.02(e) | 1609.02(e) Amendment of Black-and-White Drawing of Mark for Which Color Is Claimed to Substitute Color Drawing | 1609.02(e) Amendment of Black-and-White Drawing of Mark for Which Color Is Claimed to Substitute Color Drawing | Prior to November 2, 2003, the USPTO did not publish marks or issue registrations in color. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing th |
| 1609.02(f) | 1609.02(f) Amendment of Black-and-White Drawing to Color Drawing | 1609.02(f) Amendment of Black-and-White Drawing to Color Drawing | A special form drawing registered in black-and-white may be amended under §7(e) to include a claim of color, as long as the amendment does not constitute a material alteration. See 37 C.F.R. §2.173(d) . Requests to amend |
| 1609.02(g) | 1609.02(g) Amendment to Special Form Drawing Containing Black, White, and/or Gray | 1609.02(g) Amendment to Special Form Drawing Containing Black, White, and/or Gray | When a mark shown in special form is amended under §7(e), and the mark shown on the new drawing page contains gray, or the description of the mark refers to black, white, and/or gray, the owner must clarify whether the m |
| 1609.03 | 1609.03 Amendment of Identification | 1609.03 Amendment of Identification | Identification in Registered Extension of Protection The identification of goods, services, or the description of the nature the collective membership organization in a registered extension of protection of an internatio |
| 1609.04 | 1609.04 Amendment of Classification | 1609.04 Amendment of Classification | Classification in Registered Extension of Protection Cannot Be Amended Under §7 The classification in a registered extension of protection of an international registration to the United States may not be amended under §7 |
| 1609.05 | 1609.05 Disclaimer of Mark and Claim of Acquired Distinctiveness | 1609.05 Disclaimer of Mark and Claim of Acquired Distinctiveness | Addition/Deletion of Disclaimer . A registered mark may be amended to disclaim part of the mark. 37 C.F.R. §2.173(a) . However, no amendment seeking the elimination of a disclaimer will be permitted, unless deletion of t |
| 1609.06 | 1609.06 Territorial Restrictions | 1609.06 Territorial Restrictions | A registration cannot be restricted territorially by amendment under §7(e) of the Act. In re Forbo , 4 USPQ2d 1415 (Comm’r Pats. 1984). Generally, a concurrent use restriction cannot be removed from a registration by an |
| 1609.07 | 1609.07 Dates of Use | 1609.07 Dates of Use | The USPTO will accept a correction request changing the dates of use, even if the corrected dates are later than the dates originally set forth in the registration. See In re Pamex Foods, Inc. , 209 USPQ 275 (Comm’r Pats |
| 1609.08 | 1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration | 1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration | Section 14 of the Trademark Act, 15 U.S.C. §1064 , limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years after |
| 1609.09 | 1609.09 Amendment of Registered Mark from Supplemental to Principal Register Not Permitted | 1609.09 Amendment of Registered Mark from Supplemental to Principal Register Not Permitted | A registration on the Supplemental Register may not be amended to the Principal Register. If the owner of a registration wishes to seek registration on the Principal Register of a mark for which it owns a registration on |
| 1609.10 | 1609.10 Correction of Mistake in Registration | 1609.10 Correction of Mistake in Registration | The USPTO may make a correction to a registration in appropriate cases, upon written request by the owner of the registration. The owner of the registration must submit a Section 7 Request for Amendment or Correction of |
| 1609.10(a) | 1609.10(a) Correction of USPTO Error | 1609.10(a) Correction of USPTO Error | Registered Extension of Protection If USPTO records show that a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge. The owner of the registration must submit a Section |
| 1609.10(b) | 1609.10(b) Correction of Owner’s Error | 1609.10(b) Correction of Owner’s Error | Registered Extension of Protection Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of t |
| 1609.11 | 1609.11 Change of Owner’s Address Can Be Filed Through the Trademark Electronic Filing System | 1609.11 Change of Owner’s Address Can Be Filed Through the Trademark Electronic Filing System | It is not necessary to file a §7 amendment to change the address of the owner of a registration. The Change Address or Representation form in the trademark electronic filing system may be used to make such a change. Note |
| 1609.12 | 1609.12 Amendment of Certification Statement for Certification Marks | 1609.12 Amendment of Certification Statement for Certification Marks | A registration for a certification mark must include a statement specifying what the owner is certifying about the goods or services in the registration. See 37 C.F.R. §§2.161(a)(9)(iii) , 7.37(a)(9)(iii) , 7.37(j)(3) ; |
| 1610 | 1610 Court Orders Concerning Registrations | 1610 Court Orders Concerning Registrations | The USPTO must rectify the register and make appropriate entry upon its records in response to a court order certified to the USPTO pursuant to Trademark Act §37, 15 U.S.C. §1119 . That section provides: In any action in |
| 1611 | 1611 Updating Automated Records to Show the Status of Registrations | 1611 Updating Automated Records to Show the Status of Registrations | USPTO records will be automatically updated to indicate the status of registrations as follows: (1) When the owner of a registration timely files a §8 or §71 affidavit or declaration and/or §9 renewal application, USPTO |
| 1612 | 1612 Requirement for Registrant’s Correspondence Email and Domicile Address, Representation, and Attorney Identification Information | 1612 Requirement for Registrant’s Correspondence Email and Domicile Address, Representation, and Attorney Identification Information | |
| 1612.01 | 1612.01 Correspondence Email and Domicile Address of Registrant | 1612.01 Correspondence Email and Domicile Address of Registrant | The requirement for an owner’s email and domicile addresses is generally required in all post-registration submissions. 37 C.F.R. §§2.18(c) , 2.23(b) , 2.189 , 7.25(a) ; see In re Chestek PLLC , 92 F.4th 1105, 1113, 2024 |
| 1612.01(a) | 1612.01(a) Correspondence Email Address | 1612.01(a) Correspondence Email Address | Registrants must provide and keep current a valid email address for correspondence. 37 C.F.R. §§2.18(c) , 2.23(b) , 7.25(a) ; TMEP §609.01 . The registrant’s email address is required even if the registrant has appointed |
| 1612.01(b) | 1612.01(b) Domicile Address of Mark Owner | 1612.01(b) Domicile Address of Mark Owner | Registrants must provide and keep current the address of their domicile and inform the USPTO of any changes to that address. 37 C.F.R. §2.189 ; see In re Chestek PLLC , 92 F.4th 1105, 1113, 2024 USPQ2d 297, at *8 (Fed. C |
| 1612.02 | 1612.02 Representation Based on Domicile of Mark Owner | 1612.02 Representation Based on Domicile of Mark Owner | Mark owner initially unrepresented in post registration filings unless a qualified U.S. attorney is recognized in the filing or is appointed in a separate document. Recognition of a qualified U.S. attorney in a pending a |
| 1612.03 | 1612.03 Attorney Identification Information | 1612.03 Attorney Identification Information | If the registrant is represented by an attorney qualified under 37 C.F.R. §11.14 or is required to appoint such an attorney under 37 C.F.R. §2.11(a) due to its foreign domicile, the registrant must provide the individual |
| 1613 | 1613 Affidavit or Declaration of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act | 1613 Affidavit or Declaration of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act | 15 U.S.C. §1141k. Duration, affidavits and fees. (a) Time Periods for Required Affidavits. Each extension of protection for which a certificate has been issued under section 69 shall remain in force for the term of the i |
| 1613.01 | 1613.01 Registrations to Which §71 Affidavit or Declaration Pertains | 1613.01 Registrations to Which §71 Affidavit or Declaration Pertains | Section 71 of the Trademark Act applies only to registered extensions of protection of international registrations to the United States. However, §8 of the Act, 15 U.S.C. §1058 , requires periodic affidavits or declarati |
| 1613.02 | 1613.02 Notice of When Affidavit or Declaration Is Due | 1613.02 Notice of When Affidavit or Declaration Is Due | A statement noting the requirement for filing the affidavits or declarations of use or excusable nonuse under §71 of the Act is included on each certificate of registration as originally issued. 15 U.S.C. §1141k(d) . Add |
| 1613.03 | 1613.03 Form for Filing §71 Affidavit or Declaration | 1613.03 Form for Filing §71 Affidavit or Declaration | The holder must file the §71 affidavit or declaration through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23(a) ; TMEP §301.01 . See TME |
| 1613.04 | 1613.04 Time for Filing §71 Affidavit or Declaration | 1613.04 Time for Filing §71 Affidavit or Declaration | 37 C.F.R. During the following time periods, the holder of an international registration must file an affidavit or declaration of use or excusable nonuse, or the registered extension of protection will be cancelled under |
| 1613.05 | 1613.05 Requirements for §71 Affidavit or Declaration of Use or Excusable Nonuse | 1613.05 Requirements for §71 Affidavit or Declaration of Use or Excusable Nonuse | 37 C.F.R. Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse; requirement for the submission of additional information, exhibits, affidavits or declarations, and specimens; and fe |
| 1613.06 | 1613.06 Fees for §71 Affidavit or Declaration | 1613.06 Fees for §71 Affidavit or Declaration | |
| 1613.06(a) | 1613.06(a) Filing Fee for Affidavit or Declaration | 1613.06(a) Filing Fee for Affidavit or Declaration | Under 15 U.S.C. §1141k(b) and 37 C.F.R. §7.37(a)(4)(i) , an affidavit or declaration of use or excusable nonuse must include the fee required by 37 C.F.R. §7.6 for each class that the affidavit or declaration covers. See |
| 1613.06(b) | 1613.06(b) Grace Period Surcharge and Deficiency Surcharge | 1613.06(b) Grace Period Surcharge and Deficiency Surcharge | If the affidavit or declaration is filed during the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k (a)(3), it must include the grace period surcharge per class required by 37 C.F.R. §7.6 . 37 C.F.R. §7.36(b)(3 |
| 1613.06(c) | 1613.06(c) Processing Affidavit or Declaration Filed with Insufficient Fees | 1613.06(c) Processing Affidavit or Declaration Filed with Insufficient Fees | An affidavit or declaration that does not include a fee, or does not include sufficient fees for all the classes to which the affidavit or declaration pertains (and the grace period surcharge, where applicable), is defic |
| 1613.07 | 1613.07 Ownership and Who May File §71 Affidavit or Declaration | 1613.07 Ownership and Who May File §71 Affidavit or Declaration | |
| 1613.07(a) | 1613.07(a) Affidavit or Declaration Must Be Filed by Holder | 1613.07(a) Affidavit or Declaration Must Be Filed by Holder | The affidavit or declaration of use or excusable nonuse must be filed by the holder of the international registration. Filing by the holder is a minimum requirement that must be met before the expiration of the deadlines |
| 1613.07(b) | 1613.07(b) Establishing Ownership | 1613.07(b) Establishing Ownership | When the affidavit or declaration is filed by someone other than the original holder of the registration, the USPTO cannot accept the affidavit or declaration unless there is clear chain of title from the original holder |
| 1613.07(c) | 1613.07(c) Changes of Legal Entity | 1613.07(c) Changes of Legal Entity | The procedures for establishing ownership, as discussed in TMEP §1613.07(b) , also apply to changes of name and changes of legal entity. See TMEP §1613.07(d) regarding changes of name. A change in the country or other ju |
| 1613.07(d) | 1613.07(d) Changes of Name | 1613.07(d) Changes of Name | A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §71 affidavit or declaration. Therefore, if the holde |
| 1613.07(e) | 1613.07(e) Correction of Mistake in Setting Forth the Name of the Holder | 1613.07(e) Correction of Mistake in Setting Forth the Name of the Holder | If the affidavit or declaration was filed by the holder of the registration, but there is a mistake in the manner in which the name of the holder is set out in the affidavit or declaration, the mistake can be corrected. |
| 1613.08 | 1613.08 Execution of Affidavit or Declaration | 1613.08 Execution of Affidavit or Declaration | |
| 1613.08(a) | 1613.08(a) Persons Who May Sign Affidavit or Declaration | 1613.08(a) Persons Who May Sign Affidavit or Declaration | See TMEP §611.03(a) regarding who may sign the affidavit or declaration. Generally, the USPTO does not question the authority of the person who signs a verification unless there is an inconsistency in the record as to th |
| 1613.08(b) | 1613.08(b) Date of Execution of Affidavit or Declaration | 1613.08(b) Date of Execution of Affidavit or Declaration | Under 37 C.F.R. §7.37(a)(2) , the verified statement must be executed on or after the beginning of the relevant filing period specified in §71 of the Act, 15 U.S.C. §1141k , (i.e., on or after the fifth anniversary of th |
| 1613.08(c) | 1613.08(c) Signature of Electronically Transmitted Affidavit or Declaration | 1613.08(c) Signature of Electronically Transmitted Affidavit or Declaration | See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of an affidavit or declaration filed through the trademark electronic filing system. |
| 1613.08(d) | 1613.08(d) Form and Wording of Verification | 1613.08(d) Form and Wording of Verification | The format of the verification may be: (1) the classical form for verifying, which includes an oath (jurat) ( see TMEP §804.01(a) ); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath ( see |
| 1613.09 | 1613.09 Goods/Services/Classes Set Forth in §71 Affidavit or Declaration | 1613.09 Goods/Services/Classes Set Forth in §71 Affidavit or Declaration | |
| 1613.09(a) | 1613.09(a) Goods/Services/Collective Membership Organization Must Be Specified or Expressly Incorporated by Reference | 1613.09(a) Goods/Services/Collective Membership Organization Must Be Specified or Expressly Incorporated by Reference | Under 15 U.S.C. §1141k(b) and 37 C.F.R. §7.37(a)(5)(i) , the affidavit or declaration must specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce, and/or |
| 1613.09(b) | 1613.09(b) Deletion of Goods/Services/Classes | 1613.09(b) Deletion of Goods/Services/Classes | If the holder of the registration intends to delete goods/services/classes from the registration, this should be expressly stated in the affidavit or declaration. 37 C.F.R. §7.37(a)(5)(ii) . Once a holder expressly indic |
| 1613.09(c) | 1613.09(c) Failure to List All Goods/Services/Collective Membership Organization in Registration | 1613.09(c) Failure to List All Goods/Services/Collective Membership Organization in Registration | An affidavit or declaration that fails to list or incorporate by reference all the goods/services/or the nature of the collective membership organization listed in the registration, and does not include a statement of in |
| 1613.09(d) | 1613.09(d) New Goods and/or Services Cannot Be Added | 1613.09(d) New Goods and/or Services Cannot Be Added | Goods and/or services that are not listed in the registration may not be set forth in the §71 affidavit or declaration. |
| 1613.10 | 1613.10 Use in Commerce | 1613.10 Use in Commerce | The §71 affidavit or declaration must state that the mark is in use in commerce, unless excusable nonuse is claimed. 37 C.F.R. §7.37(a)(6)(i) . See TMEP §1613.11 regarding excusable nonuse. The use in commerce requiremen |
| 1613.11 | 1613.11 “Excusable Nonuse” of Mark | 1613.11 “Excusable Nonuse” of Mark | 37 C.F.R. (Extract) Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse; requirement for the submission of additional information, exhibits, affidavits or declarations, and specime |
| 1613.12 | 1613.12 Specimen Showing Current Use of Mark in Commerce | 1613.12 Specimen Showing Current Use of Mark in Commerce | |
| 1613.12(a) | 1613.12(a) Specimen for Each Class Required | 1613.12(a) Specimen for Each Class Required | A §71 affidavit or declaration must include a specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed. 15 U.S.C. §1141k(b) ; 37 C.F.R. §7.37(a)(7) . When |
| 1613.12(b) | 1613.12(b) Specimens Submission Issues | 1613.12(b) Specimens Submission Issues | Under 37 C.F.R. §2.56(d) , the specimen must be submitted through the trademark electronic filing system in a file format that is designated acceptable by the USPTO. See TMEP §904.02(a) for more information regarding ele |
| 1613.12(c) | 1613.12(c) Substitute Specimens | 1613.12(c) Substitute Specimens | If a specimen for any class is omitted or is deficient, the holder must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with t |
| 1613.13 | 1613.13 Differences in the Mark as Used on the Specimen and the Mark as Registered | 1613.13 Differences in the Mark as Used on the Specimen and the Mark as Registered | The mark to which the §71 affidavit or declaration pertains must be essentially the same as the mark that appears in the registration. Where the specimen reflects a change in the mark since the registration issued, accep |
| 1613.13(a) | 1613.13(a) Amendment of Mark in Registration | 1613.13(a) Amendment of Mark in Registration | If the USPTO accepts the §71 affidavit or declaration, and there is a difference between the mark on the specimen filed with the affidavit or declaration and the mark in the registration, the mark as originally registere |
| 1613.14 | 1613.14 Designation of Domestic Representative by Foreign Holder | 1613.14 Designation of Domestic Representative by Foreign Holder | If the holder of the international registration of the mark is not domiciled in the United States, the affidavit or declaration may include the name, email address, and postal address of a U.S. resident on whom notices o |
| 1613.15 | 1613.15 Office Actions and Notices Regarding Affidavit or Declaration | 1613.15 Office Actions and Notices Regarding Affidavit or Declaration | Upon receipt of a §71 affidavit or declaration in the trademark electronic filing system, the USPTO updates the prosecution history of the registration in the Trademark database to indicate that the affidavit or declarat |
| 1613.16 | 1613.16 Response to Office Action | 1613.16 Response to Office Action | Deadline . Under 37 C.F.R. §7.39(a) , the holder must file a response to a refusal within six months of the issue date of the Office action, or before the end of the relevant filing period set forth in §71(a) of the Act, |
| 1613.17 | 1613.17 Correction of Deficiencies in §71 Affidavit or Declaration | 1613.17 Correction of Deficiencies in §71 Affidavit or Declaration | 37 C.F.R. If the affidavit or declaration is filed within the time periods set forth in section 71 of the Act, deficiencies may be corrected after notification from the Office, as follows: (1) Correcting deficiencies in |
| 1613.17(a) | 1613.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §71(a) of the Act | 1613.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §71(a) of the Act | If the affidavit or declaration is filed during the periods set forth in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-ye |
| 1613.17(b) | 1613.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period | 1613.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period | If the affidavit or declaration is filed during the six-month grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k (a)(3), deficiencies may be corrected, after notification from the Office, before the expiration of |
| 1613.17(c) | 1613.17(c) Defects That Cannot Be Cured After Expiration of the Grace Period | 1613.17(c) Defects That Cannot Be Cured After Expiration of the Grace Period | The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed within the time period set forth in §71 of the Act (including the grace period). 15 U.S.C. §1141k(a) . Untimely fi |
| 1613.18 | 1613.18 Petition Under 37 C.F.R. §2.146 | 1613.18 Petition Under 37 C.F.R. §2.146 | The action of the Post Registration staff on a §71 affidavit or declaration may not be appealed to the Trademark Trial and Appeal Board, but the holder may file a petition to the Director for review of the action under 3 |
| 1613.18(a) | 1613.18(a) Response to Examiner’s Refusal Required Before Petition | 1613.18(a) Response to Examiner’s Refusal Required Before Petition | A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. |
| 1613.18(b) | 1613.18(b) Decision on Petition Is Final Action of the USPTO | 1613.18(b) Decision on Petition Is Final Action of the USPTO | The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration ( see TMEP §1613.18(c) ), or an appeal to an appropriate court ( see TMEP §1613.18(d) ) |
| 1613.18(c) | 1613.18(c) Request for Reconsideration of Denial of Petition | 1613.18(c) Request for Reconsideration of Denial of Petition | Under 37 C.F.R. §2.146(j) , if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid w |
| 1613.18(d) | 1613.18(d) Appeal to Federal Court | 1613.18(d) Appeal to Federal Court | The holder of the registration may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition. 15 U.S.C. §1071(a)(1) , (b)(1) ; 37 C.F.R. |
| 1613.19 | 1613.19 Section 71 Affidavit or Declaration Combined with Section 15 Affidavit or Declaration | 1613.19 Section 71 Affidavit or Declaration Combined with Section 15 Affidavit or Declaration | A §71 affidavit or declaration may be combined with a §15 affidavit or declaration, if the combined affidavit or declaration meets the requirements of both §71 and §15. The filing fee for a combined §71 and §15 affidavit |
| 1613.20 | 1613.20 Additional Requirements for §71 Affidavits or Declarations Pertaining to Collective Marks | 1613.20 Additional Requirements for §71 Affidavits or Declarations Pertaining to Collective Marks | In addition to the requirements specified in 37 C.F.R. §7.37(a)(1)-(7) and TMEP §§1613.06–1613.19 , a complete §71 affidavit or declaration pertaining to a collective trademark or service mark for which use in commerce i |
| 1613.20(a) | 1613.20(a) Exercising Legitimate Control | 1613.20(a) Exercising Legitimate Control | If use in commerce is claimed, the holder must submit a verified statement that the holder is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R. §7.37(a)(8)(i) . If this verified statement |
| 1613.20(b) | 1613.20(b) Manner/Method of Control | 1613.20(b) Manner/Method of Control | The holder must state the nature of the holder’s control over the use of the mark by the members, in the first §71 affidavit or declaration of use filed with the USPTO. 37 C.F.R. §7.37(a)(8)(ii) . A statement that the ho |
| 1613.21 | 1613.21 Additional Requirements for §71 Affidavits or Declarations Pertaining to Certification Marks | 1613.21 Additional Requirements for §71 Affidavits or Declarations Pertaining to Certification Marks | In addition to the requirements specified in 37 C.F.R. §7.37(a)(1)-(7) and TMEP §§1613.06–1613.19 , a complete §71 affidavit or declaration pertaining to a certification mark for which use in commerce is claimed must inc |
| 1613.21(a) | 1613.21(a) Certification Standards | 1613.21(a) Certification Standards | Submitting certification standards for the first time . In the first §71 affidavit or declaration of use filed with the USPTO, the holder must include a copy of the standards established to determine whether others may u |
| 1613.21(b) | 1613.21(b) Exercising Legitimate Control | 1613.21(b) Exercising Legitimate Control | If use in commerce is claimed, the holder must submit a verified statement that the holder is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R. §7.37(a)(9)(ii) . If this verified statement |
| 1613.21(c) | 1613.21(c) Certification Statement | 1613.21(c) Certification Statement | If use in commerce is claimed, the §71 affidavit or declaration must include a statement specifying the characteristic, standard, or other feature that is being certified by the mark, also known as the certification stat |
| 1613.21(d) | 1613.21(d) Statement that Holder is Not Engaged in Production or Marketing of the Goods/Services | 1613.21(d) Statement that Holder is Not Engaged in Production or Marketing of the Goods/Services | If use in commerce is claimed, the §71 affidavit or declaration must contain a statement that the holder is not engaged in the production or marketing of the goods or services to which the mark is applied, except to adve |
| 1613.22 | 1613.22 Post Registration Audit | 1613.22 Post Registration Audit | To promote the accuracy and integrity of the trademark register and preserve the register as a reliable reflection of marks in use in commerce, the USPTO conducts audits of §71 affidavits or declarations in which the mar |
| 1613.23 | 1613.23 Correction of §71 Affidavit or Declaration | 1613.23 Correction of §71 Affidavit or Declaration | A holder may discover inaccuracies in a §71 affidavit or declaration after submitting the filing to the USPTO. Inaccuracies Discovered Before the Filing Has Been Accepted If a holder discovers inaccuracies in a §71 affid |
| 1614 | 1614 Renewal of Registered Extension of Protection | 1614 Renewal of Registered Extension of Protection | The holder of a registered extension of protection of an international registration to the United States must renew the international registration with the IB. 37 C.F.R. §7.41(a) . Renewal of international registrations |
| 1615 | 1615 Division of Registrations | 1615 Division of Registrations | 37 C.F.R. Partial change of ownership. (1) In a registration resulting from an application based on section 1 or section 44 of the Act, if ownership of a registration has changed with respect to some but not all of the g |
| 1615.01 | 1615.01 Division of Registration Based on Application Under §1 or §44 of the Trademark Act | 1615.01 Division of Registration Based on Application Under §1 or §44 of the Trademark Act | If ownership of a registration has changed with respect to some but not all of the goods/services/classes, the owner is strongly encouraged to file a request that a registration be divided into two or more separate regis |
| 1615.02 | 1615.02 Division of Registered Extension of Protection | 1615.02 Division of Registered Extension of Protection | When ownership of an international registration changes with respect to some but not all of the goods/services/classes for all designated Contracting Parties, the IB will create a separate new international registration |
| 1616 | 1616 Replacement with a Section 66(a) Registration | 1616 Replacement with a Section 66(a) Registration | If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States (1) are owned by the same person, (2) identify the same mark |
| 1701 | 1701 Statutory Authority of Director | 1701 Statutory Authority of Director | The United States Patent and Trademark Office (USPTO) is led by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (Director). The Commissioner for Tra |
| 1702 | 1702 Petitions to the Director Under 37 C.F.R. §2.146 - In General | 1702 Petitions to the Director Under 37 C.F.R. §2.146 - In General | 37 C.F.R. Petitions to the Director. (a) Petition may be taken to the Director in a trademark case: (1) From any repeated or final formal requirement of the examiner in the ex parte prosecution of an application if permi |
| 1703 | 1703 Specific Types of Petitions | 1703 Specific Types of Petitions | A variety of issues may be reviewed on petition. The following is a list of issues that commonly arise: Petitions to Restore an Application Filing Date . See TMEP §1711. Petitions to Accept Paper Submissions in trademark |
| 1704 | 1704 Petitionable Subject Matter | 1704 Petitionable Subject Matter | Ex Parte Examination Under 37 C.F.R. §§2.63(a) and (b) , an applicant may petition the Director to review an examining attorney’s repeated or final requirement if the subject matter of the requirement is appropriate for |
| 1705 | 1705 Petition Procedure | 1705 Petition Procedure | A petition should include a verified statement of the relevant facts, the points to be reviewed, the requested action or relief, and the fee required by 37 C.F.R. §2.6 . 37 C.F.R. §2.146(c) . The petition should be accom |
| 1705.01 | 1705.01 Standing | 1705.01 Standing | A person must have standing to file a petition to the Director under 37 C.F.R. §2.146 . See Ex parte Lasek , 115 USPQ 145 (Comm’r Pats. 1957). There is no provision in the Trademark Act or Rules of Practice for intercess |
| 1705.02 | 1705.02 Petition Fee | 1705.02 Petition Fee | A petition must be accompanied by the fee required by 37 C.F.R. §2.6 . 37 C.F.R. §§2.66(b)(1) , 2.146(c) , 2.147(a)(2)(iv), (b)(2)(v) . Any petition that is not accompanied by the required fee is incomplete. A staff atto |
| 1705.03 | 1705.03 Evidence and Proof of Facts | 1705.03 Evidence and Proof of Facts | A petition must include a statement of the relevant facts and be accompanied by any evidence to be considered. 37 C.F.R. §§2.146(c) , 2.147(a)(2)(ii)-(iii), (b)(2)(i)-(iii) . Any recitation of facts or evidence submitted |
| 1705.04 | 1705.04 Timeliness | 1705.04 Timeliness | To avoid prejudicing the rights of third parties, petitions must be filed within a reasonable time after the disputed event. In many cases, deadlines for filing petitions are expressly stated in the rules. The following |
| 1705.05 | 1705.05 Due Diligence | 1705.05 Due Diligence | 37 C.F.R. (Extract) Requirement to correspond electronically with the Office and duty to monitor status. . . . (d) Notices issued or actions taken by the USPTO are displayed in the USPTO's publicly available electronic s |
| 1705.06 | 1705.06 Stay or Suspension of Pending Matters | 1705.06 Stay or Suspension of Pending Matters | 37 C.F.R. The mere filing of a petition to the Director will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board, nor stay the period for replying to an |
| 1705.07 | 1705.07 Requirement for Representation and Signature | 1705.07 Requirement for Representation and Signature | |
| 1705.07(a) | 1705.07(a) Requirement for Representation of Non-U.S.-domiciled Petitioner | 1705.07(a) Requirement for Representation of Non-U.S.-domiciled Petitioner | A petitioner’s domicile will determine whether the petitioner is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Common |
| 1705.07(b) | 1705.07(b) Signature of Petition | 1705.07(b) Signature of Petition | Regardless of the type of petition, if it appears that a petition (or a response accompanying a petition) was signed by an improper or excluded party, the staff attorney or paralegal reviewing the petition will follow th |
| 1705.08 | 1705.08 Request for Reconsideration of Denial of Petition | 1705.08 Request for Reconsideration of Denial of Petition | Under 37 C.F.R. §2.146(i) , if a petition is denied, the petitioner may request reconsideration by: (1) filing the request for reconsideration within two months after the issue date of the decision denying the petition; |
| 1705.09 | 1705.09 Appeal to Federal Court | 1705.09 Appeal to Federal Court | A registrant who is adversely affected by the Director’s decision regarding a filed §8 affidavit, filed §71 affidavit, or filed §9 renewal application may appeal to the United States Court of Appeals for the Federal Circ |
| 1706 | 1706 Standard of Review on Petition | 1706 Standard of Review on Petition | The standard of review on petition depends on the particular section of the rules under which the petition is filed. In review of an examining attorney’s formal requirement under 37 C.F.R. §§2.63(a) and (b) and 2.146(a)( |
| 1707 | 1707 Director’s Supervisory Authority Under 37 C.F.R. §2.146(a)(3) | 1707 Director’s Supervisory Authority Under 37 C.F.R. §2.146(a)(3) | Under 35 U.S.C. §2 and 37 C.F.R. §2.146(a)(3) , the Director may exercise supervisory authority on petition in appropriate circumstances. As noted in TMEP §1706 , the Director may review the actions of an examiner or par |
| 1708 | 1708 Waiver of Rules | 1708 Waiver of Rules | Under 37 C.F.R. §2.146(a)(5) and §2.148 , the Director may waive any provision of the rules that is not a provision of the statute, when: (1) an extraordinary situation exists; (2) justice requires; and (3) no other part |
| 1708.01 | 1708.01 Petition to Waive Domicile Address Requirement | 1708.01 Petition to Waive Domicile Address Requirement | An applicant or registrant (“party”) may petition the Director to waive the domicile address requirement of Trademark Rule 2.189 . The party must assert an extraordinary situation exists that would justify waiving the ru |
| 1709 | 1709 Petitions to the Director Under 37 C.F.R. §2.147 to Accept Paper Submissions | 1709 Petitions to the Director Under 37 C.F.R. §2.147 to Accept Paper Submissions | An applicant or registrant may file a petition to the Director to request acceptance of a paper submission in three situations as follows: (1) when the trademark electronic filing system is unavailable on the date of a f |
| 1709.01 | 1709.01 Trademark Electronic Filing System Unavailable on the Date of Filing Deadline | 1709.01 Trademark Electronic Filing System Unavailable on the Date of Filing Deadline | If the trademark electronic filing system is unavailable, users should check the “USPTO Systems Status and Availability” page on the USPTO website to see if the USPTO has issued a notice regarding an outage. See TMEP §30 |
| 1709.01(a) | 1709.01(a) Trademark Electronic Filing System Unavailable Due to Widespread or Lengthy USPTO System Outage | 1709.01(a) Trademark Electronic Filing System Unavailable Due to Widespread or Lengthy USPTO System Outage | In the event the trademark electronic filing system is unavailable to the general public due to a widespread or lengthy USPTO system outage, the USPTO will continue its practice of issuing a notice on the “USPTO Systems |
| 1709.01(b) | 1709.01(b) Trademark Electronic Filing System Unavailable Due to Limited or Short-term USPTO System Outage or User’s System Outage | 1709.01(b) Trademark Electronic Filing System Unavailable Due to Limited or Short-term USPTO System Outage or User’s System Outage | If the trademark electronic filing system is unavailable due to either a limited or short-term USPTO system outage or a user’s system outage on the date of the deadline for submission of a document, a petition to the Dir |
| 1709.02 | 1709.02 Certain Paper Submissions with Statutory Deadlines | 1709.02 Certain Paper Submissions with Statutory Deadlines | A petition to the Director to accept a paper submission may be filed for specific submissions with statutory deadlines if: (1) the submission was timely submitted on paper and not processed by the USPTO because it was no |
| 1709.03 | 1709.03 Extraordinary Situation | 1709.03 Extraordinary Situation | If a filer does not meet the petition requirements of 37 C.F.R. §2.147(a) or (b) for requesting acceptance of a paper submission, the filer may petition the Director based on an extraordinary situation. See 37 C.F.R. §2. |
| 1710 | 1710 Petition to Make Special | 1710 Petition to Make Special | The USPTO generally examines applications in the order in which they are received. A Petition to Make Special is a request to the Director under 37 C.F.R. §2.146 to advance the initial examination of an application out o |
| 1710.01 | 1710.01 Basis for Granting or Denying Petition | 1710.01 Basis for Granting or Denying Petition | Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss |
| 1710.02 | 1710.02 Processing Petition | 1710.02 Processing Petition | Each Petition to Make Special, together with the petition decision, is made part of the record. If the petition is granted, the prosecution history of the application in the Trademark database will reflect that the petit |
| 1711 | 1711 Review of Denial of Filing Dates | 1711 Review of Denial of Filing Dates | If an application is denied a filing date and the applicant wants the filing date restored, the usual procedure is to file a petition to the Director under 37 C.F.R. §2.146 . However, the applicant may request restoratio |
| 1712 | 1712 Reinstatement of Applications and Registrations | 1712 Reinstatement of Applications and Registrations | |
| 1712.01 | 1712.01 Reinstatement of Applications Abandoned Due to USPTO Error | 1712.01 Reinstatement of Applications Abandoned Due to USPTO Error | 37 C.F.R. Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error. (a) Request for Reinstatement of an Abandoned Application. The applicant may file a written request to reins |
| 1712.02 | 1712.02 Reinstatement of Registrations Cancelled or Expired | 1712.02 Reinstatement of Registrations Cancelled or Expired | 37 C.F.R. Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error. . . . (b) Request for Reinstatement of Cancelled or Expired Registration. The registrant may file a written |
| 1712.02(a) | 1712.02(a) Request for Reinstatement Due to USPTO Error | 1712.02(a) Request for Reinstatement Due to USPTO Error | A registrant may file a request to reinstate a cancelled or expired registration if the registrant has proof that a USPTO error caused the registration to be cancelled or expired. 37 C.F.R. §2.64(b) . The request must be |
| 1712.02(b) | 1712.02(b) Petition to Reinstate a Cancelled Registration and Accept a Late Response to a Post Registration Office Action | 1712.02(b) Petition to Reinstate a Cancelled Registration and Accept a Late Response to a Post Registration Office Action | If a registrant failed to timely respond to an Office action refusing to accept a §8 or §71 affidavit or §9 renewal application due to an extraordinary situation, the registrant may file a petition under 37 C.F.R. §2.146 |
| 1713 | 1713 Petition to Reverse Holding of Abandonment of Application for Incomplete Response | 1713 Petition to Reverse Holding of Abandonment of Application for Incomplete Response | |
| 1713.01 | 1713.01 Standard of Review | 1713.01 Standard of Review | Under 37 C.F.R. §2.65(a) , an application may become abandoned when an applicant’s response, although received within the response period, is incomplete. See TMEP §§718.03–718.03(b) regarding incomplete responses. When a |
| 1713.02 | 1713.02 Failure to Respond to Notice of Incomplete Response or Denial of Request for Reconsideration with No Appeal Filed | 1713.02 Failure to Respond to Notice of Incomplete Response or Denial of Request for Reconsideration with No Appeal Filed | If an examining attorney issues (1) a notice of incomplete response using the “Notice of Non-Responsive Amendment,” (2) a “Continuing Final Action,” or (3) a “Request for Reconsideration Denied" when no notice of appeal |
| 1714 | 1714 Petition to Revive Abandoned Application | 1714 Petition to Revive Abandoned Application | 37 C.F.R. Revival of applications abandoned in full or in part due to unintentional delay. (a) Deadline. The applicant may file a petition to revive an application abandoned in full or in part because the applicant did n |
| 1714.01 | 1714.01 Procedural Requirements for Filing Petition to Revive | 1714.01 Procedural Requirements for Filing Petition to Revive | The procedural requirements for filing a petition to revive an application abandoned for failure to respond to an examining attorney’s Office action are set forth in 37 C.F.R. §2.66(b) . See TMEP §1714.01(a)–(a)(ii) for |
| 1714.01(a) | 1714.01(a) Failure to Timely Respond to an Examining Attorney’s Office Action | 1714.01(a) Failure to Timely Respond to an Examining Attorney’s Office Action | |
| 1714.01(b) | 1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received | 1714.01(b) Failure to File a Statement of Use or Extension Request - Notice of Allowance Received | The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c) . If the applicant received the notice of allowance , |
| 1714.01(c) | 1714.01(c) Notice of Allowance Not Received | 1714.01(c) Notice of Allowance Not Received | The procedural requirements for filing a petition to revive an application abandoned for failure to respond to a notice of allowance are listed in 37 C.F.R. §2.66(c) . If the applicant did not receive the notice of allow |
| 1714.01(d) | 1714.01(d) Timeliness | 1714.01(d) Timeliness | Under 37 C.F.R. §2.66(a) , a petition to revive an abandoned application must be filed by not later than: (1) two months after the issue date of the notice of abandonment; or (2) two months after the date of actual knowl |
| 1714.01(e) | 1714.01(e) Signed Statement that Delay Was Unintentional | 1714.01(e) Signed Statement that Delay Was Unintentional | A petition to revive must include a statement, signed by someone with firsthand knowledge of the facts, that the delay in responding to the Office action or notice of allowance was unintentional. 37 C.F.R. §2.66(b)(2) , |
| 1714.01(f) | 1714.01(f) Applicability of Unintentional Delay Standard | 1714.01(f) Applicability of Unintentional Delay Standard | |
| 1714.01(g) | 1714.01(g) Request for Reconsideration of Denial of Petition to Revive | 1714.01(g) Request for Reconsideration of Denial of Petition to Revive | Under 37 C.F.R. §2.66(e) , if a petition to revive is denied, the applicant may request reconsideration by: (1) filing the request for reconsideration by not later than two months after the issue date of the decision den |
| 1715 | 1715 Letters of Protest Against Pending Applications | 1715 Letters of Protest Against Pending Applications | 37 C.F.R. Letters of protest against pending applications. (a) A third party may submit, for consideration and inclusion in the record of a trademark application, objective evidence relevant to the examination of the app |
| 1715.01 | 1715.01 Appropriate and Inappropriate Subjects to Be Raised in Letter of Protest | 1715.01 Appropriate and Inappropriate Subjects to Be Raised in Letter of Protest | Only issues and evidence relevant to a ground for refusing registration during the ex parte examination of an application are appropriate subjects for a letter of protest. 37 C.F.R. §2.149(a) . It is inappropriate to use |
| 1715.01(a) | 1715.01(a) Issues Appropriate as Subjects of Letters of Protest | 1715.01(a) Issues Appropriate as Subjects of Letters of Protest | Appropriate subjects for letters of protest concern issues that the examining attorney has the authority and resources to pursue to a legal conclusion without further intervention by third parties. The following are exam |
| 1715.01(b) | 1715.01(b) Issues Inappropriate as Subjects of Letters of Protest | 1715.01(b) Issues Inappropriate as Subjects of Letters of Protest | The following are examples of issues that are not appropriate to raise in letters of protest: (1) A third party claims earlier common-law use of a trademark but does not have a federal registration or previously filed pe |
| 1715.02 | 1715.02 Timely Filing of Letter of Protest | 1715.02 Timely Filing of Letter of Protest | The most appropriate time for filing a letter of protest is before publication of a mark, because the purpose of the letter of protest is to assist the USPTO in the examination of an application for registration by bring |
| 1715.03 | 1715.03 Letter of Protest Filed Before Publication | 1715.03 Letter of Protest Filed Before Publication | |
| 1715.03(a) | 1715.03(a) Standard of Review for Letter of Protest Filed Before Publication | 1715.03(a) Standard of Review for Letter of Protest Filed Before Publication | When a letter of protest filed before publication complies with the requirements of Rule 2.149, the Deputy Commissioner will determine whether the submitted evidence is relevant and supports the identified ground(s) for |
| 1715.03(b) | 1715.03(b) Action by Examining Attorney Before Publication | 1715.03(b) Action by Examining Attorney Before Publication | The examining attorney is not required to issue a refusal as a result of a pre-publication letter of protest where it is determined that the submitted evidence should be included in the application record. The examining |
| 1715.04 | 1715.04 Letters of Protest Filed on the Date of Publication or After Publication | 1715.04 Letters of Protest Filed on the Date of Publication or After Publication | |
| 1715.04(a) | 1715.04(a) Standard of Review for Letters of Protest Filed on the Date of Publication or After Publication | 1715.04(a) Standard of Review for Letters of Protest Filed on the Date of Publication or After Publication | When a letter of protest filed on the date of publication or within 30 days after the date of publication complies with the requirements of Rule 2.149, the Deputy Commissioner will determine whether the evidence establis |
| 1715.04(b) | 1715.04(b) Jurisdiction of Application After Publication | 1715.04(b) Jurisdiction of Application After Publication | As a general rule, after publication, the examining attorney does not have jurisdiction to act on an application. TMEP §1504.04 . Therefore, if a letter of protest filed after publication and before issuance of the regis |
| 1715.04(c) | 1715.04(c) Action by Examining Attorney After Publication | 1715.04(c) Action by Examining Attorney After Publication | If the Deputy Commissioner determines that evidence submitted with a letter of protest filed on the date of publication or after publication establishes a prima facie case for refusal on the identified ground(s) and shou |
| 1715.04(d) | 1715.04(d) Letter of Protest Does Not Stay or Extend Opposition Period | 1715.04(d) Letter of Protest Does Not Stay or Extend Opposition Period | Filing a letter of protest does not stay or extend the opposition period. 37 C.F.R. §2.149(e) . Therefore, a party who files a letter of protest after publication should also file a timely request(s) for extension of tim |
| 1715.05 | 1715.05 Information for Parties Filing Letter of Protest | 1715.05 Information for Parties Filing Letter of Protest | Third parties who object to the registration of a mark in a pending application must never directly contact an examining attorney in any way. Instead, they may submit evidence for consideration for inclusion in the recor |
| 1715.05(a) | 1715.05(a) Types of Evidence Appropriate for Letter of Protest | 1715.05(a) Types of Evidence Appropriate for Letter of Protest | If the letter of protest complies with the requirements of Rule 2.149, only the specified ground(s) for refusal and the provided evidence relevant to the ground(s) for refusal will be included in the application record f |
| 1715.05(b) | 1715.05(b) Amount and Format of Evidence for Letter of Protest | 1715.05(b) Amount and Format of Evidence for Letter of Protest | The letter of protest should include only a simple statement of the proposed legal ground(s) for refusing registration or issuing a requirement, together with succinct, factual, objective evidence to support the refusal |
| 1715.05(c) | 1715.05(c) Letter-of-Protest Evidence – Trademark Trial and Appeal Board Proceedings | 1715.05(c) Letter-of-Protest Evidence – Trademark Trial and Appeal Board Proceedings | As discussed above, if a letter of protest filed before publication is determined to be compliant, only the relevant evidence and grounds for refusal to which the evidence relates is included in the application record. H |
| 1715.06 | 1715.06 Requests for Copy of Letter of Protest | 1715.06 Requests for Copy of Letter of Protest | Any party who wishes to request a copy of a letter of protest may do so by sending an email to FOIARequests@uspto.gov. Upon review of the request, the Deputy Commissioner will usually forward a copy of the letter of prot |
| 1715.07 | 1715.07 Recourse if Letter of Protest Submission is Determined to be Noncompliant | 1715.07 Recourse if Letter of Protest Submission is Determined to be Noncompliant | If the Deputy Commissioner determines that a letter of protest submission does not comply with the requirements of Rule 2.149, such that the evidenced submitted is not included in the application record, the protestor ma |
| 1716 | 1716 Petitions for Expungement or Reexamination | 1716 Petitions for Expungement or Reexamination | 37 C.F.R. Petition for expungement or reexamination. (a) Petition basis. Any person may file a petition requesting institution of an ex parte proceeding to cancel a registration of a mark, in whole or in part, on one of |
| 1716.01 | 1716.01 Timing for Requesting and Instituting Expungement or Reexamination Proceedings | 1716.01 Timing for Requesting and Instituting Expungement or Reexamination Proceedings | A petitioner may request an ex parte expungement proceeding in connection with a registration at any time between 3 and 10 years after the date of registration. 15 U.S.C. §1066a(i) ; 37 C.F.R. §2.91(b)(1) . In addition, |
| 1716.02 | 1716.02 Petitions to Request Expungement or Reexamination | 1716.02 Petitions to Request Expungement or Reexamination | Any person may file a petition requesting institution of an expungement or reexamination proceeding. 37 C.F.R. §2.91(a) . Only one registration may be specified per petition, and a petitioner who wishes to request both e |
| 1716.02(a) | 1716.02(a) Basis for the Petition | 1716.02(a) Basis for the Petition | A petition for expungement must allege that the mark “has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.” 37 C.F.R. §2.91(a)(1) . A petition for |
| 1716.02(b) | 1716.02(b) Requirements for a Complete Petition | 1716.02(b) Requirements for a Complete Petition | 37 C.F.R. Petition for expungement or reexamination. . . . (c) Requirements for complete submission. Petitions under this section must be timely filed through TEAS. Only complete petitions under this section will be cons |
| 1716.02(c) | 1716.02(c) Reasonable Investigation Requirement | 1716.02(c) Reasonable Investigation Requirement | Under 37 C.F.R. §2.91(d) , a petitioner must demonstrate that a bona fide attempt has been made to determine if the relevant registered mark was never used in commerce (for expungement petitions) or was not in use in com |
| 1716.02(d) | 1716.02(d) Notice of Petition for Expungement or Reexamination | 1716.02(d) Notice of Petition for Expungement or Reexamination | When a petition requesting institution of expungement or reexamination proceedings is filed, the petition will be uploaded into the registration record and be publicly viewable through TSDR. The USPTO will send a courtes |
| 1716.03 | 1716.03 Instituting Expungement and Reexamination Proceedings | 1716.03 Instituting Expungement and Reexamination Proceedings | 15 U.S.C. §1066a (c) Initial determination; institution (1) Prima facie case determination, institution, and notification The Director shall, for each good or service identified under subsection (b)(2), determine whether |
| 1716.03(a) | 1716.03(a) Prima Facie Case of Nonuse | 1716.03(a) Prima Facie Case of Nonuse | With respect to these proceedings, a prima facie case requires only that a reasonable predicate concerning such nonuse be established. See H.R. Rep. No. 116-645, at 8 (citing In re Pacer Tech. , 338 F.3d 1348, 1351 (Fed. |
| 1716.03(b) | 1716.03(b) Consolidating Proceedings | 1716.03(b) Consolidating Proceedings | To ensure consistency and promote efficiency, the Director may consolidate proceedings involving the same registration, including a Director-initiated proceeding with a petition-initiated proceeding. See 37 C.F.R. §2.92( |
| 1716.04 | 1716.04 Procedures for Expungement and Reexamination Proceedings | 1716.04 Procedures for Expungement and Reexamination Proceedings | |
| 1716.04(a) | 1716.04(a) Notice of Institution and Office Action | 1716.04(a) Notice of Institution and Office Action | When a determination regarding institution of an expungement or reexamination proceeding has been made, the USPTO will provide notice of the determination, in accordance with the correspondence rules in 37 C.F.R. §2.18 . |
| 1716.04(b) | 1716.04(b) Responding to the Initial Office Action | 1716.04(b) Responding to the Initial Office Action | The registrant must respond to the initial Office action via the trademark electronic filing system within three months of the issue date, but, within that time period, may request a one-month extension of time to respon |
| 1716.04(c) | 1716.04(c) Evidence of Use or Excusable Nonuse | 1716.04(c) Evidence of Use or Excusable Nonuse | Documentary evidence of use provided by the registrant need not be the same as that required under the USPTO’s rules of practice for specimens of use under §1(a), but must be consistent with the definition of “use in com |
| 1716.04(d) | 1716.04(d) Deleting Goods and/or Services or Surrendering the Registration | 1716.04(d) Deleting Goods and/or Services or Surrendering the Registration | A registrant may respond to an Office action in an expungement or reexamination proceeding by submitting a response that deletes some or all of the goods and/or services at issue in the proceeding or surrenders the entir |
| 1716.04(e) | 1716.04(e) Final Action and Notice of Termination | 1716.04(e) Final Action and Notice of Termination | If the registrant’s timely response to a nonfinal Office action in an expungement or reexamination proceeding fails to establish use of the mark in commerce at the relevant time (or to sufficiently establish excusable no |
| 1716.04(f) | 1716.04(f) Requesting Reinstatement After Cancellation for Failure to Respond | 1716.04(f) Requesting Reinstatement After Cancellation for Failure to Respond | If a registration is cancelled, in whole or in part, because of a failure to respond to a nonfinal or final Office action in an expungement or reexamination proceeding, and that failure to respond is due to an extraordin |
| 1716.04(g) | 1716.04(g) Estoppel | 1716.04(g) Estoppel | Upon termination of an expungement proceeding in which it was established that the registered mark was used in commerce on or in connection with any of the goods and/or services at issue in the proceeding prior to the da |
| 1716.04(h) | 1716.04(h) Co-pending Proceedings | 1716.04(h) Co-pending Proceedings | Once an expungement proceeding has been instituted for a particular registration and is pending, no later expungement proceeding may be instituted for that registration with respect to the same goods and/or services at i |
| 1801 | 1801 USPTO Personnel May Not Express Opinion on Validity of Registered Trademark | 1801 USPTO Personnel May Not Express Opinion on Validity of Registered Trademark | A certificate of registration of a mark on the Principal Register is prima facie evidence of the validity of the registration. 15 U.S.C. §1057(b) . Public policy demands that every employee of the United States Patent an |
| 1801.01 | 1801.01 USPTO Personnel Cannot Testify | 1801.01 USPTO Personnel Cannot Testify | 37 C.F.R. Part 104. Subpart A--General Provisions 37 C.F.R. Definitions. Demand means a request, order, or subpoena for testimony or documents for use in a legal proceeding. Director means the Under Secretary of Commerce |
| 1802 | 1802 Congressional and Other Official Inquiries | 1802 Congressional and Other Official Inquiries | Correspondence and inquiries from the White House, members of the U.S. Congress, embassies, and heads of U.S. executive departments and agencies normally are cleared by the USPTO’s Office of Policy and International Affa |
| 1803 | 1803 Freedom of Information Act Requests | 1803 Freedom of Information Act Requests | Freedom of Information Act (FOIA) requests may be submitted by mail, email, or hand delivered to the attention of the USPTO FOIA Officer at one of the following addresses: By mail: USPTO FOIA Officer U.S. Patent and Trad |
| 1804 | 1804 Inquiries from Members of the Press | 1804 Inquiries from Members of the Press | Inquiries from members of the press should be directed to the USPTO's Office of the Chief Communications Officer at (571) 272-8400. [top] |
| 1805 | 1805 General Inquiries from the Public | 1805 General Inquiries from the Public | For general questions about the procedures for obtaining and maintaining a registration, callers may telephone the Trademark Assistance Center (TAC) at (571) 272-9250 or (800) 786-9199, or email TAC at TrademarkAssistanc |
| 1806 | 1806 Contacts with Third Parties Regarding Ex Parte Matters | 1806 Contacts with Third Parties Regarding Ex Parte Matters | An examining attorney or other USPTO employee may not discuss the merits of any particular application or registration with a third party. If a third party attempts to contact an examining attorney about an ex parte matt |
| 1807 | 1807 USPTO Website | 1807 USPTO Website | The USPTO's website at https://www.uspto.gov provides access to a wide variety of information about trademarks and the systems for electronically filing trademark documents. See TMEP §102 for more information regarding w |
| 1901 | 1901 Overview of the Madrid System of International Registration | 1901 Overview of the Madrid System of International Registration | The Madrid system of international registration is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement), which dates from 1891, and the Protocol Relating to |
| 1902 | 1902 International Application Originating from the United States | 1902 International Application Originating from the United States | This section covers international applications and registrations originating from the United States, i.e., international registrations based on an application for registration on the Principal or Supplemental Register pe |
| 1902.01 | 1902.01 Who Can File | 1902.01 Who Can File | Under 15 U.S.C. §1141a and Article 2(1), a qualified owner of a basic application for registration on the Principal or Supplemental Register pending in the USPTO or a qualified owner of a basic registration issued by the |
| 1902.02 | 1902.02 Minimum Requirements for Date of Receipt of International Application in USPTO | 1902.02 Minimum Requirements for Date of Receipt of International Application in USPTO | The minimum requirements for accordance of a date of receipt of an international application in the USPTO are set forth in 37 C.F.R. §7.4(a) and §7.11 . 37 C.F.R. International applications and registrations originating |
| 1902.02(a) | 1902.02(a) Form of International Application | 1902.02(a) Form of International Application | An international application must be filed either (1) using the trademark electronic filing system ( see TMEP §301.01(a) ) or (2) on the official paper form issued by the IB if permitted under 37 C.F.R. §7.4(c) ( see TME |
| 1902.02(b) | 1902.02(b) Basic Application or Registration Number | 1902.02(b) Basic Application or Registration Number | The international application must include the filing date and serial number of the basic application, or the registration date and registration number of the basic registration. 37 C.F.R. §7.11(a)(1) . The USPTO will no |
| 1902.02(c) | 1902.02(c) Name and Addresses of Applicant | 1902.02(c) Name and Addresses of Applicant | Only the owner of the basic application and/or registration may file an international application. 15 U.S.C. §1141a(a) . The international application must include the name, current address, and email address of the appl |
| 1902.02(d) | 1902.02(d) Reproduction (Drawing) of Mark | 1902.02(d) Reproduction (Drawing) of Mark | An international application must include a reproduction of the mark that (1) is the same as the mark in the basic application and/or registration; and (2) meets the requirements of 37 C.F.R. §2.52 . 37 C.F.R. §7.11(a)(3 |
| 1902.02(e) | 1902.02(e) Color Claim | 1902.02(e) Color Claim | If color is claimed as a feature of the mark in the basic application and/or registration, the international application must include a statement that color is claimed as a feature of the mark, and set forth the same nam |
| 1902.02(f) | 1902.02(f) Identification of Goods/Services | 1902.02(f) Identification of Goods/Services | An international application must include a list of goods/services that is identical to or narrower than the goods/services in the basic application and/or registration. 37 C.F.R. §7.11(a)(7) . If the applicant lists any |
| 1902.02(g) | 1902.02(g) Classification in International Applications | 1902.02(g) Classification in International Applications | The goods/services should be classified according to the version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement) that |
| 1902.02(h) | 1902.02(h) List of Contracting Parties | 1902.02(h) List of Contracting Parties | An international application must list at least one Contracting Party (i.e., country or intergovernmental organization party to the Madrid Protocol) to which the applicant seeks an extension of protection of the internat |
| 1902.02(i) | 1902.02(i) Fees | 1902.02(i) Fees | USPTO Certification Fee . An international application must include the USPTO certification fee for each class of goods/services for which international registration is sought, or it will not be certified. The certificat |
| 1902.02(j) | 1902.02(j) Statement of Entitlement | 1902.02(j) Statement of Entitlement | An international application must include a statement that the applicant is entitled to file an international application, specifying that the applicant: (1) is a national of the United States; (2) has a domicile in the |
| 1902.02(k) | 1902.02(k) Description of Mark | 1902.02(k) Description of Mark | If the basic application or registration includes a description of the mark, an international application must include the same description. 37 C.F.R. §7.11(a)(5) . The applicant cannot include a description of the mark |
| 1902.02(l) | 1902.02(l) Indication of Type of Mark | 1902.02(l) Indication of Type of Mark | If the mark in the basic application or registration is a three-dimensional mark, a sound mark, a collective mark, or a certification mark, the international application must include an indication of the type of mark. 37 |
| 1902.02(m) | 1902.02(m) Email Address of Applicant | 1902.02(m) Email Address of Applicant | An international application must include the applicant's email address. Regs. Rule 9(4)(a)(ii). The email address also will be used for correspondence with the USPTO. 37 C.F.R. §§7.4(a) , 7.11(a) . But see 37 C.F.R. §7. |
| 1902.03 | 1902.03 Certification of International Application by USPTO | 1902.03 Certification of International Application by USPTO | If the information contained in an international application corresponds to the information in the basic application or basic registration, the USPTO will certify the international application and forward it to the IB. 1 |
| 1902.03(a) | 1902.03(a) Petition to Review Refusal to Certify | 1902.03(a) Petition to Review Refusal to Certify | If an applicant believes that a refusal to certify an international application was erroneous, the applicant may file a Petition to Director to Review Denial of Certification of International Application form under 37 C. |
| 1902.03(b) | 1902.03(b) Petition for an International Application or Registration | 1902.03(b) Petition for an International Application or Registration | If an applicant or registrant discovers an error in the international application as filed, or the international registration as issued, the applicant or registrant may file a Petition to Director for an International Ap |
| 1902.04 | 1902.04 Date of International Registration | 1902.04 Date of International Registration | If the IB receives an international application within two months of the date of receipt in the USPTO, the date of the international registration is the date of receipt in the USPTO. If the IB does not receive the intern |
| 1902.05 | 1902.05 IB Requirements for Complete International Application | 1902.05 IB Requirements for Complete International Application | The requirements for an international application are set forth in Article 3 and Regulations Rule 9. If the application meets the minimum requirements set forth in 37 C.F.R. §7.11(a) ( see TMEP §§1902.02–1902.02(m) ), th |
| 1902.06 | 1902.06 Examination of Application by IB | 1902.06 Examination of Application by IB | Upon certification, the USPTO forwards the international application to the IB. If the international application meets the applicable requirements for a complete international application ( see TMEP §1902.05 ), the IB wi |
| 1902.07 | 1902.07 Irregularities in International Application | 1902.07 Irregularities in International Application | If an international application is unacceptable, the IB will notify both the applicant and the USPTO of the “irregularity.” Some types of irregularities must be remedied by the USPTO, some must be remedied by the applica |
| 1902.07(a) | 1902.07(a) Irregularities that Must Be Remedied by the USPTO | 1902.07(a) Irregularities that Must Be Remedied by the USPTO | The following irregularities must be remedied by the USPTO within three months of the date of notification of the irregularity: Application submitted on paper, as permitted ( see TMEP §1902.02(a) ), is not presented on t |
| 1902.07(b) | 1902.07(b) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB | 1902.07(b) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB | |
| 1902.07(c) | 1902.07(c) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO | 1902.07(c) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO | |
| 1902.07(d) | 1902.07(d) Other Irregularities that Must Be Remedied by Applicant – Applicant May Respond Directly to the IB or Through the USPTO | 1902.07(d) Other Irregularities that Must Be Remedied by Applicant – Applicant May Respond Directly to the IB or Through the USPTO | Other irregularities to be remedied by applicant include, but are not limited to, insufficient information about the applicant’s representative; missing transliteration; insufficient information about a priority claim; u |
| 1902.07(e) | 1902.07(e) Filing Response Directly with the IB | 1902.07(e) Filing Response Directly with the IB | Information about filing responses directly with the IB is available on the WIPO website at https://www.wipo.int/madrid/en/ . An applicant may contact the IB by telephone at 41 22 338 8686 or by filing an inquiry using t |
| 1902.07(f) | 1902.07(f) Responding to Notice of Irregularity Through the USPTO | 1902.07(f) Responding to Notice of Irregularity Through the USPTO | Under Trademark Rule 7.14(e), 37 C.F.R. §7.14(e) , an applicant may file a response to an IB notice of irregularity through the USPTO for forwarding to the IB before the IB’s response deadline. However, receipt in the US |
| 1902.08 | 1902.08 Subsequent Designation - Request for Extension of Protection Subsequent to International Registration | 1902.08 Subsequent Designation - Request for Extension of Protection Subsequent to International Registration | A subsequent designation is a request by the holder of an international registration for an extension of protection of the international registration to additional Contracting Parties, made after the IB registers the mar |
| 1902.08(a) | 1902.08(a) USPTO Requirements | 1902.08(a) USPTO Requirements | The minimum requirements for a date of receipt of a subsequent designation in the USPTO are set forth in 37 C.F.R. §7.21(b) , and are reproduced below: The international registration number; The serial number of the U.S. |
| 1902.08(b) | 1902.08(b) Form for Filing Subsequent Designation Through the USPTO | 1902.08(b) Form for Filing Subsequent Designation Through the USPTO | The holder of an international registration submitting a subsequent designation through the USPTO must file using the Subsequent Designation form in the trademark electronic filing system. See 37 C.F.R. §7.21(b) . Permit |
| 1902.08(c) | 1902.08(c) Fees for Subsequent Designation | 1902.08(c) Fees for Subsequent Designation | USPTO Transmittal Fee . The subsequent designation must include the USPTO transmittal fee or the USPTO will not forward it to the IB. 37 C.F.R. §7.21(a)(7) . International Fees . For subsequent designations filed through |
| 1902.08(d) | 1902.08(d) IB Requirements for Subsequent Designation | 1902.08(d) IB Requirements for Subsequent Designation | The requirements for a subsequent designation are set forth in Article 3 ter (2) and Regulations Rule 24. If the subsequent designation meets the minimum requirements for a date of receipt set forth in 37 C.F.R. §7.21(b) |
| 1902.08(e) | 1902.08(e) Irregularities in Subsequent Designation | 1902.08(e) Irregularities in Subsequent Designation | If a subsequent designation is sent to the IB through the USPTO, the IB will notify both the holder and the USPTO of any irregularity. Regs. Rule 24(5)(a). Corrections of any irregularity in a subsequent designation must |
| 1902.09 | 1902.09 Dependence and “Central Attack”: Restriction, Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years | 1902.09 Dependence and “Central Attack”: Restriction, Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years | For a period of 5 years from the date of the international registration, the registration is dependent on the basic application or basic registration, including the child application or registration of a basic applicatio |
| 1902.10 | 1902.10 Transformation When the USPTO Is the Office of Origin | 1902.10 Transformation When the USPTO Is the Office of Origin | If the IB cancels an international registration as a result of the cancellation or restriction of the USPTO basic application and/or USPTO basic registration under Article 6(4) ( see TMEP §1902.09 ), the holder may “tran |
| 1902.11 | 1902.11 Representative | 1902.11 Representative | An applicant for or holder of an international registration may appoint a representative to represent the applicant or holder before the IB by indicating the representative’s name in the appropriate box on the internatio |
| 1902.12 | 1902.12 USPTO Must Notify IB of Division or Merger of Basic Application or Registration | 1902.12 USPTO Must Notify IB of Division or Merger of Basic Application or Registration | Under Regulations Rule 23, an Office of Origin must notify the IB if the basic application or registration is divided into several applications or registrations, or if several applications or registrations are merged int |
| 1903 | 1903 Payment of Fees | 1903 Payment of Fees | |
| 1903.01 | 1903.01 Payment of USPTO Fees | 1903.01 Payment of USPTO Fees | The fees required by the USPTO for processing correspondence relating to international applications and registrations under the Madrid Protocol are set forth in 37 C.F.R. §7.6 . The USPTO charges a fee for processing the |
| 1903.02 | 1903.02 Payment of International Fees | 1903.02 Payment of International Fees | In addition to the fees required by the USPTO, there are international fees for processing international applications and registrations required by the IB. For international applications, subsequent designations, and req |
| 1904 | 1904 Request for Extension of Protection of International Registration to the United States | 1904 Request for Extension of Protection of International Registration to the United States | |
| 1904.01 | 1904.01 Filing Request for Extension of Protection to United States | 1904.01 Filing Request for Extension of Protection to United States | The holder of an international registration may file a request for extension of protection of that registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a) . The request for extension of p |
| 1904.01(a) | 1904.01(a) §66(a) Basis for U.S. Applications | 1904.01(a) §66(a) Basis for U.S. Applications | Section 66(a) of the Trademark Act provides a basis for filing in the United States based on the Madrid Protocol. See 37 C.F.R. §§2.34(a)(5) , 2.44(a)(4)(v) , 2.45(a)(4)(v) . A basis under §66(a) may not be combined with |
| 1904.01(b) | 1904.01(b) Filing Date | 1904.01(b) Filing Date | If a request for extension of protection of an international registration to the United States is made in an international application, the filing date of the §66(a) application is the international registration date. If |
| 1904.01(c) | 1904.01(c) Declaration of Intent to Use Required | 1904.01(c) Declaration of Intent to Use Required | Section 66(a) of the Trademark Act requires that a request for extension of protection to the United States include a declaration of bona fide intention to use the mark in commerce. 15 U.S.C. §§1141f(a) . For a trademark |
| 1904.01(d) | 1904.01(d) Use Not Required | 1904.01(d) Use Not Required | Use in commerce prior to registration is not required. 15 U.S.C. §1141h(a)(3) . However, after registration, a holder is required to periodically file an affidavit of use or excusable nonuse under §71 of the Trademark Ac |
| 1904.01(e) | 1904.01(e) Priority | 1904.01(e) Priority | A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention for the Protection of Industrial Property if: (1) The request for extension of protection contains a claim of priority; (2) T |
| 1904.01(f) | 1904.01(f) Filing Fee | 1904.01(f) Filing Fee | The filing fee for a §66(a) application will be sent to the USPTO by the IB. The examining attorney should not require additional filing fees during examination, except where the application is divided due to a change in |
| 1904.01(g) | 1904.01(g) Constructive Use | 1904.01(g) Constructive Use | Under Trademark Act §66(b), unless extension of protection is refused, the filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c |
| 1904.01(h) | 1904.01(h) May Not be Based on USPTO Basic Application or Registration | 1904.01(h) May Not be Based on USPTO Basic Application or Registration | An international registration in which the United States is the Office of Origin (i.e., an international registration based on a basic application pending in the USPTO or a basic registration issued by the USPTO) may not |
| 1904.01(i) | 1904.01(i) Requirement for Representation Based on Domicile of §66(a) Applicant | 1904.01(i) Requirement for Representation Based on Domicile of §66(a) Applicant | Foreign-domiciled applicants must be represented before the USPTO by a qualified U.S. attorney. An applicant whose domicile is not located within the United States or its territories (see TMEP §§601.01, 601.01(b)–(b)(1) |
| 1904.01(j) | 1904.01(j) Requirement for Email Address of §66(a) Applicant | 1904.01(j) Requirement for Email Address of §66(a) Applicant | Applicants must provide and maintain a valid email address for correspondence. 37 C.F.R. §§2.23(b) , 2.32(a)(2) ; see 37 C.F.R. §7.25(a) . Although providing an email address is required for applicants filing under Trade |
| 1904.02 | 1904.02 Examination of Request for Extension of Protection to the United States | 1904.02 Examination of Request for Extension of Protection to the United States | |
| 1904.02(a) | 1904.02(a) Examined as Regular Application on the Principal Register | 1904.02(a) Examined as Regular Application on the Principal Register | Under §68(a)(1) of the Trademark Act, a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register. 15 U.S.C. §1141h(a)(1) . However, |
| 1904.02(b) | 1904.02(b) Examination of Classification of Goods/Services in §66(a) Applications | 1904.02(b) Examination of Classification of Goods/Services in §66(a) Applications | In a §66(a) application, the IB controls the classification. Article 3(2). The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the Uni |
| 1904.02(c) | 1904.02(c) Examination of Identification of Goods/Services in §66(a) Applications | 1904.02(c) Examination of Identification of Goods/Services in §66(a) Applications | Although the IB determines the classification of the goods/services, for purposes of identification , the examining attorney will examine the identification of goods/services in a §66(a) application according to the same |
| 1904.02(d) | 1904.02(d) Examination Issues Specific to Certification and Collective Marks | 1904.02(d) Examination Issues Specific to Certification and Collective Marks | Clarification of Mark Type A §66(a) application may indicate that the mark is a “Collective, Certificate or Guarantee Mark.” In such a case, the examining attorney must require the applicant to clarify the type of mark f |
| 1904.02(e) | 1904.02(e) Corrections to an International Registration | 1904.02(e) Corrections to an International Registration | |
| 1904.02(f) | 1904.02(f) Restrictions to Goods/Services | 1904.02(f) Restrictions to Goods/Services | A restriction is a narrowing amendment to the goods/services in some or all pending and registered extensions of protection. Some types of restrictions also impact the listing of goods/services in the international regis |
| 1904.02(g) | 1904.02(g) Refusal Must Be Made Within 18 Months | 1904.02(g) Refusal Must Be Made Within 18 Months | Under §68(c) of the Trademark Act and Article 5(2) of the Protocol, the USPTO must notify the IB of any refusal entered in a §66(a) application within 18 months of the date the IB transmits the request for extension of p |
| 1904.02(h) | 1904.02(h) Office Actions and Responses | 1904.02(h) Office Actions and Responses | The USPTO will send the first Office action in a §66(a) application to the IB. The first Office action is known as a "provisional refusal" and must be reviewed by the IB. See Regs. Rule 17. If the provisional refusal mee |
| 1904.02(i) | 1904.02(i) Correspondence Address | 1904.02(i) Correspondence Address | Application Filing Receipt Sent Directly to Applicant . The application filing receipt is not routed to the International Bureau (IB). The USPTO will send the application filing receipt to the applicant. The USPTO will n |
| 1904.02(j) | 1904.02(j) Mark May Not Be Amended | 1904.02(j) Mark May Not Be Amended | The Madrid Protocol and the Regulations do not permit amendment of a mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder m |
| 1904.02(k) | 1904.02(k) Drawings and Descriptions of the Mark | 1904.02(k) Drawings and Descriptions of the Mark | Though the mark in a §66(a) application may not be amended, the applicant must comply with the U.S. requirements regarding drawings of the mark. 15 U.S.C. §1141h(a) ; 37 C.F.R. §§2.52 , 7.25(a) . If the drawing does not |
| 1904.02(l) | 1904.02(l) Jurisdiction | 1904.02(l) Jurisdiction | The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §1(a) and §44 of the Trademark Act. 37 C.F.R. §2.84 . However, when deciding whether t |
| 1904.03 | 1904.03 Notice of Refusal | 1904.03 Notice of Refusal | |
| 1904.03(a) | 1904.03(a) Notice Must Be Sent Within 18 Months | 1904.03(a) Notice Must Be Sent Within 18 Months | Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit: (1) A notification of refusal based on examination; (2) A notification of refusal based on the filing of an opp |
| 1904.03(b) | 1904.03(b) Requirements for Notice of Refusal | 1904.03(b) Requirements for Notice of Refusal | A final decision is not necessary; a provisional refusal is sufficient to meet the 18-month requirement. Under Regulations Rule 17(2), a notice of provisional refusal must be dated and signed by the USPTO and must contai |
| 1904.03(c) | 1904.03(c) §66(a) Applicant Must Respond to Notification of Provisional Refusal | 1904.03(c) §66(a) Applicant Must Respond to Notification of Provisional Refusal | A holder of an international registration who applies for an extension of protection to the United States (also known as the §66(a) applicant) will receive an initial notification of refusal through the IB. The holder mu |
| 1904.03(d) | 1904.03(d) Refusal Pertaining to Less than All the Goods/Services | 1904.03(d) Refusal Pertaining to Less than All the Goods/Services | If a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark may be protected for the remaining goods/services, even if the holder does not respond to the notification of refu |
| 1904.03(e) | 1904.03(e) Confirmation or Withdrawal of Provisional Refusal | 1904.03(e) Confirmation or Withdrawal of Provisional Refusal | If the USPTO has sent a notice of provisional refusal, once the procedures regarding the refusal are complete, the USPTO must notify the IB that: (1) protection is refused for all goods/services; (2) the mark is protecte |
| 1904.03(f) | 1904.03(f) Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection | 1904.03(f) Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection | When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio . The IB will also correct an error at the request of the holder or |
| 1904.03(g) | 1904.03(g) Notification of Restrictions to Goods/Services with Respect to a Pending Request for Extension of Protection | 1904.03(g) Notification of Restrictions to Goods/Services with Respect to a Pending Request for Extension of Protection | |
| 1904.04 | 1904.04 Opposition | 1904.04 Opposition | Trademark Act §68(a)(2), 15 U.S.C. §1141h(a)(2) , provides that a request for extension of protection is subject to opposition under Trademark Act §13. The USPTO must notify the International Bureau of the World Intellec |
| 1904.05 | 1904.05 Certificate of Extension of Protection | 1904.05 Certificate of Extension of Protection | If the mark in a §66(a) application is published for opposition and is not opposed, or survives all oppositions filed, the USPTO will issue a certificate of extension of protection and publish notice of such certificate |
| 1904.06 | 1904.06 Assignment of Extension of Protection to the United States | 1904.06 Assignment of Extension of Protection to the United States | Under §72 of the Trademark Act, 15 U.S.C. §1141l , an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled |
| 1904.07 | 1904.07 Invalidation of Protection in United States | 1904.07 Invalidation of Protection in United States | A registered extension of protection to the United States may be invalidated. See Regs. Rule 19. “Invalidation” means a decision by a competent administrative or judicial authority of the United States, revoking or cance |
| 1904.07(a) | 1904.07(a) Invalidation Resulting From Cancellation Due to Third-Party Challenge | 1904.07(a) Invalidation Resulting From Cancellation Due to Third-Party Challenge | Invalidation may occur due to cancellation proceedings instituted by a third party before the TTAB, under §14 of the Trademark Act, because, for instance, the mark has become generic. See 15 U.S.C. §1064 . If the third p |
| 1904.07(b) | 1904.07(b) Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration | 1904.07(b) Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration | Invalidation may occur due to the holder’s failure to timely file and meet the requirements of an affidavit or declaration under §71 of the Trademark Act, showing use of the registered mark in commerce in the United Stat |
| 1904.07(c) | 1904.07(c) Invalidation Resulting From Voluntary Surrender of Registered Extension of Protection | 1904.07(c) Invalidation Resulting From Voluntary Surrender of Registered Extension of Protection | Invalidation may occur when the holder of a registered extension of protection voluntarily surrenders the registration for cancellation under §7(e) of the Trademark Act. 15 U.S.C. §1057(e) . If the registered extension o |
| 1904.07(d) | 1904.07(d) Invalidation Resulting from Expungement Proceedings | 1904.07(d) Invalidation Resulting from Expungement Proceedings | Invalidation may occur due to expungement proceedings instituted by the Director upon petition or upon the Director’s initiative, under Section 16A of the Trademark Act, because the mark has never been used in commerce o |
| 1904.07(e) | 1904.07(e) Issuance of Notice of Invalidation to the International Bureau | 1904.07(e) Issuance of Notice of Invalidation to the International Bureau | Once the registered extension of protection has been cancelled by the USPTO, the Director shall issue to the IB a notice of invalidation of the registered extension of protection to the United States. See Article 5(6). T |
| 1904.08 | 1904.08 Cancellation of International Registration by IB | 1904.08 Cancellation of International Registration by IB | If the IB notifies the USPTO that an international registration has been cancelled with respect to some or all of the goods/services, the USPTO will cancel the extension of protection of that international registration t |
| 1904.09 | 1904.09 Transformation to Application Under §1 or §44 | 1904.09 Transformation to Application Under §1 or §44 | An international registration is dependent on the basic application and/or basic registration for five years after the date of the international registration. Article 6(3). If the basic application or registration is res |
| 1904.09(a) | 1904.09(a) Requirements for Transformation | 1904.09(a) Requirements for Transformation | A request for transformation must be filed within three months after the date on which the international registration was cancelled, in whole or in part. Article 9quinquies (i); 15 U.S.C. §1141j(c) . The request must inc |
| 1904.09(b) | 1904.09(b) Examination of Transformed Application | 1904.09(b) Examination of Transformed Application | A “transformed” application under §1 or §44 of the Trademark Act resulting from the transformation of a cancelled extension of protection must comply with all the requirements of the Trademark Act and Trademark Rules of |
| 1904.10 | 1904.10 Affidavits of Use or Excusable Nonuse Required | 1904.10 Affidavits of Use or Excusable Nonuse Required | Under §71 of the Trademark Act, 15 U.S.C. §1141k , a registered extension of protection to the United States will be cancelled if the holder of the international registration fails to periodically file affidavits of use |
| 1904.11 | 1904.11 Incontestability | 1904.11 Incontestability | Under §73 of the Trademark Act, 15 U.S.C. §1141m , if a holder files an affidavit that meets the requirements of §15 of the Trademark Act, a registered extension of protection to the United States may become “incontestab |
| 1904.12 | 1904.12 Replacement | 1904.12 Replacement | If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States: (1) are owned by the same person; (2) identify the same mar |
| 1904.13 | 1904.13 Amendment and Correction of Registered Extension of Protection to the United States | 1904.13 Amendment and Correction of Registered Extension of Protection to the United States | All requests to record changes to an international registration and associated extensions of protection must be filed at the International Bureau (IB). Accordingly, the holder of a registered extension of protection of a |
| 1904.13(a) | 1904.13(a) Limited Amendments to Registered Extension of Protection | 1904.13(a) Limited Amendments to Registered Extension of Protection | The holder of a registered extension of protection may request certain changes under §7 of the Trademark Act, 15 U.S.C. §1057 , that will affect only the extension of protection in the United States. For example, an appl |
| 1904.13(b) | 1904.13(b) Corrections to Registered Extensions of Protection | 1904.13(b) Corrections to Registered Extensions of Protection | Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even |
| 1904.14 | 1904.14 Notification of Correction in the International Register with Respect to Registered Extension of Protection | 1904.14 Notification of Correction in the International Register with Respect to Registered Extension of Protection | When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio . The IB will also correct errors at the request of the holder or th |
| 1904.15 | 1904.15 Notification of Restrictions to Goods/Services with Respect to a Registered Extension of Protection | 1904.15 Notification of Restrictions to Goods/Services with Respect to a Registered Extension of Protection | |
| 1904.15(a) | 1904.15(a) Limitations to Goods/Services | 1904.15(a) Limitations to Goods/Services | The MPU reviews all limitations and enters any amendments to the listing of goods and services into the Trademark electronic record, as appropriate. If a limitation requires changes to the record, MPU ensures that an upd |
| 1904.15(b) | 1904.15(b) Partial Cancellation of an International Registration | 1904.15(b) Partial Cancellation of an International Registration | When the USPTO receives notification from the IB that the international registration has been restricted in part due to a partial cancellation, the MPU will determine what, if any, goods/services remain extended to the U |
| 1904.15(c) | 1904.15(c) Partial Ceasing of Effect of an International Registration | 1904.15(c) Partial Ceasing of Effect of an International Registration | When the USPTO receives notification from the IB that the international registration has been restricted in part due to a partial ceasing of effect of the basic registration, the MPU will determine what, if any, goods/se |
| 1905 | 1905 Renewal of International Registrations | 1905 Renewal of International Registrations | The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1), 7(1). Renewal of international registrations must be made at the IB, in accordan |
| 1906 | 1906 Communications with International Bureau Regarding International Registrations | 1906 Communications with International Bureau Regarding International Registrations | Information about communicating directly with the IB is available on the WIPO website at https://www.wipo.int/madrid/en/ . The IB can be contacted by telephone at 41 22 338 8686 or by filing an inquiry using the Contact |
| 1906.01 | 1906.01 Recording Changes in International Register | 1906.01 Recording Changes in International Register | The IB will record changes and other matters concerning international registrations in the International Register. Such requests are governed by Articles 9 and 9 bis and Regulations Rule 25. Some of the changes that can |
| 1906.01(a) | 1906.01(a) Change in Ownership of International Registration | 1906.01(a) Change in Ownership of International Registration | The IB will record a change in ownership by assignment, merger, court decision, or operation of law at the request of the holder, the Contracting Party of the holder, or an interested person. Article 9; Regs. Rule 25(1)( |
| 1906.01(b) | 1906.01(b) Restriction of Holder’s Rights of Disposal | 1906.01(b) Restriction of Holder’s Rights of Disposal | Under Regulations Rule 20(1)(a), a holder of an international registration or a Contracting Party of the holder (i.e., a Contracting Party in which the holder is a national, is domiciled, or has a real and effective busi |
| 1906.01(c) | 1906.01(c) Change of the Holder’s Name or Address | 1906.01(c) Change of the Holder’s Name or Address | A request to record a change of the holder’s name or address must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22 . The request may be filed using Form MM9 on the IB website at https://www.wip |
| 1906.01(d) | 1906.01(d) Change of Name or Address of Representative | 1906.01(d) Change of Name or Address of Representative | A request to record a change of the representative’s name or address must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22 . The request may be filed using Form MM10 on the IB website at https: |
| 1906.01(e) | 1906.01(e) Limitation, Cancellation, or Renunciation of an International Registration | 1906.01(e) Limitation, Cancellation, or Renunciation of an International Registration | Requests to record a limitation, cancellation, or renunciation of an international registration must be filed with the IB; they cannot be filed through the USPTO. 37 C.F.R. §7.22 . The request may be filed using forms fo |
| 1906.01(f) | 1906.01(f) Correction of Errors in International Registration | 1906.01(f) Correction of Errors in International Registration | The IB will correct errors in an international registration at the request of the holder or the Office of Origin. Regs. Rule 28(1). Requests to correct errors in international registrations in which the USPTO was the Off |
| 1906.01(g) | 1906.01(g) Merger of International Registrations | 1906.01(g) Merger of International Registrations | Where the same party is the holder of two or more international registrations of the same mark due to a partial change in ownership, that party may request the IB to record a merger of the registrations. Regs. Rule 27 te |
| 1906.01(h) | 1906.01(h) License | 1906.01(h) License | Under Regulations Rule 20 bis (1), a holder may file a request to record a license, for amendment of the recording of a license, or for cancellation of the recording of a license with the IB; it cannot be filed through t |
| 1906.01(i) | 1906.01(i) Changes that Cannot Be Made to International Registration | 1906.01(i) Changes that Cannot Be Made to International Registration | Mark in International Registration Cannot Be Changed. There is no provision for a mark to be amended in any way, at any time, even if the mark in the basic application or basic registration changes. Guide to Internationa |
The Trademark Manual of Examining Procedure is the internal handbook examining attorneys use. New editions appear irregularly, so section numbers shift. Treat the headings below as starting search terms rather than permanent citations, and confirm the current numbering in the live TMEP before relying on any of them.
Reading a TMEP citation in your Office Action
Office Actions routinely cite several manual sections together with the statutory refusal. Read the statute first to understand the ground, then the manual section to see what the examiner was told to look for. If they disagree in substance, the statutory standard governs — and that is usually the point worth making with an attorney.
Frequently asked questions
Is the TMEP legally binding?
It is internal USPTO guidance. It is highly persuasive because examining attorneys apply it every day, but the Trademark Trial and Appeal Board and the federal courts decide cases under the statute and case law.
Which manual topics should I read first?
The identification-of-goods topic and the specimens topic. Together they cover most of the refusals a self-filer can prevent without hiring anyone.
How do I know I have the current edition?
Use the web version at tmep.uspto.gov rather than any PDF you have downloaded. The manual is revised continuously and the USPTO publishes the revision date on the live site.
More in Databases & Legal Resources
U.S. Trademark Statutes
The Lanham Act provisions governing registration, in plain language.
Protected Names & Official Insignia
Flags, government seals, and other matter barred from registration.
U.S. Surname Reference
Frequency-ranked U.S. surname data, for surname refusal risk context.
U.S. Geographic Names Reference
States, major cities, and regions relevant to geographic refusals.